On February 1, 2021, Pop Warner Little Scholars, Inc. ("PWLS") and Pop Warner Authentic, Inc. ("PWA") (collectively, "Pop Warner") filed a complaint for trademark infringement against Hanesbrands, Inc. ("Hanes") in the United States District Court for the Central District of California. Pop Warner is seeking injunctive relief and damages stemming from these infringement allegations. Given that trademark disputes tend to settle, it will be interesting to see what type of opposition Hanes mounts in this case.
Why did Pop Warner bring an action against Hanes?
Pop Warner Trademarks
PWLS is a nonprofit organization that offers football, cheerleading, and dance leagues and activities to over 325,000 United States youths, aged five (5) to sixteen (16) years of age. PWLS owns two (2) federal trademark registrations for the POP WARNER logo. The registration for the word mark covers "[o]rganizing and servicing boys' football teams to promote sportsmanship and scholarships" and the design mark covers "[c]lothing," including "uniforms" and "uniform jerseys," as well as "[o]rganizing and conducting youth football, flag football, and cheerleading teams to promote sportsmanship and scholarship." In 2020, PWA became the sole authorized manufacturer of the PWLS merchandise and the sole licensee of the Pop Warner brand and trademarks.
Initial Trademark Dispute
On July 6, 2020, Pop Warner notified Hanes that its subsidiary brand, Champion, was offering merchandise on its website using the Pop Warner word mark without permission, and asked Hanes to remove same. Hanes never responded to Pop Warner's original request and another cease and desist letter was sent to Hanes on December 2, 2020. When Hanes again failed to respond, Pop Warner initiated the instant trademark dispute.
A trademark is a word, phrase, symbol, or design that distinguishes the goods or services of one party from that of another. In the U.S., common law trademark rights attach to trademarks as soon as the subject identifiers are used in commerce. Brands are not required to register their marks to obtain protectable rights. However, owning a federal trademark registration will provide trademark owners with additional protection beyond that afforded under common law alone. When businesses are in the early stages of formation, they should be mindful of both the common law and federally registered trademark rights of third parties that they may unwittingly infringe upon. Business leaders should also endeavor to create strong marks that will provide them with the most protection in the future. Although it is tempting for businesses to pick a descriptive brand name to make consumers aware of their goods or services, descriptive terms offer only weak trademark protection. Businesses that pick suggestive, arbitrary or fanciful terms will receive stronger trademark protection and have an easier time enforcing their rights against potential and actual infringers.
Consulting a Trademark Lawyer
Businesses that want to create strong brands should consult with knowledgeable trademark lawyers that can shepherd them through all that is involved in the trademark process. Trademark lawyers often assist businesses with: 1) conducting comprehensive searches for competing marks; 2) filing trademark applications with the United States Patent and Trademark Office ("USPTO"); 3) licensing trademarks for potential revenue opportunities; 4) enforcing trademark rights; and 5) filing complaints if and when trademark disputes escalate.
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Originally Published by Klein Moynihan, February 2021
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