NFL prevailed over INNI in trademark opposition for Dallas Cowboys' Team Icon

On November 9, 2022, Taiwan’s IP Office (“TIPO”) cancelled trademark no. 02115134, a trademark filed and held by INNILINK creative Corporation, finding the cancelled trademark confusingly similar with the icon of the popular NFL team Dallas Cowboys.

 

The icon of the Dallas Cowboys is a trademark owned by NFL Properties LLC (“NFL”). Such trademark was registered by TIPO in as early as September 16, 1999 (Reg. No. 00868102, see below), designated for use in goods under class 25, such as socks, hats, etc.

The contested trademark  (see below) was filed by a company called INNILINK Creative Corporation (“INNI”) on August 10, 2020, and was granted for registration on January 16, 2021, designated for use in goods under class 25, including swimsuits, clothing, scarf, neckties, hats, gloves, etc.

NFL filed opposition against INNI on April 16, 2021, citing, among the others, violations of Article 30.1.10 of Trademark Act. TIPO sided with NFL on November 9, 2022, finding that:

 

1.    INNI’s contested trademark is similar with Dallas Cowboys’ team icon. Both trademarks present the visual impression of overlapping black and white stars. While INNI’s star contains more decorative symbols, such difference is minor. In its entirety, TIPO finds INNI’s contested trademark visually and conceptually similar with Dallas Cowboys’ star icon.

2.    TIPO also notes that both INNI’s contested trademark and Dallas Cowboys’ icon are applied for use in similar products. For example, INNI’s trademark is designated for use in apparel and clothing, and such products are usually used in conjunction with accessories like hats and gloves, which serve similar purpose for covering human body and keep warm. Moreover, these products are usually available through similar sales channels. Ordinary consumers, if seeing similar trademarks, may consider these products originated from the same supplier.

3.    Plus, TIPO is aware that Dallas Cowboys’ icon has been popular and enjoys wide recognition in the relevant market due to NFL’s continuous marketing and promoting. Such team icon is highly distinctive, and consumers are more familiar with the icon of the highly popular NFL team.

4.    Given that INNI’s trademark is similar with Dallas Cowboys’ icon, that both trademarks are applied for use in similar products, and that Dallas Cowboys’ icon is distinctive and more recognizable among consumers, TIPO concludes that registration of INNI’s star logo is likely to cause confusion with Dallas Cowboys’ icon among the relevant consumers. As such, INNI’s star logo is cancelled accordingly.

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4c3laN1RISjB2Rjc2MktZTGVWNnVnQT09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true