BILLS MAFIA Trademark filings raise questions

January 10, 2025

In 2020 Buffalo Bills LLC (the “Bills”) applied to the United States Patent and Trademark Office (USPTO) to register 2 “BILLS MAFIA” trademarks.  One application sought to register “BILLS MAFIA” in standard characters (SN90248260) and the second application sought to register “BILLS MAFIA” in stylized form (SN90248264).  Both applications were based on the BILL’s bonafide intent to use, not actual use of the BILLS MAFIA trademarks for a variety of clothing items.  This meant that the BILLS did not have to file actual specimens of the trademarks in use at the time of application. 

Both applications were “allowed” by the USPTO in December of 2021. That “allowance” opened up a limited period of time within which the BILLS were required to file allegations of use of the BILLS MAFIA marks in commerce accompanied by specimens of items of clothing branded with one or both claimed BILLS MAFIA trademarks.  That period of time, with a number of extensions, was set to run out in December of 2024.

On December 3, 2024 the BILLS filed an Allegation of Use together with a specimen of a hat at the USPTO in support of registering the BILLS MAFIA mark in standard characters.  That specimen appears below:

Although the words “BILLS MAFIA” clearly appears on the hat, there is a question as to whether it is merely a decorative or ornamental feature of the goods and does not function as a trademark to indicate the source of the goods, and to identify and distinguish them from the goods of others within the meaning of the US Trademark Act.  Further complicating the situation, the specimen states that the source of the hat is “New Era”, a hat manufacturer familiar to Buffalo fans.  As a result, there is a good chance that examiners at the USPTO may refuse registration because the use of BILLS MAFIA on the specimen is decorative and not a source indicator, particularly when the indicated source is New Era.

Similarly, on December 3, 2024, the BILLS filed an Allegation of Use regarding “BILLS MAFIA” in stylized form accompanied by a specimen of a jacket.  That specimen appears below:

Again, BILLS MAFIA in stylized form appears on the specimen but is it merely a decorative or ornamental feature of the goods, or does it function as a trademark to indicate the source?  As with the hat, the specimen states that the source is “Starter”, a well-known manufacturer of sports-themed jackets.  As a consequence, it appears that an examiner at the USPTO may also refuse registration because the use of the mark is ornamental and not as a source indicator, particularly when the indicated source is Starter.

To be sure, if the USPTO examiner refuses registration of either BILLS MAFIA marks, the BILLS can challenge the refusal administratively and/or in court.  Registrations may ultimately issue for one or both BILLS MAFIA marks.  It is unlikely, however, that there will be a decision from the USPTO during the BILLS 2025 playoff run.

Les Greenbaum is an experienced attorney who focuses his practice in the areas of trademark, copyright, entertainment, art and sports law, unfair competition, and related litigation. He can be reached at Gross Shuman P.C. by calling 716-854-4300 ext. 230 or [email protected].