Bills Mafia Trademark Redux
August 3, 2022
We last checked on the status of the registration of the “Bills Mafia” trademarks following the Bills’ disappointing loss to Kansas City in January, 2022. There are two marks that Buffalo Bills LLC (the “Bills”) want to register, namely, “Bills Mafia” in standard characters (SN 90248260) and “Bills Mafia” in a design format (SN 90248264).
Both applications seek to register these marks in two international classifications of goods, namely, Class 010 for medical masks and Class 025 for a variety of clothing items, ranging from aprons and baseball caps to wool hats and wrist bands. Both trademark applications were “allowed” in December, 2021. That generally leads to the issuance of registrations following the filing of Statements of Use of the marks in commerce for the goods, supported with specimens or examples of actual use of the marks on the goods.
For whatever reason, the finalizing of the Bills Mafia registrations has stalled, as no Statements of Use or supporting specimens have been filed to complete the registration for either of the marks, in either goods classification. Instead, the Bills filed extension requests, which were granted, enabling the filing of a Statement of Use and specimens up to and including December 14, 2022. The Bills can seek as many as four additional six-month extensions of time within which to make those filings and secure registration of one or both marks in one or both classifications.
One would think that there would be “Bills Mafia” branded merchandise, particularly clothing items, that the Bills might wish to promote and sell either at training camp or upcoming preseason games. Perhaps the problem may have something to do with the branding of the merchandise versus the ornamentation that appears on the merchandise.
If “Bills Mafia”, in standard characters or design, just appears on a Fruit of the Loom T-shirt, the brand of the T shirt is still Fruit of the Loom, and “Bills Mafia” is not being used in a true trademark sense, namely, as an identifier of source of the goods. It is being used as “mere ornamentation” which is insufficient to support a Statement of Use and constitute a true specimen of actual use.
We will have to see how the Bills ultimately address this branding issue once genuine “Bills Mafia” merchandise begins to be promoted and sold in a way that can support a Statement of Use. Until then, however, the Bills cannot properly use the international trademark symbol “®” with Bills Mafia merchandise (nor can anybody else!).
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].
