Editor’s Note: This is the third blog covering the ongoing dispute over the trademark rights for BillsMafia. Click here to read Mr. Greenbaum’s original post, and click here to read his January update.
When we last visited this subject in January, the Buffalo Bills’ own applications to register the trademark “Bills Mafia” in standard characters (SN 90248260) or in a stylized design (SN 90248264) had not yet been reviewed by an attorney examiner at the United States Patent & Trademark Office (“USPTO”).
That initial review occurred late last month, however, and as we anticipated, the Bills’ applications have been blocked (at least temporarily) by an application to register the mark “Billsmafia” filed by Karina Lopez (SN 90051257). A USPTO Office Action sent to the Bills’ attorneys indicates that the prior filed and pending application by Ms. Lopez, if approved, may present a bar to registration of the Bills own “Bills Mafia” trademark applications. Whether that bar to the Bills’ applications will remain in place for long, however, is questionable.
As we also reported in January, Ms. Lopez’s application to register “Billsmafia” was refused registration late last year by a USPTO attorney examiner on account of the Bills’ ownership of several “Buffalo Bills” registered trademarks and service marks. Ms. Lopez has until May 2, 2021 to respond to the USPTO examiner’s refusal to register her “Billsmafia” mark. If Ms. Lopez responds to the USPTO refusal, it is likely that the Bills applications will continue in a state of suspension while her response is considered and acted upon by the USPTO.
If Ms. Lopez doesn’t respond to the USPTO refusal to register by May 2, 2021, her application will be deemed abandoned. Once abandoned, Ms. Lopez application will no longer be an impediment to further consideration of the “Bills Mafia” trademark applications filed by the Bills. If that impediment is removed, I fully expect that the Bills will be able to address the other minor issues raised by the USPTO examiner with respect to their “Bills Mafia” applications.
We will plan to check back on the status of all of these applications after May 2, 2021 and provide a further update at that time, so stay tuned.
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 firstname.lastname@example.org.