The National Football League and the Tennessee Titans have filed an opposition against the XFL over their logo for the Houston Roughnecks on the grounds that it’s too similar to the old Houston Oilers logo.
Yes, you’re right, the Houston (Tennessee) Oilers logo was replaced more than 20 years ago when the Oilers changed their name to the Titans, and yes the XFL stopped playing football games almost a full year ago. But! The Houston Oilers logo still appears on new merchandise and, according to the notice of opposition, “still retains valuable goodwill and consumer recognition”, and the XFL plans on giving a third go at it next year under new ownership.
The NFL’s filing of opposition goes on to read that “Consumers encountering Applicant’s [Roughnecks] mark, particularly in connection with Applicant’s Services [professional football games], are likely to associate the mark with Opposers [the NFL], based on the similarity of the parties’ marks and their respective goods and services.”
“There is a legitimate case from a trademark perspective”, trademark attorney Josh Gerben of Gerben Intellectual Property told SportsLogos.Net in an email. “Ultimately, the more similar trademarks that exist in a given field, the less protectable each individual trademark becomes. If the XFL’s trademark registered without some agreement between the XFL and NFL, it arguably would limit the NFL’s scope of rights it may enjoy in the Oilers’ trademark.”
The Houston Roughnecks unveiled their logo along with the rest of the XFL’s second batch of teams on August 21, 2019. As the Houston Oilers, the Roughnecks logo featured a single oil derrick but included other features such as a star and the letter “H” for Houston, the logo was also in a different colour scheme – red, white, and navy blue versus the Oilers’ light powder blue, white, and red.
Despite the differences noted above, it was the similarities between their logo and the NFL’s Oilers designs that were immediately obvious by most observers. Nearly every user who commented on SportsLogos.Net about the logo noted it’s either an Oilers logo “tribute” or a “knockoff”, with one user even stating “I see a lawsuit”.
“The test is whether or not consumers would be confused as to the source of the goods/services”, Gerben continued. “In other words, would football fans think that the Roughnecks were connected to the NFL and/or the Oilers when they see the Roughnecks logo? If the case were ever to proceed to trial, the NFL would likely need to provide survey evidence to show this was occurring.”
We’ve seen examples of teams facing legal issues with their trademarked logos in recent years, the Vegas Golden Knights of the NHL were challenged by the Army and their Golden Knights Parachute Team in 2018 before the two sides came to an agreement permitting the hockey club to continue using the name and logos.
“It is very difficult to compare trademark cases. I think the one similarity that exists [between this and the Golden Knights case] is that this case should settle, and, the Roughnecks should be able to continue using the logo,” Gerben said. “There would appear to be enough differences in the logos that they can co-exist in the marketplace. For the NFL to win the case they would essentially have to prove that the image of an ‘oil derrick’ was highly unique for a sports team, and, that no other sports team (or at least football team) could use an oil derrick as a logo. I think this would be a tough argument to win. This makes settlement more likely.”
We reached out to the NFL for comment earlier today but have yet to hear back. As it stands, the XFL has until February 6th to file its response to the USPTO regarding the NFL and the Titans’ trademark opposition to the Roughnecks logo.