Pop Warner, the popular brand known for participating in soccer competitions for 5 to 16 year olds, is starting to get very aggressive in enforcing their intellectual property rights. In the past few weeks, Pop Warner Little Scholars, Inc. and Pop Warner Authentic, Inc. have filed several trademark infringement suits against Hanesbrands, Inc. and BSN Sport, LLC as defendants.
The proceedings against Hanesbrands, Inc. are pending in the US District Court for the Central District of California and are of the opinion that the defendant offered goods with the word mark Pop Warner through its subsidiary brand Champion without a valid license. Hanesbrands, Inc. is also alleged to have illegally used the word mark to advertise football uniforms and inappropriately search engine optimization by including Pop Warner in the title of its paid ads on Google.
Plaintiffs allege that Hanesbrands, Inc. products are substantially similar in style and content to products sold and licensed by plaintiffs and that this is a clear misappropriation of Plaintiffs’ “brand of academic and athletic excellence”.
The case against BSN Sport, LLC is pending in the same federal district court, based on the allegation that BSN continued to exercise rights beyond the life of an expired contract that it once had. BSN Sport was once a licensee of the Pop Warner brand, but according to the complaint, the rights granted to BSN under the license agreement expired on December 31, 2016. However, BSN’s website didn’t start offering goods with Pop Warner’s word and design trademarks until late December 2020.
The biggest question in either case is likely to revolve around whether each defendant’s use is branded or just describes the products for sale. If Hanesbrands, Inc. actively promotes the Pop Warner trademarks on the clothing it manufactures and sells without consent, a consumer may mistakenly believe an association or endorsement with the Pop Warner trademark. For those reasons, if es or BSN Sport is merely describing uniforms intended for use at Pop Warner events and the consumer is not likely to be confused with the Pop Warner association.
For example, the copy attached by plaintiffs in the BSN Sports complaint clearly shows that the uniforms came from a separate company. However, the same example shows that BSN Sports is promoting that Pop Warner has partnered with BSN Sports to act as the official distributor of Pop Warner football uniforms. This seems like a bogus advertisement if their official relationship actually ends on either case, every company has a federal lawsuit that it must now defend against if another brand’s registered trademarks are used without consent.
Darren Heitner is the founder of Heitner Legal. He is the author of How to Play the Game: What Every Sports Lawyer Needs to Know, published by the American Bar Association, and is an associate professor at Levin College of Law, University of Florida. You can reach him by email at [email protected] and follow him on Twitter @DarrenHeitner.