UNITED STATES DISTRICT COURT

DISTRICT OF NEW HAMPSHIRE

Pop Warner Little Scholars, Inc.;

Barbara Doughty, individually and

on behalf of New Hampshire Pop 

Warner Football Conference; and 

Jason Patch, individually and on 

behalf of New Hampshire Pop Warner 

Football Conference,

Plaintiffs

v. Civil No. 06-cv-98-SM

Opinion No. 2006 DNH 104

New Hampshire Youth Football & 

Spirit Conference; Richard 

Pelletier; Robert Schiavoni; 

Ellen Shiavoni; and Deborah A. Smith,

Defendants

O R D E R

Plaintiffs Pop Warner Little Scholars, Inc., Barbara

Doughty, individually and on behalf of New Hampshire Pop Warner

Football Conference, and Jason Patch, individually and on behalf

of New Hampshire Pop Warner Football Conference bring suit

against defendant New Hampshire Youth Football & Spirit

Conference, Richard Pelletier, Robert Schiavoni, Ellen Schiavoni,

and Deborah A. Smith, seeking redress for trademark infringement

under 15 U.S.C. §§ 1114(a) and 1125(a), trademark dilution under

15 U.S.C. § 1125(c), cyberpiracy under 15 U.S.C. § 1125(d), and

related state statutory and common law claims. All of these

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claims arise from the alleged continued use of plaintiffs’

federally protected trademarks on defendant’s web site.

Plaintiffs move this court to issue a preliminary injunction

pursuant to FED. R. CIV. P. 65(a) to enjoin defendants from using

plaintiffs’ marks and to cease using the internet domain name

nhpwfc.org. For the reasons set forth below, plaintiffs’ motion

is denied.

STANDARD OF REVIEW

“Traditionally, the test for a preliminary injunction has

four factors: 1) a likelihood of success on the merits, 2)

irreparable harm to the plaintiff should preliminary relief not

be granted, 3) whether the harm to the defendant from granting

the preliminary relief exceeds the harm to the plaintiff from

denying it, and 4) the effect of the preliminary injunction on

the public interest.” Rio Grande Cmty. Health Ctr., Inc. v.

Rullan, 397 F.3d 56, 75 (citing Matrix Group, Ltd. v. Rawlings

Sporting Goods Co., 378 F.3d 29, 33 (1st Cir. 2004)). “The sine

qua non of that formulation is whether the plaintiffs are likely

to succeed on the merits.” Weaver v. Henderson, 984 F.2d 11, 12

(1st Cir. 1993) (citing Narragansett Indian Tribe v. Guilbert,

934 F.2d 4, 6 (1st Cir. 1991)).

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BACKGROUND

The facts, taken from the pleadings and accepted, for these

purposes, as true, are as follows. Pop Warner Little Scholars,

Inc. (“Pop Warner”) is a national organization devoted to

promoting team sports among American youth by offering various

football and “spirit” programs throughout the world. (Compl. ¶¶

16-18.) Pop Warner identifies itself by using the trademark “Pop

Warner” and other related marks and logos, many of which are

registered with the Patent and Trademark Office. (Compl. ¶¶ 27-

28.) Pop Warner promotes itself, often using its trademarks,

through various means including an Internet web site available at

www.popwarner.com. Although Pop Warner does not itself sponsor

youth football teams, the organization associates with local and

regional affiliates which are chartered by Pop Warner and

licensed to use the Pop Warner trademarks in connection with

their own football and spirit programs, (Compl. ¶ 31), provided

that these local affiliates comply with certain policies and

procedures (Compl. ¶ 23.)

One of the defendants in this case, the New Hampshire Youth

Football & Spirit Conference (“NHYF”), formerly known as the New

Hampshire Pop Warner Football Conference, was one such local

affiliate that operated under a Pop Warner charter “since at

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least 1991." (Compl. ¶ 35.) During this time, NHYF operated

under the Pop Warner trademarks, consistent with the rules and

procedures set forth by Pop Warner. (Compl. ¶¶ 35-36.) One of

the mechanisms by which NHYF promoted itself was its web site,

which is available at www.nhpwfc.org. The acronym “nhpwfc” in

the domain name derived from the organization’s prior name, “New

Hampshire Pop Warner Football Conference.” (Compl. ¶ 38.)

In June 2005, NHYF ended its relationship with Pop Warner

and associated itself with American Youth Football & Cheer

Association, a youth football and spirit organization that

essentially competes with Pop Warner. (Compl. ¶ 40.) As a

result of that decision, on June 20, 2005, NHYF changed its

corporate name from New Hampshire Pop Warner Football Conference

to its current name, New Hampshire Youth Football & Spirit

Conference. (Compl. ¶ 43.) On the same day that NHYF formally

changed its name, NHYF registered the trade name “New Hampshire

Pee Wee Football Conference” with the New Hampshire Secretary of

State, as well as the acronym for that trade name, “NHPWFC.”

(Compl. ¶ 46.) Because the acronym for the new trade name is

identical to the acronym for the old corporate name, NHYF has

continued to use the web address www.nhpwfc.org. (Compl. ¶ 47).

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The NHYF web site, which provides the principal point of

contention in this case, was updated to reflect its new

association with American Youth Football & Cheer Association, and

“most references to Pop Warner were removed and replaced.”

(Compl. ¶ 49). A few references to Pop Warner apparently

remained, however, in some of the web pages’ “metatags.” 

Metatags help guide Internet search engines, such as Google, to

find pages that meet certain search criteria. (Compl. ¶ 50). At

a hearing on the present matter, NHYF represented to this court

that any remaining references to Pop Warner were inadvertent and

that it would promptly take the steps necessary to eliminate any

such remaining references. It also committed to placing a

disclaimer on its website, making it clear to visitors that it

was not affiliated with Pop Warner.

DISCUSSION

The threshold inquiry in a trademark infringement case is

whether the alleged mark is, in fact, a protectible trademark. 

See, e.g., Boston Beer Co. v. Slesar Bros. Brewing Co., 9 F.3d

175, 180 (1st Cir. 1993). Once a particular mark is found to

warrant protection, the inquiry shifts to whether the alleged

infringing use is likely to result in consumer confusion. See,

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e.g., id. (citing Boston Athletic Ass’n. v. Sullivan, 867 F.2d

22, 28 (1st Cir. 1989). 

In considering whether consumers are likely to be confused,

courts typically consider a number of factors, including the

similarity of the marks, the similarity of the goods and services

with which the marks are associated, the relationship between the

channels of trade of each of the goods and/or services, the

relationship between the parties’ advertising, the classes of

potential consumers, evidence of actual confusion, the

defendant’s intent in adopting the mark, and the strength of the

plaintiff’s mark. Keds Corp. v. Renee Int’l Trading Corp., 888

F.2d 215, 222 (1st Cir. 1989). For purposes of a preliminary

injunction, however, a plaintiff need only demonstrate that its

marks merit protection and that the allegedly infringing use is

likely to confuse consumers. Borinquen Biscuit Corp. v. M.V.

Trading Corp., 443 F.3d 112 (1st Cir. 2006).

Here, because the validity of plaintiffs’ trademarks is

undisputed, the critical inquiry is whether consumers will be

confused by defendants’ use of plaintiffs’ marks, or more

specifically, whether the public might think defendants are still

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affiliated in some way with plaintiffs’ football and spirit

programs, notwithstanding their dissociation. 

The record in this case, albeit relatively limited at this

stage, fails to demonstrate that defendants continue to use the

plaintiffs’ trademarks. Plaintiffs acknowledge that the NHYF

removed all marks and logos from its web site, and, except for a

relatively small number of web pages, from the hidden “metatags”

that are used by search engines to index and find content on the

Internet. With respect to the pages that still contained Pop

Warner’s marks in the metatags, NHYF represented that it would

immediately remove such material as soon as it became aware of

its existence. Indeed, the record demonstrates that defendants

have made good faith efforts to remove Pop Warner’s trademarks

from its site, and that they will continue to do so until all

such references are removed. A further review of the record

reveals that any continued use of the plaintiffs’ marks on

defendants’ web site is merely the result of technological

inexperience or inefficiency, and not the product of any intent

to deceive or confuse the public.

Plaintiffs give considerable weight to the fact that on many

Internet search services such as Google, defendants’ web site

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will continue to be associated with Pop Warner long after the

metagags are changed. Although such search results may be due to

defendants’ old metatags, any continued use of the data in those

metatags is not the fault of defendants, but rather, of the

inefficient or inaccurate search algorithms employed by the

operators of Internet search tools. Put differently, defendants

used the plaintiffs’ marks on their web site, including the

metatags, when they were authorized to do so. When such

authorization was terminated, defendants’ use of the marks

ceased. That Google and other search tools continue to associate

defendants’ web site with plaintiffs’ marks even after the

metatags have been changed may demonstrate a problem with the

methods by which search web sites operate, but that is not an

issue that can be easily resolved by the defendants.

Plaintiffs further argue that defendants’ continued use of

their acronym-based web address, www.nhpwfc.org, is also likely

to confuse consumers because it is identical to that which was

used by the defendants prior to their dissociation from the

plaintiffs. The record does not reflect, however, that

defendants have ever used the acronym “NHPWFC” to identify its

goods or services. While it is true that the plaintiffs operated

under that acronym and maintained a web site with the

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www.nhpwfc.org address while lawfully operating under the

defendants’ trademarks, there is no evidence to support the

contention that the acronym itself has become associated with the

plaintiffs or that plaintiffs have ever used the acronym, or have

any protectible interest in it. Accordingly, plaintiffs have

failed to demonstrate that they are likely to succeed on their

trademark infringement claim.

Plaintiffs have failed to demonstrate a likelihood of

success on their cybersquatting claim for a similar reason. The

Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d)

provides for civil liability if one “registers, traffics in, or

uses a domain name that . . . in the case of a mark that is

distinctive at the time of registration of the domain name, is

identical or confusingly similar to” another mark. Here,

plaintiffs have proffered no evidence that they own or have any

interest in the acronym NHPWFC, which defendants use as their

domain name. Absent such a showing, plaintiffs have failed to

demonstrate that they are likely to succeed on the merits of

their cybersquatting claim.

Having failed to demonstrate a likelihood of success on the

merits of either its trademark or cybersquatting claims,

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plaintiffs are not entitled to a preliminary injunction against

the defendants.

CONCLUSION

For the foregoing reasons, plaintiffs’ motion for a

preliminary injunction against defendants (document no. 2) is

denied.

SO ORDERED.

____________________________

Steven J. McAuliffe

Chief Judge

September 11, 2006

cc: Thomas J. Donovan, Esq.

Adam M. Hamel, Esq.

Michael D. Ramsdell, Esq.

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