Monday, March 12, 2007

Precedential No. 20: Chicago Bears Rebound, De-Claw "12th BEAR" in 2(d) Opposition

The "Monsters of the Midway" showed no ill effects from their recent Super Bowl defeat, as they romped to victory in a Section 2(d) opposition to registration of the mark 12th BEAR for jewelry, bumper stickers, insulated beverage containers, towels, clothing, and ornamental novelty buttons. The Board found the mark likely to cause confusion with the marks BEARS and CHICAGO BEARS, registered and used for entertainment services, paper products, and clothing. Applicant's argument that it was protected by "the doctrine of functionality" fell as flat as a Rex Grossman incomplete pass. Chicago Bears Football Club, Inc. v. 12th Man/Tennessee LLC, 83 USPQ2d 1073 (TTAB 2007) [precedential].

Opposers (the Bears and its licensing agent, NFL Properties LLC) argued that the BEARS marks are famous and that Applicant's goods are "a type consistent with the ancillary goods licensed by professional sports teams."

The Board first noted that, because the parties' goods "are either in part identical, or otherwise related, the key issue is whether applicant's mark is confusingly similar to opposers' BEARS and CHICAGO BEARS marks."

The Board wisely observed that the numerical designation "12th" does not distinguish the marks "inasmuch as it reinforces the connection with the Chicago Bears football team by specifically identifying a particular Bear, i.e., the twelfth Bear." [Applicant admitted that its "12th" marks utilize "the concept of the fan as the 12th player ... in order to involve the team sports fan who is ... the twelfth on a football team."]

The Board concluded that "[t]he similarities between 12th BEAR and BEARS in sound, appearance, meaning, and commercial impressions outweigh their differences." As to CHICAGO BEARS, the descriptive term "Chicago" is "not as significant as the term 'Bears,' and therefore does not distinguish the marks." Moreover, to the extent that the parties goods are identical, the degree of similarity required to support a finding of likelihood of confusion decreases.

Applicant admitted that it intends to market its goods to the same fans and purchasers as those of Opposers' goods. Furthermore, the actual channels of trade overlap, and in light of the low price of many of the items, they must be considered "impulse purchases."

Applicant also admitted that the BEARS mark is famous for entertainment services, but the Board found the fame not so limited: "opposers' BEARS and CHICAGO BEARS marks have acquired significant fame and public recognition for the football exhibition services as well as for ancillary merchandise." [Game over - ed.] This factor weighs "heavily" in opposers' favor.

One of Applicant's principal arguments related to the number of similar marks in use on similar goods. [E.g., the sports teams of Brown and Baylor Universities]. However, there was no evidence of the extent of this third-party use. Applicant argued that it did not intend to mislead purchasers, but the Board observed that "it is not clear" how Applicant's attempt to register a series of twenty "12th" marks for various NFL teams "could have been done in good faith." Nonetheless, the Board refused to find bad faith, since the marks at issue are not identical.

Finally, Applicant made an argument "that appears to raise the issue of functionality." The Board noted that Applicant may not raise this defense without a counterclaim seeking to cancel the involved registrations. Moreover, this case is not similar to Int'l Order of Job's Daughters v. Lindeburg and Co., 220 USPQ 1017 (Fed. Cir. 1984), where widespread merchandising of Job's Daughter's jewelry by third parties led to a finding that the name and emblem were merely "functional aesthetic components of the product, not trademarks."

In any event, the Board rejected Applicant's argument "because it apparently would allow others to register marks that are similar to registered marks in order to show support or hostility to a sports team. American case law simply does not recognize such a right."

"The mere fact that a trademark owner's mark is associated with a movie, television show, university, or sports team does not mean that it is functional and available for others to use to promote their goods when the trademark owner is actively licensing the mark for related items."

The Board concluded that confusion is likely, and it (not surprisingly) sustained the opposition.

TTABlog note: On the same day, the Board also sustained an opposition to this Applicant's similar attempt to register the mark 12th RAVEN for the same goods. Baltimore Ravens L.P. v. 12th Man/Tennessee LLC, Opposition No. 91150925 (February 28, 2007) [not precedential].

Text Copyright John L. Welch 2007.


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