Friday, December 07, 2007

Precedential No. 65: Parties Stipulate to Record, TTAB Finds "ULTIMATE POLO" Lacking in Acquired Distinctiveness for Shirts

The parties to this opposition stipulated to the entire record, including various documents and 13 paragraphs of facts, reserving the right to object on the basis of relevance, materiality, and weight. The Board sustained Target's 2(e)(1) opposition, finding the mark ULTIMATE POLO for sun-protective shirts lacking in acquired distinctiveness. Target Brands, Inc. v. Hughes, 85 USPQ2d 1676 (TTAB 2007) [precedential].

Applicant sought registration under Section 2(f), claiming acquired distinctiveness based on its use of the ULTIMATE POLO mark since 1992 and its "substantial" sales and advertising figures.

Opposer Target Brands, Inc. is the owner of all intellectual properly rights of Target Corporation. Since 2005, the latter has marketed and sold polo shirts described as "ultimate polo." Numerous third parties have also used "ultimate polo" and "ultimate" as descriptive terms in connection with polo and other types of shirts.

The Board first found that Opposer has standing to oppose because it is in privity with Target Corporation and "is charged with managing and protecting Target's rights, including in the case of a merely descriptive designation the right to the unfettered use of the language in describing the polo shirts which Target markets as 'ultimate polo' in competition with Applicant." [TTABlog query: is this an intellectual property right?]

"Because opposer is obligated to protect Target's right and ability to compete with applicant, any harm resulting to Target from registration of ULTIMATE POLO would harm opposer. Therefore, opposer has standing to demonstrate that applicant is not entitled to registration because Target is entitled to use 'ultimate polo' descriptively in the sale of polo shirts."

Because Applicant sought registration under Section 2(f), mere descriptiveness was conceded and the issue became whether the mark ULTIMATE POLO had acquired distinctiveness. The Board said "no" for two reasons: (1) the mark is "highly descriptive" and "more evidence than applicant has submitted, especially in the form of direct evidence from customers, would be necessary to show that the designation has become distinctive of applicant's goods"; and (2) Applicant's use of the mark has not been substantially exclusive, in light of the Target and third-party uses.

The Board therefore sustained the opposition.

TTABlog note: I am informed that the Board deemed this decision "precedential" at least in part because the parties reached a stipulation as to the entire record. The Board felt that this is an approach that parties should consider and discuss when, under the amended rules, they have their discovery conference. That may, however, be too early for the parties to actually agree on the specific evidence, but at least the parties might agree to explore the idea of a stipulated record.

Text Copyright John L. Welch 2007.


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