Wednesday, July 09, 2008

Precedential No. 36: Finding Specimen Doesn't Match Drawing, TTAB Affirms Refusal of "UPPER 90" for Clothing

In its attempt to register the mark UPPER 90 for various clothing items, Applicant Yale Sportswear Corp. was shown a red card because it violated Trademark Rule 2.51(b), which states that "the drawing of the mark must be a substantially exact representation of the mark as used on ... the goods ...." Yale's specimen of use (the hangtag shown immediately below) includes a degree symbol after "90", a difference that, according to the Board, "substantially changes the overall impression of the mark." In re Yale Sportswear Corp., 88 USPQ2d 1121 (TTAB 2008) [precedential].

Yale provided two declarations, one from its marketing director and the other from a soccer coach and player, asserting that "in the soccer world, the ordinary consumer of the goods in this case, the addition of [the degree symbol] to UPPER 90 would not constitute a material alteration of the mark." They asserted that the term UPPER 90, with or without the degree symbol, would be recognized as referring to "the upper corner zones formed by the crossbar" of the goal.

The Board, however, found the degree difference to be material:

"Without the degree symbol, it is unclear what the '90' in the drawing might refer to. However, when viewed on applicant's specimens of use, the degree symbol in the mark would clearly be perceived as modifying the preceding number, making clear that its meaning is 'ninety degrees,' indicating that it refers to either an angle or a temperature. As such, the mark might possibly suggest to the potential purchaser that applicant's sports clothing is made for playing in especially hot weather, or indeed that the mark refers to an angle, as applicant contends."

The Board concluded that the mark in the specimen has a different connotation, pronunciation, and appearance than the mark in the drawing. Moreover, UPPER 90 "cannot be severed from the degree symbol without altering the meaning, pronunciation, and, to some extent, the appearance of the mark."

Applicant's declarations did not help because the viewpoints expressed therein were "not that of the average consumer." Both declarants are "experienced athletes of goal sports - soccer players in particular - who are familiar with the term UPPER 90 (or UPPER 90°), and would recognize the two to be equivalent." But the Board must consider the goods as identified in the application, where there are no limitations as to classes of customers, channels of trade, or intended uses for the goods. Accordingly, the Board "may not presume that applicant's purchasers are soccer players or athletes."

In short, there was no evidence that "members of the general public are familiar with the term 'Upper 90' or 'Upper 90°,' let alone view them as 'substantially exact.'"

The Board therefore affirmed the refusal.

TTABlog query: Wouldn't people who are unfamiliar with soccer and other goal sports see the two versions of the mark as referring to a temperature in the upper 90s? So even for non-aficionados of soccer, ice hockey, field hockey, lacrosse, polo, and other goal sports, wouldn't the addition of the degree sign make no difference anyway? Isn't the Board being a bit too hypertechnical here? I mean, come on! Give these guys a break!

I wonder if those non-aficianados might view the supposed degree symbol as an R-in-a-circle symbol, but without the "R". Once the mark is registered, the "R" would be inserted. So either version would be read as UPPER 90.

Text Copyright John L. Welch 2008.


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