Divided TTAB Panel Sustains Iowa's Opposition to Eagle's Head Design Mark of Southern Mississippi

In a 54-page decision, the high points of which will be noted here, a divided Board panel sustained the University of Iowa's opposition to registration of Southern Mississippi's "eagle's head" design mark shown below left (lined for the color gold), for a variety of products falling in 12 classes, on the ground of likelihood of confusion with Iowa's registered "hawk's head" design mark shown below right (no color claim) for various goods in eight classes, and with Iowa's common law (yellow) design marks shown slightly further below. The panel majority (Judges Bucher and Kuhlke) found that the similarities between the marks outweigh the minor differences. In a brief dissent, Judge Wellington opined that, in light of the use of various "bird-head designs" by numerous sports teams, consumers are accustomed to look for distinguishing features in such marks and will notice the specific differences in the marks at issue. The University of Iowa and The Board of Regents, State of Iowa v. The University of Southern Mississippi, Opposition No. 91164745 (July 29, 2011) [not precedential].

Southern Mississippi (left). Iowa (right).

Iowa's common law marks
The Board began by ruling that Opposers' Hawkeyes marks "are at least well-known in the field of national collegiate sports and, as such, must be accorded a wider scope of protection." The Board noted that each of the universities is "best known within their respective regions of the country," but Iowa has been "afforded regular nation-wide exposure via several different sports programs and networks."

Considering the involved goods, the various collateral products of the parties are either legally identical or closely related. This factor "weighs strongly" in Opposers' favor. The Board also found that the goods are or would be marketed in the same trade channels to identical customers: for example, both teams have merchandise offered on the same websites and in brick-and-mortar stores across the country, like Wal-Mart, Target, etc.

As to the conditions of purchase, the most enthusiastic fans may be able to distinguish the marks, but other persons (like relatives or friends who are purchasing gifts) may not be "necessarily attuned to minor differences between somewhat similar sports teams' logos." And so this factor also favored Iowa.

Turning to the marks, Mississippi contended that the marks are radically different in commercial impressions. The Board, however, was not persuaded, observing that a side-by-side comparison is not the proper test under Section 2(d). One must consider the consumer who, lacking perfect recall of the details of each mark, sees the respective marks on different occasions.

The Board noted once again that, when the goods are identical, a lesser degree of similarity in the marks is necessary to support a finding of likely confusion. It concluded that the similarities between these marks outweigh the minor differences:

Both parties’ marks present the head of a bird of prey facing right, and basically oval in shape. Both contain identical colors. These images are very similar to each other in style and proportion. They both involve a bold profile image of the head of a large bird.

Applicant attempted to weaken the scope of Iowa's marks (under the sixth duPont factor) by pointing to many bird-head designs (mostly eagles or hawks) on the marketplace. The Board agreed that such birds of prey are "popular mascots for collegiate and professional sports teams." However, that does not mean that every bird-head mark is weak. "Iowa should be able to establish a reasonable zone of protection around its Hawkeye marks in spite of the existence of many other representations of bird heads."

Despite the lack of evidence regarding the sales, advertising, and exposure of these other marks, the Board nonetheless examined the marks in some detail. It found a variety of possible designs, but none were as similar to Iowa's marks as is Applicant's mark. In short, while these third-party marks may "narrow somewhat" the scope of Iowa's marks, that is not sufficient to overcome the other duPont factors.

Iowa pointed to several instances of actual confusion, but the Board noted that they did not involve "actual consumers." Nonetheless, these incidents are at least "illustrative of how and why confusion is likely."

Finally, the Board noted that Applicant Mississippi failed to exercise care in adopting its particular mark, essentially ignoring comments "about how similar its new logo was to Iowa's marks." This fact weighed against Applicant under the 13th duPont factor.

And so the panel majority found confusion likely and it sustained the opposition. Judge Wellington disagreed as to the analysis under the sixth duPont factor, as noted above, and would have dismissed the opposition.

TTABlog comment: I went to college at Illinois (hence the trademark orange-and-blue colors of this blog), so there is no way I can side with Iowa, in this case or anything else, ever.

Text Copyright John L. Welch 2011.