Monday, March 17, 2014

Precedential No. 9: MINERS For Professional Baseball Goods Confusable With MINERS For Collegiate Sports Goods

Sixteen months after oral argument, the Board sustained two oppositions to registration of the mark MINERS, in standard characters and design form (below), for various printed materials related to professional baseball, in class 16, and "professional baseball imprinted clothing" in class 25. The Board found the marks likely to cause confusion with the registered mark MINERS owned by the University of Texas System and used by the University of Texas at El Paso, for "printed programs for college sporting events and media guides" and for "college imprinted clothing." The Board of Regents, The University of Texas System v. Southern Illinois Miners, LLC, 110 USPQ2d 1182 (TTAB 2014) [precedential].


The University of Texas at El Paso (UTEP) plays 16 collegiate sports, but it has not fielded a baseball team in 20 years. As a result of a prior TTAB proceeding, it has a license agreement with Missouri S&T (f/k/a the University of Missouri at Rolla) that allows MS&T to use the mark MINERS for college entertainment services and for "college imprinted goods" in seven Midwestern states (including Missouri and Illinois). The MS&T baseball team operates under the licensed MINERS mark.

Applicant is a minor league baseball team from Marion, Illinois, that plays in the Frontier League under the name MINERS. The Frontier League consists of teams from six Midwestern states, including Illinois and Missouri.

The Marks: The Board, not surprisingly, found the word MINERS to be the dominant portion of Applicant's design mark, and therefore similar to UTEP's mark in sound, appearance, meaning, and overall commercial impression.

The Goods: As we know, the greater the similarity between the marks at issue, the lesser the degree of similarity required between the goods to support a finding of likely confusion. Both parties offer, under their respective marks, programs for athletic events and guides for media use, and both offer shirts, hats and baby clothes.

Although most of the class 16 goods listed in UTEP's registration are for "college sporting events," the term "media guides" is not so limited. Nothing in the record clarified how the meaning of this term might be different for collegiate sports teams and professional sports teams. Therefore the Board found that UTEP's "media guides" are not only closely related to applicants "printed guides in the field of professional baseball for media use," but are legally equivalent.

As to the class 25 goods, the question was whether the terms "college imprinted" and the term "professional baseball imprinted" distinguish the goods. The Board took these words to mean merely that the goods will have one of the marks printed on them. There was no evidence to support applicant's assertion that "college imprinted" clothing must bear the school name, or be offered in traditional team colors, or be accompanied by a hangtag or sticker stating "Officially Licensed Collegiate Product." In short, the language "college imprinted" and "professional baseball imprinted" did not distinguish the goods "in any meaningful way."


Trade Channels: Because the class 16 goods of the parties are highly similar, the Board must presume that they travel through the same channels of trade to the same classes of consumers. Even if the term "media guides" in UTEP's registration were modified by the term "collegiate," nothing in the record suggests that they would not be distributed in the same media as applicant's "printed guide in the field of professional baseball for media use." [Wouldn't it be opposer's burden to prove that they do move in the same channels? - ed].

As to the class 25 goods, applicant asserted that its clothing items are sold only online and at its stadium, basically to fans of the Frontier League, whereas UTEP's goods are primarily sold in the Conference USA region to UTEP fans. Irrelevant, said the Board, since there are no such restrictions in the involved applications or cited registrations.

Other duPont Factors: Although the fans of the two parties may exercise care in purchasing the items at issue, the Board could not presume that these are the only purchasers. Some may purchase the goods for other personal reasons, perhaps simply because they like the look of the goods. Moreover because the involved marks are so similar, even sophisticated purchasers might be confused as to source.

Applicant argued that the existence of the MS&T license weakened opposer's mark since it allowed two colleges to use the same mark simultaneously in overlapping areas. Although skeptical about whether "this sort of agreement between otherwise unrelated universities is indeed a trademark license that indicates to consumers one source and one quality standard," the Board did not find sufficient evidence to require a downgrading of the strength of opposer's marks.

Finally, the lack of evidence of actual confusion was not significant because applicant had been in operation for only two years before discovery closed (in 2009). And opposer's assertion of bad faith went nowhere, since there was no evidence that applicant adopted its mark with an intent to trade on UTEP's marks. In fact, the evidence showed that applicant chose the name MINERS as a tribute to the coal mining tradition in Southern Illinois.

Resolving any doubt in favor of the prior user and registrant, the Board found confusion likely and it sustained both oppositions. It found it unnecessary to reach opposer's dilution claims [which in all probability would have failed for lack of proof of fame].

Counterclaims: The Board then took up applicant's Section 18 petitions to restrict five of UTEP's pleaded registrations (but not the registration for the word mark MINERS in class 25), by adding certain restrictions like "excluding college baseball" in two registrations, and "college imprinted" in one. The Board pointed out, however, that to be acceptable a proposed restriction under Section 18 must be "commercially significant."

"A restriction is 'commercially significant' if its entry would avoid a finding of likely confusion or if the registrant has set forth its goods in terms that overstate the range of goods or the trade channels in which those goods move, so that fairness demands that an appropriate restriction to the registration be entered."

The Board concluded that the restrictions proposed by applicant were not commercially significant. First, as to four of the registrations (the non-word mark registrations), the Board did not consider them in reaching its decision. Therefore, the proposed restrictions of those registrations would not have changed the result here, and therefore would not be commercially significant.

With regard to UTEP's class 16 word mark registration, applicant proposed to amend "printed programs for college sporting events and media guides" to "printed programs for college sporting events (excluding college baseball) and media guides." However, applicant provided not argument or analysis as to why this restriction would avoid a likelihood of confusion. Nor did fairness demand such a restriction.

It is undisputed that opposer sponsors several college sports teams, and we do not believe fairness demands, in such circumstances, that opposer's registration be restricted under section 18 to itemize certain, or all, of the sports for which it does not sponsor an intercollegiate team."

And so the Board denied the Section 18 counterclaims.

Read comments and post your comment here.

TTABlog note:  If you were to seek review of this decision, what route would you choose? The CAFC or the district court?

Text Copyright John L. Welch 2014.

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