Precedential No. 14: TTAB Sustains Yankees' Dilution Claim Re "THE HOUSE THAT JUICE BUILT"
An augmented panel (seven judges) of the TTAB sustained an opposition to registration of the mark THE HOUSE THAT JUICE BUILT for T-shirts, baseball caps, hats, jackets and sweatshirts, the mark "THE HOUSE THAT JUICE BUILT" for mugs, and the design mark shown immediately below for "T-shirts, baseball caps, hats, jackets and sweatshirts," finding the first two marks likely to cause dilution-by-blurring of the Yankees' registered marks THE HOUSE THAT RUTH BUILT and the third likely to dilute its "Top Hat" design mark. The Board declined to consider applicant's parody defense in its Section 43(c) analysis, because applicant asserted an intention to use the opposed marks as source indicators, which by definition is not a noncommercial use or a "fair use" exempted from a dilution claim. New York Yankees Partnership v. IET Products and Services, Inc., 114 USPQ2d 1497 (TTAB 2015) [precedential].
A plaintiff must establish four elements in order to prove a claim of dilution by blurring:
(1) the plaintiff “owns a famous mark that is distinctive;
(2) the defendant is using a mark in commerce that allegedly dilutes the plaintiff’s famous mark;
(3) the defendant’s use of its mark began after the plaintiff’s mark became famous; and
(4) the defendant’s use of its mark is likely to cause dilution by blurring or by tarnishment." Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1723-24 (Fed. Cir. 2012).
Fame of Top Hat logo: Applicant conceded that opposer's Top Hat logo is distinctive. The Bronx Bombers offered substantial evidence regarding the duration and extent of the advertising of the mark, and the sales of goods and services under the mark. The Top Hat logo has been in use for at least four decades on clothing items, and has been widely displayed on television broadcasts and in promotional campaigns with various well-known brands. The design has been registered on the Principal Register since at least 1976 for baseball-related services and various collateral goods, including drinking cups and apparel. The Board therefore found the Top Hat logo to be famous for dilution purposes.
Fame of THE HOUSE THAT RUTH BUILT: Applicant conceded that the phrase THE HOUSE THE RUTH BUILT, as used by the press and public, is famous as referring to Yankee Stadium, but it contended that the phrase is not famous as a trademark. The Board observed that the first factor for assessing fame is the "duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties." [Emphasis in original]. In addition, the Board has occasionally found that "a nickname or a trade name for a product or service may acquire trademark significance when the public has come to know and use it as such 'even if the company itself has made no use of the term.'" [E.g., AMEXCO, BIG BLUE, and BUNNY CLUB]. Here, opposer had registered and used the mark for licensed merchandise.
The Board found that opposer’s "use of its stadium, which Applicant admits had been known by the nickname THE HOUSE THAT RUTH BUILT since the 1920s, has resulted in widespread recognition of that mark in association with Opposer’s baseball services." Extensive media coverage confirmed the fame of the mark.
The second element of the dilution test requires that defendant be using its mark in commerce, but the Board in Toro Co. v. ToroHead Inc., 61 U.S.P.Q.2d 1164, 1174 (T.T.A.B. 2001), held that the filing of an intent-to-use application satisfied that requirement. As to the third element, the Board found that opposer’s marks became famous before the filing dates of the challenged applications (i.e., their constructive first use dates).
Dilution or Not?: As to the final element of the analysis, whether applicant's marks are likely to dilute opposers' marks, the Board noted that "dilution by blurring occurs when a substantial percentage of consumers, on seeing the junior party’s use of a mark on its goods, are immediately reminded of the famous mark and associate the junior party’s use with the owner of the famous mark, even if they do not believe that the goods come from the famous mark’s owner." UMG Recordings Inc. v. Mattel Inc., 100 USPQ2d 1868, 1888 (TTAB 2011) (citing Toro Co., 61 USPQ2d at 1183).
The Board looked to the six non-exhaustive factors of Section 43(c)(B)(i)-(vi), finding the Top Hat logo to be "sufficiently similar that Applicant’s mark will 'trigger consumers to conjure up' Opposer’s famous mark." Quoting National Pork Board v. Supreme Lobster & Seafood Co., 96 USPQ2d 1479, 1497 (TTAB 2010). Opposer's Top Hat mark is inherently distinctive and the Yankees are the substantially exclusive user of that design. The record, however, lacked evidence from which the Board could determine the degree of recognition of opposer's mark.
Parody: As to applicant's intention to create an association between the marks, applicant claimed that its mark was a parody of the Yankees logo and therefore 15 U.S.C. §1125(c)(3)(A)(ii) "mandates that Applicant's parody is non-actionable." The Board pointed out that this "fair use" exemption in the dilution statute applies to use of a famous mark "other than as a designation of source for the person’s own goods or services." Noncommercial use is also excluded. Here, applicant sought to register its marks as source indicators; it was not proposing merely ornamental, expressive, or noncommercial use. And so the fair use exception was inapplicable here, and this factor favored opposer.
The Board took the opportunity to modify its suggestion in in Research in Motion Ltd. v. Defining Presence Marketing Group Inc., 102 USPQ2d 1187, 1198 (TTAB 2012), that an alleged parody should be considered as part of its dilution analysis even when parody did not provide a "safe harbor" for a defendant.
We now choose to not consider the parody defense as part of the assessment of the dilution claim, because, as discussed supra, a mark that identifies source – which it must for registration – will not concurrently qualify for a statutory exclusion to a dilution claim. Stated another way, when an applicant’s mark is registrable, because it is being used in commerce to indicate source, such use is not a noncommercial use or fair use. Thus, given the circumstances generally presented by opposition and cancellation proceedings based on allegations of dilution, we find it virtually impossible to conceive of a situation where a parody defense to a dilution claim can succeed in a case before the Board.
Finally, there was no evidence of an actual association between the marks, but then the opposed applications were based on intent-to-use and applicant had sold only 22 shirts, thus minimizing the opportunity for actual association to occur.
The Board concluded that the first, second, third, and fifth factors favored a finding of dilution, while the fourth and sixth were neutral. The Board ruled that Applicant’s design mark "would impair the distinctiveness of Opposer’s top hat design marks and would not constitute a non-source-indicating fair use parody."
As to the mark THE HOUSE THE RUTH BUILT, the Board's dilution analysis was similar to that above. The first, second, fourth, and fifth factors favored the Yankees, while the third and sixth were neutral.
Applicant claimed that the Yankees' mark was diluted due to seven similar marks that were registered or in use: THE HOUSE THAT ROCK BUILT, THE HOUSE THAT FRIED CHICKEN BUILT, THE HOUSE THAT JACK BUILT, WELCOME TO THE HOUSE THAT SEAFOOD BUILT, THE HOUSE THAT LOVE BUILT, THE HOUSE THAT FAME BUILT, and THE HOUSE THAT SERVICE BUILT. The Board observed, however, that registrations are not evidence of use, and applicant's Internet evidence lacked proof of the nature and extent of use of the third-party marks. Moreover, "[a] limited amount of third-party use is insufficient to defeat a showing of substantially exclusive use." McDonald’s Corp. v. McSweet, LLC, 112 USPQ2d 1268, 1289 (TTAB 2014).
And so the Board sustained the opposition on the ground of dilution, declining to reach opposer's Section 2(a) false association and Section 2(d) likelihood of confusion claims.
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TTABlog note: IMHO, Babe Ruth is the greatest baseball player of all time. Any dissent? What if the designated hitter rule had applied in his day? Would Babe have merely been the greatest left-handed pitcher of all time?
Text Copyright John L. Welch 2015.