Thursday, October 29, 2015

Precedential No. 39: TTAB Dismisses 2(a) False Association Claim: MARATHON MONDAY vs.BOSTON MARATHON

The Board dismissed this Section 2(a) opposition to registration of the mark MARATHON MONDAY for various clothing items, ruling that applicant's mark does not falsely suggest a connection with Opposer's name or identity. Boston Athletic Association v. Velocity, LLC, 117 USPQ2d 1492 (TTAB 2015) [precedential].

To establish a claim of false suggestion of a connection under Section 2(a), Opposer BAA had to prove "(1) that MARATHON MONDAY is, or is a close approximation of, Opposer’s name or identity,as previously used by it or identified with it; (2) that Applicant’s mark, MARATHON MONDAY, would be recognized as such by purchasers of Applicant’s goods, in that it points uniquely and unmistakably to Opposer; (3) that Opposer is not connected with the goods that are sold or will be sold by Applicant under its MARATHON MONDAY mark; and (4) that Opposer’s name or identity is of sufficient fame or reputation that when used by Applicant as a mark for its goods, a connection with Opposer would be presumed."

Opposer attempted to show that the name of the race, BOSTON MARATHON, identifies the entity known as the Boston Athletic Association, or BAA, and that MARATHON MONDAY is a close approximation of BOSTON MARATHON. There was no dispute that the term "Boston Marathon" is well-known as identifying a marathon taking place annually in Boston, Massachusetts, for the past 117 years on the third Monday in April. "Given the magnitude and longevity of the event," the Board found that the Boston Marathon "is so well known that it is inevitable that over the course of more than a century, it has been associated with its organizer, the BAA." Even if the public does not know the name of the entity that organizes the race, they will understand that "an alternative name represents the association." [Citing In re Urbano, finding that although the Olympic Games, per se, are not an "institution," SYDNEY 2000 falsely suggested a connection with the Olympic Games taking place that year in Sydney, Australia].

The Board therefore found that "Boston Marathon" is perceived as a name or identity of the Boston Athletic Association.

However, the evidence failed to show that MARATHON MONDAY is a close approximation of BOSTON MARATHON. To prove such proximity, the similarity between the terms must be "akin to that required for a likelihood of confusion under Section 2(d)." The Board concluded that, although both marks include the common word "marathon," the applied-for mark is not a close approximation of MARATHON MONDAY.

Nor did MARATHON MONDAY directly qualify as the identity of identify Opposer BAA. Although there was evidence of the BAA's use of "Marathon Monday" to identify its race, there was insufficient evidence to establish that the public recognizes that term as identifying "not merely the race, but the entity that organizes the race."

In other words, the fact that the Boston Marathon is annually held on the third Monday in April may be generally known by the consuming public, but it has not been shown that MARATHON MONDAY is a recognized name or identity of the commercial entity responsible for the Boston Marathon.

Thus BAA's claim failed under the first prong of the Section 2(a) test.

Turning to the second prong, the BAA also failed to show that MARATHON MONDAY points uniquely to the BAA. Applicant's evidence established that other entities use "Marathon Monday" to refer to other marathons, including the ING New York City Marathon, or to refer to the Monday after a marathon. In light of this evidence, the Board concluded that the term MARATHON MONDAY does not point uniquely and unmistakably to Opposer BAA.

Finding it unnecessary to analyze the third and fourth prongs of the Section 2(a) test, the Board dismissed the opposition.

Read comments and post your comment here.

TTABlog comment: Where do you think Velocity sells its goods?

Text Copyright John L. Welch 2015.


At 11:21 AM, Blogger Carole Barrett said...

Just a wild guess, but maybe just maybe at the Boston Marathon.


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