TTAB Dismisses 2(d) Opposition to ANTARCTIC ICE MARATHON Due to Failure to Prove Priority
The Board dismissed this opposition to registration of the mark shown below, for clothing and event services [ANTARCTIC ICE MARATHON & 100K and the geographic representation of Antarctica disclaimed], finding that, as to Opposer Marathon Tours' Section 2(d) claim, opposer failed to prove priority for its alleged mark ANTARCTICA MARATHON, and as to its fraud claim, opposer failed to prove, or even allege, an intent to deceive the USPTO. Marathon Tours, Inc. v. Richard Donovan, Opposition No. 91214916 (February 14, 2017) [not precedential].
Opposer Marathon Tours created and organized the Antarctica Marathon in 1995, held in the Shetland Islands. Due to environmental restrictions, only one or two hundred runners participated in any year. Revenues were about $1.3 million in 2007, and about $1.9 million in 2015. Unsolicited media coverage has been limited and sporadic.
Applicant Donovan has been organizing his event since 2006. His races occur in the interior of the Antarctic, and his event has been featured on American media.
Section 2(d) Priority: Marathon Tours relied on its alleged common law rights to prove priority. It therefore had to prove that its mark was distinctive, either inherently or via acquired distinctiveness, and that it had priority of use. The Board noted that opposer had applied to register ANTARCTICA MARATHON and had claimed acquired distinctiveness under Section 2(f). [The application was blocked by Mr. Donovan's application]. That was an admission by Marathon Tours that its alleged mark was not inherently distinctive.
As to acquired distinctiveness, the Board found ANTARCTICA MARATHON to be highly descriptive, and therefore opposer had a higher burden to show acquired distinctiveness. [Note: the Shetland Islands are not in Antarctica, but the Board declined to consider the misdescriptiveness issue].
Although Marathon Tours began offering the relevant services in 1995, the ANTARTICA MARATHON race did not become a regular and annually-recurring event until 2008. Media recognition consisted of four media articles during the period 1995-2007, all before the race became an annual event. Applicant Donovan, on the other hand, began offering his race in 2006 and has been offering it annually and regularly ever since. It attracted unsolicited media attention from the git-go, and the attention has continued to the present at a scale that far outpaces the media attention for opposer's race.
The Board concluded that Marathon Tours had failed to show both that use of its mark is substantially exclusive and that the mark had acquired distinctiveness. Thus opposer cannot show priority, and its Section 2(d) claim must fail.
Fraud: Marathon Tours alleged that applicant Donovan never operated or conducted its marathon races "in commerce regulated by the United States," and he therefore made a knowingly false statement upon with the USPTO relied.
However, Marathon Tours failed to allege, nor did it offer any proof, that applicant's statements (even if false) were made with the intent to deceive the USPTO. [Applicant Donovan testified that he targets US customers and offers his services in the USA]. Therefore, opposer's fraud claim failed as well.
And so the Board dismissed the opposition.
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TTABlog comment: Looks like we have two entities using similar, descriptive marks for nearly the same services. Sounds like the recent CHICAGO STAGEHAND case. But at least there the stagehands were in Chicago.
Text Copyright John L. Welch 2017.