TTAB Grant MLB's Section 2(d) Petition for Cancellation of Registration for MAJOR LEAGUE ZOMBIE HUNTER & Design for Clothing

The Board granted Major League Baseball's petition for cancellation of a Supplemental Registration for the mark shown first below, for "clothing, namely, short and long sleeve t-shirts, sweatshirts,v jackets, baseball hats, and beanies," finding it likely to cause confusion with the registered mark shown second below, for "shirts." The Board found MLB's mark to be commercially strong and entitled to a broad scope of protection. Major League Baseball Properties, Inc. v. Christopher Webb, Cancellation No. 92060903 (July 18, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).

Strength of Petitioner' s Marks: Petitioner MLB claimed that its logo mark and the mark MAJOR LEAGUE BASEBALL are famous, but the Board noted that a party that claims fame must  clearly prove it. The evidence established that the MAJOR LEAGUE BASEBALL mark has been in use for 100 years and the logo for 50 years, that the marks are widely licensed, that goods bearing the marks are sold in many national retailers, and that the marks have received extensive, unsolicited media coverage. The Board concluded that the marks are "commercially strong, if not famous."

The Goods: MLB's marks are registered for shirts, which encompass Applicant Webb's t-shirts. Moreover, as to MLB's entertainment services, the Board noted that it is common for "commercial trademarks" to be licensed for collateral products. Since the goods in the application and MLB's registrations overlap, the Board must presume that they travel through the same channels of trade to the same classes of consumers.

The Marks: Since the involved goods are in part identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. The Board focused on MLB's logo mark, since "if the petition cannot be granted on the basis of this registered mark, it could not be granted on the basis of the other pleaded registrations."

The Board found that the overall commercial impressions of the two marks outweigh any specific dissimilarities that might be apparent on a side-by-side comparison.

Under these circumstances, it is not unreasonable to assume that consumers encountering Respondent’s t-shirts displaying a mark which possesses marked similarities in appearance, sound, and commercial impression as Petitioner’s mark would likely mistakenly assume that the t-shirts originate from or are sponsored by the same source. That is, consumers could assume that Petitioner modified its MAJOR LEAGUE BASEBALL mark to play on popular entertainment trends such as movies featuring zombies.

The Board noted that a party's actual use of its mark may be relevant to demonstrate that the mark projects a confusingly similar commercial impression. It observed that Respondent's actual use of its registered mark is "remarkably similar" to MLB's actual use of its mark. "Both feature a central figure with a baseball cap in white against a background that is red to the right of the figure and blue to the left, all of which is surrounded by a band of white. In addition, the wording in both marks begin[s] with MAJOR LEAGUE"

The Board concluded that the marks are similar in appearance, sound, and commercial impression.

Conclusion: Noting that there is "no excuse for even approaching the well-known trademark of a competitor," the Board granted the petition for cancellation.

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TTABlog comment: I'm not convinced that confusion is likely between the two logos. MAJOR LEAGUE SOCCER and MAJOR LEAGUE LACROSSE both co-exist with MAJOR LEAGUE BASEBALL, so the words MAJOR LEAGUE ZOMBIE HUNTER should be okay. As to the logos, I think it's a bit of a stretch to find that consumers would think that MLB is associated with the applied-for mark because of the broad-brush similarities in the logos. Dilution would seem a better fit, but MLB apparently couldn't clear the fame hurdle.

Text Copyright John L. Welch 2018.