CUBNOXIOUS Confusable with (Chicago) CUBS for Shirts, Says TTAB

Those obnoxious Chicago Cubs are back again, this time successfully opposing an application to register the mark CUBNOXIOUS for "shirts." The Board found that Ronald Mark Huber's application was void ab initio due to lack of bona fide intent, and further found a likelihood of confusion with the registered marks CHICAGO CUBS (CHICAGO disclaimed), MR. CUB, CUBS, CUBBIES, and THAT’S CUB for shirts and other clothing items. Chicago Cubs Baseball Club, LLC v. Ronald Mark Huber, Opposition No. 91232736 (May 3, 2019) [not precedential] (Opinion by Judge Cynthia C. Lynch).

Lack of Bona Fide Intent: Mr. Huber had "essentially no supporting documentary evidence" contemporary with the filing date of his application, January 19, 2016. During discovery, he produced a single, undated document constituting "lettering ideas that I might use on a product in commerce." (see below).

In his discovery responses, Huber stated that he selected the mark "for potential future use. No specific date was set for date of intended use." He further stated that the nature of his intended use was "undetermined at this time." And he failed to show that he had any established business or relevant experience that might suggest a bona fide intent.

Applicant presented no persuasive evidence to overcome the prima facie case, and other evidence corroborates the lack of bona fide intent by suggesting that he filed his intent-to-use application merely to reserve a right in the mark "for potential future use." We conclude that Opposer has established this Section 1(b) ground of opposition, such that the application is void ab initio.

Likelihood of Confusion: The Board found the Cubs' marks to be commercially strong. Of course the involved goods overlap, and therefore the channels of trade and classes of consumers for these overlapping goods must be presumed to be the same. But what about the marks? Are consumers likely to believe that shirts sold under the CUBNOXIOUS brand name emanate from, or are sponsored or approved by, the Chicago Cubs? Yes, said the Board.

The Board found that Cubs fans are characterized by some as "obnoxious." In fact, Cubs fans are occasionally referred to on social media as "cubnoxious." A Yelp user review of an event at a Chicago park also referred to avoiding "Cubnoxious Drunkards." The Board bought opposer's unsupported argument that "the CUBNOXIOUS designation at issue in this case would surely be taken by many as a badge of honor that fits quite comfortably within the Club’s creative and expansive merchandising program, which already offers a wide variety of different marks, designs, stylizations, themes and imagery among its selection of officially licensed products." [There was apparently no evidence that any of the Cubs' marks, designs, etc., were self-disparaging of the team or its fans].

The Board, in a questionable leap of logic, found the Cubs’ evidence "convincing to demonstrate that the connotation and commercial impression of Applicant’s mark is similar to Opposer’s marks."

And so the Board sustained the Cubs' Section 2(d) claim.

Read comments and post your comment here.

TTABlog comment: Could there be a clearer case for lack of bona fide intent? Why didn't the Board just stop there?

Text Copyright John L. Welch 2019.