Thursday, December 16, 2004

TTAB Hands Alabama and Auburn "IRON BOWL" Defeat

The Iron Bowl is purportedly the most intense intrastate collegiate football rivalry in the nation. [And I thought it was Illinois v. Northwestern for the "Sweet Sioux Tomahawk" Trophy!] But both Alabama and Auburn came up losers in their attempt to register the Iron Bowl logo because they ran afoul of Rule 2.51(a), which requires that the drawing of the mark be a "substantially exact representation" of the mark as used. In re The Board of Trustees of The University of Alabama and Auburn University, Serial No. 76143855 (November 29, 2004) [not citable].
These joint applicants sought to register the mark shown above on the left for t-shirts and for entertainment services. However, the specimen for the t-shirts displayed the mark as shown on the right, which brought up the issue of "mutilation:" i.e., whether the mark sought to be registered is an incomplete representation of the mark as actually used. The Board of Trustees argued that the "Iron Bowl" is a "widely-known, century-old football game between joint applicant the University of Alabama and Auburn University," that the elephant head design is used by Alabama and the tiger eyes by Auburn, and therefore that consumers will recognize those designs as marks separate and distinct from the IRON BOWL and design mark.

The TTAB noted that the issue of mutilation comes down to "a judgment as to whether that designation for which registration is sought comprises a separate and distinct 'trademark' in and of itself." Here, the Board had no problem with the omission of "ALABAMA VS AUBURN" and the date, "because the omission of these elements does not disturb the overall integrity of the design." However, the portion of the design "left after the animal head designs have been extracted does not create a distinct commercial impression apart from the deleted elements and does not function without those elements on its own as a separate design. *** [T]he extraction of the two animal head designs leaves physical holes in the football, thereby destroying the visual integrity of the background design as a composite whole."

The specimens for the class 41 entertainment services raised a different issue: the addition of elements to the drawing The specimen of use did not show the concentric oval design with the triangle at the top or the wording "ALABAMA VS AUBURN." Instead it looked, more or less, like this:

The Board concluded that the additional elements "are significant enough to indeed change the overall commercial impression of the mark." "The concentric oval and triangle composite is an entirely new and different design feature that stands out from the football and other elements of the mark and creates an obvious visual disparity between the mark in the drawing and the mark as shown in the Class 41 specimens."

As to Illinois v. Northwestern, I'm sorry to say that NU kept the Sweet Sioux Tomahawk for another year after defeating the Fighting Illini 28-21 on November 20th.

Sweet Sioux Tomahawk


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