Wednesday, March 28, 2007

Precedential No. 23: Nike Blocks WNBA's Shot at Registration of "S and Star Design"

In a case perhaps notable because it concerns the likelihood of confusion between two "letter and design" marks, the Board sustained an opposition to registration of the mark shown immediately below for athletic bags and clothing, finding the mark likely to cause confusion with the registered marks "S and Star Design" for clothing and "S STARTER and Star Design" for athletic bags (both marks shown further below). Nike, Inc. v. WNBA Enterprises, LLC, 85 USPQ2d 1187 (TTAB 2007) [precedential].

The applied-for mark is used by the WNBA as a trademark of the San Antonio Silver Stars basketball team. Opposer Nike, through its predecessors, has been using its "S and Star logo" since 1980 in connection with clothing and sports bags. The Board, in a 37-page opinion, dribbled its way through the du Pont factors and found the marks to be similar and the goods identical or closely related.

Opposer Nike claimed to own a family of "S and star design" marks, but once again the Board found the proofs inadequate to establish a family. "We have insufficient evidence that opposer has promoted any number of its claimed marks together to the public." In any case, the Board observed, the existence of a family doesn't matter much here, since the WNBA is seeking to register "the exact feature that opposer claims is the basis of the family," and Nike owns registrations for the claimed family feature.

Applicant WNBA argued that "the sophistication of sports consumers precludes the likelihood of confusion." [TTABlog comment: LOL! Ever listen to WEEI in Boston?]. Although the parties argued over the nature of their respective customers, the Board pointed out that the involved applications and registrations have no restrictions vis-a-vis classes of purchasers. Thus, the Board must assume that the goods "reach all the usual classes of consumers, including ordinary consumers."

Nike claimed that its marks are famous in light of 20 years of use and billions of dollars in sales. However, the Board could not determine the significance of those figures because Nike offered no evidence of its market share. Raw numbers do not suffice, and sales figures may not reflect awareness or recognition of the mark applied to the product. In sum, the evidence fell short of establishing fame, but it did show that the "S and Star design" mark "has achieved at least some degree of recognition and strength in the market and ... is therefore entitled to a broader scope of protection than might be accorded a less distinctive mark."

As to the parties' "S and Star" marks, the Board found them similar in appearance, and sounding the same when spoken. And they have the same overall commercial impression. The fine distinctions between the marks offered by Applicant WNBA were not significant.

The WNBA tossed up six third-party registrations for various "S and Star design" marks, but failed to even hit the rim. The Board noted that the existence of these registrations does not evidence use, nor does it establish the public's familiarity with the marks. Moreover, the marks were "markedly" different in appearance from the marks at issue here.

Turning to Nike's "S STARTER and Star design" mark, the Board found that, notwithstanding the additional word STARTER in Opposer's mark, the overall similarities between the marks outweigh their differences. The S and Star portion is still a "significant component of opposer's composite mark and it creates a strong visual impact apart from the word STARTER."

Finally, the WNBA pointed to the lack of actual confusion during the three years that the marks have coexisted. The Board, however, noted that "the evidence in this case is not sufficient to show that a meaningful opportunity for actual confusion has existed."

Observing that any doubt must be resolved in favor of the registrant, the Board blew the final whistle as Nike coasted to victory.

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Text Copyright John L. Welch 2007.


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