Monday, January 07, 2008

TTAB Rejects Parody Claim; Finds "IVY LEAGRO" Confusingly Similar to Famous "IVY LEAGUE" Marks

Boola Boola! The Council of Ivy Group Presidents frustrated Brown graduate Robert R. L. Gray in his attempt to register the mark IVY LEAGRO for goods in classes 16 (printed publications) and 25 (clothing), and for information services in the field of education (class 41). The Board found his mark likely to cause confusion with the marks IVY LEAGUE and THE IVY LEAGUE registered and used for paper products, clothing, and educational services. Council of Ivy Group Presidents v. Gray, Opposition No. 91161051 (December 28, 2007) [not precedential].

The Board began its analysis by finding that Opposer's marks are famous for purposes of the fifth du Pont factor, and it observed that this fame "must be accorded dominant weight in our likelihood of confusion analysis."

Turning to the marks, the Board noted that Applicant Gray "coined the term IVY LEAGRO while an undergraduate student ... as a reference to himself and other African-American students at Ivy League schools." Applicant's expert, a professor of linguistics, testified that "as a result of the coined nature of 'LEAGRO' and the unfamiliarity of the 'RO' suffix, consumers will be easily able to distinguish applicant's mark from those of opposer." He further opined that "because IVY LEAGRO connotes the term NEGRO with its numerous racial overtones, applicant's mark is not likely to be confused with those of opposer."

The Board pointed out, however, that Applicant did not present any evidence regarding the consumer impression of Applicant's mark, but rather submitted only his own testimony and that of his expert, who, "it may be presumed, possesses superior knowledge that that of the average consumer regarding the derivation of words and the impression conveyed thereby." The Board instead found the marks to be highly similar in appearance, sound, connotation, and commercial impression, and that this du Pont factor "heavily favors" Opposer.

"With regard to the marks’ respective connotations, applicant testifies that his mark connotes, among other things, 'the unique experience and values of African-American students within the white-dominated culture of the modern Ivy League.' In other words, applicant's mark conveys a sense of the values and experiences of certain students at opposer’s constituent schools. Thus, it appears that 'Ivy Leagros' form part of a larger group known as 'Ivy Leaguers.'As a result, the marks IVY LEAGRO and IVY LEAGUE and THE IVY LEAGUE convey highly similar connotations, and convey highly similar overall commercial impressions."

As to the goods and services, the Board wasted little time in finding them to be closely related and their channels of trade and potential customers the same.

Applicant submitted a number of third party registrations for marks incorporating the words "Ivy and/or "League," as well as printouts from various websites. However, there was no evidence that the registered marks are actually in use, and no evidence concerning the extent to which those third-party marks are used in commerce.

Finally, Applicant Gray asserted parody as a "defense" to Opposer's 2(d) claim. The Board, however, pointed out that parody is not a defense, but "is simply another factor which is relevant to our analysis of likelihood of confusion because parody is merely another way of arguing that confusion is not likely." Gray himself had "difficulty articulating the meaning of IVY LEAGRO:" "It was a joke." "It was kinda funny/kinda uncomfortable, like a clown crying."

It was not clear to the Board that Applicant uses his mark to parody opposer or any of its goods or services. "[W]e conclude that applicant is using his IVY LEAGRO mark to poke fun and satirize something else in society, including race relations, and privilege versus marginalization in America." According to Professor McCarthy, that is not "parody" of a trademark.

In any case, Applicant did not submit any evidence to support his claim of parody, and therefore the Board refused to consider the parody "factor."

Balancing all the pertinent du Pont factors, the Board sustained the opposition. It declined to reach Opposer's claim of likelihood of dilution.

Text Copyright John L. Welch 2008.


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