Monday, July 29, 2013

Precedential No. 31: TTAB Dismisses U. Alabama Opposition to HOUNDSTOOTH MAFIA & Design for Clothing

In a 78-page opinion, the Board dismissed this opposition to registration of the mark depicted below for "shirts, caps" [HOUNDSTOOTH disclaimed], denying opposers' claims of likelihood of confusion under Section 2(d), and false suggestion of a connection and disparagement, both under Section 2(a).  Opposers based their opposition principally on the alleged extensive use of a houndstooth pattern that identifies Coach Paul "Bear" Bryant and the University of Alabama’s goods and educational and athletic services. The Board of Trustees of The University of Alabama and Paul W. Bryant, Jr. v. William Pitts, Jr. and Christopher Blackburn, 107 U.S.P.Q.2d 2001 (TTAB 2013) [precedential]. [NB: This decision was vacated on March 3, 2016, in compliance with an Order issued by the U.S. District Court for the Northern District of Alabama (TTABlogged here)].

Likelihood of Confusion: Although Coach Bryant was recognized for wearing patterned fedoras at the University’s football games, that fact "does not endow either Coach Bryant (including his estate) or the
University with trademark rights in the Houndstooth Pattern. There is no evidence that Coach Bryant ever used the Houndstooth Pattern as a trademark in connection with products or services." Therefore, the University did not acquire trademark rights in the Houndstooth Pattern from Coach Bryant or his estate.

The Board then turned to the question of whether the University itself established common law trademark or service mark rights in the Houndstooth Pattern. The University had to prove that the pattern is either inherently distinctive or has acquired distinctiveness.

The evidence showed use of the Houndstooth Pattern mark in an ornamental manner, and the Board found that it would be perceived as a non-distinctive background design rather than as an indicator of source or sponsorship. Applying the CCPA's Seabrook test, the Board concluded that opposer's Houndstooth Pattern, which is used together with other trademarks and identifying indicia of the University, is not inherently distinctive.

As to acquired distinctiveness, there was no evidence that the University promoted or treated the Houndstooth Pattern, per se, as a trademark. Although opposers submitted substantial evidence of media coverage commenting on Coach Bryant’s houndstooth fedora, that evidence may support the association of a houndstooth fedora with the Coach, but it does not establish any trademark association of the Houndstooth Pattern with the University. There was no evidence of “look for” advertising or other promotional efforts to create a source association between the Pattern and the University. The University’s evidence regarding sales was not probative because the figures were not broken down to show sales of merchandise bearing the Houndstooth Pattern, nor did the University provide a date on which the sale of such merchandise bearing the Houndstooth Pattern began. However, even had itemized sales information been provided, its value would have been limited because the goods prominently feature the University’s trademarks, including “Alabama,” “Crimson Tide,” and a “Stylized A” design.

The parties agreed that the public "associates houndstooth with Coach Bryant’s hat and fans wear houndstooth apparel to the University's football games to show support for the University because they know that is 'what Coach Bryant wore." [In fact, applicants sold their merchandise at Alabama football games]. In any case, there was no evidence that the houndstooth design on the fans’ apparel serves as a source-indicator for the University. The University is not the exclusive user of the Houndstooth Pattern, because houndstooth apparel is available from other sources. The fact that fans wear houndstooth apparel of unknown origin cuts against the University's claim of exclusive use.

The Board concluded that "opposers’ evidence does not get it into the end zone by proving it has trademark rights in the alleged Houndstooth Pattern mark."

Opposers' assertion of rights in a crimson -and-white color scheme was, the Board concluded, a “red herring.” Applicants’ applied-for mark does not constitute an indicia of the University and therefore, even if it may be depicted in red and white colors, it is not likely to be confused with the University’s color scheme. Furthermore, whether use of applicant's mark on crimson and red hats and shirts constitutes infringement of opposers' rights is an issue for the courts and is beyond the Board's jurisdiction.

Opposers contend that applicants adopted the applied-for mark in bad faith with an intent to create an association with opposers, a fact that should be considered in the likelihood of analysis. The Board, however, pointed out that "if confusion is not likely to result from the use of the marks, applicants’ motives cannot affect their right to the registration sought."

Finally, the Board gave short shrift to opposer's assertion that the applied-for mark is likely to cause confusion with the common law mark PAUL. W. BRYANT MUSEUM & Design (shown below). The Board found the dissimilarity of the marks to be dispositive of the issue.

False Suggestion of a Connection: The Board focused on the "key factor" in the Section 2(a) false suggestion analysis: "whether applicants’ mark is a close approximation of opposers’ name or identity, i.e., a right in which opposers possess a protectable interest." Moreover, the similarity required for a "close approximation" is "akin to that required for a likelihood of confusion under § 2(d) and is more than merely 'intended to refer' or 'intended to evoke.'"

The Board found no basis for concluding that applicants’ mark closely approximates the University’s identity. There was no showing that the University "used or promoted the Houndstooth Pattern, much less the word 'houndstooth,' in a manner that would constitute the University’s identity."

As to Coach Bryant, the accused mark must do more than simply “bring to mind” or reference the hat worn by him. The Board concluded that the applied-for-mark did not closely approximate the identity or persona of Coach Bryant and therefore was not "unmistakably associated" with his identity or persona, nor did it “point uniquely” to him.

Here ... applicants’ mark is not the name or image of Coach Bryant, with his patterned fedora, nor does it contain his patterned fedora per se. The fact that applicants did not incorporate any of the foregoing in their mark diminishes the significance of their admission that they intended their mark, in part, to “make[] reference to the houndstooth hat that Coach Bryant wore at Alabama football games.”

Disparagement: Opposers contended that the applied-for mark is disparaging and brings them into contempt and disrepute because "mafia" refers to a criminal organization. The Board disagreed.

While we appreciate that the term “mafia” may refer to organized crime, we do not find this meaning present given the context of applicants’ mark. We cannot conclude on this record that consumers would reasonably associate organized crime with the University or Coach Bryant, especially when there is a much more plausible meaning for “mafia,” which does not have the allegedly disparaging connotation advanced by opposers. There simply are no facts whatsoever in this record that suggest that those familiar with Coach Bryant would choose the derogatory meaning of “mafia” and infer that either the University or Coach Bryant is a member of, or has ties to, organized crime.

The Board recognized that "“mafia" has a positive definition unrelated to organized crime. The use of a common houndstooth pattern imparts a light-hearted connotation to the mark that is inconsistent with any sinister meaning. "In view of the incongruous nature of applicants’ HOUNDSTOOTH MAFIA and Design mark, the mark would not be offensive to a reasonable person of ordinary sensibilities when used on applicants’ apparel items."

And so the Board dismissed the Section 2(a) disparagement claim.

Read comments and post your comment here.

TTABlog note: For a thorough discussion of the role of intent in the likelihood of confusion analysis, see Thomas L. Casagrande's article, "A Verdict For Your Thoughts? Why an Accused Trademark Infringer's Intent Has No Place in Likelihood of Confusion Analysis," 101 Trademark Reporter 1447 (September-October 2011). [TTABlogged here].

Text Copyright John L. Welch 2013.


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