Tuesday, January 31, 2017

"I BELIEVE THAT WE WILL WIN" Fails to Function as a TM for Clothing, Says TTAB

The Board sustained an opposition to registration of the slogan I BELIEVE THAT WE WILL WIN! for “Bottoms; Caps; Hats; Jackets; Shirts; Sweatshirts; T-shirts; Tops," on the ground that the applied-for mark fails to function as a trademark under Sections 1, 2 and 45 of the Lanham Act. Opposer U.S. Soccer alleged that its fans adopted the slogan as a rallying cry for the U.S. team during the 2014 World Cup [won by Germany], and that registration by applicant would deprive Opposer and others of the ability to use the mark as an "informational and aspirational slogan." United States Soccer Federation, Inc. v. Aztec Shops, Ltd., Opposition No. 91220225 (January 27, 2017) [not precedential].

Standing: Opposer U.S. Soccer established its standing by showing use of the slogan in its advertising and on apparel. In any case, it is not necessary for an opposer to be using a term in order to challenge registration; an opposer may establish its standing by showing merely that it has an interest in using the term in its business. The fact that licensees of U.S. Soccer may produce and sell the goods bearing the mark does not negate Opposer’s real interest in this proceeding, since use of a mark by a licensee inures to the benefit of the licensor/trademark owner.

Failure to Function: "Slogans and other terms that are considered to be merely informational in nature, or that express support, admiration or affiliation, are generally not registrable." See, e.g., In re Eagle Crest Inc., 96 USPQ2d 1227, 1232 (TTAB 2010) (“ONCE A MARINE, ALWAYS A MARINE is an old and familiar Marine expression, and as such it is the type of expression that should remain free for all to use.”).

The critical determination regarding whether a term functions as a trademark focuses on consumer perception. To make that determination, the Board looked to the specimens of use and other marketplace materials. Opposer made of record news articles, blog excerpts, and videos showing that the slogan or chant has been widely publicized and used by others both before and after Applicant’s adoption of the slogan in 2011.

Applicant maintained that the slogan is associated with San Diego State University as a result of more than $74,000 in sales of products bearing the applied-for mark since 2011 and advertising expenditures of approximately $400,000 annually for the entire SDSU brand. It submitted evidence showing use of the slogan on clothing, in retail store displays, and as an athletic facility wall decoration.

The Board was not impressed.

The function of a trademark is to identify a single commercial source. The record before us establishes that the slogan I BELIEVE THAT WE WILL WIN! has been widely used over a long period of time by various groups and organizations as an expression of enthusiasm and support for their particular sports team or cause. ***

Here, the primary purpose of I BELIEVE THAT WE WILL WIN!, as shown by the evidence of use by the public, is to convey information, that is, to convey enthusiasm and support for particular sports teams or causes. ***

Indeed, the fact that I BELIEVE THAT WE WILL WIN! is used by others in a “nontrademark manner” as a chant in sports and political arenas (and on clothing) establishes that the slogan cannot serve as an indicator of the source of Applicant’s apparel.

And so the Board sustained the opposition.

Read comments and post your comment here.

TTABlog comment: If the fans of each side in a soccer match chant this slogan, won't the match end in a draw?

Text Copyright John L. Welch 2017.


At 1:04 PM, Anonymous Anonymous said...

A big reason for the loss by SDSU appears to be bad specimens and sloppy legal work.

The use appears to have been pretty much just ornamental slogans on the front of shirts. Always a bad idea.

They ended up relying on a display on the third attempt to get it through.

Also, there were two separate petitions to revive for failure to respond to office actions. How does that happen?

At 5:07 PM, Anonymous Keith said...

The name of a sports team on a shirtfront does not function as a trademark for me.
It is a product feature, and I buy the goods to show my devotion to said team (more than they do for me, in most years). I wish that the courts had taken this position over the years and saved sports fans a boatload of money.

At 5:59 PM, Anonymous Anne Gilson LaLonde said...

Other than the result being inevitable, the slogan is sort of sad as well. I remember growing up near Northwestern University when their football team was terrible, and their slogan was "Expect victory." Um, okay.

At 1:06 PM, Anonymous Anonymous said...

perhaps better to go with a phrase used less often such as "I Believe That Winning Is One of the Possible Outcomes."

At 8:52 AM, Blogger NaRong said...

A big reason for the loss by SDSU appears to be bad specimens and sloppy legal work.
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