Friday, January 20, 2017

TTAB Test: Is "DEUTSCHER FUSSBALL-BUND" Merely Descriptive of Clothing and Soccer Gear?

The USPTO refused registration of the mark shown below, for varous clothing items and for soccer gear because applicant refused to disclaim the term DEUTSCHER FUSSBALL-BUND (translated as GERMAN SOCCER FEDERATION). Applicant did disclaim that phrase for soccer-related services, but it argued that the third-party registration evidence supported registration. In re Deutscher Fußball-Bund (DFB) e.V., Serial No. 79144840 (January 18, 2017) [not precedential].

Applicant is the governing body of football (soccer) in Germany, and is in charge of the league system and the national teams. Germany's national teams have been quite successful, including wins at the World Cup in 1954, 1974, 1990, and 2014. [Some say that international football is a simple game: you run around for 90 minutes and then the Germans win!]. The subject mark is displayed along with applicant's goods, and "perhaps on the goods themselves."

Examining Attorney Matthew J. McDowell based the disclaimer requirement on the finding that DEUTSCHER FUSSBALL-BUND describes not the goods themselves, but the source of the goods. He relied on a now-cancelled registration owned by applicant for a different logo for the same or similar goods, in which applicant disclaimed DEUTSCHER FUSSBALL-BUND. [Was the disclaimer voluntary or required? - ed.]. He also submitted a number of third-party registrations in which similar terms were disclaimed for like goods: e.g., MAJOR LEAGUE SOCCER, INTERNATIONAL KENDO FEDERATION, INTERNATIONAL BOBSLEIGH & SKELETON FEDERATION, KUNG FUT KUNG FU FEDERATION, THE SHUFFLEBOARD FEDERATION, ATHLETIC ASSOCIATION, BASKETBALL ASSOCIATION.

Applicant seized on a registration owned by the Mexican Football Federation in which the term FEDERACION MEXICANA DE FUTBOL ASSOC. was not disclaimed, applicant maintaining that this was the most pertinent or analogous third-party registration.

The Board found that the prior disclaimer of DEUTSCHER FUSSBALL-BUND in applicant's now-expired registration, and its disclaimer as to the services here, constituted a concession that the term is merely descriptive of at least some of the goods. [What if the disclaimer was voluntarily and unnecessarily supplied by applicant in the earlier registration? - ed.].

Furthermore the overwhelming majority of the third-party registrations include disclaimers or 2(f) claims for terms like the one at issue here. Even if the Board agreed that the Mexican Federation registration was the most analogous, it was only one of 17 registrations cited by the examining attorney.

While Applicant has established that the Office has not required disclaimers or Section 2(f) showings for analogous terms in every single case, the record reveals that at the very least the Office has been relatively consistent in treating terms such as GERMAN SOCCER FEDERATION as merely descriptive of Applicant’s goods or analogous goods.

The Board's decision in In re Major League Umpires, 60 USPQ2d 1059 (TTAB 2001), supported the refusal to register. "It is well-established that a term which describes the provider of goods or services is also merely descriptive of those goods and services.... Certainly, ‘doctor’s diet’ for a diet plan would be understood by consumers as describing a diet designed or provided by a doctor, even though ‘doctor’ does not describe the qualities or mechanics (e.g., low fat, low carbohydrate) of the diet plan." Id. at 1060.

In Major League Umpires, the mark MAJOR LEAGUE UMPIRE conveyed the information that the clothing and protective equipment was designed by major league umpires. Here, the term DEUTSCHER FUSSBALL-BUND indicates that applicant, or a related company or individual, designed applicant' goods, and that the soccer-related goods are the same as, or at least similar to, those used by the German National team.

The Board therefore affirmed the disclaimer requirement.

Read comments and post your comment here.

TTABlog comment: If there is and can be only one German Soccer Foundation, is DEUTSCHER FUSSBALL-BUND merely descriptive of the source of the goods, or does it also serve as a source indicator? There can be more than one sets of major league umpires selling clothing and umpiring gear, and each set should be able to use the term MAJOR LEAGUE UMPIRE.

Text Copyright John L. Welch 2017.


At 7:56 AM, Anonymous Anonymous said...

Regarding your comment, John: when an otherwise-non-registrable term has, over the course of time, come to signify a sole source . . . Well, wouldn't you say that the source-indicating aspect of the term has been "acquired?" Indeed, that it has become distinctive?

Or are you really asking, "Why didn't applicant claim 2(f) in the alternatve?" Which is, I guess, a question of strategy.

At 9:00 AM, Blogger John L. Welch said...

No, I'm trying to make a distinction between "identifying" the source of the goods and "describing" the source of the goods. Can't this term do both? And if so, is it "merely descriptive" under Section 2(e)(1).

At 9:31 AM, Anonymous Anonymous said...

"A registered mark shall not be deemed to be the common descriptive name of goods or services solely because such mark is also used as a name of or to identify a unique product or service." 15 U.S.C. § 1064(c)

There is caselaw that turns on the use of the word "registered" in that statute, to mean this situation is a defense to cancellation but not an argument that can be made in support of a new application to register. I think that distinction is nonsense, but there it is.


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