Monday, March 08, 2021

Precedential No. 5: Sustaining U. Kentucky's Opposition, TTAB Finds that "40-0" Fails to Function as a Trademark for T-Shirts

In a case "markedly similar" to the #MAGICNUMBER108 case of two years ago [which Cub fans may remember], the Board sustained the University of Kentucky's opposition to registration of the proposed mark 40-0 for t-shirts, finding that the term is a widely used, common expression that fails to function as a trademark. The University did not go undefeated, however. The Board dismissed UK's fraud claim and granted the applicant's motion to amend its use-based application to delete certain goods for which the mark had not been used. University of Kentucky v. 40-0, LLC, 2021 U.S.P.Q.2d 253 (T.T.A.B. 2021) [precedential] (Opinion by Judge David K. Heasley).

For those of you who didn't know (or care), in the basketball world, 40-0 refers to a perfect winning record in NCAA Division 1 basketball, something that UK (and every other Division I school) desires to achieve. [For the record, 40-0 perfection has been achieved twice: by the women's b-ball teams at Baylor and U. Conn.]. Applicant's owner, a fan of UK basketball, formed the applicant company and sought, unsuccessfully, to work with UK in marketing the 40-0 clothing. 

Entitlement to a Cause of Action (f/k/a "Standing"):  The Applicant challenged UK's entitlement to bring this opposition, asserting that UK would not be damaged by registration of 40-0 because it has no proprietary interest in the term, is not a competitor of applicant, and need not fear an infringement suit by applicant. The Board was unimpressed. 

The Board pointed out that one need not have a proprietary interest in a term to be entitled to bring an opposition. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 U.S.P.Q.2d 10837, at *1 (Fed. Cir. 2020). A present or prospective interest in using the term is sufficient. Cf. De Walt, Inc. v. Magna Power Tool Corp., 289 F.2d 656, 129 U.S.P.Q. 275, 280 (C.C.P.A. 1961) (Standing “will be presumed or inferred when . . . the opposer or petitioner is one who has a sufficient interest in using the descriptive term in its business.”). 

The Board concluded from the record evidence, including the use by Baylor and U. Conn. of 40-0 and UK's use of 16-0, 31-0,and 34-0 on t-shirts, that UK "has a present or prospective interest in using the term '40-0' on T-shirts and other apparel to indicate its aspiration or achievement of an undefeated season, either in men's or women's basketball." 

Moreover, UK has a "direct commercial interest in licensing and selling apparel products" and, regardless of whether the applicant is a competitor, the UK has" a reasonable basis for its belief in damage" from registration of the mark 40-0.

The applicant's forbearance from suing UK (or Baylor or U. Conn.) for trademark infringement "misses the point, as registration would accord Applicant rights it does not presently have ...." A registration, which enjoys the presumptions afforded by Section 7(b) of the Lanham Act, could be used to harass UK or others "into ceasing use of [the term] on pain of defending a lawsuit." De Walt v. Magna Power Tool, 289 F.2d 656, 129 U.S.P.Q. 275, 280 (C.C.P.A. 1961). The Board has followed the same reasoning in mere descriptiveness cases under Section 2(e)(1):

The rationale behind these cases involving damage from the registration of merely descriptive terms lies in the presumptions afforded a registration under Section 7(b) of the Statute. That section provides that registration on the Principal Register is prima facie evidence of the registrant's “exclusive right to use the mark in commerce in connection with the goods”. Implicit in the “exclusive right” to use is the right “to exclude” others. Thus, a registration of a merely descriptive term would be inimical to the right of others in the trade engaged in the sale of the same or similar goods to use the notation as a word of art in describing their goods and would bestow upon the applicant a competitive advantage to the extent that purchasers may be deceived or misled into believing goods so marketed are the only ones of that type available in the marketplace. This constitutes damage within the intent and meaning of Section 13. (quoting Southwire Co. v. Kaiser Aluminum & Chem. Corp., 196 U.S.P.Q. 566, 572-73 (T.T.A.B. 1977)).

Motion to Amend Application: Applicant admitted that, as of the filing date of the underlying application, it had used the mark 40-0 only on T-shirts. It moved under Rule 2.133(a) to delete the improperly-included goods. The Board, applying the test set forth in Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, 2020 U.S.P.Q.2d 10914, at *5 (T.T.A.B. 2020), granted the motion and entered judgment against applicant as to the deleted goods.

Fraud: The Board has upheld only one fraud claim since the Bose decision in 2009. [can you name the case? - ed.]. It kept that record intact by denying UK's claim that applicant committed fraud when it included in its application goods for which the mark had not been used.

We all know that fraud must be proven "to the hilt." "There is no room for speculation, inference, or surmise and, obviously, any doubt must be resolved against the charging party." In re Bose Corp., 580 F.3d 1240, 91 U.S.P.Q.2d 1938, 1939 (Fed. Cir. 2009)). (quoting Smith Int’l, Inc. v. Olin Corp., 209 U.S.P.Q. 1033, 1044 (T.T.A.B. 1981)). Here, applicant admittedly made a false and material statement to the USPTO regarding use of the mark 40-0. The question, then, was whether the statement was made knowingly, with an intent to deceive the Office.

UK pointed out that applicant's founder and owner, Mr. Son, is a Harvard graduate [Big deal! - ed.] and a lawyer [Louisville]. Moreover, his firm holds itself out as a provider of intellectual property services. [Don't they all? - ed.]. According to UK, Mr. Son's deposition testimony "suggests that Applicant's intellectual property counsel signed the declaration on Applicant's behalf with full knowledge that the mark had not been used on any goods but t-shirts."

Mr. Son testified that he had no experience filing trademark applications and was not familiar with the rules of practice. He thought he was applying for the right to use the mark on all the goods he listed. The Board noted that his education "did not imbue him with knowledge of trademark law." Moreover, Mr. Son took the advice of his counsel, who signed the application. UK did not depose that attorney and there was no meaningful evidence of his or her state of mind.

Acting on “advice of counsel” may not automatically immunize one from a charge of fraud; but on this record, where Applicant misunderstood the requirements for a use-based application and sought the advice of counsel, “the overly expansive description of goods, while a false statement, falls short of constituting a fraudulent statement which carries with it an actual or implied intent to deceive the USPTO.” M.C.I. Foods, Inc. v. Bunte, 96 U.S.P.Q.2d 1544, 1549 (T.T.A.B. 2010). 

And so the Board dismissed the fraud claim.

Failure-to-Function: As the Board has pointed out in a stream of recent failure-to-function cases, the critical issue is "how the relevant public perceives the term sought to be registered." Mr. Son testified that the mark 40-0 was intended to convey "the concept of a perfect basketball season." "It represents the pursuit of perfection. The holy grail." [What does his intention have to do with public perception? - ed.].

Applicant's use of the term 40-0 on its social media sites was, the Board found, "informational, indicating historical or aspirational perfect basketball seasons, not the source of the T-Shirts." See In re Wal-Mart Stores, Inc., 129 U.S.P.Q.2d 1148, 1152 (TTAB 2019) ("The text on Applicant's website confirms the merely informational nature of the phrase."). Moreover, applicant displayed the term 40-0 in large numerals on the front of T-shirts and nowhere else.

We agree with Opposer that Applicant’s proposed mark “40-0” is merely informational in nature, expressing support, admiration or affiliation with college basketball teams that either have achieved perfect records in a single season or aspire to do so.88 Consumers understand such a widely used, commonplace message as conveying the ordinary concept or sentiment normally associated with it, rather than serving any source-indicating function. E.g., In re Mayweather, 2020 U.S.P.Q.2d 11298, at *1 (PAST, PRESENT, FUTURE); In re Greenwood, 2020 U.S.P.Q.2d 11439, at *2 (GOD BLESS THE USA); In re Team Jesus, 2020 U.S.P.Q.2d 11489, at *5-6 (TEAM JESUS); see generally TMEP § 1202.04(b).

Applicant maintained that there was no evidence that the term 40-0 is in widespread use, but the Board disagreed. The record showed use of 40-0 on T-shirts by Baylor and  U.Conn., and in numerous "posts" by third parties using 40-0 in an informational sense.

The preponderance of evidence thus shows widespread, common use of "40-0" in an informational manner to convey a perfect, undefeated NCAA basketball season. Applicant cannot appropriate the term exclusively to itself, denying the competing colleges, as well as their fans, the right to use it freely. “[I]t is the type of expression that should remain free for all to use.” In re Eagle Crest Inc., 96 U.S.P.Q.2d 1227, 1230 (T.T.A.B. 2010). It therefore fails to function as a trademark.

And so the Board sustained UK's failure-to-function claim.

Read comments and post your comment here.

TTABlogger comment: So now every Division 1 basketball team can sell 40-0 T-shirts. Good luck with that! By the way, here's an article on academic trademark bullies: James Boyle and Jennifer Jenkins, Mark of the Devil: The University as Brand Bully, Fordham Intellectual Property, Media & Entertainment Law Journal (Forthcoming). I think one trademark of a bully, academic or not, is to make baseless fraud claims.

Text Copyright John L. Welch 2021.


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