Written by Seth Thomas
This is the final Rebuttal from the Cubs. It is now up to a board of judges to decide if my word is federally approved.
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
In re Application Serial Nos. 87/412,384 and 87/451,846
Filed: April 14, 2017 and May 16, 2017
For Mark: IAMCUBSESSED and CUBSESSED
Published in the Official Gazette: August 15, 2017 and October 24, 2017 – – – – – – – – – – – – – – – – – – – – – – – – – – – – – – – – – – – – -X
:Opposition No. 91239415
CUBSESSED, LLC by assignment from SETH : THOMAS and CUBSESSED, :
Applicant. : – — — — — — — — — — — — — — — — — — — — — — — –X
OPPOSER’S REPLY BRIEF ON FINAL HEARING
CHICAGO CUBS BASEBALL CLUB, LLC,
v. Opposer, :
21307/011/3043442
COWAN, LIEBOWITZ & LATMAN, P.C.
114 West 47th Street New York, New York 10036 (212) 790-9200
TABLE OF CONTENTS
TABLE OF AUTHORITIES ……………………………………………………………………………………………. ii PRELIMINARY STATEMENT ………………………………………………………………………………………..1 ARGUMENT …………………………………………………………………………………………………………………..2
- THE RELEVANT FACTORS POINT OVERWHELMINGLY IN
FAVOR OF A LIKELIHOOD OF CONFUSION BETWEEN THE
PARTIES’ MARKS……………………………………………………………………………………………….2- The Parties’ Marks are Confusingly Similar ………………………………………..2
- The Parties’ Goods and Channels of Trade Are Identical ………………………4
- The Parties’ Customers Include Ordinary Consumers Who
Are Unlikely to Exercise Particular Care……………………………………………..5 - Applicant Has Presented No Evidence to Detract From the
Obvious Strength of Opposer’s CUB Marks ………………………………………..6 - The Absence of Actual Confusion is Immaterial…………………………………..7
- Applicant Simply Ignores the Evidence of its Bad Faith………………………..8
- Balancing All of the Relevant Factors Leaves No Doubt
That Confusion is Likely …………………………………………………………………..9
- APPLICANT HAS FAILED TO REBUT OPPOSER’S STRONG
SHOWING OF A LIKELIHOOD OF DILUTION …………………………………………………..10 - APPLICANT’S MARKS ALSO FALSELY SUGGEST A
CONNECTION WITH OPPOSER AND ITS CHICAGO CUBS CLUB…………………….10 - FAIR USE IS LEGALLY UNAVAILABLE AS A DEFENSE WHERE
AN APPLICANT SEEKS REGISTRATION OF A TERM AS A
TRADEMARK ……………………………………………………………………………………………………11
CONCLUSION………………………………………………………………………………………………………………12
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Cases
TABLE OF AUTHORITIES
AMF, Inc. v. American Leisure Products, Inc.,
474 F.2d 1403, 177 U.S.P.Q. 268 (C.C.P.A. 1973)………………………………………………………….7
AutoZone Parts, Inc. v. MS Motorsports, LLC,
Opp. No. 91198031 (T.T.A.B. Dec. 11, 2012) ………………………………………………………………11
In re Anania Assocs., Inc.,
223 U.S.P.Q. 740 (T.T.A.B. 1984) ………………………………………………………………………………..8
Cabell-Wayne Assoc. of the Blind, Inc. v. Fowler,
Opp. No. 91122156 (T.T.A.B. Oct. 20, 2003)……………………………………………………………….10
Calypso Technology Inc. v. Calypso Capital Management LP,
100 U.S.P.Q.2d 1213 (T.T.A.B. 2011) …………………………………………………………………………..6
Century 21 Real Estate Corp. v. Century Life of Am.,
970 F.2d 874, 23 U.S.P.Q. 1698 (Fed. Cir. 1992) ………………………………………………………..3, 7
Chicago Bears Football Club, Inc. v. 12<TH> Man/Tennessee LLC,
83 U.S.P.Q.2d 1073 (T.T.A.B. 2007) ……………………………………………………………………..3, 4, 9
Chicago Cubs Baseball Club, LLC v. Huber,
Opp. No. 91232736 (T.T.A.B. May 3, 2019) ………………………………………………………………….3
Edom Laboratories, Inc. v. Lichter,
102 U.S.P.Q.2d 1546 (T.T.A.B. 2012) …………………………………………………………………………..6
Emilio Pucci Int. B.V. v. El Corte Ingles, S.A.,
Opp. No. 9116938 (T.T.A.B. Apr. 1, 2010) ……………………………………………………………………5
Gen. Mills, Inc. v. Fage Dairy Proc. Indus. S.A.,
100 U.S.P.Q.2d 1584 (T.T.A.B. 2011) ……………………………………………………………………….5, 7
In re GGWTV, LLC,
Ser. No. 77/086,958 (T.T.A.B. Apr. 24, 2008)………………………………………………………………10
In re Iolo Technologies LLC,
95 U.S.P.Q.2d 1498 (T.T.A.B. 2010) …………………………………………………………………………….5
Jewelers Vigilance Comm., Inc. v. Ullenberg Corp.,
853 F.2d 888, 7 U.S.P.Q.2d 1628 (Fed. Cir. 1988) ………………………………………………………….9
Page(s)
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In re Judge,
Ser. No. 76/704,219 (T.T.A.B. Feb. 6, 2013) ………………………………………………………………….8
L.C. Licensing Inc. v. Berman,
86 U.S.P.Q.2d 1883 (T.T.A.B. 2008) …………………………………………………………………………….9
Lebanon Seaboard Corp. v. R&R Turf Supply Inc.,
101 U.S.P.Q.2d 1826 (T.T.A.B. 2012) …………………………………………………………………………..6
Major League Baseball Properties, Inc. v. Webb.,
Canc. No. 92060903 (T.T.A.B. July 18, 2018)………………………………………………………………..5
Miles Laboratories, Inc. v. Naturally Vitamin Supplements, Inc.,
1 U.S.P.Q.2d 1445 (T.T.A.B. 1986) …………………………………………………………………………….11
New York Yankees Partnership v. IET Prods. & Svcs., Inc.,
114 U.S.P.Q.2d 1497 (T.T.A.B. 2015) …………………………………………………………………………11
Octocom Sys. v. Houston Computer Servs.,
918 F.2d 937, 16 U.S.P.Q.2d 1783 (Fed. Cir. 1990) ………………………………………………………..4
Palm Bay Imps., Inc. v. Vueve Clicquot Ponsardin Maison Fondee En 1722,
396 F.3d 1369, 73 U.S.P.Q.2d 1689 (Fed. Cir. 2005) ………………………………………………………6
Stone Lion Cap. Partners, L.P. v. Lion Cap. LLP,
746 F.3d 1317, 110 U.S.P.Q.2d 1157 (Fed. Cir. 2014) …………………………………………………4, 5
In re Xaviant, LLC,
Ser. No. 77/820,474 (T.T.A.B. Apr. 30, 2012)………………………………………………………………..5
Statutes
15 U.S.C. § 1115(b)(4) ……………………………………………………………………………………………………11
Other Authorities
Fed. R. Civ. P. 8(c) …………………………………………………………………………………………………………11 3 J. Thomas McCarthy, McCarthy on Trademarks § 22:2 (5th ed. 2019)…………………………………8 TBMP § 704.03(b)(1)(B)…………………………………………………………………………………………………..6
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PRELIMINARY STATEMENT
Applicant’s entire defense rests on a series of fictions built around the premise that it is operating a fan club. Thus, Applicant insists that Applicant’s Marks are used to identify a fan club that is supposedly differentiated from the CHICAGO CUBS baseball team itself. Applicant further argues that its products are only sold through the vehicle of its fan club to sophisticated baseball fans who are not vulnerable to confusion. Applicant also claims that its uses are no different than other supposed uses of marks containing the term “cub” allegedly made by third parties.
Opposer disputes each of these various factual assertions and the supposed legal conclusions that Applicant maintains follow from them. However, any such potential fight is for another day before another tribunal because none of the issues raised by Applicant in defense of this opposition are properly considered in this case. Applicant is not seeking to register marks for the service of operating a fan site, but instead has applied to register Applicant’s Marks for the identical items of clothing sold under Opposer’s CUB Marks. Moreover, the applications that Applicant has filed are unrestricted in nature. As a result, Applicant’s goods are presumed to travel through all the regular channels of trade for such goods and to be sold to ordinary consumers for those types of goods, not just the supposedly sophisticated baseball fans that Applicant claims (without a stitch of evidentiary support) constitute its target audience. Finally, while Applicant cites various third-party registrations, it failed to offer such registrations in evidence at trial and accordingly they are not properly before the Board. Even if they were, they are almost uniformly for both marks and goods that are much further removed from those at issue in this case, and there is also no proof as to the scope of usage for any such marks.
When the actual evidentiary record of this case is examined, the only possible conclusion to be reached is that the opposition must be sustained. The record reveals that
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Applicant’s Marks create both a likelihood of confusion with, and dilution of, Opposer’s CUB Marks, and also falsely suggest a connection with Opposer and its CHICAGO CUBS club. Opposer has established that Opposer’s CUB Marks are famous, a factor that plays a dominant role in the Board’s likelihood of confusion analysis and that is also a necessary element to a finding of dilution. Moreover, Applicant is seeking to register marks for the identical goods covered by Opposer’s registrations under CUB-formative marks that are highly similar to various of Opposer’s CUB Marks, which routinely combine the term “cub” or “cubs” with other words or phrases. Applicant cannot avoid the inevitable result that follows from these undisputed facts by pointing to its Illinois state registrations, which are legally irrelevant to the issues that must be decided under the federal Lanham Act, or by relying on the fair use defense, which is unavailable as a matter of law for uses which are by definition intended to be made as trademarks. For all these reasons, the opposition should be sustained and registration should be refused.
ARGUMENT
I. THE RELEVANT FACTORS POINT OVERWHELMINGLY IN FAVOR OF A LIKELIHOOD OF CONFUSION BETWEEN THE PARTIES’ MARKS
Opposer’s trial brief detailed how the record evidence pointed strongly in favor of a likelihood of confusion with respect to each of the relevant du Pont factors under the applicable case law. In response, Applicant has basically ignored both the evidence and controlling legal precedents, offering arguments that find no support in the trial record or under the governing legal standards.
A. The Parties’ Marks are Confusingly Similar
Applicant argues that it has “formulated new words” that serve to distinguish its “fan club” from Opposer’s baseball club. Applicant Brief at 6. However, this case has nothing to do with a “fan club.” Applicant has applied to register Applicant’s Marks for “hats” and “T-shirts.”
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Thus, the only relevant inquiry before the Board is whether Applicant’s Marks, as applied to such items of clothing, are confusingly similar to Opposer’s CUB Marks. The record evidence leaves no doubt that they are.
As discussed in Opposer’s opening brief, Opposer uses numerous CUB-formative marks in connection with the sale of clothing as part of an ongoing effort to appeal to a fan base constantly looking for new themes, looks, designs and concepts associated with the Club. See Opposer Trial Brief at pp. 6-8, 30 (29 TTABVUE 14-16, 38). Opposer’s frequent combination of the CUB or CUBS name with other words and phrases in Opposer’s CUB Marks strongly increases the likelihood that consumers will perceive clothing sold under the marks CUBSESSED or IAMCUBSESSED as additional officially licensed products offered as part of Opposer’s extensive merchandising program. See, e.g., Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 U.S.P.Q. 1698, 1701 (Fed. Cir. 1992) (Opposer’s use of variations on dominant portion of mark, such as CENGARD, increased likelihood of confusion with respect to applicant’s use of mark CENTURY LIFE OF AMERICA).
The Board reached that precise conclusion earlier this year in finding the mark CUBNOXIOUS confusingly similar to Opposer’s CUB Marks. See Chicago Cubs Baseball Club, LLC v. Huber, Opp. No. 91232736 (36 TTABVUE) (T.T.A.B. May 3, 2019).1 The Board there found that “Opposer’s evidence of registration and use of CUB-variant marks renders … a consumer misimpression likely” because the parties’ marks “would be perceived as variants of one another, coming from a common source.” Id. at 22. The same reasoning certainly applies here, where Applicant has actually admitted that the “CUB” portion of Applicant’s Marks is intended as a reference to the Club. See, e.g., Chicago Bears Football Club, Inc. v. 12<TH>
1 http://ttabvue.uspto.gov/ttabvue/v?pno=91232736&pty=OPP&eno=36
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Man/Tennessee LLC, 83 U.S.P.Q.2d 1073, 1077 (T.T.A.B. 2007) (12<TH> BEAR confusingly similar to NFL team’s BEARS and CHICAGO BEARS marks where applicant’s mark reinforces connection to football team by specifically identifying a fan of the team as the “twelfth Bear”).
B. The Parties’ Goods and Channels of Trade Are Identical
While Applicant concedes the obvious overlap between the parties’ identical goods and channels of trade, it claims that “there are restrictions in the trade channels” because Applicant’s clothing is only sold via Applicant’s website or social media pages. Applicant Trial Brief at 7. Applicant’s argument is flawed in two critical respects. First, and most fundamentally, the opposed applications contain no such restriction, and “[t]he authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to … the particular channels of trade or the class of purchasers to which sales of the goods are directed.” Octocom Sys. v. Houston Computer Servs., 918 F.2d 937, 942, 16 U.S.P.Q.2d 1783, 1787 (Fed. Cir. 1990). Accordingly, in the absence of some restriction in the parties’ applications or registrations, their goods will be presumed to travel in the same channels of trade and to be sold to the same class of purchasers. See, e.g., Stone Lion Cap. Partners, L.P. v. Lion Cap. LLP, 746 F.3d 1317, 1323, 110 U.S.P.Q.2d 1157, 1161 (Fed. Cir. 2014); Chicago Bears Football Club, 83 U.S.P.Q.2d at 1078.
In any event, where Applicant’s website and social media platforms make prominent and repeated usage of the Club’s logo, marks and imagery and are specifically intended to be marketed fans of the CHICAGO CUBS club, those channels of trade do nothing to distinguish Applicant’s goods from those licensed by Opposer. To the contrary, the evidence reflects that there will in fact be substantial overlap among the consumers being targeted by the parties.
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C. The Parties’ Customers Include Ordinary Consumers Who Are Unlikely to Exercise Particular Care
Applicant argues that the relevant class of consumers are sophisticated baseball fans who will be careful in the purchases they make. However, there is no record evidence to support that position. See In re Iolo Technologies LLC, 95 U.S.P.Q.2d 1498, 1501 (T.T.A.B. 2010) (“Applicant urges us to consider consumers sophistication as a factor. However, applicant has submitted no evidence that either its consumers or those of registrant would be sophisticated.”).
In any event, the applicable standard of care is that of the least sophisticated consumer. See, e.g., Stone Lion, 746 F.3d at 1325, 110 U.S.P.Q.2d at 1163 (“Board precedent requires the decision to be based ‘on the least sophisticated potential purchasers.’”) (quoting Gen. Mills, Inc. v. Fage Dairy Proc. Indus. S.A., 100 U.S.P.Q.2d 1584, 1600 (T.T.A.B. 2011)). Where, as here, there are no restrictions or limitations in Applicant’s identification of goods as to price point and such goods are being offered for sale to members of the general public, the potential purchases will include not only avid baseball fans (who Applicant claims are more sophisticated), but also ordinary consumers who are unlikely to exercise extra care in purchasing inexpensive t-shirts. See, e.g., Major League Baseball Properties, Inc. v. Webb, Cancellation No. 92060903 (71 TTABVUE)2 at 16 (T.T.A.B. July 18, 2018); Emilio Pucci Int. B.V. v. El Corte Ingles, S.A., Opp. No. 91169638 (62 TTABVUE)3 at 24-25 (T.T.A.B. Apr. 1, 2010). Moreover, even if some consumers are fans who are potentially more knowledgeable about the sport of baseball, such knowledge does not necessarily translate to the area of trademarks or render them immune from source confusion. See, e.g., In re Xaviant, LLC, Ser. No. 77/820,474 (20 TTABVUE)4 at 12-13
2 http://ttabvue.uspto.gov/ttabvue/v?pno=92060903&pty=CAN&eno=713 http://ttabvue.uspto.gov/ttabvue/v?pno=91169638&pty=OPP&eno=624 http://ttabvue.uspto.gov/ttabvue/v?pno=77820474&pty=EXA&eno=20
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(T.T.A.B. Apr. 30, 2012). Accordingly, the sophistication of consumers factor here weighs in favor of a likelihood of confusion.
D. Applicant Has Presented No Evidence to Detract From the Obvious Strength of Opposer’s CUB Marks
In response to the overwhelming evidence summarized in Opposer’s opening brief establishing the fame and strength of Opposer’s CUB Marks, Applicant contends that such strength is restricted to the combined usage of the terms CHICAGO and CUBS. Applicant Trial Brief at 8-9. However, once again, Applicant’s position is unsupported by any actual record evidence submitted at trial. Although Applicant references eight third-party registrations containing the term “cub” in the mark, it failed to make these registrations of record in this proceeding through any of the available methods for introducing such evidence. See TBMP
§ 704.03(b)(1)(B) (third party registrations can only be introduced through notice of reliance attaching copy of registration or printout from USPTO’s electronic database, as an exhibit to testimony or by stipulation of parties). Accordingly, the Board should ignore any references to such registrations. See, e.g., Edom Laboratories, Inc. v. Lichter, 102 U.S.P.Q.2d 1546, 1550 (T.T.A.B. 2012) (listing of third-party marks from USPTO database does not make registrations of record); Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 U.S.P.Q.2d 1826, 1829 n. 8 (T.T.A.B. 2012) (summary of search results from USPTO electronic database not an official record); Calypso Technology Inc. v. Calypso Capital Management LP, 100 U.S.P.Q.2d 1213, 1217 (T.T.A.B. 2011) (refusing to consider summary of third-party search results).
In any event, even had Applicant properly made the cited registrations of record, they would offer no assistance to its defense. Registrations are by themselves entitled to little or no weight without evidence of actual marketplace use. See, e.g., Palm Bay Imps., Inc. v. Vueve Clicquot Ponsardin Maison Fondee En 1722, 396 F.3d 1369, 1372, 73 U.S.P.Q.2d 1689, 1693
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(Fed. Cir. 2005) (“The probative value of third-party trademarks depends entirely upon their usage.”); AMF, Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 1406, 177 U.S.P.Q. 268, 269 (C.C.P.A. 1973) (“The evidence of these registrations is not evidence of what happens in the market place or that customers are familiar with them nor should the existence on the register of confusingly similar marks aid an applicant to register another likely to cause confusion, mistake or to deceive”). Moreover, only one of the cited registrations is even for the kind of Class 25 goods at issue in this case, with the others covering different goods or services, such as “aircraft and structural parts for aircraft” (No. 86/478,357); “aircraft engine rebuild kit” (No. 5,053,987) and “infant body support mats not for medical purposes; diaper changing mats, baby changing platforms,” etc. (No. 4,829,954). Registrations that do not cover similar goods are of no probative value. See, e.g., Century 21 Real Estate, 970 F.2d at 877-78, 23 U.S.P.Q.2d at 1701 (relevant du Pont inquiry examines number and nature of marks for similar goods and services, not for unrelated goods and services); General Mills, 100 U.S.P.Q.2d at 1602-03 (third party uses of TOTAL on toothpaste, skin cream and detergent did not weaken strength of senior user’s TOTAL mark for breakfast cereal). Because Applicant completely failed to provide admissible, probative evidence of any third party use, its attempt to circumvent the strength of Opposer’s CUB Marks is unavailing.
E. The Absence of Actual Confusion is Immaterial
While Applicant seeks to rely on the absence of actual confusion evidence as proof that there is no likelihood of confusion, it is hardly surprising that such evidence, which is always difficult to find, does not exist where Applicant’s total sales of goods bearing Applicant’s Marks amounts to a little over $700. See Opp. Second Not. Rel. Ex. B, Response to Interrogatory 6(d), 8 TTABVUE 35. As the cases cited in Opposer’s opening brief demonstrate, the absence of actual confusion is of little probative value when there has been no meaningful opportunity for
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actual confusion to develop due to Applicant’s minimal level of sales. See Opposer Trial Brief at pp. 32-33 (citing cases), 29 TTABVUE 40-41. Applicant predictably ignores the undisputed facts showing this is such a case in which the actual confusion factor is rendered immaterial by the conceded absence of any market presence for Applicant’s goods.
Applicant also suggests that the approval of its CUBSESSED marks by the Illinois Secretary of State somehow proves that there is no confusion. Applicant Trial Brief at 9-10. However, “state trademark law and registrations cannot override rights provided by federal law for federal registrations,” nor can they “narrow the rights of a federal registrant or permit confusion of customers which federal law seeks to prevent.” 3 J. Thomas McCarthy, McCarthy on Trademarks § 22:2, at 22-22 to 22-23 (5th ed. 2019). Accordingly, “it is well-established that in trademark proceedings before the United States Patent and Trademark Office, state registrations are neither controlling on the question of trademark usage nor on the question of federal registrability of a mark.” In re Anania Assocs., Inc., 223 U.S.P.Q. 740, 742 (T.T.A.B. 1984); see also In re Juge, Ser. No. 76/704,219 (17 TTABVUE)5 at 6 (T.T.A.B. Feb. 6, 2013) (“[I]n proceedings before the Trademark Trial and Appeal Board, state registrations are not controlling on the federal registrability of the mark because the Board’s determination regarding the registrability of the mark under the Trademark Act of 1946 is predicated on the facts before us in this application, not on the basis of a decision by the State of Louisiana on an unknown set of criteria.”). Applicant’s state registrations are of thus no consequence to the issues before the Board in this proceeding and should be given no weight.
F. Applicant Simply Ignores the Evidence of its Bad Faith
Not surprisingly, Applicant completely ignores the evidence showing that it adopted Applicant’s Marks in bad faith in order to trade on the Club’s reputation and goodwill.
5 http://ttabvue.uspto.gov/ttabvue/v?pno=76704219&pty=EXA&eno=17
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Moreover, the fact that Applicant is using Applicant’s Marks commercially in connection with the sale of competing merchandise completely undercuts any attempt by Applicant to hide behind the label of “fan site.” As stated in Opposer’s opening brief, American case law does not recognize a right to register confusingly similar marks in order to show the fans’ support for a sports team. Chicago Bears Football Club, 83 U.S.P.Q.2d at 1084. Rather, Applicant’s adoption of a mark deliberately designed to bring the Club and Opposer’s CUB Marks to purchasers’ minds weighs strongly in favor of a likelihood of confusion. See, e.g., Jewelers Vigilance Comm., Inc. v. Ullenberg Corp., 853 F.2d 888, 891, 7 U.S.P.Q.2d 1628, 1630 (Fed. Cir. 1988); L.C. Licensing Inc. v. Berman, 86 U.S.P.Q.2d 1883, 1891 (T.T.A.B. 2008).
G. Balancing All of the Relevant Factors Leaves No Doubt That Confusion is Likely
The record here points overwhelmingly in favor of a likelihood of confusion. Applicant has completely failed to rebut the substantial evidence demonstrating the fame of Opposer’s CUB Marks. Such fame plays a dominant role in the likelihood of confusion analysis generally and in this case in particular. Moreover, on the critical factors of similarity of the marks and goods, Applicant has failed to confront either the controlling case law or the operative facts demonstrating the highly similar nature of the parties’ CUB-formative marks and the legal identity of their goods and channels of trade. Applicant has likewise ignored the powerful evidence of its own bad faith from which the Board may infer a likelihood of confusion. In the end, Applicant is left to try defending against all this compelling proof of likelihood of confusion with empty arguments about supposedly sophisticated consumers and alleged third-party marks that are unsupported by any actual evidence. Needless to say, such an effort is doomed to failure and cannot alter a factual record that conclusively establishes a likelihood of confusion. Accordingly, the opposition should be sustained.
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II. APPLICANT HAS FAILED TO REBUT OPPOSER’S STRONG SHOWING OF A LIKELIHOOD OF DILUTION
Applicant half-heartedly defends against Opposer’s dilution claim by repeating two of its
failed arguments on likelihood of confusion. Each of these fares no better this time around.
Thus, Applicant cannot negate the distinctiveness and fame of Opposer’s CUB Marks by
pointing to third-party registrations that were never offered in evidence and that are in any event
irrelevant even if they had been properly introduced. See pp. 6-7 supra. Likewise, Applicant’s
state registrations provide no defense to the claims asserted by Opposer under federal law. See
p. 8 supra. Because Applicant has offered nothing else to counter the strong showing of a
likelihood of dilution made in Opposer’s opening brief, the opposition should be sustained on
this basis as well.
III. APPLICANT’S MARKS ALSO FALSELY SUGGEST A CONNECTION WITH OPPOSER AND ITS CHICAGO CUBS CLUB
Applicant’s purported defense to Opposer’s section 2(a) false association claim is likewise legally deficient. While Applicant seeks to rely on purported disclaimers contained on its website and social media pages (Applicant’s Trial Brief at 10-11), the Board’s evaluation is necessarily limited to the four corners of the trademark applications at issue. See, e.g., In re GGWTV, LLC, Ser. No. 77/086,958 (10 TTABVUE)6 at 14-15 (T.T.A.B. Apr. 24, 2008) (because Board’s analysis is limited to determining whether mark depicted in drawing is registrable, use of a disclaimer is irrelevant); Cabell-Wayne Assoc. of the Blind, Inc. v. Fowler, Opp. No. 91122156 (41 TTABVUE)7 at 14 (T.T.A.B. Oct. 20, 2003) (“Applicant’s disclaimers and other attempts at vindicating legalese sprinkled among his website content are … irrelevant to our determination herein”). Accordingly, even if such disclaimers were somehow effective at
6 http://ttabvue.uspto.gov/ttabvue/v?pno=77086958&pty=EXA&eno=107 http://ttabvue.uspto.gov/ttabvue/v?pno=91122156&pty=OPP&eno=41
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dispelling an association with the Club – itself a dubious proposition which Opposer disputes –
they would have no bearing on the disposition of Opposer’s claims in this proceeding.
IV. FAIR USE IS LEGALLY UNAVAILABLE AS A DEFENSE WHERE AN APPLICANT SEEKS REGISTRATION OF A TERM AS A TRADEMARK
Finally, Applicant’s purported fair use defense fails as a matter of law. As a threshold matter, Applicant failed to plead such a defense in its answer (4 TTABVUE), and accordingly it has been waived. See Fed. R. Civ. P. 8(c) (requiring party to affirmatively state any affirmative defenses). In any event, such a defense is legally unavailable in opposition proceedings.
The fair use doctrine provides a defense to a charge of infringement where the party’s “use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, … of a term which is descriptive of and used fairly and in good faith only to describe the goods or services of such party….” 15 U.S.C. § 1115(b)(4) (emphasis added). By definition, this defense “does not apply in this – or any other – Board proceeding.” AutoZone Parts, Inc. v. MS Motorsports, LLC, Opp. No. 91198031 (42 TTABVUE)8 at 25 (T.T.A.B. Dec. 11, 2012). It is impossible for any applicant for registration to satisfy the fair use defense’s requirement of use otherwise than as a mark “because the very basis of registration is the claim that the applied-for word or device is (or is intended to be) used as a mark.” Id. at 26 (emphasis in original); see also New York Yankees Partnership v. IET Prods. & Svcs., Inc., 114 U.S.P.Q.2d 1497, 1508-09 (T.T.A.B. 2015) (fair use exclusion inapplicable where registration is sought); Miles Laboratories, Inc. v. Naturally Vitamin Supplements, Inc., 1 U.S.P.Q.2d 1445, 1454 (T.T.A.B. 1986) (fair use only available as defense to action for infringement, not in a proceeding determining the right to registration). Accordingly, even if the use in question were being made fairly and in good faith for descriptive purposes – a showing that Applicant has also failed to
8 http://ttabvue.uspto.gov/ttabvue/v?pno=91198031&pty=OPP&eno=42
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make – it would be of no assistance to Applicant’s attempts in this proceeding to justify registration of Applicant’s Marks as trademarks.
CONCLUSION
For the foregoing reasons as well as those set forth in Opposer’s initial trial brief, the Board should sustain the opposition and refuse to register Applicant’s Marks.
Dated: New York, New York August 6, 2019
COWAN, LIEBOWITZ & LATMAN, P.C.
Attorneys for Opposer
By: __/Richard S. Mandel/__________________ Mary L. Kevlin
Richard S. Mandel
Joelle A. Milov 114 West 47th Street
New York, New York 10036 (212) 790-9200
21307/011/3043442
12
CERTIFICATE OF SERVICE
I HEREBY CERTIFY that, on August 6, 2019, I caused a true and complete copy of the foregoing OPPOSER’S REPLY BRIEF ON FINAL HEARING to be served by email on Applicant’s Attorney and Correspondent of Record, Steven Ivy, at ivys@stevenivy.com.
Dated: New York, New York August 6, 2019
/Joelle A. Milov/ Joelle A. Milov
21307/011/3043442
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