Written by Seth Thomas
After a long awaited verdict the Cubs have defeated the little guy again. I created a positive word that I hoped would be something my fellow Cubs fans and I could have fun with. Unfortunately my dreams were diminished today. However I have had a lot of fun with this and will keep the pages running unless the Cubs take further action and come after me to take them down or tell me to change the name. Thank you all for your support.
This Opinion is not a Precedent of the TTAB
Mailed: January 29, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board
————
Chicago Cubs Baseball Club, LLC
v.
Cubsessed, LLC
___
Opposition No. 91239415 ___
Mary L. Kevlin, Richard S. Mandel and Joelle A. Milov
of Cowan, Liebowitz & Latman, P.C. for Chicago Cubs Baseball Club, LLC.
Steven Ivy of Steven Ivy P.C. for Cubsessed, LLC.
Before Ritchie, Adlin and Pologeorgis, Administrative Trademark Judges.
______
Opinion by Adlin, Administrative Trademark Judge:
Applicant Cubsessed, LLC seeks registration of the marks CUBSESSED and
IAMCUBSESSED, both in standard characters, and both for “hats; t-shirts.”1 In its notice of opposition, Opposer Chicago Cubs Baseball Club, LLC alleges prior use and
1 Application Serial Nos. 87451846, filed May 16, 2017 (the “’846 Application”), and 87412384, filed April 14, 2017 (the “’384 Application”), respectively, each filed under Section 1(b) of the Trademark Act based on allegations of an intent to use the marks in commerce. Applicant acquired the ’384 Application by assignment from Seth Thomas, Applicant’s principal.
Opposition No. 91239415
registration of CUBS, in a variety of forms, in connection with a wide variety of goods and services, including baseball games and apparel.2 As grounds for opposition, Opposer alleges that use of Applicant’s mark would be likely to cause confusion with, and dilute (by blurring), Opposer’s marks, and falsely suggest a connection with Opposer. In its answer, Applicant admits that Opposer owns its pleaded marks and registrations, but denies the remaining salient allegations in the notice of opposition. Applicant also asserts a number of “affirmative defenses” which are in fact merely amplifications of its denials.3
I. The Record and Evidentiary Objection
The record consists of the pleadings and, by operation of Trademark Rule 2.122(b), the file of Applicant’s involved application. In addition, Opposer introduced:
First Notice of Reliance (“Opp. NOR 1”) on its pleaded registrations. 7 TTABVUE.4
Second NOR (“Opp. NOR 2”) on Applicant’s discovery responses. 8 TTABVUE.
2 Registration Nos. 869838, 1042652, 1538033, 1538151, 1538193, 1544313, 1548675, 1560472, 1612016, 1694837, 1916572, 3199968, 3231135, 3231136, 3231137, 3320038, 3320039, 3320040, 3320041, 3320042, 3320043, 3320044, 3326192, 3326193, 3403043, 3403044, 3644960, 3703178, 3854382, 5424582, 5414341 and 5561908. Additional detail about the most relevant pleaded registrations is provided below.
3 Applicant’s assertion that the notice of opposition fails to state a claim for relief is not an affirmative defense, but rather an allegation that Opposer’s pleading is defective.
4 Citations to the record reference TTABVUE, the Board’s online docketing system. The number preceding “TTABVUE” corresponds to the docket entry number(s), and any number(s) following “TTABVUE” refer to the page number(s) of the docket entry where the cited materials appear.
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Third NOR (“Opp. NOR 3”) on Internet printouts, some from the Internet Archive’s “Wayback Machine.”5 9-12 TTABVUE.
Fourth NOR (“Opp. NOR 4”) on printed publications. 13 TTABVUE.
Testimony declaration of John Morrison, Opposer’s Director, Brand Development and Activation (“Morrison Dec.”), and the exhibits thereto. 15-17 TTABVUE.
Testimony declaration of Denis Nolan, Senior Vice President, Global Consumer Products for Major League Baseball Properties, Inc. (“Nolan Dec.”) and the exhibits thereto. 19-20 TTABVUE.
Testimony declaration of Ethan G. Orlinsky, Senior Vice President, Legal, Business and Club Affairs for Major League Baseball (“Orlinsky Dec.”) and the exhibits thereto. 22-23 TTABVUE.
Testimony declaration of Lara Pitaro Wisch, Senior Vice President and General Counsel of MLB Advanced Media, Inc. (“Wisch Dec.”) and the exhibits thereto. 25-26 TTABVUE.
Applicant introduced:
Applicant’s NOR (“App. NOR”) on official records. 27 TTABVUE.6
5 We have not considered unauthenticated Wayback Machine evidence because Opposer did not introduce evidence about how the Wayback Machine works, its reliability, etc. See generally Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., 84 USPQ2d 1856 (TTAB 2007) (“there is no reason to treat [the database’s] existence as authenticating the pages in its historical record”).
6 Applicant also included its initial disclosures and discovery responses with this NOR, but these materials are generally only admissible by the receiving or inquiring party, and have therefore been given no consideration. Trademark Rule 2.120(k)(5)
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Opposition No. 91239415
In its Trial Brief, Applicant cites (by registration number only) several third-party registrations which were not made of record during its testimony period. 30 TTABVUE 10 (Applicant’s Trial Brief at 9). Opposer’s objection to consideration of these registration numbers is sustained, because the registrations themselves were not submitted during Applicant’s testimony period. Trademark Rule 2.121(a) (“No testimony shall be taken or evidence presented except during the times assigned ….”). In any event, from the registration numbers alone we are unable to determine what third-party marks are registered, or the goods or services for which they are registered. The Board does not take judicial notice of trademark registrations. Edom Labs. v. Licher, 102 USPQ2d 1546, 1550 (TTAB 2012).
II. The Parties
As explained in more detail below, Opposer is one of the two Major League Baseball teams from Chicago, most commonly referred to as the Chicago Cubs, and Applicant is one of Opposer’s devoted fans.
A. Opposer
“Founded in 1870 and one of the charter members of the National League in 1876, the Club is the oldest, continuous professional sports team in America still playing in its original city.” 15 TTABVUE 5 (Morrison Dec. ¶ 3).
Opposer has used a variety of CUB/CUBS marks for more than a century, to identify “Opposer, its baseball game and exhibition services and a wide variety of goods and services, including, but not limited to, apparel.” 21 TTABVUE 5 (Orlinsky Dec. ¶ 5); 19 TTABVUE 5 (Nolan Dec. ¶ 4). More specifically, Opposer offers t-shirts
and hats bearing its CUBS mark, or variations thereof: 4
Opposition No. 91239415
15 TTABVUE 7-8 (Morrison Dec. ¶ 8); 9 TTABVUE 329, 356; 10 TTABVUE 236, 275. Apparel is Opposer’s “largest category of licensed merchandise sold,” and “the Cubs
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are consistently in the top ten of merchandise sales by MLB Clubs.” 19 TTABVUE 5- 6 (Dolan Dec. ¶ 5). Licensed CUBS merchandise is available through Major League Baseball’s and Opposer’s websites and stores, as well as retailers including Dick’s Sporting Goods, Target and Wal-Mart. Id. at 6 (Dolan Dec. ¶ 7).
Opposer’s marks “frequently combine the CUB or CUBS name or mark with other words to form unitary marks and logo designs promoting the Club and various of its goods and services.” For example, Opposer uses MR. CUB for jerseys, bats and trading cards, CUBS CHARITIES for charitable services, CUBS CONVENTION for a “fan fest,” CUBS DESTINATIONS for travel packages and CUBBIERTA for a margarita. Id. at 7 (Morrison Dec. ¶ 7). Among Opposer’s most relevant pleaded registrations for purposes of this case are the following:
Mark/Reg. No. and Date Goods/Services7
7 In many cases only the most relevant goods and services are listed.
| Reg. No. 869038, May 20, 1969 | entertainment services in the nature of baseball exhibitions rendered live and through the media of radio and television |
| t-shirts, sweatshirts, pajamas, ponchos, jackets, pants, and robes |
6
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Reg. No. 1042652, July 6, 1976
| (CHICAGO disclaimed)Reg. No. 1538151, May 9, 1989 | entertainment services in the nature of baseball exhibitionsand clothing, namely, t-shirts |
| (CHICAGO disclaimed)Reg. No. 1538193, May 9, 1989 | clothing, namely, t-shirts |
| CHICAGO CUBS (typed), CHICAGO disclaimedReg. Nos. 1544313 and 1548675, June 20, 1989 and July 18, 1989, respectively | clothing, namely, t-shirts, sweatshirts, caps and hooded sweatshirtsandentertainment services in the nature of baseball exhibitions |
| CUBS (standard characters)Reg. Nos. 3231136 and 3231137, both April 17, 2007 | entertainment services, namely, baseball games, competitions and exhibitions rendered live and through broadcast media including television and radio, and via a global computer network or a commercial on-line service …andclothing, namely, caps, hats, visors, knitted head wear, shirts, t-shirts, tank tops, sweaters, pullovers, vests, shorts, pants, dresses, skirts, baseball uniforms, jerseys, warm-up suits, jogging suits, sweatshirts, sweatpants, underwear, robes, sleep wear, swimwear, jackets, ponchos, cloth bibs, infant wear, jumpers, rompers, coveralls, creepers, baby booties, ties, footwear, socks, hosiery, slippers |
CUBBIES (standard characters)
clothing, namely, shirts, t-shirts 7
Opposition No. 91239415
| Reg. No. 3644960, June 23, 2009 | |
| Reg. No. 3854382, September 20, 2010 | Clothing, namely, caps, hats, t-shirts, tank tops |
7 TTABVUE.
According to Mr. Dolan, the Cubs are among the “most well-known MLB [Major
League Baseball] Clubs, and fans, consumers, the public and the press have been widely exposed to Opposer’s CUB Marks for many decades.” 19 TTABVUE 5 (Dolan Dec. ¶ 5). Currently, 43 former Cubs are in the National Baseball Hall of Fame, including Ernie Banks, Andre Dawson and Greg Maddux. 15 TTABVUE 6 (Morrison Dec. ¶ 5).
The Cubs won the World Series in 1908, but then had a drought of more than a century, not winning it again until 2016. “As more than a century passed between the Cubs’ WORLD SERIES victories, the legend surrounding the Cubs grew and the public’s interest in the Cubs intensified as fans wondered whether they would ever win another …,” or whether the team was “cursed.” Id. at 5-6 (Morrison Dec. ¶ 4).
Perhaps as a result, the Cubs “have long attracted, and are known for possessing, an unusually dedicated and loyal fan base.” Id. at 18 (Morrison Dec. ¶ 17). In fact, a number of press reports have addressed the devotion and idiosyncrasies of Cubs fans, and reveal the public’s perception of the team. 15 TTABVUE 20-21 (Morrison Dec. ¶¶ 19-21); 17 TTABVUE 123. For example:
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Opposition No. 91239415
A People Magazine article entitled “Meet the Adorable ‘Home Run’ Babies Conceived After the Chicago Cubs’ Historic World Series Win” includes the following lede: “It’s been about nine months since the Chicago Cubs were named the 2016 Major League Baseball World Series winners – and local hospitals are noticing a spike in births.” 9 TTABVUE 243-45. A “cbsnews.com” article entitled “Chicago Hospitals See Spike in Births 9 Months After Cubs’ World Series Win” indicates that one family named their baby Theo after Cubs executive Theo Epstein. 9 TTABVUE 237-38.
An article on “startribune.com” entitled “New Car or World Series Tickets? Cubs Fans Spending ‘Insane’ Amounts − $6,000, $10,000, More – for Historic Seats” indicates that World Series tickets for games at Wrigley Field were being resold for from $1,625 for standing room only to $16,000 or more for higher end seats. 12 TTABVUE 185-186.
An article on “bleachernation.com” entitled “Cubs Fans Are Everywhere, and Will Go Anywhere” indicates that not only are Opposer’s home attendance figures and television ratings high compared to those for other Major League Baseball teams, but Cubs fans also travel more to away games than fans of other teams. In fact, according to the article, several Major League Baseball teams draw 10,000 or more additional fans than average when the Cubs are visiting. 12 TTABVUE 208-210.
A 1987 Los Angeles Times article, “Beware of Devious Cubs Fans: They Can Alter Their Voices” speculated that the Cubs could make that year’s World Series. It goes on: “Because if the Cubs do make it to the Series, this particular continent will be overrun with smug, swaggering, crowing, official-equipment-wearing, original, die-hard Cubs fans. It’s a frightening thought – a bloodless takeover of the USA by these strange people … Come October, we’ll be assaulted with stories about how the Cubbies have the largest and loyalist and doggone swellest bunch of fans in the whole world … they’re so caught up in their own mystique and so smug about their Cubbie loyalty ….” 13 TTABVUE 10-12.
9
Opposition No. 91239415
A 1989 Christian Science Monitor article entitled “Loyal Chicago Cubs Fans Can Really Cheer Now” states “No one’s quite sure why the team attracts such universal fondness. But sports analysts have many theories. For example: The club’s mostly day baseball schedule draws wholesome fans – businesspeople and families – to the games; WGN televises Cubs games across the country, building a loyal following; or, perhaps, people are naturally sympathetic to an underdog.” 13 TTABVUE 14.
A 1999 Milwaukee Journal Sentinel article entitled “Cubs Fans Didn’t Come to Town in Loving Mood” begins: “Baseball’s only traveling home team visited County Stadium Monday night, bringing along a four-game slump, thousands of friends and no sympathy … Cub fans’ patience has been clinically proven unshakeable, but there’s no better way to stretch it than that.” 13 TTABVUE 21-22.
The Mobile Register article “Eddie Vedder Pens Song for Chicago Cubs Die-Hards” states that the Pearl Jam front man wrote a song for the team, including the lyric “When you’re born in Chicago you’re blessed and you’re healed the first time you walk into Wrigley Field.” 13 TTABVUE 75.
The Chicago Business Journal published a 2014 article about the city’s “most recognizable brands,” and found that the Cubs were fourth, following McDonald’s, Walgreens and Kraft Foods, but ahead of Boeing, United Airlines, Allstate, the Chicago Bears, Sears and Wm. Wrigley Jr. Co. 13 TTABVUE 119.
An article in “thewrap.com” entitled “Joy and Despair in Wrigleyville: 10 Best Chicago Cubs Shout-Outs in Movies and TV” indicates that “there’s no other team that has come to be defined for its combination of tradition, passion and seemingly endless tragedy. As such, the Cubs have be- come the basis for many jokes and stories in movies and TV,” including the movies “Ferris Bueller’s Day Off,” “Rookie of the Year” and “Taking Care of Business” and the TV shows “Saturday Night Live,” “Family Guy” and “Parks and Recreation.” 9 TTABVUE 154-162. The team was also a plot point in the movie “Back to the Future Part II.” 9 TTABVUE 202-204.
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Moreover, the team and its fans are the subject of academic articles and studies. 15 TTABVUE 18-20 (Morrison Dec. ¶¶ 17-18). For example:
An article in an Association for Psychological Science publication entitled “Sports Complex: The Science Behind Fanatic Behavior” states “Perhaps no fans understand loyalty to a losing team better than followers of the Chicago Cubs.” 12 TTABVUE 177-184.
The Journal of Consumer Marketing published a study entitled “Holy Cow! Wait ‘Til Next Year! A Closer Look at the Brand Loyalty of Chicago Cubs Baseball Fans.” It “examined several factors related to the brand loyalty exhibited by fans of the Chicago Cubs major league baseball team.” It compared the team to another Major League Baseball team with a similarly “inferior performance record,” and found that while the other club “experienced a decline in fan loyalty,” Cubs fans “behaved in what may be construed as a less conventional or rational manner and, despite the poor performance of their team, demonstrated strong brand loyalty to the team and routinely filled the seats at Wrigley Field.” 13 TTABVUE 24-39.
The Journal of Management Research published a study by two of the authors behind the Journal of Consumer Marketing study (discussed immediately above) entitled “Thirty Games Out and Sold Out for Months! An Empirical Examination of Fan Loyalty to Two Major League Baseball Teams.” This study compared Cubs fans to those of the Arizona Diamondbacks, and found that while losing teams usually suffer drops in attendance and other measures of loyalty, this is not the case with the Cubs. 13 TTABVUE 78-87.
15 TTABVUE 18-20 (Morrison Dec. ¶¶ 17-18).
Opposer extensively uses its marks to promote itself, its games and its products
and services. The following examples of Opposer’s use of CUBS marks are illustrative:
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Opposition No. 91239415
16 TTABVUE 69, 70. Opposer also has a number of corporate sponsors, which “spend substantial additional amounts on their own advertisements and promotions highlighting their affiliation with the Club …,” for example:
12
Opposition No. 91239415
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Opposition No. 91239415
15 TTABVUE 11-12 (Morrison Dec. ¶ 11 and Ex. E); 17 TTABVUE 5, 8, 11, 15. Ap- plicant admits that Opposer’s marks are “famous” and well known, and that they became famous prior to April 14, 2017. 8 TTABVUE 227 (responses to Requests for Admission Nos. 6(a) – 7(b)).
B. Applicant
Applicant’s Facebook page is exclusively devoted to the Chicago Cubs, and features one of Opposer’s primary CUBS marks:8
8 Applicant did not introduce any testimony, and the evidence regarding Applicant’s use of its involved marks (mostly Internet printouts) is generally not admissible for the truth of the matters asserted therein. Safer Inc. v. OMS Inv. Inc., 94 USPQ2d 1031, 1037 n.14 and 1040 (TTAB 2010). Nevertheless, in this case, what this evidence shows on its face is directly relevant to Opposer’s claims. See Harry Winston, Inc. and Harry Winston S.A. v. Bruce Winston Corp., 111 USPQ2d 1419, 1428 (TTAB 2014) (“… such materials are frequently competent to show, on their face, matters of relevance to trademark claims (such as public perceptions), regardless of whether the statements are true or false. Accordingly, they will not be excluded outright, but considered for what they show on their face.”). See also In re Ayoub Inc., 118 USPQ2d 1392, 1399 n.62 (TTAB 2016).
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Opposition No. 91239415
12 TTABVUE 4. Under the heading “Our Story,” the page states: “This page is built by a Cubsessed Cub fan for Cubsessed Cubs fans.” Id. Applicant’s Instagram page is similar, and appears to include depictions of current or former Cubs players, and others, posing with CUBSESSED t-shirts. Id. at 77-100.
Applicant’s Twitter account is not only similarly Cubs-focused, but includes what appears to be a faux dictionary definition which leaves no doubt as to the intended meaning of CUBSESSED, defining the term as “obsessed with the Chicago Cubs”:
15
Opposition No. 91239415
12 TTABVUE 27. As Applicant stated in an interrogatory response, Mr. Thomas selected Applicant’s involved marks “to express himself publically and to lampoon his own condition, thereby announcing to the general public that he is obsessed with the Chicago Cubs Baseball Club.” 8 TTABVUE 33 (response to Interrogatory No. 3). Applicant also admits that its goods “are intended to be marketed to fans of Opposer’s CHICAGO CUBS baseball team,” and that “the CUB portion of Applicant’s marks is intended to refer to Opposer’s CHICAGO CUBS baseball team.” 8 TTABVUE 228 (responses to Requests for Admission Nos. 9-10). A post on Applicant’s “iamcubsessed.com” website states “Welcome to iamcubsessed. My name is Seth
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Opposition No. 91239415
Thomas. I have been Cubsessed with the Chicago Cubs since birth. I assume similar to most Cubsessed Chicago Cubs fans.” Id. at 156-57.9
Applicant offers t-shirts bearing the IAMCUBSESSED and CUBSESSED marks on the “inktale.com” website:
9 Applicant’s “iamcubsessed.com” website disclaims any affiliation between Applicant and Major League Baseball or the Chicago Cubs. The disclaimer concludes: “It’s just a media site that happens to cover MLB and the Chicago Cubs.” 8 TTABVUE 223.
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Opposition No. 91239415
12 TTABVUE 102, 130. Applicant does not claim to have used its involved marks prior to April 5, 2017. 8 TTABVUE 35, 47 (response to Interrogatory No. 6 and Document Request No. 6).
III. Standing
Because status and title copies of Opposer’s pleaded registrations are of record, 7 TTABVUE, Opposer has established its standing. Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). In any event, “Applicant does not contest Opposer’s standing.” 30 TTABVUE 6 (Applicant’s Trial Brief at 5).
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Opposition No. 91239415
IV. Priority
Because Applicant has not counterclaimed to cancel any of Opposer’s pleaded registrations, priority is not at issue with respect to the marks and goods identified therein. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). In any event, “Applicant also concedes priority.” 30 TTABVUE 6 (Applicant’s Trial Brief at 5). Furthermore, Opposer has established its prior common law use of CUBS and variations thereof for t-shirts, hats, baseball games and a wide variety of other products and services. 21 TTABVUE 5 (Orlinsky Dec. ¶ 5); 19 TTABVUE 5 (Nolan Dec. ¶ 4).
V. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). Opposer bears the burden of establishing that there is a likelihood of confusion by a preponderance of the evidence. Cunningham, 55 USPQ2d at 1848. We consider the likelihood of confusion factors about which there is evidence,
and treat the remaining factors as neutral. 19
Opposition No. 91239415
We focus here on Opposer’s pleaded Registration No. 3231137 (CUBS in standard characters) (the “’137 Registration”), which is registered for clothing, including t- shirts and hats/caps. If we find confusion likely between this mark and Applicant’s involved marks, we need not consider the likelihood of confusion between Applicant’s marks and Opposer’s other pleaded marks. On the other hand, if we find no likelihood of confusion between Applicant’s marks and the mark in Opposer’s pleaded ’137 Registration, we would not find confusion likely between Applicant’s mark and Opposer’s other pleaded marks. In re Max Capital Grp., 93 USPQ2d 1243, 1245 (TTAB 2010).
A. Similarity of the Goods
Opposer’s t-shirts, hats and caps are identical to Applicant’s t-shirts and hats. Because the goods are identical, we must presume that the channels of trade and classes of purchasers are as well. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion); American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011).
The legal identity of the goods and their overlapping channels of trade and classes of purchasers not only weigh heavily in favor of finding a likelihood of confusion, but also reduce the degree of similarity between the marks necessary to find a likelihood of confusion. In re Viterra, 101 USPQ2d at 1908; In re Mighty Leaf Tea, 94 USPQ2d at 1260; In re Max Capital Group Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010).
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B. The Strength/Fame of Opposer’s Marks
Before addressing the marks themselves, we consider the strength of Opposer’s marks, to ascertain the scope of protection to which they are entitled.
There is no evidence, and Applicant does not argue, that Opposer’s marks are conceptually weak. Furthermore, nothing about the term CUB/CUBS describes or suggests baseball, a baseball team or apparel; rather, CUB/CUBS is arbitrary.
As for commercial strength, Applicant concedes that Opposer’s pleaded marks are “famous.” 8 TTABVUE 227 (responses to Requests for Admission Nos. 6(a) – 7(b)). Where fame exists, it “plays a ‘dominant role in the process of balancing the DuPont factors,’ … and ‘[f]amous marks thus enjoy a wide latitude of legal protection.’” Bose Corp. v. QSC Audio Products, Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002) (quoting Recot, Inc. v. Benton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000)). A strong mark “casts a long shadow which competitors must avoid.” Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
Given Applicant’s admission that Opposer’s pleaded marks are famous, we need not belabor the point, but we must nonetheless place Opposer’s marks on the “spectrum” of marks, which ranges from “very strong to very weak.” Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005) (quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003)). See also, Joseph Phelps Vineyards, 122 USPQ2d at 1734-35. Here, the record reveals that Opposer’s CUBS marks are commercially quite strong.
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While Opposer has not introduced any consumer surveys showing fame, they are not necessary; indeed, they “rarely appear.” Bose, 63 USPQ2d at 1305. Rather, “fame of a mark may be measured indirectly, among other things, by the volume of sales and advertising expenditures of the goods traveling under the mark, and by the length of time those indicia of commercial awareness have been evident.” Id. Other relevant factors include “length of use of the mark, market share, brand awareness, licensing activities, and variety of goods bearing the mark.” Coach Services Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012).
Each of these measures shows that Opposer’s CUB/CUBS marks are quite strong. Indeed, besides being in use for well over a century, the CUBS marks have enjoyed considerable commercial success and are widely recognized by the public.
For example, the Cubs are reported to have drawn over 3 million fans to Wrigley Field most years from 2007-2018, and in that timeframe attendance at home Cubs games was in the upper echelon of Major League Baseball teams. 9 TTABVUE 15- 123; 15 TTABVUE 14-15 (Morrison Dec. ¶ 14). While Opposer has designated its sales and advertising expenses as confidential, suffice it to say that they are impressive by any measure, which is perhaps not surprising for one of only 30 Major League Baseball teams, which is based in one of the country’s largest cities. 15 TTABVUE 9- 13 (Morrison Dec. ¶¶ 9-12); 19 TTABVUE 7 (Nolan Dec. ¶ 8). Opposer has more than 3 million Facebook followers, more than 2 million Twitter followers and more than 1 million Instagram followers. 15 TTABVUE 12 (Morrison Dec. ¶ 12). Opposer enjoys a great deal of unsolicited media coverage, which Mr. Morrison estimates “to be of a
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value exponentially higher than our actual spend,” including in: publications such as Sports Illustrated, The New York Times and Washington Post; and television shows such as The Ellen Show, Late Night with Stephen Colbert, The Bachelor, The Today Show and Dancing With the Stars. 15 TTABVUE 14 (Morrison Dec. ¶ 13). Over 40 million people watched Game 7 of the 2016 World Series, won by the Cubs, which was the most-watched World Series game in 25 years. Id. Cubs games have been nationally broadcast on FOX, ESPN, TBS and other networks, with average viewership of almost 400,000 per game since 2011, increasing to around 545,000 in 2016. 21 TTABVUE 7 (Orlinsky Dec. ¶ 7). All told, “millions of people watch or listen to Cubs’ games per season.” 21 TTABVUE 8 (Orlinsky Dec. ¶ 11). Millions more interact with the Cubs websites. 25 TTABVUE 5-8 (Wisch Dec. ¶¶ 3-14). “The Cubs are consistently in the top ten of merchandise sales by MLB Clubs.” 19 TTABVUE 5- 6 (Dolan Dec. ¶ 5). As Applicant admits, “it would be impossible to find an individual living and working in the State of Illinois that would be unfamiliar with Chicago Cubs baseball team.” 30 TTABVUE 10 (Applicant’s Appeal Brief at 9).
Thus, Opposer’s CUBS marks are commercially quite strong (and arbitrary). This factor also weighs heavily in favor of finding a likelihood of confusion.
C. Similarity of the Marks
The marks are more similar than dissimilar “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691
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(Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). Indeed, CUB/CUBS is the dom- inant and most distinctive portion of Applicant’s marks and Opposer’s mark, each of which reference the Major League Baseball team known as the CUBS .
Obviously, CUBS is the entirety of the mark in Opposer’s ’137 Registration. The record makes clear that Opposer is widely known as and by “CUBS” or “CHICAGO CUBS.”
As for Applicant’s marks, CUB is the dominant portion of CUBSESSED because it comes first. Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”); see also, Palm Bay Imports Inc., 73 USPQ2d at 1692; Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). While I AM is the first portion of Applicant’s other mark, I AM merely indicates who is CUBSESSED, most likely the person who wears a CUBSESSED hat or shirt. As Opposer points out, I AM only “reinforces Applicant’s association with the Club.” 29 TTABVUE 36 (Opposer’s Trial Brief at 28); see generally Chicago Bears Football Club, Inc. v. 12th Man/Tennessee LLC, 83 USPQ2d 1073, 1077 (TTAB 2007) (BEARS and CHICAGO BEARS likely to be confused with 12th BEAR). The commercial impression of both of Applicant’s marks is being obsessed with the Cubs, whether the person who is “cubsessed” is identified or not. Therefore, the term I AM is entitled to less weight in our analysis, as it merely describes who is obsessed with the team. Cunningham, 55 USPQ2d at 1846 (“Regarding descriptive terms, this court has noted that the ‘descriptive component
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of a mark may be given little weight in reaching a conclusion on the likelihood of confusion.’”) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)).
As for the letter string “sessed” in both of Applicant’s marks, Applicant has admitted, and in fact touted, that this letter string is intended to signify and call to mind the word “obsessed,” going so far as to create a definition of CUBSESSED as “obsessed” with the CUBS. 12 TTABVUE 27; 8 TTABVUE 33 (response to Interrogatory No. 3). Applicant also admits that “the CUB portion of Applicant’s marks is intended to refer to Opposer’s CHICAGO CUBS baseball team.” 8 TTABVUE 228. Therefore, the letter string “sessed” essentially serves as an adjective which modifies CUBS, the main focus of both of Applicant’s marks.
While there are differences in how the marks look and sound, their dominant terms are essentially identical. Thus, consumers seeing or hearing Applicant’s marks may very well perceive them as extensions of Opposer’s brand, and at the very least some of Opposer’s fans would be likely to assume there is a connection between Applicant’s shirts and hats and the Cubs.
Moreover, as Applicant admits, its marks refer to Opposer’s baseball team, and use the name of that team. 30 TTABVUE 7 (Applicant’s Appeal Brief at 6) (“there is no dispute that Applicant’s Marks are intended to reference the Chicago Cubs”). As a result, Applicant’s marks and Opposer’s marks convey similar meanings. In fact, in the absence of any evidence that third parties use CUB/CUBS for clothing (or for that matter any other products or services), and given the commercial and conceptual
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strength and longstanding and widespread use of Opposer’s marks, many consumers encountering Applicant’s marks would understand them to mean exactly what Applicant intends them to mean: “obsessed with the Chicago Cubs.” Therefore, consumers who are familiar with the Chicago Cubs, upon encountering Applicant’s mark, may very well believe that the Cubs are the source of Applicant’s shirts and hats.
The record indicates that source confusion based on the parties’ marks is likely for other reasons. First, the evidence makes clear that Cubs fans are among and perhaps the most devoted, loyal and “obsessed” fans of Major League Baseball. Thus, it would not be surprising if the team decided to capitalize on this affinity by using and offering apparel under the marks CUBSESSED or IAMCUBSESSED. Second, and relatedly, Opposer already uses a large number of variations of its CUB/CUBS marks, with CUB/CUBS often combined with additional words, including on shirts and hats. Therefore, the term CUBSESSED could very well be perceived as a new CUBS mark coined by the team to cater or refer to its most devoted fans; and CUBSESSED/IAMCUBSESSED clothing could be perceived as team gear designed to enable those fans to proudly display their “CUBSESSION.” This factor also weighs in favor of finding a likelihood of confusion.
D. Other Factors
Applicant’s argument “that baseball fans, in general, are very sophisticated and inquisitive – especially die-hard fans that focus their attention on fan clubs addressing their team(s),” and thus unlikely to be confused, 30 TTABVUE 9, is not
well-taken. It is unsupported by any evidence whatsoever. Furthermore, the record 26
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reveals that hats and t-shirts are often inexpensive, and likely purchased on impulse, perhaps when fans who were not previously in the market for a team shirt or hat pass by a team store at the ballpark while attending a game. In any event, we must consider the “least sophisticated” potential purchasers of the goods. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1163- 64 (Fed. Cir. 2014). Some consumers of t-shirts and caps are not sophisticated.
Applicant’s argument that the lack of actual confusion weighs in its favor is misplaced, because there is no evidence supporting it, and there is no evidence regarding the extent of use of Applicant’s marks. Therefore, we cannot gauge whether or the extent to which there has been an opportunity for confusion to occur if it were likely to occur. See Nina Ricci S.A.R.L. v. E.T.F. Enters. Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1903 (Fed. Cir. 1989) (“The absence of any showing of actual confusion is of very little, if any, probative value here because (1) no evidence was presented as to the extent of ETF’s use of the VITTORIO RICCI mark on the merchandise in question in prior years ….”); In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984). This factor is neutral.
Applicant’s argument regarding its Illinois state trademark registrations is also not well taken. They do not establish use of Applicant’s mark and are “incompetent to prove anything material to this proceeding.” Faultless Starch Co. v. Sales Produc- ers Assoc., 530 F.2d 1400, 189 USPQ 141, 142 n.2 (CCPA 1976) (“State registrations alone do not establish use.”); Kraft, Inc. v. Balin, 209 USPQ 877, 880 (TTAB 1981) (state registration “incompetent to prove anything material to this proceeding”); In re
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Anania Assoc., Inc., 223 USPQ 740, 742 (TTAB 1984) (“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”).
VI. Conclusion
The goods and channels of trade are identical, Opposer’s CUBS marks are commercially quite strong and arbitrary, and more similar to Applicant’s marks than dissimilar. Confusion is likely.
Decision: The opposition is sustained on Opposer’s Section 2(d) claim,10 and we therefore need not reach Opposer’s other claims. Multisorb Tech., Inc. v. Pactiv Corp., 109 USPQ2d 1170, 1171 (TTAB 2013). Registration of Applicant’s mark is refused.
10 In its Trial Brief, for the first time, Applicant asserts an unpleaded fair use defense under 15 U.S.C. § 1115(b)(4). Even if pleaded, the defense is inapplicable because Applicant is using CUBSESSED and IAMCUBSESSED as marks. Furthermore, the defense is untenable in Board proceedings. New York Yankees Partnership v. IET Prods. & Svcs., Inc., 114 USPQ2d 1497, 1508-09 (TTAB 2015); Miles Labs., Inc. v. Naturally Vitamin Supplements, Inc., 1 USPQ2d 1445, 1454 (TTAB 1986).
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