The Chicago Cubs opposition to the Federal Trademarking of the word Cubsessed.

Written by Seth Thomas

Below is the Chicago Cubs opposition to the approval of the Federal Trademark to my words Cubsessed and iamCubsessed. Both words are trademarked in the state of Illinois currenlty by Cubsessed LLC.

Click here for link to actual document

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

PUBLIC REDACTED VERSION OPPOSER’S BRIEF ON FINAL HEARING1

CHICAGO CUBS BASEBALL CLUB, LLC,
v. Opposer, :

COWAN, LIEBOWITZ & LATMAN, P.C.

114 West 47th Street New York, New York 10036 (212) 790-9200

1 Redacted for Confidential Information, pursuant to the parties’ Stipulated Protective Order (5-6 TTABVUE). An unredacted version of Opposer’s Brief on Final Hearing is being filed separately under seal.

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TABLE OF CONTENTS

TABLE OF AUTHORITIES …………………………………………………………………………………………… iii PRELIMINARY STATEMENT ………………………………………………………………………………………..1 DESCRIPTION OF THE RECORD …………………………………………………………………………………..3 STATEMENT OF ISSUES ……………………………………………………………………………………………….5 STATEMENT OF FACTS ………………………………………………………………………………………………..5 ARGUMENT …………………………………………………………………………………………………………………22

OPPOSER HAS STANDING TO BRING THIS OPPOSITIONPROCEEDING ……………………………………………………………………………………………………22
THE OPPOSITION SHOULD BE SUSTAINED BECAUSE
APPLICANT’S MARKS CREATE A LIKELIHOOD OF CONFUSION
WITH OPPOSER’S CUB MARKS ……………………………………………………………………….22
1. Opposer Has Prior Rights in Opposer’s CUB Marks ……………………………………..22
2. There Is A Likelihood of Confusion Between the Parties’ Marks…………………….23
  1. Opposer’s CUB Marks Are Conceptually Strong and
    Famous and Entitled to a Broad Scope of Protection …………………………..24
  2. The Parties’ Marks are Confusingly Similar ………………………………………27
  3. The Parties’ Goods are Identical……………………………………………………….30
  4. The Parties’ Trade Channels and Purchasers Are Identical…………………..31
  5. The Goods At Issue Are Likely to Be Selected With LessCare ………………………………………………………………………………………………32
  6. The Absence of Actual Confusion Evidence is Immaterial
    in View of Applicant’s Limited Use of Applicant’s Marks…………………..32
  7. Applicant’s Actual Use of Applicant’s Marks Proves
    Applicant is Acting in Bad Faith in Order to Trade on the
    Reputation and Fame of Opposer’s CUB Marks …………………………………33
  8. Applicant Has Failed to Offer Any Evidence of Third-Party Usage…………………………………………………………………………………………….35
  9. The Relevant Factors Lead to the Inevitable Conclusion
    That There is a Likelihood of Confusion Between the
    Parties’ Respective Marks………………………………………………………………..35
APPLICANT’S REGISTRATIONS SHOULD BE REFUSED BECAUSE APPLICANT’S MARKS DILUTE THE DISTINCTIVE QUALITY OF
OPPOSER’S CUB MARKS BY BLURRING…………………………………………………………36

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Opposer’s CUB Marks Were Famous and Distinctive Long Before
April 14, 2017 …………………………………………………………………………………………..36
Applicant’s Marks are Likely to Blur the Distinctive Quality of
Opposer’s CUB Marks……………………………………………………………………………….40
1. Applicant’s Marks are Highly Similar to Opposer’s CUB
  Marks ……………………………………………………………………………………………40
2. Opposer’s CUB Marks are Highly Distinctive ……………………………………41
3. The Record Contains No Evidence of Third-Party Use………………………..42
4. Opposer’s CUB Marks are Highly Recognized…………………………………..42
5. Applicant Intended to Create an Association withOpposer’s CUB Marks…………………………………………………………………….42

IV. APPLICANT’S REGISTRATIONS SHOULD ALSO BE REFUSED
BECAUSE APPLICANT’S MARKS FALSELY SUGGEST A
CONNECTION WITH OPPOSER AND ITS CHICAGO CUBS CLUB…………………….43

CONCLUSION………………………………………………………………………………………………………………46

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Cases

TABLE OF AUTHORITIES

Barbara’s Bakery Inc. v. Landesman,
82 U.S.P.Q.2d 1283 (T.T.A.B. 2007) …………………………………………………………………………..33

Bose Corp. v. QSC Audio Prods., Inc.,
293 F.3d 1367, 63 U.S.P.Q.2d 1303 (Fed. Cir. 2002) …………………………………………………….24

Brown Shoe Co., Inc. v. Robbins,
90 U.S.P.Q.2d 1752 (T.T.A.B. 2009) …………………………………………………………………………..33

Century 21 Real Estate Corp. v. Century Life of Am.,
970 F.2d 874, 23 U.S.P.Q. 1698 (Fed. Cir. 1992) …………………………………………………….30, 35

Chanel, Inc. v. Makarczyk,
110 U.S.P.Q.2d 2013 (T.T.A.B. 2014) …………………………………………………………………………36

Chicago Cubs Baseball Club, LLC v. Huber,
Opp. No. 91232736 (T.T.A.B. May 3, 2019) ………………………………………………..26, 28, 29, 30

Chicago Bears Football Club, Inc. v. 12<TH> Man/Tennessee LLC,
83 U.S.P.Q.2d 1073 (T.T.A.B. 2007) ………………………………………………………………..29, 31, 35

Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 U.S.P.Q.2d 1842 (Fed. Cir. 2000) ………………………………………………………22

In re E.I. du Pont DeNemours & Co.,
476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973)………………………………………………………..23

Edom Laboratories, Inc. v. Lichter,
102 U.S.P.Q.2d 1546 (T.T.A.B. 2012) ……………………………………………………………………22, 33

ESRT Empire State Building, LLC v. Liang,
Opp. No. 91204122 (T.T.A.B. June 17, 2016) …………………………………………………………41, 42

Genesco Inc. v. Martz,
66 U.S.P.Q.2d 1260 (T.T.A.B. 2003) …………………………………………………………………………..22

Hard Rock Café Int’l (USA), Inc. v. Elsea,
56 U.S.P.Q.2d 1504 (T.T.A.B. 2000) …………………………………………………………………………..31

Interstate Brands Corp. v. McKee Foods Corp.,
53 U.S.P.Q.2d 1910 (T.T.A.B. 2000) …………………………………………………………………………..27

Page(s)

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iii

Jewelers Vigilance Comm., Inc. v. Ullenberg Corp.,
853 F.2d 888, 7 U.S.P.Q.2d 1628 (Fed. Cir. 1988) ………………………………………………………..33

Jewelers Vigilance Comm., Inc. v. Ullenberg Corp.,
823 F.2d 490, 2 U.S.P.Q.2d 2021 (Fed. Cir. 1987) ………………………………………………………..22

Jules Berman & Associates, Inc. v. Consolidated Distilled Prods., Inc.,
202 U.S.P.Q. 67 (T.T.A.B. 1979) ………………………………………………………………………………..31

Kenner Parker Toys, Inc. v. Rose Art Indus., Inc.,
963 F.2d 350, 22 U.S.P.Q.2d 1453 (Fed. Cir. 1992) ……………………………………………24, 29, 30

Kohler Co. v. Baldwin Hardware Corp.,
82 U.S.P.Q.2d 1100 (T.T.A.B. 2007) …………………………………………………………………………..23

L.C. Licensing Inc. v. Berman,
86 U.S.P.Q.2d 1883 (T.T.A.B. 2008) …………………………………………………………………………..35

Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co.,
799 F.2d 867, 230 U.S.P.Q. 831 (2d Cir. 1986) …………………………………………………………….33

Major League Baseball Properties, Inc. v. Webb,
Canc. No. 92060903 (T.T.A.B. July 18, 2018)…………………………………………………………31, 32

Mattel Inc. v. Funline Merchandise Co.,
81 U.S.P.Q.2d 1372 (T.T.A.B. 2006) …………………………………………………………………………..23

McDonald’s Corp. v. McSweet, LLC,
112 U.S.P.Q.2d 1268 (T.T.A.B. 2014) ……………………………………………………………………26, 39

N.Y. Yankees P’ship v. IET Prods. & Servs., Inc.,
114 U.S.P.Q.2d 1497 (T.T.A.B. 2015) …………………………………………………………………. passim

In re Nat’l Data Corp.,
753 F.2d 1056, 224 U.S.P.Q. 749 (Fed. Cir. 1985) ………………………………………………………..27

National Pork Board v. Supreme Lobster & Seafood Co.,
96 U.S.P.Q.2d 1479 (TTAB 2010) ………………………………………………………………………………41

In re Nieves & Nieves LLC,
113 U.S.P.Q.2d 1639 (T.T.A.B. 2015) ……………………………………………………………………44, 45

Nike, Inc. v. Maher,
100 U.S.P.Q.2d 1018 (T.T.A.B. 2011) ……………………………………………………………………39, 41

Octocom Sys. v. Houston Computer Servs.,
918 F.2d 937, 16 U.S.P.Q.2d 1783 (Fed. Cir. 1990) ………………………………………………………31

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Opryland USA, Inc. v. Great American Music Show, Inc.,
970 F.2d 847, 23 U.S.P.Q.2d 1471 (Fed. Cir. 1992) ………………………………………………………24

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) …………………………………………………….26

Planters Nut & Chocolate Co. v. Crown Nut Co.,
305 F.2d 916, 134 U.S.P.Q. 504 (C.C.P.A. 1962)………………………………………………………….34

R.J. Reynolds Tobacco Co. v. R. Seelig & Hille,
201 U.S.P.Q. 856 (T.T.A.B. 1978) ………………………………………………………………………………24

Rebel Wine Co. LLC v. Piney River,
Canc. No. 91232736 (T.T.A.B. May 25, 2018)……………………………………………………………..28

Recot, Inc. v. Becton,
214 F.3d 1322, 54 U.S.P.Q.2d 1894 (Fed. Cir. 2000) ……………………………………………….23, 24

Research in Motion, Ltd. v. Defining Presence Marketing Grp.,
102 U.S.P.Q.2d 1187 (T.T.A.B. 2012) …………………………………………………………………………41

Ritchie v. Simpson,
170 F.3d 1092, 50 U.S.P.Q.2d 1023 (Fed. Cir. 1999) …………………………………………………….22

Roger & Gallet S.A. v. Venice Trading Co.,
1 U.S.P.Q.2d 1829 (T.T.A.B. 1987) …………………………………………………………………………….23

In re SCSW, Inc.,
Ser. No. 86450668 (T.T.A.B. Dec. 28, 2016)………………………………………………………………..44

Sealed Air Corp. v. Scott Paper Co.,
190 U.S.P.Q. 106 (T.T.A.B. 1975) ………………………………………………………………………………27

Shoe Corp. of America v. Juvenile Shoe Corp.,
266 F.2d 793, 121 U.S.P.Q. 510 (C.C.P.A. 1959)…………………………………………………….33, 34

In re Sloppy Joe’s Int’l, Inc.,
43 U.S.P.Q.2d 1350 (T.T.A.B. 1997) …………………………………………………………………………..45

Stone Lion Cap. Partners, L.P. v. Lion Cap. LLP,
746 F.3d 1317, 110 U.S.P.Q.2d 1157 (Fed. Cir. 2014) …………………………………………………..31

The Cadence Group, Inc. v. Cadence Media Group, L.C.,
Opp. No. 91151811 (T.T.A.B. Mar. 16, 2004)………………………………………………………………35

The Christian Broadcasting Network, Inc. v. ABS-CBN Intl’l,
84 U.S.P.Q.2d 1560 (T.T.A.B. 2007) ……………………………………………………………………..25, 27

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Tiffany (NJ) Inc. v. eBay, Inc.,
600 F.3d 93, 94 U.S.P.Q.2d 1188 (2d Cir. 2010) …………………………………………………………..40

Ty, Inc. v. Jones Grp., Inc.,
237 F.3d 891, 57 U.S.P.Q.2d 1617 (7th Cir. 2001) ………………………………………………………..27

UMG Recordings, Inc. v. Mattel, Inc.,
100 U.S.P.Q.2d 1868 (T.T.A.B. 2011) ………………………………………………………………39, 40, 41

Weiss Assocs., Inc. v. HRL Assocs., Inc.,
902 F.2d 1546, 14 U.S.P.Q.2d 1840 (Fed. Cir. 1990) …………………………………………………….32

Wella Corp. v. Cal. Concept Corp.,
558 F.2d 1019, 194 U.S.P.Q. 419 (C.C.P.A. 1977)………………………………………………………..28

In re White Swan Ltd.,
8 U.S.P.Q.2d 1534 (T.T.A.B. 1988) …………………………………………………………………………….27

In re White,
80 U.S.P.Q.2d 1654 (T.T.A.B. 2006) …………………………………………………………………………..44

Statutes

15 U.S.C.§ 1052(a) …………………………………………………………………………………………………………43 15 U.S.C. § 1052(d) ……………………………………………………………………………………………….5, 22, 23 15 U.S.C. § 1125(c)(2)(A) ……………………………………………………………………………………………….37 15 U.S.C. § 1125(c)(2)(B) ……………………………………………………………………………………………….40

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PRELIMINARY STATEMENT

Opposer Chicago Cubs Baseball Club, LLC (“Opposer”), the owner of the world renowned Major League Baseball club known as the CHICAGO CUBS (the “Cubs” or the “Club”), brought this opposition proceeding to prevent Applicant Cubsessed, LLC (“Applicant”) from registering the marks CUBSESSED and IAMCUBSESSED (“Applicant’s Marks”) for “hats” and “T-shirts.” The Club is one of the most famous Major League Baseball clubs in existence, having inspired a legendary loyal fan base long known for its undying passionate support for the Club even as more than a century passed between 1908 and 2016 without a WORLD SERIES title. During that time, the legend surrounding the Club grew and the public’s interest in the Cubs intensified, as fables of supposed “curses” haunting the Club became part of the fabric of popular culture. When the Club’s long-awaited WORLD SERIES title finally arrived in 2016, it drew enormous widespread publicity for the Club across the country.

Opposer has long used names and marks comprising or containing the word CUB or CUBS and/or various designs of a cub or a bear, alone or with other word, letter and/or design elements (“Opposer’s CUB Marks”), in connection with baseball games and exhibitions and a broad array of goods and services, including apparel. Indeed, within Opposer’s extensive merchandising program designed to meet the strong demand for products associated with the Cubs, apparel constitutes the largest category of licensed merchandise sold. Opposer’s licensed apparel products frequently combine the CUB or CUBS name and mark with other words, phrases and designs, such as in the designations CUBS BABY, CUBBIES, THAT’S CUB, CUBS EMPIRE, YEAR OF THE CUBS, CUBS WIN! and CUBS FIREFIGHTER. Numerous other uses of Opposer’s CUB Marks are likewise centered around the CUB or CUBS name and mark, including such marks as MR. CUB, CUBS CARE, CUBS CHARITIES, CUBS SCHOLARS, CUBS CONVENTION, CUBS DESTINATIONS, CUBS-A-PALOOZA,

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CUBBIERITA and CUB-TOBER. Given the widespread fame and recognition of the Cubs and Opposer’s CUB Marks, consumers are highly likely to identify apparel sold under CUB- formative marks first and foremost with Opposer and its legendary baseball team.

Nevertheless, in the Spring of 2017, with excitement about the Club at peak levels as it began to defend its championship title, Seth Thomas, a resident of a Chicago suburb, and the limited liability company that he controls filed to register the marks CUBSESSED and IAMCUBSESSED for “hats” and “T-shirts.” There is no dispute that Thomas selected these marks to reference the Club and play upon the word “obsessed” as a badge of honor for a loyal fan base long known for its passionate devotion to the team. Indeed, Thomas admitted as much in discovery, acknowledging that he selected these marks to “announc[e] to the general public that he is obsessed with the Chicago Cubs Baseball Club.” Applicant’s Twitter feed similarly defines “Cubsessed” as an adjective meaning “obsessed with the Chicago Cubs,” and Applicant’s website proudly boasts that “[w]e here at I am Cubsessed are Cubsessed with the Chicago Cubs.”

While Applicant may consider himself a die-hard Cubs fan, that status does not permit him to capitalize on the fame and reputation of Opposer’s CUB Marks by adopting and seeking to register confusingly similar designations for use in connection with the sale of competing merchandise. Indeed, the Board recently reached such a result in a strikingly similar case, sustaining an opposition against registration of the mark CUBNOXIOUS for apparel items based on a likelihood of confusion with Opposer’s CUB Marks. If anything, Opposer’s case is even stronger here, as Applicant has conceded the intended connection with the Club in a manner that the applicant in the CUBNOXIOUS case refused to acknowledge. Given the fame of Opposer’s CUB Marks and the inevitable public association of the term CUBSESSED with the Club, the

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opposition should also be sustained here on the independent grounds of dilution and false association under section 2(a).

DESCRIPTION OF THE RECORD

On April 14, 2017, Seth Thomas filed Application Serial No. 87/412,384 seeking to register the mark IAMCUBSESSED for “hats; T-shirts” in International Class 25 based on an intent-to-use. Thomas subsequently assigned that application to Applicant on September 20, 2017. On May 16, 2017, Applicant filed Application Serial No. 87/451,846 seeking to register the mark CUBSESSED for “hats; T-shirts” in International Class 25 based on an intent-to-use. (App. Serial Nos. 87/412,384 and 87/451,846 are referred to collectively herein as the “Applications”).

On February 9, 2018, Opposer commenced this opposition proceeding against the Applications based on an alleged likelihood of confusion, likelihood of dilution by blurring and false association. 1 TTABVUE. Applicant filed its Answer on March 20, 2018. 4 TTABVUE.

The evidence of record consists of the following:

Opposer’s Evidence

 Declaration of John Morrison of Opposer, dated December 17, 2018 (“Morrison Decl.”), and accompanying Exhibits A-Q (14-17 TTABVUE).
 Declaration of Denis Nolan of Major League Baseball Properties, Inc. (“MLBP”), dated December 19, 2018 (“Nolan Decl.”), and accompanying Exhibits A-C (18- 20 TTABVUE).
 Declaration of Ethan G. Orlinsky of MLBP, dated December 17, 2018 (“Orlinsky Decl.”), and accompanying Exhibit A (21-23 TTABVUE).
 Declaration of Lara Pitaro Wisch of MLB Advanced Media, L.P., dated December 20, 2018 (“Wisch Decl.”), and accompanying Exhibits A-G (24-26 TTABVUE).
 Opposer’s First Notice of Reliance Upon Opposer’s Registrations and Official Records, dated January 9, 2019 (“Opp. First Not. Rel.”), consisting of current

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printouts of information from the electronic database records of the USPTO, namely, the Trademark Status and Document Retrieval (“TSDR”) records, showing the current status and title (owner) of Opposer’s numerous registrations for Opposer’s CUB Marks, including in Class 25, attached as Exhibit A (7 TTABVUE).

 Opposer’s Second Notice of Reliance Upon Applicant’s Discovery Responses, dated January 9, 2019 (“Opp. Second Not. Rel.”), and attached Exhibits A-D consisting of Opposer’s First Set of Interrogatories Nos. 2-8, 11-12, 14-17 and 21, and Requests for Production of Documents and Things Nos. 1-3, 6-7, 13-14, 20 and 22 and Applicant’s responses thereto, Opposer’s First Set of Requests for Admission Nos. 1-11 and Applicant’s responses thereto (8 TTABVUE).
 Opposer’s Third Notice of Reliance Upon Internet Materials, dated January 9, 2019 (“Opp. Third Not. Rel.”), and attached Exhibits A-D consisting, respectively, of Internet materials offered to show that Opposer’s CUB Marks have strength, fame and recognition and have acquired secondary meaning through long and extensive public exposure, as well as the similarity between Opposer’s CUB Marks and Applicant’s Marks, Opposer’s standing to oppose Applicant’s Marks, and Applicant’s bad faith; Internet materials offered to show, inter alia, that Opposer’s fan base is widely known for being unusually dedicated and impassioned in their support for Opposer’s CHICAGO CUBS club; and dictionary definitions (9-12 TTABVUE).
 Opposer’s Fourth Notice of Reliance Upon Printed Publications, dated January 9, 2019 (“Opp. Fourth Not. Rel.”), and attached Exhibits A-B consisting, respectively, of articles offered to show, inter alia, that Opposer’s CUB Marks have strength, fame and recognition and have acquired secondary meaning through long and extensive public exposure; and articles offered to show, inter alia, that Opposer’s fan base is widely known for being unusually dedicated and impassioned in their support for Opposer’s CHICAGO CUBS club, as well as Opposer’s standing to oppose Applicant’s Marks, the similarity of Opposer’s CUB Marks and Applicant’s Marks, and Applicant’s bad faith (13 TTABVUE).Applicant’s Evidence

 Applicant’s Notice of Reliance, dated March 16, 2019 (“App. Not. Rel.”) and accompanying Exhibits 1-3 consisting, respectively, of certificates of Illinois state registrations owned by Applicant for the marks CUBSESSED and SESSED, Applicant’s initial disclosures in this opposition proceeding and Applicant’s Response to Opposer’s First Set of Interrogatories and Request for Production of Documents (27 TTABVUE).

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STATEMENT OF ISSUES

1. Do Applicant’s Marks so closely resemble Opposer’s CUB Marks as to be likely, when applied to hats and T-shirts, to cause confusion, or to cause mistake, or to deceive because the public is likely to believe that these goods bearing such marks have their origin with Opposer and/or that such goods are approved, endorsed, or sponsored by Opposer or associated in some way with Opposer under Section 2(d) of the Lanham Act?

2. Do Applicant’s Marks so closely resemble Opposer’s CUB Marks as to be likely, when applied to hats and T-shirts, to cause a likelihood of dilution through blurring of the distinctive quality of Opposer’s CUB Marks?

3. Do Applicant’s Marks falsely suggest an association or connection with Opposer under Section 2(a) of the Lanham Act?

STATEMENT OF FACTS
The Fame of the CHICAGO CUBS Club and Opposer’s CUB Marks

As 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. Since 1902, the Club has been commonly known and referred to around the world as the “CUBS.” Morrison Decl. ¶ 3, 15 TTABVUE 5. The Club, one of the most famous Major League Baseball clubs, has made eleven WORLD SERIES championship series appearances and has won three WORLD SERIES championship titles, including most recently in 2016 when the Club won its first WORLD SERIES title since 1908. The Club’s long-awaited WORLD SERIES victory in 2016 over the CLEVELAND INDIANS followed numerous POSTSEASON appearances, including in 2003, 2007, 2008 and 2015, and generated widespread attention as finally breaking an infamous

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curse supposedly haunting the Club and denying it a championship. Morrison Decl. ¶ 4; 15 TTABVUE 5-6.

Opposer and related entities, licensees and/or sponsors have long used Opposer’s CUB Marks to identify the Club, its baseball game and exhibition services and a wide variety of goods and services, including, but not limited to, apparel. Morrison Decl. ¶ 6, 15 TTABVUE 6; Orlinsky Decl. ¶ 5, 22 TTABVUE 5; Nolan Decl. ¶ 4, 19 TTABVUE 5. Opposer owns numerous federal registrations (nearly all incontestable) for several of Opposer’s CUB Marks, with the oldest claimed first use date dating back to 1913. Orlinsky Decl. ¶ 5, 22 TTABVUE 5; Opp. First. Not. Rel. & Ex. A, 7 TTABVUE. More than ten of these registrations cover apparel in Class 25, including shirts and/or T-shirts that are identical to Applicant’s applied-for goods, with registration of the Club’s logo dating back to 1976 and a standard character registration for the CUBS mark (i.e., Reg. No. 3,231,137) dating since 2007. Id.

Opposer’s CUB Marks frequently combine the CUB or CUBS name or mark with other words to form unitary marks or logo designs promoting the Club and various of its good and services, including such marks as MR. CUB, CUBS CARE, CUBS CHARITIES, CUBS SCHOLARS, CUBS CONVENTION, CUBS DESTINATIONS, CUBS-A-PALOOZA, CUBBIERITA and CUB-TOBER. Morrison Decl. ¶ 7 & Ex. A, 15 TTABVUE 7, 16 TTABVUE 4-28. Moreover, licensed uses of Opposer’s CUB Marks on various forms of merchandise also frequently combine the mark CUB or CUBS with various other words, phrases and designs, such as in the designations CUBS BABY, CUBBIES, THAT’S CUB, CUBS EMPIRE, YEAR OF THE CUBS, CUBS WIN! and CUBS FIREFIGHTER as shown below:

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Morrison Decl. ¶ 8 & Ex. B, 15 TTABVUE 8-9, 16 TTABVUE 30-43.
As reflected in the images depicted above, there is a strong demand for a variety of goods

and services associated with the Cubs, one of the oldest and most well-known MLB Clubs, and apparel is the largest category of licensed merchandise sold. Nolan Decl. ¶ 5, 19 TTABVUE 5- 6. Opposer has met that demand for many decades by engaging in an extensive and highly successful product merchandising program, which is licensed and managed by MLBP and offers a diverse array of goods bearing Opposer’s CUB Marks for use by every consumer during all stages of life. Id. ¶¶ 6, 9-10 & Ex. A-C; 22 TTABVUE 6-8, 23 TTABVUE 3-107. Such merchandise is widely available through a broad spectrum of channels of trade, including the official Major League Baseball website at www.mlbshop.com (the “MLB Shop Website”), the websites of MLB Clubs, in-stadium concessionaires, the Cubs Store local retail outlets in Chicago, catalogs and numerous other national retailer chains, including J.C. Penney, Dick’s Sporting Goods, Target, Bed Bath & Beyond, Modell’s, Wal-Mart, K-Mart, Walgreens, Party City, as well as other retail locations (both online and brick and mortar stores). Id. ¶ 7, 19 TTABVUE 6-7; Wisch Decl. ¶¶ 13-14 & Ex. E-G, 25 TTABVUE 7-8, 26 TTABVUE 104-478; Morrison Decl. ¶ 9, 15 TTABVUE 9-11.

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The sales of apparel reflect the popularity of Opposer’s CUB Marks. Between 2013 and 2018 alone, officially-licensed adult and children’s apparel, including headwear, associated with the Cubs have exceeded $ in wholesale sales. Nolan Decl. ¶ 8, 18 TTAVUE. Since 2009, the Club has sold more than $ in Cubs-related retail merchandise just at the Club’s home stadium, Wrigley Field, in connection with Opposer’s CUB Marks. Morrison Decl. ¶ 9, 14 TTABVUE. Over half of the merchandise sold at the in-stadium and The Cubs Store retail locations represent sales from apparel. Id; 15 TTABVUE 9.

Opposer has extensively and continuously advertised, promoted and marketed Opposer’s CUB Marks for many decades, budgeting, on average, more than $ on brand advertising, including both paid and in-kind trade advertising in radio, TV, digital, out-of-home and print outlets, each year since 2010. Morrison Decl. ¶ 10 & Ex. C, 15 TTABVUE 11, 14 TTABVUE, 16 TTABVUE 45-71. Since 2014, Opposer has additionally spent over $

each year on promotional items featuring Opposer’s CUB Marks. Id. & Ex. D, 15 TTABVUE 11, 14 TTABVUE, 16 TTABVUE 73-94.

Opposer and MLBP have also extensively licensed the use of Opposer’s CUB Marks in connection with national and/or local sponsorships promoting numerous third party entities spanning a variety of industries, including such household names as Bank of America, Budweiser, Gatorade, General Motors (Chevrolet), Nathan’s Famous, MasterCard International, Nike, Scotts, Sirius XM, Starwood Hotels and Resorts and T-Mobile. The advertising and promotion undertaken by these corporate sponsors highlighting their affiliation with the Club have brought the promotion of Opposer’s CUB Marks to varied sectors of the consumer market, resulting in considerable and broad exposure for such marks. Orlinsky Decl. ¶ 12, 22 TTABVUE 8; Morrison Decl. ¶ 11 & Ex. E, 15 TTABVUE 11-12, 17 TTABVUE 4-19.

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Opposer’s CUB Marks are also prominently used in a variety of online contexts, including social media platforms such as Facebook, Twitter, Instagram and Snapchat and the Club’s official website at www.cubs.com, also available at www.mlb.com/cubs (the “Cubs Site”). Morrison Decl. ¶ 12 & Ex. F, G, 15 TTABVUE 12-13, 17 TTABVUE 21-65; Wisch Decl. ¶¶ 3-12 & Ex. A-D, 25 TTABVUE 5-7, 26 TTABVUE 4-102. The Club’s Facebook page has more than 3 million followers, its Twitter feed has over 2 million followers and its Instagram account has over 1 million followers. Morrison Decl. ¶ 12, 15 TTABVUE 12. Over the past ten years alone, the Cubs Site has received an average of more than unique viewers per in-season month. Wisch Decl. ¶ 5, 24 TTABVUE.

In addition to the enormous public exposure generated by Opposer’s own marketing and promotional efforts and those of its sponsors, Opposer’s CUB Marks are also the subject of extensive unsolicited media coverage. Morrison Decl. ¶ 13, 15 TTABVUE 14. The Club is routinely featured in local and international media such as Sports Illustrated, ESPN, CNN,People Magazine, the New York Times, the Washington Post and other major newspapers, magazines and news networks, as well as on popular television shows such as The Ellen Show,Late Night with Stephen Colbert, The Bachelor and The Bachelorette, Amazing Race, The Today Show, Dancing With The Stars and others. Id. & Ex. H, 15 TTABVUE 14, 17 TTABVUE 67- 127.

Each year, the millions of fans that attend the Club’s baseball games at Wrigley Field in Chicago and millions more that attend baseball games played by the Club in other Major League Baseball stadiums throughout the country are exposed to Opposer’s CUB Marks. Over the past decade alone, the Club has welcomed more than 30 million baseball fans to Wrigley Field, averaging more than 3 million fans per season. Opposer’s CUB Marks are regularly displayed

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and featured at these home games, including by their prominent use in game programs and on the outside and inside of the stadium (as pictured in the examples below):

Morrison Decl. ¶ 14 & Ex. I-J, 15 TTABVUE 14-15, 17 TTABVUE 129-148.
Broadcasts of games have also exposed the public at large to the Club and Opposer’s

CUB Marks. All of the Club’s games are broadcast locally in and around Chicago, and many are broadcast on national television and/or are available for viewing on the Internet. For locally

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broadcast games on local affiliates, including NBC Sports Chicago, the Club averages hundreds of thousands of viewers per game. Morrison Decl. ¶ 15, 15 TTABVUE 15. In the last 10 years, Major League Baseball has nationally broadcast games, including Cubs games, on FOX, ESPN, ESPN2, TBS, MLB Nework and FS1. For nationally broadcast regular season games, viewership of Cubs games has averaged almost 400,000 viewers per game since 2011 and averaged around 545,000 per game in 2016. Since 2011, POSTSEASON game viewership has averaged more than 5 million viewers per game telecast. The exciting games of the 2016 POSTSEASON playoffs, in which the Cubs competed, ultimately winning the WORLD SERIES championship, attracted over 23 million viewers per game on average, and peaked in the seventh game of that series, which drew more than 40 million viewers. Orlinsky Decl. ¶ 8, 22 TTABVUE 7.

Cubs games can also be digitally streamed for certain subscribers to MLB.TV, a streaming service that is made available through MLB Advanced Media, L.P., which is the interactive media and Internet company of the Major League Baseball entities. MLB.TV

viewership data shows that more than 2013 and 2017, and more than
years. In 2018 alone, more than

unique users watched Cubs games between streams of Cubs games were accessed during those

unique users viewed Cubs games, and more than streams of Cubs games were accessed on MLB.TV. Orlinsky Decl. ¶ 10, 22 TTABVUE

7, 21 TTABVUE. Opposer’s CUB Marks appear prominently throughout all of the broadcasts and streams of Cubs games. Id. ¶ 11, 22 TTABVUE 8; Morrison Decl. ¶ 15; 25 TTABVUE 15- 18.

Major League Baseball games have also long been broadcast on the radio, with the first game being broadcast in 1921. Within the last ten years, MLB games, including Cubs games,

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have been broadcast nationally on radio on ESPN Radio and Sirius XM Satellite Radio, among others. Orlinsky Decl. ¶ 9, 22 TTABVUE 7. These broadcasts further spread the exposure of Opposer’s CUB Marks to the public.

The general public is very familiar with Opposer’s CUB Marks because fans watch the Club’s games on television and the Internet, attend games at stadiums, including Wrigley Field, listen to games on the radio, purchase products bearing Opposer’s CUB Marks, read stories about and see pictures of game action in newspapers, magazines and through electronic media, and access information and images via the Internet, including at the Cubs Site and through the Club’s Facebook, Twitter, Instagram, Snapchat and other social media accounts. Morrison Decl. ¶ 16, 15 TTABVUE 18. All of the foregoing uses evidence the fame of Opposer’s CUB Marks.The Zealous Fan Base of the Cubs

The Club has long attracted, and is known for possessing, an unusually dedicated and loyal fan base. Back in 2001, market researchers Dennis Bristow and Richard Sebastian actually conducted a study examining the brand loyalty exhibited by fans of the Cubs, concluding that from a marketing perspective, “[p]erhaps … the most important finding in the study was that, even for professional sports teams with a history of losing, there is hope. As evidenced by the zealous and impassioned fans of the Chicago Cubs, a club with a storied history of classy players and almost legendary fan disappointments, it is possible for teams far removed from a world championship to enjoy strong fan support and loyalty.” Morrison Decl. ¶ 17 & Ex. K, 15 TTABVUE 18-19, 17 TTABVUE 150-166, at 161. Joined by a third author, Kenneth Schneider, Bristow and Sebastian elaborated on their earlier research in a 2010 article, “Thirty Games Out and Sold Out For Months!,” which draws its title from the authors’ own experience in unsuccessfully attempting to purchase bleacher seat tickets for a Cubs game at a time when the

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team was some thirty games out of first place. Id. ¶ 18 & Ex. L, 15 TTABVUE 19-20, 17 TTABVUE 168-178. The authors described their experience as “captur[ing] the essence of a well known phenomenon in professional sports: the extra-ordinary level of team loyalty demonstrated by Chicago Cubs fans across the nation and possibly the world.” Id., 15 TTABVUE 19, 17 TTABVUE at 169.

The zeal of Cubs fans has long been the subject of press reports and other media coverage. Morrison Decl. ¶¶ 19-21 & Ex. M-Q, 15 TTABVUE 20-21, 17 TTABVUE 180-203; Opp. Third Not. Rel., Ex. C, 12 TTABVUE 162-218; Opp. Fourth Not. Rel., Ex. A, 13 TTABVUE 9-158. For example, back in 2003, when the Cubs qualified for a POSTSEASON appearance, the Chicago Tribune reported that thousands of Cubs fans who could not get tickets for the games in Chicago decided it was easier and potentially cheaper to travel to Atlanta to watch the Cubs take on the ATLANTA BRAVES. The article reported that a vendor selling both Cubs and Braves merchandise across from the Braves’ stadium had marked down the home team’s merchandise to half-price while selling Cubs caps and shirts, which accounted for 90% of his business, for the full price. Morrison Decl. ¶ 19 & Ex. M, 15 TTABVUE 20, 17 TTABVUE 180-183.

In a 2004 article in The Post-Crescent, a Wisconsin newspaper, the writer noted that a sell-out crowd at Miller Park in Milwaukee watching a game between the Cubs and the MILWAUKEE BREWERS consisted of about two-thirds Cubs fans. The writer commented that the invasion of thousands of Cubs fans into Miller Park had become so common that the stadium had affectionately been dubbed “Wrigley Field North.” Morrison Decl. ¶ 20 & Ex. N, 15 TTABVUE 20, 17 TTABVUE 186-87. A 2007 article in the Arizona Daily Star reports on a similar experience when the Cubs visited Arizona to play the Diamondbacks, noting that

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“[m]idwesterners crazy enough to vacation in Phoenix in August and transplanted Chicagoans alike populated every section of the ballpark.” Id. & Ex. O, 17 TTABVUE 191-92. A 2011 article that appeared online on CBS Boston noted that thousands of Cubs fans were making the trip to Boston to watch the Cubs play the Red Sox. The article quotes Tim Zue, Director of Development for the Red Sox, as follows: “This is the highest demand for any trip that we have managed for fans coming to Boston.” Id. & Ex. P, 17 TTABVUE 195-96.

A 2016 article that appeared online on BleacherNation.com under the title, “Cubs Fans Are Everywhere, and Will Go Anywhere,” aptly summarized the situation:

Cubs fans, they travel. According to Bill Savage of ESPN.com, Cubs fans are among the most well-traveling group of fans in all of baseball. In fact, nearly every single team experiences a huge bump in attendance when the Cubs roll into town.

According to Savage, with data help from Matt Marone, Cubs opponents can hope to experience upwards of a 16,871 person spike (Chicago White Sox) when the blue busses roll into town. Of course, if you’re thinking well sure, that’s the White Sox, they’re just across town, think again. The Rockies have seen a 13,422 fan spike. It’s 12,311 for the Braves, 9,456 for the Brewers, and 9,079 for the Nationals. In fact, only the Giants did not receive an attendance bump when the Cubs came to town (which was back in May, when it’s still rather chilly, and attendance was essentially flat), but the second lowest figure comes from the Pirates and that was a positive 1,113.

Cubs fans really travel everywhere.

Well that, and they simply exist everywhere.
As Bill Savage is quoted in the article, “Cubs players can count on cheering and autograph- seeking fans at any ballpark from Atlanta to Phoenix to San Diego.” Morrison Decl. ¶ 21 & Ex. Q, 15 TTABVUE 21, 17 TTABVUE 198-200.

The Cubs fan base has attracted, and continues to attract, attention across the country. The dedicated brand loyalty of Cubs fans has inspired the study of market researchers, while earning either the praise or scorn of those who follow the game. Simply put, the passionate state

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of mind associated with the Cubs fan base has become an important part of the Club’s story and one of the defining elements of the Club’s brand. Morrison Decl. ¶ 22, 15 TTABVUE 21-22. To a fan base notorious for its undying allegiance to the Cubs, the CUBSESSED designation at issue in this case would surely be taken by many as a badge of honor that fits quite comfortably within the Club’s creative and expansive merchandising program, which already offers a wide variety of different marks, designs, stylizations, themes and imagery among its selection of officially licensed products. Id. ¶ 31, 25 TTABVUE 23.

Applicant’s Attempted Registration of CUBSESSED and IAMCUBSESSED and Willful Trading on Opposer’s CUB Marks

On April 14, 2017, Seth Thomas, a resident of Gilberts, Illinois (located approximately 40 miles from Chicago), filed App. Serial No. 87/412,384 on an intent-to-use basis seeking to register the mark IAMCUBSESSED for “hats; T-shirts.” He subsequently assigned that application on September 20, 2017 to Applicant, an Illinois limited liability company located at the same address. Applicant had itself filed another application, Serial No. 87/451,846, on an intent-to-use basis seeking to register the mark CUBSESSED for the same goods. Morrison Decl. ¶ 23, 15 TTABVUE 22.

There is no dispute that both of Applicant’s Marks are intended to reference the Club, as Applicant admitted in discovery “that the CUB portion of Applicant’s Marks is intended to refer to Opposer’s CHICAGO CUBS baseball team.” Morrison Decl. ¶ 24, 15 TTABVUE 22; Opp. Second Not. Rel., Ex. D, Response 10 to Requests for Admission, 8 TTABVUE 228. The designation CUBSESSED clearly operates as a play on the word “obsessed,” with “Cub” added at the front in place of “ob” in order to convey the desired association of an obsession with the Cubs typical of its passionate and loyal fan base. Morrison Decl. ¶ 24, 15 TTABVUE 22; see Opp Third Not. Rel., Ex. D, 12 TTABVUE 220-236 (definitions of “obsessed”). Indeed,

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Applicant acknowledged in an interrogatory response that Mr. Thomas selected Applicant’s Marks to “announc[e] to the general public that he is obsessed with the Chicago Cubs Baseball Club.” Morrison Decl. ¶ 24, 15 TTABVUE 22; Opp. Third Not. Rel., Ex. B, Response to Interrogatory 3, 8 TTABVUE 33.

Applicant’s online promotions convey the same message. Thus, in a Twitter post on Applicant’s @IamCubsessed account, Applicant defines “Cubsessed” as an adjective meaning “obsessed with the Chicago Cubs.”

Morrison Decl. ¶ 25, 15 TTABVUE 22-23; Opp. Second Not. Rel., Ex. C & D, Request for Admission 2 and response, 8 TTABVUE 60, 87, 226. Similarly, Applicant’s website atwww.IamCubsessed.com states: “We here at I am Cubsessed are Cubsessed with the Chicago Cubs. We want to keep you up to date with Chicago Cubs related news on and off the field. Are you Cubsessed? Please share your stories and pictures. We would love to hear from you, Go Cubs!.” Morrison Decl. ¶ 26; 15 TTABVUE 23; Opp. Second Not. Rel., Ex. C & D, Request for Admission 5 and Response, 8 TTABVUE 60, 218, 227.

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Applicant’s website, as well as Applicant’s Facebook, Twitter and Instagram pages, are focused entirely on the Cubs, including prominent and repeated use of the Club’s logo, marks and imagery, as displayed below:

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Morrison Decl. ¶ 26, 15 TTABVUE 23-25; Opp. Second Not. Rel., Ex. C & D, Requests for Admission 1-3 and Response, 8 TTABVUE 60, 63, 138, 214, 226. As seen below, the IAMCUBSESSED mark appearing on those pages is displayed in the Club’s team colors of red and blue, as part of a design featuring a baseball and bat:

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Morrison Decl. ¶ 26, 15 TTABVUE 26.
The apparel that Applicant offers for sale using Applicant’s Marks carries forward the

same direct and intended connection with the Club:

Morrison Decl. ¶ 27, 15 TTABVUE 26; Opp. Second Not. Rel., Ex. C & D, Request for Admission 4 and Response, 8 TTABVUE 60, 163, 226. Because fans are accustomed to seeing their favorite teams offer a wide variety of different marks, designs, stylizations, themes and imagery among its selection of officially licensed products, there is every reason to expect that consumers would see CUBSESSED or IAMCUBSESSED branded apparel such as shown above as yet another example falling within the Club’s creative and expansive merchandising program. Morrison Decl. ¶ 28; 15 TTABVUE 27.

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ARGUMENT
I. OPPOSER HAS STANDING TO BRING THIS OPPOSITION PROCEEDING

To establish its standing, Opposer must show that it has a real interest in the outcome of this proceeding and a reasonable basis for its belief that it would be damaged by registration of the challenged mark. See Ritchie v. Simpson, 170 F.3d 1092, 1095, 50 U.S.P.Q.2d 1023, 1025 (Fed. Cir. 1999). Opposer’s ownership of prior registrations for Opposer’s CUB Marks and its prior use of such marks (Orlinsky Decl. ¶ 5, 22 TTABVUE 5-6; Opp. First. Not. Rel. & Ex. A, 7 TTABVUE) suffice to show its direct commercial interest and standing to bring this opposition proceeding based on likelihood of confusion. See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 945, 55 U.S.P.Q.2d 1842, 1844 (Fed. Cir. 2000). Once standing is established as to one ground, Opposer may pursue any legally sufficient claim which negates Applicant’s right to registration. See Jewelers Vigilance Comm., Inc. v. Ullenberg Corp., 823 F.2d 490, 493, 2 U.S.P.Q.2d 2021, 2023 (Fed. Cir. 1987). Accordingly, Opposer clearly has standing to maintain its opposition.

II. THE OPPOSITION SHOULD BE SUSTAINED BECAUSE APPLICANT’S MARKS CREATE A LIKELIHOOD OF CONFUSION WITH OPPOSER’S CUB MARKS

In order to sustain its claim under Section 2(d) of the Lanham Act, Opposer must show that it has priority over Applicant and that Applicant’s Marks, when used in connection with Applicant’s Class 25 goods, creates a likelihood of confusion with Opposer’s CUB Marks. See Genesco Inc. v. Martz, 66 U.S.P.Q.2d 1260, 1267-68 (T.T.A.B. 2003); 15 U.S.C. § 1052(d).

A. Opposer Has Prior Rights in Opposer’s CUB Marks

Opposer has submitted in evidence its pleaded registrations for Opposer’s CUB Marks, which predate the filing dates for Applicant’s intent-to-use Applications. Opp. First Not. Rel. & Ex. A, 7 TTABVUE. Accordingly, priority is not at issue in this proceeding. See Edom

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Laboratories, Inc. v. Lichter, 102 U.S.P.Q.2d 1546, 1549 (T.T.A.B. 2012). Opposer also submitted unrebutted testimony of its use of Opposer’s CUB Marks dating back more than a century. Orlinsky Decl. ¶ 5 & Ex. A, 22 TTABVUE 5-6, 23 TTABVUE; Morrison Decl. ¶¶ 3, 6, 15 TTABVUE 5-6. Given Opposer’s use and registration of Opposer’s CUB Marks from long prior to Applicant’s constructive first use dates of April 14, 2017 and May 16, 2017, Opposer has established clear priority over Applicant. See Kohler Co. v. Baldwin Hardware Corp., 82 U.S.P.Q.2d 1100, 1106-09 (T.T.A.B. 2007); Mattel Inc. v. Funline Merchandise Co., 81 U.S.P.Q.2d 1372, 1373 (T.T.A.B. 2006).

B. There Is A Likelihood of Confusion Between the Parties’ Marks

Registration will be refused under section 2(d) of the Lanham Act when the applied for mark so resembles a previously registered or used mark “as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1052(d). “Whether a likelihood of confusion exists is a question of law, based on underlying factual determinations.” Recot, Inc. v. Becton, 214 F.3d 1322, 1325, 54 U.S.P.Q.2d 1894, 1896 (Fed. Cir. 2000).

The various factors considered by the Board in determining the likelihood of confusion issue include: the similarity of the marks at issue; the similarity of the relevant goods and services, trade channels and purchasers; the conditions of purchase; the strength or fame of the prior mark; evidence of actual confusion; the extent of third-party use of similar marks; and any intent to trade upon another’s goodwill. See In re E.I. du Pont DeNemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973); Roger & Gallet S.A. v. Venice Trading Co., 1 U.S.P.Q.2d 1829, 1832 (T.T.A.B. 1987). As addressed below, analysis of these factors here

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leads to the inescapable conclusion that there is a likelihood of confusion between the parties’ respective marks.

1. Opposer’s CUB Marks Are Conceptually Strong and Famous and Entitled to a Broad Scope of Protection

It is a fundamental tenet of trademark law that famous marks are entitled to a broad scope of protection. See, e.g., Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 1376, 63 U.S.P.Q.2d 1303, 1309 (Fed. Cir. 2002) (“[O]nly one conclusion can be reached regarding the fame of the Bose product marks; they are famous and thus entitled to broad protection”); Opryland USA, Inc. v. Great American Music Show, Inc., 970 F.2d 847, 851, 23 U.S.P.Q.2d 1471, 1474 (Fed. Cir. 1992) (“a well-known mark enjoys an appropriately wider latitude of legal protection, for similar marks tend to be more readily confused with a mark that is already known to the public”). Indeed, because the presence of a famous mark is so significant to the likelihood of confusion analysis, the “fame of the prior mark[] plays a dominant role in cases featuring a famous or strong mark.” Kenner Parker Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 352, 22 U.S.P.Q.2d 1453, 1456 (Fed. Cir. 1992); accord Bose, 293 F.3d at 1371, 63 U.S.P.Q.2d at 1305; Recot, 214 F.3d at 1328, 54 U.S.P.Q.2d at 1897-98.

The Board has long recognized “the tendency of the consuming public to associate a relatively unknown mark with one to which they have been long exposed if the mark bears any resemblance thereto.” R.J. Reynolds Tobacco Co. v. R. Seelig & Hille, 201 U.S.P.Q. 856, 860 (T.T.A.B. 1978). For that reason, “[a] strong mark … casts a long shadow which competitors must avoid,” and a junior user who adopts a mark similar to a famous mark does so at his own peril. Kenner Parker, 963 F.2d at 353, 22 U.S.P.Q.2d at 1456. “[T]he Lanham Act’s tolerance for similarity between competing marks varies inversely with the fame of the prior mark. As a mark’s fame increases, the Act’s tolerance for similarities in competing marks falls.” Id.

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In the present case, Applicant admits that Opposer’s CUB Marks are famous. Opp. Second Not. Rel. Ex. D, Response to Request for Admission 6(a), 8 TTABVUE 227. This admission is hardly surprising, as Opposer’s CUB Marks provide a classic illustration of trademark fame. “Fame for likelihood of confusion purposes arises ‘as long as a significant portion of the relevant consuming public … recognizes the mark as a source indicator.’” The Christian Broadcasting Network, Inc. v. ABS-CBN Intl’l, 84 U.S.P.Q.2d 1560, 1567 (T.T.A.B. 2007) (quoting Palm Bay Imps., Inc. v. Vueve Clicquot Ponsardin Maison Fondee En 1722, 396 F.3d 1369, 1375, 73 U.S.P.Q.2d 1689, 1694 (Fed. Cir. 2005)). Fans, consumers, the press and the public have been exposed to Opposer’s CUB Marks for many decades through a variety of means and media, including attendance of games at Wrigley Field and other Major League Baseball parks across the country (Morrison Decl. ¶ 14 & Ex. I-J, 15 TTABVUE 14-15, 17 TTABVUE 129-148); national television game broadcasts on FOX, ESPN, ESPN2, TBS, MLB Network and FS1 (Orlinsky Decl. ¶ 8, 22 TTABVUE 7); popular Internet websites such as the Cubs Site, Facebook, Twitter, Instagram and Snapchat (Wisch Decl. ¶¶ 3-12, 25 TTABVUE 5-7 & 24 TTABVUE; Morrison Decl. ¶ 12, 15 TTABVUE 12-13); widely circulated publications such as Sports Illustrated, People Magazine, the New York Times, the Washington Post and other major newspapers and magazines, as well as popular television shows such as The Ellen Show,Late Night with Stephen Colbert, The Bachelor and The Bachelorette, Amazing Race, The Today Show, Dancing With The Stars and others (Morrison Decl. ¶ 13, 15 TTABVUE 14); extensive sales of licensed merchandise through national chains and countless other retailers, as well as at Wrigley Field and The Cubs Store outlets in Chicago (Nolan Decl. ¶ 7, 19 TTABVUE 6-7; Morrison Decl. ¶ 9, 15 TTABVUE 9-11 & 14 TTABVUE); and national sponsorship promotions involving such household brands as Bank of America, Gatorade, General Motors (Chevrolet),

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Nathan’s Famous, MasterCard International, Nike, T-Mobile and others, as well as numerous local sponsorships (Orlinsky Decl. ¶ 12, 22 TTABVUE 8; Morrison Decl. ¶ 11, 15 TTABVUE 11-12 & 14 TTABVUE).1 Reviewing this same basic evidence in a recent opposition proceeding the Club successfully brought against an applicant seeking to register the mark CUBNOXIOUS, the Board stated that “[t]he evidence of commercial strength of [Opposer’s CUB Marks], including Internet and social media consumer exposure, revenue statistics, advertising expenditures and examples, and media coverage, reflects the renown of Opposer’s marks through widespread consumer exposure to and recognition of them.” Chicago Cubs Baseball Club, LLC v. Huber, Opp. No. 91232736 (36 TTABVUE 20) (T.T.A.B. May 3, 2019). 2

Opposer’s CUB Marks are also entitled to the highest degree of protection among the spectrum of trademarks given their status as conceptually strong, arbitrary marks. See Palm Bay Imps., 396 F.3d at 1372, 73 U.S.P.Q.2d at 1692 (arbitrary terms are conceptually strong trademarks). As the Board explained in the CUBNOXIOUS decision cited above, because the word “cub” refers to a young mammal, its use in connection with clothing items “is arbitrary as a ‘known word used in an unexpected or uncommon way.’” Huber, Opp. No. 91232736 (36 TTABVUE) at 19 (quoting Nautilus Group, Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330, 71 U.S.P.Q.2d 1173 (Fed. Cir. 2004)). The conceptual strength of Opposer’s CUB Marks is further enhanced by Opposer’s long and widespread use of such marks to identify the Club, its

1Moreover, Opposer owns more than ten Class 25 registrations covering the same goods as Applicant’s goods and numerous other registrations in other classes, with some dating back decades. Opp. First. Not. Rel. & Ex. A, 7 TTABVUE. These registrations strongly support a finding of fame. See, e.g., N.Y. Yankees P’ship v. IET Prods. & Servs., Inc., 114 U.S.P.Q.2d 1497, 1504-05 (T.T.A.B. 2015) (registrations for mark for baseball services and collateral goods prior to 2008 supported fame finding by 2007); McDonald’s Corp. v. McSweet, LLC, 112 U.S.P.Q.2d 1268, 1286-87 (T.T.A.B. 2014) (8 subsisting registrations on Principal Register dating back as far as 1977 of “MC” formative marks weighed in favor of a finding of fame).

2 http://ttabvue.uspto.gov/ttabvue/v?pno=91232736&pty=OPP&eno=36

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baseball game and exhibition services and a wide variety of goods and services. Orlinsky Decl. ¶ 5, 22 TTABVUE 5-6; Morrison Decl. ¶ 6, 15 TTABVUE 6-7.

Given this overwhelming record of public exposure to the inherently distinctive Opposer’s CUB Marks, there can be no doubt that a significant portion of the public recognizes such marks as source indicators. Accordingly, as Applicant itself admits, Opposer’s CUB Marks should be deemed famous. See Christian Broadcasting Network, 84 U.S.P.Q.2d at 1567(finding opposer’s CBN mark famous for television broadcasting and evangelical services based on substantial public exposure). The strength and fame of the source identifying Opposer’s CUB Marks weighs heavily in favor of finding a likelihood of confusion.

2. The Parties’ Marks are Confusingly Similar

The similarity of the parties’ respective marks is determined by comparing the marks in terms of overall appearance, sound, and connotation. In re White Swan Ltd., 8 U.S.P.Q.2d 1534, 1535 (T.T.A.B. 1988). Similarity must be viewed based on “the recollection of the average purchaser, who normally retains a general rather than a specific impression of the trademarks,” Sealed Air Corp. v. Scott Paper Co., 190 U.S.P.Q. 106, 108 (T.T.A.B. 1975), and similarity in any one of the elements can be sufficient to support a finding of likely confusion. Interstate Brands Corp. v. McKee Foods Corp., 53 U.S.P.Q.2d 1910, 1913 (T.T.A.B. 2000). In the present case, the parties’ marks here are highly similar in sight, sound and meaning.

Opposer’s CUB Marks and Applicant’s CUBSESSED and IAMCUBSESSED marks both share the same common, famous root, CUB, which is the dominant portion of their marks, See Ty, Inc. v. Jones Grp., Inc., 237 F.3d 891, 899, 57 U.S.P.Q.2d 1617, 1622 (7th Cir. 2001) (“The word ‘Beanie’ is well-known and famous part of the Ty mark, rendering it the more salient portion of the mark and therefore deserving greater weight than the surrounding elements.”); see generally In re Nat’l Data Corp., 753 F.2d 1056, 224 U.S.P.Q. 749 (Fed. Cir. 1985) (“[T]here is

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nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.”). As the Board found in its recent decision finding the mark CUBNOXIOUS confusingly similar to Opposer’s CUB Marks, the shared string of letters, CUB-, in the parties’ marks rendered them similar in sight and sound:

The shared lettering creates a visual resemblance between the marks and renders them phonetically similar, an important consideration in the analysis…. [T]he marks … would be perceived as variants of one another, coming from a common source.

Huber, Opp. No. 91232736 (36 TTABVUE 22); see also Rebel Wine Co. LLC v. Piney River Brewing Co., Canc. No. 92063917 (33 TTABVUE 14-15) (T.T.A.B. May 25, 2018) (“Comparing BANDIT and MASKED BANDIT, the shared term BANDIT creates a significant visual resemblance between the two marks and makes them sound similar.”).3

The same reasoning applies here. Nor does the addition of “IAM” to the beginning of the IAMCUBSESSED mark do anything to avoid the confusing similarities of the marks. “IAM” is a descriptive element of the Applicant’s composite mark that reinforces Applicant’s association with the Club. See Opp. Third Not. Rel., Ex. B, Response to Interrogatory 3, 8 TTABVUE 33 (noting that Mr. Thomas selected Applicant’s Marks to “announc[e] to the general public that he is obsessed with the Chicago Cubs Baseball Club.”). “When one incorporates the entire arbitrary mark of another into a composite mark, inclusion in the composite mark of a significant, nonsuggestive element will not necessarily preclude a likelihood of confusion. And inclusion of a merely suggestive or descriptive element, of course, is of much less significance in avoiding a likelihood of confusion.” Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 U.S.P.Q. 419, 422 (C.C.P.A. 1977) (internal citations omitted); see also Rebel Wine, Canc. No. 92063917

3 http://ttabvue.uspto.gov/ttabvue/v?pno=92063917&pty=CAN&eno=33

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(33 TTABVUE 15) (“The additional word MASKED in Respondent’s mark modifies BANDIT, thereby emphasizing BANDIT as the dominant word, regardless of MASKED’s placement as the first word of the mark.”).

Moreover, the ending portion of Applicant’s Marks, “sessed,” only serves to further reinforce the connection with the Club by playing upon the word “obsessed” to denote the passionate support of the Club’s fan base. See, e.g., Chicago Bears Football Club, Inc. v. 12<TH> Man/Tennessee LLC, 83 U.S.P.Q.2d 1073, 1077 (T.T.A.B. 2007) (in finding
likelihood of confusion between opposers’ BEARS and CHICAGO BEARS marks and applicant’s 12<TH> BEAR mark, Board noted numerical designation “12<TH> reinforced connection with CHICAGO BEARS football team by specifically identifying a fan of the team as the “twelfth Bear”). Applicant’s own discovery responses and marketing both readily acknowledge Applicant’s intent to create such an association. See Opp. Second Not. Rel. Ex. B, Response to Interrogatory No. 3), 8 TTABVUE 33 (Applicant’s selection of marks “announce[d] to the general public that he is obsessed with the Chicago Cubs Baseball Club”); Opp. Second Not. Rel. Ex. C& D, Request for Admission No. 2 and Response, 8 TTABVUE 60, 87, 226 (authenticating Applicant’s Twitter account defining “cubsessed” as “obsessed with the Chicago Cubs”). In this respect, the parties’ marks also share a common meaning. See Huber, Opp. No. 91232736 (36 TTABVUE) at 22-26 (finding CUBNOXIOUS mark shared similar connotation with Opposer’s CUB Marks based, in part, on evidence showing highly committed nature of Cubs’ fan base); see also Kenner Parker, 963 F.2d at 354, 22 U.S.P.Q.2d at1457 (finding PLAY and FUN similar in meaning, particularly given the context in which PLAY-DOH and FUNDOUGH marks are both used for children’s toys).

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Where, as here, a famous mark is involved, less similarity is required to find the junior mark confusingly similar. Kenner Parker, 963 F.2d at 353, 22 U.S.P.Q.2d at 1456. The close similarity that exists here between the parties’ marks in terms of sight, sound and meaning easily crosses the requisite threshold. Indeed, as the Board found with respect to the mark CUBNOXIOUS, “Opposer’s evidence of registration and use of CUB-variant marks” (see pp. 6- 13 supra for evidence of same) renders it likely that consumers will perceive other CUB- formative marks as variants of Opposer’s CUB Marks coming from a common source. Huber, Opp. No. 91232736 (36 TTABVUE) at 22; see also 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) (finding fact that Opposer, Century 21, had marketed services with variations on the dominant portion of the mark, like CENGARD, “would increase the likelihood that consumers would misconstrue the source of insurance under the mark CENTURY LIFE OF AMERICA”). Such a result is particularly likely here inasmuch as the Club’s extensive merchandising program is constantly developing new themes, looks, designs and concepts, including numerous variations on the CUB/CUBS marks, in order to meet the fans’ demand for fresh and innovative ways to show their team allegiance. See Morrison Decl. ¶¶ 27-28, 15 TTABVUE 26-27; Nolan Decl. ¶ 11, 19 TTABVUE 8. There is thus every reason to believe that fans would view apparel branded under Applicant’s Marks as just another officially licensed product originating with or authorized by the Club. Accordingly, the similarity of marks factor weighs heavily in favor of a likelihood of confusion.

3. The Parties’ Goods are Identical

The goods covered by the Applications are “hats; T-shirts.” Opposer owns several registrations for Opposer’s CUB Marks that cover these goods. See Reg. Nos. 1,042,652; 1,538,151; 1,538,193; 1,544,313; 3,231,135; 3,231,137; 3,403,043; 3,403,044; 3,644,960;

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3,703,178; 3,854,382; 5,424,582; 5,561,908 (Opp. First Not. Rel. Ex. A, 7 TTABVUE 19-32, 44-76, 147-58, 170-80, 284-338, 346-58). Opposer has also established its extensive use of Opposer’s CUB Marks for these products. See, e.g., Morrison Decl. ¶ 8 & Ex. B, 15 TTABVUE 7-9, 16 TTABVUE 30-43; Nolan Decl. ¶¶ 6-10 & Ex. A-C, 19 TTABVUE 6-9, 20 TTABVUE 4-28, 75-78, 88, 112-17; Orlinsky Decl. ¶ 5 & Ex. A, 22 TTABVUE 5-6, 23 TTABVUE 73, 84, 86, 101, 105, 106.

Where, as here, the parties’ products are identical, a lesser degree of similarity in trademarks is necessary to support a finding of likelihood of confusion. See, e.g., Hard Rock Café Int’l (USA), Inc. v. Elsea, 56 U.S.P.Q.2d 1504, 1512 (T.T.A.B. 2000) (COUNTRY ROCK CAFE confusingly similar to HARD ROCK CAFE); Jules Berman & Associates, Inc. v. Consolidated Distilled Prods., Inc., 202 U.S.P.Q. 67, 70 (T.T.A.B. 1979) (CHULA confusingly similar to KUHLUA). Accordingly, the similarity of goods factor weighs heavily in favor of Opposer.

4. The Parties’ Trade Channels and Purchasers Are Identical

Because Opposer’s registrations and the opposed Applications both cover the same goods with no restriction, the parties’ identical goods are presumed to travel in the same channels of trade and 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); Octocom Sys. v. Houston Computer Servs., 918 F.2d 937, 942, 16 U.S.P.Q.2d 1783, 1787 (Fed. Cir. 1990); see also Chicago Bears Football Club, 83 U.S.P.Q.2d at 1078 (“Because some of the goods are identical, we must assume that the channels of trade and purchasers are the same.”); Major League Baseball Properties, Inc. v. Webb, Canc. No. 92060903 (71 TTABVUE 16) (T.T.A.B.

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July 18, 2018) (same).4 Moreover, Applicant admits that its goods are intended to be marketed to sports fans generally and fans of the CHICAGO CUBS club specifically. See Opposer Second Not. Rel. Ex. D, Responses to Requests for Admission Nos. 8, 9, 8 TTABVUE 228. Such fact only further serves to ensure that they will appeal to many of the same consumers who purchase Opposer’s licensed CUBS apparel.

5. The Goods At Issue Are Likely to Be Selected With Less Care

Applicant’s goods are simply listed as “hats; T-shirts.” As the Board explained in the Webb case cited above, “[a]bsent any limitation in the parties’ registrations, their goods must be construed to include t-shirts sold at all usual price points for such items, including relatively inexpensive t-shirts. Such inexpensive t-shirts are likely to be purchased by ordinary consumers.” Webb, Canc. No. 92060903, at 17 (internal citation omitted). The same result follows here. Because Applicant’s goods include low-priced T-shirts and hats that will be purchased by ordinary consumers without a great deal of care, this factor also favors a finding of likelihood of confusion.

6. The Absence of Actual Confusion Evidence is Immaterial in View of Applicant’s Limited Use of Applicant’s Marks

It is well established that evidence of actual confusion is not necessary to show a likelihood of confusion. Weiss Assocs., Inc. v. HRL Assocs., Inc., 902 F.2d 1546, 1548-49, 14 U.S.P.Q.2d 1840, 1842 (Fed. Cir. 1990). In this case, however, the absence of actual confusion evidence is particularly irrelevant because there have been only minimal sales of Applicant’s products and thus no meaningful opportunity for actual confusion to develop in the marketplace. See Opp. Second Not. Rel. Ex. B, Response to Interrogatory No. 6(d), 8 TTABVUE 35 (Applicant’s total sales of goods bearing Applicant’s Marks totaled only $729.13). “In the

4 http://ttabvue.uspto.gov/ttabvue/v?pno=92060903&pty=CAN&eno=71

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absence of a significant opportunity for actual confusion to have occurred, the absence of actual confusion is of little probative value….” Barbara’s Bakery Inc. v. Landesman, 82 U.S.P.Q.2d 1283, 1287 (T.T.A.B. 2007) (“[W]e find that there is no evidence of actual confusion, but we also find that such absence of evidence is clearly due to the minimal scope of applicant’s use of her mark in the marketplace.”); see also Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 875, 230 U.S.P.Q. 831, 837 (2d Cir. 1986) (holding that lack of evidence of actual confusion did not help defendant’s case where defendant’s sales had been “minimal” thus far since “[i]t would be unfair to penalize [plaintiff] for acting to protect its trademark rights before serious damage has occurred”); Brown Shoe Co., Inc. v. Robbins, 90 U.S.P.Q.2d 1752, 1756 (T.T.A.B. 2009) (finding absence of actual confusion evidence unpersuasive where “there is nothing in the record upon which to make findings of the extent of concurrent use and the opportunity for confusion to occur”). Accordingly, this factor is neutral.

7. Applicant’s Actual Use of Applicant’s Marks Proves Applicant is Acting in Bad Faith in Order to Trade on the Reputation and Fame of Opposer’s CUB Marks

Where there is evidence of a party’s intent to adopt a mark that suggests to purchasers a successful mark already in use by another, this factor weighs 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) (“proof of intent to trade on another’s goodwill” can provide “persuasive evidence of likelihood of confusion”) (citation omitted); see also Edom Laboatories, Inc. v. Lichter, 102 U.S.P.Q.2d 1546, 1553 (T.T.A.B. 2012) (“evidence of applicant’s bad faith adoption of his mark is relevant to our likelihood of confusion analysis”). The Court in Shoe Corp. of America v. Juvenile Shoe Corp., 266 F.2d 793, 121 U.S.P.Q. 510 (C.C.P.A. 1959) succinctly explained the rationale for such a rule six decades ago:

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[I]f, in the adoption and use of the mark there be a purpose of confusing the mind of the public as to the origin of the goods to which it is applied, we have a right, in determining the question of likelihood of confusion or mistake, to consider the motive in adopting the mark as indicating an opinion, upon the part of the one vitally interested, that confusion or mistake would likely result from use of the mark.

266 F.2d at 795, 121 U.S.P.Q. at 512 (citations omitted). Indeed, there is “no excuse for even approaching the well-known trademark of a competitor” because “to do so raises but one inference – that of gaining advantage from the wide reputation established by [another] ….” Planters Nut & Chocolate Co. v. Crown Nut Co., 305 F.2d 916, 924-25, 134 U.S.P.Q. 504, 511 (C.C.P.A. 1962) (citation omitted).

The evidentiary record here makes it unmistakable that Applicant adopted and is using Applicant’s Marks for precisely the purpose of gaining advantage from the reputation of Opposer’s CUB Marks. Applicant admits “[t]hat the CUB portion of Applicant’s Marks is intended to refer to Opposer’s CHICAGO CUBS baseball team.” Opp. Second Not. Rel. Ex. D, Response to Request for Admission No. 10, 8 TTABVUE 228. Indeed, Applicant readily acknowledges that the term CUBSESSED, which comprises the entirety of one of Applicant’s Marks and the dominant portion of the other, is designed to convey to the public an obsession with the CHICAGO CUBS team. See Opp. Second Not. Rel. Ex. B, Response to Interrogatory No. 3, 8 TTABVUE 33; Opp. Second Not. Rel., Ex. C & D, Request for Admission No. 2 and Response, 8 TTABVUE 60, 87, 226 (authenticating Applicant’s Twitter account defining “cubsessed” as “obsessed with the Chicago Cubs”). Consistent with such a theme, Applicant’s website and other marketing materials are replete with references to Opposer’s CHICAGO CUBS club and marks. See pp. 17-21 supra.

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While Applicant may claim that it should be allowed “to register marks that are similar to registered marks in order to show support … to a sports team[,] American case law simply does not recognize such a right.” Chicago Bears Football Club, 83 U.S.P.Q.2d at 1084 (rejecting application to register 12<TH> BEAR mark as confusing to NFL team’s CHICAGO BEARS and BEARS marks). To the contrary, Applicant’s obvious desire to connect its marks and goods with the fame and goodwill of Opposer’s CUB Marks constitutes “strong evidence that confusion is likely, as such an inference is drawn from the imitator’s expectation of confusion.” L.C. Licensing Inc. v. Berman, 86 U.S.P.Q.2d 1883, 1891 (T.T.A.B. 2008).

8. Applicant Has Failed to Offer Any Evidence of Third-Party Usage

Applicant submitted no evidence of any third-party use of similar marks. The absence of such evidence strongly supports a likelihood of confusion by confirming the strength of Opposer’s CUB Marks. See, e.g., Century 21 Real Estate, 970 F.2d at 878, 23 U.S.P.Q. at 1701 (paucity of service marks containing “Century” in relevant field suggests CENTURY 21 is unique mark for insurance services and magnifies likelihood of confusion); The Cadence Group, Inc. v. Cadence Media Group, L.C., Opp. No. 91151811 (9 TTABVUE 5) (T.T.A.B. Mar. 16, 2004) (“The strength of the term CADENCE in opposer’s mark is further established by the absence of any evidence of third-party use of CADENCE or similar marks on or in connection with the services at issue herein”).5

9. The Relevant Factors Lead to the Inevitable Conclusion That There is a Likelihood of Confusion Between the Parties’ Respective Marks

Consideration of all the relevant factors leads to the manifest conclusion that there is a likelihood of confusion. Applicant’s Marks are highly similar to the famous Opposer’s CUB Marks and were selected precisely because of such connection to the CUBS club. Applicant’s

5 http://ttabvue.uspto.gov/ttabvue/v?pno=91151811&pty=OPP&eno=9

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Marks are intended to be used for identical goods, which must be presumed to travel in the same trade channels to the same class of purchasers as Opposer’s goods and are in any event intended to target fans of the CUBS baseball team. The fact that Applicant’s goods will include inexpensive clothing items further heightens the likelihood of confusion. Applicant’s admitted desire to reference the Club in connection with Applicant’s marks, as further confirmed by the actual usage made to date of such marks, constitutes a bad faith intent to trade on the reputation and goodwill of Opposer’s CUB Marks. Finally, the actual confusion factor is neutral given that Applicant has made only limited use to date of Applicant’s Marks, and Applicant proffered no evidence of third-party usage to detract from the fame and strength of Opposer’s CUB Marks. Accordingly, the likelihood of confusion factors weigh heavily in favor of finding likely confusion, the opposition should be sustained and the Applications refused.

III. APPLICANT’S REGISTRATIONS SHOULD BE REFUSED BECAUSE APPLICANT’S MARKS DILUTE THE DISTINCTIVE QUALITY OF OPPOSER’S CUB MARKS BY BLURRING

In order to sustain its claim for dilution by blurring, Opposer must show that Opposer’s CUB Marks were distinctive and famous prior to April 14, 2017, the earliest constructive first use dates of Applicant’s Marks, and that use of Applicant’s Marks is likely to blur the distinctiveness of Opposer’s CUB Marks. See Chanel, Inc. v. Makarczyk, 110 U.S.P.Q.2d 2013, 2018 (T.T.A.B. 2014). The record evidence, including Applicant’s ready concession that Opposer’s CUB Marks were famous and distinctive prior to April 14, 2017, sufficiently establishes Opposer’s claim for dilution by blurring.

A. Opposer’s CUB Marks Were Famous and Distinctive Long Before April 14, 2017

As discussed above, Opposer’s CUB Marks are inherently distinctive, arbitrary marks and have also acquired distinctiveness through decades of widespread use in connection with a

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wide variety of goods and services. See pp. 24-27 supra. Accordingly, there can be no dispute that Opposer’s CUB Marks were distinctive long prior to Applicant’s earliest filing date of April 14, 2017.

In order to establish fame for dilution purposes, a party must show that its mark “is widely recognized by the general consuming public of the United States.” 15 U.S.C. § 1125(c)(2)(A). The Lanham Act sets forth four factors that should be considered when determining whether a mark qualifies as “famous”: (1) the “duration, extent, and geographic reach of advertising and publicity of the mark,” (2) the “amount, volume, and geographic extent of sales of goods or services under the mark,” (3) the “extent of actual recognition of the mark,” and (4) whether “the mark was registered.” Id. See also New York Yankees Partnership v. IET Prods. & Servs., 114 U.S.P.Q.2d 1497, 1502 (T.T.A.B. 2015). As discussed above, there can be no serious doubt here as to the fame and distinctiveness of Opposer’s CUB Marks, and all of the statutory factors further support a finding of fame.

First, for many decades, Opposer has extensively and continuously advertised, promoted, publicized and marketed Opposer’s CUB Marks. Morrison Decl. ¶ 10, 15 TTABVUE 11. For example, Opposer has budgeted on average more than $ on brand advertising, inclusive of paid and in-kind trade advertising, radio, TV, digital, out-of-home and print outlets each year since 2010. Id. Additionally, since 2014, Opposer has spent more than $ each year on promotional items featuring Opposer’s CUB Marks. Id. All of these promotional activities are in addition to the prominent display of Opposer’s CUB Marks as seen in stadium by attendees, as well as fans viewing broadcasted CHICAGO CUBS games. Id. ¶ 14-15, 15 TTABVUE 14-18. Further, Opposer maintains a broad sponsorship program, and the sponsors additionally spend millions of dollars on advertising and promotions to highlight their affiliation with the Club,

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yielding widespread use and promotion of Opposer’s CUB Marks. Morrison Decl. ¶ 11, 15 TTABVUE 11-12; see, e.g., Morrison Decl., Ex. E, 17 TTABVUE 3-19.

Second, the record evidence reflects substantial sales in connection with Opposer’s CUB Marks. Between 2013 and 2018, officially-licensed adult and children’s apparel, including headwear, associated with the Cubs have exceed $ in wholesale sales. In 2013 and 2014 alone, wholesale sales of officially-licensed adult and children’s apparel, including headwear, associated with the Cubs exceeded $ . Nolan Decl. ¶ 8, 19 TTABVUE 7. Since 2009, the Cubs have sold more than $ in Cubs-related retail merchandise in the Club’s home stadium in connection with Opposer’s CUB Marks. Morrison Decl. ¶ 9, 15 TTABVUE 9. Over half of the merchandise sold in-stadium and at The Cubs Store locations represent sales from apparel. Id.

Third, Opposer’s CUB Marks are highly recognized. Opposer’s CUB Marks are widely seen on social media, as well as through local and national broadcasts. Morrison Decl. ¶¶ 12, 15- 16, 15 TTABVUE 12, 15-18. The website for the Cubs (“Cubs Site”), available atwww.cubs.com and www.mlb.com/cubs, also records a high level of consumer interaction with Opposer’s CUB Marks, which are prominently used on the Cubs Site. Between 2008 and 2018, the Cubs Site received an average of more than unique viewers per in-season month, and in October 2016 alone, the Cubs Site received over unique visitors. Wisch Decl. ¶¶ 3, 5, 25 TTABVUE 9-10. Moreover, Opposer’s CUB Marks have received third-party media coverage, including local and international coverage in or on Sports Illustrated, ESPN, CNN,People Magazine, the New York Times, the Washington Post, The Ellen Show, Late Night with Stephen Colbert, The Bachelor and The Bachelorette, Amazing Race, The Today Show, andDancing With The Stars. Id. ¶ 13 & Ex. H, 15 TTABVUE 14, 17 TTABVUE 66-127. As noted

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above, there have also been substantial sales of merchandise bearing Opposer’s CUB Marks (see pp. 9 supra), resulting in additional public exposure to such marks. Given this strong record of public exposure, significant actual recognition of Opposer’s CUB Marks among the general public may be inferred. See UMG Recordings, Inc. v. Mattel, Inc., 100 U.S.P.Q.2d 1868, 1887 (T.T.A.B. 2011).

Finally, Opposer owns a number of incontestable federal registrations for Opposer’s CUB Marks, the oldest of which claims a first use date of 1913. Orlinsky Decl. ¶ 5, 22 TTABVUE 5; Opp. First. Not. Rel. & Ex. A, 7 TTABVUE. More than ten of these registrations cover apparel in Class 25, with registration of the Club’s logo dating back to 1976 and a standard character registration for the CUBS mark (i.e., Reg. No. 3,231,137) dating since 2007. Id. Several of its registrations are for goods covered by the goods in the Applications (e.g., “hats; T-shirts”). Id.; Opp. First Not. Rel. Ex. A, 7 TTABVUE 19-32, 44-76, 147-58, 170-80, 284-338, 346-58.

Opposer’s registrations strongly support a finding of fame. See, e.g., McDonald’s Corp. v. McSweet, 112 U.S.P.Q.2d 1268, 1286-87 (T.T.A.B. 2014) (8 subsisting registrations on Principal Register dating as far back as 1977 of “MC” formative marks weighed in favor of a finding of fame); New York Yankees, 114 USPQ2d at 1506 (registrations for mark for baseball services and collateral goods prior to 2008 supported fame finding by 2007).

In sum, all of the statutory factors indicate that Opposer’s CUB Marks are famous, and they were famous prior to April 2017. Even Applicant concedes as much in his responses to notices to admit, wherein he readily conceded that Opposer’s Marks are famous and well known and were so prior to April 14, 2017. See Opp. Second Not. Rel. Ex. D, Responses to Requests for Admission Nos. 6-7; Nike, Inc. v. Maher, 100 U.S.P.Q.2d 1018, 1024 (T.T.A.B. 2011) (noting applicants’ admission of fame of opposer’s mark).

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B. Applicant’s Marks are Likely to Blur the Distinctive Quality of Opposer’s CUB Marks

The Lanham Act defines dilution by blurring as an “association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.” 15 U.S.C. § 1125(c)(2)(B). “Dilution by blurring occurs when a substantial percentage of consumers, upon seeing the junior party’s use of a mark on its goods are immediately reminded of the famous mark and associate the junior party’s use with owner of the famous mark, even if they do not believe that the goods come from the famous mark’s owner.” UMG Recordings, 100 U.S.P.Q.2d at 1888 (emphasis added).

In determining whether a mark is likely to cause dilution by blurring, the Board may consider all relevant factors, including (1) the degree of similarity between the marks; (2) the degree of inherent or acquired distinctiveness of the famous mark; (3) the extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark; (4) the degree of recognition of the famous mark; (5) whether the user of the mark intended to create an association with the famous mark; and (6) any actual association between the marks. 15 U.S.C. § 1125(c)(2)(B)(i)-(vi).

1. Applicant’s Marks are Highly Similar to Opposer’s CUB Marks

The Lanham Act no longer requires a finding of “substantial similarity,” but now refers only to the “degree of similarity” between the marks. UMG Recordings, 100 USPQ2d at 1889.Accord Tiffany (NJ) Inc. v. eBay, Inc., 600 F.3d 93, 111 n.17, 94 U.S.P.Q.2d 1188, 120017 (2d Cir. 2010) (“under the Trademark Dilution Revision Act of 2006 …, the similarity between the famous mark and allegedly blurring mark need not be ‘substantial’ in order for the dilution by blurring claim to succeed”). Thus, the question is simply “whether the two involved marks are sufficiently similar to trigger consumers to conjure up a famous mark when confronted with the

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second mark.” UMG Recordings, 100 U.S.P.Q.2d at 1889; National Pork Board v. Supreme Lobster & Seafood Co., 96 U.S.P.Q.2d 1479, 1497 (TTAB 2010).

Applicants’ Marks clearly “conjure up” Opposer’s CUB Marks. “[I]n determining the similarity or dissimilarity of the marks, ‘[the Board] will use the same test as for determining the similarity or dissimilarity of the marks in the likelihood of confusion analysis, that is, the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.’” Nike, 100 U.S.P.Q.2d at 1030 (quoting Coach Services Inc. v. Triumph Learning LLC, 96 U.S.P.Q.2d 1600, 1613 (T.T.A.B. 2010)). Accord Research in Motion, Ltd. v. Defining Presence Marketing Grp., 102 U.S.P.Q.2d 1187, 1194-94 (T.T.A.B. 2012) (finding the same evidence that establishes similarity for 2(d) purposes also proves marks highly similar for dilution purposes); New York Yankees, 114 U.S.P.Q.2d at 1506 (same). As noted above, the parties’ marks are highly similar in terms of sight, sound, and meaning. See pp. 27-30 supra. Accordingly, the parties’ marks are highly similar for dilution purposes.

2. Opposer’s CUB Marks are Highly Distinctive

Opposer’s CUB Marks are inherently distinctive and also have garnered enormous acquired distinctiveness over their long and extensive use and exposure to the public. Opposer submitted 32 registrations as part of its First Notice of Reliance, and none were registered with a claim of acquired distinctiveness under Section 2(f). See Opp. First Not. Rel. Ex. A, 7 TTABVUE. Moreover, the significant evidence addressed above concerning the widespread use and broad recognition of Opposer’s CUB Marks (see pp. 6-13 supra) demonstrates that such marks have also acquired distinctiveness. See, e.g., Nike, 100 U.S.P.Q.2d at 1027 (Nike’s JUST DO IT mark inherently distinctive where registered without claim under 2(f), and has also attracted widespread recognition and success as indicator of source); ESRT Empire State

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Building, LLC v. Liang, Opp. No. 91204122 (95 TTABVUE 17) (T.T.A.B. June 17, 2016) (even if the marks were not inherently distinctive, “record is replete with evidence that mark has acquired distinctiveness due to Opposer’s long use, promotional effort and unsolicited media recognition”).6

3. The Record Contains No Evidence of Third-Party Use

Applicant presented no evidence of third-party use of Opposer’s CUB Marks. Accordingly, this factor weighs in favor of finding dilution. See New York Yankees, 114 U.S.P.Q.2d at 1507.

4. Opposer’s CUB Marks are Highly Recognized

As noted above, Opposer’s CUB Marks enjoy a high degree of public recognition, as reflected by the numerous unsolicited media references. See ESRT Empire State Building, Opp. No. 91204122 (95 TTABVUE 18) (“Opposer’s evidence of strong and consistent mention in printed, radio, television and Internet media, as well as its popularity on various social media, suggest that Opposer’s mark has attained a significant level of recognition.”). Additionally, Opposer’s success in licensing Opposer’s CUB Marks, as well as attracting sponsors, reflect recognition of Opposer’s CUB Marks. Id. (“Opposer’s evidence of its efforts in branding, co- sponsorship, and licensing use of its design mark to third parties with attribution, support its effort to create and maintain recognition not only of the Empire State Building, but of its activities under its mark related thereto.”).

5. Applicant Intended to Create an Association with Opposer’s CUB Marks

Applicant clearly intended to create an association between Applicant’s Marks and Opposer’s CUB Marks. Applicant conceded in discovery that the CUB portion of Applicant’s

6 http://ttabvue.uspto.gov/ttabvue/v?pno=91204122&pty=OPP&eno=95

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Marks refers to Opposer’s CHICAGO CUBS baseball team. See Opp. Second Not. Rel., Ex. D, Response to Request for Admission No. 10, 8 TTABVUE 228; see also Opp. Second Not. Rel., Ex. B, Response to Interrogatory No. 3, 8 TTABVUE 32 (stating that “applicant selected said 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.”). This factor thus weighs in favor of finding a likelihood of dilution. New York Yankees, 114 U.S.P.Q.2d at 1509.

***
As all relevant factors weigh in favor of finding a likelihood of dilution, the Board should

sustain the opposition and refuse registration.7

IV. APPLICANT’S REGISTRATIONS SHOULD ALSO BE REFUSED BECAUSE APPLICANT’S MARKS FALSELY SUGGEST A CONNECTION WITH OPPOSER AND ITS CHICAGO CUBS CLUB

Section 2(a) of the Lanham Act prohibits registration of “matter which may … falsely suggest a connection with … institutions ….” 15 U.S.C.§ 1052(a). As set forth below, Applicant’s Marks falsely suggest such a connection with Opposer.

A party challenging registration of a mark that falsely suggests a connection with a person or institution must demonstrate: (1) that the mark is the same as, or a close approximation of, the name or identity previously used by the opposing person or institution; (2) that the mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution; (3) that the opposing party is not connected with the activities performed by applicant under the mark; and (4) that the fame or reputation of the opposing person or institution is such that, when the mark is used with the applicant’s goods or services, a connection with the opposer

7 The sixth factor, the degree of actual association, is irrelevant to the analysis here because Applicant has made minimal use of the marks to date. See New York Yankees, 114 U.S.P.Q.2d at 1509; Opp. Second Not. Rel., Ex. B, Response to Interrogatory 6(e), 8 TTABVUE 35 (noting that Applicant sold $729.13 worth of goods from April 5, 2017 to July 16, 2018).

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would be presumed. See, e.g., In re Nieves & Nieves LLC, 113 U.S.P.Q.2d 1639, 1642-43 (T.T.A.B. 2015); In re White, 80 U.S.P.Q.2d 1654, 1658-1662 (T.T.A.B. 2006).

First, as discussed above (see pp. 6-13 supra), Opposer’s CUB Marks have been used long prior to Applicant’s adoption of Applicant’s Marks, which are close approximations of Opposer’s CUB Marks. See In re SCSW, Inc., Ser. No. 86450668 (8 TTABVUE 7) (T.T.A.B Dec. 28, 2016) (“[W]e find that SUPER CHEVY SHOW is a close approximation of CHEVY. Because ‘SUPER’ is merely laudatory and ‘SHOW’ is generic for the services, they are less significant than the term CHEVY in Applicant’s mark, which is the dominant, salient feature.
As in the likelihood of confusion context, we give more weight to the dominant feature in a mark when determining the commercial impression created by the mark.”);8 In re Nieves, 113 U.S.P.Q.2d at 1647 (“We therefore find that the Applicant has not rebutted the showing that the Examining Attorney has made that the mark ROYAL KATE is a close approximation of the identity of Kate Middleton.”). Second, given the extensive public exposure to Opposer’s CUB Marks through a variety of means and media, such marks point specifically and unequivocally to Opposer. Indeed, Applicant concedes that the CUB portion of his marks was meant to refer to the Club, and even concedes that its products and services are intended to be marketed to fans of Opposer’s CHICAGO CUBS baseball team. Opp. Second Not. Rel. Ex. D, Responses to Request for Admission Nos. 9-10, 8 TTABVUE 228. The first two elements of a section 2(a) false connection claim are thus met.

As to the third element, Applicant does not and cannot claim to have any connection whatsoever with Opposer. Applicant admits as much on its website where it states that “it is not affiliated in any way with Major League Baseball or the Chicago Cubs.” Opp. Second Not. Rel.,

8 http://ttabvue.uspto.gov/ttabvue/v?pno=86450668&pty=EXA&eno=8

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Ex. C, 8 TTABVUE 223; see In re Sloppy Joe’s Int’l, Inc., 43 U.S.P.Q.2d 1350, 1354 (T.T.A.B. 1997) (“a commercial connection, such as an ownership interest or commercial endorsement or sponsorship of applicant’s [goods], would be necessary to entitle applicant to register the involved mark.”).

Finally, with respect to the fourth element, the relevant inquiry is whether the renown of Opposer and its CUB Marks is such that, when Applicant’s Marks are used in connection with the relevant apparel goods covered by the Applications, consumers will understand Applicant’s Marks are referring to Opposer and its CHICAGO CUBS baseball team and thus presume a connection. In re Nieves, 113 U.S.P.Q.2d at 1637 (rejecting argument that “Kate Middleton ‘is not involved in the fashion industry’”). It is inevitable that consumers will presume a connection between Applicant’s apparel goods because Applicant conceded the fame of Opposer’s CUB Marks prior to its applications; Applicant intended to refer to Opposer’s baseball team in adopting and using its marks; Applicant’s goods are intended to be marked to fans of Opposer’s baseball team; and Opposer offers identical goods under Opposer’s CUB Marks. Opp. Sec. Not. Reliance, Ex. D, Response to Request for Admission Nos. 6-7, 9-10; see pp. 16-17, 24, 31, 34 supra. Accordingly, the fourth element is satisfied and the opposition should also be sustained on the ground of false connection under section 2(a).

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CONCLUSION

For the foregoing reasons, the Board should sustain the opposition and refuse to register Applicant’s Marks.

Dated: New York, New York June 28, 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

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CERTIFICATE OF SERVICE

I HEREBY CERTIFY that, on June 28, 2019, I caused a true and complete copy of the foregoing OPPOSER’S 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 June 28, 2019

/Joelle A. Milov/ Joelle A. Milov

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