Juiced Applicant Shut Out in House That Ruth Built: TTAB | Practical Law

Juiced Applicant Shut Out in House That Ruth Built: TTAB | Practical Law

In New York Yankees Partnership v. IET Products and Services, Inc., the Trademark Trial and Appeal Board (TTAB) sustained an opposition to register three marks that were likely to dilute by blurring a number of New York Yankees marks and rejected the applicant's parody defense, a defense typically unavailable in TTAB proceedings.

Juiced Applicant Shut Out in House That Ruth Built: TTAB

Practical Law Legal Update 3-612-3965 (Approx. 4 pages)

Juiced Applicant Shut Out in House That Ruth Built: TTAB

by Practical Law Intellectual Property & Technology
Published on 12 May 2015 • USA (National/Federal)
In New York Yankees Partnership v. IET Products and Services, Inc., the Trademark Trial and Appeal Board (TTAB) sustained an opposition to register three marks that were likely to dilute by blurring a number of New York Yankees marks and rejected the applicant's parody defense, a defense typically unavailable in TTAB proceedings.
On May 8, 2015, in New York Yankees Partnership v. IET Products and Services, Inc., an expanded panel of the Trademark Trial and Appeal Board (TTAB) sustained an opposition to the registration of three marks because they were likely to dilute by blurring a number of New York Yankees marks (Opp. No. 91189692 (T.T.A.B. May 8, 2015)). The TTAB refused to consider the applicant's parody defense because the applicant intended to use its marks in commerce as designations of source, which foreclosed the use of this defense. The TTAB specifically noted that given the general circumstances of an opposition and cancellation proceeding based on allegations of dilution, there will rarely, if ever, be a TTAB proceeding where a parody defense can succeed.
IET Products and Services, Inc. (IET) sought to register the following marks on the Principal Register:
  • Two THE HOUSE THAT JUICE BUILT word marks, for various types of clothing, including baseball caps, and mugs, respectively.
  • An image of a red, white and blue striped top hat over a syringe, surrounded by a prohibition symbol (a circle with a diagonal line), for clothing, including baseball caps.
The New York Yankees Partnership (New York Yankees) owns trademark registrations for a logo consisting of a red, white and blue top hat resting on the end of a baseball bat with a background image of a stylized baseball with its stitching (the Top Hat logo) and the word mark THE HOUSE THAT RUTH BUILT. The Yankees opposed IET's registrations on the grounds that IET's marks would:
  • Likely cause dilution by blurring of the New York Yankees' marks under Trademark Act Section 43(c) (15 U.S.C. § 1125(c)).
  • Falsely suggest an association with its New York Yankees Major League Baseball club under Trademark Act Section 2(a) (15 U.S.C. § 1052(a)).
  • Likely cause confusion under Section 2(d) of the Trademark Act (15 U.S.C. § 1052(d)).
The TTAB sustained the Yankees' opposition on the ground of dilution and did not address the merits of the Section 2(a) and 2(d) claims.
Dilution by blurring results where the similarity between a mark and a famous mark creates an association that impairs the famous mark's distinctiveness, even if the public does not believe that the goods come from the famous mark's owner. The party asserting dilution by blurring, in this case the New York Yankees, must prove four factors:
  • It owns a famous mark that is distinctive.
  • The defendant, IET in this case, is using its accused mark in commerce.
  • IET's use of its mark began after the Yankees' marks became famous.
  • IET's use of its marks is likely to cause dilution by blurring or by tarnishment.
On the first factor, when evaluating whether the New York Yankee's marks are famous, the TTAB considered four elements:
  • The duration, extent and geographic reach of advertising and publicity of the marks.
  • The amount, volume and geographic extent of sales of goods or services offered under the marks.
  • The extent of actual recognition of the marks.
  • Whether the marks were registered on the supplemental or principal register.
In concluding that the Top Hat logo was famous, the TTAB:
  • Considered the record evidence that the mark:
    • has been used for over 50 years and used on apparel for over 40 years;
    • is displayed at Yankee Stadium during home games;
    • has been used in connection with sales of licensed products exceeding $1.5 billion; and
    • is registered on the principal register.
  • Acknowledged IET's admission that the mark is distinctive.
The TTAB also concluded that the mark THE HOUSE THAT RUTH BUILT is famous, focusing mainly on the public's recognition of the fame of that mark, in addition to EIT's admission and other record evidence.
The TTAB easily determined that the New York Yankees satisfied the second and third factors of the dilution by blurring test.
In evaluating the fourth factor of whether IET's use of its mark is likely to cause dilution, the TTAB assessed the following six additional, non-exhaustive elements:
  • The degree of similarity between the marks.
  • The degree of the famous marks' distinctiveness.
  • The extent to which the New York Yankees engaged in substantially exclusive use of its marks.
  • The degree of the famous marks' recognition.
  • Whether IET intended to create an association with the Yankees' marks.
  • Any actual association between the parties' marks.
The TTAB analyzed IET's marks separately and determined that each would be likely to impair the Yankees' marks' distinctiveness. For IET's top hat and syringe design, the TTAB concluded that all six elements weigh in favor of a likelihood of dilution to some degree, with the fourth and sixth being neutral. For the mark THE HOUSE THAT RUTH BUILT, the TTAB concluded that four of the elements weigh in favor of a likelihood of dilution, with the third and sixth being neutral.
In evaluating the fifth element of whether IET intended to create an association with the Yankees' marks, IET argued that its marks are parodies and therefore under Section 43(c)(3) of the Trademark Act IET is entitled to rely on the fair use dilution exclusion (15 U.S.C. § 1125(c)(3)(A)). However, the TTAB:
  • Rejected IET's argument noting that IET seeks to use its marks as a source-identifying device and the fair use exclusion typically does not apply when a trademark registration is sought.
  • Modified its previous holding in Research in Motion v. Defining Presence Marketing Group Inc. that suggested that an alleged parody should be considered as part of a dilution analysis even when parody does not provide a safe harbor for a defendant (102 U.S.P.Q. 2d 1187 (T.T.A.B. 2012)).
The TTAB proceeded to hold that it will not consider a parody defense to a dilution claim because:
  • The parody, fair use defense only applies where the mark is not used to identify source or is used for another non-commercial use.
  • Use in commerce to indicate source, which is the basis for an application to register a trademark, is not a noncommercial use or fair use.