Michael Bergman

Trademark Trial and Appeal Board

Jul 20, 2004

No. 78114779 (T.T.A.B. Jul. 20, 2004)

Mailed:
July 20, 2004
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Michael Bergman
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Serial No. 78114779
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D. Clay Holloway of Sutherland Asbill & Brennan LLP for
Michael Bergman.
Andrew J. Benzmiller, Trademark Examining Attorney, Law
Office 116 (Meryl Hershkowitz, Managing Attorney).
_______
Before Hanak, Bucher and Rogers, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Michael Bergman seeks registration on the Principal
Register of the mark WASHINGTON SENATORS for goods
identified in the application, as filed, as “clothing,
namely, t-shirts, shirts, caps, jackets, pants, shorts,
sweatshirts, sweatpants,” in International Class 25.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation based upon Section 2(d) of the
1 Application Serial No. 78114779 was filed on March 14, 2002
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce. The word “Washington” is disclaimed apart
from the mark as shown.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 78114779
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Trademark Act, 15 U.S.C. §1052(d). The Trademark Examining
Attorney has taken the position that applicant’s mark, when
used in connection with the identified goods, so resembles
the mark shown below:
registered for goods identified as “shirts and jackets,”
also in International Class 25,2 as to be likely to cause
confusion, to cause mistake or to deceive.
The Trademark Examining Attorney and applicant have
fully briefed the case. Applicant did not request an oral
hearing before the Board. We affirm the refusal to
register.
In arguing for registrability, applicant contends that
given the large number of marks on the Principal Register
containing the word SENATORS, this is a weak mark when used
by itself, and consequently, applicant’s addition of the
word “Washington” provides the needed distinctiveness to
prevent any confusion with the cited mark.
2 Registration No. 2494016 issued to Texas Rangers Baseball
Partners on October 2, 2001.
Serial No. 78114779
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By contrast, the Trademark Examining Attorney argues
that the involved marks create highly similar commercial
impressions; that the goods are identical and otherwise
closely-related products; and that applicant has failed to
make a showing that the registered mark is entitled to a
narrow scope of protection.
Our determination under Section 2(d) is based upon an
analysis of all of the facts in evidence that are relevant
to the factors bearing upon the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973).
We turn first to the relatedness of the goods as
listed in the cited registration and in the instant
application. Both list “shirts” and “jackets,” and the
balance of applicant’s clothing items appear to be closely
related to “shirts and jackets.” As is clear from
applicant’s arguments and from the face of the cited
registration owned by a Major League Baseball (MLB) team,
these goods are all items of sporting apparel traditionally
listed as collateral products for professional sports
teams. Moreover, on the specific du Pont factor focusing
on the relatedness of the goods, applicant has made
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absolutely no attempt to argue that the involved goods are
not identical or otherwise closely related.
As to the related du Pont factor focusing on the
similarity or dissimilarity of established, likely-to-
continue trade channels, we have to presume that these
legally identical goods will move through the same channels
of trade to the same classes of purchasers.
Applicant does argue that we should pay particular
attention to the sophistication of the purchasers herein:
Two marks may exist in the same class of
goods and be similar marks where the
purchasers of the two products are
knowledgeable about the products in that
field such to reduce the likelihood of
subsequent confusion. See Banfi Products
Corp. v. Kendall Jackson Winery Ltd., 74
F.Supp.2d 188, 199 (E.D.N.Y. 1999). Here,
Applicant’s mark is for goods paying homage
to the days gone by of baseball. Applicant
places the marks on clothing items as
memorabilia relating to that team. One who
purchases the clothing on which Applicant
places the mark “WASHINGTON SENATORS” would
know the difference between that mark and
the mark “SENATORS” lacking the “WASHINGTON”
component. That difference is one that a
purchaser of sports memorabilia,
particularly baseball, is likely to know and
respect. [Footnote 1: For instance,
baseball memorabilia is a phenomenal
business market. Moreover, baseball
memorabilia fans are notorious sticklers for
detail….] As the ultimate consumer of the
goods, which the Examiner repeatedly argues
gives rise to the likelihood of confusion,
is likely to recognize and appreciate the
difference between these two marks, the
Serial No. 78114779
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rejection based on a likelihood of confusion
is improper.
Applicant’s appeal brief, p. 4. Although the record
contains no evidence that the purchasers of registrant’s
goods are, or purchasers of applicant’s listed goods will
be, sophisticated consumers, based upon applicant’s
arguments, we are willing to concede that avid fans of
professional sports will know something about the history
of baseball in the city of Washington. In fact, as even
the casual sports fan knows, although our nation’s capital
currently has no major league baseball team, two different,
defunct American League baseball teams that played here
under the name “Washington Senators” have left Washington,
the first relocating to Minnesota (becoming the Minnesota
Twins in 1960) and the second to Texas (becoming the Texas
Rangers in 1971). This latter group is also the owner of
the cited registration. Hence, as will be discussed
further infra, we conclude that any degree of sports
knowledge / sophistication imputed to potential purchasers
of the involved goods would increase the likelihood of
confusion in the instant case, rather than ameliorate it.
The core of applicant’s argument is that the cited
registration is to be accorded a narrow scope of protection
in a crowded field of SENATOR-formative marks. Although
Serial No. 78114779
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applicant argues repeatedly (response of August 19, 2003,
unnumbered pp. 2 – 3, appeal brief, p. 4, reply brief, p.
1) that there are 82 or 83 “listings on the TESS database
for marks with ‘SENATORS’ as a component…,” the record does
not support such a conclusion. Applicant has included
copies of only a handful of the referenced properties, and
has not revealed which of the 82 or 83 listings are for
active registrations, and which are for dead registrations
or merely applications. Significantly, most of the third-
party registrations of which applicant has submitted copies
for the record actually contain marks where the word
SENATOR (singular) is the entire mark, and is registered in
connection with totally unrelated goods (e.g., computer
manuals for the insurance industry, chairs, mattresses,
cigarettes, fishing rods, gas heaters, golf clubs, melons,
etc.). Hence, we conclude, based upon this record, that
the word SENATORS is distinctive and a strong source
identifier for items of apparel.
On the other hand, applicant makes much of two
registrations for marks that assertedly are close to the
Serial No. 78114779
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involved marks -- HARRISBURG SENATORS and design3 and
OTTAWA SENATORS.4 Both registrations are owned by
professional sports teams and are marks for items of
apparel in International Class 25. Applicant argues that
“if these two marks are distinguishable from themselves,
and obviously over “SENATORS” as they are registered, then
the Applicant’s mark of “WASHINGTON SENATORS” is equally
distinguishable.” Applicant’s reply brief, p. 2.
The record shows that the registration of the OTTAWA
SENATORS mark is owned by the Ottawa Senators Hockey Club.
Applicant has also submitted for the record a copy of the
Internet homepage of the OTTAWA SENATORS. Applicant argues
that the coexistence of a registration owned by the OTTAWA
SENATORS, a Canadian hockey team and a registration for the
stylized mark SENATORS owned by a Major League Baseball
team is consistent with yet other third-party registration
evidence applicant submitted.5
3 Registration No. 1789438
issued on August 24, 1993;
Section 8 affidavit accepted and
Section 15 affidavit
acknowledged, renewed.
4 Registration No. 1959122 issued to the Ottawa Senators
Hockey Club on February 27, 1996; Section 8 affidavit accepted
and Section 15 affidavit acknowledged.
5 Applicant points to several situations where similar team
names are used in different sports, and/or where two or more
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Hence, to the extent that it is relevant to our
decision herein, and should we credit applicant’s argument
that sports fans “are notorious sticklers for detail,” we
presume sports fans will know that the Ottawa Senators are
a Canadian hockey team, while the SENATORS mark in the
special form depicted in the cited registration is a
commemorative design for a baseball team.
Moreover, while the Harrisburg Senators are a minor
league baseball team affiliated with the Montreal Expos,
contrary to applicant’s argument that “none of these marks
[SENATORS, HARRISBURG SENATORS or OTTAWA SENATORS] is owned
by the same entity,” (applicant’s appeal brief, p. 5), the
federal register belies applicant’s assertion, and
demonstrates why at present there may well be no likelihood
sports team names are preceded by different geographic modifiers
that allegedly serve to distinguish the marks from each other.
For example, marks such as NEW YORK
GIANTS, or the word GIANTS alone, depicted on
the side of a football helmet,
can coexist with a registration owned by the
San Francisco Giants for the mark GIANTS
depicted against the image of a baseball,
and both of these registrations can coexist with a
registration, also owned by the San Francisco Giants.
This reality seems to support the conclusion that the word
GIANTS depicted on the side of a football helmet in the context
of sporting apparel refers to an NFL team in the vicinity of New
York City, the word GIANTS depicted against a baseball in the
context of sporting apparel refers to a MLB team in San
Francisco, while SAN JOSE GIANTS refers to San Francisco’s
affiliated minor league team in San Jose.
Serial No. 78114779
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of confusion between the HARRISBURG SENATORS registration
and the cited registration -- the HARRISBURG SENATORS
registration, like the cited SENATORS registration, is
currently owned by the Texas Rangers.
Finally, we turn to the similarity or dissimilarity of
the marks in their entireties as to appearance, sound and
connotation. We agree with the Trademark Examining
Attorney that when, as in this case, the goods in the
application and the cited registration are virtually
identical, it has been held that the marks need not be as
close as they might otherwise have to be to support a
finding of likelihood of confusion. Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992), cert. denied, 506 U.S. 1034
(1994).
With respect to a comparison of applicant’s typed mark
WASHINGTON SENATORS with registrant’s special form mark
SENATORS, we must consider the marks in their entireties.
Nevertheless, in articulating reasons for reaching a
conclusion on the issue of likelihood of confusion, there
is nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature
of a mark. See In re National Data Corp., 753 F.2d 1056,
Serial No. 78114779
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224 USPQ 749 (Fed. Cir. 1985). Applicant has agreed to
disclaim the geographically descriptive term, “Washington,”
apart from the mark as shown. Under our precedent, less
weight may be accorded to disclaimed matter in making a
determination of likelihood of confusion.
We also agree with the Trademark Examining Attorney
that with a typed mark, applicant would be free to depict
its mark on its clothing items in a script not unlike that
used by registrant.
Furthermore, consumers who would notice any actual
differences in appearance and pronunciation between
applicant’s mark, if used, and the cited mark may well not
ascribe these differences to differences in the source of
the goods. Rather, they may assume that one mark is a
variant of the other, each identifying goods coming from
the same source. Specifically, in the case of collateral
products for a professional sports team, these variations
would include the team name, mascot or symbol with and
without the name of the host city. That is, a single Major
League Baseball team may be referred to as the “Washington
Senators” or, at other times, as simply the “Senators.”
Applicant’s arguments about his motivation for
adopting this mark, combined with his allegations about the
Serial No. 78114779
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knowledge of the potential purchasers, greatly exacerbate
the likelihood of confusion herein. Applicant explains his
motivations as follows:
Here, Applicant’s mark is for goods paying
homage to the days gone by of baseball.
Applicant places the marks on clothing items
as memorabilia relating to that team.
Applicant’s appeal brief, p. 4. Applicant also argues that
collectors of sports memorabilia have mastered the details
of their sports. Applicant argues that “[knowledgeable]
sports fans will clearly recognize the ‘WASHINGTON
SENATORS’ mark on clothing as differing from the ‘SENATORS’
mark which represents nothing. The owners of the
‘SENATORS’ mark do not have a sports franchise operating
under that name… [I]t is likely that [the knowledgeable]
sports fan will recognize the difference between the
‘WASHINGTON SENATORS,’ a team that is no more, and the
‘SENATORS,’ a team that never existed.” Of course, beyond
not comporting with trademark law, applicant’s conclusions
defy logic and ignore history. Applicant admits that he
intends to appropriate the WASHINGTON SENATORS mark in
order to trade on the nostalgia of bygone baseball teams
that existed in Washington DC. On the other hand, he
contends that knowledgeable sports fans would never
associate the term WASHINGTON SENATORS with the term
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SENATORS presented in a distinctive baseball lettering
script and emblazoned across the front of jerseys and
jackets. This position seems incredible, especially in
light of the fact that the cited registration is owned by
the very franchise that once was an expansion team in
Washington, known as the Washington Senators, and the cited
registration of the SENATORS mark would appear to be
similarly evocative of the franchise’s earlier incarnation.
Given this particular history, even more than would be the
case under black-letter trademark law and traditional
likelihood of confusion analysis, we have no doubts
whatsoever but that the respective marks, WASHINGTON
SENATORS and SENATORS, are sufficiently similar as to
result in a likelihood of confusion when used on these
identical products.
Decision: The refusal to register under Section 2(d)
of the Lanham Act is hereby affirmed.