National Hockey Leaguev.Yisreal Jakobovits

Trademark Trial and Appeal Board

Dec 12, 2000

No. 91113802 (T.T.A.B. Dec. 12, 2000)

12/12/00
KSK
Opposition No. 113,802
National Hockey League
v.
Yisreal Jakobovits
Before Chapman, Bucher and Bottorff, Administrative
Trademark Judges.
Opinion by the Board:
This case now comes before the Board for
consideration of opposer’s motion (filed November 24,
1999) for summary judgment on the issues of likelihood of
confusion under Section 2(d) of the Trademark Act and
dilution under Section 43(c) of the Trademark Act as
amended by the Trademark Amendments Act of 1999. The
motion has been fully briefed.
BACKGROUND/PLEADINGS
Applicant has filed an application for registration
of the mark WNHL (in typed form) for “entertainment
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 113,802
2
services, namely, providing professional female hockey
exhibitions” in Class 41.1
In its amended notice of opposition,2 opposer (NHL)
alleges, inter alia, that “[a]pplicant’s mark consists of
and comprises a mark that so resembles the NHL marks
registered in the Patent and Trademark Office previously
and currently used by NHL as to be likely, when used on
or in connection with the services of the applicant, to
cause confusion, or to cause mistake or to deceive as to
the affiliation, connection or association of applicant
and its services with NHL and as to NHL’s sponsorship or
approval of applicant’s services” and that “[a]pplicant’s
mark consists of and comprises a mark that so resembles
the NHL marks registered in the Patent and Trademark
Office previously and currently used by NHL as to dilute
the NHL marks when used on or in connection with the
services of the Applicant.”
Opposer asserted several of its registrations,
including the following: (1) NHL for “indicating

1 Application Serial No. 75/438,648 filed on February 23, 1998
and claiming a bona fide intent to use the mark in commerce.
2 Opposer’s amended notice of opposition (adding a claim of
dilution) was allowed by Board order dated December 7, 1999.
The Board also allowed applicant time to file an answer to the
amended pleading. No answer was filed, but a default notice
under Fed. R. Civ. P. 55(a) has not been issued by the Board.
Opposition No. 113,802
3
membership in applicant” in Class 200;3 and (2) NHL for
“entertainment

3 Registration No. 883,569 issued on December 30, 1969 filed on
January 2, 1969 and claiming first use in 1917 and first use in
commerce in 1924.
Opposition No. 113,802
4
services, namely providing professional hockey games” in
Class 41.4
Although applicant denied the salient allegations of
the original notice of opposition, the Board has not
received an answer from applicant to the amended notice
of opposition which adds the claim of dilution. Inasmuch
as applicant has responded on the merits to the summary
judgment motion, rather than approach the added dilution
claim now as one of default the Board in its discretion
takes up for consideration the motion for summary
judgment on both issues.
SUMMARY JUDGMENT STANDARD
Generally, summary judgment is appropriate in cases
where the moving party establishes that there are no
genuine issues of material fact which require resolution
at trial and that it is entitled to judgment as a matter
of law. Fed. R. Civ. P. 56(c). An issue is material
when its resolution would affect the outcome of the
proceeding under governing law. Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 248 (1986). However, a

4 Registration No. 1,960,563 issued on March 5, 1996 filed on
July 13, 1995 and claiming first use and first use in commerce
in October, 1926. Opposer’s various other pleaded registrations
for the mark NHL and NHL with design are for use in connection
with a wide variety of goods and services, including clothing,
video game cartridges, television programs, and providing
information on a website.
Opposition No. 113,802
5
dispute over a fact which would not alter the Board’s
decision on the legal issue will not
prevent entry of summary judgment. See, for example,
Kellogg Co. v. Pack’Em Enterprises Inc., 951 F.3d 330, 21
USPQ2d 1142 (Fed. Cir. 1991). A fact is genuinely in
dispute if the evidence of record is such that a
reasonable fact finder could return a verdict in favor of
the nonmoving party. See Lloyd’s Food Products Inc. v.
Eli’s Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir.
1993). The nonmoving party must be given the benefit of
all reasonable doubt as to whether genuine issues of
material fact exist, and the evidentiary record on
summary judgment, and all inferences to be drawn from the
undisputed facts, must be viewed in the light most
favorable to the nonmoving party. See Opryland USA,
Inc. v. Great American Music Show, Inc., 970 F.2d 847, 23
USPQ2d 1471 (Fed. Cir. 1992); Olde Tyme Foods Inc. v.
Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir.
1992).
THE PARTIES’ EVIDENCE AND ARGUMENTS
Opposer has moved for summary judgment in its favor
as to its Section 2(d) and Section 43(c) grounds of
opposition.
Opposition No. 113,802
6
In support of its motion, opposer has presented
evidence showing that: (1) opposer’s “annual revenues
are approximately $1.4 billion” (Declaration of Mary
Sotis (hereinafter “Sotis”) at paragraph 7); (2) “total
retail sales of merchandise in North America bearing the
NHL trademark and/or the teams’ trademarks are in excess
of $1 billion” (Sotis at paragraph 13); (3) total
attendance at opposer’s regular season games in the 1998-
1999 season was 18,001,741 (Sotis at paragraph 6); (4)
opposer’s mark has been featured “for over eighty years
in nearly every possible setting” including television
and radio broadcasts, books, newspapers and magazines, in
advertising, marketing and promotional material, in
connection with corporate sponsorships and special
events, and, on or in connection with, numerous consumer
goods and services through commercial licensing efforts
(Sotis at paragraph 10); (5) television broadcasts of NHL
games reach over 200 million homes in 181 countries and
NHL currently is signed to a five-year contract with ABC
and ESPN (“worth hundreds of millions of dollars”) for
broadcast coverage of NHL games (Sotis at paragraph 14);
(6) NHL maintains a website “accessed by millions of
Internet users every month around the world” (Sotis at
paragraph 15); (7) major newspapers in the United States
Opposition No. 113,802
7
devote a portion of their sports sections to coverage of
the NHL (Sotis at paragraph 18); and (8) several
magazines are devoted to coverage of NHL hockey (Sotis at
paragraph 19).
Opposer’s evidence on summary judgment includes the
declaration of Mary Sotis, Vice President Legal and
Associate General Counsel of NHL Enterprises L.P., the
marketing and licensing arm of the National Hockey
League, together with the exhibits identified therein;
and the declaration of Bruce P. Keller, opposer’s outside
counsel with the law firm of Debevoise & Plimpton,
together with the exhibits identified therein.
In response, applicant has submitted the declaration
of the applicant, Yisreal Jakobovits; and the declaration
of applicant’s counsel, Jeffrey E. Jacobson, with
exhibits.
Opposer argues that its mark NHL “is famous to, and
instantly recognizable by, millions of consumers as a
result of the NHL’s continuous marketing, advertising,
and promotional efforts” and that “both sports fans and
the general public ‘have been educated to recognize and
accept’ the NHL mark as the ‘hallmark’ for a renowned
league of professional ice hockey teams.” Further,
opposer argues that the applicant’s proposed mark WNHL is
Opposition No. 113,802
8
“but for the letter ‘W’ ... identical to the NHL mark in
sound, appearance and commercial impression.”
As to the services, opposer argues that applicant’s
“description of services is virtually identical to those
currently being offered by the NHL.” Further, opposer
contends that opposer’s registration is not restricted by
gender and, moreover, “as the senior user of the NHL mark
for professional hockey exhibitions...opposer has the
right to expand the scope of such services, by for
example, creating Women’s National Hockey League or
WNHL.”
Opposer argues that sports consumers consist of both
discriminating and ordinary consumers. Moreover, opposer
states that due to the “widely reported marketplace
event” of the “successful expansion in 1997 of the
National Basketball Association (NBA) into women’s
professional basketball under the mark WNBA” it is “even
more likely that consumers will assume that a new hockey
league for women, operating under the mark WNHL, is the
product of the NHL’s expansion into women’s hockey.”
Finally, opposer argues that applicant acted in bad
faith in his adoption of the mark WNHL, specifically,
that the fact that “[applicant] and his brother ... have
filed other trademark applications for the marks that
Opposition No. 113,802
9
were likely to be confused with other famous trademarks,
reflects poorly on Jakobovits’ intentions with regard to
his application to register the WHNL ... mark[].”
In response, applicant argues that “WNHL, used in
connection with an internet based fantasy women’s hockey
league is not likely to cause confusion with the NHL ice
hockey league mark”; that “the fact that two marks share
specific common elements is not enough, by itself, to
prove that consumers will be confused as to the source of
the goods”; that “[s]ports fans typically exercise a high
degree of care regarding the events that they choose to
view”; and that there is no evidence of actual confusion.
In connection with opposer’s assertion of fame,
applicant argues that opposer’s mark is not famous
because: (1) “the letters ‘N’ and ‘L’ are common among
almost all sports leagues...[t]herefore, it is not a
distinctive mark”; (2) “[m]ost of the states in this
country do not have an NHL hockey team” and “this point
is especially important since the NHL does not even have
a major network television deal as all ‘popular’ sports
in this country do”; and (3) “many third parties use
similar marks.” In support of this last argument,
applicant submitted print-outs of registrations from the
U. S. Patent and Trademark Office Trademark Text and
Opposition No. 113,802
10
Image Database. Applicant has not provided any evidence
showing use of the marks depicted in these third-party
registrations.
Applicant also argues that opposer has “unclean
hands” because opposer has applied for a trademark
registration of WNHL in Canada in an attempt to “pre-empt
[applicant’s] possible use in other areas.”
Finally, applicant argues that opposer “should be
barred from bringing this action” because opposer did not
take action against third parties’ use of a “similar mark
on similar goods.” Applicant lists the examples of the
marks WPHL, WNL, ECHL, and PHL 3 all for use in
connection with hockey related services and NHLA for a
lumber association. As noted above, applicant submitted
only print-outs of the registrations but no evidence of
use.
DECISION
We turn first to the issue of likelihood of
confusion under Section 2(d).
In determining whether there is any genuine issue of
material fact relating to the legal question of
likelihood of confusion, the Board must consider all of
the probative facts in evidence which are relevant to the
factors bearing on likelihood of confusion, as identified
Opposition No. 113,802
11
in In re E.I du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). As noted in the du Pont decision
itself, various factors, from case to case, may play a
dominant role. Id., 476 F.2d at 1361, 177 USPQ at 567.
Those factors as to which we have probative evidence are
discussed below. After a careful review of the record in
this case, we find that there are no genuine issues of
material fact relating to those factors.
As a preliminary matter, priority is not an issue in
this case in view of opposer’s submission of
uncontroverted evidence showing that the pleaded
registrations are subsisting and owned by opposer. See
King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108 (CCPA 1974). Likewise we find
that the evidence of these registrations is sufficient to
establish opposer’s standing in this case. No genuine
issue of material fact exists on these issues.
While the key likelihood of confusion factors in
this case are the degree of similarity between opposer’s
and applicant’s marks, NHL and WNHL, and the degree of
similarity between the parties’ services as recited in
their respective registrations and application, we have
also considered other du Pont factors in making our
determination.
Opposition No. 113,802
12
The evidence of record clearly establishes the lack
of a genuine issue of material fact as to the fame of
opposer’s mark NHL for, at a minimum, the entertainment
services of providing professional hockey games.
Applicant’s argument that opposer’s mark is weak because
of the pervasive use of the letters N and L is not
supported by competent evidence. Applicant’s submission
of third-party registrations does not establish third-
party use. Finally, applicant’s unsupported allegation
that opposer does not have a “major network television
deal” is in direct contradiction to opposer’s sworn
statement that opposer has a contract with ABC.
(Applicant’s attorney’s attention is directed to Fed. R.
Civ. P. 11 and Patent and Trademark Office Rules 10.18
and 10.23(c)(15).)
Turning now to the marks, NHL and WNHL, the only
difference between the marks is the letter W placed at
the beginning of applicant’s mark. When these marks are
considered in their entireties, they are substantially
similar in sound, appearance, and commercial impression.
The marks only differ by the first letter. Marks
may be confusingly similar in appearance notwithstanding
the addition, deletion or substitution of letters. See
Weiss Associates, Inc. v. HRL Associates, 902 F.2d 1546,
Opposition No. 113,802
13
14 USPQ2d 1840 (Fed. Cir. 1990). This situation is
heightened by the “marketplace event” where the consuming
public has witnessed the creation of the WNBA. In the
context of the services, the purchasing public would
understand NHL refers to National Hockey League and WNHL
refers to Women’s National Hockey League.
As to the services offered by each party, opposer’s
identified services, “entertainment services, namely
providing hockey games,” and applicant’s identified
services, “entertainment services namely, providing
professional female hockey exhibitions” are virtually
identical.
Applicant’s arguments relating to the possible
dissimilarity of the services, based on his alleged
intended use of the mark in connection with a “female
fantasy hockey league on the internet,” as opposed to the
services identified in his application, are wholly
irrelevant. Octocom Systems Inc. v. Houston Computers
Services, Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1990) (“The authority is legion that the question of
registrability of an applicant's mark must be decided on
the basis of the identification of goods set forth in the
application regardless of what the record may reveal as
to the particular nature of an applicant's goods, the
Opposition No. 113,802
14
particular channels of trade or the class of purchasers
to which sales of the goods are directed. Because OSI
seeks an unrestricted registration, such evidence as
there is of a specific class of customers did not relate
to a material fact.” Id. at 1787).5
Regarding the channels of trade, both the involved
application and opposer’s pleaded registrations are
unrestricted. Thus, the Board must presume that the
services are marketed or will be marketed in all the
normal channels of trade for the identified services and
to all the usual classes of purchasers of such services.
See Kangol Ltd. v. KangaROOS U.S.A., 974 F.2d 161, 23
USPQ2d 1945 (Fed Cir. 1992). Applicant’s argument that a
high degree of care is exercised by sports consumers in
choosing what sports event(s) they view is unsupported
and is not persuasive.
Inasmuch as applicant has not yet begun use of his
mark, the fact that there has been no actual confusion is
not a basis to find this factor in his favor. There has

5 In the Octocom case, the court sanctioned the appellant for
bringing a frivolous appeal. “Where a party blindly disregards
long established authority and raises arguments with no factual
foundation, as OSI has in this case, the judicial process has
not been used, but abused, and sanctions under Rule 38 are
warranted.” Octocom, supra, at 1789.
Opposition No. 113,802
15
been no opportunity for actual confusion. Hence, this
factor is neutral. Moreover, it is unnecessary to show
actual confusion in establishing likelihood of confusion.
Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d
1565, 1571, 218 USPQ 390, 396 (Fed. Cir. 1983).
Finally, applicant’s argument that opposer has not
“policed” its mark and is therefore “barred” from
opposing applicant’s mark is not well taken. The marks
in the third-party registration print-outs proffered by
applicant that pertain to hockey-related services only
contain the letters HL unlike applicant’s mark which
includes the entirety of opposer’s mark. The only third-
party registration offered by applicant that contains the
letters NHL is the lumber industry’s mark NHLA for wholly
unrelated services.6
In summary, considering the fame of opposer’s mark,
the substantial similarity of the marks, the legally
identical services, and the similar trade channels and
purchasers, as identified, we find that there are no

6 We have given little weight to the parties’ arguments on “bad
faith.” While this factor may fit within the catch-all 13th du
Pont factor, there is not sufficient evidence to find in either
party’s favor on this factor. While it may remain an issue of
fact in this case, it is not a genuine issue of material fact.
Even if we draw this inference in favor of applicant, (no bad
faith), our finding on the ultimate issue of likelihood of
confusion remains the same.
Opposition No. 113,802
16
genuine issues of material fact that confusion is likely
to result.
In view of the above, opposer’s motion for summary
judgment on the issue of likelihood of confusion under
Section 2(d) of the Trademark Act is granted.
Accordingly, judgment is hereby entered against
applicant, the opposition is sustained, and registration
to applicant is refused.7
B. A. Chapman
D. E. Bucher
C. M. Bottorff
Administrative Trademark
Judges, Trademark Trial
and Appeal Board

7 In view of our decision sustaining opposer’s Section 2(d)
ground of opposition, we need not reach the issue of dilution.