Baltimore Ravens Limited Partnership and NFL Properties LLCv.12th Man/Tennessee LLC

Trademark Trial and Appeal Board

Feb 28, 2007

No. 91157082 (T.T.A.B. Feb. 28, 2007)

Mailed:
28 February 2007
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Baltimore Ravens Limited Partnership and
NFL Properties LLC
v.
12TH Man/Tennessee LLC
_____

Opposition No. 91157082
to application Serial No. 78026554
_____

Jessica A. Rose of Quinn Emanuel Urquhart Oliver & Hedges
LLP for the Baltimore Ravens Limited Partnership and NFL
Properties LLC.

James H. Harris III of Harris, Martin, Jones, Shrum,
Bradford & Wommack, P.A. for 12TH Man/Tennessee LLC.
______

Before Rogers, Drost and Kuhlke, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On September 19, 2000, 12TH Man/Tennessee LLC
(applicant) applied to register on the Principal Register
the mark 12TH RAVEN (in typed or standard character form)
for:
Jewelry in Class 14
Bumper stickers in Class 16
Insulated beverage containers in Class 21
Towels in Class 24
THIS OPINION IS NOT
A PRECEDENT OF THE
TTAB
Opposition No. 91157082
2
Clothing for informal wear, namely, pants, jackets,
shirts, t-shirts, sweatshirts, shorts in Class 25

Ornamental novelty buttons in Class 26.
The application (No. 78026554) is based on applicant’s
assertion of a bona fide intention to use the mark in
commerce.
On June 18, 2003, the Baltimore Ravens Limited
Partnership and NFL Properties LLC (opposers) filed a notice
of opposition to the registration of applicant’s 12TH RAVEN
mark.
Opposers allege that applicant’s mark is similar to
numerous marks owned by opposers and that there is a
likelihood of confusion of consumers under Section 2(d) of
the Trademark Act. 15 U.S.C. § 1052(d). Opposers claim
ownership of several registrations but ultimately they rely
on the one set out below:
I. No. 2,177,214
Mark: BALTIMORE RAVENS (typed)
For: Posters, calendars, trading cards, books relating
to football, magazines relating to football, notepads,
stickers, and bumper stickers in Class 16
Men's, women's and children's clothing used in the
promotion of a professional football team by the name
of the Baltimore Ravens, namely, fleece tops and
bottoms, caps, T-shirts, sweatshirts, shorts, tank
tops, sweaters, pants, jackets, turtlenecks, jumpsuits,
jerseys, warm up suits, swimwear, wind resistant
jackets, parkas; sleepwear, namely, robes and pajamas;
gloves, scarves, aprons, boots and sneakers in Class 25
Athletic bags sold empty, golf bags, bowling
balls, golf balls, bowling bags, footballs, golf club
covers in Class 28
Entertainment services, namely, professional
football games and exhibitions in Class 41.
Issued: July 28, 1998
Opposition No. 91157082
3
Disclaimer: Baltimore
Status: Affidavits under Sections 8 and 15 accepted or
acknowledged

Opposers allege that they “have used the trademarks
RAVENS, BALTIMORE RAVENS and various other marks
(hereinafter, the RAVENS Marks) in connection with their
business of organizing, conducting and promoting the
Baltimore Ravens football franchise and the NFL” prior to
the filing date of the opposed application. Notice of
Opposition at 2. Furthermore, opposers maintain that “the
RAVENS Marks are famous to the public because of the
widespread use of said marks, the great popularity of NFL
football and the Ravens Club, and the extensive media
coverage of the NFL, and, in particular, the Ravens Club.”
Notice of Opposition at 3. In addition, opposers allege
that the “widespread use by the Ravens Club, the NFL, and
authorized licensees of the RAVENS Marks when referring to
the Baltimore Ravens football franchise has contributed to
the strong public association of the RAVENS Marks with the
Baltimore Ravens, and such use inures exclusively to the
benefit of Opposers.” Id. Opposers also maintain that
applicant’s goods are “a type consistent with the ancillary
goods licensed by professional sports teams.” Notice of
Opposition at 4.
In addition, opposers also argue that registration to
applicant should be refused because applicant’s marks
Opposition No. 91157082
4
falsely suggest a connection between applicant and opposers
under Section 2(a) of the Trademark Act. 15 U.S.C.
§ 1052(a). Finally, opposers allege that applicant’s mark,
when used, “will dilute the distinctive and famous quality
of the RAVENS marks.” Notice of Opposition at 6.1
Applicant denied the salient allegations of opposers’
notice of opposition.2
The Record
The record consists of the pleadings; the file of the
involved application; the testimonial deposition of Jeffrey
Ringelstein, applicant’s principal, with exhibits; the
stipulated testimonial affidavit of David M. Proper,
opposers’ Counsel of Legal and Business Affairs, with
exhibits; the testimonial deposition, with exhibits, of
David M. Proper; the rebuttal testimonial deposition, with
exhibits, of Peter Quaglierini, opposers’ manager for

1 NFL Properties LLC is also opposing the registration of a
second application of applicant for the mark 12TH BEAR (Serial No.
78023394). Opposition No. 91150925. The other opposer in that
case is the Chicago Bears Football Club, Inc. Because the
opposers are not the same, the marks are different, and the facts
are not the same, we have chosen to issue separate decisions in
these cases.
2 Opposers also allege that applicant has applied to register
other marks that are associated with NFL teams such as 12TH RAM,
12TH TEXAN, 12TH COWBOY, 12TH BILL, 12TH JAGUAR, 12TH BRONCO, 12TH
BUCCANEER, 12TH STEELER, 12TH 49ER, 12TH CHIEF, 12TH DOLPHIN, 12TH
EAGLE, 12TH PACKER, 12TH REDSKIN, 12TH VIKING and 12TH SEAHAWK.
Notice of Opposition at 5-6. Except for the 12TH BEAR mark
(Opposition No. 91150925), the other marks are either no longer
active or suspended awaiting the outcome of the 12TH BEAR and 12th
RAVEN oppositions. Applicant admits to filing “for the
registration of other marks utilizing the concept of the fan as
the 12th player in connection with the goods.” Answer at 2.
Opposition No. 91157082
5
trading cards and memorabilia; the rebuttal deposition of
David Proper including a supplemental deposition by written
questions, with exhibits3; and applicant’s list of federal
applications and registrations.
Preliminary Matters
We begin by noting that Registration No. 2,177,214 is
owned by the Baltimore Ravens Limited Partnership. The NFL
Properties LLC (NFLP) “is the licensing agent of the NFL and
its Member Clubs and has three primary functions: (1) to
license the trademarks of the NFL and its Member Clubs (“NFL
Trademarks”) to third parties for commercial use; (2) to
protect the NFL Trademarks from infringement; and (3) to
promote the interests of the NFL and its Member Clubs by
engaging in approved publishing, promotional and marketing
activities.” Proper affidavit at 3-4. “The NFL and the
Baltimore Ravens have licensed all of their respective
trademarks to NFLP for use by NFLP pursuant to these
directives.” Proper affidavit at 4.
Because of opposers’ proof of ownership or licensed use
of the registered BALTIMORE RAVENS mark, we find that
opposers each have established their standing to oppose.
See Chemical New York Corp. v. Conmar Form Systems, Inc., 1

3 The parties “had a stipulation that both parties entered into
that the testimony in the 12TH Bear matter that the rebuttal
testimony could be used in the 12TH Raven matter.” Proper dep. at
50.
Opposition No. 91157082
6
USPQ2d 1139, 1142 (TTAB 1986) (“It is obvious that opposer
Chemical New York, as owner of the “PRONTO” marks and
registrations, and opposer Chemical Bank, as licensee and
user of the marks, have such a ‘real interest’ in this
proceeding”). See also William & Scott Co. v. Earl’s
Restaurants Ltd., 30 USPQ2d 1870, 1873 n.2 (TTAB 1994).
Opposers have provided evidence of the use of the terms
BALTIMORE RAVENS and RAVENS. “The Ravens Club has competed
in NFL games since 1996” and it won the Super Bowl in 2001.
Proper affidavit at 3. Furthermore, opposers’ witness has
testified that opposers have licensed a “wide variety of
merchandise, including apparel items such as shirts, T-
shirts, sweatpants, pants, shorts, jackets and other
apparel; novelty items, such as bumper stickers and
ornamental novelty buttons, home products, such as towels
and insulated beverage containers; gift items, such as
jewelry and pins; sporting goods, toys and games, and many
other items. NFLP licenses the Ravens Club Marks in
connection with all of the above officially licensed NFL
products.” Proper affidavit at 5. Furthermore, the “Ravens
Club Marks were in use years before the filing date of the
application at issue here.” Proper affidavit at 13.
Indeed, sales of merchandise bearing the Ravens Club marks
have generated millions of dollars in revenue beginning in
1996. Opposers have also included examples from websites of
Opposition No. 91157082
7
use of the Ravens marks on various items including insulated
beverage containers, jewelry, watches, ornamental buttons,
towels, clothing items, and bumper stickers. Proper
Exhibits 6 and 7.
There is no evidence that applicant has used its 12TH
RAVEN mark on any of the identified goods prior to the
application’s filing date. Therefore, applicant must rely
on its application’s filing date (September 19, 2000) as its
constructive use date. Zirco Corp. v. American Telephone
and Telegraph Co., 21 USPQ2d 1542, 1544 (TTAB 1991)
(“[T]here can be no doubt but that the right to rely upon
the constructive use date comes into existence with the
filing of the intent-to-use application and that an intent-
to-use applicant can rely upon this date in an opposition
brought by a third party asserting common law rights”). See
also Intersat Corp. v. International Telecommunications
Satellite Organization, 226 USPQ 154, 156 n. 5 (TTAB 1985)
(“The earliest date of first use upon which Intelsat can
rely in the absence of testimony or evidence is the filing
date of its application”).
Regarding priority, it is not an issue to the extent
that opposer Baltimore Ravens Limited Partnership owns a
registration for the mark BALTIMORE RAVENS for football
exhibition services, clothing, sporting goods, and paper
goods. See King Candy Co. v. Eunice King’s Kitchen, 496
Opposition No. 91157082
8
F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). Furthermore, it
is clear that opposers have used the mark BALTIMORE RAVENS
mark for entertainment services, namely, professional
football games since 1996, which is well prior to
applicant’s constructive use date. This mark has been
licensed to the NFLP. Proper affidavit at 4. Therefore,
opposers have established priority of use of the mark. We
add further that the sale of merchandise bearing the Ravens
Club mark has resulted in millions of dollars in revenue
since 1996. Opposers’ evidence of the licensing and use of
its goods and services convinces us that opposers have
priority for these goods. We add that:
It is therefore held that, as between the parties
herein opposer is the prior user of the mark “PROTECT”
and that, as such, is entitled to preclude the
registration of the same or a similar mark not only for
the like or similar goods, but for any goods which
purchasers might mistakenly assume emanate from it.

La Maur Inc. v. International Pharmaceutical Corporation,
199 USPQ 612, 617 (TTAB 1978). The record demonstrates that
consumers are likely to believe that such items as jewelry,
insulated beverage containers, towels and ornamental novelty
buttons are likely to come from opposers inasmuch as
opposers are the source of these goods as well as football
exhibition services, sporting goods, clothing, and paper
goods.
Opposition No. 91157082
9
Likelihood of Confusion
The next issue is whether there is a likelihood of
confusion between applicant’s 12TH RAVEN mark and opposers’
BALTIMORE RAVENS mark. In likelihood of confusion cases, we
consider whether there is confusion by analyzing the facts
as they relate to the thirteen factors set out in such cases
as In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003) and In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973).
Because the parties’ goods, as will be discussed
subsequently, are either in part identical, or otherwise
closely related, the key issue in this case is whether
applicant’s mark is confusingly similar to opposers’
BALTIMORE RAVENS mark.
This “first DuPont factor requires examination of ‘the
similarity or dissimilarity of the marks in their entireties
as to appearance, sound, connotation and commercial
impression.’” Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at
567). In this case, applicant’s mark is 12TH RAVEN while
opposers’ mark is BALTIMORE RAVENS. The marks are similar
to the extent that they both contain the word RAVEN(S). The
term “Ravens” is the dominant feature of the BALTIMORE
RAVENS mark, where Baltimore identifies the location of the
Opposition No. 91157082
10
Ravens football team. In applicant’s mark, the term “Raven”
dominates applicant’s mark because the only other feature of
the mark is the term 12th. This numerical designation does
not distinguish the marks inasmuch as it reinforces the
connection with the Baltimore Ravens football team by
specifically identifying a particular Raven, i.e., the
twelfth Raven.4 Therefore, the term “Raven” is the dominant
feature of the marks. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“[T]here is
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. Indeed,
this type of analysis appears to be unavoidable”).
Furthermore, we cannot attribute much trademark
significance to the difference in the plural and singular
form of the word “Raven” in the marks. Wilson v. Delauney,
245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957) (“It is evident
that there is no material difference, in a trademark sense,
between the singular and plural forms of the word ‘Zombie’
and they will therefore be regarded here as the same mark”).

4 “Each football team has eleven players on the playing field at
any one time.” Proper affidavit at 13. Applicant admitted that
its “12TH” marks utilize “the concept of the fan as the 12TH
player in connection with the goods in order to specify and to
involve the team sports fan who is … the twelfth on a football
team.” Answer at 2. Applicant further admitted that “12TH
Opposition No. 91157082
11
To the extent that the singular/plural difference is noticed
by consumers, it would not likely be significant because, as
viewed in applicant’s mark, the singular form of the word
would merely be seen as identifying someone that is
associated with the RAVENS. Moreover, applicant’s mark
would be suggestive of a group, as is opposers’ mark,
because implicit in the concept of a 12th Raven is that
there are at least 11 others.
The geographically descriptive term “Baltimore” would
not be as significant as the term “Ravens” in distinguishing
the marks. Baltimore identifies the primary location where
the RAVENS football team provides its services. The 12TH
RAVEN mark suggests a connection with those football
services. See In re Chatam International Incorporated, 380
F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) (“GOLD, in
the context of tequila, describes either a characteristic of
the good – its color – or a quality of the good commensurate
with great value or merit … In sum, the Board had good
reason to discount ALE, JOSE, and GOLD as significant
differences between the marks”). They are similar in sound,
appearance, meaning, and commercial impression. National
Football League Properties, Inc. v. New Jersey Giants, Inc.,
637 F. Supp. 507, 229 USPQ 785, 791 n.1 (D.N.J.
1986)(“Defendant’s mark ‘New Jersey GIANTS’ is similar to

designated a football fan that’s universally known.” Ringelstein
Opposition No. 91157082
12
the Giants’ registered marks ‘New York Giants’ and ‘Giants’
and the dominant element of the mark – ‘Giants’ – is
identical, rendering those marks particularly confusing”).
See also Indianapolis Colts Inc. v. Metropolitan Baltimore
Football Club Limited Partnership, 34 F.3d 410, 31 USPQ2d
1811, 1817 (7th Cir. 1994) (parenthetical omitted):
[W]e cannot say that the district judge committed a
clear error in crediting the major findings of the
Jacoby study and inferring from it and the other
evidence in the record that the defendants’ use of the
name “Baltimore CFL Colts” whether for the team or on
merchandise was likely to confuse a substantial number
of consumers [with the INDIANAPOLIS COLTS]. This means
… that the judge's finding concerning likelihood of
confusion required that the injunction issue.

While we have taken into consideration the difference
between 12TH and BALTIMORE, this difference does not result
in the marks not being similar. Specialty Brands, Inc. v.
Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281,
1283 (Fed. Cir. 1984) (“It is the similarity of commercial
impression between SPICE VALLEY and SPICE ISLANDS that
weighs heavily against the applicant”).
Therefore, the marks BALTIMORE RAVENS and 12TH RAVEN
have similar meanings and commercial impressions. Also, the
addition of the term 12th does not result in the marks
having significantly different appearances or pronunciation
inasmuch as these marks are dominated by the term “Raven”
and the term 12th reinforces the “Raven” feature of the

dep. at 36.
Opposition No. 91157082
13
marks. The similarities between 12TH RAVEN and BALTIMORE
RAVENS in sound, appearance, meaning, and commercial
impressions outweigh their differences.
Next, we must consider whether the goods and services
of the parties are related. The involved goods are in part
virtually identical. Applicant’s goods include clothing for
informal wear, namely, pants, jackets, shirts, t-shirts,
sweatshirts, and shorts as well as bumper stickers.
Opposers’ clothing includes identical items of “men's,
women's and children's clothing used in the promotion of a
professional football team by the name of the Baltimore
Ravens” such as T-shirts, sweatshirts, shorts, pants, and
jackets. Both applicant’s and opposer’s identifications of
goods include bumper stickers. When “marks would appear on
virtually identical goods or services, the degree of
similarity necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701
(Fed. Cir. 1992).
When we are dealing with an opposition to register as
with other board proceedings, we must compare the goods as
described in the application and the registrations to
determine if there is a likelihood of confusion. Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1493, 1
USPQ2d 1813, 1815 (Fed. Cir. 1987). As a result, we must
Opposition No. 91157082
14
assume that applicant’s jewelry, bumper stickers, insulated
beverage containers, towels, clothing items, and ornamental
novelty buttons encompass all goods of that type. Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (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 particular
channels of trade or the class of purchasers to which the
sales of goods are directed”). See also Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
respective descriptions of goods”).
Furthermore, applicant’s goods are a variety of
consumer items including jewelry, bumper stickers, insulated
beverage containers, towels, pants, jackets, shirts, t-
shirts, sweatshirts, shorts, and ornamental novelty buttons.
Opposers’ testimony and evidence indicates that these are
the type of goods that would be associated with a
professional football team and applicant’s goods are related
to opposers’ goods. We point out that:
[I]t has often been said that goods or services need
not be identical or even competitive in order to
Opposition No. 91157082
15
support a finding of likelihood of confusion. Rather,
it is enough that goods or services are related in some
manner or that circumstances surrounding their
marketing are such that they would be likely to be seen
by the same persons under circumstances which could
give rise, because of the marks used thereon, to a
mistaken belief that they originate from or are in some
way associated with the same producer or that there is
an association between the producers of each [party’s]
goods or services.

In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). See
also Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650,
1661 (TTAB 2002).
Therefore, applicant’s and opposers’ goods are in part
identical and to the extent they are not identical, we
conclude that they are related. Purchasers seeing
applicant’s mark on its goods are likely to believe that
there is an association between those goods and opposers’
goods.
Regarding the factors concerning potential purchasers
and channels of trade, these factors would also favor
opposers. We have already determined that many of
applicant’s goods are identical to opposers’ goods. Because
many of the goods are identical, we must assume that the
channels of trade and purchasers are the same. Genesco Inc.
v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-
part identical and in-part related nature of the parties’
goods, and the lack of any restrictions in the
identifications thereof as to trade channels and purchasers,
these clothing items could be offered and sold to the same
Opposition No. 91157082
16
classes of purchasers through the same channels of trade”);
In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994)
(“Because the goods are legally identical, they must be
presumed to travel in the same channels of trade, and be
sold to the same class of purchasers”).
Furthermore, applicant has made it clear that it
intends to actually market its goods to purchasers who would
be identical to opposers’ fans and purchasers. Applicant
admits that “it intends to advertise, promote and/or sell
goods or services bearing 12TH Man Designations to fans of
professional football teams that play in the NFL.” Proper
Exhibit 54 at 2.
Of course, opposers’ “target consumers of the Baltimore
Ravens and of goods and services bearing the Ravens Club
Marks are fans of Baltimore Ravens football and football
fans in general.” Proper affidavit at 4. In effect, the
potential purchasers of applicant’s and opposers’ goods, in
addition to being legally identical, actually overlap to the
extent that both applicant and opposers target fans of
football as potential purchasers.
Opposers have identified its channels of trade as
follows (Proper Affidavit at 6):
NFL products are sold in a wide variety of retail trade
locations, including, inter alia, department stores,
discount stores, drug stores, fan shops, footwear
specialty stores, grocery stores, and sporting goods
stores. Specific examples of companies that distribute
NFL products include, inter alia, K-Mart, Target, Wal-
Opposition No. 91157082
17
Mart, Sears, JC Penney, Dillard’s, Foot Locker, Champs,
Sports Authority, and Modell’s Sporting Goods.

Opposers also sell these goods through “the Internet Web
site of the Official Baltimore Ravens Online eStore” and
through the “Internet Web sites of various retail outlets
for officially licensed NFL products.” Proper affidavit at
12. Opposers’ actual broad channels of trade would again
likely overlap applicant’s channels of trade, if applicant
actually sold its goods in commerce. In addition, the price
of opposers’ goods indicates that many of these items (such
as posters, auto and bike tags, mugs, and T-shirts) would
not involve careful or sophisticated purchasers. Proper
affidavit at 6 (The price points for opposers’ goods begin
at just “a few dollars”). On the contrary, these items must
be considered impulse purchases.
Fame, the fifth du Pont factor, is another factor that
favors opposer. Applicant admits that opposers’ mark is
famous. Applicant’s Brief at 3 (“There are some things that
are not at issue in this case. No one denies that the
Baltimore Ravens are a well known professional football team
or that the Baltimore Ravens is a famous service mark for
that team”). See also Proper Exhibit 53 at 2, Applicant’s
Response to Requests for Admissions (“Applicant admits that
“Baltimore Ravens” is a famous mark, as applied to
professional football games and exhibitions”).
Opposition No. 91157082
18
Opposers have also submitted evidence of the fame of
the BALTIMORE RAVENS mark. With regard to the services,
opposers began using the Ravens mark in association with
football exhibition services in 1996 and the Baltimore
Ravens won Super Bowl XXXV in 2001. Proper affidavit at 3.
As a result of a 1998 agreement with CBS, ABC, FOX and ESPN,
“every Baltimore Ravens game is broadcast live by one of
these NFL broadcast partners.” Proper affidavit at 8. In
the local Baltimore broadcast market, the Baltimore Ravens
have enjoyed considerable success. For example, in 2002,
“an estimated 334,693 viewers were watching each Ravens
game.” Id. at 8 (punctuation mark deleted). Total
attendance at the eight Ravens Club home games in 2003 was
556,634. Id. at 9. Opposers’ total annual sales from NFL
merchandise is approximately $2-3 billion at retail and “the
percentage of sales of NFL merchandise attributable to goods
bearing the Ravens Club Marks ranged from at least 0.54
percent to 3.92 percent during the time period from 1996
through 2002.” Id. at 7. These figures indicate that sales
of the Ravens merchandise were at least $10 million per
year. Opposers’ witness testified that “millions of dollars
have been spent cumulatively advertising and promoting the
Ravens Club and its marks, and millions of dollars worth of
merchandise bearing the Ravens Club Marks have been sold
through NFLP’s Licensees.” Id. at 7.
Opposition No. 91157082
19
In addition, opposers also submitted several media
surveys of articles that reference the Ravens Club Marks.
On Opposers’ behalf, a search was performed in the
“News Sources, Combined” database of the LEXIS/NEXIS
on-line research service for references to “RAVENS w/2
football” for the five-year period from January 1, 1996
to December 31, 2000. The LEXIS/NEXIS search disclosed
1,539 news articles that contained the search term
during this five-year time period. A representative
sample of 39 articles throughout the time frame was
then obtained by arranging the articles chronologically
and selecting every 40th article from the search
results. Of this 39 article sample, 36 articles (or
92%) refer directly to the Baltimore Ravens.

Proper affidavit at 10-11.
A similarly constructed survey of articles for the
search “RAVENS w/2 fan” produced similar results – 98% of
the articles refer directly to the Baltimore Ravens. Proper
affidavit at 11. Another survey of “RAVENS w/2 NFL”
resulted in every article referring to the Baltimore Ravens.
Proper affidavit at 11.
Applicant maintains that “as an organization, the
Baltimore Ravens are known to the public only as a football
team; that is their fame and reputation. The sale of a
sweatshirt or a pair of pants under the 12TH Raven label
does not suggest a connection with a football team nor
does it traffic upon the name Baltimore Ravens. In fact,
there is no connection between the two marks and their
simple existence does not suggest any.” Brief at 7.
We cannot agree with applicant’s argument that
opposers’ BALTIMORE RAVENS mark has achieved fame only as a
Opposition No. 91157082
20
mark for the football team. It is certainly clear that
opposers’ BALTIMORE RAVENS mark has achieved fame for
football exhibition services, and applicant has admitted
this fact. The Baltimore Ravens football team games are
broadcast on television and their games in the Baltimore
area have significant television ratings. However, in
addition to the fame for their football services, opposers
have shown that it has a registration for the words
BALTIMORE RAVENS for clothing, sporting goods, and paper
products. Furthermore, they have also submitted
evidence that they use the marks BALTIMORE RAVENS and RAVENS
alone for a variety of goods. Therefore, because of the
television exposure, advertising, and merchandise sales, we
cannot agree with applicant that the fame of the Ravens Club
Mark is limited to football exhibition services.
The evidence of record convinces us that the opposers’
BALTIMORE RAVENS mark has acquired significant fame and
public recognition for the football exhibition services as
well as for the related products. Under these
circumstances, fame “of the prior mark, another du Pont
factor, ‘plays a dominant role in cases featuring a famous
or strong mark.’” Century 21 Real Estate Corp., 23 USPQ2d
at 1701, quoting, Kenner Parker Toys v. Rose Art Industries,
963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
“Famous marks thus enjoy a wide latitude of legal
Opposition No. 91157082
21
protection.” Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1897 (Fed. Cir. 2000) (FIDO LAY and FRITO-LAY
confusingly similar even though the respective goods at
issue were “natural agricultural products, namely, edible
dog treats” and snack foods).
The Federal Circuit and its predecessor have held
that “there is no excuse for even approaching the well-known
trademark of a competitor and that all doubt as to whether
confusion, mistake, or deception is likely is to be resolved
against the newcomer, especially where the established mark
is one which is famous.” Nina Ricci S.A.R.L. v. E.T.F.
Enterprises Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1904 (Fed.
Cir. 1989), quoting, Planter's Nut & Chocolate Co. v. Crown
Nut Co., Inc., 305 F.2d 916, 134 USPQ 504, 511 (CCPA 1962)
(internal punctuation marks omitted). Therefore, inasmuch
as opposers’ mark has achieved significant recognition and
renown, this factor weighs heavily in opposers’ favor.
One of applicant’s principal arguments relates to the
sixth du Pont factor concerning the number and nature of
similar marks in use on similar goods.
[T]here were approximately 204 live “raven” trademarks
listed in the Trademark Electronic Search System
(Tess). All of these marks enjoy trademark protection.
Additionally, there are approximately four college
football teams that call themselves “Ravens.” While
these numbers are well short of the 1827 live “bear”
trademarks and twenty-three “bear” football teams, they
still reflect that the use of the word “raven” as a
trademark is far from rare.

Opposition No. 91157082
22
Brief at 4.

According to Exhibit 7 (Proper dep. on written questions),
the following colleges are nicknamed the “Ravens”:
Benedictine College, Franklin Pierce College, Anderson
University, and St. Meinrad College. Mr. Proper was
specifically asked whether an “Anderson Ravens” shirt
infringed any NFL trademarks. He responded: “I do not
know.” Proper deposition on written questions at 6.
Regarding the other uses of the term “Ravens,” it is
not clear whether the witness was aware of the other uses by
the colleges of the term Ravens and with the exception of
the Anderson Ravens clothing, there is no evidence of the
use of these nicknames by the colleges or their teams.
While applicant has also submitted copies of several
websites that use “Baltimore Ravens” marks, these sites were
sites that seem to be fan-type sites that discuss the
performance of the Baltimore Ravens football team.5 It is
not clear why these websites would support applicant’s
arguments that its mark for 12TH RAVEN is not confusingly
similar to opposers’ BALTIMORE RAVENS mark used on the same
or very similar goods. Applicant is not seeking
registration of the mark for website-related services. Even
if there was some relevance to these websites, we note that

5 We add that Mr. Proper, when asked if these sites were
sanctioned by the NFL, responded “yes” or “I do not know.” Dep.
on Written Questions at 1-5.
Opposition No. 91157082
23
“it is entirely reasonable for the opposer to object to the
use of certain marks in use on some goods which it believes
would conflict with the use of its marks on its goods and
services while not objecting to use of a similar mark on
other goods which it does not believe would conflict with
its own use.” McDonald's Corp. v. McKinley, 13 USPQ2d 1895,
1899-1900 (TTAB 1989).6
While the word “Raven” is not a unique term in the
United States, its use in association with football teams is
hardly common. Applicant’s evidence does not convince us
that opposers’ marks are only entitled to a limited scope of

6 While applicant has submitted a printout from the USPTO’s
database that shows that there are more than 180 applications and
registrations that contain the word “Raven,” we give this
evidence little weight. In re Carolina Apparel, 48 USPQ2d 1542,
1542 n.2 (TTAB 1998) (“The Board does not take judicial notice of
third-party registrations, and the mere listing of them is
insufficient to make them of record”). Applicant’s list is
particularly unpersuasive inasmuch as there is no indication of
the goods or services for which the marks are registered and
there are numerous unregistered marks on the list. We note that
applicant has also included 5 registrations that contain the word
“raven” or a translation of that word. Third-party registrations
“may be used to demonstrate that a portion of a mark is
suggestive or descriptive, [but] they cannot be used to justify
the registration of another confusingly similar mark.” In re
J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987). See also
AMF Inc. v. American Leisure Prods., Inc., 474 F.2d 1403, 177
USPQ 268, 269 (CCPA 1973) ("The existence of [third party]
registrations is not evidence of what happens in the market place
or that customers are familiar with them"); Dolfin Corporation v.
Jem Sportswear, Inc., 218 USPQ 201, 207 (C.D. Cal. 1982) (“The
mere citation of third party registrations, without proof of
actual usage on related products do[es] not weaken the mark in
issue”); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650,
1659 n.20 (TTAB 2002) (“Third-party registrations are not
evidence that the marks used therein are in use in commerce or
that the public is familiar with them, for purposes of the sixth
du Pont factor”). These registrations, which often contain
additional words or are for different goods and services, hardly
Opposition No. 91157082
24
protection. The University of Georgia was able to enforce
its trademark rights in its Bulldog mark despite the “fact
that many other colleges, junior colleges, and high schools
use an English bulldog as a symbol.” University of Georgia
Athletic Association v. Laite, 756 F.2d 1535, 225 USPQ 1122,
1129 (11th Cir. 1985). In that case, the schools the
defendant referenced included: “twenty-six high schools,
fourteen junior colleges, and sixteen colleges that use an
English bulldog as a mascot. The list includes the Citadel,
Drake University, Fresno State University, Mississippi State
University, Louisiana Tech University, and Yale University.”
Id. at 1129 n.25. See also Dolfin, 218 USPQ at 207 (The
fact that there “are others who have used DOLFIN trade names
or marks in non-competing products or, even infringed
plaintiff's rights does not weaken plaintiff's case”).
Applicant also argues that “12TH Man does not intend to
mislead the consumer as to the origin of the 12TH Raven
product, but rather to offer an alternate means in which
individuals may show allegiance to their sport team or
teams. The 12TH Raven label will not seek an allegiance
with any specific team. Instead, 12TH Man seeks to open an
avenue for Ravens fans to demonstrate their allegiance to
their team or teams by wearing and/or displaying emblems
which evince that allegiance.” Brief at 16.

establish that applicant’s mark is not confusingly similar to
Opposition No. 91157082
25
Opposers argue that applicant “selected the designation
‘12th’ or ‘Twelfth,’ with the singular, shortened version of
the team names of twenty NFL Member Clubs, to refer to fans
of each targeted NFL Member Club and to trade
inappropriately on the goodwill of the selected Member Club,
including the Ravens.” Brief at 11. While applicant may
not have intended to mislead purchasers, it is not clear how
the selection of numerous marks that are each based on the
name of one of twenty NFL teams could have been done in good
faith. Furthermore, it is not clear how the fact that “it
will not seek an allegiance with any specific team,” will
eliminate the likelihood of confusion. However, we decline
to find that the adoption was in bad faith, particularly in
this case, where the adopted mark was not identical and it
is the name of a few sports teams. NASDAQ Stock Market Inc.
v. Antartica S.r.l., 69 USPQ2d 1718, 1733 (TTAB 1998) (“On
the other hand, merely because we decline to find that
applicant adopted its mark [NASDAQ] in bad faith, it does
not follow from this record that applicant has acted
entirely in good faith. While the factor does not weigh in
the balance against applicant, it does not weigh in its
favor either”).
When we analyze the relevant factors regarding the
likelihood of confusion, some, such as the lack of evidence

opposers’.
Opposition No. 91157082
26
of actual confusion, are not relevant because applicant has
not used its mark on the goods in the application and there
would not have been an opportunity for actual confusion to
occur. Others clearly favor opposers. The goods are
identical or very closely related. Not only are the
channels of trade for identical items legally identical but
opposers actually market their goods in very broad channels
of trade so that if applicant were to use its mark it would
likely be in overlapping channels of trade. The evidence
also makes it clear that opposers’ merchandise is marketed
to fans of the Baltimore Ravens football team. Applicant
also intends to market its goods to football fans, which
would include specifically fans of the Baltimore Ravens.
Again, the potential purchasers of both applicant’s and
opposers’ goods would at least overlap.
The central dispute concerns whether the marks are
similar. We have found that the marks 12TH RAVEN and
BALTIMORE RAVENS are similar. Applicant argues that its
mark “may be said to generate a ‘calling to mind’” (brief at
5), which is not necessarily confusion. However, more than
merely calling to mind, football fans that would encounter
applicant’s 12TH RAVEN mark on the identified goods are
likely to assume that there is an association with opposers
who own the mark BALTIMORE RAVENS and use this mark on
identical and very similar goods. Therefore, confusion is
Opposition No. 91157082
27
likely. See DC Comics v. Pan American Grain Mfg. Co., 77
USPQ2d 1220, 1226 (TTAB 2005):
Because opposer has used KRYPTONITE as a merchandising
mark with respect to a variety of goods; because
consumers recognize that, in the general marketing
environment, merchandising marks are used to identify a
variety of goods and services; and because opposer has
used the term KRYPTONITE in connection with the
promotion of certain food and beverage products, we
find that… applicant's goods and opposer's goods are
related. In short, based on the above, we find that
consumers, seeing KRIPTONITA on prepared alcoholic
fruit cocktails, are likely to believe that the mark
has been licensed by opposer for such goods, and that
the goods are therefore sponsored by opposer.

Finally, applicant also makes an argument (brief at 16-
17) that appears to raise the issue of functionality of
opposers’ marks.
At best, the 12TH Raven mark may be said to be
purchased by the consumer in order to demonstrate an
allegiance to the Baltimore Ravens… It was established
that when goods with the school or team’s insignia on
them are being purchased, they are being purchased to
demonstrate an individual’s allegiance or
identification with the group represented by the mark…
What the consumer seeks when he purchases an emblem or
an item that bears an emblem is the function of
expression. He wants to communicate his allegiance and
support of his team. He purchases a replica because
that is the function of his expression. And because of
the doctrine of functionality, the use of even exact
replicas of a registered mark does not violate
trademark law.

We have several problems with applicant’s argument.
First, to the extent that applicant is arguing that
opposers’ registered trademark is functional, we note that
it is improper to raise this defense without counterclaiming
or petitioning to cancel the mark on this basis. Contour
Opposition No. 91157082
28
Chair-Lounge Co. v. The Englander Co., 324 F.2d 186, 139
USPQ 285, 287 (CCPA 1963) (“[T]his is an opposition only and
in an opposition, this court has always held that the
validity of the opposer's registrations are not open to
[collateral] attack”); Cosmetically Yours, Inc. v. Clairol
Inc., 424 F.2d 1385, 1387, 165 USPQ 515, 517 (CCPA 1970)
("As long as the registration relied upon … remains
uncanceled, it is treated as valid and entitled to the
statutory presumptions"). IN this case, opposers own or are
licensed to use the mark BALTIMORE RAVENS with the word
“Baltimore” disclaimed. Even if applicant is claiming that
it is only copying the functional features of opposers’
mark, it would apparently be attacking the registration
because “Ravens” is the only feature of that registered mark
that is not disclaimed.
Second, this case is not similar to the International
Order of Job’s Daughters case on which applicant relies. In
that case:
The TTAB gave preclusive effect to the Ninth Circuit's
determination that the Job's Daughters name and emblem
were merely “functional aesthetic components of the
product, not trademarks,” primarily as a result of the
widespread merchandising of Job's Daughters jewelry by
many American retail jewelers (including Lindeburg) who
are independent of Job's Daughters.

International Order of Job's Daughters v. Lindeburg and
Company, 727 F.2d 1087, 220 USPQ 1017, 1018-19 (Fed. Cir.
1984), discussing International Order of Job's Daughters v.
Opposition No. 91157082
29
Lindeburg and Company, 633 F.2d 912, 208 USPQ 718 (9th Cir.
1980), cert. denied, 452 U.S. 941 (1981). Here, applicant
has not shown that there has been widespread merchandising
of the BALTIMORE RAVENS mark by independent entities.
Also, we reject applicant’s argument because it
apparently would allow others to register marks that are
similar to registered marks in order to show support or
hostility to a sports team. American case law simply does
not recognize such a right.
In light of the above, and assuming for the sake of
argument that aesthetic functionality is a valid basis
for opposing registration, we concur with applicant
that the marks at issue are not aesthetically
functional as used in connection with clothing. While,
especially in the case of apparel imprinted with
designs featuring “Bucky Badger,” it is undisputed that
many purchasers buy such garments because they find
“Bucky” to be “cute” or otherwise appealing and do not
care about the particular quality of the goods or
whether the University sponsors or endorses them, these
facts are legally immaterial. That is to say, the fact
that consumers buy a T-shirt, sweatshirt or other
garment because they like and want the particular
“Bucky Badger,” “Bucky on W” or “WISCONSIN BADGERS”
design imprinted thereon does not render such designs
aesthetically functional. Taken to its logical
conclusion, opposers’ argument would eliminate
trademark protection and registrability for any popular
and commercially successful design which is imprinted
on clothing, irrespective of whether the design
additionally is source-indicative to at least some
consumers.

University Book Store v. University of Wisconsin Board of
Regents, 33 USPQ2d 1385, 1406 (TTAB 1994)(footnote omitted).
For example, despite the finding of the abandonment of
the Baltimore Colts mark and the resulting anger of local
Opposition No. 91157082
30
fans when the team moved to Indianapolis, another team was
not permitted to use the mark BALTIMORE CFL COLTS. See,
e.g., Indianapolis Colts Inc. v. Metropolitan Baltimore
Football Club Limited Partnership, 34 F.3d 410, 31 USPQ2d
1811, 1814 (7th Cir. 1994) (“The Colts’ abandonment of a
mark confusingly similar to their new mark neither broke the
continuity of the team in its different locations -- it was
the same team, merely having a different home base and
therefore a different geographical component in its name --
nor entitled a third party to pick it up and use it to
confuse Colts fans”).
The mere fact that a trademark owner’s mark is
associated with a movie, television show, university, or
sports team, does not mean that it is functional and
available for others to use to promote their goods when the
trademark owner is actively licensing the mark for related
items. See In re Paramount Pictures Corporation, 217 USPQ
292, 293 (TTAB 1983) (“In the case before us, we have a mark
well known as the name of a television show and a movie. In
view of applicant's registration of ‘STAR TREK’ for a number
of other goods, it is clear that it performs a trademark
function and is recognizable as such to the extent that the
Opposition No. 91157082
31
public would associate articles on which it appears as
having a common origin”).7
We cannot conclude that applicant has any right to
register its mark simply because it attempts to market its
goods to a fan who wants “to communicate his allegiance and
support of his team.” The trademark owner has a right to
market its promotional items to those fans and to prevent
others from marketing promotional items to the same fans
using a confusingly similar mark.
We conclude that applicant’s mark 12TH RAVEN if it were
used on the identified goods, would likely cause confusion
in view of opposers’ registered trademark for BALTIMORE
RAVENS.8
Decision: The opposition is sustained and registration
to applicant of its mark is refused.

7 We add that the case of American Footwear Corp. v. General
Footwear Co., 609 F.2d 655, 204 USPQ 609, 616 (2d Cir. 1979) is
distinguishable because the “trademarks registered to Universal
[relating to the Six Million Dollar Man and The Bionic Woman
television shows] were in the areas of T.V. entertainment and
toys. This market area bears little if any relationship to
footwear, and diminishes the strength of Universal's contention
that it had established a right to the term ‘bionic’ as a
fanciful mark in the field of footwear.” In the present case,
opposers have shown that the goods of the parties are not only
related, but in some cases, identical, and that opposers have
priority of use for these items unlike the party in American
Footwear. Id.
8 In view of our disposition of the case on the likelihood of
confusion ground, we do not reach the falsely suggesting a
connection and dilution claims.