Baseball America, Inc.v.Powerplay Sports, Ltd.

Trademark Trial and Appeal Board

Aug 11, 2004

No. 91120978 (T.T.A.B. Aug. 11, 2004)

Mailed:
August 11, 2004
Paper No. 30
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Baseball America, Inc.1
v.
Powerplay Sports, Ltd.
_____
Opposition No. 91120166
to application Serial No. 75787673
filed on August 30, 1999
_____
Opposition No. 91120978
to application Serial No. 75787674
filed on August 30, 1999
_____
Susan Freya Olive of Olive & Olive, P.A. for Baseball
America, Inc.
Powerplay Sports, Ltd., pro se.
______
Before Sams, Chief Administrative Trademark Judge, and
Bottorff and Rogers, Administrative Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
The above-captioned opposition proceedings were
consolidated by order of the Board dated February 6, 2002.
1 In the prefaces to its two notices of opposition, opposer
identified itself as “Baseball American, Inc.,” and that is how
opposer was identified in the Board’s orders instituting the
proceedings. It is apparent from opposer’s other filings that
THIS DISPOSITION IS
CITABLE AS PRECEDENT
OF THE TTAB
Opposition Nos. 91120166 and 91120978
2
The cases are now ready for decision and shall be decided in
this single opinion, which shall be entered in the
proceeding files of both proceedings.
In application Serial No. 75787673 (involved in
Opposition No. 91120166), applicant seeks registration on
the Principal Register of the mark BASEBALL AMERICANA (in
typed form; BASEBALL disclaimed) for goods identified in the
application as “posters” in International Class 16.2 In
application Serial No. 75787674 (involved in Opposition No.
91120978), applicant seeks registration on the Principal
Register of the mark BASEBALL AMERICANA (in typed form;
BASEBALL disclaimed) for services recited in the application
as “educational services, namely, conducting courses,
seminars, conferences and workshops in the field of baseball
history and trivia, and photography; organizing baseball
exhibitions for stadiums, museums, theme parks, libraries
and other public venues; providing facilities for
educational, entertainment, sporting and cultural activities
in the form of a baseball hall of fame and museum,” in
International Class 41.3 Both applications were filed on
its name is “Baseball America, Inc.” The Board has updated its
records accordingly.
2 The application is a use-based application under Trademark Act
Section 1(a), 15 U.S.C. §1051(a). January 1995 is alleged as the
date of first use of the mark anywhere, and July 1996 is alleged
as the date of first use of the mark in commerce.
3 The application is a use-based application under Trademark Act
Section 1(a), 15 U.S.C. §1051(a). 1986 is alleged as the date of
Opposition Nos. 91120166 and 91120978
3
August 30, 1999, and both applications include applicant’s
claim of acquired distinctiveness under Trademark Act
Section 2(f), 15 U.S.C. §1052(f).
Opposer has opposed registration of the marks depicted
in both of applicant’s applications.4 As grounds for
opposition in both cases, opposer has alleged that it is the
prior user of the mark BASEBALL AMERICA on or in connection
with various baseball-related goods and services; that it is
the owner of Principal Register Registration No. 1346082,5
which is of the mark depicted below (BASEBALL disclaimed)
first use of the mark anywhere and the date of first use of the
mark in commerce.
4 Applicant’s contention that the notices of opposition were not
timely-filed is without merit. In both cases, opposer timely
requested and was granted several extensions of time to oppose,
pursuant to Trademark Rule 2.102, 37 C.F.R. §2.102. The Board’s
October 24, 2000 order in each case extended the time for filing
the notice of opposition to November 15, 2000. Opposer’s notices
of opposition in both cases were accompanied by certificates of
mailing dated November 15, 2000, and thus were timely-filed.
5 Issued July 2, 1985. Affidavits under Sections 8 and 15
accepted and acknowledged. The registration was introduced as an
exhibit to the testimony deposition of opposer’s witness Lee
Folger, who testified that the registration is extant and owned
by opposer (via assignment). (Folger Depo. at page 22, Exhibit
Nos. 3 and 4.)
Opposition Nos. 91120166 and 91120978
4
for goods identified in the registration as “publications,
namely newspapers, books, and calendars relating to
baseball, principally items concerning minor league and
college baseball,” in International Class 16; and that
applicant’s mark, as applied to the goods and services
identified in applicant’s applications, so resembles
opposer’s previously-used and registered mark BASEBALL
AMERICA as to be likely to cause confusion, to cause
mistake, or to deceive. Trademark Act Section 2(d), 15
U.S.C. §1052(d).
After filing several papers which failed to comply with
the Board’s pleading rules, applicant eventually filed
proper answers in both cases by which it denied the salient
allegations of the notices of opposition.
The record includes the pleadings herein6 and the files
of the opposed applications. Additionally, opposer
submitted the following evidence during its assigned
testimony period: the testimony deposition of its
publisher, Lee Folger, and exhibits thereto; a notice of
reliance on certain discovery materials and certain public
records; and a second (conditional) notice of reliance on
6 However, the factual allegations made in the pleadings are not
evidence of the matters alleged, except insofar as they might be
deemed to be admissions against interest. See TBMP §704.06(a)(2d
ed. 1st rev. March 2004) and cases cited therein. Likewise, the
exhibits attached to the pleadings are not evidence of record.
See Trademark Rule 2.122(c), 37 C.F.R. §2.122(c); see also TBMP
§704.05(a)(2d ed. 1st rev. March 2004) and cases cited therein.
Opposition Nos. 91120166 and 91120978
5
certain discovery materials.7 Applicant submitted no
evidence during its assigned testimony period.8 Opposer and
7 Opposer’s first notice of reliance includes opposer’s reliance
on all of its Requests for Admission; opposer argues that
applicant’s responses to the requests were untimely, and that all
of the requests therefore are deemed admitted, pursuant to Fed. R.
Civ. P. 36(a). Opposer’s second (conditional) notice of reliance
covers only certain of opposer’s Requests for Admission, i.e.,
those which applicant expressly admitted when it finally served
its responses. By way of background, we note that opposer served
applicant with the requests on December 12, 2001, and served what
apparently was a second courtesy copy of the requests on January
29, 2002; applicant did not serve its responses to the requests
until March 15, 2002. However, in its February 6, 2002 order
consolidating the proceedings and resetting trial dates, the
Board, noting the prior procedural history of the two cases
(including the June 13, 2001 issuance of a notice of default to
applicant in Opposition No. 91120166, and the Board’s May 23,
2001 order in Opposition No. 91120978 pertaining to the several
procedurally insufficient answers applicant had filed in that
case), ruled that proceedings in both cases “are considered to
have been suspended pending disposition of the notice of default
in Opposition No. 120,166 and the informality of the answer in
Opposition 120,978.” In view of this ruling, by which
proceedings were deemed to have been suspended prior to opposer’s
December 2001 service of the requests for admissions and prior to
what otherwise would have been the due date for applicant’s
response thereto, and in view of the fact that applicant in fact
finally responded to the requests, and in accordance with the
discretion afforded to the Board by Fed. R. Civ. P. 36(a), we
decline to treat the requests for admissions as having been
admitted by applicant for failure to timely respond. Accordingly,
we shall consider only those requests for admission which
applicant has expressly admitted, as set forth in opposer’s
second (conditional) notice of reliance.
8 Pursuant to the Board’s May 2, 2003 order resetting trial dates
after a suspension of proceedings, applicant’s testimony period
was set to close on August 30, 2003, opening thirty days prior
thereto. Applicant submitted no testimony or other evidence
during this assigned testimony period. Applicant had submitted
various documentary materials at various other times during the
course of this proceeding, including the materials attached to
applicant’s several informal answers and to its response to the
Board’s notice of default, the materials attached to its April
15, 2002 response to opposer’s motion to extend trial dates, and
the materials attached to its February 28, 2003 “arbitration
brief.” These materials, all of which were submitted outside of
applicant’s assigned testimony period (and which in any event
fail to comply with the Board’s evidentiary rules), shall be
given no consideration. See Trademark Rules 2.121(a)(1) and
Opposition Nos. 91120166 and 91120978
6
applicant filed main briefs, and opposer filed a reply
brief. No oral hearing was requested.
A preliminary interlocutory matter requires attention.
Applicant’s brief, captioned “‘Claimant’s Notice regarding
Registration of Mark’ and Documents Attached thereto,” was
filed with a certificate of mailing dated January 12, 2004.
On January 22, 2004, opposer moved to strike applicant’s
filing on the ground of untimeliness and on certain other
grounds. In its March 23, 2004 order, the Board found that
applicant’s brief was timely-filed, but deferred ruling on
opposer’s other objections until final decision. The Board
now has considered opposer’s objections, and rules as
follows.
First, opposer’s objection on the ground that the brief
was filed by a party other than applicant is overruled.
Powerplay Sports, LLC, the party identified in the brief,
and Powerplay Sports, Ltd., the applicant of record, would
appear to be one and the same entity, i.e., a Nevada Limited
Liability Company located at 1913 Pine Tree Drive, Prescott,
AZ 86303. Absent any evidence to the contrary, we deem
“Powerplay Sports, LLC” to be merely another name for
applicant, Powerplay Sports, Ltd.
2.123(l), 37 C.F.R. §§2.121(a)(1) and 2.123(l); see generally
TBMP §§703.01(c) and 706 (2d ed. 1st rev. March 2004) and cases
cited therein.
Opposition Nos. 91120166 and 91120978
7
However, opposer is correct in arguing that the
documentary materials attached as exhibits to applicant’s
brief cannot be considered, because they were not made of
record during trial. (See supra at footnote 8.) See TBMP
§704.05(b)(2d ed. 1st rev. March 2004) and cases cited
therein. Likewise, we accord no evidentiary value or
consideration to any factual assertions made by applicant in
the brief which are not supported by competent evidence in
the record. See TBMP 704.06(b)(2d ed. 1st rev. March 2004)
and cases cited therein. Opposer’s motion to strike
therefore is granted, to the extent that we shall give no
consideration to these exhibits and factual statements.
Opposer has established that it is the owner of a valid
and subsisting registration of the mark BASEBALL AMERICA.
See supra at footnote 5. In view thereof, and because
opposer has asserted a non-frivolous likelihood of confusion
claim, we find that opposer has established its standing to
oppose registration of applicant’s marks in both opposition
proceedings. See, e.g., Lipton Industries, Inc. v. Ralston
Purina Company, 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Because opposer has established the current status and
title of its pleaded registration, Section 2(d) priority is
not at issue with respect to the mark and the goods set
forth in that registration, i.e., “publications, namely
newspapers, books, and calendars relating to baseball,
Opposition Nos. 91120166 and 91120978
8
principally items concerning minor league and college
baseball.” See King Candy Co., Inc. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). We
also find that opposer has established its Section 2(d)
priority with respect to “posters,” the goods identified in
applicant’s Class 16 application, and with respect to
“educational services, namely, conducting courses, seminars,
conferences and workshops in the field of baseball history…”
which are included among the services recited in applicant’s
Class 41 application.9 Because applicant submitted no
timely and competent evidence establishing use of its mark
on the goods and services identified in its registrations,
the earliest date upon which applicant may rely for priority
purposes is the August 30, 1999 filing date of the
9 Opposer’s publisher, Lee Folger, also testified that opposer
has used its mark in connection with services that are similar or
related to the other services recited in applicant’s Class 41
application. However, although he testified as to opposer’s
current and past use of its mark in connection with such
services, he did not identify the dates of first use of the mark
in connection with such services, nor can we ascertain from his
testimony that opposer’s use of its mark in connection with such
services commenced prior to applicant’s August 30, 1999
application filing date. It is settled, however, that in order
to prevail on a Section 2(d) ground of opposition, an opposer
need not prove priority and likelihood of confusion as to all of
the goods or services identified in the applicant’s application.
Rather, if priority and likelihood of confusion are established
as to any of the goods or services identified in an opposed class
of goods or services, the opposition to registration of the mark
as to all of the goods or services identified in that class will
be sustained. See Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981); Shunk
Manufacturing Company v. Tarrant Manufacturing Company, 137 USPQ
881 (CCPA 1963); Alabama Board of Trustees v. BAMA-Werke Curt
Opposition Nos. 91120166 and 91120978
9
applications.10 Opposer has proven that it has used its
BASEBALL AMERICA mark on posters since the 1980’s, a date
prior to applicant’s August 30, 1999 filing date. (Folger
Depo. at 39-40, and Exh. No. 9.) Opposer also has proven
that it used its mark in February 1999 (prior to applicant’s
August 30, 1999 application filing date) in connection with
an educational seminar on baseball history. (Folger Depo.
at 49-51, and Exh. No. 13.)
Having found that opposer has established its Section
2(d) priority as to the goods and services identified in
applicant’s applications (and that priority is not at issue
with respect to the goods identified in opposer’s pleaded
registration), we turn next to the question of whether
opposer has established the “likelihood of confusion”
element of its Section 2(d) ground of opposition. Our
likelihood of confusion determination under Section 2(d) is
based on an analysis of all of the probative facts in
evidence that are relevant to the likelihood of confusion
factors set forth in In re E. I. du Pont de Nemours and Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In considering the
evidence of record on these factors, we keep in mind that
“[t]he fundamental inquiry mandated by §2(d) goes to the
Baumann, 231 USPQ 408, 411 n.7 (TTAB 1986); and In re Alfred
Dunhill Ltd., 224 USPQ 501 (TTAB 1984).
10 The dates of use alleged in applicant’s applications are not
evidence of such use, nor are the application specimens evidence
Opposition Nos. 91120166 and 91120978
10
cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
We turn first to the issue of whether applicant’s mark
and the opposer’s mark, when compared in their entireties in
terms of appearance, sound and connotation, are similar or
dissimilar in their overall commercial impressions. The
test is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in terms of their overall
commercial impression that confusion as to the source of the
goods or services offered under the respective marks is
likely to result. The focus is on the recollection of the
average purchaser, who normally retains a general rather
than a specific impression of trademarks. See Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Moreover, where, as in the present case, the marks would
appear on virtually identical goods and services, the degree
of similarity between the marks which is necessary to
support a finding of likely confusion declines. Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698 (Fed. Cir. 1992).
on applicant’s behalf. See Trademark Rule 2.122(b), 37 C.F.R.
§2.122(b)).
Opposition Nos. 91120166 and 91120978
11
Applying these legal principles in the present case, we
find that opposer’s mark BASEBALL AMERICA and applicant’s
mark BASEBALL AMERICANA are more similar than dissimilar
when viewed in their entireties in terms of appearance,
sound, connotation and overall commercial impression.
Visually and aurally, the marks differ only as to the final
two letters of applicant’s mark. Although the marks are not
identical in connotation, they are similar, in that
Americana, by definition, pertains to America.11 Both marks
generally connote “baseball in America” or “American
baseball.” Viewed in their entireties, we find that the
marks create similar overall commercial impressions. When
we factor in the legally identical nature of the parties’
goods and services and the renown of opposer’s mark (see
discussion infra), both of which decrease the degree of
similarity between the marks which is necessary to find a
likelihood of confusion, we find that the marks are
sufficiently similar that confusion is likely to result from
the parties’ use of these marks on or in connection with
their goods and services.
11 Webster’s Ninth New Collegiate Dictionary (1990), at 78,
defines “Americana” as “materials concerning or characteristic of
America, its civilization, or its culture.” The Board may take
judicial notice of dictionary definitions. See, e.g., University
of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ
594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983); see also TBMP §704.12(a)(2d ed. 1st rev. March 2004).
Opposition Nos. 91120166 and 91120978
12
Next, we find that applicant’s goods and services, as
identified in the applications, are legally identical to
goods and services as to which opposer has proven it is the
prior user of its mark, i.e., posters and educational
seminars in the field of baseball. We also find that
applicant’s goods and services are sufficiently related to
the goods identified in opposer’s pleaded registration that
confusion is likely to result from the parties’ use of these
confusingly similar marks. Opposer’s publications, like
applicant’s goods and services, all pertain to the sport of
baseball. Moreover, opposer has published books which
pertain, like applicant’s goods and services, to the
historical aspects of baseball. (Folger Depo. at 34, 84-
85.)
We also find that the parties’ respective goods and
services are or could be marketed in the same trade channels
to the same classes of purchasers, i.e., to baseball fans.
Applicant has admitted as much. (Opposer’s Request for
Admissions, No. 33.) These are general consumers who would
not be expected to exercise more than ordinary care in
purchasing the goods and services. Likewise, applicant’s
and opposer’s publications and services are inexpensive
consumer items which can be purchased without a great degree
of care. (Folger Depo. at 74-77.)
Opposition Nos. 91120166 and 91120978
13
Next, the evidence of record establishes that opposer’s
BASEBALL AMERICA magazine is considered in the trade to be a
“publication of record” for statistics and other information
pertaining to baseball and baseball players. (Folger Depo.
at 16-17, 22-23.) Opposer’s statistics, rankings and player
evaluations are regarded by those in the trade, and by other
media outlets, as definitive reference materials. For
example, USA Today publishes opposer’s rankings of college
baseball teams, and identifies such rankings as the
“Baseball America Top 25.” (Folger Depo. at 79-80, Exh. No.
24.) Opposer’s editors have appeared on ESPN as on-air
commentators in connection with coverage of college
baseball, the annual college and amateur baseball drafts,
and the major league expansion draft. (Folger Depo. at 73-
74.) Readership of opposer’s magazine is approximately
125,000 to 150,000 per issue, and opposer had 500,000
visitors to its baseballamerica.com website in the typical
month of June 2003. (Folger Depo. at 48-49.) Opposer
selects the rosters and publishes the official game program
for the All-Star Futures Game and the Legends and Celebrity
Softball Game, which are played as part of the festivities
surrounding the Major League All-Star Game each summer.
(Folger Depo. at 49-50 and 88-89, and Exh. No. 29.) Based
on this evidence, we find that opposer’s BASEBALL AMERICA
mark is a well-known and indeed famous mark in the baseball
Opposition Nos. 91120166 and 91120978
14
field, a fact which weighs heavily in favor of a finding of
likelihood of confusion. See Bose Corp. v. QSC Audio
Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed.
Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54
USPQ2d 1894 (Fed. Cir. 2000); and Kenner Parker Toys, Inc.
v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453
(Fed. Cir. 1992).
After considering all of the evidence of record as it
pertains to the relevant du Pont evidentiary factors, and
for the reasons discussed above, we conclude that
applicant’s mark, when used on and in connection with
applicant’s goods and services, so resembles opposer’s mark,
previously used and/or registered for identical or similar
goods and services, that confusion as to source, sponsorship
or affiliation is likely to result. To the extent that any
doubts as to this conclusion might exist (and we have none),
such doubts must be resolved against applicant. See In re
Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed.
Cir. 1988); and In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: Each of these consolidated oppositions
(Opposition Nos. 91120166 and 91120978) is sustained.
Opposition Nos. 91120166 and 91120978
15