Chicago Bears Football Club and NFL Properties LLCv.12th Man/Tennessee LLC

Trademark Trial and Appeal Board

Feb 28, 2007

No. 91150925 (T.T.A.B. Feb. 28, 2007)

Mailed:
28 February 2007
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Chicago Bears Football Club, Inc. and
NFL Properties LLC
v.
12TH Man/Tennessee LLC
_____

Opposition No. 91150925
to application Serial No. 78023394
_____

Jessica A. Rose of Quinn Emanuel Urquhart Oliver & Hedges
LLP for the Chicago Bears Football Club, Inc. 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 August 29, 2000, applicant filed an intent-to-use
application (No. 78023394) to register the mark 12TH BEAR,
in typed or standard character form, on the Principal
Register for the following goods:
Jewelry in Class 14
Bumper stickers in Class 16
Insulated beverage containers in Class 21
THIS OPINION IS A
PRECEDENT OF THE TTAB
Opposition Nos. 91150925
2
Towels in Class 24
Clothing for informal wear, namely pants, jackets,
shirts, t-shirts, sweatshirts, shorts, etc.1 in Class
25

Ornamental novelty buttons in Class 26.
On February 6, 2002, the Chicago Bears Football Club,
Inc. and NFL Properties LLC (opposers) filed a notice of
opposition to the registration of applicant’s 12TH BEAR
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 have
submitted status and title copies of the following
registrations:
I. No. 952,441
Mark: BEARS (typed)
For: Entertainment services in the nature of football
exhibitions some of which are rendered through the
media of radio and television broadcasts in Class 41
Issued: January 30, 1973
Status: Second renewal

II. No. 960,131
Mark: CHICAGO BEARS (typed)
For: Entertainment services in the nature of football
exhibitions, some of which are rendered through the
media of radio and television broadcasts in Class 41
Disclaimer: Chicago
Issued: May 29, 1973
Status: Second renewal

III. No. 1,803,222
Mark: CHICAGO BEARS (typed)

1 The identification of goods in Class 25 ends with the
indefinite term “etc.”
Opposition Nos. 91150925
3
For:
Trading cards, posters, magazines, postcards,
calendars, wrapping paper, paper gift boxes, paper
stickers, paper napkins, paper towels, books,
posterbooks, notepads, paper plates, paper cups, paper
hats and greeting cards in Class 16
Men's, women's and children's clothing and
footwear; namely, coaches caps, wool hats, painters
caps, baseball caps, visors, headbands, ear muffs, knit
face masks, belts, wristbands, T-shirts, tank tops,
pajamas, golf shirts, sweaters, sweatshirts, jackets,
neckties, braces, bibs, jerseys, night shirts, coats,
robes, raincoats, parkas, ponchos, sneakers, gloves,
scarves, snow suits, mittens, aprons, down jackets,
leather jackets, shorts, sweatpants, jeans, pants,
knickers, socks, underwear, bathing suits and leg
warmers in Class 25.
2(f): Chicago
Issued: November 9, 1993
Status: Renewed

Opposers allege that the “BEARS marks are famous to the
public because of the widespread use of said marks, the
great popularity of NFL football and the Bears Club, and the
extensive media coverage of the NFL, and, in particular, the
Bears Club.” Notice of Opposition at 3. Furthermore,
opposers allege that the “widespread use by the Bears Club,
the NFL, and authorized licensees of the BEARS Marks when
referring to the Chicago Bears football franchise has
contributed to the strong public association of the BEARS
Marks with the Chicago Bears, and such use inures
exclusively to the benefit of Opposers.” Id. Opposers
maintain that applicant’s goods are “a type consistent with
the ancillary goods licensed by professional sports teams.”
Notice of Opposition at 4.
Opposition Nos. 91150925
4
In addition, opposers also argue that registration to
applicant should be refused because applicant’s mark falsely
suggests 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 BEARS
marks.” Notice of Opposition at 6.2
Applicant denied the salient allegations of opposers’
notice of opposition.3
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

2 NFL Properties LLC is also opposing the registration of a
second application of applicant for the mark 12TH RAVEN (Serial
No. 78026554). Opposition No. 91157082. The other opposer in
that case is the Baltimore Ravens Limited Partnership. 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.
3 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 RAVEN mark
(Opposition No. 91157082), 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 in order to specify the concept of
the fan as the 12TH player.” Answer at 2.
Opposition Nos. 91150925
5
David M. Proper; the testimonial deposition, with exhibits,
of Peter Quaglierini, opposers’ manager for trading cards
and memorabilia; the deposition of David Proper by written
questions, with exhibits; and applicant’s list of federal
applications and registrations.
Preliminary Matters
We begin by noting that the Chicago Bears registrations
discussed earlier are owned by the Chicago Bears Football
Club, Inc. 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. “The NFL and the Chicago Bears have exclusively licensed
all of their respective trademarks to NFLP for use by NFLP
pursuant to these directives.” Id.
Because of opposers’ proof of ownership or licensed use
of the registered marks for BEARS and CHICAGO BEARS, we find
that opposers each have established their standing to
oppose. See Chemical New York Corp. v. Conmar Form Systems,
Inc., 1 USPQ2d 1139, 1142 (TTAB 1986) (“It is obvious that
opposer Chemical New York, as owner of the ‘PRONTO’ marks
Opposition Nos. 91150925
6
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).
In addition, opposers have submitted evidence that they
have used the BEARS marks on various items including those
that are similar or identical to items for which applicant
seeks registration. These items include:
Beach towels, Proper Ex. 20, p. 11
Pennants, Proper Ex. 20, p. 7
Bath towels, Proper Ex. 21, p. 12
Ladies’ scarves, Proper Ex. 21, p. 5
Auto and bike tags, Proper Ex. 21, p. 9
Slumber bags, Proper Ex. 22, p. 15
Mugs, Proper Ex. 22, p. 16
Watches, Proper Ex. 22, p. 18
Back packs, Proper Ex. 23, p. 11
Director’s chairs, Proper Ex. 23, p. 15
Photo frames, Proper Ex. 23, p. 16
Gift wrapping, Proper Ex. 23, p. 17

This evidence supports the testimony of opposers’
witness, David Proper, who testified (Affidavit at 5, ¶¶ 16
and 17) that:
NFLP has issued licenses to dozens of companies for use
of the NFL Trademarks, including specifically the Bears
Club Marks. These licenses encompass a wide variety of
merchandise, including apparel items such as shirts, T-
shirts, sweatshirts, 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 Bears
Club Marks in connection with all of the above
officially licensed NFL products.

Other examples of representative NFL products licensed
by NFLP and bearing the Bears Club Marks include
Opposition Nos. 91150925
7
apparel items such as bibs, children’s clothing,
jerseys, outerwear and head wear; and such hard-line
products as stationery and supplies, calendars,
posters, trading cards, mugs, glasses, tailgating
paraphernalia, party goods and wrapping paper,
magazines, decals, note pads, greeting cards, and
sports balls.

These uses occurred prior to applicant’s filing date
(See Proper affidavit Exhibits 19 (1971 NFL merchandise
catalog), 20 (1973 NFL merchandise catalog), 21 (1979 NFL
merchandise catalog) 22 (1987 NFL merchandise catalog), and
23 (1994 NFL merchandise catalog)).
Applicant has not used its mark, 12TH BEAR. See
Ringelstein dep. at 34 (“Q. Have you used the 12TH Bear
designation on any product? A. No, sir – no, ma’am.
Excuse me. Not on any product”). As a result, applicant
must rely on its application’s filing date (August 29, 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
Opposition Nos. 91150925
8
rely in the absence of testimony or evidence is the filing
date of its application”).
Thus, opposers have also established priority as to
their common law use of the BEARS and CHICAGO BEARS marks on
goods that are either identical (towels) or closely related
to applicant’s goods (mugs, auto and bike tags, pennants,
watches, and similar items). Also, priority is not an issue
here in view of the Chicago Bears Football Club’s ownership
of registrations for the BEARS and CHICAGO BEARS marks for
the goods and services in those registrations. See King
Candy Co. v. Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ
108, 110 (CCPA 1974).
Likelihood of Confusion
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’ BEARS and CHICAGO BEARS
marks.
Opposition Nos. 91150925
9
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 BEAR while
opposers’ marks are BEARS and CHICAGO BEARS. The marks are
similar to the extent that they both contain the word BEAR
or BEARS. The term “Bears” is the only feature of one of
opposers’ marks and it is the dominant part of the CHICAGO
BEARS mark, where Chicago identifies the location of the
Bears Football Club. In applicant’s mark, the term “Bear”
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 Chicago Bears football team by
specifically identifying a particular Bear, i.e., the
twelfth Bear.4 Therefore, the term “Bear” 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

4 “Each football team has eleven players on the playing field at
any one time.” Proper affidavit at 14. 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 Nos. 91150925
10
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 “Bear” 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”).
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 CHICAGO BEARS. Moreover, applicant’s
mark would be suggestive of a group, as are opposers’ marks,
because implicit in the concept of a 12th Bear is that there
are at least 11 others. Therefore, the marks BEARS and 12TH
BEAR 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

designated a football fan that’s universally known.” Ringelstein
Opposition Nos. 91150925
11
term “Bear” and the term 12TH reinforces the “Bear” feature
of the marks. The similarities between 12TH BEAR and BEARS
in sound, appearance, meaning, and commercial impressions
outweigh their differences.
We also find that the marks 12TH BEAR and CHICAGO BEARS
are similar. Again, the term “Bear(s)” dominates both
marks. The geographically descriptive term “Chicago” is not
as significant as the term “Bears,” and therefore does not
distinguish the marks. Chicago identifies the primary
location where the BEARS football team provides its
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
the Giants’ registered marks ‘New York Giants’ and ‘Giants’
and the dominant element of the mark – ‘Giants’ – is
identical, rendering those marks particularly confusing”).

dep. at 36.
Opposition Nos. 91150925
12
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 CHICAGO, 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”). We conclude that
applicant’s mark 12TH BEAR and opposers’ marks BEARS and
CHICAGO BEARS are similar.
Next, we must consider whether the goods and services
of the parties are related. Here, the goods are in part
identical because applicant seeks registration for pants,
jackets, t-shirts, sweatshirts, and shorts and these goods
are identical to items in the CHICAGO BEARS mark (No.
1,803,222). To the extent that the goods of the parties are
identical, when “marks would appear on virtually identical
goods or services, the degree of similarity necessary to
Opposition Nos. 91150925
13
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).
The vast majority of the involved goods are also
closely related to opposers’ goods. 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’ primary services are
football exhibition services but their marks are also
registered and/or used for a variety of items in Class 25
that are legally identical to applicant’s goods, including
jackets, T-shirts, golf shirts, sweatshirts, and shorts.
Furthermore, opposers’ witness, David Proper, testified
(affidavit at 5) that opposers have “issued licenses to
dozens of companies for use of the NFL Trademarks, including
specifically the Bears Club Marks. These licenses encompass
a wide variety of merchandise.”
Opposers have also submitted catalogs of NFL products
that demonstrate the scope of products that opposers license
for use with their marks. For example, the 1973 catalog
(Proper Ex. 20) includes items such as belts, rainwear,
pennants, posters, linens, and towels. These items were
available for all NFL teams. The index to this catalog
also includes such NFL licensed products as booster buttons,
Opposition Nos. 91150925
14
key chains, clocks, watches, jewelry, tankards, ceramic
mugs, and tumblers. Applicant’s jewelry, bumper stickers,
insulated beverage containers, towels, clothing, and
ornamental buttons are also related, if not identical, to
opposers’ goods (towels, clothing, watches, mugs, pennants,
and paper goods).
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 opposers’ 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 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
Opposition Nos. 91150925
15
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”). Therefore, we conclude
that applicant’s and opposers’ goods are in part identical,
and otherwise related, and this factor also favors opposers.
Regarding the factors concerning potential purchasers
and channels of trade, these factors also favor opposers.
We have already determined that many of applicant’s goods
are identical to opposers’ goods. Because some 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 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.
Q. So apart from the 12TH portion of your designation,
the second word bear, how did 12TH Bear, the word bear
Opposition Nos. 91150925
16
have an appeal to you, rather than – or have a
marketing appeal to you, as opposed to a more specific
name of a bear, 12TH Grizzly, 12TH Kodiak, 12TH Black
Bear, 12TH Brown Bear?

A. We realized there were a lot of Bears fans, as there
are Dolphin fans. Again, at any football level,
whether it’s peewee or whatever. So we realized that.

And, again, we’re targeting fans. We’re not trying to
– we’re not pirates here. We’re not trying to traffic
on Chicago Bears, their marks or their team. We’re not
professing to be – anything to do with the professional
team. We’re strictly looking at targeting fans, the
fan base… But again, we’re targeting football fans,
sports fans.

Ringelstein dep. at 37-38. See also Ringelstein dep. at 7
(“The idea was… to be that company that would pervade this
brand, 12TH designation, what have you, whether it be 12TH
Bear, 12TH whatever high school, college, professional
teams, to offer something to the fans to allow them to
identify with a particular football team”); 10 (“And in this
particular case, did you target fans of professional
football? A. Yes, sir.”); and 16 (“Now, how is it you
intend to use the 12TH Bear mark? A. Well, market it as a
brand for the fans of professional football, regardless of
the team. I’m sure the fans will identify with the
particular team…”).
Of course, opposers’ “target consumers of the Chicago
Bears and of goods and services bearing the Bears Club Marks
are fans of Chicago Bears football and football fans in
general.” Proper affidavit at 4. In effect, the potential
purchasers of applicant’s and opposers’ goods, in addition
Opposition Nos. 91150925
17
to being legally identical, actually overlap to the extent
that both applicant and opposers target fans of football as
potential purchasers.
Opposers have identified their channels of trade as
follows (Proper Affidavit at 5):
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-
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 NFL online store.” Proper affidavit at
13. Thus, not only must we assume, because the
identifications in opposers’ registrations and applicant’s
application contain no restrictions on channels of trade,
that the parties’ goods would be sold in the same channels
of trade, but opposers’ evidence of their broad channels of
trade would likely encompass or overlap with applicant’s
channels of trade at the point that applicant actually sells
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 5
(The price points for opposers’ goods begin at just “a few
dollars”). On the contrary, these items must be considered
impulse purchases.
Opposition Nos. 91150925
18
Fame, the fifth du Pont factor, is another factor that
favors opposers. Applicant admits that opposers’ mark
CHICAGO BEARS is famous:
Q. Do you know whether the term Chicago Bears is a
famous mark?

A. Well, I would consider it famous.

Q. What do you think it’s famous for?

A. Being a professional football team.

Ringelstein dep. at 25. See also Ringelstein dep. at 23
(Applicant’s principal admitted that he considers the
Chicago Bears mark to “be a strong mark that identifies that
team”) and Applicant’s Brief at 3 (“There are some things
that are not at issue in this case. No one denies that the
Chicago Bears are a well known professional football team or
that the Chicago Bears is a famous service mark for that
team”).
Opposers have also submitted evidence of the fame of
the BEARS and CHICAGO BEARS marks. With regard to the
services, opposers began using the marks in association with
football exhibition services in 1922 and the Bears Club won
“NFL Championships eight times, including, most recently,
Super Bowl XX in 1986.” Proper affidavit at 3. As a result
of a 1998 agreement with CBS, ABC, FOX and ESPN in 1998,
“every Chicago Bears game is broadcast live by one of these
NFL broadcast partners.” Proper affidavit at 7. In the
local Chicago broadcast market, the Chicago Bears have
Opposition Nos. 91150925
19
enjoyed considerable success. For example, in 1999, the
television market share for Bears Club games “was 47, which
means that 47% of all the households that were watching
television at this time were watching the Bears Club game.”
Id. at 8. Total attendance at the eight Bears Club home
games in 2003 was 492,420. Id. Opposers’ total annual
sales from NFL merchandise is approximately $2-3 billion at
retail and “the percentage of sales of NFL merchandise
bearing the Bears Club Marks ranged from at least 1.69
percent to three percent during the time period from 1995
through 1999.” Id. at 6. These figures indicate that sales
of merchandise under the Bears Club marks were at least $30
million per year. Opposers’ witness testified that
“millions of dollars have been spent cumulatively
advertising and promoting the Bears Club and its marks, and
millions of dollars worth of merchandise bearing the Bears
Club Marks have been sold through NFLP’s Licensees.” Id. at
7.
In addition, opposers also submitted several media
surveys of articles that reference the Bears 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 “BEARS w/2
football” for each five-year period within the twenty-
five year time frame from January 1, 1976 to December
31, 2000. These LEXIS/NEXIS searches disclosed 11,322
news articles that contained the search term during
this twenty-five year time period. A representative
sample of 100 articles throughout the time frame was
then obtained by arranging the articles chronologically
Opposition Nos. 91150925
20
and selecting every 200th article for the time period
of 1991 through 2000, every 125th article from the time
period of 1986 through 1990; and every twelfth article
from the time period of 1976 through 1985. Of this 100
article sample, 86 articles (or 86%) refer directly to
the Chicago Bears.

Proper affidavit at 11.
A similarly constructed survey of articles for the
search “Bears w/2 fan” produced the same result – 86% of the
articles refer directly to the Chicago Bears. Proper
affidavit at 11-12. Another survey of “Bears w/2 NFL”
resulted in every article referring to the Chicago Bears.
Proper affidavit at 12. In addition, the Chicago Bears
website received 489,409 unique visitors between December
2002 and November 2003. Proper affidavit at 13.
Applicant maintains that “as an organization, the
Chicago Bears 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 Bear label does
not suggest a connection with a football team nor
does it traffic upon the name ‘Chicago Bears.’ In fact,
there is no connection between the two marks and their
simple existence does not suggest any.” Brief at 8.
We cannot agree with applicant’s argument that
opposers’ BEARS marks have achieved fame only as a mark for
the football team. It is certainly clear that opposers’
Bears marks have achieved fame for football exhibition
services, and applicant has admitted this fact. The Chicago
Opposition Nos. 91150925
21
Bears football team games are broadcast on television and
their games in the Chicago area have significant television
ratings. However, in addition to the fame of their marks
for their football services, opposers have shown that
opposers have a registration for the word CHICAGO BEARS for
clothing and paper products. Furthermore, they have also
submitted evidence that they use the marks CHICAGO BEARS and
BEARS alone for a variety of goods. Opposers’ witness,
Mr. Proper, has indicated the NFL’s “[t]otal annual sales
revenue generated by NFL merchandise is approximately $2-$3
billion dollars at retail” (Proper affidavit at 6) and that
sales of Bears Club merchandise generate millions of dollars
in sales. Opposers also spend millions of dollars
“advertising and promoting the Bears Club and its marks.”
Proper affidavit at 7. Therefore, because of the television
exposure, advertising, and merchandise sales, we cannot
agree with applicant that the fame of the Bears Club marks
is limited to football exhibition services.
The evidence of record convinces us that the opposers’
BEARS and CHICAGO BEARS marks have acquired significant fame
and public recognition for the football exhibition services
as well as for ancillary merchandise. 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
Opposition Nos. 91150925
22
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
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 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’ marks have 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 1827 third-party live “bear”
trademarks listed in the Trademark Electronic Search
System… Among these designations there are several
that are just plain “bear.” There is also a black
Opposition Nos. 91150925
23
bear, a blue bear, a white bear, a big bear, a l’il
bear, a polar bear, an ice bear, a sleepy bear, a jolly
bear, and many others that embody the term “bear”
preceded by a[n] adjective of one kind or the other.
All of these “bear marks” enjoy registration and
trademark protection.

Additionally, there are approximately twenty-three
college football teams that call themselves “bears” …
When asked about these football teams, Mr. Proper
acknowledged that he was aware of twelve of them, and
that he knew that three of them called themselves the
Bears.

Brief at 4.

According to the exhibit (Proper dep., Ex 8), the following
colleges are nicknamed the “Bears”: Athens State
University, Barclay College, Barnard College, Baylor
University, Bridgewater State College, Brown University,
Lenoir-Rhyne College, Livingstone College, Mercer
University, New York Institute of Technology, Pikeville
College, Shawnee State University, State University of New
York-College of Potsdam, St. Joseph’s College-Brooklyn
Campus, Rocky Mountain College, Shaw University, Southwest
Missouri State University, United States Coast Guard
Academy, University of California-San Francisco, University
of Central Arkansas, University of Northern Colorado,
Ursinus College, and Washington University (St. Louis).
Mr. Proper testified (dep. at 40) that “three of them are
Bears… Baylor … The University of California. I don’t think
San Francisco is correct. I think it’s the University of
Opposition Nos. 91150925
24
California at Berkeley that’s the Bears5… And Brown
University.”
Regarding the other uses of the term “Bears,” we note
that opposers’ witness, Mr. Proper, was aware of the
existence of only twelve of the listed colleges and, as
noted above, he was aware of only three of these schools
that used the name “Bears” in association with their college
teams.
A. Okay. I am familiar with – I am familiar with 12 of
these colleges.

Q. Were you aware that they were all Bears?

A. I am still not aware that they are bears. I am
aware that three of them are Bears, yes.

Proper dep. at 39-40.

We have no evidence about the specific use of these marks by
the various colleges or their teams nor of other third-party
uses of the term “Bear(s)” on merchandise.6 While applicant

5 Applicant subsequently refers to the team as “the California
Golden Bears.” Brief at 17.
6 While applicant has submitted a printout from the USPTO’s
database that shows that there are more than 1500 applications
and registrations that contain the word “Bear,” 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 add that
third-party registrations “may be used to demonstrate that a
portion of a mark is suggestive or descriptive,” but because the
registrations are not of record, we cannot determine that BEARS
has any particular significance for the services and goods at
issue. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB
1987). In any event, third-party registrations “cannot be used
Opposition Nos. 91150925
25
has submitted copies of several websites that use the marks
“Chicago Bears,” these sites seem to be fan-type sites that
discuss the performance of the Chicago Bears football team.
It is not clear why these websites would support applicant’s
arguments that its mark for 12TH BEAR is not confusingly
similar to opposers’ BEARS and CHICAGO BEARS marks for the
same or very similar goods. Applicant is not seeking
registration of the mark for website-related services. Even
if there were some relevance to these websites, we note that
“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.”7 McDonald's Corp. v. McKinley, 13 USPQ2d
1895, 1899-1900 (TTAB 1989).

to justify the registration of another confusingly similar mark.”
Id. 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”).
7 We add that Mr. Proper testified that he was not aware of
several of these sites.
Opposition Nos. 91150925
26
Obviously, the word “Bear” is not a unique term in the
United States and it is not surprising that the term has
been associated with other sports teams. This, however,
does not result in opposers’ marks being entitled to only a
limited scope of 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 its “intent is not to
mislead the consumer as to the origin of the 12TH Bear
product, but rather to offer an alternate means in which
individuals may show allegiance to their sport team or
teams. The 12TH Bear label will not seek an allegiance with
Opposition Nos. 91150925
27
any specific team. The 12TH Bear label seeks to open an
avenue for a fan to demonstrate their allegiance to their
team or teams.” Brief at 17. 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 Bears.” 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 is
not identical to opposers’ marks and “Bears” is the name or
nickname of some college football 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”).
Opposition Nos. 91150925
28
When we analyze the relevant factors regarding the
likelihood of confusion, some, such as the lack of evidence
of actual confusion, are not relevant because applicant has
not used its mark on the goods in the application and
therefore there has not been an opportunity for actual
confusion to occur. Others clearly favor the 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 marks
it would likely be in overlapping channels of trade. The
evidence also makes it clear that opposers’ merchandise is
primarily marketed to fans of the Chicago Bears football
team. Applicant also intends to market its goods to
football fans, which would include specifically fans of the
Chicago Bears football team. 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 BEAR and BEARS
and CHICAGO BEARS are similar. Applicant argues that its
mark “may be said to generate a ‘calling to mind’” (brief at
6), which is not necessarily confusion. However, more than
merely calling to mind, football fans that would encounter
applicant’s 12TH BEAR mark on the identified goods are
Opposition Nos. 91150925
29
likely to assume that there is an association with opposers
who own the marks BEARS and CHICAGO BEARS and use these
marks on identical and very similar goods. Therefore,
confusion is 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 18)
that appears to raise the issue of functionality of
opposers’ marks.
At best, the 12TH Bear mark may be said to be purchased
by the consumer in order to demonstrate an allegiance
to the Chicago Bears… 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
Opposition Nos. 91150925
30
opposers’ registered trademarks are functional, we note that
it is improper to raise this defense without counterclaiming
or petitioning to cancel the marks on this basis. Contour
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 registered marks CHICAGO BEARS and
BEARS.
Second, this case is not similar to International Order
of Job’s Daughters 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.
Lindeburg and Company, 633 F.2d 912, 208 USPQ 718 (9th Cir.
1980), cert. denied, 452 U.S. 941 (1981). Here, applicant
Opposition Nos. 91150925
31
has not shown that there has been widespread merchandising
of the BEARS club marks 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
fans when the team moved to Indianapolis, another team was
not permitted to use the mark BALTIMORE CFL COLTS. See,
Opposition Nos. 91150925
32
e.g., Indianapolis Colts, 31 USPQ2d at 1814 (“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
public would associate articles on which it appears as
having a common origin”).8

8 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
Opposition Nos. 91150925
33
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 by
using a confusingly similar mark.
We conclude that applicant’s mark, 12TH BEAR, if it
were used on the identified goods, is likely to cause
confusion in view of opposers’ marks for BEARS and CHICAGO
BEARS.9
Decision: The opposition is sustained and registration
to applicant of its mark is refused.

related, but in some cases, identical, and that opposers have
priority of use for these items, unlike the party in American
Footwear. Id.
9 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.