Madison Square Garden, L.P.

Trademark Trial and Appeal Board

Feb 13, 2004

No. 75861962 (T.T.A.B. Feb. 13, 2004)

Mailed:
February 13, 2004
Paper No. 8
ejs
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Madison Square Garden, L.P.
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Serial Nos. 75866744 and 75861962
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Kathryn Barrett Park, Ayala Deutsch, Anil V. George and
Erik J. Levin of NBA Properties, Inc. for Madison Square
Garden, L.P.
Christopher L. Buongiorno, Trademark Examining Attorney,
Law Office 113 (Odette Bonnet, Managing Attorney).
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Before Seeherman, Quinn and Hohein, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Madison Square Garden, L.P. has filed applications to
register the design mark shown below for
clothing, namely, hosiery, footwear, T-
shirts, sweatshirts, sweat pants,
pants, tank tops, jerseys, shorts,
pajamas, sport shirts, rugby shirts,
sweaters belts, ties, nightshirts,
hats, warm-up suits, jackets, parkas,
coats, cloth bibs, head bands, wrist
bands, aprons, boxer shorts, slacks,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial Nos. 75866744 and 75861962
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caps, ear muffs, gloves, woven and knit
shirts (Class 25)1 and
toys, games and sporting goods, namely
basketballs, golf balls, playground
balls, sports balls, rubber action
balls and foam action balls, basketball
nets, basketball backboards, pumps for
inflating basketballs, and needles
therefore, golf clubs, golf bags, golf
putters, golf ball gift sets with divot
repair tools, and /or tees and ball
markers, golf accessories, namely bag
covers, club head covers, golf bag den
caddie, golf gloves, golf ball sleeves,
stand-alone, electronic basketball
table top games, basketball board
games, electronic video arcade game
machines, basketball kit comprised of a
basketball net and whistle, dolls,
stuffed toys, jigsaw puzzles and
Christmas tree ornaments (Class 28).2
1 Application Serial No. 75866744, filed December 8, 1999. The
application was initially based on an asserted bona fide
intention to use the mark in commerce; applicant subsequently
filed a statement of use asserting first use and first use in
commerce as early as 1999.
2 Application Serial No. 75861962, filed December 1, 1999. The
application was initially based on an asserted bona fide
intention to use the mark in commerce; applicant subsequently
filed a statement of use asserting first use and first use in
commerce as early as June 2000.
Serial Nos. 75866744 and 75861962
3
Registration has been refused in both applications
pursuant to Sections 1, 2 and 45 of the Trademark Act, 15
U.S.C. 1051, 1052 and 1127, on the ground that the applied-
for design does not function as a trademark for the
identified goods, but would be viewed as an ornamental
feature.
Applicant has appealed. Because both applications
involve common questions of law, and essentially the same
evidence, we hereby consolidate the appeals and are
deciding both in a single opinion.
Applicant and the Examining Attorney have filed briefs
in both appeals, but an oral hearing was not requested.3
The Examining Attorney has asserted that applicant's
logo, as it is depicted on the specimens, will be perceived
as ornamentation and not as a trademark. The Examining
Attorney also asserts that applicant has not shown that the
logo has achieved secondary meaning in the minds of
present-day consumers.
3 In its briefs applicant has requested that the Board take
judicial notice of various third-party registrations and evidence
from the files of those third-party registrations. The Examining
Attorney has objected, asserting that this material is not proper
subject matter for judicial notice. We agree. It is well
established that the Board does not take judicial notice of
registrations that reside in the U.S. Patent and Trademark
Office. In re Duofold Inc., 184 USPQ 638 (TTAB 1974).
Serial Nos. 75866744 and 75861962
4
The specimens showing the manner in which applicant's
logo is used are shown below.
First, we note that in its appeal briefs, applicant
states that "the primary issue in the current application
is whether the proposed mark...functions as a source
indicator" and that, "in the alternative the issue is
whether the proposed mark functions as a secondary source
indicator for the goods identified in the application."
Brief, SN 75861962, pp. 4-5; brief, SN 75866744, p.4.
However, in response to the first Office action in which
the Examining Attorney refused registration on the basis
that the logo does not function as a mark, applicant
unequivocally stated that "its mark functions as a
trademark to identify Applicant as the secondary source of
the goods." Applicant never indicated that this claim was
being made in the alternative, and that it wished to
Serial Nos. 75866744 and 75861962
5
preserve its right to assert that the logo functioned as a
trademark without regard to the secondary source argument.
In view thereof, applicant cannot now argue that its logo
inherently functions as a trademark and that consumers,
without any other information about collateral uses of the
logo, would immediately perceive it to be a trademark as it
is used on the identified goods.
In any event, we agree with the Examining Attorney's
statement, in the Office actions which first raised the
refusal, that the logo, without evidence of secondary
source or secondary meaning, would be viewed as mere
ornamentation. In this connection, we note the following
language, set forth by the Board more than forty years ago
in In re Olin Corporation, 181 USPQ 182 (TTAB 1973):
It is a matter of common knowledge that
T-shirts are "ornamented" with various
insignia, including college insignias,
or "ornamented" with various sayings
such as "Swallow Your Leader". In that
sense what is sought to be registered
could be construed to be ornamental.
If such ornamentation is without any
meaning other than as mere
ornamentation it is apparent that the
ornamentation could not and would not
serve as an indicia of source. Thus, to
use our own example, "Swallow Your
Leader" probably would not be
considered as an indication of source.
Therefore, we turn to the question of whether the logo
acts as an indicator of a secondary source of the goods,
Serial Nos. 75866744 and 75861962
6
that is, to indicate not the manufacturer, but the sponsor
of the goods. Applicant contends that its logo indicates
the New York Knicks basketball team, which is owned and
operated by applicant. Accordingly to the evidence
submitted by applicant, the logo, known as the "Father
Knickerbocker Logo," was the main logo for the basketball
team from 1946 to 1964. The logo was developed by a sports
cartoonist named William Mullin, who worked for the New
York "World-Telegram," and depicts a basketball-dribbling
knickerbocker, in a reference to the early Dutch settlers
of New York.
The Examining Attorney takes the position that present
day consumers would not be aware of the former logo, and
therefore would not regard the logo on the goods at issue
as a reference to the basketball team and applicant. We do
not agree. Applicant has stated that "even after the
Knicks adopted a new primary team logo, and throughout its
entire life of more than five decades, the Knickerbockers
Logo has continued to function as a service mark and
trademark to promote the Knicks basketball team and
assorted collateral merchandise." Briefs, p. 10.
Serial Nos. 75866744 and 75861962
7
In support of this statement, applicant has submitted
excerpts from its website4 which show the logo as part of a
history of the Knicks team. In fact, there is an entire
article entitled "Why Knickerbockers?", with a subsection
entitled "The Logo." This subsection discusses the origin
of the logo, and features a depiction of it.
Applicant has also stated that products bearing the
logo "are marketed in connection with the NBA's Hardwood
Classics program, which commemorates the history and
heritage of the NBA and its predecessors through a
collection of products and services bearing the logos of
its old teams that are marketed to basketball fans
interested in the history of the sport and other collectors
of memorabilia." Responses dated June 6, 2002. Applicant
has submitted a Hardwood Classics brochure which depicts
the logo at issue, as well as logos formerly used by other
basketball teams. The brochure includes, inter alia, the
phrases, "Hardwood Classics apparel and non-apparel
collection"; "Now fans and collectors can have jerseys made
in the exact styles and fabrications worn by the legendary
NBA stars"; and "Hardwood Classics Collectible Basketballs—
This Spalding basketball features a timeline with the
4 The web pages were printed on April 15, 2002, thus
demonstrating current promotion of the logo.
Serial Nos. 75866744 and 75861962
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History of your team and interesting facts. Available for
Bulls, Celtics, Lakers and Knicks." Applicant has also
stated that since 1999, when Knickerbockers' apparel was
added to the Hardwood Classics Collection, its apparel
sales have been nearly $2,500,000.
Finally, applicant asserts that its goods will be
primarily purchased by, or for, fans of professional
basketball interested in memorabilia, the history of the
sport and the NBA, and that, before making such purchasers,
"these fans are extremely familiar with team insignia and
logos." Responses dated June 6, 2002.
As the Examining Attorney points out, applicant has
given general sales figures for all apparel sold under its
Hardwood Classics program, but has not broken out the
actual sales figures for apparel bearing the logo at issue,
nor has it presented any specific information about sales
of the Class 28 products bearing the logo. The evidence
that applicant has submitted would not demonstrate that an
otherwise ornamental design had acquired distinctiveness as
a trademark simply by the use of the design on the goods in
question. However, applicant is not claiming this type of
acquired distinctiveness. Rather, applicant is claiming
that its logo functions as a mark because it shows a
secondary source for the goods, a source that consumers
Serial Nos. 75866744 and 75861962
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will recognize because they are aware of this use in
connection with the New York Knicks basketball team.
Although the applied-for mark is no longer the primary
logo for the team, and has not been so for many years, we
cannot say that this logo is unknown to consumers today.
The evidence is sufficient to demonstrate that the logo is
still in use and is promoted. In fact, although neither
applicant nor the Examining Attorney has mentioned it, we
note that the wording next to the logo on the basketball
specimen of use consists of the phrases "Vintage 1946
Logo," "Father Knickerbocker" and "Charter NBA Franchise,"5
thus reinforcing that this was the logo of the basketball
team. In view of applicant's statements and evidence, we
must conclude that sports fans and collectors of
memorabilia, the main purchasers of the goods, will be
aware of it. Thus, consumers seeing the logo on
applicant's identified goods will recognize it as a logo of
applicant's New York Knicks basketball team, and will
understand that it is a trademark identifying applicant as
a secondary source of sponsorship of the goods.
5 This wording is almost impossible to make out in the
photograph that was submitted, which reduced the size of the
entire basketball to approximately one inch in diameter.
Therefore, we are not surprised that the Examining Attorney would
not have noticed it or commented on it. However, when the actual
basketball is viewed by consumers, we have no doubt that the
wording would be clearly visible.
Serial Nos. 75866744 and 75861962
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Decision: The refusals of registration are reversed.