Tuesday, September 9, 2014

The TTAB Trademark Tally: BIG CAT & the Benefits of FAME

Caterpillar Inc. may not be as recognizable as the most famous Hollywood Celebrities, but who says fame can't have its benefits for heavy machinery companies as well.

News out of Alexandria, Virginia this past week with the TTAB issuing an anticipated final ruling in the Caterpillar Inc. "BIG CAT" Opposition, Finding for the Opposer and Refusing the Registration of the Applican'ts BIG CAT Application. The final ruling came as the final step in the Opposition Filed By Caterpillar, Inc. in 2012 in their attempt to block an energy company's attempt to register the term "BIG CAT" in connection with various oil and gas well technology.

While an initial review of the basic variables in this Likelihood of Confusion Opposition might leave some practitioners and trademark aficionados unconvinced that the two respective channels of trade and the specific goods and services with which the respective marks are used in connection with over lap significantly enough to establish a likelihood of confusion, the TTAB Board made another crucial finding prior to proceeding with the aforementioned analysis so as to impact the criteria and analysis of facts in the analysis.

After careful examination of the evidence relating to the determination that Caterpillar's "CAT" trademark is famous and thus entitled to a more broad and pervasive level of protection.  The ownership of a famous trademark also entitles the owner of such a mark the benefit of a more careful examination by USPTO Examining Attorney's of new U.S. Trademark Applications that are themselves sufficiently similar to the famous Mark/s when comparing the look sound and feel of the Marks.

 The Board stated: "Nonetheless, as discussed infra, we have concluded that Opposer’s CAT marks are famous, in no small measure because, as the record shows, CAT-branded equipment is pervasive on natural gas well sites throughout the entire life-cycle of the well. Hence, based upon all of the evidence in the record, including the respective registrations and applications, there exists a relationship between Applicant’s hydrogeological technology 
and Opposer’s listed heavy machinery, engines and generator sets."
The BIG CAT Case is illustrative of the more favorable and broad application of the Likelihood of Confusion analysis that is employed when a Board recognized famous trademark is that mark which is allegedly being infringed upon by the Applicant's Mark.

The fame of the BIG CAT Mark resulted in a more strong and conclusive determination that the channels of trade within which the respective marks in the Opposition were sufficiently similar.  In addition, the goods and/or services themselves were deemed similar and overlapping and thus represented another indication that the Applicant's Mark represented a likelihood of confusion with the Opposer's Famous Marks.

Due to the strong evidence that resulted in the strong agreement that the Opposer's Mark was famous, the Board was able to issue a confident ruling that the Applicant's Mark did establish a likelihood of confusion with the Opposer's Famous Trademark/s and thus the Board, exercising their limited judicial and jurisdictional authority, ruled that the Applicant's Mark should be refused and subsequently cancelled on marked DEAD on the USPTO Principal Register.

For the TTAB's Final Ruling, the PDF Can Be Found Here.

Thursday, September 4, 2014

Sports and Branding: The Anatomy of The JOHNNY FOOTBALL Branding and Trademark Strategy

Over the past several years, the proliferation of trademark filings by athletes and their personal management companies has reflected a growing trend in sports branding that has athletes increasingly taking control of the mechanisms that make money for athletes and sports teams.  

While many sports contracts have athletes assigning over many of the rights in their personal brand to teams and sports organizations, the filing of trademark applications by athletes themselves shows how bold new strategies are working to shift the balance in this traditionally pro-team economic system. 

Below, Johnny Manziel's branding strategy is shown to focus largely on the filing of various trademarks not covered by the team owned components of an athletes personal brand (formal team jersey name).  

Because teams have no proprietary interest or ownership of nicknames for athletes, a move to shift commercial activities for sports merchandising has athletes squarely in charge of these new profit generating promotion and sales activities.