Since 2009 the Yankees have been fighting to block several trademarks that were intended to parody two of their own trademarks and on May 8, 2015 they succeeded. IET Products and Services Inc. (“Applicant”) filed two applications with the United States Patent & Trademark Office (“USPTO”) seeking to register the slogan THE HOUSE THAT JUICE BUILT for T-shirts, baseball caps, hats, jackets, sweatshirts, and mugs. New York Yankees Partnership (“Opposer” or the “Yankees”) filed an opposition with the Trademark Trial and Appeal Board (“Board”) based on three grounds. The Applicant also attempted to register a design logo that includes a patriotic (red white and blue) top hat similar to the one utilized in the Yankees famous logo, but replaces the baseball bat with a syringe. Compare the Yankees logo USPTO Yankees Trademark with the proposed design mark of the Applicant http://tsdr.uspto.gov/documentviewer.
The first ground asserted by Opposer was that the Applicant’s marks would cause a likelihood of confusion with Opposer’s registration for the mark THE HOUSE THAT RUTH BUILT and with their famous design logo (red white and blue top hat with baseball hat). The second ground was that Applicant’s proposed marks would likely cause dilution of its marks by blurring pursuant to Trademark Act Section 43(c). Lastly the Opposer alleged that the Applicant’s marks would falsely suggest an association with its New York Yankees Major League Baseball Club pursuant to Section 2(a) of the Trademark Act. Regarding the design logo mark, the Applicant’s intent was to communicate that steriods acted as a player on the Yankee Baseball team. The Board dismissed the Applicant’s three trademark applications on the ground that the proposed marks diluted the fame of the Yankee’s registrations.
The Board determined that both marks of the Yankees, THE HOUSE THAT RUTH BUILT and the Yankee design logo of the patriotic top hat with baseball bat were legally famous marks for the purposes of the dilution claim. See New York Yankees Partnership v. IET Products and Services Inc., Opposition No. 91189692 (TTAB May 2015). The Opposer satisfied the more stringent definition of “fame” for dilution purposes as compared to the lesser degree of “fame” required for likelihood of confusion purposes. See In Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713 (Fed. Cir. 2012), where the Court of Appeals for the Federal Circuit held that the following elements are necessary to prevail on a claim of dilution by blurring:
(1) The plaintiff must own a famous mark that is distinctive;
(2) The defendant uses the mark in commerce and it allegedly dilutes the plaintiff’s famous mark;
(3) The defendant’s use of its mark must begin after the plaintiff’s mark becomes famous; and
(4) The defendant’s use of its mark is likely to cause dilution by blurring or by tarnishment.
Regarding the second requirement that it must be shown that the defendant or the Applicant is using the mark in commerce, the Court allowed the Yankees to rely on the Applicant’s filing date as a constructive use date in commerce since the Applicant filed on a 1(b) basis. The Board pointed out that it has been held that one may rely on either direct evidence of use in commerce or the application constructive use date to prove use in commerce. In connection with the third dilution factor, the Board held that the Yankees’ trademarks (THE HOUSE THAT RUTH BUILT and the design logo of the red white and blue top hat and baseball bat) attained fame prior to the respective trademark filings made by the Applicant.
Regarding the final element, it has been held that dilution by blurring occurs when a substantial percentage of consumers upon seeing the junior user’s mark in connection with the goods or services are immediately reminded of the famous trademark. Further, the consumer would then associate the junior mark with the owner of the famous mark, even if they do not believe that the goods originate from the senior mark’s owner (the same source). Here, the Board held that the Applicant’s mark was likely to dilute (impair the distinctiveness) the Opposer’s registrations. The Board did not consider the Applicant’s defense of parody because any mark that identifies source (a requirement for trademark registration) cannot be considered for a statutory exclusion to a dilution claim.
Since the Board found in favor of the Yankees on the dilution claim there was no need to examine the merits of the other two claims, likelihood of confusion and false suggestion of a connection. It can be difficult to determine whether a trademark has reached a “legally famous status”. The legal standard for fame also varies under the claims of likelihood of confusion and dilution. If you have questions regarding dilution claims, or other trademark questions, please feel free to contact our office for a courtesy consultation with a trademark attorney.