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

THIS OPINION IS A

PRECEDENT OF THE TTAB

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.

TH

12 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

Opposition Nos. 91150925

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.”

2

Opposition Nos. 91150925

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.

3

Opposition Nos. 91150925

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.

4

Opposition Nos. 91150925

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

5

Opposition Nos. 91150925

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

6

Opposition Nos. 91150925

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

7

Opposition Nos. 91150925

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.

8

Opposition Nos. 91150925

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

9

Opposition Nos. 91150925

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

10

Opposition Nos. 91150925

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.

11

Opposition Nos. 91150925

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

12

Opposition Nos. 91150925

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,

13

Opposition Nos. 91150925

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

14

Opposition Nos. 91150925

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

15

Opposition Nos. 91150925

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

16

Opposition Nos. 91150925

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.

17

Opposition Nos. 91150925

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

18

Opposition Nos. 91150925

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

19

Opposition Nos. 91150925

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

20

Opposition Nos. 91150925

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

21

Opposition Nos. 91150925

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

22

Opposition Nos. 91150925

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

23

Opposition Nos. 91150925

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

24

Opposition Nos. 91150925

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.

25

Opposition Nos. 91150925

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

26

Opposition Nos. 91150925

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”).

27

Opposition Nos. 91150925

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

28

Opposition Nos. 91150925

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

29

Opposition Nos. 91150925

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

30

Opposition Nos. 91150925

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,

31

Opposition Nos. 91150925

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

32

Opposition Nos. 91150925

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.

33