Trademark Review | December 2015

MARATHON MONDAY does not Uniquely Identify the Boston Marathon

Boston Athletic Association (BAA) operates the annual Boston Marathon which has taken place on the third Monday in April every year for the past 117 years. The Boston Marathon is the world’s oldest annual marathon and is one of the world’s best-known road racing events. BAA does not own a registration for MARATHON MONDAY but has used that term in association with the Boston Marathon.

BAA opposed an application to register the mark MARATHON MONDAY for clothing, filed by a company named Velocity. The Trademark Trial and Appeal Board (TTAB) denied the opposition, finding that MARATHON MONDAY is neither a close approximation of BAA’s name or identity, nor that it uniquely and unmistakably points to BAA.

BAA’s opposition claimed that the MARATHON MONDAY mark created a false suggestion of a connection with BAA. To prevail, BAA sought to prove that Boston Marathon identifies BAA and that MARATHON MONDAY is a close approximation of Boston Marathon. The Board found that the Boston Marathon is so well known that “it is inevitable that over the course of more than a century, the BOSTON MARATHON mark has become associated with its organizer, BAA.” BAA failed, however, to convince the Board that MARATHON MONDAY is a close approximation to BAA’s name or identity. The analysis is of whether a mark is a “close approximation” is similar to the likelihood of confusion analysis. Further, false association with a “name or identity” can be found if the mark is, or is a close approximation of, a nickname for the opposer, like “Margaritaville” for Jimmy Buffett or “Royal Kate” for the Duchess of Cambridge. In this case, the Board found that merely sharing the common term “Marathon” does not establish that MARATHON MONDAY is a close approximation of “Boston Marathon.” To the contrary, the Board found that although “Boston Marathon” is inextricably connected to the city of Boston, MARATHON MONDAY has no such connection.

BAA also failed to prove that the mark points uniquely to BAA. The fact that the Boston Marathon is always run on “Marathon Monday” was not enough. Applicant’s evidence established that other entities use “Marathon Monday” to refer to other marathons and related events, including to the Monday after the ING New York City Marathon and the celebration hosted by the Walt Disney Company the day after its 2011 Walt Disney World Marathon. BAA otherwise failed to prove that consumers associate MARATHON MONDAY so closely with BAA that they recognize it as BAA’s name, nickname, identity or persona.

Boston Athletic Association v. Velocity, LLC, Opposition No. 91202562 (TTAB October 26, 2015) [Precedential]

Clothing Company Able to Evade Under Armour’s Attack Against 2 of its 3 Marks

Under Armour brought cancellation and opposition proceedings against two registrations and an application owned by Evade for the following marks:

• EVADE OFFSHORE ARMOR® and ®, both covering shirts, hats and other clothing in the field of fishing, and
• EVADE OUTDOOR ARMOR™ for clothing.

Along with numerous other registered marks, UA asserted likelihood of confusion with its registered marks UNDER ARMOUR and ARMOUR, both of which are registered for clothing.

Evade did not contest the similarity of the goods, or argue that the channels of trade or classes of consumers were different, or that consumers would exercise anything more than ordinary care in purchasing either party's goods. Evade conceded that the UNDER ARMOUR mark is famous for clothing, but disputed the strength of UA's ARMOUR mark.

Evade contended that the term “Armour” or “Armor” by itself is weak because it is descriptive or at least suggestive of certain types of clothing. Evade argued that there was wide-spread third party use of that term not only in marks, but also as a word to describe clothing. The Board concluded that while “armo[u]r” can be merely descriptive of clothing having a specific protective purpose, it is only slightly suggestive of clothing in general. Further, the Board found Evade’s evidence of third party use of the term in marks and on clothing was insufficient to establish that the term is weak or diluted. In particular, Evade’s evidence of third party use consisted only of a few marks and failed to establish that the marks were actually in use or in use with clothing. Further, Evade submitted third-party registrations for “Armo[u]r” marks used on clothing with an express protective or safety purpose, but did not submit any registrations for the marked used on general articles of clothing. Thus, the Board concluded that the likelihood of confusion factor involving dilution through others’ commercial use on the same or similar goods was a neutral factor in its analysis.

As is most often the case, the result in this case turned on the similarity of the marks. As to , the Board found that the marks are dissimilar because the arbitrary term EVADE dominates the entire mark based on its sheer size.

The Board found the circumstances to be quite different when considering Evade’s EVADE OFFSHORE ARMOR and EVADE OUTDOOR ARMOR standard-character marks. In a standard character mark, the Board must consider that the mark may appear in a variety of stylized manners, including one that emphasizes ARMOR. The Board noted that the marks incorporate UA’s registered ARMOUR mark. Since EVADE is the name of the applicant, some consumers may consider this as merely the addition of a trade. The fact that a mark is used in this way is typically not, by itself, sufficient grounds for finding lack of confusion. The Board ruled that the standard-character marks are similar to UA’s ARMOUR mark, and found a likelihood of confusion with those marks.

Under Armour, Inc. v. Evade, LLC, Opposition No. 91195620 and Cancellation No. 92052716 (TTAB October 29, 2015) [not precedential]