Battle of the Miners: TTAB finds likelihood of confusion between MINERS marks

United States of America

In The Board of Regents, The University of Texas System v Southern Illinois Miners LLC (Opposition Nos 91183196 and 91183698, March 13 2014, precedential), the Trademark Trial and Appeal Board (TTAB) has found that there was a likelihood of confusion between the mark MINERS for professional baseball goods and the mark MINERS for college sports goods.

The University of Texas at El Paso (UTEP) has used the nickname ‘Miners’ since at least 1914. UTEP, through its governing board, owns several registrations for the mark MINERS and a logo for various goods and services related to the college and its college sports teams, which do not include a baseball team.  

Southern Illinois Miners (SIM) is a professional baseball team that also calls itself ‘The Miners’. UTEP opposed applications filed by SIM for the word mark MINERS and the logo mark shown below for goods and services related to its professional baseball team.

Not surprisingly, the TTAB found that the word marks were identical. UTEP’s registrations and SIM’s applications included the identical goods “media guides” in Class 16 of the Nice Classification. In addition, they included various clothing items in Class 25, with the only difference being that most of UTEP’s registrations specified “college imprinted” clothing while SIM’s registrations specified “professional baseball imprinted” clothing. The TTAB focused much of its opinion on whether the terms ‘college imprinted’ and ‘professional baseball imprinted’ sufficiently differentiated the goods.

Ultimately, the TTAB found that the terms ‘college imprinted’ and ‘professional baseball imprinted’ merely meant that the identical MINERS marks would both be imprinted on clothing. None of the registrations at issue included any restrictions on the channels of trade. Thus, the TTAB also found that both parties’ products would be distributed through similar trade channels to similar classes of purchasers. The TTAB concluded that there would be a likelihood of confusion between the two marks when used on the goods in Classes 16 and 25. The TTAB approved SIM’s applications only for services related to professional baseball.

The TTAB also addressed SIM’s counterclaims under Section 18 of the Trademark Act. In its counterclaims, SIM sought to partially restrict UTEP’s registrations by restricting the goods and services by adding, for example, ‘college imprinted’ to the clothing in one registration that did not include that restriction. To prevail on its counterclaims, SIM had to prove that UTEP was not using the marks on the goods or services sought be to be excluded, which was true, and that the restriction would avoid a finding of likelihood of confusion - “that is, the restriction must be ‘commercially significant’”. The TTAB ruled that the restrictions were not commercially significant because the TTAB had already decided that adding the restriction ‘college imprinted’ would not avoid confusion as to the Class 16 and 25 goods.   

Diane M Reed, Knobbe Martens Olson & Bear LLP, Orange County

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