TTAB sustains New York Yankees' claim of dilution by blurring

In New York Yankees Partnership v IET Products & Services Inc (Opposition No 91189692, May 8 2015), the Trademark Trial and Appeal Board (TTAB) has sustained oppositions brought by the New York Yankees Partnership against a 'top hat' logo design mark (depicted below) and the mark THE HOUSE THAT JUICE BUILT (the applicant filed this mark with and without quotation marks but the TTAB treated them the same for its analysis), based on a likelihood of dilution by blurring under Section 43(c) of the Trademark Act.

The opposed applications covered T-shirts, baseball caps, hats, jackets, sweatshirts and mugs. 

The opponent owned registration for a 'top hat' logo (depicted below) and the mark THE HOUSE THAT RUTH BUILT for similar goods as those applied for by IET.

The four elements that must be proven to prevail on a dilution by blurring claim before the TTAB are: 

1. the opponent owns a famous mark that is distinctive;
2. the applicant is using a mark in commerce that dilutes the famous mark;
3. the applicant’s use began after the opponent’s mark became famous; and
4. the applicant’s use of the mark is likely to cause dilution by blurring. 

The TTAB concluded that the opponent’s 'top hat' logo mark was famous based on, among other things, the following submitted evidence: 

• the fact that the applicant did not dispute that the opponent’s 'top hat' logo mark is inherently distinctive and admitted that it is famous when used in connection with the opponent’s baseball team uniforms and apparel; 
• the opponent submitted substantial evidence relating to the duration, extent and geographic reach of advertising and publicity of the mark and the volume of sales of product bearing the mark;
• the opponent’s use of the mark for over 50 years and for over 40 years on apparel;
• the mark is displayed at the Yankee Stadium and the games are broadcast nationwide;
• the mark is featured on the Yankee Club Facebook page;
• since 1995, the opponent has sold over $1.5 billion worth of merchandise (it was not specified how much bears the 'top hat' logo);  
• the mark is used in connection with local and national sponsorships with other major commercial brands; and
• the 'top hat' logo has been registered by the opponent since 1976 for baseball-related products, including apparel and mugs.

Similarly, with regard to the second opposed mark, the applicant admitted that the opponent’s mark THE HOUSE THAT RUTH BUILT is one of the most famous and well known of all baseball stadiums. The applicant attempted to draw a distinction between the fact that the phrase "The House That Ruth Built", as used by the press and the public, is famous, but that it did not consider the mark as used as a trademark to be famous. However, the TTAB rejected that distinction, stating that the “first factor for assessing the fame for dilution is the duration, extent and geographic reach of advertising and publicity of the mark, whether advertised or publicised by the owner or third parties”. The opponent also introduced evidence of widespread use of this mark since the 1920s, as well as evidence of three trademark registrations.

With regard to whether the applicant’s marks were likely to cause dilution by blurring, the TTAB looked at whether a substantial percentage of consumers, on seeing the applicant’s mark on goods, are immediately reminded of the famous mark and associate the applicant’s use with the owner of the famous mark, even if they do not believe that the goods come from the famous mark's owner. 

In determining that there was a likelihood of dilution, the TTAB acknowledged significant differences in the parties’ respective marks, but it found the overall similarity between the marks immediately apparent. In addition, significant was the TTAB’s finding regarding the applicant’s intent to create an association with the famous marks. The applicant takes the position that its use of the marks is a fair use parody. However, the TTAB held that, by attempting to register the marks in connection with goods, the fair use exclusion is inapplicable. The TTAB held that the parody defence should not be considered as part of the assessment of a dilution claim because, when applying for a mark, it is for the express purpose of identifying a source and, as such, is not non-commercial fair use. The TTAB held that it is virtually impossible to conceive of a situation where a parody defence can succeed to a dilution claim.

Thus, in rejecting the applicant’s primary defence, the TTAB sustained the oppositions. 

Lara A Holzman, Alston & Bird LLP, New York