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Chicago Cubs victorious again! This time, before the TTAB.

News and Notes Focused on the 3 Public Faces of IP Law

  • Brand Image Protection - Trademark Law
  • Visual Image Protection - Copyright Law
  • Personal Image Protection - Right of Publicity Law

The Image Protection Law blog has been created in order to share stories and information on the legal aspects of: 1) the marketplace reputation of a company or product captured in its trademark, 2) published or publicly-displayed artwork, photography, and any created visual design, and 3) use of a person's photograph or likeness for product promotion or other commercial purposes.

The "IP3" share at least one thing in common: Image is everything. In these posts let's look at what that means in the realm of intellectual property in the news, but let's also be prepared to explore if there's something more beyond "everything." Don't forget, the intellectual in "intellectual property" doesn't mean smart or brainy, although by nature true creators often are. The word is used to refer to any creation, i.e., a "product of the mind." While this blog will be regularly updated, you are encouraged to share your thoughts on these posts.

After a 108-year lull, the Chicago Cubs won the World Series in 2016. No one who watched the games could argue against the enthusiasm and loyalty of Cubs fans. You might even be able to call some of them obsessed or even -- obnoxious.

Right on time for a new baseball season, the Cubs are again in the news. This time, the Cubs have won before the Trademark Trial and Appeal Board, known as the TTAB and part of the U.S. Patent and Trademark Office. In Chicago Cubs Baseball Club, LLC, v. Ronald Mark Huber, the club successfully opposed Huber's application to register "Cubnoxious" as a trademark.

Huber lost his 2016 bid to register "Cubnoxious" as a trademark for use on shirts. The TTAB concluded that registration should not be granted on two grounds:

  • The applicant did not show a "bona fide intent" to use the mark as of the date he filed his application for trademark registration.
  • The Chicago Cubs (called the opposer) owns several strong trademarks similar to the proposed mark and that the "overlap of their goods that move in some of the same channels of trade to the same classes of consumers" make consumer confusion over the source of the goods likely.

No bona fide intention to use "Cubnoxious" as a trademark

The TTAB explained that federal law requires when a person applies for a trademark registration, he or she must have a good faith intention to use the trademark in commerce. "[U]se in commerce" in the Trademark Act means that the applicant means to use the mark in the usual course of business and is not filing the application only to try to reserve rights in the mark in case future use is desired at some point.

The TTAB found that Huber had not submitted sufficient documentary evidence showing he had on the filing date a bona fide intent to use the mark, so the application became "void ab initio" (not binding).

"Cubnoxious" on a shirt is likely to confuse consumers as to its source

The TTAB looked at the "DuPont factors" to decide how likely confusion among consumers would be:

  • Huber said he would use the mark on shirts and the opposer uses its registered marks on shirts, increasing the chances of the some of the same "channels of trade and potential consumers."
  • Opposer's marks are numerous and have been long in use.
  • Opposer's marks are "commercially strong" because consumers have been significantly exposed to Cubs' marks as shown by the "substantial number of unique visitors" to opposer's website; wide use of the marks on opposer's highly followed social media accounts; broad use of Cubs' marks at games and on TV and other digital sources; their frequent use in ads and promotions; and, importantly, on clothing, specifically shirts and team jerseys.
  • Opposer uses in its marks "Cub" combined with other words such as "CUBS-A-PALOOZA" or "Mr. Cub" as would the proposed mark, showing similar appearance and sound.
  • "Connotation and commercial impression" of the marks are similar in that Cubs' fans have been described in media, social media and on the Internet as obnoxious. Online reviewers have even used "Cubnoxious" to refer to Cubs' supporters.

Based on these factors, the TTAB found that the significant strength of the Cubs' marks favors a finding that "Cubnoxious" on a shirt would likely cause consumer confusion about whether they came from the same source as shirts with registered Cubs marks.

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