The TTAB Trademark Tally: BIG CAT & the Benefits of FAME

Caterpillar Inc. may not be as recognizable as the most famous Hollywood Celebrities, but who says fame can't have its benefits for heavy machinery companies as well.

News out of Alexandria, Virginia this past week with the TTAB issuing an anticipated final ruling in the Caterpillar Inc. "BIG CAT" Opposition, Finding for the Opposer and Refusing the Registration of the Applican'ts BIG CAT Application. The final ruling came as the final step in the Opposition Filed By Caterpillar, Inc. in 2012 in their attempt to block an energy company's attempt to register the term "BIG CAT" in connection with various oil and gas well technology.

While an initial review of the basic variables in this Likelihood of Confusion Opposition might leave some practitioners and trademark aficionados unconvinced that the two respective channels of trade and the specific goods and services with which the respective marks are used in connection with over lap significantly enough to establish a likelihood of confusion, the TTAB Board made another crucial finding prior to proceeding with the aforementioned analysis so as to impact the criteria and analysis of facts in the analysis.

After careful examination of the evidence relating to the determination that Caterpillar's "CAT" trademark is famous and thus entitled to a more broad and pervasive level of protection.  The ownership of a famous trademark also entitles the owner of such a mark the benefit of a more careful examination by USPTO Examining Attorney's of new U.S. Trademark Applications that are themselves sufficiently similar to the famous Mark/s when comparing the look sound and feel of the Marks.

 The Board stated: "Nonetheless, as discussed infra, we have concluded that Opposer’s CAT marks are famous, in no small measure because, as the record shows, CAT-branded equipment is pervasive on natural gas well sites throughout the entire life-cycle of the well. Hence, based upon all of the evidence in the record, including the respective registrations and applications, there exists a relationship between Applicant’s hydrogeological technology 
and Opposer’s listed heavy machinery, engines and generator sets."
 

The BIG CAT Case is illustrative of the more favorable and broad application of the Likelihood of Confusion analysis that is employed when a Board recognized famous trademark is that mark which is allegedly being infringed upon by the Applicant's Mark.

The fame of the BIG CAT Mark resulted in a more strong and conclusive determination that the channels of trade within which the respective marks in the Opposition were sufficiently similar.  In addition, the goods and/or services themselves were deemed similar and overlapping and thus represented another indication that the Applicant's Mark represented a likelihood of confusion with the Opposer's Famous Marks.

Due to the strong evidence that resulted in the strong agreement that the Opposer's Mark was famous, the Board was able to issue a confident ruling that the Applicant's Mark did establish a likelihood of confusion with the Opposer's Famous Trademark/s and thus the Board, exercising their limited judicial and jurisdictional authority, ruled that the Applicant's Mark should be refused and subsequently cancelled on marked DEAD on the USPTO Principal Register.

For the TTAB's Final Ruling, the PDF Can Be Found Here.
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Sports and Branding: The Anatomy of The JOHNNY FOOTBALL Branding and Trademark Strategy

Over the past several years, the proliferation of trademark filings by athletes and their personal management companies has reflected a growing trend in sports branding that has athletes increasingly taking control of the mechanisms that make money for athletes and sports teams.  

While many sports contracts have athletes assigning over many of the rights in their personal brand to teams and sports organizations, the filing of trademark applications by athletes themselves shows how bold new strategies are working to shift the balance in this traditionally pro-team economic system. 

Below, Johnny Manziel's branding strategy is shown to focus largely on the filing of various trademarks not covered by the team owned components of an athletes personal brand (formal team jersey name).  

Because teams have no proprietary interest or ownership of nicknames for athletes, a move to shift commercial activities for sports merchandising has athletes squarely in charge of these new profit generating promotion and sales activities. 

• Johnny Manziel (JOHNNY FOOTBALL) Files His 10th Trademark Application with the USPTO for the Trademark JOHNNY CLEVELAND
• JOHNNY FOOTBALL Class 025 (Apparel) Trademark Application
• Status:  Suspension Letter Issued on December 31, 2013
• JMAN2 Class 025 (Apparel) Trademark Application
• Status:  Notice of Allowance Issued on June 24, 2014
• JMAN Class 025 (Apparel) Trademark Application

• Status:  Notice of Allowance Issued on June 24, 2014
• JIIM Class 025 (Apparel) Trademark Application
• Status:  Notice of Allowance issued on July 1, 2014
• MANZIEL Class 025 (Apparel) Trademark Application
• Status:  March 25, 2014 - Office Action Issued For:
• Surname Refusal
• False Connection with a Living Individual
• Because Applicant is a Corporation, It Cannot Claim To Be An Individual in the Manner Necessary to Make a Valid Claim to the Manziel Surname
  
• JFF Class 025 (Apparel) Trademark Application
• Status:  Notice of Allowance issued on July 1, 2014
• THE HOUSE THAT JOHNNY BUILT Class 025 (Apparel) Trademark Application
• Status:  Suspension Letter Issued on March 19, 2014 RE: Prior Pending Trademark Application That is a Potential 2(d) Conflict with Applicant's Mark 
• Prior Pending Application THE HOUSE THAT JOHNNY BUILT (Applicant: Fitch Estate Sales)  
• U.S. Trademark Application Ser. No. 86/153461
• Class 025 (Apparel) Trademark Application

• Status:  Notice of Allowance Issued on July 1, 2014
• Class 025 (Apparel) Trademark Application
• Status:  Office Action issued on March 25, 2014
• Surname Refusal
• False Connection with a Living Individual
• Because Applicant is a Corporation, It Cannot Claim To Be An Individual in the Manner Necessary to Make a Valid Claim to the Manziel Surname
•  JOHNNY CLEVELAND Class 025 (Apparel) Trademark Application

The Brooklyn Nets and Rebranding A Sports Team: How Players Personal Brands Impact the Rebranding of an Entire Franchise

New City, New Owner, New Arena, New Logo, even "New Jerseys". Over the past year, much has been made over one of the largest public rebranding efforts to impact American sports in decades. Attempting to make the most of a move to a city that is home to its own recent notable rebranding efforts, the New Jersey Nets have done much to capture the publics imagination with its move to Brooklyn and have made it clear that this team will be new in almost every way. 

Starting with the purchase of the team by Russian billionaire Mikhail Prokhorov over two years ago, a brash new style of ownership commenced with selling the message that the move to Brooklyn would not be simply a relocation of the team but a complete rebranding of the Nets as an NBA franchise. The Nets have benefitted from their popular association with minority owner Jay-Z, the generous financing for their Arena by Barclays Bank, and their change to a new team logo which may reflect the only aspect of the move to Brooklyn that could be described as "minimalist". 

While all of these factors bode well for the teams future success in Brooklyn, one important point stands out when it comes to rebranding a sports team, that your team brand is only as strong as the brand of those players on your opening day roster. Cue to Dwightmare (a trademark not liklely sought out by Orlando's Dwight Howard) 2012, and you can see how much star power, particluarly in the NBA, means to the brand of a team. The Nets, realizing that to add a star of D12's stature, they would have to retain a player of Deron William's stature, did what was necessary to bring back the Texas native whose eye had been wandering towards his hometown Dallas Mavericks since the Free Agency period began.  

In order to keep Deron Williams, and thus further their efforts to land Dwight Howard, the Nets knew they had to add an attractive piece to the roster. With most teams holding onto their franchise superstars for dear life, one player was notably very available, Joe Johnson of the Atlanta Hawks. The currrent owner of the most head-scratching contract in the NBA, a contract that exceeds those of Lebron James, Dwayne Wade and Carmelo Anthony, Joe Johnson was widely thought to be significantly overpaid based on his Tier 2 talents, lack of star power, and his lack of connection with Atlanta fans. To Atlanta, he was expendable and his trade necessary in order to start their own rebuilding process, to New Jersey, he was the player who could help keep the player that would land the player the Nets truly wanted on their opening day roster.  

In an era of the "Big Three" in the NBA, where in order to compete or be attractive to available players, a team must have a trio of stars-super stars on their team, the Nets made the trade for Joe Johnson, and although not their preferred player of choice, he was instrumental in working out an extension for Deron Williams. Without Deron Williams, the Nets would have opened their new arena with a roster largely seen as a disappointment. So while the analysts can argue the finer points of the competitiveness of the Nets roster, the teams rebranding efforts should be viewed as a success.  However, without landing those first two star pieces, and keeping hope alive to land D12 sometime over the next year, the new arena and those new uniforms would have, on opening day, felt otherwise quite empty.  For more, a NY Times recent article  and a LA Times article on the Brooklyn Net's rebranding efforts.