The Trademark Trial and Appeal Board is quick to throw the flag — just ask the NFL and New York Giants.

In the matter of In re New York Football Giants, Inc., the TTAB sent a strong signal in upholding the Trademark Examiner’s refusal to register the Giants’ trademark for G-MEN  for “shirts, t-shirts, and tops” on the grounds of a likelihood of confusion with the previously registered trademark GMAN SPORT for “boxer shorts; socks, t-shirts, and tank tops” in International Class 25.

On appeal, the Giants had forcefully argued that the term G-MEN was a well-known moniker of the NFL team going back decades and that the fame of the mark as associated with New York Giants precluded any finding of likelihood of confusion between the Giants’ mark and the cited registration.  The Giants stated that the Board, in essence, incorrectly applied a one-size-fits-all approach in its likelihood of confusion analysis, and did not properly take into account the Giant’s notoriety and fame as associated with the G-MEN name.  By comparing the two marks in the abstract, and ignoring marketplace conditions, the Board, according to the Giants,  committed a “fundamental and grievous error.”

In its response, the Trademark Board was equally forceful, stating that it was obligated under its long-standing precedent to adhere to the identification of goods in both parties’ trademark filings, and to construe them broadly in comparison of the two marks in determining whether confusion was likely.  Put another way, the Board expressly stated that it was improper for it to consider any extrinsic evidence regarding the Giants’ fame and limited use of its G-MEN mark on football apparel, and that the NY Giants could have, but did not, limited the goods in its application for registration to football-related items only.   Having failed to do so, the Board reasoned that its conclusion in refusing the application was proper:

Thus, where there is no specific limitation in the description of goods and nothing inherent in the nature of Applicant’s mark that restricts Applicant’s usage to football related merchandise or the promotion of a particular football team, the Board may not read such limitations into the application.

Hats off to the Giants for making a vigorous goal-line stand.  Unfortunately, the defensive line of the Trademark Office held firm in this contest.

Trademark Attorney Notes: When faced with an initial refusal of a trademark application based on a likelihood of confusion with a previously registered trademark, amending the identification of goods to narrow the identification to a specific sub-segment of products or class of customer should always be considered.  In doing so, it may be possible to avoid a final refusal based on a more expansive analysis of the parties’ goods as reflected in the outcome of this case.