WARNING: Provoke the alligators at your own risk!
In a recent decision before the U.S. Trademark Trial and Appeal Board, the University of Florida was successful in defeating a trademark application for the mark GATOR SHOP for online and retail store services.
In University Athletic Association v. Incentive Marketing, Inc., the Opposer (the University of Florida’s trademark holding entity), brought a notice of opposition against the Applicant, Incentive Marketing, claiming that Incentive’s application for the mark GATOR SHOP for “online retail store services featuring a wide variety of consumer goods of others; and retail shops featuring clothing, and a wide range of consumer goods for others,” was confusingly similar to Florida’s GATOR family of marks. In support of its claims, Opposer submitted twelve U.S. trademark registrations, all incorporating variations of its GATOR marks and designs for a wide variety of goods and services. In analyzing the merits, the Board noted that two key considerations in determining a likelihood of confusion is the similarity of the marks and the similarity of the goods or services to be offered under Applicant’s mark. Here, the Board chose to isolate and compare Applicant’s GATOR SHOP mark with Opposer’s U.S. Trademark Registration No.122208 for the mark GATORS for the following goods and services:
- entertainment services, namely conducting intercollegiate athletic events for others in International Class 41; and
- retail store services, distributorship services and mail order services, in the field of wearing apparel and accessories, and novelty items and jewelry in International Class 42
In so doing, the Board observed that Opposer’s and Applicant’s retail store services were legally identical, particularly where, as here, neither of the parties’ identification of goods and services is restricted to a particular channel of trade or customers. The Board went on to find the parties’ marks to be confusingly similar as well, given the dominant portion of both parties’ marks is “GATOR” and that Applicant’s inclusion of the term “shop” in its application did not do anything to alleviate potential confusion. Therefore, to the TTAB, it was a relatively simple and straightforward case of likelihood of confusion and therefore the Opposition was sustained and registration denied.
It should be noted that the licensing of university trademarks for apparel, gifts, and related items brings in major revenue for colleges and their athletic programs. The University of Florida, like all members of the NCAA and other university organizations, has trademark licensing procedures that require strict adherence to University trademark standards. Similarly, the NCAA has its own trademark protection program to enforce its roster of university sporting events trademarks, such as March Madness®, Final Four®, and others.