A recent trademark cancellation action by Major League Baseball against an individual who had a registration for sports apparel is another victory for well-established brand names.
In Major League Baseball Properties, Inc. v. Christopher Webb, MLB petitioned to cancel U.S Reg. No. 4472701 for the mark MAJOR LEAGUE ZOMBIE HUNTER and design, for “clothing, namely, short and long sleeve t-shirts, sweatshirts, jackets, baseball hats, and beanies,” in Class 25, registered on the Supplemental Register. The grounds were a likelihood of confusion under Section 2d of the Trademark Act, as well as dilution. MLB also asserted that Respondent’s registration was void ab initio since Respondent never had a bona fide intent to use its mark in commerce as well as fraud on the Trademark Office. In support of its standing and likelihood of confusion and dilution claims, MLB introduced four of its trademark registrations for MAJOR LEAGUE BASEBALL, including the MAJOR LEAGUE BASEBALL word mark, MAJOR LEAGUE BASEBALL and Design mark and two design marks of its iconic baseball player with bat and ball logo. Three of MLB’s registrations were for apparel goods in International Class 25.
In a preliminary ruling on MLB’s motion for summary judgment on Respondent’s lack of bona fide intent to use its own mark in commerce and fraud, the TTAB granted summary judgment on MLB’s standing and no bona fide use of Respondent’s mark on sweatshirts, jackets, baseball hats, and beanies. The TTAB denied Petitioner’s motion for summary judgment on no bona fide use of Respondent’s mark on t-shirts and fraud.
MLB claimed that its trademarks are strong, which would entitle it to a wide latitude of protection for likelihood of confusion purposes. Based on its evidence of extensive sales, advertising, and wide spread recognition of the MLB brand, the Board agreed. It went to to conclude that the parties’ goods (at least some of them) were legally identical, which would presume that the channels of trade and classes of purchasers are the same. Finally, it observed that the parties’ design marks gave a confusingly similar commercial impression. Based on a totality of the circumstances, the Board found the Respondent’s mark to be confusingly similar to MLB’s marks and accordingly ordered Respondent’s registration be cancelled.
Trademark cancellation tip for large brands: Well-established brands are often successful in trademark cancellation proceedings based on the strength of their trademarks and supporting evidence. Therefore, it is important for brand owners to create a repository of historical sales and advertising figures, as well as marketing and advertising specimens and trade channels that shows widespread use and consumer recognition of its marks.