4/30/02
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Hearing:
January 5, 2002
Paper No. 15
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Gregory Speirs
________
Serial Nos. 75/646,864; 75/519,553; 75/523,613; 75/538,701;
75/566,226; 75/568,149 and 75/575,759.
_______
Steven M. Hoffberg of Milde, Hoffberg & Macklin LLP for
Gregory Speirs.
Daniel F. Capshaw, Trademark Examining Attorney, Law Office
109 (Ronald R. Sussman, Managing Attorney).
_______
Before Cissel, Walters and Bottorff, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
This appeal involves seven applications, all to
register marks on the Principal Register, and all of these
applications were filed by Gregory Speirs during 1998 and
Ser No. 75/646,864 et. al
1999.
The first application1 is for the mark shown below:
This is the only application in the group which is
based on a claim of use.
The goods listed in this
application are as follows “t-shirts, baseball caps, boxer
shorts, neckties, baseball jackets, tank tops, sneakers,
denim shirts, dress shirts, golf shirts, gloves, fleece
pullover jackets, sweaters, warm-up suits, shorts, socks,
headbands, sweatshirts, hats, berets, scarves, polo shirts,
fleece hats and caps,” in Class 25.
The other applications involved in this appeal were
all filed under Section 1(b) of the Lanham Act based on
applicant’s assertions that he possessed a bona fide
intention to use the marks in commerce.
The marks in these
six applications are shown below.
1
SN. 75/646,864, filed on February 27, 1999, claiming use in
commerce since December 20, 1996.
2
Ser No. 75/646,864 et. al
LITHUANIAN SLAM DUNKING SKELETON
This is the only mark consisting of words only.
The goods
listed in this application2 are “t-shirts, baseball caps,
boxer shorts, neckties, baseball jackets, tank tops,
sneakers, denim shirts, dress shirts, golf shirts, gloves,
fleece jackets (pullovers), sweaters, warm-up suits,
shorts, socks, headbands, sweatshirts, hats, berets,
scarves, polo shirts,” in Class 25.
2
SN. 75/519,553, filed on July 15, 1998.
3
Ser No. 75/646,864 et. al
This mark is the subject of two applications.3
The goods
listed in these applications are, respectively, are “tshirts, baseball caps, neckties, baseball jackets, boxer
shorts, tank tops, sneakers, denim shorts, dress shirts,
golf shirts, gloves, fleece jackets (pullovers), sweaters,
warm-up suits, shorts, socks, headbands, sweatshirts, hats,
berets, scarves, polo shirts,” in Class 25; and “action
figures, porcelain figurines, dolls, board games, computer
software games, toy chests, plush toys, action board games,
action figure accessories, toy key chains, activity sets
and playsets, video games, electronic arcade games,
bicycles, flying toys, toy models, collectible toy models,
kites, flying disk toys, card games, sport bottles, sport
pack sacks, sport back packs, hand held battery operated
toys, action flip card games, trivia games, resin based
figurines, toy diaramas, arcade games with mechanical
moving parts, toy balls, costume toys and masks, playing
cards, toy vehicles, electronic games, balls for
recreational use, toy model sets, art and crafts toy sets,
toy model building sets, collectible figurines, golf balls,
golf tees, boomerang flying toys, basketballs, basketball
backboards, bean bag dolls, bean bag toys,” in Class 28.
3
SNs 75/523,613 and 75/538,701, filed on July 22, 1998 and
August 13, 1998, respectively.
4
Ser No. 75/646,864 et. al
The goods in the application4 to register this mark are
stated as “trading cards, collectible cards, postcards,
posters, comic books, stickers, decals, notebooks, diaries,
bookmarks, pens, pencils, storybooks for children and
adults, coloring books, children’s activity books, printing
blocks, rubber stamps, wrapping paper, appointment books,
adventure story magazines, calendars, postcard books,
playing cards, folders for papers, stencils, children’s
books, greeting cards, book covers, magic markers, acrylic
paint sets, watercolor paint sets, learn-to-paint sets,
paint by numbers sets, coloring sets, milk caps, puzzles,”
in Class 16.
4
SN. 75/566,226, filed on October 6, 1998.
5
Ser No. 75/646,864 et. al
In the application to register this mark5, the goods are
identified as “t-shirts, baseball caps, boxer shorts,
neckties, baseball jackets, tank tops, sneakers, denim
shirts, dress shirts, golf shirts, gloves, fleece pullover
jackets, sweaters, warm-up suits, shorts, socks, headbands,
sweatshirts, hats, berets, scarves, polo shirts, fleece
hats and caps,” in Class 25.
5
SN. 75/568,149, filed on October 10, 1998.
6
Ser No. 75/646,864 et. al
In the application to register this mark6, the goods are
identified as “t-shirts, baseball caps, boxer shorts,
neckties, baseball jackets, tank tops, sneakers, denim
shirts, dress shirts, golf shirts, gloves, fleece pullover
jackets, sweaters, warm-up suits, shorts, socks, headbands,
sweatshirts, hats, berets, scarves, polo shirts, fleece
hats and caps,” in Class 25.
Each of these seven applications has been refused
registration under Section 2(a) of the Lanham Act on the
ground that the mark falsely suggests a connection with the
Lithuanian National Olympic Committee.7
6
When the refusals
SN. 75/575,759, filed October 22, 1998.
Originally, the Examining Attorney took the position that the
marks falsely suggest connections with the Lithuanian National
Basketball Team, but he subsequently issued an Office Action
“revising the party” (brief, p. 2) with which he contends the
marks falsely suggest connections.
7
7
Ser No. 75/646,864 et. al
to register became final, applicant timely filed notices of
appeal in each of the cases.
In each case, briefs were
filed by both applicant8 and the Examining Attorney.
Both
applicant and the Examining Attorney presented arguments as
to all seven applications at the oral hearing conducted
before the Board on January 15, 2002.
Because the issue is essentially the same in each of
these applications, and the facts are similar, we have
considered the appeals together and issue a single opinion.
Based on careful consideration of the record, the
arguments of applicant and the Examining Attorney and the
relevant law, we hold that the refusals to register must be
reversed in each application.
Although applicant and the Examining Attorney disagree
as to the legal conclusion we should draw from the facts
surrounding these cases, there is no apparent disagreement
as to the facts themselves.
A brief history of these
marks, from the evidence of record, is necessary to
understand the issue on appeal.
In 1992, Not Fade Away Graphics, Inc. was a company
that provided merchandising services for the Grateful Dead
rock and roll band.
Not Fade Away Graphics, Inc. was a
8
The new evidence submitted by applicant with his appeal brief
was properly objected to by the Examining Attorney because its
8
Ser No. 75/646,864 et. al
licensee of the Grateful Dead, and produced tie-dyed
apparel bearing Grateful Dead logos.
Applicant, Gregory
Speirs, was involved in both the design and production of
merchandise with silk-screen graphics for Not Fade Away
Graphics, Inc..
Although he was a regular employee with
regard to his responsibilities for production, in regard to
his artistic design services he was an independent
contractor.
By agreement with his employer, he retained
full ownership of the artwork he created.
According to applicant, before the 1992 Summer
Olympics, the Grateful Dead band had decided to help the
1992 Olympic basketball team from Lithuania, which was
apparently hard-pressed for financial support.
Among other
things, the band used its existing relationship with Not
Fade Away Graphics, Inc. to have tie-dyed warm-up suits
with custom graphics designed and manufactured for use by
the team.
The record does not show that the team issued a
specific request or commissioned this design, but rather,
that the band asked for it.
The president of Not Fade Away Graphics asked
applicant to create artwork for this project.
The graphics
applicant developed employed skeleton themes in which he
submission did not comply with Trademark Rule 2.142(d).
Accordingly, the Board has not considered this evidence.
9
Ser No. 75/646,864 et. al
alleges that he had previously established rights.
Applicant alleges that the artwork he developed was not
derived from any Grateful Dead trademarks or works in which
the band held any copyright.
Applicant’s design, which featured a skeleton
character whose uniform bore the name “Lithuania” dunking a
basketball, was given worldwide exposure when the
Lithuanian Olympic basketball team won the bronze medal by
defeating the heavily-favored Russian team.
The team from
Lithuania wore the shirts which the Grateful Dead had
commissioned and donated to the team, featuring applicant’s
design, on the victory podium as well as during the
subsequent closing ceremonies of the Olympic games.
Of
record in connection with these appeals are excerpts from a
number of published articles which indicate that the
“slammin’ skeleton” design which applicant had created
caused nothing short of a sensation during and after the
1992 Olympics and the team, with the members wearing the
shirts, was the subject of a great deal of publicity.
During that period, t-shirts bearing this design were
sold in great numbers.
While the original intent was for
sales of the shirts to support the Lithuanian Olympic
basketball team, an excess of funds was given to a charity
which helped Lithuanian children.
10
Applicant subsequently
Ser No. 75/646,864 et. al
obtained an injunction barring both the band and the
Lithuanian basketball team’s marketing arm from using
applicant’s design of a skeleton dunking a basketball with
the name “Lithuania” in connection with their commercial
activities.
The applications which are the subjects of these
appeals seek registration of various forms of the original
design and word combination, which applicant claims use of
as his trademark in connection with the clothing products
set forth in application SN. 75/646,864 since 1992, and the
five other related marks, in six applications, which
applicant asserts he has a bona fide intention to use in
connection with the goods listed in the other applications.
These marks, including the word mark “LITHUANIAN SLAM
DUNKING SKELETON,” are all thematically related to the
original mark which is still in use by applicant.
All
appear to be attempts to profit from the notoriety given to
the original design made famous when the Lithuanian team
wore shirts bearing it at the 1992 Olympic Games.
The Examining Attorney contends that each of these
marks, even the word-only mark, is unregistrable under
Section 2(a) of the Act because each one falsely suggests a
connection with the Lithuanian National Olympic Committee.
11
Ser No. 75/646,864 et. al
The test for registrability under Section 2(a) of the
Act is well settled.
Under this section of the Act,
registration must be refused if the mark sought to be
registered consists of matter which may falsely suggest a
connection with persons, living or dead, institutions,
beliefs, or national symbols.
As we have noted many times
before, the language used in this portion of Section 2(a)
does not spring from concern with problems caused by the
use of similar trademarks on related goods.
of the Act deals with this situation.
Section 2(d)
Instead, the
language in Section 2(a) came into being out of concern for
the rights of publicity and privacy.
As our primary
reviewing court stated in The University of Notre Dame du
Lac v. J. C. Gourmet Food Imports, Co., Inc., 703 in F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983), the drafters of the
statute were concerned with protecting the names of
individuals and institutions which were not technical
trademarks or trade names upon which objections under
Section 2(d) the Act could be made.
In In re Cotter & Co.,
228 USPQ 202 (TTAB 1985), this Board noted that “it is the
Examining Attorney’s burden to show that the mark sought to
be registered is unmistakably associated with a particular
‘persona.’
In order to do this, and Examining Attorney
must show that the mark sought to be registered is the same
12
Ser No. 75/646,864 et. al
or a close approximation of the name or identity of a
person, living or dead, or of an institution, and that it
would be recognized as such.
It must also be clear that
the person or institution identified by the mark is not
connected with the goods sold or the services performed by
applicant under the mark.
Finally, it must be shown that
the fame or reputation of the named person or institution
is of such a nature that a connection with such person or
institution would be in presumed when the applicant’s mark
is used on its goods or services.”
Simply put, the Examining Attorney has not met his
burden of establishing that the first element of this test
is satisfied in any of the cases before us.
A good deal of
applicant’s argument is misdirected, in the sense that it
focuses on the ownership of copyrights, trademark rights
and the question of whether applicant’s marks are or will
be likely to cause confusion in the marketplace.
When we
focus instead on the real issues presented by these
refusals under Section 2(a) of the Act, however, we must
conclude that this record does not demonstrate that any of
the design marks presented in the drawings submitted with
these applications or the word mark “LITHUANIAN SLAM
DUNKING SKELETON” is the name or identity of the Lithuanian
National Olympic Committee or the Lithuanian national
13
Ser No. 75/646,864 et. al
basketball team sponsored by the Lithuanian National
Olympic Committee, or that any of the marks applicant seeks
to register is even a close approximation of the name or
identity of either of these institutions.
In support of his contention that “[t]he Lithuanian
national basketball team is identified by the term
LITHUANIA and basketball playing skeleton designs,” (brief,
p.5), the Examining Attorney made of record excerpts from a
number of published articles.
Contrary to his arguments,
however, this evidence does not establish that the marks
sought to be registered are the same as or a close
approximation of the name or identity of either the
Lithuanian National Olympic Committee or the basketball
team which operates under its auspices.
Instead, all that
the evidence indicates is that in 1992, “… the Lithuanian
athletes started a tiny fashion craze when they wore tiedyed t-shirts with a skullman dunking a basketball.”
Wall
Street Journal, July 22, 1996.
Nowhere in any of the articles submitted by the
Examining Attorney is there any evidence which establishes
that any of these trademarks is the same as, or a close
approximation of, the name or identity of either the
Lithuanian National Olympic Committee or its basketball
team.
That the team and its accomplishments were well
14
Ser No. 75/646,864 et. al
known and that it was well known that in 1992 they had worn
clothing bearing the design featuring the skeleton dunking
the ball with the word “LITHUANIA” is not disputed, but the
Examining Attorney has not explained how these facts
resulted in any of these marks becoming the name or
identity of the team or the Olympic Committee which
controlled it, nor has he explained how these facts could
be understood to show that the marks applicant seeks to
register are even a close approximation of such name or
identity.
Just because lots of people knew the team wore
clothing bearing a substantially similar design and words
does not make the design and words the team name or
identity.
Applicant is not seeking to register “LITHUANIAN
NATIONAL BASKETBALL TEAM’ or ‘LITHUANIAN NATIONAL OLYMPIC
COMMITTEE” with the instant applications.
In summary, because the Examining Attorney has failed
to meet the requirements for establishing that these marks
falsely suggest a connection with the Lithuanian National
Committee or the Lithuanian Olympic basketball team, the
refusals to register based on Section 2(a) of the Act are
reversed.
15
