Intellectual Property Law
New Matter SPRING 2016, Volume 41, Number 1
Content
- 2016 New Matter Author Submission Guidelines
- Case Comments
- Contents
- Copyright Act Termination Right in 2015 - Year in Review
- In Memoriam: Supreme Court Justice Antonin Scalia 1936 - 2016
- Intellectual Property Section Executive Committee 2015-2016
- Intellectual Property Section Interest Group Representatives 2015-2016
- Interest Group Reports
- International Ip Developments
- Letter from the Chair
- Letter from the Editor-in-Chief
- MCLE Self-Study Article
- Ninth Circuit Report
- Petitioning for Inter Partes Review
- Remedies When Infringers File Bankruptcy
- The European Unitary Patent and the Unified Patent Court System: What's in it for U.S. Users?
- The Licensing Corner
- The State Bar of California Intellectual Property Alumni
- Ttab Decisions and Developments
TTAB Decisions and Developments
Jane Shay Wald
Irell & Manella LLP
SECTION 2(A) ELEMENTS NOT MET
Applicant sought to register MARATHON MONDAY for various clothing items in Class 25. Opposer, The Boston Athletic Association ("BAA") opposed under Sec. 2 (a) as creating a false suggestion of a connection with Opposer. The elements of such a claim require Opposer to prove: First, that MARATHON MONDAY is, or is a close approximation of Opposer’s name or identity. The Board pointed out that the fact that "neither BOSTON MARATHON nor MARATHON MONDAY is Opposer’s official name is not a dispositive factor," citing nickname cases, e.g., Buffett v. Chi-Chi’s, 226 U.S.P.Q. 428, 429 n. 4 (T.T.A.B. 1985) (MARGARITAVILLE). However, Opposer argued that BOSTON MARATHON is Opposer’s persona, and that BOSTON MARATHON and MARATHON MONDAY are interchangeable. While the Board found that BOSTON MARATHON was an identity of Opposer, it disagreed that MARATHON MONDAY closely approximated this persona. "In other words, Applicant’s mark…must do more than simply bring Opposer’s BOSTON MARATHON persona to mind." Opposer failed this prong.