Intellectual Property Law

New Matter SPRING 2016, Volume 41, Number 1

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.

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