Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE KAYSER-ROTH CORPORATION
Serial No. 74/121,389
August 27, 1993
Hearing: April 7, 1993
Steven B. Pokotilow and Harold I. Kaplan of Blum Kaplan for applicant.
Catherine K. Krebs
Trademark Examining Attorney
Law Office 15
(Paul E. Fahrenkopf, Managing Attorney)
Before Rooney, Quinn and Hohein
Members
Member
An application was filed to register the mark OLYMPIC CHAMPION for polo shirts, sweatpants, sweatshirts, athletic shirts and running pants for men, women and children, and socks. Use of the mark OLYMPIC CHAMPION since September 25, 1930 by a predecessor-in-interest was alleged. It was also alleged that applicant first used its mark on socks as early as January 1978. Applicant alleged ownership of Regn. No. 287,322. [FN1]
The Examining Attorney's Refusal to Register
Registration initially was refused under Section 2(d) in view of a registration for the mark OLYMPIC for the same goods as are listed in Regn. No. 287,322. [FN2] And registration of applicant's mark for "socks" was refused on the basis that the mark may not lawfully be used in commerce on those goods; in particular, that applicant's use of its mark on "socks" is barred by the provisions of the Amateur Sports Act of 1978, 36 U.S.C. 380. The Examining Attorney required that applicant delete "socks" from its application. Following a final refusal to register based on both grounds, applicant filed a request for reconsideration which included, inter alia, a consent agreement executed by applicant and the owner of the cited registration.
In response to the request for reconsideration, the Examining Attorney continued the final refusal to register as to both grounds previously asserted and added the following new grounds: a refusal to register under Section 2(d) in view of three registrations owned by the United States Olympic Committee; [FN3] and a refusal under Section 2(a) on the ground that the mark sought to be registered falsely suggests a connection with the United States Olympic Committee. In its response to the Examining Attorney's action, applicant advised the Examining Attorney that it is now the owner by assignment of the originally cited registration, Regn. No. 640,363 for the mark OLYMPIC, and argued the merits of the remaining grounds of the refusal to register. The Examining Attorney withdrew the refusal to register based on Regn. No. 640,363 but continued and made final the refusal to register based on the remaining cited registrations; the refusal to register under Section 2(a); and the refusal to register on the ground that applicant's use on socks was unlawful and that applicant must delete that item from its identification of goods. Applicant has appealed.
The Refusal Based on the Amateur Sports Act of 1978
The Amateur Sports Act of 1978 took the form of an amendment to a prior act, "An Act to incorporate the United States Olympic Association," approved September 21, 1950 (36 USC 379 et seq.). The 1978 Act amended the existing statute to allow the U.S. Olympic Committee [FN4] to become the coordinating body for amateur sports in the United States which relate to international amateur athletic competition and to provide a mechanism for resolving disputes among the various sports organizations and the athletes. See Legislative History P.L. 95-604, p. 7481. The 1978 Act, which, in effect, replaced in its entirety the 1950 Act, reiterated certain language from the prior act and added new language. Section 110 [FN5] of the 1978 Act (36 USC 380) provides, in pertinent part, as follows:
*2 Sec. 110(a) Without the consent of the Corporation, any person who uses for the purpose of trade, to induce the sale of any goods or services, or to promote any theatrical exhibition, athletic performance, or competition--
(1) the symbol of the International Olympic Committee, consisting of 5 interlocking rings;
(2) the emblem of the Corporation, consisting of an escutcheon having a blue chief and vertically extending red and white bars on the base with 5 interlocking rings displayed on the chief;
(3) any trademark, trade name, sign, symbol, or insignia falsely representing association with, or authorization by, the International Olympic Committee or the Corporation; or
(4) the words "Olympic," "Olympiad," "Citius Altius Fortius," or any combination or simulation thereof tending to cause confusion, to cause mistake, to deceive, or to falsely suggest a connection with the Corporation or any Olympic activity;
shall be subject to suit in a civil action by the Corporation for the remedies provided in the Act of July 5, 1946 (60 Stat. 427; popularly known as the Trademark Act of 1946). However, any person who actually used the emblem in subsection (a)(2), or the words, or any combination thereof, in subsection (a)(4) for any lawful purpose prior to September 21, 1950, shall not be prohibited by this section from continuing such lawful use for the same purpose and for the same goods or services. In addition, any person who actually used, or whose assignor actually used, any other trademark, trade name, sign, symbol, or insignia described in subsections (a)(3) and (4) for any lawful purpose prior to enactment of this Act shall not be prohibited by this section from continuing such lawful use for the same purpose and for the same goods or services.
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(c) The Corporation shall have exclusive right to use the name "United States Olympic Committee"; the symbol described in subsection (a)(1); the emblem described in subsection (a)(2); and the words "Olympic," "Olympiad," "Citius Altius Fortius," or any combination thereof subject to the preexisting rights described in subsection (a).
Of those provisions of the Amateur Sports Act of 1978 quoted above, the critical provision for purposes of examining an application under the Trademark Act is Section 110(c) (36 USC 380), which makes it unlawful for anyone other than the U.S. Olympic Committee to use certain designations, subject to any preexisting rights as set forth in Section 110(a) (36 USC 380). A term that may not be lawfully used may not be registered as a trademark or service mark. By contrast to Section 110(c), Section 110(a) provides this Office no basis for refusing registration. Instead, that section provides that one who uses the designations reserved to the U.S. Olympic Committee, without the permission thereof, shall be subject to a civil action for the remedies provided in the Trademark Act of 1946. See U.S. Olympic Committee v. Olymp-Herrenwaschefabriken Bezner GmbH & Co., 224 USPQ 497 (TTAB 1984).
*3 In this case, the Examining Attorney contends that applicant's use of the mark OLYMPIC CHAMPION on socks is unlawful under Section 380(c) of the 1978 Act; in particular, that "socks" were not items on which applicant (or applicant's assignor) had used the mark prior to the September 21, 1950 Act; and, that, therefore, applicant's use of its mark on socks is not made lawful by the grandfather clause [FN6] of the 1978 Act. On the other hand, applicant contends that when it used OLYMPIC CHAMPION on socks, a few months prior to the effective date of the 1978 Act, its use on those goods was lawful, by virtue of the grandfather clause of the 1950 Act. Applicant maintains, further, that the grandfather clause of the 1978 Act preserves the rights conferred by the grandfather clause of the 1950 Act. The language in the 1950 Act to which applicant refers is found in Section 9, set out below:
Provided, however, That any person, corporation, or association that actually used, or whose assignor actually used, the said emblem, sign, insignia, or words for any lawful purpose prior to the effective date of this Act, shall not be deemed forbidden by the Act to continue the use thereof for the same purpose and for the same class or classes of goods to which said emblem, sign, insignia, or words had been used lawfully prior thereto.
The first issue that we must decide is whether applicant's expansion of use of its mark OLYMPIC CHAMPION in January 1978 to include use on socks was lawful under the grandfather clause of the 1950 Act. To resolve that issue, we must determine whether applicant's use of its mark on socks was use of its mark "for the same purpose and for the same class or classes of goods" as was the use of its mark prior to the effective date of the 1950 Act. To help us determine the meaning of these words, we have examined the legislative history of both the 1950 Act and the 1978 amendment thereof. The legislative history of the 1950 Act [House Report (Judiciary Committee) 2926, Aug. 15, 1950 and House Report (Judiciary Committee) 2523, Sept. 7, 1950 (To accompany H.R. 9111) ] contains no language from which we might perceive the intent of Congress when it used the terminology "shall not be deemed forbidden by the Act to continue the use thereof ... for the same purpose and for the same class or classes of goods ...". (emphasis added). The applicant has taken the position that the intention was to refer to the Patent and Trademark Office's system for the classification of goods and services, in which case, it is argued, the added goods fall within the same class of goods as the goods originally set forth in the applicant's registration. We agree with the Examining Attorney to the extent that we do not believe that the framers of this legislation had the internal classification system of the Patent and Trademark Office in mind when they made this statement. Apart from the absence of any remarks in the legislative history on this point, we note that the Office classification system is not static, as evidenced by the change made by the Office in 1973 when it adopted the International Classification system of goods and services. It is unlikely that Congress intended to include wording which could change in meaning with time. Another fact which supports our conclusion is that there are widely disparate items of goods included within certain classes so that the use of that terminology might well open the floodgates of expansion under Section 9 of the Act of 1950. For example, Class 18 includes such items as umbrellas and parasols as well as harness and saddlery, while letter boxes and mattresses may both be found in Class 20.
*4 In the absence of any guidance as to the meaning of a particular word, one must, in accordance with the rules of statutory construction, interpret words according to their commonly understood meaning. See U.S. v. Cuomo, 525 F.2d 1285, 1291 (5th Cir.1976). The commonly understood meaning of a particular word in the United States may be found in a dictionary of the English language. [FN7] As can be seen from the definitions below, the ordinary meaning of the word "class" has not changed over the years. Thus, "class" is understood to mean:
4. A group of persons, things, qualities or activities having common characteristics or attributes; a set, a kind, description, species or variety. (Webster's New International Dictionary 2d ed. 1957)
3. A number of objects, facts or events having common accidental or essential properties; a set, kind, variety. (Funk & Wagnalls New Standard Dictionary of the English Language 1959)
1. A set, collection, group or configuration containing members regarded as having attributes or traits in common; a kind or category. (The American Heritage Dictionary 3d ed. 1992)
As the Examining Attorney has stated, the dictionary meanings of the word "class" indicate that members of a class have shared attributes or characteristics. However, this is where our view and the Examining Attorney's take divergent paths. The Examining Attorney finds in "socks" attributes quite different from those found in the other goods set forth by applicant. However, we find the distinctions made by the Examining Attorney, i.e., that socks are commonly of knit construction, sold in pairs and specially constructed to conform to the shape and size of feet, to be strained. The sweatbands, polo shirts, sweat shirts and athletic shirts identified in applicant's registrations share a number of characteristics with socks, since they are all commonly constructed of knitted textile fabrics and all are articles of clothing worn at the same time for the same activities. It is the opinion of the Board that "socks", having these attributes in common with the other named goods, are goods of "the same class" and that the expansion to include those goods after the passage of the 1950 Act was lawful within the provisions of Section 9 of that Act.
The next issue to be resolved is whether applicant's use of OLYMPIC CHAMPION on socks, which use was, as we have determined, lawful under the grandfather clause of the 1950 Act, was made unlawful by the provisions of the 1978 Act. We find no provision in the 1978 Act that directly resolves that issue. So, we have once again referred to legislative history [in this case, House Report 95-1627, Sept. 25, 1978 (To accompany S. 2727), Cong.Record Vol. 124 (1978) ] for a clearer understanding of the intent of Congress. In a section of the report entitled "Discussion of Major Provisions of the Bill", it is stated that:
Section 110 allows the USOC to protect (1) the symbol of the International Olympic Committee; (2) the emblem of the USOC; (3) any trademark, trade name, sign, symbol, or insignia falsely representing association with or authorization by, the International Olympic Committee or the USOC; (4) the words "Olympic", "Olympiad", "Citius Altius Fortius", or any combination or simulation thereof falsely suggesting a connection with the USOC by civil action pursuant to the Trademark Act of 1946. The current charter contains a similar provision which provides for a criminal penalty in the case of an unauthorized use. However, this criminal penalty has been found to be unworkable as it requires the proof of a criminal intent. These changes were made in response to a letter from the Patent and Trademark Office of the Department of Commerce to subcommittee Chairman George Danielson ...
*5 The letter to which reference is made is one written on September 12, 1978 by then Commissioner of Patents and Trademarks, Donald W. Banner. The portions of the letter pertinent to this discussion follow:
In lieu of criminal penalties, section 110 provides that violators shall be subject to a suit in a civil action by the Corporation for the remedies provided in the Act of July 5, 1946 (60 Stat. 427, 15 U.S.C. 1051 et. seq., known as the Trademark Act of 1946). The amendment retains the existing Grandfather Clause which permits continued use of designations lawfully used prior to September 21, 1950.
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Section 110 carries forward some prohibitions from the existing statute enacted in 1950 and adds some new prohibitions, e.g. words described in section (a)(4) tending to cause confusion, to cause mistake, or to deceive with respect to the Corporation or any Olympic activity. Accordingly, the Grandfather Clause should reflect the permissible continued use of terms under the existing statute which were lawfully used prior to September 21, 1950, and also the permissible continued use of terms under this bill whose lawful use commenced prior to the enactment of this legislation. This will avoid the preemption of existing lawful uses in both cases. (emphasis added)
Thus, Commissioner Banner expressed the understanding of the Patent and Trademark Office that the grandfather clause, as set forth in the 1978 legislation, permitted the continued use of terms pursuant to the provisions of the existing statute (the 1950 Act) which were lawfully used prior to September 21, 1950. That is, as long as the use prior to 1950 was lawful, that use was permitted to continue under the terms of the statute and that earlier statute clearly stated that use might continue for the "same purpose and for the same class or classes of goods". The fact that the terminology "the same class or classes" was narrowed by the 1978 Act to "the same goods or services" indicates, at least to us, that the framers of the 1978 Act realized that, as previously worded, the grandfather clause permitted, within the parameters of the "same class or classes of goods" language, a certain level of expansion of the pre-1950 uses and one which was effectively eliminated by providing protection for marks covered by the grandfather clause of the 1978 Act only as to the "same goods or services". However, we do not believe that by tightening the wording of the grandfather clause in 1978 it was intended to take away rights which had already accrued prior thereto. Commissioner Banner made that clear in saying that the grandfather clause should reflect the permissible continued use of terms under the existing statute which were lawfully used prior to 1950 and also those under the 1978 bill whose lawful use commenced prior to the enactment of that legislation in order to avoid the preemption of existing lawful uses in both cases.
*6 It is the Board's opinion that applicant's use of the mark OLYMPIC CHAMPION on socks was a lawful use under the provisions of the 1950 Act and was not made unlawful when the Act was later amended.
The Refusals Under Sections 2(a) and (d)
In considering the refusals to register under Sections 2(a) and (d), it must first be determined whether marks whose use is protected by the Amateur Sports Act of 1978 [FN8] may be refused registration pursuant to the provisions of the Lanham Act. Under normal circumstances, one who is a lawful user of a mark is entitled to register that mark under the Lanham Act unless registration is otherwise prohibited by the provisions thereof. [FN9] While the Amateur Sports Act gives to the United States Olympic Committee the right of exclusive use of those designations set forth in Section 110(c) (36 USC 380(c)), with the exceptions defined by the grandfather clause of the Act, neither the Act itself nor the legislative history indicates that Congress intended that these marks are to be treated any differently for purposes of registration than are other marks. That is to say, the Amateur Sports Act governs the right to use certain designations but does not affect the right to register them, except to the extent that it defines what constitutes lawful use thereof. We conclude therefore that, if a conflict arises under Section 2(a) or 2(d) in an application involving a mark or marks protected by the Amateur Sports Act, the examination for purposes of registration must be conducted in the same manner as it would be in the case of any other mark. We do not believe this conclusion presents any conflict with the purpose of the Amateur Sports Act. Nor does this interpretation in any way diminish the protection afforded to the United States Olympic Committee for its various designations inasmuch as the Amateur Sports Act provides the Committee with civil remedies for the purpose of curtailing unlawful uses. Therefore, we now turn to the remaining refusals to register.
Section 2(a)
Registration was refused on the ground that applicant's mark OLYMPIC CHAMPION falsely suggests a connection with the United States Olympic Committee.
In University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 217 USPQ 505 (Fed.Cir.1983), Judge Nies said, with respect to the "false suggestion of a connection" provision of the Lanham Act, that it evolved out of, and embraced, the concepts of the rights of privacy and publicity and, because these rights protect an individual's control over the use of his "identity" or "persona", the elements of a claim of invasion of privacy and, therefore, of "false association", are distinctly different claims from those involving trademark or trade name infringement. Thus, the test to be met for finding a false suggestion of a connection with one's persona differs from that for a finding of likelihood of confusion as to the source of one's goods.
*7 To support a Section 2(a) refusal that a mark "falsely suggests a connection" with another person (including a corporation or an institution), it must be shown that the applicant's mark is the same as or a close approximation of a previously used name or identity of that other person; that the mark would be recognized as such (i.e., that the mark points uniquely and unmistakably to that person); that there is no connection between the person named by the mark and the activities performed by the applicant under the mark; and, that the person's name is of sufficient fame or reputation that a connection with such person would be presumed when the applicant's mark is used on its goods or services. See Buffett v. Chi-Chi's, Inc., 226 USPQ 428 (TTAB 1985) and Consolidated Natural Gas Co. v. CNG Fuel Systems, Ltd., 228 USPQ 752 (TTAB 1985).
The question is not whether the word "Olympic" falsely suggests a connection with the persona or identity of the United States Olympic Committee's but whether applicant's mark OLYMPIC CHAMPION does. It is our opinion that OLYMPIC CHAMPION is not a close approximation of the name or identity of the United States Olympic Committee, but, that they are in fact different. Nor can we say on the basis of the record before us that the mark OLYMPIC CHAMPION "points uniquely and unmistakably" to the United States Olympic Committee inasmuch as that term may as likely point to a contestant representing a country other than the United States in the Olympic games. See Calvin Klein Industries Inc. v. Calvins Pharmaceuticals Inc., 8 USPQ2d 1269 (TTAB 1988) [The mark CALVINS was found not to falsely suggest a connection with Calvin Klein inasmuch as the opposer had failed to show that the term CALVINS is associated solely with the opposer.] The Examining Attorney has failed to sustain the burden of proving that applicant's mark creates a false suggestion of a connection with the United States Olympic Committee. [FN10]
Section 2(d)
Applicant's mark has also been refused registration in view of registrations owned by the United States Olympic Committee for the marks OLYMPIC, UNITED STATES OLYMPIC COMMITTEE and USA OLYMPICS. The word OLYMPIC(S) is common to all of the involved marks. OLYMPIC is not only a common feature of the marks, but it is the dominant feature thereof. It is well settled that more weight may be given to a particular word or feature of a mark when that word or feature has a greater impact than any other word or feature of the mark in creating its commercial impression. See In re National Data Corporation, 753 F.2d 1056, 224 USPQ 749 (Fed.Cir.1985). The word OLYMPIC has the same suggestive significance in both parties' marks, namely, that of the international athletic competition in which recognition is given to those who prove to be the best athletes in their particular sport. Indeed, the word OLYMPIC is an adjective defined as "[O]f or belonging to the Olympic games". (The American Heritage Dictionary 1992) Thus, since the remaining portions of applicant's mark and of the marks UNITED STATES OLYMPIC COMMITTEE and USA OLYMPICS are subordinate and serve to define some aspect of the athletic competitions, it is the word OLYMPIC(S), common to all of the marks, which would be relied upon as the source identifying part. We believe that when the marks of these parties are used on similar or related goods, they are likely to cause confusion, mistake or to deceive.
*8 In this case, the goods are quite similar. Applicant's goods are polo shirts, sweatpants, sweatshirts, athletic shirts and socks--clothing items quite similar to or, at the very least, related to the clothing items for which registrant has registered its marks (i.e., warmup uniforms, track shoes, shirts, etc.).
It is the Board's opinion that there is a likelihood of confusion between the mark OLYMPIC CHAMPION and each of registrant's marks as used on the respective goods of the parties. [FN11]
Decision: The refusal to register on the ground that use of OLYMPIC CHAMPION is unlawful is reversed. The refusal to register under Section 2(a) is reversed. The refusal to register under Section 2(d) is affirmed.
L.E. Rooney
T.J. Quinn
G.D. Hohein
Members, Trademark Trial and Appeal Board
FN1. Regn. No. 287,322 for the mark OLYMPIC CHAMPION issued September 22, 1931 to O-C Manufacturing Company for bathing suit belts, athletic flannel and elastic headbands, bathing girdles, polo shirts, sweatpants, sweatshirts, athletic shirts and running pants for men, women and children. The registration was thrice renewed.
FN2. Regn. No. 640,363 issued to Francis H. Montmarquet dba The O-C Manufacturing Company on January 22, 1957 and subsequently assigned to Taren Holdings, Inc. A section 8 affidavit was accepted and the registration was renewed.
FN3. Regn. No. 968,566 for the mark OLYMPIC issued September 18, 1973 for, inter alia, regular and warmup uniforms used in connection with track and field games ... and track shoes. Section 8 affidavit accepted.
Regn. No. 980,734 for the mark UNITED STATES OLYMPIC COMMITTEE (the words United States have been disclaimed) and design issued March 26, 1974 for, inter alia, uniforms, jackets, coats, pants, shirts, hats and caps, hosiery, shoes and ties, Section 8 affidavit accepted.
Regn. No. 1,458,432 for the mark USA OLYMPICS (the letters USA have been disclaimed) issued September 22, 1987 for footwear, namely, shoes.
FN4. The 1950 Act is entitled "AN ACT To incorporate the United States Olympic Association" and is referred to therein as "a body corporate by the name of 'United States Olympic Association' (hereinafter referred to as the 'corporation'). In Section 103 of the Amateur Sports Act of 1978 definitions of terminology are set forth. Section 103(4) reads " 'Corporation' means the United States Olympic Committee". Thus, it appears that these names may be used interchangeably.
FN5. Applicant has discussed a difference in wording in the Amateur Sports Act of 1978 as it appears in West's United States Codes Annotated and in the Statutes at Large. The Examining Attorney concedes that the Statutes at Large take precedence in such a case.
FN6. A "grandfather clause" is "an exception to a restriction that allows all those already doing something to continue doing it even if they would be stopped by the new restriction." (Black's Law Dictionary 5th ed. 1979)
FN7. It was suggested by the court in the case of In re McGinley, 660 F.2d 481, 211 USPQ 668 (CCPA 1981)--a case involving the question of whether a mark was "scandalous"--that where there is a paucity of legislative history relevant to the provision under discussion, one must look to the "ordinary and common meaning" of that term and that may be established by reference to decisions of the Court and the Board and dictionary definitions.
FN8. As we have previously noted, the grandfather clause of the Amateur Sports Act permitted the continued use of terms which were lawful under the grandfather provision of the earlier Act.
FN9. The Act of 1950 specifically stated in Section 9 that use of the prohibited terms and emblems, for the purposes set forth therein, would be unlawful from and after the passage of the Act. Commissioner Banner noted in his letter to Chairman Danielson that, as then drafted, the Amateur Sports Act failed to make the unauthorized use of the various designations unlawful but, instead, made the user thereof subject to a civil action. It was suggested that a new subsection be added to make it clear that the Corporation has exclusive right to use certain designations. This suggestion was incorporated as Section 110(c). It is under this section that the Office may refuse registration on the ground that unauthorized use of the named designations is unlawful.
FN10. We note that the refusal under Section 2(a) referred simply to a false suggestion of a connection with the United States Olympic Committee. Presumably this was intended to refer to an "institution" rather than to a "national symbol". In any event, a refusal based on the latter could not be sustained inasmuch as the Supreme Court specifically stated that "[T]he fact that Congress granted it a corporate charter does not render the USOC a Government agent." See San Francisco Arts & Athletics Inc. v. United States Olympic Committee 107 S.Ct. 2971, 3 USPQ2d 1145 (1987). Thus, the designations to which exclusive use has been granted to the USOC would not be considered "national symbols".
FN11. We recognize that applicant owns a registration for the mark OLYMPIC CHAMPION for all of the identified goods with the exception of "socks" which was registered in 1931 and a registration for the mark OLYMPIC for the same goods registered in 1957, both based on use since 1912. Whether or not these registrations were cited as bars to the marks registered by the United States Olympic Committee when the applications therefor were filed in 1971 and thereafter is not revealed by this record.