Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 NATIONAL FOOTBALL LEAGUE
v.
JASPER ALLIANCE CORPORATION
Opposition No. 77,966
August 13, 1990
Before Sams, Rooney and Hanak
Members
Opinion by Rooney
Member
An application was filed by Jasper Alliance Corporation to register the mark SUPER BOWL for greeting cards. Use since June 12, 1987 was alleged. Registration has been opposed by the National Football League (NFL) on the grounds that, since long prior to the alleged date of first use of SUPER BOWL by applicant, opposer has continuously and extensively used the mark SUPER BOWL in connection with entertainment services in the form of the NFL's annual championship game; that, to promote and sustain interest in NFL football in general and the SUPER BOWL game in particular, opposer has, itself or through authorized entities acting on its behalf, engaged in a wide range of commercial activities that prominently feature the mark SUPER BOWL, such activities predating applicant's alleged date of first use; that the souvenir merchandise to which the mark is applied, with opposer's consent, includes caps, t-shirts, key chains, mugs, pens, tote bags, lighters and banks, printed products, namely, postcards, posters, playing cards and bumper stickers; that opposer is the owner of an incontestable registration for the mark SUPER BOWL for entertainment services in the nature of professional football games; [FN1] and that, as used on its identified goods, applicant's mark so resembles opposer's mark, as applied to the goods of opposer, as to cause confusion, mistake or deception.
Applicant's answer, [FN2] in effect, denies the allegation of likelihood of confusion and affirmatively pleads that there are a number of third-party registrations and uses for the mark SUPER BOWL on other goods.
This case now comes up on opposer's motion for summary judgment asserting that there are no genuine issues of material fact to be resolved and that opposer is entitled to judgment as a matter of law. Applicant has filed a brief in opposition to the motion.
In support of its motion, opposer has filed the affidavits of Jay Moyer, Executive Vice President and League Counsel of Opposer, John H. Flood III, Executive Vice President and General Counsel of National Football League Properties, Inc., the exclusive licensing company of opposer and of Gary M. Gertzog, associated with the law firm representing opposer. Mr. Moyer's and Mr. Flood's affidavits are each accompanied by a number of exhibits, which include status and title copies of opposer's registration. Mr. Gertzog's affidavit is accompanied by copies of portions of the discovery depositions of Mr. Steven Patrick Jasper and Mr. Gregory Alan Jasper, applicant's officers.
The facts, which are supported by the foregoing evidence, are as follows. The NFL is an unincorporated association of 28 member clubs. Each of the clubs operates a professional football team which plays in preseason, regular season, and postseason games, all of which culminate in the final game of the season, the championship game called the SUPER BOWL. Millions of fans attend the games and there is extensive nationwide coverage via print and electronic media. NFL games are extremely popular. Televised NFL games are watched by 75 million people in 30 million households across the country. More than 120 million people watch the Super Bowl game each year.
*2 Member clubs have each adopted and use certain distinctive marks, names, nicknames, symbols, emblems, uniform designs, team colors and other identifications. The NFL itself has adopted and used various marks. The term, SUPER BOWL, was first used as a mark in 1967 and was registered in 1969.
The NFL marks have been exclusively licensed by the NFL and the member clubs to National Football League Properties, Inc. (NFLP) which is responsible for licensing the marks to third parties for commercial use, for protecting the NFL marks from infringement and for promoting the interests of the NFL and member clubs by engaging in publishing, promotional and marketing activities. NFLP has established an extensive licensing program in which over 200 selected companies are licensed to use the NFL marks on a wide variety of merchandise. Each year a number of national and local licenses are issued for use of the NFL marks on t-shirts, sweatshirts, wearing apparel, novelty items, greeting cards, postcards, coasters, trading cards and bumper stickers.
Since 1978, NFLP has licensed the production and sale of a wide array of souvenir merchandise bearing the SUPER BOWL mark including printed products. Postcards bearing the SUPER BOWL mark, have been sold since 1984. For the past year's game, over 75 companies received licenses from NFLP to use SUPER BOWL on a wide variety of merchandise. The SUPER BOWL marked products are featured in television and radio commercials and in major magazines and newspapers. Total retail sales of such merchandise for the past four years have exceeded 65 million dollars.
NFLP has an active trademark enforcement program to protect the SUPER BOWL mark and has on several occasions obtained judicial seizure orders to confiscate and restrain the sale of unlicensed merchandise bearing the SUPER BOWL mark. It is opposer's position that issuance of a registration to applicant will cause the public to believe that applicant's greeting cards are sponsored, authorized or licensed by the NFL.
Applicant filed a brief in which it concedes that the SUPER BOWL game is a very popular event, agrees that the NFL owns a registration for the mark SUPER BOWL, as alleged, and has, through the NFLP, licensed the NFL trademarks to third parties for commercial use. Applicant argues, however, that, until the commencement of this proceeding, the scope of paper products involved in the licensing program has been limited to postcards, posters, trading cards and books and that it is significant that opposer has now decided to include greeting cards as a part of the SUPER BOWL product line. Also argued to be significant is the fact that the relied on registration for SUPER BOWL is in Class 107 and no other class, while applicant's application was filed in Class 16. Moreover, applicant notes, while the NFLP has licensed the production and sale of souvenir merchandise related to a specific game primarily in classes 24, 25, and 28, they have not registered in these classes. In addition, applicant argues, the term used by opposer consists of the words SUPER BOWL and a numerical designation indicating a specific sporting event while its own mark SUPER BOWL does not indicate a specific event. Applicant's final argument is that there are third-party registrations and uses of the mark SUPER BOWL for a variety of goods, i.e., toilet bowl cleaner, vegetable shortening, dog food, men's hosiery, a football board game, etc. All of these products, argues applicant, "are registered and for sale in the marketplace" and opposer has allowed these uses while objecting to applicant's use. Applicant's brief was accompanied by a number of exhibits, but no affidavits to support either the arguments in the brief or the exhibits were filed.
*3 Summary judgment is an appropriate method of disposing of cases in which there are no genuine issues of fact in dispute and the matter can be resolved as a matter of law. See Buffett v. Chi-Chi's, Inc., 226 USPQ 428 (TTAB 1985). Its intended purpose is to avoid an unnecessary trial where more evidence than is already available could not reasonably be expected to change the result. See Pure Gold, Inc. v. Syntex (U.S.A.) Inc., 739 F.2d 624, 222 USPQ 741 (Fed.Cir.1984).
While the initial burden on a motion for summary judgment is on the movant, if the movant's position is supported by affidavits and/or other evidence, the respondent must come forward with specific materials of its own to show that there are triable issues of fact or must demonstrate why it cannot do so. See Pure Gold, supra Levi Strauss & Co. v. Genesco, Inc. 222 USPQ 939, 941 (Fed.Cir.1984); Keebler Co. v. Murray Bakery Products, 9 USPQ2d 1737 (Fed.Cir.1989).
It is clear that applicant's response to the motion raises no genuine issue of material fact for resolution. Applicant's conclusion that "there is a genuine issue of material fact for trial" and that "(A)pplicant will supply specific facts, supplied by evidence, that will support its claim" does not raise any issues. [FN3] One cannot avoid summary judgment simply by the unsupported speculation that it may find some evidence in support of its case. See Pure Gold, supra. In the absence of any issues, it appears to this Board that this case is ripe for judgment as a matter of law.
We therefore turn to a consideration of the merits of the opposition. Because opposer owns a valid and subsisting registration of its mark, it is not necessary that we review the question of priority. See Borg Warner Corporation v. Pneumatic Hydraulic Development Co., Inc., 185 USPQ 181 (TTAB 1975). Even if that were not so, the evidence clearly shows that opposer was the prior user of its mark. [FN4]
As to the goods, it is noted that goods do not have to be identical or even competitive in order to find that there is a likelihood of confusion. It is necessary only that they be related in some manner such that their sale under the same or a similar mark would be likely to lead to the conclusion that they originate at the same source or that there is some association between the sources of each. See In re Precise Imports Corporation, 193 USPQ 794 (TTAB 1976) and cases cited therein.
The question of likelihood of confusion, insofar as goods and services are concerned, must be determined on the basis of the goods and services described in the application at issue vis-a-vis the goods or services recited in opposer's registrations. In addition, an opposer may rely upon any of its activities, outside the scope of its registrations, in which it has made prior use of its mark and/or that it has demonstrated to be within the natural expansion of its business under the mark. See Envirotech Corporation v. Solaron Corporation, 211 USPQ 724 (TTAB 1981).
*4 Here it has been shown that opposer licenses numerous companies and/or individuals each year to market products bearing the SUPER BOWL mark. Seventy-five licensees were chosen in 1989. Included among the licensed uses of the mark are paper products which include posters, postcards, napkins, paper plates, paper party goods and streamers.
Applicant mentioned several times in its brief that, despite its (licensed) use on numerous products, opposer has not used SUPER BOWL on greeting cards. Applicant appears to be under the mistaken impression that the goods must be identical in order to cause confusion among the public. [FN5] As we have already stated, that is not so. So long as there is a significant enough relationship between the goods that potential purchasers would be likely to make a connection between them because of the marks thereon, that is all that is required. The paper goods for which the opposer licenses its mark are clearly related to greeting cards. All of these goods are sold in supermarkets, five and ten-cent stores, stationery, grocery, drug, variety and department stores. Many of them are manufactured by the same companies. In addition, the fact that opposer currently uses its other NFL marks on greeting cards is yet another reason why purchasers would be likely to be confused as to source by applicant's use of the SUPER BOWL mark.
It is our view in this case, that the sale of greeting cards would naturally flow from previous sales of paper goods such as posters, post cards, wrapping and paper party goods and that potential purchasers would be quite likely to believe that greeting cards and paper goods such as those marketed by opposer's licensees would emanate from the same source. We therefore conclude that the sale of these goods under the same or a similar mark would be likely to lead to confusion, mistake or deception.
With regard to the marks, it seems abundantly clear that they are identical. Opposer owns a registration of the mark SUPER BOWL, per se. Applicant's argument to the effect that opposer uses the term SUPER BOWL in conjunction with a numerical designation is to no avail. The fact that the numeral is different each year is a clear indication that the numeral does not perform a trademark or service mark function because, in order for a designation to perform as a trademark, it must be a constant part of the mark as a whole. In this case, the numbers change each year indicating only the number of SUPER BOWL games that have been played and providing an easy and quick reference to a particular game.
Applicant's argument that its mark is used on the greeting cards along with its trade name is equally immaterial. Applicant is not seeking to register the mark in conjunction with the trade name. The Section 7(b) presumptions of validity, ownership, and excusive right to use would attach to the mark as shown in the application for registration, which mark does not include the trade name.
From the discovery deposition taken of applicant's officers, it is apparent that applicant was aware of opposer's use of the mark SUPER BOWL at the time it adopted the mark. Moreover, the cards themselves clearly illustrate a football theme. Opposer has indicated its belief that applicant deliberately adopted the mark with the intention of trading on its famous mark. While it appears clear that there was an intent to call to mind the yearly championship game produced by opposer, it also appears that applicant, appearing pro se in this matter, is unsophisticated in trademark matters and sincerely believed that greeting cards, not being among the products sponsored by opposer, were sufficiently unrelated to opposer's activities to avoid any confusion as to source.
*5 Finally, applicant has called attention to a number of advertising uses of the term SUPER BOWL which it believes to be the same as its use and notes that these uses are permitted by opposer. Since there is no evidence showing whether these advertisements ever actually appeared or, if they did, where or when they did so, or who placed them, the copies attached to applicant's brief are not probative evidence. Apart therefrom, in the illustrations provided, the uses appear not to be trademark or service mark use but only references to the Super Bowl game itself. For instance, the advertisement for a "Superbowl cruise" indicates that one of the highlights of the cruise would be widescreen televisions to "bring Superbowl action to life" as well as NFL highlights from past Superbowl games. Others refer to savings to be had during Super Bowl '88 or suggest food to be served at a Super Bowl party. Reference in these noted cases is clearly to the NFL Super Bowl game but in a manner fully recognizing the NFL source of the game. These are not proprietary uses as applicant's use clearly is.
Apart from the foregoing, there is no evidence from which we can conclude that opposer has not, in fact, objected to some or all of the advertising cited by applicant.
Inasmuch as opposer has sustained its burden of proof and applicant has not succeeded in rebutting the evidence, the motion for summary judgment is granted and the opposition is sustained.
J. D. Sams
E. W. Hanak
Members, Trademark Trial and Appeal Board
FN1. Regn. No. 882,283 issued December 9, 1969, Section 8 affidavit accepted, Section 15 affidavit filed.
FN2. Pursuant to Rule 8(b) of the Federal Rules of Practice,
A party shall state in short and plain terms his defenses to each claim asserted and shall admit or deny the averments upon which the adverse party relies. If he is without knowledge or information sufficient to form a belief as to the truth of an averment, he shall so state and this has the effect of a denial.
Applicant's answer is more in the nature of argument than an answer. However, inasmuch as the proceeding has advanced through the discovery period and we now have before us a motion for summary judgment, we will accept the answer as filed.
FN3. Applicant's argument relative to third-party uses and registrations has no support in the record. Although applicant submitted a search report, it is well settled that a search report does not constitute evidence of the existence of a registration or use of a mark. See In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983). Apart therefrom applicant has conceded in its brief that "(O)pposer is famous for the SUPER BOWL game". Thus, third-party evidence would be unlikely to have the desired effect of casting doubt on the strength of opposer's mark.
FN4. Applicant's discovery depositions establish the first use of its mark on the claimed date of June 12, 1987.
FN5. Applicant is also mistaken in its belief that the classification system within the Patent and Trademark Office has some bearing on the question of likelihood of confusion. This is simply not so. The classification system was established for the convenience of the Office rather than to indicate that goods in the same class are necessarily related or that classification in different classes indicates that they are not related. See In re Leon Shaffer Golnick Advertising, Inc., 185 USPQ 242 (TTAB 1974).