Is “The Vitamin Shoppe” too generic of a name for the parent company to obtain trademark registration? After a year-long battle within the Trademark Trial and Appeal Board (TTAB) system, the answer is a resounding yes. Without a disclaimer for the entire mark, the TTAB was unwilling to reverse the U.S. Patent and Trademark Office’s (USPTO) refusal of the applications for registration.
Chicago Cubs Baseball Club, LLC has filed a notice of opposition with the Trademark Trial and Appeal Board (TTAB). The Cubs believe that its club will be damaged if the U.S. Patent and Trademark Office (USPTO) chooses to register the marks “FLY THE W” and “1908 IS ENOUGH.” The Cubs are very well known for their World Series drought of over 100 years, winning the World Series in 1908 and then not winning the World Series again until 2016. The Chicago Cubs are famous for a tradition that started in the 1930s of flying a white flag with the letter “W” over its ballpark, Wrigley Field, on days that the team wins. The press often refers to the flag as “the W.”
Registering protectable marks with the USPTO can be a complex process and is not always as simple as just filing an application. Heitner Legal can file your trademark application, and then guide you when the process is more complicated than that. Heitner Legal has a great deal of experience with this sort of transactional trademark work, as well as in trademark litigation.
Chicago Cubs Baseball Club, LLC opposes registration of these marks based on priority and likelihood of confusion. The Cubs claim that the organization has promoted and advertised the sale of an extremely wide variety of goods and services in connection with W marks. The Cubs own five different registrations for these “W” marks and claim exclusive right to use these registered marks.
The Applicant for “FLY THE W” and “1908 IS ENOUGH” is the owner of Where Were You When…?, a sports and lifestyle apparel company. The Cubs believe these two marks are confusingly similar to its own W Marks and that a strong likelihood of consumer confusion is present. The strongest argument for the applicant is perhaps the fact that many of its products have to do with historic sports moments.
If the USPTO does not find the notice of opposition persuasive, it may choose to register “FLY THE W” and “1908 IS ENOUGH.” On the other hand, if the the USPTO chooses to refuse registration based on the Cubs opposition, Where Were You When…? will be faced with responding to that office action.