Bad for the Juice: The TTAB’s phantom tag

Originally posted 2015-05-13 15:50:58. Republished by Blog Post Promoter

No, not that Juice.  He’s got enough trouble already.  (And no, not the Juice that has this guy all in a froth either.)  I write, rather, about the too-clever-by-half would-be parodists recently sluiced through the ringer by a family-size panel of the TTAB in a case reported by, of course, John Welch, to wit:

An augmented panel (seven judges) of the TTAB sustained an opposition to registration of the mark THE HOUSE THAT JUICE BUILT for T-shirts, baseball caps, hats, jackets and sweatshirts, the mark “THE HOUSE THAT JUICE BUILT” for mugs, and the design mark shown immediately below for “T-shirts, baseball caps, hats, jackets and sweatshirts,” finding the first two marks likely to cause dilution-by-blurring of the Yankees’ registered marks THE HOUSE THAT RUTH BUILT and the third likely to dilute its “Top Hat” design mark. The Board declined to consider applicant’s parody defense in its Section 43(c) analysis, because applicant asserted an intention to use the opposed marks as source indicators, which by definition is not a noncommercial use or a “fair use” exempted from a dilution claim. New York Yankees Partnership v. IET Products and Services, Inc., Opposition No. 91189692 (May 8, 2015) [precedential].

There’s a lot going on here, and John methodically mows through this Murderer’s Row of trademark jurisprudence at his post.  What John is too delicate to mention is the central gag here:  The house that “juice built,” see, is the house that “juice” — steroids — built.  As the decision notes,

Applicant makes clear that it selected its THE HOUSE THAT JUICE BUILT mark to evoke Opposer’s famous mark for parodic purposes.  Applicant’s President, Steven Lore, testified that its marks “play off of the idea that steroids are a player on MLB teams and the Yankees.”

“A player…” Lots of inside-baseball type lingo in this case.  But by now, hopefully, you get the joke.  In any event, I recommend John’s post just to help you remember a whole bunch of trademark law or to learn what you never did, as I do whenever I read his blog. I was, however, particularly interested in this bit:

Fame of THE HOUSE THAT RUTH BUILT: Applicant conceded that the phrase THE HOUSE THE RUTH BUILT, as used by the press and public, is famous as referring to Yankee Stadium, but it contended that the phrase is not famous as a trademark. The Board observed that the first factor for assessing fame is the “duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.” [Emphasis in original]. In addition, the Board has occasionally found that “a nickname or a trade name for a product or service may acquire trademark significance when the public has come to know and use it as such ‘even if the company itself has made no use of the term.'” [E.g., AMEXCO, BIG BLUE, and BUNNY CLUB]. Here, opposer had registered and used the mark for licensed merchandise. The Board found that opposer’s “use of its stadium, which Applicant admits had been known by the nickname THE HOUSE THAT RUTH BUILT since the 1920s, has resulted in widespread recognition of that mark in association with Opposer’s baseball services.” Extensive media coverage confirmed the fame of the mark.

Does that sound right to you?  This strikes me as a sort of sub rosa trademark-tacking, or perhaps fame-tacking, business.  The TTAB’s argument doesn’t actually address the Applicant’s point:  Is THE HOUSE THAT RUTH BUILT famous as a trademark, such that Applicant’s proposed registered trademark would dilute its famous secondary meaning?

The TTAB responds, yes it’s famous! And it is. And yes, it’s a trademark!  And it is. So there.  Famous plus trademark equals famous trademark, right?

Well, no.  The question — an important legal one, right? — was:  Is it famous as a trademark — do consumers associate goods and services sold using this trademark with a single source to an extent that it can be said to be famous? Based on the record set out in this opinion, it does not appear that the answer is in the affirmative.

It appears, however, that if you’re famous (as the Yankees are), and you’ve got famous trademarks (such as the Yankees do), that’s close enough to include your not-so-famous-trademarks as famous, too, when you want the benefits afforded famous marks.  And that includes refusal to register by the PTO on grounds of likelihood of dilution.

In baseball they call that a “phantom tag.”  And getting the benefit of such a play — well, that’s the kind of sports “luck” typically associated with outfits such as the New York Yankees.

The lesson:  In litigation, it always helps to have juice.