Los Angeles Rams Football Co., St. Louis Rams Football Co. and National Football League Properties, Inc.v.Johnny Blastoff, Inc.

Trademark Trial and Appeal Board

Jan 23, 2001

OPP (T.T.A.B. Jan. 23, 2001)

1/23/01
TJQ
Opposition No. 102,722
Los Angeles Rams Football
Company, St. Louis Rams
Football Company, and
National Football League
Properties, Inc.
v.
Johnny Blastoff, Inc.
Opposition No. 108,292
St. Louis Rams
Partnership and National
Football League
Properties, Inc.
v.
Johnny Blastoff, Inc.
Before Simms, Quinn and Rogers, Administrative Trademark
Judges.
By the Board:
Applications have been filed by Johnny Blastoff, Inc.
to register the mark shown below
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 102,722 and 108,292
2
for a variety of products in International Classes 16 and
25.1
Registrations have been opposed by the above-named
opposers on the grounds of priority and likelihood of
confusion with opposer’s ST. LOUIS RAMS and RAMS marks used
in connection with a wide variety of goods and services.
Applicant, in its answers, denied the salient
allegations of the notices of opposition.
In view of the common issues of law and fact involved
in these proceedings, and inasmuch as opposers have moved
for summary judgment in both cases, the two oppositions are
hereby consolidated. The Board will issue a single opinion
in this consolidated matter.
This case now comes up on opposers’ motion for summary
judgment based on a final determination in a civil action
between the parties. Opposers assert that in the civil
action, it was determined that opposers have prior rights in
the mark ST. LOUIS RAMS and that applicant’s mark is likely
to cause confusion with opposers’ mark. Opposers maintain
that these issues were decided by the United States District
Court for the Western District of Wisconsin, the United
States Court of Appeals for the Seventh Circuit and the
Supreme Court of the United States (by denial of applicant’s
1 Application Serial Nos. 74/659,944 and 74/644,300,
respectively, filed March 10, 1995, each alleging a bona fide
intention to use the mark in commerce.
Opposition No. 102,722 and 108,292
3
petition for a writ of certiorari). Thus, according to
opposers, applicant is estopped from asserting any rights to
use the term ST. LOUIS RAMS and owning registrations
therefor. Opposers’ motion is accompanied by copies of the
appropriate decisions of the involved courts.
Applicant has objected to opposers’ motion, essentially
contending that the underlying civil action does not dispose
of the opposition proceedings. Applicant advances a variety
of arguments, none of which merit specific mention given the
clear import of the final decision in the civil action.2
Opposers filed a reply brief.
In the case of Johnny Blastoff, Inc. v. Los Angeles
Rams Football Co., St. Louis Rams Partnership, National
Football League Properties, Inc., et al., 188 F.3d 427, 51
USPQ2d 1920 (7th Cir. 1999), aff’g, 48 USPQ2d 1385 (W.D.WI.
1998), the Seventh Circuit affirmed the district court’s
holdings in opposers’ favor on the issues of priority and
likelihood of confusion.
Insofar as priority is concerned, the Seventh Circuit
stated that “we agree with the district court’s
determination that the [opposers] had acquired protectable
rights in the ‘St. Louis Rams’ mark prior to [applicant].”
2 In this connection, we note, parenthetically, the district
court judge’s observation that “[t]hroughout this litigation,
[applicant’s] filings with this court have shifted from the
frustratingly vague to the utterly cryptic to the inexplicably
absent.”
Opposition No. 102,722 and 108,292
4
Id. at 1925. The Seventh Circuit went on to state that in
view of opposers’ superior rights, “[applicant], which has
never been part of the NFL in any manner, shape, or form, is
precluded from using the ‘St. Louis Rams’ mark.” Id. at
1928.
With respect to likelihood of confusion, the Seventh
Circuit noted that applicant did not contest that a
likelihood of confusion existed in view of applicant’s
belief that the public associated applicant’s apparel and
sundries with opposers’ football club. On appeal, according
to the Seventh Circuit, applicant appeared to blame opposers
for having caused a likelihood of confusion to exist, now
framing the issue as one of reverse confusion. The Seventh
Circuit found this argument lacking because “[applicant] is
not the senior user and furthermore has no protectable
rights to the ‘St. Louis Rams’ mark.” Id. at 1926. The
Seventh Circuit found that applicant’s own statement that
the public associated applicant’s products with opposers’
football club compelled a holding of likelihood of
confusion. Accordingly, the Seventh Circuit concluded that
the district court did not err in finding that a likelihood
of confusion between the parties’ marks exists.
Applicant’s petition for rehearing was denied by the
Seventh Circuit on August 31, 1999. The Supreme Court of
Opposition No. 102,722 and 108,292
5
the United States, on February 28, 2000, denied applicant’s
writ of certiorari.
Contrary to applicant’s arguments, the Seventh
Circuit’s clear and unambiguous holdings that applicant has
no rights to the involved mark and that, therefore,
applicant is precluded from using the mark, mandate that
registration be refused to applicant.3 In the words of a
noted commentator and professor, “[i]f a court decides that
a person either has or does not have the exclusive right to
use of a mark, it is difficult to see how this determination
can be anything less than conclusive of the right to federal
registration.” 5 J.T. McCarthy, McCarthy on Trademarks and
Unfair Competition, §32:94 (4th ed. 1999). Attention is
directed to the case of Tuvache, Inc. v. Emilio Pucci
Perfumes International, Inc., 263 F.Supp. 104, 152 USPQ2d
574, 576 (SDNY 1967), wherein the district court cited with
approval the following language in the case of Squirrel
3 In the civil action, each party requested that the district
court order the Office to reject the other party’s applications
to register the ST. LOUIS RAMS mark. The district court
indicated in its decision that it lacked authority over the
registrability issues raised herein. On appeal, the Seventh
Circuit viewed applicant’s contentions on this point as
“unsupported or cursory,” stating that “[b]ecause the [applicant]
has failed to adequately challenge this issue on appeal, we need
not reach a conclusion concerning the trial court’s authority to
order the PTO to reject trademark applications.” Id. at 1928.
In their papers herein, the parties have referred to their other
applications, none of which are involved in these proceedings.
Opposers should take appropriate action relative thereto on the
basis of this decision.
Opposition No. 102,722 and 108,292
6
Brand Co. v. Barnard Nut Co., 101 USPQ 340 (Comm’r Pat.
1954):
Rights in trade marks grow out of their
use. Use is a prerequisite to
ownership, and use in commerce by the
owner is a prerequisite to registration.
Although the ultimate finding of the
tribunals of the Patent Office in
proceedings such as these is the right
of an applicant to register,
nevertheless there must be a finding of
the right to use in commerce before that
ultimate finding can be made. The
Court, in the civil action, will
necessarily determine this preliminary
question of the right to use, and that
determination will form the basis of the
ultimate finding of the Office.
Simply stated, if the Court concludes
that this defendant (applicant) has the
right to use its mark in commerce, it
has a right to register; if the Court
concludes that the defendant (applicant)
has no right to use its mark, it has no
right to register;...[emphasis added]
In view of the final determination in the civil action,
wherein the Seventh Circuit found that applicant has no
rights to the involved mark and is precluded from using the
mark, opposers’ motion for summary judgment is granted. The
oppositions are sustained, judgment is entered against
applicant, and registrations to applicant are refused.