Federal Circuit Affirms TTAB’s Refusal of South Carolina Baseball Logo Registration
By Harry Zhou – Edited by Davis Doherty
Univ. of S. Carolina v. Univ. of S. Cal., No. 2009-1064 (Fed. Cir. Jan. 19, 2010).
In a nonprecedential ruling, the Federal Circuit affirmed a decision by the Trademark Trial and Appeals Board (“TTAB”) refusing the appellant’s (“South Carolina’s”) registration of its Carolina Baseball Logo mark and granting summary judgment against the appellant on its counterclaim for cancellation of a trademark registration held by the appellee (“Southern California”).
Despite the absence of evidence of actual confusion, the TTAB held that consumer confusion of goods marketed by the two schools was likely due to similarities in channels of trade and conditions of purchase. Furthermore, the TTAB held that South Carolina lacked standing to bring the counterclaim. On appeal, the Federal Circuit affirmed the TTAB’s conclusion of likely confusion, but ruled that South Carolina had standing as to the counterclaim. But the Federal Circuit upheld the TTAB’s grant of summary judgment on the counterclaim, finding that South Carolina failed to establish any genuine issue of fact.
Patently-O provides a thorough analysis of the opinion. The TTABlog features an overview of the decision and provides a link to the mp3 recording of the oral argument. The Los Angeles Times blog reports the reaction of an attorney representing the University of Southern California in its coverage of the matter.
In determining whether a mark is likely to confuse, both the TTAB and the Federal Circuit followed factors set forth in Application of E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). South Carolina contested TTAB’s decision with regard to “the third, fourth and eighth DuPont factors, which addressed the similarity of trade channels, the care consumers employ when purchasing goods and the absence of evidence of actual confusion.”
As to the third DuPont factor concerning trade channels, South Carolina argued that “university authorized” should be restrictively construed to mean “university controlled.” After an examination of Southern California’s trademark registration history, the Federal Circuit disagreed, holding that “university authorized” should be given a broader reading as suggested by plain language and the prosecution history. As to the fourth DuPont factor concerning conditions of purchase, South Carolina challenged the TTAB’s conclusion that some consumers would exercise less care in distinguishing products of the two schools. The Federal Circuit agreed with South Carolina that the TTAB’s conclusion did not rely upon “substantial evidence,” but deemed the error harmless. Finally, the Federal Circuit concluded that because the two schools marketed goods in different geographic areas, the absence of evidence of actual confusion was neither factually surprising nor legally significant.
Regarding South Carolina’s cancellation counterclaim under Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), the Federal Circuit held that South Carolina had standing to bring the counterclaim because the school had “a commercial interest in registering its mark and a reasonable belief in likely damage.” However, the Federal Circuit affirmed the summary judgment, holding that South Carolina failed to establish a genuine issue of fact on whether the initials “SC” unmistakably pointed to the State of South Carolina. In reaching its conclusion, the Federal Circuit cited evidence showing that “SC” may refer to “at least sixteen other universities and colleges.”
The court labeled its decision as “nonprecedential,” thus limiting the opinion’s potential broader impact.