This Opinion Is a
`Precedent of the TTAB
`
`
`
`
`
`Mailed: May 8, 2015
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`_____
`
`New York Yankees Partnership
`v.
`IET Products and Services, Inc.
`_____
`
`Opposition No. 91189692
`_____
`
`Mary L. Kevlin, Richard S. Mandel, and Maryann E. Licciardi of Cowan, Liebowitz
`& Latman, P.C., for Opposer New York Yankees Partnership.
`
`
`G. Mathew Lombard and Darren M. Geliebter of Lombard & Geliebter LLP,
`for Applicant IET Products and Services, Inc.
`_____
`
`
`Before Rogers, Chief Administrative Trademark Judge, Richey, Deputy Chief
`Administrative Trademark Judge, and Bucher, Zervas, Cataldo, Ritchie, and
`Hightower, Administrative Trademark Judges.
`
`Opinion by Hightower, Administrative Trademark Judge:
`IET Products and Services, Inc. (“Applicant”) seeks to register three marks on
`
`the Principal Register:
`
`• “THE HOUSE THAT JUICE BUILT” (in standard characters) for T-
`shirts, baseball caps, hats, jackets and sweatshirts (as amended), in
`International Class 25;1
`
`
`1 Application Serial No. 77404369, filed February 22, 2008 for registration on the
`Supplemental Register based on Applicant’s allegation of a bona fide intention to use the
`mark in commerce under Section 1(b) of the Trademark Act; amended to seek registration
`
`

`
`Opposition No. 91189692
`
`
`
`• The designation shown at right for T-shirts, baseball
`caps, hats, jackets and sweatshirts, in International
`Class 25;2 and
`
`• THE HOUSE THAT JUICE BUILT (in standard characters) for mugs, in
`International Class 21.3
`New York Yankees Partnership (“Opposer”), which the record shows is owner
`
`of the New York Yankees Major League Baseball club, opposes
`
`registration of the marks on the grounds that they are likely to
`
`cause confusion with certain of its marks, including its top hat
`
`logo design (shown at right) and THE HOUSE THAT RUTH
`
`BUILT, pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d); are
`
`likely to cause dilution of its marks by blurring pursuant to Trademark Act Section
`
`43(c), 15 U.S.C. § 1125(c); and falsely suggest an association with its New York
`
`
`on the Principal Register. The quotation marks are part of the mark. Assignment of the
`application from Steven Lore to Applicant was recorded with the PTO’s Assignment Branch
`on March 10, 2009 at Reel/Frame 3949/0441. The assignments of the three intent-to-use
`applications at issue include no reference to Applicant as a successor to Mr. Lore’s business
`pursuant to Trademark Act Section 10(a)(1), 15 USC § 1060(a)(1). However, in view of the
`Board’s decision, further inquiry into the validity of the assignments is not necessary.
`2 Application Serial No. 76691994, filed August 12, 2008 based on Applicant’s allegation of a
`bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act.
`The description of the mark states: “The mark consists of a hat with white stars against a
`blue hat band, red and white stripes and a white rim, all bordered in black and a tuft of
`blue, all above a white syringe with a black dot within it and bordered in black, which is
`circled with a red universal prohibition symbol.” Assignment of the application from Steven
`Lore to Applicant was recorded with the PTO’s Assignment Branch on March 20, 2009 at
`Reel/Frame 3969/0777.
`3 Application Serial No. 77576227, filed September 23, 2008 based on Applicant’s allegation
`of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark
`Act. Assignment of the application from Steven Lore to Applicant was recorded with the
`PTO’s Assignment Branch on March 10, 2009 at Reel/Frame 3949/0441.
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`

`
`Opposition No. 91189692
`
`Yankees Major League Baseball club pursuant to Trademark Act Section 2(a),
`
`15 U.S.C. § 1052(a). We sustain the opposition on the ground of dilution.
`
`I. Record
`Pursuant to Trademark Rule 2.123(b), the parties stipulated that witness
`
`testimony would be submitted solely by declaration and without cross-examination.
`
`The parties otherwise reserved the right to assert any evidentiary objections to the
`
`testimony contained in any witness declaration on any basis other than the manner
`
`of its submission.4
`
`Opposer made the following evidence of record:
`
`• Declaration of Ethan Orlinsky, with Exhibits A-S.5
`
`• Applicant’s admissions in response to Opposer’s requests for admissions
`and responses to Opposer’s interrogatories.6
`• Numerous printed publications and Internet printouts, many of them
`newspaper articles, relating to use of Opposer’s asserted top hat logo
`design and HOUSE THAT RUTH BUILT marks; Opposer’s participation
`in charitable, community, and anti-drug initiatives; and its sponsorship of
`beverages, including juice products.7
`• Dictionary definitions of the term “juice.”8
`• Printouts from the electronic records of the U.S. Patent and Trademark
`Office (“PTO”) of the registrations for Opposer’s top hat logo design and
`THE HOUSE THAT RUTH BUILT marks, as well as the files of
`
`4 43 TTABVUE. Record citations are to the Trademark Trial and Appeal Board docket
`history system. See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014).
`5 57-58 and 61-63 TTABVUE. Applicant has moved to strike ¶¶ 32-41 and exhibits J-R from
`the declaration. We have not relied on the material Applicant moves to strike and therefore
`do not address Applicant’s motion.
`6 Opposer’s First Notice of Reliance, Exhibits A and B, 49 TTABVUE at 5-85.
`7 Opposer’s Second and Third Notices of Reliance, Exhibits A-D, 49 TTABVUE at 86
`through 55 TTABVUE at 113, 56 TTABVUE, 59 TTABVUE through 60 TTABVUE at 55.
`8 Opposer’s Second and Third Notices of Reliance, Exhibit E, 55 TTABVUE at 114-38, 60
`TTABVUE at 56-72.
`
`- 3 -
`
`

`
`Opposition No. 91189692
`
`registrations of the marks THE HOUSE THAT GEORGE BUILT and
`THE HOUSE THAT JETER BUILT.9
`Applicant introduced the following evidence:
`
`• Declaration of Steven Lore, with Exhibits A-M.10
`• Opposer’s responses to Applicant’s interrogatories and admissions in
`response to Applicant’s requests for admission.11
`• Printed publications and Internet printouts, including the 2007 Mitchell
`Report of an investigation into the illegal use of steroids and other
`performance enhancing substances by Major League Baseball players; and
`news articles mentioning the illegal use of steroids and other performance
`enhancing substances by Major League Baseball players, including
`players for Opposer’s club.12
`• Printouts from the electronic records of the PTO and Internet printouts
`relating to the third-party marks THE HOUSE THAT ROCK BUILT and
`THE HOUSE THAT FEAR BUILT, and records of the Secretary of the
`Commonwealth of Massachusetts relating to registration of the mark
`FENWAY THE HOUSE THAT PAPI BUILT.13
`• Printouts from electronic PTO records and Internet printouts relating to
`other third-party HOUSE THAT _____ BUILT formative marks.14
`• An Internet printout announcing that Alex Rodriguez of the New York
`Yankees would join the Taylor Hooton Foundation “to help fight youth
`steroid and other performance enhancing drug use,” as well as news
`
`
`9 Opposer’s Fourth and Rebuttal Notices of Reliance, Exhibits A-B, 60 TTABVUE at 74-112;
`77 TTABVUE.
`10 66-68 TTABVUE.
`11 Applicant’s First Notice of Reliance, Exhibits 1-B through 1-D, 69 TTABVUE at 23-100.
`Applicant also submitted Opposer’s responses to Applicant’s document requests, but such
`responses generally are inadmissible unless they state that no responsive documents exist.
`See United Global Media Group, Inc. v. Tseng, 112 USPQ2d 1039, 1044 (TTAB 2014). Also,
`we have considered only Opposer’s admissions, not denials, in response to Applicant’s
`requests for admission. See Trademark Rule 2.120(j)(3)(i).
`12 Applicant’s First Notice of Reliance, Exhibit 1-E, Second and Fourth Notices of Reliance,
`and Eighth Notice of Reliance, Exhibit 8-B, 69 TTABVUE at 101 through 71 TTABVUE, 72
`TTABVUE at 182-220, 74 TTABVUE.
`13 Applicant’s Fifth through Seventh Notices of Reliance, 72 TTABVUE at 2-180.
`14 Applicant’s Tenth Notice of Reliance, 73 TTABVUE and 75 TTABVUE at 2-398.
`- 4 -
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`

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`Opposition No. 91189692
`
`stories relating to the same player’s suspension for his role in a
`performance enhancing drug case.15
`• A 2007 article on trademark parody from the website of Opposer’s
`counsel.16
`• Congressional testimony before the Committee on Government Reform,
`U.S. House of Representatives, on Senator Mitchell’s report on the illegal
`use of steroids and other performance-enhancing substances by players in
`Major League Baseball.17
`II. Standing
`Standing is a threshold issue that must be proven by the plaintiff in every inter
`
`partes case. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed.
`
`Cir. 1999). Although neither party addressed standing, Opposer’s standing is
`
`established with respect to its likelihood of confusion and dilution claims by its
`
`registrations for its pleaded common-law marks, its top hat logo
`
`design and THE HOUSE THAT RUTH BUILT, which the record
`
`shows to be valid and subsisting, and owned by Opposer.18 See,
`
`e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
`
`
`
`1842, 1844 (Fed. Cir. 2000). If a plaintiff can show standing on one ground, it has
`
`the right to assert any other grounds in an opposition or cancellation proceeding.
`
`See Corporacion Habanos SA v. Rodriguez, 99 USPQ2d 1873, 1877 (TTAB 2011).
`
`
`15 Exhibit 8-A to Applicant’s Eighth Notice of Reliance, 72 TTABVUE at 221-23, and
`Applicant’s Eleventh Notice of Reliance, 75 TTABVUE at 400-65.
`16 Applicant’s Ninth Notice of Reliance, 72 TTABVUE at 226-59.
`17 Applicant’s Third Notice of Reliance, 76 TTABVUE.
`18 Orlinsky Decl. at ¶ 4 & Exhibit A (printouts of Office records showing status and title of
`Registration Nos. 1032767, 2575644, 3320068, 3320069, 3320070), ¶ 5 & Exhibit B
`(printouts of Office records for Registration Nos. 2884499, 3363883, 3600235). 57
`TTABVUE at 8-9, 28-63.
`
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`

`
`Opposition No. 91189692
`
`III. Dilution by Blurring
`Dilution by blurring is “association arising from the similarity between a mark
`
`or trade name and a famous mark that impairs the distinctiveness of the famous
`
`mark.” Trademark Act Section 43(c)(2)(B). Dilution may be likely “regardless of the
`
`presence or absence of actual or likely confusion, of competition, or of actual
`
`economic injury.” Section 43(c)(1).
`
`Our primary reviewing court, the Court of Appeals for the Federal Circuit, has
`
`set forth the following four elements a plaintiff must prove in a Board proceeding in
`
`order to prevail on a claim of dilution by blurring:
`
`(1) the plaintiff “owns a famous mark that is distinctive;
`(2) the defendant is using a mark in commerce that allegedly dilutes the
`plaintiff’s famous mark;
`(3) the defendant’s use of its mark began after the plaintiff’s mark became
`famous; and
`(4) the defendant’s use of its mark is likely to cause dilution by blurring or by
`tarnishment.”
`Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713,
`
`1723-24 (Fed. Cir. 2012) (“Coach”).
`
`A.
`
`Fame for Dilution
`
`A threshold question in a federal dilution claim is whether the plaintiff’s mark is
`
`“famous.” Coach, 101 USPQ2d at 1724. A mark is famous for dilution purposes “if it
`
`is widely recognized by the general consuming public of the United States as a
`
`designation of source of the goods or services of the mark’s owner.” Trademark Act
`
`Section 43(c)(2)(A). There are four non-exclusive factors to consider when
`
`determining whether a mark is famous:
`
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`Opposition No. 91189692
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`i. The duration, extent, and geographic reach of advertising and
`publicity of the mark, whether advertised or publicized by the
`owner or third parties.
`ii. The amount, volume, and geographic extent of sales of goods or
`services offered under the mark.
`iii. The extent of actual recognition of the mark.
`iv. Whether the mark was registered under the Act of March 3, 1881,
`or the Act of February 20, 1905, or on the principal register.
`Id. While fame for likelihood of confusion is a matter of degree along a continuum,
`
`fame for dilution “is an either/or proposition” – it either exists or does not. Coach,
`
`101 USPQ2d at 1724 (quoting Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
`
`Maison Fondee en 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005)).
`
`Accordingly, a mark can acquire “sufficient public recognition and renown to be
`
`famous for purposes of likelihood of confusion without meeting the more stringent
`
`requirement for dilution fame.” Coach, 101 USPQ2d at 1724 (quoting 7-Eleven Inc.
`
`v. Wechsler, 83 USPQ2d 1715, 1722 (TTAB 2007)).
`
`1. Fame of Opposer’s Top Hat Logo Design
`Opposer relies on its common-law rights in a variety of design marks
`
`incorporating a red-white-and-blue top hat resting on the end of a baseball bat, as
`
`depicted in its opening brief:
`
`
`19 Opposer’s Brief at 11, 80 TTABVUE at 19.
`
`- 7 -
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`19
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`

`
`Opposition No. 91189692
`
`(Collectively, Opposer nominates
`
`the above designs
`
`“Opposer’s Top Hat marks.”) Among these designs, we, like
`
`the parties, focus our analysis on what Opposer characterizes
`
`as its “Top Hat Primary Logo” (shown at right).20
`
`
`
`Applicant does not dispute that Opposer’s top hat design mark is inherently
`
`distinctive and acknowledged during discovery some degree of fame for the mark.
`
`Applicant admitted that “Opposer’s Top Hat Marks are famous as used in
`
`connection with Opposer’s baseball team uniforms and apparel.”21 However, we note
`
`that neither the request for admission nor the response thereto differentiated fame
`
`for dilution purposes from fame for likelihood of confusion purposes. Coach, 101
`
`USPQ2d at 1724 (“Fame for likelihood of confusion and fame for dilution are
`
`distinct concepts, and dilution fame requires a more stringent showing.”). We agree
`
`with Applicant’s acknowledgment of distinctiveness. The record evidence bearing on
`
`fame supports Applicant’s admission that Opposer’s top hat design mark is famous
`
`and is sufficient to overcome the limitations in that admission, so that we also find
`
`the mark famous for dilution purposes, as discussed infra.
`
`Opposer offered no direct evidence regarding the extent of actual recognition of
`
`the mark, the third non-exclusive fame factor. However, Opposer offered substantial
`
`evidence relating to the first two fame factors: the duration, extent, and geographic
`
`reach of advertising and publicity of the mark, and the amount, volume, and
`
`
`20 Id. at 10, 80 TTABVUE at 18; Orlinsky Decl. at ¶¶ 4, 10, 57 TTABVUE at 8, 10.
`21 Applicant’s Response to Opposer’s Request for Admission No. 5, 49 TTABVUE at 16-17.
`“Opposer’s Top Hat Marks” is a term defined in Opposer’s discovery requests.
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`

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`Opposition No. 91189692
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`geographic extent of sales of goods or services offered under the mark. Cf. Bose
`
`Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1308 (Fed. Cir.
`
`2002) (noting, in likelihood of confusion case, that “virtually all of our precedent
`
`attributing fame to a mark has done so through indirect evidence of the extent to
`
`which a mark has earned fame in the consumer marketplace”).
`
`First, Opposer’s witness, Ethan Orlinsky, Senior Vice President and General
`
`Counsel of Opposer’s licensing agent Major League Baseball Properties, Inc.,
`
`testified that Opposer has used the top hat design mark for more than 50 years22
`
`and has used the mark on apparel for more than 40 years.23 Orlinsky testified that
`
`Opposer’s Top Hat Marks are displayed at Opposer’s Yankee Stadium ballpark
`
`during Yankees home games, which have been broadcast nationwide on national
`
`networks such as ESPN, FOX, CBS, NBC, ABC, and TBS, as well as on the Major
`
`League Baseball national cable channel, MLB Network; nationwide through
`
`DirecTV; on the Yankees Entertainment and Sports (YES) Network, a cable TV
`
`channel that broadcasts in New York, New Jersey, Connecticut, and parts of
`
`Pennsylvania; and by subscription through official websites <mlb.com> and
`
`<newyork.yankees.mlb.com>.24 Orlinsky also testified that Opposer’s top hat design
`
`mark is featured on the Yankee Club’s Facebook page, and that its Top Hat Marks
`
`have been used in connection with score lists and channel listings, including for
`
`Sirius XM Satellite Radio services.25
`
`
`22 Orlinsky Decl. ¶ 10, 57 TTABVUE at 10.
`23 Id. ¶ 16, 57 TTABVUE at 15.
`24 Id. ¶ 12, 57 TTABVUE at 11-12.
`25 Id., 57 TTABVUE at 12-13.
`
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`Opposition No. 91189692
`
`Orlinsky testified that: “Since 1995, wholesale sales in the United States of
`
`Yankees Club-licensed products bearing trademarks associated with, promoting or
`
`identifying the Yankees Club, including, without limitation, Opposer’s Top Hat
`
`Marks, have exceeded $1.5 billion.”26 Opposer specified neither how much of that
`
`$1.5 billion in sales was from the time frame most relevant for dilution – that is,
`
`before Applicant filed its applications in 2008 – nor what proportion of those sales
`
`were for goods bearing its Top Hat Marks. See Bd. of Regents, Univ. of Tex. Sys. v.
`
`S. Ill. Miners, LLC, 110 USPQ2d 1182, 1194 (TTAB 2014). However, Opposer did
`
`provide examples of the range of goods on which its Top Hat Marks have appeared,
`
`including goods offered before 2008,27 as well as testimony that those marks have
`
`been used in connection with a variety of local and national sponsorships, among
`
`them Pepsi-Cola, Tropicana, Nike, McDonald’s, Dunkin’ Donuts, AT&T,
`
`MasterCard, Kellogg’s, Delta Air Lines, Gillette and Bank of America.28
`
`Turning to the fourth non-exclusive fame factor, the design has been registered
`
`on the Principal Register since at least 1976. Opposer’s registrations cover baseball-
`
`related services and a variety of collateral goods, including drinking cups and items
`
`of apparel.29
`
`On the basis of Applicant’s admission, and on the record evidence, we find that
`
`Opposer’s top hat design mark is famous for dilution purposes.
`
`26 Id. ¶ 14, 57 TTABVUE at 13-14.
`27 See id., Exhibit E, 58 TTABVUE at 313-16, 366-80; Exhibit F, 62 TTABVUE at 1-46, 80-
`233.
`28 Id. ¶ 17, 57 TTABVUE at 15.
`29 Registration Nos. 1032767, 2575644, 3320068, 3320069, and 3320070, issued between
`1976 and 2007. 60 TTABVUE at 77-102.
`
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`

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`Opposition No. 91189692
`
`2. Fame of THE HOUSE THAT RUTH BUILT Word Mark
`In paragraph 2 of its Amended Answer, filed September 21, 2011, Applicant
`
`admitted the allegations in Opposer’s Amended Consolidated Notice of Opposition
`
`¶ 2, as follows:
`
`Since 1923 and until this MAJOR LEAGUE BASEBALL season, the
`[New York Yankees Major League Baseball] Club played its home
`games at YANKEE STADIUM ballpark. The YANKEE STADIUM
`ballpark was built shortly after legendary player and slugging
`sensation Babe Ruth joined the Club in 1920. Because it was widely
`recognized that Babe Ruth’s tremendous drawing power made the new
`stadium possible, the stadium immediately became known as THE
`HOUSE THAT RUTH BUILT. THE HOUSE THAT RUTH BUILT
`stadium has become the stage for the twenty-six (26) WORLD SERIES
`titles earned by the Club, and is one of the most famous and well-
`known of all the baseball stadiums used by the thirty MAJOR
`LEAGUE BASEBALL clubs.
`Thus, Applicant admits both that Opposer’s baseball stadium had been known as
`
`THE HOUSE THAT RUTH BUILT since 1923, and that it “is one of the most
`
`famous and well-known of all the baseball stadiums” in Major League Baseball.
`
`Applicant made of record a Wikipedia.org entry on Yankee Stadium which states
`
`that the stadium’s nickname is “The House That Ruth Built.”30 Applicant’s
`
`President testified that he was “aware of the use of THE HOUSE THAT RUTH
`
`BUILT by the public, press and media for nearly a century to refer to the original
`
`Yankee Stadium – the building, not Opposer – which was demolished in 2008, but
`
`not as a trademark by Opposer or any other party.”31 Applicant also made the
`
`following admission during discovery:
`
`
`30 Lore Decl., Exhibit F, 67 TTABVUE at 88.
`31 Id. ¶ 54, 66 TTABVUE at 9.
`
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`
`Opposition No. 91189692
`
`Request No. 4: Admit that Opposer’s THE HOUSE THAT RUTH
`BUILT Marks are famous.
`Response: Applicant ADMITS that the phrase “The House That Ruth
`Built,” as used by the press and public, is famous. However, Applicant
`DENIES that Opposer’s THE HOUSE THAT RUTH BUILT
`trademarks are famous.32
`The distinction Applicant makes – between use by the public of THE HOUSE
`
`THAT RUTH BUILT designation and use by Opposer as a mark – is not meaningful
`
`to our analysis. The first factor for assessing fame for dilution is the “duration,
`
`extent, and geographic reach of advertising and publicity of the mark, whether
`
`advertised or publicized by the owner or third parties.” Trademark Act Section
`
`43(c)(2)(i) (emphasis added).
`
`We have found that in certain circumstances 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.”
`
`American Stock Exch., Inc. v. American Express Co., 207 USPQ 356, 364 (TTAB
`
`1980) (AMEXCO protectable abbreviation for American Express Company). See also
`
`Big Blue Prods. Inc. v. Int’l Bus. Machs. Corp., 19 USPQ2d 1072 (TTAB 1991) (BIG
`
`BLUE for IBM); Peiper v. Playboy Enters., Inc., 179 USPQ 318, 320 (TTAB 1973)
`
`(BUNNY CLUB for Playboy clubs). Here, in addition to the conceded widespread
`
`third-party use, Opposer used THE HOUSE THAT RUTH BUILT mark in
`
`connection with licensed merchandise, and also registered that mark, before
`
`Applicant filed its applications.33
`
`
`32 Applicant’s Amended Response to Opposer’s Requests for Admission, 49 TTABVUE at 28.
`33 Orlinsky Decl. ¶ 21, 57 TTABVUE at 16-17, and Exhibit I, 63 TTABVUE at 67-68.
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`Opposition No. 91189692
`
`The record is consistent with Applicant’s purportedly limited admission that the
`
`phrase THE HOUSE THAT RUTH BUILT, as used by the public and the press, is
`
`famous. The evidence demonstrates that Opposer’s use of its stadium, which
`
`Applicant admits had been known by the nickname THE HOUSE THAT RUTH
`
`BUILT since the 1920s,34 has resulted in widespread recognition of that mark in
`
`association with Opposer’s baseball services. Opposer’s witness testified that
`
`attendance at the Yankees Club’s games played at its home stadium has totaled
`
`over 63 million since 1990.35
`
`Opposer introduced 25 full-text articles from newspapers around the United
`
`States published during the years 2000 through 2007 that contained both the terms
`
`YANKEES and THE HOUSE THAT RUTH BUILT.36 For example, a July 7, 2007
`
`story in the Fort Worth (Texas) Star Telegram listed Yankee Stadium among the
`
`“Seven Wonders of the Sports World.” The story referred to the stadium as “The
`
`House That Ruth Built” and stated that: “Prompted partly by the Yankees’ string of
`
`world championships, Yankee Stadium became one of the world’s most famous
`
`stadiums and a sought-out venue for marquee events in other sports as well as non-
`
`sporting events.”37 Opposer also introduced printouts of excerpts of more than 2,600
`
`stories resulting from searches of the LexisNexis database for articles containing
`
`both YANKEES and THE HOUSE THAT RUTH BUILT for the years 2000 through
`
`
`34 Amended Consolidated Notice of Opposition ¶ 2, 29 TTABVUE at 6; Amended Answer
`¶ 2, 31 TTABVUE at 3.
`35 Orlinsky Decl. ¶ 9, 57 TTABVUE at 10. Presumably, old and new stadiums are included.
`36 Opposer’s Second Notice of Reliance, Exhibit A, 49 TTABVUE at 86-145.
`37 Id., 49 TTABVUE at 141-43.
`
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`Opposition No. 91189692
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`2007.38 This is strong evidence not only that the public and press have come to view
`
`THE HOUSE THAT RUTH BUILT as an indicator of source for Opposer (i.e., a
`
`mark), but also that it is a famous mark. See, e.g., Bose Corp. v. QSC Audio Prods.
`
`Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed. Cir. 2002) (discussing extensive
`
`media coverage as confirmatory context for fame); NASDAQ Stock Market Inc. v.
`
`Antartica S.r.l., 69 USPQ2d 1718, 1737 (TTAB 2003) (finding mark famous based in
`
`part on frequent media coverage); Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1181
`
`(TTAB 2001) (listing intense media attention among three examples of evidence
`
`that show “the transformation of a term into a truly famous mark”).
`
`Finally, Opposer owns three registrations on the Principal Register for THE
`
`HOUSE THAT RUTH BUILT for clothing, posters, figurines, and “entertainment
`
`services in the form of professional baseball games[;] providing sports information
`
`by means of digital transmission.”39 Two of these registrations issued before
`
`Applicant’s filing dates, and all three applications were filed before the opposed
`
`applications. Opposer also introduced testimony that it has used THE HOUSE
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`THAT RUTH BUILT mark in connection with “a variety of licensed merchandise,
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`such as clothing (e.g., shirts, T-shirts, caps, hats, pullovers, sweatshirts), novelty
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`items, posters, figurines, toys and games and sports memorabilia, and as a service
`
`
`38 Id., Exhibit B, 51 TTABVUE at 474 through 54 TTABVUE at 128.
`39 Registration Nos. 2884499 (filed June 12, 1998, issued Sept. 14, 2004); 3600235 (filed
`June 30, 2005, issued March 31, 2009); 3363883 (filed June 30, 2005, issued Jan. 1, 2008),
`60 TTABVUE at 104-11.
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`Opposition No. 91189692
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`mark in connection with entertainment services, including professional baseball
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`games, and providing information in the field of sports.”40
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`Based on Applicant’s admissions and the record evidence, we find that Opposer’s
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`word mark THE HOUSE THAT RUTH BUILT is famous for dilution purposes.
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`B.
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`Applicant’s Use of Its Marks in Commerce
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`The second dilution element Opposer must establish is that Applicant is using
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`its allegedly diluting mark in commerce. Under the 1999 amendments to the
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`Federal Trademark Dilution Act, we held that an application based on intent to use
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`a mark in commerce under Trademark Act Section 1(b) satisfied the commerce
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`requirement. Toro Co., 61 USPQ2d at 1174. The Trademark Dilution Revision Act
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`of 2006 (TDRA) does not change this result. See Chanel, Inc. v. Makarczyk, 110
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`USPQ2d 2013, 2023 (TTAB 2014) (holding that an opposer asserting a dilution
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`claim in a Board proceeding against an application based on an allegation of actual
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`use in commerce pursuant to Section 1(a) may prove applicant’s use in commerce by
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`direct evidence or rely on the application filing date as the date of constructive use).
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`We therefore find that Opposer has satisfied the second dilution element as to all
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`three applications.
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`C.
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`Fame of Opposer’s Marks Before Applicant’s First Use
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`Under the third dilution factor, Opposer must prove that its marks became
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`famous before the filing date of Applicant’s intent-to-use applications. See Coach,
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`101 USPQ2d at 1725 (citing Toro Co., 61 USPQ2d at 1174). The three applications
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`
`40 Orlinsky Decl. ¶ 21, 57 TTABVUE at 16-17.
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`Opposition No. 91189692
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`at issue were filed in 2008. We have analyzed the evidence of fame as it pertains to
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`the years before 2008. Based on the record evidence and Applicant’s admissions
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`discussed supra, we find that both Opposer’s top hat design mark and THE HOUSE
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`THAT RUTH BUILT word mark became famous before the filing dates of the
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`respective applications.
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`D. Whether Applicant’s Marks Are Likely To Cause Dilution
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`The final element of our dilution analysis assesses whether Applicant’s marks
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`are likely to dilute Opposer’s marks. As noted supra, dilution by blurring occurs
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`when a substantial percentage of consumers, on seeing the junior party’s use of a
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`mark on its goods, are immediately reminded of the famous mark and associate the
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`junior party’s use with the owner of the famous mark, even if they do not believe
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`that the goods come from the famous mark’s owner. UMG Recordings Inc. v. Mattel
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`Inc., 100 USPQ2d 1868, 1888 (TTAB 2011) (citing Toro Co., 61 USPQ2d at 1183).
`
`The Trademark Act enumerates six non-exhaustive factors a tribunal may
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`consider in determining whether a mark is likely to cause dilution by blurring:
`
`(i) The degree of similarity between the mark or trade name
`and the famous mark.
`(ii) The degree of inherent or acquired distinctiveness of the
`famous mark.
`(iii) The extent to which the owner of the famous mark is
`engaging in substantially exclusive use of the mark.
`(iv) The degree of recognition of the famous mark.
`(v) Whether the user of the mark or trade name intended to
`create an association with the famous mark.
`(vi) Any actual association between the mark or trade name
`and the famous mark.
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`Opposition No. 91189692
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`Section 43(c)(B)(i)-(vi).
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`We will address these factors as they apply to each of Applicant’s marks in turn.
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`1. Applicant’s Top Hat and Syringe Design
`(i) The degree of similarity between Applicant’s mark and
`the famous mark.
`The Board noted in National Pork Board v. Supreme Lobster & Seafood Co., 96
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`USPQ2d 1479, 1497 (TTAB 2010), that,
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`after finding in the affirmative on the question of pre-existing fame, an
`important question in a dilution case is whether the two involved marks are
`sufficiently similar to trigger consumers to conjure up a famous mark when
`confronted with the second mark.
`While we are not conducting a Section 2(d) likelihood of confusion analysis under
`
`this factor for dilution by blurring, we still consider the degree of similarity or
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`dissimilarity of the marks in their entireties as to appearance, connotation, and
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`commercial impression. Research in Motion Ltd. v. Defining Presence Marketing
`
`Group Inc., 102 USPQ2d 1187, 1198 (TTAB 2012) (“Research in Motion”). We
`
`consider the marks in terms of whether they are sufficiently similar in their overall
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`commercial impressions that the required association exists. Nike Inc. v. Maher, 100
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`USPQ2d 1018, 1030 (TTAB 2011).
`
`Applicant’s design mark is shown on the left below, while Opposer’s registered
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`top hat design mark is shown in the center. Opposer also presented evidence that
`
`the top hat portion of its mark is generally depicted in a red-white-and-blue color
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`scheme, as shown on the right:41
`
`
`41 Orlinsky Decl. ¶ 29, 57 TTABVUE at 18-19.
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`Opposition No. 91189692
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`
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`The overall similarity between the two design marks is immediately apparent. Each
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`incorporates a circle and features a similarly patterned top hat resting atop a
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`slender object leaning to the right.
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`We acknowledge that there are significant differences between the marks, the
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`most obvious being that Applicant’s mark replaces Opposer’s bat with a syringe and
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`its round baseball design with the round universal prohibition symbol. In addition,
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`Applicant’s top hat is slightly different in shape, bigger relative to the rest of the
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`design, and extends outside the circle, while Opposer’s top hat lies within the circle.
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`Opposer’s primary logo also includes the word “Yankees.” Nonetheless, when
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`considered in their entireties, we find that the appearance of the marks overall is
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`sufficiently similar that Applicant’s mark will “trigger consumers to conjure up”
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`Opposer’s famous mark. That is, consumers encountering Applicant’s mark will
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`immediately be reminded of Opposer’s famous top hat design mark and associate
`
`the two.
`
`(ii) The degree of inherent or acquired distinctiveness of
`the famous mark.
`Particularly in light of the presence of the top hat design, which is at most
`
`suggestive of Opposer’s distinctive “Yankees” team name, Opposer’s design mark is
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`Opposition No. 91189692
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`inherently distinctive. Even if the mark is not viewed as inherently distinctive, we
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`found above that the mark is famous,