July 31, 2014
By: Jessica Mendelson
It’s not just the Redskins anymore! Following the cancellation of the Redskins trademark earlier this summer, the Trademark Trial and Appeal Board has issued another football related decision regarding the New York Giants’ trademark of their commonly used nickname, the "G-Men."
In a decision rendered this past month, the Trademark Trial and Appeal Board (“TTAB”) has declined to allow the New York Giants to register the phrase “G-Men” for use in the sale of shirts and other related apparel. According to the TTAB, the fame of the team’s nickname was insufficient to provide a limitation on an overly broad application.
The Giants attempted to register the phrase for use on “shirts, T-shirts, and tops.” Although the application overlapped with a pre-existing mark for “G-Man Sport,” the Giants argued that their nickname was so famous that there was no likelihood of confusion when used in relation to football. However, precedent requires the board to look at the goods and services covered by an application broadly, rather than simply addressing the goods the mark is actually used to sell. As a result, the TTAB rejected the Giants argument, stating, “when there is no specific limitation in the description of goods and nothing inherent in the nature of applicant’s mark that restricts applicant’s usage to football related merchandise or the promotion of a particular football team, the board may not read such limitations into the application.” The Giants argument that the fame of their nickname would narrow the limitation of the mark to football-related merchandise was flawed, as it would not work if the consumers were not football fans. As a result, the TTAB found that the likelihood of confusion analysis must consider all possible consumers for the goods identified, as well as all possible channels of trade. As a result, although the USPTO permitted the Giants to obtain a registration for the mark for football-specific services, the mark could not be registered for such a broad group of products.
The TTAB’s ruling highlights the importance of having a specific limitation on the goods a mark will be used for, as well as the importance of looking at all possible consumers and channels of trade when determining whether a mark can be registered.