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Wednesday, 27 August 2014

The Blue Jay Trade Mark Battle Commences...

New Billy Bluejay
(U.S. Application Serial No. 86067719)
A cross-border trade mark dispute arose late last week when Canada’s only Major League Baseball team, the Toronto Blue Jays (Blue Jays), filed a Notice of Opposition (Proceeding No. 91217791) at the U.S. Trademark Trial and Appeal Board against a design trade mark application of a bird head in International Class (IC) 025 for Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms (Serial No. 86067719; the “Application”). The Application, owned by Creighton University—a small university in the U.S. mid-west (Omaha, Nebraska to be precise), depicts a new version of the university's sports mascot Billy Bluejay, which has been in use since October 9, 2013. The Blue Jays assert in their notice that Creighton’s new Billy Bluejay logo creates a likelihood of confusion (15 U.S.C. §1052(d)) with several of the Blue Jays’ prior-registered U.S. marks including Registration Nos. 4314074, 4314078, and 2619938 to name a few (collectively, “Registered Marks”).
Toronto Blue Jays Logo
(U.S. Registration No. 4314078)
Although news reports mentioned that Creighton representatives were in negotiations with the Blue Jays to resolve this trade mark dispute, some recent reports also show that Creighton may dispute the Blue Jays’ opposition claims. As reported in the Globe and Mail, Creighton’s general counsel James Jansen stated that, “there’s nothing that should confuse Creighton University with the [Blue Jays]” and that the Application’s design is a “remake” of Billy Bluejay, which has had multiple variations since it was chosen as Creighton's mascot in 1878. He further commented that “I don’t know how many different ways you can depict a bluejay head.”  
If the Application’s design is considered a remake of prior variations of Billy Bluejay dating back to the 19th century, Creighton may claim that the Application’s logo obtained common law protections well before the Registered Marks’ first use in commerce or even the Blue Jays' founding in 1977. This may allow Creighton to claim priority trade mark rights to the Application (15 U.S.C. §1057(c)15 U.S.C. §1052(d)).
Old Billie Bluejay
However, an examination of the Application and previous variations of Billy Bluejay shows that unlike Mr. Janson’s assertions, there are actually multiple ways to depict a bluejay head. Unlike the Application’s navy, light blue and grey coloring of Billy's head, previous Billy Bluejay images show Billy colored royal blue with yellow eyes and beak (no to mention he is wearing a white jumper!), which would likely be considered substantially different from the Application's depiction of Billy. Beyond these substantial differences, Creighton claims in the Application that their first date of commercial use of the new Billy was in October 2013—likely preventing the University from arguing that Creighton has prior use rights in the Application.
Absent priority, Creighton will likely have to show that the Application does not cause a likelihood of confusion with the Registered Marks. This will be determined based on the multiple factor likelihood of confusion test laid out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). Although any of the ten factors of this test may determine the outcome of such an assessment, one of the most contentious factors will likely be the similarity of the Application and the Registered Marks in their entireties as to appearance, sound, connotation and commercial impression. See, e.g. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103 (C.C.P.A. 1976); TMEP § 1207.01.
(U.S. Registration No. 3080408)
Within this factor, one of the most contentious and highly subjective evaluations will be the similarity of the visual appearance of the Application and the design-only Registered Marks due to the Application’s design-only status. In evaluating the likelihood of confusion between design marks, the similarity of the marks must be decided primarily on the basis of visual similarity. In re Vienna Sausage Mfg. Co., 16 U.S.P.Q. 2d 2044, 2047 (T.T.A.B. 1990). Although the Application and the main design-only Registered Marks have triangular shaped bird heads and are depicted in public with similar navy and light blue coloring, most of such Registered Marks have something distinguishable from the Application such as a maple leaf (see above left; Reg. No. 4314078), a large letter J (see left), or a baseball background (Reg. No. 1256175). Further, neither the Application nor the Registered Marks claims color as a feature, meaning that their similar coloring will not be a determinative factor in a likelihood of confusion analysis. However, whether the visual differences between the marks are distinguishable enough in general to rule out confusing similarity amongst the general public remains to be seen.
Further, as has been excellently highlighted by Ms. Mari-Elise Taube in the Trademarkologist, there remains a burning question as to whether the public will be confused as to the source of the Application owner's goods or services. The likelihood of confusion between similar marks in general is not determined on whether people will confuse the marks, but rather whether the marks will confuse people into believing that the marks’ goods or services derive from the same source. Paula Payne Prods. Co. v. Johnson’s Publ’g Co., 473 F.2d 901, 902 (C.C.P.A. 1973); TMEP § 1207.01. Although likely unfamiliar to most European readers, Creighton is primarily known in U.S. sports for its previous mid-major, now major conference college basketball teamthink of a U.K. football club moving from League One to the Championship League or directly to the Premiership, e.g. Hull City A.F.C. but in an amateur status. In contrast, the Blue Jays are a professional baseball team. As raised by Ms. Taube, it may be difficult for the Blue Jays to argue that the general public will be confused as to Creighton's sponsorship or affiliation by the Blue Jays, who play a different sport, in a different league, in a different professional status, and who even originate from a different country.  
Although it is unknown how this dispute will be resolved, it is clear that the fate of bird head sport logos hangs precariously in the balance.

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