TEAM USA vs EUIPO – And the winner is…

The decision practice of the EUIPO is not always consistent. This is particularly true for weakly distinctive or even non-distinctive elements such as the word ‘team’. The applications for ‘TEAM SCOTLAND’ (EUTM no. 15143027), ‘TEAM SERBIA’ (EUTM no. 17152851) and ‘TEAM UK’ (IR designating the EU no. 1447362) have been refused. Likewise, the EUIPO refused registration of the mark ‘TEAM USA’ for typical merchandise products. The fourth Board of Appeal of EUIPO (‘BoA’), however, recently considered the sign to be inherently distinctive for merchandise (R1128/2023-4).

Background

On 17 February 2022, the United States Olympic and Paralympic Committee (‘USOPC’) designated the EU in its IR no. 1645605 for the sign ‘TEAM USA’. It covered various goods and services in classes 14 (including ‘ornamental pins’), 18 (including ‘backpacks; sports bags’), 21 (including ‘beer mugs; coffee mugs’) and 25 (including ‘T-shirts; caps’).

The EUIPO issued a refusal of the IR based on lack of distinctiveness (Art. 7(1)(b) EUTMR). By referring to the definitions of ‘team’ and ‘USA’ in English dictionaries, the examiner held that the sign would be understood as a reference to a group of players representing the USA in a competitive game or sport. The examiner also quoted several online articles from EU websites mentioning ‘Team USA’ in reporting on US sports teams, including basketball and American football.

The EUIPO found that consumers will not understand the sign ‘TEAM USA’ to indicate the commercial origin. It is a banal statement indicating that the relevant goods may be either used by a group of US players during a competition, be distributed as promotional products or sold during competitions and/or sporting events.

The examiner also referred to the refusal of EUTM no. 15143027 ‘TEAM SCOTLAND’, EUTM no. 17152851 ‘TEAM SERBIA’ and IR designating the IR no. 1447362 ‘TEAM UK.

The USOPC appealed. 

The Board of Appeal’s decisions

The BoA annulled the examiner’s decision.

The registration of a sign as a trade mark does not require a certain level of creativity or artistic imagination of the applicant. Instead, the sole ability of the sign to individualise the goods of the IR holder in relation to those offered by its competitors is decisive. ‘TEAM USA’ allows consumers to distinguish the goods concerned from those of other undertakings without conducting any analytical examination and without paying particular attention.

The BoA found that the expression ‘TEAM USA’ does not convey any concrete information evoking the goods in question. The examiner’s examples of online uses of ‘TEAM USA’ do not demonstrate that this expression is perceived as a non-distinctive, frequently used or banal statement for jewellery, mugs, backpacks etc. The online uses refer to the team of top players representing the USA at particular sports events. There is no general principle that excludes the names of sports teams from trade mark protection.

The mark ‘TEAM USA’ is likely to be used for goods that are typical merchandising and souvenir articles, and therefore to designate that they are manufactured, marketed or supplied under the control of the USOPC, to which responsibility for their quality can be attributed. By referring to the NEUSCHWANSTEIN judgments of the CJEU (case C-488/16 P, at paras. 65 et seq.) and General Court (case T-167/15 at para. 43), the BoA found that the mere affixing of ‘TEAM USA’ on the goods in question enables those goods to be distinguished from other merchandising and souvenir articles sold or provided by other undertakings.

The need to keep a certain sign free for competitors is not an interest protected under Art. 7(1)(b) EUTMR, but rather of other absolute grounds, such as Artt. 7(1)(c), (d) or (e) EUTMR.

Comment

The frequent references to sports and sports teams indicates that the decision has been influenced to a significant extent by the fact that the USOPC applied for registration. However, the assessment of the inherent distinctive character of a sign must be made only by reference to the goods and services and the perception of the sign in question (Henkel v OHIM, C-456/01 P at para. 35). The identity of the owner is irrelevant (cf. T‑332/20 at para. 47).

Consequently, the definition of ‘TEAM USA’ used by the examiner and the Board of Appeal appears to be too narrow. A ‘team’ can not only be understood as a group of people playing sports but also as a group of people who work together at a particular job/task (see e.g. T-786/21 at paras. 28 et seqq.). Therefore, the sign could also be perceived as a reference to a group of people from the US or who are fans/supporters of the US, which produces pins, mugs, backpacks etc. It could also be understood as a reference to the people for which the goods are meant, namely for people who are fans of/support the USA.

In this sense, the sign ‘TEAM USA’ either describes that a team based in the US is responsible for the goods in question or that the goods are meant for people supporting the USA. Both meanings appear to be non-distinctive. The fact that they are rather vague is not decisive (see e.g. T-81/13 at para. 20). With similar reasoning, the BoA rejected e.g. the word mark ‘Team Business IT’ for IT-related goods and services because the mark will be understand as a reference to goods and services from the business IT sector for which a team is responsible (R 2087/2020-2 at para. 21).

Nevertheless, it seems that the race for ‘TEAM [COUNTRY]’ trademarks in the EU can start.

Picture is by RebaSpike and used under the licensing terms of pixabay.