Major League Zombie Hunter Too Close for Major League Baseball

Despite the numerous MAJOR LEAGUE formative marks that use a blue, white, red color scheme including several variations involving zombie hunting, Major League Baseball thought Christopher Webb’s MAJOR LEAGUE ZOMBIE HUNTER was the one that crossed the line. Major League Baseball petitioned to cancel Mr. Webb’s supplemental registration for MAJOR LEAGUE ZOMBIE HUNTER & Design for “clothing, namely, short and long sleeve t-shirts, sweatshirts, jackets, baseball hats, and beanies” in International Class 25. Major League Baseball alleged, among other things, that this mark was likely to cause confusion with its prior registered MLB Logo.

The Trademark Trial and Appeal Board first considered the strength of the Major League Baseball mark. In determining strength, the Board considers its inherent strength based on the nature of the mark itself, and its commercial strength based on the marketplace recognition of the mark. Surprisingly, the terms MAJOR LEAGUE BASEBALL were found to be arbitrary when used in connection with clothing. Not surprising was the finding that the MAJOR LEAGUE BASEBALL mark is commercially strong. Accordingly, MLB’s trademarks are entitled to a broad scope of protection.

With respect to the similarity of the marks, the Board found that both marks consist of off-center, white silhouetted males from the torso up, facing left, wearing baseball caps or helmets, and posed for action inside a shaded, rectangular border, albeit engaged in different activities. According to the Board the dissimilarities (i.e., baseball bat vs. shotgun, backward cap vs. batting helmet, and the words MAJOR LEAGUE ZOMBIE HUNTER) were not sufficient to overcome the similarities.

The Board also cited with approval prior Board decisions that held it can take judicial notice of a common fact that licensing of commercial trademarks on collateral products has become a part of everyday life. Accordingly, the Board held that consumers are likely to mistakenly believe that MLB is associated with Mr. Webb’s t-shirts.

While licensing the use of a trademark on collateral goods is common, what is uncommon is for the trademark licensor to allow a licensee to mutilate its mark into something different. Additionally, the Board stated that it may take into account the trade dress of packages or labels that demonstrate the trademark projects a confusing similar commercial impression. But this is contrary to other cases where the Board has said its decision on similarity must be made on the drawings in the applications and registrations only. The Board again based its decision on certain presumptions that do not reflect marketplace reality.

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