Hart v. New York Yankees Partnership ( 2006 )

NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition
is not citable as precedent. It is a public record.
United States Court of Appeals for the Federal Circuit
06-1050
(Opposition No. 91/156,780)
LEON P. HART,
Appellant,
v.
NEW YORK YANKEES PARTNERSHIP
and STATEN ISLAND MINOR LEAGUE HOLDINGS, L.L.C.,
Appellees.
__________________________
DECIDED: June 9, 2006
__________________________
Before MICHEL, Chief Judge, PLAGER, Senior Circuit Judge, and BRYSON, Circuit
Judge.
PER CURIAM.
Leon P. Hart filed an intent-to-use application with the United States Patent and
Trademark Office to register the mark BABY BOMBERS for clothing and athletic wear.
The New York Yankees Partnership and Staten Island Minor League Holdings, L.L.C.
(collectively, the “New York Yankees” or “Yankees”) filed an opposition, which the
Trademark Trial and Appeal Board (“Board”) sustained. We affirm.
The New York Yankees oppose Hart’s mark on the basis of their use of the
common law mark BABY BOMBERS in association with the New York Yankees major
league baseball club and with the Yankees’ minor league affiliate, the Staten Island
Yankees baseball club. In order to establish their ground of opposition under section
2(d) of the Lanham Act, 15 U.S.C. § 1052(d), the Yankees must show that they have
priority of use in the mark and that Hart’s mark, when used on the goods set forth in the
application, would create a likelihood of confusion with the Yankees’ mark. See Hoover
Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357, 1359 (Fed. Cir. 2001); 3 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition, § 20.14 (4th ed. 2004).
Because the Yankees’ BABY BOMBERS mark is unregistered, the Yankees must also
show their mark is distinctive in order to establish priority. See Towers v. Advent
Software, Inc., 913 F.2d 942, 945 (Fed. Cir. 1990).
We review the Board’s factual findings of priority and distinctiveness for
substantial evidence. See Hoover, 238 F.3d at 1359. Whether a likelihood of confusion
exists is a question of law, which we review without deference, based on underlying
factual findings, which we review for substantial evidence. Id.Hart’s priority date is July 23, 2001, the date he filed his intent-to-use application.
The Board found that the New York Yankees had used the term BABY BOMBERS in
promotional materials to refer to their Staten Island minor league affiliate since its
inception in 1999. The Board also found that the term had been used by the press to
refer to both the minor league and major league Yankees teams for several years
before Hart’s priority date. Contrary to Hart’s argument on appeal, the Board’s finding
that the Yankees have priority in the mark did not rely on uses of the term subsequent
to July 23, 2001. There is ample evidence in the record that the term was used in
connection with the Staten Island Yankees prior to 2001. Based on our examination of
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the record, we conclude that the Board’s finding that the Yankees have priority in the
BABY BOMBERS mark is supported by substantial evidence.
The Board also found that the Yankees’ BABY BOMBERS mark was distinctive
rather than merely descriptive of the qualities or characteristics of goods or services.
Hart has alleged no specific error in the Board’s analysis. Having reviewed the record,
we are satisfied that the Board’s finding of distinctiveness is supported by substantial
evidence.
Finally, the Board determined that the mark BABY BOMBERS for clothing and
athletic wear would be confusingly similar to the Yankees’ identical mark when used in
association with entertainment services involving baseball games. The Board
considered the factors set forth in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357,
1361 (CCPA 1973), especially the questions of similarity of the marks and whether
Hart’s goods and the Yankees’ services are related. With regard to similarity of the
marks, the Board noted that the marks clearly are identical in appearance and sound.
The Board also found that the meaning and commercial impression of BABY
BOMBERS would be identical to the extent that the mark, when used in connection with
a minor league baseball team and on athletic clothing, suggests an association with the
New York Yankees, who have been referred to as the Bronx Bombers for over seventy
years. With regard to similarity of the parties’ goods and services, the Board found that
Hart’s athletic clothing goods were sufficiently related to the Yankees’ baseball
exhibition services that consumers would likely believe Hart’s products were approved
or licensed by the Yankees. Hart’s arguments have not convinced us that the Board’s
findings are unsupported by substantial evidence or that the Board erred in concluding
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that a likelihood of confusion exists between the marks. Because the New York
Yankees have also established that they have priority in the BABY BOMBERS mark
and that their mark is distinctive, we affirm the decision of the Board.
We have considered Hart’s additional arguments and find them to be
unpersuasive or irrelevant. Furthermore, because we agree with the Board that the
opposition may be sustained on the basis of the Yankees’ BABY BOMBERS mark, we
need not consider the Yankees’ argument that their opposition may also be sustained
on the basis of their registered mark BRONX BOMBERS.
06-1050 4