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By Anandashankar Mazumdar
Jan. 26 — The organization that puts on the Boston Marathon cannot block a clothing company from registering “Marathon Monday” as a trademark with the Patent and Trademark Office, the Trademark Trial and Appeal Board ruled in a precedential opinion released Jan. 25.
“Marathon Monday” is not a term that the public recognizes as uniquely indicating the Boston Marathon's organizer, the board said.
The board also noted several uses of the term unrelated to Boston, such as in connection with marathons elsewhere in the country.
The Boston Marathon is a road race from Hopkinton, Mass., to Boston that takes place annually on the third Monday in April. Since its first occurrence in 1897, it has become the most widely known marathon event in the United States.
From the beginning, it has been organized by the nonprofit Boston Athletic Association.
In 2011, Velocity LLC, a printing company in Everett, Mass., submitted an application to the PTO to register “Marathon Monday” as a trademark for clothing. The association opposed the registration, arguing that Velocity's use of “Marathon Monday” would create a false association under Section 2(a) of the Lanham Trademark Act of 1946, 15 U.S.C. §1052(a).
However, even though the association showed that it has used “Marathon Monday” in connection with its events, the board rejected its claim that the term pointed “uniquely and unmistakably” to the association.
The board did note that, in some cases, a trademark holder has successfully opposed registration of a term that was not exactly the same as its trademark, name or likeness under a false association theory.
For example, singer Jimmy Buffett was able to oppose registration of “Margaritaville.” Buffett v. Chi-Chi's, 226 U.S.P.Q. 428 (T.T.A.B. 1985).
In yet another case, the Duchess of Cambridge—the former Catherine Middleton—was able to oppose registration of “Royal Kate.” In re Nieves & Nieves LLC, 113 U.S.P.Q.2d 1639 (T.T.A.B. 2015) (22 PTD, 2/3/15).
In this case, however, the board said that there was no such close connection between “Marathon Monday” and the Boston Marathon.
This conclusion was bolstered by examples of uses of the term elsewhere, such as in connection with marathon events in New York and Walt Disney World and Hartford, Conn.
There was even a reference to a “Marathon Monday” binge-partying event on a website related to the TV series “Blue Mountain State,” which is about student-athletes at a fictional university.
The board, thus, dismissed the opposition, and said that Velocity's registration would be issued.
The opinion was issued by Administrative Trademark Judge Frances Wolfson and joined by Judges Marc A. Bergsman and Angela Lykos.
The Boston Athletic Association was represented by Wilmer Cutler Pickering Hale & Dorr LLP, Boston. Velocity was represented by Hinckley Allen & Snyder LLP, Boston.
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