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By Anandashankar Mazumdar
A civic booster in an affluent Chicago suburb that objected to the use of the slogan “We Not Me” in promotional announcements by the National Basketball Association and sportswear maker Adidas did not hold valid trademark registrations in the slogan, the U.S. District Court for the District of Oregon ruled Dec. 29 (Bobosky v. Adidas AG d/b/a Adidas Group, D. Or., No. 3:10-cv-00630-PK, 12/29/11).
Granting partial summary judgment in Adidas's favor on the plaintiff's claims of infringement of registered trademarks, the court, however, said it was still possible for the plaintiff to establish rights in an unregistered mark, at least with regard to his use of the slogan on T-shirts and baseball caps.
W. Brand Bobosky is a lawyer in Naperville, Ill., who over a period of decades has participated in a variety of civic causes in his community and takes pride in the epithet “the idea man,” in connection with his activities connected with the local chamber of commerce, Rotary Club, and charitable organizing.
In 1999, while president of the local Rotary chapter, Bobosky began promoting the slogan “We Not Me.” He distributed lapel pins and other items bearing the slogan and sought out celebrities to promote it. Bobosky also began purchasing on a monthly basis advertisements in Positively Naperville, a local publication. Bobosky also wrote a poem titled “We Not Me.”
In 2004, Bobosky sought to register the term “We Not Me” with the Patent and Trademark Office and the Office of the Secretary of State of Illinois and formed We Not Me Ltd. to license goods bearing the slogan. He also established a website associated with the domain name wenotme.us, though which he offered to license the slogan for use by athletic clubs and other organizations.
Adidas AG is a Germany-based maker of sporting goods, sportswear, and related goods. In 2006, Adidas became the official supplier of athletic clothing to the National Basketball Association, the Women's National Basketball Association, and the NBA Development League.
In 2007, Adidas and the NBA launched a promotional campaign, “Basketball is Brotherhood,” which featured uses of the “We Not Me” slogan in print publications, in television commercials, and on apparel.
Bobosky sued Adidas, the NBA, and related entities and individuals, alleging copyright and trademark infringement and unfair competition under federal law and Texas state law.
Adidas moved for partial summary judgment, arguing that Bobosky did not hold valid, enforceable rights in the term “We Not Me.”
Magistrate Judge Paul Papak first found that one of Bobosky's trademark registrations was void ab initio. The application was an intent-to-use application relating to dozens of categories of clothing. A statement of use was later filed claiming that the mark was being used in commerce for all the listed goods.
The court noted that in depositions, however, Bobosky stated that he was not using the mark on all the goods, and moreover, he testified the date of first use was different than what was stated on the statement of use. Prior to the commencement of the litigation, Adidas's counsel informed Bobosky of the discrepancies and Bobosky filed amendments, removing all the goods from the registration except caps.
The court concluded that at the time this application was filed there was no bona fide intent on Bobosky's part to use the mark on the items listed, apart from caps. The testimony that Bobosky's counsel, not Bobosky, created the list of goods supported this finding, the court said.
On a second registration, Bobosky filed an intent to use the mark for “hats, clothing, namely, shirts, and footwear.” This registration was granted based on proof of use on caps, shirts, and footwear.
This second registration was also void ab initio, the court said, based on the absence of documentary evidence that he took any steps to use the mark on clothing or footwear. Furthermore, even though he did use the mark on caps, the failure to use it on two of the three goods listed voided the registration with respect to the entire class of goods.
Having found invalid both of Bobosky's federal trademark registrations, the court turned to the question of whether he held any protectable interest in a valid unregistered trademark.
The court first rejected Adidas's argument that Bobosky's use of the term “We Not Me” did not constitute trademark use in commerce, because it appeared only in an ornamental fashion and not on the tags of the clothing that indicated the source of the goods.
“It is well-established that even use of a mark as ornamentation on apparel manufactured by others qualifies as a trademark use as long as the mark also serves the trademark purpose of identifying the source of the product,” the court said.
For example, In re Olin Corp., 181 USPQ 182 (T.T.A.B. 1973), stated that a mark appearing ornamentally on a shirt might identify the shirt's “secondary source,” and thus function as a trademark.
Following on Olin, In re Expo ‘74, 189 USPQ 48 (T.T.A.B. 1975), said that the use of the words “Expo ‘74” on the front of a shirt could “perform[ ] the function of a trademark by signifying to purchasers and prospective purchasers the goods of a particular entity and distinguish[ ] such goods from those of others.”
Similarly, In re Paramount Pictures Corp., 213 USPQ 1111 (T.T.A.B. 1982), held that the appearance of “Mork & Mindy” on the front of a shirt indicated the television program Mork & Mindyas a secondary source of sponsorship of the shirt, even though it was not the manufacturer.
In contrast, however, In re Astro-Gods Inc., 223 USPQ 621 (T.T.A.B. 1984), rejected the argument that the term “Astro Gods” appearing on the front of a shirt “would be perceived by purchasers as a trademark because it corresponds to applicant's corporate and trade name.”
Thus, the court said, just the similarity of the slogan “We Not Me” and the corporate name We Not Me Ltd. was not sufficient to establish that the slogan was performing the function of an indicator of the secondary source of the goods.
Instead, the court turned to the concept of overall “commercial impression,” as set forth in Section 1202.03(a) of the Trademark Manual of Examining Procedures.
Looking at Bobosky's goods from this perspective, the court said that the appearance of the term “We Not Me” was “only incidentally ornamental and primarily source-identifying.” The court said:
In [Astro-Gods and other cases], the challenged phrases or slogans appeared on the front of shirts in relatively large font along with corresponding images …. These phrases were prominent and integral parts of the aesthetic ornamentation of the shirts. By contrast, here the phrase WE NOT ME appears in small print on one sleeve of Bobosky's shirt without any corresponding imagery. … In fact, other than a medium-size logo over the breast, there is no other design on the shirt whatsoever, reinforcing the notion that WE NOT ME is more likely to function as source identification than aesthetic ornamentation.
The court applied the same analysis to Bobosky's caps, which featured the slogan on the back. In contrast, Bobosky's flip-flop thong sandals featured the slogan in a much more ornamental fashion. Thus, the court concluded that there was a plausible argument that the slogan was used in a trademark fashion on the caps and shirts, creating a triable genuine issue of material fact preventing summary judgment on the question, at least with regard to the shirts and caps.
Thus, the court granted Adidas's motion for partial summary judgment to the extent that its trademark registrations were void ab initio. Furthermore, there was no triable question regarding whether Bobosky could establish any trademark rights with respect to the slogan as used on the sandals.
However, the court allowed Bobosky's claims to proceed with respect to the question of whether Adidas might have infringed any interest that Bobosky might establish with respect to an unregistered trademark, as used on his caps and shirts.
Bobosky was represented by Kenneth R. Davis II of Lane Powell, Portland, Ore. Adidas was represented by Stephen M. Feldman of Perkins Coie, Portland, Ore.
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