Marathon Tours, Inc.v.Richard Donovan

Trademark Trial and Appeal Board

Feb 14, 2017

No. 91214916 (T.T.A.B. Feb. 14, 2017)

Mailed: February 14, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Marathon Tours, Inc.
v.
Richard Donovan
_____

Opposition No. 91214916
to Application Serial No. 86047320
_____

Michael J. Bevilacqua and Barbara A. Barakat of Wilmer Cutler Pickering
Hale and Dorr LLP,
for Marathon Tours, Inc.

Joshua M. Gerben and Eric J. Perrott of Gerben Law Firm, PLLC,
for Richard Donovan.
_____

Before Wellington, Ritchie, and Goodman, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

On October 8, 2013, Richard Donovan (“Applicant”) applied to register
Antarctica Ice Marathon & 100K (and design), as shown below, for “T-shirts,
singlets; running shorts; hats; beanies; clothing, namely, base layers; fleece
tops; wind pants; wind jackets,” in International Class 25, and “Athletic and
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91214916
2
sports events services, namely, arranging, organizing, operating and
conducting marathon races,” in International Class 41:
.1
The application disclaims the exclusive right to use the terms “ANTARCTIC
ICE MARATHON & 100K” and the geographic representation of Antarctica,
apart from the mark as shown.
Marathon Tours, Inc. (“Opposer”), filed an opposition to the registration of
Applicant’s mark on the ground that Applicant’s mark is likely to cause
confusion with Opposer’s mark, ANTARCTICA MARATHON. Opposer
alleged in the Notice of Opposition that it adopted use of the mark
ANTARCTICA MARATHON “as early as 1995 in connection with its travel
service for runners and their friends.”2 Opposer further asserted that it has
filed application Serial No. 86086458 for “travel services, namely, organizing,
arranging and reserving travel, tours, excursions, sightseeing and cultural
events and providing travel guide and information services,” based on use of
the mark since 1995, and that the application has been provisionally rejected
by the Office pending the outcome of Applicant’s application, despite

1 Application Serial No. 86047320 filed as under Section 1(a) of the Trademark Act,
alleging first dates of use and first dates of use in commerce in both classes on
August 23, 2013.
2 1 TTABVUE 4.
Opposition No. 91214916
3
Opposer’s priority, and resulting in injury to Opposer.3 Opposer’s application
contains a claim of acquired distinctiveness as to the entire mark.
Opposer also brings this opposition on the ground of fraud. In particular,
the application includes language identifying the services of “operating and
conducting marathon races.” Opposer alleges that Applicant never operated
or conducted marathon races under its mark “in commerce regulated by the
United States,” and thus Applicant knowingly made a false statement upon
which the USPTO relied.4
Applicant denied the salient allegations of the notice. Applicant further
asserted several affirmative defenses including that there is no likelihood of
confusion because Opposer’s pleaded mark is “geographically descriptive” or
“geographically deceptively misdescriptive.”5 Both parties filed briefs, and
Opposer filed a reply brief.
The Record
The record consists of the pleadings; the file of the involved application;
Opposer’s first notice of reliance on its pleaded application; Opposer’s second
notice of reliance on discovery responses from Applicant; the testimonial
deposition of Matt Bergin, an avid runner who ran the Antarctica Marathon
in 1997, dated October 29, 2015; the testimonial deposition of Jeffrey T.
Doyle, another avid runner who ran the Antarctica Marathon in 1999, with
exhibits, dated October 29, 2015; the testimonial deposition of Thomas F.

3 4 TTABVUE 4-6.
4 As further noted below, Opposer did not allege an intent to deceive by Applicant.
Opposition No. 91214916
4
Gilligan Jr., Opposer’s owner and president, with exhibits, dated November
19, 2015; the testimonial deposition of Richard Donovan, with exhibits, dated
March 11, 2016; Applicant’s first notice of reliance on public documents; and
Applicant’s second notice of reliance on discovery responses from Opposer.
Background Findings
1. Opposer’s Business and Use of Mark:
Opposer offers travel services in conjunction with marathons around the
world.6 In particular, Opposer organizes tours and sightseeing, and provides
travel-related services.7 In this regard, Opposer is the creator and organizer
of the Antarctica Marathon, which it first offered in 1995.8 The Antarctica
Marathon is held on King George Island, in the Shetland Islands.9 Costs for
Opposer’s marathon package run from $6,990 to about $8,800, not including
airfare to Buenos Aires.10
Although the marathon first organized by Opposer was in 1995, the
service did not continue on an annual basis. Rather, Opposer’s “Antarctica
Marathon” was offered approximately, but not quite, every other year
between 1995 and 2008, and then every year since:
Yeah, this is copies of all of our web pages and also includes
towards the back a page on commemorate your trip to the

5 4 TTABVUE
6 30 TTABVUE 37-38. There is also testimony in the record regarding Opposer’s use
of ANTARCTICA MARATHON on clothing. However, as this use was neither
pleaded nor tried by consent, we do not find it helpful to consider it in our analysis.
7 30 TTABVUE 41.
8 30 TTABVUE 30.
9 30 TTABVUE 115-116.
10 30 TTABVUE 114.
Opposition No. 91214916
5
Antarctica Marathon, which is pages offering merchandise for
sale and also the results for the 1995 Antarctica Marathon,
1997, 1999, 2001, 2003, 2005, 2008. We don’t hold, we didn’t
hold the marathon every year. It was kind of every two years,
and then we would hold it every year since – 2008 is identified,
now we have 2009 2010 2011, 2012, 2013, 2014, and 2015.11

Mr. Gilligan noted that the event was not initially an annual one since “the
demand was low” and it is a very popular event now, although Opposer is
still restricted by environmental regulations in how often and to what extent
it can conduct its “Antarctica Marathon.”12
The Antarctica Marathon is limited in availability, and due to the
imposed environmental restrictions, only about one to two hundred runners
may participate in any given year.13 Thus, Opposer currently has a three-
year wait list, with about one hundred runners on the list.14 Social media is a
popular form of advertising for Opposer.15 Opposer also hands out brochures
at events, spending $35,000-$40,000 a year to exhibit at expos.16 Overall, Mr.
Gilligan testified that Opposer spent about $47,966 on advertising in 2000,
up to $112,149 in 2013.17 He testified that sales doubled during this time as
well, and noted that “Antarctica Marathon is a very large piece of business. It
probably represents about ten percent of our sales.”18 Sales were about

11 30 TTABVUE 44-45, referring to Exhibit marked MTI 0005.
12 30 TTABVUE 48-49.
13 30 TTABVUE 106.
14 30 TTABVUE 106.
15 30 TTABVUE 63.
16 30 TTABVUE 64.
17 30 TTABVUE 66.
18 30 TTABVUE 67.
Opposition No. 91214916
6
$1,282,000 in 2007, and $1,928,083 in 2015.19
With the deposition of Mr. Gilligan, Opposer submitted testimony and
evidence of press releases, as well as unsolicited media coverage of its
Antarctica Marathon, which includes the following:

Runners World: Voyage to the Bottom Of The World: By Bob
Wischnia; November 1995
So you want to run the Last Marathon: the next Antarctica
Marathon will be in February 1997. An exact date hasn’t yet
been set, but the race will be run over the same course on King
George Island.20

The New York Times: March 2, 1997: Icy and Dicey: Runners
Survive the Antarctica Marathon: By Kim Puntillo: King George
Island, Antarctica – Despite snow, sleet and subfreezing winds,
82 runner forged a glacier, ice-cold streams and ankle-deep mud
to complete the second Antarctica Marathon. The winner of the
Antarctica Marathon, took home a pair of snowshoes as his
prize.21

Fitness Runner: Antarctica Marathon; by Jim Whiting:
September/October 2000: Think south. Very south. About as far
south as you can get. Next February 5 is the fourth running of
the Antarctica Marathon, also known as The Last Marathon by
its organizers, Marathon Tours of Cambridge, MA.22

Time: Running with the Penguins: By Laura Blue/King George
Island, Antarctica; May 13, 2007: The Antarctica Marathon is
not for the faint of heart.23

19 30 TTABVUE 69.
20 30 TTABVUE 332.
21 30 TTABVUE 238.
22 30 TTABVUE 336.
23 30 TTABVUE 241.
Opposition No. 91214916
7
Opposer also submitted the testimony of two former participants in the
Antarctica Marathon. Matt Bergin who ran the Antarctica Marathon in 1997,
testified how Opposer arranged his trip:
I essentially signed up and I gave them my credit card knowing
what the amount was going to be. And they had essentially
booked everything for me, arranged the flights, the hotel, the
race.24

Mr. Doyle also testified as to how Opposer sets up “a full itinerary” with
tours, race registration, and logistics. He ran the Antarctica Marathon in
1999.25
1. Applicant’s Business and Use of Mark:
Applicant is an event organizer, who has himself run over fifty
marathons.26 He has been organizing the Antarctic Ice Marathon & 100K
since January 2006, and as of March 2016 had held eleven such events.27 The
races occur in the interior of the Antarctic.28 Applicant organizes registration
and travel, as well as working out logistics of entry to the Antarctic
mainland.29 He notes that his event has been featured on American media,
including CNN.30 Applicant testified that he “was always targeting the
United States” with his services,” and that “[i]n every event I organize there’s

24 20 TTABVUE 33.
25 30 TTABVUE 12.
26 26 TTABVUE 8, 55.
27 26 TTABVUE 10.
28 26 TTABVUE 51.
29 26 TTABVUE 11, 28, 29 (confidential record).
30 26 TTABVUE 37.
Opposition No. 91214916
8
a competitor from the U.S.”31 In addition to the travel and event services,
Applicant offers clothing and related items in connection with his events.32
The package cost to participate in the Antarctic Ice Marathon & 100K vary
between $10,000 and $15,000.33
Applicant included the following examples of unsolicited media coverage
of the Antarctic Ice Marathon & 100K:
The Washington Post: A Long Cold Road for Ultra Marathoner:
By Bernie Wilson; October 25, 2006; In a city full of golf courses
and beaches, Mike Pierce is spending his afternoon . . . in a
commercial freezer? The 42-year-old is training for the Antarctic
100k on Dec. 15.34

IAAF Athletics: Antarctic Ice Marathon & 100K Completed:
January 12 2006; type snow conditions, and katabatic wind
gusts of up to 45 knots greeted competitors in the inaugural
Antarctic Ice Marathon held on 7 January 2006.35

The New York Times: Going to Extremes to Train for Ultra Race
in Antarctica: October 29, 2006: It is 72 degrees and sunny, the
way it usually is in San Diego. In a city full of golf courses and
beaches, Mike Pierce is spending his afternoon in a commercial
freezer? The 42-year-old Pierce is training for the Antarctic
100K on Dec. 15, so he needs a place that is really, really cold to
prepare for the ultramarathon, which will cover 62.1 miles on
the frozen continent on the bottom of the planet.36

IAAF Athletics: Records set in Antarctic Ice marathon & 100K:
January 9, 2009: Cross country and mountain runners certainly
have to race in some appalling weather conditions, and the
average club runner or journeyman jogger might
understandably curse about having to occasionally train in the
cold and wet of winter but ladies and gentlemen you have

31 26 TTABVUE 50.
32 26 TTABVUE 42, 47.
33 26 TTABVUE 16.
34 26 TTABVUE 140.
35 29 TTABVUE 10.
36 29 TTABVUE 17.
Opposition No. 91214916
9
nothing to complain about compared to the intrepid competitors
who take part in the Antarctic Ice Marathon & 100K each
year.37

The Washington Post: The coolest of runnings: By David
Montgomery; December 11, 2009: Surely they have their
reasons, these 18 men and three women, for running in the fifth
annual Antarctic Ice Marathon or – for the hardiest – the
Antarctic 100K.38

Oakwood University: Oakwood President completes Antarctic
Ice Marathon on schedule. . . According to the Ultimate
Adventures in the Rough Guide 2009 Edition, Antarctica is
considered one of the most inconvenient places on the planet.
Oakwood.edu.39

Runner’s World: Antarctic Ice Marathon 2011: There are
countless inspiring running races around the world, but if you’re
looking for the daddy of them all, you need to head south to the
Antarctic Ice Marathon.40

NY Daily News: The most brutal fitness races on the planet:
October 15, 2012: Antarctic Ice Marathon: If running your local
marathon isn’t taxing enough, head to the South Pole for a 100K
jog in temps dipping to -20 degrees C. . . . Next race happens on
November 20, 2013.41

Daily Burn: The 30 Best Marathons in the Entire World: By
Emily Faherty: August 25, 2014: According to Running USA’s
Annual Marathon Report, there were more than 1,100
marathons in the U.S. alone in 2013. But we’re ready to think
outside our borders to see just how far we can go. . . . These 30
international marathons (listed by date, starting in September)
top our list as the most popular, exciting, inspirational, crowd-
favorite bucket list races you’ll find on the planet. . . . 13.
Antarctic Ice Marathon . . . choose the only footrace within the
Antarctic Circle.42

37 29 TTABVUE 23.
38 26 TTABVUE 143.
39 29 TTABVUE 20.
40 29 TTABVUE 31.
41 29 TTABVUE 31.
42 29 TTABVUE 48-50.
Opposition No. 91214916
10
The Economist: The future of luxury: Experience counts: Dec
13th 2014; Mr. Elliot’s colleagues at Quintessentially cite the
Antarctic Ice Marathon as the sort of activity its clients
appreciate.43

Fox News Travel: 8 marathons worth a trip: 2. Antarctic Ice
Marathon, Antarctica: In addition to run-of-the-mill marathon
woes (cramping muscles, blistering feet), runners in the annual
ice Marathon suffer through katabatic winds and temperatures
dipping below zero degrees. At least you’ll see penguins?44

Men’s Journal: 25 Best Adventure Marathons: By Matt Bell:
Antarctic Ice Marathon, Antarctica: Who: 50 runners; When:
November 19, 2014 and November 19, 2015 Why it’s Unique:
The Guinness Book of World Records recognizes this race as the
southernmost marathon on Earth; it is, after all, the only race
that takes place inside the actual arctic circle.45

Standing and Priority
Standing is a threshold issue that must be proven in every inter partes
case. See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982) (“The facts regarding standing . . . must be
affirmatively proved. Accordingly, [plaintiff] is not entitled to standing solely
because of the allegations in its [pleading].”). To establish standing in an
opposition, opposer must show both “a real interest in the proceedings as well
as a ‘reasonable’ basis for his belief of damage.” See Ritchie v. Simpson, 170
F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999).
Opposer has established standing in its pleading and testimony in that its
application for the mark ANTARCTICA MARATHON was suspended on the

43 26 TTABVUE 137-138.
44 29 TTABVUE 42.
Opposition No. 91214916
11
ground of likelihood of confusion with Applicant’s pending application.46 See
Empresa Cubana del Tabaco v. General Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014) TMBP § 309.03(b). To establish priority
on a likelihood of confusion claim brought under Trademark Act Section 2(d),
a party must establish that, vis-à-vis the other party, it owns “a mark or
trade name previously used in the United States … and not abandoned….”
Trademark Act Section 2, 15 U.S.C. §1052. A party may establish its own
prior proprietary rights in a mark through ownership of a prior registration,
actual use or through use analogous to trademark use, such as use in
advertising brochures, trade publications, catalogues, newspaper
advertisements and Internet websites which create a public awareness of the
designation as a trademark identifying the party as a source. See Trademark
Act §§2(d) and 45, 15 U.S.C. §§ 1052(d) and 1127. See also T.A.B. Systems v.
PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879 (Fed. Cir. 1996), vacating
Pactel Teletrac v. T.A.B. Systems, 32 USPQ2d 1668 (TTAB 1994).
Inasmuch as Opposer has not pleaded ownership of any registered
trademark, Opposer must rely on its common law use of ANTARCTICA
MARATHON as a trademark to prove priority. In order for a plaintiff to
prevail on a claim of likelihood of confusion based on its ownership of
common law rights in a mark, the mark must be distinctive, inherently or
otherwise, and plaintiff must show priority of use. See Otto Roth & Co. v.

45 29 TTABVUE 45.
46 30 TTABVUE 40-41, Ex. 6; 19 TTABVUE 7-11.
Opposition No. 91214916
12
Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981); Gierscsh
v. Scripps Networks Inc., 90 USPQ2d 1020, 1023 (TTAB 2009) (no “regular
and recurring activity” shown such as to establish certain asserted common
law rights by plaintiff); see also Bass Pro Trademarks, L.L.C. v Sportsmans
Warehouse, Inc., 89 USPQ2d 1844, 1852 (TTAB 2008) (“the issue of priority is
based on the priority of acquired distinctiveness.”)
We note that Opposer has applied to register its mark ANTARCTICA
MARATHON with a claim of acquired distinctiveness, thereby admitting that
the term is not inherently distinctive based on the primarily geographically
descriptive nature of the mark. Cold War Museum Inc. v. Cold War Air
Museum Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009) (“Where
an applicant seeks registration on the basis of Section 2(f), the mark’s
descriptiveness is a nonissue; an applicant’s reliance on Section 2(f) during
prosecution presumes that the mark is descriptive.”). Applicant claims that
indeed the term “ANTARCTICA MARATHON” is “highly descriptive” of
Opposer’s services of organizing and offering travel services for a marathon
in Antarctica.47 To satisfy its burden that its applied-for mark has acquired
distinctiveness under Section 2(f) of the Trademark Act, a party, in this case
Opposer, may submit any “appropriate evidence tending to show the mark
distinguishes [the party’s] goods [or services],” which evidence “the other

47 34 TTABVUE 14. Applicant argues in the alternative that the term is
geographically deceptively misdescriptive, since Opposer’s race actually takes place
in the Shetland Islands. However, there is insufficient evidence of
misdescriptiveness, and we need not address the alternative claim.
Opposition No. 91214916
13
party” could then attempt to discredit. Yamaha International v. Hoshino
Gakki, 840 F.2d 1572, 6 USPQ2d 1001, 1010 (Fed. Cir. 1988), quoting
Trademark Rule 2.41(a), 37 CFR § 2.41(a). Such evidence includes the
duration, extent and nature of the use of the mark in commerce, advertising
expenditures, letters or statements from the trade or public, and other
appropriate evidence. Trademark Rule 2.41(a). See also Steelbuilding, 415
F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005) (acquired distinctiveness
may be shown by copying, unsolicited media coverage and consumer surveys).
“The amount and character of the evidence, if any, required to establish that
a given word or phrase … ‘has become distinctive’ of the goods necessarily
depends on the facts of each case and the nature of the alleged mark.” Roux
Laboratories, Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34, 39 (CCPA
1970). See also In re Steelbuilding.com, 75 USPQ2d at 1424 (“no single factor
is determinative … the determination examines all of the circumstances
involving the use of the mark”). With respect to the nature of the alleged
mark, “the applicant’s burden of showing acquired distinctiveness increases
with the level of descriptiveness; a more descriptive term requires more
evidence of secondary meaning.” In re Steelbuilding.com, 75 USPQ2d at 1424.
We find that on the spectrum of descriptiveness, ANTARCTICA
MARATHON is closer to being highly descriptive of Opposer’s marathon and
marathon-related travel services in the Antarctica. Thus, Opposer has a
higher burden of showing acquired distinctiveness. As noted in our
Opposition No. 91214916
14
Background Findings, Opposer began offering its Antarctica Marathon
services in 1995, but due to reasons of demand as well as environmental
regulations, the service did not become a regular and annually-recurring
event until 2008.
Although Opposer offered evidence of media recognition, there were only
four significant unsolicited articles, from 1995, 1997, 2000, and 2007, all of
which are before the race became an annual event. Opposer offered
information regarding its sales and advertising, but gave no industry or other
context for those numbers. Applicant, meanwhile, began offering its own
ANTARTIC ICE MARATHON & 100K in January, 2006, and has been
offering it as a regular and recurring event ever since. Applicant has shown
that it began receiving unsolicited media attention from the time of its first
ANTARTIC ICE MARATHON & 100K in 2006, which attention has
continued to present day, and far outpaces the evidence shown by Opposer
regarding media attention for its ANTARCTICA MARATHON.
Opposer must show priority of a distinctive mark, in this case a mark that
has acquired distinctiveness, in order to prove likelihood of confusion.
Opposer has not shown that its mark is substantially exclusive nor that it
has acquired distinctiveness. Thus, Opposer cannot show priority, and its
claim of likelihood of confusion must fail.48

48 If anyone has shown acquired distinctiveness, it is Applicant. We do not find that
conclusion necessary to our decision, however, since Applicant has not filed his
application based on acquired distinctiveness, but rather has disclaimed the
primarily geographically descriptive terms.
Opposition No. 91214916
15
Fraud
The second ground in the opposition is fraud. In particular, the
application includes language identifying the services of “operating and
conducting marathon races.” Opposer alleges that Applicant never operated
or conducted marathon races under its mark “in commerce regulated by the
United States,” and thus Applicant knowingly made a false statement upon
which the USPTO relied.
The Court in In re Bose Corp., 476 F.3d 1331, 91 USPQ2d 1938, 1939
(Fed. Cir. 2009), set out the relevant standard for proving fraud:
Fraud in procuring a trademark registration or renewal occurs
when an applicant knowingly makes false, material
representations of fact in connection with his application.”
Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 48 [1 USPQ2d
1483] (Fed. Cir. 1986). A party seeking cancellation of a
trademark registration for fraudulent procurement bears a
heavy burden of proof. W.D. Byron & Sons, Inc. v. Stein Bros.
Mfg. Co., 377 F.2d 1001, 1004 [153 USPQ 749] (CCPA 1967).
Indeed, “the very nature of the charge of fraud requires that it
be proven ‘to the hilt’ with clear and convincing evidence. There
is no room for speculation, inference or surmise and, obviously,
any doubt must be resolved against the charging party.” Smith
Int’l, Inc. v. Olin Corp., 209 USPQ 1033, 1044 (TTAB 1981).

Opposer did not allege, nor did it offer any proof, that even if false,
Applicant’s statements were made with an intent to deceive. Applicant has
testified that he targets U.S. customers and offers his services in the United
States, thereby evincing his intent to offer marathon services in U.S.
commerce.
Opposition No. 91214916
16
Since Opposer has failed to plead and prove all of the elements of fraud,
let alone proving them to the hilt, Opposer’s claim of fraud fails.
Conclusion
Opposer has brought this opposition on the grounds of likelihood of
confusion and fraud. The ground of likelihood of confusion fails because
Opposer has not proven priority of a distinctive mark, inherent or otherwise.
Rather, we find that Opposer’s pleaded common law mark, ANTARCTICA
MARATHON is primarily geographically descriptive, and is closer to being
highly descriptive of Opposer’s marathon and marathon and marathon-
related travel services, including offering a marathon in Antarctica. We
further find that Opposer has not shown acquired distinctiveness of that
mark, particularly in light of Applicant’s competing rights. Thus, Opposer
has not shown priority, and its claim of likelihood of confusion fails.
Regarding fraud, Opposer has not pleaded or proven that Applicant had
an intent to deceive regarding the allegedly false statements made in his
identification of services. Rather, Applicant has shown an intent to use his
mark in U.S. commerce. Thus, Opposer has not satisfied all of the elements of
fraud, and this ground fails as well.
DECISION: The opposition is dismissed.