91245750 (T.T.A.B. Aug. 27, 2021)

Portland Mavericks Baseball Club, Inc.v.The National Association of Professional Baseball Leagues, Inc. Baseball Leagues, Inc.

Trademark Trial and Appeal BoardAug 27, 2021

91245750 (T.T.A.B. Aug. 27, 2021)

Mailed: August 27, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Portland Mavericks Baseball Club, Inc. v. The National Association of Professional Baseball Leagues, Inc. _____ Opposition No. 91245750 Opposition No. 91245751 _____ Frank J. Bonini, Jr., of Bonini IP Law LLC for Portland Mavericks Baseball Club, Inc. Mary Frances Love and H. David Starr of Muncy, Geisler, Olds & Love, P.C. for The National Association of Professional Baseball Leagues, Inc. _____ Before Bergsman, Wellington and Greenbaum, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: The National Association of Professional Baseball Leagues, Inc. (Applicant) seeks registration on the Principal Register of the marks PORTLAND MAVERICKS, in standard character form, and PORTLAND MAVERICKS and design, reproduced below, both for “entertainment services in the nature of baseball games and exhibitions,” in International Class 41.1 1 Serial No. 87407047 (standard character mark and subject of Opposition No. 91245750) and Serial No. 87407131 (design mark and subject of Opposition No. 91245751) were filed on This Opinion Is Not a Precedent of the TTAB Precedent of the TTAB PrePrecedent of the TTAB Opposition No. 91245750 Opposition No. 91245751 - 2 - The description of the mark reads as follows: The mark consists of the stylized words “PORTLAND MAVERICKS” above a snorting bucking bull kicking up dust, all of which is within an outline of a home plate. Color is not claimed as a feature of the mark. Applicant disclaims the exclusive right to use the name “Portland.” The Portland Mavericks Baseball Club, Inc. (Opposer) opposed the registration of Applicant’s marks on the following grounds: (1) Likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d); (2) false suggestion of a connection under Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a); (3) Lack of a bona fide intent to use the mark under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b); and April 11, 2017, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s claim of a bona fide intent to use the marks in commerce. Opposition No. 91245750 Opposition No. 91245751 - 3 - (4) misuse of the federal registration symbol. Opposer alleges prior and continuous common law use of the mark PORTLAND MAVERICKS in interstate commerce for “entertainment services, namely services relating to providing players to appear at events, including, baseball games.”2 Applicant, in its Answer, denies the salient allegations in the Notice of Opposition. In our March 6, 2019 order, we consolidated Opposition Nos. 91245750 and 91245751. As indicated in note 2, we cite to the record in Opposition No. 91245750. I. The Record The record includes the pleadings, and pursuant to Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), Applicant’s application files. The parties introduced the testimony and evidence listed below: A. Opposer’s testimony and evidence. 1. Notice of reliance on a copy of Applicant’s abandoned application files for the same marks at issue in these proceedings both for “clothing, namely, caps, hats, jerseys, polo shirts, sweatshirts, and t-shirts,” in International Class 25.3 2 Notice of Opposition ¶3 (1 TTABVUE 4). Citations are to the record in Opposition No. 91245750 unless otherwise indicated. 3 31 TTABVUE 11-183. These were use-based applications filed under Section 1(a) of the Trademark Act, 15 U.S.C. § 1052(a). The USPTO refused to register Applicant’s marks for clothing on the ground that the applied-for marks are merely a decorative or ornamental feature of Applicant’s clothing and, thus, do not function as a trademark to indicate the source of Applicant’s clothing. Sections 1, 2, and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052 and 1127. Opposition No. 91245750 Opposition No. 91245751 - 4 - 2. Notice of reliance on a copy of Applicant’s Registration No. 2567269 for the mark PORTLAND BEAVERS, in standard character form, for “entertainment services in the nature of baseball games and exhibitions,” in International Class 41,4 and the prosecution history file.5 3. Notice of reliance on a copy of Applicant’s Registration No. 3549696 for the mark PORTLAND BEAVERS and design, for “clothing, namely, athletic uniforms, caps, hats, jackets, jerseys, knit shirts, polo shirts, sweat shirts, sport shirts, t-shirts,” in International Class 25,6 and the prosecution history file.7 4. Notice of reliance on a copy of Applicant’s initial disclosures.8 5. Notice of reliance on Applicant’s responses to Opposer’s first set of interrogatories.9 6. Notice of reliance on Applicant’s admissions to Opposer’s requests for admission.10 4 31 TTABVUE 185-189. 5 31 TTABVUE 198-253. 6 31 TTABVUE 191-196. 7 31 TTABVUE 255-324. 8 31 TTABVUE 336-338. Opposer also proffered its initial disclosures. 31 TTABVUE 326-334. However, a party may not introduce its own initial disclosure through a notice of reliance. See Trademark Rule 2.120(k)(ii)(5), 37 C.F.F. § 2.120(k)(ii)(5) (“Written disclosures … may be submitted and made part of the record only by the receiving … party.”). Therefore, we do not consider Opposer’s initial disclosures. 9 31 TTABVUE 340-355. The Board posted the portions of Applicant’s interrogatory responses designated confidential at 33 TABVUE 3-18 and 38 TTABVUE 3-18. 10 31 TTABVUE 357-378. A party may introduce only an admission to a request for admission through a notice of reliance. Trademark Rule 2.120(k)(3)(i), 37 C.F.R. § 2.120(k)(3)(i). A denial or statement that the responding party cannot respond to the request does not establish the Opposition No. 91245750 Opposition No. 91245751 - 5 - 7. Notice of reliance on Applicant’s responses to Opposer’s request for production of documents.11 8. Notice of reliance on documents retrieved from the Internet.12 9. Testimony declaration of Dustin Alameda, owner of 503 Sports, LLC.13 truth or falsity of the assertion, but rather leaves the matter for proof at trial. Life Zone Inc. v. Middleman Grp. Inc., 87 USPQ2d 1953, 1957 n.10 (TTAB 2008) (denials to requests for admission inadmissible because “unlike an admission (or a failure to respond which constitutes an admission), the denial of a request for admission establishes neither the truth nor the falsity of the assertion, but rather leaves the matter for proof at trial.”). As such, we have considered only the admissions to the requests for admission. 11 31 TABVUE 38-416. Generally, responses to a request for production of documents introduced through a notice of reliance are admissible solely for purposes of showing that a party has stated that there are no responsive documents; documents produced in response to the requests are generally not admissible by notice of reliance alone. Trademark Rule 2.120(j)(3)(ii), 37 C.F.R. § 2.120(j)(3)(ii); see also City Nat’l Bank v. OPGI Mgmt. GP Inc./Gestion OPGI Inc., 106 USPQ2d 1668, 1674 n.10 (TTAB 2013) (responses to document production requests are admissible solely for purposes of showing that a party has stated that there are no responsive documents); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036 n.7 (TTAB 2012) (written responses to document requests indicating that no documents exist may be submitted by notice of reliance). However, in these cases, Applicant also introduced a notice of reliance on Opposer’s responses to Applicant’s request for production of documents. Accordingly, we find that the parties stipulated to the introduction of the parties’ responses to requests for production of documents through a notice of reliance. 12 31 TTABVUE 418-432. The probative value of Internet documents is limited. They can be used to demonstrate what the documents show on their face. However, the parties may not use documents obtained through the Internet to demonstrate the truth of what the author/publisher printed. See, e.g., Spiritline Cruises LLC v. Tour Mgmt. Servs., Inc., 2020 USPQ2d 48324, at *2 (TTAB 2020) (Internet printouts and other materials properly introduced under a notice of reliance without supporting testimony considered only for what they show on their face rather than for the truth of the matters asserted); Milwaukee Elec. Tool Corp. v. Freud Am., Inc., 2019 USPQ2d 460354, at *4 (TTAB 2019) (same for website, Internet printouts and other materials), complaint filed, No. 20-cv-109 (M.D.N.C. Feb. 3, 2020); Ricardo Media Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355, at *2 (TTAB 2019) (unaccompanied by testimony, articles from the Internet may not be considered for the truth of the matters asserted but are admissible for what they show on their face) 13 32 TTABVUE. Opposition No. 91245750 Opposition No. 91245751 - 6 - 10. Testimony declaration of Mary Patricia Vames, an independent contractor who performs work for Opposer relating to corporate communications, social media, marketing, and public relations.14 11. Testimony declaration of William Stewart, President of Zephyr Bay Sports Partners LLC.15 12. Testimony declaration of Dwight M. Barnell, Opposer’s Secretary, Director, and owner.16 13. Rebuttal testimony declaration of Dwight M. Barnell.17 14. Rebuttal testimony declaration of Mary Patricia Vames.18 B. Applicant’s evidence. 1. Testimony declaration of K.L. Wombacher, President and General Manager of Hillsboro Hops Professional Baseball.19 2. Testimony declaration of D. Scott Poley, Applicant’s Senior Vice President of Legal Affairs and General Counsel.20 14 35-36 TTABVUE. 15 37 TTABVUE. 16 33 and 34 TTABVUE. Opposer improperly posted the Barnell declaration at 33 TTABVUE as a confidential document thereby restricting public access. The only part of the Barnell that may be confidential is Exhibit 11, a purported stadium design Opposer developed. Opposer posted the document at 39 TTABVUE. Pursuant to Trademark Rule 2.1116 (g), 37 C.F.R. § 2.166(g), we treat the Barnell declaration as if it had been properly filed as non-confidential. 17 47 TTABVUE 2-59. 18 47 TTABVUE 60-73. 19 42 TTABVUE. The Board posted the portions of the Wombacher declaration designated confidential at 41 TTABVUE. 20 43 TTABVUE. The Board posted the portions of the Poley declaration designated confidential at 40 TTABVUE. Opposition No. 91245750 Opposition No. 91245751 - 7 - 3. Testimony declaration of Robert Fountain, Applicant’s former Deputy Counsel.21 4. Testimony declaration of Robert D. Richmond, President of the Arizona League, a rookie-level Minor League Baseball league.22 5. Notice of reliance on Opposer’s responses to Applicant’s requests for admission.23 6. Notice of reliance on Opposer’s responses to Applicant’s interrogatories.24 7. Notice of reliance on Opposer’s responses to Applicant’s request for production of documents.25 8. Notice of reliance on documents from the Internet.26 9. Notice of reliance on a copy of registration file for Applicant’s Registration No. 1870829 for the mark FORT WAYNE WIZARDS, in standard character form, for “entertainment services; namely, organizing and conducting competitions, matches and exhibitions of a professional baseball team for live performances and transmission by others via radio and television,” in International Class 41.27 21 44 TTABVUE. 22 45 TTABVUE. 23 46 TTABVUE 8-25. See note 10. 24 46 TTABVUE 27-53. 25 46 TTABVUE 55-73. See note 11. 26 46 TTABVUE 75-100. See note 12. 27 46 TTABVUE 102-121. Opposition No. 91245750 Opposition No. 91245751 - 8 - 10. Notice of reliance on a copy of registration file for Applicant’s Registration No. 1799743 for the mark WITCHITA WRANGLERS, in standard character form, for “entertainment services in the nature of baseball exhibitions,” in International Class 41.28 II. Background “Professional baseball leagues are organized into various divisions depending on the level of play relative to Major League Baseball. These divisions of play include Triple-A, Double-A, Class-A Advanced, Class A, Short Season A and Rookie ball.”29 “Applicant is an association of professional baseball leagues and their teams.”30 “Applicant serves as an umbrella organization for several professional baseball leagues, such as the Northwest League, as well as for professional baseball teams.”31 Specifically, “Applicant is a non-profit trade association of professional baseball leagues and teams.”32 “When joining a member professional baseball league, a member team is accorded exclusive geographic rights within a defined territory subject to certain terms and conditions.”33 Many of Applicant’s member teams affiliate with a Major League 28 46 TTABVUE 123-146. 29 Richmond Decl. ¶3 (45 TTABVUE 2). 30 Poley Decl. ¶2 (43 TTABVUE 2). 31 Richmond Decl. ¶4 (45 TTABVUE 2). 32 Fountain Decl. ¶2 (44 TTABVUE 2). 33 Richmond Decl. ¶5 (45 TTABVUE 3). Opposition No. 91245750 Opposition No. 91245751 - 9 - baseball team.34 Sometimes a league includes teams that are not affiliated with a Major League team.35 “The Northwest League has been in existence since 1955.”36 It has typically operated with six-to-eight teams primarily in Washington, Oregon, Idaho, and British Columbia.37 “The Portland Mavericks [not Opposer but the now defunct baseball team of the 1970’s] joined the Northwest League in 1973 and played in the Northwest League until 1977. Although the Portland Mavericks were not affiliated with a Major League Baseball team, they enjoyed all benefits and privileges of any other member of the Northwest League. This included having geographic exclusivity within the defined territory.”38 Bing Russell, the owner of the 1973-1977 Portland Mavericks, was a great promoter and his team drew bigger crowds than the higher Triple A teams that came immediately before and after the Maverick’s time in Portland.39 “The 1970’s Portland Mavericks baseball team was famous for being ‘mavericks’ in the true sense of the 34 Richmond Decl. ¶4 (45 TTABVUE 2). See also Fountain Decl. ¶3 (44 TTABVUE 2) (“Over the years, Applicant’s member baseball leagues have included both Major League Baseball- affiliated teams and independent-unaffiliated teams, especially at the lower classification levels.”). 35 Richmond Decl. ¶7 (45 TTABVUE 3). See also Poley Decl. ¶2 (43 TTABVUE 2). 36 Richmond Decl. ¶6 (45 TTABVUE 3). 37 Richmond Decl. ¶6 (45 TTABVUE 3). 38 Richmond Decl. ¶8 (45 TTABVUE 3-4). See also Fountain Decl. ¶4 (44 TTABVUE 2) (“[T]he Portland Mavericks was an independent-unaffiliated baseball team in Applicant’s member league, the Northwest League from 1973 through 1977.”) and Fountain Decl. ¶6 (44 TTABVUE 3) (“Although an independent-unaffiliated team, I have always understood the Portland Mavericks to be a member club of Applicant, both directly and indirectly through the Northwest League.”). 39 Richmond Decl. ¶11 (45 TTABVUE 5). Opposition No. 91245750 Opposition No. 91245751 - 10 - definition, as the ‘Portland Mavericks’ team that played in the 1970’s was an independent team, and not one of Applicant’s minor league baseball franchises.”40 The Portland Mavericks – A Brief But Legendary Run In Baseball History (April 26, 2019) ___ The Mavericks were something between a myth and a real squad. The Mavs were a professional team that was not affiliated with Major League Baseball in any way. ___ To start off with, the bus. The team rolled into opposing cities in a brightly colored red bus, the vehicle matched the “streetwalker” uniforms that the team wore on the field. To add to the confusion of onlookers, instead of the bus reading “Portland Mavericks Baseball Team,” the apostrophe was misplaced and it read, “Portland’s Maverick Baseball Team.” The synchronicity was beautiful, and it summed up the team perfectly. To add to the fun, catcher Jim Swanson decided to put a loudspeaker on the bus. The bus would play loud music with lyrics such as “Here comes the bad, band Portland Mavericks. Lock up your daughters.” ___ One thing that is important to note is the Mavs were actually a talented baseball team. The squad won four out of five division titles all while breaking attendance records in the process. In the 1973 season, the team had a combined attendance of over 83,000 fans. This broke the single A record. ___ 40 Barnell Decl. ¶5 (33 TTABVUE 20). Opposition No. 91245750 Opposition No. 91245751 - 11 - The Mavs lasted only five years, but what a legendary run it was.41 “Pursuant to agreements by and among Applicant (Minor League Baseball) and leagues and teams, when a higher level team wishes to enter a geographic territory where a lower level currently exists, the higher level team has the priority to geographic territory subject to arbitrated indemnities to the displaced team and league.”42 “In 1978, when the Triple A level Pacific Coast League established a Portland-based team, this resulted in arbitration and dissolution of the Portland Mavericks.”43 “It is common practice for sports leagues such as Applicant to own and/or license intellectual properties related to legacy and defunct sports teams.”44 In this regard, “[t]he Northwest League and Applicant has taken great care to preserve and celebrate its history and goodwill associated therewith,” including “throw-back nights featuring licensed products from Applicant’s Hometown Collection.”45 For example, the Hillsboro Hops Professional Baseball team, located on the west side of Portland, Oregon, contracted with Applicant for a PORTLAND MAVERICKS night on August 20, 2015.46 The Hillsboro Hops players wore Applicant’s licensed PORTLAND 41 Oregon Sports News website (oregonsportsnews.com) (33 TTABVUE 30-31). As explained in note 12, we do not consider the article for the truth of the matters asserted but for what it shows on its face. The probative value of the article is that it shows how the author and readers perceive the PORTLAND MAVERICKS baseball team. 42 Richmond Decl. ¶12 (45 TTABVUE 5-6). 43 Richmond Decl. ¶13 (45 TTABVUE 6). 44 Poley Decl. ¶3 (43 TTABVUE 2). 45 Richmond Decl. ¶6 (45 TTABVUE 6). 46 Wombacher Decl. ¶¶3, 10-13 (42 TTABVUE 2 and 5-6). Opposition No. 91245750 Opposition No. 91245751 - 12 - MAVERICKS jerseys. The advertising for the evening featured the PORTLAND MAVERICKS logo in advertising. Twenty-two former PORTLAND MAVERICKS players participated and made appearances.47 “Applicant continued marketing and promotional efforts under the mark including additional Maverick Monday games played in 2019 and scheduled for 2020.”48 Portland Mavericks Hillsboro Return, July 2nd (July 2, 2018) The Portland Mavericks are a unique and strangely individual team. They were an independent team that belonged to no one. Their roster contained a former major league star and baseball hopefuls that might never had received a chance otherwise. They were proud of their reputation as a bunch of nobodies. Yet, they were immortalized in the independent (naturally) baseball film, “The Dirty Ol’ Bastards of Baseball”. And, to remember the team that cannot be forgotten, the Hillsboro Hops will wear their ‘Portland Maverick’ uniforms again this year.49 III. Entitlement to a Statutory Cause of Action50 Opposer’s entitlement to a statutory cause of action, formerly referred to as “standing” by the Federal Circuit and the Board, is an element of the plaintiff’s case in every inter partes case. See Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277 (Fed. Cir. 2020) ), cert. denied, ___ S. Ct. ___ (2021); Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 47 Wombacher Testimony Decl. ¶13 (42 TTABVUE 6). 48 Wombacher Testimony Decl. ¶16 (42 TTABVUE 7). 49 33 TTABVUE 35. 50 Even though we now refer to standing as entitlement to a statutory cause of action, our prior decisions and those of the Federal Circuit interpreting “standing” under §§ 1063 and 1064 remain applicable. Opposition No. 91245750 Opposition No. 91245751 - 13 - 10837 (Fed. Cir. 2020), reh’g en banc denied 981 F.3d 1083, 2020 USPQ2d 11438 (Fed. Cir. 2020), petition for cert. filed; Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014). To establish entitlement to a statutory cause of action, a plaintiff must demonstrate: (i) an interest falling within the zone of interests protected by the statute and (ii) a reasonable belief in damage proximately caused by the registration of the mark. Corcamore, 2020 USPQ2d 11277 at *4. See also Empresa Cubana, 111 USPQ2d at 1062; Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (TTAB 1982). Since December 2014, Opposer has been operating social media sites (e.g., Twitter, Facebook, and Instagram) providing information about the PORTLAND MAVERICKS players from the 1970’s team.51 For example, Opposer uses PORTLAND MAVERICKS and a stylized “M” logo, reproduced below, on Opposer’s “official Twitter feed.”52 51 Barnell Testimony Decl. ¶6 (33 TTABVUE 20). 52 Barnell Testimony Decl. ¶6 and Exhibit 4 (33 TTABVUE 20 and 49). Opposition No. 91245750 Opposition No. 91245751 - 14 - 16. Opposer Portland Mavericks has continued the legacy of the Portland Mavericks team that played in the 1970’s. Opposer Portland Mavericks has provided entertainment services by coordinating and providing player appearances at events, including local events in the Portland, Oregon area, baseball games including independent teams. 17. With over 3000 dedicated Portland Mavericks Baseball Club followers to our Facebook and other social media sites, we are so honored to be the current owner of this historic and colorful sports baseball team from Portland Oregon.53 Since 2015, Mary Patricia Vames has performed work for Opposer relating to corporate communications, social media, marketing, and public relations. In January 2016, she arranged for Frank Peters, the former manager of the PORTLAND MAVERICKS to make a guest appearance as part of an auction package for the Hillsboro Hops annual auction where the winners would watch a game with Peters.54 In July 2016, the Hillsboro Hops contacted Opposer requesting Vames to arrange for Frank Peters to make a guest appearance at a PORTLAND BEAVERS game.55 Finally, on July 5, 2018, Kyle Lussier, a member of the Hillsboro Hops promotional 53 Barnell Testimony Decl. ¶¶16 and 17 (33 TTABVUE 23). See also Vames Testimony Decl. ¶ 11 (35 TTABVUE 5) (Opposer “arranges for Portland Mavericks team members to attend events, including baseball games.”). 54 Vames Testimony Decl. ¶7 and Exhibit 1 (35 TTABVUE 3 and 8). Ms. Vames did not testify whether the Frank Peters package was, in fact, part of the Hillsboro Hops annual auction, whether anyone purchased the Frank Peters package, whether anyone watched the game with Frank Peters, or the date of the proposed game. K.L. Wombacher, President and General Manager of Hillsboro Hops Professional Baseball, has reviewed his company’s records and has no record of the Frank Peters auction referred to by Patricia Vames. Wombacher Testimony Decl. ¶19 (42 TTABVUE 7-8). 55 Vames Testimony Decl. ¶8 (35 TTABVUE 4). Again, Ms. Vames did not testify whether Mr. Peters actually made an appearance at a PORTLAND BEAVERS game or when he made the appearance. Opposition No. 91245750 Opposition No. 91245751 - 15 - team, contacted Vames to arrange the guest appearances of form PORTLAND MAVERICKS players at special event nights called “Mavs Mondays.”56 William Stewart, President of Zephyr Bay Sports Partners LLC, with a principal place of business located in Highlands Ranch, Colorado, testified that in 2017, Opposer organized an event where members of the 1970’s PORTLAND MAVERICKS baseball team made guest appearances and signed autographs.57 Opposer argues that it is entitled to a statutory cause of action based on its activities in promoting and arranging appearances and autograph signings for former PORTLAND MAVERICKS players. It contends that it has been using the PORTLAND MAVERICKS mark prior to Applicant and that the registration of Applicant’s mark will “disrupt the status quo of Opposer’s prior use.”58 Opposer has an interest falling within the zone of interest protected by the Trademark Act inasmuch as the parties are using identical marks for arguably similar services (i.e., PORTLAND MAVERICKS for arranging appearances and autograph signings for former PORTLAND MAVERICKS players vs. PORTLAND 56 Vames Testimony Decl. ¶10 (35 TTABVUE 4). 57 Stewart Testimony Decl. ¶¶2 and 3 (37 TTABVUE 2). Mr. Stewart did not testify as to how many events took place, the exact dates of those events, where those events took place, how many former PORTLAND MAVERICKS players participated, which former PORTLAND MAVERICKS players participated, if and how the event(s) were advertised, or provided copies of any such advertising. The PORTLAND MAVERICKS of the 1970s were phenomena of Portland, Oregon and Northwest League in the northwestern United States, while the Zephyr Bay Sports Partners is a Colorado organization. Mr. Stewart’s testimony does not explain the attraction of the defunct PORTLAND MAVERICKS to a Colorado organization and fan base in 2017. 58 Opposer’s Rebuttal Brief, pp. 19-20 (50 TTABVUE 23-24). Opposition No. 91245750 Opposition No. 91245751 - 16 - MAVERICKS for “entertainment services in the nature of baseball games and exhibitions”). Because Opposer’s likelihood of confusion claim is not frivolous, Opposer has a reasonable belief that the registration of Applicant’s mark will damage Opposer. See Lipton Indus., Inc. v. Ralston Purina Co., 607 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982) (plaintiff may establish standing by proving a real commercial interest in its own marks and a reasonable belief that it would be damaged (e.g., a claim of likelihood of confusion that is not wholly without merit)); Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020, 1022 (TTAB 2009) (“Petitioner has established his common-law rights in the mark DESIGNED2SELL, and has thereby established his standing to bring this proceeding.”); Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1118 (TTAB 2009) (testimony that opposer uses its mark “is sufficient to support opposer’s allegations of a reasonable belief that it would be damaged …” where opposer alleged likelihood of confusion); CPC Int’l, Inc. v. Seven- Up Co., 218 USPQ 379, 380 (TTAB 1983) (“opposer established its standing to raise the issue [of nonuse] by proving that its assertion of likelihood of confusion was not wholly without merit.”). “Standing having been established, [Opposer] is entitled to rely on any statutory ground which negates [Applicant’s] right to the subject registration and may invoke the general public interest in support of its claim.” Lipton Indus., 213 USPQ at 190. See also Enbridge, Inc. v. Excelerate Energy LP, 92 USPQ2d 1537, 1543 n.10 (TTAB 2009) (if plaintiff can show standing on one ground, has right to assert any other Opposition No. 91245750 Opposition No. 91245751 - 17 - grounds); Liberty Trouser Co., Inc. v. Liberty & Co., Ltd., 222 USPQ 357, 358 (TTAB 1983). Opposer has established its entitlement to a statutory cause of action. IV. Likelihood of Confusion Opposer, as the plaintiff in these proceedings, bears the burden of proof with respect to its claim of priority of use and likelihood of confusion. See, e.g., Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002) (“[t]he burden of proof rests with the opposer ... to produce sufficient evidence to support the ultimate conclusion of [priority of use] and likelihood of confusion”); Cunnignham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000) (“One such ground is § 2(d) of the Lanham Act, relating to a likelihood of confusion between the mark sought to be canceled and a mark for which the party seeking cancellation can establish either prior use or prior registration.”); Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357, 57 USPQ2d 1720, 1722 (Fed. Cir. 2001) (“[i]n opposition proceedings, the opposer bears the burden of establishing that the applicant does not have the right to register its mark”); Champagne Louis Roederer S.A. v. Delicato Vineyards, 143 F.3d 1373, 47 USPQ2d 1459, 1464 (Fed. Cir. 1998) (Michel, J. concurring). A. Priority Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), permits opposition based on ownership of “a mark or trade name previously used in the United States … and not abandoned.” Opposition No. 91245750 Opposition No. 91245751 - 18 - Opposer must establish proprietary rights in its pleaded common-law mark that precede Applicant’s actual or constructive use of its involved mark. See Executive Coach Builders, Inc. v. SPV Coach Co., Inc., 123 USPQ2d 1175, 1180 (TTAB 2017) (citing Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981); Larami Corp. v. Talk to Me Programs Inc., 36 USPQ2d 1840, 1845 (TTAB 1995)). In other words, because unregistered marks are not entitled to the presumptions established under Section 7(b) and (c) of the Trademark Act, it is Opposer’s burden to demonstrate that it owns a trademark that was used prior to Applicant’s first use or constructive use of its mark and not abandoned. Executive Coach Builders, 123 USPQ2d at 1180 (citing Life Zone Inc. v. Middleman Grp. Inc., 87 USPQ2d 1953, 1959 (TTAB 2008)). Applicant's constructive use priority date is April 11, 2017, the date it filed its intent-to-use applications to register PORTLAND MAVERICKS and PORTLAND MAVERICKS and design pursuant to Section 1(b) of the Trademark Act. 15 U.S.C. § 1051(b). See Executive Coach Builders, 123 USPQ2d at 1180 (citing Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1119 (TTAB 2009); Media Online Inc. v. El Clasificado Inc., 88 USPQ2d 1285, 1288 (TTAB 2008)). An intent-to-use applicant also is entitled to rely on actual use, prior to the constructive use date of the intent-to-use application. Corp. Document Servs. Inc. v. I.C.E.D. Mgm’t Inc., 48 USPQ2d 1477 1479 (TTAB 1998) (citing Dyneer Corp. v. Auto. Prods. plc, 37 USPQ2d 1251 (TTAB 1995) (intent-to-use applicant permitted to tack use analogous to trademark use to its constructive use date so long as applicant had Opposition No. 91245750 Opposition No. 91245751 - 19 - continuing intent to cultivate association of mark with itself and its goods or services up until the filing date). In October 2014, the Hillsboro Hops entered into a license agreement with Applicant to use the marks PORTLAND MAVERICKS and PORTLAND MAVERICKS and design in connection with baseball games and exhibitions in the 2015 season.59 On April 29, 2015, the Hillsboro Hops announced its 2015 promotional schedule including the PORTLAND MAVERICKS night.60 On August 15, 2015, the Hillsboro Hops held PORTLAND MAVERICKS night at Ron Tonkin Field. Hillsboro Hops players wore licensed Portland Mavericks jerseys and the Portland Mavericks logo was featured in advertising. We coordinated appearances and participation by twenty-two (22) former Mavericks directly with former players Rob Nelson, Frank Peters and Jim Swanson. … For avoidance of doubt, we did not coordinate with Opposer.61 In March 2018, the Hillsboro Hops and Applicant entered into another license for MAVS Monday mini-plan promoting PORTLAND MAVERICKS baseball games.62 We reproduce below the Hillsboro Hops press release promoting the MAVS Monday promotion.63 59 Wombacher Testimony Decl. ¶10 (42 TTABVUE 5). 60 Wombacher Testimony Decl. ¶11 and Exhibit D (42 TTABVUE 6 and 89). 61 Wombacher Testimony Decl. ¶13 and Exhibit H (42 TTABVUE 6 and 104-105). 62 Wombacher Testimony Decl. ¶15 and Exhibits J and K (42 TTABVUE 6-7 and 112-149). 63 Wombacher Testimony Decl. Exhibit J (42 TTABVUE 112) posted at milb.com/Hillsboro/news/. Opposition No. 91245750 Opposition No. 91245751 - 20 - Opposition No. 91245750 Opposition No. 91245751 - 21 - “The Mavericks nights were a smashing success. Applicant continued marketing and promotional efforts under the mark including additional Maverick Monday games played in 2019 and scheduled for 2020.”64 We find that Applicant, as a trademark licensor, has a priority date of August 15, 2015, the date the Hillsboro Hops held PORTLAND MAVERICKS night at Ron Tonkin Field, as Applicant’s licensee. It is Opposer’s burden to prove that it has used PORTLAND MAVERICKS in association with “entertainment services by coordinating and providing player appearances at events, including local events in the Portland, Oregon area, baseball games including independent teams” prior to Applicant’s August 15, 2015 priority date.65 Since December 2014, Opposer has been operating social media sites providing information about the PORTLAND MAVERICKS players that played in the 1970’s.66 Through October 28, 2020, Opposer has attracted 3000 followers to its Facebook and other social media sites.67 As discussed in the previous section, Mary Patricia Vames testified that in January 2016, she arranged for Frank Peters to make a guest appearance as part of 64 Wombacher Testimony Decl. ¶16 (42 TTABVUE 7). 65 Barnell Testimony Decl. ¶16 (33 TTABVUE 23). See also Notice of Opposition ¶3 (1 TTABVUE 4) (Opposer alleges prior and continuous common law use of the mark PORTLAND MAVERICKS in interstate commerce for “entertainment services, namely services relating to providing players to appear at events, including, baseball games.”); Vames Testimony Decl. ¶11 (35 TTABVUE 5) (“Opposer Portland Mavericks arranges for Portland Mavericks team members to attend events, including baseball games.”). 66 Barnell Testimony Decl. ¶6 (33 TTABVUE 20). 67 Barnell Testimony Decl. ¶17 (33 TTABVUE 23). Opposition No. 91245750 Opposition No. 91245751 - 22 - an auction package for the Hillsboro Hops annual auction.68 She introduced the press release reproduced below to promote the sale of this auction package.69 Opposition No. 91245750 Opposition No. 91245751 - 23 - Opposer contends that it has established priority of use by virtue of the following:70 ● Creating Opposer Portland Mavericks Baseball Club, Inc., in July 2014;71 ● Operating over a dozen websites, “from the Portland Mavericks website(s) to its varied social media platform accounts.”;72 and ● Using the PORTLAND MAVERICKS mark to schedule special events including the appearance of PORTLAND MAVERICKS former players.73 There are several problems with Opposer’s contentions. First, Opposer’s incorporation in July 2014 is evidence of Opposer’s date of incorporation and does not, by itself, establish any use of the mark at issue. See Luckie Magic Corp. v. McCall Mfg. Co., Inc., 133 USPQ 487, 489 n.1 (TTAB 1962). See also Mario Diaz v. Servicios de Franquicia Pardos S.A.C.., 83 USPQ2d 1320, 1329 (TTAB 2007) (“For purposes of analyzing the issue of priority within the context of opposer’s Section 2(d) claim, while opposer states that he intends to rely on his date of incorporation as his date of first use in commerce, the earliest date upon which opposer may rely for priority purposes in this case is July 2002, the date opposer posted his sign displaying the mark.”); Bellanca Aircraft Corp. v. Bellanca Aircraft Engineering, Inc., 190 USPQ 68 Vames Testimony Decl. ¶7 (35 TTABVUE 3). 69 Vames Testimony Decl. ¶7 and Exhibit 1 (35 TTABVUE 3 and 8). 70 Opposer’s Brief, pp. 9-10 (48 TTABVUE 15-16). 71 Barnell Testimony Decl. ¶3 (33 TTABVUE 3). 72 Barnell Testimony Decl. ¶6 (33 TTABVUE 3). 73 Vames Testimony Decl. ¶¶5-6 and 10-11 (35 TTABVUE 3-4). Opposition No. 91245750 Opposition No. 91245751 - 24 - 158, 169 (TTAB 1976) (“The mere filing of articles of incorporation does not bestow rights in the name of that corporation, insofar as proceedings before this Board are concerned, as of the date of incorporation or any subsequent date, in the absence of evidence of use of the name or the salient distinguishing feature thereof in connection with a going business and in a manner calculated to engage the attention of the relevant purchasing public.”). Second, Opposer’s presence on social media providing information regarding former PORTLAND MAVERICKS players is not the activity on which Opposer based its claim of likelihood of confusion. As noted above, Opposer pleaded prior and continuous common law use of the mark PORTLAND MAVERICKS in interstate commerce for “entertainment services, namely services relating to providing players to appear at events, including, baseball games.”74 Both Dwight Barnell and Mary Patricia Vames testified that Opposer has used PORTLAND MAVERICKS to identify “entertainment services by coordinating and providing player appearances at events, including local events in the Portland, Oregon area, baseball games including independent teams.”75 There is no basis on which we may find the parties tried by implied consent the issue of likelihood of confusion based on Opposer’s use of PORTLAND MAVERICKS for providing information regarding former PORTLAND MAVERICKS players. In 74 Notice of Opposition ¶3 (1 TTABVUE 4). 75 Barnell Testimony Decl. ¶16 (33 TTABVUE 23). See also (Vames Testimony Decl. ¶11 (35 TTABVUE 5) (“Opposer Portland Mavericks arranges for Portland Mavericks team members to attend events, including baseball games.”). Opposition No. 91245750 Opposition No. 91245751 - 25 - addition, we may not tack Opposer’s use of PORTLAND MAVERICKS for providing information regarding form PORTLAND MAVERICKS players to prove Opposer’s use of PORTLAND MAVERICKS for “entertainment services, namely services relating to providing players to appear at events, including, baseball games” because those activities are not substantially identical. See Big Blue Prods. Inc. v. Int’l Business Machines Corp., 19 USPQ2d 1072, 1075 (TTAB 1991). For purposes of tacking, equating the term “substantially identical goods or services” to the term “legally equivalent or indistinguishable marks” is supported by cases involving the Morehouse defense which have held that “if an applicant had previously registered the same or a substantially identical mark for the same or substantially identical goods opposition cannot be sustained because of a lack of possibility of damage to opposer.” Jackes-Evans Mfg. Co. v. Jaybee Mfg. Corp., 481 F.2d 1342, 179 USPQ 81, 83 (CCPA 1973) (emphasis added); Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 160 715, 717 (CCPA 1969); Bausch & Lomb Inc. v. Leupold & Stevens Inc., 1 USPQ2d 1497, 1500 (TTAB 1986). Big Blue Prods. Inc., 19 USPQ2d at 1075 n.3. Finally, based on the testimony of Mary Patricia Vames, Opposer first rendered “entertainment services, namely services relating to providing players to appear at events, including, baseball games” in January 2016, a date subsequent to Applicant’s first use of its mark, when she arranged for Frank Peters to make a guest appearance as part of an auction package for the Hillsboro Hops annual auction.76 In addition, 76 Vames Testimony Decl. ¶7 (35 TTABVUE 3). Opposition No. 91245750 Opposition No. 91245751 - 26 - Ms. Vames did not testify that she used the PORTLAND MAVERICKS trademark or trade name in connection with rendering those services. Because we find Applicant first used its marks for “entertainment services in the nature of baseball games and exhibitions” on August 15, 2015, the date the Hillsboro Hops held PORTLAND MAVERICKS night at Ron Tonkin Field and Opposer purportedly first used its PORTLAND MAVERICKS mark in January 2016, we find that Applicant has proven prior use of its mark. We find that Opposer has failed to establish a date of priority before Applicant’s first use date, an essential element of any claim under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). Accordingly, we need not reach the issue of likelihood of confusion, because without proof of priority, Opposer cannot prevail. See Exec. Coach Builders, 123 USPQ2d at 1199. We dismiss Opposer’s likelihood of confusion claim under Section 2(d) of the Trademark Act. V. False Suggestion of a Connection Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a), prohibits the registration on either the Principal or the Supplemental Register of a designation that consists of or comprises matter that may falsely suggest a connection with “persons, living or dead, institutions, beliefs, or national symbols ...” 15 U.S.C. § 1052(a). “The rights protected under the § 2(a) false suggestion provision are not designed primarily to protect the public, but to protect persons and institutions from exploitation of their persona.” Bridgestone/Firestone Research Inc. v. Auto. Club de l’Ouest de la France, Opposition No. 91245750 Opposition No. 91245751 - 27 - 245 F.3d 1359, 58 USPQ2d 1460, 1463-64 (Fed. Cir. 2001) (citing to Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 217 USPQ 505, 508-09 (Fed. Cir. 1983). To establish that a proposed mark falsely suggests a connection with a person or an institution, Opposer must prove that: (1) The mark is the same as, or a close approximation of, the name or identity previously used by another person or institution; (2) The mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution; (3) The person or institution named by the mark is not connected with the activities performed by the applicant under the mark; and (4) The fame or reputation of the person or institution is such that, when the mark is used with the applicant’s goods or services, a connection with the person or institution would be presumed. In re Pedersen, 109 USPQ2d 1185, 1188 (TTAB 2013) (citing in the ex parte context Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., for “providing foundational principles for the current four-part test used by the Board to determine the existence of a false connection”); In re Jackson Int’l Trading Co., 103 USPQ2d 1417, 1419 (TTAB 2012); Buffett v. Chi-Chi’s, Inc., 226 USPQ 428, 429 (TTAB 1985); In re Cotter & Co., 228 USPQ 202, 204 (TTAB 1985). Even assuming Applicant’s marks PORTLAND MAVERICKS and PORTLAND MAVERICKS and design are close approximations of Opposer’s previously used name Opposition No. 91245750 Opposition No. 91245751 - 28 - and identity (Element 1) and that Opposer’s name or identity is not associated with Applicant’s services (Element 3), Opposer’s Section 2(a) claim fails because Opposer failed to prove that Applicant’s PORTLAND MAVERICKS marks point uniquely and unmistakably to Opposer (Element 2) and that Opposer’s name or identity is not so well known that when Applicant’s use the marks consumers will assume there is an association with Opposer (Element 4). With respect to Element 2, Opposer, in its brief, concedes that PORTLAND MAVERICKS points to the PORTLAND MAVERICKS team from the 1970s. [T]he Portland Mavericks (team from the 1970s) are still around, and Opposer, in the course of providing its services, works with individual Portland Mavericks players, and continues to promote the organization and team. Permitting Applicant to register PORTLAND MAVERICKS marks would not only cause confusion but would falsely suggest a connection with the well- known, publicly recognized group, the Portland Mavericks, to which Opposer is connected.77 ___ Similarly, Applicant’s applied-for marks are also identical to the name or identity used by both Opposer and the Portland Mavericks of the 1970’s and makes a false suggestion of connection. The Portland Mavericks of the 1970’s are still known today for their infamous reputation as a team that refused Applicant’s influence and many of the original players (collectively and individually known as the “Portland Mavericks”) appear at entertainment and promotional events arranged by Opposer. Evidence of record demonstrates that the Portland Mavericks of the 1970’s have garnered a unique “persona” unlike any other team in the history of baseball, and which is also completely juxtaposed to the reputation of any of Applicant’s teams. 77 Opposer’s Brief, p. 24 (48 TTABVUE 29). Opposition No. 91245750 Opposition No. 91245751 - 29 - The Portland Mavericks' unique reputation and largely successful seasons made them very famous during this initial period, as evidenced by the independent club’s soaring attendance rates during the 1970’s and their 1973, 75’, 76’, and 77’ league titles. Like the Petitioner in Hornby [Hornby v. TJX Cos., 87 USPQ2d 1411 (TTAB 2008)], the Portland Mavericks have successfully kept their name before U.S. public, as their reputation has been cemented in baseball history and they continue to engage in services.78 (Emphasis added). If consumers associate the PORTLAND MAVERICKS marks “with the well- known publicly recognized group, the (1970’s) Portland Mavericks (team),” then Applicant’s PORTLAND MAVERICKS marks do not point uniquely and unmistakably to Opposer.79 According to Opposer, Applicant’s marks point uniquely and unmistakably to the now defunct 1970’s PORTLAND MAVERICKS baseball team. See Univ. of Notre Dame du Lac, 217 USPQ at 509 (“Thus, to show an invasion of one's ‘persona,’ it is not sufficient to show merely prior identification with the name adopted by another. . . . The mark . . .must point uniquely to the [opposer].”). Opposer also contends that Applicant’s marks PORTLAND MAVERICKS points uniquely and unmistakably to Opposer because Opposer operates its business under the name Portland Mavericks Baseball Club, Inc. Additionally, the Portland Mavericks name has sufficient fame as likely to cause the public to presume a connection with Opposer because Opposer operates its business under the name Portland Mavericks Baseball Club, Inc., and members of public, including Mr. Dustin Alameda, 78 Opposer’s Brief, p. 26 (48 TTABVUE 31). 79 We are unaware of any evidence supporting Opposer’s contention that it “is connected” to the 1970’s PORTLAND MAVERICKS team. Opposer does not cite to any supporting testimony or other evidence. Opposition No. 91245750 Opposition No. 91245751 - 30 - representatives of Applicant’s own Hillsboro Hops (Kyle Lussier), William “Bill” Stewart, and others, have contacted Opposer to arrange for the appearances of Portland Mavericks players at events and/or provide PORTLAND MAVERICKS gear.80 Opposer celebrates, not hides from the fact, that it is trading off the residual goodwill established by the PORTLAND MAVERICKS baseball team from the 1970’s. Opposer, Portland Mavericks Baseball Club, Inc., is an Oregon corporation that I established in July 29, 2014 with the vision of recreating the Portland Mavericks in the same spirit as it was under the team's original founder, Bing Russell: a team that would, once again, play with other independent organizations, free from Professional Baseball’s (i.e., the Applicant’s) influence.81 ___ Opposer Portland Mavericks has continued the legacy of the Portland Mavericks team that played in the 1970's. Opposer Portland Mavericks has provided entertainment services by coordinating and providing player appearances at events, including local events in the Portland, Oregon area, baseball games including independent teams.82 The PORTLAND MAVERICKS baseball team of the 1970’s no longer exists and we have no basis for concluding that anyone else is entitled to assert the right of that defunct business. In the absence of evidence that some person or business is the successor-in-interest to the PORTLAND MAVERICKS baseball team of the 1970’s, whatever rights it had under Section 2(a) of the Trademark Act were extinguished 80 Opposer’s Brief, p. 27 (48 TTABVUE 32). 81 Barnell Testimony Decl. ¶4 (33 TTABVUE 20). 82 Barnell Testimony Decl. ¶16 (33 TTABVUE 22). Opposition No. 91245750 Opposition No. 91245751 - 31 - when that baseball team ceased to exist.83 There is no testimony or other evidence that suggests Opposer is the legal successor to that entity and, therefore, it cannot assert rights on its behalf. See In re Wielinski, 49 USPQ2d 1754, 1758 (TTAB 1998), overruled in part on other grounds, In re WNBA Enters, LLC, 70 USPQ2d 1153 (TTAB 2003); See also In re MC S.r.l., 88 USPQ2d 1378, 1381 (TTAB 2008) (reversing a refusal based on false suggestion of a connection with singer Maria Callas, stating, after evaluating all of the evidence, significant doubt remains as to whether there is a successor in interest to Maria Callas' rights in her name or persona”); The Pierce- Arrow Society v. Spintek Filtration, Inc.., 2019 USPQ2d 471774 at *6-7 (TTAB 2019)(“Opposer has not established that it may claim rights in the name or identity of the defunct company, if any such rights existed, and we conclude that Opposer’s Section 2(a) claim is foreclosed for the reasons explained in In re Wielinski.”). We find that Opposer has failed to prove that Applicant’s marks point uniquely and unmistakably to Opposer. We turn now to the fame or reputation of Opposer’s name or identity (Element 4). The record clearly establishes that the PORTLAND MAVERICKS baseball team from the 1970’s has a place in the history of professional baseball. The record also establishes that Opposer is not the successor-in-interest to that defunct team’s intellectual property rights and that Opposer adopted and began using the PORTLAND MAVERICKS trademark to trade on the residual goodwill remaining in 83 We note that because the PORTLAND MAVERICKS baseball team from the 1970’s was a member of Applicant’s organization, Opposer claims rights to the residual goodwill to its trademark as a legacy trademark. Opposition No. 91245750 Opposition No. 91245751 - 32 - that mark albeit as an homage to that now defunct baseball team. There is no testimony or other evidence establishing Opposer’s fame or reputation other than the fact that it has 3,000 social media followers. We find that Opposer has failed to prove its identity is of sufficient fame or reputation that when Applicant uses its marks in connection with conducting baseball games and exhibitions consumers will presume there is a connection with Opposer. We have considered all of the evidence in the record. While we find that Applicant’s applied-for marks are a close approximation of Opposer’s identity and that no connection between Opposer and Applicant exists, the record fails to support finding Applicant’s marks point uniquely and unmistakably to Opposer and consumers would presume a connection with Opposer. We dismiss the Section 2(a) of the Trademark Act claim that Applicant’s marks falsely suggest a connection with Opposer. VI. Did Applicant Have A Bona Fide Intent to Use Its Marks When It Filed The Applications? Inasmuch as Applicant rendered baseball games and exhibitions using the applied-for marks prior to the filing date of the applications, we find that Applicant had a bona fide intent to use the marks when it filed the applications. We dismiss the Section 1(b) of the Trademark Act claim that Applicant lacked a bona fide intent to use the marks when it filed the applications. Opposition No. 91245750 Opposition No. 91245751 - 33 - VII. Misuse Of The Federal Registration Symbol. “The improper use of a registration notice in connection with an unregistered mark, if done with intent to deceive the purchasing public or others in the trade into believing that the mark is registered, is a ground for denying the registration of an otherwise registrable mark.” Copelands’ Enters. Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295, 1298 (Fed. Cir. 1991). The improper use of the registration symbol by an applicant will defeat applicant’s right to registration only in those cases where it is conclusively established that the misuse of the symbol was occasioned by an intent to deceive the purchasing public or others in the trade into believing that the mark was registered. Copelands’ Enters., 20 USPQ2d at 1298 (quoting Johnson Controls, Inc. v. Concorde Battery Corp., 228 USPQ 39, 44 (TTAB 1985). The Board has maintained the availability of this ground in Board proceedings. See, e.g., NSM Res. Corp. v. Microsoft Corp., 113 USPQ2d 1029, 1034 n.8 (TTAB 2014); see also, TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE § 309.03(c) (2021) (“Grounds ... (18) That defendant has misused the federal registration symbol with intent to deceive the purchasing public or others in the trade into believing that the mark is registered”) and cases cited therein at note 31. To support its claim that Applicant improperly used the federal registration symbol to deceive the public into believing that the PORTLAND MAVERICKS trademarks were registered, Opposer introduced the testimony declarations of Dustin Alameda and William Stewart. Opposition No. 91245750 Opposition No. 91245751 - 34 - Dustin Alamdea is the owner of 503 Sports, LLC. In December of 2016, 503 Sports entered into an agreement with Opposer, Portland Mavericks Baseball Club, Inc., in which Opposer granted 503 Sports exclusive use and rights of Opposer’s website and social media sites, to market, advertise, and sell Portland Mavericks hats, t-shirts and jerseys on Opposer’s website and social media sites.”84 In June 2018, K.L. Wombacher, President and General Manager of the Hillsboro Hops, on behalf of Applicant, tried to negotiate a trademark license with Alameda regarding the sale of PORTLAND MAVERICKS branded products.85 According to Alameda, Applicant attempted to stop 503 Sports “from continuing to sell Portland Mavericks merchandise” and “has made overt threats using its attorney to do so during the 503 Sports Opposition” against Applicant (Opposition No. 91243580).86 None of the documents attached to the Alameda testimony declaration refer to the federal registration symbol or to Applicant as having registered those marks. William Stewart, President of Zephyr Bay Sports Partners, LLC, testified that in June 2017, Applicant contacted him regarding a license and representing that “it owned a federal registration with the United States Patent and Trademark Office for the mark PORTLAND MAVERICKS.”87 Stewart agreed to license the PORTLAND MAVERICKS “under the belief that the Applicant owned a federal trademark registration for the mark PORTLAND MAVERICKS and that such an agreement was 84 Alameda Testimony Decl. ¶5 (32 TTABVUE 3). 85 Alameda Testimony Decl. ¶8 (32 TTABVUE 3-4). 86 Alameda Testimony Decl. ¶9 (32 TTABVUE 4). 87 Stewart Testimony Decl. ¶4 (37 TTABVUE 3). Opposition No. 91245750 Opposition No. 91245751 - 35 - necessary to continue us of the mark without infringing.”88 Accordingly, Stewart “signed the licensing agreement under duress that I would have infringement claims brought against me for my use of a ‘registered’ mark PORTLAND MAVERICKS and may be subject to additional claims in the future if I refused to do so.”89 Stewart declaration Exhibit 1 is a copy of a June 8, 2017 correspondence to Stewart from Robert Fountain, Applicant’s Deputy General Counsel, stating, “The Portland Mavericks marks are also the subject of trademark registrations with the United States Patent and Trademark Office, and are part of a group licensing program with other Minor League Baseball teams’ marks across the country.”90 Applicant offered Stewart’s organization “non-exclusive, royalty-free permission to use the Portland Mavericks trademarks.”91 In response, Robert Fountain testified that Applicant had filed applications to register PORTLAND MAVERICKS for clothing in International Class 25 and “[a]s such, the PORTLAND MAVERICKS marks were subject of applications for federal registration.”92 Although it would have been more clear in my letter to state that that the Portland Mavericks trademarks are the subject of applications for trademark registrations, I dispute the contention that my letter contains “material misrepresentations” as our assertion of trademark rights was based upon the historical relationship of the marks 88 Id. 89 Id. 90 37 TTABVUE 6. 91 Id. 92 Fountain Testimony Decl. ¶9 (44 TTABVUE 3). Opposition No. 91245750 Opposition No. 91245751 - 36 - with Applicant as well as Applicant’s ongoing licensing program.93 We note that the exhibits to the Stewart declaration do not show any misuse of the registration symbol. In fact, the display of the marks Applicant authorizes Stewart to use display the symbol “tm,” not the federal registration symbol ®.94 Mr. Stewart did not testify whether he took any action to verify Fountain’s claim that Applicant had rights in the PORTLAND MAVERICKS trademarks. Finally, Mr. Stewart did not testify that he sought legal advice either before signing the license agreement or after learning that Applicant had not registered the PORTLAND MAVERICKS trademarks. We presume Mr. Stewart did not undertake any investigation as to Applicant’s trademark rights, nor did he seek legal advice regarding this issue, because Applicant offered, and Stewart accepted, a royalty-free license agreement whereby his only obligations were to display authorized PORTLAND MAVERICKS trademarks in connection with goods and services of high quality manufactured by authorized licensees. In the present case, Robert Fountain admittedly mistakenly represented to William Stewart that Applicant had registered the PORTLAND MAVERICKS trademarks. We find Fountain’s explanation plausible and credible. This one instance of Applicant misrepresenting that it had registered the PORTLAND MAVERICKS 93 Fountain Testimony Decl. ¶12 (44 TTABVUE 4). 94 Stewart Testimony Decl. Exhibit 1 (37 TTABVUE 6). “A party may use terms such as ‘trademark,’ ‘trademark applied for,’ ‘TM’ and ‘SM’ regardless of whether a mark is registered. These are not official or statutory symbols of federal registration.” TRADEMARK MANUAL OF EXAMINING PROCEDURE § 906 (2021). Opposition No. 91245750 Opposition No. 91245751 - 37 - trademark in negotiating a nonexclusive, royalty-free license does not reveal an intentional misuse of the federal registration symbol that justifies denial of Applicant’s registrations. See Johnson Controls, 228 USPQ at 44 (“[A]pplicant’s misuse of the registration symbol was occasioned by a misunderstanding on the part of applicant’s president, who mistakenly believed that when applicant's attorney sent him the serial number of applicant's application, it meant that applicant had been cleared to use the mark.”). Under the circumstances, we find Applicant’s mistaken purported use of the federal registration symbol overcomes Opposer’s claim of a fraudulent misuse of the federal registration symbol. See Brown Shoe Co. v. Robbins, 90 USPQ2d 1752, 1757 (TTAB 2009) (“Mistake or inadvertence generally overcomes a claim of fraudulent misuse.”). We find no factual basis to conclude that Applicant's misuse of the registration symbol was occasioned by deceptive intent and, hence, no justification for refusal of registration. We dismiss the claim that Applicant misused the federal registration symbol. Decision: We dismiss the Notice of Opposition.

Portland Mavericks Baseball Club, Inc. v. The National Association of Professional Baseball Leagues, Inc. Baseball Leagues, Inc.