UPDATE 2: “College Football Playoff” trademark application loses Coach’s Challenge

We’ve blogged about the BCS’s intent to register the words “COLLEGE FOOTBALL PLAYOFF” for the BCS college football playoff HERE and HERE.

It doesn’t take a trademark attorney to figure out that the words COLLEGE FOOTBALL PLAYOFF are descriptive of a “college football playoff,” which the BCS describes as the following services: “Entertainment services in the nature of television and radio sports programs featuring college football games, exhibitions and tournaments; entertainment services, namely, organizing and staging college football games, exhibitions and tournaments; and providing entertainment, information, news and programming, polls, scores, standings, statistics, and history and background, all in the field of the sport of football, via the internet.”

The USPTO agreed, and refused to register the trademark.  As explained in the previous posts, trademarks that are “merely descriptive” of the goods or services are not registrable without a showing of acquired distinctiveness (or, secondary meaning).  It’s pretty hard to show that your trademark as acquired distinctiveness when it’s not even in use yet.  Nonetheless, the BCS threw out the red flag to challenge the refusal, but, on February 6, 2014, the USPTO said that the play on the field stands.

Well, that’s not entirely accurate, the USPTO is now saying that the mark is just flat out generic.  Generic terms can never be registered. Wilson cannot obtain a registration for FOOTBALL for footballs…  And, now, the BCS cannot receive a registration for COLLEGE FOOTBALL PLAYOFF no matter how much acquired distinctiveness it claims to have.  So, the BCS actually lost yards on the play.

From the USPTO’s most- recent Office Action:

Registration was initially refused under Trademark Act Section 2(e)(1) because the applied-for mark is merely descriptive of applicant’s services.  15 U.S.C. §1052(e)(1).  Applicant was also advised that the mark appears to be generic as well.  In response, applicant amended the application to add a claim of acquired distinctiveness under Section 2(f).  15 U.S.C. §1052(f).

Initially applicant was advised that the mark might be generic for only one of applicant’s services.  However upon further review, registration is now refused because the applied-for mark is generic for all of applicant’s services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(c) et seq., 1209.02(a)(ii).  Thus, applicant’s claim of acquired distinctiveness under Section 2(f) is insufficient to overcome the refusal because no amount of purported proof that a generic term has acquired secondary meaning can transform that term into a registrable trademark or service mark.  See 15 U.S.C. §1052(f); In re Bongrain Int’l (Am.) Corp., 894 F.2d 1316, 1317 n.4, 13 USPQ2d 1727, 1728 n.4 (Fed. Cir. 1990); H. Marvin Ginn Corp. v. Int’l Ass’nof Fire ChiefsInc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986); TMEP §1212.02(i).

Ouch.  I’d say the BCS needs to sit out for a “concussion assessment” over that one.

The BCS isn’t giving up so easily.  The strategy now appears to be based on registering the exciting logo below:

BCS CFP logo

Yeah, that “exciting” bit was sarcasm.

Actually, there has been an application pending for a different form of that logo since last year.  Not surprisingly, the USPTO is requiring the BCS to “disclaim” the generic wording, so the BCS will essentially be left with the beautiful black and gold logo as a registration, although I anticipate lots of over-reaching lawsuits when retailers begin using the term “College Football Playoff” in advertisements for TV’s, French onion dip, and recliners.

On a side-note, logos must be described in order to assist with searching for conflicting logos, so the USPTO will assign various tags to describe the logo.  Hilariously, the design code for the above logo is: “21.03.18 – Australian footballs; Rugby balls; Footballs; Elliptical shaped balls.”

Come on, Man!  This is America.  Wouldn’t “American football” have been enough?  Why bring rugby into this?

Finally, interested in what  the BCS wants to sell you with that logo on it?

IC 006. US 002 012 013 014 023 025 050. G & S: Metal key chains

IC 009. US 021 023 026 036 038. G & S: Video game software; digital media, namely, pre-recorded DVDs, downloadable audio and video recordings, and CDs featuring college football games, exhibitions and tournaments, and promoting the sport of football; downloadable software in the nature of a mobile application for providing entertainment, information, news and programming, polls, scores, standings, statistics, and history and background, all in the field of the sport of football

IC 014. US 002 027 028 050. G & S: Jewelry, watches, pendants, rings, medallions, collectible coins

IC 016. US 002 005 022 023 029 037 038 050. G & S: Printed publications in the form of game programs, media guides and commemorative books in the field of sports and entertainment; bumper stickers, decals and paper pennants

IC 018. US 001 002 003 022 041. G & S: Wallets, billfolds

IC 020. US 002 013 022 025 032 050. G & S: Plastic novelty license plates; vinyl flags

IC 021. US 002 013 023 029 030 033 040 050. G & S: Mugs and beverage glassware

IC 025. US 022 039. G & S: Men’s, women’s, and children’s clothing, namely, t-shirts, sweat shirts, sweat pants, caps, hats, pullovers, jerseys, and jackets, visors, shorts, socks, sweatbands, scarves, and sweaters

IC 027. US 019 020 037 042 050. G & S: Rugs

IC 028. US 022 023 038 050. G & S: Toy novelty items, namely, foam fingers and hands; sports equipment, namely, footballs and kicking tees; collectible toys, namely, full-sized replica football helmets and mini collector football helmets, collectible full-sized replica footballs

IC 041. US 100 101 107. G & S: Entertainment services in the nature of television and radio sports programs featuring college football games, exhibitions and tournaments; entertainment services, namely, organizing and staging college football games, exhibitions and tournaments; and providing entertainment, information, news and programming, polls, scores, standings, statistics, and history and background, all in the field of the sport of football, via the internet

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