Applicant S9 Sports whiffed in its attempt to register the mark HIGH SCHOOL WORLD SERIES for, inter alia, "promoting sports competitions and/or events of others; promoting the goods and services of others by arranging for sponsors to affiliate their goods and services with high school baseball." The Board sustained this opposition filed by the Office of the Commissioner of Baseball, finding applicant's mark confusingly similar to the "very famous" and registered mark WORLD SERIES for entertainment services in the nature of baseball games, and for other related services, including organizing community sporting events. Office of the Commissioner of Baseball v. S9 Sports, LLC, Opposition No. 91200934 [not precedential].
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Fame (Strike One): The Board found the mark WORLD SERIES to be "very famous," particularly in connection with Opposer’s championship baseball series and related promotional goods and services. Applicant grudgingly acknowledged the mark's fame:
The Opposer’s World Series marks are famous. There is no question about it. (The three + pages of “look how great and famous we are” self aggrandizing preaching done by Opposer on this issue are wholly unnecessary and irrelevant.)
Of course, fame plays a dominant role of in the du Pont analysis.
The Marks (Strike Two): The only distinctive term in applicant's mark is WORLD SERIES. "The presence of the additional term HIGH SCHOOL would not be likely to distinguish the marks since it would merely indicate that Applicant offers a subset of Opposer’s services under its mark." The Board found the marks to be more similar than dissimilar, and this factor weighed in Opposer's favor.
The Services (Strike Three): The services as recited in the application and registration overlap . Applicant argued that the services of the parties are readily distinguishable.
It is laughable for anyone to say that the common major league baseball consumer would drive to some out of the way field with lights emblazoned “High School World Series”, in a parking lot loaded with minivans with paint on the windows saying“Go Bobby”, pay $6 for a ticket, enter a no-alcohol environment, and then think to himself, “What a deal I’m getting to see major league baseball!!”
The Board agreed, that someone attending a major league baseball game is unlikely to believe that he or she is watching a high school game: "Even the most exasperated of fans, comparing the play of a
professional baseball team with the level of play encountered at a neighborhood sandlot game, are nonetheless unlikely to believe they are watching or attending anything other than an unfortunate performance by their favorite professional team."
But the question is not whether consumers would confuse the services, but rather the source of the services.
[B]ased on the fame of Opposer’s mark, consumers know that Opposer will use its mark for advertising and promoting the goods and services of others in connection with its baseball championship. Also, as indicated above, consumers are likely to believe that Applicant’s services rendered under the mark HIGH SCHOOL WORLD SERIES are a variation of Opposer’s WORLD SERIES services rendered at the high school level.
The Board concluded that confusion is likely, and it therefore sustained the opposition.