Boston Athletic Association (BAA) operates the annual Boston Marathon which has taken place on the third Monday in April every year for the past 117 years. The Boston Marathon is the world’s oldest annual marathon and is one of the world’s best-known road racing events. BAA does not own a registration for MARATHON MONDAY but has used that term in association with the Boston Marathon.
BAA opposed an application to register the mark MARATHON MONDAY for clothing, filed by a company named Velocity. The Trademark Trial and Appeal Board (TTAB) denied the opposition, finding that MARATHON MONDAY is neither a close approximation of BAA’s name or identity, nor that it uniquely and unmistakably points to BAA.
BAA’s opposition claimed that the MARATHON MONDAY mark created a false suggestion of a connection with BAA. To prevail, BAA sought to prove that Boston Marathon identifies BAA and that MARATHON MONDAY is a close approximation of Boston Marathon. The Board found that the Boston Marathon is so well known that “it is inevitable that over the course of more than a century, the BOSTON MARATHON mark has become associated with its organizer, BAA.” BAA failed, however, to convince the Board that MARATHON MONDAY is a close approximation to BAA’s name or identity. The analysis is of whether a mark is a “close approximation” is similar to the likelihood of confusion analysis. Further, false association with a “name or identity” can be found if the mark is, or is a close approximation of, a nickname for the opposer, like “Margaritaville” for Jimmy Buffett or “Royal Kate” for the Duchess of Cambridge. In this case, the Board found that merely sharing the common term “Marathon” does not establish that MARATHON MONDAY is a close approximation of “Boston Marathon.” To the contrary, the Board found that although “Boston Marathon” is inextricably connected to the city of Boston, MARATHON MONDAY has no such connection.
BAA also failed to prove that the mark points uniquely to BAA. The fact that the Boston Marathon is always run on “Marathon Monday” was not enough. Applicant’s evidence established that other entities use “Marathon Monday” to refer to other marathons and related events, including to the Monday after the ING New York City Marathon and the celebration hosted by the Walt Disney Company the day after its 2011 Walt Disney World Marathon. BAA otherwise failed to prove that consumers associate MARATHON MONDAY so closely with BAA that they recognize it as BAA’s name, nickname, identity or persona.
Boston Athletic Association v. Velocity, LLC, Opposition No. 91202562 (TTAB October 26, 2015) [Precedential]