The Federal Circuit recently affirmed the conclusion of the Trademark Trial and Appeal Board (“TTAB”) that a soccer coach was not entitled to register the mark BEAST MODE SOCCER for t-shirts and soccer balls because it was likely to be confused with the mark BEAST MODE owned by former NFL star running back, Marshawn Lynch:

David Copeland-Smith is a soccer coach who has been training soccer players under his mark BEAST MODE SOCCER. In conjunction with his coaching, Copeland-Smith began selling t-shirts and soccer balls under the same mark, and in 2011, he filed two applications for the mark. One was for “coaching services in the field of soccer; providing group coaching and learning forums in the field of soccer,” which was registered in 2012; and the other (which was the subject of this appeal) was for “t-shirts” and “balls.” In both applications, Copeland-Smith disclaimed the word “SOCCER.”

The Examiner refused Copeland-Smith’s application for t-shirts and balls based on a likelihood of confusion with two registrations of the mark BEAST MODE owned by Marshawn Lynch in connection with “t-shirts” and “Men’s, women’s and children’s clothing, namely, shirts, sweatshirts; headwear, namely, hats, caps.” The Examiner found that “[b]ased on the virtually identical nature of the marks,” they were confusingly similar.

Copeland-Smith responded by arguing that Lynch’s BEAST MODE mark was “weak due to the existence of multiple third party uses and registrations of trademarks featuring BEAST MODE,” and he submitted examples for a variety of goods and services. Copeland-Smith contended that because of the widespread use of the term BEAST MODE in the marketplace, the additional word “SOCCER” in his mark distinguished it from the ex-football player’s mark. But the Examiner remained unpersuaded and entered a final refusal, observing that the third-party uses and registrations were “generally not for clothing or sporting goods and equipment” and therefore did not show that Lynch’s registrations were weak for those uses.

The TTAB affirmed, weighing the evidence relevant to seven of the factors set forth in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973), referred to as the “DuPont factors.” But on appeal to the Federal Circuit, Copeland-Smith challenged the TTAB’s findings only with respect to DuPont factors 1 (the similarity or dissimilarity of the marks in their entireties) and 6 (the strength or weakness of Lynch’s mark).

Regarding DuPont factor 1, Copeland-Smith argued that the TTAB erroneously found that his BEAST MODE SOCCER mark was similar in sound, meaning, appearance, and commercial impression to Lynch’s BEAST MODE mark, primarily because Lynch’s mark had nothing to do with soccer. The Federal Circuit, however, agreed with the TTAB that the marks were confusingly similar because Copeland-Smith’s mark incorporated the entirety of Lynch’s BEAST MODE mark and added only the disclaimed word SOCCER. In addition, the Court rejected Copeland-Smith’s contention that the TTAB had “fail[ed] to consider the BEAST MODE SOCCER mark as a whole” and thus “arbitrarily diminished the impact of that word [SOCCER] within the overall mark BEAST MODE SOCCER.” Rather, it agreed with the TTAB’s observation that a “descriptive or generic term” (here, SOCCER) is part of a mark, that term is given less weight. Thus, it agreed with the TTAB’s conclusion that “BEAST MODE” was “the portion of the mark likely to be remembered and used by consumers.” Moreover, the Court found that the TTAB correctly found that Lynch’s mark would not necessarily be associated just with football (and not cover any items associated with soccer, as Copeland-Smith asserted), noting that Lynch’s marks were not restricted to football-themed clothing and encompassed trade channels through which soccer clothing was also sold.

In analyzing DuPont factor 6, relating to the strength or weakness of Lynch’s mark, the Court said that this factor concerns “the number and nature of similar marks in use on similar goods,” although it also noted that “even weak marks are entitled to protection against registration of a confusingly similar mark.” Copeland-Smith contended, based on third-party uses and registrations, that Lynch’s mark was weak and entitled to limited protection. Pointing to definitions from the website www.urbandictionary.com, Copeland-Smith asserted that the term “BEAST MODE” was a well-known phrase in American slang that refers to a level of high effort or energy in exercise or sports. Copeland-Smith also relied on evidence of 31 third-party uses in the marketplace, 3 third-party registrations, and 15 third-party applications that incorporate the term “BEAST MODE.” The Court found, however, that the TTAB gave due consideration to the evidence of third-party use and correctly determined that most of the evidence related to different fields—i.e., fields other than clothing—and were thus irrelevant in determining the strength of Copeland-Smith’s and Lynch’s marks concerning clothing. And relatedly, the Court specifically rejected Copeland-Smith’s assertion that “athletic training services, nutritional supplements, and energy drinks [] should be considered goods and services similar to clothing.” Accordingly, the Court found that TTAB was correct in giving the evidence on third-party uses only limited probative value on the question of the weakness of Lynch’s BEAST MODE mark.

Finally, the Court turned to the TTAB’s weighing of the DuPont factors (it had concluded that factors 1, 2, 3, 4, 6, 7, and 8 weighed in favor of a likelihood of confusion). Specifically, the Court said that it had “considered Copeland-Smith’s challenges regarding DuPont factors 1 and 6” and concluded “that the Board’s findings were supported by substantial evidence.” Thus, the Court concluded, as the Board had, that “based on the DuPont factors,” Copeland-Smith’s mark was “likely to cause confusion with Lynch’s mark,” The Court thus affirmed the TTAB’s decision affirming the Examiner’s refusal.

This case is In Re David Copeland-Smith, No. 18-1968 (Fed. Cir. Nov. 12, 2019).