Hat seller flips their lid over similar trademark. NEW ERA v. PRO ERA

A trademark is something on a product which indicates to consumers the identity of the manufacturer. Traditionally a trademark is though of as a word, phrase or symbol, but just about anything that identifies the source of a product can serve as a trademark. A trademark can be registered with the United States Patent and Trademark Office to strengthen the rights associated with the trademark, but registration of a trademark is not necessary for a trademark owner to gain some rights to the trademark.

The first company to use a trademark in commerce is considered the senior user. Subsequent companies to use the trademark are considered junior users. A senior user’s claim to a trademark has priority over a junior user. Even if a junior user registers their trademark, the senior user’s right to use the trademark within the geographic region that senior user operates will not be extinguished.

When a trademark user files an application to register the trademark with the United States Patent and Trademark Office, an examining attorney will be assigned to the application. The examining attorney will review the trademark application to ensure that the trademark meets all the statutory requirements for registration and perform a search to confirm that the trademark in the application is not confusingly similar to trademarks which are already registered. If the examining attorney does not raise an objection to the trademark application or the applicant overcomes all the objections the trademark will be published in the “Official Gazette”.

After the trademark is published any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose. If the trademark is based on use in commerce, a foreign registration, or an extension of protection of an international registration to the United States under Section 66(a), and no party files an opposition or request to extend the time to oppose, the United States Patent and Trademark Office will register the trademark and send the owner a certificate of registration. After the trademark is registered, the owner of the trademark must file specific maintenance documents to keep the registration live.

The 30 days after publication can be a nervous time for a trademark applicant. Even though the examining attorney has performed a search of relevant trademark, any member of the public can step forward and object to the registration of the trademark.

NEW ERA CAP CO., Inc. v. PRO ERA, LLC, Opposition No. 91216455 (TTAB 2020) is a case where the owner of a registered trademark successfully opposed the registration of a similar trademark.

Pro Era, LLC (“Applicant”) is a group of hip hop artists that operate together in a collective that was formed in 2010. In 2012, applicant filed an application to register the standard character mark PRO ERA for music services and various types of clothing products. NEW ERA (“Opposer”) filed an opposition to the registration for clothing.

Opposer was founded in 1920 in Buffalo, New York, and began selling baseball caps in 1934. By 1993, Opposer’s NEW ERA branded caps had become the official cap of every major league baseball (“MLB”) team. In addition to major league baseball, Opposer has a strong presence in professional football by providing the official caps of the National Football League beginning in 2012.

Opposer objected to registration of Applicant’s trademark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d) on the ground of likelihood of confusion based on Opposer’s previously used and registered NEW ERA trademark.

The Trademark Trial and Appeal Board applied the Dupont factors to determine whether there was a likelihood of confusion between the Opposer’s and Applicant’s trademarks. The TTAB found that the Opposer’s trademark was conceptually strong and entitled to a broad scope of protection. The TTAB also found that both trademarks had similar commercial impressions that lead potential customers to believe that the trademarks were related. After balancing all the Dupont factors the TTAB concluded that there was a likelihood of confusion between the two trademarks with respect to clothing.

Based on this finding the TTAB sustained the opposition to the trademark application with respect to clothing, but allowed the application to continue for music services.

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