Not So Fast on MARATHON MONDAY: Trademark Board Rejects Boston Athletic Association’s Bid to Prevent Clothier from Registering the Term
(Originally appeared in Boston Bar Journal Spring 2016: Vol. 60, #2)
New Englanders know what “Marathon Monday” signifies: the third Monday in April, the Red Sox in the morning, the Boston Marathon in the afternoon, Hopkinton, 26.2 miles, Heartbreak Hill, the crowd-lined streets. Many know that the race is overseen (or “run”) by the Boston Athletic Association (BAA). The BAA owns federal registrations for the mark BOSTON MARATHON (for entertainment services and for various goods including clothing). But what rights, if any, does the BAA have in the term “Marathon Monday?” An answer arrived recently in a ruling by the Trademark Trial and Appeal Board (TTAB or Board).1
Velocity, LLC, based in Everett, Massachusetts applied to register the trademark MARATHON MONDAY for certain clothing items, namely, tops, bottoms, headwear, sweatshirts, sweat pants, jackets, pullovers, caps, hats, and socks. In November 2011, the BAA opposed Velocity’s application, basing its opposition on Section 2(a) of the Lanham Act, which bars registration of a mark that “falsely suggests a connection with persons, living or dead, institutions, beliefs or national symbols.”2 The BAA alleged that the mark MARATHON MONDAY would be recognized as its previously used name or identity because it “points uniquely and unmistakably” to the BAA.3
Slow down there! What’s this Section 2(a) all about, you might ask?
The United States Court of Appeals for the Federal Circuit (CAFC) discussed the purpose of the “false connection” provision of Section 2(a) in a seminal decision involving a certain university’s unsuccessful attempt to block registration of the mark NOTRE DAME for cheese.4 Reviewing the legislative history of Section 2(a), the CAFC concluded that the drafters of the proposed legislation were concerned with protecting the name of an individual or institution that was not a technical trademark – i.e., it was not used as a brand name for specific goods or services – upon which a Section 2(d)5 likelihood of confusion objection could be based. The court observed that the drafters intended to adopt concepts of the right of privacy and the related right of publicity, which protect one’s control over the use of an identity or persona. In order to establish a protectable right, a person or institution must show that the term at issue points uniquely and unmistakably to that person or institution. In contrast to Section 2(d), which is meant to prevent consumer confusion as to the source of goods or services, Section 2(a) is primarily intended to protect the person or institution from unauthorized use of its identity, independent of source confusion.
The TTAB applies a rather stringent test in determining whether a mark should be barred from registration under 2(a). It considers whether: (1) the mark is the same as, or a close approximation of, the name or identity previously used by another person or institution; (2) the mark would be recognized as pointing uniquely and unmistakably to that person or institution; (3) the person or institution named by the mark or using the mark is not involved with the activities performed by the applicant under the mark; and (4) the fame or reputation of the person or institution is such that when the mark is used to identify the applicant’s goods or services, a connection with that person or institution would be presumed.6
Under Section 2(a), a plaintiff need not prove that the mark or name at issue is used as a trademark or service mark for goods or services (as required for Section 2(d) likelihood of confusion). For example, the Board held that the petitioner for cancellation of a registration for the mark TWIGGY for children’s clothing could succeed under Section 2(a) even though her claim of likelihood of confusion under 2(d) failed because of abandonment of her trademark.7 Lesley Hornby, known personally and professionally as “Twiggy,” had used the mark TWIGGY from 1967-1970 for various goods, including clothing, but by the time the respondent had filed its application to register TWIGGY in 1977, Hornby’s mark had been abandoned for nonuse. Nonetheless, Hornby, who came to prominence as a British teen model in the 1960s, established the fame and reputation of her persona as “Twiggy” prior to and at the time of respondent’s registration, and the evidence demonstrated that the mark TWIGGY pointed uniquely and unmistakably to Hornby.
Even if a plaintiff never used the mark or name in question at all, Section 2(a) relief may be available. For example, in a case involving the laid-back songster Jimmy Buffett, the Board considered the viability of Buffett’s challenge to an application for the mark MARGARITAVILLE for restaurant services. Buffett claimed that the mark falsely suggested a connection with his public persona, even though he had not publicly exploited the term “Margaritaville” other than as the title of his hit song.8 The TTAB observed that Section 2(a) requires that the applicant’s mark must point uniquely and unmistakably to the opposer, not that the opposer actually used the mark. Buffett relied on press clippings, licensing agreements concerning the name of a future restaurant venture, J.B.’S Margaritaville, and affidavits from members of the music industry to support his claim that the public associated the term “Margaritaville” with his persona. The Board found that Buffett had stated a viable claim under Section 2(a).
Although Twiggy and Jimmy Buffett cleared the Section 2(a) hurdle, the bar proved to be too high for the BAA.
In its opposition to Velocity’s application to register MARATHON MONDAY, the BAA adopted a two-step approach, contending that (1) the term “Boston Marathon” serves as the BAA’s identity or persona for purposes of Section 2(a), and (2) “Marathon Monday” is a close approximation of “Boston Marathon” because the phrases are “interchangeable.”9
The fact that neither “Boston Marathon” nor “Marathon Monday” is an official name of the BAA was not dispositive. Even a name created by the public, such as a nickname or an informal reference like “Margaritaville,” may qualify as an identity for purposes of Section 2(a) and thus give rise to a protectable interest.10,11 There was no dispute that the term “Boston Marathon” is well known to the public as a competitive marathon and a famous “runners’ race,” but it may not be well known that the race is organized by a corporate entity named the Boston Athletic Association.12
The Board faced a similar issue in a case involving the mark SYDNEY 2000, ruling that the mark falsely suggested a connection with the Olympic Games taking place that year in Sydney, Australia.13 Although it did not deem the Olympic Games to be an “institution” per se, the Board ruled that an event of “such magnitude, which occurs on a regular ongoing basis” and requires significant organizational structure, qualified as an “institution” for Section 2(a) purposes.14 Because of the widespread publicity for the Olympic Games, the Board concluded that the general public knew the 2000 Games would be held in Sydney. Consumers would thus presume a connection between the applicant’s publicity services under the mark SYDNEY 2000 and the Olympic Games.
Similarly, given the “magnitude and longevity of the event,”15 the Board found that “Boston Marathon” has become associated with its organizer, and although the general public may not know the organizer’s actual name, consumers will understand that the alternative name “Boston Marathon” represents or identifies the association. The Board therefore concluded that “Boston Marathon” is perceived as a name or identity of the BAA.
Although the BAA was successful in the first leg of its argument, it failed in the second: it did not prove that “Marathon Monday” is interchangeable with “Boston Marathon” and thus a close approximation of the BAA’s persona. The Board stated it was not enough that the two marks share the common word “marathon.” The term “Boston Marathon” is inextricably connected to the city of Boston because of the geographic reference, whereas “Marathon Monday” lacks that geographical connection. In short, the latter was not sufficiently similar to the former, and the second step of the BAA’s argument failed to reach the finish line.
The Board also considered whether “Marathon Monday” has itself become associated with the BAA. While there was evidence that the BAA has to some extent used the term “Marathon Monday” to identify the race itself, there was insufficient evidence to show that the public recognizes “Marathon Monday” as identifying not only the race, but also the entity that organizes the race. The BAA simply failed to show that “Marathon Monday” is so closely associated with the BAA that it qualifies as the BAA’s identity or persona.
In any event, Applicant Velocity’s evidence established that the term “Marathon Monday” is used by other entities across the country in connection with races in their respective geographical areas, and therefore the term could not point uniquely and unmistakably to the BAA. Most significantly, the record included numerous website excerpts and media articles using the term “Marathon Monday” to refer to the day after the New York City Marathon and the various events in which runners may participate.
And so the TTAB dismissed the BAA’s opposition to registration of MARATHON MONDAY, and the registration issued on March 15, 2016 to Velocity’s assignee.16 Nonetheless, there is nothing to stop the BAA or anyone else from referring to the day of the race, or even the race itself, as “Marathon Monday.” The owner of the registration owns a prima facie exclusive right to use “Marathon Monday” as a brand name for the clothing items identified in its registration.17 But given the highly descriptive nature of the term “Marathon Monday,” the registrant may have a difficult time proving likelihood of confusion as to source when “Marathon Monday” is used only in an informational sense in connection with goods or services related to the Boston Marathon. In short, Velocity may have won the race to federal registration, but it remains to be seen whether its registration will have any real commercial significance come Marathon Monday.
 Boston Athletic Association v. Velocity, LLC
, 117 U.S.P.Q.2d 1492 (T.T.A.B. 2015).
 15 U.S.C. §1052(a).
 Boston Athletic Association
, 117 U.S.P.Q.2d at 1493.
 University of Notre Dame Du Lac v. J.C. Gourmet Food Imports Co., Inc.
, 217 U.S.P.Q. 505 (Fed. Cir. 1983). (The CAFC found that “Notre Dame” is not a name solely associated with the University, and therefore the Section 2(a) claim was dismissed).
 Section 2(d) of the Lanham Act, 15 U.S.C. §1052(d), in pertinent part, bars registration of a mark that “consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive ….”
 See Boston Athletic Association
, 117 U.S.P.Q.2d at 1495; University of Notre Dame
, 217 U.S.P.Q. at 509; Buffett v. Chi-Chi’s, Inc.
, 226 U.S.P.Q. 428, 429 (T.T.A.B. 1985).
 Hornby v. TJX Cos.
, 87 U.S.P.Q.2d 1411 (T.T.A.B. 2008).
, 226 U.S.P.Q. at 429.
 Boston Athletic Association
, 117 U.S.P.Q.2d at 1495.
. at 1496.
See also In Re Nieves & Nieves LLC
, 113 U.S.P.Q.2d 1639, 1644 (T.T.A.B. 2015) (Affirming a Section 2(a) refusal of ROYAL KATE for cosmetics and jewelry because the mark creates a commercial impression that references Catherine, Duchess of Cambridge, also known as Kate Middleton, although she has never used that identifier).
 In re Urbano
, 51 U.S.P.Q.2d 1776 (T.T.A.B. 1999).
. at 1779 (The Board noted that various international and national organizations participate in presenting the Olympic Games, and without evidence to the contrary it assumed there was a cooperative relationship between them).
 Boston Athletic Association
, 117 U.S.P.Q.2d at 1496.
 On December 1, 2015, the mark was assigned to Charles Tuite of Northboro, Massachusetts, manager of Velocity LLC.
 15 U.S.C. §1057(b).