Whether the NFL's bluster could hold up on court is another matter. The standard for likelihood of confusion was clearly enunciated by the Federal Circuit in the Federal Circuit in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Those factors are:
1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.
2. The similarity or dissimilarity and nature of the goods . . . described in an application or registration or in connection with which a prior mark is in use.
3. The similarity or dissimilarity of established, likely-to-continue trade channels.
4. The conditions under which and buyers to whom sales are made, i.e. "impulse" vs. careful, sophisticated purchasing.
5. The fame of the prior mark.
6. The number and nature of similar marks in use on similar goods.
7. The nature and extent of any actual confusion.
8. The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion.
9. The variety of goods on which a mark is or is not used.
10. The market interface between the applicant and the owner of a prior mark.
11. The extent to which applicant has a right to exclude others from use of its mark on its goods.
12. The extent of potential confusion.
13. Any other established fact probative of the effect of use.
Id. at 1361, 177 USPQ at 567.
There is no mechanical test for determining likelihood of confusion. The issue is not whether the actual goods are likely to be confused but, rather, whether there is a likelihood of confusion as to the source of the goods. In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993), and cases cited therein. Each case must be decided on its own facts. See T.M.E.P. § 1207.01.
A quick weighing of the most important of those factors (see T.M.E.P.) should have you agreeing with the Professors cited in the article. While the NFL is astute to point out that the applicant has not connection to the Harbaughs and does not own or operate an NFL franchise, if he is using that unique, whimsical phrase that concededly alludes to both the Superbowl and the Harbaughs, he still has the right to apply for the trademark. If he is the first to apply and put his term onto use in his classification, he should be able to exclude others.
Perhaps the Harbaughs would have a better claim to oppose the registration of his mark. They, however, have not either filed an application of their own or indicated they would move to oppose this now abandoned mark.
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