How to run away with a trademark someone else has been using for 120 years.

That is a question answered in the precedential trademark opposition proceeding of Boston Athletic Association v. Velocity, LLC.

The Boston Athletic Association or (“BAA” for short) is the organizer and operator of the well-known Boston Marathon race, held every year on the third Monday in April since 1897.  The BAA has organized the event every year since its inception.  Velocity LLC, an unrelated entity to the BAA, filed an application to register the word mark MARATHON MONDAY for clothing.  The BAA opposed Velocity’s application for the MARATHON MONDAY mark in this precedential trademark opposition proceeding.

While the BAA had trademark registrations for the mark BOSTON MARATHON, the BAA did not own a registration for MARATHON MONDAY.  Instead, the BAA argued that MARATHON MONDAY creates a “false suggestion of a connection” to the BAA under Section 2(a) of the Trademark Act.

To establish a claim for false suggestion of a connection, the BAA had to prove (among other requirements) that MARATHON MONDAY is a “close approximation” of the BAA’s “previously used name or identity.”  To do so, the BAA attempted a two-step approach that involved leveraging its association with the BOSTON MARATHON.

First, the BAA argued that the Boston Marathon is the BAA’s persona.  That is, the Boston Marathon is the “public face” of the BAA due to the fame of the race and that the BAA has organized the race for nearly 120 years.  The Trademark Trial and Appeal Board (“the Board”) found that this was met because “even if the public does not know the actual name of the organization in charge of the race is the Boston Athletic Association, they will understand that an alternative name represents the association.”

Second, the BAA argued that MARATHON MONDAY is synonymous or interchangeable with the BOSTON MARATHON.  To establish this claim, the Board stated that MARATHON MONDAY “must do more than simply bring [the BAA’s] BOSTON MARATHON persona to mind.”  Rather, the BAA must show that MARATHON MONDAY is a “close approximation” of the BOSTON MARATHON persona, such that consumers view MARATHON MONDAY so closely with the BAA that they recognize it as the BAA’s name, nickname, identity, or persona.  The Board found that there was no such connection.  There was little evidence that MARATHON MONDAY had become known as the BAA’s persona or as a synonym for the Boston Marathon.  While the BAA previously used MARATHON MONDAY to identify the race in some instances, there was not sufficient evidence of the public’s recognition of MARATHON MONDAY with the entity that organizes the race.

Further, under the false suggestion test, the BAA was also required to show that the mark MARATHON MONDAY “points uniquely” to the BAA.  The Board found that the BAA failed to make such a showing.  Velocity submitted evidence establishing that other entities use Marathon Monday to refer to other marathons, such as the New York City marathon.  The Board found this evidence persuasive.

Based on this, the Board found that Velocity’s use of the term MARATHON MONDAY on clothing does not falsely suggest a connection with the BAA.

This proceeding highlights the importance of registering each mark that you claim as your own.

The proceeding is Opposition No. 91202562 (October 26, 2015).