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06/9/2017
Corporate Counsel

German Soccer Wins at FIFA, But Not at TTAB

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Germany's national men's soccer team has tasted the thrill of victory at the FIFA World Cup four times, most recently in 2014. But the governing body of the current world champions experienced defeat in attempting to register its mark at the U.S. Patent and Trademark Office.

In a nonprecedential decision in In re Deutscher Fussball-Bund (DFB) e.V., Serial No. 79144840, the USPTO's Trademark Trial and Appeal Board (TTAB) refused to register the mark Deutscher Fussball-Bund (translated as German Soccer Federation) and design for various clothing items and for soccer gear because the applicant, the German Soccer Federation, refused to disclaim Deutscher Fussball-Bund for clothing.

Although it did disclaim Deutscher Fussball-Bund for soccer-related services, the organization argued that third-party registration evidence supported registration without a disclaimer for clothing.

The German Soccer Federation is the governing body in Germany of Association Football (commonly known in the United States as soccer), and is responsible for that country's league system and national teams. It displays its Deutscher Fussball-Bund mark in connection with the sale of its goods, as well as on the goods themselves.

The USPTO examiner based the disclaimer requirement on finding that Deutscher Fussball-Bund describes not the goods themselves, but the source of the goods. In reaching this conclusion, the examiner relied primarily on a now-canceled registration owned by the German Soccer Federation for a different logo for the same or similar goods, in which the German Soccer Federation disclaimed Deutscher Fussball-Bund. The examiner also submitted a number of third-party registrations in which similar terms were disclaimed for similar goods, including registrations for Major League Soccer, International Kendo Federation, International Bobsleigh & Skeleton Federation, Hung Fut Kung Fu Federation, The Shuffleboard Federation, Athletic Association, and Basketball Association.

To support its case, the German Soccer Federation relied on a registration owned by the Mexican Football Federation in which the term Federacion Mexicana De Futbol Assoc. was not disclaimed. The German Soccer Federation argued that, unlike the other third-party examples provided by the examiner, the Mexican Football Federation's registration was the most analogous to its own.

The board held that the prior disclaimer of Deutscher Fussball-Bund in the German Soccer Federation's now-expired registration, and its disclaimer of soccer-related services in this case, constituted a concession that the term was merely descriptive of at least some of the goods.

Furthermore, the board took notice that the overwhelming majority of the cited third-party registrations included disclaimers or acquired distinctiveness claims for terms such as the one at issue. The board noted that even if agreed that the Mexican Federation registration was the most analogous, it was only one of 17 registrations cited by the examiner.

The board noted that even though the USPTO had not required disclaimers or acquired distinctiveness showings for analogous terms in every single case, the record supported a finding that at the very least, the USPTO had been relatively consistent in treating terms such as German Soccer Federation as merely descriptive of the German Soccer Federation's goods or analogous goods.

It is well-established that a term describing the provider of goods or services is also merely descriptive of those goods and services, a fact the board pointed out. It used the example of the hypothetical mark Doctor's Diet to illustrate its point: the term Doctor's Diet in connection with a diet plan would be understood by consumers as describing a diet designed or provided by a doctor, even though "doctor" does not describe the qualities or mechanics (e.g., low-fat, low-carbohydrate) of the diet plan itself.

The board believed that its decision in In re Major League Umpires, 60 U.S.P.Q.2d 1059 (TTAB 2001), further supported the refusal to register. In that case, the board held that the mark Major League Umpire conveyed that the clothing and protective equipment bearing such mark was designed by major league umpires. The board felt that the term Deutscher Fussball-Bund would similarly quickly indicate to consumers that the German Soccer Federation, or a related company or individual, designed the German Soccer Federation's goods, and that the goods are the same as, or at least similar to, those used by the German national team.

The board therefore affirmed the USPTO's disclaimer requirement.

This case makes one wonder: If there is and can be only one German Soccer Foundation, is Deutscher Fussball-Bund merely descriptive of the source of the goods, or does it also serve as a source indicator? In theory, there can be more than one set of major league umpires selling clothing and umpiring gear, and it would follow that each set of umpires should be able to use the term Major League Umpire.

In other words, there is a distinction between identifying the source of the goods and describing the source of the goods. One could conceive of such a term as Deutscher Fussball-Bund doing both. If it does, can it be declared merely descriptive under the Lanham Act? Should it? The Lanham Act states that a registered mark should not be deemed to be the common descriptive name of goods or services solely because the mark is also used as a name of or to identify a unique product or service.

There is case law that turns on the use of the word registered in the Lanham Act to mean this situation is a defense to cancellation but not an argument that can be made in support of a new application to register. Some question whether that distinction is meaningful, but in this case, it clearly was. Deutscher Fussball-Bund failed to score.

Scott J. Slavick is a partner at Barack Ferrazzano Kirschbaum & Nagelberg.

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