Logic suggests that when two opponents face off each believing that they will win, one will go home disappointed. Such was the case in a non-precedential decision at the Trademark Trial and Appeal Board on January 28 of this year, in United States Soccer Federation, Inc. v. Aztec Shops, Ltd., Opposition No. 91220225, in which a slip on the field regarding of specimens of use played an important role.

In U.S. Soccer v. Aztec Shops, the Board sustained U.S. Soccer’s opposition to registration of the slogan I Believe That We Will Win! for “Bottoms; Caps; Hats; Jackets; Shirts; Sweatshirts; T-shirts; Tops,” on the ground that the applied-for mark failed to function as a trademark under the Lanham Act.

U.S. Soccer, the official governing body of the sport of soccer in the United States, alleged that its fans had adopted the slogan as a rallying cry for the U.S. men’s national soccer team during the 2014 FIFA World Cup in Brazil. It claimed that registration of the mark by Aztec Shops, the campus bookstore at San Diego State University, would deprive U.S. Soccer and others from the ability to use the mark as an “informational and aspirational slogan.”

U.S. Soccer’s deft first touch was proving that it had standing to bring the opposition in the first place. It is not necessary for an opposer to be using a term as a trademark in order to challenge registration of it; an opposer may establish standing by merely showing that it has an interest in using the term in its business. U.S. Soccer established standing by showing use of I Believe That We Will Win! in its own advertising and on apparel.

The fact that U.S. Soccer licensees may produce and sell goods bearing the mark did not negate U.S. Soccer’s real interest in the proceeding, because use of a mark by a licensee inures to the benefit of the licensor.

U.S. Soccer then had to prove that I Believe That We Will Win! failed to function as a trademark. The organization made a powerful strike in citing In re Eagle Crest Inc., 96 USPQ2d 1227, 1232 (TTAB 2010), in which the TTAB found “Once A Marine, Always A Marine” to be an old and familiar slogan, and as such held it to be the type of expression that should remain free for all to use. The Board supported U.S. Soccer’s argument that “slogans and other terms that are considered to be merely informational in nature, or that express support, admiration or affiliation, are generally not registrable.”

The critical question in determining whether a term functions as a trademark focuses on consumer perception. To determine what those would be, the TTAB looked to Aztec Shops’ specimens of use and to other marketplace materials. U.S. Soccer made of record numerous news articles, blog excerpts, and videos showing that I Believe That We Will Win! had been widely publicized and used by multiple parties—including high schools, colleges, unions, and politicians—before and after Aztec Shops’ claimed first adoption of it in 2011.

Aztec Shops argued, interestingly, that I Believe That We Will Win! was entitled to registration because it served a source-identifying function, pointing to more than $74,000 in sales of products bearing the slogan since 2011 and to annual advertising expenditures of approximately $400,000 for the entire university brand. The retailer submitted evidence showing use of the slogan on clothing, in store displays, and as an athletic facility wall decoration.

But the Board parried that shot. It explained that the function of a trademark is to identify a single commercial source, and held that the case record established that the slogan I Believe That We Will Win! had been widely used over a long period of time by various organizations as an expression of enthusiasm and support for assorted sports teams and causes.

The Board felt that the fact that I Believe That We Will Win! was used by others in a non-trademark manner as a chant in sports and political arenas and on clothing helped prove that the slogan could not serve as an indicator of the source of Aztec Shops’ apparel. So the Board sustained the opposition.

It’s worth noting how specimens of use were used in this case: the issue arises more often than one might think when applicants try to register trademarks for apparel such as t-shirts. Aztec Shops may have lost this case precisely because of its own specimens of use, which featured the quintessential ornamental use of a mark: a slogan splashed across the front of a t-shirt.

The experienced trademark law practitioner appreciates that for a t-shirt specimen not to be dismissed as ornamental or decorative, it’s important that the mark be displayed on a hang tag or a label in the collar of the shirt, not plastered across the front of it. So Aztec’s specimens were the legal equivalent of an own goal: They lost the contest on a sloppy play.

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