Opposition to trademark registration of MARATHON MONDAY dismissed

Recently, the United States Patent and Trademark Office’s Trademark Trial and Appeal Board (“TTAB”) denied an opposition, by Boston Athletic Association (“BAA”), to the registration of the mark MARATHON MONDAY by Velocity, LLC (“Velocity”).[1] Velocity filed an application for the mark MARATHON MONDAY for use in connection with “clothing, namely tops, bottoms, headwear, sweatshirts, sweat pants, jackets, pullovers, caps, hats, socks.”[2] Velocity’s application was opposed by BAA, which is the entity responsible for organizing the annual Boston Marathon. BAA objected to registration of the mark MARATHON MONDAY because it created a false association with BAA.[3] BAA owns two trademark registrations for the mark BOSTON MARATHON for use in connection with entertainment services and for a variety of goods, such as t-shirts and hats.[4] Although BAA does not own a trademark registration for the mark MARATHON MONDAY, it argued that it has used both BOSTON MARATHON and MARATHON MONDAY in association with the Boston Marathon race, which is annually held on the third Monday in April.[5]

The TTAB held that MARATHON MONDAY does not uniquely refer to BAA.[6] The TTAB found that the term BOSTON MARATHON is perceived as the persona or identity of BAA, even though the evidence on record did not show that it is publically well-known that the Boston Marathon is organized by BAA.[7] However, the TTAB found that the mark MARATHON MONDAY did not falsely suggest a connection with BAA’s persona of BOSTON MARATHON, because even though the public knows that the Boston Marathon is annually held on the third Monday in April, it is not widely known that the tern MARATHON MONDAY is a recognized name or identity of the entity that organizes the marathon.[8] Thus, it could not be shown that MARATHON MONDAY is recognized as the name, nickname, identity or persona of BAA.[9] The TTAB also noted that other entities use the term MARATHON MONDAY to refer to other marathons or races or activities related to the Monday after such race.[10] As a result, Velocity’s trademark application for MARATHON MONDAY will likely to mature into a trademark registration, absent any appellate proceedings.

The process for applying for a trademark is complicated and involves several deadlines. As this case shows there are methods available to oppose the registration of a trademark. Our firm has significant experience in applying for and opposing trademark applications. If you have any questions regarding the content of this article or on effective ways to police intellectual property please contact our office.

Daniel Devine, Esq.
Santucci Priore, P.L.

[1] Boston Athletic Association v. Velocity, LLC, Opposition No. 91202562 (TTAB Oct. 26, 2015).
[2] Id.
[3] Id.
[4] Id.
[5] Id.
[6] Id.
[7] Id.
[8] Id.
[9] Id.
[10] Id.

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