TMEP 1205.01(b)(ii): Issuing Other Substantive Refusals

October 2017 Edition of the TMEP

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1205.01(b)(ii)    Issuing Other Substantive Refusals

Applications for marks comprising Olympic-related matter must also be analyzed for other substantive refusals in the same manner as any other application. The most common refusals that may accompany a refusal for unlawful use, or be issued by themselves or in combination, are a §2(a) refusal for deception or falsely suggesting a connection with the USOC or the Olympics and a §2(d) refusal for likelihood of confusion. 15 U.S.C. §1052(a)   and (d). See TMEP §§1203.02–1203.02(f)(ii) regarding deceptive matter, §§1203.03–1203.03(f) regarding matter falsely suggesting a connection, and §§1207–1207.04(g)(i) regarding likelihood of confusion.

As to §2(a) refusals, the Board determined that "there are various international and national organizations pertaining to the Olympic Games" and that "the entire organization which comprises the Olympic Games, as a whole qualifies as an "institution" within the meaning of Section 2(a)." In re Urbano, 51 USPQ2d 1776, 1779-80 (TTAB 1999) (affirming the §2(a) refusal to register SYDNEY 2000 because the mark falsely suggested a connection with the Olympic Games held in Sydney, Australia in 2000; 15 U.S.C. §1052(a). Therefore, the United States Olympic Committee is part of the "institution" and entitled to protection under §2(a)). See In re Midwest Tennis & Track, Co., 29 USPQ2d 1386, 1389 (TTAB 1993) (reversing the §2(a) refusal and finding that OLYMPIAN GOLDE had multiple connotations and did not point "uniquely and unmistakably to the USOC" as would be required under §2(a)); In re Kayser-Roth Corp., 29 USPQ2d 1379, 1385 (TTAB 1993) (reversing the §2(a) refusal and noting "[t]he question is not whether the word ‘Olympic’ falsely suggests a connection with the persona or identity of the United States Olympic Committee's but whether applicant's mark OLYMPIC CHAMPION does... [we cannot] say on the basis of the record before us that the mark OLYMPIC CHAMPION ‘points uniquely and unmistakably’ to the United States Olympic Committee inasmuch as that term may as likely point to a contestant representing a country other than the United States in the Olympic games."); U.S. Olympic Comm. v. Olymp-Herrenwaschefabriken Bezner GmbH & Co., 224 USPQ 497, 499 (TTAB 1984) (denying USOC’s §2(a) claims since there was no evidence presented to establish that OLYMP was deceptive of the clothing goods or that OLYMP falsely suggested a connection with USOC).

Factors that may be relevant to a §2(d) refusal for likelihood of confusion include the wide variety of goods and services in connection with which marks consisting of Olympic-related matter are often used, the channels of trade in which they are found, and the level of sophistication of consumers of such Olympic-related products as t-shirts, mugs, and pins. The Board has also upheld likelihood of confusion where an applicant other than the USOC used OLYMP or LYMPIC as part of its mark. See Olymp-Herrenwaschefabriken 224 USPQ at 498 (sustaining USOC’s opposition to registration of OLYMP based on likelihood of confusion with its OLYMPIC marks); U.S. Olympic Comm. v. Org. for Sport Aviation Competition, 2002 TTAB Lexis 195 (TTAB 2002) (granting summary judgment to the USOC on the issue of likelihood of confusion against the mark SKYLYMPICS for aviation sporting events).

In proposed marks identifying specific Olympic Games by city and year, the examining attorney should consider the marks unitary, with the primary significance being that of the Olympic Games event, and not issue substantive refusals for descriptiveness or geographic descriptiveness or requirements for disclaimers. Urbano, 51 USPQ2d at 1779-80 (reversing the refusals under §§2(e)(1), 2(e)(2), and 2(e)(3) because the primary significance of the mark was as a reference to the Olympic Games).