In 1897, the Boston Athletic Association (BAA) first organized the Boston Marathon and has been running the event ever since. The world famous race has been held on the third Monday of April every year since 1969, and it is the only major Marathon to be held (and internationally broadcast) on a Monday. If you live in Boston, “Marathon Monday” means that you might get the day off, that under no circumstances should you try to drive downtown and, most importantly, that the Boston Marathon is happening.
But does all of this mean the term “Marathon Monday” points “uniquely and unmistakably” to the BAA for trademark purposes? No, according to the Trademark Trial and Appeal Board decision in Boston Athletic Association v. Velocity LLC.
Velocity LLC, a clothing company in Everett, Massachusetts, manufactured merchandise for the BAA from 2009 to 2010. Velocity asked to become an official licensee of the BOSTON MARATHON mark (not just a manufacturer of goods bearing the mark), but the BAA declined in light of its exclusive arrangement with Adidas. So Velocity decided to manufacture its own merchandise, and in 2011 applied to register the MARATHON MONDAY mark in connection with sweatshirts, hats and other clothing.
The BAA opposed the registration, alleging that Velocity’s use of the mark creates a false suggestion of connection with the BAA. Pursuant to Section 2(a) of the Trademark Act, 15 U.S.C. § 1025(a), the BAA was required to prove (1) that MARATHON MONDAY was a close approximation of BAA’s name or identity; (2) that MARATHON MONDAY “points uniquely and unmistakably” to the BAA; (3) that the BAA was not connected with Velocity’s goods and (4) that the BAA’s name or identity is sufficiently famous such that a connection with the goods would be presumed. The BAA failed to meet the first two elements.
A Close Approximation
The BAA first had to show that MARATHON MONDAY was a close approximation of its name or identity. The BAA made what the TTAB called a “two-step” argument. Step one: show that the BOSTON MARATHON mark, although not the official name of the BAA, nevertheless served as its “persona.” Step two: show “Marathon Monday” and “Boston Marathon” are effectively interchangeable in this regard.
As to step one, the TTAB began with the proposition that the the BAA’s role in organizing the Boston Marathon may not be terribly well-known outside of Boston. However, “given the magnitude and longevity of the event” the TTAB also found that the BOSTON MARATHON mark has become associated with a single organizing entity, “even if the public does not know that the actual name” of that entity. Therefore, BOSTON MARATHON did serve as the BAA’s persona.
However, as to step two, the TTAB found that BOSTON MARATHON and MARATHON MONDAY were not interchangeable as BAA’s persona. Yes, there was evidence that the BAA used MARATHON MONDAY to identify the race, but not to identify the entity that organizes the race. In other words, consumers may have recognized BOSTON MARATHON as an alias for the BAA, but MARATHON MONDAY did not serve this same function. Therefore, the BAA failed to show that MARATHON MONDAY was a close approximation of its identity.
Unique and Unmistakeable
The TTAB also held that the BAA failed to meet the second prong of the Section 2(a) test because it failed to show that the MARATHON MONDAY mark was uniquely associated with the BAA or even with the Boston Marathon. Velocity was able to produce evidence that other entities used “Marathon Monday” to refer to running activities, most notably the New York City Marathon which, although it takes place on a Sunday, uses the term to describe various sponsored activities that occur on the day following the race.
Therefore, the TTAB dismissed the opposition and ordered that the registration be issued to Velocity in due course. Boston sports conspiracy theorists, freshly smarting from the recent claims of bugged locker rooms by the New York Jets, will delight in noting that the TTAB issued its opinion on October 26, 2105, just at the beginning of “Race Week,” the official festivities leading up to the 2015 New York City Marathon.
Finally, trademark nerds may recall that the Boston Marathon has been at the center of prior notable cases. In Boston Athletic Association v. Sullivan, the First Circuit rejected a t-shirt maker’s argument that “Boston Marathon” had become generic. And, in WCVB-TV v. Boston Athletic Association, the First Circuit held that television stations could use the term “Boston Marathon” to describe the event, whether or not they were licensed by the BAA, thus paving the way for the Ninth Circuit’s articulation of the nominative fair use doctrine in New Kids on the Block v. News American Publishing.