United States: "12TH MAN HANDS" For Handmade Soap Confusable With Texas A&M'S "12TH MAN" For Towels, Says TTAB

Last Updated: July 26 2018
Article by John L. Welch

[This guest post was written by Stephanie Grace Stella, an associate in the Trademark Group at Wolf, Greenfield & Sacks, P.C.]. In a 36-page opinion, the Board sustained a Section 2(d) opposition to registration of the mark 12TH MAN HANDS, in standard character form, for "handmade loofah soap bar or puck" in view of Texas A&M University's 12TH MAN-formative marks for a wide variety of goods and services, and particularly in view of its registration for 12TH MAN for towels. The Board found Opposer's 12TH MAN mark to be "very strong," the involved marks to be "virtually identical," and the relevant goods to be complementary in use and to frequently emanate from the same source. Texas A&M University v. Washington Soap Company, Opposition No. 91223136 (July 12, 2018) [not precedential] (opinion by Judge Christopher Larkin).

Background: Texas A&M opposed Applicant's registration for 12TH MAN HANDS on the grounds of likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), and of dilution by blurring under Section 43(c) of the Trademark Act, 15 U.S.C. § 1125(c). Applicant, appearing pro se, declined to file trial evidence or a brief, and admitted the basic facts regarding the origin of the term 12TH MAN —which was first associated with Texas A&M's football team in 1922—by failing to deny the pertinent allegations set forth in Opposer's Notice of Opposition.

Strength of Opposer's Mark: Opposer Texas A&M argued that its 12TH MAN mark is famous and "an extremely strong mark when used on branded merchandise such as towels or soap," but the Board pointed out that a party that asserts fame must clearly prove it. The evidence established that Opposer's 12TH MAN mark has been in use to identify Texas A&M and its athletic program for nearly 100 years, and that, since at least as early as 1985, Opposer's football fans have waved the "12th Man Towel"—hundreds of thousands of which are produced and sold or given away each year—during football games to show support for the team.

The evidence further established that:

The mark has been exposed to wide swaths of the relevant purchasing public for the parties' goods through multiple means, including television broadcasts of football games at which 12th Man towels have been waived, social media, alumni and fan outreach, and collateral licensing of the mark for use on a wide variety of goods and services, including towels, which has generated many millions of dollars in retail revenues. The record also reflects considerable coverage of the mark in the media, including coverage expressly associating the mark with Opposer. Finally, the record shows that Opposer has aggressively and successfully enforced its rights in the 12TH MAN mark, and there is no evidence of unlicensed third-party uses that might show commercial weakness.

The Board discussed the relevant evidence at length, including Opposer's infringement suits against the NFL's Indianapolis Colts and Seattle Seahawks, the former of which was settled when the Colts agreed to drop all use of the 12TH MAN mark, and the latter of which was settled via a licensing agreement, which license was significantly narrowed by Opposer upon its recent renewal. Applicant conceded during discovery that "it intended to associate its claimed 12TH MAN HANDS mark with football and specifically the Seattle Seahawks, Opposer's licensee of the 12TH MAN mark when Applicant adopted and commenced use of the applied-for mark in 2013." Applicant's goods are illustrated below, including in the lower right-hand corner a soap puck bearing the applied-for 12TH MAN HANDS mark and the image of a football:

The Board concluded that Opposer's mark "is very strong commercially."

Similarity of the Marks: Applicant's mark incorporates Texas A&M's mark in its entirety. Applicant conceded in its discovery responses that 12TH MAN is dominant portion of its mark and that the term HANDS merely describes the fact that Applicant's product is made for washing hands. The Board concluded that, in addition to the marks being similar in appearance and sound, because the source-identifying 12TH MAN portion of Applicant's mark is identical to Opposer's mark, the shared term "gives the marks the same connotation and commercial impression."

Similarity of the Goods: Opposer perceptively argued that "[c]ommon experience suggests that soaps and towels are inherently related products" because "[o]ne generally needs a towel after using soap to wash one's hands." The Board perceptively "t[ook] judicial notice under Rule 201(b) of the Federal Rules of Evidence, Fed. R. Evid. 201(b), that hand towels are commonly used to dry the hands after they are washed with soap and water." Based on Opposer's extensive evidence of the complementary nature of the goods, including website evidence of hand soap and towel sets, and 26 current use-based, third-party registrations of marks for both various types of "towels" and various types of "soaps," the Board concluded "that consumers would readily expect handmade loofah soap sold under the mark 12TH MAN HANDS to originate from the same source as towels sold under the mark 12TH MAN."

Channels of Trade/Classes of Consumers: The Board noted that neither Opposer's nor Applicant's identifications contained any restrictions as to trade channels or classes of consumers, and it concluded that "[g]iven the conjoint use of the goods, their classes of customers overlap by definition," and "the channels of trade for soaps and towels overlap because both goods are offered on the same Internet websites, and ... together in the brick-and-mortar world."

Lack of Actual Confusion:  Finally, the Board agreed with Opposer Texas A&M that the admitted absence of actual confusion bore little significance and was thus a neutral du Pont factor because "there is no evidence that Applicant has made any appreciable sales that might engender known instances of actual confusion."

Conclusion: Balancing the relevant du Pont factors, the Board found confusion likely and sustained the opposition. The Board declined to reach Opposer's dilution claim.

The TTABlog

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