The Trademark Trial and Appeal Board (TTAB) sustained an opposition by the Ivy Group against the registration of IV LEAGUE NURSE CONCIERGE, INC. on the ground of dilution by blurring, finding that the mark was likely to impair the distinctiveness of the Ivy Group's famous IVY LEAGUE marks.
Background
IV League Nurse Concierge, Inc., a medical aesthetics spa and intravenous therapy provider, applied to register the composite mark
for "intravenous (IV) hydration therapy services" in International Class 44.
The Council of Ivy Group Presidents ("Ivy Group") filed a Notice of Opposition against the registration of IV League Nurse's mark based on a likelihood of confusion and dilution by blurring under Sections 2(d) and 43(c) of the Trademark Act, 15 U.S.C. §§ 1052(d) and 1125(c). The Ivy Group is an unincorporated association consisting of Brown University, Columbia University, Cornell University, Dartmouth College, Harvard University, the University of Pennsylvania, Princeton University, and Yale University. It claims ownership of twelve registered marks comprising or containing the phrase THE IVY LEAGUE or IVY LEAGUE.
Decision
The TTAB sustained the Ivy Group's opposition on the ground of dilution and did not reach the issue of likelihood of confusion.
Dilution by blurring is defined as an "association arising
from the similarity between a mark or trade name and a famous mark
that impairs the distinctiveness of the famous mark." To
prevail on a dilution by blurring claim under Section 43(c), a
party must meet four elements:
(1) the claimant's mark is famous and distinctive;
(2) the applicant is using a mark in commerce that allegedly
dilutes the famous mark;
(3) the applicant's use of its mark began after the
claimant's mark became famous; and
(4) the applicant's mark is likely to cause dilution by
blurring.
The TTAB found that the Ivy Group's marks, THE IVY LEAGUE and IVY LEAGUE, were famous prior to IV League Nurse's trademark filing and remain both famous and inherently distinctive. This fame was supported by extensive evidence, including media coverage of Ivy League educational and athletic programs; social media activity (e.g., the official X account averaging over 22.9 million impressions per year); television and radio press coverage (including on ABC News, Fox News, and five others); internet websites; media coverage in printed publications (e.g., The New York Times, The Washington Post, and 14 others); and coverage in popular press such as Vogue and five others. Additional support came from licensing and promotional activities, as well as consistent enforcement efforts. Millions of consumers in the United States have been exposed to the THE IVY LEAGUE and IVY LEAGUE marks through these channels. A Lexis database search conducted on June 25, 2024, revealed 368,864 references to the Ivy League in the U.S. press since January 1, 1975. The term "Ivy League" is also defined in various dictionaries as the proper name for the group of member institutions. Based on this record, the Board concluded that the Ivy Group had satisfied elements (1) through (3).
In evaluating element (4)—whether IV League Nurse's mark was likely to cause dilution by blurring—the TTAB first noted that, in the context of dilution, "the similarity between the famous mark and the allegedly blurring mark need not be substantial in order for the dilution by blurring claim to succeed." Rather, the applicant's mark must merely be sufficiently similar to the opposer's famous mark to "trigger consumers to conjure up" the opposer's mark. The TTAB found that IV LEAGUE, the dominant element in IV League Nurse's mark, is phonetically identical to IVY LEAGUE, the core of the Ivy Group's marks. The additional wording in IV League Nurse's mark, namely, NURSE CONCIERGE, INC., was disclaimed and given little weight. Although IV League Nurse argued that "IV" in its mark referred to intravenous therapy, as emphasized by the use of a hypodermic needle and syringe in place of the "I", the TTAB found that this graphical element did not diminish the visual and phonetic similarity of the parties' marks. Furthermore, the TTAB found that combining IV with the term LEAGUE, which appears arbitrary in this medical context, rendered IV League Nurse's mark sufficiently similar to Ivy Group's marks.
The Board also found that none of the Ivy Group's registrations required a showing of acquired distinctiveness under Section 2(f), as the fame of the marks alone demonstrated a high degree of both inherent and acquired distinctiveness. Moreover, the Ivy Group had established substantially exclusive use of the marks through ongoing enforcement actions against similar marks. Although there was no direct evidence of public recognition such as survey data, the Board found that widespread media exposure, dictionary entries, and long-standing brand association supported a significant level of recognition.
Finally, the TTAB concluded that the absence of evidence showing IV League Nurse's intent to create an association with the Ivy Group's marks, or evidence of actual association between the marks, did not outweigh the other dilution factors. Considering the record as a whole, the Board found that IV League Nurse's mark was likely to dilute the distinctiveness of the Ivy Group's THE IVY LEAGUE and IVY LEAGUE marks. Accordingly, the Board found element (4) of the dilution test satisfied, and refused registration of IV League Nurse's mark.
Following the TTAB's decision, IV League Nurse filed a motion for reconsideration arguing that the TTAB misapplied the dilution test and failed to consider evidence in the record. The Ivy Group has opposed the motion for reconsideration, arguing that IV League Nurse did not identify any clear error by the TTAB, but simply disagrees with the TTAB's decision and re-argues points that the TTAB has already considered. Although the final outcome of this dispute remains to be seen, the TTAB rarely reverses itself under these circumstances.
The case is In re Council of Ivy Group Presidents v. IV League Nurse Concierge, Inc., Opposition No. 91285794 (May 8, 2025).
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