“Beast Mode” is the nickname of Oakland Raiders Running Back Marshawn Lynch. His mark is registered with the USPTO. Although there are other registered marks with “Beast Mode” in them, they are for different products or services that Lynch’s mark which is for clothing.
The applicant sought to register “BEAST MODE SOCCER” for “T-shirts” in International Class 25 and “sporting goods and equipment for soccer training, namely, balls” in International Class 28. He had been using the mark for approximately 5 years. Lynch’s registered mark “BEAST MODE” for International Class 25 goods is for “T-shirts”; and for “Men’s, women’s and children’s clothing, namely, shirts, sweatshirts; headwear, namely, hats, caps.”
The USPOT denied the appeal citing Likelihood of Confusion with Lynch’s registered marks. The opinion noted the overlap between the applicant’s mark and the registered mark with respect to t-shirts. It also notes that the two marks could feasibly be in the same trade channels which could lead to a likelihood of confusion.
The applicant argues that Lynch’s mark has nothing to do with soccer and is simply the running back’s nickname:
Registrant’s mark contains absolutely no association with soccer, because Registrant is not associated with soccer, only football. It is extremely rare for high caliber athletes to switch sports or become famous for playing multiple sports. In other words, Babe Ruth is known as a baseball player, Michael Jordan is known as a basketball player, and Tiger Woods is known as a golfer. The word “soccer” does not conjure any of these athletes to mind. In a similar vein, Applicant’s mark BEAST MODE SOCCER does not have any association with Registrant Marshawn Lynch.
While persuasive, the USPTO notes that this assumes that Lynch’s nickname is widely known. The opinion argues that there are multiple meanings for “beast mode.” The allegation ignores the broad protection that Lynch’s mark has which include soccer retailers. Despite any limitation (here soccer) the registrant’s goods and trade channels were identical.
Another argument by applicant that Lynch’s mark is weak did not persuade the USPTO despite third party uses and registrations. Most registered marks did not identify clothing as use for its mark. Finally, even with the argument that there has been no actual confusion in its use of “BEAST MODE SOCCER” the USPTO did not find this a viable argument.
The opinion reflects the importance of registering a mark as another entity may have the ability to foreclose the opportunity for usage of a mark even when it may not travel in the same trade channels or stream of commerce.
Beast Mode Soccer is trademarked by the USPTO for “coaching services.”
