IP Law Daily, TRADEMARK—TTAB: Opposition to registration of IV LEAGUE NURSE mark sustained for dilution By blurring, (May 21, 2025)

By Carolin Dennis, B.Sc., LL.B., LL.M.

Opposition to the applicant’s IV LEAGUE NURSE mark sustained on the ground of dilution by blurring because THE IVY LEAGUE and IVY LEAGUE are household names, and for the purposes of dilution, famous marks.

In a nonprecedential decision, the Trademark Trial and Appeal Board (TTAB) sustained an opposition to registration of the mark IV LEAGUE NURSE for intravenous (IV) hydration therapy services on the ground of dilution-by-blurring under Section 43(c) of the Lanham Act. The TTAB determined that the applicant’s mark is likely to dilute the opposer’s THE IVY LEAGUE and IVY LEAGUE marks. Further, the TTAB declined to reach the opposer's Section 2(d) likelihood of confusion claim because it found for the opposer on its dilution claims (Council of Ivy Group Presidents v. IV League Nurse Concierge, Inc., No. 91285794 (T.T.A.B. May 8, 2025)).

Background. IV League Nurse Concierge, Inc. (applicant) sought registration on the Principal Register of the composite mark for IV LEAGUE NURSE for intravenous (IV) hydration therapy services in International Class 44. The application contained the following description of the mark: “The mark consists of the gold wording ‘IV LEAGUE NURSE’. The letter ‘I’ is represented by a gold syringe. Below this wording is the teal wording ‘CONCIERGE, INC.’ All the white in the mark is merely background and is not claimed as a feature of the mark.” The colors teal and gold are claimed as a feature of the mark. “NURSE CONCIERGE, INC.” is disclaimed.

The Council of Ivy Group Presidents (opposer) filed a notice of opposition against the registration of the applicant’s mark based on likelihood of confusion and dilution by blurring under Trademark Act Sections 2(d) and 43(c), 15 U.S.C. §§ 1052(d) and 1125(c). The opposer asserted that it is an unincorporated association consisting of Brown University, Columbia University, Cornell University, Dartmouth College, Harvard University, University of Pennsylvania, Princeton University, and Yale University, and claimed ownership of the 12 registered marks comprising or consisting of the phrase THE IVY LEAGUE or IVY LEAGUE.

Dilution by blurring. The opposer alleged dilution by blurring. To prevail, it must show that: (1) it owns a famous mark that is distinctive; (2) the applicant is using a mark in commerce that allegedly dilutes the opposer’s famous mark; (3) the applicant’s use of its mark began after the opposer became famous; and (4) the applicant’s use of its mark is likely to cause dilution by blurring or tarnishment. Dilution by blurring is an association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.

The TTAB found that the Ivy League and the Member Institutions have continuously and extensively used and promoted the marks THE IVY LEAGUE, IVY LEAGUE, and other marks incorporating IVY LEAGUE and IVY throughout the decades since the association was founded. Continuous and extensive promotion and use of the marks, unsolicited media coverage, social media engagements, licensing and policing of the marks, and dictionary listings of the term “Ivy League” led the TTAB to conclude that THE IVY LEAGUE and IVY LEAGUE are household names, and for the purposes of dilution, famous marks. The TTAB also found that the opposer established that it has continuously used THE IVY LEAGUE and IVY LEAGUE marks for decades prior to the filing date of the applicant’s application, and the unsolicited media of record demonstrated that the marks became famous well before the applicant’s filing date. Thus, the IVY LEAGUE marks were famous before the applicant’s constructive first use date.

The TTAB found that the applicant’s mark and the opposer’s THE IVY LEAGUE and IVY LEAGUE marks share the phonetically identical dominant elements “IV LEAGUE” and “IVY LEAGUE,” respectively, thereby making them similar in sound. Further, the TTAB rejected the applicant’s argument that its mark is a clear reference to intravenous (IV) therapy. The TTAB noted that it may be true for the letters “IV,” but the applicant chose to pair the letters “IV” with the word “League,” which appears to be arbitrary in relation to the applicant’s services. When paired together to create “IV LEAGUE” as the dominant portion of the applicant’s mark, the mark is sufficiently similar to the opposer’s THE IVY LEAGUE and IVY LEAGUE marks.

Next, the opposer's marks are inherently distinctive and there was no evidence that their use was not substantially exclusive. The TTAB also found that THE IVY LEAGUE and IVY LEAGUE marks are publicly associated with the opposer’s educational services such that these marks are now primarily associated with the owner of the marks even when they are considered outside of the context of the owner’s goods and services.

The TTAB noted that there was no evidence that the applicant intended to create an association with the opposer, nor any evidence of any actual association of the applicant's mark with those of the opposer. However, the fact that there was no evidence of the applicant’s intent to create an association with the opposer’s marks or that an actual association existed between the marks did not outweigh the other dilution factors. Therefore, all the factors in regard to the opposer’s Section 43(c) dilution by blurring claim weighed in the opposer’s favor or were neutral.

Accordingly, the TTAB found that the applicant’s mark is likely to dilute the opposer’s THE IVY LEAGUE and IVY LEAGUE marks under Section 43(c) of the Lanham Act.

The Case is Opposition No. 91285794.

Judge: Stanley, L.

Attorneys: Jennifer Insley-Pruitt and Luke M. Reilly (Dechert LLP) for Council of Ivy Group Presidents. IV League Nurse Concierge, Inc., pro se.

Cases: Trademark USPTO