IP Law Daily, TRADEMARK—TTAB: Proposed CHATTANOOGA RED WOLVES mark was likely to be confused with Arkansas State’s RED WOLVES mark, (Oct 11, 2023)

By Kevin M. Finson, J.D.

The marks RED WOLVES and CHATTANOOGA RED WOLVES were likely to be confused because both were used for goods connected to soccer teams.

Arkansas State University demonstrated that a professional soccer team’s proposed CHATTANOOGA RED WOLVES mark was likely to be confused with the university’s existing RED WOLVES mark, the Trademark Trial and Appeal Board has held, in sustaining the university’s opposition to the soccer team’s trademark application. The goods were related even though a university could not engage in professional soccer, because consumers would be familiar with sponsorships, affiliations, and other connections between amateur and professional teams ((Arkansas State University v. Chattanooga Professional Soccer Management LLC, September 18, 2023, Kuhlke, K.).

Chattanooga Professional Soccer Management, LLC (Chattanooga SC) sought registration on the Principal Register of the standard character mark CHATTANOOGA RED WOLVES and an associated logo for use with a variety of goods including apparel and entertainment services related to professional soccer in International Classes 25 and 41. Arkansas State University (Arkansas State) opposed the registration on the ground of likelihood of confusion with its previously used and registered RED WOLVES and associated logo marks. After briefly noting that Arkansas State’s registration showed its entitlement to a statutory cause of action and that priority was not in dispute, the Board considered the DuPont factors for which there was evidence of record.

Relatedness of goods, channels of trade, and conditions of sale. Both the application and registration listed some shared goods including footwear, hats, and caps which were either in part identical or legally identical. Chattanooga SC argued that its application was limited to professional soccer, which Arkansas State, as a university, could not engage in. The Board held that confusion could still exist because the public would be exposed to professional teams engaging in non-professional activities such as hosting NCAA tournaments or maintaining affiliate teams and camps, including examples of Chattanooga SC itself interfacing with college level soccer through promotion of the college commitment of players from its Red Wolves Academy program. This factor weighed in favor of a likelihood of confusion.

Strength of the registered mark. Chattanooga SC argued that the registered mark was weak due to a number of other registrations containing references to wolves. However, the record showed that Arkansas State had actively policed its rights in the mark and that only one other existing mark contained the full disputed term “red wolves,” and Arkansas State had entered into a consent agreement with that user outlining terms and conditions to avoid confusion. The Board held that the university’s mark was entitled to the ordinary scope of protection for arbitrary registered marks.

Similarity of the marks. The Board held that the dominant element of both marks was the shared term RED WOLVES, and also noted that Chattanooga SC’s mark contained the entirety of Arkansas State’s mark. They had the same commercial connotation, as both were being used as sports team mascots. This factor weighed in favor of a likelihood of confusion.

Actual or potential confusion. The Board noted that there was no evidence of actual confusion, but that the record was not developed enough for it to determine whether meaningful opportunities for confusion existed. The confusion factors were neutral.

Balancing the factors, the Board held that there was a likelihood of confusion and sustained the opposition.

The Case is Opposition No. 91253165.

Attorneys: Paige Mills (Bass Berry & Sims PLC) for Arkansas State University. Mary Frances Love (Muncy Geissler Olds & Lowe PC) for Chattanooga Professional Soccer Management LLC.

Companies: Arkansas State University; Chattanooga Professional Soccer Management LLC

Cases: Trademark USPTO