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

[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 Texas A&M University v. Washington Soap Company, Opposition No. 91223136 (July 12, 2018) [not precedential] (opinion by Judge Christopher Larkin).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...