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The mark “Very Minor Leagues” does not infringe the mark “Professional Baseball The Minor Leagues,” the 10th U.S. Circuit Court of Appeals ruled July 28 ( National Association of Professional Baseball Leagues Inc. v. Very Minor Leagues Inc., Nos. 99-6007 and 99-6008, 10th Cir.). The panel affirmed a jury verdict for Very Minor Leagues Inc. in a trademark infringement action brought by the National Association of Professional Baseball Leagues Inc. (NAPBL). NAPBL is the owner of the mark “Professional Baseball The Minor Leagues”; Very Minor Leagues manufactures and sells clothing featuring the names and logos of fictitious baseball teams. APPLICATIONS Very Minor Leagues applied to the U.S. Patent and Trademark Office in June 1994 to register its mark; the application was published for opposition in April 1995. NAPBL filed a notice of opposition in August 1995, contending that it owned common law trademarks in “The Minor Leagues” and “Minor League Baseball.” In September 1995, NAPBL filed applications to register the marks “Minor League Baseball” and “The Minor Leagues”; however, the applications were refused in light of the application by Very Minor Leagues and the existence of a registration for “Minor Leagues Major Dreams.” In mid-1996, King Features Syndicates contacted Very Minor Leagues to discuss a licensing agreement. Very Minor Leagues disclosed the pending trademark dispute to King, then filed a motion with the Trademark Trial and Appeal Board (TTAB) of the U.S. PTO for summary judgment, seeking dismissal of NAPBL’s opposition. In July 1996, the TTAB suspending the opposition proceedings pending resolution of the summary judgment motion. SUIT FILED NAPBL then sued in the U.S. District Court for the Middle District of Florida, alleging trademark infringement and dilution, false designation of origin and unfair competition. The suit was transferred to the U.S. District Court for the Western District of Oklahoma. When King Features withdrew its offer to enter into a licensing agreement, Very Minor Leagues filed counterclaims seeking cancellation of NAPBL’s mark “Professional Baseball The Minor Leagues” and alleging tortious interference, prima facie tort and abuse of process. NAPBL moved for partial summary judgment on the non-trademark claims; the District Court granted the motion. At trial, Very Minor Leagues withdrew its cancellation counterclaim. The jury returned a verdict for Very Minor Leagues on all of NAPBL’s claims. The court denied Very Minor Leagues’ motion for attorneys’ fees. The parties filed cross-appeals. ATTORNEYS’ FEES Affirming, the 10th Circuit held that Very Minor Leagues is not entitled to attorneys’ fees because the claims brought by NAPBL were not unfounded. “In support of its claims, Professional Baseball Leagues provided some evidence of similarity between its mark and Very Minor Leagues’ mark, as well as some evidence of consumer confusion from independent experts, including one expert who testified that he believed it was deceptive to use the words ‘minor league’ in connection with fictional baseball teams,” the panel said. “Another expert testified that Very Minor Leagues’ use of ‘minor leagues’ inferred an association or affiliation with Professional Baseball Leagues, and that he was confused about whether Very Minor Leagues’ products were licensed by Professional Baseball Leagues. That evidence indicates that Professional Baseball Leagues’ suit was not unfounded.” COUNTERCLAIMS The panel held further that the lower court properly entered summary judgment for NAPBL on the Very Minor Leagues’ non-trademark counterclaims, finding that no genuine issues of material fact remained. Finally, the court found no error on the part of the trial judge in excluding evidence of NAPBL’s prior use of the marks “The Minor Leagues” and “Minor League Baseball.” NAPBL is represented by Douglas E. Hart of Frost & Jacobs in Cincinnati. Very Minor Leagues is represented by James W. Tilly of Tilly & Associates in Tulsa, Okla. �; Copyright 2000 Mealey Publications, Inc.

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