Friday, December 10, 2004

Virgin's Rights Intact After TTAB Tryst

Applicant Kay Guitar Company never had a prayer in its pro se attempt to register the mark VIRGIN GUITARS and Design for guitars [GUITARS disclaimed]. The Board found the mark likely to cause confusion with Opposer's VIRGIN marks for a variety of goods and services related to the music industry. Virgin Enterprises Ltd. v. Kay Guitar Co., Opposition No. 91154392 (November 23, 2004) [not citable].

Opposer Virgin Enterprises submitted dozens of registrations for the mark VIRGIN in various forms, and established a record "replete with examples of the close connection" between music and its goods and services. Virgin sells records, tapes, and discs, features live in-store musical performances frequently involving "giveaways, including autographed guitars from the bands." Its stores offer guitar magazines, instructions books, and musical history books, and Virgin is "considering in the future offering musical instruments at its United States stores." Kay Guitar, on the other hand, did not take testimony, offer any evidence, or file a brief at final hearing.

Virgin did, however, strike a few sour chords. The Board turned a deaf ear to its claim to a family of "Virgin" marks, citing (as usual) J&J Snack Foods Corp. v. McDonald's Corp., 18 USPQ2d 1889 (Fed. Cir. 1991), and observing that "[s]imply using a series of similar marks, or the mere fact of registration of many marks with a common 'surname,' does not of itself establish the existence of a family." One who claims a family of marks "must prove that all or many of the marks in the alleged family were used and promoted together in such a way as to create public perception of the family 'surname' as an indication of source."

[The Board regularly rejects the "family of marks" argument, the recent MISS T-GIRL USA decision (see below) being a rare exception. In that decision, however, the Board provided virtually no analysis of how it reached its finding of a "family" of MISS . . . USA marks, and then made no apparent use of the "family of marks" finding in reaching its decision.]

The other sour chord involved Virgin's claim that its marks are famous. Although the Board found VIRGIN to be "a strong mark that is entitled to a relatively broad latitude of protection," it could not conclude that the VIRGIN marks are famous. "Critical evidence is lacking, such as volume of sales under the marks, and the amount of opposer'’s advertising expenditures."

In view of the Board finding of likelihood of confusion, it declined to reach the merits of Virgin's Section 43(c) dilution claim. That was probably a wise idea, since the chances of appellate reversal of the Board's Section 2(d) decision are minimal.


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