Wednesday, October 04, 2006

TTAB Sustains "HARRY POTHEAD" Opposition on Confusion and Dilution Grounds

Given the broad protection accorded by the TTAB to famous marks, it is hardly surprising that the Board sustained an opposition to registration of HARRY POTHEAD for entertainment services. On summary judgment, the Board found the mark likely to cause confusion with, and likely to dilute, the mark HARRY POTTER, registered for a wide variety of goods and services, including entertainment services. Warner Bros. Entertainment, Inc. v. Campo, Opposition No. 91156299 (September 13, 2006) [not citable].

Applicants (three individuals appearing pro se) did not respond "substantively" to Opposer's summary judgment motion, but the Board nonetheless chose to consider the motion on its merits.

Likelihood of Confusion: Applicants had conceded that the HARRY POTTER mark is well known and famous, and the Board found that "every du Pont factor" that it considered favored Opposer: the services involved are "virtually identical" and the marks "highly similar in appearance." Moreover, Applicants admitted that they were aware of the HARRY POTTER mark when they adopted their mark.

Dilution: Applicants admitted the elements of dilution: that the HARRY POTTER mark is famous and achieved fame before Applicants made any use of their mark; that their mark will dilute the distinctive quality of Opposer's mark; and that use and registration of their mark will lessen the capacity of Opposer's mark to identify and distinguish its goods and services.

Parody defense: Applicants asserted parody as a defense to both claims. The Board noted that "because we are dealing with opposer's established rights in the trademark HARRY POTTER, any claim applicants may make to the use of their HARRY POTHEAD as a parody will not be considered a 'defense' but rather simply as a factor which is relevant to our analysis of likelihood of confusion." The Board then cited Professor McCarthy for the proposition that appropriation of a mark not to parody the product symbolized by the mark, but as a prominent means to poke fun at something else, is not "parody" of a trademark.

Here, the record revealed that Applicants were not using the HARRY POTHEAD mark "in a manner intended to parody opposer's HARRY POTTER mark. Applicants stated to the PTO that their work "does not parody any material from the Harry Potter movie or book series." Instead, Applicant Campo stated:

"the joke and point of our short [Harry Pothead and the Magical Herb] is that the parents become obsessed and delighted with what is being told to them[.] [T]hey may be oblivious to some of the things that their children are involved in. *** I think one of the ways that we are trying to get humor is by showing that people's obliviousness to what they are involved in could have them involved in something that could be illegal or harmful."

Based on Applicants' statements, the Board could conclude only that Applicants "are using their HARRY POTHEAD mark to poke fun at something else in society, i.e., applicant's perception that parents are oblivious to what their children are involved in." Thus Applicants 'claim of parody was unsupported, and the Board refused to consider this a relevant factor in its analysis of likelihood of confusion and dilution.

The Board therefore granted the motion for summary judgment on these two grounds, and sustained the opposition.

TTABlog comment: This decision reminds me of a soccer match I saw a few years ago, that ended with the score 9-0. It was so one-sided that it was boring to watch.

Text Copyright John L. Welch 2006.


Post a Comment

<< Home