Wednesday, November 22, 2006

Black Dog Tavern Triumphs in TTAB 2(d) Opposition Dogfight

One might say that Applicant Elizabeth A. Frechette barked up the wrong tree in her attempt to register the two dog design marks shown immediately below, for paper articles, glassware, clothing, and retail gift store services. The Board found these two marks likely to cause confusion with Opposer's dog design mark, shown further below, registered and used for various goods and services. The Black Dog Tavern Co. v. Frechette, Oppositions Nos. 91150887 and 91151592 (November 14, 2006) [not citable].

Applicant's marks

Opposer Black Dog Tavern established priority by submitting status-and-title copies of nine registrations for its dog design mark for clothing, mugs, glassware, playing cards, and various other goods, and for restaurant and bakery shop services. It also proved prior use of the mark for its catalog/calendar, for posters, and for retail general store services.

Opposer's mark

Applying the ever-popular du Pont factors, the Board found that the first factor, the similarities between the goods and services of the parties, "weighs heavily in opposer's favor." The Board noted that Applicant's identification of goods is unrestricted, and therefore that her goods are deemed to be sold in all normal channels of trade to all appropriate purchasers. The goods covered by Opposer's registrations, in turn, are "deemed to be marketed in the same channels of trade and to the same classes purchasers, i.e., to the general public."

With regard to Opposer's paper goods and retail store services, its rights were based on common law use, and therefore were limited to its actual channels of trade. However, Opposer offers those goods and services through catalogs and in its general stores in Massachusetts and Rhode Island. The Board noted that this is the same geographic area in which Applicant sells her goods. [TTABlog note: Why Applicant Frechette's actual trade area makes any difference is a puzzle, since Applicant was seeking nationwide registrations]. The same customers, i.e., the general public, may encounter both parties' goods and services. The Board therefore found that the third and fourth du Pont factors weighed in favor of Opposer.

The Black Dog Tavern
Martha's Vineyard, MA

Opposer BDT established that its dog design mark is "strong" by submitting numerous advertisements and articles from sources such as The New York Times, The Washington Post, and The Wall Street Journal. It proved sales of more that $100 million and advertising expenditures of more than $5 million since 1987, and its President testified that Opposer has challenged other infringing marks. In fact, Applicant Frechette stated that Opposer's mark is "very famous."

Finally, the Board found that, although there are specific, slight differences, the marks are similar in appearance and commercial impression: "a standing black dog that is, or is close in appearance to, a Labrador retriever."

The Board concluded that confusion is likely, and it therefore sustained the oppositions.

TTABlog comment: Two procedural points are worth noting. The Board sustained Opposer's hearsay objection to the admissibility of various advertisements and newspaper article proffered by Applicant, to the extent offered to prove the truth of the matters asserted therein. And the Board affirmed Opposer's objection to Applicant's "customer survey" because it "was not conducted in accordance with accepted survey methods."

Finally, for purposes of full disclosure, please be aware that I, the TTABlogger, provided some assistance to Opposer The Black Dog Tavern Company, Inc. in this matter.

Text © John L. Welch 2006.


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