Thursday, March 15, 2007

Third-Party Registrations Insufficient to Prove Clothing and Restaurant Services Related, Says TTAB

Refusing to let Mucky Duck run amok, the TTAB dismissed a Section 2(d) opposition to registration of the mark PELAGIA for "clothing, namely shirts." The Board found the mark not likely to cause confusion with the identical mark, registered and used for restaurant services. CNL Tampa Int'l Hotel Partnership, LP v. Palazzolo, Opposition No. 91163724 (March 7, 2006) [not precedential].

Opposer stumbled at the starting line, failing to introduce its registration into the record by one of the three avenues available. [Can you name the three? -ed.] Fortunately, however, Applicant Laurie A. Gomulka Palazzolo, in her brief, treated the registration as if it were properly of record, and so the Board did the same.

Opposer claimed that clothing "is within the natural scope of expansion for restaurant services." Its only proof of relatedness of these goods and services, however, was a collection of 102 third-party registrations each encompassing both restaurant services and clothing. But for obvious reasons, the Board considered only those based on use and not those based on Sections 44 and 66 of the Lanham Act.

The Board noted that, under In re Albert Trostel & Sons. Co., 29 USPQ2d 1783 (TTAB 1993), and In re Mucky Duck Mustard Co., 6 USPQ2d 1467 (TTAB 1988), third-party registrations "may have some probative value to the extent that they serve to suggest that the listed goods and/or services are of a type that may emanate from a single source." [emphasis added by Board].

Opposer argued that restaurant services and clothing are related because "a normal outgrowth of restaurant services is the production and sale of clothing." The Board, however, refused to draw the inference from third-party registrations that these goods and services are "legally related products" requiring a finding of likelihood of confusion.

For the doctrine of natural expansion to apply, the evidence must show that "consumers would generally expect that restaurant services and shirts emanate from the same source." Reviewing the four factors set forth in Mason Engineering v. Mateson Chemical, 225 USPQ 956 (TTAB 1985), the Board concluded that Opposer's evidence fell "far short" of proving that shirts are within the area of natural expansion of restaurant services.

The Board noted that, in cases where a senior user's trademark rights have been expanded beyond its core business to encompass "collateral materials," the mark has been well-known, if not famous, as a result of extensive advertising and promotion, and has been used on "collateral materials." That was not the case here.

Finally the Board noted that acceptance of Opposer's argument would be tantamount to creating a per se rule "that the same or similar marks for restaurant services and clothing is likely to cause confusion."

"But that is just the start. Based on opposer's third-party registrations, restaurant services and clothing are also related to housewares, glassware, toys, sporting equipment, ashtrays, cigarette lighters, key chains, license plate holders, cooking pans and utensils, jewelry, real estate development services, gun firing ranges, casinos, hotels, exercise classes, loose-leaf binders, aromatherapy and massage services, and chairs."

Taken to the "absurd extreme," if third-party registrations alone were sufficient to prove relatedness of goods and services, "then virtually all consumer products and services would be related."

The Board therefore dismissed the opposition.

TTABlog comment: Back in December 2005, I complained here about the application of Mucky Duck in support of a finding that t-shirts and hats are related to golf equipment: "One suspects that third-party registrations may be found that include t-shirts and/or hats and almost any other product or service one can think of -- given the common practice of marketing or distributing t-shirts or hats emblazoned with one's trademark."

It's good to see the TTAB recognizes the problem, but it's unfortunate that the instant decision is not precedential.

Text Copyright John L. Welch 2007.


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