Monday, April 09, 2007

Precedential No. 28: "CLUB PALMS MVP" Confusingly Similar to "MVP" for Casino Services, TTAB Rules

Applicant Fiesta Palms, LLC ran out of luck in its attempt to overturn the Board's Section 2(d) refusal of CLUB PALMS MVP for "casino services" ["CLUB" disclaimed]. The Board found the mark likely to cause confusion with the registered mark MVP for "casino services offered to preferred customers identified by special identification cards." In re Fiesta Palms, LLC, 85 USPQ2d 1360 (TTAB 2007) [precedential].

Rolling through the du Pont factors, the Board considered the services to be "identical inasmuch as they overlap." The Board also must assume that the purchasers and channels of trade are the same. And because the services are legally identical, the degree of similarity between the marks necessary to establish likely confusion is diminished.

The key question, of course, was whether the addition of Applicant's house mark CLUB PALMS to the registered mark MVP is sufficient to avoid a likelihood of confusion. Generally, the addition of a house mark to another's registered mark does not avoid confusion: "purchasers familiar with registrant's mark are likely to assume that the house mark simply identifies what had previously been an anonymous source."

However, in Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005) [TTABlogged here], the Board found that addition of the house mark NORTON MCNAUGHTON to the "highly suggestive" registered mark ESSENTIALS for clothing was sufficient to avoid confusion. In that case, the existence of 23 registrations for marks including the word ESSENTIALS in the clothing field, together with a dictionary definition of ESSENTIALS as "essentials" of one's wardrobe, tipped the scale in that applicant's favor.

Applicant here made similar arguments, pointing to 173 PTO records (123 registrations) using the term "MVP" as all or part of a trademark, and contending that "consumers have been inundated with the various unrelated trademark uses of the term 'MVP;' thus, there is little probability that they will be confused as to the origin of the goods and/or services provided under the numerous 'MVP' marks."

The Board, however, found problems with Applicant's argument. The mere list of registrations submitted by Applicant did not make the registrations of record, and even if properly made of record, registrations do not evidence that the mark MVP is in use. And even if the marks were in use for non-related goods and services, this would not establish that MVP is weak for casino services. [TTABlog note: in Knight Textile, there was no evidence that the registered marks were in use, but there was a dictionary definition of "ESSENTIALS" that referred specifically to clothing, and the registered marks corroborated that meaning.]

Therefore, the Board distinguished this case from Knight Textile, pointing out that Applicant did not establish that MVP is used by others in the casino field or has any specific meaning in that field.

Palms Casino, Las Vegas

TTABlog Comment: The Applicant here might consider seeking review by way of civil action, pursuant to 15 U.S.C. Section 1071(b), whereby it could submit additional evidence of use of MVP by other entities in order to show the laudatory nature and weakness of the term. Readers may recall the GOSMILE PM tootpaste case (TTABlogged here, here, and here), in which the applicant sought review by way of civil action, reached an agreement with the PTO that allowed re-opening of prosecution of its application, submitted addition evidence of the weakness of "PM," and now has overcome the Section 2(d) refusal to register.

Three non-precedential decisions in which the Board has found no likelihood of confusion upon addition of a house mark to a registered mark may be found at the TTABlog postings here [CITIZENS CIRCLE GOLD ACCOUNT], here [GUNN SMARTCHOICE SERVICE], and here [T-MOBILE NEWS EXPRESS].

Text Copyright John L. Welch 2007.


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