Wednesday, April 18, 2007

Precedential No. 31: TTAB Finds "RATED R SPORTSWEAR" Confusingly Similar to the Famous "RATED R" Movie Certification Mark

The fame of the RATED R Certification Mark brought victory to the MPAA in its opposition to registration of the mark RATED R SPORTSWEAR for men's and ladies' clothing ("SPORTSWEAR" disclaimed). The Board found the applied-for mark to be confusingly similar to Opposer's registered RATED R mark for "entertainment services rendered through the medium of motion pictures." Motion Picture Association of America, Inc. v. Respect Sportswear, Inc., 83 USPQ2d 1555 (TTAB 2007) [precedential].

The RATED R mark certifies that a particular film, in the opinion of the MPAA's rating board, "is an adult film in some of its aspects and treatment so far as language, violence, nudity and sensuality are concerned, and that because of such elements no one under the age of 17 should be admitted unless accompanied by a parent or guardian."

The record showed that since 1968 Opposer has provided a voluntary rating system for movies, that more than 20,000 films have been rated since 1968 and 61 percent were rated "R," and that the ratings appear on "most movie theater marquees." Furthermore, the record showed that "theatrical motion pictures are promoted using clothing, including tee shirts and caps."

Opposer pleaded three registrations, but the Board found it necessary to focus only on the RATED R mark. It began its du Pont analysis with the fifth factor: the fame of the mark. The Board observed that "[t]he popularity of motion pictures in the United States cannot be overstated." In 2004, 1.5 billion movie tickets and 1.3 billion DVDs were sold in this country. The MPAA's website receives some 150,000 hits per month and its members spent four billion dollars in 2004 to advertise and promote their movies. A survey in 2004 indicated that 95 percent of those surveyed were aware of Opposer's rating system. Applicant conceded that many people "are aware that RATED R applies to motion picture ratings."

Based on this undisputed evidence, the Board found the RATED R mark to be famous for purposes of Section 2(d). "Such fame must be accorded dominant weight in our likelihood of confusion analysis." (TTABlog comment: As Bugs Bunny would say, "That's all folks!")

As to the marks, the Board found them highly similar in appearance, sound, connotation, and overall commercial impression. That factor, too, weighted heavily in Opposer's favor.

As to the goods and services, the Board noted that they need not be "similar or competitive, or even offered through the same channels of trade, to support a holding of likelihood of confusion." The RATED R certification mark is not used by Opposer; persons use the RATED R mark in connection with motion pictures. The question was whether Applicant's clothing is related to the motion pictures provided by those users.

The MPAA submitted third-party registrations covering clothing items and movies. (E.g., THE SHOOTING GALLERY, SEUSS LANDING). In addition, testimony and other evidence suggested that users of the RATED R mark "produce promotional clothing items bearing the same mark as the motion picture." Moreover, when a mark is famous, purchasers may exercise less care when purchasing a product, even when the goods and services are not closely related. Therefore, the Board found that this factor favors Opposer.

As to channels of trade, the Board made the erroneous statement that, because there are no restrictions in the subject application and registrations as to trade channels or classes of purchasers, "we must assume ... that the channels of trade and the purchasers for applicant's goods as well as the services certified by opposer would be the same." [TTABlog note: that is not a correct statement of the law. The Board must assume that the goods and services travel in the respective normal channels for those goods or services, not that they all travel in the same channels. The normal channels for clothing and movies are not the same, but the normal classes of purchasers (the general public) certainly overlap]. The Board found this factor to favor Opposer.

Finally, Applicant asserted that the lack of actual confusion suggest no likelihood of confusion. The Board noted, however, that Applicant has not made use of its mark for most of its goods, and it found that insufficient evidence to establish that there had been an opportunity for confusion to occur. Besides, the test is likely, not actual, confusion.

Balancing all the factors, the Board sustained the opposition on 2(d) grounds.

TTABlog note: The Board once again declined to reach the dilution claim raised by a successful 2(d) Opposer. Here, in light of the differences in channels of trade, this might have been a good case for the Board to consider the alternative ground for relief. The Board's likelihood of confusion finding might be overturned on appeal, so wouldn't it be prudent to decide the dilution claim now?

The Board's use of a handful of third-party registrations to support its finding of relatedness between clothing and movies is a bit unsettling. As one Board panel noted recently (here), this third-party registration approach can lead to ridiculous results. Clothing items can be found to be related to almost any good or service. There was no showing here that Opposer MPAA used its RATED R mark on any ancillary goods. The Board seemed to be overly eager to find a likelihood of confusion here, so as not to have to deal with the dilution claim.

Text Copyright John L. Welch 2007.


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