Thursday, March 20, 2008

Fame Dominates as TTAB Sustains "PLAYBOY" Opposition to "PLAY BODY" for Clothing

When it comes to a famous mark like PLAYBOY, a newcomer had better not fool around. Canadian Rick Worobec found that out when he lost an opposition to his application to register the mark PLAY BODY for "clothing, namely, under garments, swimwear; footwear, namely shoes." The Board found his mark likely to cause confusion with the PLAYBOY mark, previously used and registered for various clothing items. Playboy Enterprises Int'l, Inc. v. Rick Worobec, Opposition No. 91165814 (March 18, 2008) [not precedential].

Opposer established by a mansion-full of evidence that PLAYBOY is a famous mark for purposes of Section 2(d). And, of course, fame plays a "dominant role" in the duPont analysis. PLAYBOY magazine is the best selling monthly men's magazine in the world and the 14th largest consumer publication in this country. More than 10 million people "read" the magazine each month. Among the well-known people who have posed for PLAYBOY are Monroe, Andersen, Smith, Electra, Crawford, Barrymore, MacPherson, and McCarthy. [TTABlog note: That is not a law firm. Those are the surnames of well-known women; do you know their given names?]

Playboy has a television network, a radio channel, and a retail website that averages 500,000 unique visitors each month. [More than this blog gets in 3 months! - ed.] It has licensed its mark on a wide variety of products , including undergarments, swimwear, and footwear. Retail sales of these goods exceeded $120 million in the year 2006. And the mark receives a whole lot of unsolicited media attention.

Applicant Worobec admitted that the PLAYBOY trademark is widely recognized, but he valiantly denied that the mark is famous. The Board, however, disagreed on the latter point, finding that PLAYBOY is a famous mark entitled to a broad scope of protection.

Worobec's goods are identical in part to those of Playboy's registrations, and so the Board presumed that they travel in the same channels of trade to the same customers.

Turning then to the marks, the Board observed once again that when the goods are (in-part) identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. Here, the word "play" forms the first part of each mark, and the first part of a mark is often the part that is "most likely to be impressed upon the mind of a purchaser and remembered." In short, the Board found that, as to the appearance of the marks, "the similarities outweigh the differences." The Board also found that the marks are "more aurally similar than dissimilar."

As to meaning, the marks obviously differ. "However, because of the renown of opposer's PLAYBOY marks, consumers may associate the marks PLAYBOY and PLAY BODY with a single source because of the emphasis opposer places on photographic pictorials of women in its magazines."

"The marks engender a similar commercial impression created, on the one hand, by the above-noted meaning of the word 'playboy' and opposer's renown for featuring naked women in its magazines, and, on the other hand, by applicant's use of the word 'body' in its mark PLAY BODY causing consumers to draw a connection between PLAY BODY and PLAYBOY featuring photographs of women's bodies." [TTABlog comment: that's a bit of a stretch, don't you think?].

Therefore, while the Board recognized differences between the marks, it found that "on balance the similarities outweigh the differences."

Balancing all the duPont factors, the Board found confusion likely.

TTABlog final comments: I think the marks PLAYBOY and PLAY BODY are just too dang similar in spelling: the latter could easily be misread to be the former.

It is interesting to note that the Board didn't really say that the PLAYBOY mark is famous for clothing. It found the mark generally famous, but as to clothing are sales of $120 million enough for a claim of fame? Playboy pleaded a dilution claim, but did not pursue it. Did Playboy nonetheless get dilution-like protection under Section 2(d) based on its over-all fame?

Text Copyright John L. Welch 2008.


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