Friday, July 25, 2008

Fame Factor Fuels Victory in TTAB 2(d) Opposition Against "ROAD RUNNER" for Batteries

The "significant fame" of the ROAD RUNNER word and character marks carried Opposer Time Warner to victory in its opposition to registration of the word mark ROAD RUNNER for batteries. The Board found Applicant's goods to be "sufficiently related" to Opposer's action figures, accessories therefor, and hand-held video games, for purposes of the second duPont factor. As usual in oppositions involving marks that are famous under Section 2(d), the Board declined to reach Opposer's dilution claim. Time Warner Entertainment Co., L.P. v. Fleet Wholesale Supply Co., Opposition No. 91155422 (July 10, 2008) [not precedential].

After ruling on numerous evidentiary objections, the Board turned to the issue of fame under Section 2(d), keeping in mind that, when found, fame plays a "dominant role" in the duPont analysis. It deemed the mark famous in light of "the length of time in which the ROAD RUNNER mark has been in use, the large number of licensed products and services, the nationwide advertising exposure of the mark, along with the advertising expenditures of opposer’s affiliate’s broadband Internet service."

Turning to the marks, the Board found the most pertinent of Opposer's registrations to be one for the ROAD RUNNER and design mark shown immediately below, for “action figures and accessories therefor” and “a hand held unit for playing a parlour type video game.” The Board found this mark to be "highly similar" to the applied-for mark. This factor, too, weighed heavily in Opposer's favor.

Applicant submitted 30 third-party registrations for marks that consist of or contain the term ROAD RUNNER, and numerous Internet pages that display that term, but the Board was not impressed: the registrations "are not evidence of use" and the web pages are not evidence of actual sales or customer familiarity.

As to Applicant's goods, the Board again focused on Opposer's most pertinent goods: “action figures and accessories therefor” and “hand held unit for playing a parlour type video game.” [TTABlog query: who has a "parlour" any more?] Since neither Opposer's registration nor the opposed application have any limitations as to the specific type of goods, the Board presumed that Opposer's goods include battery-operated items, and that Applicant's goods encompass the type of batteries that may be used in Opposer's goods. In short, the Board found them related for 2(d) purposes. [TTABlog pun: An action figure that uses 2(d) batteries (i.e., two D batteries) is one large action figure!]

"We believe that battery operated action figures, accessories therefor, and hand held video games, on the one hand, and batteries for use therein, on the other hand, are sufficiently related that, given the fame of opposer's mark and the substantial similarity in the marks, purchaser confusion is likely. It is undisputed that batteries are integral to the operation of battery operated action figures, accessories therefor and hand held video games. Thus, these items of opposer and applicant are considered to be complementary goods."

The Board then presumed that the goods travel in the same channels of trade to the same classes of purchasers. [TTABlog query: Why presume this? If the goods were identical, then the presumption would be proper. But when they are not identical, shouldn't there be some proof regarding channels of trade? Or at a very minimum, some discussion? Shouldn't the Board look at the normal channels of trade for batteries, and the normal channels of trade for action figures and video games?]

Finally the Board noted that the goods are general consumer items that would be purchased with ordinary care, and that Opposer's use and licensing of its mark on diverse goods and services makes it more likely that a consumer will believe that batteries bearing the ROAD RUNNER mark are "sponsored or licensed" by Opposer.

The Board therefore ruled that confusion is likely, and it sustained the opposition on that ground, while declining to reach the dilution issue.

TTABlog comment: Once again, a famous mark obtains dilution-like protection under Section 2(d). In light of the many third-party uses and registrations for ROAD RUNNER, and the fact that ROAD RUNNER is a dictionary term and not a coined term, could Opposer possibly have established a dilution claim? Shouldn't those same third-party registrations and uses have put a dent in the scope of protection accorded Opposer's mark?

Text Copyright John L. Welch 2008.


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