Friday, January 23, 2009

Cosmopolitan Magazine Overwhelms "COSMO.COM" Applicant in TTAB 2(d) Opposition

Hearst Communications kicked the living you-know-what out of Applicant Charles Browning Wilson in his attempt to register the mark COSMO.COM for "providing on-line information on available entertainment in various cities." Opposer relied on 31 registrations for marks comprising or containing COSMOPOLITAN or COSMO, established its COSMOPOLITAN mark as famous for magazines, and proved actual confusion. The Board sustained the opposition under Section 2(d). Hearst Communications, Inc. v. Charles Browning Wilson, Opposition No. 91120453 (January 16, 2009) [not precedential].

Fame: Because fame plays the role of dominatrix in the likelihood of confusion analysis, the Board first considered this du Pont factor. The mark COSMOPOLITAN has been in use for magazines for more than a century. In 1998 the monthly circulation averaged 2.6 million copies in the USA, and since 1991 Opposer has published more than 500 million copies of magazines under the marks COSMOPOLITAN and COSMO GIRL. Annual advertising expenditures exceeded $16 million.

The Board therefore found the COSMOPOLITAN mark famous for magazines, and this factor "weighs heavily in Opposer's favor." As to Opposer's other goods and services, the mark "may enjoy some renown," but the Board was not prepared to say the mark is famous therefor.

Family of Marks: Sorry, Hearst, but you didn't prove a family of marks: "the mere fact of adoption, use and/or registration of several marks incorporating COSMOPOLITAN or COSMO ... does not in itself prove that a family of marks exists." Lacking was evidence that "a family of marks has been promoted together." [Tip from the TTABlog: If you want to establish a family of marks, you might try using various given names with your mark: like Mary COSMO, Fred COSMO, Grandpa COSMO].

Comparing the Marks: The Board focused on Hearst's marks COSMOPOLITAN.COM for online computer services and on its famous COSMOPOLITAN mark for magazines. It noted also that Opposer often uses COSMO in connection with its goods and services, and that third parties refer to Opposer and its mark as "Cosmo." The Board concluded that, "simply put," consumers will perceive COSMO.COM as similar to Opposer's marks COSMOPOLITAN and COSMOPOLITAN.COM.

Comparing Goods and Services: Applicant Wilson's services are identical to Opposer's "computer services, namely providing an interactive on-line computer database featuring portions of various magazines and articles in the fields of ... entertainment news," and Applicant's services are closely related to Opposer's magazine. And so this factor pointed in Opposer's direction.

Trade Channels and Conditions of Sale: Because the parties' on-line computer services are identical, the Board must presume that they are rendered in identical channels of trade to the same consumers. These ordinary consumers would exercise only ordinary care in making their purchasing decisions. As to Opposer's magazines, portions appear on its website and so wind up "in the hands of the same consumers" as Applicant's services.

Actual Confusion: Opposer submitted evidence of many misdirected emails produced by Applicant in response to discovery requests. The emails concerned subscription matters or comments regarding the magazine. Applicant contended that these emails constituted hearsay and in any case showed mere carelessness, not confusion. The Board sided with Opposer:

"Applicant himself states that '[i]t is safe to assume that these individuals simply guessed ... that the domain name was the property of Opposer.' That is exactly the point. Given the fame of the COSMOPOLITAN mark for magazines, and that opposer operates a website, coupled with the fact that opposer's famous mark is often shortened to COSMO, it is not surprising that consumers have misdirected emails to applicant. There is no indication that consumers misdirected emails as a result of carelessness; rather we can only conclude that there is a perceived connection between opposer and applicant."

This evidence of actual confusion is "probative and indicative of a likelihood of confusion." It is not hearsay because it is not offered to prove the truth of the consumers' statements therein.

Conclusion: The Board concluded that the du Pont factors, "on balance," favor a finding of likelihood of confusion. [TTABlog comment: "on balance" with a heavy evidentiary thumb on Opposer's side of the scale."]

TTABlog postscript: I was going to [try to] say something clever about "Charlie Wilson's War," but I shan't.

Text Copyright John L. Welch 2009.


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