Monday, April 20, 2009

TTAB Says "So Longo, BADONGO" in 2(d) Opposition to "PODANGO"

ICL, Ltd.'s Section 2(d) opposition to the mark PODANGO, based on ownership of the registered mark BADONGO (both marks for various Internet communication services), went all wrongo: first, ICL failed to properly introduce its registration into the record, and as a result did not prove standing or priority; second, the Board found the marks too dissimilar anyway. ICL, Ltd. v. Podango LLC, Opposition No. 91178334 (April 8, 2009) [not precedential].

Failure to Get Registration into Evidence: Neither party to this proceeding submitted any evidence during the trial phase. Opposer ICL filed a brief (two paragraphs), but Applicant did not bother (i.e., no paragraphs). ICL tried to make its pleaded registration of record, but without success: "[a]pparently opposer attempted to attach an electronic copy of its pleaded registration from USPTO electronic records to its notice of opposition, but opposer failed to do so in accordance with the governing procedures."

At the time the opposition was filed (July 11, 2007), a pleaded registration could be submitted with the notice of opposition, provided it was a status-and-title copy prepared and issued by the PTO. Rule 2.122(d)(1). That Rule was amended effective August 31, 2007 to permit the submission, with the initial pleading, of "a current printout of information from the electronic database records of the USPTO showing the current status and title of the registration."

However, even under the revised Rule, Opposer failed to follow proper procedures. The instructions for filing a notice of opposition electronically state that the pleading must be in PDF, TIFF, or TXT format. Opposer here apparently tried to submit a JPEG copy of its registration, which was not received by the PTO, "either because it was not attached at all or because the jpeg format is not one of the acceptable formats."

Standing: In its answer, Applicant Podango admitted that ICL owns the pleaded registration, but it did not admit that the registration is valid and subsisting. Thus ICL failed to prove standing, and that alone was enough for dismissal.

Priority: Again, Podango's admissions did not go to the issue of the status of Opposer's pleaded registration. Consequently, ICL did not prove priority: another ground for dismissal.

Likelihood of Confusion: Even had Badongo proved priority, the Board pointed out, the marks at issue are not sufficiently similar to support a likelihood of confusion finding.

[C]ontrary to opposer’s arguments, the marks differ significantly in both appearance and sound. The marks also differ in connotation and commercial impression. Applicant’s mark begins with POD, and all of the services identified in the application relate to podcasting. Therefore, applicant's PODANGO mark connotes a connection to podcasting. This likewise affects the commercial impression of applicant’s mark. We find no such connotation or commercial impression in opposer’s BADONGO mark.

The Board therefore dismissed the opposition.

Text Copyright John L. Welch 2009.


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