Precedential No. 3: Denying 2(f) Tacking, TTAB Finds HOLLYWOOD and BOLLYWOOD Not Legal Equivalents
The TTAB found that BOLLYWOOD is not HOLLYWOOD, and that bought down the curtain on this Applicant's attempt to register the mark THE BOLLYWOOD REPORTER for newspapers and on-line publications in the field of entertainment. The Board held that Applicant could not rely on its previous registrations for THE HOLLYWOOD REPORTER to establish acquired distinctiveness under Rule 2.41(b). In re Nielsen Business Media, Inc., 93 USPQ2d 1545 (TTAB 2010) [precedential].
In response to a Section 2(e)(1) mere descriptiveness refusal of its intent-to-use application, Applicant claimed that the mark THE BOLLYWOOD REPORTER had acquired distinctiveness and was therefore registrable under Section 2(f). It pointed to Rule 2.41(b), which states that "[i]n appropriate cases, ownership of one or more prior registrations on the Principal Register ... of the same mark may be accepted as prima facie evidence of distinctiveness." In other words, Applicant claimed that it could "tack on" the use of the registered marks to its present mark for purposes of transferring distinctiveness to the new mark.
Examining Attorney Julie A. Watson concluded that the mark THE BOLLYWOOD REPORTER is not the same as or legally equivalent to the mark THE HOLLYWOOD REPORTER. The Board agreed.
To meet the legal equivalents test, the marks must be indistinguishable from one another or create the same, continuing commercial impression such that the consumer would consider both marks as the same mark.
The Board found that here, the marks are not legal equivalents because they have different meanings and produce different commercial impressions.
“Bollywood” is “the extravagantly theatrical Indian motion picture industry.” “Hollywood” is “the center of the American motion picture industry located in Hollywood, California.” THE BOLLYWOOD REPORTER means and creates the commercial impression of a news source regarding the Indian movie industry while THE HOLLYWOOD REPORTER means and creates the commercial impression of a news source regarding the American movie industry.
Applicant feebly argued that "there is only one inconsequential difference between the marks": the substitution of a B for an H. Each of the marks refers to a film industry.
Not so fast, said the Board. That one little letter makes a BIG difference in meaning!
And so the Board affirmed the refusal to register.
TTABlog comment: I've never seen a Bollywood movie. Nor have I been to Dollywood. I have been to Hollywood. How about you? If Dolly Parton ever makes a Bollywood movie, I'd go to Hollywood to see it.
That's about the best I can do with regard to commenting on this case, which hardly seems to merit the "precedential" tag.
Text Copyright John L. Welch 2010.