Wednesday, November 24, 2010

Applicant's Bad Faith a Factor in TTAB's Sustaining "AFROS TO SHELLTOES" 2(d) Opposition

The Board sustained Opposer Reginald Carr's Section 2(d) opposition to registration of the mark FROM AFROS TO SHELLTOES ART, ACTION, AND CONVERSATION for "Educational services, namely, conducting workshops and seminars in arts and entertainment, hip-hop, cross generational relationships, community building, and art as a political force to lessen misunderstandings between civil rights and hip hop generations." It found the mark likely to cause confusion with the common law mark AFROS-N-SHELLTOES for "disc jockey services and artist management and promotion services, including the representation of rappers, singers and poets, as well as the representation of managers who want to promote their acts and groups." Carr v. Garnes, Opposition No. 91171220 (November 8, 2010) [not precedential].

Applicant's website

Applicant Edward M. Garnes, Jr., did not introduce evidence at trial and did not file a brief. The Board found that Opposer Carr had standing and priority, the evidence showing use of his mark from a date prior to Applicant's earliest date (his filing date of April 20, 2005.).

Applicant Garnes admitted in his answer that the marks are confusingly similar. The Board agreed, deeming FROM AFROS TO SHELLTOES to be the dominant portion of the applied-for mark. The Board found that portion to be "highly similar in meaning, sound, connotation and appearance" to AFROS-N-SHELLTOES. [For a definition of "shelltoes" go here].

As to the services, the Board found an overlap in potential purchasers: "Specifically, the same rappers and singers who participate in applicant’s lecture workshops and seminars in order to define any message in their works tending to lessen misunderstandings between civil rights and hip hop generations, are likely to take advantage of opposer's artist management and promotion services in commercializing their art." Moreover, the services are marketed in a similar manner (the same local newspaper in Atlanta, hip-hop radio, flyers, and business cards). And so the Board found that this factor, too, favors Opposer.

Finally, the Board considered Applicant's bad faith, under the 13th du Pont factor, observing that "bad faith is strong evidence that confusion is likely, as such an inference is drawn from the imitator's expectation of confusion."

The Board found that Applicant Garnes "acted in bad faith in adopting his mark and prosecuting his application." Opposer Carr had conferred with attorney Arrington in 2004 regarding his business, and the attorney seven months later formed a corporation with Applicant Garnes and then filed the subject application. The Board noted that both parties are located in Georgia and advertise in the same newspaper, and further that both use the unusual term "shelltoes" in their marks. "Applicant could have participated at trial and proffered an explanation as to how he came to adopt his mark under these circumstances, but evidently chose not to."

The Board therefore sustained the opposition under Section 2(d) in view of "the similarity of the marks and services, the identical trade channels and purchasers, and the fact that applicant acted in bad faith."

Text Copyright John L. Welch 2010.


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