Monday, November 14, 2011

CAFC Affims TTAB Decision Sustaining "TELMEX" 2(d) Opposition

In a nonprecedential disposition, the CAFC affirmed the Board's decision in Telefonos de Mexico, S.A.B. de C.V. v. Andres Gutierrez Estrada, Opposition No. 91183487 (June 30, 2010) [not precedential]. [TTABlogged here]. The appellate court ruled that the TTAB's findings of fact in its Section 2(d) analysis were supported by substantial evidence, and it concluded that the Board did not err in finding a likelihood of confusion between Applicant Estrada's mark AUDITORIO TELMEX for arena and entertainment services [AUDITORIO disclaimed], and the previously-used mark TELMEX for telephone calling card services. Andres Gutierrez Estrada v. Telefonos de Mexico, S.A.B. de C.V., Appeal No. 10-1558 (Fed. Cir., November 20, 2011).

On appeal, Estrada contended that "entertainment services and arena services are not related to telecommunications services, and that Telefonos failed to establish that the promotions displayed on its calling cards would create an association between these services." The CAFC disagreed, concluding that substantial evidence supported the Board’s findings.

The Board considered the evidence submitted by Telefonos, including the testimony of Mr. Rivera and the images of calling cards bearing Telefonos’ TELMEX mark and depicting sporting and other entertainment events sponsored by Telefonos. *** Although telecommunications services are different in kind from arena and entertainment services, the Board properly relied on substantial evidence in the record to find that the services, when used in connection with the marks at issue, would likely be related in the mind of the consuming public.

Estrada also contended that the Board erred when it considered certain evidence dated after Estrada’s application filing dates. The court again disagreed: "Our precedent is clear, however, that 'evidence bearing on the issue of likelihood of confusion is admissible for the period extending through the latest date permitted by the procedural rules of the [PTO] for taking testimony and presenting evidence.' R.J. Reynolds Tobacco Co. v. Am. Brands, Inc., 493 F.2d 1235, 1238 (CCPA 1974)."

Finally, the court ruled that the Board had properly considered the matter of bad faith.

The thirteenth DuPont factor permits the Board to weigh "[a]ny other established fact probative of the effect of use." DuPont, 476 F.2d at 1361. An applicant’s bad faith is potentially relevant in the likelihood-of-confusion analysis. See L.C. Licensing Inc. v. Berman, 86 U.S.P.Q. 2d (BNA) 1883, 1890 (T.T.A.B. 2008); see also Paddington Corp. v. Attiki Imps. & Dis-tribs., Inc., 996 F.2d 577, 587 (2d Cir. 1993) ("Where a second-comer acts in bad faith and intentionally copies a trademark or trade dress, a presumption arises that the copier has succeeded in causing confusion."). As noted supra, the Board found that Estrada had been "evasive and disingenuous" by essentially denying any prior knowledge of Telefonos’ TELMEX mark. The Board concluded that Estrada exhibited "not only bad faith but a general lack of respect for the application and opposition process." *** The Board noted that although it would have found a likelihood of confusion on the present facts even without a finding of bad faith, were this a close case Estrada’s bad faith would have tipped the balance to a finding of a likelihood of confusion. We conclude that substantial evidence supports the Board’s finding of Estrada’s bad faith. As the Board noted, if Estrada had an explanation for his implausible responses, he could have provided that explanation by submitting evidence at trial."

And so the court affirmed the TTAB's ruling.

TTABlog comment: I guess the CAFC has not read Tom Casagrande's article (here) on "Why an Accused Trademark Infringer's Intent Has No Place in Likelihood of Confusion Analysis."

Here, it seems that Estrada's faith was doubly bad: first in choosing his mark and second in being "evasive and disingenuous" when asked about it. The Board stated that it would have found a likelihood of confusion even without the bad faith finding, but is there any doubt that Estrada's bad faith put him behind the 8-ball?

Text Copyright John L. Welch 2011.


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