AMERICA'S STRONGEST MAN Not Confusingly Similar to WORLD'S STRONGEST MAN, Says TTAB
The Board dismissed a petition for cancellation of a Supplemental Registration for the mark AMERICA'S STRONGEST MAN for competitions in the field of strength athletics and strength entertainment, finding the mark not likely to cause confusion with the registered mark WORLD'S STRONGEST MAN for televised sports competitions. Judge Thomas Shaw did the heavy lifting in a ten-page decision, wryly observing that "the parties' marks, unlike their contestants, are weak." Trans World International, Inc. v. American Strongman Corporation, Cancellation No. 92050860 (May 8, 2012) [not precedential].
The services of the parties were closely related, if not overlapping. Respondent American argued its "strength athletics and competitions are not a sport," but the Board was unmoved. It noted that Respondent's specimens of use indicated that its mark is used with "activities that most would consider to be a sport." Respondent conducts contests in strength and fitness, and has held an AMERICA'S STRONGEST MAN "championship" annually since 1997. Moreover, the definition of "sport" encompasses American's activities: "an athletic activity requiring skill or physical prowess and often of a competitive nature, as racing, baseball, tennis, gold, bowling, wrestling, boxing, hunting, fishing, etc." [How are these sports like lifting and carrying a small car? - ed.]
Turning to the marks, the Board noted that a weak mark is entitled to only a narrow scope of protection. Petitioner Trans World's mark issued under Section 2(f), a concession that the mark was merely descriptive at the time of application. Similarly, the challenged registration issued on the Supplemental Register, a concession of mere descriptiveness. Both marks consist in part of the laudatory phrase "strongest man" together with a geographic term. The result is two weak marks that "merely tell prospective consumers that the competitions will seek out the strongest man in two different geographic regions."
The Board saw no reason why consumers could not distinguish between the competitions using the first terms in the mark. [Is that the right question? Isn't the question not whether the competitions could be distinguished but whether consumers would think they were presented or sponsored by the same entity? - ed.].
The Board concluded that the mere presence of STRONGEST MAN in each mark was not enough to support a finding of likely confusion, that the marks have different connotations and commercial impressions, and that their differences outweigh their similarities.
And so the Board dismissed the petition for cancellation.
Text Copyright John L. Welch 2012.