Thursday, September 13, 2012

TTAB Sustains Section 2(a) False Association Opposition to "FRANKS ANATRA" for Catering Services

Start spreading the news .... The TTAB sustained a Section 2(a) opposition to registration of the mark FRANKS ANATRA for "catering of food and drinks," finding that it falsely suggests a connection with .... you guessed it! .... Frank Sinatra. And for good measure, it also found Applicant's mark likely to cause confusion with the registered marks SINATRA and FRANK SINATRA for entertainment services, and the mark FRANK SINATRA & Design for prepared sauces. Frank Sinatra Enterprises, LLC v. Bill Loizon, Opposition No. 91198282 (September 12, 2012) [not precedential]

Section 2(a): The evidence, not surprisingly, established that Frank Sinatra is an iconic figure in American culture. The Board found that the applied-for mark is a close approximation of the name Frank Sinatra. Applicant Loizon argued that FRANKS means hot dogs or frankfurters, and ANATRA means "duck" or "drake" in Italian. The Board was unmoved by that argument:

We do not agree because there is nothing inherent in applicant's mark or in his marketing to lead consumers to translate the word "Anatra" to duck. Furthermore, we do not understand how applicant's mark engenders the commercial impression relating to anything other than a play on the Frank Sinatra name.

Loizon testified that "Anatra" is a reference to "the People's Republic of Anatra," a fictional "independent island nation" that is "all about hot dogs." He contended that the badge of the country appears on the door of his truck. The Board found this island imagery to be "obscure" and unlikely to be understood by consumers.

Moreover, the Board observed that it is common for performers and owners of well-known marks to expand their product lines to diverse goods in order to capitalize on their name and brands. The Board therefore found that consumers will associate the applied-for mark with Frank Sinatra. And the Board noted Applicant's concession that Frank Sinatra is not associated with his business.

Finally, there was no doubt that Frank Sinatra is sufficiently famous to satisfy the final element of the Section 2(a) test, and it therefore ruled that Applicant's mark FRANKS ANATRA falsely suggests a connection with Frank Sinatra.

Section 2(d): The Board readily found the marks SINATRA and FRANK SINATRA to be famous for entertainment services.

As to the marks, FRANKS ANATRA and FRANK SINATRA are "phonetically equivalent," which reinforces their visual similarity. Applicant's mark is an obvious play on "Frank Sinatra." [Applicant testified that he has a "passion for humor," but I guess passion does not equal talent - ed.]. However, "the right of the public to use words in the English language in a humorous or parodic manner does not extend to use of such words as trademark if such use conflicts with the prior use or registration of the substantially same marks by another."

In view of the fame of Opposer's mark and the similarities in appearance, sound, and overall commercial impression, the Board found the marks to be similar.

As to the goods/services, the Board again noted the common tendency for performers to expand their product lines, including to services unrelated to entertainment, such as catering. Accordingly, the Board found the goods and services to be related.

Balancing the relevant du Pont factors, the Board found confusion likely and it sustained the Section 2(d) claims as well.

TTABlog comment: Now in the real world, is anyone going to believe there is a connection between Frank Sinatra and this food truck? I think not. But at the TTAB it's a different story.

By the way, how about a catering service called FRAN XINATRA? Too close?

Text Copyright John L. Welch 2012.


At 2:27 PM, Anonymous Zick Rubin said...

How about Gillette's application to register FRANKS 'N' ATRA for its new chain of "men's barber shops wuth snacks"? Is the Office going to bounce that one too?

At 12:15 PM, Blogger John Ward said...

What? No Franks Anatra? What am I going to serve with my Beans Martin?

At 3:09 PM, Anonymous Anonymous said...

Seems unlikely to me that one would find a connection. What should applicant have done differently?


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