Tuesday, September 04, 2012

TTAB Dismisses VIRGIN Opposition to VIRGIN FARMS for Agricultural Seeds

Pro se Applicant Steven E. Moore bested Virgin Enterprises in this Section 2(d) and 43(c) opposition to VIRGIN FARMS & Design for "agricultural grains for planting; agricultural seeds; bulbs for agricultural purposes; plantable seed paper comprised primarily of seeds for agricultural purposes; seeds for agricultural purposes; spores and spawn; unprocessed seeds for agricultural use" [VIRGIN FARMS disclaimed]. Opposer claimed likely confusion with its allegedly famous mark VIRGIN, but the Board found no similarity between the involved goods and services; as to dilution, the Board found insufficient proof of fame and no showing of a likely association that would dilute Opposer's marks. Virgin Enterprises Limited v. Steven E. Moore, Opposition No. 91192733 (August 31, 2012) [not precedential].

Likelihood of confusion: Opposer relied on forty-seven (47) registrations for marks that constitute or include the word "VIRGIN." The Board focused on six registrations for marks that it deemed closest to Applicant's mark and covering goods that are "most likely to support a finding of likelihood of confusion."

Applicant Moore offered no testimony or evidence and did not appear at oral argument; he did file a brief. Virgin submitted, via notice of reliance, many printed publications and deposition exhibits on DVDs and CD-ROMS, but the Board excluded them because that form of evidence is not acceptable in Board proceedings. The option to file submissions in such digital formats was removed from Trademark Rule 2.126 by amendment effective August 31, 2007. The Board noted, however, that it did not appear that the material would have affected the outcome of the case.

Although it criticized Opposer Virgin's evidentiary showing, the Board found, based on the volume of sales and advertising expenditures, commercial success, and a high degree of renown, and widespread exposure, that "the VIRGIN and the VIRGIN-formative marks are famous for purposes of likelihood of confusion for a wide variety of consumer goods and for services in the entertainment, telecommunications, transportation and travel fields."

The Board found the marks to be similar, based on the similarities in sound, appearance and connotation. "The fame of VIRGIN magnifies the significance of the similarities of the mark." As to the goods and services, however, Virgin's proofs fell short. Virgin maintained that the evidence shows a relationship between Moore's seeds and its goods and services because they all include "agricultural aspects and influence agricultural production." Virgin gave the following example

[T]he Virgin Groups airport lounges and airlines might purchase and serve sunflower seeds from VirginFarms. There can be no doubt that a Virgin Group airline passenger who receives a package of VirginFarms' sunflower seeds will be confused as to the source of those seeds. Likewise, VirginFarms' grains and seeds might be used in the production of biofuels by the Virgin Group’s licensees or, worse, their competitors.

But the Board noted that the opposed application lists goods limited to agricultural use only, and would not include edible sunflower seeks. Moreover, Virgin provided no evidence that seeds for agricultural purposes could be used in the production of biofuels, and no evidence that applicant's goods are potentially capable of being used in biofuels.

Because Moore's identification of goods is limited to agricultural purposes, his goods presumably travel in only those normal channels involving agricultural goods. However, consumers buying seeds would also likely buy phones and travel, and so these consumers may encounter both sets of marks. But the " vast difference" between the involved goods and services "would not be lost on average purchasers, let alone those agricultural customers who buy agricultural seeds and grains for commercial planting and farming." Moore's limited channels of trade are not likely to include Virgin's goods and services. Finally, the Board noted that the decision to purchase seeds would entail some deliberation and analysis.

The Board concluded that Virgin failed to show "that the respective goods and services are similar, let alone related." And so it dismissed Virgin's Section 2(d) claim.

Dilution: A dilution claimant must show that its marks have become "household terms which almost everyone is familiar." Although fame for Section 2(d) purposes "varies along a spectrum from very strong to very weak," for Section 43(c) dilution, fame is "an 'either-or' proposition—it either exists or it does not." Virgin's evidence failed to meet the Toro threshold for proof of fame.

The Board pointed to the proofs in the Nasdaq case as an example of the quantum of proof required to prove fame. In contrast, Opposer Virgin's printed publication evidence concerned initiatives and investments of Richard Branson. Virgin did not submit survey evidence of brand recognition and awareness, and Applicant Moore did not concede that the mark VIRGIN is famous.

For the sake of completeness, the Board considered the six non-exhaustive factors of Section 43(c)(2)(B)(i)-(vi), in determining whether there existed a likelihood of confusion by blurring. It concluded that there was not.

The finding that opposer’s VIRGIN and VIRGIN-formative marks are not famous for purposes of dilution, the fact that there is no evidence demonstrating any association between the parties’ marks, and the fact that there is no evidence that applicant intended to create an association with opposer’s mark outweigh the similarities of the marks and the distinctiveness and substantially exclusive use of opposer’s VIRGIN and VIRGIN-formative marks.

TTABlog note: This blog has previously covered two cases in which Virgin proved its mark famous for Section 2(d) purposes, and prevailed on its likelihood of confusion claims:

Virgin Enterprises Ltd. v. Albion Motors Ford Mercury, Inc., Oppositions Nos. 91153575, 91153612, and 91154161 (August 10, 2007) [not precedential]. [VIRGIN VEHICLES, VIRGIN SALE, and VIRGIN PURCHASE for "automobile and truck dealerships"] [TTABlogged here].

Virgin Enterprises Ltd. v. Kay Guitar Co., Opposition No. 91154392 (November 23, 2004) [not precedential]. [VIRGIN GUITARS]. [TTABlogged here].

Text Copyright John L. Welch 2012.


At 1:42 PM, Anonymous Anonymous said...

Say Virgin Enterprises Ltd. had prevailed, convincing the TTAB that its "VIRGIN" mark was famous in the area goods comprised of agriculture and food as it argued. How would you recommend olive oil producers, non-parties who have used the word "virgin" as a product description for many years, challenge this finding?


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