Monday, October 29, 2012

Bullying at the TTAB? Shark Attacks Pro Se Applicant

Pro se Applicant Brick City 21 applied to register the mark shown below left for various clothing items. Great White Shark opposed, claiming likelihood of confusion with its registered design mark (the "Greg Norman logo") shown below right, for overlapping clothing items. Great White filed a motion for partial summary judgment on the issues of standing and priority, and on two of the du Pont factors: the similarity of the goods and the similarity of the channels of trade and classes of customers. The Board granted the motion. Great White Shark Enterprises, Inc.. v. Brick City 21 LLC, Opposition No. 91201911 (October 12, 2012) [not precedential].

Great White established its standing by attaching TARR and TESS printouts for one of its pleaded registrations. Lipton Industries, Inc. v. Ralston Purina Company, 213 USPQ 185, 189-190 (C.C.P.A. 1982); see also Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1408 (TTAB 2010) (pleaded registration made of record establishes standing).

Likewise, priority is not an issue when an opposer relies on a registration. King Candy Co. v. Eunice King's Kitchen, Inc., 182 USPQ 108, 110 (CCPA 1974).

As to the goods, Great White's registration covers "apparel, headwear." Brick City's goods are "casual clothing and garments, namely, shirts, pants, shorts, hooded sweatshirts, hats, bandanas, jackets and sweatshirts." Therefore the goods overlap and to that extent are considered legally identical.

Since the goods are identical, they are presumed to travel in the same, normal channels of trade to the same, usual classes of consumers. Paula Payne Products Co. v. Johnson Publishing Co., 177 USPQ 76, 77 (CCPA 1973); See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003). Brick City argued that its goods are sold only at poker tournaments while Great White's are sold in golf shops and department stores, but that was irrelevant since the Board must look only at the goods as identified in the opposed application and pleaded registration, regardless of what the evidence may show as to the actual nature of the goods, their channels of trade, and/or the classes of consumers . See Canadian Imperial Bank v. Wells Fargo Bank, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987).

The Board therefore granted partial summary judgment on these four issues, leaving for another day the critical issue: are these two marks similar enough for Section 2(d) purposes?

TTABlog comment: Is this a case of bullying by Great White Shark? Do you think the marks are close enough to cause confusion? If you didn't think so, would you try to show your shark's strength, so to speak, by filing a motion for summary judgment on these four issues? Even though you will surely prevail on these "slam dunk" issues anyway? Why spend the time and effort on a partial summary judgment motion instead of waiting for the final denouement? Is it because you hope that a partial victory on summary judgment will intimidate the Applicant into submission?

Let's not kid ourselves, this is the way the game is played at the TTAB. Is this trademark bullying? Or just aggressive and appropriate policing of one's trademark?

Text Copyright John L. Welch 2012.


At 1:21 PM, Anonymous Anonymous said...

The Opposer switched counsel halfway through this. Applicant attached interesting documents to its opposition to MSJ. It had a third party do an interesting analysis of the marks. Applicant also had offered to amend its goods to "poker related clothing"

I think Opposer has an uphill battle.

At 5:13 PM, Anonymous Reid said...

I'm going to vote "NO" on bullying. The applicant should known what they were likely to be up against for the applied-for goods had they done an appropriate mark clearance ahead of time.

At 7:57 AM, Anonymous Rob said...

I agree with Reid. I think partial summary judgments like that one should actually be encouraged, as they simplify trial later on.

At 9:55 AM, Blogger John L. Welch said...

I really don't see how this partial summary judgment motion simplifies much. These are slam-dunk issues that can be briefed in three pages, which is what happened.

At 9:57 AM, Blogger John L. Welch said...

As for Reid's comment, even if you did a search, would you really have told the client that his mark was confusingly similar to the Greg Norman logo?

At 11:49 AM, Anonymous Patrick said...

When I first saw the decision, my immediate thought was, "why did they bother?"

But, I believe you are correct...they are hoping the applicant will perceive blood in the water and decide to bail on the application.

At 12:55 PM, Anonymous Rob said...

Briefing may have taken 3 pages, but how much testimony taking did it potentially save? I guess I just don't see how pre-ruling is bullying.

At 1:26 PM, Blogger John L. Welch said...

Testimony? What testimony do you need? You just lay down your registration and you've won on those four issues.

If one thinks the marks are not anywhere near being confusingly similar, then one should consider the possibility that the entire opposition may be bullying, and the partial summary judgment just an attempt at intimidation.


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