Wednesday, March 20, 2013

KATZ Fight! TTAB Finds LIkelihood of Confusion but Dismisses Fraud Claim

The Board sustained this Section 2(d) opposition to registration of the mark KATZ MARKETING SOLUTIONS & Design for "business marketing consulting services," finding it likely to cause confusion with the registered mark KATZ for "independent media sales representation services in the fields of radio and television broadcasting and consulting services in connection therewith." Opposer also claimed that applicant committed fraud on the PTO when its CEO signed the application oath swearing that no other entity had the right to use its mark in commerce, but the proofs fell "far short of meeting standard of proof for fraud." Katz Communications, Inc. v. Katz Marketing Solutions LLC, Opposition No. 91191178 (February 21, 2013) [not precedential].

The Board spent the first quarter of its opinion addressing numerous evidentiary issues. It pooh-poohed Opposer's objection to the way applicant numbered its exhibits, admonished Opposer for submitting hundreds of blank pages mark "redacted" when one page per exhibit would have sufficed, and criticized Opposer for "'dumping' evidence into the record with the idea that the Board will sort through the evidence and possibly find something that will support the submitting party’s position."

Likelihood of Confusion: Opposer claimed to own a "family" of KATZ marks, but the Board found its evidence inadequate. "Opposer has not pointed to any specific evidence in which several KATZ marks have been used or promoted together that would result in the recognition of a family." Noting that Opposer "could not take the trouble to identify particular advertisements or other promotional materials that it asserts shows it has established a family of marks," the Board declined to discuss in detail why the evidence was insufficient (although it did spend seven pages of the decision on this issue).

Opposer also failed to prove its purported common law rights in any KATZ marks, and so the Board focused on Opposer's closest registered mark: KATZ for "independent media sales representation services in the fields of radio and television broadcasting and consulting services in connection therewith,"

It found that applicant's services, as recited in its application, must be read to include advising companies about advertising on television and radio. "Accordingly, because applicant’s services are broadly described in its identification, and because this broad identification of services can include consulting on the purchase of television and radio advertising spots, the identified services must be deemed to overlap with the consulting services in connection with the radio and television representation identified in opposer’s registration."

The Board acknowledged that the consumers of opposer’s and applicant’s services "are both sophisticated and careful. They will clearly notice that applicant’s mark contains the additional words MARKETING SOLUTIONS. However, because, as stated above, these words provide additional information about the services, these discriminating purchasers are likely to view KATZ MARKETING SOLUTIONS as a variation of opposer's mark KATZ, when used in connection with services that overlap with opposer’s consulting services."

The Board was particularly concerned with what one might call "initial interest confusion," even thought that confusion would be dispelled by the time the final decision to hire applicant's services was made:

We are aware that during the process of a company’s decision to hire a company to place media advertising and obtain consulting services in connection therewith, or to hire a company for business marketing consulting, details about the company will be made known, so that a potential customer will know that Tammy Katz is the principal of applicant, and that she is not associated with opposer. However, the question is not whether, before the ultimate purchase is made, the customer knows what company he is dealing with, but whether the customer is likely to believe, when he contacts Katz Marketing Solutions, that the services offered under the KATZ MARKETING SOLUTIONS mark emanate from the same source as the services offered under the KATZ mark.

Applicant pointed to the lack of evidence of actual confusion, but the Board deemed that factor to be neutral. Although applicant's services as recited in its application overlap with opposer's, applicant does not actually engage in those overlapping activities. Therefore, there was actually no opportunity for confusion to occur.

Balancing the relevant du Pont factors, the Board found confusion likely.

We want to make clear, though, that we are not finding that KATZ is a strong mark, or that it is entitled to a broad scope of protection, even for related goods or services, or even against other marks consisting of the name KATZ and descriptive wording. Nor are we finding that applicant's mark is likely to cause confusion if it were used solely for the services in connection with which applicant actually uses its mark, as opposed to the services recited in its application.

Fraud:  The Board observed for the umpteenth time that fraud must be proven "to the hilt." [A bit of an anachronism, I think. - ed.] Opposer alleged that, because it had sent a cease-and-desist letter to applicant, applicant was on notice of opposer's superior rights before the opposed application was filed. "Surprisingly, though, opposer did not make a copy of the cease and desist letter of record." Applicant admitted receiving a letter, but there was no information about the contents of the letter. The Board therefore found that opposer failed to prove that applicant knew of opposer's rights in the KATZ or KATZ-formative marks, "let alone that opposer had rights superior to applicant's, or that applicant believed that its use of its mark would be likely to cause confusion."

Read comments and post your comment here.

TTABlog note: What do you think about the initial confusion issue? Should that be enough for a Section 2(d) finding of likely confusion?

Even if Opposer had made the cease-and-desist letter of record, would that have proven fraud? Didn't applicant have the right (in good faith) to reject Opposer's claim in light of the fact that its mark and actual usage were different from that of Opposer?

Text Copyright John L. Welch 2013.


At 9:54 AM, Blogger Robert said...

While I recognize that fraud is theoretically an alternative ground for opposition, I fail to see the point of including it here. Under what circumstances would the 2(d) claim be denied and this fraud claim be sustained?

The fraud claim is based on the truthfulness of the applicant's declared claim to its ownership of and its rights to use the mark. So the claim ultimately depends on the viability of opposer's 2(d) claim. If the 2(d) claim is upheld, the fraud claim would be superfluous. If the 2(d) claim is denied, then the challenged declaration is true in regards to the relationship between this opposer and applicant. The fraud claim would be denied.

I suppose it is possible that the declaration could be fraudulent as to a third party not a party to this opposition. But how would the opposer prove that? Moreover, would the opposer even have standing to pursue a fraud claim on behalf of a third party?

At 10:10 AM, Anonymous Tammy Katz said...

As the CEO of Katz Marketing Solutions (, I'm disappointed that TTAB didn't see that my buyers (CEOs and other leaders of small to Fortune 500 companies) have not confused my small brand and marketing consulting firm with a huge radio and media conglomerate. I've experienced no confusion in the marketplace in +12 years.

Sadly, I was merely defending my firm from a company that started to use my business name as a subdivision name 3 years ago and coveted my domain and company name.

Although we didn't prevail, I am grateful to my outstanding IP attorney who provided great legal counsel through the complex trademark process.

At 10:19 AM, Anonymous Gene Bolmarcich said...

It appears to me that the Board gave the green light to Applicant to refile with a narrower description of its services and that any Office Action that might be issued against it can be replied to by simply sending a copy of this decision to the Examining Attorney. A clear lesson about the dangers of broad descriptions. Also, I am wondering if the only way that fraud can be found in the signing of the Declaration is if the application is a photocopy of an existing design mark registration (sans owner name, etc.). There are almost always straight faced argument against a likelihood of confusion unless there is literal identity - to the letter - of marks and goods/services. Is this the first time The TTAB has applied initial interest confusion?

At 10:24 AM, Blogger John L. Welch said...

Maybe the opposer was hoping that if both claims were sustained, it could use the fraud ruling to boost its chances of getting attorney's fees in a lawsuit for infringement.

At 10:48 AM, Blogger Pamela Chestek said...

In line with the other commenters, I think it would be a highly unusual case where fraud is legitimately found based on a likelihood of confusion. Likelihood of confusion is so subjective one can almost always justify a position that there isn't any. Fraud is much better grounded where there are false statements.

At 12:00 PM, Blogger John L. Welch said...

The Board hasn't sustained a single fraud claim since the Bose CAFC decision, three and one-half years ago. The chances of fraud being found in the situation at hand are, practically, zero.

At 12:13 PM, Anonymous Alex B. said...

I agree with Gene. I can't believe this opposition was actually litigated all the way to decision without the applicant attempting to narrow the very broad description of services somewhere along the way. I suppose the opposer may have been unreasonable and unwilling to accept anything less than an abandonment of the application but even if applicant unilaterally moved to amend the application with the Board, it seems like the application would now be registering with the narrower ID.

I have only read the TTABlog summary here but it sounds like Opposer litigated this opposition very sloppily.

At 12:24 PM, Blogger John L. Welch said...

The TTAB's recent Embarcadero decision suggests a way to amend an overly-broad I.D., during the proceeding, via Rule 2.133 and Section 18.


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