TTAB Rejects "CRAZY HORSE" Opposition, Finding No Likelihood of Confusion and No Fame for Dilution

In 53-page opinion, the Board dismissed an opposition brought by The Crazy Horse Memorial Foundation to registration of the mark CRAZY HORSE for online adult entertainment services, finding that opposer had failed to prove a likelihood of confusion with its monument-related goods and services, and failed to prove the required fame to support its dilution-by-tarnishment claim. The Crazy Horse Memorial Foundation v. Frank B. Spencer, Opposition No. 91204980 (February 26, 2014) [not precedential].

Morehouse Defense: The Board first considered and rejected (as usual) Applicant Spencer's prior registrations defense (a/k/a Morehouse defense). According to that defense, a plaintiff cannot be harmed by registration of a mark if the defendant already owns a registration for the same or a substantially identical mark for the same or substantially the same good/services. Spencer owns a registration for CRAZY HORSE for "entertainment services, namely, exotic dance performances." Not close enough, said the Board,since the opposed application includes online services, namely, "providing a website featuring pictures and information in the field of exotic dancing ..." Although these additional services may be related to the exotic dance performances of the registration, they are not substantially the same, and therefore the Morehouse defense was inapplicable.

Fame: The Board next turned to the issue of fame, because fame, if established, plays a dominant role in the likelihood of confusion analysis. Clear proof is required to establish fame, but Opposer's proofs fell short. Although it has used the mark CRAZY HORSE since 1949, and more than 1.3 million people annually visit the Crazy Horse Monument Complex, it submitted sales and advertising figures only for the year 2012, and those were not comparable in size to the "numbers upon which fame has been found in prior cases." The evidence was insufficient to allow the Board to assess the degree of exposure of the mark and any resulting recognition by relevant purchasers.

The Board had little doubt about the historical renown of the Lakota leader, Crazy Horse, but Opposer failed to show that the mark CRAZY HORSE is famous for its goods and services separate and apart from the fame of the individual.

Likelihood of Confusion: The involved marks are identical or virtually identical, and that factor weighed "heavily" in opposer's favor. The crucial issue, then, was the relatedness of the respective goods and services of the parties. Opposer enjoyed prior use of the mark CRAZY HORSE for its services (other than online services), and it claimed that some of the involved services "are identical, such as ... dance performance services."

Opposer relied on dictionary definitions of "adult" and "exotic" (unusual or different) in asserting that "both parties' services are provided to adults" and "both parties' dance performances are exotic." The Board was not persuaded. The terms "adult" and "exotic" in the context of Spencer's "adult entertainment" services refer to services that are "sexual in nature and are intended for adults only, namely ecdysiast displays for others."

The record was "absolutely devoid" of evidence that the consuming public would ever perceive any of opposer's goods or services as emanating from the same source as those recited in the opposed application. This dissimilarity weighed heavily in applicant Spencer's favor.

The Board found the factors of third-party use and registration, sophistication of customers, and lack of actual confusion to be neutral.

The Board concluded that, in this case, "confusion amounts to only a speculative, theoretical possibility, rather than a likelihood." On balance, the relevant du Pont factors favor a conclusion of no likelihood of confusion.

Simply put, consumers are not likely to confuse the source or origin of opposer's goods and/or services related to its monument complex, even its historical or cultural dancing performances, with applicant's adult entertainment services, whether online services or exotic dancing performances, even when offered under identical marks.

Dilution by Tarnishment: Applicant's evidence of fame for likelihood of confusion purposes was insufficient, and so it was perforce insufficient to meet the higher fame standard applicable in the dilution context.

And so the Board dismissed both claims.

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Text Copyright John L. Welch 2014.