Test Your TTAB Judge-Ability: Are Sci-Fi and Comedy TV Shows Related?
Sherrilynn Kenyon applied to register the mark THE LEAGUE for science fiction films (class 9) and television programs (class 41), but the PTO refused registration under Section 2(d), finding a likelihood of confusion with the identical mark registered for "entertainment services in the nature of a television series featuring comedy." On appeal, Kenyon argued that television viewers are savvy enough to understand that science fiction and slapstick comedy emanate from different sources. How do you think this came out? In re Sherrilyn Kenyon, Serial No. 85396538 (July 9, 2014) [not precedential].
The fact that the involved marks are identical weighed heavily against applicant in the Section 2(d) analysis. When the marks are identical, it is necessary only that there be a viable relationship between the services at issue to support a finding of likely confusion.
Applicant Kenyon did not dispute, and third-party registrations demonstrated, that motion picture films and television programming are related to a television series - in other words, that's entertainment! But what about science fiction versus comedy?
Kenyon contended that the audiences for science fiction and comedy are vastly different. "Mr. Brooks, Mr. Mel Brooks, please pick up the white courtesy phone! - ed. ]. She maintained that her science fiction plots are "dark, violent stories taking place in a fictional universe." The Board, however, pointed out that its analysis of the applicant's goods and services is made without reference to extrinsic evidence regarding actual use: the Board must focus on the goods/services as identified in the application and cited registration.
Examining Attorney Bridgett G. Smith submitted eleven third-party registrations covering both science fiction and comedy entertainment services or DVDs in the television and film industries, thereby demonstrating that goods and services in both the science fiction and the comedy genres may emanate from the same source. She also provided a list of more than 100 "comic-science fictions films" from Wikipedia.
The Board therefore concluded that applicant's goods and services are similar or related to the services of the cited registration. Finding that the first two du Pont factors weighed in favor of a finding of likely confusion, and with no evidence regarding any other factor, the Board affirmed the refusal.
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TTABlog note: Is it fair to say that the Board operates in a fictional universe when assessing the relationship between involved goods/services? Are the results sometimes comedic? Do you think this case belongs in the "WYHA?" category?
Text Copyright John L. Welch 2014.
posted by John L. Welch @ 7/30/2014
3 comments
3 Comments:
It seems to me that the real issue is whether, as a title, these marks can be "confusable" (you haven't used that term in a while, John). Clearly, "no". Unfortunately, in the framework of our trademark registration system there is no way to differentiate a title from a "regular" trademark, just as there is no way to necessarily differentiate a product mark from a house mark, etc. (I realize that a mark can theoretically be registered as a house mark but that is irrelevant to my point).
The board and the USPTO definitely operate in a fictional world. A world where goods and services appear far more related than they actually are. It's not entirely their fault. Applicant's have filled their world with the broadest possible descriptions of their goods and services, which frequently include things that they don't actually provide. What bothers me is how little weight the board and USPTO give to any evidence of actual market conditions.
The applicant's amendment of the ID to be narrower and more specific, with clearer subject matter descriptions and limitations should have easily traversed the refusal.
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