Precedential No. 38: TTAB Deems "BEAUTV" Use-Based Application Void Ab Initio Due To Non-Use
The Board sustained, on two grounds, an opposition to registration of the mark BeauTV, in standard character form, for "providing information about beauty." It declared the application void ab initio because pro se Applicant Bonnie Tseng failed to prove use of the mark for the recited services prior to the filing of her use-based application to register. And the Board found a likelihood of confusion with opposer's registered service mark THE BEAUTY CHANNEL for providing a website and audio-visual materials in the field of beauty. Opposer overcame an early stumble when it failed to properly submit four of its seven registrations into evidence. United Global Media Group, Inc. v. Bonnie Tseng, 112 USPQ2d 1039 (TTAB 2014) [precedential].
Four registrations not in evidence: Opposer relied on five registrations (and two pending applications) in its notice of opposition, attaching photocopies of the registration certificates, each accompanied by a page from the PTO assignment database indicating that the registration had not been assigned. However, mere copies of the registration certificates did not comport with Rule 2.122(d), which allows a party to make a registration of record by, inter alia, submitting printouts from the PTO electronic records showing status and title. As to four of the registrations, opposer's submissions did not establish status, and therefore they were not properly made of record. [The Board also noted that the mere inputting of a registration number when prompted by ESTTA, when filing an opposition, does not make the registration of record].
As to the fifth registration, because its date of issuance (March 29, 2011) was "substantially contemporaneous" with the filing of the notice of opposition (July 20, 2011), the copy of the registration was sufficient to make that registration of record. See TBMP Section 704.03(b)(1)(A); Royal Hawaiian Perfumes, Ltd. v. Diamond Head Prods. of Haw., Inc., 204 USPQ 144, 145 (TTAB 1979).
The Board noted that, although applicant had admitted in her answer that opposer owned the pleaded registrations, that did not suffice to make the registrations of record. Opposer did not include allegations regarding the validity of its registrations, and the Board refused to find that Applicant Tseng had admitted "what, at best, might be considered an implied allegation in opposer's pleading, i.e., validity and status of the registrations it claimed to own."
As to the two pending applications that opposer identified in its notice of opposition, those applications issued to registration while this proceeding was pending. The Board pointed out that in such circumstances an opposer may make the registrations of record without having to amend the notice of opposition to assert reliance on the registrations. Opposer submitted, via notice of reliance, the electronic records from the PTO database for those two registrations, showing status and title.
Application void ab initio: In response to opposer's discovery requests, applicant failed to provide any documentation evidencing use of the applied-for mark prior to the filing date. Opposer had thus established a prima facie case of nonuse. Applicant nonetheless submitted a number of documents via notice of reliance (to which opposer objected). Applicant's submissions, however, were either inadmissible (e.g., invoices, letters, and other personal documents not available to the public) or failed to show use of the applied-for mark, or both. [One item comprised pages from applicant's website, where the term "BeauTV" appeared only in the copyright notice and the URL. Neither constitutes use of the term as a service mark].
In sum, the Board found that applicant had not used her mark for the recited services at the time she filed her use-based application, and therefore the application is void ab initio.
Likelihood of confusion: For the sake of completeness, the Board also considered opposer's Section 2(d) claim. The Board focused on opposer's registered mark THE BEAUTY CHANNEL as the mark most similar to applicant's mark, noting that if confusion is not likely as to that mark, then there is no need to consider the other two registered marks (BEAUTY EVERYWHERE and SYNCHRONIZING BEAUTY).
The Board first found that applicant's services (providing information about beauty) encompassed those of opposer. It therefore presumed that the channels of trade and classes of consumers are the same for both marks.
As to the similarity of the marks BeauTV and THE BEAUTY CHANNEL, the Board found that consumers would likely understand applicant's mark to be a "telescoped" form of "BEAUTY TV." The terms TV and CHANNEL have a similar significance in the marks, and so consumers will perceive the marks as "having the same meaning and engendering the same commercial impression." The Board concluded that the similarities in the marks outweigh their differences.
Balancing the relevant duPont factors, the Board found confusion likely and it sustained opposer's Section 2(d) claim.
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TTABlog note: It may not have been BeauTTAB, but all's well that ends well. Opposer won the opposition, applicant's hollow application was rejected, and the Board laid down the law regarding how to plead a registration.
Text Copyright John L. Welch 2014.