Tuesday, June 09, 2015

TTAB Test: Is SHAKTI THARA For Musical Performances Confusable with SHAKTI for Compact Discs?

Innertemple Music applied to register the mark SHAKTI THARA for "entertainment services in the nature of live musical performances by a singer of pop music," but the USPTO refused registration, finding the mark likely to cause confusion with the registered mark SHAKTI for "Compact discs, downloadable audio recordings featuring music and which may be accompanied by printed text and images ...." The evidence showed that "shakti" means "cosmic energy as conceived in Hindu thought." Are the goods and services related? Are the marks similar? How do you think this cames out? In re Innertemple Music LLC, Serial No. 85810152 (June 5, 2012) [not precedential].

Shakti Thara is a pseudonym of a singer named Thara Thangavelu, and would likely be perceived as a person's name. "Shakti," on the other hand, is not likely to be perceived as a woman's name, but rather would have "the meaning of energy or power, or have a general significance related to yoga, while others would view it as a coined term." The Board concluded that the differences in connotation outweigh the similarity due to the common term "shakti." In short, the marks are more dissimilar than similar.

As to the relatedness of applicant's services and the registrant's goods, the examining attorney contended that musical artists can be the source of both live musical performances and recordings, as evidence by the websites of various musicians, at which they promote both.

The Board observed that the PTO "makes a distinction between the performances embodied in a compact disc, and the compact disc itself." Consequently, the Board "must regard the cited registration as indicating the source of the physical compact discs and the downloadable audio recordings, as opposed to the source of the performances contained on the compact discs and recordings." The examining attorney did not submit any evidence that entities that provide physical compact discs or recordings for downloading also render musical performances, all under the same mark.

Although there is an "inherent connection" between compact discs and the performances recorded on them, "that does not mean that performing services and compact discs must automatically be treated as related."

The Board concluded that the evidence did not establish a likelihood of confusion, and it therefore reversed the refusal.

Read comments and post your comment here.

TTABlog note: See In re Arnold, 105 USPQ2d 1953 (TTAB 2013) [precedential] (the mark BLATANCY failed to function as a trademark for audio recordings because it merely identified the featured performer).

Text Copyright John L. Welch 2015.


At 9:50 AM, Anonymous Anonymous said...

I was confused with that great old frat party song: Shakti moneymaker!

At 3:38 PM, Anonymous Anonymous said...

This is an odd decision. Seems the examiner was punished for not including any third party registrations from X-Search which showed the same mark for both recordings and performances in 9 and 41. Odd because usually the Board wants to see something more than just a few 3rd party regs, and in this case the EA included only real evidence of real use of the same mark in connection w/ music performances and recordings and was shot down for it. A different day, a different mood and this easily could've gone the other way. Same random SHAKTI term for musical recordings and performances.. seems almost like WYHA.


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