Monday, January 11, 2016

TTABlog Test: Are "THE WORLDS PAGEANTS" and "MISS WORLD" Confusable for Beauty Pageants?

Miss World Limited opposed an application to register the mark THE WORLDS PAGEANTS for "entertainment in the,nature of beauty pageants," on the ground of likelihood of confusion with the registered marks MISS WORLD and MR WORLD & Design, for "entertainment Services, namely conducting of beauty competitions." The services are basically identical, but what about the marks? Is "World" a strong formative? Miss World Limited v. Camila Productions Ltd., Opposition No. 91206024 (January 7, 2015) [not precedential].

The Board found that WORLD is the only distinctive term in Applicant’s mark, since "the" lacks source-identifying significance and the disclaimed term "pageants" is generic for beauty pageants. The Board recognized that the word WORLD is "inherently somewhat suggestive" in association with the involved services, "particularly in light of the evidence that Opposer’s services are intended to be global in nature." However, the record established that Opposer’s MISS WORLD mark "has gained strength through more than 60 years of exclusive and continuous use of the mark in the United States."

The honorifics "MISS" and "MR." in Opposer's marks are merely descriptive for its services, and they "they do not significantly distinguish Opposer’s marks from Applicant’s more inclusive mark THE WORLDS PAGEANTS." The globe in Opposer's design mark emphasizes the word WORLD common to both marks.

Consumers aware of Opposer’s use of MISS WORLD and MR WORLD (and design) in connection with pageants would likely believe that Applicant’s mark is a reference to both of Opposer’s pageants.

Finding that the first and second du Pont factors weigh in opposer's favor, the Board sustained the opposition.

Read comments and post your comment here. Note that applicant did not submit evidence (nor did it file a brief).

TTABlog comment: If applicant had shown that the word "WORLD" is use by a number of other beauty pageants, would that proof have made a difference? See, for example, the Juice Generation and Jack Wolfskin cases.

Text Copyright John L. Welch 2016.


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