Precedential No. 40: TIVOTAPE and TIVOBAR for Lighting Fixtures Dilute Famous TIVO Mark, Says TTAB

In a rare dilution decision, the Board sustained TiVo's oppositions to registration of TIVOTAPE and TIVOBAR for electric lighting fixtures and related goods, finding the marks likely to dilute by blurring the famous mark TIVO for computer hardware and software. The Board found that the TIVO mark had become famous before Applicant Tivoli's first use dates, and remained famous at the time of trial. TiVo Brands, LLC v. Tivoli, LLC, 129 USPQ2d 1097 (TTAB 2018) [precedential] (Opinion by Judge Frances Wolfson).

TiVo pioneered the creation and development of the digital video recorder or "DVR" in 1999. Applicant Tivoli entered the lighting business in 1972, and owns registrations for TIVOLI, TIVOLED, TIVOFLEX and TIVOLITE for lighting fixtures, controllers, and LEDlights. It also claimed common law rights in the marks TIVOFLUTE, TIVOFLEX, TIVOCOVE, TIVOCUE, and TIVOGRAZE for lighting goods. Tivoli first used the TIVOTAPE mark on May 30, 2010, and TIVOBAR on September 21, 2015.

Before the TTAB, a plaintiff must plead and prove the following to establish a claim for dilution by blurring under Section 43(c):

1. Plaintiff owns a famous mark that is distinctive;
2. Defendant is using a mark in commerce that allegedly dilutes plaintiff's famous mark;
3. Defendant’s use of its mark began after plaintiff’s mark became famous; and
4. Defendant’s use of its mark is likely to cause dilution by blurring.

Nike, Inc. v. Palm Beach Crossfit Inc., 116 USPQ2d 1025 (TTAB 2015) (citing Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d 1713, 1723-24 (Fed. Cir. 2012)).

The Board narrowed its focus to opposer’s use and registration of the mark TIVO, both with and without the design element, for its DVR product, since it is this product that allegedly had achieved dilution fame.

In order to prove that a mark is famous, a party "must show that, when the general public encounters the mark 'in almost any context, it associates the term, at least initially, with the mark’s owner.'" Coach Servs., 101 USPQ2d at 1725 (quoting Toro Co. v. ToroHead Inc., 61 USPQ2d 1164, 1180-81 (TTAB 2001)). In this regard, the Board may consider all relevant factors, including the following listed in Section 43(c)(2)(A):

(i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.
(ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark.
(iii) The extent of actual recognition of the mark.
(iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.

"Perhaps the most significant of the four elements set forth in the Act to determine fame is the extent of actual public recognition of the mark as a source-indicator for the goods or services in connection with which it is used." Nike Inc. v. Maher, 100 USPQ2d 1018, 1024 (TTAB 2011). The Board found that third-party recognition of the TIVO mark "tips the balance" in favor of our finding the mark to be famous for dilution purposes. The evidence showed that the TIVO mark was referenced in major news and entertainment outlets, and by politicians, and celebrities, since January 2000. The Board therefore found that, by 2010, "the extent of actual recognition of the mark was pervasive and widespread," and TIVO had become a “household term [with] which almost everyone is familiar.” Toro Co., 61 USPQ2d at 1181.

Tivoli argued that TiVo should be required to prove fame as of 1971, when Tivoli began using its TIVOLI mark, from which its later TIVO-formative marks are derived. The Board noted that the dilution statute, when referring to defendant's first use of its mark, does not limit the use to the goods in the subject application, but the "involved" mark may not change over time: "in order for the defendant to “tack” on its earlier use, the mark must be essentially the same at the time it is first used as at the time when it is used in association with the goods or services identified in the subject application or registration."

The Board also considered whether a plaintiff alleging dilution must show that its mark is famous at the time of trial, finding it to be an issue of first impression. The Board concluded that the answer is yes.

To find otherwise would allow a mark that has lost its fame to continue to enjoy the widest penumbra of protection available accorded by the extraordinary protection of the dilution statute. This approach also accounts for any significant changes in the marketplace between the date of Applicant’s first use of its mark and trial.

The Board found that the mark TIVO was famous both as of 2010 and at the time of trial.

Turning to the issue of whether the applied-for marks dilutes the TIVO marks, the Board considered the six non-exclusive factors set forth in Section 43(c)(B)(i)-(vi).

As to the similarity of the marks, the Board applies the same test as in the Section 2(d) context: "the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression." It found that the first and distinctive term TIVO dominates applicant's mark because consumers are less likely to focus on the descriptive portions TAPE and BAR. The similarity between the marks sufficient to “trigger consumers to conjure up” Opposer’s famous mark and associate Applicant’s marks with Opposer’s mark.

The Board found that TIVO is inherently distinctive for TiVo's goods and services, and that TiVo is the substantially exclusive user of the mark. Tivoli relied on a number of third-party registrations, but none was for the mark TIVO alone, and there was no proof that any of the third-party marks are in use. Tivoli also argued that its own marks show the weakness of the TIVO mark, but the Board was not persuaded because "they are not for TIVO alone and too few in number to show that Opposer’s use is not substantially exclusive."

As to the factor that requires a determination as to the level of fame, the Board observed that "the likelihood of an association between the famous mark and the defendant’s mark [is] proportional to the extent of the mark’s fame." Opposer TiVo’s evidence of fame mostly concerned the years before 2010, and the Board inferred that the "degree of consumer recognition has somewhat weakened over time." Nonetheless, it found that TIVO is publicly associated with opposer's digital video recorders such that it “is now primarily associated with the owner of the mark even when it is considered outside of the context of the owner’s goods and services.” Toro, 61 USPQ2d at 1180-81.

There was no evidence that Applicant Tivoli intended to create an association with the TIVO mark, no evidence of an actual association between the applied-for marks and the TIVO mark, and no evidence of actual public association between them.

Viewing the record evidence, the Board concluded that the applied-for marks TIVOTAPE and TIVOBAR marks are likely to dilute the distinctive quality of the famous TIVO, and so the Board sustained the oppositions.

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TTABlog comment: Should Tivoli's other registrations have been given more weight? To what extent do they dilute the strength/fame of TIVO?

Text Copyright John L. Welch 2019.