Precedential No. 37: TTAB Rejects DC Comics Opposition: No Likely Confusion or Dilution vis-a-vis Superman "S-Shield" Marks
The Board [unsurprisingly, I think - ed.] tossed out this opposition to registration of the word-and-design mark shown immediately below, for "installation, maintenance and repair of cell phone related hardware," finding no likelihood of confusion with, and no likelihood of dilution of, several "'S' shield" marks associated with the "Superman" character. The Board found the marks, goods/services, and trade channels too different for purposes of likelihood of confusion, and as to the dilution claim it deemed the difference between the marks to be fatal. This blog post will attempt to hit the highlights of the 72-page opinion. DC Comics v. Cellular Nerd LLC, 2022 USPQ2d 1249 (TTAB 2022) [precedential] (Opinion by Judge Marc A. Bergsman).
Procedurally, DC Comics launched off on the wrong foot by citing numerous non-precedential TTAB decisions and by submitting several illegible exhibits. The Board made clear its displeasure. Substantively, the Board focused on three of DC Comics' registered marks: the two "S & Design" marks shown immediately below, for entertainment services, comics, clothing, and a few other mundane products, and the colorful design mark shown below right, for credit card services and customer loyalty rebate programs (collectively the "S" Shield marks).
Likelihood of confusion: The Board found the “S” shield marks to be inherently/conceptually strong and also commercially strong or famous, and therefore entitled to a broad scope of protection. However, although the “S” shield design marks are famous indicia of the Superman character and although licensed products bear those marks, those uses serve as collateral source identification rather than as primary source identifiers for the licensed products.
The Board was not persuaded that the applicant’s services, on the one hand, and DC Comics's entertainment-related goods and services and its array of licensed products, including cell phone cases and accessories, are similar and related. Moreover, the involved channels of trade are different: the applicant may render its services "from mobile units, brick and mortar stores, and, perhaps, through the mail, and Opposer’s goods and services are offered online and through various retail locations." DC Comics failed to show an overlap in the channels of trade.
With respect to the marks, the Board found that the term CELLULARNERD.com dominates applicant's mark because it identifies the character superimposed over the letters “CN” in the diamond shield design. "This creates the commercial impression of a tech nerd ready to solve your cell phone problems in his persona as a tech nerd, as opposed to the letter “S” shield design marks symbolizing a specific superhero."
[C]onsumers may easily distinguish Applicant’s mark from Opposer’s “S” shield and design marks. Because Applicant’s mark conveys the image of a tech-savvy, problem-solving nerd with a vastly different set of skills than Opposer’s superhero, consumers will not view the marks in their entireties as sufficiently similar to cause them to mistakenly believe there is an association with Opposer.
The Board concluded that the differences in the marks outweigh their similarities. Because the involved goods and services are not related and are offered in different channels of trade to different classes of consumers, the Board found that applicant’s mark for “installation, maintenance and repair of cell phone related hardware” services is not likely to cause confusion with DC Comics' “S” shield and design marks for goods and services in the entertainment field and a wide variety of collateral or merchandising products.
Dilution by blurring: The evidence established that the first two “S” shield design marks are famous for dilution purposes, and achieved fame before applicant’s first use of its mark. However, the testimony and evidence did not prove the third mark to be famous for “issuance of credit cards; providing cash and other rebates for credit card use as part of a customer loyalty program” before applicant’s first use of its mark. However, as with the Section 2(d) claim, the Board found the marks too dissimilar to support the dilution claim.
Read comments and post your comment here.
TTABlogger comment: Who knew Superman was such a bully? PS: Judge Bergsman's opinions are always worth a full reading.
Text Copyright John L. Welch 2022.
posted by John L. Welch @ 12/22/2022
4 comments
4 Comments:
I find unpersuasive the Board's attempt to explain why it discourages citation to non-precedential opinions. The Board explains (page 8) that those decisions designated as precedential involve a "thorough internal review" whereas, "[o]n the other hand, a Board opinion or decision not designated as precedent involves application by a panel of existing law and policy to only the factual record and issues presented in an individual case" and "[s]uch opinions or decisions do not announce new interpretations of law or agency policy." Okay, but that doesn't explain *why* the Board looks so unfavorably on citation to non-precedential decisions.
Consider this: A three-member panel renders a non-precedential decision with no dissent (dissents being rare). As usual, the decision bears the names of the three Board members. These three members are experts in trademark law, were presumably disinterested in the outcome of the case, and gave the matter due consideration. Those three assumptions are perfectly reasonable, right? An applicant later cites that non-precedential decision for its persuasive value. What is the harm in considering how those three disinterested trademark experts treated a similar situation? Sure, if the non-precedential decision is easily distinguished then it shouldn't be cited, but that would be true of a precedential decision too.
So we're back to the question: what exactly is the harm? Are we to assume the Board believes its non-precedential decisions - which apparently lack a "thorough internal review" - are so substandard as a class that we shouldn't even bother with them? I don't believe that, but is that what the Board is saying in so many words?
Another consideration unaddressed by the Board is the low percentage of precedential opinions it issues. Do you think the applicant in this case wanted to cite non-precedential decisions? If it could have, don't you think it would have cited precedential decisions? Might the paucity of precedential decisions have played a part in the applicant's decision to look to non-precedential ones?
A few observations on the prior Anonymous 1:58 comment. First, the Board’s practice doesn’t seem out of line with those of federal appeals courts. Most circuits have local rules saying that “unpublished” or “nonprecedential” decisions (i.e., ones they don’t send for publication in the Federal Reporter) are not binding on them but may be cited for whatever persuasive value they have. See CAFC Rule 32.1(d), 1st Circuit Rule 32.1.0., 2d Circuit Rule 32.1.1., 5th Cir. Rule 47.5.4., 7th Cir. Rule 32.1, 8th Cir. Rule 32.1A, 10th Circuit Rule 32.1(A), 11th Circuit Internal Operating Procedure (FRAP 36) No. 6. Generally, when a tribunal tells an attorney how it views these sorts of rulings, it’s a good rule of thumb to take the hint and stick to precedents. Second, the 8th Circuit’s rule gives another, more specific, helpful hint: “Parties may … cite an unpublished opinion of this court if the opinion has persuasive value on a material issue and no published opinion of this court or another court would serve as well.” Third, the TTAB deems itself bound by Fed. Cir. and C.C.P.A. trademark registration decisions, so lawyers are not limited to citing published TTAB decisions. Finally, imagine how lawyers practicing before the PTAB feel! The TTAB issues many times more precedents than PTAB does.
I agree with the outcome, which can be based on the dissimilarity of the marks alone. But I don't agree with the channels of trade analysis, where the Board seems to be bending over backwards for the applicant. What exactly is the difference between "brick and mortar" and "retail stores"? And just because the applicant has to have the physical phone to fix it doesn't mean that they don't use the online advertising channel to solicit business.
A reply to Anonymous at 11:11: I agree parties should take the hint, but what I'm looking for is the rationale: If a non-precedential decision has persuasive value, WHY does the Board look so unfavorably on citation to it? And as a practical matter, although the Board's non-precedential decisions "do not announce new interpretations of law or agency policy," they do often deal with the day-to-day examination issues that the precedential decisions do not, e.g., the Board's treatment of examining attorneys' third-party website evidence that purportedly shows two sets of goods are related. These issues are less glamorous but arise all the time in examination.
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