Super Bowl Special: Is TOUCHDOWN TIMEOUT for Sports Programming Confusable With TIME OUT for Event Production Services?

With the Big Game just three days away, the TTAB released its decision in an appeal from the USPTO's refusal to register TOUCHDOWN TIMEOUT for "entertainment services, namely, ongoing digital television show dealing with sports." The Office found confusion likely with the registered mark TIME OUT for "organising, producing and conducting events, music events, comedy events, entertainment, competitions, contests, festivals, carnivals, pageants, displays, shows, fashion shows, exhibitions, film screenings, programmes and performances and radio and TV broadcasts and programmes and performances; production of films, recordings . . . " Applicant Deborah Whitcas argued that "TOUCHDOWN" is the dominant element in her mark, since it appears as the first word in the mark. How do you think this came out? In re Deborah J. Whitcas, Serial No. 90117114 (February 9, 2023) [not precedential] (Opinion by Judge Jonathan Hudis).

The Board found the involved services to be legally identical. Registrant's broad recitation of services "presumably encompasses all services of the type described in the TOUCHDOWN TIMEOUT Application, including, “ongoing digital television show dealing with sports." Whitcas did not contest that finding. Nor did she contest the Board's presumptive finding that the overlapping services are offered in the same trade channels to the same classes of consumers.

The real line of scrimmage was the issue of the similarity of the marks. The Board observed once again that "[w]hen trademarks would appear on substantially identical . . . [services], 'the degree of similarity necessary to support a conclusion of likely confusion declines.'"

The Board found the word TIMEOUT to be the dominant portion of Whitcas’s mark. She maintained that TOUCHDOWN is dominant because it appears as the first word in the mark. The Board was unmoved.

While the first term in a mark generally may be considered as the feature that will be called for, and so remembered, by consumers, this is not invariably the case. For example, as we have here, in situations where the first term in a mark functions as an adjective, descriptor or modifier of the second term, it is the subsequent term that is dominant, not the primary term.

The Board noted that the word "TOUCHDOWN" is clearly associated with American football, and it describes the type of television programing Applicant Whitcas provides. The words TIME OUT and TIMEOUT have common meanings.

In fact, viewers of Registrant’s TIME OUT television programming are likely to assume that Applicant’s television programming, offered under the TOUCHDOWN TIMEOUT mark, are merely a line extension of the services emanating from Registrant.

Finding that the marks "are more similar than they are different by the elements of appearance, sound, meaning and overall commercial impression," and considering the overlapping services, channels of trade, and classes of consumers, the Board found confusion likely and it affirmed the refusal.

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TTABlogger comment: I think TOUCHDOWN TIMEOUT is a unitary mark having a unique connotation. TIME OUT connotes a much more nebulous hiatus. And the "line extension" theory seems to be a convenient way to manufacture support for almost any weak Section 2(d) refusal. What do you think?

Text Copyright John L. Welch 2023.