TTABlog Test: Is PLAYBOOK for Sports Trading Cards Confusable With PLAYBOOK for Sports Magazines?
Well, sports fans, how would you bet on the outcome of this Section 2(d) appeal? The USPTO refused to register the mark PLAYBOOK for "Collectible trading cards; Sports trading cards," on the ground of likely confusion with the identical mark registered for "Magazines featuring sports information." The marks are identical, but how strong is the registered mark? And are the goods sufficiently related? What say you? In re Panini America, Inc., Serial No. 88960212 (July 12, 2023) [not precedential] (Opinion by Judge Peter W. Cataldo).
Strength of the Cited Mark: Applicant Panini submitted a definition of PLAYBOOK ("one or more plays in book form; a notebook containing diagrammed football plays; a stock of useful tactics or methods"), which led the Board to conclude that PLAYBOOK is "highly suggestive of the subject matter of the magazines featuring sports information identified in the cited registration, particularly with regard to football." Panini also submitted five third-party registrations for the mark PLAYBOOK, but for unrelated goods. [The Board noted that "Because the goods listed in the third-party registrations are not identical or even closely related to the goods identified in the cited registration, these circumstances do not implicate Spireon, Inc. v. Flex Ltd., 2023 USPQ2d 737, at *4-8 (Fed. Cir. 2023)."]
Next, Panini submitted screenshots from seven websites using the mark PLAYBOOK and formatives for goods and services in the field of sports. "Thus, while Applicant’s evidence of seven third-party uses is more modest than that found to be determinative in other cases, Cf., e.g., Juice Generation, 115 USPQ2d at 1674-75; Wolfskin, 116 USPQ2d at 1135-36, they remain relevant to show the relative weakness of Registrant’s PLAYBOOK mark." [Do all seven websites offer goods and services close enough to registrant's goods to be probative under Omaha Steaks? - ed.].
Viewing the record as a whole, we find that the registered PLAYBOOK mark is entitled to a narrower than usual scope of protection to which highly suggestive but nonetheless distinctive marks are entitled, primarily due to the definition of PLAYBOOK and evidence of third-party use and registration of PLAYBOOK formatives for related goods and services.
The Goods: The examining attorney submitted five website pages showing third-parties offering magazines and trading card under the same trademark. Other website pages showed "collaborations between magazines and trading card companies, including Applicant, to provide magazines featuring trading cards." The Board agreed with Panini that "such collaborations are co-branded and indicate the separate sources of the goods, not a single source." The other websites "appear to offer sports magazines and sports or collectible trading cards under different trademarks, house marks and brand names."
The Office also submitted six live, use-based, third-party registrations for marks identifying trading cards and sports magazines. The Board noted that, even without proof of use, these registrations have some probative value on the issue of relatedness of the goods. However, the Board concluded that the record evidence "falls rather short of demonstrating that consumers would expect sports trading cards and magazines featuring sports information could emanate from the same source."
Channels of Trade: The Board found the evidence of "a mere five third-party websites of entities providing trading cards and sports magazines under the same mark, and six third-party registrations for marks identifying, inter alia, trading cards and sports magazines . . . insufficient to show consumers are likely to encounter these goods in the same channels of trade."
Conclusion: "While the marks are identical, the relative weakness of the cited mark and insufficient evidence that the goods are related or will be offered in common trade channels mitigate against a finding of likely confusion."
And so, the Board reversed the refusal.
Read comments and post your comment here.
TTABlogger comment: Hat tip to my Wolf Greenfield colleagues, Norm Zivin and Kira-Khanh McCarthy, for this victory.
Text Copyright John L. Welch 2023.
posted by John L. Welch @ 7/13/2023
10 comments
10 Comments:
I am surprised.
The correct outcome. There is hope!
I'd call this a mildly surprising result.
['When I use a word,' Humpty Dumpty said in rather a scornful tone, 'it means just what I choose it to mean — neither more nor less.]
The outcome in these cases is whatever the Board wants it to be. Not that I necessarily disagree with the result here, but it is absolutely arbitrary in light of the Board's record in such cases.
What Humpty Dumpty said. I have no idea how we're supposed to counsel clients considering the entirely inconsistent decisions in this area.
I am surprised that the Board reversed it, but only because the Board so infrequently reverses on 2(d) issues. Well argued by the Applicant's attorney, Mr. Zivin.
This result is solely because Judge Cataldo got scolded by the CACF recently on the issue of third party marks
Gene: I agree with your comment. Although Judge Cataldo did not write the TTAB opinion that the CAFC vacated, he was on the panel. Note that Judge Hudis, who did write that TTAB opinion, was on the panel for the PLAYBOOK decision. (See footnote 9, indicating that the Spireon decision was on their minds.) Also note that Spireon is an inter partes case where there were three identical marks registered for identical goods as those of the opposer. (Doesn't that seem preposteous?) Anyway, footnote 9 suggests that Spireon may apply in an ex parte context when the goods are just closely related. So the ramifications of Spireon may be much broader than the narrow ruling of the CAFC.
By "just closely related," I was trying to point out that Judge Cataldo is suggesting that Spireon applies not just when the third-party goods are identical to opposer's goods, but also when they are closely related.
Non-precedential, unfortunately. Not that the Board wouldn't find a way to distinguish this case if they felt like it.
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