Thursday, March 10, 2005

TTAB Rules Gospel Music Association Off-Key In 2(d) Appeal

The Gospel Music Association was silenced in its attempt to register the mark GMA in block-letter and design form (shown below) for entertainment and educational services in the field of gospel music, including conducting seminars and conferences (in class 41).

The Board affirmed a Section 2(d) refusal to register on the ground of likelihood of confusion with the mark GMA registered by the Grocery Manufacturers of America, Inc. for "arranging and conducting educational seminars and conferences" in class 41, and for "association services, namely, promoting the interests of members of the grocery manufacturers industry" in class 42. In re Gospel Music Association, Serial Nos. 76400500 and 76400501 (February 7, 2005) [not citable].

The Board found the marks at issue to be "highly similar in sound, appearance, connotation and commercial impression." The design element in Applicant's second mark was not sufficient to distinguish it from the cited mark: "Consumers are not likely to remember this design, or if they do, they will view it as a variation of the registered mark GMA."

As to the services, the Board observed that the issue is framed not by what the actual services are, but by how they are identified in the registration and the applications at issue. The Board found Applicant's services sufficiently different from Registrant's class 42 associational services in the grocery field that confusion is not likely. But Registrant's class 41 educational services are not limited to the grocery field, and they presented a different kettle of fish:

"These services, as identified, encompass the more specific educational services in the field of gospel music offered by applicant. *** The Board cannot read restrictions into the identification of services based on the cited registrant's name or because of a restricting phrase appearing in other classes of services in the same registration...."

Similarly, because the class 41 services are legally the same, the channels of trade and the classes of purchasers for the services must be considered, at least partly, the same.

Even if the purchasers of the services are sophisticated, the Board observed, they are not immune from confusion when the marks at issue are substantially identical. And Applicant's assertion that there has been no actual confusion over the several decades of concurrent use was unavailing, since that may be because Registrant's educational seminars in fact "dealt with grocery manufacturing issues rather than gospel music."

Finally, the Board noted that the Gospel Music Association could have asked the Grocers for a consent, or it could have sought partial cancellation of the cited registration under Section 18 of the Trademark Act ("i.e., a request that the registration be amended to include appropriate restrictive language regarding the cited registration's educational services"). It did neither.

The TTABlog notes that the Gospel Music Association's attempt to read restrictions into a cited registration is one of the most frequent losing arguments made before the Board. An applicant who recognizes at any early stage the problem posed by a broad blocking registration may save time and expense by extracting a consent from the owner of the registration, particularly if the applicant indicates that the other choice for the registrant is a partial cancellation proceeding.

Text ©John L. Welch 2005. All Rights Reserved.


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