Wednesday, February 14, 2007

Precedential No. 10: TTAB Sustains Opposition of "MISS UNIVERSE" to "MR. GAY UNIVERSE"

In the Board's 10th citable decision of 2007, the fame of the MISS UNIVERSE mark catapulted Opposer to success in its opposition to registration of MR. GAY UNIVERSE for "entertainment services in the nature of conducting gay beauty pageant" [sic]. The Board found the latter mark likely to cause confusion with the registered mark MISS UNIVERSE for entertainment services, namely, presentations of pageants and contests. Miss Universe L.P. v. Community Marketing, Inc., 82 USPQ2d 1562 (TTAB 2007) [precedential].

Miss Universe 1952

The Board began its likelihood of confusion analysis with the fifth du Pont factor, the strength of Opposer's mark. Opposer established that it has used the MISS UNIVERSE mark continuously since around 1950; that the television broadcast of the annual event is "quite successful, by any measure;" that some 12 million households viewed the pageant in 2003, that the chosen MISS UNIVERSE tours the world for one year and, along with the pageant, receives "a significant amount of media coverage;" and that its website received "nearly a billion" hits in 2004. [Nearly as many as the TTABlog - ed.] Moreover, one of Applicant's principals admitted that Opposer's contest is "[t]he most renowned." The Board therefore found that the MISS UNIVERSE mark is famous for purposes of the fifth du Pont factor, pointing out that "[s]uch fame must be accorded dominant weight in our likelihood of confusion analysis."

From there, it was all downhill for Applicant. The Board found the respective services of the parties to be "similar rather than dissimilar" for purposes of the second du Pont factor.

"Both parties are conducting or intend to conduct beauty pageants. This basic similarity between the services outweighs any dissimilarity that might be presumed from the fact that the public may be able to distinguish between the two pageants themselves due to their different contestant pools."

Next, the Board found the trade channels to be "similar rather than dissimilar," noting that Applicant intends to seek the same type of corporate sponsorships as Opposer, and intends that its pageant "eventually will be watched by the public at large, including straight as well as gay viewers." Moreover, consumers for the parties' services "will not exercise great care in determining whether applicant's pageant is affiliated with or related to opposer's pageant."

As to the marks, the word UNIVERSE is dominant in both, while MR. GAY and MISS are highly suggestive. The presence of the word UNIVERSE in both marks "clearly outweighs the differences between the marks which result from the additional words."

Finally, as to the sixth du Pont factor, "use of similar marks on similar goods [or services]," the record suggested that only one other UNIVERSE mark is in existence: MR. UNIVERSE, used in the sport of body building. That usage is "not particularly probative" because those body building services are not similar to the services involved here. Therefore, the Board deemed this factor to be "neutral" at best.

Considering all the relevant du Pont factors, the Board found confusion likely and sustained the opposition.

Text Copyright John L. Welch 2007.


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