Wednesday, December 19, 2007

"B.V.D." and "DVD EMPIRE" Confusingly Similar for Clothing? No Way!

Way! The Board sustained a Section 2(d) opposition to registration of the mark DVD EMPIRE for shirts, finding it likely to cause confusion with the marks B.V.D. and BVD, registered for underwear, t-shirts, shirts, and shorts. B.V.D. Licensing Corp. v. Right Ascension, Inc., Opposition No. 91169355 (December 14, 2007) [not precedential].

DVD EMPIRE specimen

Neither party took testimony in this hardly-fought opposition. In fact, Applicant submitted no evidence at all and did not file a brief.

The Board began with the fame factor, because that factor plays "a dominant role" in the du Pont analysis. The evidence showed that Opposer has widely advertised its mark for decades, and has benefited from endorsements by such celebrities as Chubby Checker, Wilt Chamberlain, and Milton Berle. BVD was ranked as the 35th most well-known menswear brand in 2006. The mark is listed in several dictionaries.

The Board found the mark to be famous for, at a minimum, men's underwear. Indeed, the Board and the CAFC have previously found Opposer's marks to be famous.

As to the goods, Applicant's shirts are identical to the shirts listed in at least one of Opposer's registrations. The channels of trade and class of purchasers are presumably the same, and these are goods that would not be purchased without a great deal of care.

Turning to the marks, the Board once again noted that when the involved goods are identical, a lesser degree of similarity in the marks is required to support a finding of likely confusion. Taking into account the fame of Opposer's mark, the Board found that "the points of similarity outweigh the dissimilarities."

"We first observe that the term DVD is the dominant element in applicant's mark. It is the first word in the mark and, as opposer notes, EMPIRE has a certain laudatory quality to it inasmuch as it connotes a degree of supremacy, rendering it less influential as the source identifier in applicant's mark."

Moreover, "B" and "D" are visually similar and are somewhat phonetically similar. And Applicant's mark could be displayed in the manner in which Opposer's mark is displayed. [TTABlog aside: that's if you hide the word EMPIRE]. Both BVD and DVD are arbitrary with regard to shirts. And a one-letter difference is not sufficient to distinguish between two other otherwise identical letter combinations.

Therefore the Board found that confusion is likely, and it sustained the opposition.

TTABlog comment: This is the kind of decision we get when the Board is determined to decide in favor of the party that did all the work, or at least the party that did some work. How, pray tell, can the Board simply ignore the word EMPIRE in Applicant's mark? How can it ignore that fact that DVD means one thing, whether on as shirt label or elsewhere: the ubiquitous digital video disk?

I did, however, get something useful from reading this decision: a reminder that it's time to start compiling my "ten worst" list for 2007.

Text Copyright John L. Welch 2007.


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