Tuesday, June 10, 2008

Tip from the TTABlog: Hands Off the Playboy Bunny!

Adam Bennett of Houston, Texas got too close to the Playboy bunny and the TTAB gave him a good smack upside the head. Bennett, appearing pro se, collided with the fame of the Playboy bunny marks and was unable to pull the proverbial rabbit out of the hat with his slightly imaginative but ultimately incredible and futile attempt to explain the origins of his mark: he claimed the design was merely "a hand signal that we do in Houston." Playboy Enterprises International, Inc. v. Bennett, Opposition No. 91173441 (June 4, 2008) [not precedential].

Bennett was trying to register his mark (left, above) for "entertainment services, namely, providing a web site featuring musical performances, musical videos, related film clips, photographs, and other multimedia material." Playboy opposed on Section 2(d) grounds, relying on 16 registrations for rabbit head designs, with and without literal elements.

Applicant Bennett admitted that Playboy has marketed the rabbit head design for more than 50 years on a wide variety of goods and services; that the rabbit head design trademarks are famous; that Playboy owns the mark BUNNY for establishments featuring food, drink, and entertainment; and that Playboy has marketed "the Playboy BUNNY" for a variety of goods and services.

In addition to Bennett's admissions regarding fame, Playboy introduced other evidence, including news articles referring to the rabbit head logo as a famous trademark. Of course, as the Board observed, fame "plays a dominant role" in the du Pont analysis.

The Board next found Applicant's services to be essentially identical to those of Opposer, and it presumed that the services would be marketed in the same channels of trade to the same classes of purchasers.

Comparing the marks, the Board first noted that when the services are identical, a lesser degree of similarity between the marks is required to support a finding of likely confusion. Here, the design elements are similar: a rabbit head with a white circle or oval forming the eye, and a bowtie. Moreover, the words PLAYERSANDBUNNIES "reinforce the conceptual similarity" of the designs.

Playboy called Bennett as an adverse witness, and he came through: he claimed that his design is just "a hand signal that we do in Houston. It's the 'H' symbol. We do this in Houston (demonstrating)." Tellingly, he posted the name "Hughston Hefner" at his MySpace page, while admitting that "Playboy is synonymous with Hugh Hefner."

The Board found Bennett's testimony regarding the adoption of his mark to be "not credible," and it considered his bad faith to be another factor in favor of a finding of likely confusion.

Balancing all the du Pont factors, the Board not surprisingly ruled in favor of Playboy.

Text Copyright John L. Welch 2008.


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