Friday, November 14, 2008

TTAB Delivers Split Decision in "IRONMAN" v. "IRON WOMAN" 2(d) Opposition

It took a mere 10 years from the filing of the opposition to the Board's decision in World Triathlon Corp. v. Traditional Medicinals, Inc., Opposition No. 91110391 (November 3, 2008) [not precedential]. The Board sustained World Triathlon's challenge to registration of the mark IRON WOMAN for "dietary and nutritional supplements" [IRON disclaimed], finding it likely to cause confusion with Opposer's registered mark IRONMAN TRIATHLON NUTRITION for "food and vitamin supplements" [NUTRITION disclaimed]. However, the Board dismissed the opposition as to Applicant Traditional Medicinal's "herb teas," finding confusion unlikely with respect to Opposer's mark IRONMAN TRIATHLON for bottled water.

Opposer started out on the wrong feet, first failing to establish its claim of fame for its IRONMAN and IRONMAN TRIATHLON marks. It proved use of the marks since 1979, annual broadcasting of its triathlon event by ABC since 1980, and publicity in various media. But it offered "little, if any, evidence to show the level of brand awareness" of the marks. "Indeed, it is unclear to what extent, if any, opposer's goods and services are recognized among the general public." The Board concluded, however, that the marks have "achieved at least some recognition and strength in the sports market."

Next, Opposer failed to establish a family of marks. It claimed to own a family of "IRON-gender/age formative marks" for a variety of goods and services, but it did not demonstrate that the marks in the family have been used and advertised in a way to create "common exposure and therefore recognition of common ownership based upon a feature common to each mark." Consequently, the Board considered Opposer's mark individually, concentrating on the registrations that "recite goods most similar to applicant's": IRONMAN TRIATHLON NUTRITION & Design for food and vitamin supplements, and IRONMAN TRIATHLON for bottled water.

As to the marks, the Board found IRON WOMAN to be "highly similar in appearance and sound to the dominant IRONMAN portion" of Opposer's marks.

"Both applicant's mark and those of opposer convey the sense of persons possessed of strong body, will, and resolve, i.e., men and women of iron. The mere difference in gender between the parties' marks is insufficient to create significantly different commercial impressions given the overall similarities in the marks. The marks respectively suggest men and women with wills and bodies of iron, and thus are similar in connotation and convey highly similar overall commercial impressions."

The Board concluded that the similarities between the marks outweigh their differences.

As to the goods, the parties' supplements are "closely related, if not virtually identical," and thus the channels of trade would overlap. Although Applicant argued that its customers are sophisticated, the Board observed that the goods are "not so highly specialized as to exclude casual purchase." In any case, even sophisticated purchasers are not immune to source confusion.

However, Opposer's bottled water is "not so closely related to" herb teas. Opposer provided no evidence to support its contention that the goods are related or typically emanate from a common source.

Finally, Applicant pointed to various third-party registrations for IRON-formative marks, but most were for goods and services "far removed" from the goods at issue here, and so the Board deemed Opposer's marks to be "entitled to more than a narrow scope of protection that would be afforded a weaker or less distinctive mark."

The Board concluded that confusion is likely as to the class 5 supplement marks, but not likely as to the bottle water/herb teas marks.

Text Copyright John L. Welch 2008.


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