Wednesday, January 14, 2009

TTAB Finds Confusion Likely Between "IRON MAN" for Bodybuilding Magazines and "IRONMAN" for Nutritional Supplements

In October 2008, the Board held oral argument in Boston in this case, and the attendees were treated to a spirited argument and discussion. This posting will not attempt to cover every issue raised, but instead will hit the high points of the 30-page decision, in which the Board sustained a Section 2(d) opposition to registration of the mark IRONMAN in the design form shown below, for nutritional supplements and related goods, finding the mark likely to cause confusion with Opposer's common law mark IRON MAN for magazines. Ironman Magazine v. World Triathlon Corporation, Opposition No. 91167894 (January 12, 2009) [not precedential].

The Board noted that "this case presents a somewhat unusual situation in that the parties involved have both used similar marks for a number of years. *** However, through the years both parties, and in particular applicant, have expanded the goods and services in connection with which they use their marks, and the marks themselves have undergone some changes."

Although there are obvious differences between the goods:

Opposer has shown that nutritional supplements are related to bodybuilding magazines. The readers of bodybuilding magazines are interested in nutrition and nutritional supplements, and opposer's magazine and ancillary publications contain articles on or are devoted to nutrition, including discussing and endorsing nutritional supplements. Many of the advertisements in the magazine are for nutrition products. Thus, the magazine and nutritional supplements are complementary in nature, and the purchasers are the same.

Moreover, opposer produces both magazines and nutritional supplements, thereby showing that both products can emanate from a single entity. It is true that opposer does not use the same mark for its supplements as it does for its magazine, but this is not because customers would not associate both types of products with a single source. On the contrary, it is because the mark IRON MAN for supplements is likely to cause people to view the goods as emanating from the publisher of IRON MAN magazine that opposer has chosen to use a different mark for its supplements, in order not to jeopardize its advertising revenue from third-party supplement manufacturers.

The Board found Opposer's mark to be "strong and well-known" in the world of bodybuilding. Applicant submitted substantial evidence as to the fame of its IRONMAN marks, but this evidence is irrelevant to the fifth du Pont factor, the fame of the prior [i.e., opposer's] mark. Applicant failed to point to any case in which the fame of the junior user's mark is a factor in favor of a finding that confusion is unlikely.

The Board viewed the marks as "extremely similar." Although Applicant's mark includes a dot over the "M", the word IRONMAN is clearly the dominant portion of the mark.

... even if some consumers recognize the combination of the M and the dot as forming an abstract design of a human figure, the design merely reinforces the meaning of the word IRONMAN, a significance that is equally applicable to opposer's mark IRON MAN for a magazine for bodybuilders. Therefore, the marks convey the same commercial impression, and the design element in applicant's mark does not serve to distinguish the marks.

Applicant attempted to show that its IRONMAN & Design mark is famous, but its evidence was unconvincing. The evidence did not show that "the IRONMAN with Dot design is well-known for nutritional supplements, and it is for nutritional supplements that applicant is attempting to register its mark."

Even if we could say that the IRONMAN with Dot design had achieved fame for triathlon contest exhibitions, and while the fame of a mark may give it a greater scope of protection against later users, a later user may not build up its mark in order to take away rights from an earlier user, or use the fame the later user has built up in one area to expand into goods that are related to those of an earlier user, thereby limiting the scope of protection to which that earlier user is entitled.

In sum, the "slight differences in appearance do not outweigh the identical sound, connotation and commercial impression of the marks."

As a final note, the Board brushed aside Opposer's argument that Applicant's use of its mark "could result in safety issues that are outside opposer's control." Pharmaceuticals raise such concerns, but nutritional supplements do not fall into that category.

Considering all the relevant evidence, the Board found confusion likely. As required, it resolved any doubts in favor of opposer, "which began using its mark approximately 70 years prior to applicant's use of its mark on the identified goods."

Text Copyright John L. Welch 2009.


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