Wednesday, November 25, 2009

TTAB Summarily Cancels "PLAID" Registration Under Section 2(d)

When the marks are identical and the services nearly so, you've got a shot at summary judgment under Section 2(d). That's what transpired in this cancellation proceeding involving a registration for the mark PLAID for various advertising, marketing, and design services. The Board found that mark likely to cause confusion with the identical mark previously-used by Petitioner for branding, design, advertising and marketing services. Respondent attempted to stir up several genuine issues of fact, but the Board found them immaterial to its ruling. Plaid Inc. (a New York corporation) v. Plaid, Inc. (a Connecticut corporation), Cancellation No. 92049221 (November 23, 2009) [not precedential].

What was left to argue about, you might ask? Respondent contended (without evidence) that Petitioner used the mark PLAID only as a trade name, not as a service mark. But even if true, the Board observed, that would not create a genuine issue of material fact as to standing or priority because "a trade name lacking any independent trademark or service mark significance may bar registration of a trademark or service mark that is confusingly similar to that trade name."

Next, Respondent asserted that its mark is used primarily with the Internet and social media, whereas Petitioner's mark is primarily used in print, but the Board pointed out that, even taking into account those alleged limitations, there is still an overlap in channels of trade.

Respondent contested Petitioner's assertion of fame, but even if that raised a genuine issue of material fact, the Board found it unnecessary to consider fame in reaching its decision. [Doesn't that mean it wasn't a "material" issue of fact? - ed.]

Finally, the Board turned to the issues of actual confusion and third party use of similar marks for similar services. It concluded that even if it assigned no value to Petitioner's evidence of actual confusion, and it deemed Petitioner's mark to be weak, there would still be a likelihood of confusion. After all, even a weak mark is "entitled to protection against an identical mark used for identical services which travel in similar channels of trade."

And so the Board granted the petition for cancellation.

TTABlog note: This is a good lesson on how to fend off attempts to de-rail a summary judgment motion: think about materiality!

Text Copyright John L. Welch 2009.


Post a Comment

<< Home