Thursday, April 15, 2010

Test Your TTAB Judge-Ability: Are Condoms and Vibrators Related for 2(d) Purposes?

Line One Laboratories, Inc. petitioned to cancel a registration for the mark IMPULSE for "adult novelty items, namely, vibrators," alleging Section 2(d) likelihood of confusion with its identical mark for "condoms." The Board tossed out Respondent's laches defense, and found that Petitioner Line One had priority of use. The marks were identical, so the key issue before the Board was the relatedness of the goods. What do you think? Line One Laboratories Inc. v. California Exotic Novelties LLC, Cancellation No. 92046155 (March 17, 2010) [not precedential].

Laches: To establish laches, a party must show unreasonable delay resulting in prejudice to the other party. Here, the challenged registration issue on September 13, 2005, and that issuance constituted constructive notice to Petitioner. There was no evidence that Petitioner had actual evidence of Respondent California Exotic's use prior to the date. The petition for cancellation was filed less than 11 months later. This was not an unreasonable delay, and Respondent neither alleged nor proved any harm caused thereby.

Priority: Both parties owned registrations, and so each could rely on the filing date of its application to register as a date of use, and each may submit evidence to prove an earlier use date. Here, Respondent's testimony claimed a first use date of August 1, 2001 for vibrators.

Petitioner Line One proved use of the IMPULSE mark at least by 1998, and so Petitioner was deemed to have priority. The Board noted that priority "does not appear to be truly disputed by respondent."

Likelihood of confusion: The identity of the marks "weighed heavily in favor of petitioner."

As to the goods, Line One submitted three types of evidence to established relatedness: third-party registrations, trade magazines, and testimony. A half-dozen registrations identified both condoms and vibrators. Trade magazines advertised and reviewed both products. And Petitioner's witnesses testified that condoms are sold and promoted alongside vibrators and are displayed at the same trade shows.

Finally, Respondent pointed to the lack of any actual confusion, but of course proof of actual confusion is not necessary, and its absence "does not necessarily overcome a finding of likelihood of confusion."

And so the Board granted the petition for cancellation.

TTABlog note: Well, how did you do? Did you notice that I scrupulously avoided any puns?

Text Copyright John L. Welch 2010.


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