Monday, July 19, 2010

TTAB Sustains 2(d) "TELMEX" Opposition, Finding Applicant Acted in Really Bad Faith

Applicant Andres Guiterrez Estrada, a resident of Mexico, was taken to the woodshed by the Board in this Section 2(d) opposition to registration of the mark AUDITORIO TELMEX for arena and entertainment services [AUDITORIO disclaimed]. The Board found his mark likely to cause confusion with the previously-used mark TELMEX for telephone calling card services. Estrada's bad faith adoption of the mark and his "evasive and disingenuous" discovery responses raised the Board's hackles. Telefonos de Mexico, S.A.B. de C.V. v. Andres Gutierrez Estrada, Opposition No. 91183487 (June 30, 2010) [not precedential].

Opposer, a major telecommunications company based in Mexico, proved priority only with regard to its telephone calling card services. The Board struggled in finding the involved services to be related, but Estrada's bad faith permeated the decision.

Since 1980, Estrada has lived in Jalisco, Mexico, about ten miles from the AUDITORIA TELMEX arena in Guadalajara. That arena is sponsored by Opposer and is one of the "top five entertainment concert arenas in the world." Yet Estrada denied any prior knowledge of Opposer's use of TELMEX. The Board found Estrada's discovery responses to be "disingenuous and lacking in credibility."

Opposer failed to prove the fame of its mark in the USA, but the Board did find it to be a "strong, inherently distinctive mark. Estrada stated that he knew of no one else having the rights to use TELMEX.

As to the services, Opposer established that its telephone cards "display promotions for events and activities opposer sponsors, including sporting and other entertainment events. Consequently, these promotions create an association between opposer's telecommunications services and entertainment services." In addition, the Board noted that Opposer has provided a wide range of telecommunications services in the USA.

Moreover, the 2008 Latin American MTV Music Awards were televised from Opposer's AUDITORIA TELMEX arena into the USA over the Internet. This points to an association between arena services and entertainment services.

[T]his evidence shows that relevant consumers when confronted with the use of the same or similar marks in conjunction with both types of services, arena and entertainment services and telecommunications services would be likely to believe that the services are associated with the same source.

Finally, the Board took judicial notice of the fact that "the licensing of commercial trademarks on 'collateral' products has become a part of everyday life."

The Board found this evidence sufficient to show that "both arena and entertainment services are related to telephone calling card services."

The Board then considered Estrada's bad faith, under the 13 du Pont factor. Noting that it would have found a likelihood of confusion anyway, the Board saw a "significant degree of bad faith." Had this been a close case [It was't? - ed.], bad faith would have tipped the scale.

Applicant’s evasive and disingenuous responses to opposer’s discovery requests, detailed above, provide evidence of Applicant’s continuing bad faith subsequent to his adoption of the mark. It shows not only bad faith but a general lack of respect for the application and opposition process.

And so the Board sustained the opposition.

TTABlog comment: Shouldn't there have been some mention of the likelihood that many Mexican-Americans would know of TelMex and its arena and would associate Estrada's services with that company?

Text Copyright John L. Welch 2010.


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