Wednesday, September 15, 2010

Fame of "LE CORDON BLEU" Brings TTAB 2(d) Victory Over "CORD ON BLUE" for Cord Storage Units

Applicant Muffman's goose was cooked once the Board found Opposer's mark LE CORDON BLEU to be famous for educational services in the field of cooking. Fame plays a dominant role in the du Pont Section 2(d) analysis, and the Board proceeded to find a likelihood of confusion with Muffman's mark CORD ON BLUE for "general purpose non-metal storage units for use in hanging cards (sic), namely, stretch cords, electrical cords and bungie (sic) cords." Le Cordon Bleu International v. Muffman Products, LLC, Opposition No. 91155779 (August 30, 2010) [not precedential].

Fame: The Board found fame based on Opposer's submission of 74 articles from various U.S. publications referring to LE CORDON BLEU as "the famous cooking school." The Board noted that the articles are hearsay, but concluded that "the references reflect the perception of the authors and that perception is conveyed to the readers." [That proves the mark is famous in the eyes of the public? - ed.]

Of course, famous marks are entitled to a broad scope of protection under Section 2(d), and all doubts as to likely confusion are to be resolved against the newcomer, "especially where the established mark is one which is famous."

The Marks: The Board observed that, "[a]lthough opposer's mark LE CORDON BLEU consists of French words, many Americans will not be aware of the French pronunciation, and will say the mark with an American accent." [Where's the proof for this? ed.] Therefore the marks should be considered identical in sound (except for the "Le").

The meanings of the marks are different, as are the commercial impressions. Opposer's mark suggests something of "high distinction." Muffman's mark, because of the fame of Opposer's mark, will call to mind the latter.

The Board concluded that the similarities in the marks outweigh the differences.

The Goods: Opposer has sold a wide variety of goods under its mark (e.g., tobacco products, clothing, tea, watches, cooking utensils, ovens, ranges, and cookers, and various household items). Given the fame of Opposer's mark, "consumers will logically suppose that applicant's goods are associated with, sponsored by, licensed by or somehow affiliated with opposer."

Trade Channels: Muffman's storage units and Opposer's products and services are general consumer items, they are available to all consumers. Applicant's products may be used in the home, and so the channels of trade for the involved goods and services may be the same. [This analysis is kind of weak, don't you think? - ed.]

Conditions of Sale: Applicant considers its goods to be "impulse" items, and because Opposer's mark is famous, "there is a greater likelihood of confusion because not only are impulse purchases subject to less care in general, but when a trademark or service mark is famous, consumers will exercise even less in making their purchasing decision." [There was no evidentiary support for this assertion; just a quotation from a prior decision. ed.]

Balancing the factors, the Board found confusion likely, and it sustained the opposition.

TTABlog comment: The Board declined to reach Opposer's dilution claim. Are the marks sufficient similar to support a dilution finding?

I find this decision unconvincing, particularly the part about the relatedness of the goods. It seems that Opposer got dilution-like protection without having to meet the higher standard for fame and for the substantial similarity of the marks.

Text Copyright John L. Welch 2010.


At 12:38 PM, Anonymous Anonymous said...

Among many, this may be the most preposterous TTAB result I've seen.

The play on words itself is sufficient to avoid confusion.

At 1:43 PM, Blogger Catherine said...

Another stretch for the TTAB. As a consumer there's no way I would expect Applicant's cord storage unit to have any connection to Le Cordon Bleu in Paris. I agree with Jon, this is clearly a dilution case (of the "parody" type, a la "Chewy Vuitton") forced into the likelihood of confusion analysis.


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