Tuesday, January 24, 2012

WYHO? TTAB Dismisses BVD's 2(d) and 43(c) Opposition to BOSIDENG BSD and Design

Bosideng applied to register the mark shown immediately below for "suits, coats, overcoats, shirts, trousers, skirts, sweaters, T-shirts, pajamas, underwear, leather shoes." B.V.D. opposed on the grounds of likelihood of confusion and dilution. The Board dismissed both claims, finding the involved marks too dissimilar and deeming the BVD mark not famous enough for dilution purposes. If it were up to you, would you have opposed? The B.V.D. Licensing Corporation v. Bosideng Co., Ltd., Opposition No. 91173468 (January 10, 2012) [not precidential].

Likelihood of Confusion: B.V.D. relied on nine registrations for the mark B.V.D. or BVD, and on use of the mark since about 1876. Sales figures, dictionary entries recognizing BVD as a trademark, the extremely long period of use, and third-party magazine survey evidence of the marks' renown led the Board to conclude that BVD is famous for purposes of likelihood of confusion.

The goods of the parties are in part identical, and therefore the Board presumed that they travel in the same channels of trade to the same classes of consumers. The Board found underwear is not purchased on impulse. Although these are relatively inexpensive goods, "[t]here is no per se rule that low price equates to a low degree of purchaser care especially when opposer’s own witness testified that the purchase of underwear is a 'planned purchase.'" However, the factual record was incomplete on this issue, and so the Board considered this du Pont factor to be neutral.

As to the marks, the Board found that Applicant's mark is dominated by the word BOSIDENG, a coined word. "The letters BSD are so buried in the middle of applicant’s mark and so innocuous that consumers will not perceive applicant’s mark as being similar in appearance or sound to opposer’s mark." Moreover, the marks create different connotations and commercial impressions.

The Board found the dissimilarities in the marks to be dispositive and it dismissed the Section 2(d) claim.

Dilution by Blurring: The standard for fame in the dilution context is more stringent than that for fame in the Section 2(d) context. BVD failed to clear the higher hurdle. "[T]he transformation of a term into a truly famous mark" means that the mark must be a household name."

BVD's evidence fell short. There was no evidence regarding advertising expenditures, no evidence regarding how many people saw BVD's advertising, and no media evidence showing widespread recognition of the BVD mark, other than the aforementioned magazine surveys. However, those surveys were "most akin to a brand awareness study but they are of limited probative value because opposer did not proffer a witness with first-hand knowledge of the study to explain how the study was conducted, how many people participated in the study or how many people read the published study."

B.V.D. argued that the Board should take judicial notice of the fame of its mark, based upon a 1988 CAFC decision in which the court took judicial notice of “the fact that within our jurisdiction, which is the whole United States, the B.V.D. trademark is at least widely, if not universally, known.” The Board pointed out, however, that the issue there was likelihood of confusion, not dilution. The Board "will not take judicial notice of the fame a mark for purposes of dilution."

[J]udicial notice may be taken of adjudicative facts [i.e., the facts that would normally go to a jury in a jury trial] and judicial notice of facts should only be taken when the matter is “beyond reasonable controversy.” *** We should not use a debatable supposed fact [i.e., the fame of the B.V.D. mark] to bootstrap a dubious conclusion to support an element of opposer’s dilution claim.

For the sake of completeness, the Board also considered the similarity or dissimilarity of the marks in the dilution context. It found the marks "so different" that Bosideng's mark will not "trigger consumers to conjure up" the BVD mark. "Accordingly, applicant’s mark will not create an association with opposer’s BVD mark to support opposer’s dilution claim."

And so the Board dismissed BVD's Section 43(c) claim as well.

TTABlog comment: I think this decision should be precedential, at least for the discussion of judicial notice.

[Please excuse the inconsistent use of BVD and B.V.D. Sometimes the mark is referred to in one way, sometimes the other.]

Text Copyright John L. Welch 2012.


At 12:20 PM, Anonymous Alex B. said...

Hmmm...seems like it could be a case of bullying to me. I could see BVD initially sending a letter to the applicant but I think BVD should have settled this or just issued the applicant a warning.

At 1:00 PM, Anonymous Tal Benschar said...

I don't see why the Board created a categorical rule about judicial notice and dilution. It would have been enough to say that the standard for fame for dilution is very high, and whether BVD meets that standard is not so incontrovertible as to be subject to judicial notice. But are there no trademarks that might fit the bill -- that are so famous that the fact that they meet even the heightened dilution standard is judicially noticeable? How about Coca-Cola? McDonald's? Or, to use the classic examples for dilution, someone sought to register "DUPONT for shoes, BUICK for aspirin or KODAK for pianos."

(Maybe some of those are a bit dated, but they make the point.)


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