Monday, November 11, 2013

Test Your TTAB Judge-Ability: Are These Two "Marvelous" Marks Confusable for Movie Production Services?

The PTO refused registration of the mark shown below for "production and distribution of movies" on the ground of likelihood of confusion with the registered mark MARVELOUS MEDIA for, inter alia, the identical services [MEDIA disclaimed]. Applicant argued that the word "marvelous" is a weak formative and that the relevant customers are sophisticated. Examining Attorney Matthew T. Einstein maintained that even weak marks are entitled to protection from registration of a similar mark for identical services, and that sophisticated consumers are not immune from source confusion. How do you think this came out? In re MarvelousAQL Inc., Serial No. 79975267 (October 24, 2013) [not precedential].

Applicant conceded that the involved services are identical, and did not contest the channels of trade issue. The Board presumed that the classes of customers are the same.

Strength of the cited mark: As to the strength of the cited mark, the applicant and the Examining Attorney provided very similar dictionary definitions of "marvelous" (causing wonder or astonishment; of the highest kind or quality). Applicant contended that "marvelous" is laudatory and conceptually weak, but the Board did not concur.

While the term “Marvelous” may well create mental images of something of the highest quality, it certainly carries with it over-the-top, superlative connotations well beyond the attempted reach of most widely-used laudatory terms, as shown in the initial dictionary entries. Accordingly, we disagree with applicant that as applied to these services it should be deemed to be weak as a matter of law. Even if suggestive, it is still deemed to be an inherently distinctive term when used in connection with the production and distribution of movies.

Applicant also argued that the cited mark is commercially weak, pointing to at least 19 third-party registrations for marks containing the word "marvelous" for a wide variety of goods and services - but none for movie production services. The Board noted that registrations are not evidence of actual use or of consumer familiarity with the marks. Moreover, the cited marks contained other distinguishing matter, and in some the word "marvelous" was the sole distinctive term (e.g., MARVELOUS  PHOTOS, MARVELOUS MARKET, MARVELOUS MATH) and thus was not merely descriptive.

In sum, the Board was unconvinced that the cited mark is commercially or conceptually weak, and so it deemed this duPont factor to be, at best, neutral for applicant.

Comparing the marks: Applicant pointed out that more than 85% of its mark consists of the stylized letter "M" (see below), and the unique creative elements in its mark are not the same as merely adding the letter "M" to a standard character mark.

The Board observed that, when it makes a Section 2(d) determination, "the relative percentage of surface area consumed by each region of a composite mark is rarely the decisive factor." On the other hand, the stylized letter "M" is a significant portion of the applied-for mark and cannot be discarded cavalierly.

However, consumers are not likely to refer to applicant's services offered under the applied-for mark as the "highly stylized M production services." Rather the mark will be vocalized as "Marvelous AQL." Given the difficulty in vocalizing and remembering letter strings, consumers would most likely recall the leading and familiar word "Marvelous."

Sophistication: Although applicant argued that the involved services are expensive and would be purchased with care, the Board noted that the costs of movie production services in the digital age have been greatly reduced (for example, see the amateur quality of some online video productions). The Board was therefore not convinced that all purchasers of the services would be sophisticated, and it deemed this factor to be neutral.

Fame of the cited mark: Applicant contended that the cited mark is not famous, and should not be given increased protection. The Board pointed out, however, that the Examining Attorney cannot be expected to provide proof of the fame of a cited mark. Furthermore, in an ex parte proceeding the registrant has no opportunity to prove the fame of its mark. So this factor is neutral.

Decision: Balancing the relevant duPont factors, and resolving any doubt in favor of the prior registrant, the Board found confusion likely and it affirmed the refusal.

Read comments and post your comment here.

TTABlog note: Who wrote the song "Too Marvelous for Words?" Answer here.

Text Copyright John L. Welch 2013.


At 7:55 AM, Anonymous Anonymous said...

Is this a new rule for laudedory terms: laudetory terms are weak, but laudetory terms that are 'over the top, superlatives' are suggestive (not because they are capable of distinguishing source but because 'few merchants would use them'? Really? No one wants to promote their product as 'marvelous'? Does this mean 'best' is a weak laudetory term but 'bestest' is suggestive? Sounds like that message painted on the side of the barn: all pigs are equal, but some pigs are more equal than others.

At 1:11 PM, Anonymous Anonymous said...

lau·da·to·ry adjective \ˈlȯ-də-ˌtȯr-ē\
: expressing or containing praise


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