Tuesday, June 21, 2016

Precedential No. 17: BLACK MEN ROCK Confusable With BLACK GIRLS ROCK!, Says TTAB

In a case that "illustrates the efficiency of the Board's Accelerated Case Resolution procedure ('ACR')," the Board sustained a Section 2(d) opposition to the mark BLACK MEN ROCK & Design for "caps, hats, jackets, t-shirts" and for "education services, namely, providing live and on-line classes, seminars, workshops in the field of personal development." The Board found the mark likely to cause confusion with the registered mark BLACK GIRL'S ROCK! for "tee shirts," "charitable services, namely organizing volunteer programs for at-risk teenage women of color," and "entertainment, namely, a continuing award show broadcast over television; arranging and conducting of concerts; and entertainment services in the nature of live musical performances." Beverly A. Bond v. Michael Taylor, 119 USPQ2d 1049 (TTAB 2016) [precedential].

Each party had filed an unsuccessful summary judgment motion, leading the Board to encourage the parties to stipulate to resolution of the proceeding via the ACR procedure. In order to take advantage of ACR, the parties must stipulate that the Board may resolve any genuine disputes of material fact "in the context of something less than a full trial."

The parties agreed to use the Board's ACR procedure, and the Board approved the stipulation of the parties as follows:

• the Parties will principally rely upon the evidence submitted in connection with the two previously filed motions for summary judgment, and any supplemental declarations;

• the Parties may supplement their previously filed briefs on the motion for summary judgment, but will limit any supplemental briefs to ten pages;

• the Parties will forgo reply briefing;

• the burden of proof to establish her case by a preponderance of the evidence remains with Opposer and

• the Board may resolve disputes as to any material fact which the Board may find to exist and may issue a final ruling after considering the parties’ ACR submissions.

The Goods/Services: The goods of the parties are in part identical, and these identical goods are presumed to travel in the same channels of trade to the same classes of purchasers.

As to the services, the Board found that opposer's charitable services are related to applicant's educational services. It noted that applicant's recitation of services is not limited to "black girls." Moreover, opposer testified that men participated in her programs. However, the evidence was insufficient to show that the services of the parties are offered in the same trade channels.

The Marks: While there are differences in the marks,  "the connotations and commercial impressions are similar and the similarities outweigh the differences."

Both marks connote that the subject of the services ("black girls" and "black men") are "very good, impressive, or exciting." Thus, Opposer’s and Applicant's marks suggest that the programs offered by Opposer and Applicant improve the self-images of the participants. Both the design in Applicant's mark, consisting of the silhouette of a man with his arms outstretched in a sign of victory, and the exclamation point in Opposer's mark emphasize the positive outcome the programs hope to have on the participants.

The Board concluded that confusion is likely, and it therefore sustained the opposition.

Read comments and post your comment here.

TTABlog comment: In an ACR proceeding, may the parties stipulate that the Board's factual findings will have no collateral estoppel effect?

Text Copyright John L. Welch 2016.


At 7:43 AM, Blogger Brad Salai said...

So the board found,
However, the evidence was insufficient to show that the services of the parties are offered in the same trade channels.
But wasn't there a presumption that they do? Why did the burden shift?

At 8:32 AM, Blogger John L. Welch said...

Presumption kicks in only if services are identical


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