Friday, April 28, 2017

Pro Se Applicant Fends Off Feckless U.S. Marines in "MARINE ONE DOWN" Opposition

The Board dismissed this multi-pronged opposition to registration of the mark MARINE ONE DOWN for computer game software, rejecting all seven claims brought by the U.S. Marines: Section 2(d) likelihood of confusion; Section 43(c) likelihood of dilution; false association and deceptiveness under Section 2(a); deceptive misdescriptiveness under Section 2(e)(1); misrepresentation of source under Section 14(3); and lack of bona fide intent. The Board took time to comment on the woeful inadequacy of the Marines' attack. U.S. Marine Corps v. Peter J. Healy, Opposition No. 91215087 (April 25, 2017) [not precedential] (Opinion by Judge Lykos).

Likelihood of Confusion: The Marines asserted rights in 49 registered U.S. trademarks containing the word "Marine," including MARINE ONE for cups, mugs, postcards, posters, neckwear, and shirts, and MARINE for toy airplanes and action target games. The Board considered these particular registrations to be the most likely to support opposer's likelihood of confusion claim.

However, opposer failed to submit any evidence to show that Applicant Healy's goods are related to those of its MARINE ONE registrations, or to the toy airplanes and target games of the MARINE registrations. Although Opposer claimed that its helicopter squadron called "Marine One" is famous, there was no proof that the term is famous for the goods identified in opposer's registrations.

In short, opposer's arguments regarding confusion were devoid of supporting evidence, and so the Board dismissed the Section 2(d) claim.

Dilution: Since opposer did not prove fame for purposes of Section 2(d), it perforce could not satisfy the higher standard for fame under Section 43(c). And so the Board dismissed this claim.

Bona fide intent: The Marines argued that use of the applied-for mark would violate a federal statute, namely, 10 U.S.C. Section 7881, "Unauthorized Use of Marine Corps Insignia," which probibits, inter alia, civilian use of the "names" of the Marine Corps. The Board noted that, although the application at issue is based on intent-to-use, the intended use must be lawful or else the applicant's intent is not bona fide.

The Board observed, however, that there is a "safe harbor" provision in the statute that allows use of the "names" of the Marine Corps without written permission, so long as the following disclaimer is prominently displayed: "Neither the United States Marine Corps nor any other component of the Department of Defense has approved, endorsed, or authorized this product (or promotion, or service, or activity) as an integral part of the use or imitation."

Here, there was no evidence as to how Applicant Healy intended to use his mark, and no evidence as to whether Healy would avail himself of the "safe harbor" provision. Therefore, opposer did not meet its burden of proof that Healy's use of the applied-for mark would violate the statute.

Section 2(a) False Connection: The first prong of the Section 2(a) false connection bar requires that the mark at issue be a "close approximation" of the plaintiff's name or identity. Opposer provided no evidence that applicant's mark closely approximates its name or identity (for example, United States Marine Corps, U.S. Marine Corps, USMC or Marines).

Nor did opposer meet the second or fourth prongs of the Section 2(a) test: there was no evidence that applicant's mark points "uniquely and unmistakably" to opposer, and there was no evidence that opposer's name or identity is of sufficient fame or reputation that applicant's goods would presumably evoke a connection with opposer.

Section 2(a) Deceptiveness The Section 2(a) deceptiveness bar requires that a term misdescribe a significant aspect of the goods. Opposer pointed to no such misdescription and provided no evidence thereof.

Section 2(e)(1) Deceptive Misdescriptiveness: This test comprises the first two prongs of the Section 2(a) deceptiveness test. Since opposer did not prove any misdescription, this claim failed.

Section 14(3) Misrepresentation of Source: This statutory section applies only to registered marks, and is available only in the context of a cancellation proceeding or a counterclaim for cancellation. Therefore, the Board dismissed the claim.

Observations: Opposer chose not to take any testimony, and most of its evidence, submitted under notice of reliance, was either inadmissible or irrelevant. Opposer's brief contained many factual statements without evidentiary support. All but the Section 14(3) claim, which was futile on its face, were dismissed for lack of proof. "A plaintiff in a Board proceeding cannot expect to prevail on its asserted claims based on mere assertions in its appeal brief."

Finally, the Board noted that on a more developed record, the result may have been different.

Read comments and post your comment here.

TTABlog comment: Hmmm. Will the Marines seek review by way of civil action under Section 1071, in order to bolster the evidentiary record?

Text Copyright John L. Welch 2017.


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