Thursday, August 10, 2017

CAFC Affirms TTAB: Limitation of Goods to Those Associated with "" Found Meaningless

The CAFC upheld the TTAB's decision in In re, llc, 116 USPQ2d 1406 (TTAB 2015) [TTABlogged here], affirming Section 2(d) refusals to register the mark I AM for cosmetics and personal care products, sunglasses, and jewelry “all associated with William Adams, professionally known as,” in view of the the mark I AM, registered in standard character and stylized form, for the same or related products. The Board correctly concluded that the "" restriction "does not impose a meaningful limitation in this case for purposes of likelihood of confusion. In re, llc, 123 USPQ2d 1744 (Fed. Cir. 2017) [precedential].

The Board found that William Adams is the well-known front man for the music group, The Black-Eyed Peas, and is known as "" The Board also found that the evidence failed to establish that Adams is well known as "" or that "" and "" are used interchangeably.

Symbolic argued that the Board erred by deeming the "" restriction" to be "precatory" and "meaningless;" by ignoring third party use and registration of other I AM marks; and by finding a likelihood of reverse confusion.

The restriction: The CAFC ruled that the Board correctly determined that the first du Pont factor weighed heavily in favor of a likelihood of confusion: the involved marks are legally identical in appearance, identical in pronunciation, have the same meaning, and engender the same overall commercial impression. Nothing in the record indicated that the "" restriction changed that.

As to the second, third, and fourth du Pont factors, Symbolic maintained that the restriction fundamentally changes its goods and channels of trade. According to Symbolic, consumers purchase goods associated with celebrities in order to associate themselves with the celebrity. The CAFC, however, concluded that the Board did not err in holding that the restriction does not limit the goods with regard to trade channels or classes of purchasers, alter the nature of the goods, or represent that the goods will be marketed in any particular, limited way. In the absence of meaningful limitations in the application or cited registrations, the Board was correct in presuming that the goods travel through all usual channels of trade to the usual classes of consumers.

Other I AM marks: The court agreed with the TTAB that, because there is no evidence of extensive or voluminous third-party use or registration of I AM marks for the same or related goods, the Jack Wolfskin and Juice Generation decisions are inapposite. Those two cases involved oppositions to marks that were not identical to the opposers' marks. Based on evidence showing the frequency of use of certain components of the applied-for marks, the CAFC there concluded that the Board had not adequately considered the weakness of registrant's marks in the likelihood of confusion analysis.

In sharp contrast, this case involves identical word marks. Symbolic's evidence of third-party use of I AM for the same or similar goods fell short of the "ubiquitous" or "considerable" use of the mark components in the two cited cases. .

Reverse confusion: "Reverse confusion" refers to a situation in which a significantly larger or prominent newcomer "saturates the market" with a mark that is confusingly similar to a smaller, senior registrant for related goods or services.

The Board suggested in a footnote that, to the extent that Adams or symbolic’s marks mark are well known and reverse confusion exists, “such fact supports refusal of [Symbolic’s] application, because when confusion is likely, it is the prior Registrant which must prevail. Even if it eclipses the renown of the prior Registrant, Applicant’s fame does not entitle it to usurp the cited Registrant’s rights in the mark. However, the Board did not make a finding of fame, and it did not make a finding of reverse confusion.

The court concluded that the Board's factual findings were supported by substantial evidence and its legal conclusions were not erroneous. Therefore, the court affirmed the Board's decision.

Read comments and post your comment here.

TTABlog comment:  The Board gave a similar nod to the possibility of "reverse confusion" in a footnote in a "celebrity" case involving the legendary Ringo Starr, TTABlogged here.

Text Copyright John L. Welch 2017.


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