Monday, March 16, 2020

Precedential No. 12: Finding Clothing and Books Related, TTAB Sustains 2(d) Opposition to ENGIRLNEER

In an enervating but precedential ruling, the Board sustained a Section 2(d) opposition to registration of the mark ENGIRLNEER for "Cups; coffee cups, tea cups and mug; Lanyards for holding badges; Lanyards for holding keys; Hoodies; Shirts; Sweatshirts," finding a likelihood of confusion with the identical, common law mark for books and for educational and informational services in the STEM fields. Evidence of third-party registrations for marks covering various combinations of the involved goods and services convinced the Board of their relatedness for Section 2(d) purposes. Shannon DeVivo v. Celeste Ortiz, 2020 USPQ2d 10153 (TTAB 2020) [precedential] (Opinion by Judge Albert Zervas).


Priority: The opposed application was filed on November 18, 2017 under the Section 1(b), based on applicant's bona fide intention to use the mark in commerce. Opposer Shannon DeVivo was able to prove prior use of the mark for her STEM-related services through her declaration testimony regarding her interactive website, its downloadable book, and its depiction of several cartoon character "engirlneers" that provide educational information in STEM fields for young women and girls pursuing a career in these fields.

As to opposer's downloadable book (cover depicted above), opposer did not claim that the title of the
book is a mark. See In re Cooper, 254 F.2d 611, 117 USPQ 396, 398 (CCPA 1958) (“the title of a book cannot be registered as a trademark”). She pointed out that the term ENGIRLNEERS appears on the front cover of the book, separate and apart from the title, on the second page of the book, and on the back cover.

The Board likened this case to In re Polar Music Int’l, 221 USPQ at 318, in which the CAFC found that the mark ABBA served as a trademark for the musical group ABBA's sound recordings because "[t]he public has come to expect and associate a certain quality, not just of sounds but of how the sounds are produced on the record and the physical qualities of the record itself, with the mark ‘ABBA.’”

Similarly, a publisher’s mark such as the term ENGIRLNEER located within the seal design may serve as more than just the source identifier for a physical good, a children’s book. It also may serve to inform the public that the subject matter of the book is of a certain quality and suitability. If in printed form, it may also identify the quality of the physical product.

The Board concluded that ENGIRLNEER similarly serves as a source indicator for applicant's book:

Thus, even though ENGIRLNEERS appears in the title of the book and is the group name for the characters in the book, the positioning of the term distant from the title of the book, its inclusion within a design, its prominent size, its appearance on the second page in conjunction with an invitation to the reader to “learn how to become an engirlneer,” and its appearance on the last page of the book, results in a separate and distinct commercial impression which performs the trademark function of identifying the source of Applicant’s book to consumers. 

The Board found that opposer had established prior rights in the mark ENGIRLNEER,

Likelihood of Confusion: Of course, since the involved marks are identical, a lesser degree of similarity between the goods/services is needed to support a finding of likely confusion. Third-party registration evidence as well opposer's evidence of use of her mark on T-shirts, tank tops, sweatshirts, hoodies, coffee mugs, stickers, postcards, greeting cards and tote bags (albeit after the filing date of the opposed application) led the Board to find that applicant's goods are related to opposer's goods and services. "Such goods tend to be collateral goods. See L.C. Licensing, Inc. v. Berman, 86 USPQ2d 1883, 1889 (TTAB 2008) ("It is common knowledge, and a fact of which we can take judicial notice, that the licensing of commercial trademarks on ‘collateral products’ has become a part of everyday life.")."

The Board breezed through the remaining duPont factors to reach its conclusion:

We find the marks are identical, the parties’ goods and services related, and the parties’ goods are subject to a low standard of purchaser care (impulse purchasing). The channels of trade and classes of customers are related, but only slightly. In view of our findings on these factors, we hold under Section 2(d) that there is a likelihood of confusion between Applicant’s ENGIRLNEER mark for her goods and Opposer’s identical ENGIRLNEER mark for her goods and services for which Opposer has demonstrated priority of use.

Read comments and post your comment here.

TTABlog comment: Not sure why this is precedential. It seems that if the parties invoke the ACR regimen, the chances of the decision being deemed precedential goes up by a factor of 3.1416.

Text Copyright John L. Welch 2020.


At 7:50 AM, Blogger Gene Bolmarcich, Esq. said...

Oooo, you missed Pi Day by 2.0000 days

At 10:05 AM, Blogger John L. Welch said...

3-14 was a Saturday, so I was allowed until Monday to make that reference.

At 6:55 PM, Anonymous Anonymous said...

"It is common knowledge, and a fact of which we can take judicial notice, that the licensing of commercial trademarks on ‘collateral products’ has become a part of everyday life."

Is this what made it precedential? This seems to be a blanket statement that a trademark in any class for any product or service automatically includes trademark protection for the same mark for t-shirts, hoodies, coffee mugs and anything else that can be designated a "collateral product".

At 7:34 PM, Blogger John L. Welch said...

That's a quotation from a 2008 decision. How would that make this decision precedential?

At 11:16 PM, Blogger Matt Pritchard said...

I find this decision awkward and troubling. The Board relies on inference and NOT evidence of actual use. It writes: The evidence reflects that prior to November 18, 2018, Opposer promoted her book and website, and her book was downloaded by users from her website. We therefore do not agree with Applicant that the public was unaware of Opposer’s webpages.

I cannot find any evidence in Opposer's declaration that anyone visited, much less downloaded her book, prior to the priority date in question. No SEO or records of downloads,etc. The Board seems to miss the points raised by Applicant.

But I like it for the oral argument in my practice class.


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