Wednesday, July 22, 2020

TTAB Dismisses Opposition to SKY CINEMAS: Not Confusable with SKY NEWS for News Reporting Services

In a wide-ranging opinion covering various evidentiary objections, a family-of-marks claim, and trial of that issue by implied consent, the Board dismissed this opposition to registration of SKY CINEMAS for "movie theaters" [CINEMAS disclaimed], finding the mark not likely to cause confusion with SKY NEWS for radio and television news services. The Board concluded that the involved services are not related nor offered through the same trade channels, and it found that opposer failed to show that movie theaters are within opposer’s natural area of expansion. This blog post will hit some of the high points. Sky International AG v. Sky Cinemas LLC, Opposition No. 91223952 (July 21, 2020) [not precedential] (Opinion by Judge Frances Wolfson).

The Board found the mark SKY NEWS as a whole to be "no more than suggestive for Opposer's news steaming services." As to commercial strength, opposer's proofs lacked the market context necessary for the Board to assess the commercial impact of the mark in this country. The Board concluded that the SKY NEWS mark is "entitled to an ordinary scope of protection."

The Board that the marks look and sound alike, are somewhat similar in meaning, and in their entireties create similar commercial impressions.

As to the involved services, the Board, in a lengthy discussion, rejected opposer's "natural area of expansion" argument because the evidence "does not establish that any such 'natural expansion' would have been expected or assumed by the purchasers of Opposer’s services when Applicant entered the field."

Opposer has expanded its offering of streaming services to include a variety of platforms, including mobile devices, laptops, and desktop computers. Opposer has expanded its business into production of films that have been shown in movie theaters. Nonetheless, Opposer has not shown that when Applicant commenced use of its mark or filed its application for “movie theaters,” purchasers of Opposer’s services would have expected or assumed that “movie theaters” were within Opposer’s “natural zone of expansion.”

The Board concluded that the involved services are not related. Moreoever, "although consumers of both parties’ services are movie enthusiasts, the substantial differences in channels of trade weigh against a finding of likelihood of confusion."

The Board dismissed opposer's claim that applicant chose its mark with an intent to trade off opposer's mark It found the lack of actual confusion to be a neutral factor.

Balancing the relevant DuPont factors, the Board found confusion unlikely, and so it dismissed the opposition.

Read comments and post your comment here.

TTABlogger comment: Worth reading in detail.

Text Copyright John L. Welch 2020.


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