Friday, January 21, 2022

TTABlog Test: Is SCOOPERFEST Confusable With SCOOPER BOWL for Ice Cream Festivals?

The Dana-Farber Cancer Institute opposed an application to register the mark SCOOPERFEST for "organizing community festivals featuring primarily ice cream and also providing entertainment," alleging a likelihood of confusion with the registered mark SCOOPER BOWL for "charitable fundraising by means of an ice cream festival." Applicant Craig Marquardo claimed that the SCOOPER BOWL mark is conceptually weak, that the parties provide their services on opposite sides of the country, and therefore that confusion is not likely. How do you think this came out? Dana-Farber Cancer Institute, Inc. v. Craig Richard Marquardo, Opposition No. 91255611 (January 20, 2022) [not precedential] (Opinion by Judge Melanye K. Johnson).

Applicant Marquardo did not submit evidence or testimony but made many factual assertions or arguments in his brief. The Board declined to consider them. See TBMP Section 801.01 (2021); Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018).

Dana-Farber's evidence established that it has hosted an annual SCOOPER BOWL ice cream festival since 1984. Currently, the event (held in Boston and New York) spans three days and serves more than 20 tons of ice cream and frozen yogurt, donated by local and national vendors. More than 40,000 people attend each year. Applicant Marquardo, a Boston native, lives in Portland, Oregon, and heads a for-profit entity that held an ice cream festival there, called "ScooperFest," in 2019.

The Board found that the involved services overlap and are legally identical in part, and presumably travel in the same channels of trade to the same classes of consumers. Applicant Marquardo admitted that the relevant consumers - "people who like to eat ice cream" - are not limited to the sophisticated. He argued, however, that the parties do not serve the same customers because they are thousands of miles apart. The Board pointed out that Marquardo is seeking a nationwide registration, and so the likelihood of confusion analysis must proceed as if the marks were in use throughout the country. Moreover, Dana-Farber's registrations are entitled to national protection.

The Board found the SCOOPER BOWL mark to be inherently distinctive, as evidenced by Dana-Farber's two registrations issued without a Section 2(f) claim. The Board did find that SCOOPER BOWL appears on its face to be somewhat suggestive of Dana-Farber's services, since ice cream may be scooped and eaten from a bowl. Also, the word bowl may allude to a large gathering of people.

As to commercial strength, Dana-Farber proved that it has sold more than one million tickets to its event, for a total of $7.1 million in revenue. It has advertised the mark and enjoyed media coverage of the SCOOPER BOWL event. Although the sales and advertising figure were "underwhelming" when compared to figures for such events as the NFL'S "Super Bowl," the Board found that Dana-Farber has achieved some commercial success and media recognition. There was no evidence of third-party use of SCOOPER BOWL or similar marks, and so the Board found the SCOOPER BOWL mark to be "somewhat strong commercially" and entitled to "a slightly broader scope of protection on the spectrum of 'very strong to very weak.'"

Turning to the marks, the Board noted that when the services are identical-in-part, a lesser degree of similarity between the marks is required to support a finding of likely confusion. It noted that both marks begin with the same word SCOOPER, and observed that the first word in a mark is "more likely to be noticed and remembered by consumers." Furthermore, the marks are similarly structured. As to connotation, both "fest" and "bowl" evoke the meaning of a gathering with a specific focus.

And so, the Board concluded that confusion as to source is likely.

Applicant Marquardo claimed that Dana-Farber gave him permission to use the "ScooperFest" name for his event, but there was no evidence of any prior agreement. Moreover, Marquardo admitted in his discovery responses that he did not have permission to use or register that mark.

The Board therefore sustained the opposition.

Read comments and post your comment here.

TTABlogger comment: Wolf Greenfield represented Opposer Dana-Farber in this proceeding.

Text Copyright John L. Welch 2022.


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