Thursday, March 17, 2022

Viacom Wins "DOUBLE DARE" Section 2(d) TTAB Battle, Survives Abandonment Attack

In an exhausting 96-page decision (including a 27-page appendix containing rulings on the evidentiary objections of the parties), the Board sustained an opposition to registration of the mark DOUBLE DARE for computer game software (class 9), clothing (class 25), toys (class 28), and entertainment services (class 41), finding that applicant Armstrong Interactive lacked a bona fide intent to use the mark for the class 9, 25, and 28 goods, and finding confusion likely with the identical common law mark used by Opposer Viacom as to all four classes. This blog post will hit some of the highlights. Viacom International, Inc. v. Armstrong Interactive, Inc., Serial No. 91243941 (March 11, 2022) [not precedential] (Opinion by Judge David K. Heasley).

Opposer Viacom first aired a game show called DOUBLE DARE in 1986 but ceased airing new episodes in 2000. Reruns followed. In 2009, Viacom let lapse its registration for DOUBLE DARE for production and distribution of a children's game show. Applicant Armstrong contended that Viacocm abandoned the DOUBLE DARE mark between 2009 and 2018, and so Armstrong filed its intent-to-use application in January 2018. Viacom maintained that it retained its common law rights through various ongoing uses between 2009 and 2018, and therefore had priority.

In April 2018, Viacom announced it was releasing new episodes of DOUBLE DARE. Armstrong wrote to Viacom, claiming prior rights in the mark. Viacom proceeded to air an episode of DOUBLE DARE in June 2018 and it filed a civil action seeking a declaratory judgment that it owned the mark. Viacom also filed this opposition. The court dismissed the civil action for lack of subject matter jurisdiction, since it was not clear whether Armstrong would obtain any rights in the mark and since there was no actual harm being caused to Viacom.

Bona fide intent: Although the issue of lack of bona fide intent was not raised in the notice of opposition, the Board found that it was tried by implied consent. Viacom made out a prima facie case by establishing that Armstrong had no documentation to support its claimed bona fide intent to use the mark in commerce as of the application filing date. Armstrong offered no countering evidence for the goods in its application, but the Board found that, as to the class 41 entertainment services, Armstrong demonstrated its capacity to produce a children's program. It also made efforts to set the project in motion, including meeting with Marc Summers, the host of the original Viacom television show.


[T]he testimony, taken as a whole, indicates that Armstrong had more than subjective hopeful or wishful thinking. He had reason to believe that DOUBLE DARE was available, that it was no longer registered, and that Applicant could produce and air the show with the expertise of its former producer and host. Applicant’s contemporaneous actions from August 2017 through July 2018 are consistent with that mental impression and intention. Considering the totality of the circumstances, the low evidentiary bar, and the objective evidence as it bears on Applicant’s subjective intent, this suffices to overcome Opposer’s prima facie case based on lack of documentation.

Priority and abandonment: Armstrong asserted that "[b]etween 2009 and 2018, little to no bona fide use of the Mark in commerce was made by Opposer or anyone else." Viacom contended that it used the mark between 2009 and 2018 "in a variety of overlapping ways: (i) reruns of old DOUBLE DARE episodes that aired on Nickelodeon and other Viacom channels; (ii) live DOUBLE DARE events, beginning in 2012, that took place around the country; (iii) digital downloads of DOUBLE DARE rerun episodes, offered from 2014 onward, that tens of thousands of consumers downloaded and streamed; (iv) 2016 live and on-air reunion specials that were a substantial ratings success, persuading Opposer to (v) produce a 2018 reboot of DOUBLE DARE with new content; all promoted by (vi) extensive social media advertising."

The Board noted that "[i]t is not the law that 'the slightest cessation of use causes a trademark to roll free, like a fumbled football, so that it may be pounced on by any alert opponent.'" The Board look[s] at the evidence as a whole, "as if each piece of evidence were part of a puzzle to be fitted together."


Opposer has adduced evidence of its sequentially overlapping layers of use in a variety of formats, all reasonably calculated to convey to its audience that each is part of a continuing series of the same show: DOUBLE DARE. Rather than presenting contravening facts, Applicant attempts to dissect Opposer’s evidence. Yet despite these attempts, Opposer’s evidence of prior use, taken in its entirety, “stands unrebutted.”

Armstrong also argued that the mark DOUBLE DARE had lost its trademark significance or had become generic, and that residual goodwill without use did not equate to trademark rights. The Board, however, found that DOUBLE DARE did not lose its trademark significance.

Clearly, DOUBLE DARE is still widely recognized as the mark of Opposer’s children’s game show. As the evidence indicates, viewers have enjoyed DOUBLE DARE over the years through a variety of media—from television and cable to downloading and streaming to live events. The occasional third-party variants or parodies have not diminished this association. The numerous unsolicited press mentions of DOUBLE DARE may not have created Opposer’s trademark rights, but they do evince the continued public recognition of Opposer’s mark. And the surveys, particularly the 2018 survey, corroborate the public’s continued recognition: over a third of that survey population had seen the DOUBLE DARE show, nearly all of that group remembered enjoying the show, which had cross-generational appeal, and nearly nine out of ten said they would tune in for a reboot.

The Board concluded that, since Viacom enjoyed priority for the identical marks, and since the services overlap, confusion is inevitable. And so, it sustained the opposition.


Read comments and post your comment here.

TTABlogger comment:  For more on residual goodwill see Gilson and Lalonde, "The Zombie Trademark: A Windfall and a Pitfall," 98 Trademark Reporter 1280 (November-December 2008) [pdf here].

Text Copyright John L. Welch 2022.

2 Comments:

At 12:09 PM, Anonymous Anonymous said...

If continued presence on the internet and residual consumer impressions are evidence that a proprietor has not abandoned a mark, then we may be entering an age where abandonment is nearly impossible.

 
At 5:34 PM, Anonymous Anne Gilson LaLonde said...

I've never seen the Board or a court use the phrases "nonuse abandonment" and "misuse abandonment" before. "Nonuse" occurs when a mark is discontinued with the intent not to resume such use. "Misuse" occurs when the mark becomes generic or otherwise loses its trademark significance. (While nicely parallel to "nonuse," the active term "misuse" seems inapt because a mark can become generic and thus abandoned through "acts of omission as well as commission." 15 U.S.C. §1127. Maybe "abandonment by loss of distinctiveness" would be better, if clunky?)

The applicant’s "nonuse abandonment" claim failed because it had not actually discontinued use of its mark – there were reruns, multiple live shows, a reunion special, digital downloads with rising annual sales.

The Board seems to say that the applicant’s "misuse abandonment" claim failed because the mark had residual goodwill. That is, consumers still associated the mark with a particular source and therefore it had not become generic. But that’s not quite right. Though there’s nostalgia involved for this show, that doesn’t make the goodwill "residual." Residual goodwill can only exist if the mark is abandoned from nonuse. It’s what’s left over after abandonment, it’s post-abandonment consumer association with a mark. The Board found that this mark wasn’t abandoned from nonuse; it was still in use. So there’s plain old goodwill, not residual goodwill.

 

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