Wednesday, April 20, 2022

TTABlog Test: Are Distilled Spirits and Lottery Services Related for Section 2(d) Purposes?

The Texas State Lottery Commission opposed an application to register the mark TEXAS TWO STEP for "distilled spirits," claiming a likelihood of confusion with, and likelihood of dilution by tarnishment of, its registered marks TEXAS TWO STEP in standard character form and TEXAS TWO STEP TEXAS LOTTERY and design. The Board found the proposed mark to be identical to registrant's word mark and highly similar to its word-plus-design mark. The Lottery contended that lottery tickets and distilled spirits are both sold in grocery stores, convenience stores, and gas stations, leading to confused customers. Moreover, it claimed that its marks are famous. Applicant Ansari did not submit any testimony or evidence. How do you think this came out? Texas Lottery Commission v. Ali Ansari, Opposition No. 91264107 (April 18, 2022) [not precedential] (Opinion by Judge Melanye K. Johnson).

Unfortunately for the Lottery, its proofs amounted to a no-step rather than a two-step. It submitted only a handful of documents and no testimony. It did not provide any evidence for its claim that distilled spirits are sold where lottery services are offered, nor did it provide any third party evidence showing that spirits and lottery services are offered at the same retail location. Nor did the Lottery submit any third-party registrations covering both.

Without supporting evidence, we cannot find on this record, and are loath to presume, that any of the retailers listed in the search results of the Texas Lottery webpage printout offer "distilled spirits." "Attorney argument is no substitute for evidence."

The Board concluded that the second and third DuPont factors weighed against a finding of likely confusion, and so it dismissed the Section 2(d) claim, noting that on a more fully developed record, the result might have been different,

As to the dilution claim, the Lottery failed to provide any supporting evidence.

[T]here is no evidence in the record showing that Applicant has begun to use his mark. On this record, we decline to presume that Opposer has made a sufficient showing of any of the factors necessary for it to prevail on its dilution claim, for “[a]ttorney argument is no substitute for evidence.” 

And so, the Board dismissed the dilution claim.

Read comments and post your comment here.

TTABlogger comment: What a fiasco! I guess one could say, Don't Mess with Ali Ansari.

Text Copyright John L. Welch 2022.


At 12:53 PM, Anonymous Anonymous said...

So cringy...I guess the lesson of the day here is that you still have to prove your case (i.e., provide evidence) even with a non-responsive defendant. The NOR is basic TTAB procedure, so I am not sure what this guy was thinking.


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