Friday, June 03, 2022

TTABlog Test: Are Entertainment Services and Clothing Related for Section 2(d) Purposes?

[Here is the 100th TTAB decision this year in a Section 2(d) appeal. So far the Board has reversed four of the refusals.] The USPTO refused to register the mark THE NOMADIC MOVEMENT for entertainment services featuring travel and sustainable living, finding confusion likely with the registered mark NOMADIC MOVEMENT for "Headwear; Headwear, namely, hats and caps; Hoodies; Shorts; T-shirts; Tank tops; Hooded sweat shirts." How do you think this appeal came out? In re Jordan Saglio, Serial No. 88593965 (May 31, 2022) [not precedential] (Opinion by Judge Peter W. Cataldo).


The Marks: The word THE is "generally not significant in distinguishing one mark from another." Applicant Saglio argued that NOMADIC MOVEMENT connotes roaming from place to place, whereas THE NOMADIC MOVEMENT connotes the advancement of a shared idea of abandoning traditional home and work like for mobile, technology-based life anywhere. The Board noted, however, that there was no evidence of record to support a finding that addition of the word THE has such an impact on the connotations of applicant's mark. Moreover, even if the marks have different connotations, the similarity in appearance and sound would still strongly support a finding of likely confusion.

The Goods and Services: Examining Attorney Marlene Bell submitted evidence of third-party use of the same mark and trade name to identify the source of entertainment services and clothing: NINJA KIDZ!, THE PACK, DOCTOR WHO, GAME OF THRONES, SQUID GAME, NATIONAL GEOGRAPHIC, and SMITHSONIAN. She also submitted thirty use-based registrations covering both clothing and entertainment services.

Applicant Saglio argued that the Examining Attorney's rationale would prevent use of any mark similar to a clothing brand, for any goods, because mark holders typically use their marks on apparel for promotional purposes. The Board pointed out that here the evidence showed the current licensing and marketing practices of providing ancillary goods as tie-ins to entertainment services).

Channels of Trade: Applicant Saglio attempted to distinguish the actual channels of trade, but there were no limitations in the application or cited registration as to trade channels, and so the Board must presume that the involved services and goods travel in all normal channels. Moreover, the evidence established at least on common trade channel: websites of entertainment outlets and content producers who also market promotional clothing items.

Conclusion: Finding confusion likely, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Did anyone ever make a movie as a tie-in to a t-shirt or hoodie?

Text Copyright John L. Welch 2022.

4 Comments:

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

Is it even possible to clear an apparel mark? What kind of industry does not promote itself with a hat or t-shirt even if only in the employee store. Why should it carry more weight when they bother to register their trademarks for those goods? There needs to be a new Class for "I'm a REAL apparel company"

 
At 11:39 AM, Anonymous Lou Ebling said...

What Gene said. What goods/services aren't considered related by the Board these days? Apparently, underpants and fertilizer are related . . . there are nearly 20 active registrations identifying both items. Who woulda thunk it?

 
At 12:29 PM, Anonymous Anonymous said...

TTAB UNWRITTEN RULE (except in every case involving clothing).

EVERYTHING IS RELATED TO CLOTHING. I even wrote an ex parte brief going through the TTAB robotic code analysis - likelihood of confusion between a clothing mark and a video game and associated comic book where the product was no longer available for over 10 years, half of the USPTO marks already were cancelled under Section 8, wikipedia evidence that the online game was shut down years ago.

Nope. Marvel, DC, DIsney, Pixar all make clothing with their characters (I never owned Superman underwear and I will signa Declaration under penalty of perjury) and sell comic books or graphic novels, so, because they do (the old WALMART sells everything thus the products are related), LoC. Q.E.D.

I basically wrote their decision in my brief. The TTAB did not get the sarcasm because, robots don't think, they follow coded instructions.

I like that finally the Examining Attorneys are finally issuing "failure to function" with common phrases and rejecting mock-up tags and labels with the phrase on it as specimens.

So, hope springs eternal.

 
At 4:49 PM, Anonymous Anonymous said...

This case law is nutty. Everything is related if the examining attorney shows other companies offers similar goods and/or services. I predicted this law would become a slippery slope and seems like this nonsense is getting out of control. So what should this law be replaced with? I now ask the other attorneys what law should replace that relatedness evidence?

 

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