Articles Posted in Famous Trademarks

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In a recent case decided in November 2019, the Trademark Trial and Appeal Board (the “Board” or the “TTAB”) sustained an opposition filed by Baccarat S.A. on various grounds including likelihood of confusion. The applicant was seeking to register the mark BACCARAT in standard characters for alcoholic beverages, namely vodka. Baccarat (“opposer”) pleaded ownership of 20 of its registrations for the mark BACCARAT, some of the goods included, crystal, glasses, cups, vases, decanters, carafes, champagne buckets, jewelry, candle sticks, and tea pots. Since the Opposer pleaded its registrations, priority was not at issue. See our blog post entitled, How Fame Impacts A Likelihood Of Confusion Determination, for an earlier decision on this topic.

The Board reviewed the DuPont factors, and pointed out that if fame exists it plays a dominant role in the likelihood of confusion analysis because famous marks enjoy a broad scope of protection and exclusivity of use. See our webpage entitled, Famous Trademarks Receive A Broader Scope of Protection, for more information on this topic. The Board discussed how fame is determined. It stated that fame could be measured indirectly by the volume of sales and advertising expenditures for the goods and services identified by the mark at issue, and by the recognition received by independent sources, such as unsolicited media coverage. Also, important is the length of time the mark has been used for the relevant goods or services, and the general reputation of the goods and services. The numbers for sales, advertising and market share should be put into perspective by comparing the statistics to similar goods or services.

Opposer placed evidence into the record showing its predecessors-in-interest started producing glass products in 1764 in France and by 1892 had an import agency in New York. Production of glassware and other goods under the BACCARAT mark continued into current times. Sales figures were introduced that showed from the year 2000-2017 sales of BACCARAT branded goods and services totaled $458,430,809. Advertising figures demonstrated that from the years 2005-2017 $33,996,270 was spent to market its goods and services. The opposer advertises its branded goods in top magazines and newspapers such as Vanity Fair, Architectural Digest, The New York Times, The Los Angeles Times, and Forbes magazine.

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Applicant was refused registration for two marks: (1) JAWS in standard characters and (2) JAWS DEVOUR YOUR HUNGER in standard characters. The services identified in the trademark applications were entertainment services, namely the streaming of audiovisual material via an Internet channel providing programming related to cooking. The Examining Attorney refused registration based on Section 2(d) of the Trademark Act, stating that Applicant’s marks too closely resembled Registrant’s mark JAWS for video recordings in all formats all featuring motion pictures. See In re Mr. Recipe, LLC, 118 USPQ2d 1084 (TTAB 2016) [precedential].

As in any likelihood of confusion analysis, the starting point is the similarities of the marks and the relatedness of the goods and services. Two marks will be found to be confusingly similar if there are sufficient similarities in visual appearance, sounds, meanings, and overall commercial impressions. If a consumer believes that there would be a connection between the parties, this will favor finding a likelihood of confusion. The Trademark Trial and Appeal Board (the “Board”) determined the marks weighed in favor of finding likelihood of confusion.

With regard to the services, the Applicant identifies streaming of audiovisual material, but restricts the  subject matter to cooking. The Registrant’s goods for motion pictures do not contain a restriction. Therefore, the subject matter of Registrant’s movies could feature cooking. The Examining Attorney introduced 41 third-party registrations offering both video recordings and streaming video services. Since the registrations are based on use in commerce, they carry some probative weight for demonstrating that the goods and services may emanate from the same source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). Applicant failed to submit evidence to contradict this point. The Applicant should have introduced evidence pertaining to the number of registrations for motion pictures and the number for services for streaming audiovisual material to demonstrate that there was a minimal overlap.

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Since 2009 the Yankees have been fighting to block several trademarks that were intended to parody two of their own trademarks and on May 8, 2015 they succeeded. IET Products and Services Inc. (“Applicant”) filed two applications with the United States Patent & Trademark Office (“USPTO”) seeking to register the slogan THE HOUSE THAT JUICE BUILT for T-shirts, baseball caps, hats, jackets, sweatshirts, and mugs. New York Yankees Partnership (“Opposer” or the “Yankees”) filed an opposition with the Trademark Trial and Appeal Board (“Board”) based on three grounds. The Applicant also attempted to register a design logo that includes a patriotic (red white and blue) top hat similar to the one utilized in the Yankees famous logo, but replaces the baseball bat with a syringe. Compare the Yankees logo USPTO Yankees Trademark with the proposed design mark of the Applicant http://tsdr.uspto.gov/documentviewer.

The first ground asserted by Opposer was that the Applicant’s marks would cause a likelihood of confusion with Opposer’s registration for the mark THE HOUSE THAT RUTH BUILT and with their famous design logo (red white and blue top hat with baseball hat). The second ground was that Applicant’s proposed marks would likely cause dilution of its marks by blurring pursuant to Trademark Act Section 43(c). Lastly the Opposer alleged that the Applicant’s marks would falsely suggest an association with its New York Yankees Major League Baseball Club pursuant to Section 2(a) of the Trademark Act. Regarding the design logo mark, the Applicant’s intent was to communicate that steriods acted as a player on the Yankee Baseball team. The Board dismissed the Applicant’s three trademark applications on the ground that the proposed marks diluted the fame of the Yankee’s registrations.

The Board determined that both marks of the Yankees, THE HOUSE THAT RUTH BUILT and the Yankee design logo of the patriotic top hat with baseball bat were legally famous marks for the purposes of the dilution claim. See New York Yankees Partnership v. IET Products and Services Inc., Opposition No. 91189692 (TTAB May 2015). The Opposer satisfied the more stringent definition of “fame” for dilution purposes as compared to the lesser degree of “fame” required for likelihood of confusion purposes. See In Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713 (Fed. Cir. 2012), where the Court of Appeals for the Federal Circuit held that the following elements are necessary to prevail on a claim of dilution by blurring:

(1) The plaintiff must own a famous mark that is distinctive;

(2) The defendant uses the mark in commerce and it allegedly dilutes the plaintiff’s famous mark;

(3) The defendant’s use of its mark must begin after the plaintiff’s mark becomes famous; and

(4) The defendant’s use of its mark is likely to cause dilution by blurring or by tarnishment.

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McSweet LLC (“Applicant”) filed two trademark applications to register the mark MCSWEET for “pickled gourmet vegetables, namely, pickled cocktail onions, pickled garlic, and pickled, marinated olive medley” and “pickled asparagus.” (the amended identification). McDonald’s Corporation (“Opposer”) opposed both trademark applications on the grounds of likelihood of confusion, dilution, and lack of ownership. Opposer based its oppositions on the allegations that it owns a family of trademarks that include the prefix “MC” followed by another term that is either descriptive or generic. McDonald’s also alleged that its “MCDONALD’S” mark and its family of “MC” marks are famous. Some of its “MC” registrations include: MC for restaurant services; MCDONALD’S for restaurant services; MC CHICKEN; MC DOUBLE; MCRIB; MCMUFFIN; MCNUGGETS; MCFLURRY; MCGRIDDLES; MCCAFE; and MCSKILLET for various food products and beverages. See McDonald’s Corp. v. McSweet, LLC, 112 USPQ2d 1268 (TTAB 2014) [precedential].

In terms of priority, Opposer has been using the mark MCDONALD’S for restaurant services since 1955. In addition, the Opposer has been using variations of the “MC” formative mark in connection with food, restaurant services, and merchandising since 1973. Applicant has been using its mark MCSWEET for pickled vegetables since 2006 and is now seeking to expand the use of the mark on the goods listed above. Based on these facts, priority was not at issue in the proceedings. However, the Trademark Trial and Appeal Board (the “Board”) had to determine if the Opposer owned a “family of marks” and if a family of marks did exist was that family of marks legally “famous”.

The Federal Circuit has defined a family of marks as a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family, with the trademark owner. Opposer currently uses all of the registrations listed above in paragraph one. According to witnesses, the Opposer’s efforts to establish a family of marks has been so successful that consumers use the MC prefix to refer to all of the Opposer’s food and beverage products. In addition, the Opposer has invested substantial resources in promoting the MC formative marks. McDonald’s operates 14,000 restaurants across the United States that collectively serve 26 million people. The Board concluded that the Opposer owns a family of marks consisting of the prefix “MC” and this weighs in favor of finding a likelihood of confusion.

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Chanel, Inc. (“Opposer” or “Chanel”) filed an Opposition proceeding against an individual applicant Jerzy Makarczyk (“Applicant”) who filed to register the mark CHANEL. The Applicant was interested in protecting the mark CHANEL for real estate development and construction of commercial, residential, and hotel properties in International Class 37. Chanel opposed the application on the grounds of dilution by blurring under §43(c) of the Trademark Act, 15 U.S.C. §1152(a), likelihood of confusion, and false suggestion of a connection under the Trademark Act. Opposer uses the CHANEL mark on a variety of  goods, including but not limited to apparel, jewelry, sunglasses, perfume, and cosmetics. And also for retail store services in the field of clothing and accessories. The Trademark Trial and Appeal Board (“TTAB” or “Board”) did not reach the issues of likelihood of confusion or false suggestion of a connection under the Trademark Act. See Chanel, Inc. v. Jerzy Makarczyk, Opposition No. 91208352 (May 27, 2014)[precedential].

The Trademark Act Sections 13 and 43(c) (15 U.S.C. §§ 1063 and 1125(c)) provide a cause of action for dilution. Dilution by blurring is an association arising from a similarity between a trademark or trade name and a famous mark that impairs the distinctiveness of the famous trademark. The Court of Appeals for the Federal Circuit set forth four elements a plaintiff must prove in order to succeed on this type of claim in a Board proceeding:

(1)   Plaintiff’s trademark must be “famous” and “distinctive”;

(2)   Defendant must be using a mark in commerce that allegedly is diluting the Plaintiff’s famous mark;

(3)   The Defendant’s use of the trademark must have begun after the Plaintiff’s mark became famous; and

(4)   The Defendant’s use is likely to cause dilution by blurring.

This standard was set forth in Coach Services, Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1723-1724 (Fed. Cir. 2012). To address the first element, the following factors must be reviewed: (1) the duration, extent, and reach of the brand’s advertising and publicity; (2) the amount, volume, and extent of sales or services;  and (3) the extent of actual recognition of the trademark (wide spread recognition by the general public is required). Proving the level of fame required for a dilution claim is a high standard and the opposer has the burden of proof. See our blog post entitled TTAB Precedent – How Fame Impacts A Likelihood Of Confusion Determination, to compare the requirements for a fame showing under different standards.  Another way to determine if a mark is “famous” for dilution purposes is to answer this question in the affirmative, if the general public encounters the trademark, will it associate the trademark with the mark’s owner?

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