New York Trademark Attorney Blog
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.
Regarding the issue of fame, the Board noted that if it exists, it plays a dominant role in deciding likelihood of confusion. Famous trademarks are entitled to a broad scope of protection. The Board typically does not expect Examining Attorneys to produce evidence of fame in an ex parte proceeding. However, here the Examiner did produce evidence that the movie JAWS is well known and has become the standard for summer blockbusters. The Examining Attorney submitted excerpts from certain websites discussing the fame of the JAWS movie. One website quoted the TV GUIDE review calling it a “megahit” and “phenomenally successful”. Another website inferred that it was the greatest movie of all times. Even the Encyclopedia Britannica praised the JAWS movie stating it was one of the highest-grossing movies of all time. The Board stated that this type of Internet evidence is probative of the author’s perception and of the content received by the readers and users of the various websites. Applicant did not contest the Internet evidence for purposes of demonstrating fame. The Board concluded that the mark is famous for video recordings in all formats featuring motion pictures. Therefore, the du Pont factor of fame favors refusing the Applicant’s marks.
The next du Pont factor reviewed was the number and nature of similar marks on similar goods. The applicant only produced evidence of one registered mark, JAW BRANDING for audio and video recording services. The Applicant failed to submit evidence of actual use for this registration. Therefore, one third-party registration has little probative value, especially in the absence of evidence that the mark is in use on a commercial scale or that the public has become familiar with it. This is not sufficient evidence to determine that the mark is diluted for purposes of assessing the strength of the mark. The Applicant also referenced five applications, but pending applications are not probative on this issue because it does not constitute evidence of use of the mark.
In conclusion, the Board held that based on review of all the du Pont factors and the finding that the Registrant’s mark JAWS was “famous”, likelihood of confusion existed between the marks. Even though the Applicant limited its streaming services to subject matters featuring cooking, based on the Registrant’s broad description of goods, his movies could also feature cooking. The Board noted the Applicant could attempt to acquire consent from the Registrant to overcome the refusal. If you have questions, regarding a trademark refusal and how to overcome the refusal, please feel free to contact our office for a courtesy consultation.