Rock On, Says TTAB in Precedential ACR
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In a case that illustrates the efficiency of the Trademark Trial and Appeal Board's (TTAB) Accelerated Case Resolution (ACR) procedure, the Board sustained a likelihood of confusion opposition to the mark Black Men Rock and related design for "caps, hats, jackets, t-shirts" as well as for "education services, namely, providing live and on-line classes, seminars, workshops in the field of personal development."
ACR is an expedited alternative to a traditional TTAB inter partes proceeding involving full discovery, trial, and briefing. To take advantage of it, both parties must stipulate that the Board may resolve any genuine disputes of material fact in the context of something less than a full trial.
In a precedential ruling in Beverly A. Bond v. Michael Taylor, Opposition No. 91213606 (June 16, 2016), the Board found the mark Black Men Rock was likely to cause confusion with the registered mark Black Girls Rock! for "tee shirts and charitable services, namely organizing volunteer programs for at-risk teenage women of color" and for "entertainment, namely, a continuing award show broadcast over television; arranging and conducting of concerts; and entertainment services in the nature of live musical performances."
Both parties had filed motions for summary judgment that were unsuccessful, leading the Board to encourage them to stipulate via the ACR procedure that the Board could resolve the proceeding on the basis of the summary judgment record.
In November 2015, the disputants agreed to use ACR. The Board approved the parties’ stipulation that they would rely upon the evidence submitted in connection with the two previously filed motions for summary judgment, and any supplemental declarations. It also approved that they could supplement their previously filed briefs on the motion for summary judgment, but would limit any supplemental briefs to ten pages; stipulated that they forgo reply briefing; declared that the burden of proof to establish opposer Bond’s case by a preponderance of the evidence remained on Bond; and that it, the Board, could resolve disputes as to any material fact which the Board might find to exist and could issue a final ruling after considering the parties’ ACR submissions.
In this case, the parties’ goods were in part identical, and as such were presumed to travel in the same channels of trade and be sold to the same classes of purchasers.
As to the parties’ services, the Board held that Bond's charitable services were related to Taylor's educational services. The Board noted that Taylor's recitation of services was not limited to "black men," and could be rendered to "black girls." In addition, Bond testified that men participated in her programs. However, the Board found the evidence insufficient to prove that the services of the parties were offered in the same trade channels.
As for the marks themselves, the Board held that while there were differences, their general connotations and commercial impressions were similar and the similarities outweighed the differences.
In the Board’s opinion, both parties’ marks imply that the subjects of the services—that is, black girls and black men, respectively—are "very good, impressive, or exciting." Thus, the Board concluded that the parties’ marks suggested that their respective programs improve the self-images of the participants.
This conclusion was supported by the fact that the design in the Black Men Rockmark, the silhouette of a man with his arms outstretched in a sign of victory, and the exclamation point in the Black Girls Rock! mark both emphasized the positive outcome that the parties’ programs hoped to have on participants.
With that, the Board concluded that confusion between the parties’ marks was likely, and sustained the opposition, just short of seven months after the parties agreed to the ACR procedure.
Even though there is a requirement for parties to discuss in their settlement and discovery planning conference the possible use of ACR, the program is seldom used because it requires both sides to agree to a number of limitations—and opposers and applicants rarely agree.
In a case like this, where the real question seems to come down to whether the Board thinks the marks themselves are confusingly similar, it makes sense to pursue ACR. The procedure offers parties a potentially more efficient and economical alternative to traditional discovery, trial and briefing, with cost-savings resulting from the reduced time spent by counsel and client preparing to prosecute or defend the case. When facts are stipulated, no time is spent proving them.
While ACR cannot be of assistance in very contentious or complicated cases, the Board is willing to consider almost any sort of claim under the program. It will be interesting to see if trademark owners and their attorneys begin pursuing the option more routinely.
Reprinted with permission from the February 2, 2017 edition of Inside Counsel© 2017 ALM Media Properties, LLC. All rights reserved. Further duplication without permission is prohibited, contact 877-257-3382 or firstname.lastname@example.org.