In the context of an ex parte proceeding on likelihood of confusion in a trademark case, the oft-cited and now canonical DuPont factors first articulated in 1973 are almost always invoked. However, as I've noted in previous pieces in this space, fame is not often a factor in the DuPont analysis, due to lack of evidence.

But fame is unavoidable, I guess, if you're a 30-foot human-chomping great white shark lurking off the coast of Montauk whose biopic was created by Stephen Spielberg and named Jaws.

Certainly that was so in the Trademark Trial and Appeal Board's precedential ruling in In re Mr. Recipe, LLC on March 18 of this year (TTAB Serial Nos. 86/040,643 and 86/040,656).

The Board affirmed a USPTO examiner's refusals to register the marks JAWS and JAWS DEVOUR YOUR HUNGER for a cooking show. The examining attorney relied for the refusals on various websites that proclaim Jaws to be one of the best movies of all time. And the Board agreed that the examiner had demonstrated successfully that the movie remains so well-known that the marks were likely to cause confusion with the registered marks Jaws for motion pictures.

But like a meal not fully cooked, the ruling ends up being unsatisfying. The Board allowed the examiner to depend for the refusals of the marks for a cooking show on the renown of what is, let's face it, a fictional shark in a popular movie. The argument for confusion when extended to a television cooking show leaves us feeling a little, well, empty.

While the Board immediately recognized the hearsay implications of the examiner's evidence, it observed that the U.S. Court of Appeals for the Federal Circuit had previously approved the use of Internet evidence in ex parte proceedings regardless.

Mr. Recipe (a name I admit I thoroughly enjoy) admitted that Jaws was a well-known film. (Had "he" not, the court surely would have eaten Mr. Recipe alive.) But the applicant argued that the examiner's evidence showed, at most, niche fame for that 40-year-old thriller about a shark, and that such evidence was insufficient to establish fame for likelihood of confusion purposes.

The Board disagreed. It noted that Jaws was not just the name of a single movie, but a series of movies, leading it to conclude that Jaws is and was famous as the source identifier for said series. It went on to explain that although the argument of film and its sequels' only having niche fame may serve to counter a showing of fame in the context of claiming trademark dilution, it does not apply in the context of likelihood of confusion.The Board noted that the evidence shows that the film Jaws has permeated into general culture, including having been parodied by other filmmakers; and that its fame is not limited to subject matter such that it would be confined to a niche level of fame.

As readers who've followed by columns in this space will remember, the fame of a cited mark alone is not enough to establish a likelihood of confusion. The applicant seized on this and argued that a single third-party registration for the mark Jaws for movies, without proof of the extent of use, should carry little probative weight in the Board's likelihood of confusion determination.

As for the involved marks, the applicant admitted that they are similar. Not surprisingly, the Board agreed. Moreover, it found the word Jaws to be the dominant element of the applicant's mark because it was the first word in the mark and was the subject of the slogan JAWS DEVOUR YOUR HUNGER. In addition, the Board noted that the applicant's mark was filed in block letters, meaning that it was not limited to any particular depiction. The applicant could, for example, emphasize the word Jaws while downplaying the remainder of the mark.

The applicant argued that its slogan mark suggests a clear connection with food, which the cited mark did not convey. The Board rejected that, explaining that because of the fame of the registrant's Jaws mark, the shark's reputation as having a voracious appetite, and the applicant's standard character form application, the applicant's mark is just as likely to engender a commercial impression of the registrant's shark as of an appetite to be satisfied.

Although the applicant's services were limited to the subject of cooking, the cited registration was not limited and could encompass videos that may feature cooking. To support this conclusion, the USPTO's examiner submitted over 40 third-party use-based registrations that cover both video streaming and video recordings. Mr. Recipe did not submit any evidence to support its claim regarding the lack of relationship between the goods and services. Therefore, it was not a far stretch for the Board to conclude that the fame of the registrant's mark was sufficient to broaden the scope of protection to encompass such differences.

As I noted above, it's questionable whether the USPTO's examiner should have been allowed by the Board to introduce evidence of renown of the registered mark, which is not part of the registration, while at the same time being allowed to overlook the fact that, when used, the Jaws registrations always relate to sharks, not cooking.

Yes, something, or someone, is eating or being eaten. But as a result of the Board's allowing this evidence—and mindful of the reality that in common culture, the word jaws and the Spielberg movie and its sequels truly have become indissolubly intertwined—one could argue that the examiner was really rejecting the application based more on a principle of dilution of the Jaws mark as opposed to confusion with it.

So, I wonder: Should the examiner have allowed the application and let the owner of the Jaws registration oppose it? Would that have been the better practice? At some point, I am guessing, there might be a sequel here, too, and the owner of a mark will take a bite out of this holding.

Reprinted with permission from the June 1, 2016 edition of Inside Counsel© 2016 ALM Media Properties, LLC. All rights reserved. Further duplication without permission is prohibited, contact 877-257-3382 or reprints@alm.com.

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