Best of 2012: Hardball at the TTAB

Originally posted 2012-12-27 06:00:00. Republished by Blog Post Promoter

First posted on October 29, 2012.

Far be it from me to put words into the mouth of John Welch, whose powers of expression are more than adequate to make the point, but it does seem that John is, in this case he reports on today at the TTABlog, taken aback at some recent litigation at the TTAB:

Pro se Applicant Brick City 21 applied to register the mark shown below left for various clothing items. Great White Shark opposed, claiming likelihood of confusion with its registered design mark (the “Greg Norman logo”) shown below right, for overlapping clothing items. Great White filed a motion for partial summary judgment on the issues of standing and priority, and on two of the du Pont factors: the similarity of the goods and the similarity of the channels of trade and classes of customers. The Board granted the motion. Great White Shark Enterprises, Inc.. v. Brick City 21 LLC, Opposition No. 91201911 (October 12, 2012) [not precedential].

. . . The Board . . . granted partial summary judgment on these four issues, leaving for another day the critical issue: are these two marks similar enough for Section 2(d) purposes [link added by LOC]?

TTABlog comment: Is this a case of bullying by Great White Shark? Do you think the marks are close enough to cause confusion? If you didn’t think so, would you try to show your shark’s strength, so to speak, by filing a motion for summary judgment on these four issues? Even though you will surely prevail on these “slam dunk” issues anyway? Why spend the time and effort on a partial summary judgment motion instead of waiting for the final denouement? Is it because you hope that a partial victory on summary judgment will intimidate the Applicant into submission?

Let’s not kid ourselves, this is the way the game is played at the TTAB. Is this trademark bullying? Or just aggressive and appropriate policing of one’s trademark?

Professional Courtesy

Great questions.  Rephrasing John’s question, as I understand it:  Comparing these two marks, the LIKELIHOOD OF CONFUSION analysis seems like a pretty long stretch.  Because they’re not likely to be confused.  They have more distinguishing them than they have in common.

What do they have in common? Sharkiness, ironically — considering the extent to which the “shark” concept is applied to people in John’s and my line of work.

Essentially, Great White is asserting the position, sub rosa, that it is entitled to exclusive use of any shark-related trademark on clothing.   That’s not a legally supportable position.  If it succeeded, such a tack would go beyond what some have suggested is a dilution-like extension of famous trademark rights to 2(d) registration rejections.  Regardless of how you view that phenomenon, it proceeds only along the axis of which goods and services may be deemed covered by an extant registration for 2(d) purposes.  That would be a problem, though, as I argue in the link, it’s probably not what happened in the BENNY GOODMAN® decision.

No, this approach is more troubling, because if successful, it  would amount to a broad, and essentially indefensible, extension along the core LIKELIHOOD OF CONFUSION axis itself: The definition not merely of what goods a trademark stands for, but how broadly arbitrary concepts embodied in a trademark (i.e., “sharkiness” in clothing) will be handed over to a senior or famous user as an essentially proprietary right.

Is this, then, trademark bullying?   Classically, yes, at least as I define trademark bullying, which is as:

an ‘enforcement program’ designed not only to protect . . . legitimate rights, but to establish a buffer zone of illegitimate, intimidation-based quasi-rights that have a very real effect because it is never economically rational to test them in court. Such a buffer zone establishes a zone of litigation-based (not legal-based, litigation-based) early warning triggers around the real rights, such that any purported infringer of the trademark – even a party making a protected fair use of the . . .  mark – would have to traverse the hopelessly expensive no-man’s land of illegitimate litigation threats to establish his defense.

That is, as John is pointing out, exactly what Great White seems to have done here.  It is lawfully, and ethically, marching through its procedural options against a pro se opponent, making entirely legitimate use of the TTAB rules that permit a party to seek and achieve partial summary judgment on issues amenable to such adjudication… all in the service of a trademark claim that is, at its core, very questionable.  It is so questionable, in fact, that — like trademark bullies Intel regarding (regarding the English word “intel”) and the NFL (regarding fair use of the trademark SUPER BOWL®) — Great White is employing a technique meant to make encroachment onto its would-be buffer-zone of trademark penumbras too costly to contemplate or defend.

Pretty sharp lawyering.