John P. Avlonv.DeMarcus J. FreemonDownload PDFTrademark Trial and Appeal BoardMay 10, 2013No. 91194679 (T.T.A.B. May. 10, 2013) Copy Citation Mailed: May 10, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ______ Avlon v. Freemon _____ Opposition No. 91194679 to application Serial No. 77514179, filed on July 3, 2008 _____ Carol A. Genis and Robert J. Barz of K&L Gates LLP for John P. Avlon. Herbert T. Patty of the Law Office of Herbert T. Patty for DeMarcus J. Freemon. ______ Before, Zervas, Bergsman and Greenbaum, Administrative Trademark Judges. Opinion by Zervas, Administrative Trademark Judge: DeMarcus J. Freemon (“applicant”), is the owner of an application for registration on the Principal Register of the mark THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opposition No. 91194679 2 for “publication of electronic magazines, blogs, articles, and interactive literary forums” in International Class 41. John P. Avlon (“opposer”), opposes registration of applicant’s mark alleging, inter alia, that he has used INDEPENDENT NATION as a mark in commerce since at least as early as 2004 in (i) advertising and promoting a book entitled “INDEPENDENT NATION” with the tagline “How Centrists Can Change American Politics;” (ii) providing a website featuring information and articles, a blog and an online forum, all in the field of news, politics, media, social issues, public affairs and entertainment; (iii) providing an Internet news portal featuring links to news stories and articles in the field of current events; and (iv) providing an on-line community for registered users to participate in discussions, get feedback from their peers, form virtual communities and engage in social networking. Opposer specifically alleges that his mark “has acquired secondary meaning as used in connection with Opposer’s Opposition No. 91194679 3 book.” ¶ 6, Notice of Opp. As a ground for opposition, opposer alleges that use of applicant’s mark would be likely to cause confusion with opposer’s mark. Applicant filed an answer which denied the salient allegations of the original notice of opposition and raised several affirmative defenses including the doctrines of estoppel and acquiescence. Because applicant did not pursue these affirmative defenses in his trial brief, we consider them to have been waived by applicant. The Record In addition to the pleadings, the file of the opposed application is part of the record without any action by the parties. Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b). Opposer introduced four notices of reliance submitting the following into evidence: filings from two of opposer’s trademark applications for INDEPENDENT NATION filed subsequent to applicant’s application; various printed publications; various webpages;1 applicant’s responses to opposer’s first set of requests for admissions and first set of interrogatories; and applicant’s response to opposer’s first set of document requests, which essentially states that applicant has no responsive documents. In addition, 1 Many of the webpages were also submitted as exhibits to opposer’s testimonial deposition. The submission of the same exhibit as a deposition exhibit and as part of a notice of reliance serves no useful purpose. The Board does not want or need multiple copies of trial evidence. Opposition No. 91194679 4 opposer submitted his testimonial deposition with exhibits. Applicant’s attorney did not attend the deposition.2 Applicant in turn introduced a first notice of reliance on various webpages and a transcript of an interview of opposer on “The Daily Show” with Jon Stewart (dated April 13, 2005). Although the transcript does not indicate its source and merely comprises a collection of pages, we consider the transcript because opposer has not objected to its admission into evidence. Opposer's Standing “Any person who believes that he would be damaged by the registration of a mark upon the principal register … may, file an opposition … stating the grounds therefor.” Section 13 of the Trademark Act of 1946, 15 U.S.C. § 1063(a). Thus, a party has standing to oppose in a Board proceeding if it can demonstrate a real interest in the proceeding. Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982), citing Universal Oil Products Co. v. Rexall Drug and Chemical Co., 463 F.2d 1122, 174 USPQ 458 (CCPA 1972). The evidence reflects that opposer authored a book whose title encompasses or contains INDEPENDENT NATION and uses INDEPENDENT NATION in connection with his webpages and 2 Applicant’s attorney did not participate in the deposition. Opposition No. 91194679 5 as part of an internet address. This is sufficient to demonstrate that opposer has a real interest in this proceeding, and therefore has standing. Priority The question of priority is an issue in this case because opposer has asserted common law rights to the mark INDEPENDENT NATION and does not own an existing registration upon which it can rely under Section 2(d). Cf., King Candy Co., Inc. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). To establish its priority under Section 2(d), opposer must prove that, vis-à-vis applicant, he owns “a mark or trade name previously used in the United States … and not abandoned ….” Applicant, however, may rely on the filing date of his application, which is July 3, 2008. See Trademark Act Section 7(c), 15 U.S.C. §1057(c); and Larami Corp. v. Talk to Me Programs, Inc., 36 USPQ2d 1840 (TTAB 1995). As discussed below, the record reflects that opposer used INDEPENDENT NATION prior to applicant in connection with particular services prior to the filing date of the involved application.3 3 Because opposer is relying on common-law rights, “the decision as to priority is made in accordance with the preponderance of the evidence.” Hydro-Dynamics Inc. v. George Putnam & Co., Inc., 811 F.2d 1470, 1 USPQ2d 1772, 1773 (Fed. Cir. 1987). Opposition No. 91194679 6 Publication of blogs Opposer testified as follows at p. 30 of his testimonial deposition: Q. You've provided since 2004 a website featuring … an on-line journal, namely, a blog featuring information in the field of news, politics, media, social issues, public affairs and entertainment …. You've done that since 2004; is that correct? A. Yes. Q. And it's all under the brand "Independent Nation"; correct? A. Yes. In addition, opposer introduced the following webpage4 (which is not dated, and for which there is no testimony establishing that it appeared prior to the filing date of applicant’s application), which corroborates opposer’s testimony that he has used INDEPENDENT NATION in connection with a blog: 4 Avlon dep., Exhibit 6. Opposition No. 91194679 7 The word “Posts” appears above the columns of text. The evidence establishes that opposer first used INDEPENDENT NATION as a service mark for a blog featuring information in the field of news, politics, media, social issues, public affairs and entertainment, in 2004. See Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana, Inc., 98 USPQ2d 1921 (TTAB 2011), citing National Bank Book Co. v. Leather Crafted Products, Inc., 218 USPQ 826 (TTAB 1993) (oral testimony may be sufficient Opposition No. 91194679 8 to prove the first use of a party's mark when it is based on personal knowledge, it is clear and convincing, and it has not be contradicted); Liqwacon Corp. v. Browning-Ferris Industries, Inc., 203 USPQ 305 (TTAB 1979) (oral testimony may be sufficient to establish both prior use and continuous use when the testimony is proffered by a witness with knowledge of the facts and the testimony is clear, convincing, consistent, and sufficiently circumstantial to convince the Board of its probative value); GAF Corp. v. Anatox Analytical Services, Inc., 192 USPQ 576 (TTAB 1976) (oral testimony may establish prior use when the testimony is clear, consistent, convincing, and uncontradicted). Opposer’s testimony was clear and convincing and it was not contradicted. Interactive literary forum Opposer introduced pages from his independentnation.org website taken from “Waybackmachine” or Internet archive (pages dated March 13, 2004, February 8, 2005, January 6, 2006, January 24, 2007, February 11, 2008 and January 2, 2010, located at pp. 79 – 84 of applicant’s testimony deposition) which each have the following format, in relevant part: Opposition No. 91194679 9 With regard to the link “Forum” on the webpage, opposer testified: A. "The Forum" was set up to be a chat room for people discussing not just the book but the idea of centrists politics and independents in American politics, not just the past, but the present and the future. Q. So that would be an interactive literary forum, wouldn't it? A. That was the intention, yes. In addition, opposer’s webpage at independentnation.org from April 2, 2004 (accessed via the “Waybackmachine”), bears the heading “Welcome to Independent Nation: How the Vital Center is Changing American Politics.”5 Under this heading is “Forum Name” with the following: “Centrists, centrism, and the vital center[,] Moderator: admin[,] A discussion on the vital center in American politics.” 5 Opposer’s third notice of reliance, p. 88. Opposition No. 91194679 10 Applicant argues that “Opposer’s prior use is limited to ‘Independent Nation: How Centrists Can Change American Politics’ (or alternatively ‘Independent Nation: How The Vital Center Is Changing American Politics’),” and not “Independent Nation.”6 We disagree. INDEPENDENT NATION, as used by opposer, creates a separate commercial impression from the “taglines” “How Centrists Can Change American Politics” and “How The Vital Center Is Changing American Politics.” Also, INDEPENDENT NATION is in substantially larger lettering than any tagline, and the tagline explains what opposer’s services relate to, thus functioning not as an indicator of source, but as a descriptive phrase. In addition, it has not escaped our attention that applicant’s identification of services specify that his forum is a “literary” forum. “Literary” is defined as “pertaining to or of the nature of books and writings, especially those classed as literature”; and “literature” is defined as “writings in which expression and form, in connection with ideas of permanent and universal interest, are characteristic or essential features, as poetry, novels, 6 Brief at 13. Opposition No. 91194679 11 history, biography, and essays.”7 Because the opposer’s forum concerns opposer’s book and “idea[s] of centrists politics and independents in American politics,”8 which can be classed as “ideas of permanent and universal interest,” opposer’s forum constitutes a “literary” forum. Thus, we find that opposer established that he first used INDEPENDENT NATION as a service mark for an Internet forum involving at least news, politics, media and public affairs on March 13, 2004. Articles/Internet news portal Opposer testified as follows at p. 30 of his testimonial deposition: Q. You've provided since 2004 a website featuring information and articles in the field of current event[s], news and entertainment … [and] providing an internet news portal featuring links to news stories and articles in the field of current events. You've done that since 2004; is that correct? A. Yes. Q. And it's all under the brand "Independent Nation"; correct? A. Yes. 7 Definitions from dictionary.com at (i) http://dictionary.reference.com/browse/literary?s=t&path=/ and (ii) http://dictionary.reference.com/browse/literature. The Board may take judicial notice of dictionary definitions, including online dictionaries which exist in printed format. See In re CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002). See also University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). 8 Opposer’s dep. at 43. Opposition No. 91194679 12 Further, at p. 58 of his testimonial deposition, opposer testified that he placed articles on his independentnation.org website under the heading “Centrism in the News”; and provided a copy of his webpage, dated April 2, 2004 from “Waybackmachine.”9 The webpage has a list of approximately ten titles of articles, presumably with links to the articles themselves.10 (The articles themselves are not in the record.) At pp. 44 – 45 of his deposition, opposer testified that “Centrism of the News,” “was a collection of articles by other individuals about centrism and independence in American politics. It was sort of a collection of at least a dozen notable articles, probably more, and I would refresh those as significant articles were published by other figures on these same themes and ideas.” Upon the consideration of the evidence, we find that opposer established that he used INDEPENDENT NATION as a service mark for a website featuring information and articles in the field of news, politics, media, social issues, public affairs and entertainment as well as an Internet news portal featuring links to news stories and articles, prior to the filing date of applicant’s application. 9 Avlon dep., Exhibit 9, at p. 97. 10 Examples are “The Man Who Should Be President”, The New York Sun, 3/4/04 and “Waiting for Perot”, The New York Sun, 3/1/04. Opposition No. 91194679 13 Applicant argues that opposer has not presented any evidence to corroborate his claim that he used print media to establish service mark rights. However, applicant has not explained why the evidence in the record, particularly the evidence from the “Waybackmachine,” does not suffice to establish priority. In summary then, opposer has established use of INDEPENDENT NATION as a service mark for (i) a website featuring information and articles regarding current events, news and entertainment; (ii) a blog in the field of news, politics, media, social issues, public affairs and entertainment; (iii) an online forum involving news, politics, media and public affairs; and (iv) an Internet news portal featuring links to news stories and articles in the field of current events, all prior to the filing date of applicant’s application (hereinafter “Opposer’s Prior Services”). Opposer therefore has established his priority for such services. Likelihood of confusion Our determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 Opposition No. 91194679 14 (Fed. Cir. 2003). In considering the evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). We first consider the similarity of the services. Specifically, we consider Opposer’s Prior Services and the services recited in applicant’s identification of services. With the exception of opposer’s internet news portal, Opposer’s Prior Services are legally identical to applicant’s publication of electronic blogs, articles, and interactive literary forums services, which are not limited to any particular content. Opposer’s internet news portal (featuring links to news stories and articles in the field of current events), however, is highly similar to applicant’s publication of electronic articles, the only difference being that one contains links to news stories and the other contains the stories themselves. Turning now to the channels of trade, opposer maintains that they are identical, because the services are legally identical and because all of such services involve the Internet. We agree. Applicant’s identification of services does not include trade channel restrictions, and his Opposition No. 91194679 15 services are in part identical to opposer’s services. It follows, then, that applicant’s services include the trade channels of opposer’s services. Moreover, they are presumed to be offered to the same purchasers, who, for both applicant’s services and Opposer’s Prior Services, are members of the general population. See In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994). Next, we consider the similarity of the marks as to appearance, sound, connotation and commercial impression. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). The test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of overall commercial impression so that confusion as to the source of the services offered under the respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1835 (TTAB 1991), aff'd unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The proper focus is on the recollection of the average customer, who retains a general rather than a specific impression of the marks. Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ Opposition No. 91194679 16 106 (TTAB 1975). As noted, the average consumer of applicant’s services and opposer’s services for which opposer has priority are ordinary consumers, albeit those who read and have an interest in literary events. However, the similarity or dissimilarity of the marks is determined based on the marks in their entireties. The analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on the entire marks, not just part of the marks. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 23, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion”). [I]n articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties. Indeed, this type of analysis appears to be unavoidable. In re National Data Corp., 224 USPQ at 751. Applicant’s mark consists of the words INDEPENDENT NATION under three large feathers. In the case of marks consisting of words and a design, the words are normally given greater weight because they would be used by consumers to request the products. In re Dakin’s Miniatures, Inc., 59 Opposition No. 91194679 17 USPQ2d 1593 (TTAB 1999); In re Appetito Provisions Co., 2 USPQ2d 1553 (TTAB 1987). See also Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987); Giant Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). We therefore give the wording in the mark greater weight and find that it is the dominant portion of the mark. As for opposer’s INDEPENDENT NATION mark, which we discussed earlier in this decision, the wording is identical to the dominant portion of applicant’s mark. The background elements and the lettering style used by opposer with its mark do impart any particular meaning to INDEPENDENT NATION. In view of the foregoing, and because where, as here, an applicant’s services are in part identical to a prior user’s services, the degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the services,11 we find opposer’s mark to be similar to applicant’s mark in sound, meaning and commercial impression. Balancing du Pont factors We have found that the marks are similar; that with the exception of opposer’s internet news portal, Opposer’s Prior 11 See Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992); Real Estate One, Inc. v. Real Estate 100 Enterprises Corp., 212 USPQ 957 (TTAB 1981); ECI Division of E-Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980). Opposition No. 91194679 18 Services are legally identical to several of applicant’s services; and that opposer’s internet news portal (featuring links to news stories and articles in the field of current events) is similar to applicant’s publication of electronic articles. Further, we presume that the trade channels and purchasers for such services are identical. In view thereof, we find that there is a likelihood of confusion between Opposer’s Prior Services and applicant’s publication of electronic blogs, articles, and interactive literary forum services. DECISION: The opposition on the ground of priority and likelihood of confusion is granted and registration to applicant is refused. Copy with citationCopy as parenthetical citation