In re Mr. Recipe, LLC, 031816 USTTAB, 86040643

Docket NºSerial 86040643, 86040656
Opinion JudgeBERGSMAN, ADMINISTRATIVE TRADEMARK JUDGE.
Party NameIn re Mr. Recipe, LLC
AttorneyAnne Marie Bossart of Cadwalader, Wickersham & Taft, LLP, for Mr. Recipe, LLC. Sara N. Benjamin, Trademark Examining Attorney, Law Office 110, Chris A.F. Pedersen, Managing Attorney.
Judge PanelBefore Quinn, Kuhlke and Bergsman, Administrative Trademark Judges.
Case DateMarch 18, 2016
CourtUnited States Patent and Trademark Office

In re Mr. Recipe, LLC

Serial Nos. 86040643, 86040656

United States Patent and Trademark Office, Trademark Trial and Appeal Board

March 18, 2016

Anne Marie Bossart of Cadwalader, Wickersham & Taft, LLP, for Mr. Recipe, LLC.

Sara N. Benjamin, Trademark Examining Attorney, Law Office 110, Chris A.F. Pedersen, Managing Attorney.

Before Quinn, Kuhlke and Bergsman, Administrative Trademark Judges.

OPINION

BERGSMAN, ADMINISTRATIVE TRADEMARK JUDGE.

Mr. Recipe, LLC ("Applicant") seeks registration on the Principal Register of the marks JAWS (in standard characters) and JAWS DEVOUR YOUR HUNGER (in standard characters) for Entertainment, namely, streaming of audiovisual material via an Internet channel providing programming related to cooking, in International Class 38.1

The Trademark Examining Attorney has refused registration of Applicant's marks under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that Applicant's marks so resemble the registered mark JAWS (typed drawing format) for "video recordings in all formats all featuring motion pictures, " in Class 92 as to be likely to cause confusion.

After the Trademark Examining Attorney made the refusals final, Applicant appealed to this Board. In the Board's April 8, 2015 Order, the appeals were consolidated. The records in the two applications are very similar; any difference in the submissions we discuss will be noted.

We affirm the refusals to register.

Our determination under Section 2(d) is based on an analysis of all of the probative 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 U.S.P.Q. 563, 567 (CCPA 1973); see also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 U.S.P.Q.2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 U.S.P.Q. 24, 29 (CCPA 1976) ("The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.").

A. The fame of the mark in the cited registration.

This du Pont factor requires us to consider the fame of the mark in the cited registration. Fame, if it exists, plays a dominant role in the likelihood of confusion analysis because famous marks enjoy a broad scope of protection or exclusivity of use. A famous mark has extensive public recognition and renown. Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 U.S.P.Q.2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 U.S.P.Q.2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 U.S.P.Q.2d 1453, 1456 (Fed. Cir. 1992).

Fame may be measured indirectly by the volume of sales of and advertising expenditures for the goods and services identified by the marks at issue, "the length of time those indicia of commercial awareness have been evident, " widespread critical assessments, notice by independent sources of the products identified by the marks, and the general reputation of the products and services. Bose Corp. v. QSC Audio Products Inc., 63 U.S.P.Q.2d at 1305-06, 1309.

Because of the nature of the evidence required to establish the fame of a registered mark, the Board does not expect Trademark Examining Attorneys to submit evidence as to the fame of the cited mark in an ex parte proceeding, and they do not usually do so. See In re Thomas, 79 U.S.P.Q.2d 1021, 1027 n.11 (TTAB 2006). Rather, in an ex parte appeal the "fame of the mark" factor is normally treated as neutral because the record generally includes no evidence as to fame. See id.; see also In re Davey Prods. Pty Ltd., 92 U.S.P.Q.2d 1198, 1204 (TTAB 2009) (noting that the absence of evidence as to the fame of the registered mark "is not particularly significant in the context of an ex parte proceeding").

However, here, the Trademark Examining Attorney did submit evidence demonstrating that Registrant's movie JAWS is so well-known movie that it set the standard for summer blockbusters. In the July 1, 2014 Office Actions, the Trademark Examining Attorney submitted the following evidence:

1. An excerpt from the TCM (Turner Classic Movie) website (tcm.com) discussing the movie JAWS.

In some ways Jaws (1975) is responsible for changing the direction of filmmaking and film marketing in Hollywood. For better or worse, this film, which kept scores of people from taking a dip in the ocean during the summer of 1975, was also the first motion picture to break the $100, 000, 000 record in box office rentals, bypassing such previous champions as The Sound of Music (1965) and Gone With the Wind (1939). As a result, studios began to produce more big event entertainments like Star Wars (1977), Grease (1978), and Superman (1978) with aggressive ad campaigns designed to produce record-breaking opening weekends. So, if you want to know why Hollywood produces fewer movies like Taxi Driver (1976) and Coming Home (1978), you can blame Jaws which started a trend that has become the standard for success in the film industry.

While Jaws might not qualify as art, Steven Spielberg's suspenseful adaptation of the Peter Benchley best seller is a superior commercial entertainment.

2. The TV GUIDE review of the movie JAWS characterized the movie as a "mega-hit, " and "phenomenally successful."

Because the film tapped into a common fear and played on it so skillfully, it was a worldwide hit and entered international popular culture. JAWS has been endlessly parodied by comedians and filmmakers alike, and John Williams' effective score has now become a cliché.

3. The WhatCulture.com website posted an article in 2010 entitled "50 Reasons Why Jaws Might Just Be the Greatest Film of All Time." The author characterized JAWS as an "instant classic."

4. The website FilmCrave.com rated JAWS the 67th best movie of all time as "calculated by movie ratings and members' Top Movie List."

5. the IMDb website (IMDb.com) identified JAWS as the number 72 top grossing movie of all time in the United States through 2014.

As a result of the perceived iconic status of the JAWS movie, it has repeatedly been spoken of as one of the best movies of all time and a top grossing film. According to the Encyclopaedia Britannica

Spielberg's next movie, Jaws (1975), established him as a leading director, and it was one of the highest-grossing films ever. It featured Roy Scheider as the police chief of a resort town who battles a man-eating white shark. Joining him are Richard Dreyfuss as a marine biologist and Robert Shaw as a shark hunter. The highly praised thriller received an Academy Award nomination for best picture, and its ominous soundtrack by John Williams won an Oscar. The film all but created the genre of summer blockbuster-big action-packed movie released to an audience grateful to be in an air-conditioned theatre-and it established many of the touchstones of Spielberg's work: an ordinary but sympathetic main character is enlightened through a confrontation with some extraordinary being or force that gradually reveals itself as the narrative unfolds.3(Emphasis added).

We recognize the potential admissibility issues inherent in such evidence.4However, the stories are probative of the perceptions of the authors and of the content received by the readers. Further, there are multiple stories in different publications repeating the same basic information regarding the renown of the movie. Moreover, Applicant has not, in briefing the appeal, suggested that any of evidence put in by the Trademark Examining Attorney suffers from errors in its content and acknowledged that "that registrant's JAWS mark is well-known in the movie industry, ' while contending that "the evidence demonstrates at best a 'niche' level of fame."5

Applicant's argument that we must consider current fame and that at most these references only show how popular the movie was forty years ago, runs counter to the record, which includes content from contemporary website pages and the listing in the 2015 Encyclopaedia Britannica. Combined, this evidence illustrates the continuing impression of this movie and the associated title JAWS that has been registered as a trademark for video recordings and is entitled to the presumptions under Section 7(b) of the Trademark Act.

While the evidence demonstrates that JAWS is a famous movie, the issue before the Board is whether the evidence supports a finding that JAWS is famous as a trademark for "video recordings in all formats all featuring motion pictures." The TCM (Turner Classic Movie) website (tcm.com) printout attached to the July 1, 2014 Office Actions advertises the sale of a series of JAWS movies, as well as subsequent editions of the original JAWS movies. Thus, JAWS is not just the title of a movie, it is the title of a series of works. That the renown and success of JAWS-inspired sequels and reissued versions of the original demonstrates that "JAWS" is famous as the source identifier for a series of "video recordings in all formats all featuring motion pictures."

Applicant argues, to the contrary, that "the evidence demonstrates at best a 'niche' level of fame insufficient to create a likelihood of confusion"6 and that [t]he general public is unlikely to be confused as between applicant's mark[s] for streaming programming content relating to cooking, which will be produced going forward, and "registrant's 40-year-old-thriller about a shark."7 As noted above, we have found that the mark JAWS is famous for "video recordings in all formats all featuring motion pictures." "Niche fame" is the renown of a mark in a specialized market (e.g., a specific geographic area or field of endeavor). See UMG...

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