OPINION
BERGSMAN, ADMINISTRATIVE TRADEMARK JUDGE.
The
Toking Dead, a Massachusetts partnership (Applicant), seeks
registration on the Principal Register of the mark THE TOKING
DEAD, in standard character form, for "retail store
services featuring clothing, mugs, and other consumer
goods," in International Class 35.[1]
Robert
Kirkman, LLC (Opposer) opposed registration of
Applicant's mark under Sections 2(d) (likelihood of
confusion) and 43(c) (dilution) of the Trademark Act, 15
U.S.C. §§ 1052(d) and 1125(c). Opposer alleges
ownership of the trademark THE WALKING DEAD used in
connection with a series of comic books and graphic novels
as well as a television series and an array of associated
goods and services, including clothing and mugs, through its
licensee AMC Network Entertainment LLC (AMC). Opposer pleaded
ownership of the five registrations for the mark THE WALKING
DEAD, in standard character form, listed below:
• Registration No. 4443715 for "comic books
graphic novels," in International Class
16;[2]
• Registration No. 4007681 for "DVDs featuring an
on-going fictional dramatic television program," in
International Class 9, and "entertainment services in
the nature of an on-going fictional dramatic television
series; providing information about a television series via
an on-line global computer network; providing online computer
games," in International Class 41;[3]
• Registration No. 4314918 for "video recordings
featuring fictional dramatic television programming and
music; sound recordings featuring fictional dramatic
television programming and music; downloadable computer
games; interactive video game programs; computer game
cartridges and discs; downloadable computer game software for
use with mobile telephones and personal computers;
downloadable multimedia file containing artwork, text, audio,
video, games, and internet web links relating to music and
television; electronic game programs; electronic game
software for cellular telephones; electronic game software
for handheld electronic devices; electronic game software for
wireless devices; slot machines; video game cartridges and
discs; video game software," in International Class
9;[4]
• Registration No. 4429084 for "fan club
services," in International Class 41;[5] and
• Registration No. 5252200 for "amusement park
services; entertainment services in the nature of an on-going
fictional dramatic television series; entertainment
information; providing a website featuring entertainment
information; providing online non-downloadable video clips
and photographs featuring content from or related to a
fictional dramatic television series; providing online
computer, electronic and video games; providing temporary use
of non-downloadable interactive games; entertainment services
in the nature of conducting exhibitions and conventions
concerning television and television characters; fan club
services," in International Class 41.[6]
Applicant,
in its Amended Answer, denied the salient allegations in the
Notice of the Opposition.
The
record includes the pleadings, and, by operation of Trademark
Rule 2.122(b), 37 C.F.R. § 2.122(b), the file of the
subject application. In addition, the parties stipulated that
the documents produced by Applicant in response to
Opposer's request for production of documents
"constitute Applicant's business records and are
authentic and genuine."[7]
The
parties introduced the testimony and evidence listed below:
A. Opposer's testimony and evidence.
1. Testimony declaration of Stefan Reinhardt, President of
Business Operations and Studio Production of AMC Studios, the
in-house studio, production and distribution division of AMC
Networks, Inc., Opposer's licensee;[8]
2. Testimony declaration of Sean Mackiewicz, Senior Vice
President and Editor-in-Chief for Skybound Entertainment, a
multi-platform content company and exclusive licensee for the
commercialization of intellectual property owned by
Opposer;[9]
3. Notice of reliance on copies of Opposer's pleaded
registrations printed from the USPTO Trademark Status and
Document Retrieval system (TSDR) showing the current status
of and title to the registrations;[10]
4. Notice of reliance on a copy of the March 1, 2016 Office
Action in application Serial No. 86811872 for the mark FEAR
THE WALKING DEAD purportedly to prove that THE WALKING DEAD
is a famous mark;[11]
5. Notice of reliance on Applicant's responses to
Opposer's requests for admission Nos. 1-8, 14, 16-21,
24-34, and 36;[12]
6. Notice of reliance on Applicant's responses to
Opposer's interrogatory Nos. 3-8, 11 and
13;[13]
7. Notice of reliance on documents produced by Applicant in
response to Opposer's request for production of
documents;[14]
8. Notice of reliance on articles printed in publications in
general circulation;[15]
9. Notice of reliance on articles downloaded from the
Internet;[16]
10. Testimony declaration of Robert L. Klein, Chairman and
Co-Founder of Applied Marketing Science, Inc., a market
research and consulting firm that conducted a likelihood of
confusion survey in this case;[17] and
11. Rebuttal notice of reliance on dictionary definitions of
"toke."[18]
B. Applicant's testimony.
1. Testimony declaration of Jeffrey Homan, one of the
partners in Applicant;[19]
2. Testimony declaration of Angela Knaus, owner, creator and
writer for TheHorrorReport.com website;[20]
3. Testimony declaration of Jason Moores, an independent
comic publisher and freelance writer and artist in the New
England area;[21]
4. Testimony declaration of Rick Naya, "founder and
owner of allele genetics annihilated brands and the Director
of New Hampshire Cannabis Freedom Festival, New
Hampshire's primary cannabis activist, New
Hampshire's first cannabis patient counsel to the
Cannabis commission and expert of cannabis for the State of
New Hampshire.";[22] and
5. Testimony declaration of Sean Carnell, "co-host of
the Hawco and Carnell show, a podcast of all thing's
entertainment, with educational pieces based on the crisis of
veterans in an effort to help educate the benefits of
cannabis as a medicinal alternative to pharmaceutical
drugs."[23]
Standing
is a threshold issue in every inter partes case. See
Empresa Cubana Del Tabaco v. Gen. Cigar Co.,
753 F.3d 1270, 111 U.S.P.Q.2d 1058, 1062 (Fed. Cir. 2014);
John W. Carson Found. v. Toilets.com Inc., 94
U.S.P.Q.2d 1942, 1945 (TTAB 2010). To establish standing in
an opposition or cancellation proceeding, a plaintiff must
prove that it has a "real interest" in the
proceeding and a "reasonable" basis for its belief
of damage. See Empresa Cubana, 111 U.S.P.Q.2d at
1062; Ritchie v. Simpson, 170 F.3d 1092, 50
U.S.P.Q.2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus.,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 U.S.P.Q.
185, 189 (TTAB 1982).
Opposer
has established its standing by properly introducing into
evidence its pleaded registrations showing the status of the
registrations and their title in Opposer. See, e.g.,
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
U.S.P.Q.2d 1842, 1844 (Fed. Cir. 2000) (plaintiffs two prior
registrations suffice to establish plaintiffs direct
commercial interest and its standing); N.Y. Yankees
P'ship v. IET Prods. & Servs., Inc., 114
U.S.P.Q.2d 1497, 1501 (TTAB 2015). Applicant, in its brief,
did not challenge Opposer's standing.[24]
Because
Opposer's pleaded registrations are of record, priority
in the opposition proceeding is not at issue with respect to
the mark and goods and services identified therein. Mini
Melts, Inc. v. Reckitt Benckiser LLC, 118 U.S.P.Q.2d
1464, 1469 (TTAB 2016) (citing King Candy Co. v. Eunice
King's Kitchen, Inc., 496 F.2d 1400, 182 U.S.P.Q.
108, 110 (CCPA 1974)).
With
respect to clothing, mugs, and other consumer goods, Stefan
Reinhardt President of Business Operations and Studio
Production of AMC Studios, the in- house studio, production
and distribution division of AMC Networks, Inc.,
Opposer's licensee, testified,
15. AMC, on its own and through its corporate affiliates and
sublicensees, markets an array of merchandise based on
The Walking Dead television series, including but
not limited to, t-shirts, sweatshirts, shorts, onesies,
flip-flops, hats, and other apparel; mugs and beverageware;
phone cases; pens; household furnishings; jewelry; bags and
luggage tags; action figures; food; construction sets; trivia
games; dart boards; video games; guitars; dog collars, mobile
games; slot machines; and calendars. Licensees include BIC,
Hallmark, Changes, and McFarlane Toys. All such merchandise
bears and/or is offered under THE WALKING DEAD trademark
("THE WALKING DEAD Mark").
16. Worldwide sales of such The Walking Dead
merchandise has totaled over [Redacted] since 2010-the vast
majority of which consist of sales in the United
States.[25]
Reinhardt's
testimony is sufficient to prove Opposer's priority
because it is clear, convincing, and uncontradicted. See
Nat'l Bank Book Co. v. Leather Crafted Prods., Inc.
218 U.S.P.Q. 826, 828 (TTAB 1993) (oral testimony may be
sufficient 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 Indus. Inc., 203 U.S.P.Q. 305,
316 (TTAB 1979) (oral...
