The Board sustained an opposition to registration of the proposed mark CONCEAL-CARRY REGISTERED HANDGUN in the stylized form shown below, for "Hats; Hoodies; Jackets; Jerseys; Sweaters; T-shirts; Graphic T-shirts; Short-sleeved or long-sleeved t-shirts; Sports jerseys," on the ground of likelihood of dilution by blurring of opposer's mark COCA-COLA in Spencerian script, for beverage products and a wide variety of other goods, including clothing. The Board found that opposer's mark is "extremely famous," that Applicant
The Federal Circuit "'has set forth the following four elements a plaintiff must prove in a Board proceeding in order to prevail on a claim of dilution by blurring:
- the plaintiff owns a famous mark that is distinctive;
- the defendant is using a mark in commerce that allegedly dilutes the plaintiff's famous mark;
- the defendant's use of its mark began after the plaintiff's mark became famous; and
- the defendant's use of its mark is likely to cause dilution by blurring or by tarnishment.'" quoting N.Y. Yankees, 114 USPQ2d at 1501-02.
As to the fame of opposer's mark, the Board reviewed decades of evidence regarding sales and advertising, and concluded that "[a]l of the non-exclusive factors set forth in Section 43(c)(2)(A) of the Trademark Act support a finding that the Coca-Cola Script Mark is a distinctive mark that became extremely famous long ago and remains so today."
The Board then looked to the six non-exclusive factors of Section 43(c)(B)(i)-(vi)) to determine whether Hoff's mark is likely to dilute the distinctiveness of opposer's Script Mark. Paraphrasing the Yankees case, the Board ruled that "consumers encountering Applicant's mark will immediately be reminded of Opposer's famous [Coca-Cola Script Mark] and associate the two." As to the issue of intent, the Board found "no credible explanation for this choice by Applicant other than a desire to have his mark stand out because of its striking similarity to the famous Coca-Cola Script Mark."
Moreover, Applicant Hoff's decision to hyphenate the two words and to use the term "conceal-carry" rather than the common term "concealed carry" is "explicable only by his desire to make the phrase mimic its counterpart "Coca-Cola" in the Coca-Cola Script Mark." Hoff's mark also contains the block letter term "REGISTERED HANDGUN," which imitates Coca-Cola's historical uses of the terms "Trade-Mark Registered" and "Reg.
The Board therefore found that "[a]pplicant is attempting to trade on the goodwill and fame generated by the [Coca-Cola Script Mark] mark in order to promote and market his own [goods]. As such, this dilution factor also favors [O]pposer.'" quoting
There was no evidence of actual association between the involved marks, but Hoff's application was filed on an intent-to-use basis, and he admitted in discovery that "[a]s of
Withe regard to the impairment of
Opposer's concerns are legitimate. There is a fervent debate in
The Board concluded that Hoff's use and registration of his proposed mark is likely to dilute by blurring the distinctiveness of
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TTABlog comment: Not very often does the Board decide a dilution claim. Usually if it find likelihood of confusions it will decline to reach the dilution claim. Here it did the opposite. BTW, why wasn't this deemed precedential? Maybe the decision breaks no new ground, but the opinion is an impressive review of dilution law.
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