In an ex parte context, fame is seldom a factor in the du Pont analysis due to lack of evidence , but here Examining Attorney Sara N. Benjamin's submissions demonstrated that the movie JAWS "is so well-known movie that it set the standard for summer blockbusters." The Board affirmed refusals to register the marks JAWS and JAWS DEVOUR YOUR HUNGER for "entertainment, namely, streaming of audiovisual material via an Internet channel providing programming related to cooking," finding the marks likely to cause confusion with the registered marks JAWS for "video recordings in all formats all featuring motion pictures." In re Mr. Recipe, LLC, Serial Nos. 86040643 and 86040656 (March 18, 2016) [precedential].
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Fame: The Examining Attorney relied on various websites proclaiming JAWS to be one of the best movies of all time. It was "phenomenally successful" at the box office and started a marketing trend that "has become the standard for success in the film industry." The Board recognized the potential admissibility issues with this evidence [e.g., hearsay], but it observed that the CAFC has approved the use of Internet evidence in ex parte proceedings. See, e.g., In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007) ("[i]nternet evidence is generally admissible and may be considered for purposes of evaluating a trademark").
Applicant conceded that the JAWS movie is "well-known in the movie industry," but argued that the evidence showed, at most, "niche fame" for a "40-year-old thriller about a shark," and that such evidence is insufficient to establish fame under Section 2(d). The Board found, however, that JAWS is not just the name of a single movie, but a series of movies. "[T]he 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.'"
Moreover, the Board observed, although the "niche fame" argument may serve to counter a showing of fame in the dilution context, it does not apply in the context of likelihood of confusion. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005)(“While dilution fame is an either/or proposition—fame either does or does not exist—likelihood of confusion fame varies along a spectrum from very strong to very weak.”(internal quotation omitted)).
In any case, the Board noted [in dictum] that "the evidence shows that JAWS has permeated into general culture, including being parodied by filmmakers; and its fame is not limited to subject matter such that it would be confined to 'a 'niche' level of fame.'"
Strength of the cited mark: The fame of the cited mark alone is, of course, not enough to establish a likelihood of confusion. See, e.g., Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54USPQ2d 1894, 1898 (Fed. Cir. 2000) ("fame alone cannot overwhelm the other du Pont factors as a matter of law").
Attempting to undermine the strength of the cited mark, Applicant pointed to a single third-party registration for the mark JAWS for "video and audio recording services," but a single registration, without proof of the extent of use, has little probative value. Applicant also referenced five pending applications, but pending applications prove nothing. Moreover, there was no evidence of any third-party use of JAWS-formative marks.
Similarity of the marks: As for the involved marks, the Applicant conceded that they are "similar." The Board found that JAWS is identical to the cited mark [what a surprise!] and that JAWS DEVOUR YOUR HUNGER is similar to the registered mark in terms of appearance, sound, connotation, and commercial impression.
The Board found the word “Jaws” to be the dominant element of Applicant’s mark because it is the first word in the mark and is the subject of the slogan JAWS DEVOUR YOUR HUNGER. Applicant’s mark JAWS DEVOUR YOUR HUNGER is presented in standard character form, and therefore is not limited to any particular depiction. Applicant could emphasize the word JAWS while downplaying the remainder of the mark; for example:
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Applicant contended that its slogan mark suggests a clear connection with food, which the cited mark does not convey. The Board refused to bite: "[B]ecause of the fame Registrant’s JAWS mark, the shark’s reputation as having a voracious appetite, and Applicant’s standard character form application, Applicant’s mark is just as likely to engender a commercial impression of Registrant’s shark as of an appetite to be satisfied."
Relatedness of the Goods and Services: Turning to the involved goods and services, although applicant's services are limited to the subject matter of cooking, the cited registration is not limited and encompasses videos that may feature cooking. The Examining Attorney submitted 41 third-party use-based registrations that cover both video streaming and video recordings. Applicant did not submit any evidence to support its assertions regarding the lack of relationship between the goods and services. "Moreover, it is just as likely that the consuming public generally understands that video recordings of movies may be converted to a format that may be streamed over the internet." In any event, the Board concluded that the fame of Registrant’s mark "is sufficient to broaden the scope of protection to encompass such differences."
Conclusion: The Board therefore found that confusion is likely, and it affirmed the Section 2(d) refusal. The Board noted applicant's arguments about the broad scope of protection given the cited registration, but that scope is dictated by Section 7(b) of the Lanham Act. The Board pointed out, however, that "applicants in these circumstances are not without possible remedies, including seeking a consent from the owner of the cited registration, or seeking a restriction of the registration in inter partes proceedings under Section 18 of the Trademark Act, 15 U.S.C. § 1068."