The Trademark Trial and Appeal Board (TTAB) granted the petition of Playboy Enterprises International, Inc. to cancel, on the grounds of priority and likelihood of confusion, the registration (No. 3115637) obtained by Diane Dickson for the word mark BUNNY. Playboy Enterprises International, Inc. v. Dickson d/b/a Bunny, Cancellation No. 92047717 (T.T.A.B. Sept. 21, 2010) (not precedential).
On September 23, 2003, Dickson filed a use-based trademark application for BUNNY for various goods in Classes 18 and 25. Dickson alleged first use in both classes as of June 30, 2001, and first use in commerce as of October 31, 2002. She obtained a registration for the mark on July 18, 2006.
On June 27, 2007, Playboy filed a petition to cancel, claiming BUNNY was confusingly similar to Playboy’s earlier trademark registrations for BUNNY and a rabbit’s head design in numerous classes, including Classes 18 and 25. Playboy subsequently amended its petition to assert that Dickson’s registration was void ab initio because as of the application filing date Dickson had not used her mark on each of the goods identified in her underlying use-based application. Dickson answered the petition, denied Playboy’s allegations and asserted a number of affirmative defenses. However, because she submitted no evidence, testimony or brief in the case, the TTAB did not consider the affirmative defenses.
As Playboy owned only one U.S. trademark registration for BUNNY, for “operating establishments which feature food, drink, and entertainment,” Playboy submitted additional evidence in support of its rights in the BUNNY mark. This included: (1) registrations for, and evidence of use of, Playboy’s rabbit’s head design for goods in Classes 18 and 25; (2) submissions that the rabbit’s head design was regularly referred to by Playboy, its consumers and the media as “the bunny” or “the Playboy bunny”; and (3) current use of the word BUNNY by Playboy in the domain name of its website ShopTheBunny.com. After reviewing the evidence of record and based on the similar commercial impressions of Dickson’s BUNNY mark and Playboy’s rabbit’s head design and the relatedness of the parties’ goods, the TTAB granted Playboy’s petition to cancel Dickson’s registration as a whole.
With regard to Playboy’s assertion that Dickson had not used her mark on each of the goods at the time she filed her application, the TTAB found that, based on the evidence in the record obtained during discovery, Playboy had made a prima facie showing that Dickson had used the mark only on handbags, tote bags, clutch bags, wallets and coin purses. However, the TTAB denied Playboy’s contention that this showing resulted in Dickson’s registration being void ab initio. Citing Grand Canyon West Ranch, LLC v. Hualapai Tribe (78 U.S.P.Q.2d 1696 (T.T.A.B. 2006)), the Board ruled that the registration was void only as to those goods for which Dickson had not used the mark as of the filing date. The TTAB clarified that the ruling as to partial cancellation based on non-use would become effective only if Dickson were to prevail on an appeal of the likelihood-of-confusion finding.