INTA Bulletin

December 15, 2012 Vol. 67 No. 21 Back to Bulletin Main Page

UNITED STATES: Pro Se Applicant Wins Dismissal of Opposition; Evidence on DVD Excluded

The U.S. Trademark Trial and Appeal Board (TTAB) recently dismissed an opposition to an application for the mark VIRGINFARMS & Design despite the opposer’s alleged ownership, prior use and registration of multiple marks composed of or including the mark VIRGIN. Virgin Enterprises Ltd. v. Steven E. Moore, Opposition No. 91192733 (TTAB Aug. 31, 2012) (not precedential).

Applicant Steven E. Moore filed for registration of the mark VIRGINFARMS & Design for “agricultural grains for planting; agricultural seeds; bulbs for agricultural purposes; plantable seed paper comprised primarily of seeds for agricultural purposes; seeds for agricultural purposes; spores and spawn; unprocessed seeds for agricultural use” in Class 31 (the terms VIRGIN and FARMS were disclaimed).

Virgin Enterprises Limited filed an opposition on the grounds of likelihood of confusion pursuant to Section 2(d) of the Lanham (Trademark) Act, 15 U.S.C. § 1052(d), and dilution pursuant to Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c).

Virgin Enterprises relied on 47 trademark and service mark registrations that included the mark VIRGIN, but the TTAB focused only on six registrations for VIRGIN and VIRGIN-formative marks that were closest to the applicant’s mark and covered goods and services that were the most similar. Based on the volume of sales and advertising expenditures, commercial success and widespread exposure, the TTAB found Virgin Enterprises’s VIRGIN marks to be famous for a wide variety of consumer goods and services in the entertainment, telecommunications, transportation and travel industries. The Board also found the two parties’ marks to be similar based on their overall similarities in sound, appearance and connotation.

With respect to the similarity of the goods and services, however, Virgin Enterprises’s evidence fell short. Virgin Enterprises argued that a relationship between the applicant’s seeds and its goods and services existed because they all include “agricultural aspects and influence agricultural production.” In particular, Virgin Enterprises maintained that its airline business might purchase sunflower seeds from the applicant and serve them to its airline passengers, who could then be confused as to the source of the seeds, or that the applicant’s grains and seeds might be used in the production of biofuels by the Virgin Enterprises’s licensees and competitors. The TTAB noted that the applicant’s goods were limited to agricultural purposes and would not include edible sunflower seeds. Furthermore, Virgin Enterprises provided no evidence that seeds for agricultural purposes could be used in the production of biofuels. The TTAB therefore held that because Moore’s goods traveled in only those normal channels of trade for agricultural purposes, there was no reasonable basis to conclude that the relevant purchasers would believe that Moore’s goods were associated with or sponsored by the opposer.

On its dilution claim, Virgin Enterprises failed to prove the threshold element that its VIRGIN mark was famous. According to the TTAB, unlike fame for likelihood-of-confusion purposes, which “varies along a spectrum from very strong to very weak,” fame in the dilution context requires a more stringent showing. It is “an ‘either-or’ proposition—it either exists or it does not.” Notably, Virgin Enterprises did not submit any survey evidence of brand recognition and awareness, and Moore did not concede that the VIRGIN mark was famous. Nevertheless, for purposes of completeness, the TTAB considered and ultimately rejected any argument that there existed a likelihood of dilution by blurring, in part because there was no evidence demonstrating an association between the marks and no evidence that the applicant intended to create an association with Virgin Enterprises’s mark.

Of particular interest, and relevant to TTAB practitioners, is that the Board excluded voluminous evidence submitted by Virgin Enterprises’s initial counsel in DVD format because that form of evidence was not deemed acceptable in TTAB proceedings. The option to file submissions in CD ROM/DVD format was removed from Trademark Rule 2.126 in 2007.

In sum, the TTAB found that there was no likelihood of confusion and no dilution. It dismissed the opposition with prejudice.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2012 International Trademark Association