Confusion likely between mark for clothing and film certification mark

In a decision notable for its seemingly counter-intuitive result, the US Patent and Trademark Office's Trademark Trial and Appeal Board (TTAB) has allowed Motion Picture Association of America's (MPAA) opposition against Respect Sportswear Inc's application to register the mark RATED R SPORTSWEAR in respect of "men's and ladies' shirts, pants, ladies' dresses, shorts and jackets". The TTAB held that the mark was likely to cause confusion when used concurrently with MPAA's film rating certification mark, RATED R.

The US public is probably most familiar with this mark as it appears here. The mark "certifies that the motion picture film meets the standards set forth by applicant for R: restricted under 17 requires accompanying parent or adult guardian".

In reaching the conclusion that concurrent use of the certification mark and the RATED R SPORTSWEAR mark was likely to cause confusion, the TTAB adopted a somewhat mechanical analysis. This, to a certain extent, may have resulted from the limited record on behalf of Respect Sportswear that the TTAB deemed available, given certain findings excluding Respect Sportswear's evidence of third-party use of the term 'Rated R'. In fact, the procedural and evidentiary rulings probably provide a higher degree of guidance for the practitioner than does the decision itself.

One such finding concerns the contrast between the broad nature of allegations in the Notice of Opposition and the narrow nature of the arguments in the trial brief. The Notice of Opposition asserted that Respect Sportswear's mark is confusingly similar not only to a block letter form of RATED R (Registration 1,436,926), but also to several other forms in which the mark was registered. However, in its brief, MPAA limited its claim to the block letter version. As a consequence, the TTAB contained its analysis to a comparison of the applied-for-mark and the block letter format of RATED R. For practitioners, this suggests that if there is an appreciable separation between the matters asserted in the Notice, on the one hand, and the proofs or argument on the other, the TTAB will limit its ruling to the evidence and arguments that are put before it. It also suggests that an opponent that overlooks such discrepancies could be at serious risk of not asserting its strongest case. In short, care and consideration must be given to marrying proofs and arguments in a fashion intended to maximize the opponent's case.

Another finding, this one evidentiary, concerns the concept of judicial notice. Respect Sportswear argued that the TTAB should take judicial notice of results of queries made on the websites Google, Yahoo! and eBay for the reference 'Rated R'. Apparently, there are millions of such references. The TTAB declined to take such notice, stating that the only kind of fact that may be judicially noticed is one not subject to reasonable dispute because (i) it is generally known within the territorial jurisdiction of the court, or (ii) it is capable of accurate and ready determination by resort to resources the accuracy of which cannot reasonably be questioned. Results obtained from internet search queries to search engines or commercial websites are not facts generally known within the TTAB's territorial jurisdiction. Moreover, because internet postings are "transitory" materials, they cannot be readily corroborated by printed material. The request by Respect Sportswear to take judicial notice was thus denied.

With respect to the merits, the TTAB's emphasis was on the fame of the RATED R certification mark. The TTAB noted that this fame "must be accorded dominant weight in our likelihood of confusion analysis". It found the dominant portions of the marks to be identical and that they therefore conveyed highly similar connotations. The fact that MPAA's mark has been used for years only as a standard for film content while the other mark expressly identifies clothing was not discussed. Indeed, the TTAB stated, inexplicably, that the addition of 'SPORTSWEAR' to Respect Sportswear's mark "does not serve to create a commercial impression that is distinct from that of opposer's mark". This appears to be a classic case of inappropriate dissection of a mark.

The heart of the opinion was the TTAB's determination that men's and ladies' clothing items are related to "entertainment services". Adopting a practice often used by examiners, the TTAB relied on MPAA's submission of third-party registrations showing various companies using the same mark on clothes and "the services certified by opposer" namely, entertainment services. Some of these third-party references were film titles. The evidence also included photographs and screen shots from websites that display T-shirts bearing movie titles and testimony that theatrical motion pictures are promoted by means of wearing apparel. After considering such evidence, the TTAB concluded:

"[U]sers of opposer's certification mark utilize the same marks to identify both their entertainment services and clothing that is identical to or closely related to applicant's goods."

At no point did the TTAB address the fact that RATED R is not a movie title. Nor is it truly indicative of an entertainment service. It is a rating indicator and widely known as such. It identifies adult subject matter in a movie and has done so for more than 30 years according to the opinion. There was no mention by the TTAB that no user of this certification mark had ever affixed RATED R to clothing items. It will be no surprise then to learn that a similar type of logic was used by the TTAB to find the channels of trade sufficiently close for this factor to weigh in MPAA's favour.

In fairness to the TTAB, it is not clear that Respect Sportswear presented arguments or established a record sufficient for the TTAB to rule in its favour. Nevertheless, the reasoning expressed by the TTAB is spotty and the result appears to be counter-intuitive. The TTAB did not have to decide MPAA's dilution claims under Section 43(c) of the Lanham Act inasmuch as it held there was a likelihood of confusion.

Russell H Falconer, Baker Botts LLP, New York

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