Marks held not to be legal equivalents in tacking case

United States of America
In In re Nielsen Business Media Inc (Serial Nos 77223725 and 77223738, January 28 2010), in a precedential decision, the Trademark Trial and Appeal Board (TTAB) has affirmed the examiner’s refusal to register the mark THE BOLLYWOOD REPORTER for “printed newspapers, magazines and periodicals in the field of the entertainment industry” in Class 16 of the Nice Classification, and for “providing information in the field of film, television, music and entertainment via the Internet” in Class 41, based on descriptiveness. In doing so, the TTAB rejected Nielsen Business Media Inc’s argument that the mark had acquired distinctiveness based on Nielsen’s prior registrations for THE HOLLYWOOD REPORTER, which it claimed was a legally equivalent mark.
In response to the initial descriptiveness refusal, Nielsen alleged that THE BOLLYWOOD REPORTER had acquired distinctiveness under Section 2(f) of the Lanham Act by virtue of Nielsen’s long use and prior registration of several marks consisting of, or including, the term 'the Hollywood Reporter', which covered related goods and services. Under such a theory, Nielsen sought to 'tack' the rights that it has obtained for one mark onto the other mark for the purposes of transferring distinctiveness to that mark. In order to benefit from Trademark Rule 2.41(b), which allows such 'tacking', the marks must be legal equivalents. The test for determining whether two marks are legal equivalents is whether they are “indistinguishable from one another or create the same, continuing commercial impression such that the consumer would consider both marks the same mark”. 
The TTAB held that the marks THE BOLLYWOOD REPORTER and THE HOLLYWOOD REPORTER were “not legal equivalents, because they have different meanings and engender different commercial impressions”. The TTAB further commented that the substitution of the letter 'H' with the letter 'B' was “not an immaterial misspelling or pluralization of [a] previously registered mark, nor is it the addition of a generic term to the previously registered mark”. Instead, the change in one letter created a consequential difference. The TTAB held that this change of one letter changed the commercial impression, because while “Bollywood and Hollywood both connote movie industries, they identify different movie industries that specialize in different types of movies”.

Therefore, the TTAB held that the marks were not legal equivalents. Consequently, Nielsen could not “rely on its previously registered marks to show that THE BOLLYWOOD REPORTER had acquired distinctiveness in accordance with Trademark Rule 2.41(b)”. 

Lara A Holzman, Alston & Bird LLP, New York

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