MISS UNIVERSE wins in contest against MR. GAY UNIVERSE

The US Patent and Trademark Office's Trademark Trial and Appeal Board (TTAB) has sustained the opposition of Miss Universe LP, owner of the famous MISS UNIVERSE service mark for beauty pageants and related services, against an application filed by Community Marketing Inc to register MR. GAY UNIVERSE for conducting gay beauty pageants. Miss Universe opposed the application based on both a likelihood of confusion and dilution. Finding a likelihood of confusion, the board sustained the opposition without reaching the dilution claim.

The TTAB applied the long-established duPont factors, set forth in In re EI du Pont de Nemours, 476 F2d 1357 (CCPA 1973), in determining that a likelihood of confusion existed. First, the TTAB considered the fame of the MISS UNIVERSE mark, placing substantial emphasis on a memo written by one of Community Marketing's principals that referred to the MISS UNIVERSE pageant as "the most renowned contest". Community Marketing argued that the comment was not an acknowledgement that the fame of Miss Universe's mark extended to gay beauty pageants, but the TTAB rejected that interpretation, and relying on Community Marketing's admission, found Miss Universe's mark to be famous.

In comparing the similarity of the services, the TTAB pointed out that the issue is not whether consumers would confuse the services; rather, the issue is whether consumers would believe the services came from the same source, noting that it is sufficient that the services be related in some manner, or that the circumstances surrounding their use is such that they would likely be encountered by the same persons in a context that would create the mistaken belief that the services are associated or that there is some connection between the sources of the services. The TTAB found the parties' respective services to be identical insofar as both involve conducting beauty pageants. In addition, the evidence showed that the format of Community Marketing's pageant will be virtually identical to that of Miss Universe's pageants.

Community Marketing attempted to distinguish the services based on the differences in the contestant pool, arguing that "by long-standing tradition" male and female pageants are "well divided". The TTAB rejected this argument for lack of evidence. Community Marketing also cited the existence of third-party registrations of such marks as MISS AMERICA, MR. AMERICA, MISS U.S.A. and MR. USA , but the TTAB found these registrations "of little material significance" with respect to likelihood of confusion because the registrations do not reflect what occurs in the marketplace. In response to Community Marketing's assertion that the parties' services are different because one offers gay beauty pageants whereas the other offers straight beauty pageants, the TTAB found that Miss Universe's registrations were broad enough to encompass both gay and straight pageants. Based on all of these factors, the TTAB found the parties' services to be similar.

In finding similarity of trade channels and classes of purchasers, the TTAB relied on Community Marketing's statement that it intended its pageants to be watched by the public at large. There was also evidence Community Marketing intended to seek corporate and host-city sponsors, including some of the same entities that sponsored Miss Universe's pageants. The TTAB also found that both parties' beauty pageants would be marketed to and viewed by ordinary consumers, leading to the conclusion that the conditions of purchase were similar and likely to lead to confusion.

In assessing the similarity of the marks, the TTAB applied the test of the recollection of the average consumer, rather than a side-by-side comparison of the marks. The TTAB also noted that it was appropriate to give more significance to the dominant portion of the marks. Finding the dominant portion of the marks to be the word 'UNIVERSE', and the terms 'MR. GAY' and 'MISS' to be highly suggestive or descriptive because they served to identify and differentiate the pools of contestants, the TTAB held the marks, when considered in their entireties, to be similar in terms of sound, appearance, connotation and overall commercial impression.

The TTAB summarily rejected other arguments that Community Marketing propounded, dismissing as "not dispositive or even relevant" that Community Marketing convinced the Examining Attorney during ex parte examination to allow the application. The TTAB also rejected as irrelevant to the likelihood of confusion analysis Community Marketing's claim that it adopted its mark in good faith.

The TTAB concluded that a likelihood of confusion exists in this case. It specifically noted that, to the extent any doubt might exist as to the correctness of its conclusion, all such doubts were resolved against Community Marketing.

Susan Progoff, Fish & Neave Intellectual Property Group of Ropes & Gray LLP, New York