On March 16, 2016, the TTAB affirmed the refusals of an applicant’s mark, JAWS DEVOUR YOUR HUNGER, for online streaming cooking shows, holding that it is confusingly similar to the registered mark from the movie JAWS. Though the Board will rarely consider the fame of a mark in its du Pont analysis, the fame of the JAWS mark played a predominant role in the decision here. In re Mr. Recipe, LLC, Serial Nos. 86040643 and 86040656 [precedential].
Fame is typically not evaluated as a likelihood of confusion factor in ex parte appeals, because the TTAB record does not, by default, include evidence of a mark’s fame. Here, however, the examining attorney submitted extensive evidence demonstrating the fame of the mark JAWS as it is associated to the movie franchise, including movie reviews, ratings, and articles. The Board found that this abundance of evidence was probative of the mark’s fame such that it should be afforded higher protection.
The applicant argued that the fame of the JAWS mark is limited because it was only famous in the past, and because it is only famous in a niche market. The Board rejected both of these arguments. The Board held that the JAWS franchise still has a lasting impression on the contemporary consumer, based on current evidence, despite the fact that the movie was created 40 years ago. Additionally, the Board rejected the “niche fame” argument, stating that niche fame was only a factor in the dilution analysis, but not in the likelihood of confusion analysis.
Though the Board determined that the JAWS mark is, indeed, a famous mark, the determination for likelihood of confusion could not be based upon this finding alone. The mark’s fame simply meant that the registered JAWS mark is strong and affords much higher protection, because its commercial impression is much more widespread. Thus, the Board also analyzed and balanced the various other du Pont factors.
The Board then looked to the similarity of the marks and goods. Though the JAWS DEVOUR YOUR HUNGER mark has three additional words, the Board found that the term “JAWS” is the predominant part of the mark, because it is the first term seen by the consumer. Moreover, the Board found that because there is no specific stylization for the application, the term JAWS could be presented in such a way that it is identical to the registered JAWS mark. The Board additionally determined that the “DEVOUR YOUR HUNGER” portion of the mark evoked the image of the shark from the JAWS movie. Based upon each of these points, the Board held that the marks are confusingly similar in appearance, sound, connotation and commercial impression.
The last du Pont factor considered by the Board was the relatedness of the goods. The applicant argued here that because the mark was for “streaming audiovisual material via an Internet channel providing programming related to cooking,” and the JAWS movie mark was registered for “video recordings in all formats all featuring motion pictures,” the goods at issue are not related. The Board disagreed. Relying on the examining attorney’s evidence of third party registrations for marks registered for both of these types of goods simultaneously, the Board found that the two goods were related enough to constitute “similar goods.” Furthermore, the applicant did not offer any evidence to support its assertion that the goods here are, in fact, unrelated such that there is no likelihood of confusion.
As a result of the balancing of all of these factors—the fame of the JAWS mark, the similarity of the marks, and the relatedness of the goods—the Board concluded that the refusal of registration by the examining attorney was proper. Though the fame of a mark is typically not a determinative factor in the du Pont analysis, it played a role here in broadening the scope of protection in light of the other du Pont factors.