Super Bowl Special: Is TOUCHDOWN TIMEOUT for Sports Programming Confusable With TIME OUT for Event Production Services?
With the Big Game just three days away, the TTAB released its decision in an appeal from the USPTO's refusal to register TOUCHDOWN TIMEOUT for "entertainment services, namely, ongoing digital television show dealing with sports." The Office found confusion likely with the registered mark TIME OUT for "organising, producing and conducting events, music events, comedy events, entertainment, competitions, contests, festivals, carnivals, pageants, displays, shows, fashion shows, exhibitions, film screenings, programmes and performances and radio and TV broadcasts and programmes and performances; production of films, recordings . . . " Applicant Deborah Whitcas argued that "TOUCHDOWN" is the dominant element in her mark, since it appears as the first word in the mark. How do you think this came out? In re Deborah J. Whitcas, Serial No. 90117114 (February 9, 2023) [not precedential] (Opinion by Judge Jonathan Hudis).
The Board found the involved services to be legally identical. Registrant's broad recitation of services "presumably encompasses all services of the type described in the TOUCHDOWN TIMEOUT Application, including, “ongoing digital television show dealing with sports." Whitcas did not contest that finding. Nor did she contest the Board's presumptive finding that the overlapping services are offered in the same trade channels to the same classes of consumers.
The real line of scrimmage was the issue of the similarity of the marks. The Board observed once again that "[w]hen trademarks would appear on substantially identical . . . [services], 'the degree of similarity necessary to support a conclusion of likely confusion declines.'"
The Board found the word TIMEOUT to be the dominant portion of Whitcas’s mark. She maintained that TOUCHDOWN is dominant because it appears as the first word in the mark. The Board was unmoved.
While the first term in a mark generally may be considered as the feature that will be called for, and so remembered, by consumers, this is not invariably the case. For example, as we have here, in situations where the first term in a mark functions as an adjective, descriptor or modifier of the second term, it is the subsequent term that is dominant, not the primary term.
The Board noted that the word "TOUCHDOWN" is clearly associated with American football, and it describes the type of television programing Applicant Whitcas provides. The words TIME OUT and TIMEOUT have common meanings.
In fact, viewers of Registrant’s TIME OUT television programming are likely to assume that Applicant’s television programming, offered under the TOUCHDOWN TIMEOUT mark, are merely a line extension of the services emanating from Registrant.
Finding that the marks "are more similar than they are different by the elements of appearance, sound, meaning and overall commercial impression," and considering the overlapping services, channels of trade, and classes of consumers, the Board found confusion likely and it affirmed the refusal.
Read comments and post your comment here.
TTABlogger comment: I think TOUCHDOWN TIMEOUT is a unitary mark having a unique connotation. TIME OUT connotes a much more nebulous hiatus. And the "line extension" theory seems to be a convenient way to manufacture support for almost any weak Section 2(d) refusal. What do you think?
Text Copyright John L. Welch 2023.
posted by John L. Welch @ 2/10/2023
13 comments
13 Comments:
Yes, John, it's clearly a unitary mark and has alliteration. Granted, I am biased here and in hindsight I gave the Board way too much credit for thinking that this case would be easily won solely on the different connotations of the marks..TOUCHDOWN TIMEOUT clearly referring to the timeout taken after a team scores a touchdown and "time out" (TWO WORDS) clearly referring to 'time' spent 'out' (at the various events sponsored by the registrant under its mark..but nothing at all to do with football). In hindsight I didn't hit that point hard enough but how the Board could find that the meanings of the terms, in the context of the services, were IDENTICAL, is beyond me. I relied on the fact that the Board would look at the services and the marks and simply see the obvious differences in overall connotation (and sight and sound) and that it was a 21 point favorite even if a monkey wrote the brief (no comments please). If anyone is interested in taking this to the CAFC on a pro bono basis, contact me.
The Board punted on this one
The biggest upset since the Giants beat the Patriots
I think the board punted on this one. Given that the registrant had everything but the kitchen sink in their ID, getting over the goal line, in regards to different goods/services, was probably impossible.
John, you INFRINGED the NFL's trademark! It should have been a "Big Game Special"!!!
How is "touchdown" a descriptor for timeout? What is a "touchdown" variant of a timeout and how does that differ from a regular timeout? Sounds like an awfully long stretch to conclude that "touchdown" is not the dominant portion of the mark.
It's OK, John. You can say "Super Bowl." :)
Touchdown Timeout v. Timeout? Easily close enough for confusion for me. It's only two words and each word is equally dominant. Touchdown in no way changes the meaning or impression of Timout. Two different companies operating in the same space with those two marks would be very confusing.
I don't want a marketplace that's filled with partial use and cross-over use of other's registered marks. What a mess that would be.
I don't understand how the board didn't find both marks merely descriptive under current jurisprudence. After all, sportsball games have timeouts, and therefore consumers would understand that the services offered under the mark would have something or other to do with sportsball games.
@Eddie..did you read the case? The meanings of marks relates to the associated goods or services. Please read the beginning of my brief if this puzzles you. "Same space" is a stretch even on paper..the registered mark doesn't even mention sports
TIMEOUT (one word) and "TIME OUT" (two words) have completely different meanings. The team took a timeout. I spent time out with my husband
I think the Board fumbled this one, blew the offside call, and in the process gave the win to the wrong team. That said, the Board can be very unpredictable and quirky. Maybe this was one of those cases.
I agree the “line extension” argument without any evidentiary support can be used to support any refusal, and that’s why it’s not persuasive. What does it say about the PTO that examining attorneys and the TTAB frequently rely on it?
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