Diving head first into the deep end, the Trademark Trial and Appeal Board (“TTAB”), recently decided whether a chef’s application to register “JAWS” for an online cooking channel should sink or swim. In re Mr. Recipe, LLC.
The precedential decision is useful for anyone wishing to learn more about the role that a famous trademark, such as the JAWS® film name in this case, can play in the “likelihood of confusion” analysis at the US Patent and Trademark Office.
On an ex parte appeal, the TTAB refused to register two trademark applications for proposed marks JAWS and JAWS DEVOUR YOUR HUNGER. The applicant, a chef who uses the moniker “Mr. Recipe,” had applied to register the two marks for “Entertainment, namely, streaming of audiovisual material via an Internet channel providing programming related to cooking.”
The initial examining attorney and then the TTAB on appeal denied registration on the ground that the marks would create a likelihood of confusion with a prior JAWS trademark registration for the film. The JAWS registration at issue specifically covered “video recordings in all formats all featuring motion pictures.”
The TTAB reviewed evidence of the fame of the JAWS movie, commenting that “JAWS has permeated into general culture, including being parodied by filmmakers.” The applicant tried arguing that its mark JAWS DEVOUR YOUR HUNGER conveyed a meaning of food, which would distinguish the online cooking show from the film. The TTAB remained unpersuaded, however, opining that the mark would connote the “shark’s reputation as having a voracious appetite.”
In addition to analyzing the similarities of the marks and the fame of the film, the TTAB also found that video recordings and Internet streaming services were sufficiently related such that confusion could result. The TTAB reasoned that the consuming public “generally understands that video recordings of movies may be converted to a format that may be streamed over the Internet.”
Learning from Mr. Recipe’s trademark experiences
As the TTAB noted in its decision, the trademark prosecution process is restricted to the goods and services named on paper, and actual marketplace realities can alter the likelihood of confusion analysis. Nevertheless, the decision serves as a reminder that the question of confusion and trademark infringement can arise in unexpected situations. Furthermore, brand owners may be inclined to use puns and plays on other trademarks in their social media presence, but doing so can create the risk of a trademark infringement and/or dilution claim.
Owners of famous marks, meanwhile, may be able to enforce their mark against third-party uses on social media. As the TTAB recognized in the JAWS case, fame can increase the likelihood of confusion between a famous mark and a junior mark.
The U.S. also confers enhanced trademark protection to owners of famous marks under the federal trademark dilution cause of action. Notably, the dilution statute recognizes a defense for parody uses. In this case, given that the TTAB held that Mr. Recipe’s JAWS Internet cooking show would have created a likelihood of confusion with the film, it seems unlikely that a parody defense would have been successful in a dilution dispute before the TTAB.
In general, brand owners can help prevent potential conflicts and disputes by conducting clearance searches before adopting names and slogans, including those used for their online services, such as blogs, Internet videos, and social media profiles. A preliminary “knock-out” search can help avoid obvious disputes, and a comprehensive search can reduce the likelihood of prosecution issues when seeking protection under a federal U.S. trademark registration.