They say an elephant never forgets. The TTAB? Perhaps not so much. At least when it comes to its prior findings of fame on the same marks in later proceedings.
A finding of fame is an important factor when engaging in a likelihood of confusion analysis. As the TTAB has noted, “[w]hen a prior user’s mark is found to be famous, this plays a significant role in the likelihood of confusion analysis because famous marks enjoy a broad scope of protection.”
In the TTAB opposition and cancellation proceeding of Under Armour, Inc. v. Evade, LLC, Under Armour sought to cancel trademark registrations owned by Evade, and oppose Evade’s applied for marks on the ground of likelihood of confusion with Under Armour’s marks. In support of its claim of likelihood of confusion, Under Armor alleged that its mark UNDER ARMOUR was famous.
Being fully aware that the TTAB had already concluded its UNDER ARMOUR mark was famous in a prior TTAB decision, Under Armour, Inc. v. Bode, Under Armour attempted to take full advantage of this prior decision and asked the TTAB to conclude that its UNDER ARMOUR mark was also famous in the context of the pending case.
The average trademark fan might think that once a mark has been adjudicated famous, and with nothing having taken place in the interim that could reasonably challenge that conclusion, that a follow-up finding of fame would be automatically applied. Evade disagreed. And so did the TTAB.
In refusing to find UNDER ARMOUR to be famous in the pending case, the TTAB reminded “everyone” that it only looks to the record in the current proceeding when making a determination of fame. This is because the panel in the pending proceeding was not privy to the evidence made of record in the earlier Bode proceeding and, therefore, cannot determine the TTAB’s prior evidentiary bases for a finding of famousness.
And so Under Armour had to prove fame all over again, as if the UNDER ARMOUR mark had never been adjudicated famous…something it failed to do.
One could wonder whether the TTAB would allow evidence of fame from prior decisions in slightly different circumstances. Such as, where the prior case was before the same three judge panel, or at least had some overlap between panels, or where the prior decision had a lengthy discussion of its evidentiary bases for fame.
The proceeding is Opposition No. 91195620 and Cancellation No. 92052716 (October 29, 2015) [non-precedential], aff’d per curiam, Appeal No. 16-1531 (Fed. Cir. Feb. 28, 2017)
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