Published 05/02/2019 by CIONCA Team Member
On December 31, 2018, the Trademark Trial and Appeal Board (“TTAB”) made decision in TiVo Brands LLC v. Tivoli, LLC. Tivoli, LLC (“Applicant”) applied to register TIVOTAPE and TIVOBAR in 2014 and 2016, respectively. In 2015, TiVo Brands LLC (“Opposer”) filed oppositions to both applications, alleging dilution by blurring and likelihood of confusion, as the Opposer’s registered marks are “TIVO and TIVO-formative marks.” Applicant denied all allegations. Both parties filed briefs and the Opposer filed a reply brief. An oral hearing was held in 2018 in TTAB’s jurisdiction.
“A successful claim for federal trademark dilution by blurring under Section 43(c) of the Trademark Act requires that a plaintiff plead and prove the following in a Board proceeding:
1. Plaintiff owns a famous mark that is distinctive;
2. Defendant is using a mark in commerce that allegedly dilutes plaintiff’s famous mark;
3. Defendant’s use of its mark began after plaintiff’s mark became famous; and
4. Defendant’s use of its mark is likely to cause dilution by blurring.”
TTAB specifically examined likeliness of dilution of TIVO word and design marks by Applicant’s TIVOTAPE and TIVOBAR, as dilution of these marks would hold scope over the other TIVO marks as well.
The degree of fame needed for dilution is higher than fame needed for likelihood of confusion. As such, “the court may consider all relevant factors, including the following:
(i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner of third parties.
(ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark.
(iii) The extent of actual recognition of the mark.
(iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.”
TTAB somewhat favored finding the mark famous in view of factor one due to Opposer’s sparse records of self-advertising and self-publicity. In regard to factor two, TTAB concluded having neutral consideration as only statistics were provided without context. However, addressing factor three—which is perhaps the most significant of the four elements (Nike Inc. v. Maher)—TTAB found that “the extent of actual recognition of [Opposer’s] mark was pervasive and widespread” by 2010 (when Applicant adopted its mark), and thus, favored dilution of fame. Finally, factor four also favored finding a dilution of fame as both marks considered registered on the Principal Register as inherently distinctive and are over five years old.
Applicant made the argument that Opposer must establish that its fame was present by August 1972 as that is the year Applicant began using its TIVOLI mark. However, per TTAB, “the ‘involved’ mark may not change over time; in order for the defendant to ‘tack’ on its earlier use, the mark must be essentially the same at the time it is first used as at the time when it is used in association with the goods or services identified in the subject application or registration.” In this situation, TTAB expressed TIVOLI is not “legally equivalent” to TIVOTAPE or TIVOBAR. Finally, as the statute declares, “a plaintiff must show that its mark ‘is widely recognized by the general consuming public in the United States,’” and dilution can only be claimed by the “owner of a famous mark that is distinctive, inherently or through acquired distinctiveness.” Through submission of evidence and analyses, Opposer was able to prove distinction and maintain its fame post-2010 and throughout trial.
Furthermore, “In determining whether a mark or trade name is likely to cause dilution by blurring, the Board may consider all relevant factors, including the following:
(i) The degree of similarity between the mark or trade name and the famous mark.
(ii) The degree of inherent or acquired distinctiveness of the famous mark.
(iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.
(iv) The degree of recognition of the famous mark.
(v) Whether the use of the mark or trade name intended to create an association with the famous mark.
(vi) Any actual association between the mark or trade name and the famous mark.
As TIVO is used as a source identifier, and as it is the most prominent portion of the Applicant’s marks, TTAB found that Applicant’s marks are sufficiently similar to Opposer’s marks. Addressing factor two, “TIVO is inherently distinctive in connection with Opposer’s listed goods and services.” Opposer also demonstrated its consumers recognize the marks and their source. Factor three also favors Opposer as Applicant could not satisfy TTAB in proving the marks’ use by any other third-parties. Regarding factor four, TTAB found that TIVO “is now primarily associated with the owner of the mark even when it is considered outside of the context of the owner’s goods and services,” favoring Opposer. Factor five was considered neutral as “no evidence suggests that Applicant intended to create an association with Opposer’s TIVO mark.” Finally, factor six favors Applicant as TIVOTAPE and TIVO have been in concurrent use without confusion amongst consumers.
In view of all evidence as a whole, TTAB sustained Opposer’s oppositions, concluding that Applicant’s marks are likely to dilute Opposer’s famous mark.
One must consider carefully what marks to adopt as any interference with earlier marks—especially marks that have established and maintained their fame—may cause hindrance.
Full TiVo Brands LLC v. Tivoli, LLC decision can be read here: https://e-foia.uspto.gov/Foia/RetrievePdf?system=TTABIS&flNm=91227791-12-31-2018
Disclaimer: The views and opinions expressed throughout this blog are the views and opinions of the individual author(s) and/or contributor(s) and do not necessarily reflect the views and opinions of our firm, CIONCA IP Law. P.C.
Marin11/18/2015 6:11:11 PM
PTAB Decisions Give Examples of Patent Eligible Subject Matter
Marin11/18/2015 6:15:40 PM
Covered Business Method Claims Are Not Required to Particularly Target Financial Industry
Marin11/18/2015 7:31:35 PM
When Is a Thesis Prior Art?
Marin11/19/2015 2:13:05 PM
An Innovator’s Dilemma: Design or Utility Patent?
Marin1/28/2016 9:10:56 PM
How Unpredictability Can Affect Obviousness Challenges
Marin1/28/2016 9:15:16 PM
The Patent Trial and Appeal Board Designates Two Decisions as Precedential
M. Cionca and I. Kim2/4/2016 5:55:16 PM
Software Inventions Are Still Patentable!
Marin Cionca2/16/2016 6:34:53 PM
In IPRs, patentees have to show that substitute patent claims are patentable
I. Kim PhD2/26/2016 8:47:51 PM
The U.S. Supreme Court Will Review Claim Construction Standards and Institution Decision Reviewability.
Iris Kim, PhD3/25/2016 8:34:14 PM
Challenging a Claim’s Validity with Different Standards of Claim Construction
Marin Cionca5/17/2016 8:57:23 PM
Patent Claims Rejection Based on Inherency
Iris Kim, PhD6/1/2016 7:04:50 PM
The Patent Trial and Appeal Board Designates Five More Decisions as Precedential
Marin Cionca9/6/2016 9:26:12 PM
Patent Case Law: New Example of Software as Patentable Subject Matter
Marin Cionca9/15/2016 9:47:39 PM
Patent Law Alert: Federal Circuit Opens Door for More Software Patents
Marin Cionca2/21/2017 12:30:52 AM
Software Patent Law Update: Federal Circuit Finds Graphical User Interface Patentable
Marin Cionca4/25/2017 9:48:49 PM
Monetization of Patents: How to Make Money with Patents
CIONCA - Staff6/15/2017 5:32:14 PM
Patent Law: Challenging the Patent Claim Definiteness Requirement
CIONCA - Staff6/28/2017 8:26:07 PM
Patent Law: Conditions Precedent May Expose Method Claim to Broad Interpretation During Prosecution
CIONCA - Staff8/9/2017 5:39:58 PM
Patent Case Study: The Novelty Of An “Invention” Is NOT Enough To Make It Patentable
CIONCA Staff8/20/2017 3:16:11 PM
CIONCA on Patents: Think Twice Before Suing for Patent Infringement and Fight Back when Unreasonably Sued
staff9/15/2017 9:33:30 PM
staff9/27/2017 5:00:12 PM
Claim Indefiniteness During Patent Pre-Issuance: Define Your Invention, Not Just Your Audience
staff9/27/2017 5:12:07 PM
CIONCA - Patent and Trademark Law Attorney
Staff9/28/2017 7:27:22 PM
Staff11/3/2017 4:20:04 PM
An Introduction to Provisional Patent Applications
11/10/2017 6:47:44 PM
An Introduction to Design Patent Applications
11/17/2017 1:24:20 PM
An Introduction to Patent Searches
12/1/2017 8:01:27 PM
An Introduction to Patent Cooperation Treaty Applications
12/26/2017 6:04:25 PM
CIONCA Sets Foot in San Francisco
1/2/2018 7:47:09 PM
The Lanham Act: Disparagement Provision Violates the First Amendment
CIONCA Team1/17/2018 8:12:06 PM
A Fork in the Road: Production or Protection?
CIONCA Team2/16/2018 4:07:48 PM
Fashion and Intellectual Property
3/8/2018 1:25:46 PM
Proceed with Caution: Consider Carefully when Narrowing Claims for Allowance
3/20/2018 12:50:05 PM
Andrei Iancu - New Director of the USPTO
CIONCA Staff4/13/2018 9:10:04 PM
It Take Two to Tango: Knowles v. Iancu, a Standing Dispute in a PTAB Decision
CIONCA Staff4/20/2018 5:25:25 PM
USPTO Changes Examination Procedure Pertaining to Subject Matter Eligibility in View of Berkheimer v. HP, Inc.
5/4/2018 7:37:51 PM
The Hague System for Protection of International Designs
CIONCA IP5/17/2018 9:54:58 PM
Marin Cionca Presents at OCIPLA May 2018 Luncheon
7/3/2018 7:44:33 PM
Impax Laboratories Inc. v Lannett Holdings Inc. on Claim Invalidation
Marin Cionca7/31/2018 6:50:05 PM
My patent expired? Can I still sue for patent infringement?
Staff8/16/2018 4:24:01 PM
Correcting or Changing a Patent After Issue Through the Central Reexamination Unit
Staff8/31/2018 7:26:58 PM
Patent Claim Interpretation By Federal Circuit's on Facebook's Contiguous Image Layout
CIONCA Team Member9/17/2018 4:33:20 PM
Trademarks and Likelihood of Confusion: Federal Circuit’s Decision in In re: Detroit Athletic Co.
Marin Cionca10/1/2018 7:42:12 PM
Can I Register a Color as a Trademark or Service Mark?
CIONCA Team Member10/16/2018 6:50:31 PM
A Double-Edged Sword: Benefit of Priority or Longer Patent Term
CIONCA Team Member11/19/2018 1:07:51 PM
The Appeals Process
Marin Cionca12/8/2018 8:35:06 PM
IP Assets - Procurement, Enforcement, Monetization
CIONCA Team Member12/18/2018 6:12:48 PM
Schlafly v. The Saint Louis Brewery: The Registration of Merely a Surname
CIONCA Team Member1/4/2019 4:12:21 PM
In re: Tropp: New Matter in a Continuation Can Be Relevant to Written Description Requirement
Marin Cionca1/23/2019 9:45:30 PM
Patent Law Alert: All Sales of the Invention, Including Secret Sales May Invalidate a Patent
CIONCA Team Member2/5/2019 7:22:27 PM
TiVo Puts Tivoli on Pause: TTAB’s Decision in TiVo Brands LLC v. Tivoli, LLC
CIONCA Team Member2/19/2019 7:12:46 PM
Revised Guidance by USPTO on Patent Subject Matter Eligibility and Examining Computer-Implemented Functional Claims
Marin Cionca3/1/2019 9:36:50 PM
USPTO Director Andrei Iancu Visits Orange County!
CIONCA Team Member3/21/2019 3:49:43 PM
Defining Inherency: A Decision in Personal Web Technologies, LLC v. Apple, Inc.
CIONCA Team Member4/3/2019 7:25:37 PM
The Patent Trial and Appeal Board (PTAB) Designates Three Decisions Precedential
Marin Cionca4/17/2019 3:48:33 PM
What Qualifies as Proper Use in Commerce Claim in a USPTO Trademark Application?
CIONCA Team Member5/7/2019 7:13:41 PM
The Federal Circuit Defines a Technological Invention
CIONCA Team Member5/20/2019 8:25:57 PM
PTAB Designates Cases as Precedential
Marin Cionca6/11/2019 8:43:17 PM
Can I Successfully License My Invention?
CIONCA Team Member6/27/2019 7:41:52 PM
Obviousness in a Single Prior Art Instance: Game and Technology Co., LTD., v. Activision Blizzard INC., Riot Games, INC.
CIONCA Team Member7/5/2019 2:22:42 PM
In re: Global IP Holdings LLC: Broadening Claims Through Reissue Applications
CIONCA Team Member8/5/2019 2:29:33 PM
Is Speculation Enough Evidence for an Appeal?: General Electric Company v. United Technologies Corporation
CIONCA Team Member8/19/2019 7:46:17 PM
In re Yarnell Ice Cream, LLC: Trademark Descriptiveness and Acquired Distinction
Marin Cionca, Esq.
Registered Patent Attorney
USPTO Reg. No. 63899
About CIONCA® IP Law firm: We are an Orange County, CA based boutique intellectual property firm with a focus on patent and trademark application, prosecution, opinion, licensing and IP enforcement services, offering its IP services primarily at flat fee rates. We serve local OC clients, as well as clients throughout US and international clients.
We’d love to hear from you…we just need a little info
about your plans to take over the world!
P.S…Feel free to call us! (800)985-9198
Thank you for your message. We will respond within 24-72 hours. Thank you.