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From Intellectual Property Law Daily, January 9, 2019

TIVOTAPE and TIVOBAR marks for lighting products likely to dilute famous TiVo mark

By Cheryl Beise, J.D.

TiVo Brand’s opposition to a lighting company’s applications to register the marks TIVITAPE and TIVOBAR on the ground of dilution by blurring has been sustained by the Trademark Trial and Appeal Board in an opinion designated as precedential. The opposer established that its TIVO mark was famous—widely recognized as a household brand name for DVR player—as of 2010, the date of the applicant’s first use in commerce—and that the mark continued to be famous at the time of trial. The Board also found that the similarity of the parties’ marks created an association that impaired the distinctiveness of the opposer’s famous mark (TiVo Brands LLC v. Tivoli, LLC, December 31, 2018, Wolfson, F.).

In 2014, Tivoli, LLC ("applicant") applied to register TIVOTAPE (in standard characters) for "electric lighting fixtures" in International Class 11, based on first use in commerce on May 30, 2100. In 2016, the applicant applied to register TIVOBAR (in standard characters) for lighting fixtures and other related lighting products, based on first use in commerce on September 21, 2015. The applicant has been in the lighting business since 1972. It owns registrations for the marks TIVOLI, TIVOLED, TIVOFLEX and TIVOLITE for lighting fixtures, controllers, and LED lights. The applicant also asserted common law rights in the marks TIVOFLUTE, TIVOFLEX, TIVOCOVE, TIVOCUE, and TIVOGRAZE for lighting goods.

TiVo Brands LLC ("opposer") opposed both applications based on dilution by blurring of and likelihood of confusion with the opposer’s prior common law and its registered TIVO and TIVO-formative marks. In 1999, the opposer developed the first "digital video recorder" (or "DVR"), which it sold under the mark TIVO. By 2010, TIVO was recognized as a household brand name for DVR players.

Dilution by blurring. To succeed on a claim for dilution by blurring under Section 43(c)(1) of the Lanham Act, a party must prove that it owns a famous, distinctive mark, that the defendant is using a mark in commerce that is likely to dilute by blurring the plaintiff’s mark; that the plaintiff’s mark was famous before the defendant began using its mark. Dilution does not require a showing of likelihood of confusion, competition, or actual economic injury.

Fame of TiVo mark. In evaluating fame, the Board focused on the opposer’s use and registration of the TIVO word mark (registered since 2001), and the TIVO word and design mark (registered since 2002), for the opposer’s DVR product. Section 43(c) of the Lanham Act lists four factors as relevant to the fame inquiry: (i) the duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or 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; and (iv) whether the mark was registered ... on the principal register. 15 U.S.C. § 1125(c)(2)(A)(i)-(iv).

The Board considered the opposer’s evidence of 6.8 million subscribers and annual revenues exceeding $500 million to be neutral because the opposer did not present a context for evaluating such statistics. However, the opposer presented significant evidence of unsolicited widespread media attention and advertising by third parties, from January 2000 to the present. The Board concluded that from at least as early as 2002, public recognition of the TIVO mark was widespread and that by 2010, TIVO had become a "household term [with] which almost everyone is familiar."

The applicant argued that the opposer should be required to establish fame of its TIVO mark by August 11, 1972, because that was the date on which the applicant first began using its TIVOLI mark from which its later TIVO-formative marks were derived. The Board disagreed. "Even if we were to allow Applicant to rely on prior use of a mark other than TIVOTAPE or TIVOBAR, such mark would have to be essentially the same, or "legally equivalent" to these marks," the Board explained. Because none of the applicant’s prior marks were equivalent to its applied-for marks, the applicant could not rely on tacking to show prior use.

The Board also considered whether a plaintiff alleging dilution must also show that its mark is still famous at the time of trial. Noting that this was an issue of first impression, the Board concluded that such an additional requirement does indeed exist. The Board relied on the language of the statute itself. To establish fame for dilution purposes, a plaintiff must show that its mark "is widely recognized by the general consuming public in the United States." 15 U.S.C. § 1125(c)(2)(A) (emphasis added). In addition, only the "owner of a famous mark that is distinctive, inherently or through acquired distinctiveness" may bring a claim for dilution. 15 U.S.C. § 1125(c)(1). "Accordingly, unless the plaintiff owns a famous mark at the time it brings the claim, and by extension, retains its fame through trial, this provision of the statute cannot be satisfied," the Board determined. In the Board’s view, a mark that has lost its fame should not "enjoy the widest penumbra of protection available accorded by the extraordinary protection of the dilution statute." The Board also pointed out that this approach also accounts for "any significant changes in the marketplace between the date of Applicant’s first use of its mark and trial."

In this case, the Board found that the opposer’s mark TIVO was famous for dilution purposes as of 2010 and currently. As evidence, the Board cited references to TIVO in the "Hollywood Reporter" in 2014 and the online magazine "Celebitchy" in 2013, as well as the opposer’s evidence of 6.8 million subscribers and recent annual revenues between $526 million and $810 million, and the recent expansion of the opposer’s DVR product line under its TIVO ROAMIO mark.

Likelihood of dilution. The Board next addressed whether the applicant’s marks created a likelihood of dilution by blurring. The question was whether an association arising from the similarity of the parties’ marks would impair the distinctiveness of the opposer’s famous mark. The Board considered the six statutory factors listed in Section 43(c): (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 user of the mark or trade name intended to create an association with the famous mark; and (vi) any actual association between the mark or trade name and the famous mark. 15 U.S.C. § 1125(c)(B)(i)-(vi).

The Board found that four factors favored the opposer, one factor favored the applicant and one factor was neutral. First, the Board determined that the applicant’s TIVOTAPE and TIVOBAR marks were similar to the opposer’s TIVO mark in appearance and pronunciation due to the shared dominant term "TIVO" in each mark. The addition of the descriptive elements "TAPE" and "BAR" did not commercially distinguish the applicant’s marks. The Board next found that the opponent’s mark TIVO was inherently distinctive because the relevant public recognized the mark TIVO as signifying a "unique, singular, or particular source." The opposer also showed that it engaged in substantially exclusive use of the mark TIVO. Regarding the third factor, the applicant submitted 84 third-party registrations for TIVO-formative marks, but the Board deemed this evidence to be unpersuasive because 41 of the registrations had been cancelled, none of the marks covered by the remaining 43 third-party registrations created a commercial impression similar to the TIVO mark, and there was no evidence that any of the third-party marks were currently in use. The degree of recognition of the famous TIVO mark also favored a finding of dilution by blurring. The lack of evidence regarding the applicant’s intent made the fifth factor neutral. Given the parties’ concurrent use of their marks for more than eight years, the last factor favored the applicant.

The Board concluded that the applicant’s use of its marks was likely to dilute the opposer’s famous marks. The opposer’s opposition was sustained as to both of the applicant’s applications. The Board did not reach the opposer’s likelihood of confusion claim.

The case is Opposition Nos. 91221632 and 91227791.

Attorneys: Anne H. Peck, John Paul Oleksiuk, and Timothy D. Hance (Cooley LLP) for TiVo Brands LLC. Nicholas D. Myers of (Myers Law Group) for Tivoli, LLC.

Companies: TiVo Brands LLC; Tivoli, LLC

MainStory: TopStory Trademark USPTO

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