Introduction

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.

Decision

“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.

Conclusion

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

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