[This guest post was written by John L. Strand, Shareholder in the Trademark and Litigation Groups at Wolf Greenfield]. Entertainment Content, owner of registrations for the marks JUSTICE CENTRAL and JUSTICECENTRAL.TV, opposed Cooper Holdings’ application for the mark JUSTICE NETWORK, claiming a likelihood of confusion under Section 2(d). Both parties used their respective marks in various forms of television programming. Applicant Cooper Holdings submitted 12 third-party registrations for marks continuing the word “Justice” for broadcasting-related services, in arguing that “Justice” is a weak formative. The Board concluded, however, that justice was on the side of opposer. Entertainment Content, Inc. v. Cooper Holdings, Inc., Opposition No. 91223121 (Mar. 11, 2020) (not precedential) (Opinion by Judge Linda A. Kuczma).

Similarity of Services – As is “well-settled” in oppositions based on registered marks, the Board focused on the services listed in the opposed application and those listed in the pleaded registrations. The application and registrations generally were directed to different forms of “television programming services,” but opposer’s services were narrower than applicant’s because they were limited to “programs in the field of law and courtroom legal proceedings.” However, since applicant’s recitation of “television programming services” had no limitation regarding subject matter, in the Venn diagram of the parties’ service there was overlap and the Board therefore found the services “legally identical.”

Similarity of Marks – As is common when the opposer is relying on different marks and registrations for its opposition, the Board focused only on the mark it found “most pertinent” for its du Pont analysis, i.e., the JUSTICE CENTRAL mark. Ultimately, the Board found the two marks, JUSTICE CENTRAL and JUSTICE NETWORK, to be similar and it therefore weighed this factor in favor of finding a likelihood of confusion.

The Board started by finding that “’Justice’ is the dominant and first element of Applicant’s JUSTICE NETWORK mark, which is identical to the dominant first term in Opposer’s JUSTICE CENTRAL mark,” because “[c]onsumers in general are inclined to focus on the first word or portion in a trademark.” Just as important, the Board’s concluded that the word “network” is “highly descriptive, if not generic,” and so “has less source-identifying significance and is clearly subordinate.” Once it focused on the similarity of the word JUSTICE between the marks, and discounted the difference between “network” and “central,” the Board’s conclusion on this du Pont factor was largely inevitable.

Applicant Cooper Holdings pointed to two previous Board decisions – one finding no likelihood of confusion between DEER-B-GON and DEER AWAY (Safer, Inc. v. Oms Invs. Inc., 94 USPQ2d 1031 (TTAB 2010)) and the other finding no likelihood of confusion between SMART BALANCE and SMART ONES (ProMark Brands, Inc. v. GFA Brands, Inc., 114 USPQ2d 1232 (TTAB 2015) (TTablogged here) – but the Board found them to be distinguishable. In the Safer case, DEER did not have a source-indicating significance, unlike JUSTICE here. In ProMark, there was a different “marketing emphasis” between the parties’ marks, and a “long history of conflict-free co-existence of the parties’ marks, and … survey and expert testimony.” The Board did not find those elements present here.

Strength of Opposer’s Mark – Under this du Pont factor, the Board considers “[t]he number and nature of similar marks in use on similar goods,” and “addresses marks similar to an opposer’s registered mark, to demonstrate the strength or weakness of that mark.”

Cooper Holdings relied on “17 active third-party registrations for marks containing the term ‘Justice’ to show the weakness of ‘Justice’ in Opposer’s and Applicant’s marks.” The Board, however, dismissed the significance of several of these registrations: It found some to be cancelled, one not of record in the proceeding, and five to cover “inapposite goods or services.” The Board ended up analyzing in more depth 12 registrations that were “arguably probative” since they involved services related to television or webcasting, including CELEBRITY JUSTICE, JUSTICE LEAGUE, LAW & JUSTICE, HARD JUSTICE, WHEEL OF JUSTICE, THE JUSTICE HOUR, MAIN JUSTICE, CAJUN JUSTICE, BIG EASY JUSTICE, JUSTICE WOMAN, JUSTICE FOR ALL, and SIMPLE JUSTICE.

Looking more closely at these 12 registered marks, the Board found, for various reasons, that “the third-party registrations that arguably support the position taken by Applicant number only seven.” And from there – considering there was no evidence concerning use of these registered mark – the Board found that these seven registrations only evidenced “some weakness” in the parties’ marks.

Actual Confusion and Concurrent Use – Opposer Entertainment Content submitted a declaration from an associated VP in an attempt to prove the existence of actual confusion in the marketplace. However, as many times happens with such declarations, the Board largely dismissed the testimony, finding “it merely provides non-detailed conclusory testimony regarding the putative beliefs of such third-parties. His testimony does little, if anything, to establish or support actual confusion between JUSTICE CENTRAL and JUSTICE NETWORK.” The Board similarly dismissed “misdirected communication evidence,” finding that “[w]ithout direct testimony from the confused individuals, there is insufficient information to ascertain what they were thinking, or what caused their purported confusion.”

In the end, the Board found the “actual confusion” and “concurrent use” factors to be neutral.

Nevertheless, because the marks gave the “same overall commercial impression” and because the parties’ offer “overlapping services offered in the same trade channels to the same classes of customers,” the Board sustained the opposition.

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TTABlog comment: There was no discussion of the commercial strength of opposer’s marks.

Note that, in spite of various relevance and hearsay objections, the Board refused to exclude any evidence “outright,” since the Board is “able to weigh all evidence and testimony appropriately.”

Text Copyright John L. Strand and John L. Welch 2020.