Applicant’s founders created its game cards as an “expansion pack” to opposer’s popular card game. In choosing the applied-for mark, applicant “wanted a phrase that would evoke [CARDS AGAINST HUMANITY] by rhyming with it, but in an absurd and surreal way.” Email communications between the parties ensued, and in 2013 opposer gave applicant permission to have a first set of cards printed and sold on applicant’s website.
Sales of applicant’s cards peaked by Christmas 2014, and applicant began selling on Amazon.com and at small retailers. However, when applicant attempted to sell its cards to the Target retail chain, opposer objected. The subject application was filed in May 2015, and opposer filed a timely opposition.
Estoppel Defenses: Applicant claimed that it received opposer’s approval to market its game, and did so for two years without complaint from opposer. This express consent, according to applicant, was followed by applicant’s detrimental reliance. Thus the defense of estoppel was created. Applicant further contended that “an express consent to use necessarily includes a consent to register.”
Opposer admitted that it gave “a limited permission to use the name Crabs Against Humidity as part of an overall design back in 2013.” However, opposer asserted, that permission was limited to the specific design and applied only to a small print run to be sold at applicant’s website.
The Board observed that estoppel by acquiescence requires proof of three elements: “(1) that plaintiff actively represented that it would not assert a right or a claim; (2) that the delay between the active representation and assertion of the right or claim was not excusable; and (3) that the delay caused defendant undue prejudice.” For an inter partes proceeding, the period of delay does not begin to run until the subject mark is published for opposition. Here, opposer timely filed its opposition, and so there was no unexcusable delay.
As to estoppel by express consent, the Board found that defense to be unavailing. The extent of opposer’s consent was ambiguous. Applicant apparently did not believe it could pursue any sales without consent. Moreover, even if opposer had unconditionally consented to applicant’s use of its marks, there was no evidence that opposer consented to registration. Therefore this defense also failed.
Finally, applicant’s assertion that opposer was guilty of unclean hands due to its attempt to restrain trade was beyond the Board’s jurisdiction.
Likelihood of Confusion: The facts that the involved goods are identical, and therefore presumably travel through the same channels of trade to the same classes of consumers, and the goods are relatively inexpensive items that may be purchased on impulse, weighed heavily in opposer’s favor. Moreover, because the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.
As to the marks, the Board found them to be “quite similar.” The similarity is no coincidence, since applicant admitted that it intended to invoke opposer’s mark by “rhyming with it.” Consumers often abbreviate or shorten marks, and the record showed that consumers do indeed abbreviate the parties’s marks to CAH.
Applicant claimed that its mark is a “parody” of opposer’s mark, like the “Chewy Vuiton” dog toy. However, the Board has long held that parody is a viable defense to a Section 2(d) claim only if the involved marks are not otherwise confusingly similar. [If they are not confusingly similar, why would you need the parody defense? – ed.]. Here, the marks are similar in their overall commercial impression, and so the parody defense was inapplicable.
The Board found that the differences in the literal connotations of the marks did not overcome their similarities in appearance, pronunciation, and overall commercial impression. Both marks “share a whimsical or nonsensical nature,” and applicant admitted that its mark “necessarily . . . calls to mind” opposer’s mark.
The Board further found that opposer’s mark is “very strong.” Its game has enjoyed significant sales and an impressive amount of unsolicited publicity, and the game has been a best-seller on Amazon.com for years.
Moreover, opposer supplied “substantial” evidence of actual confusion that had “clear probative value.” Although the number of known instances of confusion were few when compared to the number of games sold, the Board found them to be at least “illustrative of how and why confusion is likely.”
Finally, invoking the 13th du Pont factor, opposer alleged that applicant had proceeded in bad faith, but the Board was unconvinced. “A finding of bad faith must be supported by an intent to confuse, rather than mere knowledge of another’s mark or even an intent to copy.” Here, applicant had reason to believe it received approval to adopt its mark, and so the Board found this factor to be neutral.
Conclusion: Balancing the relevant du Pont factors, the Board found that opposer had proven a likelihood of confusion by a preponderance of the evidence that consumers are likely to mistakenly believe that applicant’s goods originate with, or are licensed, sponsored, or approved by, opposer. “The intention of [A]pplicant was to get as close to [O]pposer’s marks as possible and it is our opinion that it has succeeded to the extent that there is a likelihood of confusion.” (citation omitted).
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Text Copyright John L. Welch 2019.