The Board sustained a Section 2(d) opposition to registration of the mark GNARLY MARLEY’S for various clothing items and for retail clothing and gift store services, finding the mark likely to cause confusion with the registered mark BOB MARLEY and the common law mark MARLEY for clothing and ornamental patches. This post will hit some of the highlights of the 42-page opinion. Fifty-Six Hope Road Music Limited v. Sandal Factory, Inc., Opposition No. 91212582 (March 8, 2019) [not precedential] (Opinion by Judge Marc A. Bergsman).

Procedural issues: The Board pointed out that an unpleaded registration may not be used as a basis for a party’s opposition. Since Opposer Fifty-Six Hope did not plead ownership of its registration for  MARLEY for clothing, it had to rely on its common law rights in that mark.

The Board also observed that evidence submitted outside of the trial periods, including evidence attached to briefs – is untimely and will not be considered. Evidence that was timely filed during the parties’ trial periods need not and should not be resubmitted.

Furthermore, Parties should recognize that attaching previously filed evidence to a brief (and citing to the attachments, rather than to the original testimony or notices of reliance) is neither a courtesy or a convenience to the Board. A party should instead cite to the record using the TTABVUE docket entry number and the electronic page number where the document or testimony appears.

Opposer Fifty-Six Hope complained that Applicant Sandal Factory did not respond to Opposer’s second set of requests for production of documents, contending that the Board “should enter an adverse inference against Applicant that if the requested documents were produced, they would not be favorable to Applicant.” Fifty-Six Hope did not file a motion to compel production, however, and the Board refused to draw any adverse inference from Applicant’s failure to respond.

The goods and services: The Board found Sandal Facctory’s goods to be identical to those of opposer, and its services related to opposer’s goods.

The marks: Because “Marley” is primarily merely a surname, the common law MARLEY trademark is not inherently distinctive. However, BOB MARLEY is registered on the Principal Register without a claim of acquired distinctiveness and is entitled to a presumption of validity under Section 7(b). Moreover, it is presumably inherently distinctive.

There was no dispute that Bob Marley is famous; his fame as a musician “positively affects the sale of BOB MARLEY and MARLEY branded merchandise.” The evidence established that Opposer’s MARLEY trademarks are commercially strong. Third-party registration evidence did not persuade the Board of any weakness in MARLEY. The Board concluded that Fifty-Six Hope’s MARLEY trademarks are entitled to a broad scope of protection.

As to applicant’s mark GNARLY MARLEY’S mark, the word “gnarly” is an adjective defined, inter alia, as a slang term for “cool, good.” The adjective “Gnarly” modifies “Marley,” and therefore “Marley” is the dominant part of Applicant’s mark “because ‘Gnarly’ describes a quality of ‘Marley’s,’ as adjectives are designed to do.” Moreover, the average purchaser is an ordinary consumer, and is likely to shorten GNARLY MARLEY’S to MARLEY’S

It stretches credulity to contend that at least some consumers in GNARLY MARLEY’S retail store purchasing MARLEY t-shirts or BOB MARLEY products are not going to believe that there is an affiliation, connection or association as to the origin, sponsorship, or approval of the goods and services.

The Board noted that the combination of GNARLY MARLEY’S and Rastafarian indicia, including smoking marijuana, emphasize the reference to Bob Marley. Trade dress may provide evidence of whether a word mark projects a confusingly similar commercial impression.

The Board therefore found that the mark GNARLY MARLEY’S “is similar to Opposer’s BOB MARLEY and MARLEY marks in their entireties in terms of appearance, sound, meaning, and commercial impression.”

Lack of Actual Confusion: By the time of trial there had been five years of concurrent use of the parties’ marks. Neither party introduced any testimony or evidence regarding actual confusion. However, the absence of actual confusion evidence is meaningful “only if the record indicates appreciable and continuous use by Applicant of its mark for a significant period of time in the same markets as those served by Opposer under its marks.” The Board found that there has not been a reasonable opportunity for confusion to have occurred.

“Applicant’s only retail store is located at 1913 Overseas Hwy., Islamorada, Florida.” The GNARLY MARLEY’S retail store is approximately 1200 square feet. “The GNARLY MARLEY’S Goods are offered for sale and/or will be offered for sale at Applicant’s GNARLY MARLEY’S retail stores.” Applicant does not have a GNARLEY MARLEY website, nor does in advertise its GNARLY MARLEY’S goods or services on its Sandal Factory website. Applicant’s GNARLY MARLEY’S customers are tourists that shop at the GNARLY MARLEY’S retail store while visiting the Florida Keys.

Conclusion: The Board concluded that confusion is likely and it sustained the opposition, declining to reach opposer’s dilution and Section 2(a) false association claims.

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Text Copyright John L. Welch 2019.