The Board sustained an opposition to register the mark THE TOKING DEAD for “retail store services featuring clothing, mugs, and other consumer goods,” finding a likelihood of confusion with the mark THE WALKING DEAD registered for comic books, video recordings, and entertainment services, and used for a variety of associated goods and services, including clothing and mugs. The Board found opposer’s mark to be famous for comic books and television programming, and therefore entitled to a broad scope of protection. Survey results showing a 16.4% likelihood of confusion put the final nail in applicant’s coffin. Robert Kirkman, LLC v. The Toking Dead, Opposition No. 91242007 (July 22, 2020 ) [not precedential] (Opinion by Judge Marc A. Bergsman).

Fame: Robert Kirkman wrote the first THE WALKING DEAD comic book in 2003. More than 190 issues have been published since then. A television series debuted in 2010, and 131 one-hour episodes have aired since then. The series has the highest total viewership in cable television history. The series has garnered awards and has enjoyed unsolicited media publicity.

The Board found that, for likelihood of confusion purposes, THE WALKING DEAD is a famous mark, entitled to a broad scope of protection. Moreover, “[i]t is common knowledge that famous marks are frequently used on collateral or merchandising products such as clothing, mugs and other consumer goods.”

Survey Evidence: Survey expert Robert Klein of Applied Marketing Science, Inc., conducted an Eveready [sic] survey to assess the likelihood of confusion between the two marks at issue. “An Eveready style survey is a reliable format that the Board accepts.”

The Board observed that “a properly conducted survey is circumstantial evidence from which we may infer a likelihood of confusion.” Moreover, the Board may consider the results of a properly conducted survey as “evidence akin to actual confusion.”

“In the typical Eveready survey, respondents are shown the junior user’s mark in connection with the junior user’s applied for services and are asked open-ended questions about the source of the junior user’s services.” In Union Carbide Corp. v. Ever-Ready. Inc., the survey asked: “Who do you think puts out the lamp shown here? [showing a picture of defendant’s EVER-READY lamp and mark], and “What makes you think so?” 188 USPQ at 640.

The Board provided the details of the Klein survey questions and methodology and found the survey to be “reliable and therefore of probative value on the issue of likelihood of confusion herein.” The survey responses showed a net confusion rate of 16.4%.

We find that the 16.4 percent level of confusion shown in the results of the Klein survey is not de minimis, it is representative of the potential rate of confusion among the universe of prospective purchasers, and it supports Opposer’s likelihood of confusion claim.

Applicant provided the results of its own survey, but the Board found it flawed in a number of respects: for example, it did not follow accepted methodology, it did not include a proper universe of respondents, and it prejudiced its potential “survey” respondents by the wording of the survey.
The Marks: The Board found that the marks have similar structures, the same lilt and cadence, and the convey the same “general idea or stimulate the same mental reactions of active zombies either walking or smoking.” Therefore the marks are similar.

Goods and Services: There are no limitations in the types of goods sold in applicant’s retail stores and so the Board must presume that they encompass the same type of goods as those of opposer (despite applicant’s claim that its goods are related only to “cannabis education through the use of zombies”). “[S]tore services and the goods that may be sold in that store are related goods and services for the purpose of determining likelihood of confusion.” Applicant, according to its discovery responses, intends to offer its services in channels that overlap with those of opposer, to the same classes of consumers.

Conclusion: Finding that the Klein survey “corroborates our findings of fact and conclusions of law, the Board sustained the opposition.

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TTABlogger comment: Nice example of an Eveready survey.

Text Copyright John L. Welch 2020.