Both of Ampak’s registrations cover “marriage partner introduction services, marriage bureaus, marriage counseling, dating services, matrimonial services for match making through website, personal interaction, print media, television and other media, providing an on-line computer database in the fields of matrimonial services, namely, marriage partner introduction services, dating services, and marriage counseling for global computer network website users.”
Before addressing likelihood of confusion, the Board first considered People Interactive’s fraud contentions. Considering the “heavy burden of proving [fraud] with clear and convincing evidence,” the Board not surprisingly rejected those contentions. With that, Ampak had priority and the Board found a likelihood of confusion, sustaining the opposition. Shadi.com v. People Interactive (India) Private Limited, Opposition No. 91225201 (Mar. 3, 2020) (not precedential) and Cancellation No. 92062719 (Opinion by Judge Cynthia Lynch).
Fraud Analysis: As regular TTAB practitioners will know, proving a fraud claim can be more challenging than even marriage can be. Even if one can prove that a false statement was made by the applicant, that’s not enough. If the evidence shows the statement was made “with a reasonable and honest belief that it was true, rather than with the intent to mislead the USPTO,” the claim will fail.
Here, People Interactive’s fraud allegations focused on Ampak’s purported services. It contended, among other things, that People Interactive did not offer “marriage counseling” and “matrimonial services for match making [through] … television” using the contested marks. Ampak testified, however, that it offered marriage counseling by providing “advice to people interested in marriage who therefore are seeking matchmaking services to facilitate marriage.” And as for the “television” issue, “ Ampak testified that, “[w]e provide matchmaking through television for users who connect their computer through television and view our site on it. That is what we meant by ‘matchmaking through television.’”
Obviously, neither explanation comports with how many might understand the meaning of the phrases. Nevertheless, Ampak prevailed:
None of Ampak’s interpretations are so insupportable as to give rise to an inference of deceptive intent. Even assuming that that these interpretations were incorrect, based on the record, we cannot infer that any misrepresentations were made knowingly and with an intent to deceive. The evidence does not “indicate sufficient culpability.”
With that, the Board denied the Petition to Cancel.
Likelihood of Confusion: The Board then turned to Ampak’s opposition based on likelihood of confusion. The Board analyzed only some of the DuPont factors, treating several as “neutral” because Ampak offered no evidence on those factors.
Starting with the parties’ respective services, though there was some difference in phrasing between the parties’ recitations, the Board found them to be legal identical since both consisted of “online matchmaking.” People Interactive conceded that the “trade channels” and “classes of consumers” were identical between the parties.
As for the strength of the Petitioner Ampak’s mark SHADI, Ampak simply stated that the website shadi.com “had over 1 million users more than 10 years ago.” This unsupported statement was not enough for the Board, but as Ampak did have registrations, it found the “SHADI mark to be a distinctive mark that must be accorded the normal scope of protection for a distinctive mark.”
The Board spent the most time on the similarity of the marks. The Board largely ignored the .COM as a common part of any top-level domain, finding that it “does not have source-indicating significance in this mark.” [Ed. – We’ll see how that doctrine changes with the Supreme Court’s consideration of Booking.com….]. The Board also relied upon People Interactive’s testimony that, “’Shaadi’ is the Hindi word for marriage or wedding [and] [a] common variant of ‘shaadi’ in English transliteration is ‘shadi.’” In light of that testimony the extra “A” provided no real distinction between the marks, including in how the marks are pronounced. As could have been expected, the Board found that “[g]iven the nearly identical sound, and the strong similarity in appearance, connotation and commercial impression of all the marks at issue, this DuPont factor weighs in favor of a finding of likely confusion.”
After quickly deeming the issue of “actual confusion” to be neutral, since Ampak presented no evidence to support its arguments, the Board found a likelihood of confusion and sustained the opposition.
(Author note – I originally planned to include more witticisms about the vast differences in burden of proof of “fraud” in the TTAB and a marriage, but erred on the side of maintaining my own marriage…)
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TTABlog comment: I’m not sure “shady” is a good name for a marriage matchmaking service. BTW, that photo on the right reminds me of the old Leo Stoller photo.
Text Copyright John L. Welch 2020.