Chris Combs opposed Willie Sonley’s application to register BOOTYMAXX for “vitamins,” claiming a likelihood of confusion with his previously used common law mark BOOTYMAXTV for “non-pornographic videos of women shaking and moving their derrieres (‘booty’).” Although Opposer Combs failed to establish standing, the Board went on to consider the likelihood of confusion issue anyway. Here’s the question for you: who kicked whose butt on the Section 2(d) issue? Chris Combs v. Willie Sonley, Opposition No. 91235814 (March 31, 2020) [not precedential] (Opinion by Judge Marc A. Bergsman).

Standing: To prove his standing, Opposer Combs had to show that he had a “real interest” in the proceeding and a “reasonable” basis for its belief of damage. Combs argued that he had a real interest and personal stake in the proceeding because he demonstrated prior use of a similar mark. Not enough, said the Board. Combs failed to prove that he has a reasonable belief that the registration of Applicant’s mark will damage him.

Opposer did not prove that [he] filed an application for BOOTYMAX or BOOTYMAXTV and the USPTO refused to register Opposer’s mark because of Applicant’s application, nor did Opposer testify that he believed that there is a likelihood of confusion between the parties’ marks when used on or in connection with the respective goods and services. It is not enough that Opposer plead that the registration of Applicant’s mark will damage Opposer, Opposer must prove that he believes the registration of Applicant’s mark will damage Opposer.

Therefore the Board dismissed the opposition.

Likelihood of Confusion: For purposes of completeness, the Board went on to consider the issues of likelihood of confusion and priority. Applicant did not submit any evidence or testimony, but he could rely on his filing date as his constructive first use date. Opposer Combs testified that he “uses and has utilized the name ‘BOOTYMAX’ as part of [his] BOOTYMAXTV website to identify [his] business name for the services [he] offers on [his] website currently and at least as early as August 31, 2010.” He supported his testimony with website screenshots displaying the mark BOOTYMAXTV prior to the filing date of Applicant’s application. The Board found that Combs had priority of use for the mark BOOTYMAXTV for “non-pornographic videos of women shaking and moving their derrieres (‘booty’).”

As to the marks, the Board found them similar in appearance, sound, connotation and commercial impression. The extra X in applicant’s mark is not likely to be noticed by consumers. As to opposer’s mark, the term “TV” is highly suggestive of posting videos, and so consumers are likely to focus on the term BOOTYMAX.

As the goods and services, there was “no testimony or other evidence proving vitamins and posting videos of women’s derrieres are related.” Opposer Combs argued that Applicant Salley’s website offers “Natural Butt Enhancements Supplements” as “cream and pills ‘to tone, lift and enhance your booty,’” with marketing materials that associate the goods with “get[ting] a bigger butt.” However, opposer did not authenticate that Salley is the owner of the website, and even if he were, Combs “did not prove that consumers would associate the source of vitamins specializing in enhancing one’s butt with the source of online videos featuring women’s derrieres.” In short, “[i]t is simply not enough to argue that Applicant’s vitamins and Opposer’s videos involve women’s derrieres.”

Opposer Combs provided no testimony or evidence regarding channels of trade or classes of consumers, and so these du Pont factors favored applicant.

The Board concluded that applicant’s mark BOOTYMAXX for vitamins is not likely to cause source confusion vis-a-vis opposer’s mark BOOTYMAXTV for “nonpornographic videos of women shaking and moving their derrieres (‘booty’).”

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TTABlog comment: I think Combs had standing, though he wound up on his booty. The Board said that Combs didn’t prove his belief that he would be damaged by registration of BOOTYMAXX. How does one prove what one believes other than by saying so? Isn’t the question whether Combs’s belief was reasonable, not whether he had the belief?

Text Copyright John L. Welch 2020.