Toy car mark confusingly similar to, and dilutive of, famous MOTOWN
marks
United States - Fitzpatrick Cella Harper & Scinto
Examination/opposition
National procedures
October 31 2011
In UMG Recordings Inc v Mattel Inc (Opposition 91176791, September 30 2011), the Trademark Trial and
Appeal Board (TTAB) has shown that, in an appropriate situation, both likelihood of confusion and likelihood
of dilution can be established without the need for survey evidence. In concluding that applicant Mattel Inc’s
MOTOWN METAL mark for die cast toy cars was likely to cause confusion and to dilute the well-known
MOTOWN trademarks owned by opponent UMG Recordings Inc, the TTAB found that the evidence of record
was sufficient to sustain the opposition, notwithstanding the fact that the opponent had produced no survey
evidence in support of its case. Mattel sought to register the mark MOTOWN METAL for use in connection with “toys and games, namely,
toy vehicles and accessories therefor” in Class 28 of the Nice Classification. Mattel’s application was filed
on an intent-to-use basis, although, during the course of the opposition proceedings, Mattel alleged that it
had made some use of the mark over a period of two years. The opponent is the successor in interest to
Berry Gordy, the founder of the Motown recording label music and the person who originally coined the
term.
The opponent asserted a collection of registered trademarks incorporating the term 'Motown', the earliest of
which dated back to 1969 and covered “providing popular musical entertainment” in Class 42. Over the
ensuing years, the opponent or its predecessors-in-interest had obtained registrations, all incontestable, for
marks incorporating the term 'Motown' for a wide range of goods and services, including records, tapes, cassettes, musical recordings and “retail gift store featuring music, clothing, reading materials and
souvenirs” in Class 35. In addition to its registrations, the opponent also asserted prior use of the 'Motown
M' logo in connection with “toys, games and playthings, namely board games and karaoke”, growing out of
licensing arrangements between the opponent and various well-known toy manufacturers.
In defence of its application, Mattel argued that the name Motown Metal was chosen because of the
perceived connection between Detroit, Michigan, and the US automobile industry in general. The applicant
took the position that, irrespective of the opponent’s use of the trademark in relation to the music industry,
the term 'Motown' had become synonymous with the name 'Motor City' (arguably another name associated
with the City of Detroit) and, thus, that the term 'Motown' was merely a “geographic description” referring to
the Michigan city. Further, the applicant argued that the opponent had never sold toys, games and
playthings, in particular toy vehicles, under the asserted MOTOWN marks and, to the extent there was any
use on toys, the applicant’s use predated it. In furtherance of this point, the applicant sought, by way of a counterclaim, “to cancel and/or limit certain [of the opponent’s] registrations to the extent they apply to
toys, games and playthings” in Class 28. The TTAB interpreted the language of the applicant’s counterclaim
as a request for the TTAB to restrict the identification of goods/services in the opponent’s registrations (both
current and future), and denied it out of hand as beyond the scope of its authority. In this regard, the TTAB
explained that not only were there no Class 28 goods claimed in the registration sought to be cancelled, but
the “jurisdiction of the TTAB is limited to trademark registrability and a proceeding before the TTAB pertains
only to the registration(s) or application(s) specified in the pleading...”.
Turning to the likelihood of confusion analysis, the TTAB began by addressing the strength of the MOTOWN
trademark, finding it both inherently distinctive and famous and thus entitled to a wide scope of protection,
notwithstanding the absence of survey evidence as to the consuming public’s perception of the mark.
Regarding distinctiveness, the TTAB recognised that the term had been coined by the opponent’s founder
and held that, despite the fact that the term had subsequently been used to refer to the city of Detroit and to
a style of music, it remained a strong indicator of the opponent as a result of the opponent’s “extensive” sales and advertising, the “established popularity” of the Motown record label and the “substantial” thirdparty recognition by way of articles and books about the record label, its founder and the artists who have
recorded under the label. The opponent also benefitted from its “active and extensive” trademark
enforcement program with regard to the MOTOWN mark. Turning to fame, the TTAB noted that fame for
likelihood of confusion purposes arises “as long as a significant portion of the relevant consuming public...
recognises the mark as a source indicator”. While fame is typically associated with the dilution analysis,
the TTAB noted that fame is relevant in analysing likelihood of confusion because a famous or strong mark
enjoys a wide scope of legal protection. Concluding that the MOTOWN mark was “very famous” in
connection with musical recordings and entertainment, the TTAB explained that such fame “can be
expected to cast a long shadow” such that consumers would expect non-music-related items sold under the
MOTOWN mark to be sponsored by the opponent.
Addressing the applicant’s argument that the term 'Motown' is primarily geographically descriptive because
of the association of the term with the City of Detroit, the TTAB explained that “a non-geographic
designation originally used as a trademark is not ‘primarily’ geographically descriptive if it becomes, only
later, attached to a specific geographic location”. Here, because MOTOWN was a famous mark closely
associated with the opponent, and because, according to the record, Detroit came to be associated with the
term 'Motown' as a result of the opponent’s origin and tenure in Detroit, there was no basis on which to
conclude that the term was primarily geographically descriptive.
In light of the TTAB’s conclusion that MOTOWN was a famous, distinctive mark associated with the
opponent, the other likelihood of confusion factors lined up in the opponent’s favour relatively easily.
Although the applicant’s goods were products that had never been made by the opponent or its licensees,
the TTAB explained that there is no requirement that the parties’ goods/services be identical - indeed, they
do not even have to be similar or competitive. The goods must be related in some manner and/or the
activities and conditions surrounding their marketing must be such that consumers are likely to view the
junior users products as emanating from the senior user. The TTAB reiterated that the issue is not whether
the goods/services would be confused; rather the issue is whether there is a likelihood of confusion as to
the source of the goods/services. In light of the wide range of goods and services in connection with which
the opponent’s MOTOWN marks had been used over the years, the TTAB concluded that “it require[ed] no
stretch of the imagination for consumers to believe” that the various goods sold under the opponent ’s
MOTOWN trademarks could include toy cars. Similarly, the evidence of record permitted the TTAB to easily
conclude that the parties’ target consumers, channels of trade and conditions of sale (nothing more than
“ordinary care” involved in purchase decision), all supported the conclusion that confusion was likely, again
notwithstanding the absence of supporting survey evidence.
The TTAB then spent some time analysing the overall similarities of the marks before concluding that the
applicant’s MOTOWN METAL mark was substantially similar to the opponent’s MOTOWN word mark and
“significantly more similar than dissimilar to the opponent’s other MOTOWN marks”. In reaching this
conclusion, the TTAB explained that the test was not whether the marks are distinguishable when placed
side-by-side; rather the key was whether the marks were sufficiently similar in their entireties so as to be
likely to give rise to confusion as to source. The TTAB found the term 'Motown' to be the dominant portion of
both parties’ marks, and was not persuaded by the applicant’s argument that its use of the term 'Metal'
effectively communicated the “strength” associated with the “muscle” cars that had been historically
produced in Detroit, such that the overall connotation associated with 'Motown Metal' was distinctive and
unique. Nor was the fact that the applicant indicated an intention to market the product under the 'Hot
Wheels' name relevant; the mark as applied for was the only mark relevant to the analysis and 'Hot Wheels'
was not part of the mark as filed. In the end, the TTAB viewed the evidence of record as establishing that the
principle connotation of 'Motown' would be as a reference to the opponent, and the fact that it might also
connote the City of Detroit did not diminish the connection to the opponent or provide a basis for finding that
confusion as to origin, source or sponsorship was not likely to result from the applicant’s registration of the
MOTOWN METAL mark.
Turning to the dilution analysis, the TTAB began by noting that, in a dilution by blurring situation such as the
one presented here, the key issue is whether there is an association arising from the similarity between the
mark in question and the famous mark that results in an impairment to the distinctiveness of the famous
mark. In making this assessment in an opposition context, the TTAB explained that it relied on three
factors:
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the fame of the opponent’s mark;
whether the opponent’s mark became famous prior to the date of the application to register the
applicant’s mark; and
whether the applicant’s mark was likely to blur the distinctiveness of the opponent’s famous mark.
Picking up where it left off in its analysis on the issue of likelihood of confusion, the TTAB noted that it had
already found the MOTOWN mark to be famous. However, the TTAB pointed out that the standard of fame
as it relates to dilution is a higher one than with respect to confusion. Using the 'fame' criteria outlined in the
dilution statute (15 USC § 1125(c)(2)(A)), the TTAB found that:
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the mark had been registered and in use for music and entertainment services for almost 50 years;
the opponent had demonstrated “extensive” nationwide sales of its music recordings under the
MOTOWN name;
there had been “extensive” nationwide promotion of the mark; and
the opponent’s Motown music recordings had garnered “substantial” third-party publicity.
Based on these findings, the TTAB concluded – without the need for supporting survey evidence – that the
evidence of public exposure of the MOTOWN mark was so strong that “significant actual recognition among
the general public” could be inferred. The TTAB went on to find that the fame of the MOTOWN mark was in
place well prior to the filing date of the applicant’s trademark opposed application.
Having satisfied itself that the opponent had met the first two elements of the dilution test, the TTAB turned
to the question of whether there was a likelihood of dilution by blurring - specifically, “whether the
association arising from the similarity of the parties’ marks impairs the distinctiveness of the opponent’s
famous mark”. The TTAB explained that, to reach a conclusion on the blurring issue, it must determine not
only whether there is an association between the parties’ marks, but also whether there is an impairment of
the famous mark resulting from that association. Indeed, “[d]ilution by blurring occurs when a substantial
percentage of consumers, upon seeing the junior party’s use of a mark on its goods are immediately
reminded of the famous mark and associate the junior party’s use with the owner of the famous mark, even
if they do not believe that the goods come from the famous mark’s owner”.
Summarising the applicable non-exhaustive list of dilution by blurring factors set forth in 15 USC § 1125(c)
(2)(B)(i)(iv) - and, again, without any survey evidence, despite the fact that the test recited by the TTAB
requires a “substantial percentage” of consumers to be reminded of the famous mark - the TTAB found that:
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the opponent’s MOTOWN mark was famous and inherently distinctive;
the opponent’s and applicant’s marks were sufficiently similar such that an association between
them was established;
the degree of public recognition of the opponent’s trademark was very high; and
the opponent had engaged in substantially exclusive use of its trademark.
Although the TTAB did not find evidence of actual association or bad faith on the part of the applicant, it
nonetheless found that, on balance, the applicant's mark was likely to cause dilution of the opponent's MOTOWN mark.
Finally, the TTAB took the parties to task over the volume of evidence submitted in support of the parties’ respective positions and over the numerous objections raised during trial briefing. The TTAB spent most of
the first 20 pages of the 62-page opinion admonishing the parties for unnecessarily burdening the TTAB with
voluminous evidentiary submissions and unwarranted objections to each other’s trial records. The TTAB
made clear that it “reviews each and every document and all testimony submitted in any proceeding”, and
that the “better practice” would be to “focus on supporting, only to the extent required by the pertinent
burden of proof, the main facts to be established”, as opposed to “forcing the TTAB to sift through reams of
documents and testimony to find evidence specifically relevant and necessary to establish a party’s
position”. As to the multiple evidentiary objections filed by the parties, the TTAB overruled the majority of
them, concluding that “neither party helps its position by requiring the TTAB to use its limited resources to
review numerous objections that are clearly not well taken”.
Timothy J Kelly, Fitzpatrick Cella Harper & Scinto, New York
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