Robert Kirkman, LLCv.Theodorou Steve and Theodorou Phillip

Trademark Trial and Appeal Board

Mar 4, 2022

91227277 (T.T.A.B. Mar. 4, 2022)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: March 4, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Robert Kirkman, LLC v. Phillip Theodorou and Anna Theodorou _____ Opposition No. 91217941 Opposition No. 91217992 Opposition No. 91218267 _____ Robert Kirkman, LLC v. Phillip Theodorou and Steve Theodorou _____ Opposition No. 91222005 Opposition No. 91222719 Opposition No. 91227277 Opposition No. 912338061 _____ 1 In our January 14, 2015 (6 TTABVUE), June 7, 2018 (25 TTABVUE), and December 21, 2018 (27 TTABVUE) orders, the Board consolidated the proceedings and made Opposition No. 91217941 the “parent case” in which all filings should be made. In addition to the proceedings identified in the caption, the Board included Opposition No. 91233571 (Serial Nos. 87197553 and 82207831), Opposition No. 91240356 (Serial No. 87201594), Cancellation No. 92068261 (Registration No. 5282733), and Cancellation No. 92068613 (Registration No.5465402), all involving the mark TWD in standard character form. Because the TWD mark is different than THE WALKING DEAD mark, we will decide those proceedings in a separate decision. Opposition Nos. 91217941, 91217992, 91218267, 91222005, 91222719, 91227277, and 91233806 - 2 - James D. Weinberger and Shelby P. Rokito of Fross Zelnick Lehrman & Zissu, P.C. for Robert Kirkman, LLC. Phillip Theodorou, Anna Theodorou, and Steven Theodorou, pro se. _____ Before Bergsman, Wolfson, and Larkin, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Phillip Theodorou and Anna Theodorou seek registration on the Principal Register of the mark THE WALKING DEAD (in standard characters) for the goods and services listed below: ● “Restaurant services and themed restaurant services, namely, providing of food and beverages for consumption on and off the premises,” in International Class 43;2 ● “Coffee,” in International Class 30;3 ● “Bottled water,” in International Class 32;4 and 2 Phillip Theodorou and Anna Theodorou filed Serial No. 8616680 on January 16, 2014, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based upon their claim of a bona fide intention to use the mark in commerce. Serial No. 8616680 is the subject of Opposition No. 91217941. 3 Phillip Theodorou and Anna Theodorou filed Serial No. 86181789 on February 1, 2014, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based upon their claim of a bona fide intention to use the mark in commerce. Serial No. 86181789 is the subject of Opposition No. 91217992. 4 Phillip Theodorou and Anna Theodorou filed Serial No. 86183334 on February 1, 2014, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based upon their claim of a bona fide intention to use the mark in commerce. Serial No. 86183334 is the subject of Opposition No. 91217992. Opposition Nos. 91217941, 91217992, 91218267, 91222005, 91222719, 91227277, and 91233806 - 3 - ● “T-shirts,” in International Class 25.5 Phillip Theodorou and Steve Theodorou seek registration on the Principal Register of the mark THE WALKING DEAD (in standard characters) for the goods listed below: ● “Cigarillos, cigars, ashtrays, match boxes, matches, lighters for smokers,” in International Class 34;6 ● “Candles for lighting; Candles for night lights; Perfumed candles; Scented candles, in International Class 4;7 ● “Eye-shadow, lipstick,” in International Class 3;8 and ● “Skin soap,” in International Class 3.9 5 Phillip Theodorou and Anna Theodorou filed Serial No. 86133235 on December 2, 2013, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based upon their claim of a bona fide intention to use the mark in commerce. Serial No. 86133235 is the subject of Opposition No. 91218267. 6 Steve Theodorou and Phillip Theodorou filed Serial No. 86418856 on October 9, 2014, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based upon their claim of a bona fide intention to use the mark in commerce. Serial No. 86418856 is the subject of Opposition No. 91222005. 7 Steve Theodorou and Phillip Theodorou filed Serial No. 86564355 on March 15, 2015, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based upon their claim of a bona fide intention to use the mark in commerce. Serial No. 86564355 is the subject of Opposition No. 91222719. 8 Steve Theodorou and Phillip Theodorou filed Serial No. 86880242 on January 20, 2016, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based upon their claim of a bona fide intention to use the mark in commerce. Serial No. 86880242 is the subject of Opposition No. 91227277. 9 Steve Theodorou and Phillip Theodorou filed Serial No. 87266282 on December 13, 2016, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based upon their claim of a bona fide intention to use the mark in commerce. Serial No. 87266282 is the subject of Opposition No. 91233806. Opposition Nos. 91217941, 91217992, 91218267, 91222005, 91222719, 91227277, and 91233806 - 4 - In this opinion, we will refer to the three applicants collectively as “Applicants.” Robert Kirkman, LLC (“Opposer”) filed Notices of Opposition against the registration of Applicants’ marks under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). Opposer claimed ownership of the registered mark THE WALKING DEAD, in standard character form, for the goods and services listed below: ● Registration No. 4443715 for “comic books; graphic novels,” in International Class 16;10 ● Registration No. 4007681 for “DVDs featuring an on-going fictional dramatic television program,” in International Class 9, and “entertainment services in the nature of an on-going fictional dramatic television series; providing information about a television series via an on-line global computer network; providing online computer games, in International Class 41;11 ● Registration No. 4429084 for “fan club services,” in International Class 41;12 and ● Registration No. 4314918 for “video recordings featuring fictional dramatic television programming and music; sound recordings featuring fictional dramatic television programming and music; downloadable computer games; interactive video game programs; computer game cartridges and discs; downloadable computer game software for use with mobile telephones and personal computers; downloadable multimedia file containing artwork, text, audio, video, games, and internet web links 10 Registered December 3, 2013; Section 8 declaration accepted. 11 Registered August 2, 2011; renewed. 12 Registered November 5, 2013; Section 8 declaration accepted. Opposition Nos. 91217941, 91217992, 91218267, 91222005, 91222719, 91227277, and 91233806 - 5 - relating to music and television; electronic game programs; electronic game software for cellular telephones; electronic game software for handheld electronic devices; electronic game software for wireless devices; slot machines; video game cartridges and discs; video game software, in International Class 9.13 Opposer also pleaded that Applicants’ mark is likely to cause dilution by blurring pursuant to Section 43(c) of the Trademark Act, 15 U.S.C. § 1125(c). We construe Applicants’ Answer as a general denial of the grounds for opposition.14 When we cite to the record, we refer to TTABVUE, the Board’s online docketing system. Specifically, the number preceding TTABVUE corresponds to the docket entry number and any numbers following TTABVUE refer to the page numbers of the docket entry where the cited materials appear. All citations are to the TTABVUE docket in the parent case. I. Preliminary Issue On December 22, 2020, Applicants filed their pretrial disclosures with the Board.15 The purpose of a pretrial disclosure is to inform the other party prior to trial of the identity of trial witnesses and documents, thus avoiding surprise. TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 702.01 (2021). See also Domond 13 Registered April 2, 2013; Section 8 declaration accepted. 14 24 TTABVUE. In our March 16, 2018 order (23 TTABVUE), the Board explained how Applicants should prepare an Answer to the Notice of Opposition and gave Applicants time to file an Amended Answer. 15 47 TTABVUE 2-7. Opposition Nos. 91217941, 91217992, 91218267, 91222005, 91222719, 91227277, and 91233806 - 6 - v. 37.37, Inc., 113 USPQ2d 1264, 1267 (TTAB 2015) (both parties are required to serve initial disclosures identifying witnesses having discoverable information and to serve pretrial disclosures naming the witnesses expected to testify at trial). A party making a pretrial disclosure is not required to file such disclosure with the Board, and should not so. Alerting the Board to a party’s witness list and documents is not a purpose of the pretrial disclosure requirement, as the Board does not preside at the taking of testimony or at a pretrial conference. TBMP § 702.01. In the same docket entry, Applicants also served a notice of reliance that identified documents as follows: Copies of descriptions and/or photographic evidence of all internet documents and tangible things that Applicants [have] in their possession, custody, or control and may be used to support their claims or defenses.16 Applicant identified Exhibits A-J but did not attach any of the referenced exhibits.17 On May 5, 2021, Applicants refiled the notice of reliance including the referenced Exhibits A-J.18 The documents posted at 54 TTABVUE 16, 18, 23, 27, 28, 33, 37, 38, 45, 49, 50, 53 and 54 are only partially legible. The party who submits evidence must ensure that the evidence is legible. See, e.g., RxD Media, LLC v. IP Application Dev. LLC, 125 USPQ2d 1801, 1806 n.16 (TTAB 2018) (“Illegible evidence is given no consideration.”), aff’d, 377 F. Supp. 3d 588 (E.D. Va. 2019), aff’d, 986 F.3d 361, 2021 USPQ2d 81 (4th Cir. 2021); Weider Publications, LLC v. D&D Beauty Care Co., 16 47 TTABVUE 8. 17 47 TTABVUE 12. 18 54 TTABVUE. Opposition Nos. 91217941, 91217992, 91218267, 91222005, 91222719, 91227277, and 91233806 - 7 - 109 USPQ2d 1347, 1351-52 (TTAB 2014) (duty of the party making submissions to the Board via ESTTA to ensure that they have been entered into the trial record), appeal dismissed per stipulation, No. 14-1461 (Fed. Cir. Oct. 10, 2014); Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107 USPQ2d 1750, 1758 (TTAB 2013), aff’d mem., 565 F. App’x 900 (Fed. Cir. 2014) (“Petitioner has a duty to ensure that the evidence it submits is legible.”); Hard Rock Café Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1404 (TTAB 1998) (“It is reasonable to assume that it is opposer’s responsibility to review the documents it submits as evidence to ensure that such submissions meet certain basic requirements, such as that they are legible … ). We consider Applicants’ evidence to the extent it is admissible and we can read it. The documents posted at Exhibit A (54 TTABVUE 15) and Exhibit J (54 TTABVUE 52) are Internet documents that are identified by their access information (i.e., URL and date) and they are thus admissible through a notice of reliance pursuant to Trademark Rule 2.122(e)(2), 37, C.F.R. § 2.122(e)(2). The remaining documents are photographs of products with purchase receipts, a photograph of a lottery ticket, a photograph purportedly of an action figure, and a photograph purportedly of a casino slot machine. These documents are not the type of evidence that may be submitted through a notice of reliance and, therefore, we give them no consideration. This is the only evidence Applicants submitted during their testimony period. We will not consider any evidence attached to Applicants’ brief because it is not timely filed. See Trademark Rule 2.121(a), 37 C.F.R. § 2.121(a) (“No testimony shall be taken Opposition Nos. 91217941, 91217992, 91218267, 91222005, 91222719, 91227277, and 91233806 - 8 - or evidence presented except during the times assigned, unless by stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board.”). Exhibits and other evidentiary materials attached to a party’s brief can be given no consideration unless they were properly made of record during the time for taking testimony. See, e.g., Hole In 1 Drinks, Inc. v. Lajtay, 2020 USPQ2d 71345, at *2 (TTAB 2020) (exhibits attached to brief not considered); Norris v. PAVE: Promoting Awareness, Victim Empowerment, 2019 USPQ2d 370880, at *2 (TTAB 2019) (inserted screenshots and hypertext link within the text of reply brief, if not previously and properly introduced into the record, not considered). Assuming arguendo that Applicants properly pleaded misuse, misrepresentation, fraud, and deceptive practices as affirmative defenses,19 Applicants bear the burden of proof on these defenses, see, e.g., Double Coin Holdings Ltd. v. Tru Dev., 2019 USPQ2d 377409, at *2 (TTAB 2019), and there is no testimony or evidence to support them. Because there is no evidence to support these defenses and “[party] argument is no substitute for evidence,” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) (quoting Enzo Biochem, Inc. v. Gen-Probe Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005)), the affirmative defenses of misuse, misrepresentation, fraud, and deceptive practices fail. 19 Applicants’ Brief, pp. 11-15 (60 TTABVUE 12-16). Opposition Nos. 91217941, 91217992, 91218267, 91222005, 91222719, 91227277, and 91233806 - 9 - II. The Record The record includes the pleadings, and pursuant to Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), Applicants’ application files. The parties introduced the testimony listed below: A. Opposer’s testimony and evidence. 1. Testimony declaration of Stefan Reinhardt, President of Business Operations and Studio Production of AMC Studios, the in-house studio, production and distribution division of AMC Networks, Inc.;20 2. Testimony declaration of Robert Kirkland, author of THE WALKING DEAD comic book series, Opposer’s founder, and Principal of Skybound Entertainment, the exclusive licensee for the commercialization of THE WALKING DEAD intellectual property;21 3. Notice of reliance on copies of Opposer’s pleaded registrations printed from the USPTO Trademark Status and Document Retrieval (TSDR) database showing the current status and title to the registrations;22 4. Notice of reliance on copies of non-pleaded registrations owned by Opposer for THE WALKING DEAD, FEAR THE WALKING DEAD, and TWD trademarks for various goods and services printed from the USPTO TSDR database;23 5. Notice of reliance on copies of Opposer’s applications for THE WALKING DEAD and TWD marks printed from the USPTO TSDR database;24 20 35 TTABVUE. The Board posted the portions of the Reinhardt declaration designated confidential at 34 TTABVUE. AMC Networks, Inc. owns and operates the AMC cable television channel. AMC Studios is responsible for the creation and production of original programming that appears on the AMC channel, including The Walking Dead television series. Reinhardt Decl. ¶ 1 (35 TTABVUE 2). 21 37 TTABVUE. The Board posted the portions of the Kirkman declaration designated confidential at 36 TTAVUE. 22 38 TTABVUE 13-30. 23 38 TTABVUE 32-51. 24 38 TTABVUE 53-70. Opposition Nos. 91217941, 91217992, 91218267, 91222005, 91222719, 91227277, and 91233806 - 10 - 6. Notice of reliance on the March 1, 2016 Office Action in application Serial No. 86811872 filed by Max Zeevi for the mark FEAR THE WALKING DEAD;25 7. Notice of reliance on the Board’s July 22, 2020 decision in Opposition No. 91242007 (not a precedent of the Board);26 8. Notice of reliance on copies of news articles from printed publications;27 and 9. Notice of reliance on news articles printed from the Internet.28 B. Applicant’s testimony and evidence. As discussed above, Applicants introduced a notice of reliance on “[c]opies or descriptions and/or photographic evidence of all internet documents and tangible things that Applicant[s] ha[ve] in their [possession], custody, or control and may be used to support their claims or defenses.”29 In light of our above evidentiary ruling, Applicants’ admissible documents are limited to Exhibits A and J. III. Entitlement to a Statutory Cause of Action.30 Entitlement to a statutory cause of action, formerly referred to as “standing” by the Federal Circuit and the Board, is an element of the plaintiff’s case in every inter 25 38 TTABVUE 72-239. 26 38 TTABVUE 241-277. 27 39 TTABVUE. 28 40 TTABVUE. 29 54 TTABVUE. 30 Even though we now refer to standing as entitlement to a statutory cause of action, our prior decisions and those of the Federal Circuit interpreting “standing” under §§ 1063 and 1064 remain applicable. See Spanishtown Enters., Inc. v. Transcend Resources, Inc., 2020 USPQ2d 11388, at *2 (TTAB 2020). Opposition Nos. 91217941, 91217992, 91218267, 91222005, 91222719, 91227277, and 91233806 - 11 - partes case. See Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277 (Fed. Cir. 2020), cert. denied, 141 S. Ct. 2671 (2021); Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837 (Fed. Cir. 2020), reh’g en banc denied, 981 F.3d 1083, 2020 USPQ2d 11438 (Fed. Cir. 2020), cert. denied, 142 S. Ct. 82 (2021); Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014). To establish entitlement to a statutory cause of action, a plaintiff must demonstrate: (i) an interest falling within the zone of interests protected by the statute and (ii) a reasonable belief in damage proximately caused by the registration of the mark. Corcamore, 2020 USPQ2d 11277 at *4. See also Empresa Cubana, 111 USPQ2d at 1062; Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (TTAB 1982); Spanishtown Enters., 2020 USPQ2d 11388, at *1. Opposer introduced copies of its pleaded registrations printed from the USPTO Trademark Status and Document Retrieval system showing the current status of and title to the registrations.31 Because Opposer has properly introduced into evidence copies of its pleaded registrations showing the status and title thereof, Opposer has established its entitlement to a Section 2(d)-based opposition that is not without merit. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000) (opposer’s two prior registrations suffice to establish its direct commercial interest and its standing); Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, 31 38 TTABVUE 13-30. Opposition Nos. 91217941, 91217992, 91218267, 91222005, 91222719, 91227277, and 91233806 - 12 - LLC, 122 USPQ2d 1030, 1032 (TTAB 2016) (standing established based on pleaded registration made of record). Once Opposer proves its entitlement to a statutory cause of action on one ground, it has the right to assert any other grounds in an opposition proceeding. See Hole In 1 Drinks, 2020 USPQ2d 10020, at *3; Poly-America, L.P. v. Ill. Tool Works Inc., 124 USPQ2d 1508, 1512 (TTAB 2017) (if petitioner can show standing on the ground of functionality, it can assert any other grounds, including abandonment); Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1479 (TTAB 2017) (standing established based on surname claim sufficient to establish standing for any other ground). IV. Priority Because Opposer has properly made of record copies of its pleaded registrations, and Applicants have not counterclaimed to cancel them, priority is not an issue as to the mark and the goods and services covered by the registrations. See Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1469 (TTAB 2016) (citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d. 1400, 182 USPQ 108, 110 (CCPA 1974)). V. Likelihood of Confusion We base our determination under Section 2(d) on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be considered, referred to as “DuPont factors”), cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 113 USPQ2d 2045, 2049 (2015). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. Opposition Nos. 91217941, 91217992, 91218267, 91222005, 91222719, 91227277, and 91233806 - 13 - 2003). “In discharging this duty, the thirteen DuPont factors ‘must be considered’ ‘when [they] are of record.’” In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997) and DuPont, 177 USPQ at 567). “Not all DuPont factors are relevant in each case, and the weight afforded to each factor depends on the circumstances. Any single factor may control a particular case.” Stratus Networks, Inc. v. UBTA-UBET Commc’ns Inc., 955 F.3d 994, 2020 USPQ2d 10341, at *3 (Fed. Cir. 2020) (citing Dixie Rests., 41 USPQ2d at 1533). “Two key factors in every Section 2(d) case are the first two factors regarding the similarity or dissimilarity of the marks and the goods or services, because the ‘fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.’” In re Embiid, 2021 USPQ2d 577, at *10 (TTAB 2021) (quoting Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)); In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004). See also In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for which there is record evidence but ‘may focus … on dispositive factors, such as similarity of the marks and relatedness of the goods.’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)). Opposition Nos. 91217941, 91217992, 91218267, 91222005, 91222719, 91227277, and 91233806 - 14 - A. The strength of Opposer’s THE WALKING DEAD mark. The fifth DuPont factor enables Opposer to expand the scope of protection afforded its pleaded mark by adducing evidence of “[t]he fame of the prior mark (sales, advertising, length of use),” while the sixth DuPont factor allows Applicant to contract that scope of protection by adducing evidence of “[t]he number and nature of similar marks in use on similar goods.” DuPont, 177 USPQ at 567. Under the fifth factor, likelihood of confusion fame is not “an all-or-nothing measure.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017). It “varies along a spectrum from very strong to very weak.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005) (quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003)). To determine a mark’s place on that spectrum, we consider its inherent strength, based on the nature of the mark itself, and its commercial strength, based on its marketplace recognition. See In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual strength (distinctiveness) and its marketplace strength.”); Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1345 (TTAB 2017); Top Tobacco, L.P. v. N. Atl. Operating Co., Inc., 101 USPQ2d 1163, 1171-72 (TTAB 2011) (the strength of a mark is determined by assessing its inherent strength and its commercial strength); Tea Bd. of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006) (market strength is the extent to which the relevant public recognizes a mark Opposition Nos. 91217941, 91217992, 91218267, 91222005, 91222719, 91227277, and 91233806 - 15 - as denoting a single source); 2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:80 (5th ed. March 2021 update) (“The first enquiry is for conceptual strength and focuses on the inherent potential of the term at the time of its first use. The second evaluates the actual customer recognition value of the mark at the time registration is sought or at the time the mark is asserted in litigation to prevent another’s use.”). 1. The inherent or conceptual strength of THE WALKING DEAD mark. Applicants contend that “[t]he WALKING DEAD concept has been around for centuries, and no one has any rights or a monopoly on the idea or the concept of the WALKING DEAD,”32 listing 12 examples of third-party use.33 Accordingly, Applicants argue that there are numerous third-party users of THE WALKING DEAD and that THE WALKING DEAD is inherently weak or descriptive.34 There are two problems with Applicants’ position. First, as discussed above as a Preliminary Issue, Applicants’ evidentiary showing is extremely limited and it does not support Applicants’ contention that THE WALKING DEAD “concept has been around for centuries” or that there are numerous third-party users of the term. Without supporting evidence, we decline to find the mark inherently weak; the words themselves are at worst suggestive of the goods and services for which the mark is registered.35 32 Applicants’ Brief, p. 3 (60 TTABVUE 4). 33 Applicants’ Brief, pp. 3-4 (60 TTABVUE 4-5). 34 Applicants’ Brief, pp. 9-10 (60 TTABVUE 10-11). 35 As noted above, we do not consider the exhibits Applicants attached to their brief because they are untimely. See Trademark Rule 2.121(a), 37 C.F.R. § 2.121(a) (“No testimony shall be taken or evidence presented except during the times assigned, unless by stipulation of the Opposition Nos. 91217941, 91217992, 91218267, 91222005, 91222719, 91227277, and 91233806 - 16 - Second, Opposer’s THE WALKING DEAD mark is entitled to the presumptions accorded to registered marks pursuant to Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b) (i.e., validity of the registered mark and of the registration, Opposer’s ownership of the mark, and Opposer’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate of registration). Because Applicants did not counterclaim to cancel Opposer’s pleaded registrations, Applicants may not attack the validity of the registrations by arguing that THE WALKING DEAD is merely descriptive. See Trademark Rule 2.106(b)(3)(ii), 37 C.F.R. § 2.106(b)(3)(ii) (“An attack on the validity of a registration pleaded by an opposer will not be heard unless a counterclaim or separate petition is filed to seek the cancellation of such registration.”). Because Opposer’s THE WALKING DEAD mark is registered on the Principal Register without a claim of acquired distinctiveness, it is inherently distinctive. See Tea Bd. of India, 80 USPQ2d at 1889 (“A mark that is registered on the Principal Register is entitled to all Section 7(b) presumptions including the presumption that the mark is distinctive and moreover, in the absence of a Section 2(f) claim in the registration, that the mark is inherently distinctive for the goods.”). parties approved by the Board, or upon motion granted by the Board, or by order of the Board.”). “A brief may not be used as a vehicle for the introduction of evidence.” TBMP § 801.01. Opposition Nos. 91217941, 91217992, 91218267, 91222005, 91222719, 91227277, and 91233806 - 17 - 2. The commercial strength of THE WALKING DEAD mark. In the Notices of Opposition, Opposer alleges that THE WALKING DEAD trademark became famous prior to any date upon which Applicants can rely.36 Opposer, in its brief, spends ten pages recounting the evidence purportedly establishing the fame of THE WALKING DEAD trademark, primarily due to the success of THE WALKING DEAD television series.37 Applicants contend, as best we can understand Applicants’ brief, that Opposer’s THE WALKING DEAD television series is “transitory, seasonal, and ‘here today, gone tomorrow.’”38 Fame, if it exists, plays a dominant role in the likelihood of confusion analysis because famous marks enjoy a broad scope of protection or exclusivity of use. A famous mark has extensive public recognition and renown. Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992). Fame may be measured indirectly by the volume of sales of and advertising expenditures for the goods and services identified by the marks at issue, “the length of time those indicia of commercial awareness have been evident,” widespread critical assessments and through notice by independent sources of the products or services identified by the marks, as well as their general reputation. Bose Corp., 63 USPQ2d at 1305-06 and 1309. Raw numbers alone may be misleading, however, and some 36 Notice of Opposition ¶¶ 4 and 15 (1 TTABVUE 5 and 7). 37 Opposer’s Brief, pp. 10-19 (55 TTABVUE 10-19). 38 Applicants’ Brief, p. 9 (60 TTABVUE 10). Opposition Nos. 91217941, 91217992, 91218267, 91222005, 91222719, 91227277, and 91233806 - 18 - context in which to place raw statistics may be necessary, for example, market share or sales or advertising figures for comparable types of goods. Id. at 1309. Other contextual evidence probative of the renown of a mark may include the following: ● extent of catalog and direct mail advertising, email blasts, customer calls, and use of social media platforms, such as Twitter, Instagram, Pinterest, and Facebook, identifying the number of followers; ● the number of consumers that Opposer solicits through its advertising throughout the year; ● local, regional, and national radio and television advertising campaigns, free- standing print campaigns, and referrals in national publications; ● unsolicited media attention; and ● product placement in television and in movies. Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1690-91 (Fed. Cir. 2018). Because of the extreme deference that we accord a famous mark in terms of the wide latitude of legal protection it receives, and the dominant role that fame plays in the likelihood of confusion analysis, Opposer has the duty to prove the fame of its mark clearly. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012) (citing Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007)). Opposer introduced the testimony and evidence listed below to prove THE WALKING DEAD is a famous mark: Opposition Nos. 91217941, 91217992, 91218267, 91222005, 91222719, 91227277, and 91233806 - 19 - ● In 2003, Robert Kirkman wrote the first comic book in THE WALKING DEAD comic book series;39 ● “Since 2003, thirty-two (32) volumes of The Walking Dead comic series have been published, made up of over 190 issues.”40 ● THE WALKING DEAD comic book series has been commercially successful. The series produced a number of issues that were the top selling comic issues in the United States for that year, including the #1 bestselling individual comic book issue of the year in 2012 (Issue #100) and in 2013 (Issue #115), and the #2 bestselling comic book issue of 2014 (Issue #132). The Walking Dead comic book series also was the bestselling non-Marvel/DC comic book series in each of these years. More significantly, The Walking Dead comic series is the first non-Marvel/DC comic book title to have accomplished these heights since 1999.41 ● “In addition to comics, The Walking Dead has been frequently republished in trade paperbacks, hardcovers, including collectors’ editions, and limited omnibus editions. The Walking Dead graphic novels make up five of the top six paperback graphic books on the New York Times Bestseller List.”42 ● Opposer’s sales of comics, trade paperbacks, and hardcovers in THE WALKING DEAD series have been significant.43 Mr. Kirkman testified “this sort of sales success 39 Kirkman Decl. ¶ 7 (37 TTABVUE 4). 40 Id. at ¶11 (37 TTABVUE 4). 41 Id. at ¶ 10 (37 TTABVUE 4). 42 Id. at ¶ 11 (37 TTABVUE 4-5). 43 Id. at ¶ 12 (36 TTABVUE 5) (Confidential). Because Opposer designated the sales of its publications as confidential, we refer to the sales figures in general terms. Opposition Nos. 91217941, 91217992, 91218267, 91222005, 91222719, 91227277, and 91233806 - 20 - for a zombie series like The Walking Dead is unprecedented and has resulted in significant fan recognition, attention, press reports and unsolicited publicity.”44 ● The Walking Dead comics have received critical acclaim. They received the 2007 and 2008 Eisner Award for Best Continuing Series at the San Diego Comic-Con International, the preeminent comic convention in the United States.45 ● “The Walking Dead television series debuted on AMC in October 2010. Since then, 131 hour-long episodes of The Walking Dead have aired over the course of nine seasons. On October 6, 2019, the series will enter its tenth season.”46 ● “The Walking Dead television series has the highest total viewership of any series in cable television history. During its third through seventh seasons, The Walking Dead averaged the most 18- to 49-year-old viewers of all television shows, including both broadcast and cable.”47 For example, during its fourth season, THE WALKING DEAD television series averaged 2.5 million more 18 to 49-year-old viewers than THE BIG BANG THEORY on CBS television, the next highest-rated program.48 ● THE WALKING DEAD television series has garnered critical acclaim. For example, … The Walking Dead was nominated for Best New Series by the Writers Guild of America Awards in 2011 and Best 44 Id. at ¶ 12 (37 TTABVUE 5). 45 Id. at ¶ 13 (37 TTABVUE 5). The Eisner Award is named for famed cartoonist Will Eisner who is credited with popularizing the graphic novel. Id. 46 Reinhardt Decl. ¶ 9 (35 TTABVUE 4). 47 Id. at ¶ 11 (35 TTABVUE 5). 48 Id. Opposition Nos. 91217941, 91217992, 91218267, 91222005, 91222719, 91227277, and 91233806 - 21 - Television Series Drama at the 68th Golden Globe Awards. The Walking Dead was named one of the top 10 television programs of 2010 by the American Film Institute Awards. The Walking Dead was nominated for Best Drama Series by the inaugural 1st Critics’ Choice Television Awards. The pilot episode for The Walking Dead, titled “Days Gone Bye,” received three nominations from the 63rd Primetime Emmy Awards-for Outstanding Sound Editing for a Series and Outstanding Special Visual Effects for a Series and won for Outstanding Prosthetic Makeup for a Series, Miniseries, Movie, or Special. … Most recently, in 2019, The Walking Dead was nominated for Favorite TV Drama at the Nickelodeon Kids’ Choice Awards and Best Horror Television Series at the 45th Saturn Awards.49 ● Because THE WALKING DEAD television series has been so successful, AMC launched a weekly talk show, TALKING DEAD, devoted to THE WALKING DEAD television series, as well as a spin-off series titled FEAR THE WALKING DEAD.50 ● Among television viewers, THE WALKING DEAD has a high level of awareness. AMC subscribes to two independent proprietary web-based tools: Ipsos Connect’s TV Dailies and E-Poll’s Program E- Score study. Both studies randomly select members of the public to rate new and returning television series. Ipsos Connect’s TVDailies tracks programs weekly, while E- Poll’s Program E-Score study tracks in-season programming monthly. Of 5,000 respondents that completed the latest TVDailies questionnaire in August 2020, 82.9% stated that they were aware of The Walking Dead television series-putting the series well above the average “awareness” score for cable television dramas in the TVDailies study, which is 31.7%. Of 1,200 respondents that completed the latest E-Score questionnaire in August 2020, 81% stated that they were aware of the Walking Dead series-also putting it well above the average 49 Id. at ¶12 (37 TTABVUE 6). 50 Id. at ¶13 (18 TTABVUE 7). Opposition Nos. 91217941, 91217992, 91218267, 91222005, 91222719, 91227277, and 91233806 - 22 - “awareness” score for cable television dramas in the E- Score study, which is 19.6%.51 ● AMC markets a myriad of merchandise based on THE WALKING DEAD television series, including clothing, mugs, food, and other consumer goods.52 Worldwide sales of such THE WALKING DEAD merchandise, “the vast majority of which consist of sales in the United States,” has been significant but not overwhelming.53 ● THE WALKING DEAD television series has received unsolicited media. For example, ➢ Los Angeles Times (August 16, 2015) Who says nobody walks in L.A.? With “Fear the Walking Dead,” the prequel to the hugely popular “The Walking Dead,” AMC will fulfill the desire of Robert Kirkman, creator of the series and the comic book that inspired it, to see a huge city get destroyed by flesh- eating corpses. The series premieres Aug. 23 and will have Los Angeles eventually overrun by legions of peripatetic zombies known as “walkers.”54 ➢ The Star-Ledger (Newark, New Jersey) (February 7, 2014) For the most part, viewers haven’t been troubled by this question [Why go on?]. “The Walking Dead” remains the most popular non-sports show on television (at least in the advertiser-friendly 18 to 49 age demographic), as unstoppable as one of the zombie herds that frequently 51 Id. at ¶14 (18 TTABVUE 7). 52 Id. at ¶15 (18 TTABVUE 7-8). 53 Id. at ¶ 16 (34 TTABVUE 8) (confidential). Because Opposer designated the sales of its collateral merchandise as confidential, we refer to these sales figures in general terms. 54 39 TTABVUE 6. In addition, this article refers to THE WALKING DEAD as “one of the most-watched shows in television.” Id. Opposition Nos. 91217941, 91217992, 91218267, 91222005, 91222719, 91227277, and 91233806 - 23 - menace the main characters. (A few times in the fall, it out- rated “Sunday Night Football.”). The series has pushed out its two previous showrunners, and the ratings have only gone up. It’s killed off major characters, and the ratings have only gone up. The public appetite for zombie mayhem is so insatiable that the only living person, on- or off-screen, who may be wholly irreplaceable -- and that includes writer-producer Robert Kirkman, whose comics inspired the show -- is producer, director and gore makeup master Greg Nicotero. People love their zombies.55 ___ “The Walking Dead” is way too successful for anyone involved to suggest such a radical shake-up, however. Until the ratings start to slip, I expect the show to remain the same uneven mix of thrilling zombie action and depressing human drama, occasionally transcending itself, at other times getting trapped for an extended period down a narrative dead end like Hershel’s farm.56 ➢ The Denver Post (August 18, 2017) AMC’s zombie apocalypse drama “The Walking Dead” quickly became one of the most successful shows in television history after its debut in 2010.57 We find that THE WALKING DEAD is a famous mark in connection with comic books and a television series for purposes of our likelihood of confusion analysis and, therefore, it is entitled to a broad scope of protection for these goods and services. In this regard, it is common knowledge that famous marks are frequently used on 55 39 TTABVUE 11. 56 39 TTABVUE 13. 57 39 TTABVUE 15. Opposition Nos. 91217941, 91217992, 91218267, 91222005, 91222719, 91227277, and 91233806 - 24 - collateral or merchandising products such as clothing, mugs and other consumer goods. We agree with the board that appellee’s evidence establishes that appellee has built up an enormous goodwill in the mark MONOPOLY, which has been used since 1935 for a board game and that MONOPOLY may properly be termed a “famous” mark. We also find no error in the board’s conclusion that it is a matter of common knowledge that famous marks are frequently used on items such as clothing, glassware, and trash cans and that appellee’s licensing of its mark for use on certain novelty items supports this conclusion. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 200 USPQ 986, 988 (CCPA 1981). Likewise, as the Board found in Harley-Davidson Motor Co. v. Pierce Foods Corp., 231 USPQ 857, 863 (TTAB 1986): That the mark HARLEY-HOG used on pork products is likely to be associated as to source with opposer is also corroborated by the fact that opposer’s uses of HARLEY and HOG in relation to its collateral goods frequently have been whimsical in character (e.g., HOG piggy banks, T- shirts bearing the phrase, “I LOVE MY HOG HARLEY,” “the HOG Tales” publication, etc.). Because of these uses, a person having knowledge of them would not be surprised to see HARLEY-HOG used in connection with hot dogs or similar products, and the association with opposer of the mark so used would also be not at all surprising. The likelihood of confusion is further enhanced by the fact that opposer’s line of products has been extended to include such goods as beer, wine coolers and chocolate bars. While these products are different than pork, the fact that beer and hot dogs or pork sausages are frequently consumed together, for example, is significant. See also L.C. Licensing Inc. v. Berman, 86 U.S.P.Q.2d 1883, 1889 (TTAB 2008) (“It is common knowledge, and a fact of which we can take judicial notice, that the licensing Opposition Nos. 91217941, 91217992, 91218267, 91222005, 91222719, 91227277, and 91233806 - 25 - of commercial trademarks on ‘collateral products’ has become a part of everyday life.”); Turner Entm’t Co. v. Nelson, 38 U.S.P.Q.2d 1942, 1945 (T.T.A.B. 1996) (“It is common knowledge, and in the present case, undisputed that video games, t-shirts, beach towels, caps and other logo-imprinted products are used as promotional items for a diverse range of goods and services.”). B. The similarity or dissimilarity of the marks. The marks of both parties are THE WALKING DEAD and, therefore, the marks are identical. C. The similarity or dissimilarity and nature of the goods and services. Where identical marks are involved, as is the case here, the degree of similarity between the parties’ goods and services that is required to support a finding of likelihood of confusion declines. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688-1689 (Fed. Cir. 1993) (“even when the goods or services are not competitive or intrinsically related, the use of identical marks can lead to the assumption that there is a common source”); In re Thor Tech, Inc. 90 USPQ2d 1634, 1636 (TTAB 1009) (the greater the degree of similarity between the marks, the lesser the degree of similarity between the goods or services is required to support a finding of likelihood of confusion); Time Warner Entm’t Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002); In re Concordia Int’l Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983) (It is only necessary that there be a viable relationship between the goods or services).. The issue here, of course, is not whether purchasers would confuse the parties’ goods or services, but rather whether there is a likelihood of confusion as to the source Opposition Nos. 91217941, 91217992, 91218267, 91222005, 91222719, 91227277, and 91233806 - 26 - of these goods or services. See Recot, 54 USPQ2d at 1898 (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); In re I-Coat Co., LLC, 126 USPQ2d 1730, 1737 (TTAB 2018) (“the test is not whether consumers would be likely to confuse these goods, but rather whether they would be likely to be confused as to their source.”); In re Cook Med. Tech. LLC, 105 USPQ2d 1377, 1380 (TTAB 2012); Helene Curtis Indus. Inc. v. Suave Shoe Corp., 13 USPQ2d 1618, 1624 (TTAB 1989); In re Rexel Inc., 223 USPQ 830 (TTAB 1984). Applicants seek to register THE WALKING DEAD for the goods and services listed below: ● “Restaurant services and themed restaurant services, namely, providing of food and beverages for consumption on and off the premises,” in International Class 43; ● “Coffee,” in International Class 30; ● “Bottled water,” in International Class 32; ● “T-shirts,” in International Class 25; ● “Cigarillos, cigars, ashtrays, match boxes, matches, lighters for smokers,” in International Class 34; ● “Candles for lighting; Candles for night lights; Perfumed candles; Scented candles, in International Class 4; ● “Eye-shadow, lipstick,” in International Class 3; and ● “Skin soap,” in International Class 3. Opposition Nos. 91217941, 91217992, 91218267, 91222005, 91222719, 91227277, and 91233806 - 27 - As discussed above, Opposer’s mark THE WALKING DEAD is famous for comic books and a television series. In addition, through its network of licensees, Opposer markets an array of merchandise based on THE WALKING DEAD comic books and television series and bearing the mark THE WALKING DEAD including, but not limited to, graphic novels, clothing, handbags, tote bags, phone cases, stickers, decorative pins and buttons, blankets, towels, wallets, key chains, belt buckles, lunch boxes, adhesive bandages, figurines, vinyl toys, vinyl replica props, foam dart blasters, card games, board games, statutes, collector tins, coin banks, ice trays, gelatin molds, bottle openers, bobble heads, puzzles, knives, swords, golf balls, coffee, beer, dog tags, wrapping paper, lamps, book ends?, mousepads, Halloween costumes, makeup kits, lanyards, beer koozies, patches, and fabric bolts.58 In determining whether the goods and services are related, it is not necessary that the goods and services of the parties be similar or competitive in character to support a holding of likelihood of confusion. It is sufficient for such purposes that Opposer establish that Applicants’ goods and services are related in some manner to Opposer’s goods and services, or that conditions and activities surrounding the marketing of these goods and services are such that they would or could be encountered by the same persons under circumstances that could, because of similarities of marks used with them, give rise to the mistaken belief that they originate from or are in some way associated with the same producer. Coach Servs., 101 USPQ2d at 1722. 58 Kirkman Decl. ¶ 15 (37 TTABVUE 5-6); Reinhardt Decl. ¶ 15 (35 TTABVUE 7-8). Opposition Nos. 91217941, 91217992, 91218267, 91222005, 91222719, 91227277, and 91233806 - 28 - Because the marks are identical, Opposer’s THE WALKING DEAD marks are famous for comic books and a television series, and it is common knowledge that marks for entertainment properties are frequently used on collateral merchandise such as clothing, food, and other consumer goods, we find that consumers encountering Applicants’ goods and services identified by THE WALKING DEAD mark are likely to mistakenly believe that those products and services are related to, sponsored by the owner of, or somehow associated with, the famous THE WALKING DEAD mark with which they are familiar. We find that this DuPont factor supports finding a likelihood of confusion. D. Established, likely-to-continue channels of trade and classes of consumers. “AMC [Opposer’s licensee], on its own and through its corporate affiliates and sublicensees, advertises and offers merchandise bearing THE WALKING DEAD Marks for sale over the Internet, including but not limited to at shopthewalkingdead.com and Amazon.com, at comic conventions, and in brick-and- mortar stores, including but not limited to Walmart, Target, Spencer’s, and Hot Topic.”59 In addition, Opposer, through other licensees, “advertises and offers merchandise bearing THE WALKING DEAD Marks for sale over the internet and in brick and mortar stores all over the United States, including but not limited to at The Skybound Shop, Amazon.com, Target, Walmart, Barnes & Noble, Bid Bad Toy Store, Entertainment Earth, Midtown Comics, and at comic conventions.”60 59 Reinhardt Decl. ¶ 17 (35 TTABVUE 8). 60 Kirkman Decl. ¶ 17 (37 TTABVUE 6). Opposition Nos. 91217941, 91217992, 91218267, 91222005, 91222719, 91227277, and 91233806 - 29 - Because there are no restrictions or limitations in Applicants’ descriptions of goods and services, we presume that Applicants’ goods and services are offered in all channels of trade normal for those goods and services, and that they are available to all classes of purchasers for those goods and services. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983). We thus must assume that Applicant’s goods would be offered over the Internet and in brick-and-mortar stores, such as Target, Walmart, and Spencer’s, in which entertainment-related collateral merchandise is sold. In addition, they could be offered to the same class of consumers as the goods for which Opposer’s mark is famous (i.e., fans of zombie comic books and television shows such as Opposer’s comic books and television series). We find this DuPont factor favors finding there is a likelihood of confusion. E. Conclusion Because Opposer’s THE WALKING DEAD trademark is a famous mark entitled to a broad scope of protection, the marks are identical, the goods and services are related and are offered in some of the same channels of trade and to the same classes of consumers, we find that Applicants’ mark THE WALKING DEAD for the goods and services identified in the applications is likely to cause confusion with Opposer’s registered mark THE WALKING DEAD for comic books and an “on-going fictional dramatic television series.”61 61 Because we have found that there is a likelihood of confusion, we need not reach Opposer’s dilution claim. See Multisorb Techs., Inc. v. Pactiv Corp., 109 USPQ2d 1170, 1171 (TTAB 2013) (“Like the federal courts, the Board has generally used its discretion to decide only those claims necessary to enter judgment and dispose of the case. . . [T]he Board’s Opposition Nos. 91217941, 91217992, 91218267, 91222005, 91222719, 91227277, and 91233806 - 30 - Decision: We sustain the oppositions. determination of registrability does not require, in every instance, decision on every pleaded claim.”).