The B.V.D. Licensing Corporation v. Body Action Design, Inc.

NIES, Circuit Judge,

dissenting.

I dissent. If the trademark sought to be registered were the word “BAD”, I would agree with the majority’s affirmance. However, the mark is not the word “BAD” nor is it displayed as a word. The mark is comprised of the initials of applicant’s corporate name and is displayed B.A.D, that is, the letters are separated by periods or dots.

The record in this case amounts to little more than the application file and the numerous registrations of opposer for the mark B.V.D. Nevertheless, the record is sufficient to prove opposer has long-established, prior rights in B.V.D. for essentially the same goods sold under applicant’s B.A.D mark. I agree with the majority that judicial notice may be taken that B.V. D. is a famous mark for underwear.

Applying the principles established by our precedent leads me to conclude that the prior registrations for the B.V.D. mark preclude registration of B.A.D because there is a likelihood of confusion between the marks as used for identical or closely related goods. Lanham Act § 2(d), 15 U.S.C. § 1052 (d) (1982).

It is a basic principle that marks must be compared in their entireties for purposes of determining likelihood of confusion, not dissected into their component parts. See, e.g., Joseph Scklitz Brewing Co. v. Houston Ice & Brewing Co., 250 U.S. 28, 29 , 39 S.Ct. 401, 401 , 63 L.Ed. 822 (1919) (Holmes, J.) (“It is a fallacy to break the fagot stick by stick.”); Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 672 , 223 USPQ 1281, 1282-83 (Fed.Cir.1984). The reason for this principle is that the average purchaser, at least of low-cost shelf goods such as those involved here, is unlikely to perceive specific details of a mark. Colgate-Palmolive Co. v. Purex Corp., 451 F.2d 1401, 1402 , 59 CCPA 741, 742, 172 USPQ 176 , 176 (1971). Accordingly, our precedent has noted that purchasers have particular difficulty in distinguishing between combinations of letters. See, e.g., Crystal Corp. v. Manhattan Chem. Mfg. Co., 75 F.2d 506, 508 , 22 CCPA 1027, 1029, 25 USPQ 5, 6 (1935); 2 J. McCarthy, Trademarks & Unfair Competition § 23:13, at 75 (2d ed. 1984). See generally Vitamin Corp. v. American Home Prods. Corp., 166 F.2d 203 , 35 CCPA 952, 76 USPQ 611 (1948) (mark “VCA” confusingly similar to mark “I.V.C.”).

Second, it is another well established principle that likelihood of confusion may not be judged upon a side-by-side comparison of the marks. See, e.g., Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005 , 1007, 58 CCPA 972, 974, 169 USPQ 39, 40 (1971); 2 J. McCarthy § 23:17, at 98. I believe the majority does not follow that principle. The majority presumes that the purchasing public will actually see that B*A«D is not B.V.D. because B.V.D. is well-known. In reality, the opposite is true. What happens is that a purchaser is less likely to perceive differences from a famous mark. All that is needed is a suggestion of such mark to trigger a mental perception that it is the famous mark. Purchasers simply do not take the time to study the marks and see the differences. Nor are they expected to. See Specialty Brands, 748 F.2d at 675 , 223 USPQ at 1284 (fame important to likelihood of confusion inquiry because public may exercise less care in purchasing product under a famous name); 1 J. Gilson, Trademark Protection & Practice § 5.03, at 5-21 (1987) (“Consumers under actual product selection circumstances rarely analyze trademarks minutely or compare their various elements.”); 2 J. McCarthy § 23:15, at 81.

*731 Third, applicant argues, and the majority agrees, that purchasers will pronounce B»A»D as the word “BAD”. There is no evidence how the public articulates B*A*D. Indeed, no evidence exists indicating how applicant itself pronounces its mark, whether as initials or as a word. Thus, under our precedent, it must be presumed that the mark will be pronounced either as initials or as a word. See Barton Mfg. Co. v. Hercules Powder Co., 88 F.2d 708, 710 , 24 CCPA 982, 984, 33 USPQ 105 , 107 (1937) (no “correct” pronunciation of a mark). Moreover, the derivations of the marks are of no particular significance. See Aerojet-General Corp. v. Computer Learning & Sys. Corp., 170 USPQ 358 , 362 (TTAB 1971) (fact that letter marks are acronyms derived from different words unimportant because average purchaser probably unaware of derivation); 1 J. Gilson § 5.02, at 5-18.

Finally, in close cases, all doubts must be resolved in favor of the prior user. See Geigy Chem., 438 F.2d at 1008 , 58 CCPA at 975, 169 USPQ at 40 ; 2 J. McCarthy § 23:21, at 106. As we have stated and restated:

The law has clearly been well settled for a longer time than this court has been dealing with the problem to the effect that the field from which trademarks can be selected is unlimited, that there is therefore no excuse for even approaching the well-known trademark of a competitor, that to do so raises “but one inference — that of gaining advantage from the wide reputation established by appellant in the goods bearing its mark,” and that all doubt as to whether confusion, mistake, or deception is likely is to be resolved against the newcomer, especially where the established mark is one which is famous and applied to an inexpensive product bought by all kinds of people without much care.

Planters Nut & Chocolate Co. v. Crown Nut Co., 305 F.2d 916, 924-25 , 50 CCPA 1120, 1128-29, 134 USPQ 504 , 511 (1962) (footnote omitted); Specialty Brands, 748 F.2d at 674, 676 , 223 USPQ at 1284, 1285 (court “compelled” to resolve doubts in favor of famous, established mark against newcomer, quoting Planters Nut). That guideline should be applied here to protect a famous mark from encroachment with the unfortunate consequence that long-established rights will be narrowed. Because of this decision permitting encroachment by the mark B*A*D, B.V.D. is in a weaker position to assert rights against other similar marks. Under the majority’s analysis, B»E*D, B*I»D, B»0»D, and B*U*D for underwear are also registrable because they also might be perceived as words.

This case brings to mind the oft-quoted truism: “[F]ew would be stupid enough to make exact copies of another’s mark or symbol. It has been well said that the most successful form of copying is to employ enough points of similarity to confuse the public with enough points of difference to confuse the courts.” Baker v. Master Printers Union, 34 F.Supp. 808, 811 , 47 USPQ 69, 72 (D.N.J.1940); Plough, Inc. v. Kreis Laboratories, 314 F.2d 635 , 644 n. 4, 136 USPQ 560 , 567 n. 4 (9th Cir.1963) (Pope, J., dissenting); Armstrong Cork Co. v. World Carpets, Inc., 76 F.R.D. 613, 614 , 198 USPQ 526, 527 (N.D.Ga.1977). That appears to me to be the situation here.

Accordingly, I would reverse.