IP Law Daily, TRADEMARK—TTAB: Refusal to register UNANIMOUS PUBLISHING mark for book publishing services affirmed, (Feb 11, 2025)

By Linda O’Brien, J.D., LL.M.

The dominant element in both the Applicant’s mark UNANIMOUS PUBLISHING and the registered mark UNANIMOUS GAMES was the identical word UNANIMOUS and that was sufficient to find the marks confusingly similar.

The refusal of the application of a media company to register the mark UNANIMOUS PUBLISHING for its book, e-book and audio book publishing on the basis of the proposed mark was so similar to the registered mark UNANIMOUS GAMES for entertainment and gaming services as to likely cause consumer confusion was proper, the Trademark Trial and Appeal Board has determined in a nonprecedential order. The respective marks were highly similar and there was an overlap in services and classes of purchasers. Thus, the refusal to register with respect to the application was affirmed (In re Unanimous Media LLC, No. 97529322 (T.T.A.B. Jan. 22, 2025)).

Unanimous Media LLC (“Applicant”), a multimedia company that produces television, film, and digital content, sought to register on the Principal Register the mark UNANIMOUS PUBLISHING (PUBLISHING disclaimed) for services identified as “Book publishing; Publishing of books, e-books and audio books,” in International Class 41.

The examining attorney refused to register the proposed mark under Section 2(d) of the Trademark Act on the ground of likelihood of confusion, citing the standard character mark UNANIMOUS GAMES (GAMES disclaimed), registered on the Principal Register for “Arranging and conducting e-sports competitions; entertainment in the nature of e-sports competitions; entertainment services in the nature of development, creation, production and post-production services of multimedia entertainment content; e-sports education services, namely, training in the field of e-sports; training in the field of computerized sports competitions; training in the field of mobile game development; providing e-sports education courses, namely providing on-line courses in the field of e-sports; providing on-line courses in the field of new technology integrations in e-sports,” in International Class 41. After the refusal was made final, the Applicant appealed the refusal to register to the Trademark Trial and Appeal Board.

Likelihood of confusion. Overall, the similarity of the Applicant’s mark UNANIMOUS PUBLISHING and the Registrant’s mark UNANIMOUS GAMES, the relatedness of the respective services, the overlap in the trade channels, and the classes of shared consumers strongly weighed in favor of likely confusion, the Board determined. Comparing the marks in their entireties as to “appearance, sound, connotation and commercial impression,” the two marks share the identical word UNANIMOUS combined with a merely descriptive or generic word. The additional word PUBLISHING in the Applicant’s mark is disclaimed as it is a generic word for publishing services and the U logo on that mark is the first letter of the word UNANIMOUS and the logo’s book design underscore the book publishing services. Taken as a whole, the most memorable element for source identification in the Applicant’s mark is the word UNANIMOUS. Similarly, regarding the Registrant’s mark, the disclaimed word GAMES is a generic word for various games services so the most memorable element for source identification is the word UNANIMOUS. Thus, the most dominant part of the respective marks is the identical word UNANIMOUS.

When considering the services, trade channels, classes of consumers and conditions of sale, the examining attorney presented evidence showing that the Applicant’s types of services (“book publishing; publishing of books, e-books and audio books”) and the Registrant’s types of services (“development, creation, production and post-production services of multimedia entertainment content”) and e-sport gaming services were used or registered under the same mark by third parties. The Applicant’s argument that, regarding the sophistication of shared consumers, e-sports enthusiasts and professional talent were sophisticated consumers was rejected as without evidence. The fact that purchasers are sophisticated or knowledgeable in a particular field did not mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion, the Board noted.

The Applicant’s argument that there have been no instances of actual confusion since the Applicant and Registrant “have been coexisting in the marketplace for years without any evidence of actual confusion” was rejected as unpersuasive. The instant application was filed based on an intention to use the mark in commerce, and even if the Applicant had used the applied-for mark for the last two years with evidence of actual confusion, that time frame was a relatively short period of time. It was not necessary to show actual confusion to establish a likelihood of confusion, the Board concluded.

The Case is Serial No. 97529322.

Judge: Kuhlke, K.

Attorneys: Kristen Ruisi (Venable LLP) for Unanimous Media LLC. Danielle Anderson for the USPTO.

Companies: Unanimous Media LLC

Cases: Trademark USPTO