IP Law Daily, TRADEMARK—TTAB: VIVA MAUDE for entertainment production confusingly similar to title of 1970s sitcom, (Oct 18, 2022)

By George Basharis, J.D.

The Trademark Trial and Appeal Board found television viewers could confuse the source of comedy productions under the proposed VIVA MAUDE mark with the 1970s comedy series MAUDE.

A Trademark Examining Attorney properly refused to register Applicant Viva Maude, Inc.’s standard-character mark VIVA MAUDE for television production services because it was confusingly similar to the registered mark MAUDE for a “continuing comedy television series,” the Trademark Trial and Appeal Board has decided. The Board found the marks were overall similar in appearance, sound, connotation, and commercial impression, and the associated services were related and likely to be offered to the same class of consumers. Accordingly, the refusal was affirmed (In re Viva Maude, Inc., October 13, 2022, English, C.).

Applicant offers television and film production services to “media providers,” including HBO and HBO Max, and sought registration of the VIVA MAUDE mark for a wide range of television and film production services. The Trademark Examining Attorney refused registration of the mark under Section 2(d) of the Trademark Act, on the ground that the proposed mark was confusingly similar to the registered mark MAUDE, which was used as the title for the popular 1970s CBS television sitcom and registered for “entertainment services, namely, a continuing comedy television series.” Applicant appealed.

The Board conducted a likelihood of confusion analysis that focused on the similarity of the parties’ marks, services, channels of trade, and class and sophistication of consumer, and it found that, on balance, the confusion factors supported the Examining Attorney’s refusal.

Similarity of the marks. The Board found the marks to be similar in appearance, sound, connotation, and commercial impression. The Board rejected Applicant’s argument that the marks did not look or sound similar because of the addition of the word “viva” in the proposed mark and the extra syllables the word created. Not only were consumers unlikely to differentiate the marks based on the extra syllables in the proposed mark, “viva” drew attention to and emphasized the name MAUDE, thus highlighting and reinforcing the connotation and commercial impression created by the given name MAUDE. Applicant contended that MAUDE alone was a name, while VIVA MAUDE was a phrase that invoked cheer. However, the proposed mark was not a play on words, and consumers were likely to recognize the mark in its entirety as expressing support for a person named Maude, with emphasis drawn to the MAUDE part of the mark.

Applicant cited three pairs of registered marks containing the word “viva” and argued the registrations “clearly showed” Viva-formative marks were distinguishable and registerable for related goods or services. However, three examples were not enough to persuade the Board. The Board emphasized that the similarity of third-party marks is not decisive, and each case should be decided on its own merits.

The Board also rejected Applicant’s claim that MAUDE was “somewhat diluted” by numerous Wikipedia entries of famous “Maudes” because the entries did not show common use of the term MAUDE in the television entertainment industry; thus, the entries were not relevant. Moreover, even if consumers paused to contemplate the meaning of Maude in a particular context, as Applicant claimed, there was no evidence that consumers would attribute one meaning to the registered mark MAUDE and a different meaning to the name MAUDE in Applicant’s mark based on the nature of the respective services.

Similarity of the services. Applicant argued that its television production services were distinct from the registrant’s services because the registered mark was used as the title of a television sitcom produced in the 1970s while Applicant’s services were ordered by media providers to produce television shows. However, the services in the cited registration were not limited to the title of a television series, and the Board refused to rely on extrinsic evidence to support such a limitation. Moreover, the identification of services in the application and the cited registration reflected an “inherent relationship” between the services because Applicant’s “entertainment services in the nature of creating, directing and production of … television series … featuring comedy” resulted in the type of “continuing comedy television series” identified by the cited registration. The Examining Attorney’s submission of 19 third-party use-based registrations for marks covering both ongoing television series and television and film production services corroborated the commercial relationship between Applicant’s and the registrant’s services. They demonstrated the services could be encountered by the same consumers under circumstances that could give rise to the mistaken belief that they emanate from a common source, according to the Board.

Similarity of consumers. Applicant argued that its services were marketed to members of the television and film industry and providers of streaming services while the registrant’s ultimate consumers were television audiences. However, extrinsic evidence of actual use did not support Applicant’s claim. Consumers of television comedy shows included “media providers” that purchase or license the shows to broadcast or stream. Additionally, the services ultimately reach the same end users: television viewers. Moreover, although the VIVA MAUDE mark would not be used in the title of a television show, viewers encountering the MAUDE comedy series and viewers encountering the VIVA MAUDE mark in the credits at the end of a television or film production could mistakenly believe that the series and production services emanated from a common source.

Purchaser sophistication. Finally, Applicant claimed that its media producer consumers were highly sophisticated, thus making confusion unlikely. However, the relative sophistication of consumers did not outweigh the other confusion factors, which supported the Examining Attorney’s refusal. Although network studios and streaming services exercised a degree of care in employing production services, the least sophisticated consumer of Applicant’s services—the general television viewing public—was not as sophisticated.

The Case is Serial No. 90269302.

Attorneys: Mark A. Watkins (Vorys, Sater, Seymour and Pease LLP) for Viva Maude, Inc. Alexandria Bryant for the USPTO.

Companies: Viva Maude, Inc.

Cases: Trademark USPTO