In a recent Trademark Trial and Appeal Board (TTAB) opposition proceeding filed by the owner of the trademark AMERICA’S NEXT TOP MODEL, the well-known reality show, one of the issues concerned the opposer’s claim that its trademark was “famous.” A declaration that the mark is famous entitles the mark to a broader scope of legal protection. In support of its allegation, the opposer offered evidence that:
its television series has been continuously broadcast on various national television networks for nearly twelve years, since May 2003, through 21 “cycles,” at times with more than five million viewers of an episode via traditional television broadcast and most recently with more than two million viewers for original broadcasts and “in-week repeats.” Opposer’s series has 100,000 Twitter followers and more than eight million “likes” on Facebook as of March 2014. It has advertised through print ads, billboards, and the Internet. Indirect evidence of fame includes numerous media references; the 2009 Directors Guild of America Award for Outstanding Directorial Achievement in Reality Programs; the 2008 Teen Choice Award for Choice TV Reality Beauty & Makeover; and the 2007 and 2008 Teen Choice Awards for Choice TV Personality won by host Tyra Banks. The series also has been nominated for reality show awards from GLAAD, the NAACP, and Kids Choice.
The shortcoming of the opposer’s admittedly impressive evidence, according to the TTAB, was that there was no context offered for its raw statistics:
For example, Opposer offers testimony that its series was the number-one rated show on the UPN network and at times is the most-watched series on The CW Television Network, but provides no information regarding viewership of the series in relation to other television programs. Nor does Opposer compare the magnitude of its Twitter followers and Facebook “likes” to those of other television series or entertainment offerings.
The TTAB’s decision impacts any opposer seeking to offer evidence of fame. Statistics alone, without context, may not be enough. Eight million “likes” on Facebook is unquestionably impressive. The fact that such evidence was not sufficient highlights the difficulty one has in establishing a famous trademark in front of the TTAB. It should be noted, however, that the tone of the TTAB decision implied that, if context was supplied, the evidence likely would have established that the mark was “famous.”
Despite the TTAB refusing to find that the mark was famous, based upon the other du Pont factors, the TTAB concluded that the mark was “somewhat strong” and that a likelihood of confusion existed between AMERICA’S NEXT TOP MODEL and the applicant’s mark AMERICA’S NEXT TOP GOSPEL STARZ. Consequently, the TTAB sustained the opposition.
TTAB Proceeding: Pottle Productions, Inc. v. Melanie Reed, Opposition No. 91208008
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