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The Legal Equivalents Test: Bollywood and Hollywood

April 28, 2010 by
Filed under: Uncategorized 

The Legal Equivalents Test:  Bollywood and Hollywood

Emily Whitaker, William and Mary intern

When Nielsen Business Media, Inc. filed two intent-to-use applications for the mark THE BOLLYWOOD REPORTER, the USPTO refused the registration because the mark was deemed “merely descriptive.”  Nielsen Media protested this refusal, and the TTAB made its ruling on January 28th (in re Nielsen Media, Inc., Serial Nos. 77/223,725, 77/223,728).  This decision set important precedent for what is required for two marks to be deemed legal equivalents.

The BOLLYWOOD REPORTER provides news updates on the Indian motion-picture industry, and Nielsen media sought to register the mark for “newspapers in the field of entertainment” and for “providing online publications in the nature of newspapers in the field of entertainment.”  In response to rejection of these applications, Nielsen Media protested based on the fact that they also own the registration for the mark THE HOLLYWOOD REPORTER, which provides similar services and good as THE BOLLYWOOD REPORTER.

They attempted to argue that these two marks were legal equivalents. Citing Section 2(f) of the

Trademark Act of 1946, 15 U.S.C. §1052(f) they said that THE BOLLYWOOD REPORTER is not merely descriptive because it has required distinctiveness based on the previous registration of THE HOLLYWOOD REPORTER.  By arguing on these grounds, Nielsen Media was attempting to use a strategy known as “tacking on” to establish THE BOLLYWOOD REPORTER as distinctive.  To be able to “tack on”  the use of a registered mark to a new mark in this way, the applicant must prove that the two marks are the same.

Whether or not two marks are legal equivalents is analyzed using tests established by two previous cases, re Dial-A-Matress Operating Corp. 57 USPQ2d at 1812; and Van Dyne-Crotty, Inc. v. Wear-GuardCorp., 926 F.2d 1156, 17 USPQ2d 1866, 1868 (Fed. Cir.1991). Based on this precedent, to be deemed legal equivalents the two marks “must be indistinguishable from one another or create the same, continuing commercial impression such that the consumer would consider both marks as the same mark.”

So, the question was asked, is THE BOLLYWOOD REPORTER indistinguishable from THE HOLLYWOOD REPORTER?  Nielsen Media argued that the marks were legal equivalents because they both refer to film industry news sources, and the only difference between them was an inconsequential one- the letter B and the letter H.  The Court responded that this difference was very consequential because it entirely changed the meaning of the mark, from referring to the American film industry to the Indian film industry.  Thus, the mark BOLLYWOOD REPORTER had not acquired distinctiveness based on Trademark Rule 2.41(B). The TTAB affirmed the decision to refuse registration, setting even more precedent for tacking cases and legal equivalent tests.

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