The Registrar ruled in Plaintiff's favor on Issue 3 (Prior Reputation) and accordingly, denied Defendant's trademark application.
In denying Plaintiff's first two grounds for opposition, the Registrar held that she did not have competent jurisdiction to decide matters of copyright infringement. Therefore questions under sections 52, 126 and 184 of the Copyright Act or to determine the operation and effect of regulation 4 of the Copyright International Protection Regulations also lie outside the jurisdiction of the Registrar. Because the Registrar does not have the jurisdiction to rule on the issue of copyright and ownership, there is no discussion as to the actual merits of Plaintiff's claims.
In affirming Plaintiff's objections to the application on the grounds of Prior Reputation, the registrar found that the two marks were substantially identical and that Plaintiff offered compelling evidence of prior reputation in its mark prior to the application priority date in Defendant's mark.
Specifically, the Registrar finds that the marks so resemble each other, that "without a careful side by side comparison, one is likely to be mistaken for the other…They clearly agree in the central and essential features…and the overall construction or design." While there are numerous differences in the marks, the Registrar concludes that these offer "very little practical help in differentiating marks which hold so much spectacular graphic and textual material in common."
The Registrar further determined that Plaintiff's mark did have a prior reputation and Defendant's mark was likely to cause people to wonder whether this mark indicates sponsorship, or a franchise arrangement, or some other trade...
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