Sitemap
Spanish
Monday, June 14, 2010
The Firm Prevails in "PENTHOUSE" Trademark Opposition
The Firm prevailed in a trademark opposition handled by associate Meredith Frank Mendez for General Media Communications, Inc. (“GMCI”), the owner of the “PENTHOUSE” trademarks against the owner of a trademark application for “PENTHOUSE VODKA.” The”“PENTHOUSE” mark is used in connection with numerous goods and services, such as magazines, dvds, cds, calendars, lingerie, shoes, adult toys and novelties, swimwear and other apparel, clock, watches, cigars, energy drinks, candles, giftware, websites, nightclubs, lounges, and restaurants.
The Trademark Trial and Appeal Board (“TTAB”) found that consumers would be “likely to believe, upon encountering applicant’s mark PENTHOUSE VODKA for ‘alcoholic beverages, namely, vodka,’ that the goods and services originate from or associated with or sponsored by the same entity.”
In finding a likelihood of confusion between GMCI’s “PENTHOUSE” marks and the applicant’s proposed “PENTHOUSE VODKA” mark, the TTAB determined that GMCI’s “PENTHOUSE” mark is famous, the highest degree of public recognition and renown achieved by a mark. The TTAB also found that “PENTHOUSE” is “an arbitrary and strong mark” and “is entitled to a broad scope of protection.” Therefore, the applicant’s alcoholic beverages need not be identical to the variety of goods sold and services offered under the “PENTHOUSE” marks and the fact that GMCI’s “PENTHOUSE” mark has not yet been used on alcoholic beverages was irrelevant. However, the TTAB explained that the “PENTHOUSE” marks are promoted in the context of parties and events involving the sale and use of alcohol and “PENTHOUSE” is often the co-sponsor of such parties and events with alcohol companies. Moreover, “PENTHOUSE” often advertises its goods and services with alcohol companies and alcohol is served at many of the venues where the services offered under the “PENTHOUSE” marks are rendered and advertised in the “PENTHOUSE” magazine.
Therefore, the TTAB refused to register the applicant’s “PENTHOUSE VODKA” mark.
.bmp){kind=small}
