Conceptual Weakness Must Focus on Registrant’s Goods

In Entertainment Content, Inc . v. Cooper Holdings, Inc., by change of name from Career Sports & Entertainment, Inc. we saw the Trademark Trial and Appeal Board chip away at the 17 third-party registrations that Cooper Holdings offered to demonstrate the conceptual weakness of the JUSTICE CENTRAL mark. What started as a promising argument quickly deteriorated to a total number of relevant, third-party marks below the 10 mark minimum.

The reason the argument ultimately failed was two-fold. First, Cooper Holdings did not focus on the Registrant’s services as they were described in the registration. Second, Cooper Holdings did not establish the relatedness of the services in most of the third-party registrations to the Registrant’s services.

Cooper Holdings filed an application to register the mark JUSTICE NETWORK (in standard characters) for, among other services, “television programming services” and “the production and distribution of television programs transmitted via various platforms across multiple forms of transmission media and other services.” Registrant had registered the mark JUSTICE CENTRAL for, among other services:

  • television programs in the field of law and courtroom legal proceedings;
  • entertainment programs in the field of law and
    courtroom legal proceedings accessible by cable,
    satellite, television, Internet, wireless devices,
    networks and via various platforms across multiple
    forms of transmission media;
  • providing programs in the field of law and courtroom
    legal proceedings accessible by cable, satellite,
    television, Internet, wireless networks and via various
    platforms across multiple forms of transmission media;
  • production and distribution of television shows.

Registrant’s services were limited to “courtroom legal proceedings” whereas Cooper Holdings’ services were unlimited. Accordingly, the parties’ services were legally identical.

Cooper Holdings offered 17 third-party registrations that contained the term JUSTICE. Five of the 17 third-party registrations were cancelled and one third-party registration was identified in Cooper Holdings’ brief; thus, not properly admitted into evidence. The remaining third-party registrations while identifying some form of entertainment did not identify courtroom legal proceedings as the content type. Cooper Holdings did not establish that the content type identified in the third-party registrations was related to courtroom legal proceedings. Accordingly, the Board chipped away at the 17 third-party registrations until the number was insufficient to establish the conceptual weakness of the JUSTICE CENTRAL mark.