Gary Benson might not remember Serpentine Fire, but he sure felt the heat when the Trademark Trial and Appeal Board sided with Maurice White and rejected Benson’s application to register “WE NEED A REBIRTH OF THE EARTH. EARTH, WIND, AND FIRE (and Design)”.

Benson applied to register the foregoing mark for arranging concerts with ecological themes. The examining attorney must have had her Reasons for passing the application to publication (perhaps she was living in a Fantasy), but in September, Maurice White, singer for the multi-platinum band, opposed the application on the grounds of likelihood of confusion with the band’s trademark for EARTH, WIND & FIRE. While the band was no longer actively producing records, they were still touring due to the incredible Devotion of its fans. The TTAB agreed to Rock That decision in favor of EWF. Sorry, Benson, That’s the Way of the World.

Practice Note: What is interesting about this case (besides the author’s age-revealing bad puns) is primarily procedural in nature. First, the Board notes that Applicant (representing himself) filed an answer that was “argumentative in nature, and does not actually respond to the notice of opposing by affirming or denying opposer’s allegations.” This is a violation of Rule 8(b) of the Federal Rules of Civil Procedure. The TTAB is generally more lenient to non-represented clients and often it does not make financial sense to file a motion asking the Board to strike the answer. That said, attorneys should review improperly filed answers to make certain information is not contained in the answer that is inappropriate (such as letters written in consideration of settlement). Even if the Board grants the applicant leave to refile its answer, the record is cleaner for the Opposer.

The decision also points out another important procedural misstep. Once an Opposition has proceeded to the trial stage, edits to the identification of goods by the Applicant will not generally be accepted unless agreed to by the Opposer (there are some exceptions). TBMP § 514.03. Such an amendment can therefore be used as a bargaining chip with Opposers in cases where the Applicant could refile and likely prevail, thus its significance should not be overlooked.

The Board also notes the applicant tried to introduce evidence in the case by attaching it to his brief. Notwithstanding the Board’s leniency toward pro per parties, it generally does not allow parties to blatantly disregard its rules. The consequence of improperly introduced evidence is to give it no consideration.

Finally, the Board here – and in many other cases – gives great weight to the fact that the Opposer’s mark is fully incorporated into Applicant’s mark. Clients should be advised that “adding” elements to an existing mark (especially one that is arbitrary or fanciful) is not likely to reduce confusion between a client’s mark and an existing mark.

Zenon Martin Yracheta wrote “The Three Chihuahua’s” in 2004. In 2006, he commissioned a screenplay. Yracheta then sent both the story and the script to Ellen Gonzales at CBS who referred Yracheta to Gilbert Davila. In 2008, Disney debuted Beverly Hills Chihuahua.

According to Yracheta’s complaint, filed November 16, 2009 in Texas district court, “The similarity [between it and Yracheta’s movie] is so striking that the Movie must have been copied from the Story and Script.” Given the complaint provides no reference to what the similarities are, Yracheta’s complaint may be more bark than bite. The devil will be in the details.

Perhaps Yracheta is trying to cash in as Buchwald did in 1990 when he sued Paramount Pictures for breach of contract over the movie Coming to America, starring Eddie Murphy and Arsenio Hall. In that case, however, Buchwald was under contract with Paramount (which acknowledged having his script idea). Thus, the primary issue before the court was whether Buchwald was owed damages given the movie lost money for the studio. Access and similarity were easily proven.

Even if he can prove access, Mr. Yracheta is going to have to prove substantial similarity between his work and the movie Disney created, and not just similarity between his idea and Disney’s movie. If the court takes their cue from Warner Bros. v. American Broadcasting Company, 720 F.2d 231 (2d Cir. 1983), wherein the court outlined what was “standard fare” for superheroes, Yracheta may be barking up the wrong tree.

First, talking dog movies have been around a lot longer than Yracheta, and pets rescuing other pets in peril in this genre is just doggone old. Next, Chihuahuas are commonly heralded as the pet of the wealthy, so if Mr. Yracheta’s script suggests a pampered dog, the court is likely to reject any evidence of copying in favor of an interpretation of “spoiled dog” as a common idea. Chihuahuas originated in Mexico, so the idea of the dogs speaking with a Spanish/Mexican accent is not, well, far-fetched.