UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`THIS DISPOSITION
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`IS NOT CITABLE AS PRECEDENT
`OF THE TTAB
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`Mailed: September 13, 2006
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`Opposition No. 91156299
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`WARNER BROS. ENTERTAINMENT,
`INC., substituted for TIME
`WARNER ENTERTAINMENT COMPANY,
`L.P.1
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`
`v.
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`ROGER CAMPO, JULIO CALDERON
`and LUZ BEDIALE, d/b/a as LOS
`PRIMOS PRODUCTIONS
`
`
`Before Holtzman, Kuhlke and Cataldo,
`Administrative Trademark Judges.
`
`By the Board:
`
`Roger Campo, Julio Calderon and Luz Bediale
`
`
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`(“applicants”) seek to register the mark HARRY POTHEAD for
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`“entertainment services in the nature of a live-action,
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`comedy, drama and/or animation television programs,
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`production of live-action comedy, drama and/or animated
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`television programs; a live-action, comedy, drama and/or
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`animated motion picture theatrical films; production of
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`live-action, comedy, drama and/or animated motion picture
`
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`1 Evidence of the relevant assignents is recorded in the
`Assignment Branch of the Patent and Trademark Office as follows:
`Warner Communications Inc. by assignent from Time Warner
`Entertainment Company, L.P., recorded at at Reel/Frame 2641/0774;
`and Warner Bros. Entertainment, Inc. by assignent from Warner
`Communications Inc., recorded at Reel/Frame 2641/0774.
`
`
`Taylor
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`

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`Opposition No. 91156299
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`theatrical films; and theatrical performances both animated
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`and live-action; and providing information for an actual
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`entertainment via an electronic global computer network in
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`the nature of a live-action, comedy, drama and/or animated
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`television programs; production of live-action comedy, drama
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`and/or animated television programs; a live-action, comedy,
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`drama and/or animated motion picture theatrical films;
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`production of live-action, comedy, drama and/or animated
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`motion picture theatrical films; and theatrical performances
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`both animated and live action; and production of comedic and
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`musical audio recordings.”2 Registration has been opposed
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`by Time Warner Entertainment Company, L.P. (“opposer”). As
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`grounds for opposition, opposer has alleged, inter alia, (1)
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`that opposer is the owner of all rights, title and interest
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`in and to the name and mark HARRY POTTER for a wide variety
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`of goods and services including entertainment services and
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`motion picture films; that opposer owns Registration Nos.
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`2568097, 2568098, 2497083, 2450787, 2493484, 2479341,
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`2450788, 2525908, 2526111, 2574410, 2530755, 2457302,
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`2506165, 2506166, 2685932, and 2683060 for HARRY POTTER3;
`
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`2 Application Serial No. 78054817, filed March 23, 2001 and
`alleging July 25, 2000 as the date of first use anywhere and in
`commerce.
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` 3
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` Examples of the goods and services recited in these
`registrations include:
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`Registration No. 2568097 for “entertainment services in the
`nature of a live-action, comedy, drama and/or animation
`television programs, production of live-action comedy, drama
`
`2
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`

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`Opposition No. 91156299
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`that notwithstanding opposer’s prior rights in its mark,
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`applicants filed their application for registration of the
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`and/or animated television programs; a live-action, comedy, drama
`and/or animated motion picture theatrical films; production of
`live-action, comedy, drama and/or animated motion picture
`theatrical films; and theatrical performances both animated and
`live-action; and providing information for an actual
`entertainment via an electronic global computer network in the
`nature of a live-action, comedy, drama and/or animated television
`programs; production of live-action comedy, drama and/or animated
`television programs; a live-action, comedy, drama and/or animated
`motion picture theatrical films; production of live-action,
`comedy, drama and/or animated motion picture theatrical films;
`and theatrical performances both animated and live action; and
`production of comedic and musical audio recordings,” registered
`May 7, 2005, and claiming December 22, 2000 as the date of first
`use anywhere and in commerce;
`
`Registration No. 2568098 for “cookies, bases for making
`milkshakes, breakfast cereal, bubble gum, cake decorations made
`of candy, chewing gum, frozen confections, crackers, frozen
`yogurt, ice cream, pretzels, peanut butter confectionery chips,
`malt for food; soybean malt; malt biscuits; sugar confectionery;
`edible decorations for cake; rice cakes; pastilles; pastries;
`biscuits and bread; coffee beverages with milk; cocoa beverages
`with milk, chocolate-based beverages, coffee and coffee-based
`beverages, cocoa and cocoa-based beverages; tea, namely, ginseng
`tea, black tea, ooiong tea, barley and barley-leaf tea; meat
`tenderizers for household purposes; binding agents for ice-
`cream,” registered May 7, 2002, and claiming October 11, 2000 as
`the date of first use anywhere and in commerce; and
`
`Registration No. 2497083 for “toys and sporting goods, including
`games and playthings - namely, action figures and accessories
`therefor; plush toys; balloons; bathtub toys; ride-on toys;
`equipment sold as a unit for playing card games; toy vehicles;
`dolls; flying discs; electronic hand-held game unit; game
`equipment sold as a unit for playing a board game, a card game, a
`manipulative game, a parlor game, a parlor-type computer game, an
`action type target game; stand alone video output game machines;
`jigsaw and manipulative puzzles; paper face masks; skateboards;
`ice skates; water squirting toys; balls - namely, playground
`balls, soccer balls, baseballs, basketballs; baseball gloves;
`swimming floats for recreational use; kickboard flotation devices
`for recreational use; surfboards; swim boards for recreational
`use; swim fins; toy bakeware and toy cookware; toy banks; and
`Christmas tree ornaments,” registered October 9, 2001, and
`claiming October 6, 2000 as the date of first use anywhere and in
`commerce.
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`
`3
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`

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`Opposition No. 91156299
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`mark HARRY POTHEAD for entertainment services; that
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`applicants were aware of opposer’s mark and the HARRY POTTER
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`series of books before applicants adopted their “alleged”
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`mark; that applicants’ mark is a colorable imitation of
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`opposer’s HARRY POTTER mark in that it so closely resembles
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`opposer’s mark that use and registration thereof is likely
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`to cause confusion and deception as to the source or origin
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`of applicants’ services and will injure and damage opposer
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`and the goodwill and reputation symbolized by opposer’s
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`mark; that applicant’s services are so closely related to
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`the goods and services of opposer that the public is likely
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`to be confused, to be deceived and to assume erroneously
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`that applicants’ services are those of opposer or that
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`applicants are in some way connected with or sponsored by or
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`affiliated with opposer, all to opposer’s irreparable
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`damage; and that likelihood of confusion is enhanced by the
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`fame of opposer’s mark; (2) that applicants’ mark comprises
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`matter that disparages or falsely suggests a connection with
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`opposer; (3)that applicants’ mark consists of matter that is
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`scandalous within the meaning of Section 2(a), inasmuch as
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`“pothead” is a pejorative term; (4) that applicants have
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`used their alleged mark only in connection with a single
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`animated motion picture prior to filing their application,
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`thus applicants have not used their mark as a trademark or
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`service mark prior to filing their application and (5) that
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`4
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`

`
`Opposition No. 91156299
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`opposer’s mark has become well known and famous as a
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`distinctive symbol of opposer’s goodwill; that opposer’s
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`mark became well known and famous before applicant made any
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`use of its alleged mark; and that applicants’ mark will
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`cause dilution of the distinctive quality of opposer’s mark.
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`Applicants, in their answer have admitted, among other
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`things, that: (1) opposer’s mark is immediately identifiable
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`as a fanciful designation that evokes images associated with
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`the books, the movie and a vast line of Harry Potter
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`products and services originating with opposer or its
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`related companies that have been sold under opposer’s mark;
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`(2) applicants were aware of opposer’s mark and the Harry
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`Potter series of books before applicants adopted their
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`alleged mark; (3) Harry Potter books are noteworthy for
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`their distinctive and imaginative names, including HARRY
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`POTTER, which are known to millions of readers and others
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`who have merely read book reviews or heard about the Harry
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`Potter stories by word of mouth; (4) opposer’s mark has been
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`widely used and extensively publicized in the United States
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`and, therefore, opposer’s mark has become well known and
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`famous as a distinctive symbol of opposer’s goodwill; (5)
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`opposer’s mark became well known and famous before
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`applicant4 made any use of its alleged mark; (6) applicants’
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`4 Opposer, in paragraph 24 of the notice of opposition,
`references applicants in the singular.
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`5
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`

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`Opposition No. 91156299
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`alleged mark will cause dilution of the distinctive quality
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`of opposer’s mark; and (7) use and registration of
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`applicants’ alleged mark will lessen the capacity of
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`opposer’s famous name and mark to identify and distinguish
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`opposer’s goods and services. Applicants otherwise deny the
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`salient allegations of the notice of opposition.
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`Applicants also have asserted that “[a]pplicant’s [sic]
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`Mark is a fair-use parody of Opposer’s Mark which directly
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`criticizes, comments on and satirizes Opposer’s Mark and the
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`content of works associated with Opposer’s Mark from which
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`Opposer’s Mark is derived, including, but not limited to,
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`content which capitilizes on, bastardizes and haphazardly
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`amalgamates classical ‘pop’ mythologies and which has little
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`or no social or literary value.” Applicants also have
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`asserted that “use of applicant’s [sic] mark presents
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`parody, satire and editorial and does a great deal more than
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`propose a commercial transaction.”
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`This case now comes up for consideration of opposer’s
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`motion for summary judgment on the grounds that (1)
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`applicants’ HARRY POTHEAD mark is likely to cause confusion,
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`mistake, or deception as to source, sponsorship, or
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`affiliation; (2) applicants’ mark will dilute the
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`distinctive quality of the HARRY POTTER marks; (3)
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`applicants’ mark contains scandalous matter and matter that
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`disparages opposer, the HARRY POTTER marks, and the goodwill
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`6
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`

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`Opposition No. 91156299
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`symbolized by the marks; and (4) the application is void ab
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`initio because applicants’ have never used HARRY POTHEAD as
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`a mark.
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`Applicants filed a brief in response to the motion for
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`summary judgment, contending that “[t]he Board has already
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`denied Opposer’s motion for summary judgment on valid
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`grounds” and that “Opposer has no justification or valid
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`reason to have its motion reconsidered.” Applicants also
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`“vigorously oppose Opposer’s untimely and previously denied
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`motion for summary judgment.”
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`Applicants are incorrect in their assertion that the
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`Board had previously denied opposer’s motion for summary
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`judgment. On April 5, 2006, the Board issued an order
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`indicating that opposer’s motion for summary judgment, filed
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`March 17, 2005, would not be considered because the motion
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`exceeded the page limitation for briefs in support of
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`motions. The Board also noted in footnote two of the order
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`that, as indicated in an order dated June 28, 2005,
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`opposer’s March 17 motion for summary judgment was timely
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`filed.
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`Additionally, opposer’s motion, filed April 28, 2006,
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`for summary judgment was timely filed, inasmuch as it was
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`filed prior to the opening of the first testimony period, as
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`originally set or as reset. See 37 CFR §2.127(e)(1); and
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`Blansett Pharmaceutical Co. v. Carmrick Laboratories Inc.,
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`7
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`

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`Opposition No. 91156299
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`25 USPQ2d 1473 (TTAB 1992). Accordingly, applicants’
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`objection to opposer’s motion for summary judgment on the
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`grounds that it is untimely is baseless. Notwithstanding
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`that applicants did not respond substantively to opposer’s
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`April 28 motion for summary judgment, it is clear that
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`applicants oppose the motion. Accordingly, we will not
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`treat the motion as conceded, but rather consider it on its
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`merits.
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`As has often been stated, the purpose of summary
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`judgment is one of judicial economy, namely, to save the
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`time and expense of a useless trial where no genuine issue
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`of material fact remains and more evidence than is already
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`available in connection with the motion for summary judgment
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`could not be reasonably expected to change the result. See,
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`e.g., Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 739 F.2d
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`624, 222 USPQ 741, 743 (Fed. Cir. 1984) and Levi Strauss &
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`Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ 939, 941
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`(Fed. Cir. 1984). The burden in a motion for summary
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`judgment is on the moving party to establish prima facie
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`that there is no genuine issue of material fact and that it
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`is entitled to a judgment as a matter of law. Fed. R. Civ.
`
`P. 56(c).
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`Likelihood of Confusion
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`Considering first opposer’s motion on the issue of
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`likelihood of confusion, opposer argues that it is entitled
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`8
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`

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`Opposition No. 91156299
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`to summary judgment as a matter of law because the HARRY
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`POTTER marks are famous; the services listed in the
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`application are identical to those in one of opposer’s
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`pleaded registrations; the trade channels are similar; the
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`same consumers are targeted; and the parties’ respective
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`marks, HARRY POTTER and HARRY POTHEAD, are very similar and
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`create the same commercial impression.
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`As evidentiary support for its motion, opposer has
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`submitted the declaration, with related exhibits5, of its
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`Executive Vice President, Diane Nelson. Ms. Nelson states,
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`in relevant part:
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`6. Warner Bros. obtained trademark rights
`in the names of the characters, places,
`and things featured in the HARRY POTTER
`books (the “HARRY POTTER Marks”) by
`assignment from author J.K. Rowling
`beginning with the first two books on June
`1, 1998, and by subsequent assignments
`with respect to the later books.
`
`7. After the initial assignment, Warner
`Bros. began production of the first HARRY
`POTTER movie, Harry Potter and the
`Sorcerer’s Stone, and executed licensing
`agreements with the [sic] Mattel, Inc. and
`other partners to produce various consumer
`products related to the books and movies.
`Products bearing the HARRY POTTER Marks –
`ranging from toys and dolls to books,
`clothing, costumes, DVDs and videos,
`backpacks, ornaments, and many others –
`were first sold at least as early as July
`2000.
`
`
`
`5 The exhibits include: (1) documents showing examples of HARRY
`POTTER products; (2) copies of excerpts from websites where HARRY
`POTTER products are sold; and copies of opposer’s pleaded
`registrations.
`
`9
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`Opposition No. 91156299
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`9. Warner Bros. released its series of
`movies under the HARRY POTTER Marks on the
`following dates: Harry Potter and the
`Sorcerer’s Stone on November 14, 2001,
`Harry Potter and the Chamber of Secrets on
`November 14, 2002, and Harry Potter and
`the Prisoner of Azkaban on June 4, 2004.
`The films have been shown in movie
`theaters throughout the country and
`together they have grossed over $2.6
`billion at the box office. The highly
`popular series of HARRY POTTER video’s,
`DVDs, and other products featuring the
`marks have also been widely sold
`throughout the country and have generated
`additional hundreds of millions of dollars
`in sales.
`
`10. The HARRY POTTER Marks are famous by
`virtue of the enormous popularity of the
`HARRY POTTER series of books, movies, and
`related products. They are immediately
`identifiable as fanciful designations that
`evoke images associated with the products
`and services offered by Warner Bros. and
`its related companies. Thus, the Harry
`Potter Marks have become well known and
`famous as indicators of the origin of
`Warner Bros.’ goods and services and a
`valuable symbol of Warner Bros.’ goodwill.
`The HARRY POTTER books and movies are
`noteworthy for the distinctive and
`imaginative names of their characters,
`including Harry Potter, which are well
`known to millions of readers and others
`who have merely read book reviews or heard
`about the HARRY POTTER stories by word of
`mouth.
`
`11. Advertisements and other
`communications promoting the sale of
`Opposer’s HARRY POTTER products have been
`so extensively broadcast or otherwise
`disseminated, that virtually everyone
`residing in the United States has
`received, has seen, or has been exposed to
`them. In addition, virtually ever movie
`theater and video store owner, and
`virtually every retailer that sells toys
`and other products of the type offered by
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`10
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`

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`Opposition No. 91156299
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`Warner Bros. in the United States has
`received, used, or seen advertisements and
`other communications relating to Warner
`Bros.’ Harry Potter products.
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`13. The HARRY POTTER products have been
`advertised, displayed, and sold at
`virtually every retail outlet selling DVDs
`or videos, at movie theaters in virtually
`every city in the United States …. HARRY
`POTTER products have also been sold at all
`the Warner Bros. store online at
`www.wbshop.com, and on multiple other
`sites, including amazon.com and ebay.com….
`Warner Bros. has received hundreds of
`millions of dollars through the sale of
`videos, DVDs, and other products featuring
`HARRY POTTER Marks.
`
`14. Warner Bros. owns several federal
`trademark registrations for its HARRY
`POTTER Marks, including the following:
`
`HARRY POTTER(Reg. No. 2,568,097; filed
`December 22, 1999; registered May 7, 2002)
`for “Entertainment services in the nature
`of a live-action, comedy, drama and/or
`animation television programs, production
`of live-action comedy, drama and/or
`animated television programs; a live-
`action, comedy, drama and/or animated
`motion picture theatrical films;
`production of live-action, comedy, drama
`and/or animated motion picture theatrical
`films; and theatrical performances both
`animated and live-action; and providing
`information for an actual entertainment
`via an electronic global computer network
`in the nature of a live-action, comedy,
`drama and/or animated television programs;
`production of live-action comedy, drama
`and/or animated television programs; a
`live-action, comedy, drama and/or animated
`motion picture theatrical films;
`production of live-action, comedy, drama
`and/or animated motion picture theatrical
`films; and theatrical performances both
`animated and live action.”
`
`
`11
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`

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`Opposition No. 91156299
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`15. Warner Bros. also owns numerous other
`federal registrations for its HARRY POTTER
`Marks including the following:
`Registration Nos. 2,568,097; 2,568,098;
`2497083; 2450787; 2493484; 2479341;
`2450788; 2525908; 2526111; 2574410;
`2530755; 2457302; 2506165; 2506166;
`2685932; and 2683060 …. These
`registrations are all owned by Warner
`Bros. and each is current and valid.
`
`
`Opposer has also submitted the declaration of a senior
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`legal assistant employed by the law firm representing
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`opposer, Jodi Arlen, introducing, in part: (1) copies of
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`excerpts and exhibits from the deposition of applicant Roger
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`Campo; (2) copies of applicants’ responses to opposer’s
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`first set of interrogatories; and (3) copies of news
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`articles relating to the HARRY POTTER name and mark printed
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`from the Westlaw news data base on March 15, 2005.
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`In determining the issue of likelihood of confusion6
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`and, in this case, whether there is any genuine issue of
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`material fact relating thereto, we take under consideration
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`all of the du Pont factors which are relevant under the
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`present circumstances and for which there is evidence of
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`
`6 Priority is not an issue inasmuch as opposer, in connection
`with its motion for summary judgment, has submitted evidence that
`Registration Nos. 2568097, 2568098, 2497083, 2450787, 2493484,
`2479341, 2450788, 2525908, 2526111, 2574410, 2530755, 2457302,
`2506165, 2506166, 2685932, and 2683060 are in existence and are
`owned by opposer. See King’s Candy Company v. Eunice King’s
`Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
`Moreover, applicants have admitted that opposer’s mark became
`well-known and famous before applicants made any use of their
`alleged mark. (See Applicants’ Answer at ¶ 29; Notice of
`Opposition at ¶ 24).
`
`12
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`

`
`Opposition No. 91156299
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`record. See E.I. du Pont de Nemours & Co., 476 F.2d 1357,
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`177 USPQ 563 (CCPA 1973).
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`First considering the fame of opposer’s pleaded mark,
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`the evidence of record clearly establishes that opposer’s
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`HARRY POTTER mark has acquired renown in connection with,
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`among other things, its entertainment services. Further, as
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`applicant concedes, “opposer’s mark has become well known
`
`and famous as an indicator of the origin of opposer’s goods
`
`and services and is a valuable symbol of opposer’s good
`
`will.” (Applicants’ Answer at ¶ 8, Notice of Opposition at
`
`¶ 7).
`
`As noted by our principal reviewing court in Kenner
`
`Parker Toys Inc. v. Rose Art Industries Inc., 963 F.2d 350,
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`22 USPQ2d 1453, 1456 (Fed. Cir. 1992), cert. denied, 506
`
`U.S. 862, 113 S.Ct. 181 (1992), "the fifth duPont factor,
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`fame of the prior mark, plays a dominant role in cases
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`featuring a famous or strong mark. Famous or strong marks
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`enjoy a wide latitude of legal protection." The Federal
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`Circuit reiterated these principles in Recot Inc. v. M.C.
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`Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir.
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`2000), stating that "the fifth DuPont factor, fame of the
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`prior mark, when present, plays a 'dominant' role in the
`
`process of balancing the DuPont factors," citing, inter
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`alia, Kenner Parker Toys, 22 USPQ2d at 1456, and reaffirmed
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`that "[f]amous marks thus enjoy a wide latitude of legal
`
`13
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`

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`Opposition No. 91156299
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`protection." This broader protection is accorded because
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`the marks are more likely to be remembered and associated in
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`the public mind than a weaker mark. Recot at 54 USPQ2d
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`1897. Under this reasoning, opposer’s HARRY POTTER mark
`
`should be accorded this broader scope of protection.
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`Considering next the goods and services involved, we
`
`note that the services are virtually identical.
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`Specifically, the services set forth in the involved
`
`application differ from those set forth in one of opposer’s
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`pleaded registrations only by the addition of “production of
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`comedic and musical audio recordings” to applicants’
`
`enumerated services. Indeed, even the typographical errors
`
`are the same.
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`Furthermore, there are no restrictions in the services
`
`identified in applicants’ application or opposer’s above-
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`noted registration as to channels of trade. Because there
`
`are no such limitations, it must be presumed that the
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`services of each would be offered in all the normal channels
`
`of trade for services of this nature and to the normal class
`
`of purchasers. See Canadian Imperial Bank v. Wells Fargo
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`Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Thus,
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`it must be presumed that applicants’ services will be
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`provided to the same class of purchasers as opposer’s
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`services.
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`14
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`

`
`Opposition No. 91156299
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`Considering now the similarity or dissimilarity of the
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`respective marks, we note that in cases where the
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`plaintiff’s mark is famous and the goods and services are
`
`identical, the degree of similarity between the marks
`
`necessary to support a finding of likelihood of confusion
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`declines. See, e.g., Nina Ricci, S.A.R.L. v. E.F.T.
`
`Enterprises, Inc., 889 F.2d 1070 (Fed. Cir. 1989), 12 USPQ2d
`
`1901 (Fed. Cir. 1989); and Century 21 Real Estate Corp. v.
`
`Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698,
`
`1701 (Fed. Cir. 1992), cert denied, 506 U.S. 1034 (1992).
`
`Herein, we find that, when viewed in their entireties,
`
`the parties’ respective marks are highly similar in
`
`appearance. Not only are the marks both names, but they
`
`share a common first name, HARRY, and the first three
`
`letters of the two-syllable last names, POT. While there is
`
`an obvious difference in connotation between “Potter” and
`
`“Pothead,” we do not find the distinction sufficient to
`
`obviate the strong similarity between the two marks. See
`
`Recot Inc. v. M.C. Becton, supra, (Board must consider the
`
`similarity or dissimilarity of the marks in their entireties
`
`with respect to appearance, sound and connotation, not
`
`simply difference in connotation between FIDO LAY and FRITO-
`
`LAY).
`
`In short, every du Pont factor that we have considered
`
`supports a finding of likelihood of confusion. Moreover,
`
`15
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`

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`Opposition No. 91156299
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`applicants admit that they were aware of opposer’s mark and
`
`the HARRY POTTER series of books before they adopted their
`
`HARRY POTHEAD mark. (Applicant’s Answer at ¶ 11; Notice of
`
`Opposition at ¶ 10). As stated by the Court in Kenner
`
`Parker Toys, Inc. v. Rose Art Industries, Inc., supra at
`
`1456, (citations omitted), “there is no excuse for even
`
`approaching the well-known trademark of a competitor….”
`
`We accordingly find that opposer has carried its burden
`
`of proof that no genuine issues of material fact remain as
`
`to likelihood of confusion and that opposer is entitled to
`
`judgment as a matter of law as to that issue.
`
`Applicants have asserted parody as a defense to
`
`opposer’s claims of likelihood of confusion and dilution
`
`(discussed later in this order). However, because we are
`
`dealing with opposer’s established trademark rights in the
`
`trademark HARRY POTTER, any claim applicants may make to the
`
`use of their HARRY POTHEAD as a parody will not be
`
`considered a “defense” but rather simply as a factor which
`
`is relevant to our analysis of likelihood of confusion. See
`
`Elvis Presley Enterprises Inc. v. Capece, 141 F.3d 188, 46
`
`USPQ 1737 (5th Cir. 1998); Dr. Seuss Enterprises L.P. v.
`
`Penguin Books USA, Inc., 109 F.3d 1394, 42 USPQ2d 1184 (9th
`
`Cir. 1977).
`
`As stated by the Board in Columbia Pictures Industries,
`
`Inc. v. Miller, 211 USPQ 816, 820 (TTAB 1981): “The right
`
`16
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`

`
`Opposition No. 91156299
`
`of the public to use words in the English language in a
`
`humorous and parodic manner does not extend to use of such
`
`words as trademarks if such use conflicts with the prior use
`
`and/or registration of the substantially same mark by
`
`another.” See also, Hard Rock Café Licensing Corp. v.
`
`Pacific Graphics, Inc., 776 F.Supp. 1454, 1462, 21 USPQ2d
`
`1368, 1374 (W.D. Wash. 1991) (the claim of parody is no
`
`defense “where the purpose of the similarity is to
`
`capitalize on a famous mark’s popularity for the defendant’s
`
`own commercial use”).
`
`In this case, the record reveals that applicants are
`
`not using the HARRY POTHEAD mark in a manner intended to
`
`parody opposer’s HARRY POTTER mark. As stated in 5 J.T.
`
`McCarthy, McCarthy on Trademarks and Unfair Competition, §
`
`31:153 (4th ed. 2001):
`
`[I]f defendant appropriates a
`trademarked symbol such as a word or
`picture, not to parody the product or
`company symbolized by the trademark, but
`only as a prominent means to satirize
`and poke fun at something else in
`society, this is not “parody” of a
`trademark.
`
`
`
`Particularly, applicants, in their response to the
`
`Office Action issued by the Examining Attorney assigned to
`
`examine the involved application dated July 27, 2007, state
`
`that:
`
` we have taken only “so much of the
`original work” (the name Harry) to
`
`17
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`

`
`Opposition No. 91156299
`
`bring to mind the original host work. …
`Our parody only takes enough of the
`title to bring to mind the original.
`Our script and title is completely
`original with entirely different
`characters and storyline. It does not
`parody any material from the Harry
`Potter movie or book series.
`
`
`(Campo Dep. at Exhibit 1 submitted as Exhibit 7 to the Arlen
`
`declaration).
`
`Applicant, Roger Campo, further states that:
`
`the joke and the point of our short
`[Harry Pothead and the Magical Herb] is
`that the parents become obsessed and
`delighted with what is being told to
`them[.] [T]hey may be oblivious to some
`of the things their children are
`involved in. … I think one of the ways
`that we are trying to get humor is by
`showing that people’s obliviousness to
`what they are involved in could have
`them involved in something that could
`potentially be illegal or harmful.
`
`
`(Campo Dep. 68:15-25; 70:10-14, submitted as Exhibit 7 to
`
`the Arlen declaration).
`
`Based on these statements, we can only conclude that
`
`applicants are using their HARRY POTHEAD mark to poke fun at
`
`something else in society, i.e., applicants’ perception that
`
`parents are oblivious to what their children are involved
`
`in. Thus, applicants have failed to present evidence which
`
`supports their claim of parody of opposer’s HARRY POTTER
`
`mark and we need not, and did not, consider this a relevant
`
`factor in our analysis of the issues of likelihood of
`
`confusion and dilution.
`
`18
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`

`
`Opposition No. 91156299
`
`Dilution
`
`Considering now opposer’s claim that applicants’ HARRY
`
`POTHEAD mark dilutes the distinctive quality of opposer’s
`
`HARRY POTTER mark, applicants have admitted the elements of
`
`dilution. Specifically, applicants admit that: (1)
`
`opposer’s mark has been widely used and extensively
`
`publicized in the United States and, therefore, opposer’s
`
`mark has become well known and famous as a distinctive
`
`symbol of opposer’s goodwill; (2) opposer’s mark became well
`
`known and famous before applicant [sic] made any use of its
`
`[sic] alleged mark; (3) applicants’ alleged mark will cause
`
`dilution of the distinctive quality of opposer’s mark; and
`
`(4) [u]se and registration of applicants’ alleged mark will
`
`lessen the capacity of opposer’s famous name and mark to
`
`identify and distinguish opposer’s goods and services.
`
`(Applicants’ Answer at ¶¶ 27, 29, 30, and 31; Notice of
`
`Opposition at ¶¶ 22, 24, 25 and 26). These admissions of
`
`fact are conclusive as to the issue of dilution. See Brown
`
`Company v. American Stencil Manufacturing Company, Inc., 180
`
`USPQ 344, 345 n. 5 (TTAB 1973) (admission during pleading
`
`results in estoppel precluding ability to prove anything to
`
`the contrary).
`
`We therefore find that no genuine issues of material
`
`fact remain as to dilution and that opposer is entitled to
`
`judgment as a matter of law as to that claim.
`
`19
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`

`
`Opposition No. 91156299
`
`In view of the foregoing, opposer's motion for summary
`
`judgment is granted as to the issues of likelihood of
`
`confusion and dilution.7 The opposition is sustained and
`
`registration of application Serial No. 78054817 is refused
`
`to applicants.
`
`
`
`*****
`
`
`7 Consequently, we need not reach the remaining issues of
`whether applicants’ HARRY POTHEAD mark contains scandalous and
`disparaging matter or whether the involved application is void ab
`initio.
`
`20