Board decision finding Sky Cinemas mark unlikely to cause confusion with Sky International’s marks affirmed

Sky International AG v. Sky Cinemas LLC

Docket No. 2021-1575 (USPTO Appeal No. 91223952) (https://cafc.uscourts.gov/opinions-orders/21-1575.OPINION.12-17-2021_1881473.pdf) (Non-Precedential)

TARANTO, BRYSON, STOLL

December 17, 2021

Brief Summary:  Board decision finding Sky Int.’s and Sky Cinemas marks unlikely to cause confusion affirmed.

Summary:  Sky International (SKI) opposed a trademark (TM) application filed by Sky Cinemas (SC) for “SKY CINEMAS” for “movie theaters” due to SKI’s prior registration of similar marks including the work “SKY” (SKY NEWS for “broadcasting”, “news agencies”, and “television and radio news reporting” (“standard character marks…‘devoid of potentially distinguishing graphical elements’”).  SC alleged several of SKI’s “registrations were filed without a bona fide intent to use” and/or “had been abandoned through non-use”.  SKI responded “in part by limiting its pleaded registrations to cover only the goods and services for which there was actual use.”   The USPTO Board found no likelihood of confusion between the standard character marks (“the services are not related, nor are they offered through the same trade channels”, citing E.I. DuPont, CCPA 1973 (“the DuPont factors”)) and SC elected to pursue its intent to use and non-use counterclaims and “the Board significantly reduced the scope of Sky’s registrations.”  The FC panel found no error with the Board’s bifurcation of SC’s counterclaims as it “merely addressed the issues in two different orders” (“this case was not bifurcated as that term is normally understood”).  SKI also argued that if the Board had considered all of its marks, not just the standard character marks, it would have found a likelihood of confusion.  The FC panel agreed the Board should have considered at least one other mark (a graphical SkyNews mark) but also concluded that error was harmless “in light of the Board’s evaluation of whether movie theaters were within Sky International’s natural zone of expansion” (e.g., “whether movie theaters would be in the natural zone of expansion of a company that engages in ‘motion picture production and distribution’” (Mason Eng’g, TTAB 1985 (“any goods or services which purchasers might reasonably expect to emanate from it in the normal expansion of its business under the mark”, “must be ‘made on the basis of circumstances prevailing at the time when the subsequent user first began to do business under its mark’”)).  SKI also argued “the Board should have concluded that movie theaters were within Sky International’s natural zone of expansion”, but the FC panel concluded the Board properly considered the factors of that analysis (e.g., “distinct departure” from services performed, similar “nature and purpose”, “channels of trade and classes”, “[w]hether other companies have expanded from one area to the other”).  SKI cited In re Live Nation (TTAB, 2018) and In re Olympia (TTAB, 2008) as supporting its arguments, but the FC panel found that SKI had “not demonstrated that businesses offering news reporting, film production, or video streaming services also operate movie theaters” (unlike Live Nation) and in Olympia the services were “essentially identical”.  The Board decision was therefore affirmed.

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