*1 THIS OPINION IS CITABLE AS PRECEDENT OF THE T.T.A.B.
Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
TURNER ENTERTAINMENT CO.
Opposition No. 94,200
April 4, 1996
Before Sams, Seeherman and Quinn
Administrative Trademark Judges
Opinion by Quinn
Administrative Trademark Judge
An application has been filed by Ken Nelson, a citizen of the United States, to register the mark GILLIGAN'S ISLAND for "suntan oil, suntan lotion, sunblock, sunless tanning lotion, after sun moisturizing lotion, lip balm, hand and body lotion, hair shampoo and body bar soap." [FN1]
Registration has been opposed by Turner Entertainment Co., a corporation of the state of Georgia, under Sections 2(d) and 2(a) of the Act. In support of its opposition, opposer asserts that opposer and its predecessors-in-interest have continuously used, since 1964, the mark GILLIGAN'S ISLAND in connection with entertainment services, including a series of television programs; and that opposer has licensed, since 1988, various types of merchandise, including items such as beach towels, beach bags, sun umbrellas, can coolers and key chains. Opposer concludes that applicant's mark, if and when applied to applicant's goods, so resembles opposer's previously used mark for its goods and/or services as to be likely to cause confusion under Section 2(d). Opposer also claims that applicant's mark falsely suggests a connection with opposer under Section 2(a).
There were problems regarding applicant's answers (applicant is pro se), most significantly in that the pleadings were argumentative, nonresponsive and otherwise not in compliance with Fed.R.Civ.P. 8(b). The Board ultimately was forced to interpret applicant's pleadings, and this interpretation was set forth in the Board's orders dated November 7, 1994 and January 3, 1995. Applicant's pleadings were construed to include the following admissions: that opposer has used the mark GILLIGAN'S ISLAND in connection with entertainment services such as television programming; that opposer has engaged in licensing its mark for various products; that opposer's mark is "already known and recognized in the entertainment industry and for various goods and services"; and that "the mark appears daily in countless newspapers and magazines with national circulation." Opposer's claims of likelihood of confusion and false suggestion of a connection were otherwise denied.
This case now comes up on opposer's motion for summary judgment on its claim of likelihood of confusion under Section 2(d). Opposer asserts that there are no genuine issues of material fact remaining in this case, and that the undisputed facts establish that a likelihood of confusion exists between the parties' marks. The motion is supported by declarations, and numerous related exhibits, of the following individuals: Peter Van Raalte, vice president of domestic licensing for Turner Home Entertainment, a sister company of opposer (and the entity responsible for the licensing of all of opposer's properties), both wholly owned subsidiaries of Turner Broadcasting System, Inc.; Anne Grupp and John Walden, opposer's vice presidents; and Gregory Akers, vice president of a current licensee of the mark GILLIGAN'S ISLAND.
*2 Applicant has filed a brief in response to opposer's motion. [FN2] Applicant does not dispute any of the material facts set forth by opposer, but rather disagrees with opposer on the ultimate legal conclusion to be drawn from such facts. Applicant states that "[t]he facts speak for themselves" and that registration of his mark should be allowed. Applicant contends that the respective goods of the parties are "not even remotely related," and that the differences in the nature of the goods, channels of trade, price and conditions of sale are such that there is no likelihood of confusion. The only evidence accompanying applicant's response is his answer to interrogatory no. 3(c) wherein applicant states that he intends to sell his products "from my residence by the means of mail-order."
The purpose of summary judgment is one of judicial economy, that is, to save the time and expense of a useless trial where no genuine issue of material fact remains and more evidence than is already available in connection with the summary judgment motion could not reasonably be expected to change the result. Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 739 F.2d 624, 222 USPQ 741 (Fed.Cir.1984). The question of likelihood of confusion has been held by the U.S. Court of Appeals for the Federal Circuit to be one of law and unquestionably may by resolved by way of summary judgment under appropriate circumstances. Sweats Fashions, Inc. v. Pannill Knitting Co., Inc., 833 F.2d 1560, 4 USPQ 1793 (Fed.Cir.1987). Fed.R.Civ.P. 56(c) provides that summary judgment may be granted "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." The record must be viewed in the light most favorable to the nonmoving party, and all factual inferences must be drawn in favor of the nonmoving party. Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed.Cir.1993).
In determining the issue of likelihood of confusion and, in this case, whether there is any genuine issue of material fact relating to the ultimate legal question, we must consider those of the thirteen evidentiary factors listed in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) which are pertinent. Opposer has submitted evidence bearing on several of these factors. We find that opposer has demonstrated the absence of a genuine issue of material fact and that it is entitled to judgment as a matter of law. Celotex Corp. v. Catrett, 477 U.S. 317 (1986).
The undisputed facts show that the situation comedy series GILLIGAN'S ISLAND first aired on prime time television on September 26, 1964, and ran for 3 seasons, totalling 98 episodes, with the final episode aired on September 3, 1967. The series featured seven castaways stranded on a tropical island in the Pacific after their boat was shipwrecked. [FN3] According to Mr. Walden, in the over 30 years since the first airing of GILLIGAN'S ISLAND in 1964, the show has never been off the air. Mr. Walden states that GILLIGAN'S ISLAND is one of the most repeated television series in history and, by some accounts, has acquired a "cult" status with its own fan club. Since opposer acquired rights to the series in 1986, opposer has kept the series in continuous syndication throughout the United States, and the series is presently aired on opposer's television station (TNT) six days a week. The syndication of the series from 1980-1995 has included over 100 television stations throughout the United States. The television series spawned two animated children's cartoon programs, namely "Gilligan's Planet" (run during 1982-83) and "The New Adventures of Gilligan" (run during 1974-75). Three GILLIGAN'S ISLAND reunion movies for television have also aired: "Rescue from Gilligan's Island" (1978), "The Castaways on Gilligan's Island" (1979) and "The Harlem Globetrotters on Gilligan's Island" (1981). A recent season finale of "Roseanne," one of the most watched situation comedy series on television, was a "spoof" of GILLIGAN'S ISLAND, featuring Bob Denver, the actor who played the first mate "Willy Gilligan" in the series. Three former GILLIGAN'S ISLAND cast members have written books, all currently available, which either are their "memoirs" of the time spent in the television series or feature GILLIGAN'S ISLAND "themes" (a cookbook).
*3 As shown by Ms. Grupp's declaration, when opposer acquired rights in the television series in 1986, it also acquired, among other things, "all rights to merchandising." [FN4] Since that time, opposer and its related companies have been the sole source of goods and/or services bearing the mark GILLIGAN'S ISLAND.
Mr. Van Raalte recounts the extensive licensing of the GILLIGAN'S ISLAND mark and of the likenesses of the characters from the series. Mr. Van Raalte prefaces his declaration with the following statements, all of which stand uncontroverted:
4. Based on my experience in the industry for over 12 years, I have observed that it has become customary in both the television and motion picture film industry for the owners of works such as television series and feature films to use, or license the use of, the names of these properties and the names and likenesses of the characters therein for merchandising on other goods and services ("Merchandised products"). Such merchandising has become increasingly popular as it creates another revenue stream through the sale of the Merchandised products by responding to the consumer demand for products associated with a popular film, television series or other work. Accordingly, merchandising rights have become increasingly valuable and the income that is generated by the sale of associated merchandise has been known to exceed the income generated by the property itself.
Since 1988, opposer has generated revenue from its licensing of the mark GILLIGAN'S ISLAND in connection with pinball machines, video games, and clothing items. Opposer also licensed the mark, the series' themes, and the character, name, likeness, voice, image and role of "Gilligan" for use in connection with McDonald's Corporation's advertising efforts. Copies of all of the relevant license agreements are of record.
Also of record is the declaration of Mr. Akers, vice president of Hometown TV, Inc., a current licensee of the mark GILLIGAN'S ISLAND. According to Mr. Akers, Hometown TV also offers merchandise bearing the marks of the television series "The Andy Griffith Show" and "The Beverly Hillbillies." Hometown TV sought a license from opposer to use the GILLIGAN'S ISLAND mark based on the results of a consumer survey. According to Mr. Akers, GILLIGAN'S ISLAND is "a famous mark with a loyal following" and many of Hometown TV's catalog customers indicated an interest in purchasing GILLIGAN'S ISLAND merchandise. This demand led Hometown TV to enter into a license agreement with opposer and to produce the first edition of the "GILLIGAN'S ISLAND Beach Club" catalog. The catalog displays a wide variety of merchandise bearing the mark GILLIGAN'S ISLAND, including beach towels, jackets, sweatshirts, tote bags, t-shirts, shirts, caps, mugs, can coolers, key chains, watches, umbrellas, magnets, photo packs, license plate holders and books. Over 29,000 catalogs have been distributed, and former cast members have mentioned the availability of GILLIGAN'S ISLAND merchandise during personal interviews and appearances that still take place today. Sales from the catalog have totalled about $10,000, and Mr. Akers believes, based on his experience with other television series' marks and the expanding distribution of the catalog, that future sales will increase.
*4 As a threshold matter, we find no genuine issue of material fact regarding opposer's standing in this case. Opposer's declarations, coupled with the numerous related exhibits, establish opposer's real commercial interest in the mark GILLIGAN'S ISLAND. Lipton Industries Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
We likewise find the absence of a genuine issue of material fact as to opposer's priority of use. The undisputed evidence of record clearly establishes opposer's use and/or licensed use of its mark long prior to the filing date of the involved application.
We now turn to the issue of likelihood of confusion. In this case, the marks are identical. Applicant does not dispute this point, nor does applicant dispute the extensive use and the resultant notoriety of opposer's GILLIGAN'S ISLAND mark.
Applicant concentrates his objection to opposer's motion on what he perceives to be differences between the parties' goods and/or services. Applicant points to differences between the goods and/or services themselves, as well as differences in their "theme", price and class of purchasers.
As is clear from the evidence, opposer's GILLIGAN'S ISLAND television series is well known. [FN5] Further, as a result of this notoriety, the mark has been the subject of licenses. It is common knowledge and, in the present case, undisputed that video games, t-shirts, beach towels, caps and other logo- imprinted products are used as promotional items for a diverse range of goods and services, not to mention for specific television shows and movies. In this connection, the Board, in another case, has stated the following, which is equally appropriate in the present case:
The licensing of commercial trademarks for use on "collateral" products (such as clothing, glassware, linens, etc.), which are unrelated in nature to those goods or services on which the marks are normally used, has become a common practice in recent years. See: General Mills Fun Group, Inc. v. Tuxedo Monopoly, Inc., 204 USPQ 396, 400 (TTAB 1979) [where we stated that such use is a matter of common knowledge and "has become a part of everyday life which we cannot ignore"], affirmed 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) [where the Court of Customs and Patent Appeals noted that " 'collateral product' use is a matter of textbook discussion (see J. Gilson, Trademark Protection and Practice, Section 5.05 (1980)) and frequent commentary (see Grimes and Battersby, The Protection of Merchandising Properties, 69 T.M.Rep. 431 (1979) and references cited therein)"]. See also: J. Thomas McCarthy, Important Trends in Trademark and Unfair Competition Law During the Decade of the 1970s, 71 T.M.Rep 93, 125 (1981) [where the author, in his discussion of legal developments during the 1970's, referred to "the increased licensing of commercial trademarks for use on 'collateral' products such as tee-shirts and wearing apparel"] and Robert C. Denicola, Institutional Publicity Rights: An Analysis of the Merchandising of Famous Trade Symbols, 75 T.M.Rep. 41 (1985).
*5 In re Phillips-Van Heusen Corporation, 228 USPQ 949, 951 (TTAB 1986). See also: The Black and Decker Mfg. Co. v. Big Yank Corp., 231 USPQ 484 (TTAB 1986); Harley-Davidson Motor Co. v. Pierce Foods Corp., 231 USPQ 857 (TTAB 1986); Cadence Industries Corp. v. Kerr, 225 USPQ 331 (TTAB 1985); Bridgestone Tire Co. v. Bridgestone Trading Co., 221 USPQ 1012 (TTAB 1984); Broadway Catering Corp. v. Carla Inc., 215 USPQ 462 (TTAB 1982); Hurst Performance, Inc. v. Torsten Hallman Racing, Inc., 207 USPQ 671 (TTAB 1980); Amica Mutual Insurance Co. v. R.H. Cosmetics Corp., 204 USPQ 155 (TTAB 1979); and "21" Club, Inc. v. Popular Merchandise Co., Inc., 139 USPQ 127 (TTAB 1963), affirmed 343 F.2d 1011, 145 USPQ 203 (CCPA 1963). See generally: 3 J.T. McCarthy, McCarthy on Trademarks and Unfair Competition Section 24.03 (3d ed. 1992).
This common trade practice is reflected in the record before us, which shows that opposer has actively licensed its GILLIGAN'S ISLAND mark as a result of the popularity of the long-running syndication of the television series under the same mark. According to the undisputed evidence, opposer has licensed its mark for use on a wide variety of collateral products, including clothing items, beach towels, beach bags, can coolers, pinball machines, video games, mugs and umbrellas. All of these uses promote the GILLIGAN'S ISLAND television series. Opposer's and applicant's goods are relatively inexpensive, subject to impulse purchase, and are purchased by the same classes of purchasers. Applicant utterly has failed to come forward with any evidence to the contrary.
For the above reasons, we find that there are no genuine issues of material fact remaining for trial. Applicant, as the newcomer, had the clear opportunity, if not the obligation, to avoid the well-known GILLIGAN'S ISLAND mark of opposer. J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1892 (Fed.Cir.1991). Under such circumstances as those set out above, we conclude that consumers familiar with opposer's television series and licensed collateral products such as video games, clothing items, beach towels, mugs and other diverse consumer goods, all of which are marketed under opposer's GILLIGAN'S ISLAND mark, would be likely to believe, upon encountering applicant's mark GILLIGAN'S ISLAND for suntan oil and lotion, sunblock, sunless tanning lotion, after sun moisturizing lotion, lip balm, hand and body lotion, hair shampoo and body bar soap, that the goods originated with or were somehow associated with or sponsored or licensed by the same entity. We think that this is especially true here, given the obvious association between a television series based on the theme of castaways on a tropical island in the Pacific and suntan lotion and oil, lip balm, and similar products. Further, applicant's products are logical tie-in products with some of opposer's licensed items such as beach towels and beach bags.
Judgment is entered against applicant, the opposition is sustained and registration to applicant is refused.
Administrative Trademark Judges
Trademark Trial and Appeal Board
FN1. Application Serial No. 74/404,900, filed June 24, 1993, alleging a bona fide intention to use the mark in commerce.
FN2. Applicant also has filed a paper captioned "Applicant Reports A Possible Violation Of Trademark Rules." Applicant essentially states that the licensing of certain products referred to in the notice of opposition did not occur until after the opposition was filed, and that, therefore, opposer has violated Rule 10.23.
For the reasons set forth by opposer in its August 9, 1995 response, there has been no violation. Opposer's explanation, supported by a December 1993 letter agreement with the licensee, confirms this. Applicant's charge is without merit, and will be given no further consideration.
FN3. As listed in the show's theme song, the seven were "Gilligan, the Skipper too, the millionaire and his wife, the movie star, the professor, and Mary Ann."
FN4. Applicant's brief appears to raise a question, as best we understand it, about opposer's ownership of the trademark acquired by way of the August 25, 1986 agreement. Suffice it to say that applicant's mere allegations do not create a genuine issue of material fact. Rather, Ms. Grupp's averments and the copy of the agreement clearly establish opposer's prior rights in the mark GILLIGAN'S ISLAND.
FN5. We think back to Mr. Walden's undisputed statement that the show has never been off the air. We cannot help but add that, like the British Empire in days of yore, the sun never sets on "Gilligan's Island."
FN6. Opposer, in its brief (p. 3, n. 1), indicated that in the event its motion were granted, "opposer may move the Board for leave to amend its Notice of Opposition to strike its claim based on Section 2(a)." In view of this statement, we see no reason to prolong this proceeding. That is to say, given our decision herein, we construe this statement as indicating that opposer does not wish to go forward with its Section 2(a) claim on the merits. Thus, that portion of the opposition grounded under Section 2(a) is dismissed as moot.