Earlier last week, the Trademark Trial and Appeal Board (“TTAB”) issued an opinion concerning Robert Kirkman, LLC v. The Toking Dead (Opposition No. 91242007). Robert Kirkman, LLC is the rightful owner of the famous trademark “THE WALKING DEAD” (“TWD”) associated with a plethora of works under the same name, including comic books, graphic novels, and the monstrously successful television show of the same name; spanning almost ten seasons on the AMC network.
In this opinion, the TTAB found in favor of Robert Kirkman, LLC based on the overarching fame of the “THE WALKING DEAD” mark, the similarities between the two opposing marks, and the likelihood of confusion among consumers. Throughout the opinion, Robert Kirkman, LLC pleaded several formal registrations for the TWD mark, including goods and services like entertainment services for the television series, DVDs, video recordings, computer/mobile games, fan club services, and even amusement park services. The Toking Dead did not dispute these registered services for the TWD mark. It is also no surprise that AMC, an official licensee of the TWD mark, markets an assortment of merchandise based on the television series. Further, the TWD trademark has been used in connection with clothing, mugs, and other items since the shows inception in 2010.
TTAB’s first basis of determination resulted from consideration of the DuPont factors to analyze whether there was a likelihood of confusion. Two key considerations are (1) similarities of the marks. themselves and (2) similarities of the marks’ goods & services. The extent to which a mark is deemed famous also plays a major role in this analysis because these particular marks enjoy a broad scope of protection.
The opposer of a trademark has the duty to prove their prior mark is famous. After noting that “The Walking Dead” has the highest total viewership of any series in cable television history, has garnered critical acclaim, and even has produced subsequent shows based on the series (i.e. “Talking Dead” and “Fear the Walking Dead”), TTAB concluded that the TWD mark was famous for the purposes of their analysis.
To determine whether consumers would be reasonably confused by the two opposing marks, a market research survey was conducted to measure the degree of confusion between consumers who are privy to the “retail store services” (i.e. clothing, mugs, etc.) that both marks refer to in their applications. The results demonstrated that the net confusion measured 16.4% among consumers. TTAB noted that there is no threshold requirement for numerical results of this nature, and ultimately concluded that this survey supported the likelihood of confusion claim.
Finally, TTAB determined that the two marks were sufficiently similar based on “appearance, sound, connotation, and commercial impression.” Based on all these findings, TTAB ultimately held that the “THE TOKING DEAD” mark was similar to the “THE WALKING DEAD” mark and refused the former mark’s registration.
Author, Shelby Shilatz-Lewis, is going into her third year at Florida State University College of Law with an interest in intellectual property and entertainment law. She is currently a legal intern with Lee Law, PLLC.