Is TRUST THE PROCESS for shoes confusable with TRUST THE PROCESS for clothing? You betcha! Joel Embiid of the NBA's Philadelphia 76ers was blocked in his attempt to register TRUST THE PROCESS for shoes, the Board affirming a Section 2(d) likelihood of confusion refusal based on the identical mark registered for shirts and sweatshirts (and owned by television host Marcus Lemonis). Mr. Embiid tried various moves to overcome the refusal but the Board, in a typically well-written opinion by Judge Larkin, shut down every one of them. In re Joel Embiid, 2021 USPQ2d 577 (TTAB 2021) [precedential[ (Opinion by Judge Christopher Larkin).
Those who follow NBA basketball know that "the process" was a term created several years ago to refer to the plan of the Philadelphia 76ers to rebuild their roster into a winning combination after years of NBA misery. One aspect of the process in its early stage was to lose as many games as possible in order to garner high draft picks in the annual NBA player draft. Fans of the team indicated that they would "trust the process." Joel Embiid is perhaps the key component of the rejuvenated team, and he is known individually as "The Process."
Marcus Lemonis is the host of the CNBC program "The Profit," and is known for the mantra "People/Process/Product."
Although the involved marks are identical, Mr. Embiid contended that the marks engender different commercial impressions: i.e., his mark TRUST THE PROCESS is uniquely associated with him when used in connection with shoes, while the cited mark TRUST THE PROCESS is uniquely associated with Marcus Lemonis when used in connection with shirts and sweat shirts.
The Board agreed with Examining Attorney Lindsey H. Ben that the Federal Circuit's decision in i.am.symbolic is "analogous and instructive in our consideration of Applicant's evidence of fame outside the four corners of his application and the cited registration."
[T]here is nothing in Applicant's identification of "shoes" that would change the meaning of the mark as referring to Applicant in the context of the goods, and nothing in Registrant's identification of "Clothing, namely, shirts and sweat shirts" that would change the meaning of the mark as referring to Marcus Lemonis, or the television program The Profit that he hosts, in the context of the goods as identified. *** There is nothing on the face of Applicant's mark, such as his image or signature, which ties the mark to him, and nothing in the record that in the context of shoes, TRUST THE PROCESS would necessarily mean Applicant.
The undisputed fact that Mr. Embiid may be known by the nickname "The Process" does not establish that the public knows him by another nickname, even if the nicknames contain common elements.
In the final analysis, even if both Applicant and Mr. Lemonis were known in their respective professions as "Trust the Process," the record does not show that consumers would associate the mark TRUST THE PROCESS only with them for the respective non-souvenir general consumer goods identified in the cited registration and the application, or that consumers would differentiate the source of the non-souvenir consumer goods sold under the two TRUST THE PROCESS marks based on their respective owners.
The Board therefore found that the involved marks "are identical in appearance, sound, connotation, and commercial impression," In re Country Oven, 2019 USPQ2d 443903, at *3 (TTAB 2019), and so the first DuPont factor "'weighs heavily' in favor of a likelihood of confusion." i.am.symbolic, 123 USPQ2d at 1748 (quoting In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003).
With respect to the goods, the Board again agreed with the Examining Attorney that because there are no restrictions in the identification of goods in either the application or the cited registration, it is impermissible to "import restrictions into the identification[s] based on alleged real world conditions," New Era Cap Co. v. Pro Era, LLC, 2020 USPQ2d 10596, at *16 (TTAB 2020) (citing Stone Lion, 110 USPQ2d at 1162), or to consider extrinsic evidence regarding Mr. Embiid and Mr. Lemonis themselves.
The Board unsurprisingly found that shoes and shirts are sold together on the websites of clothing companies, and are found together in numerous registrations. Moreover, the channels of trade and classes of customers plainly overlap.
In an attempt to show the weakness of the cited mark, Mr. Embiid submitted, "at most," evidence of three third-party registrations and no evidence of third-party use of PROCESS-formative marks for clothing, "a far cry from the large quantum of evidence of third-party use and third-party registrations that was held to be significant in both Jack Wolfskin and Juice Generation." Inn at St. John's, 126 USPQ2d at 1746. The Board therefore found that the cited mark is not conceptually weak and is to be accorded "the normal scope of protection."
Finally, under the 13th catch-all DuPont factor, Mr. Embiid pointed to his ownership of a registration for THE PROCESS for various clothing items, relying on the Board's Strategic Partners decision (ANYWEARS (Stylized) registrable in view of existing registration for ANYWEAR for identical goods). The Board, however, readily distinguished that case, noting that here "there are meaningful differences between Applicant's registered mark THE PROCESS mark and his applied-for mark TRUST THE PROCESS, and Applicant's mark THE PROCESS has been registered for fewer than five years and accordingly 'may still be challenged in a cancellation proceeding under Section 2(d).' Country Oven, 2019 USPQ2d 443903, at *18."
In sum, the Board found that the first, second, and third DuPont factors supported a finding of a likelihood of confusion, and the fourth, sixth, eighth, and thirteenth factors were neutral. Concluding that confusion as to source is likely, the Board affirmed the Section 2(d) refusal.
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TTABlogger comment: For Mr. Embiid, "The Process" didn't work this time.
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