In In re Nielsen Business Media, the Trademark Trial and Appeals Board (“TTAB”) affirmed an examining attorney’s refusal to register a mark under Section 2(e)(1) of the Trademark Act. After considering and rejecting the applicant’s claim that the acquired distinctiveness of the applicant’s previously registered marks could “tack” onto the new mark, the TTAB agreed with the examiner’s finding that the mark THE BOLLYWOOD REPORTER (Serial Nos. 77223725 and 77223738) for entertainment news papers and online publications was merely descriptive of the goods.

Nielsen Business Media (“Nielsen”) filed an intent-to-use application for the mark THE BOLLYWOOD REPORTER for newspapers in the field of entertainment and online publications in the same field. Nielsen also owned registrations for THE HOLLYWOOD REPORTER in various forms as well as related marks (Registration Nos. 0856584, 1140385, 1185696, 2245657 and 3519615). These previously registered marks were for paper and online newspapers and directories relating to the entertainment industry. After the examining attorney refused registration of THE BOLLYWOOD REPORTER, citing genericness, Nielsen claimed that the acquired distinctiveness of its previously owned marks should allow for its registration under section 2(f) of the Trademark Act.

While section 2(f) is ordinarily inapplicable to an intent-to-use application, if an applicant has previously used a mark on related goods or services, he can file a claim of acquired distinctiveness for the new mark before its use. To be successful, the applicant must establish that any previously acquired distinctiveness will transfer to the goods or services in the intent to use application once the use in commerce begins. In re Dial-A-Matress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001). Nielsen attempted to “tack” the new registration onto its previously owned distinctive marks by relying on a broad interpretation of Trademark Rule 2.41(b), which provides that registration of the “same mark” on the Principal Register can provide prima facie evidence of acquired distinctiveness, thus satisfying the requirement that the distinctiveness transfer to the new goods or services. For this rule to apply, the marks must be the legal equivalents of each other.

The TTAB considered whether THE BOLLYWOOD REPORTER and THE HOLLYWOOD REPORTER were legal equivalents. The TTAB found that the marks were not so indistinguishable as to be eligible for tacking because they have different meanings and create different commercial impressions. While “Bollywood” refers to the notoriously extravagant movie industry in India, “Hollywood” refers to the home base of American motion pictures in California. Accordingly, THE BOLLYWOOD REPORTER would give the commercial impression of reporting on Indian film news, and THE HOLLYWOOD REPORTER would do the same for American movies. Nielsen argued that a change of only one letter, “H” to “B,” should be considered an inconsequential difference between the marks. However, the TTAB differentiated the marks at hand from those in several cites cases where a small change, such as pluralization or immaterial misspelling, by noting that this change of one letter engenders a difference in commercial impression that spans continents.

The TTAB found that the marks were not eligible for tacking and affirmed the examining attorney’s refusal of the intent-to-use application under section 2(e)(1).