On January 13, 2021, Warner Bros. Entertainment Inc. (Warner Bros.) filed a Notice of Opposition at the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board against Lawrence Merle Nelson (Applicant) for U.S. Trademark Application No. 88/733,756 for “What’s Up Doc?” in connection with “Personal coaching services, namely, providing life coaching and personal coaching services in the fields of self-empowerment, physical and emotional motivation, personal awareness and personal development for individuals, and groups to improve their physical and spiritual health and quality of life”, in International Class 041.
Warner Bros. owns a trademark registration for “WHAT’S UP, DOC?” (U.S. Trademark Reg. No. 1,495,185) in connection with t-shirts in International Class 025. Warner Bros. alleged it has common law rights in this mark for other goods and services. In its Opposition, Warner Bros. alleged that as a result of its use and promotion of its mark and the success of the Looney Tunes franchise, its mark has developed secondary meaning and significance in the minds of the public and has become a strong trademark in identifying its goods and services exclusively. You may recall Warner Bros. character Bugs Bunny’s catchphrase “Eh…What’s up, doc?” in cartoons.
Warner Bros. alleged that registration of Applicant’s mark in connection with the services set forth in the Application would likely cause confusion, cause mistake, or deceive the public into the false belief that the services offered by Applicant under Applicant’s mark come from or are otherwise sponsored by or connected with Warner Bros., in violation of Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d). Warner Bros. further alleged its mark is famous, and became famous long before the earliest priority date upon which Applicant could rely upon support of Applicant’s mark. As such, Warner Bros. alleged Applicant’s use and registration of Applicant’s Mark would damage Warner Bros. by trading on the enormous goodwill associated with its mark and diluting its distinctiveness. Therefore, Warner Bros. concluded Applicant’s use and registration of Applicant’s mark in connection with the services identified in the Application would likely cause dilution by blurring of the famous Warner Bros. mark, in violation of Sections 13(a) and 43(c) of the Lanham Act, 15 U.S.C. §§ 1063(a), 1125(c).