TTAB rejects Fox’s trademark for “Pandorapedia”

A trademark application related to blockbuster film Avatar has been rejected by an appeals board at the US Patent and Trademark Office.

Twentieth Century Fox (Fox) had attempted to register the trademark “Pandorapedia” in reference to an encyclopaedia about a planet called Pandora, which features in the film Avatar.

Fox, which applied to register the trademark for clothing, attempted to obtain the trademark in 2009, following the film’s release.

However, it was rejected by examiners for being too similar to an existing trademark, owned by Pandora Sportswear Corp. The mark, for the word “Pandora”, was registered for a range of clothing including sweaters, shirts and jackets.

Fox filed an appeal but, in an opinion released on November 9, the Trademark Trial and Appeal Board (TTAB) upheld the decision.

Despite Fox claiming the mark was only going to be used in reference to clothes related to “motion pictures”, the board ruled against it.

“The clothing identified in the cited registration [‘Pandora’] is not limited in any way,” the TTAB wrote.

“We therefore must presume that the clothing in the cited registration encompasses all goods of the nature and type identified, including ‘clothing related to motion pictures,’” it added.

The board also noted that Fox had used the “entire mark”, with the only difference being the addition of “pedia” as a suffix.

The suffix was defined by Fox as related to learning or “a specialised encyclopaedia about the prefix” and that the addition of a suffix changed the trademark’s description.

However, the TTAB rejected the argument.

“The general rule … is that a subsequent user cannot avoid confusion by adding subordinate matter thereto.

“Applicant has added the subordinate term ‘pedia’ to registrant’s mark, which does not change its overall commercial impression or distinguish it,” the board wrote.

Julia Matheson, partner at Finnegan, Henderson, Farrabow, Garrett & Dunner LLP in Washington, DC, said TTAB cases, which only assess trademark applications based on registration details, make for a different analysis to that found in federal courts.

“When comparing two trademarks, people’s eyes are often drawn to the beginning,” said Matheson.

“You can’t take a house mark and tack it onto someone else’s mark, but whether or not it [Pandora] is a well-established is not something the TTAB would take into account.

“If the mark in question was ‘Pediapandora’ Fox might have had better argument, however in this case it was a derivative and was not enough to distinguish it.”

Two other applications for “Pandorapedia” submitted at the same time as Fox’s registration are still pending, for use with Christmas decorations and CDs respectively.

“The ruling doesn’t affect Fox’s ability to use the mark, only its ability to obtain a registration which they would use on products,” Matheson said, adding that, as it was an ex parte action and not a situation where the trademark’s owner had filed an opposition, the TTAB could have made the decision without Pandora being aware.

Matheson added: “Fox could potentially go ahead and use the term and see what happens or it could take an appeal to the Federal Circuit, but since only 20 percent of these cases are generally reversed on appeal, I think an appeal is unlikely.”

Fox did not respond to a request for comment.