In re Serena Williams — SERENA VENTURES Conflicted With SERENA for Financial Services

Background

Serena Williams applied to register SERENA VENTURES for venture-capital, investment, and financing services, disclaiming the word VENTURES. The examining attorney refused registration under Section 2(d) of the Trademark Act based on an existing registration for SERENA covering overlapping finance, investment, and real-estate services. Williams appealed to the Trademark Trial and Appeal Board.

The Court’s Holding

The TTAB affirmed the refusal. Some of the parties’ services were identical or legally identical, so the Board presumed that they could travel through the same channels to the same classes of customers. The applied-for mark incorporated the cited mark in full, placed SERENA first, and added only the disclaimed, descriptive term VENTURES. Because both marks were in standard characters, either could be displayed in a way that emphasized their similarity.

The Board took judicial notice that Williams is a well-known tennis player, but she submitted no evidence that consumers of financial and investment services would associate the name SERENA with her. Even if they did, the same meaning could attach to the registered SERENA mark when used for the same services. The Board inferred that financial-services customers exercise somewhat greater than ordinary care, but that consideration only slightly favored Williams and did not outweigh the similarity of the marks and overlap in services and trade channels.

Key Takeaways

• Adding a descriptive, disclaimed term may not distinguish an applied-for mark from a registered mark incorporated in full.
• When identified services overlap, the TTAB presumes overlapping trade channels and consumers unless the identifications contain restrictions.
• Celebrity in one field does not automatically establish that consumers will perceive the celebrity’s identity in a mark used for a different commercial field.
• Purchaser sophistication may be outweighed by strong similarities in marks and legally identical services.

Why It Matters

The decision illustrates that fame of a person is not a substitute for record evidence about how relevant consumers perceive a mark. Applicants seeking protection for a celebrity’s first name in a separate business sector should develop evidence connecting that name to the specified services and should account for registrations covering facially overlapping services.

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