GGWTV, LLC

Trademark Trial and Appeal Board

Apr 24, 2008

No. 77086958 (T.T.A.B. Apr. 24, 2008)

Mailed: April 24, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

In re GGWTV, LLC
_______

Application Serial No. 77086958
_______

David Hochman, Wolf, Rifkin, Shapiro & Schulman, LLP, for
GGWTV, LLC.

Toby E. Bulloff, Examining Attorney, Law Office 117,
(Loretta C. Beck, Managing Attorney).
_______

Before Bucher, Mermelstein, and Wellington, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:
GGWTV, LLC. filed an application for registration of
the mark GAYS GONE WILD (in standard characters) on the
Principal Register for “prerecorded dvds featuring adult
entertainment” in International Class 9.1
The examining attorney issued a final refusal to
register pursuant to Trademark Act § 2(d), 15 U.S.C.
§ 1052(d), on the ground that applicant’s mark so resembles
the following marks (owned by the same entity) that it
would, if used on or in connection with the identified

1 Filed January 19, 2007, alleging a bona fide intent to use the
mark in commerce under Trademark Act § 1(b); 15 U.S.C. § 1051.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Application No. 77086958
2
goods, be likely to cause confusion, to cause mistake, or to
deceive:
Registration No. Mark Goods
2411851 GIRLS GONE WILD2 Prerecorded videotapes featuring adult entertainment
29366373 GUYS GONE WILD
Pre-recorded video tapes and
DVD’s, all featuring movies and
television programs of all kinds

Applicant appealed. Both applicant and the examining
attorney have filed briefs. We affirm.
I. Evidentiary Issues
Attached to applicant’s opening brief and to its reply
brief were copies of a number of documents which were not
submitted during examination, comprising third-party
applications and registrations (main brief) and a list of
applications and registrations as well as dictionary
definitions (reply brief). The examining attorney objected
to the documents attached to applicant’s opening brief as
untimely.
Applicant argues that the registrations and
applications attached to its opening brief evidence the
weakness of the cited registrations. In its response to the
first Office action, applicant included a list of third-
party registrations and applications for the same purpose.

2 Issued December 12, 2000; Trademark Act §§ 8 and 15 affidavits
accepted and acknowledged.
3 Issued March 29, 2005.
Application No. 77086958
3
The examining attorney – correctly – informed applicant that
a list of registrations
is not the proper way to make such
material of record. Rather, plain
copies of the registrations or the
electronic equivalent thereof, namely
printouts of the registrations from the
Office’s X-Search[4] automated records,
are required for this purpose.

Final Office Action at 3.
As provided in the Trademark Rules,
The record in the application should be
complete prior to the filing of an
appeal. The Trademark Trial and Appeal
Board will ordinarily not consider
additional evidence filed with the Board
by the appellant or by the examiner
after the appeal is filed. After an
appeal is filed, if the appellant or the
examiner desires to introduce additional
evidence, the appellant or the examiner
may request the Board to suspend the
appeal and to remand the application for
further examination.

Trademark Rule 2.142(d). See, e.g., In re Posthuma, 45
USPQ2d 2011, 2012 n.2 (TTAB 1998)(registration attached to
appeal brief untimely).
Here, applicant could have made this evidence of record
by filing a request for reconsideration prior to appeal5 or
after appeal, by requesting that the Board remand the

4 “X-Search” is the USPTO’s internal search engine. The
examining attorney undoubtedly intended to refer instead to TESS
(Trademark Electronic Search System), the public version of the
same database, available on the USPTO’s website.
5 Applicant could have taken as long as six months following the
mailing of the final office action in which to file any new
evidence, argument, or amendment in support of registration.
Application No. 77086958
4
application to the examining attorney for further
examination, including submission of further evidence. But
submission of new evidence with a brief is unacceptable
because the examining attorney has not had a chance to
examine it and, if appropriate, to submit evidence in
response. The Board’s task in an appeal is to review the
examining attorney’s decisions; we do not examine
applications or evidence in the first instance, as would be
required by consideration of this new evidence.
Accordingly, applicant’s third-party registrations and
applications6 will not be considered.
The list of applications and registrations attached to
applicant’s reply brief is also untimely. Further, as the
examining attorney noted, submission of a list of trademark
records is not an appropriate way to make the records
themselves of record. See, e.g., In re Carolina Apparel, 48
USPQ2d 1542, 1543 n.2 (TTAB 1998)(“The Board does not take
judicial notice of third-party registrations, and the mere
listing of them is insufficient to make them of record.”).
We have therefore not considered this list of applications
and registrations.

Trademark Rule 2.64(b).
6 We note that a cursory glance at this evidence indicates that
it includes a number of trademark applications. Prior to
registration, a pending application is proof of little beyond its
having been filed.
Application No. 77086958
5
Likewise, the dictionary definition of “gay,” and the
associated usage note attached to applicant’s reply brief
were also untimely submitted.7 Although applicant did not
request judicial notice, the Board may take judicial notice
of dictionary definitions, Univ. of Notre Dame du Lac v.
J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd,
703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including
online dictionaries that exist in printed format or have
regular fixed editions. In re Red Bull GmbH, 78 USPQ2d
1375, 1377 (TTAB 2006). However, it is not clear whether
applicant’s dictionary does exist in printed form.8
Accordingly, we will not consider applicant’s dictionary
definition9 or usage note, although we add that such
consideration would not alter the result in this case.
II. Likelihood of Confusion
We base our determination under Section 2(d) on an
analysis of all of the probative evidence of record bearing
on the likelihood of confusion. See In re E.I. du Pont

7 Especially so in this case, because they were attached to
applicant’s reply brief, to which the examining attorney may not
respond. As far as we can determine, this evidence was not
submitted in response to a new argument made by the examining
attorney on appeal, and there is no apparent reason why this
evidence could not have been proffered earlier.
8 Although the dictionary definition is apparently from Houghton-
Mifflin, it is not clear whether it is an electronic version of a
printed volume or an online-only product.
9 In its reply brief, applicant also cites a definition of “gay”
from the American Heritage Steadman’s Medical Dictionary. Reply
Br. at 1-2. This evidence will also not be considered for the
same reasons, and also because a copy of the definition was not
supplied with the “request” for judicial notice.
Application No. 77086958
6
de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973);
see also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005); In re Majestic Distilling Co., Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
In considering the evidence of record on these factors,
we keep in mind that “[t]he fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); In re
Azteca Rest. Enter., Inc., 50 USPQ2d 1209 (TTAB 1999).
A. The Similarity or Dissimilarity and Nature of the
Goods; Channels of Trade; Classes of Customers

Applicant’s goods are identified as “prererecorded DVDs
featuring adult entertainment,” in International Class 9,
while the goods in the cited registrations are “pre-recorded
video tapes and DVD’s, all featuring movies and television
programs of all kinds,” (‘637 Registration) and “prerecorded
videotapes featuring adult entertainment,” (‘851
Registration). Applicant’s goods are included within the
scope of the ‘637 Registration and – except for being
recorded on a different medium – are also identical to the

Application No. 77086958
7
goods in the ‘851 Registration. We conclude that
applicant’s goods are legally identical to the goods
identified in both cited registrations.
Applicant argues that its goods feature and are sold to
“gays,” and that the cited registrant’s goods feature and
are sold to heterosexual “guys” or “girls.” Nonetheless, we
note that neither the application nor the cited
registrations contain any such restrictions. Our analysis
is limited to consideration of the goods as recited in the
application or registration, and not what the goods may
actually be in the marketplace. See In re Bercut-
Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986). We may
not import limitations into an identification of goods which
do not appear in the file. We thus consider the goods of
the subject application and those of the cited registrations
to be identical. Moreover, because the goods are identical,
we must also presume them to share the same channels of
trade and to be sold to the same class of customers. In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981).
On a related note, applicant argues that purchasers of
its intended products and those of the cited registrant
would clearly understand the difference between “gay,”
“girls,” and “guys”:
If someone is going to watch a movie
that is ‘GAY’ they will expect that the
actors will portray gays, lesbians,
bisexuals, drag queens and/or
Application No. 77086958
8
transgenders, and they will not expect
that the main characters are
heterosexual “GIRLS” or “GUYS.” ....

A reasonably prudent consumer would
not think that if they buy a ‘GAYS GONE
WILD’ DVD they would be watching
heterosexual GUYS or GIRLS. In fact,
based on how famous the Prior Marks (and
the principal of the owner of the Prior
Marks) have become, society associates
these marks with heterosexual
individuals performing heterosexual
acts, not homosexuals performing
homosexual acts.

Reply Br. at 2.
But even if we accept applicant’s contention of what
the respective goods actually are or will be (and we do
not), applicant’s argument misses the point. The question
isn’t whether consumers will confuse the goods, but whether
consumers – seeing the marks used on such goods – will be
confused as to the source of the goods. Thus, even if
consumers would expect applicant’s goods to feature “gay”
content and expect the prior registrant’s goods to feature
“heterosexual” content, the question remains as to whether
those customers would nonetheless believe that applicant’s
brand is merely an extension of the prior registrant’s
admittedly well-known mark.10 In re West Point-Pepperell,
Inc., 468 F.2d 200, 175 USPQ 558 (CCPA 1972).

10 There is no evidence that such products are mutually exclusive,
i.e., that they would never emanate from the same source.

Application No. 77086958
9
The legally-identical goods at issue favors a finding
of likelihood of confusion.
B. Fame of the Prior Registration
The fame of the senior mark is not often a factor in ex
parte proceedings in which the prior registrant does not
participate. However, as can be seen from the quotation
above, applicant apparently admits that the prior
registrant’s marks are famous, or at least very well known.
The Court of Appeals for the Federal Circuit has emphasized
that when a prior mark is famous, that factor is entitled to
great weight in determining whether confusion is likely.
E.g. Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d
1894, 1897 (Fed. Cir. 2000); Kenner Parker Toys Inc. v. Rose
Art Indus. Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed.
Cir. 1992) (“The Lanham Act's tolerance for similarity
between competing marks varies inversely with the fame of
the prior mark.”). Nonetheless, applicant here claims that
confusion is not likely precisely because of the renown of
the prior registrations.
This argument was rejected in Kenner Parker Toys, which
is directly on point:
The Board acknowledged “the renown
of opposer's mark with respect to
modeling compound.” Indeed, Rose Art
conceded this fame. Yet the Board
treated that fame as a liability in
assessing likelihood of confusion.
Reasoning that consumers might more
easily recognize variances from a famous
Application No. 77086958
10
mark, the Board concluded that the fame
of Kenner's mark permitted greater,
rather than less, legal tolerance for
similar marks.

While scholars might debate as a
factual proposition whether fame
heightens or dulls the public's
awareness of variances in marks, the
legal proposition is beyond debate. The
driving designs and origins of the
Lanham Act demand the standard
consistently applied by this court –
namely, more protection against
confusion for famous marks.

22 USPQ2d at 1456.
We need not decide here whether applicant’s statement
alone is enough to establish that the cited marks are
“famous,” in the same sense that PLAY-DOH in Kenner Parker
and FRITO-LAY in Recot were found to be. The degree to
which the public is familiar with the prior registrant’s
marks is not an all-or-nothing proposition. Here,
applicant’s statement was clearly premised on the assumption
that the prior registrant’s marks are well-known within the
market for such goods, such that potential purchasers would
be aware of them and have them in mind when encountering
applicant’s goods in the marketplace. Such a degree of
public knowledge or renown is indeed a significant factor in
the du Pont analysis, but not for the reason put forward by
applicant. On the contrary, rather than helping to avoid a
likelihood of confusion, the renown of the prior weighs
against applicant.
Application No. 77086958
11
C. The Similarity or Dissimilarity of the Marks in
their Entireties As To Appearance, Sound,
Connotation And Commercial Impression

We next compare the goods for similarity or
dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.
du Pont, 177 USPQ at 567. In a particular case, any one of
these means of comparison may be critical in finding the
marks to be similar. In re White Swan Ltd., 9 USPQ2d 1534,
1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042
(TTAB 1988). The test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression so that
confusion as to the source of the goods offered under the
respective marks is likely to result. San Fernando Elec.
Mfg. Co. v. JFD Elec. Components Corp., 565 F.2d 683, 196
USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc.,
23 USPQ2d 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-
1086 (Fed. Cir. June 5, 1992). The proper focus is on the
recollection of the average customer, who retains a general
rather than specific impression of the marks. Winnebago
Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344
(TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106, 108 (TTAB 1975).
Application No. 77086958
12
We begin our consideration of the involved marks with
the observation that when the goods are highly similar, a
lesser degree of similarity between the marks will suffice
to sustain a finding of likelihood of confusion. ECI Div.
of E-Systems, Inc. v. Envtl. Communications Inc., 207 USPQ
443, 449 (TTAB 1980).
Applicant’s mark is GAYS GONE WILD, while the prior
registrant’s marks are GIRLS GONE WILD and GUYS GONE WILD.
It is obvious that the marks share the identical last two
words (“GONE WILD”), as well as the same general
construction. In addition, like the cited registrations,
the first word in applicant’s mark is a short word beginning
with a “G” (alliterating with the next word) and – by
applicant’s account – naming the subject matter of the
recordings by sexual preference and gender.
Applicant argues that the registered marks are weak,
citing a number of applications and registrations including
the words “GONE WILD.” However, as noted above, those
applications and registrations are not part of the record,
and will not be considered. While we acknowledge that the
marks at issue here appear somewhat suggestive, applicant
has admitted that the cited registrations are well-known.
We therefore consider the registrant’s marks to be strong
source indicators, despite any inherent weakness.
Application No. 77086958
13
Applicant likewise cites several Board decisions in
which we found no likelihood of confusion despite the use of
identical marks. Suffice it to say that – other than the
general principles one may glean from such cases – decisions
involving different marks and different goods and presented
on different records are of little help in deciding this
case. In re Servel, Inc., 181 F.2d 192, 85 USPQ 257, 260-61
(CCPA 1950).
Considering the marks as a whole, we find them highly
similar, a factor which strongly supports the refusal to
register.
D. Actual Confusion

Finally, applicant alleges that there is “no evidence
of actual confusion in the marketplace between Applicant’s
Mark and the Prior Marks.” Appl. Br. at 5-6. As has been
repeated numerous times, the relevant question is likelihood
of confusion, not actual confusion. While evidence of
actual confusion is almost always relevant to a likelihood
of confusion determination, the absence of such evidence is
only of importance when the evidence establishes that the
marks have been contemporaneously used for a significant
period under conditions in which confusion, if any, would be
likely to arise. There is no such evidence here. The
subject application was filed based on applicant’s bona fide
intent to use the mark, and applicant has not yet filed an
Application No. 77086958
14
allegation of use. While applicant might be using its mark,
it has presented no evidence of such use, let alone the kind
of evidence we would need to determine whether such use
would have already led to confusion, if confusion were
likely. And even if we had such evidence, applicant’s lack
of knowledge of actual confusion is entitled to little or no
weight in an ex parte appeal, because we do not have the
benefit of hearing from the prior registrant, who is at
least as likely as applicant to have heard of confusion in
the marketplace. In re Kangaroos U.S.A., 223 USPQ 1025,
1026-1027 (TTAB 1984) (citations omitted).
Accordingly, we consider this factor neutral in our
analysis.
E. Proffered Disclaimer
Finally, applicant offers in its reply brief to
“provide a disclaimer on its DVD packaging and the DVD’s
themselves stating that the DVD is in no way associated with
the owner of GIRLS GONE WILD or GUYS GONE WILD.” However,
such a disclaimer (or the offer of it) is of no relevance to
our decision. A disclaimer of connection with the owner of
a prior registration is not a defense to a refusal to
register due to a likelihood of confusion. Cf. In re
Franklin Press, Inc., 597 F.2d 270, 201 USPQ 662 (CCPA
1979). Again, our analysis is limited to a determination of
whether the mark depicted in the drawing of this application
Application No. 77086958
15
is registrable vel non. Whether a disclaimer of this type
appearing along with the mark is enough to dispel confusion
is not our concern.11
III. Conclusion
We have carefully considered the file of this
application, and the briefs on appeal. Given the
essentially identical goods at issue (and hence the
identical customers and channels of trade) and the highly
similar marks, we conclude that applicant’s use of the mark
GAYS GONE WILD as applied to the identified goods is likely
to cause confusion as to the source or sponsorship of such
goods, with respect to both of the cited registrations. Our
decision is further buttressed by applicant’s admission that
the cited registrant’s marks are (at least) well-known.
Decision: The refusal to register under Trademark Act
§ 2(d) is AFFIRMED.

11 In any event, applicant’s offer is untimely. If it had any
merit – which it does not – it should have been proffered during
examination, when it could have been considered by the examining
attorney.