Miss Universe L.P., LLLPv.Community Marketing, Inc.

Trademark Trial and Appeal Board

Feb 9, 2007

No. 91160627 (T.T.A.B. Feb. 9, 2007)

Hearing: Mailed:
June 22, 2006 Feb. 9, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Miss Universe L.P., LLLP
v.
Community Marketing, Inc.
_____

Opposition No. 91160627
to application Serial No. 78132432
filed on May 31, 2002
_____

Andrea L. Calvaruso of Donovan & Yee LLP for Miss Universe
L.P., LLLP.

Community Marketing, Inc., pro se.
______

Before Grendel, Zervas and Kuhlke, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

On May 22, 2002, Community Marketing, Inc.
(“applicant”) filed the above-referenced application by
which it seeks registration on the Principal Register of the
mark MR. GAY UNIVERSE (in standard character form) for
services recited in the application as “entertainment
services in the nature of conducting gay beauty pageant,” in
Class 41. Applicant has disclaimed the exclusive right to
THIS OPINION IS A
PRECEDENT OF THE TTAB
Opposition No. 91160627

2
use GAY apart from the mark as shown, pursuant to the
Trademark Examining Attorney’s requirement during ex parte
prosecution. The application is based on applicant’s
asserted bona fide intention to use the mark in commerce.
Trademark Act Section 1(b), 15 U.S.C. § 1051(b).1
Registration of applicant’s mark has been opposed by
Miss Universe L.P., LLLP (“opposer”). As grounds for
opposition, opposer alleges a claim of priority and
likelihood of confusion under Trademark Act Section 2(d), 15
U.S.C. § 1052(d), and a dilution claim under Trademark Act
Sections 43(c) and 13(a), 15 U.S.C. §§ 1125(c) and 1063(a).
Opposer asserts ownership, registration and prior use of the
mark MISS UNIVERSE and variations thereof, in connection
with various goods and services related to beauty pageants.
In particular, opposer has made of record status and title
copies of the following registrations it owns:2

1 As originally filed, the application was based on use in
commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a).
Applicant amended the basis to intent-to-use during ex parte
prosecution of the application.

2 Of these five registrations, only Registration No. 1597876 was
specifically pleaded by opposer in the notice of opposition;
opposer alleged that it owned this registration “among many
others.” (Notice of Opposition, ¶ 2.) However, at trial opposer
submitted notices of reliance on status and title copies of all
five registrations, without objection from applicant. We find
that the issue of the status and title of these additional
registrations has been tried with applicant’s implied consent,
and we accordingly deem the pleadings to be amended to include
these additional registrations. See Fed. R. Civ. P. 15(b);
Trademark Rule 2.107(a), 37 C.F.R. § 2.107(a).
Opposition No. 91160627

3
- Registration No. 1597876, of the mark MISS
UNIVERSE (in standard character form), for
“entertainment services, namely, presentations of
pageants and contests,” in Class 41. Issued May
22, 1990; Affidavits under Sections 8 and 15
accepted and acknowledged; renewed;

- Registration No. 620557, of the mark MISS
UNIVERSE (in standard character form), for
“promoting the sale of goods and services by
others through the medium of a beauty contest
conducted on a national and regional basis,” in
Class 35. Issued January 31, 1956; Affidavits
under Sections 8 and 15 accepted and acknowledged;
renewed (twice);

- Registration No. 1182063, of the mark MISS
UNIVERSE (in standard character form), for
“magazine concerning the schedule and participants
in beauty pageants,” in Class 16. Issued December
15, 1981; Affidavits under Sections 8 and 15
accepted and acknowledged; renewed;

- Registration No. 1146211, of the mark MISS
UNIVERSE (in standard character form), for
“ladies’ blouses, shirts, bathing suits, shoes,
beach jackets, pants, sweaters, skirts, T-shirts,
slips, petticoats, nightgowns, robes, gloves,
hosiery and panties,” in Class 25. Issued January
20, 1981; Affidavits under Sections 8 and 15
accepted and acknowledged; renewed; and

- Registration No. 2733781, of the mark MISS
NUDE UNIVERSE (in standard character form; NUDE
disclaimed), for “entertainment in the nature of
beauty pageants,” in Class 41. Issued July 8,
2003.

Applicant filed an answer by which it denied the
salient allegations of the notice of opposition, and
asserted several “affirmative defenses” which in fact are
merely further arguments in support of its denials.
The evidence of record consists of the file of
applicant’s involved application; the pleadings herein;
Opposition No. 91160627

4
opposer’s testimony deposition of Anthony Santomauro
(opposer’s Vice President of Business Planning) and exhibits
thereto; opposer’s notice of reliance on the discovery
deposition of Thomas Roth (applicant’s president) and
exhibits thereto; opposer’s notices of reliance on status
and title copies of the above-referenced registrations; and
applicant’s notice of reliance on various documents
including opposer’s interrogatory responses, certain Office
records, and certain articles from printed publications.3
The case is fully briefed, and an oral hearing was held
at which both parties presented arguments. After careful
consideration of all of the evidence and the arguments of
the parties (including any evidence and arguments not
specifically discussed in this opinion), we sustain
opposer’s Section 2(d) ground of opposition. In view
thereof, we need not and do not reach opposer’s dilution
claim.
Before we reach the merits of this case, an initial
comment is in order. We note that opposer has submitted

3 In an order issued on September 16, 2005, the Board granted
opposer’s motion to strike one of the exhibits covered by
applicant’s notice of reliance, i.e., a TTABVUE list of Board
proceedings in which opposer has been a party. Opposer, in its
briefs, has asserted other objections to various portions of
applicant’s evidence and to various assertions made in
applicant’s brief on the case. To the extent that it is
necessary or relevant to our decision herein, we shall address
these objections (many of which go to the probative value of the
evidence, rather than to its admissibility) in our discussion of
the merits of the case, infra.

Opposition No. 91160627

5
with its brief an appendix consisting of a nearly six-inch
stack of documents, which are duplicates of essentially all
of the depositions, exhibits and documents already made of
record by the parties at trial. Although the Board infers
that such appendix was included with the intent of aiding
the Board in its review of the case and/or supporting the
assertions and arguments contained in opposer’s brief, in
actuality the appendix merely adds unnecessarily to the size
of the record, which the Board must review in its entirety
in any event. See ITC Entertainment Group Ltd. v. Nintendo
of America Inc., 45 USPQ2d 2021, 2022 (TTAB 1998), wherein
the Board stated:

The Board notes that the parties’ attorneys have
filed unnecessary copies of motions and briefs and
unnecessary attachments to motions and briefs.
The stack of such papers is nearly a foot high and
weighs in excess of 15 pounds. Apart from the
natural resources wasted on these filings, and the
unnecessary and no doubt significant expense to
the parties attributable to organizing and copying
these papers, the Board has wasted precious time
sorting through the case files to determine what
documents must be retained and which may be
ignored as unnecessary.

Thus, references in the brief to particular pieces of
evidence should be to the location of the evidence in the
actual record, not to its location in an appendix. Opposer
should forego such “appendix” practice in any future cases
before the Board.
Opposition No. 91160627

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Because opposer has properly made its pleaded
registrations of record, and because opposer’s likelihood of
confusion claim is not frivolous, we find that opposer has
established its standing to oppose registration of
applicant’s mark. See Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982); see
also Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842 (Fed. Cir. 2000);
Moreover, because opposer’s pleaded registrations are
of record, Section 2(d) priority is not an issue in this
case as to the mark and goods or services covered by said
registrations. See King Candy Co. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). In any
event, opposer has proven use of its MISS UNIVERSE mark
which predates applicant’s May 31, 2002 application filing
date, which is the earliest date upon which applicant may
rely for priority purposes in this case.
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue (the du Pont factors). See In re E. I.
du Pont de Nemours & 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., 315
Opposition No. 91160627

7
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
We begin our likelihood of confusion analysis with the
fifth du Pont factor, which requires us to consider evidence
of the fame of opposer’s mark and to give great weight to
such evidence if it exists. See Bose Corp. v. QSC Audio
Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir.
2002); Recot Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894
(Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose Art
Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir.
1992). As the court noted in Bose Corp.:

Fame of an opposer’s mark or marks, if it
exists, plays a “dominant role in the process of
balancing the DuPont factors,” Recot, 214 F.3d
at 1327, 54 USPQ2d at 1456 [sic – 1897], and
“[f]amous marks thus enjoy a wide latitude of
legal protection.” Id. This is true as famous
marks are more likely to be remembered and
associated in the public mind than a weaker
mark, and are thus more attractive as targets
for would-be copyists. Id. Indeed, “[a] strong
mark … casts a long shadow which competitors
must avoid.” Kenner Parker Toys, 963 F.2d at
353, 22 USPQ2d at 1456. A famous mark is one
“with extensive public recognition and renown.”
Id.

Bose Corp. v. QSC Audio Products Inc., supra, 63 USPQ2d at
1305.
The March 3, 2005 testimony deposition of Anthony
Santomauro, opposer’s Vice President of Business Planning,
Opposition No. 91160627

8
and the exhibits thereto, establish the following undisputed
facts. Opposer first used its MISS UNIVERSE mark in
connection with beauty pageants “around 1950” and has
conducted its pageant every year since then. (Santomauro
Dep. at 12.) In format, opposer’s annual MISS UNIVERSE
pageant is the finals of an international contest, at which
all of the winners of approximately ninety preliminary
national pageants compete for the title of MISS UNIVERSE.
(Id. at 21.) These ninety contestants are eventually
narrowed to fifteen finalists, who make up the field for the
final contest which is televised internationally. (Id. at
21-22.)
The airing on television of opposer’s annual MISS
UNIVERSE pageant is quite successful, by any measure.
According to Exhibit 2 to Mr. Santomauro’s deposition (which
consists of records from opposer’s television network
partners), and to Mr. Santomauro’s testimony regarding
Exhibit 2, the 2004 MISS UNIVERSE pageant broadcast had the
highest overall rating among men and women in the United
States aged eighteen to forty-nine, with thirteen million
American households viewing the program. Twelve million
households viewed the pageant on television in 2003, and
eleven million households viewed the pageant on television
in 2002. We find these numbers to be substantial. In each
of those three years, opposer’s pageant had the highest
Opposition No. 91160627

9
viewership of any program offered on the night of airing.
(Id. at 13-20.) The MISS UNIVERSE mark is prominently used
and displayed throughout the broadcast. (Id. at 12-13).
The ultimate winner of the annual pageant is crowned
“Miss Universe,” and she reigns for one year. During that
time, her responsibilities include touring the world
representing opposer’s organization, and engaging in
fundraising activities for charity. (Id. at 25.) Miss
Universe, and opposer’s pageant, receive a significant
amount of media coverage (in addition to the pageant
broadcast itself). Media coverage is heaviest immediately
after the pageant broadcast, but it continues throughout the
winner’s reign. (Id. at 28-29.)
Television programs which regularly feature or report
on the annual pageant and its titleholder include NBC’s
Today Show, The Tonight Show with Jay Leno,4 Access
Hollywood, Inside Edition, as well as coverage on CNN,
Telemundo and other networks. (Id. at 29-30.) Print media
coverage is equally broad; items about opposer’s annual MISS
UNIVERSE pageant and its new titleholder appear in all of
the major market newspapers such as The New York Times, The

4 The witness identified this program as “Late Night with Jay
Leno.” We take judicial notice that late night programming in
the United States includes “Late Night with David Letterman,” and
“The Tonight Show with Jay Leno.” We presume that the witness
simply misspoke, and deem that mistake to be non-material to our
findings herein.

Opposition No. 91160627

10
Los Angeles Times, the New York Post, and The Washington
Post. Coverage also appears in all of the “fashion”
magazines, in general interest magazines such as Cosmo and
People, and in the in-flight magazines provided to travelers
by the airlines. (Id. at 30.)
Opposer has a “Miss Universe” website which prominently
features the MISS UNIVERSE mark. The website received
“nearly a billion” hits in 2004. (Id. at 31-32.) Well-
known companies, including CoverGirl, American Airlines and
others, pay opposer every year for the right to be named as
sponsors of the pageant. (Id. at 36.) Opposer’s gross
annual revenue, from sources such as broadcast license fees,
host city license fees, and personal appearances by Miss
Universe, totals over $24 million per year. Although the
record is silent as to opposer’s annual advertising
expenditures, it is apparent from the ratings of the annual
broadcast, the corresponding media coverage, and the
desirability of the pageant as a vehicle for sponsorship by
other companies, that any advertising opposer does is
effective. Opposer spends $300,000 per year policing its
MISS UNIVERSE marks, including initiating numerous
proceedings before the Board over the years. (Id. at 38-
39.)
Finally, we note that, in a “late 2004” internal
communication (Roth Discovery Dep. Exh. 5, which Mr. Roth
Opposition No. 91160627

11
identified as a rough draft of a possible franchise
agreement which was never seen by others outside applicant’s
company), Mr. Spradlin, one of applicant’s principals, wrote
as follows, inter alia: “The most renowned Contest is the
Miss Universe Pageant conceived in the 60’s and now owned by
Donald Trump and CBS.” In its brief, applicant asserts that
this statement by Mr. Spradlin was not an acknowledgment
that the fame of opposer’s mark extended to applicant’s
services, i.e., gay beauty pageants.
We find, however, that no such restrictive
interpretation is proper for Mr. Spradlin’s statement. The
statement was included in a draft franchise agreement by
which applicant hoped to enlist franchisees for its pageant,
but nothing in the statement itself or the reference to
opposer’s pageant is limited in the way applicant argues.
Cf. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin,
supra, 396 F.3d at 1376, 73 USPQ2d at 1695 (“Moreover, Palm
Bay’s President, David Taub, admitted that the VEUVE
CLICQUOT mark is famous. His later qualification that such
fame was limited to the ‘top-end’ segment of the market does
not diminish the significance of his admission in view of
the Board’s finding that high-end champagne and less-
expensive sparkling wines are marketed in the same channels
of trade to the same consumers.”) We therefore find that
Mr. Spradlin’s statement is evidence that even applicant
Opposition No. 91160627

12
considers opposer’s mark to be famous, a fact which further
corroborates our finding under the fifth du Pont factor that
opposer’s MISS UNIVERSE mark is famous.
Based on this undisputed evidence of record, we find
that opposer’s MISS UNIVERSE mark is famous for purposes of
the fifth du Pont factor.5 Such fame must be accorded
dominant weight in our likelihood of confusion analysis.
Recot, 214 F.3d at 1327, 54 USPQ2d at 1897.
We turn next to the second du Pont factor, i.e., the
similarity or dissimilarity of the parties’ services. It is
settled that it is not necessary that the respective
services be identical or even competitive in order to
support a finding of likelihood of confusion. That is, the
issue is not whether consumers would confuse the services
themselves, but rather whether they would be confused as to
the source of the services. It is sufficient that the
services be related in some manner, or that the
circumstances surrounding their use be such that they would
be likely to be encountered by the same persons in
situations that would give rise, because of the marks used
thereon, to a mistaken belief that they originate from or
are in some way associated with the same source or that
there is an association or connection between the sources of

5 We need not and do not reach the issue of whether opposer’s
mark is famous for purposes of its dilution claim, because as
noted above, we are not reaching that claim.
Opposition No. 91160627

13
the respective services. See In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984);
In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); and In re
International Telephone & Telegraph Corp., 197 USPQ 910
(TTAB 1978).
Applicant’s services, as recited in the application,
are “entertainment services in the nature of conducting gay
beauty pageant.” Opposer’s services, as recited in its
Registration No. 1597876 (MISS UNIVERSE), are “entertainment
services, namely, presentations of pageants and contests” in
Class 41. The services recited in opposer’s Registration
No. 620557 (MISS UNIVERSE) are “promoting the sale of goods
and services by others through the medium of a beauty
contest conducted on a national and regional basis” in Class
35.6
Based on these respective recitations of services, see
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002), we find that applicant’s
services are identical to opposer’s services insofar as both

6 We note that opposer, in its briefs, has presented no arguments
pertaining specifically to the issue of likelihood of confusion
between applicant’s mark and services and the marks and goods or
services covered by opposer’s other three pleaded registrations,
i.e., Registration No. 1182063 (MISS UNIVERSE for magazines),
Registration No. 1146211 (MISS UNIVERSE for clothing items), and
Registration No. 2733781 (MISS NUDE UNIVERSE for beauty
pageants). In view thereof, we shall give no consideration to
opposer’s pleaded Section 2(d) claim insofar as it is based on
these other three registrations, and shall consider opposer’s
Section 2(d) claim only as it pertains to opposer’s MISS UNIVERSE
registrations in Classes 35 and 41.
Opposition No. 91160627

14
parties’ services involve conducting or presenting
entertainment services in the nature of beauty pageants.
Also, the evidence of record shows that the intended format
of applicant’s beauty pageant is or will be essentially
identical to the format of opposer’s pageant. For example,
both pageants are or will involve preliminary regional
contests which lead to a televised final pageant featuring
celebrity masters of ceremonies, celebrity entertainers and
celebrity judges. (Roth Dep. at 58-61; Santomauro Dep. at
21-24.)
Applicant argues that the parties’ respective pageants
are not directly competitive and would not be confused for
each other due to the difference in the contestant pools for
each pageant, with opposer’s MISS UNIVERSE pageant involving
unmarried females and applicant’s MR. GAY UNIVERSE pageant
involving gay males. However, the issue is not whether the
two pageants will be confused for one another or whether the
relevant public will be able to distinguish between the
pageants themselves. Rather, the issue is whether the
relevant public will assume, due to the similarity of the
marks, that there is a source, sponsorship or other
connection between the two pageants. The difference in the
respective contestant pools is not dispositive, if the
public is likely to assume that applicant’s pageant is an

Opposition No. 91160627

15
offshoot of or is otherwise affiliated with opposer’s famous
pageant.

The likelihood of confusion in this case does not
stem only from the possibility that a consumer
might mistake the defendants’ services for those
of the plaintiff. The real danger lies in the
probability that this same consumer may associate
the defendants with the plaintiff. Thus, it would
be quite reasonable to assume that the defendant’s
MRS. USA pageant [a contest involving married
women only] is an offshoot of the plaintiff’s MISS
USA pageant [a contest involving unmarried women
only].

Miss Universe, Inc. v. Pitts, 714 F.Supp. 209, 216-17, 14
USPQ2d 2004, 2010 (W.D. La. 1989)(internal citation
omitted).
Likewise, in a case finding a likelihood of confusion
between the marks MISS AMERICA (for a pageant involving
females aged 18 to twenty-eight years old) and LITTLE MISS
AMERICA (for a pageant involving females aged five to ten
years old), the predecessor to our primary reviewing court
found as follows: “Though the record discloses vast
differences in the scale and details of their operations, it
seems to us that both would be perceived by the public at
large as being in the same general business.” Palisades
Pageants, Inc. v. Miss America Pageant, 442 F.2d 1385, 1388,
169 USPQ 790, 793 (CCPA 1971). See also Miss Universe Inc.
v. Drost, 189 USPQ 212 (TTAB 1976)(finding likely confusion
Opposition No. 91160627

16
between the marks MISS USA and MISS NUDE USA, both for
beauty pageants).
Applicant also argues that by “long standing
tradition,” male and female pageants are so “well divided”
that purchasers are accustomed to distinguishing between
male and female pageants as to source. There is no evidence
in the record to support this assertion. Applicant cites
the co-existence on the Register of third-party
registrations of marks including MISS AMERICA and MR.
AMERICA, and MISS U.S.A. and MR. U.S.A.7 However, these
third-party registrations are “of little material
significance” in determining likelihood of confusion “since
the existence of these registrations is not evidence of what
happens in the marketplace or of the fact that consumers are
familiar with them. Moreover, the inclusion on the register
of confusingly similar marks cannot aid an applicant to
register another mark which is likely to cause confusion.”
Miss Universe v. Drost, supra, 189 USPQ at 213-14. Further
with respect to applicant’s “male vs. female” argument, see
Augusta National, Inc. v. The Northwestern Mutual Life Ins.
Co., 193 USPQ 210, 220 (S.D. Ga. 1976)(“Defendant has sought

7 We note that in the MR. U.S.A. registration (Reg. No. 1253816,
which has been cancelled under Section 8), the goods are
identified as “T-shirts and sport shirts,” goods which are
different than the beauty contest services recited in the MISS
U.S.A. registration (Reg. No. 808974). Such a difference in the
goods and services identified in the respective registrations is
Opposition No. 91160627

17
to make much of the fact that the Masters is a men’s [golf]
tournament, while NMC’s is for women only, thereby
eliminating any confusion between the two. But that fact
would not prevent the public from believing that both
Masters were being sponsored and operated by Augusta
National”).
Finally, applicant argues that its pageant and
opposer’s pageant will not be confused because applicant’s
pageant involves gay contestants while opposer’s pageant
involves straight contestants. This argument is
unpersuasive because, first, opposer’s recitation of
services is worded broadly enough that it encompasses both
gay and straight pageants. More fundamentally, however, and
as noted above, the issue is not whether the two pageants
would be confused for each other, but whether the public
will mistakenly assume, due to the similarity of the marks,
that there is a source connection or affiliation between
applicant’s pageant and opposer’s pageant.
In summary, we find under the second du Pont factor
that applicant’s services are similar rather than dissimilar
to opposer’s services. Both parties are conducting or
intend to conduct beauty pageants. This basic similarity
between the services outweighs any dissimilarity that might

likely to have contributed to the Office’s allowance of both
marks to be registered.

Opposition No. 91160627

18
be presumed from the fact that the public may be able to
distinguish between the two pageants themselves due to their
different contestant pools. The second du Pont factor
therefore weighs in favor of a finding of likelihood of
confusion.
Under the third du Pont factor, we must determine the
similarity or dissimilarity of the trade channels and
classes of purchasers for the parties’ respective services.
Because there are no limitations as to trade channels or
classes of purchasers in either applicant’s or opposer’s
respective application and registrations, we must presume
that each party’s services are marketed in all normal trade
channels and to all normal classes of purchasers for such
services. In re Elbaum, 211 USPQ 639 (TTAB 1981).
Applicant’s pageant might initially be of more interest
to a gay audience than to a straight audience, but applicant
has stated that it intends that its pageant eventually will
be watched by the public at large, including straight as
well as gay viewers. See Roth Dep. Exh. No. 4 (“We expect
that with the increasing public interest in everything ‘gay’
these days ... we stand to be quite successful in our
efforts”); Roth Dep. Exh. No. 6 (the “creation of a national
Mr. Gay Universe Contest is a function of the recent
acceptance of the gay culture as a whole within the larger
society”). The record also shows that applicant intends to
Opposition No. 91160627

19
seek corporate and host city sponsors for its pageant,
including the same types of sponsors, and even some of the
same sponsors, as those which sponsor opposer’s pageant.
(Roth Dep. at 32-35.)
For these reasons, we find that the trade channels and
classes of purchasers for applicant’s services are similar
rather than dissimilar, and that the third du Pont factor
accordingly weighs in favor of a finding of likelihood of
confusion.
Under the fourth du Pont factor (conditions of
purchase) we find that applicant’s and opposer’s beauty
pageants will be marketed to and viewed by ordinary
consumers, who will not necessarily exercise a great deal of
care in viewing or reading about the respective pageants. A
television viewer who sees a television listing or an
advertisement for applicant’s MR. GAY UNIVERSE pageant, or a
consumer who encounters press coverage of applicant’s
pageant, will not exercise great care in determining whether
applicant’s pageant is affiliated with or related to
opposer’s pageant. We therefore find that the fourth du
Pont factor weighs in favor of a finding of likelihood of
confusion.
We turn next to the first du Pont factor, which
requires us to determine the similarity or dissimilarity of
the marks when viewed in their entireties in terms of
Opposition No. 91160627

20
appearance, sound, connotation and overall commercial
impression. Palm Bay Imports, Inc., supra. The test, under
the first du Pont factor, 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 that confusion
as to the source of the goods offered under the respective
marks is likely to result. The focus is on the recollection
of the average purchaser, who normally retains a general
rather than a specific impression of trademarks. See Sealed
Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Furthermore, although the marks at issue must be considered
in their entireties, it is well-settled that one feature of
a mark may be more significant than another, and it is not
improper to give more weight to this dominant feature in
determining the commercial impression created by the mark.
See In re Chatam International Inc., 380 F.3d 1340, 71
USPQ2d 1944 (Fed. Cir. 2004); In re National Data Corp., 753
F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
Applying these principles in the present case, we find
that applicant’s MR. GAY UNIVERSE mark is similar rather
than dissimilar to opposer’s MISS UNIVERSE mark. First, we
find that the dominant feature of both marks is the word
UNIVERSE. We do not disregard the other elements of the
respective marks, i.e., the words MR. GAY in applicant’s
Opposition No. 91160627

21
mark and the word MISS in opposer’s mark, but we find that
these other elements contribute relatively less to the
overall commercial impressions of the two marks. The word
UNIVERSE is only slightly suggestive as applied to beauty
pageants; indeed, it is somewhat fanciful to the extent that
the contestants and winners of the pageants do not come from
different parts of the universe, but merely from different
parts of planet earth.
By contrast, MR. GAY is highly suggestive if not
descriptive of a basic feature of applicant’s pageant, i.e.,
that its contestants are gay males. As noted above,
applicant has disclaimed the word GAY apart from the mark as
shown. Likewise, we find that the word MISS in opposer’s
mark is highly suggestive as applied to opposer’s pageant
services, in that it merely informs the public that the
contestants in opposer’s pageant are unmarried females. As
discussed above in connection with the second du Pont
factor, the fact that viewers and other purchasers of the
respective services would be able to distinguish between the
pageants themselves based on the difference in contestant
pools does not preclude a finding that they are likely to be
confused as to the source of the two pageants. Likewise,
the presence of MR. GAY and MISS in the respective marks
merely serves to identify and differentiate the specific
pools of contestants for the respective pageants, not the
Opposition No. 91160627

22
source of the two pageants, which is likely to be determined
by consumers based on the presence of UNIVERSE in both
marks.
Due to the presence of the word UNIVERSE in each of the
marks, the marks when considered in their entireties are
similar rather than dissimilar in terms of appearance,
sound, connotation and overall commercial impression. Both
marks consist of the distinctive term UNIVERSE, preceded by
highly suggestive or descriptive terms which merely identify
the different contestant pools, without distinguishing
source. MR. GAY merely “directs attention to the word[]
which follows,” i.e., UNIVERSE, just as MISS does in the
MISS UNIVERSE mark. Palisades Pageants, Inc., supra, 169
USPQ at 793. See also Miss Universe Inc. v. Drost, supra,
189 USPQ at 214 (in the mark MISS NUDE USA, “[t]he word
‘NUDE’ ... is merely an adjective, is clearly subordinate to
the notation ‘U.S.A.’ which it modifies, and does not serve
to distinguish applicant’s mark from that of opposer [MISS
U.S.A.]”).
Applicant contends that consumers are accustomed to
distinguishing between the sources of beauty pageants which
use MR. and MISS prefixes with the same geographic suffixes,
such as MR. AMERICA and MISS AMERICA. There is no evidence
in the record to support this contention. The few third-
party registrations made of record by applicant do not prove
Opposition No. 91160627

23
that the marks depicted therein are in use or are familiar
to consumers, see Miss Universe Inc. v. Drost, supra, and
there is no other evidence in the record showing the extent
of use, if any, of these third-party marks.
For these reasons, we find that the similarity of the
marks which arises from the presence of the word UNIVERSE in
both marks clearly outweighs the differences between the
marks which result from the different additional words in
the respective marks, i.e., MR. GAY and MISS. Viewed in
their entireties, we find that the marks are similar rather
than dissimilar, and that the first du Pont factor
accordingly weighs in favor of a finding of likelihood of
confusion.
The sixth du Pont factor requires us to consider
evidence of “use of similar marks on similar goods [or
services].” We find that there is no evidence in the record
which would support a finding that marks similar to
applicant’s and opposer’s are in use in connection with
beauty pageant services. The few third-party registrations
submitted by applicant are not evidence of use of those
registered marks under the sixth du Pont factor. See Olde
Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d
1542 (Fed. Cir. 1992). Additionally, we find that the
existence, vel non, of these other registered marks which
incorporate the terms MISS, MRS. or MR. for beauty pageants
Opposition No. 91160627

24
are not “similar marks” for purposes of the sixth du Pont
factor. Rather, in this case the relevant inquiry under the
sixth du Pont factor is whether there are other UNIVERSE
marks in use.
The record suggests that only one other UNIVERSE mark
exists, i.e., the MR. UNIVERSE mark which is used in
connection with the sport of bodybuilding. The evidence on
this issue is slight, at best, consisting only of an article
about former “Mr. Universe” Steve Reeves and an article
about former “Mr. Universe” Arnold Schwarzenegger. The
latter article mentions the “Mr. Universe” title only once,
and only in passing. Even assuming that this evidence
establishes that purchasers are aware of the MR. UNIVERSE
mark, we find that such mark is not particularly probative
under the sixth du Pont factor because the services in
connection with which the mark is used are not similar to
the services involved in this case. Bodybuilding contests,
which are the subject of the MR. UNIVERSE mark, are sports
events, not beauty pageants. Bodybuilding is a sport in
which the contestants are athletes; it is not a beauty
pageant such as applicant’s or opposer’s. See, e.g., the
Flex magazine article on Arnold Schwarzenegger made of
record by applicant, which repeatedly refers to Mr.
Schwarzenegger as an athlete, and to bodybuilding as a
sport, not a beauty pageant. (Regarding an early defeat,
Opposition No. 91160627

25
“Arnold accepted it like an athlete...”; “All I have to say
is that bodybuilding is a sport that is decided by a judging
panel”; and “I think Arnold exemplified everything –
physique and personality wise – that Joe [Weider] looked for
in an athlete. He probably felt that with Arnold, who had
such tremendous drive, his own dream for the sport could
come true faster.”)
For these reasons, we find that the sixth du Pont
factor is neutral at best in this case; it certainly does
not weigh significantly in applicant’s favor.
Applicant makes certain other arguments in its brief,
none of which we find to be persuasive and which we shall
address summarily in this decision. First, it is not
dispositive or even relevant that applicant was able to
convince the Trademark Examining Attorney during ex parte
examination to pass applicant’s mark to publication. See
Miss Universe Inc. v. Drost, supra. Second, even if we
accept as true applicant’s contention that it adopted its
mark in good faith, such good faith adoption does not
establish the absence of a likelihood of confusion, nor does
it negate the other evidence of record which weighs in favor
of a finding of likelihood of confusion.
Finally, the fact that opposer was the plaintiff in a
1978 opposition proceeding (No. 91062042) involving its MISS
U.S.A. mark and a third party’s MR. USA mark, in which the
Opposition No. 91160627

26
opposition ultimately was terminated and a registration
issued to the applicant, is of no probative value in the
present case. The only evidence pertaining to this prior
case are TTABVUE and TARR records, which show only that the
proceeding was filed on December 27, 1978 and instituted on
March 6, 1979, that the applicant filed an answer on April
2, 1979, that an “appeal to CAFC” was taken on October 26,
1981, that the opposition was terminated on July 27, 1983,
that a registration (Reg. No. 1253816) was issued to the
applicant on October 11, 1983, and that the registration
subsequently was cancelled under Section 8. There is no
evidence from which we might ascertain the basis for the
Board’s apparent dismissal of the opposition and the Federal
Circuit’s apparent affirmance of such dismissal. We note
that the goods identified in the third-party applicant’s MR.
USA application and registration were Class 25 clothing
goods, a fact which in itself may have been the basis for a
finding of no likelihood of confusion (assuming that such
finding was in fact the basis of the decision and outcome of
the case). The point is that we cannot determine what the
basis of the decision in the prior case was; that case
therefore is of no probative value. To the extent that
applicant is arguing that this prior case has some sort of
res judicata or collateral estoppel effect in the present
Opposition No. 91160627

27
case, such contention is without merit given the differences
in the marks and goods at issue in the prior case.
In summary, we have reviewed all of the evidence of
record as it pertains to the du Pont likelihood of confusion
factors. Based on that evidence, and for the reasons
discussed above, we conclude that a likelihood of confusion
exists. Applicant’s arguments to the contrary are not
persuasive. To the extent that any doubts might exist as to
the correctness of our likelihood of confusion
determination, we resolve such doubts against applicant.
See Ava Enterprises Inc. v. Audio Boss USA Inc., 77 USPQ2d
1783 (TTAB 2006); Baseball America Inc. v. Powerplay Sports
Ltd., 71 USPQ2d 1844 (TTAB 2004).
As noted above, because we have found for opposer on
its Section 2(d) ground of opposition, we need not and do
not reach opposer’s dilution claim.

Decision: The opposition is sustained.