No. 85777948 (T.T.A.B. Dec. 10, 2014)

Moll Anderson Productions, LLC

Trademark Trial and Appeal BoardDec 10, 2014

No. 85777948 (T.T.A.B. Dec. 10, 2014)

This Opinion is Not a Precedent of the TTAB Mailed: December 10, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Moll Anderson Productions, LLC _____ Serial No. 85777948 _____ Robert L. Brewer, Martha Allard, and Mary Katherine Schweihs of Bass, Berry & Sims, PLC, for Moll Anderson Productions, LLC. Sara N. Benjamin, Trademark Examining Attorney, Law Office 110, Chris A. F. Pedersen, Managing Attorney. _____ Before Ritchie, Lykos and Gorowitz, Administrative Trademark Judges. Opinion by Gorowitz, Administrative Trademark Judge: Moll Anderson Productions, LLC (“Applicant”) seeks registration on the Principal Register of the mark ANDERSON WORLD MEDIA (in standard characters) for Musical sound recordings, namely, audio and video cassettes, compact discs, digital versatile discs and videotapes featuring instrumental and vocal music; digital music downloadable from the Internet in International Class 9; and Serial No. 85 The term The under S Applica standar services namely Interna services 1 Applica allegatio Tradema 2 Registr Anderso 3 During ANDERS newslett ROMS a passenge services, others; a entertain characte presenta projector radios, a nature o withdraw 777948 Produ movie Class “WORLD Trademar ection 2(d nt’s mark d characte , namely, photograp tional Clas , it is likel tion Serial n of a bona rk Act. ation No. 4 n identifies prosecution ON PUBL ers and jou nd other co rs and/or a arranging nd arrangin ment in th rs and in st tion system s and their mplifiers an f system req n. ction an s; motion 41.1 MEDIA” k Examin ) of the T so resemb rs for “a video an hic and vid s 412 as u y to cause No. 857779 fide intenti 167885, issu a living ind , the Exam ISHING for rnals, electr mputer rea nd their be travel tours g for ticket e nature of ylized form s; rental of accessories d televisio uirements d distribu picture f has been d ing Attorn rademark les the reg udio and d film pr eo captur sed in con confusion 48 was file on to use th ed July 3, ividual who ining Attor publishing onic public dable media longings tra ; travel gui reservatio tours; and A ) for, inter a audio, elec , overhead ns; audio-vi for particul - 2 - tion of t ilm produc isclaimed ey refused Act, 15 U istered m video reco oduction; e; video ed nection wi or mistake d on Novem e mark in c 2012. The w se consent ney also cit services, n ation of tex ; ANDERS nsportation de services ns for show NDERSON lia, rental tronic and v projectors a sual presen ar installat elevision tion in In . registrat .S.C. § 105 ark MIKE rding ser photograp iting; vide th Applica or to dece ber 13, 201 ommerce u ord “MED was of reco ed registra amely, pub t and graph ON for, inte reservatio and conduc s and other AUDIO V of stereo an ideo equipm nd their ac tation syst ions. All of shows an ternation ion of Ap 2(d) on th ANDERS vices; med hic and v o productio nt's identi ive.3 3, based up nder Sectio IA” was dis rd. tions for th lication of b ic works of r alia, tran n services; ting sights entertainm ISUAL (in d audio-vis ent, specif cessories, v ems consult these citati d al plicant’s m e ground ON MEDI ia produc ideo serv n services fied goods on Applica n 1(b) of th claimed. Mi e marks ooks, others on C sportation travel agen eeing tours ent events standard ual ically movi ideo screen ing in the ons were ark that A in tion ices, ,” in and nt’s e ke D- of cy for ; e s, Serial No. 85777948 - 3 - When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We affirm the refusal to register. I. Evidentiary Issues. As a preliminary matter, the Examining Attorney has objected to Applicant’s evidentiary references to third-party registrations that were first discussed in the Appeal Brief and were never made of record. Evidence submitted after the filing of an appeal is untimely and will not ordinarily be considered by the Board. Trademark Rule 2.142(d); 37 CFR § 2.142(d). Similarly, “evidentiary references made in briefs but not supported by timely submissions may not be considered.” Trademark Manual of Board Procedures (TBMP) § 1203.02 (e). See In re the Procter & Gamble Co., 105 USPQ2d 1119, 1120 (TTAB 2012) (Applicant withdrew references in its brief to third-party registrations it inadvertently failed to attach to responses during examination). The evidentiary references were to seventeen third-party registrations for marks containing the term ANDERSON for goods and services unrelated to those at issue in this case. Applicant did not introduce any of the registration certificates or the electronic equivalent thereof from the USPTO’s electronic databases, but rather simply referred to the registrations its argument. “It is well-established that in order to make third-party registrations properly of record, Applicant should submit copies of the registrations themselves, or the electronic equivalent thereof’ from the Serial No. 85 USPTO n.5 (TTA Acco registra been con II. L Our of all of re E. I. also, In 2003). I similari services USPQ 2 USPQ2d A We s In comp commer Clicquo (Fed. C average 777948 ’s electron B 2012). rdingly, th tions have sidered, it ikelihood determina the probat du Pont de re Majest n any lik ties betwe . See Fede 4 (CCPA 1531 (Fe . Simila tart our a aring the cial impre t Ponsardi ir. 2005). T purchaser ic databas e objectio not been would no of Confus tion of the ive facts in Nemours ic Distillin elihood of en the m rated Food 1976). See d. Cir. 199 rity or Dis nalysis wi marks we ssion of t n Maison F he emph who norm es ... .” In ns are sus considered t affect the ion. issue of li evidence & Co., 476 g Co., Inc. confusion arks and s, Inc. v. also, In r 7). similarity th the firs must cons he marks ondee En asis of our ally retai - 4 - re City of tained an . We note outcome h kelihood o that are re F.2d 1357 , 315 F.3d analysis the simil Fort Howa e Dixie R of Marks. t du Pont ider the a at issue. 1772, 396 analysis ns a gener Houston, d the refe that even erein. f confusion levant to , 177 USP 1311, 65 , two key arities be rd Paper estaurants factor, the ppearance Palm Ba F.3d 1369 must be o al, rather 101 USPQ rences to if the reg is based the factors Q 563 (CC USPQ2d 1 considera tween the Co., 544 F Inc., 105 similarity , sound, co y Imports , 73 USPQ n the reco than speci 2d 1534, the seven istrations on an ana set forth i PA 1973) 201 (Fed. tions are goods an .2d 1098, F.3d 1405 of the ma nnotation Inc. v. V 2d 1689, llection of fic, impres 1536 teen had lysis n In . See Cir. the d/or 192 , 41 rks. and euve 1692 the sion Serial No. 85777948 - 5 - of trademarks. In re Cynosure, Inc., 90 USPQ2d 1644, 1645 (TTAB 2009) (citing Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975)). “While we analyze the marks 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 when evaluating the similarities of the marks.” In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Applicant argues that the “predominant” terms in the marks are “WORLD” and “MIKE.” Applicant’s argument is unpersuasive. The dominant feature is “often the first part of a mark, which is most likely to be impressed upon the mind of a purchaser and remembered.” Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (Likelihood of confusion found between KIDWIPES and KID STUFF for pre-moistened disposable towelettes). See also Palm Bay Imports Inc., 73 USPQ2d at 1692 (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “Veuve” is the first word in the mark and the first word to appear on the label); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will first notice the identical lead word). In this case, the first portions of the marks are ANDERSON, which is a surname, and MIKE ANDERSON, which is a full name. It has long been held that when conflicting marks consist of a surname and a full name ending in the same surname, confusion is likely. As the Board stated in the Modern Shoe Company case: Serial No. 85777948 - 6 - We have here a surname “WALKER” and a full name “JOHNNIE WALKER”. The full name would represent an individual. The surname “WALKER” does not per se identify any particular individual but it does identify any and all persons who bear that surname, including “JOHNNIE WALKER”. And, it is not uncommon to identify an individual by a surname without reference to a first or Christian name, for example Nixon or Rockefeller in reference to well-known political figures. Thus, “WALKER” and “JOHNNIE WALKER” could be regarded as one and the same individual. These names when used as marks will create the same impression and such impression is greatly enhanced because they are used on directly competitive goods, even as to price. We are of the opinion that the circumstances give rise to a likelihood of confusion. Modern Shoe Company v. B. B. Walker Shoe Company, 170 USPQ 530, 531 (TTAB 1971) (internal citations omitted). This holding is not affected by claims that the “surname” and/or “full name” are the names of either an applicant or a registrant. See, Nina Ricci S.A.R.L. V. E.T.F. Enterprises Inc., 889 F.2d 1070, 12 USPQ2d 1901 (Fed. Cir. 1989) (VITTORIO RICCI for handbags, clothing and retail store services in the field of clothing is likely to cause confusion with NINA RICCI for clothing and accessories even though Vittorio Ricci was the name of defendant's principal); Jack Winter Inc. v. Lancer of California, Inc., 183 USPQ 445, 446 (TTAB 1974) (DAVID WINTER for clothing is likely to cause confusion with JACK WINTER for clothing). Thus, on their own, the dominant portions of the marks, ANDERSON and MIKE ANDERSON, are similar. Having considered the similarities between the dominant portions of the marks, we now look at the marks in their entireties. In Applicant’s mark, ANDERSON WORLD MEDIA, the descriptive phrase “WORLD MEDIA,” which has been Serial No. 85777948 - 7 - disclaimed, has been added to the dominant word ANDERSON. In the mark MIKE ANDERSON MEDIA, the descriptive term “MEDIA,” which has also been disclaimed, has been added to the dominant term MIKE ANDERSON. In general, the addition of merely descriptive matter does not obviate a finding of similarity. In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (“Viewed in their entireties with non-dominant features appropriately discounted, the marks [GASPAR’S ALE for beer and ale and JOSE GASPAR GOLD for tequila] become nearly identical … .”). In this case, not only are the dominant portions of the marks “nearly identical,” but the subordinate portions are very similar since the only difference is Applicant’s inclusion of the descriptive word “WORD” before “MEDIA.” Accordingly, we find that, considering the marks in their entireties, the first du Pont factor favors a finding of likelihood of confusion. B. Number and Nature of Similar Marks in Use on Similar Goods and Services. Next, we consider the sixth du Pont factor, the number and nature of similar marks in use on similar goods and services. With respect to this factor, Applicant contends that its application should be approved since the five registrations,4 that were cited against the grant of its application have co-existed on the Register. Applicant’s contention presumes that the prior registration of a particular mark should be of some persuasive authority in handling later applications involving similar marks. However, we are not privy to the record of the prior registrations 4 Six registrations were cited, however, two were owned by the same party. Serial No. 85777948 - 8 - and are bound to make a decision based on the record before us. See AMF Inc. v. American Leisure Products, Inc., 177 USPQ 268, 269 (CCPA 1973); In re International Taste, Inc., 53 USPQ2d 1604 (TTAB 2000); and In re Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994). Moreover, third-party registrations are generally entitled to little weight in determining the strength of a mark because they are not evidence that the mark is in actual use in the marketplace or that consumers have been exposed to the mark. See Fort Howard Paper Co. v. Kimberly-Clark Corp., 221 USPQ 732 (TTAB 1984); and In re Hub Distributing Inc., 218 USPQ 284 (TTAB 1983). Accordingly, we find the sixth du Pont factor to be neutral. C. Similarity or dissimilarity and nature of the goods and services. We continue our analysis with the second du Pont factor and look at the relationship between the goods and services at issue. When determining the relationship between the goods and services, [t]he authority is legion that the question of registrability of an applicant's mark must be decided on the basis of the identification of goods [and services] set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which sales of the goods [and rendering of services] are directed. Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d Serial No. 85 1157, 1 identifie and the Appl to both confusio that the closely r The each of registra may em 1934-19 (TTAB 2 1993). S 777948 161-1162 ( d in its ap musi casse video digita “prod movie services in audio servic and captu icant argu be used in n.” Appea marks, a elated goo Examining which incl tion, and anate from 35 (TTAB 001); and ee, for exa Reg. Servi Fed. Cir. plication a cal sound ttes, com tapes fea l music uction an s; and mo the cited and vid es, namel video ser re; video e es that “it the same l Brief, p. s identifie ds and ser Attorney udes both serves to s a single 2012); In In re Albe mple, No. 3356 ces includ 2014). Ap s: recordin pact discs turing in download d distribu tion pictur registratio eo recordi y, video an vices, na diting; vid is necessa broad fiel 7, 12 TTA d, are use vices, in th submitted Applicant uggest th source. S re Infini rt Trostel & 779 for t e: televis - 9 - plicant’s g gs, namel , digital strumenta able from tion of t e film prod n are iden ng servic d film pro mely pho eo product ry that the d of media BVUE at d or inten e media fi copies of ’s goods/se at the goo ee In re R ty Broad. Sons Co he mark ion show oods and y, audio versatile l and vo the Int elevision uction; tified as: es; media duction; p tographic ion service marks ha to suppor 15. The r ded to be eld. over fifty rvices and ds and ser iseSmart Corp., 60 ., 29 USPQ INCREDIB producti services ar and vide discs an cal musi ernet” an shows an productio hotograph and vide s. ve more in t a claim ecord supp used in co third-part the servic vices are Inc., 104 U USPQ2d 2d 1783, 1 LE STEP on, motio e o d c; d d n ic o common of likelihoo orts a fin nnection y registrat es in the c of a kind SPQ2d 1 1214, 121 785-86 (T S n than d of ding with ions ited that 931, 7-18 TAB Serial No. 85777948 - 10 - picture film production AND audio recording, video production, and video editing; Reg. No. 3567085 for the mark China in a Box Services include: distribution of television programs for others, motion picture film production, television show production AND audio recording, film production, photographic and video capture and video editing; Reg. No. 3728124 for the mark BILLY MAJESTIC Services include: production and distribution of television shows and movies, production of independent motion pictures AND media production services namely, video and film production; Registration No. 4197931 for the mark Epiphany Media Group Services include: motion picture film production, production and distribution of television shows and movies AND film and video production, photographic and video capture, video editing and video production services; and Reg. No. 4234334 for the mark VIVA ELVIS Goods and Services include: audio cassettes, video cassettes, compact discs, digital versatile discs, video tapes featuring musical performances, musical sound recordings, downloadable musical sound recordings AND production of musical video recordings. Exhibits to Office Action dated February 28, 2013. In addition, one of the services in the cited registration is “film production.” Applicant’s “motion picture film production” is included in the broad phrase “film production.” As such, not only are Applicant’s goods and services closely related to the services in the cited registration, but they are also legally identical to some of the services. Accordingly, the second du Pont factor favors a finding of likelihood of confusion. Serial No. 85777948 - 11 - D. Conclusion Having considered all the evidence and argument on the relevant du Pont factors, whether discussed herein or not, we find that Applicant’s mark, ANDERSON WORLD MEDIA is likely to cause confusion with the mark in the cited registration, MIKE ANDERSON MEDIA. Decision: The refusal to register Applicant’s mark ANDERSON WORLD MEDIA is affirmed.