Olympia Entertainment, Inc.

Trademark Trial and Appeal Board

Mar 28, 2008

No. 76277821 (T.T.A.B. Mar. 28, 2008)

Mailed: March 28, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Olympia Entertainment, Inc.
___________

Serial No. 76277821
___________

Brian B. Darville and Jeffrey S. Molinoff of Oblon, Spivak,
McClelland, Maier & Neustadt for Olympia Entertainment, Inc.

Karen Bracey, Trademark Examining Attorney, Law Office 116
(Michael W. Baird, Managing Attorney).
____________

Before Walters, Bucher and Cataldo, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

Olympia Entertainment, Inc. has filed an application to
register the standard character mark FOX THEATRE on the
Principal Register for “entertainment services, namely, the
presentation and production of live plays, musicals, live
music concerts, educational events and theater presentations
of speakers,” in International Class 41.1 The application

1 Serial No. 76277821, filed June 28, 2001, based on use of the mark in
commerce, alleging first use and use in commerce as of November 19,
1988. The application is subject to stated concurrent use exceptions.
The application will proceed with the concurrent use claim only if
applicant ultimately prevails in this appeal.
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 76277821

2
includes a disclaimer of THEATRE apart from the mark as
shown. The examining attorney has issued a final refusal
to register under Section 2(d) of the Trademark Act, 15
U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the previously registered marks shown below, all
owned by Twentieth Century Fox Film Corporation, that, if
used on or in connection with applicant’s services, it would
be likely to cause confusion or mistake or to deceive.
Registration No. Mark Goods/Services
1485074

Registered April 19,
1988; Sections 8 and
15 affidavits accepted
and acknowledged
FOX TELEVISION
STATIONS
cinematographic films;
pre-recorded video
tapes, cassettes, In
International Class 9;
television and cable
broadcasting services,
in International Class
38; entertainment
services, namely
production and
distribution of motion
pictures and video
tapes; and providing
film and tape
entertainment for
viewing through the
media of television,
cinema and other
media, in
International Class 41

TELEVISION STATIONS is
disclaimed apart from
the mark as a whole
1485075

Registered April 19,
1988; Sections 8 and
15 affidavits accepted
and acknowledged

television and cable
broadcasting services,
in International Class
38; entertainment
services, namely
providing film and
tape entertainment for
viewing through the
media of television,
cinema and other
media, in
International Class 41

Serial No. 76277821

3
1783915

Registered 7/27/1993;
Renewed; Section 15
affidavit filed and
acknowledged
FOXVIDEO motion picture films;
pre-recorded video
tapes, videocassettes,
videodiscs, tapes and
cassettes for
reproducing
audio/visual material
on a variety of
subjects, in
International Class 9
1784507

Registered 7/27/1993;
Renewed; Section 15
affidavit filed and
acknowledged
FOXVIDEO entertainment services
in the form of
production and
distribution of pre-
recorded
videocassettes of
motion picture films
and television
programs, in
International Class 41
1808084

Registered 11/30/1993;
Renewed; Section 15
affidavit filed and
acknowledged

Entertainment
services; namely,
production and
distribution of
theatrical motion
picture films and
television programs;
production and
distribution for
others in the field of
filmed and tape
entertainment for
viewing through
television, cinema and
other media, in
International Class 41
2087047

Registered 8/12/1997;
Renewed; Section 15
affidavit filed and
acknowledged

production and
distribution of motion
picture films;
production of pre-
recorded video tapes,
pre-recorded video
cassettes, pre-
recorded videodiscs,
all featuring live-
action and animated
entertainment, in
International Class 41

PICTURES is disclaimed
apart from the mark as
a whole.
2513019

Registered 11/27/2001

FOX FAMILY Entertainment services
in the nature of
production and
distribution of
children's television
programs and motion
picture films,
production of pre-
Serial No. 76277821

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recorded video tapes,
video cassettes, video
discs, audio tapes,
audio cassettes, audio
discs and CD-ROMS;
entertainment services
in the nature of live
musical, dramatic and
comedic performances;
providing on-line
information in the
field of motion
picture film,
television, video,
games, contests and
children's
entertainment via a
global communications
network, in
International Class 41
2482846

Registered 8/28/2001

Entertainment services
in the nature of
production and
distribution of
children's television
programs and motion
picture films,
production of pre-
recorded video tapes,
video cassettes, video
discs, audio tapes,
audio cassettes, audio
discs and CD-ROMS;
entertainment services
in the nature of live
musical, dramatic and
comedic performances;
providing on-line
information in the
field of motion
picture film,
television, video
games, contests and
children's
entertainment via a
global communications
network, in
International Class 41

Applicant has appealed. Both applicant and the
examining attorney have filed briefs.
As a preliminary matter, applicant has objected to
evidence submitted by the examining attorney with her denial
Serial No. 76277821

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of applicant’s request for reconsideration. Applicant
characterizes the submission of evidence at this time as
piece-meal prosecution that leaves applicant at a
disadvantage. As the examining attorney points out,
evidence directed to the issues raised in the request for
reconsideration is proper. We agree with the examining
attorney that the evidence submitted does address the issues
raised in the request for reconsideration and, therefore, it
is properly of record in this appeal and has been
considered.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E. I. du Pont 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 Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and 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
Serial No. 76277821

6
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re
Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein.
We turn, first, to a determination of whether
applicant’s mark and the registered marks, when viewed in
their entireties, are similar in terms of appearance, sound,
connotation and commercial impression. 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
impressions that confusion as to the source of the goods or
services 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
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
We note, first, the examining attorney’s argument that
registrant’s FOX marks are famous and should be entitled to
Serial No. 76277821

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a broad scope of protection. As proof of this allegation,
she states that several of the registrations owned by the
cited registrant have been active for many years, for
example, registration no. 0199107 issued in 1925. Clearly,
the mere fact of a mark residing on the register for a long
period of time does not establish that it is famous.
Therefore, we do not conclude in this case that registrant’s
marks are famous.
Nor do we conclude, as urged by applicant, that FOX is
a weak term in the respective marks and, thus, the cited
registrations are entitled to only a limited scope of
protection. Applicant submitted third-party registrations2
and Internet evidence3 of FOX-formative marks for
entertainment services and argues that the additional
wording in its mark is sufficient to distinguish it from the
cited registered marks.4 The ten FOX-formative marks and

2 Third-party registrations in the record include “FOX PHOTOGRAPHY” and
design for photography services; EFOX.NET for an Internet website
containing “sensual” pictures of women; FOX PAINTBALL for entertainment
and recreation services pertaining to paintball games; FOXMIND for
interactive online games; FOXWELL for live musical performances; GRAYFOX
PRODUCTIONS for producing video discs and cassettes; FOXY LADY for
exotic dance performances; FOXX for live country music performances;
FOXFIRE for live musical performances; FOXES.COM for adult entertainment
services; and FOX FORCE 005 for live vocal and visual performances by a
musical group that incorporates its image with pre-recorded music.

3 Excerpts from Internet websites in the record include uses of the
previously referenced third-party registrations: “Grayfox” productions;
“Fox Paintball”; “FoxMind” Games; “Foxes.com,” a nude model website;
“Fox Force 005.” and “Fox Photography.” An additional website also
excerpted shows “Foxwoods” resort and related services.

4 Applicant also submitted Internet evidence and third-party
registrations for entertainment services identified by the same or
similar non-FOX-formative marks owned by different parties as evidence
Serial No. 76277821

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uses in the third-party registrations and Internet evidence
are distinguishable from the case before us by the
additional matter in those marks and/or by the nature of the
services identified. Moreover, each case must be decided on
its own facts. In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564 (Fed.Cir. 2001).
Applicant argues that the marks are distinguished by
the “striking” design elements in several of the cited
registered marks and by the additional wording in the marks.
However, we agree with the examining attorney that the marks
are substantially similar because the first and dominant
term in each mark is FOX; the additional wording in the
marks is generic or highly descriptive; and the design
elements in the registered marks are minimal and clearly not
dominant. With respect to applicant’s mark, the disclaimed
term THEATRE is clearly merely descriptive, if not generic,
in connection with the identified entertainment services;
whereas, FOX would appear to be an arbitrary term in
connection therewith.
With respect to the cited registrations, we consider
each mark individually. The standard character mark FOX
TELEVISION STATIONS in the ‘074 registration includes a

that “consumers have become accustomed to the use of the same or similar
marks by different companies in the entertainment industry” (brief, p.
15). We do not find this evidence to be probative of practices in the
entertainment industry or, specifically, in relation to the marks in the
case before us.

Serial No. 76277821

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disclaimer of TELEVISION STATIONS and this phrase is clearly
merely descriptive of the identified services that include
television cable and broadcasting services; thus, FOX is the
dominant portion of this mark.
The design elements in the FOX marks in the ‘075 and
‘084 registrations appear to be stylized spotlights that
highlight the term FOX; thus, the design elements reinforce
the dominance of the word portion of these two marks, i.e.,
FOX.
The standard character mark FOXVIDEO in the ‘915 and
‘507 registrations includes, respectively, pre-recorded
video tapes and production and distribution of pre-recorded
video tapes; thus, the term VIDEO in this telescoped mark is
merely descriptive. While the two portions of the mark are
telescoped into a single word, both portions are actual
words that retain their separate identity as recognizable
words. We find FOX to be the dominant portion of this mark
as well.
The mark in the ‘047 registration includes the words
FOX PICTURES in a design in which the words appear to be the
ends of boards or beams being lifted by a crane with what
appears to be a movie camera filming the words. While the
design element is distinctive, we find that the words
predominate because, not only are they centered in the

Serial No. 76277821

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design and the focus of the camera, but, it is the wording
FOX or FOX PICTURES that would be used by consumers to refer
to registrant’s services. Thus, the wording would make a
greater impression on purchasers and is the portion that is
more likely to be remembered as the dominant and source-
signifying portion of the registered mark. In re Dakin’s
Miniatures, Inc., 59 USPQ2d 1593 (TTAB 2001) (“words are
normally accorded greater weight because they would be used
by purchasers to request the goods”). See also, e.g., In re
Appetito Provisions Co., 3 USPQ2d 1553 (1987). Considering
the word portion of the mark, the word PICTURES is merely
descriptive in connection with the identified production and
distribution of motion picture films and it is disclaimed.
Thus, we find that FOX is the dominant portion of this mark.
Similarly, we find FOX to be the dominant portion of
the mark FOX FAMILY in the ‘019 registration and the mark
FOX FAMILY CHANNEL and design in the ‘846 registration for
the respective entertainment services which include
television programming and movies for children. FAMILY and
FAMILY CHANNEL are suggestive in connection with these
services; whereas the FOX portion of these marks is the
first and arbitrary term in each mark. The design element
in the ‘846 registration consists of a circular background
carrier and slightly stylized lettering in which the word
FOX appears larger that the other wording in the mark.
Serial No. 76277821

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Considering the marks in their entireties, we find that
the identity of the arbitrary term FOX followed by
descriptive wording in applicant’s mark and the registered
marks outweighs the dissimilarities among these marks. We
conclude that applicant’s mark is substantially similar to
each of the marks in the cited registrations.
We are not persuaded otherwise by applicant’s
contention that the spelling of “theater” as “theatre” in
its mark distinguishes its mark from the registered marks
because it “brings to mind old-fashioned theatres in London,
as opposed to twentieth century American-style movie
theaters” (brief, p. 12). Not only has applicant submitted
no evidence in support of this position, but also the
examining attorney submitted a definition from The American
Heritage Dictionary of the English Language, 3rd ed. 1992,
of “theater” as “theater or theatre. 1. A building, room,
or outdoor structure for the presentation of plays, films,
or other dramatic performances.” Thus, both spellings would
appear to be acceptable and common in American English.
Turning to consider the goods and services involved in
this case, we note that the question of likelihood of
confusion must be determined based on an analysis of the
goods or services recited in applicant’s application vis-à-
vis the goods or services recited in the registration,
rather than what the evidence shows the goods or services
Serial No. 76277821

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actually are. Canadian Imperial Bank v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987). See
also, Octocom Systems, Inc. v. Houston Computer Services,
Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1992); and The
Chicago Corp. v. North American Chicago Corp., 20 USPQ2d
1715 (TTAB 1991). Further, it is a general rule that goods
or services need not be identical or even competitive in
order to support a finding of likelihood of confusion.
Rather, it is enough that goods or services are related in
some manner or that some circumstances surrounding their
marketing are such that they would be likely to be seen by
the same persons under circumstances which could give rise,
because of the marks used therewith, to a mistaken belief
that they originate from or are in some way associated with
the same producer or that there is an association between
the producers of each parties’ goods or services. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and cases cited
therein; and Time Warner Entertainment Co. v. Jones, 65
USPQ2d 1650, 1661 (TTAB 2002).
The examining attorney notes that applicant’s services
are live entertainment services and registrant’s services
include primarily movies, television programs and
broadcasting and prerecorded entertainment. She states that
such services are closely related and submitted evidence in
Serial No. 76277821

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this regard.5 The examining attorney also submitted
excerpts from several Internet websites in support of her
contention “that production companies often provide live
entertainment”6 (denial of reconsideration, p. 4).
Applicant contends that the refusal should be reversed
as to registration nos. 2482846 and 2513019 because the
marks are different and as to the other cited registrations
because the record contains no evidence that the services
recited in the cited registrations are related to live
theatrical performances.
We consider the services in the application vis-à-vis
the goods and services in each of the cited registrations.
We begin with the ‘019 registration for the mark FOX FAMILY
and the ‘846 registration for the mark FOX FAMILY CHANNEL
and design. Both of these registrations include
“entertainment services in the nature of live musical,
dramatic and comedic performances,” which are essentially
identical to applicant’s identified services, i.e.,
“entertainment services, namely, presentation and production

5 In the final refusal of December 7, 2006, the examining attorney states
that “MGM and Walt Disney are certainly well known for making movies and
other forms of entertainment” and submitted excerpts from the Walt
Disney website referring to the Walt Disney Concert Hall and excerpts
from the MGM Grand website, the MGM movies website and the MGM Mirage
website, although none of the MGM sites refer to live entertainment.

6 The excerpted websites include references to live entertainment by
Paramount, Warner Bros., and Universal. While applicant correctly notes
that the Paramount excerpt refers to its live entertainment theater
under a different mark, “The Sherry Lansing Theater,” the site clearly
indicates its relationship to Paramount.

Serial No. 76277821

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of live plays, musicals, live music concerts, educational
events and theater presentations of speakers.”
The ‘074 registration (FOX TELEVISION STATIONS) and the
‘075 registration (FOX and searchlight design) both include
television and cable broadcasting services. Live
performances are often broadcast on network and cable
television. Therefore, we find these services to be
sufficiently related that consumers viewing applicant’s FOX
THEATRE live performance on registrant’s FOX television
network are likely to believe that these services, offered
under confusingly similar marks, as discussed above, emanate
from the same or a related source.
The ‘074 registration (FOX TELEVISION STATIONS), the
‘084 registration (FOX and searchlight design), the ‘507
registration (FOXVIDEO), and the ‘047 registration (FOX
PICTURES and design) all include the production and
distribution of motion picture films. Additionally, ‘074
and ‘047 include the production and distribution of video
tapes/cassettes; ‘507 and ‘084 include the production and
distribution of television programs; ‘074 and ‘915
(FOXVIDEO) include motion picture films and prerecorded
video tapes/cassettes/discs; and ‘074, ‘084 and ‘075 (FOX
and searchlight design) include “providing film and tape
entertainment for viewing through the media of television,
cinema and other media.” In other words, these
Serial No. 76277821

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registrations include goods and services pertaining to
production and distribution of motion pictures and
television programs. The record establishes that these
types of entities also offer live theater performances.
Moreover, as discussed above, motion pictures and television
programs often feature live theater performances.
Therefore, we find applicant’s services are closely related
to the motion picture and television goods and services in
these cited registrations.
Regarding the conditions under which and buyers to whom
sales are made, we note that because there are no
restrictions in the respective identifications of goods and
services, the relevant purchasers of both applicant's
services and registrant’s goods and services are members of
the general public who are likely to exercise no more than
ordinary care in purchasing entertainment goods and
services.
Applicant cites the Supreme Court decision in U.S. v.
Paramount Pictures, 334 U.S. 131 (1948), and alleges that
this decision held that major movie production studios could
no longer own or have interests in chains of theaters where
films would be shown. Applicant acknowledges that its
theater was originally owned by the cited registrant but
claims that confusion is unlikely because its theater has
been independently owned and operated for over fifty years.
Serial No. 76277821

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We find that applicant has overstated the holding about
joint ownership of theaters by motion picture studios in
that case. Rather, the Court made the following statements:
To the extent that these acquisitions were the
fruits of monopolistic practices or restraints of
trade, they should be divested.
(334 U.S. at 152)

. . .

It seems, however, that some of the cases of joint
ownership do not fall into any of the categories
we have listed. Some apparently involve no more
than innocent investments by those who are not
actual or potential operators. If in such cases
the acquisition was not improperly used in
furtherance of the conspiracy, its retention by
defendants would be justified absent a finding
that no monopoly resulted. … In short, we see no
reason to place a ban on this type of ownership,
at least so long as theatre ownership by the five
majors is not prohibited.
(334 U.S. at 153)

Particular issues of divestiture or continued ownership were
then decided by the District Court on remand. United States
v. Paramount Pictures, 85 F. Supp. 881, 82 USPQ 291
(S.D.N.Y. 1949).
However, we agree with the examining attorney that the
average consumer of these entertainment goods and services
is not likely to be aware of, or understand, this Supreme
Court decision and will be more likely to believe,
mistakenly, that an affiliation with registrant exists.
Applicant also argues that despite twenty years of
coexistence, there have been no known instances of actual
confusion. While a factor to be considered, the absence or
Serial No. 76277821

17
presence of actual confusion is of little probative value
where we have little evidence pertaining to the nature and
extent of the use by applicant and registrant. Moreover,
the test under Section 2(d) is not actual confusion but
likelihood of confusion. See In re Majestic Distilling Co.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003)
(“uncorroborated statements of no known instances of actual
confusion are of little evidentiary value.”). See also, In
re Kangaroos U.S.A., 223 USPQ 1025 (TTAB 1984); and In re
General Motors Corp., 23 USPQ2d 1465 (TTAB 1992).
When we consider the record and the relevant likelihood
of confusion factors, and all of applicant's arguments
relating thereto, including those arguments not specifically
addressed herein, we conclude that in view of the
substantial similarity in the commercial impressions of
applicant’s mark and each of the marks in the cited
registrations, their contemporaneous use on the same and/or
closely related goods and services in each of the cited
registrations is likely to cause confusion as to the source
or sponsorship of such goods and services.
Decision: The refusal under Section 2(d) of the Act is
affirmed.7

7 Should either of cited registration nos. 2513019 or 2482846 be
cancelled as of a date prior to the date of this decision for failure to
file an affidavit under Section 8 of the Trademark Act, 15 U.S.C. §1058,
the discussion regarding these registrations will be moot and the
decision should be considered vacated with respect to these two
Serial No. 76277821

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registrations. However, the result remains the same, i.e., registration
to applicant is refused.