Professional Wrestling Hall of Fame

Trademark Trial and Appeal Board

Jun 23, 2004

No. 76118536 (T.T.A.B. Jun. 23, 2004)

Mailed:
June 23, 2004
Paper No. 17
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Professional Wrestling Hall of Fame
________
Serial No. 76118536
_______
Brett M. Hutton of Heslin Rothenberg Farley & Mesiti P.C.
for Professional Wrestling Hall of Fame.
Dezmona J. Mizelle, Trademark Examining Attorney, Law
Office 110 (Chris Pedersen, Managing Attorney).
_______
Before Quinn, Walters and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
On August 29, 2000, applicant filed the above-
captioned intent-to-use application seeking registration on
the Principal Register of the mark depicted below, for
goods identified in the application (as amended) as
“printed matter, namely magazines, books and pamphlets
about professional wrestling, memorabilia, namely souvenir
programs relating to professional wrestling, printed
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76118536
2
tickets and announcement cards relating to professional
wrestling, mounted or unmounted photographs, and posters,”
in Class 16,1 and “clothing, namely shirts, hats, jackets,
jerseys, T-shirts, shorts, pants, underwear, novelty gloves
and visors,” in Class 25.
Pursuant to the Trademark Examining Attorney’s requirement,
applicant has disclaimed the exclusive right to use
PROFESSIONAL WRESTLING HALL OF FAME apart from the mark as
shown.
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark on
the ground that applicant’s mark, as applied to applicant’s
goods, so resembles the mark depicted below,
1 This version of the Class 16 identification of goods was
suggested by the Trademark Examining Attorney in the final Office
action, and was adopted by applicant in its Request for
Reconsideration. However, it does not appear that the amendment
was ever entered into the record or into the Office’s automated
database. The Board has now entered the amendment.
Ser. No. 76118536
3
previously registered for “retail store services featuring
professional wrestling memorabilia, clothing and souvenirs”
in Class 35, as to be likely to cause confusion, to cause
mistake, or to deceive.2 See Trademark Act Section 2(d), 15
U.S.C. §1052(d). The cited registration, like applicant’s
application, includes a disclaimer of the exclusive right
to use PROFESSIONAL WRESTLING HALL OF FAME apart from the
mark as shown.
Neither the Trademark Examining Attorney nor the
applicant made any evidence of record during prosecution of
2 Registration No. 2499406, issued October 23, 2001. The
recitation of services in the registration also includes the
following Class 41 services: “museum and entertainment services,
namely, providing a hall of fame museum featuring professional
wrestling memorabilia and providing arena facilities for
wrestling events.” However, the Trademark Examining Attorney has
never cited these Class 41 services as a basis for the Section
2(d) refusal; the refusal is based solely on the Class 35
services recited in the registration.
Ser. No. 76118536
4
the application.3 Applicant and the Trademark Examining
Attorney filed main appeal briefs, but applicant did not
file a reply brief. No oral hearing was requested. We
reverse the refusal to register.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
likelihood of confusion factors set forth in In re E. I. du
Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In considering the evidence of record on these
factors, we keep in mind that “[t]he fundamental inquiry
mandated by §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).
We find that applicant’s Class 16 and Class 25 goods,
as identified in the application, are encompassed within
and legally identical to the “professional wrestling
memorabilia, clothing and souvenirs” which, according to
the registrant’s Class 35 recitation of services, are
3 The Trademark Examining Attorney’s contentions in her brief
regarding the existence, ownership and import of third-party
registrations for various “hall of fame” marks are not supported
by the evidentiary record.
Ser. No. 76118536
5
featured items in registrant’s retail stores. We therefore
find that applicant’s goods are related to registrant’s
Class 35 services. See, e.g., In re Hyper Shoppes (Ohio)
Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).
Applicant has not contended otherwise.
Neither applicant’s identification of goods nor
registrant’s recitation of services include any
restrictions or limitations as to trade channels or classes
of purchasers. Accordingly, we must presume that the
respective goods and services will be marketed in all
normal trade channels and to all normal classes of
purchasers for such goods and services. See In re Elbaum,
211 USPQ 639 (TTAB 1981). We find that retail stores such
as registrant’s are among the normal trade channels in
which applicant’s types of goods would be marketed. We
also find that applicant’s types of goods and registrant’s
type of retail store services would be offered to the same
classes of purchasers, i.e., to fans of professional
wrestling. Again, applicant has not contended otherwise.
We next must determine whether applicant’s mark and
the cited registered mark, when compared in their
entireties in terms of appearance, sound and connotation,
are similar or dissimilar in their overall commercial
impressions. The test is not whether the marks can be
Ser. No. 76118536
6
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 National Data Corp., 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985).
Applying these legal principles in the present case,
we find that applicant’s mark and the cited registered mark
are dissimilar rather than similar. The only point of
similarity between the marks is the presence in both marks
of the highly descriptive, if not generic, wording
PROFESSIONAL WRESTLING HALL OF FAME. Applicant’s and
registrant’s respective identifications of goods and
services use the words “professional wrestling” generically
to refer to the subject matter of the goods and services.
Ser. No. 76118536
7
We take judicial notice that the dictionary definition of
“Hall of Fame” includes, in pertinent part, “a group of
individuals in a particular category (as a sport) who have
been selected as particularly illustrious.” (Webster’s
Ninth New Collegiate Dictionary (1990) at 548.)4 Both
applicant and registrant have disclaimed the exclusive
right to use PROFESSIONAL WRESTLING HALL OF FAME apart from
their respective marks as shown.
Although we cannot ignore the presence of the wording
PROFESSIONAL WRESTLING HALL OF FAME in each of the marks,
neither can we agree with the Trademark Examining
Attorney’s contention that it is the dominant feature in
each of the marks, or her implicit contention that its
presence in each of the marks is dispositive. Rather, we
find that this wording is merely one feature of each of the
marks, to be considered along with the other features of
the respective marks in our determination of whether the
4 The Board may take judicial notice of dictionary definitions.
See, e.g., University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983); see also TBMP §704.12(a). This
dictionary also defines “Hall of Fame” as “a structure housing
memorials to famous or illustrious individuals usu. chosen by a
group of electors.” This definition is apropos of the Class 41
services recited in the registrant’s registration as “providing a
hall of fame museum featuring professional wrestling
memorabilia.” See supra at footnote 2.
Ser. No. 76118536
8
marks, when viewed in their entireties, are similar or
dissimilar.
In terms of appearance, we find that the marks are
similar to the extent that they both include the wording
PROFESSIONAL WRESTLING HALL OF FAME, but that they
otherwise are quite dissimilar. Indeed, even as to this
wording, these special form marks are dissimilar in the
manner in which the wording is displayed. Applicant’s mark
also looks different from registrant’s mark in that
applicant’s mark prominently and centrally features the
letters PWHF in large, bold letters. The design features
of the respective marks likewise do not look the same in
any respect. Viewed in their entireties in terms of
appearance, we find that the marks are dissimilar rather
than similar.
In terms of sound, we find that the marks are similar
to the extent that the words PROFESSIONAL WRESTLING HALL OF
FAME would be pronounced in each mark. However, they are
dissimilar to the extent that the letters PWHF would be
pronounced in applicant’s mark, but not in registrant’s
mark. Viewed in their entireties in terms of sound, we
find that the marks are more similar than dissimilar.
In terms of connotation, we find that the marks are
similar, both connoting a professional wrestling hall of
Ser. No. 76118536
9
fame. The letters PWHF, as they appear in applicant’s
mark, would readily be understood as an acronym for
“professional wrestling hall of fame,” and they therefore
do not distinguish applicant’s mark in terms of
connotation. Likewise, the design element of the
registered mark depicting a wrestler holding a belt merely
reinforces the wording in the mark, and does not
distinguish the marks in terms of connotation. Viewed in
their entireties in terms of connotation, we find that the
marks are more similar than dissimilar.
However, as noted above, the sole point of similarity
between the marks in terms of appearance, sound and
connotation is the presence in both marks of the highly
descriptive wording PROFESSIONAL WRESTLING HALL OF FAME.
That the marks share this wording is not a sufficient basis
for finding that the marks, when viewed in their
entireties, are similar rather than dissimilar. Rather, we
find that the overall visual dissimilarity between the
marks, arising from the presence of the letters PWHF in
applicant’s mark and the distinctly different design
elements of the respective marks, makes the marks more
dissimilar than similar in terms of their overall
commercial impression. It is settled that where the only
commonality between the marks is highly descriptive or
Ser. No. 76118536
10
generic wording, confusion can be avoided if the other
elements of the marks are sufficiently dissimilar. See,
e.g., In re Bed & Breakfast Registry, 791 F.2d 157, 229
USPQ 818 (Fed. Cir. 1986). We find that this is such a
case.5 The marks, when viewed in their entireties, are
sufficiently dissimilar that confusion is not likely to
result from their use on or in connection with these goods
and services. To find otherwise would require an
impermissible dissection of the marks, and would accord
inordinate significance to the disclaimed wording in each
mark.
In summary, notwithstanding the relatedness of the
respective goods and services and the overlapping trade
channels and classes of purchasers for those goods and
services, we find, for the reasons discussed above, that
when the marks are viewed in their entireties, applicant’s
mark is not sufficiently similar to the cited registered
mark to support a finding of likelihood of confusion. Cf.
5 The Trademark Examining Attorney’s attempt to distinguish In re
Bed & Breakfast Registry from the present case by arguing that
both of the marks in In re Bed & Breakfast Registry had
additional wording, whereas in this case only applicant’s mark
has additional wording (i.e., the letters PWHC), is not
persuasive. The argument accords too little weight to the visual
prominence of the stylized letters PWHF in applicant’s mark, and
fails to take into account the significant differences in the
design features of the respective marks and the differences in
the stylization of the wording itself in each mark.
Ser. No. 76118536
11
Kellogg Co. v. Pack’Em Enterprises Inc., 14 USPQ2d 1545
(TTAB 1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir.
1991).
Decision: The refusal to register is reversed.