Story Foundry LLC

Trademark Trial and Appeal Board

Nov 6, 2017

No. 86909793 (T.T.A.B. Nov. 6, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 6, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Story Foundry LLC
_____

Serial No. 86909793
_____

Story Foundry LLC, pro se.

In Pyo Lee, Trademark Examining Attorney, Law Office 114,
K. Margaret Le, Managing Attorney.
_____

Before Bergsman, Gorowitz and Larkin,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Story Foundry LLC (“Applicant”) seeks registration on the Principal Register of
the mark THE PORCH (in standard characters) for “entertainment services, namely,
production of a motion picture, a series of motion pictures, and television programs
featuring comedy, drama, music, travel, adventure, and news; production of sound
and video recordings; providing a website featuring information specifically in the
Serial No. 86909793
- 2 -
field of music, travel and folklore in the nature of multimedia content, videos, movies,
images, text, photos, and audio content,” in Class 41.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark so resembles the registered mark FRONT PORCH
ENTERTAINMENT for the services set forth below as to be likely to cause confusion:
Entertainment services in the nature of creation and
development of concepts for television, television movies,
theatrical movies, video games, online games, and other
online entertainment; production of television program;
music production services; consulting services in the field
of entertainment, namely, movie production, made-for-
television movie production, production of television shows
and programming, video game and online game production;
producing educational content in the field of creation and
development of content and programming for educational
television, films, music, video games, online games, and
curriculums, in Class 41.2
Registrant disclaimed the exclusive right to use the word “Entertainment.”
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
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 issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973) (“du Pont”) (cited in B&B Hardware, Inc. v. Hargis Ind.,

1 Application Serial No. 86909793 was filed on February 16, 2016 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1052(a), based upon Applicant’s claim of first use anywhere on
February 18, 2015 and first use in commerce on May 27, 2015.
2 Registration No. 4127668, registered April 17, 2012.
Serial No. 86909793
- 3 -
Inc., 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015)); see also In re Majestic Distilling
Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each
du Pont factor that is relevant and for which there is evidence of record. See M2
Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir.
2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB
2015) (“While we have considered each factor for which we have evidence, we focus
our analysis on those factors we find to be relevant.”). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the goods or services. See In re Chatam Int’l Inc., 380 F.2d 1340,
71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The 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.”); see also In re
i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The
likelihood of confusion analysis considers all DuPont factors for which there is record
evidence but ‘may focus … on dispositive factors, such as similarity of the marks and
relatedness of the goods’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 303 F.3d
1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002).
A. The similarity or dissimilarity and nature of the services.
Applicant is seeking to register its mark for, inter alia, “entertainment services,
namely, production of a motion picture, a series of motion pictures, and television
programs featuring comedy, drama, music, travel, adventure, and news.
Serial No. 86909793
- 4 -
Registrant’s mark is registered for, inter alia, “entertainment services in the
nature of creation and development of concepts for television, television movies,
theatrical movies, video games, online games, and other online entertainment;
production of television program; music production services.”
These services are in part identical. Under this du Pont factor, the Trademark
Examining Attorney need not prove, and we need not find, similarity as to each and
every activity listed in the description of services. It is sufficient for a refusal based
on likelihood of confusion that relatedness is established for any activity encompassed
by the identification of services in a particular class in the application. Tuxedo
Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981); In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (“it is sufficient
for finding a likelihood of confusion if relatedness is established for any item
encompassed by the identification of goods within a particular class in the
application.”); In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015).
Applicant argues that the services are different because Applicant’s services
involve “media regarding music played on porches,” whereas Registrant’s services do
not have anything to do with stories or videos about music on porches.3 However, we
must consider the services as they are described in the application and registration.
See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110
USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Comput. Servs.
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion

33 Applicant’s Brief (4 TTABVUE 6-7).
Serial No. 86909793
- 5 -
that the question of registrability of an applicant's mark must be decided on the basis
of the identification of goods 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 the sales of goods are directed.”); Paula
Payne Prods. v. Johnson Publ’g Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973)
(“Trademark cases involving the issue of likelihood of confusion must be decided on
the basis of the respective descriptions of goods”).
Applicant also argues that Registrant is defunct and no longer rendering its
services.4 That argument and its corroborating evidence constitute an impermissible
collateral attack on the validity of the cited registration and this ex parte appeal is
not the proper forum for such a challenge. See In re Dixie Rests., 105 F.3d 1405, 41
USPQ2d 1531, 1534-35 (Fed. Cir. 1997); In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5
(TTAB 1992).
B. Established, likely-to-continue channels of trade.
Because the services described in the application and the cited registration are in
part identical, we must presume that the channels of trade and classes of purchasers
for those services are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d
1905, 1908 (Fed. Cir. 2012) (legally identical goods are presumed to travel in same
channels of trade to same class of purchasers); In re Yawata Iron & Steel Co., 403
F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods,
the channels of trade and classes of purchasers are considered to be the same); United

4 Applicant’s Brief (4 TTABVUE 3-6).
Serial No. 86909793
- 6 -
Glob. Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); Am. Lebanese
Syrian Associated Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022,
1028 (TTAB 2011).
C. The similarity or dissimilarity of the marks.
We now turn to the du Pont likelihood of confusion factor focusing on the similarity
or dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. du Pont, 177 USPQ at 567. In comparing the marks, we
are mindful that where, as here, the services are in part identical, the degree of
similarity necessary to find likelihood of confusion need not be as great as where there
is a recognizable disparity between the services. Coach Servs., Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); Century 21
Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.
Cir. 1992); Jansen Enters. Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007);
Schering-Plough HealthCare Prod. Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325
(TTAB 2007).
“The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach, 101 USPQ2d at 1721 (quoting Leading Jewelers Guild
Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1905 (TTAB 2007); San Fernando
Elec. Mfg. Co. v. JFD Elec. Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA
Serial No. 86909793
- 7 -
1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d
mem., 972 F.2d 1353 (Fed. Cir. 1992).
Applicant is seeking to register the mark THE PORCH and the mark in the cited
registration is FRONT PORCH ENTERTAINMENT. The marks are similar because
they share the word “Porch” and, to that extent, they are similar in appearance and
sound.
The word “Porch” is defined, inter alia, as “a covered platform, usually having a
separate roof, at an entrance to a building.”5 Because a porch is often at the entrance
or front of building, the terms “The Porch” and “Front Porch” in the marks have
similar, if not identical, meanings and engender the same commercial impression.
Applicant analogizes the marks at issue to THE ROCK and CASTLE ROCK
ENTERTAINMENT, arguing that the addition of the word “Castle” to the word
“Rock” significantly alters the meaning and commercial impression of the terms.6
However, the analogy does not work because, as noted above, a “Porch” is usually at
the front of a building and is, thus, a front porch whereas the word “Castle” has
nothing to do with the meaning of the word “Rock.” Therefore, “Porch” and “Front
Porch” have similar meanings and engender similar commercial impressions.

5 The American Heritage Dictionary of the English Language (ahdictionary.com)
attached to the June 9, 2016 Office Action (TSDR 16). See also the Merriam-Webster
Dictionary (merriam-webster.com) attached to the February 6, 2017 Office Action (TSDR 9)
(“a covered area adjoining an entrance to a building usually having a separate roof”).
Citations to the TSDR database are in the .pdf format.
6 Applicant’s Brief (4 TTABVUE 2-3).
Serial No. 86909793
- 8 -
Finally, the word “Entertainment” in the registered mark does not serve to
distinguish the two marks because it is at most merely descriptive when used in
conjunction with entertainment services, and has been disclaimed. It is well-settled
that disclaimed, descriptive matter may have less significance in likelihood of
confusion determinations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has
noted that the ‘descriptive component of a mark may be given little weight in reaching
a conclusion on the likelihood of confusion.’”) (quoting In re Nat’l Data Corp., 753 F.2d
1056, 224 USPQ 749, 752 (Fed. Cir. 1985)); Dixie Rests., 41 USPQ2d at 1533-34; In
re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is
often “less significant in creating the mark’s commercial impression”).
In view of the foregoing, we find that the marks are similar in their entireties in
terms of appearance, sound, connotation and commercial impression.
D. Analyzing the factors.

Because the marks are similar, the services are in part identical, and we must
presume that the services are provided through the same channels of trade, we find
that Applicant’s mark THE PORCH for “entertainment services, namely, production
of a motion picture, a series of motion pictures, and television programs featuring
comedy, drama, music, travel, adventure, and news; production of sound and video
recordings; providing a website featuring information specifically in the field of
music, travel and folklore in the nature of multimedia content, videos, movies,
Serial No. 86909793
- 9 -
images, text, photos, and audio content” is likely to cause confusion with the
registered mark FRONT PORCH ENTERTAINMENT for in part identical services.
Decision: The refusal to register Applicant’s mark THE PORCH is affirmed.