The Worlds Pageants, LLC and Camila Productions Ltd.v.Miss G-String International LLC

Trademark Trial and Appeal Board

Aug 3, 2016

No. 91200183 (T.T.A.B. Aug. 3, 2016)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: August 3, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

The Worlds Pageants, LLC and Camila Productions Ltd.
v.
Miss G-String International LLC
_____

Opposition No. 91200183
_____

Thomas T. Aquilla of Aquilla Patents & Marks, PLLC
for The Worlds Pageants, LLC and Camila Productions, Ltd.

Luke Lirot of Luke Charles Lirot, P.A.
for Miss G-String International LLC.
_____

Notice of Correction
By the Board:
On July 29, 2016, the Board mailed a final decision in this proceeding.
The decision was inadvertently marked precedential. In the caption and on page 2,
Opposer, The Worlds Pageants LLC was referred to as “The World Pageants, LLC.”
The language “the sixth affirmative defense as two new defenses lack of standing and
unclean hands, which are in lines 5-6 on page 3 were inadvertently highlighted.
Opposition No. 91200183

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In view thereof, the decision is hereby corrected to properly indicate that the
decision is not precedential, to correct the spelling of Opposer’s name in the caption
and on page 2 of the decision, and to delete the highlighting on page 3 of the decision.
Attached hereto is a corrected form of the July 29, 2016 decision.
The time for filing an appeal or commencing a civil action by either party
regarding the Board’s decision continues to run from the mailing date of the July 29,
2016 decision. See Trademark Rule 2.145(d)(1), 37 C.F.R. § 2.145(d)(1).

Mailed: July 29, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

The Worlds Pageants, LLC and Camila Productions Ltd.
v.
Miss G-String International LLC
_____

Opposition No. 91200183
_____

Thomas T. Aquilla of Aquilla Patents & Marks, PLLC
for The Worlds Pageants, LLC and Camila Productions, Ltd.

Luke Lirot of Luke Charles Lirot, P.A.
for Miss G-String International LLC.
_____

Before Lykos, Gorowitz, and Pologeorgis, Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:

Miss G-String International LLC (“Applicant”) filed an application to register the
mark MISS G-STRING INTERNATIONAL & design, as illustrated below:

for the following services:
Opposition No. 91200183

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Entertainment services in the nature of conducting beauty
pageants and talent contest in International Class 41.1
The following description of the mark was entered in the application: “The mark
consists of the stylized wording ‘MISS G-STRING INTERNATIONAL’ with the
wording ‘G-STRING’ in yellow gold. The word ‘MISS’ in white is above the word ‘G-
STRING’ and the wor[d] ‘INTERNATIONAL’ in white is below ‘G-STRING’. All of the
wording is outlined in black. All of the words are superimposed on a woman's pink
undergarment.” The colors white, yellow gold, pink and black are claimed as a feature
of the mark. The phrase “G-STRING INTERNATIONAL” has been disclaimed.
The Worlds Pageants, LLC (“Opposer”)2 opposed the application on the ground of
likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d),
Specifically, Opposer alleges prior use and registration of the mark MISS NUDE
INTERNATIONAL (typed form)3 for “entertainment services in the nature of

1 Application Serial No. 77753000 was filed on June 5, 2009, based upon Applicant’s
allegations of first use anywhere and first use in commerce on or in connection with all of the
services since at least as early as April 29, 2009.
2 By order dated June 29, 2013, the Board acknowledged the assignment of Registration Nos.
2037202 and 3039826 from The Worlds Pageants, LLC to Camila Productions, Ltd. and
joined Camila Productions as a party plaintiff. Hereinafter The Worlds Pageants, LLC and
Camila Productions, Ltd. are hereinafter jointly referred to as “Opposer.”
3 It is noted that prior to November 2, 2003, “standard character” drawings were known as
“typed” drawings. A typed mark is the legal equivalent of a standard character mark. In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012) (“until 2003,
‘standard character’ marks formerly were known as ‘typed’ marks, but the preferred
nomenclature was changed in 2003 to conform to the Madrid Protocol … we do not see
anything in the 2003 amendments that substantively alters our interpretation of the scope
of such marks”). See also Trademark Manual of Examining Procedure (TMEP) § 807.03(i)
(April 2016).

Opposition No. 91200183

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promoting and conducting beauty pageants” in International Class 41. The phrase
“NUDE INTERNATIONAL” has been disclaimed.
Applicant filed an answer denying all salient allegations in the notice of opposition
and asserted six “affirmative defenses.”4 Applicant filed an amended answer on July
16, 2012 and repleaded the sixth affirmative defense as two new affirmative defenses:
lack of standing and unclean hands. The issue of standing will be discussed below.
Applicant has not established that Opposer has unclean hands and thus, this
affirmative defense is dismissed.
On July 10, 2012, Applicant’s principal, William Eadie filed an action titled
“Petition to Cancel”, in which Mr. Eadie requested that ownership of Opposer’s
Registration Nos. 2037202 and 3039826 be transferred to Mr. Eadie. The proceeding,
Cancellation No. 92055838, was deemed to be analogous to a counterclaim and was
consolidated with the current proceeding. Board Order dated August 24, 2012 at 19
TTABVUE. Mr. Eadie subsequently filed two amended petitions, the last of which
was filed on July 18, 2013. Third Amended Petition to Cancel at 31 TTABVUE. Mr.
Eadie alleged that he acquired, by assignment, a judgment against Opposer’s
predecessors, which under Florida law entitled him to acquire the trademark
registrations at issue in the petition to cancel. However, since the Board has no

4 Applicant’s first affirmative defense was failure to plead a claim. In an order dated June 21,
2012, the Board held that Opposer had properly pleaded a claim under Section 2(d). 14
TTABVUE 2. On the basis thereof, we deem Applicant’s first affirmative defense of failure to
state a claim as moot. The Board also found that four of the six affirmative defenses alleged
were actually amplifications of denials in the notice of opposition. Id. at 8. With respect to
the sixth affirmative defense, the Board found that Applicant had interwoven several
arguments, only some of which were properly before the Board. Id. at 15. Applicant was
granted leave to replead the sixth affirmative defense. Id.
Opposition No. 91200183

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jurisdiction to adjudicate issues arising under Florida law, the petition was dismissed
with prejudice. See Board Order dated November 27, 2013 at 35 TTABVUE. This
determination is germane to the current proceeding since Applicant is asserting its
ownership of the registrations at issue in the cancellation action.
The Record.
The record includes the pleadings, and by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of the opposed application and the two registrations that
were the subject of the counterclaim. In addition, the parties introduced the following
evidence:
Opposer’s evidence:
1. Copies of unauthenticated documents purporting to be
Opposer’s advertising – Exhibit B to Opposer’s Notice of
Reliance, 50 TTABVUE 4-11;
2. Copies of documents from the USPTO Assignment
Database– Exhibit C to Opposer’s Notice of Reliance, 50
TTABVUE 12-28;
3. Copies of corporate filings with the Florida Secretary of
State – Exhibit D to Opposer’s Notice of Reliance, 50
TTABVUE 31-40;
4. Copies of unauthenticated documents purporting to be
Opposer’s and Applicant’s advertising – Exhibit G to
Opposer’s Notice of Reliance, 50 TTABVUE 41-48;
5. Copy of an unauthenticated document purporting to be
Applicant’s advertising – Exhibit H1 to Opposer’s
Notice of Reliance, 50 TTABVUE 49;
6. Copies of articles from the internet and
unauthenticated documents - Exhibit H2 to Opposer’s
Notice of Reliance, 50 TTABVUE 50-56; and
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7. Copy of testimony transcript from opposition by Miss
World Limited against Opposer, (Cardoso Test.), 50
TTABVUE 60-106.5

Applicant’s evidence:
• Testimony of William Eadie, Managing Member of
Applicant, (Eadie Test.), 56 TTABVUE.
Standing.
By bringing Cancellation No. 92055838 to transfer ownership of Registration Nos.
2037202 and 3039826 to Mr. Eadie, which action was consolidated with the current
action, pleaded registration No. 2037202 was made of record in this action. However,
the petition, which was based on a monetary judgment acquired by assignment, was
filed against R&D Promotions, Inc., the judgment debtor. As discussed above, the
Board has no jurisdiction to adjudicate issues arising under Florida law. Accordingly,
the petition was dismissed with prejudice. November 27, 2013 Board Order at 35
TTABVUE. Therefore, Applicant cannot attack Opposer’s title based on the purported
putative assignment of Opposer’s registrations to Mr. Eadie.
Applicant then argues that the assignment from The Worlds Pageants, LLC to
Camila Productions Ltd. was invalid because “Cardoso’s third assignment document
reveals it is temporally and factually false.” Applicant’s Brief, 68 TTABVUE 22. The
third assignment” is from The Worlds Pageants, LLC, a Florida limited liability

5 The transcript is testimony from an unrelated opposition between Opposer and a third party
who is not in privity with Applicant. As such, it cannot be introduced by notice of reliance.
However, since Applicant has relied on the testimony, we consider it to be of record by
stipulation of the parties. See Trademark Trial and Appeal Board Manual of Procedures
(TBMP) § 704.13 (2016) (“[a] testimony deposition from another proceeding may also be made
of record in a Board proceeding by stipulation of the parties approved by the Board.”).
Opposition No. 91200183

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company to Camila Productions, LLC, a New Hampshire limited liability company.6
Applicant argues that at the time of the assignment, the registration was owned by
The Worlds Pageants LLC a New Hampshire limited liability company and that the
Florida limited liability company was no longer in existence. See Applicant’s Brief, 68
TTABVUE, 8-9. Contrary to Applicant’s assertion, the Florida limited liability
company was an active company at all relevant times: September 19, 2012 (the date
the assignment document was executed) and December 13, 2012 (the date the
assignment document was recorded). Board Order dated June 29, 2013, 30
TTABVVUE 3 fn.2. Moreover, the record does not reflect the existence of a New
Hampshire limited liability company named The Worlds Pageants LLC.
Further, Opposer has made of record by notice of reliance the assignment records
from the USPTO database establishing that its registration is owned by Opposer.
Accordingly, Opposer has established its standing. Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
Priority.
Opposer’s ownership of pleaded Registration No. 2037202 removes priority as an
issue with respect to entertainment services in the nature of promoting and
conducting beauty pageants. See Top Tobacco LP v. North Atlantic Operating Co., 101
USPQ2d 1163, 1169 (TTAB 2011) (citing King Candy, Inc. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 82 USPQ 108 (CCPA 1974)).

6 See fn. 2.
Opposition No. 91200183

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Likelihood of Confusion.
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973); see
also Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Co., Inc., 315
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). 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 Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976); see also In re Dixie Rests. Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
1. Similarity or dissimilarity of the services, channels of trade and
class of purchasers.
We start our analysis with the second and third du Pont factors and look at the
relationship between the services at issue, the channels of trade in which they travel
and the class of purchasers. When determining the relationship between the 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.
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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 1157, 1161-62 (Fed. Cir. 2014).
Applicant’s services are identified as: “entertainment services in the nature of
conducting beauty pageants and talent contests” and Opposer’s services are identified
as: “entertainment services in the nature of promoting and conducting beauty
pageants.” As identified, the services are identical. In addition, there are no
restrictions in either the application or the registration as to the channels of trade in
which Applicant’s and Opposer’s services are rendered.
“It is well established that absent restrictions in the application and registration,
[identical] goods and services are presumed to travel in the same channels of trade to
the same class of purchasers.” In re Viterra Inc., 101 USPQ2d at 1908. Because the
services are identical, they are presumed to travel in the same channels of trade to
the same classes of purchasers.
Accordingly, the second and third du Pont factors favor a finding of likelihood of
confusion. However, despite this, we find that confusion is not likely because of the
crucial differences in the marks, which is discussed below.

Opposition No. 91200183

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2. Similarity or dissimilarity of the marks.
The marks at issue are: and MISS NUDE
INTERNATIONAL (typed form), which we compare “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imps., 73
USPQ2d at 1691. “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 Servs., Inc., 688 F3d 1356, 101 USPQ2d 1713,
1721 (Fed. Cir. 2012) (emphasis added).
While “the similarity or dissimilarity of the marks is determined based on the
marks in their entireties … there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular feature of a mark, provided
the ultimate conclusion rests on a consideration of the marks in their entireties.” In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In this
case, the dominant portion of Applicant’s mark is the word “G-STRING,” which is
depicted in gold script and is larger than the other words in the mark; and the
depiction of a pink G-string.
The other words in the mark, which are the only common elements between
Applicant’s and Opposer’s marks, “MISS” and “INTERNATIONAL,” are positioned
above and below the word “G-STRING” and are very small in comparison.
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For the reasons discussed above, we find that the overall commercial impression
of Applicant's mark is dominated by the word G-STRING and its design feature, a
pink G-STRING, which emphasizes the word “G-STRING,” and that this weighs
heavily against a conclusion that confusion is likely.
We readily acknowledge that “when marks would appear on virtually identical
goods or services, the degree of similarity necessary to support a conclusion of likely
confusion declines.” In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260
(Fed. Cir. 2010) (citing Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d
874, 23 USPQ2d 1698 (Fed. Cir. 1992)). But Applicant's mark is so different from the
registered mark that even when used on identical services, confusion is unlikely. “No
mechanical rule determines likelihood of confusion, and each case requires weighing
of the facts and circumstances of the particular mark.” Mighty Leaf, 94 USPQ2d at
1259.
In sum, we find the first du Pont factor, the differences between the marks, to
outweigh the other factors. See Champagne Louis Roederer S.A. v. Delicato
Vineyards, 148 F.3d 1373, 47 USPQ2d 1459, 1460-61 (Fed. Cir. 1998) (Federal Circuit
affirmed Board finding of no likelihood of confusion between mark CRYSTAL CREEK
for wine and marks CRISTAL for wine and CRISTAL CHAMPAGNE for champagne,
where Board relied solely on dissimilarity of marks); Kellogg Co. v. Pack’em
Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991) (“We know of
no reason why, in a particular case, a single du Pont factor may not be dispositive”).

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3. Conclusion.
Having considered all the evidence and arguments on the relevant du Pont
factors, whether specifically discussed herein or not, we conclude that there is no
likelihood of confusion between Applicant’s mark for
“entertainment services in the nature of conducting beauty pageants and talent
contests” and Opposer’s mark MISS NUDE INTERNATIONAL for “entertainment
services in the nature of promoting and conducting beauty pageants.”
Decision: The opposition is dismissed.