BMG Special Products, Inc.v.David Anthony Jagosz

Trademark Trial and Appeal Board

Oct 30, 2003

No. 91124387 (T.T.A.B. Oct. 30, 2003)

Mailed: October 30, 2003
Paper No. 11
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
BMG Special Products, Inc.
v.
David Anthony Jagosz
________
Opposition No. 91124387
to application Serial No. 78030406
filed on October 12, 2000
_______
Mary L. Kevlin of Cowan, Liebowitz & Latman, P.C. for BMG
Special Products, Inc.
David Anthony Jagosz, pro se.
_______
Before Cissel, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
BMG Special Products, Inc. (a Delaware corporation)
has opposed the application of David Anthony Jagosz (a
United States citizen) to register on the Principal
Register the mark YOU DA BUDDHA for the following goods and
services:
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91124387
2
sound recordings, namely, phonographic
records, prerecorded tape cassettes,
prerecorded compact discs & cartridges,
prerecorded video cassettes and
prerecorded optical discs, all
featuring music performances; and music
downloadable from a global
communications network (International
Class 9); and
entertainment services in the nature of
live musical performances, and live
performances downloadable or broadcast
over a computer network, by a musical
group and vocal artist(s); and fan club
services. (International Class 41).1
Opposer asserts as grounds for opposition that it is
engaged in manufacturing and distributing musical and video
sound recordings, and promoting musical artists, under
various BUDDAH and BUDDHA marks; that since long prior to
the filing date of applicant’s involved application for the
mark YOU DA BUDDHA, opposer has used its BUDDAH and BUDDHA
marks in connection with the sale of musical sound and
video recordings and the promotion of musical artists; that
opposer owns five registrations, specifically, BUDDAH for
“sound recordings, namely, phonograph records, pre-recorded
audio tapes, pre-recorded audio cassettes and compact discs
featuring words and music” in International Class 9,2 BUDDAH
1 Application Serial No. 78030406, filed October 12, 2000, based
on applicant’s assertion of “a bona fide intention to use or use
through a related company” the mark in commerce.
2 Registration No. 1771212, issued May 18, 1993, Section 8
affidavit accepted, Section 15 affidavit acknowledged, renewed.
Opposition No. 91124387
3
RECORDS for “music recorded on compact discs, phonograph
discs and audio tapes” in International Class 9,3 BUDDHA
RECORDS for “musical sound recordings” in International
Class 9 and “providing information regarding and
performances of musical artists by means of a global
computer information network” in International Class 41,4
and the two marks shown below
for “music recorded on compact discs, phonograph discs and
audio tapes” in International Class 9,5 and
for, inter alia, “musical sound recordings and musical
video recordings” in International Class 9 and “providing
information regarding and performances of musical artists
3 Registration No. 1947891, issued January 16, 1996, Section 8
affidavit accepted, Section 15 affidavit acknowledged. The term
“records” is disclaimed.
4 Registration No. 2348329, issued May 9, 2000. The term
“records” is disclaimed.
5 Registration No. 1855590, issued September 27, 1994, Section 8
affidavit accepted, Section 15 affidavit acknowledged. The term
“records” is disclaimed.
Opposition No. 91124387
4
by means of a global computer information network” in
International Class 41;6 and that applicant’s mark, when
used on or in connection with his goods and services, so
resembles opposer’s previously used and registered marks,
as to be likely to cause confusion, mistake, or deception.
In his answer applicant denied the salient allegations
of the notice of opposition.7
The record consists of the pleadings; the file of
applicant’s application; the testimony, with exhibits, of
Alexander Miller, the head of BMG Heritage, a unit of BMG
Music (opposer is also a unit of BMG Music);8 and opposer’s
notices of reliance on the following items: (1)
applicant’s responses to certain of opposer’s first set of
interrogatories; (2) photocopies of numerous (almost 200)
printed publications; and (3) status and title copies of
opposer’s five pleaded registrations. Applicant did not
offer any testimony or other evidence.9
6 Registration No. 2480432, issued August 21, 2001. The term
“records” is disclaimed.
7 Applicant, who is pro se, “admitted” paragraphs 1, 3, 4, 6 and
part of 2. However, in the narrative portion of his answer,
applicant argued against opposer’s position. In opposer’s brief
on the case (p. 2), it stated that “Applicant answered, denying
the allegations.” We assume that opposer construed applicant’s
overall answer as a general denial, and the Board will do
likewise.
8 Applicant did not attend the Miller deposition and he did not
cross-examine the witness.
9 Applicant attached Exhibits A-D to his answer to the notice of
opposition. Also, with the cover letter to his answer, he
Opposition No. 91124387
5
Only opposer filed a brief on the case. Neither party
requested an oral hearing.
BMG Special Products, Inc. primarily “creates
opportunities for music in motion pictures and in
television advertising in the areas known as
synchronization and licensing.” (Miller dep., p. 5.)
Opposer first used its “BUDDAH” marks in 1967 in the music
field for a variety of rock and roll, rhythm and blues,
jazz and pop artists, such as Gladys Knight and the Pips
and The Lovin’ Spoonful. The selection of this mark “was
an outgrowth of a production called Kama Sutra.” (Miller
dep., p. 6.) In August 1998, opposer began using the mark
“BUDDHA” (in the conventional spelling) for its goods and
services. The music products opposer has produced since
1998 cover a wide variety of music from pop to classical
and from new age to country. The artists include Angela
Bofill, Petula Clark, Patsy Cline, Perry Como, David
Cassidy, Fifth Dimension, Benny Goodman, Woodie Guthrie,
included a printout from the USPTO’s Trademark Electronic Search
System (TESS) of a third-party registration which included the
word “BUDDHA” therein. Applicant is advised that such exhibits
to pleadings are not evidence of record. See Trademark Rule
2.122(c); and TBMP §704.05 (2d ed. June 2003). However, inasmuch
as opposer submitted a notice of reliance on certain of
applicant’s answers to interrogatories “and the documents
identified therein” (notice of reliance, p. 2), there is some
minimal evidence (discussed later in this decision) of record
relating to applicant.
Opposition No. 91124387
6
Daryl Hall and John Oates, Millie Jackson, Waylon Jennings,
Eartha Kitt, Melissa Manchester, Melanie, Willie Nelson,
Harry Nilsson, Dolly Parton, Ray Price, Lou Reed, Frank
Sinatra, Dr. Seuss and Fats Waller. Opposer also produces
collections of different artists, such as “The Long Road to
Freedom: An Anthology of Black Music”; and opposer produces
various series of CD collections, such as the
“Entertainment Weekly Magazine” Greatest Hits with one
volume for each year from 1965 to 1993. Each year’s CD in
the latter collection included top 40 hits involving all
the major competing companies (Sony, Universal, EMI, and
Warner). All of these various records, CDs and collections
are sold under the “BUDDAH” or “BUDDHA” label.
Opposer advertises and promotes its goods and services
in a variety of ways to both the trade or industry and to
general consumers. Opposer advertises in “Billboard
Magazine,” “Parade Magazine,” “Time” and on national radio
(e.g., National Public Radio) and television programs
(e.g., CNN, A&E, NBC). Opposer provides point of purchase
displays in stores (e.g., blown up photographs, bin cards);
in-store record signings by the artists; distributes
posters and flyers at concerts; and promotes artist’s tours
and concerts. Opposer attends and exhibits at trade shows
such as the National Association of Record Merchandisers.
Opposition No. 91124387
7
Also, opposer’s Internet web site (which includes
descriptions of opposer’s releases, press clippings, mini
reproductions of album artwork, etc.) is available to those
in the industry and the general public.
Sales of opposer’s goods and services under the
BUDDAH/BUDDHA marks totaled approximately $20 million from
1998 through the first half of 2002. During the time frame
1998 through 2001, opposer spent about $2 million on
advertising its involved marks.
According to the application file, applicant is an
individual citizen living in California, and he averred a
bona fide intention to use the mark YOU DA BUDDHA in
commerce on and in connection with the sound recordings and
entertainment services identified above. Applicant created
the mark “to name a collection of original songs written by
Applicant,” and he received copyrights on the songs in
1999. Also, he made three promotional CDs between May 1999
and October 2001, which “were handed out to supportive
friends and relatives and potential fans.” (Applicant’s
answer to opposer’s interrogatory No. 2(b).) In April and
June 2001, applicant’s musical group gave two live
performances in the Los Angeles area. (Applicant’s answer
to opposer’s interrogatory No. 3.) His expenditures have
totaled around $1500 (mostly for developing and creating
Opposition No. 91124387
8
his web site), and he has received no yearly revenue with
the exception of a Chamber of Commerce “token” payment of
$100 for one of his group’s two live performances.
(Applicant’s answers to opposer’s interrogatory Nos. 4 and
5.)
In view of opposer’s ownership of valid and subsisting
registrations for its various BUDDAH/BUDDHA marks, the
issue of priority does not arise in this opposition
proceeding.10 See King Candy Co. v. Eunice King's Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974); Massey
Junior College, Inc. v. Fashion Institute of Technology,
492 F.2d 1399, 181 USPQ 272, at footnote 6 (CCPA 1972); and
Carl Karcher Enterprises, Inc. v. Stars Restaurants Corp.,
35 USPQ2d 1125 (TTAB 1995). Moreover, the record
establishes opposer’s use of its marks prior to the filing
date of applicant’s application, October 12, 2000.
We turn now to consideration of the issue of
likelihood of confusion. Our determination of likelihood
of confusion is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the
issue of likelihood of confusion. In re E. I. du Pont de
10 For the benefit of applicant, who is proceeding without an
attorney in this opposition, we point out that the Board is an
administrative tribunal that determines only the right to
register marks. See Section 17 of the Trademark Act, 15 U.S.C.
§1067. See also, TBMP §102.01.
Opposition No. 91124387
9
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
See also, In re Majestic Distilling Company, Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood
of confusion analysis, two key considerations are the
similarities of the marks and the similarities of the goods
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
means of distribution and sale, although certainly
relevant, are areas of peripheral inquiry. The fundamental
inquiry mandated by §2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
[and services] and differences in the marks.”). See also,
In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997). Based on the record before us in this
case, we find that confusion is likely.
Turning first to a consideration of the parties’
respective goods and services, in Board proceedings, “the
question of likelihood of confusion must be determined
based on an analysis of the mark as applied to the goods
and/or services recited in applicant’s application vis-a-
vis the goods and/or services recited in opposer’s
registration, rather than what the evidence shows the goods
and/or services to be.” Canadian Imperial Bank of
Commerce, N. A. v. Wells Fargo Bank, 811 F.2d 490, 1 USPQ2d
Opposition No. 91124387
10
1813, 1815 (Fed. Cir. 1987). That is, the issue of
likelihood of confusion must be determined in light of the
goods or services as identified in the opposed application
and the pleaded registration(s) and, in the absence of any
specific limitations therein, on the basis of all normal
and usual channels of trade and methods of distribution for
such goods or services. See Octocom Systems Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783 (Fed. Cir. 1990); and CBS Inc. v. Morrow, 708 F.2d
1579, 218 USPQ 198 (Fed. Cir. 1983).
Applicant’s identification of goods includes
phonograph records, and prerecorded tape cassettes, compact
discs, video cassettes, and optical discs, all featuring
music performances; and opposer’s registrations include
phonograph records, and prerecorded audio tapes, audio
cassettes and compact discs, all featuring words and music,
as well as musical sound recordings and musical video
recordings. We find that these items in the parties’
respective goods are legally identical, and the remainder
of the parties’ identified goods are closely related.
Applicant’s identification of services includes live
musical performances and live performances downloadable or
broadcast over a computer network by a musical group and
vocal artist(s); and opposer’s registrations include
Opposition No. 91124387
11
providing information regarding and performances of musical
artists by means of a global computer network. We find
that these specific respective services of the parties are
also legally identical, specifically, in that both parties’
services, as identified, include providing performances of
musical artists over a computer network, and the remainder
of the parties’ services are related.
Inasmuch as there are no limitations on trade channels
or purchasers in the identifications of goods and services
in applicant’s application or in opposer’s registrations,
the parties’ respective goods and services must be
considered to move in the same channels of trade, and would
be offered to similar classes of purchasers. See Octocom
Systems v. Houston Computer Services, supra; and The
Chicago Corp. v. North American Chicago Corp., 20 USPQ2d
1715 (TTAB 1991).
“When marks would appear on virtually identical goods
or services, the degree of similarity necessary to support
a conclusion of likely confusion declines.” Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
We turn next to consideration of the similarities or
dissimilarities of the marks. Our primary reviewing Court
has held that in articulating reasons for reaching a
Opposition No. 91124387
12
conclusion on the question of likelihood of confusion,
there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular
feature or portion of a mark. That is, one feature of a
mark may have more significance than another. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842 (Fed. Cir. 2000); Sweats Fashions Inc. v. Pannill
Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir.
1987); and In re National Data Corporation, 753 F.2d 1056,
224 USPQ 749, 752 (Fed. Cir. 1985).
In this case, both applicant’s and two of opposer’s
marks share the dominant term BUDDHA. Opposer’s other
three marks include the extremely similar term BUDDAH.
While applicant has added the words “YOU DA” to the term
“BUDDHA,” it is generally accepted that when a composite
mark incorporates the mark of another for closely related
goods or services, the addition of other matter is
generally insufficient to avoid a likelihood of confusion
as to source. See The Wella Corp. v. California Concept
Corp., 558 F.2d 1019, 194 USPQ 419 (CCPA 1977). Thus,
applicant’s addition of the words “YOU DA” to his mark does
not serve to distinguish these marks.
Moreover, the slight differences between applicant’s
mark YOU DA BUDDHA and each of opposer’s various
Opposition No. 91124387
13
BUDDAH/BUDDHA marks may not be recalled by purchasers
seeing the marks at separate times. The proper test in
determining likelihood of confusion is not on a side-by-
side comparison of the marks, but rather must be on the
recollection of the average purchaser, who normally retains
a general rather than specific impression of the many
trademarks encountered; that is, a purchaser’s fallibility
of memory over a period of time must also be kept in mind.
See Grandpa Pidgeon’s of Missouri, Inc. v. Borgsmiller, 477
F.2d 586, 177 USPQ 573 (CCPA 1973); and Spoons Restaurants
Inc. v. Morrision, Inc., 23 USPQ2d 1735 (TTAB 1991), aff’d
unpub’d (Fed. Cir., June 5, 1992). Potential purchasers
may mistakenly believe that applicant’s mark is another
revised version of opposer’s marks, with both parties’
marks serving to indicate origin in the same source.
Although the parties’ marks are not identical, when
considered in their entireties, we find the respective
marks are similar in sound, appearance, connotation and
commercial impression. See In re Azteca Restaurant
Enterprises Inc., 50 USPQ2d 1209 (TTAB 1999). Their
contemporaneous use, on and in connection with the same
goods and services, would be likely to cause confusion as
to the source or sponsorship of such goods and services.
See Cunningham v. Laser Golf Corp., supra.
Opposition No. 91124387
14
Another du Pont factor we consider in this case is the
fame of opposer’s marks. “Fame of an opposer’s mark or
marks, if it exists, plays a ‘dominant role in the process
of balancing the DuPont factors.’” Bose Corp. v. QSC Audio
Products, Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir.
2002), quoting Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54
USPQ2d 1894 (Fed. Cir. 2000). See also, Kenner Parker Toys
Inc. v. Rose Art Industries Inc., 963 F.2d 350, 22 USPQ2d
1453 (Fed. Cir. 1992).
Opposer has generated over $20 million in sales from
1998 - 2002, and it spent over $2 million on advertising,
nationwide in scope, and including ads on television and in
well-known general publications such as “Parade Magazine”
and “Time.” Opposer has used its BUDDAH marks since 1967,
and its BUDDHA marks since August 1998. There is evidence
of significant media publicity from 1992 - 2002 regarding
opposer’s BUDDAH/BUDDHA marks used in connection with music
products and music entertainment services. (See opposer’s
notice of reliance on printed publications, which includes
newspapers, entertainment publications, and business
publications.)
Based on this record, we conclude that opposer has
demonstrated its registered marks are famous, and are thus
entitled to a broad scope of protection. The fame of
Opposition No. 91124387
15
opposer’s marks increases the likelihood that consumers
will believe that applicant’s goods and services emanate
from or are sponsored by the same source.
Accordingly, because of the similarity of the parties’
marks, the fame of opposer’s marks, the parties’ identical
goods and services, as identified, and the similarity of
the trade channels and purchasers of the respective
identified goods and services, we find that there is a
likelihood that the purchasing public would be confused if
applicant uses YOU DA BUDDHA as a mark for his goods and
services.
Decision: The opposition is sustained and
registration to applicant is refused.