Bookriff Media Inc.

Trademark Trial and Appeal Board

Jul 28, 2011

No. 77537045 (T.T.A.B. Jul. 28, 2011)

Mailed: 7/28/11

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Bookriff Media Inc.
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Serial No. 77537045
_______

P. Jay Hines and Robyn S. Lederman of Cantor Colburn for
Bookriff Media Inc.

Charles L. Jenkins Jr., Trademark Examining Attorney, Law
Office 105 (Thomas G. Howell, Managing Attorney).
_______

Before Quinn, Ritchie and Lykos, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

Bookriff Media Inc. filed an application to register
the mark BOOKRIFF (in standard character form) for
“electronic publications, namely, fiction and non-fiction
books featuring a variety of topics for use by purchasers
in the field of self book publishing” (in Class 16); and
“book publishing, custom books publishing and online
publishing of books; providing a web site featuring on-line
publications in the nature of fiction and non-fiction books
on a variety of topics; providing a web-based system and
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Ser No. 77537045
2
online portal featuring online downloadable and non-
downloadable software tools that enables users to access
written and visual materials for building books online, to
create, share and print custom books, and to make available
their own written and visual materials for other users to
purchase and use in building custom books” (in Class 41).1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark, when applied
to applicant’s goods and/or services, so resembles the
previously registered marks RIF (in typed form) for
“newsletters dealing with reading” (in Class 16),2 and CLUB
RIF (in typed form) for “publications, namely, books,
guides and lesson plans for use in conducting comprehensive
reading and literacy programs which pair teens as mentors
with younger children (in Class 16), and for “educational
services, namely, conducting comprehensive reading and
literacy programs which pair teens as mentors with younger
children” (in Class 41),3 as to be likely to cause
confusion. Both registrations are owned by the same

1 Application Serial No. 77537045, filed August 1, 2008, based on
Canadian application no. 1383625 filed February 15, 2008;
Canadian Registration No. TMA754832 issued December 8, 2009.
2 Registration No. 1075006, issued October 11, 1977; renewed.
3 Registration No. 2791448, issued December 9, 2003; combined
Sections 8 and 15 affidavit accepted and acknowledged.
Ser No. 77537045
3
entity.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.4
After briefing, the Board determined that the appeal
was not ripe for a final decision and, accordingly, the
Board, on June 6, 2011, suspended proceedings on the appeal
and remanded the application to the examining attorney.
More specifically, the Board remanded the application to
the examining attorney for formal consideration of amended
identifications of goods and services. On remand, the
examining attorney, on July 15, 2011, accepted the amended
identifications (as set forth above), but essentially
maintained the final refusal under Section 2(d). The
Board, on July 18, 2011, resumed the appeal.
Applicant argues that its mark BOOKRIFF is readily
distinguishable from registrant’s marks RIF and CLUB RIF.
The following statements essentially sum up applicant’s
argument regarding the marks:
We know that the designation RIF in
Registrant’s marks stands for Reading
Is Fundamental and relates to the
reading and literacy programs that are

4 Applicant submitted, for the first time with its appeal brief,
copies of the specimens from the file of the cited registration.
The examining attorney, in his brief, neither objected to nor
considered the evidence. Applicant’s submission is untimely, and
we have not considered this evidence in making our decision.
Trademark Rule 2.142(d). See TBMP §§1207.01 and 1207.03 (3d ed.
2011).
Ser No. 77537045
4
the subject of Registrant’s goods and
services. We know that the designation
RIFF in applicant’s mark has no
significance and that its goods and
services have to do with self
publishing. It is these differences
that confer upon the marks different
connotations and commercial impressions
in the context of the goods and
services identified. It follows that
there is no reason for someone familiar
with the Registrant’s marks, upon
encountering the Applicant’s mark, to
assume an affiliation, connection or
association as to source.
(Brief, p. 5).

Applicant also points to the different meanings between
“riff” and “rif.” As to the goods and/or services,
applicant states that they “are arguably related only by a
tenuous connection to books and reading.” (response,
2/18/09). Applicant goes on to contend that the focus of
its business is building books online, that is, self
publishing, whereas registrant is a non-profit addressing
reading and literacy with programs that pair teens as
mentors with younger children. Applicant specifically
points to the limitations recited in its identifications of
goods and services, namely that they involve self book
publishing and custom book publishing; as well as to the
limitations in registrant’s identifications, namely that
the goods and services involve reading and literacy
programs which pair teens as mentors with younger children.
Ser No. 77537045
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In support of its position applicant submitted third-party
registrations of marks comprising, in part, either “RIF” or
“RIFF” for goods in Class 16 and services in Class 41; and
dictionary definitions for the terms “rif” and “riff.”
The examining attorney maintains that the marks are
similar, asserting that the “RIFF” or “RIF” portion of the
respective marks is dominant. The examining attorney also
states that the goods are related because entities that
offer electronic publications also offer printed
publications like newsletters and books. Also noteworthy,
the examining attorney argues, is that applicant’s books,
identified as covering a “variety of topics,” may feature
content about reading and lesson plans for use in
conducting comprehensive reading and literacy programs that
pair teens as mentors with younger children. In support of
the refusal the examining attorney submitted several third-
party registrations showing that the same entity registered
the same mark for both books and newsletters, as well as
other registrations covering both electronic publications
and printed publications.
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
Ser No. 77537045
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1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We first turn to compare the marks in their entireties
as to appearance, sound, connotation and commercial
impression to determine the similarity or dissimilarity
between them. Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). The test, under the first du Pont
factor, 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 impression that confusion as to the
source of the goods and/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).
Ser No. 77537045
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Applicant submitted dictionary definitions of the word
“riff”: “an ostinato phrase (as in jazz) typically
supporting a solo improvisation; a rapid energetic often
improvised verbal outpouring, especially one that is part
of a comic performance; a succinct usually witty comment; a
distinct variation or take.” (www.merriam-webster.com) As
for “rif,” applicant contends that it is the acronym of
registrant’s name, “Reading Is Fundamental.” Applicant
also points out that it means “the act of dismissing an
employee” and “a coastal region in N. Morocco. (Webster’s
New World College Dictionary).
We find that applicant’s mark BOOKRIFF and
registrant’s marks RIF and CLUB RIF are somewhat similar in
sound and appearance. All of the marks include “RIFF” or
“RIF” which are identical in sound, and very similar in
appearance.
As to meaning, applicant’s mark BOOKRIFF may convey
the idea that its goods and services present a distinct
variation or take on publishing books. This idea is not
directly conveyed by either of registrant’s marks, although
it may be that “RIF” will be perceived as a shortened form
of “RIFF,” likewise conveying the meaning that registrant’s
goods and services offer a distinct variation or take
relative to the similar services of others. Suffice it to
Ser No. 77537045
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say, we put no credence in applicant’s notion that “RIF”
means “dismissing an employee” or a geographical area in
Morocco. These meanings of “rif” have no relevancy when
considered in the context to registrant’s goods and
services. Similarly, while it is likely that “RIF” in
registrant’s mark stands for registrant’s name, “Reading Is
Fundamental,” there is nothing in the record to indicate
that relevant consumers will even know this or likely
perceive it as such.
As to overall commercial impression, we recognize the
presence of “BOOK” in applicant’s mark, and “CLUB” in one
of registrant’s marks, as well as the differences in
spelling between “RIFF” and “RIF.” Nevertheless, we find
that the similarities between the marks outweigh the
differences, and that the marks engender similar overall
commercial impressions.
The similarities between applicant’s mark BOOKRIFF and
registrant’s marks RIF and CLUB RIF weigh in favor of a
finding of likelihood of confusion.
Applicant argues that the number of third-party
registrations of RIFF or RIF marks shows that the cited
mark is entitled to a relatively narrow scope of
protection. In this connection, applicant introduced
copies of four third-party registrations of marks
Ser No. 77537045
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comprising, in part, the word “RIFF” for goods in Class 16
or services in Class 41. In addition, there are copies of
four third-party applied-for marks comprising, in part, the
word “RIFF” (or, in one instance, “RIF”) for which the
Office has issued a Notice of Allowance. It is applicant’s
position that the coexistence of these marks mandates the
registration of applicant’s mark.
This evidence is not persuasive. Although we have
considered the four third-party registrations, they are of
limited probative value to support applicant’s position
because “[t]he existence of [third-party] registrations is
not evidence of what happens in the market place or that
consumers are familiar with them nor should the existence
on the register of confusingly similar marks aid an
applicant to register another likely to cause confusion,
mistake or to deceive.” AMF Inc. v. American Leisure
Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA
1973); and In re Max Capital Group Ltd., 93 USPQ2d 1243,
1248 (TTAB 2010). Moreover, the registrations pertain to
goods and services in the field of music, different from
the goods and services involved herein. See In re
Melville, 18 USPQ2d 1386, 1388-89 (TTAB 1991)
(registrations for goods and services unrelated to the
goods and services at issue are irrelevant to the
Ser No. 77537045
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likelihood of confusion analysis). With respect to the
three third-party applications for which a Notice of
Allowance has been issued, this evidence has no probative
value except to show that the applications were filed. In
re Kysela Pere et Fils Ltd., 98 USPQ2d 1261, 1264 (TTAB
2011); and In re Binion, 93 USPQ2d 1531, 1535 n.3 (TTAB
2009).
In sum, the existence of the third-party registrations
is a factor that is neutral in the du Pont analysis.
We next turn to compare applicant’s goods and services
with registrant’s goods and services. It is well settled
that the goods and/or services need not be identical or
competitive, or even offered through the same channels of
trade, to support a holding of likelihood of confusion. It
is sufficient that the respective goods and/or services are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods and/or
services are such that they would or could be encountered
by the same persons under circumstances that could, because
of the similarity of the marks, give rise to the mistaken
belief that they originate from the same source. See
Hilson Research, Inc. v. Society for Human Resource
Management, 27 USPQ2d 1423 (TTAB 1993); and In re
International Telephone & Telegraph Corp., 197 USPQ 910,
Ser No. 77537045
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911 (TTAB 1978). The question of likelihood of confusion
is determined based on the identification of goods and/or
services in the application vis-à-vis the goods and/or
services as set forth in the cited registration. In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4
(Fed. Cir. 1993); and In re Jump Designs, LLC, 80 USPQ2d
1370, 1374 (TTAB 2006). The issue, of course, is not
whether purchasers would confuse the goods and/or services,
but rather whether there is a likelihood of confusion as to
the source of the goods and/or services. In re Rexel Inc.,
223 USPQ 830 (TTAB 1984).
The examining attorney’s sole evidence bearing on the
relatedness of the goods and/or services consists of
several third-party registrations. “Third-party
registrations which cover a number of differing goods
and/or services, and which are based on use in commerce,
although not evidence that the marks shown therein are in
use on a commercial scale or that the public is familiar
with them, may nevertheless have some probative value to
the extent that they may serve to suggest that such goods
or services are of a type which may emanate from a single
source.” In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470
n.6 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988). See
also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-
Ser No. 77537045
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86 (TTAB 1993). The registrations show, not surprisingly,
that the same entity has registered the same mark for both
books and newsletters, or for publications, both in printed
and electronic form. None of the registrations, however,
appear to cover books or other publications being self-
published by the user.
We find that the goods and services, as identified in
the respective application and registrations, are
distinctly different and noncompetitive. Each of the
identifications contains limiting language, making any
potential overlap less than likely. Applicant is
essentially providing a web-based product that allows users
to create customized books, either in print form or
downloadable form, as well as online publishing services
and ancillary online tools for facilitating the process of
custom publication, whether in print or online. Thus,
applicant’s goods and services involve books and services
about self publishing, whereas registrant’s services
involve reading and literacy with programs pairing teens as
mentors with younger children.
The prospective customers for the goods and/or
services would be different, with registrant’s consumers
seeking to create and publish their own books in print and
online form, versus applicant’s customers seeking reading
Ser No. 77537045
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materials on literacy programs and educational/mentoring
programs in the field of literacy.
The mere fact that applicant’s and registrant’s goods
and services all fall under the broad category of books or
related publication services is too tenuous a connection
upon which to base a finding that they are sufficiently
related for purposes of likelihood of confusion; we
reiterate that the respective identifications include
significant limitations regarding the specific nature of
the goods and services. To demonstrate that the involved
goods and/or services are related, it is not sufficient
that a particular term (such as “book” or “publications”)
may be found which may broadly describe the goods and/or
services. See In re W.W. Henry Co., 82 USPQ2d 1213, 1215
(TTAB 2007). When we examine the involved identifications
that include specific limitations, the goods and/or
services do not appear to be related in a manner that would
be likely to cause confusion.5

5 In saying this, we recognize that one of applicant’s services
is “providing a web site featuring on-line publications in the
nature of fiction and non-fiction books on a variety of topics.”
We find it unreasonable to assume, as the examining attorney has
done, that these publications would encompass ones of such
extremely limited scope, as in the case of registrant’s guides
and lesson plans for use in conducting comprehensive reading and
literacy programs which pair teens as mentors with younger
children. To the extent that this situation could occur, we
agree with applicant that the chances are very de minimis.
Ser No. 77537045
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In view of the above, we find that the goods and
services of applicant and registrant are sufficiently
different so that, even when sold under similar marks,
consumers in the marketplace are not likely to be confused.
Based on the record before us, we see the likelihood
of confusion refusal as amounting to only a speculative,
theoretical possibility. In view of the specific
differences between the goods and/or services, as clearly
delineated in the involved identifications, we find that
the examining attorney, by submitting only the third-party
registrations that cover various publications in the
broadest of terms, has not met his burden of establishing
that confusion is likely to occur, even when similar marks
are involved. Language by our primary reviewing court is
helpful in resolving the likelihood of confusion issue in
this case:
We are not concerned with mere
theoretical possibilities of confusion,
deception, or mistake or with de
minimis situations but with the
practicalities of the commercial world,
with which the trademark laws deal.

Electronic Design & Sales Inc. v. Electronic Data Systems
Corp., 21 USPQ2d at 1391 (Fed. Cir. 1992), citing Witco
Chemical Co. v. Whitfield Chemical Co., Inc., 418 F.2d
Ser No. 77537045
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1403, 1405, 164 USPQ 43, 44-45 (CCPA 1969), aff'g 153 USPQ
412 (TTAB 1967).
Decision: The refusal to register is reversed.