Charles C. Tennin

Trademark Trial and Appeal Board

Jan 22, 2004

No. 76088749 (T.T.A.B. Jan. 22, 2004)

Hearing: Mailed:
November 4, 2003 January 22, 2004
Paper No. 30
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Charles C. Tennin, d.b.a. Big Fish Music
________
Serial No. 76088749
_______
Charles C. Tennin, pro se.
Won T. Oh, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______
Before Chapman, Bucher and Rogers, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Charles C. Tennin, d.b.a. Big Fish Music, seeks
registration on the Principal Register of the mark BIG FISH
MUSIC for services recited as “music publishing services,”
in International Class 41.1
This case is now before the Board on appeal from the
final refusal to register based upon Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d). The Trademark Examining
1 Application Serial No. 76088749 was filed on July 14, 2000,
based upon applicant’s allegations of use in commerce since at
least as early as May 1975. Applicant disclaimed the word MUSIC
apart from the mark as shown.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76088749
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Attorney has held that applicant’s mark so resembles the
mark BIG FISH FILMS, which is registered for “film
production services,” also in International Class 41,2 as to
be likely to cause confusion, to cause mistake or to
deceive, when applicant’s mark is used in connection with
the identified services.
Applicant and the Trademark Examining Attorney have
fully briefed this appeal, and both appeared at an oral
hearing held before this panel of the Board.
Applicant is a music publisher who claims to have been
doing business as “Big Fish Music” since 1975. Documentary
evidence in this record shows that he registered his
fictitious business name with Los Angeles County, and that
he paid his membership fee to register his company name
with Broadcast Music Inc. (BMI), both in November 1977.3 He
represents the public performance copyright interests of
music copyright holders. Applicant promotes his services
in myriad ways to find songwriters, artists and composers.
In addition to representation, he works to help them with
2 Registration No. 1675414, issued on February 11, 1992;
Section 8 affidavit accepted and section 15 affidavit
acknowledged; renewed. The word “FILMS” is disclaimed apart from
the mark as shown.
3 Fictitious Business Name Statement for Big Fish Music
(music publishing), #77-49407, filed November 18, 1977; United
California Bank draft No. 13143346, payable to BMI, dated
November 11, 1977; Billboard newspaper, December 17, 1977.
Serial No. 76088749
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professional development. Applicant’s particular niche is
background and instrumental theme music for television
programs, inspirational/gospel songs, and country ballads.4
Applicant acquires through assignment the rights of
these songwriters, musical artists and composers. He in
turn publishes their musical creations and develops
licensing mechanisms providing the appropriate users of
music with the right to use this music.
For registered works involved in public performances,
the music users pay royalties to the copyright collective
organizations, e.g., BMI, ASCAP (American Society of
Composers, Authors and Publishers), and SESAC (the Society
of European Stage Authors and Composers), which then pay
the music publishers like applicant.5 Music publishers
close the loop by passing the appropriate royalty monies
along to the songwriters, musical artists and composers.
In arguing against the Trademark Examining Attorney’s
contention that there is a likelihood of confusion,
4 Cashbox newspaper, August 2, 1975; The American Song
Festival’s Music Business Directory ’83; Tunesmith newspaper,
January 26, 1988; Music City Song Festival, news release, August
29, 1988; National Academy of Songwriters (NAS) monthly SongLine
newsletter of April 1994; Tunesmith newspaper, June 1, 1997;
SongWritersNotes newsletter, May 1997; Music Connection magazine,
“19th Annual Directory of Music Publishers,” October 25 1999 –
November 7, 1999.
5 The record is replete with the periodic payments of such
royalty monies to Mr. Tennin, with an accounting of each artist
and copyrighted work on which the payment is calculated.
Serial No. 76088749
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applicant contends that the marks are not “highly similar,”
as argued by the Trademark Examining Attorney; that the
term BIG FISH has been registered by numerous third-party
registrants; that the services of registrant are totally
different from his services; and that registrant’s services
would be offered to a totally different group of
prospective users from his clients; that the third-party
registrations proffered by the Trademark Examining Attorney
to show that the same companies offer both services under
the same mark are not probative because they do not reflect
the realities of the marketplace; that the clients for both
registrant’s and applicant’s services are “sophisticated,
discriminatory and knowledgeable”; and that despite a dozen
years of contemporaneous usage, there have been no
instances of actual confusion between registrant’s mark and
his mark.
In turn, the Trademark Examining Attorney argues that
applicant’s mark is highly similar to the registered mark;
that applicant’s services are related to registrant’s
services, and are offered in the same channels of trade as
are registrant’s services; that there is no evidence that
prospective users of applicant’s services are
sophisticated; that applicant’s attempts to argue the
weakness of the cited mark are based on untimely
Serial No. 76088749
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submissions of third-party registrations; that even if
considered, these third-party registrations are not
probative of weakness of the term BIG FISH for services in
International Class 41 such as film production services;
and that applicant’s focus on the lack of actual confusion
with registrant’s mark is not determinative of a different
result herein.
Before considering the substantive issue of likelihood
of confusion, we must discuss a preliminary matter.
Applicant submitted at oral hearing his computer-designed
flow chart on a single piece of 8½” by 14” paper purporting
to show the differences in the channels of trade between
“music publishing” and “film production.” The Trademark
Examining Attorney objected to the introduction of this new
paper at the beginning of the oral hearing.
Our review of the extensive evidence about the details
of applicant’s business that he had earlier placed into the
record supports the simplified flow chart contained in the
top portion of the page, entitled “Music Publishing.” In
effect, this portion of the chart is not new information,
but simply helps to make sense of applicant’s voluminous
evidence and repeated arguments about his trade channels.
On the other hand, upon a review of the entire record, the
information as to the channels of trade for “Film
Serial No. 76088749
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Production” is not in the record. Therefore, the Trademark
Examining Attorney’s objection is well-taken, and we have
not considered this exhibit in reaching our decision
herein.
Our determination under Section 2(d) is based upon 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 Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the relationship of the
goods or services. Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We first consider whether applicant’s mark and
registrant’s mark, when compared in their entireties in
terms of appearance, sound and connotation, are similar or
dissimilar in their overall commercial impressions.
Applicant is correct in his contention that, when
considered in their entireties, the marks are not
identical. However, 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
Serial No. 76088749
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(Fed. Cir. 1985). As correctly argued by the Trademark
Examining Attorney, the BIG FISH element is the dominant
feature of both marks. The generic term FILMS is
disclaimed in registrant’s mark and the generic term MUSIC
is disclaimed in applicant’s mark. Moreover, there is
nothing in the record to suggest that the term BIG FISH is
anything but arbitrary matter when used in connection with
registrant’s services and with applicant’s services.
Hence, under the trilogy of appearance, sound and
connotation, these two marks, when compared in their
entireties, are quite similar in their overall commercial
impressions.
As to the related du Pont factor focusing on the
number and nature of similar marks in use on similar goods
or services, based on this record, we cannot conclude that
the term BIG FISH is a weak mark as applied to registrant’s
services. Applicant refers in his appeal brief to several
third-party registrations that were neither timely nor
properly made of record. It is well established that the
Board does not take judicial notice of registrations that
reside in the United States Patent and Trademark Office,
and that the submission of a list of registrations is
insufficient to make them of record. See In re Duofold
Inc., 184 USPQ 638 (TTAB 1974). Moreover, Trademark Rule
Serial No. 76088749
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2.142(d) provides that the record in an application should
be complete prior to appeal and that the Board will
ordinarily not consider late-filed evidence. Accordingly,
the Trademark Examining Attorney has correctly objected to
the attempted reference to these registrations on the
ground of untimeliness. Because this objection is well
taken, the evidence has not been considered in reaching our
decision.
In any event, we hasten to add that even if the third-
party registrations had been considered, it would not
demonstrate any weakness of the term BIG FISH for film
production services because these third-party registrations
are for goods (e.g., watches and items of clothing) and
services (e.g., restaurant services) quite different from
the services involved herein. See also AMF Inc. v.
American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ
268 (CCPA 1973) [third-party registrations do not establish
that the marks shown therein are in use, much less that
consumers are so familiar with them that they are able to
distinguish among such marks]. Thus, applicant has not
shown that the registered mark is entitled to a narrow
scope of protection. Furthermore, even weak marks are
entitled to protection against registration by a subsequent
user of the same or similar mark for the same or closely
Serial No. 76088749
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related goods or services. See Hollister Incorporated v.
Ident A Pet, Inc., 193 USPQ 439 (TTAB 1976).
Next, we turn to a determination of what we find to be
the pivotal du Pont factor in this likelihood of confusion
case, namely, the relationship of applicant’s services and
registrant’s services. Although the Trademark Examining
Attorney contends that “music publishing services” are
related to “film production services,” we find that he has
failed to sustain his burden of proof on this point.
In support of the Trademark Examining Attorney’s
position that these services are related, he submitted with
the final refusal to register a number of third-party
registrations, each showing that one company offers both
music publishing services and film production services
under the same mark. The Trademark Examining Attorney
argues:
… Clearly these registrations show that many
companies are engaged in the practice of
offering both applicant’s services and the
registrant’s services. Thus, applicant’s
services are in the same channels of trade
as the registrant’s services. These third-
party registrations show that consumers may
believe that applicant and the registrant
are in fact one company that is providing
both services.
(Final refusal of March 14, 2002, p. 2)
Serial No. 76088749
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Although the Trademark Examining Attorney contends
that “many companies” are offering both of these services,
a closer examination of the twelve registrations on which
this conclusion is based makes such a proposition somewhat
questionable. Of the twelve registrations, five are
registrations based upon Section 44 of the Act – not on use
in commerce in (or with) the United States, and hence they
have very limited persuasive value. See In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
Another registration is for educational services, including
media company news about music publication and film
production.6 Four of the remaining six registrations, like
the five registrations based on Section 44, supra, reflect
ownership by Europeans, and therefore are less probative,
in our view, of commercial realities in the United States.
In weighing the probative value of the remaining
third-party registrations, we clearly have discretion
(viz., such registrations may have probative value in
suggesting that the goods and services listed therein are
of a kind that may emanate from a single source. In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB
1993); and In re Mucky Duck, supra. Hence, we are most
6 Reg. No. 2481653, THE DOT TO WATCH, issued on August 28,
2001.
Serial No. 76088749
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reluctant to draw sweeping conclusions about entire
industries from the two remaining registrations – one of
which is a registration based on use, although an
individual has recited every imaginable service in
International Class 41, from symphony orchestras to
satellite television broadcasting.7
As to registrant’s “film production services,”
applicant has placed information into the record showing
that registrant’s services are limited to producing
national television commercials.8 However, our principal
reviewing court has repeatedly noted that the question of
likelihood of confusion in Board proceedings must be
determined based upon an analysis of the services as
recited in the registration rather than what any extrinsic
evidence may reveal about the actual services. See Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1990); and Canadian Imperial
Bank of Commerce, N. A. v. Wells Fargo Bank, 811 F.2d 1490,
1 USPQ2d 1813 (Fed. Cir. 1987). Hence, it would be
inappropriate to construe registrant’s services, for
7 Reg. No. 2535521, MUSIC OF NOTE, issued on February 5,
2002.
8 According to information applicant located on registrant’s
webpages, registrant creates cutting-edge spots for large clients
such as Bloomingdale’s, Capitol One, Daimler Chrysler,
Volkswagen, Red Bull, Ikea, the Houston Olympic Games, et al.
Serial No. 76088749
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example, as involving only “film production services,
specifically, the production of commercial advertisements.”
On the other hand, we do find it somewhat probative that
registrant’s webpages do not reflect any services in the
area of music publishing or licensing.
Hence, we find, based upon this ex parte record, that
the Trademark Examining Attorney has failed to demonstrate
that “music publishing services” are related to “film
production services.”
Similarly, we note that the Trademark Examining
Attorney has relied upon these same third-party
registrations to support the conclusion that these services
are offered through the same channels of trade. Hence,
this attempted showing fails as well, for even if the
third-party registrations had more probative value, it does
not follow as a matter of course that different services
listed in a single registration travel in the same channels
of trade merely because they may be marketed under the same
mark, and there is no showing of any overlap in
registrant’s and applicant’s respective channels of trade.9
9 Moreover, if we had reason to conclude that registrant
might be a potential client for applicant’s licensing activities,
this would not force the conclusion logically that these two
service providers share the same channels of trade.
Serial No. 76088749
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As to the du Pont factor focusing on the conditions
under which these services are provided to prospective
purchasers or users, there is no evidence supporting
applicant’s argument that applicant’s and registrant’s
respective clients are all “sophisticated, discriminatory
and knowledgeable.”
As to the du Pont factor focusing on the nature and
extent of any actual confusion, applicant asserts that the
respective services have been offered under the involved
marks contemporaneously since registrant allegedly adopted
its mark in February 1991, and that applicant is not aware
of any instances of actual confusion.
However, applicant’s lack of knowledge of incidents of
actual confusion is not particularly probative on the
question of likelihood of confusion. We have not been
provided with information regarding the geographic extent
or the dollar volume of the advertising of applicant’s or
registrant’s services during that time, or of the extent of
applicant’s business. In addition, we have not heard from
registrant as to whether it is aware of any incidents of
actual confusion. Finally, while solid evidence of actual
confusion is the best evidence of likelihood of confusion,
any confusion about mutual sponsorship or affiliation is
difficult to obtain and would not necessarily be brought to
Serial No. 76088749
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the attention of either applicant or registrant. See In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1205 (Fed. Cir. 2003) [“The lack of evidence of
actual confusion carries little weight … especially in an
ex parte context”].
In conclusion, while BIG FISH FILMS and BIG FISH
MUSIC are highly similar in overall commercial impression,
the Trademark Examining Attorney has not demonstrated that
the respective involved services are related, and hence, on
this record, we do not find a likelihood of confusion
herein.
Decision: The refusal of registration is hereby
reversed.