David Christopher Bojorquez

Trademark Trial and Appeal Board

Sep 8, 2016

No. 86654839 (T.T.A.B. Sep. 8, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: September 8, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re David Christopher Bojorquez
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Serial No. 86654839
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Gene Bolmarcich of the Law Office of Gene Bolmarcich
for David Christopher Bojorquez.
Cassondra Anderson, Trademark Examining Attorney, Law Office 103,
Michael Hamilton, Managing Attorney.
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Before Cataldo, Lykos and Masiello,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
David Christopher Bojorquez (“Applicant”) has applied to register on the Principal
Register the mark CONSCIOUS FILMMAKER in standard characters for, as
amended, “production and distribution of motion pictures involving themes of loving
kindness, inclusiveness, respect, tolerance and compassion; production and
distribution of motion pictures involving themes of the complexities of the human
condition presented in a life affirming and non-exploitive manner; production and
distribution of motion pictures involving themes of selfless noble actions presented in
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a way that elevates humanity” in International Class 41.1 The word FILMMAKER
has been disclaimed apart from the mark as shown.
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground
that Applicant’s mark so resembles the following registered marks owned by two
different entities that when used on or in connection with Applicant’s identified
services, it is likely to cause confusion or mistake or to deceive:
Registration No. 3857319 for the mark Conscious Productions in
standard characters on the Principal Register for “direction, production,
distribution, and syndication of audio or video shows, live or pre-recorded,
suitable for broadcast over all electronic media, television, radio, satellite,
cable, internet; education services, namely, providing continuing
educational shows suitable for broadcast over all electronic media,
television, radio, satellite, cable, internet in the fields of the arts, movies,
music, books and other writings, nutrition, new technology, environment,
environment, social awareness, business ethics, philanthropy,
volunteering, local entrepreneurs, government, spirituality, mediation,
culture, health, physical fitness, mental fitness, holistic living,

1 Application Serial No. 86654839, filed June 8, 2015 under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), alleging February 14, 2007 as the date of first use anywhere and
March 1, 2007 as the date of first use in commerce.
Applicant was the owner of Registration No. 3523840 for the same mark for similar services
(“[p]roduction and distribution of motion picture films, television programs, and video
programs for non-profit or commercial theatrical, broadcast or web-based broadband viewing
via a global communications network”) which Office records show has been cancelled for
failure to file a Section 8 declaration. Applicant argues that because his previously registered
mark co-existed with the registered mark Conscious Productions, this serves as a basis
for withdrawing the refusal. We further note that the cited mark CONSCIOUS TV also co-
existed with Applicant’s previously registered CONSCIOUS FILMMAKER mark. This
Board is not bound by the decision of the prior examining attorneys that allowed registration
of the cited marks. See In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001) (“Even if some prior registrations had some characteristics similar to Nett Designs’
application, the PTO’s allowance of such prior registrations does not bind the Board or this
court.”). In addition, we are not privy to the circumstances resulting in the registration of
these three marks.

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conservation, horticulture, positive lifestyles” in International Class 41,
with a disclaimer of Productions;2 and

Registration No. 4378438 for the mark CONSCIOUS TV in standard
characters on the Principal Register for “film and video production and
distribution services” in International Class 41, with a disclaimer of TV.3

When the refusal was made final, Applicant appealed and requested
reconsideration. The Examining Attorney maintained the refusal to register and
denied the request for reconsideration. Thereafter, the appeal was resumed and is
now briefed. For the reasons set forth below, we affirm the Section 2(d) refusal.
I. Applicable Law
We base our determination under Section 2(d) on an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E. I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See also In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). In any likelihood of confusion analysis two key considerations are the
similarities between the marks and the similarities between the services. See In re
Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). These
factors and others as to which Applicant or the Examining Attorney submitted
argument or evidence are discussed below.

2 Issued October 5, 2010, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a),
alleging August 23, 2010 as the date of first use anywhere and in commerce.
3 Issued August 6, 2013, pursuant to Section 44(e) of the Trademark Act, based on United
Kingdom Registration No. 2475345. The registration includes other various goods and
services in International Classes 9, 38, and 41.
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A. The Services and Trade Channels

We commence our analysis with the second and third du Pont factors – a
comparison of the services and established, likely-to-continue channels of trade.
Applicant’s and Registrants’ respective services must be compared as they are
identified in the application and the cited registrations. See Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014); Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990).4
The services identified as “direction, production, distribution, and syndication of
audio or video shows, live or pre-recorded, suitable for broadcast over all electronic
media, television, radio, satellite, cable, internet” in Registration No. 3857319 and
the services identified as “film and video production and distribution services” in
Registration No. 4378438 are, in each case, sufficiently broad to encompass
Applicant’s more narrowly identified “production and distribution of motion pictures
involving themes of loving kindness, inclusiveness, respect, tolerance and
compassion; production and distribution of motion pictures involving themes of the
complexities of the human condition presented in a life affirming and non-exploitive
manner; production and distribution of motion pictures involving themes of selfless
noble actions presented in a way that elevates humanity.” As such, the services are
legally identical. See, e.g., In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134,

4 Applicant does not address the second and third du Pont factors in his brief. Nonetheless,
the Office bears the burden of proof in this appeal.

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1137 (TTAB 2015) (“Applicant’s broadly worded identification of ‘furniture’
necessarily encompasses Registrant’s narrowly identified ‘residential and
commercial furniture.’”).
Because the services are legally identical, we must also presume that Applicant’s
and Registrants’ services travel in the same ordinary trade and distribution channels
and will be marketed to the same potential consumers. See In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence
regarding channels of trade and classes of consumers, the Board was entitled to rely
on this legal presumption in determining likelihood of confusion); 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); American Lebanese Syrian Associated Charities Inc. v. Child Health
Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011).
Accordingly, the second and third du Pont factors both weigh in favor of finding
a likelihood of confusion. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648
F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion must be found
as to the entire class if there is likely to be confusion with respect to any item that
comes within the identification of goods or services in that class); Rocket Trademarks
Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1073 (TTAB 2011).
B. The Marks

We now direct our attention to the first du Pont likelihood of confusion factor,
which involves an analysis of the similarity or dissimilarity of the marks in their
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entireties as to appearance, sound, connotation and commercial impression. See Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). “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. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(citation omitted). Our analysis cannot be predicated on dissecting the marks into
their various components; that is, the decision must be based on the entire marks,
not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985). See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212
USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected
and considered piecemeal; rather, it must be considered as a whole in determining
likelihood of confusion.”). Finally, we note that it is well-settled that, where the
services are identical or legally identical, typically less similarity between the marks
is needed for us to find a likelihood of confusion. See In re Viterra, 101 USPQ2d at
1908; Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992) (“When marks would appear on virtually
identical goods or services, the degree of similarity necessary to support a conclusion
of likely confusion declines.”).
Applicant argues that his mark CONSCIOUS FILMMAKER is unitary because
it refers to an individual who, as reflected in the identification of services, makes
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films that have an “enlightened awareness.” That is to say, the connotation of the
mark is that of a “socially aware filmmaker.” Applicant contends that by contrast, the
cited marks Conscious Productions and CONSCIOUS TV refer to the subject
matter of the television programs or productions.
We acknowledge the specific differences in sound and appearance pointed out by
Applicant. However, in reaching a conclusion on the issue 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 of a mark, provided the ultimate conclusion
rests on a consideration of the marks in their entireties. In re Nat’l Data Corp., 224
USPQ at 751. See also Stone Lion, 110 USPQ2d at 1161. It is well-established that
prospective consumers are often more inclined to focus on the first word, prefix or
syllable in any trademark or service mark. See Palm Bay, 73 USPQ2d at 1692. See
also Mattel Inc. v. Funline Merch. Co., 81 USPQ2d 1372, 1374-75 (TTAB 2006); Presto
Prods., Inc., 9 USPQ2d at 1897 (“it is often the first part of a mark which is most
likely to be impressed upon the mind of a purchaser and remembered” when making
purchasing decisions). With this in mind, we observe that Applicant’s applied-for
mark is similar in construction to the cited marks. Each mark is composed of two
terms, beginning with the same first word followed by a word which is descriptive
and disclaimed. Disclaimed matter generally will not constitute the dominant part of
a mark. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846
(Fed. Cir. 2000) (quoting In re Nat’l Data Corp., 224 USPQ at 752); In re Dixie Rests.
Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Code
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Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often
“less significant in creating the mark’s commercial impression”). Thus, CONSCIOUS
is the dominant element of each mark. It is therefore more likely that prospective
consumers will overlook the secondary, descriptive wording in each mark and instead
confuse Applicant’s mark as identifying the services originating from Registrants.
Furthermore, any distinction in connotation between a “conscious filmmaker” versus
television programming or production which could be described as “conscious” in
nature is nuanced, and likely to be lost on consumers who, confronted with legally
identical services, are more likely to focus on the fact that the first term is identical.
Insofar as the marks are similar in appearance, sound, connotation and
commercial impression, the first du Pont factor also weighs in favor of finding a
likelihood of confusion.
II. Conclusion
After considering all of the evidence of record and arguments pertaining to the
du Pont likelihood of confusion factors, the first, second and third du Pont factors
discussed above favor a finding of likelihood of confusion. As noted above, the services
are legally identical, allowing us to rely on the presumption that the established,
likely-to-continue channels of trade are identical as well. The marks are similar in
sound, appearance, connotation and commercial impression because they each share
the dominant term CONSCIOUS. We treat as neutral any du Pont factors for which
there is no evidence or argument of record. Accordingly, we find that there is a
likelihood of confusion between Applicant’s and Registrants’ marks for the services
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identified therein.
Decision: The Section 2(d) refusal is affirmed.