Del Ray Music, Inc.

Trademark Trial and Appeal Board

Jul 6, 2001

No. 75634957 (T.T.A.B. Jul. 6, 2001)

7/6/01 Paper No. 9
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Del Rey Music, Inc.
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Serial No. 75/634,957
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Michael K. Grace, Gregory J. Sater and Jill M. Abasto of Grace &
Sater, LLP for Del Rey Music, Inc.
Melissa Shella, Trademark Examining Attorney, Law Office 112
(Janice O'Lear, Managing Attorney).
_______
Before Hohein, Bottorff and Holtzman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Del Rey Music, Inc. has filed an application to
register the mark "GRAVITY MUSIC LIBRARY" as a trademark for
"musical sound recordings" in International Class 9 and as a
service mark for "music composition and adaptation for others" in
International Class 41.1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its goods and services, so
1 Ser. No. 75/634,957, filed on February 5, 1999, which is based on an
allegation of a bona fide intention to use the mark in commerce. The
words "MUSIC LIBRARY" are disclaimed.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/634,957
2
resembles the mark "GRAVITY," which is registered for
"prerecorded phonograph records, audio cassettes, compact discs,
[and] video cassettes, all featuring musical entertainment" in
International Class 9 and "entertainment in the nature of a
musical performance" in International Class 41,2 as to be likely
to cause confusion, mistake or deception.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion
analysis, two key considerations are the similarity of the goods
and the similarity of the marks.3
Turning first to consideration of the respective goods
and services, applicant argues, based upon the declaration of
record of its general manager, Cindy Rosmann, that unlike
registrant's goods and services, which applicant asserts are
2 Reg. No. 1,902,431, issued on July 4, 1995, which for the goods and
services sets forth in each instance a date of first use anywhere of
June 13, 1991 and a date of first use in commerce of April 18, 1992;
combined affidavit §§8 and 15.
3 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
Ser. No. 75/634,957
3
targeted to retail consumers, its goods and services are directed
exclusively to purchasers of custom background music for
audio/video and commercial advertisers. Specifically, as stated
in the Rosmann declaration:
Del Rey provides background music for
use in films, video and audio productions
such as radio and television commercial
advertising. Del Rey is not providing any
goods in the entertainment market for
purchase by the average consumer. Del Rey's
goods are not sold at retail but rather to
sophisticated members of the trade.
However, as the Examining Attorney correctly points
out, it is well settled that the issue of likelihood of confusion
must be determined on the basis of the goods and/or services as
they are set forth in the involved application and cited
registration. See, e.g., Canadian Imperial Bank of Commerce,
N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815-16
(Fed. Cir. 1987); CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ
198, 199 (Fed. Cir. 1983); Squirtco v. Tomy Corp., 697 F.2d 1038,
216 USPQ 937, 940 (Fed. Cir. 1983); and Paula Payne Products Co.
v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77
(CCPA 1973). Thus, where the goods and/or services in the
application at issue and in the cited registration are broadly
described as to their nature and type, it is presumed in each
instance that in scope the application and registration encompass
not only all goods and/or services of the nature and type
described therein, but that the identified goods and/or services
move in all channels of trade which would be normal therefor and
essential characteristics of the goods and [services, and] differences
Ser. No. 75/634,957
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that they would be purchased by all potential buyers thereof.
See, e.g., In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Applying the above principles, it is clear from the
broad manner in which the respective goods are identified that
applicant's musical sound recordings encompass, and hence are
identical to, registrant's prerecorded phonograph records, audio
cassettes and compact discs, all of which feature musical
entertainment. It is also clear that applicant's goods are
closely related to registrant's video cassettes since, like
applicant's musical sound recordings, registrant's video
cassettes feature musical entertainment. Consequently, because
the respective goods are identical in part and are otherwise
closely related, they must be regarded as suitable for sale
through the same channels of trade, including retail music and
video stores, to the identical classes of purchasers, including
ordinary consumers. The marketing of such goods under the same
or similar marks would therefore be likely to cause confusion
concerning the source or sponsorship thereof.
As to the respective services, the Examining Attorney
also correctly notes that it is well established that goods
and/or services need not be identical or even competitive in
nature in order to support a finding of likelihood of confusion.
Instead, it is sufficient that the goods and/or services are
related in some manner and/or that the circumstances surrounding
their marketing are such that they would be likely to be
encountered by the same persons under situations that would give
in the marks."
Ser. No. 75/634,957
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rise, because of the marks employed in connection therewith, to
the mistaken belief that they originate from or are in some way
associated with the same producer or provider. See, e.g.,
Monsanto Co. v. Enviro-Chem Corp., 199 USPQ 590, 595-96 (TTAB
1978) and In re International Telephone & Telegraph Corp., 197
USPQ 910, 911 (TTAB 1978).
In the present case, the Examining Attorney maintains
that the respective services are closely related, arguing that:
The registrant's services are
"entertainment in the nature of a musical
performance." It is common for musical
performers to compose and adapt music for
their own performances. It is also common
for musical performers to employ those same
skills to compose and adapt music for others.
Furthermore, it may be readily anticipated
that one who offers "entertainment in the
nature of a musical performance" and who
offers musical entertainment recorded on
"phonograph records, audio cassettes, compact
discs, [and] video cassettes," would also
offer musical sound recordings in all
available formats and offer those same goods
and services to customers similar to those
claimed by applicant. Musical performers,
such as the registrant, are commonly hired to
record music to be used in films, movies,
videos and commercials. .... As a result,
it is clear that the applicant's ... services
not only overlap the registrant's, but are
also within the registrant's normal field of
expansion.
Applicant, we observe, has not filed a reply brief or otherwise
taken issue with the Examining Attorney's argument. It seems
reasonable to us, moreover, that for the reasons indicated by the
Examining Attorney, applicant's music composition and adaptation
services for others are the kinds of services which persons in
the market therefore could expect to be available as an adjunct
Ser. No. 75/634,957
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or related service from those, such as registrant, who also
render musical entertainment performances. Musical entertainers
often compose their own songs and/or tunes and adapt them to
their particular performances. Such skills similarly lend
themselves to composing and adapting music for others for use in
films, videos and audio productions, including the background
music in radio and television commercials. The contemporaneous
use of the same or similar marks in connection with such closely
related services would, therefore, be likely to cause confusion
as to the origin or affiliation thereof.
Turning, then, to consideration of the respective
marks, applicant urges that there are "differences in the total
look and feel" of its mark and registrant's "GRAVITY" mark.
Applicant also contends that the mere fact that two marks share
the same term, in this case the word "GRAVITY," does not
necessarily mean that the marks in their entireties engender a
similar commercial impression. In particular, applicant urges
that the presence of the additional phrase "MUSIC LIBRARY" in its
"GRAVITY MUSIC LIBRARY" mark "is significant because it lends a
different commercial impression to the [m]ark, namely, that
Applicant maintains a library of sounds and music, in this case
for commercial use." Applicant consequently concludes that there
is no likelihood of confusion.
We agree with the Examining Attorney, however, that
"[t]he addition of the term, MUSIC LIBRARY, to the registered
mark, GRAVITY, is not sufficient to avoid a likelihood of
confusion because it constitutes the mere addition of a
Ser. No. 75/634,957
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descriptive term to the applicant's mark." Overall, the
respective marks are substantially similar in sound, appearance
and connotation due to the presence of the term "GRAVITY" in each
mark. In particular, as the Examining Attorney properly
observes, the dominant and distinguishing portion of applicant's
"GRAVITY MUSIC LIBRARY" mark, when considered in its entirety, is
the word "GRAVITY," which is not only identical to registrant's
mark but, in relation to the respective goods and services,
clearly appears to be an arbitrary term which correspondingly
entitles registrant to a broad scope of protection for its mark.
We note, in this regard, that while marks must be considered in
their entireties, including any descriptive matter, our principal
reviewing court has indicated that, in articulating reasons for
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 [that] the ultimate conclusion rests on
consideration of the marks in their entireties." In re National
Data Corp., 753 F.3d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
For instance, according to the court, "that a particular feature
is descriptive ... with respect to the involved goods or services
is one commonly accepted rationale for giving less weight to a
portion of a mark ...." Id.
Citing The American Heritage Dictionary of the English
Language (4th ed. 2000) at 1009, which defines the word "library"
as, inter alia, "4. A collection of recorded data or tapes
arranged for ease of use. 5. A set of things similar to a
Ser. No. 75/634,957
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library in appearance, function, or organization: a library of
computer programs,"4 the Examining Attorney persuasively points
out that the phrase "MUSIC LIBRARY" in applicant's mark merely
describes applicant's musical sound recordings and its services
of music composition and adaptation for others since, as broadly
identified in the application, such goods and services "may
feature a collection of recorded musical tapes arranged for ease
of use" and hence may be said to constitute a music library.
Furthermore, as the Examining Attorney points out, "applicant has
disclaimed the wording MUSIC LIBRARY, and does not deny that it
is descriptive of the applicant's goods and services. Most
importantly, we concur with the Examining Attorney that "[t]his
additional descriptive matter does not change the connotation of
the mark GRAVITY [MUSIC LIBRARY], but rather merely adds
informational matter to the mark. The overall commercial
impression projected by such mark is substantially identical to
that engendered by registrant's "GRAVITY" mark. Contemporaneous
use of the marks at issue is therefore likely to cause confusion
as to the source or affiliation of the respective goods and
services.
Applicant further contends, however, that confusion is
not likely because, as mentioned earlier, purchasers of its goods
4 The request by the Examining Attorney in his brief that we take
judicial notice of such definition is approved inasmuch as it is
settled that the Board may properly take judicial notice of dictionary
definitions. See, e.g., Hancock v. American Steel & Wire Co. of New
Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953) and University of
Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ
594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
Ser. No. 75/634,957
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and services "are sophisticated members of a trade who are likely
to exercise special care and consideration in selecting
Applicant's product." Applicant's argument ignores the fact that
its musical sound recordings, as noted previously, encompass such
goods as phonograph records, audio cassettes and compact discs
and that such products would thus be marketed and sold primarily
to ordinary consumers rather than to sophisticated purchasers.
Moreover, even assuming, in the case of applicant's music
composition and adaptation services for others, that such
services would be rendered, as applicant argues, mainly to a
knowledgeable and discriminating clientele of "Hollywood
producers of films, videos, and commercial advertising" and would
be utilized to provide "specialized background music and sound
effects," the fact that customers may exercise care or thought in
choosing the services "does not necessarily preclude their
mistaking one trademark [or service mark] for another" or that
they otherwise are entirely immune from confusion as to source or
sponsorship. Wincharger Corp. v. Rinco, Inc., 297 F.2d 261, 132
USPQ 289, 292 (CCPA 1962). See also In re Decombe, 9 USPQ2d
1812, 1814-15 (TTAB 1988); and In re Pellerin Milnor Corp., 221
USPQ 558, 560 (TTAB 1983). Here, due to the shared presence of
the arbitrary and dominant term "GRAVITY" in the respective
marks, the overall commercial impression engendered by
applicant's "GRAVITY MUSIC LIBRARY" mark is so similar to that
projected by registrant's "GRAVITY" mark that the contemporaneous
use thereof in conjunction with music composition and adaptation
services for others, on the one hand, and such closely related
Ser. No. 75/634,957
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services as entertainment in the nature of musical performances,
on the other, is likely to cause confusion, even among
sophisticated members of the musical entertainment and production
trade.
As a final contention, applicant asserts that the
respective marks "have been in use concurrently for almost three
years with no record of any case of actual confusion."5 It is
noted, however, that the supporting declaration of Cindy Rosmann,
which is dated January 27, 2000, evidences only a period of about
two years of contemporaneous use of the respective goods without
any incidents of actual confusion and is silent as to applicant's
experience, if any, concerning use of the marks at issue in
5 Applicant additionally discusses two other du Pont factors,
contending that because "[t]here is no evidence in the record that the
Cited Registration is [for] a famous mark," such factor "weighs
against any likelihood of confusion" and that, as to what applicant
characterizes as "The Strength of the Mark," the "large number of
marks containing the word 'Gravity' in Classes 9 and 41 for a variety
of goods and services ... suggests that consumers are able to
distinguish between different uses of 'Gravity' for different
products, even in related fields," and thus such factor "favors
registration here." As to the former, the record simply does not
contain any evidence as to whether registrant's mark is famous.
Likewise, with respect to the latter, there is no evidence and the
Board does not take judicial notice of third-party registrations.
See, e.g., In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974).
Moreover, even if applicant had supported its argument with copies of
the various third-party registrations upon which it purports to rely,
such would not in any event constitute proof of actual use of the
registered marks and that the purchasing public, having become
conditioned to encountering certain products and service under marks
which consist of or include the word "GRAVITY," is therefore able to
distinguish the source thereof based upon differences in such marks.
See, e.g., AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403,
177 USPQ 268, 269 (CCPA 1973) and In re Hub Distributing, Inc., 218
USPQ 284, 285-86 (TTAB 1983). Accordingly, neither the fame of the
cited prior mark nor the number and nature of similar marks in use on
similar goods and/or services is a relevant du Pont factor in this
appeal.
Ser. No. 75/634,957
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connection with the respective services. In particular, Ms.
Rosmann states that:
Del Rey has used the Mark in commerce
since at least as early as February, 1998.
To my knowledge, there have been no instances
of confusion as to the source of the goods
bearing GRAVITY MUSIC LIBRARYï›› and the goods
of Registrant bearing the registered mark.
While the absence of any instances of actual confusion
over a significant period of time is indeed a du Pont factor
which is indicative of no likelihood of confusion, it is a
meaningful factor only where the record demonstrates appreciable
and continuous use by the applicant of its mark in the same
markets as those served by registrant under its mark. See, e.g.,
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB
1992). In particular, there must be evidence showing that there
has been an opportunity for incidents of actual confusion to
occur. See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1847 (Fed. Cir. 2000). Consequently, the absence
of any instances of actual confusion is not a mitigating factor
where, as here, the record is devoid of information concerning
details of the nature and extent of the sales and marketing
activities of applicant and registrant under their respective
marks; the asserted period of contemporaneous use thereof has
been exceedingly short; and, in the case of the respective goods,
the products involved do not appear to be very expensive, such
that any incidents of actual confusion would be expected to be
reported by consumers and thus would have come to the attention
Ser. No. 75/634,957
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of applicant and/or registrant. Compare In re General Motors
Corp., 23 USPQ2d 1465, 1470-71 (TTAB 1992).
We accordingly conclude that purchasers and prospective
customers, familiar with registrant’s "GRAVITY" mark for
prerecorded phonograph records, audio cassettes, compact discs
and video cassettes featuring musical entertainment and for
entertainment in the nature of a musical performance, could
reasonably believe, upon encountering applicant’s substantially
similar "GRAVITY MUSIC LIBRARY" mark for musical sound recordings
and for music composition and adaptation services for others,
that such legally identical and otherwise closely related goods
and such commercially related services emanate from, or are
otherwise sponsored by or affiliated with, the same source.6 For
instance, as the Examining Attorney stresses in his brief, even
among purchasers and potential customers who happen to notice the
descriptive phrase "MUSIC LIBRARY" in applicant's mark, it is
still likely that to those acquainted with registrant's mark,
such phrase "will be perceived as referring to either the entire
collection of the registrant's goods or to a special category,
special edition, or special collection of the registrant's goods,
or to a division of the registrant's operations."
6 Although applicant has suggested, in the alternative to a finding of
likelihood of confusion, that it "should be given an opportunity to
amend the application to narrow the scope of [its] goods and
services," such piecemeal prosecution at this late stage is not
warranted. Applicant had ample opportunity to amend the
identification of its goods and services prior to filing its notice of
appeal and, as noted by the Examining Attorney, it has not even
suggested any modifications which would avoid the fact that
registrant's goods and services would still encompass any limited
channels of trade which applicant might seek to add so as to restrict
its goods and services.
Ser. No. 75/634,957
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Decision: The refusal under Section 2(d) is affirmed.