E. Rothenberg and J. Zempelv.Eric Beckman

Trademark Trial and Appeal Board

May 29, 2001

No. 91115326 (T.T.A.B. May. 29, 2001)

5/29/01
Paper No. 14
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
E. Rothenberg and J. Zempel
v.
Eric Beckman
_____
Opposition No. 115,326
to application Serial No. 75/555,333
filed on September 18, 1998
_____
J. Allison Strickland of Fross Zelnick Lehrman & Zissu, P.C.
for E. Rothenberg and J. Zempel.
John Pelosi of Pelosi & Wolf, LLP for Eric Beckman.
______
Before Chapman, Wendel and Bucher, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
On September 18, 1998, Eric Beckman (an individual)
filed an application to register the mark GUERRILLA KIDS on
the Principal Register for services identified, as amended,
as “organizing exhibitions for children for cultural and
entertainment purposes” in International Class 41.1
1 Application Serial No. 75/555,333, filed September 18, 1998,
based on applicant’s claimed dates of first use and first use in
commerce of October 1, 1997. Applicant disclaimed the term
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 115326
2
E. Rothenberg and J. Zempel (individuals and co-owners)
have opposed registration of the mark alleging that opposers
have continuously used the mark GUERRILLA GIRLS since at
least as early as 1985 to identify their “educational and
entertainment services designed to promote public awareness
of the need to combat sexism, racism and discrimination in
the arts” (notice of opposition, paragraph 3); that opposers
applied to register the mark GUERRILLA GIRLS for “‘posters;
postcards; greeting cards; stickers; series of books and
newsletters on a wide variety of topics relating to art,
feminism, sexism and racism, and social activism’ in Class
16; ‘civil rights education and activism offered via
lectures, public appearances, radio performances and
television performances; creation and distribution of
printed material and publications on a wide variety of
topics related to civil rights and social activism’ in Class
41; and ‘providing information on a wide variety of topics
related to art, civil rights, feminism, sexism, racism,
discrimination, and social activism by means of a global
“KIDS.” [The application, as originally filed, included a
disclaimer stated as follows: “Applicant hereby disclaims any
trademark in the use of the individual words ‘Guerrilla’ or
‘Kids’ independently or out of the context of ‘Guerrilla Kids.’”
In an Examiner’s Amendment, the Examining Attorney set forth, and
applicant accepted, a disclaimer of the word “KIDS.”]
Opposition No. 115326
3
computer network; promoting public awareness of the need to
combat sexism, racism and discrimination’ in Class 42”2; and
that applicant’s mark, when used in connection with his
services, so resembles opposers’ previously used trademark
and service mark, GUERRILLA GIRLS, as to be likely to cause
confusion, mistake, or deception.
In his answer, applicant denied the salient allegations
of the notice of opposition.
The record consists of the pleadings; the file of the
opposed application; the affidavit testimony, with exhibits,
of E. Rothenberg3; the affidavit testimony, with exhibits,
of Eric Beckman4; notices of reliance filed by opposers and
by applicant; and the supplemental affidavit testimony of E.
Rothenberg. Both parties filed briefs on the case5. An
oral hearing was not requested.
2 Application Serial No. 75/509,071, filed June 28, 1998, with
claimed dates of first use for each class of goods and services
of 1985.
3 In the stipulation regarding the affidavit testimony, opposers’
attorneys referred to the telephone consent of applicant’s
attorney. The affidavit testimony of both parties is accepted.
However, the parties’ attorneys should note that Trademark Rule
2.123(b) now requires that such agreements be in writing, i.e.,
signed by both parties’ attorneys.
4 In applicant’s affidavit of Eric Beckman, there are several
references to opposers’ “Zempel Affidavit.” Applicant is advised
that the affidavit testimony submitted on opposers’ behalf was
that of E. Rothenberg.
5 Applicant’s brief was not double-spaced as required by
Trademark Rule 2.128(b). Because the brief was 10 single-spaced
pages and the page limit for a brief on the case is 55 pages, we
have considered applicant’s brief. Nonetheless, it is strongly
suggested that applicant’s counsel file papers which comply with
the Board rules on proper format.
Also, applicant’s brief did not include a certificate of service
of a copy thereof on counsel for opposers as required by
Opposition No. 115326
4
Preliminarily, we will address opposer’s contention
(brief, page 16) that portions of applicant’s evidence are
inadmissible and must be disregarded. Specifically, opposer
contends that “much” of Eric Beckman’s affidavit is
irrelevant (e.g., paragraph 2), and thus is inadmissible
under Fed. R. Evid. 401 and 402; that the Beckman affidavit
is “rife” with opinion and argument (e.g., paragraphs 4-6,
8, 9), and thus is inadmissible under Fed. R. Evid. 602 and
701; and that Exhibit 1 to the Beckman affidavit is
inadmissible because it is a two-page listing showing the
catalog information on two books from the Library of
Congress’ on-line catalog, but it does not include copies of
the actual books as required by Trademark Rule 2.122(e).
We have carefully reviewed the rather sparse record in
this case, and we are of the opinion that in order to
conduct a full and fair review to arrive at a just
determination of the registrability issue before us, we
should not exclude either paragraphs 2, 4-6, 8 and 9 of
applicant’s (Beckman) affidavit testimony, or Exhibit 1
thereto. Therefore, opposers’ objections are overruled, and
we have read and considered applicant’s affidavit, including
Exhibit 1.
Trademark Rule 2.119(c). It is apparent that opposers received
or otherwise obtained a copy of applicant’s brief because
opposers filed a reply brief. Thus, we have considered
applicant’s brief. However, applicant’s attorney is warned that
Opposition No. 115326
5
Second, in their reply brief, opposers argued that
certain portions of applicant’s brief are “based on
inadmissible evidence [and] should be disregarded.” As
explained above, we have declined to strike any evidence.
However, the Board in general will consider a party’s
objections to the brief, and any improper portion(s) of a
brief will be disregarded. See TBMP §540.
Opposers’ objections to the evidence have been
overruled, but we hasten to add that the Board has
considered the evidence only for appropriate purposes, and
for whatever probative value, if any, it may have.
E. Rothenberg and J. Zempel are members of the
Guerrilla Girls, and they co-own trademark registrations for
the mark GUERRILLA GIRLS. Opposers’ group, the Guerrilla
Girls, is a collective of women artists, writers,
performers, film makers and arts professionals who fight
discrimination, and promote recognition of women and
minority artists through books, posters, public appearances
and other activities. The members of the group wish to
remain anonymous and wear gorilla masks when they appear in
public.
The Guerrilla Girls are best known for their posters
promoting women artists, which they began plastering on
walls, fences and kiosks in New York City in 1985. The
any further papers filed herein must include a certificate of
Opposition No. 115326
6
group is now a nationwide presence through not only their
posters and public appearances, but also through their
website, as well as the sale of their two published books,
Confessions of the Guerrilla Girls and The Guerrilla Girls’
Bedside Companion to the History of Western Art. There has
been continuous use of the mark GUERRILLA GIRLS since 1985
on a range of goods, such as, books and posters, and in
connection with civil rights education and activism.
According to the affidavit of E. Rothenberg, opposers
direct their activities at a wide audience including
children and teenagers; members of the Guerrilla Girls have
appeared and spoken at high schools and children’s events
across the country; they have also appeared on the Oxygen
cable television network on the show “Trackers,” which is
targeted to 12–18 year olds; they often receive e-mails from
teenage children; and the book The Guerrilla Girls’ Bedside
Companion to the History of Western Art is used as a
textbook in numerous high school and college art classes.
Applicant is an individual with an office located in
New York City. He markets and produces events for children
which include and/or emphasize film and the visual arts; and
he has been affiliated with Nickelodeon, Kodak, Time Warner,
MGM, Old Navy, The New York Times, and others in connection
with the sponsorship and promotion of children’s events.
service of a copy thereof on counsel for opposers.
Opposition No. 115326
7
Specifically, Eric Beckman has marketed and promoted The New
York International Children’s Film Festival for the
immediate past three years from 1998-2000, with about 10,000
people attending the last festival.
Because opposers now own valid and subsisting
registrations of their pleaded mark6, the issue of priority
does not arise. See King Candy Company v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974); and
Carl Karcher Enterprises Inc. v. Stars Restaurants Corp., 35
USPQ2d 1125 (TTAB 1995). Moreover, the evidence clearly
proves that opposers used their involved mark long prior to
the filing date of applicant’s involved application.
We turn then to the issue of likelihood of confusion.
Our determination of this issue is based on an analysis of
all the probative facts in evidence that are relevant to the
factors bearing on likelihood of confusion. See In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
6 Opposers originally pled ownership of one pending federal
application (Serial No. 75/509,071), which ultimately issued as
Registration No. 2,315,715 for the mark GUERRILLA GIRLS for goods
and services in International Classes 16, 41 and 42. During
their testimony period, opposers submitted a notice of reliance
on a current status and title copy of that registration. Thus,
applicant was on notice that opposers claimed rights therein.
Opposers also submitted in its notice of reliance a status and
title copy of a second registration, Registration No. 2,349,089,
issued May 9, 2000 for the mark GUERRILLA GIRLS for “t-shirts and
shirts” in International Class 25. (The claimed date of first
use is October 5, 1995.)
While opposers did not move to amend their pleading, to whatever
extent it is necessary, we consider the pleading amended to
conform to the evidence under Fed. R. Civ. P. 15(b). Therefore,
Opposition No. 115326
8
1973). The factors deemed pertinent in this proceeding now
before us are discussed below.
opposers’ Registration Nos. 2,315,715 and 2,349,089 are
considered of record herein.
Opposition No. 115326
9
Turning first to a consideration of the involved goods
and services, the Board is constrained to compare the
services as identified in applicant’s application with the
services as identified in opposers’ registrations7. If an
opposer’s services (or goods) and an applicant’s services
(or goods) are described so as to encompass or overlap, then
an applicant cannot properly argue that, in reality, the
parties’ actual services (or goods) are not similar. See
Octocom Systems Inc. v. Houston Computer Services Inc., 918
F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990); Canadian Imperial
Bank of Commerce, National Association v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); and CBS, Inc.
v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983).
In addition, it is well settled that services need not
be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is
sufficient that the services are related in some manner 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 rise, because of
the marks used thereon, to a mistaken belief that they
7 Opposers’ registrations include goods in Classes 16 and 25, and
opposers clearly market numerous posters and books. However,
because the affidavit evidence and the briefs on the case
generally focus on the services offered by opposers vis-a-vis the
services offered by applicant, we have done the same.
Opposition No. 115326
10
originate from or are in some way associated with the same
producer or that there is an association between the
producers of the services. See In re Peebles Inc., 23
USPQ2d 1795 (TTAB 1992); and In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991).
Applicant’s services are identified as “organizing
exhibitions for children for cultural and entertainment
purposes” (in International Class 41). With respect to
opposers’ registered mark, GUERRILLA GIRLS, the services are
identified as “civil rights education and activism offered
via lectures, public appearances, radio performances and
television performances; creation and distribution of
printed material and publications on a wide variety of
topics related to civil rights and social activism” (in
Class 41), and “providing information on a wide variety of
topics related to art, civil rights, feminism, sexism,
racism, discrimination, and social activism by means of a
global computer network; promoting public awareness of the
need to combat sexism, racism and discrimination” (in
International Class 42).
Applicant’s identification of services specifies
cultural purposes. Opposers’ identified services include
the arts, which would be encompassed within the broad
category of “cultural” purposes. In addition, applicant’s
services are identified as organizing “exhibitions,” with no
Opposition No. 115326
11
limitations thereon. Thus, opposers’ lectures, and
television performances would be encompassed as types of
exhibitions. We find that applicant’s services, as set
forth in his involved application, is a broad description
and it encompasses the services set forth in opposers’
registration. Accordingly, the parties’ respective
services, as identified, are at least in part overlapping,
and otherwise closely related.8
Regarding the trade channels, applicant argues that the
services of the parties are promoted and delivered in very
different manners, with opposers promoting a civil rights/
feminist agenda by appearing anonymously wearing gorilla
masks in public, whereas applicant promotes children’s films
and other media through “‘mainstream’ affiliations” (Beckman
affidavit, paragraph 8) such as Nickelodeon and HBO Family.
However, this is not persuasive because there are no
limitations in either applicant’s or opposers’ recitations
of services as to purchasers or channels of trade.9
Moreover, there is evidence that both parties’ events are
8 We note that applicant’s “mission” statement appearing in the
website for the 1999 New York International Children’s Film
Festival reads, in part, as follows: “To give educators tools
for exploring world culture, social issues, and the media in
their classrooms.”
9 Applicant’s affidavit testimony (as well as arguments in his
brief) appears to be directed to showing that consumers can
distinguish between these services. However, the question is not
whether the consumers are likely to confuse the services, but
whether they are likely to confuse the source of the services.
See Kangol Ltd. v. KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d
1945 (Fed. Cir. 1992).
Opposition No. 115326
12
publicized in the same media, for example, “The New York
Times.”
Applicant argues that opposers’ products and services
are directed to adults, whereas applicant’s services are
directed to children. While applicant’s services are
specifically identified as being “for children,” there is no
such restriction in opposers’ registrations. Thus,
opposers’ services would include all potential audiences,
including children. Moreover, the record shows that
opposers, in fact, appear on television shows directed to
12-18 year olds, and make appearances in high schools across
the country. Perhaps more to the point is the fact that, at
least with regard to younger children, the actual audiences
for both parties’ services will include adults because young
children would not attend without a parent or other adult,
or, at the very least, the subject matter of the exhibition
would be monitored by the parent or other adult. As
identified, and based on the evidence of record, we find
that both parties would offer their services to the same
classes of purchasers.
Turning then to a consideration of the marks, opposers’
mark GUERRILLA GIRLS, and applicant’s mark GUERRILLA KIDS,
both include the word GUERRILLA, which is an arbitrary term
Opposition No. 115326
13
in relation to the involved goods and services.10 The
Random House Webster’s Unabridged Dictionary (2d. ed. 1998)
defines “guerrilla” as “n. 1. a member of a band of
irregular soldiers that use guerrilla warfare, harassing the
enemy by surprise raids, sabotaging communication and supply
lines, etc. –adj. 2. pertaining to such fighters or their
technique of warfare: guerrilla strongholds; guerrilla
tactics.” The term “KIDS,” being a slang term for
children11, encompasses both “boys” and “girls.”
When considered as a whole applicant’s mark, GUERRILLA
KIDS, looks and sounds similar to opposers’ mark, GUERRILLA
GIRLS. Further, the connotation of both marks is
essentially the same. Opposers’ mark connotes a “band of
irregular soldiers” who are girls, while applicant’s mark
connotes the same “band of irregular soldiers” but involving
both boys and girls.
Applicant’s argument that the parties’ respective marks
were derived based on different reasons12 does not alter the
10 Applicant requested (page 4 of his brief) that the Board take
judicial notice “that the definition and common use of the word
Guerrilla is a matter of common knowledge.” Applicant did not
submit a dictionary definition. We grant the request as to
judicial notice of the definition of the word, “guerrilla.” (The
specific definition judicially noticed by the Board is set forth
above). However, we deny applicant’s request that the Board take
judicial notice of “common use” of the term. See TBMP §712.
11 The Random House Webster’s Unabridged Dictionary (2d. ed. 1998)
defines “kid” as “n. 1. Informal. a child or young person.” See
TBMP §712.
12 In answering applicant’s interrogatory regarding why opposers
adopted their mark, opposers stated that it was to “reclaim the
word ‘girl’ for women and to suggest guerrilla warfare, in the
Opposition No. 115326
14
fact that the respective marks are similar in sound,
appearance and connotation, thereby creating a similar
commercial impression to the consuming public (who would, of
course, not be aware of the background of why each side
adopted their respective mark).
Consumers may assume that applicant’s mark GUERRILLA
KIDS is simply a variant of opposers’ mark GUERRILLA GIRLS,
used to identify another of opposers’ services (perhaps a
less political version of opposers’ services, targeted to
younger children), and would assume that applicant’s
services come from or are in some way associated with
opposers.
Another du Pont factor we consider in this case is the
strength/fame of opposers’ mark. Opposers have established
that they have a “strong” mark because their mark is
arbitrary in relation to opposers’ goods and services, and
they have used the mark for the involved services
continuously since 1985, and there is adequate evidence of
media coverage. While we do not find on the record before
us that opposers’ mark is famous13, nonetheless opposers’
context that the Guerrilla Girls strike anonymously, and with
surprise.” (The concept of using gorilla masks was adopted
later.) (footnote continued)
In answering opposers’ interrogatory regarding why applicant
adopted his mark, applicant stated that the mark was chosen to
“combine the two concepts of ‘Guerrilla Cinema’ and ‘Guerrilla
Marketing’ with our target audience of children, or ‘kids.’”
13 This is because opposers did not provide sales, advertising, or
attendance figures, or place any such figures in context. Also,
opposers provided no direct consumer evidence of recognition of
Opposition No. 115326
15
strong mark is entitled to a full scope of protection. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842
(Fed. Cir. 2000); and Henry Siegel Co. v. M & R
International Mfg. Co., 4 USPQ2d 1154, 1161 (TTAB 1987).
Applicant’s statement in his affidavit (and later
argued in his brief on the case) regarding 28 third-party
registrations which include the word “guerrilla” in
combination with other terms is to no avail. First,
applicant did not submit any copies of third-party
registrations into the record during trial (i.e., as an
exhibit to his affidavit)14. See TBMP §703.02(b). Thus,
there is no information as to ownership, the goods/services,
or the circumstances of registration [e.g., which register
the marks are on, if they registered with disclaimers or
under Section 2(f)]. Second, even if applicant had properly
introduced third-party registrations into the record (which
he did not), such registrations would be of little weight in
determining likelihood of confusion as they are not evidence
of use of the marks shown therein and they are not proof
that consumers are familiar with them so as to be accustomed
the mark. Inasmuch as we are left to speculate not only as to
the sales, advertising, or attendance numbers; we are also left
to speculate as to the actual impact of opposers’ mark on the
minds of consumers. See Fossil Inc. v. Fossil Group, 49 USPQ2d
1451, 1457 (TTAB 1998); and General Mills Inc. v. Heath Valley
Foods, 24 USPQ2d 1270, 1277 (TTAB 1992).
14 The Board does not take judicial notice of registrations in the
USPTO. See In re Duofold Inc., 184 USPQ 638 (TTAB 1974); Cities
Service Company v. WMF of America, Inc., 199 USPQ 493 (TTAB
1978); and Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992).
Opposition No. 115326
16
to the existence of similar marks in the marketplace. See
Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177
USPQ 462 (CCPA 1973); Conde Nast Publications, Inc. v.
American Greetings Corp., 329 F.2d 1012, 141 USPQ 249 (CCPA
1964); and Helene Curtis Industries Inc. v. Suave Shoe
Corp., 13 USPQ2d 1618 (TTAB 1989).
The record shows that there have been no known
instances of actual confusion in about four years of co-
existence. However, applicant’s film festival is a once-a-
year event. Further, opposers’ services are offered free,
and applicant does not directly require the consumer to
purchase his services (organizing exhibitions for children).
Rather, applicant charges a fee to attend a film event,
generally around $5-$10. In these circumstances it is less
likely that consumers will complain about the respective
services. As a result, neither applicant nor opposers are
likely to receive telephone calls or letters from consumers
regarding instances of actual confusion. In any event, the
test is likelihood of confusion, not actual confusion. See
In re Kangaroos U.S.A., 223 USPQ 1025 (TTAB 1984).
We agree with applicant that there is no evidence of
applicant’s intent to cause confusion in this case.
Nonetheless, this factor is of little weight in this case
because, as stated by the Court of Appeals for the Federal
Circuit (our primary reviewing court), in J & J Snack Foods
Opposition No. 115326
17
Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889,
1891 (Fed. Cir. 1991): “Whether there is evidence of
intent to trade on the goodwill of another is a factor to
be considered, but the absence of such evidence does not
avoid a ruling of likelihood of confusion. (citation
omitted).”
As the newcomer, applicant has the opportunity of
avoiding confusion, and is obligated to do so. See In re
Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed.
Cir. 1988).
On balance, and considering all of the evidence on the
relevant du Pont factors, we find that confusion is likely
between applicant’s mark GUERRILLA KIDS and opposers’ mark
GUERRILLA GIRLS, when used on their repsective services, as
identified.
Decision: The opposition is sustained, and
registration to applicant is refused.