God’s Property, Inc.

Trademark Trial and Appeal Board

Aug 20, 2007

No. 78739748 (T.T.A.B. Aug. 20, 2007)

Mailed:
August 20, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re God’s Property, Inc.
________

Serial No. 78739748
_______

Danielle I. Mattessich of Merchant & Gould P.C. for God’s
Property, Inc.

Jason Paul Blair, Trademark Examining Attorney, Law Office
102 (Chris Doninger, Managing Attorney).
_______

Before Seeherman, Kuhlke and Bergsman, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

God’s Property, Inc. seeks registration on the
Principal Register of the mark GOD’S PROPERTY (in standard
character form) for “pants, shorts, hats, jackets, boots,
beach cover-ups, clothing belts, bathing caps, cloth bibs,
coats, shoes, socks, sun visors, swimsuits, undergarments,
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78739748
2
pajamas” in International Class 25.1 Registration has been
refused under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark, when used
with the identified goods, so resembles the registered
marks GOD’S PROPERTY (in typed form) for “entertainment
services in the nature of live musical performances” in
International Class 412 and “series of prerecorded audio
cassette, video cassettes, cartridge tapes and phonograph
records all featuring music and entertainment, namely,
musical entertainment” in International Class 9,3 as to be
likely to cause confusion, mistake or deception. The
registered marks are owned by the same entity, TCI
Entertainment, Inc.4
The appeal is fully briefed. We affirm the refusal to
register.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative

1 Application Serial No. 78739748, filed October 25, 2005,
alleging a bona fide intention to use the mark in commerce under
Trademark Act Section 1(b), 15 U.S.C. §1051(b).

2 Registration No. 2575476, issued June 4, 2002.

3 Registration No. 2575477, issued June 4, 2002.

4 We note that the examining attorney cited another registered
mark, GOD’S PROPERTY Reg. No. 2291735 owned by a third party, as
a bar to registration of applicant’s mark. However, this cited
Reg. No. 2291735 was cancelled on August 12, 2006 and, therefore,
is no longer an issue in this appeal.
Serial No. 78739748
3
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
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,
two key considerations are the similarities between the
marks and the similarities between the goods and services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
As to the first factor, the similarity of the marks,
here the marks are identical and this factor weighs heavily
in favor of a finding of likelihood of confusion. Further,
this finding has an impact on the second du Pont factor,
the similarity or dissimilarity of the goods and services,
because the greater the degree of similarity between the
applicant’s mark and the cited registered marks, the lesser
the degree of similarity between the applicant’s goods or
services and the registrant’s goods or services that is
required to support a finding of likelihood of confusion.
Where the applicant’s mark is identical to the registrant’s
mark, as it is in this case, there need be only a viable
relationship between the respective goods or services in
Serial No. 78739748
4
order to find that a likelihood of confusion exists. In re
Opus One Inc., 60 USPQ2d 1812 (TTAB 2001); In re Concordia
International Forwarding Corp., 222 USPQ 355 (TTAB 1983).
Moreover, it is well established that it is not necessary
that the goods of the parties be similar or competitive, or
even that they move in the same channels of trade, to
support a holding of likelihood of confusion. It is
sufficient that the respective goods of the parties are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods 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 producer. In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
Applicant’s clothing items, and registrant’s musical
entertainment performances and recordings are obviously not
directly competitive or overlapping goods and services.
However, because names of music groups and performers can
be used as trademarks for merchandising products the goods
and services may be related for purposes of a likelihood of
confusion analysis. As noted in a case involving a
television show, “[i]t is common knowledge ... that video
games, t-shirts, beach towels, caps and other logo-
Serial No. 78739748
5
imprinted products are used as promotional items for a
diverse range of goods and services...” Turner
Entertainment Co. v. Nelson, 38 USPQ2d 1942, 1944 (TTAB
1996). See also General Mills Fun Group, Inc. v. Tuxedo
Monopoly, Inc., 204 USPQ 396, 400 (TTAB 1979), aff’d 648
F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (“‘collateral
product’ use is a matter of textbook discussion”); and In
re Phillips-Van Heusen Corporation, 228 USP 949, 951 (TTAB
1986) (“The licensing of commercial trademarks for use on
‘collateral’ products (such as clothing, glassware, linens,
etc.), which are unrelated in nature to those goods or
services on which the marks are normally used, has become a
common practice in recent years...).
In support of his contention that applicant’s various
clothing items are related to registrant’s musical group
entertainment services and music recordings, the examining
attorney submitted several third-party use-based
registrations to show that numerous entities have adopted a
single mark for applicant’s clothing items and registrant’s
music group entertainment services and musical recordings.
See, e.g., Reg. No. 2384693 (MATCHBOX 20 for, inter alia,
series of compact discs and vinyl records featuring musical
sound recordings, t-shirts, sweatshirts and hats, and
entertainment, namely, live performances by a musical
Serial No. 78739748
6
band); Reg. No. 2542422 (NEVILLE BROTHERS for, inter alia,
series of pre-recorded phonograph records, audio cassettes,
audio tapes, video tapes, recording discs and compact discs
featuring music, t-shirts, sweatshirts, and headwear, and
entertainment services, namely, live music performances by
a vocal instrumental and musical group); Reg. No. 2616617
(THE FOUR TOPS for, inter alia, phonograph records, compact
discs, cassette tapes, video tapes, video discs and floppy
discs featuring musical and/or video recordings of musical
performance, containing musical sound and/or video
recordings...featuring musical performances, t-shirts,
shorts, sweatshirts, jackets, tank tops, and caps,
entertainment services, namely, live performances by a
musical band); Reg. No. 2706191 (NICKLEBACK for, inter
alia, series of musical sound recordings, recorded on
compact discs, t-shirts and hats, entertainment services,
namely live performances by a musical group); Reg. No.
26625549 (O-TOWN for, inter alia, pre-recorded compact
discs, audio cassettes and video cassettes featuring music,
hats, t-shirts and jackets, entertainment services in the
nature of live performances by a musical group); Reg. No.
2708805 (BETTER THAN EZRA for, inter alia, entertainment,
namely live musical performances by a musical group whose
members sing and play musical instruments, t-shirts,
Serial No. 78739748
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sweatshirts, headwear and canvas hats, series of
prerecorded compact discs and audio cassette tapes
featuring music); Reg. No. 2787451 (G-UNIT for, inter alia,
pre-recorded phonograph records, compact discs, audio and
video cassettes, and dvds featuring music, hats, t-shirts,
jackets, shirts, sweatshirts and sweat pants and jerseys,
entertainment services in the nature of live performances
by the musical group); and Reg. No. 2780615 (LIFEHOUSE for,
inter alia, pre-recorded audio tapes, compact discs, video
tapes, video discs and phonograph records all featuring
music, shirts, jackets, jerseys, t-shirts, sweatshirts,
pants, shorts, and headwear, entertainment namely live
musical performances). See In re Albert Trostel & Sons
Co., 29 USPQ2d 1783 (TTAB 1993). In addition, he submitted
third-party registrations of marks that consist of the name
of individual musical performers. See, e.g., Reg. No.
3036055 (PUFF DADDY for, inter alia, jackets, t-shirts,
sweatshirts, and headwear); and Reg. No. 2266899 (PUFF
DADDY for, inter alia, musical sound recordings).
The examining attorney argues that these registrations
serve to suggest that the goods and services listed
therein...are of a kind that may emanate from a single
source...[and that] [b]ecause recording artists and record
labels so routinely register their marks for clothing
Serial No. 78739748
8
products, goods such as those in applicant’s identification
of goods are well within the cited registrant’s ‘zone of
expansion.’” Br. p. 5.
Applicant counters with its own set of third-party
registrations, contending that there are several examples
where the identical mark registered by different parties
for entertainment services or recordings and for clothing.
The fact that different third parties may own these
registrations does not negate those examples of common
ownership submitted by the examining attorney and what that
may suggest as to consumer perception in the marketplace.
We find the examining attorney’s third-party registrations
persuasive evidence as to the factor of the relatedness of
the goods and services, at least as to applicant’s hats and
jackets. Further, in view of our findings with respect to
applicant’s hats and jackets, and registrant’s music group
entertainment services and recordings, we need not discuss
applicant’s remaining goods in International Class 25.
Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d
1335, 209 USPQ 986 (CCPA 1981).
Applicant relies on Michael Caruso & Co. v. Estefan
Enterprises, Inc., 994 F.Supp. 1454, 1461 (S.D.Fla. 1998)
in support of its argument that the goods are unrelated.
In that case, the court stated that “The mere fact that
Serial No. 78739748
9
defendants sell some clothing items and plaintiff
specializes in retail apparel does not establish proximity
of the goods for purposes of likelihood of confusion.”
However, that case involved a claim of infringement and
thus the analysis was made in the context of the specific
marketplace uses of that plaintiff and that defendant. In
determining the question of registrability, however, we
must consider the identifications of goods and services as
they appear in the registrations and application.
Regarding the trade channels, applicant argues that
clothing is typically “sold in retail clothing stores to
consumers seeking to purchase apparel while musical sound
recordings are sold in record stores to consumers seeking
to purchase new musical records.” Br. p. 5. The examining
attorney argues that because the application and
registrations are not limited by trade channels we must
presume an overlap in trade channels. However, we must
consider the ordinary channels of trade for the identified
goods and services, and, while it may be that t-shirts,
hats and jackets are sold alongside musical recordings at
the entertainment venue where the musical services are
being provided, this is a very limited trade channel
specific to a particular music group and not a channel of
trade for hats and jackets in general. Thus, we do not
Serial No. 78739748
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find that there is an overlap in the channels of trade.
However, as the examining attorney noted “the clothing
items of recording artists and musical performers may be
sold in retail clothing stores alongside applicant’s
clothing products.” Br. p. 5. Thus, despite differing
trade channels the same consumers could encounter both
types of goods and services, and because of the
merchandising/collateral use of musical group names,
consumers could associate the hats and jackets with
registrant’s goods and services.
With regard to the potential purchasers, the involved
goods and services are sold to the general public, thus the
purchaser base overlaps. Applicant’s goods, which as
identified could include inexpensive items, would not be
purchased with a great deal of care and could be subject to
impulse purchases such that a consumer familiar with
registrant’s music performances, upon seeing a cap with the
identical mark, might purchase it without further
consideration of the origin of the hat. In our analysis,
we must consider all potential customers, including the
less sophisticated. In re Bercut-Vandervoort & Co., 229
USPQ 763, 765 (TTAB 1986) (average ordinary wine consumer
must be looked at in considering source confusion).
Serial No. 78739748
11
In view of the above, the du Pont factors of the
relatedness of the goods and services, class of purchasers
and conditions of sale favor a finding of likelihood of
confusion as to the cited registrations.
In making our determination we have considered
applicant’s argument that its companion application, Serial
No. 78511551 for the mark GOD’S PROPERTY for t-shirts and
wrist bands, has issued into Registration No. 3205001 and
that consistent action should be taken in this case. In
support of its argument, applicant cites Section
702.03(a)(ii) in the Trademark Manual of Examining
Procedure (TMEP); however, Section 702.03(a)(i) would be
more applicable inasmuch as the marks in the application
and applicant’s registration are identical.5 This section
instructs examining attorneys to act consistently in
companion cases. The examining attorney argues that this
policy does not apply because the refusal in the companion
application was not withdrawn until after the first refusal
was issued in this case. We are not convinced by the
examining attorney’s position, both because the refusal in

5 Applicant also argues that TMEP §702.03(a)(iv) “instructs that
if a companion application has been published for opposition or
has registered, the examining attorney may presume that the
action taken is acceptable, unless the examination was clearly
wrong.” Br. p. 12. This section of the TMEP pertains only to
the “classification and identification” of goods and not to
substantive refusals.
Serial No. 78739748
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the companion case was withdrawn before issuance of the
final refusal in this case and, more importantly, we do not
see anything in the TMEP that distinguishes the timing of
when actions are taken. However, while the examining
attorneys are encouraged to take consistent action, it is
well settled that the Board is not bound by prior decisions
of examining attorneys, and must decide each case on its
own merits. In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564 (Fed. Cir. 2001).
Finally, applicant argues that the clothing items in
this application are within the zone of expansion of its
registration for t-shirts. We are not persuaded by this
argument. As noted above, the clothing items, in
particular hats and jackets, are also within the zone of
expansion of registrant’s goods and services to the extent
that we have found them to be related. In re 1st USA Realty
Professionals, Inc., ___ USPQ2d ___ (Ser. No. 78553715,
TTAB August 7, 2007).
In conclusion, we find that because of the identical
marks, the relatedness of the goods and services, the
overlap in purchasers, and the conditions of sale,
confusion is likely between applicant’s mark and the marks
in the cited registrations. To the extent there are any
doubts, we resolve them, as we must, in registrant’s favor.
Serial No. 78739748
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In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d
1025 (Fed. Cir. 1988).
Decision: The refusal to register under Section
2(d) of the Trademark Act is affirmed.