Hearst Communications, Inc.v.Charles Browning Wilson

Trademark Trial and Appeal Board

Jan 16, 2009

No. 91120453 (T.T.A.B. Jan. 16, 2009)

Mailed: 1/16/09

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Hearst Communications, Inc.1
v.
Charles Browning Wilson
_____

Opposition No. 91120453
to application Serial No. 75810043
filed on October 18, 1999
_____

Theodore H. Davis Jr., Olivia Maria Baratta and Lauren T.
Estrin of Kilpatrick Stockton for Hearst Communications,
Inc.

Robert M. Steckman for Charles Browning Wilson.
______

Before Seeherman, Quinn and Walters, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Charles Browning Wilson filed an intent-to-use
application to register the mark COSMO.COM for “providing
on-line information on available entertainment in various

1 The original notice of opposition was filed in the names of
Hearst Communications, Inc. and Hearst Magazines Property, Inc.
The pleaded marks were assigned to Hearst Communications, Inc.,
and the assignment is recorded in the Assignment Branch records
of the Office at reel 3034, frame 0151. Accordingly, the caption
of this proceeding has been changed to show Hearst
Communications, Inc. as the sole opposer.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Opposition No. 91120453
2
cities” (in International Class 41).
Hearst Communications, Inc. opposed registration (over
eight years ago, on September 26, 2000) under Section 2(d)
of the Trademark Act, 15 U.S.C. §1052(d), on the ground of
likelihood of confusion; and under Section 43(c)(1) of the
Trademark Act, 15 U.S.C. §1125(c)(1), on the ground of
dilution. Opposer based its notice of opposition on its
ownership of a family of COSMOPOLITAN and COSMO marks for a
variety of goods and services, including publications and
providing an interactive on-line computer database
featuring, inter alia, entertainment news.
Applicant, in his answer, denied the salient
allegations in the notice of opposition.
The Record
The record consists of the pleadings; and the file of
the involved application. Pursuant to the parties’
stipulation approved by the Board, the parties submitted
trial testimony through declaration testimony and responses
to written cross-examination; the declarations are
accompanied by numerous exhibits. Both parties filed
briefs.
Applicant’s Defense
At the outset, we direct our attention to applicant’s
defense that opposer’s opposition is “barred by the statute
of limitations.” Applicant asserts that he has been using
Opposition No. 91120453
3
the “cosmo.com” domain name since January, 1998, and that
opposer has failed to take any action against applicant’s
use. Thus, according to applicant, the present action is
barred by laches and acquiescence.
Opposer correctly responds with its contention that
inasmuch as the present proceeding involves the right to
register applicant’s mark, opposer’s inaction against
applicant’s use of his mark/domain name is irrelevant. See
National Cable Television Association v. American Cinema
Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424 (Fed. Cir.
1991). In the context of an opposition proceeding, laches
does not begin to run until the mark is published for
opposition. That is to say, laches in an inter partes
proceeding begins to run from the time action could be taken
against the registration of the mark at issue, regardless of
when use of the mark began.
Here, opposer promptly filed a notice of opposition
upon publication of applicant’s mark. Further, applicant
has not submitted any evidence showing that opposer agreed
to or acquiesced in applicant’s obtaining a registration.
Thus, the affirmative defenses fail. Warner-Lambert Co. v.
Sports Solutions Inc., 39 USPQ2d 1686, 1691 (TTAB 1996).
The Parties
Opposer, its predecessors and its licensees have
continuously used in the United States the mark COSMOPOLITAN
Opposition No. 91120453
4
in the magazine publishing industry for over 120 years,
dating back to 1886. Since 1991, opposer has published over
500 million magazines under the marks COSMOPOLITAN and COSMO
GIRL! As of 2006, COSMOPOLITAN magazine was published in
over 25 languages and is sold in more than forty countries,
making it the largest monthly magazine franchise in the
world. In 1998, COSMOPLITAN magazine enjoyed a monthly
average circulation in the United States of 2.6 million,
while in 2000, COSMO GIRL! had a monthly average circulation
in the United States of approximately 600,000.2 Opposer’s
magazines sold under the marks COSMOPOLITAN and COSMO GIRL!
include topics targeted to young women and girls, including
shopping, health and beauty care, career advice, dating
advice, personal growth and entertainment news. More
specifically, COSMOPOLITAN is directed to females aged 18-
34, while COSMO GIRL! is directed to females aged 12-17.
Opposer spends in excess of $16 million annually to promote

2 Opposer, in its reply brief, states that there has been a
change in the facts relating to its use of the mark COSMO GIRL!
since the close of trial and the filing of opposer’s main brief.
More specifically, opposer indicates that it was suspending
publication of its COSMO GIRL! magazine beginning on December 1,
2008. Opposer further states that no decision has been made
regarding future use of the mark for magazines, but that all
other uses of COSMO GIRL, including in connection with the
publication of online content under the mark, continue. Opposer
concludes by stating, “[n]evertheless, [opposer] invites the
Board to resolve this matter without any reliance on the use-
based rights to the COSMO GIRL mark for printed publications
established by [opposer’s] evidentiary submissions.” (Reply
Brief, p. 1). We accept opposer’s invitation, and while we refer
to the registered mark COSMO GIRL!, no additional consideration
will be given thereto in our likelihood of confusion analyis.
Opposition No. 91120453
5
its goods and services under its marks, and the advertising
includes use of print media and the Internet. Abbreviation
of the mark COSMOPOLITAN to “Cosmo” began well prior to
applicant’s adoption of his mark. Through the years opposer
and its magazine, both by virtue of opposer’s use and third-
party references, have become known by the abbreviated term
“Cosmo.” Although not registered as trademarks, opposer
owns many domain names including COSMOTEENS.COM,
COSMOLATINO.COM, COSMOMAG.COM and COSMOGIRL.COM.
Applicant is a professional lighting technician for
rock and roll concert tours. Mr. Wilson has worked with
some of the best known bands in music, including The Rolling
Stones, AC/DC, Black Sabbath and Genesis. Since the mid-
1980s, Mr. Wilson has been known in the concert touring
industry as “Cosmo.” Applicant purchased the domain name
“cosmo.com” in 1998, using the website address as a portal
“to discuss my travels, tours and to provide information
about entertainment and recreational options in the many
cities I have visited in the course of my career.” (Wilson
test., ¶11). Applicant states that his site receives about
10,000 hits per day. Applicant has invested approximately
$200,000 in developing, promoting and maintaining his
website.
Opposition No. 91120453
6
Standing
Opposer has established its standing to oppose
registration of the involved application. In particular,
opposer has properly made its pleaded registrations of
record (see infra) and, further, has shown that it is not a
mere intermeddler. Opposer’s use and registrations of its
marks establish that opposer has standing. See Cunningham
v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir.
2000); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023
(Fed. Cir. 1999); and Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Opposer has introduced status and title copies of
thirty-one of its registrations.3 The registered marks
include COSMOPOLITAN for “magazine or periodical published
monthly or at other intervals”;4 COSMOPOLITAN.COM for
“computer services, namely providing an interactive on-line
computer database featuring portions of various magazines
and articles and illustrative materials in the fields of
personal relationships, beauty and fashion, health and
fitness, personal hygiene, stars and entertainment news, and
life and work, rendered by means of a global computer

3 With respect to certain of the registrations, we have taken
judicial notice of the updated status of them. See Time Warner
Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002); and TBMP
§704.03(b)(1)(A).
4 Registration No. 630028, issued July 3, 1956; renewed.
Opposition No. 91120453
7
network”;5 COSMO GIRL (“GIRL” disclaimed) for “general
interest magazine for girls and young women”;6 and COSMO
GIRL! for “providing an interactive on-line computer
database featuring portions of various magazines and
articles and illustrative materials in the fields of
personal relationships, beauty and fashion, health and
fitness, personal hygiene, stars and entertainment news and
life and work, rendered by means of a global computer
network.”7 Opposer also has registered its COSMOPOLITAN
mark for a variety of goods, including books, pre-recorded
video tapes and video cassettes, pre-recorded compact discs
and audio cassettes, hair ornaments and eye glasses.8
Priority
In view of opposer’s ownership of valid and subsisting
registrations, there is no issue regarding opposer’s
priority. King Candy, Inc. v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Thus, the only

5 Registration No. 2518660, issued December 11, 2001; Section 8
affidavit accepted, Section 15 affidavit acknowledged.
6 Registration No. 2527954, issued January 8, 2002; Section 8
affidavit accepted, Section 15 affidavit acknowledged.
7 Registration No. 2407134, issued November 21, 2000; Section 8
affidavit accepted, Section 15 affidavit acknowledged.
8 Applicant, in his brief (p. 10, fn 5), “recognizes that opposer
registered ‘Cosmo’ for ‘Magazines featuring information on
women’s services, beauty, health, and human relationships’ in
International Class 16 under registration 3372644 in January,
2008.” Although opposer did not make this registration of
record, we deem applicant to have stipulated the registration
into the record. Nevertheless, inasmuch as opposer did not refer
to the registration in either of its briefs, we have not relied
on it in rendering our decision.
Opposition No. 91120453
8
issue to decide herein is likelihood of confusion.
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion issue.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). Opposer must establish that there is
a likelihood of confusion by a preponderance of the
evidence. The relevant du Pont factors in the proceeding
now before us are discussed below.
Fame
Inasmuch as opposer introduced evidence bearing on the
fame of its marks, we now turn to consider this du Pont
factor. Fame of the prior mark plays a dominant role in
likelihood of confusion cases featuring a famous mark. Bose
Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d
1303 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d
1322, 54 USPQ2d 1894 (Fed. Cir. 2000); and Kenner Parker
Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22
USPQ2d 1453 (Fed. Cir. 1992). Fame for likelihood of
confusion purposes arises “as long as a significant portion
of the relevant consuming public...recognizes the mark as a
source indicator.” Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1694 (Fed. Cir. 2005). Given the nature of opposer’s
Opposition No. 91120453
9
goods and services, the relevant consuming public herein
comprises the general public.
The record establishes that opposer’s COSMOPOLITAN mark
has been extensively used in connection with magazines for
over 100 years, and that opposer also has used this mark and
other COSMOPOLITAN marks on a variety of goods and services.
Opposer’s most recent figures show that in 1998 COSMOPOLITAN
magazine had a monthly average circulation in excess of 2.6
million copies in this country. Opposer’s advertising
expenditures in 2005 exceeded $16.2 million.
Unsolicited references to opposer’s COSMOPOLITAN mark and
its magazine sold under the mark routinely have been made by
others in a variety of contexts.
Although applicant referred to the existence of third-
party registrations and uses of COSMOPOLITAN and COSMO
marks, the record is devoid of any evidence to establish
this fact.
Based on the record before us, we find that the mark
COSMOPOLITAN is famous for magazines. This factor weighs
heavily in opposer’s favor. Although the mark may enjoy
some renown in connection with other goods and services, we
are not prepared to say, at least on the present record,
that the mark is famous for opposer’s other goods and
services.
Opposition No. 91120453
10
Family of Marks
Opposer contends that it owns a family of COSMOPOLITAN
and COSMO marks. With respect to this claim, we look to our
primary reviewing court for guidance:
A family of marks is a group of marks
having a recognizable common
characteristic, wherein the marks are
composed and used in such a way that the
public associates not only the
individual marks, but the common
characteristic of the family, with the
trademark owner. Simply using a series
of similar marks does not of itself
establish the existence of a family.
There must be recognition among the
purchasing public that the common
characteristic is indicative of a common
origin of the goods. Recognition of the
family is achieved when the pattern of
usage of the common element is
sufficient to be indicative of the
origin of the family.

J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460,
18 USPQ2d 1889, 1891 (Fed. Cir. 1991). In the past, the
Board has looked at whether the marks asserted to comprise a
“family” have been used and advertised in promotional
material or used in everyday sales activities in such a
manner as to create common exposure and, thereafter,
recognition of common ownership based upon a feature common
to each mark. American Standard, Inc. v. Scott & Fetzer
Co., 200 USPQ 457, 461 (TTAB 1978).
We have no qualms with opposer’s assertion that the
number of its COSMOPOLITAN and COSMO marks in use is more
than sufficient to comprise a family. This fact, however,
Opposition No. 91120453
11
is not the end of the story. That is, the mere fact of
adoption, use and/or registration of several marks
incorporating COSMOPOLITAN or COSMO, as in the case here
with opposer, does not in itself prove that a family of
marks exists. Polaroid Corp. v. Richard Mfg. Co., 341 F.2d
150, 144 USPQ 419 (CCPA 1965); Trek Bicycle Corp. v. Fier,
56 USPQ2d 1527, (TTAB 2000); and Consolidated Foods Corp. v.
Sherwood Medical Industries, Inc., 177 USPQ 279 (TTAB 1973).
Although the record reveals some conjoint use of various
combinations of opposer’s marks, the evidence falls short of
showing that a family of marks has been promoted together.
Accordingly, we find, based on the record before us,
that opposer has not established a family of COSMOPOLITAN or
COSMO marks.
The Marks
Notwithstanding that opposer has relied on many marks
comprising COSMOPOLITAN or COSMO, in whole or in part,
opposer chose to highlight its COSMOPOLITAN.COM mark for on-
line computer services when discussing the similarity
between the marks. (Brief, p. 28). Opposer apparently
views this mark as being the closest to applicant’s mark
and, therefore, providing the strongest case for likelihood
of confusion. Not surprisingly, opposer also places
significant emphasis on its famous COSMOPOLITAN mark for
magazines. We agree that these two marks present opposer’s
Opposition No. 91120453
12
strongest case, and likewise we will focus our analysis on
these two marks.
With respect to the involved marks, we examine the
similarities and dissimilarities of the marks in their
appearance, sound, meaning, and commercial impression. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 73 USPQ2d at 1692. The test is not whether the
marks can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in their entireties that confusion as to the source
of the services offered under the respective marks is likely
to result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). Further, as the
fame of a mark increases, as in the case of opposer’s mark
COSMOPOLITAN for magazines, the degree of similarity between
the marks necessary to support a conclusion of likely
confusion declines. Bose Corp. v. QSC Audio Products Inc.,
63 USPQ2d at 1309.
We find that opposer’s COSMOPOLITAN and
COSMOPOLITAN.COM marks are similar to applicant’s mark
COSMO.COM. It is virtually the same as opposer’s
COSMOPOLITAN mark, differing only in that COSMO is the
shortened form of COSMOPOLITAN and, as discussed below, is
Opposition No. 91120453
13
recognized as an alternate form of COSMOPOLITAN. As for
opposer’s COSMOPOLITAN mark, the “.COM” portion of
applicant’s mark, referring to a top level domain term, has
no source-identifying significance. See In re Reed Elsevier
Properties Inc., 77 USPQ2d 1649 (TTAB 2005), aff’d, 482 F.3d
1376, 82 USPQ2d 1378 (Fed. Cir. 2007). 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. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985) [“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 consideration of
the marks in their entireties. Indeed, this type of
analysis appears to be unavoidable.”] Given the lack of
source-indicating significance of “.COM,” there is nothing
improper, in comparing applicant’s mark to opposer’s mark
COSMOPOLITAN, to give less weight to the “.COM” portion.
Comparing each of opposer’s marks to applicant’s mark, the
marks are similar in sound and appearance. Further, the
marks convey the same meaning and engender virtually
identical overall commercial impressions.
Opposer often uses COSMO in connection with its goods
and services. Opposer’s COSMOPOLITAN magazine has included
Opposition No. 91120453
14
features captioned as Cosmo Quiz, Cosmo Surveys, Cosmo FAQS,
Connect With Cosmo, Cosmo Exclusives and Everything Cosmo,
among several others. The record also is replete with
examples of third parties referring to opposer and its mark
as “Cosmo.” Representative examples include the following:
COSMO’S MOMENT: Cosmopolitan magazine
is featured prominently in the new
movie, “Legally Blonde,” starring Reese
Witherspoon. She plays a gorgeous
blonde law student and avid Cosmo
reader, who initially is not taken
seriously.
(Women’s Wear Daily, July 20, 2001)

Cosmopolitan and Glamour, the two mags
that dominate the so-called Glazmo
niche...both mags’ April issues are
flanked by Hollywood’s A-list...Renee
Zellwegger is caught somewhere between a
smirk and a smile on Cosmo.
(Daily Variety, March 31, 2003)

Cosmo is still pulling in readers.
Cosmopolitan reported a 9.5 percent gain
in paid circulation to 3 million copies,
continuing a growth spurt seen in early
2002.
(Newsday, February 20, 2003)

Ms. [Kate] White [editor in charge of
the American version of Cosmopolitan]
paused so that the women, all of whom
edit international versions of Cosmo,
could absorb the deep implications of
the trend...
(New York Times, May 26, 2002)

Cosmo’s editor moves to Glamour, heating
up the competition between two ad-rich
magazines.
(New York Times, August 11, 1998)

There is no question but that “Cosmo” is commonly used by
opposer and others as an abbreviated name for opposer’s
Opposition No. 91120453
15
COSMOPOLITAN magazine. The consuming public recognizes
this, the result being that “Cosmo” is viewed as essentially
an alter ego of opposer and its magazine. Simply put, when
consumers encounter applicant’s mark COSMO.COM they will
perceive this mark as similar to opposer’s marks
COSMOPOLITAN and COSMOPOLITAN.COM.
The similarity between the marks weighs in opposer’s
favor.
The Goods and Services
It is well established that the goods and/or services
of the parties need not be similar or competitive, or even
offered through the same channels of trade, to support a
holding of likelihood of confusion. It is sufficient that
the respective goods and/or services of the parties are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods and/or
services 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 source. See Hilson
Research, Inc. v. Society for Human Resource Management, 27
USPQ2d 1423 (TTAB 1993); and In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The issue,
of course, is not whether purchasers would confuse the goods
and/or services, but rather whether there is a likelihood of
Opposition No. 91120453
16
confusion as to the source of the goods and/or services. In
re Rexel Inc., 223 USPQ 830 (TTAB 1984). The question of
likelihood of confusion must be determined based on an
analysis of the goods and/or services recited in applicant’s
application vis-à-vis the goods and/or services identified
in opposer’s pleaded registration(s). Canadian Imperial
Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed.
Cir. 1992.
With respect to the parties’ services, opposer’s
“computer services, namely providing an interactive on-line
computer database featuring portions of various magazines
and articles and illustrative materials in the fields of
personal relationships, beauty and fashion, health and
fitness, personal hygiene, stars and entertainment news, and
life and work, rendered by means of a global computer
network” are legally identical to or, at the very least, are
closely related to applicant’s “providing on-line
information on available entertainment in various cities.”
When comparing applicant’s services to opposer’s
“magazine or periodical published monthly or at other
intervals,” we find that they are closely related. As is
obvious, opposer itself offers both magazines and online
computer services under essentially the same mark, showing
that both types of goods and services can emanate from a
single entity. Further, it is common knowledge that
Opposition No. 91120453
17
magazine publishers routinely operate websites to provide an
electronic or enhanced version of their printed magazines.
Opposer is no exception, and it is beyond dispute that the
general public is aware of this industry practice, and has
come to expect such circumstances. Ordinary consumers of
opposer’s magazine are likely to expect that opposer would
offer an online version of its COSMOPOLITAN magazine and/or
otherwise provide related content on the Internet. The
record demonstrates that opposer’s magazine content covers a
wide range of topics, including entertainment news and
information, similar to the type of entertainment
information provided by applicant. See The Conde Nast
Publications Inc. v. Vogue Travel, Inc., 205 USPQ 579 (TTAB
1979) [VOGUE for magazine likely to cause confusion with
VOGUE and design for travel agency services]. Simply put,
opposer’s online services rendered under the mark
COSMOPOLITAN.COM that are concomitant with its publication
of a magazine under the famous mark COSMOPOLITAN would lead
consumers to mistakenly believe that applicant’s online
services offered under the mark COSMO.COM originate with
opposer. See Penthouse International, Ltd. v. Dyn
Electronics, Inc., 196 USPQ 251 (TTAB 1977), aff’d
unpublished opinion, (CCPA, Appeal No. 77-615, Jan. 26,
1978); American Heritage Publishing Co., Inc. v. Camillus
Cutlery Co., 154 USPQ 451 (TTAB 1967); HMH Publishing Co.,
Opposition No. 91120453
18
Inc. v. Breglia, 141 USPQ 36 (TTAB 1964); and Johnson
Publishing Company, Inc. v. McLendon, 133 USPQ 486 (TTAB
1962).
The legal identity between the parties’ services and
the close relationship between opposer’s magazine and
applicant’s online services is a factor that weighs in
opposer’s favor.
Trade Channels, Purchasers and Conditions of Sale
As indicated above, opposer’s and applicant’s on-line
computer services are legally identical. Thus, we must
presume that they are rendered in identical trade channels
and are purchased by the same consumers. The purchasers
comprise the general public, and these ordinary consumers
would use nothing more than ordinary care in making their
purchasing decisions.
Opposer’s magazine and applicant’s on-line computer
services may travel in different trade channels although, as
the record establishes, portions of opposer’s COSMOPOLITAN
magazine appear on opposer’s COSMOPOLITAN.COM website. The
parties’ goods and services end up in the hands of the same
consumers. Again, the class of purchaser is identical,
namely ordinary consumers who would exercise only ordinary
care when purchasing magazines and on-line computer
services.
Opposition No. 91120453
19
The similarity in trade channels and classes of
purchasers weighs in favor of a finding of likelihood of
confusion.
Actual Confusion
Opposer contends that actual confusion is “rampant” and
“pervasive in the marketplace.” In support of this
contention, opposer submitted evidence of many misdirected
emails produced by applicant in response to discovery
requests. In its brief opposer reproduces the texts of
forty-eight emails received by applicant. (Brief, pp. 10-
17). It is clear that in each instance the email sent to
applicant was intended for opposer. The emails concern
subscription matters regarding opposer’s magazine, as well
as comments/responses from readers about certain articles
appearing in opposer’s magazine.
Applicant dismisses this evidence by indicating that he
received the emails in the initial year of his ownership of
the domain name “cosmo.com,” and counsel asserts that such
emails are no longer received, except on rare occasions.
Applicant further contends that mere carelessness or
inattentiveness is not actual confusion. Applicant also
argues that the evidence constitutes inadmissible hearsay
and should be excluded.
The record clearly establishes that consumers of
opposer’s magazine have contacted applicant at his cosmo.com
Opposition No. 91120453
20
website under the mistaken impression that they were
contacting opposer. Applicant himself states that “[i]t is
safe to assume that these individuals simply guessed (back
in 1999) that the cosmo.com domain was the property of
Opposer.” (Brief, p. 14). This is exactly the point.
Given the fame of the COSMOPOLITAN mark for magazines, and
that opposer also operates a website, coupled with the fact
that opposer’s famous mark is often shortened to COSMO, it
is not surprising that consumers have misdirected emails to
applicant. There is no indication that consumers
misdirected their emails as a result of carelessness; rather
we only can conclude that there is a perceived connection
between opposer and applicant.9 Further, the record
includes examples of misdirected emails that occurred as
late as mid-2002.
As often stated, proof of actual confusion is not
necessary to establish likelihood of confusion. Giant Food,
Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ
390, 396 (Fed. Cir. 1983). Even in the absence of evidence
of actual confusion, we would reach the same result in this
case. We find, however, that the evidence of actual
confusion is probative and is indicative of a likelihood of

9 We do not view the emails as hearsay inasmuch as this evidence
is not offered to prove the truth of the consumers’ statements
therein regarding their subscriptions or views on various
articles in opposer’s magazine.
Opposition No. 91120453
21
confusion between the parties’ marks.
Intent
Applicant asserts that he adopted his mark in good
faith. Suffice it to say, lack of intent to trade on
another’s mark will not prevent a finding of likelihood of
confusion when the involved marks are likely to cause
confusion. Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d
1635, 1640 (TTAB 1988).
Conclusion
We find that the du Pont factors, on balance, weigh in
favor of a finding of likelihood of confusion.
We conclude that consumers familiar with opposer’s
magazine sold under the mark COSMOPOLITAN, and opposer’s on-
line computer services featuring portions of the magazine,
including entertainment news, rendered under the mark
COSMOPOLITAN.COM, would be likely to believe, upon
encountering applicant’s mark COSMO.COM for on-line
information services featuring available entertainment in
various cities, that the goods and services originate from
or are associated with or sponsored by the same entity.
Dilution
In view of the decision to sustain the opposition on the
ground of likelihood of confusion, it is not necessary to
consider opposer’s dilution claim.
Opposition No. 91120453
22
Decision: The opposition is sustained on the ground of
likelihood of confusion, and registration to applicant is
refused.