International Exhibitions, Inc.v.A.S.P. Inc.

Trademark Trial and Appeal Board

Mar 29, 2005

No. 91159160 (T.T.A.B. Mar. 29, 2005)

Cataldo Mailed: March 29, 2005

Opposition No. 91159160

International Exhibitions,
Inc.

v.

A.S.P. Inc.

Before Hohein, Bucher and Holtzman,
Administrative Trademark Judges.

By the Board:

Applicant, A.S.P. Inc., has filed an application to
register the mark BUILDING A BETTER HOME SHOW for “arranging
and conducting trade shows in the field of home and garden
products and services.”1 Opposer, International Exhibits,
Inc., asserts in its notice of opposition that it is the
owner of the following marks:
FORT WORTH HOME & GARDEN SHOW for “promoting and
conducting trade shows and expositions at which
products and services for the home and yard are
displayed and sold;”2

1 Application Serial No. 78262476 was filed on June 13, 2003,
reciting January 1, 1996 as the date of first use of the mark
anywhere and in commerce in connection with the services.

2 Registration No. 1,757,358, issued to Friends Productions, Inc.
on March 9, 1993 under Section 2(f) of the Trademark Act and
reciting February 1981 as the date of first use and date of first
use in commerce in connection with the recited services. The
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Opposition No. 91159160
2
DALLAS HOME & GARDEN SHOW for “promoting and
conducting trade shows and expositions at which
products and services for the home and yard are
displayed and sold;”3
TEXAS HOME & GARDEN SHOW for “promoting and
conducting trade shows and exhibitions at which
products and services for the home and yard are
displayed and sold;”4
VACATION LEISURE & OUTDOOR SHOW BY IEI and design,
as shown below, for “promoting and conducting
trade shows and exhibitions in the field of sports
vacations, leisure sports and outdoor sports;”5

TEXAS HOME & GARDEN LIVING for “magazines relating
to home and garden matters;”6 and

word “SHOW” is disclaimed apart from the mark as shown. Section
8 affidavit accepted; Section 15 affidavit acknowledged.

3 Registration No. 1,757,359, issued to Friends Productions, Inc.
on March 9, 1993 under Section 2(f) of the Trademark Act and
reciting May 30, 1980 as the date of first use and date of first
use in commerce in connection with the recited services. The
word “SHOW” is disclaimed apart from the mark as shown. Section
8 affidavit accepted; Section 15 affidavit acknowledged.

4 Registration No. 2,328,397, issued to opposer on March 14, 2000
under Section 2(f) of the Trademark Act and reciting 1986 as the
date of first use and date of first use in commerce in connection
with the recited services. The wording “HOME & GARDEN SHOW” is
disclaimed apart from the mark as shown.

5 Registration No. 2,434,739, issued to opposer on March 13, 2001
reciting 1992 as the date of first use and date of first use in
commerce in connection with the recited services. The wording
“VACATION, LEISURE & OUTDOOR SHOW” is disclaimed apart from the
mark as shown.

6 Registration No. 2,594,873, issued to opposer on July 16, 2002
and reciting November 7, 2000 as the date of first use and date
of first use in commerce on the goods. The wording “TEXAS HOME &
GARDEN” is disclaimed apart from the mark as shown.
Opposition No. 91159160
3
HOUSTON HOME SHOW for “conducting trade shows and
expositions in the field of home and garden
products and services.”7

Opposer, in its notice of opposition, further alleges
in essence that it is a leading producer of home and garden
trade shows in the United States; that opposer has made
prior, and continuous, use of its above referenced family of
“HOME SHOW” marks; that the wording “HOME SHOW” in
applicant’s mark is identical to opposer’s marks; that the
parties’ services are identical; and that, as a result of
the foregoing, confusion, mistake, and deception are likely
among consumers as to the source of those services.
Applicant, in its answer, denies the salient
allegations of the notice of opposition, and asserts certain
affirmative defenses.
On November 8, 2004, applicant filed a motion for
summary judgment on the ground of likelihood of confusion.
Opposer has filed a brief in opposition thereto. In
addition, applicant has submitted a reply brief. We find,
however, that the reply is not warranted and, therefore, it
has been given no further consideration.8

7 Registration No. 2,662,190, issued to opposer on December 17,
2002 under Section 2(f) of the Trademark Act and reciting
September 12, 1985 as the date of first use and date of first use
in commerce in connection with the recited services. The wording
“HOME SHOW” is disclaimed apart from the mark as shown.

8 Consideration of reply briefs is discretionary on the part of
the Board. See Trademark Rule 2.127(e)(1).

Opposition No. 91159160
4
In support of its motion for summary judgment,
applicant argues that contrary to opposer’s allegations, the
marks in opposer’s pleaded registrations do not form a
family of “HOME SHOW” marks; that the wording “HOME SHOW” is
generic; that generic terms cannot form the basis of a
likelihood of confusion claim; that only one of opposer’s
pleaded registrations (HOUSTON HOME SHOW) contains the
wording “HOME SHOW”; that, however, opposer’s HOUSTON HOME
SHOW mark and applicant’s mark have in common only the
generic wording “HOME SHOW”; that opposer’s marks are
otherwise dissimilar to that of applicant; and that, as a
result of the foregoing, none of the marks in opposer’s
pleaded registrations is confusingly similar to applicant’s
applied-for mark. Applicant has submitted printed copies of
articles from Internet web sites on the subject of home
shows; copies of newspaper and magazine articles from the
Nexis database on the subject of home shows; lists of State
and Federal trademarks from the Lexis database containing
the wording “HOME SHOW”; and printed copies of third-party
trademark registrations from the Office’s TARR database
containing the wording “HOME SHOW.” In addition, applicant
has submitted the unverified statement of its attorney in
support of the foregoing.
In response, opposer argues that while the wording
“HOME SHOW” may be generic, its marks, when considered in
Opposition No. 91159160
5
their entireties, are confusingly similar to applicant’s
applied-for mark; that its family of “HOME SHOW” marks is
famous after a long and continuous period of use; that, in
addition, applicant’s services are identical or closely
related to opposer’s goods and services; that because the
services rendered under the parties’ marks are identical,
they “are deemed to travel in the same channels of trade to
the same purchasers”; that opposer and applicant are direct
competitors in the same geographic areas; that applicant’s
intent in adopting its mark is to trade on the goodwill of
opposer; that the purchasers of the parties’ services are
not sophisticated; and that applicant’s evidence of third-
party registration of “HOME SHOW” marks is not probative of
third-party use thereof. Opposer has submitted the
affidavit of Mr. Demos Markantonis, one of its officers, in
support of the foregoing.
As has often been stated, summary judgment is an
appropriate method of disposing of cases in which there are
no genuine issues of material fact in dispute, thus leaving
the case to be resolved as a matter of law. See Fed. R.
Civ. P. 56(c). The party moving for summary judgment has
the initial burden of demonstrating the absence of any
genuine issue of material fact. See Celotex Corp. v.
Catrett, 477 U.S. 317 (1986); and Sweats Fashions Inc. v.
Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793 (Fed.
Opposition No. 91159160
6
Cir. 1987). When the moving party's motion is supported by
evidence sufficient, if unopposed, to indicate that there is
no genuine issue of material fact, and that the moving party
is entitled to judgment, the nonmoving party may not rest on
mere denials or conclusory assertions, but rather must
proffer countering evidence, by affidavit or as otherwise
provided in Fed. R. Civ. P. 56, showing that there is a
genuine factual dispute for trial. See Fed. R. Civ. P.
56(e); Copelands' Enterprises Inc. v. CNV Inc., 945 F.2d
1563, 20 USPQ2d 1295 (Fed. Cir. 1991); and Octocom Systems
Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1990).
Turning first to the issue of priority, it appears that
applicant, for purposes of its motion, concedes that opposer
is the owner of subsisting registrations for the marks
pleaded in the notice of opposition. Thus, priority is not
in issue in this case. See King Candy Co., Inc. v. Eunice
King’s Kitchen, Inc. 496 F.2d 1400, 182 USPQ 108 (CCPA
1974).
Turning now to likelihood of confusion, it is well
settled that the determination of whether a likelihood of
confusion exists is made by evaluating and balancing the
pertinent du Pont evidentiary factors. See In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In other words, not every factor is equally
Opposition No. 91159160
7
important to the likelihood of confusion analysis in every
case. Indeed, our principal reviewing court and this Board
frequently has held, in appropriate cases, that a single du
Pont factor may be dispositive of the likelihood of
confusion analysis. See, e.g., Champagne Louis Roederer
S.A. v. Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d 1459
(Fed. Cir. 1998)(dissimilarity of the marks under the first
du Pont factor held dispositive); Keebler Co. v. Murray
Bakery Products, 866 F.2d 1386, 9 USPQ2d 1736 (Fed. Cir.
1989)(dissimilarity of the marks dispositive); Sears
Mortgage Corp. v. Northeast Savings F.A., 24 USPQ2d 1227
(TTAB 1992)(dissimilarity between the marks dispositive);
and Kellogg Co. v. Pack ’Em Enterprises Inc., 14 USPQ2d 1545
(TTAB 1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir.
1991)(dissimilarity of the marks dispositive).
After a careful review of the record in this case, we
believe that application of the first du Pont factor, i.e.,
the similarity or dissimilarity of the marks in their
entireties, is dispositive of this proceeding. Opposer’s
pleaded marks are FORTH WORTH HOME & GARDEN SHOW; DALLAS
HOME & GARDEN SHOW; TEXAS HOME & GARDEN SHOW; VACATION,
LEISURE & OUTDOOR SHOW BY IEI and design; TEXAS HOME &
GARDEN LIVING; and HOUSTON HOME SHOW, while applicant’s mark
is BUILDING A BETTER HOME SHOW. We find that the marks,
when viewed in their entireties, and giving appropriate
Opposition No. 91159160
8
weight to the features thereof, are dissimilar in sound,
appearance and meaning, and convey distinctly different
commercial impressions. The only matter shared by
applicant’s mark and those of opposer is the highly
descriptive, if not generic, wording “HOME SHOW” in one of
opposer’s registrations, and the terms “HOME” and/or “SHOW”
individually in opposer’s other pleaded registrations.9 The
record shows there is no genuine issue of fact that such
terms are, at best, descriptive for the parties’ goods and
services. Thus, the remaining portions of the parties’
marks are the dominant portions upon which purchasing
customers would rely to distinguish the source of their
respective goods and services. Those dominant portions of
the parties’ marks are completely dissimilar and readily
distinguishable in all respects. We are, therefore, of the
opinion that the marks, when considered in their entireties,
are so dissimilar in appearance, sound, and meaning that
there is no likelihood of confusion as a matter of law.
Moreover, opposer has not disclosed any evidence that it
could produce at trial which would reasonably be expected to

9 We find in addition that opposer has failed to establish that
it owns a family of marks. First, the asserted family feature,
i.e., the wording “home show,” is only present in opposer’s
HOUSTON HOME SHOW mark. Second, and as noted above, the term
“home show” is at least descriptive of opposer’s goods and
services, and opposer has failed to make a showing of secondary
meaning in the term. See Norwich Pharmacal Co. v. Salsbury
Laboratories, 168 USPQ 250 (TTAB 1970); and Fort Howard Paper Co.
v. Nice-Pak Prods., Inc., 127 USPQ 431 (TTAB 1960).

Opposition No. 91159160
9
cause us to reach a different conclusion. The first du Pont
factor simply outweighs all of the others that might be
relevant in this case.
In view of the foregoing, applicant is entitled to
summary judgment in its favor on the issue of likelihood of
confusion as a matter of law. See Fed. R. Civ. P. 56(c) and
(e). Applicant’s motion for summary judgment is hereby
granted and the opposition is dismissed with prejudice.