Johnson Publishing Co., Inc.v.Satellite Entertain-ment Communi-cations Co., Ltd.

Trademark Trial and Appeal Board

Aug 10, 2005

No. 91153167 (T.T.A.B. Aug. 10, 2005)

Mailed:
10 August 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Johnson Publishing Company, Inc.
v.
Satellite Entertainment Communications Co., Ltd.
_____

Opposition No. 91153167
to application Serial No. 78023525

_____

Leslie A. Bertagnolli of Baker & McKenzie for Johnson
Publishing Company, Inc.

Lin-Yun Cheng of Pro-Techtor International Services for
Satellite Entertainment Communications Co., Ltd.1
______

Before Seeherman, Drost, and Kuhlke, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On August 29, 2000, Satellite Entertainment
Communications Co., Ltd. (applicant) applied to register the
JET and design mark shown below for “television broadcasting
services, cable television broadcasting, pay-per-view
television transmission services, and cable television
transmission services” in Class 38.

1 The only paper filed by applicant in this case was the Answer.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Opposition No. 91153167
2

The application contains an allegation of a date of first
use of January 1, 1997, and a date of first use in commerce
of October 1, 1999.
On August 5, 2002, Johnson Publishing Company, Inc.
(opposer) opposed the registration of applicant’s mark on
the ground that applicant’s mark is likely to cause
confusion with opposer’s two registered marks. The first
registration is for the mark JET (stylized) for “periodical
publications” in Class 16.2

Opposer’s second registration is also for the mark JET
but in a typed or standard character drawing. The goods in
that registration are identified as “magazines featuring
news, current events, fashion, sports, cosmetics and beauty
care, entertainment, photographic features and business;

2 Registration No. 563,152 issued August 19, 1952.
Opposition No. 91153167
3
books featuring black history, culture and achievements;
calendars; magazines for children” in Class 16.3
Opposer also pleaded ownership of two registrations for
the mark EBONY/JET in standard character form. The first
(No. 1,295,038) was for “entertainment services-namely,
television programs featuring personal and professional
lives of celebrities and public figures, awards ceremonies
and on the air magazine format productions” in Class 41 and
the second (No. 2,148,721) was for “prerecorded video tapes
for use in entertaining and educating children, preteen[s]
and teenagers; and prerecorded video tapes on topics in the
areas of finance and health and entertainment which feature
African American artists or on subjects of interest to
African Americans; finance and health” in Class 9. However,
both registrations have now been cancelled so neither would
prevent the registration of applicant’s mark.
In its notice of opposition (p. 3), opposer also
maintains that “since long prior to the filing date of the
Application, [it] used the JET mark and other marks
including the word JET (or a form of that word) as a
prominent part. Opposer’s use has been valid and continuous
and has not been abandoned, and has included use on services
similar or related to those covered by the Application.”

3 Registration No. 1,206,138 issued August 24, 1982.
Opposition No. 91153167
4
Applicant has denied the salient allegations of the
notice of opposition.
The Record
The record consists of the pleadings, the file of the
involved application; opposer’s Notice of Reliance filed
September 29, 2003 for various JET and EBONY magazine covers
and pages, registrations, and NEXIS printouts, and opposer’s
requests for admissions.
Preliminary Issue
Before we can begin our discussion on the merits, it is
necessary to address some preliminary matters. We start by
noting that an opposer must have standing to bring an
opposition proceeding. An opposer must have “a ‘real
interest’ in the outcome of a proceeding in order to have
standing.” Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d
1023, 1025 (Fed. Cir. 1999). “To establish a reasonable
basis for a belief that one is damaged by the registration
sought to be cancelled, a petition may assert a likelihood
of confusion which is not wholly without merit.” Lipton
Industries v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ
185, 189 (CCPA 1982).4

4 Because of the linguistic and functional similarities of the
opposition and cancellation provisions of the Lanham Act, “we
construe the requirements of those two sections of the Lanham Act
consistently.” Ritchie, 50 USPQ2d at 1025 n. 2.
Opposition No. 91153167
5
We have already noted that two of the registrations
that opposer refers to in its notice of opposition are
cancelled (Nos. 1,295,038 and 2,148,721) so these expired
registrations do not demonstrate that opposer has standing.
Opposer also claims ownership of two other registrations
(Nos. 563,152 and 1,206,138). Obviously, if these
registrations were of record, standing would not be an issue
to the extent that opposer would have set out a non-
frivolous claim of likelihood of confusion. See Cunningham
v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844
(Fed. Cir. 2000) (“These registrations and the products sold
under the mark they register suffice to establish Laser
Golf's direct commercial interest and its standing to
petition for cancellation of Cunningham's LASERSWING
mark”).
Trademark Rule 122(d)(1) (37 CFR § 2.122(d)(1)) sets
out the requirements for introducing a party’s registration
into evidence in an inter partes proceeding:
A registration of the opposer or petitioner pleaded in
an opposition or petition to cancel will be received in
evidence and made part of the record if the opposition
or petition is accompanied by two copies (originals or
photocopies) of the registration prepared and issued by
the Patent and Trademark Office showing both the
current status of and current title to the
registration.

The notice of opposition here did not contain status
and title copies. However, there are several other ways for
a party to introduce a registration it owns into evidence
Opposition No. 91153167
6
during a board proceeding besides attaching status and title
copies to the notice of opposition. A party may also
introduce its registration into the record in the following
ways: by identification and introduction during the
testimony period by a qualified witness who testifies
concerning the status and title of the registrations; by
admission in the applicant’s answer; or by the applicant
treating the registration as being of record in its brief.
TBMP § 702.03(a) (2d ed. rev. 2004). Inasmuch as opposer
did not call any witnesses and applicant did not file a
brief and, in its answer, it did not admit the status and
title of opposer’s registrations, opposer’s registrations
are not of record through these means.
However, opposer did submit copies of these
registrations along with its Notice of Reliance. The
question then becomes whether these are status and title
copies. Regarding Registration No. 563,152, opposer has
submitted what appears to be a true copy of renewal
certificates of registration that issued in 1973 and 1993.
The registration issued August 19, 1952. These documents
were submitted by a notice of reliance dated September 29,
2003. Thus, even at the time these documents were
submitted, more than one year after the renewal date,
opposer’s submission did not indicate the current status of
the registration.
Opposition No. 91153167
7
The Trademark Rules provide a means for implementing
this proof of a prima facie case. They require that,
in an opposition proceeding, registrations may be
entered into evidence by (1) furnishing two copies of
each registration prepared and issued by the Patent and
Trademark Office showing both the current status of and
current title to the registration; (2) appropriate
identification and introduction of the registrations
during the taking of testimony; or (3) filing a notice
of reliance on the registrations during Opposer's
testimony period. 37 C.F.R. § 2.122(d) (emphasis
added). These rules are simple and clear, but Hewlett
did not follow them.

Hewlett-Packard Co. v. Olympus Corp., 931 F.2d 1551, 18
USPQ2d 1710, 1713 (Fed. Cir. 1991) (Federal Circuit affirmed
the Board’s dismissal of an opposition pursuant to Trademark
Rule 2.132(a) for opposer’s failure to properly make its
registrations of record). We conclude that opposer has not
submitted status information for Registration No. 563,152,
and it therefore cannot rely on this registration for
standing, priority, or likelihood of confusion purposes.
The next question is whether opposer has properly made
of record its pleaded Registration No. 1,206,138. For this
registration, opposer has submitted what appears to be a
photocopy of a true copy of a certificate of registration
that indicates the registration issued for a term of twenty
years from August 24, 1982. This certificate has an
attestation date of November 2, 1987. Also, opposer has
submitted a copy of a combined “Notice of Acceptance” and
“Notice of Renewal” for Registration No. 1,206,138 with a
mailing date of September 27, 2002. This document, having
Opposition No. 91153167
8
been issued by the USPTO during the pendency of the
opposition, is acceptable evidence of the current status of
this registration. Furthermore, in its request for
admission (p. 3), opposer asked that applicant admit that
opposer “is the owner of U.S. Registration No. 1,206,138.”
Inasmuch as applicant has not responded to this request for
admission, this is considered to be admitted. Fed. R. Civ.
P. 36(a) (“Each matter of which as admission is requested
shall be separately set forth. The matter is admitted
unless, within 30 days after service of the request … the
party to whom the request is requested serves upon the party
requesting the admission a written answer or objection
addressed to the matter”).
When we cobble together the various pieces of
information that opposer submitted, we hold that, while this
is not a textbook example of how to submit status and title
copies of a registration, it does meet the minimum
requirement and Registration No. 1,206,138 for the mark JET
in standard character form is of record and it establishes
opposer’s standing.
Priority
As a result of opposer’s registration (No. 1,206,138)
being of record, opposer has priority. See King Candy Co.
v. Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108, 110
(CCPA 1974).
Opposition No. 91153167
9
Next we look at whether opposer has established priority for
its common law rights. Inasmuch as applicant has not
submitted any evidence, it can rely on the filing date of
its application (August 29, 2000) as its priority date.
Zirco Corp. v. American Telephone and Telegraph Co., 21
USPQ2d 1542, 1544 (TTAB 1991). Opposer has submitted
evidence that it has used the mark EBONY JET SHOWCASE for
television programming. Opposer’s evidence includes
advertisements apparently in its magazine for a television
program called EBONY JET SHOWCASE.5 Opposer has also
submitted numerous NEXIS printouts that refer to the EBONY
JET SHOWCASE program. Only two of the articles are dated
subsequent to 1994. One in Broadcasting & Cable dated March
10, 2003, refers to an individual who “was a national sales
representative for syndicated program Ebony Jet Showcase in
Chicago.” The second printout is from the publication Black
Enterprise dated June 1997. The article refers to John H.
Johnson as a man who “bought and sold three radio stations,
started a book publishing division and produced the former
syndicated television show Ebony/Jet Showcase” (emphasis
added).

5 The date of these advertisements cannot be determined from the
document itself because of the quality of the photocopy. The
notice of reliance indicates that the dates of the magazines are
March 28, 1988, and February 6, 1989.
Opposition No. 91153167
10
Section 2(d) of the Trademark Act provides a bar to
registration if a conflicting mark has been “previously used
in the United States by another and not abandoned.” 15
U.S.C. § 1052(d). “To establish ownership of a mark, the
prior user must establish not only that at some date in the
past it used the mark, but that such use has continued to
the present.” McCarthy’s on Trademarks and Unfair
Competition (4th ed.), § 16:9. See also Id. at § 20:17
(“Proof of prior and continuous use in intrastate commerce
is sufficient to preclude registration”). The Trademark Act
(15 U.S.C. § 1127) provides that “[n]onuse for 3 consecutive
years shall be prima facie evidence of abandonment.” In a
case like this where applicant has not alleged that opposer
has abandoned its mark, we normally do not require opposer
to prove non-abandonment. West Florida Seafood Inc. v. Jet
Restaurants Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1666 (Fed.
Cir. 1994). The Federal Circuit noted that “the party
asserting abandonment bears at a minimum a burden of coming
forth with some evidence of abandonment.” Id. However, in
this case, opposer has voluntarily come forward with
evidence that suggests it is no longer using its mark on
television programming. The article that opposer has
submitted refers to “the former syndicated television show
Ebony/Jet Showcase.” There is no evidence that contradicts
this article’s suggestion of non-use of the mark. We note
Opposition No. 91153167
11
that opposer has the burden of establishing its priority.
See Cerveceria Centroamericana, S.A. v. Cerveceria India
Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989);
Cunningham v. Laser Golf Corp., 55 USPQ2d at 1848. In this
case, opposer’s evidence showing use eight years prior to
the filing of the notice of opposition and suggesting non-
use of the mark after that time is not sufficient to
establish that opposer has priority based on its use of its
EBONY JET SHOWCASE mark on television-related programs.
Auburn Farms Inc. v. McKee Foods Corp., 51 USPQ2d 1439, 1444
(TTAB 1999) (“[T]hese documents must be viewed in the
context of the entire record. Suffice it to say that when
viewed in that context, we simply cannot draw the inference
that the documents outweigh the objective evidence of
nonuse”). Therefore, opposer cannot rely on its common law
use of its EBONY/JET or similar marks for television-related
goods or services.
Likelihood of Confusion
We now address the ultimate issue in this case, i.e.,
whether applicant’s mark for JET and design for “television
broadcasting services, cable television broadcasting, pay-
per-view television transmission services, and cable
television transmission services” is confusingly similar to
opposer’s mark JET for “magazines featuring news, current
events, fashion, sports, cosmetics and beauty care,
Opposition No. 91153167
12
entertainment, photographic features and business; books
featuring black history, culture and achievements;
calendars; magazines for children.”
In likelihood of confusion cases (Section 2(d)), we
analyze the facts as they relate to the relevant factors set
out in In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000).
We start by comparing the goods and services of opposer
and applicant. Opposer’s goods are magazines while
applicant’s services are television programming. We must
consider the goods and services as they are identified in
the identification of goods and services in the application
and registration. Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973)
(“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective
descriptions of goods”). Opposer’s magazines feature news,
current events, fashion, sports, cosmetics and beauty care,
entertainment, photographic features and business; its books
feature black history, culture and achievements; and its
other goods are calendars and magazines for children.
Applicant’s television services are not limited by content
Opposition No. 91153167
13
and therefore we must assume that they include television
programming featuring news, current events, fashion, sports,
cosmetics and beauty care, entertainment, photographic
features and business. Applicant, by failing to respond to
opposer’s requests for admission (p. 4), has admitted that
“Applicant’s Mark is associated with services that are
similar or related to the services and goods associated with
Opposer’s Registration No. … 1,206,138.” Fed. R. Civ. P.
36(a). When we consider that applicant’s television
broadcasting services may include television programming
that is identical to the subject matter of opposer’s
magazines, and in light of applicant’s admission that its
services are similar or related to opposer’s goods, we find
that potential customers are likely to assume that these
magazines and television programs marketed under identical
word marks originate from the same source.
Next, we look at the similarity or dissimilarity of the
marks. We must compare the marks in their entireties, and
not simply the individual features of the marks. In re
Shell Oil, 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed.
Cir. 1993). Both marks are for the same word, JET. The
only difference between the marks is the fact that applicant
displays its mark with a slight stylization and includes a
design. Inasmuch as opposer’s mark is presented in typed or
standard character, there is no viable difference in the
Opposition No. 91153167
14
marks based on the stylization of the mark. Squirtco v.
Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir.
1983). Furthermore, the geometric design in applicant’s
mark would not be verbalized and we do not find that it
would be relied on by consumers to distinguish the mark. To
the extent that the geometric design would be considered a
stylized jet, it only reinforces the meaning of the word
portion of the mark. Therefore, the differences in the
appearance of the marks would not be significant. The
common word in the marks would also be pronounced
identically and the word “Jet” would have the same meaning.
Finally, the commercial impressions of the marks JET and JET
with applicant’s geometric design would be very similar, if
not identical.
In addition to the obvious similarities of the marks,
as discussed above, applicant has also admitted that the
marks are similar. See Opposer’s Request for Admission (p.
3) (“Applicant’s Mark only includes the letters JET, which
is similar in appearance, sound, and connotation to
Opposer’s marks, Registration No. … 1,206,138”) and
(Applicant’s Mark gives the same commercial impression to
consumers as U.S. Registration No. … 1,206,138”).
When both parties are using or intend to use the
identical designation, “the relationship between the goods
on which the parties use their marks need not be as great or
Opposition No. 91153167
15
as close as in the situation where the marks are not
identical or strikingly similar.” Amcor, Inc. v. Amcor
Industries, Inc., 210 USPQ 70, 78 (TTAB 1981). The Federal
Circuit has noted that “[w]ithout doubt the word portions of
the two marks are identical, have the same connotation, and
give the same commercial impression. The identity of
words, connotation, and commercial impression weighs heavily
against the applicant.” In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993). Similarly, in
this case, the word portion of both marks are identical and
this fact weighs heavily against applicant.
Other factors we consider are trade channels and
prospective purchasers. Magazines featuring news, current
events, fashion, sports, cosmetics and beauty care,
entertainment, photographic features and business and
television programs on the same subject matter are likely to
be read and/or viewed by the same consumers. These
viewers/consumers are likely to believe that these magazines
and services are associated with a common source. There is
also no evidence that these purchasers or viewers would be
sophisticated or careful purchasers. Rather, as identified,
opposer’s goods and applicant’s services would be rendered
to the public at large. Therefore, we hold that these
factors favor opposer.
Opposition No. 91153167
16
Finally, we note that there is no evidence that
opposer’s mark is weak or otherwise entitled to only a
narrow scope of protection.
Therefore, when we consider the fact that both marks
are for the identical word JET and that the goods and
services are related as well as the other factors, we
conclude that there is a likelihood of confusion.
Decision: The opposition to the registration of
application No. 78023525 is sustained.