Live in Your City Inc. dba Uprise.FM

Trademark Trial and Appeal Board

Jun 29, 2018

No. 86376781 (T.T.A.B. Jun. 29, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 29, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re Live in Your City Inc. dba Uprise.FM

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Serial No. 86376781
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Frederick Pinto of Pinto Legal,
for Live in Your City Inc.
Udeme Attang, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
_____

Before Wellington, Greenbaum and Coggins,
Administrative Trademark Judges

Opinion by Greenbaum, Administrative Trademark Judge:
Live in Your City Inc. dba Uprise.FM (“Applicant”) filed an application seeking
registration on the Principal Register of the mark UPRISE.FM (in standard
characters) for:
Streaming of audio material on the Internet; Streaming of
audio, visual and audiovisual material via a global
computer network; Streaming of video material on the
Internet; Transmission services via the Internet, featuring
MP3 files and music videos; Video streaming services via
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the Internet, featuring independent films and movies in
International Class 38.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark, when used in connection with Applicant’s services, so resembles
the previously registered mark UPRISE MUSIC (in standard characters) for “Digital
media, namely, downloadable audio files featuring music; Downloadable music via
the internet and wireless devices; Musical sound recordings” in International Class 9
as to be likely to cause confusion, mistake or deception.2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Evidentiary Issue
Applicant attached to its brief several items, including new Internet articles to
which the Examining Attorney has objected.3 We sustain the objection. Only evidence
filed during examination is timely, Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d),
and it should not be submitted (or resubmitted) on appeal. See TBMP § 1203.02(e)

1 Application Serial No. 86376781 was filed on August 26, 2014, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
2 Registration No. 4825035 issued on October 6, 2015.
3 The Examining Attorney specifically does not object to the dictionary definition of the term
“uprise” from the Merriam-Webster dictionary (14 TTABVUE 3 n.2), and we have considered
it.
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(June 2018). Accordingly, we give no further consideration to the evidence submitted
for the first time with Applicant’s brief.
II. Applicable Law – Likelihood of Confusion
When the question is likelihood of confusion, we analyze the facts as they relate
to the relevant factors set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods or services. See In re Chatam Int’l Inc., 380 F.2d 1340, 71 USPQ2d
1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by
§ 2(d) goes to the cumulative effect of differences in the essential characteristics of
the goods and differences in the marks.”). We discuss below these and other relevant
factors. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944,
1947 (Fed. Cir. 2006) (even within du Pont list, only factors that are “relevant and of
record” need be considered). See also In re i.am.symbolic, llc, 866 F.3d 1315, 123
USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers
all DuPont factors for which there is record evidence but ‘may focus … on dispositive
factors, such as similarity of the marks and relatedness of the goods.’”) (quoting
Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed.
Cir. 2002)).
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A. The similarity or dissimilarity of the marks
We begin by comparing Applicant’s standard character mark UPRISE.FM and
Registrant’s standard character mark UPRISE MUSIC “in their entireties as to
appearance, sound, connotation and commercial impression.” In re Viterra, 671 F.3d
1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting du Pont, 177 USPQ at 567).
See also Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,
396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). “The proper test is not a side-
by-side comparison of the marks, but instead whether the marks are sufficiently
similar in terms of their commercial impression such that persons who encounter the
marks would be likely to assume a connection between the parties.” Coach Servs. Inc.
v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(quotation omitted). Further, marks “‘must be considered … in light of the fallibility
of memory ….’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed.
Cir. 2014) (quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565
F.2d 683, 196 USPQ 1 (CCPA 1977)). The proper focus is on the recollection of the
average purchaser, who normally retains a general rather than a specific impression
of trademarks. In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009); Sealed Air Corp.
v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). “[S]imilarity is not a binary factor
but is a matter of degree.” St. Helena Hosp., 113 USPQ2d at 1085 (quoting In re Coors
Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1062 (Fed. Cir. 2003)). Here, the
average customer includes members of the general public who listen to music via the
Internet.
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Our analysis cannot be predicated on dissection of the involved marks. Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161
(Fed. Cir. 2014). Rather, we are obliged to consider the marks in their entireties. Id.
See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234
(CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered
piecemeal; rather, it must be considered as a whole in determining likelihood of
confusion.”). Nonetheless, 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 a consideration of the marks in their entireties. Stone
Lion, 110 USPQ2d at 1161. For instance, as our principal reviewing court has
observed, “[t]hat a particular feature is descriptive or generic with respect to the
involved goods or services is one commonly accepted rationale for giving less weight
to a portion of a mark….” In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985).
Applicant argues that the Examining Attorney improperly dissected Applicant’s
mark. Applicant contends that the term UPRISE is a weak term for music products
and services, and therefore entitled to only a narrow scope of protection. Applicant
further contends that the term “FM” in Applicant’s mark UPRISE.FM is not
descriptive, and that it creates a “distinctive commercial impression with a ‘retro’
style by referencing radio broadcasting”4 while Applicant’s services are provided only
over the Internet. According to Applicant: “The popularity of FM radio being in

4 12 TTABVUE 12.
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decline, and our time being often describe[d] as the ‘Digital Era’ where consumers are
technologically literate, most consumers would be able to understand that the term
‘FM’ is not descriptive of services offered over the Internet.”5 The Examining Attorney
focuses on the visual and connotative similarities between the identical wording
UPRISE, which she contends is the most distinctive portion, and therefore the
strongest source identifying element, of Applicant’s and Registrant’s marks. We agree
with the Examining Attorney’s assessment of the similarity of the marks.
Applicant’s mark UPRISE.FM and Registrant’s mark UPRISE MUSIC are similar
because they share the term UPRISE as their first and most distinctive term. There
is no evidence that the term UPRISE, which is defined as “to rise up in sound,”6 has
anything other than a suggestive meaning with respect to Registrant’s goods. Nor is
there any evidence that third parties have registered or used the term UPRISE on
downloadable music. Cf., Jack Wolfskin Ausrustung Fur Draussen GmbH & Co.
KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1135-36
(Fed. Cir. 2015), cert. denied, 136 S. Ct. 982 (2016) (at least fourteen relevant third-
party uses or registrations of record); Juice Generation, Inc. v. GS Enters. LLC, 794
F.3d 1334, 115 USPQ2d 1671, 1674-75 (Fed. Cir. 2015) (at least twenty-six relevant
third-party uses or registrations of record). Rather, the Examining Attorney
represents that Registrant’s mark UPRISE MUSIC currently is the only registered
mark including the term UPRISE for music-related goods or services, and Applicant

5 12 TTABVUE 8.
6 Definition from Merriam-Webster attached to Applicant’s Brief, 12 TTABVUE 56.
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did not dispute this.7 Contrary to Applicant’s argument, therefore, Registrant’s mark
UPRISE MUSIC is a strong mark that is entitled to a broad scope of protection.
On the other hand, the disclaimed word MUSIC in Registrant’s mark is less
distinctive than the term UPRISE because it is generic for Registrant’s identified
goods. Nat’l Data Corp., 224 USPQ at 751. Similarly, the term FM, which is defined
as “a broadcasting system using frequency modulation,”8 has comparatively less
trademark significance than the term UPRISE in Applicant’s mark UPRISE.FM. As
used in Applicant’s mark, the term FM describes a significant feature of Applicant’s
identified audio streaming services, namely, that such services feature FM radio
streaming. Indeed, other audio streaming services, such as Ancient FM, Last.fm,
Maestro.fm, and 181.fm,9 use the term FM in the same way. This third-party use
evidence supports a finding that customers are accustomed to viewing “FM” in
relation to digital music streaming services and that they would understand the term
to signify FM radio streaming services. Consequently, consumers would look to other
elements in the mark for purposes of source identification. Id.
Applicant points to three pairs of registrations for goods and services related to
digital music where, in each instance, the marks share a common element and one of
the marks includes the term FM, as evidence that “similar trademarks have avoided
a finding of likelihood of confusion with the addition of the term ‘FM’ to create a

7 14 TTABVUE 7-8.
8 March 5, 2017 Final Office Action p. 103.
9 Id. pp. 112-127.
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distinctive commercial impression.”10 Many reasons to which we are not privy may
explain the coexistence of these three pairs of third-party registrations, such as the
inherent weakness or the commercial weakness of the shared term, which could limit
the scope of protection of the prior co-existing registrations. As discussed above,
Registrant’s mark UPRISE MUSIC suffers from no such weakness. “Applicant’s
attempt to equate those co-existing registrations, for each of those marks, with the
situation herein is not persuasive. Suffice it to say that each case must be decided on
its own set of facts.” L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012);
see also St. Helena Hosp., 113 USPQ2d at 1087 (“[E]ach case must be decided on its
own facts and the differences are often subtle ones.”). Further, we are not bound by
the allowance of prior registrations, even if they have some characteristics that may
appear relevant to this case. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001).
The prominence of the term UPRISE is further enhanced by its placement as the
initial literal element of each mark. See Palm Bay Imps., 73 USPQ2d at 1692 (“Veuve”
is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the
first word in the mark and the first word to appear on the label); Presto Prods., Inc.
v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the first
part of a mark which is most likely to be impressed in the mind of a purchaser and
remembered.”). See also Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d

10 12 TTABVUE 9-11.
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874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992), cert denied, 506 U.S. 1034 (1994) (upon
encountering the marks, consumers must first notice the identical lead word).
Finally, consumers are not likely to notice or remember the presence or absence
of a period embedded in the center of Applicant’s mark UPRISE.FM. This
punctuation mark therefore does not distinguish Applicant’s mark from Registrant’s
mark, and Applicant does not argue otherwise. See Mag Instrument Inc. v.
Brinkmann Corp., 96 USPQ2d 1701, 1712-13 (TTAB 2010) (finding likelihood of
confusion between MAG-NUM STAR and MAGNUM MAXFIRE).
For these reasons, we find that UPRISE is the dominant and sole distinctive
element in Applicant’s mark UPRISE.FM and Registrant’s mark UPRISE MUSIC.
UPRISE thus is entitled to more weight in our analysis of these marks. In coming to
this conclusion, we do not discount the presence of the additional terms in each mark.
However, for the reasons discussed above, we find that the term UPRISE in each
mark is more likely to be remembered by consumers than the other elements of the
marks. Nat’l Data Corp., 224 USPQ at 751.
Ultimately, we find that in their entireties, Applicant’s standard character mark
UPRISE.FM and Registrant’s standard character mark UPRISE MUSIC are very
similar in appearance, sound, and connotation due to the common presence of the
identical lead term UPRISE, and that the marks convey similar commercial
impressions overall. Consumers encountering UPRISE.FM could mistakenly believe
that it represents a variation on the registered mark UPRISE MUSIC, used to
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identify a music streaming service emanating from the same source as Registrant’s
musical sound recordings and downloadable music.
The factor of the similarity of the marks thus favors a finding of likelihood of
confusion.
B. Goods and Services and Channels of Trade
We next consider the du Pont factors of the relatedness of the goods and services
and the channels of trade. We must make our determinations under these factors
based on the goods and services as they are identified in the application and
registration. See In re Dixie Rests., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir.
1997); see also Stone Lion, 110 USPQ2d at 1161; Hewlett-Packard Co. v. Packard
Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002); Octocom Sys.,
Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990).
1. Relatedness of Goods and Services
The second du Pont factor “considers whether the consuming public may perceive
[the respective goods and services of the parties] as related enough to cause confusion
about the source or origin of the goods and services.” St. Helena Hosp., 113 USPQ2d
at 1086 (quoting Hewlett-Packard, 62 USPQ2d at 1004). The goods identified in the
cited registration include musical sound recordings and downloadable music, while
the services identified in the application feature audio and video streaming over the
Internet, and transmitting MP3 files and music videos over the Internet.
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Although the goods identified in the registration are not identical to the services
identified in the application, identity is not required to support a finding of likelihood
of confusion. Coach Servs., 101 USPQ2d at 1722 (“[I]t is not necessary that the
products [or services] of the parties be similar or even competitive to support a finding
of likelihood of confusion.”) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724
(TTAB 2007)). See also On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56
USPQ2d 1471, 1475 (Fed. Cir. 2000) (the goods and services need not be identical or
even competitive to find a likelihood of confusion). Rather, “likelihood of confusion
can be found ‘if the respective products [or services] are related in some manner
and/or if the circumstances surrounding their marketing are such that they could
give rise to the mistaken belief that they emanate from the same source.”’ Coach
Servs., 101 USPQ2d at 1722 (quoting 7-Eleven, 83 USPQ2d at 1724). The issue is
whether there is a likelihood of confusion as to the source of the goods and services,
not whether purchasers would confuse the goods and services. L’Oreal S.A. v. Marcon,
102 USPQ2d at 1439; In re Rexel Inc., 223 USPQ 830 (TTAB 1984). In addition, under
this du Pont factor, the Examining Attorney need not prove, and we need not find,
similarity as to each and every product listed in the description of goods. It is
sufficient for a refusal based on likelihood of confusion that relatedness is established
for any item encompassed by the identification of goods in a particular class in the
application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ
986, 988 (CCPA 1981).
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Here, the goods identified in the registration are closely related on their face to
the services identified in the application in that Registrant provides musical sound
recordings and downloadable music and Applicant provides audio streaming services
under their respective marks. Essentially, both Applicant and Registrant allow
consumers to receive music via the Internet.
Indeed, the evidentiary record confirms the close relationship between the goods
identified in the registration and the services identified in the application. In
particular, the Examining Attorney submitted a number of Internet web pages from
third-party websites demonstrating that a single entity is likely to provide or feature
downloadable music and digital media streaming services under the same mark. For
example:
1. Spotify offers users the ability to stream millions of songs online and to
“download music & listen offline” with no Internet connection required.11
2. Apple Music invites users to “go ahead and stream” music, and to download
songs and playlists for subsequent listening offline.12
3. Amazon permits users to stream and download music, movies and television
shows.13
4. Jamendo Music users can “search free music to stream and download.”14

11 March 5, 2017 Final Office Action pp. 8-16.
12 Id. pp. 17-44.
13 Id. pp. 45-52, 54-64.
14 Id. p. 65.
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5. SoundCloud allows users to download playlists and albums for offline
listening, and to stream from “[t]he world’s largest streaming catalog – and
growing” with “18M+ artists. 2M+ albums. 150M+ tracks.”15
6. A June 24, 2015 post by Alexandra Ma on The Huffington Post Tech Blog titled
“The 5 Best Music Apps That Won’t Tear Through All Your Data” lists Spotify,
Apple Music, Google Play, Tidal, and Rhapsody as the five top music apps that
provide both streaming services and downloadable music.16
This evidence supports a finding that goods identified in the registration and the
services identified in the application are related and will be encountered by the same
consumers under the same mark. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d
1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-
69 (TTAB 2009).
The Examining Attorney also submitted various third-party use-based
registrations from the USPTO’s electronic database to show that it is common for a
single entity to use the same mark on goods and services that are the same as, or very
similar to, those at issue. For example, Reg. No. 4202822 for ARIAMA,17 Reg. No.
4354137 for MASTERWORKS BROADWAY,18 Reg. No. 5099660 for SCOTT

15 Id. pp. 66-69.
16 October 3, 2017 Denial of Request for Reconsideration pp. 8-15.
17 March 5, 2017 Final Office Action pp. 70-72.
18 Id. pp. 73-75.
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STAPP,19 and Reg. No. 5121274 for ENTANGLED MUSIC20 all cover downloadable
musical sound recordings in International Class 9 as well as streaming of audio
material on the Internet in International Class 38, and Reg. No. 4897594 for VIRGIN
covers musical sound recordings and downloadable musical sound recordings in
International Class 9 as well as streaming of audio material via a mobile application
in International Class 38.21
While third-party registrations are not evidence that the marks shown therein are
in commercial use, or that the public is familiar with them, such registrations that
individually cover a number of different items and are based on use in commerce may
have some probative value to the extent that they serve to suggest that the listed
goods and services are of a type which may emanate from a single source. See In re
Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015); In re Mucky Duck Mustard
Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); see also In re Anderson, 101 USPQ2d
1912, 1919 (TTAB 2012); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86
(TTAB 1993).
Applicant focuses on the differences between the sale of downloadable digital
music via the Internet, “where a music file is transferred to the customer in a
definitive manner[,]” and Applicant’s music streaming services, “where a music file
is transferred to the customer in a temporary manner.”22 Much of Applicant’s

19 Id. pp. 96-98.
20 Id. pp. 99-101.
21 Id. pp. 83-85.
22 12 TTABVUE 13
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discussion pertains to the differences under copyright law between the right to
reproduce the copyrighted work, and the right to publicly perform copyrighted work,
which is not within our jurisdiction. We recognize that the goods identified in the
registration and the services identified in the application have specific differences.
However, as discussed above, “likelihood of confusion can be found ‘if the respective
products [or services] are related in some manner and/or if the circumstances
surrounding their marketing are such that they could give rise to the mistaken belief
that they emanate from the same source.”’ Coach Servs., 101 USPQ2d at 1722
(quoting 7-Eleven, 83 USPQ2d at 1724).
Based upon the identifications of goods and services and the ample evidence of
record, we find that the services identified in the application are highly related to the
goods identified in the registration, and that consumers would believe that they may
emanate from a common source.
2. Channels of Trade
Considering the channels of trade and classes of purchasers, because there are no
limitations or restrictions as to trade channels or classes of purchasers in the
identifications of goods in the registration or the identification of services in the
application, we presume that the identified goods and services are or would be
marketed in all normal trade channels for such goods and services and to all normal
classes of purchasers of such goods and services. Stone Lion, 110 USPQ2d at 1161;
see also Coach Servs., 101 USPQ2d at 1723 (absent limitation “goods are presumed
to travel in all normal channels … for the relevant goods.”). The trade channels for
both Registrant’s goods and Applicant’s services would include digital platforms that
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provide music streaming services and the ability to download music. The relevant
class of consumers is the same for Registrant’s goods and Applicant’s services, i.e.,
those who are interested in listening to music. See Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (affirming Board finding that
where the identification is unrestricted, “we must deem the goods to travel in all
appropriate trade channels to all potential purchasers of such goods”); Elbaum, 211
USPQ at 640. The relatedness evidence from the commercial websites listed above
(e.g., Spotify, Apple, Amazon Music, and Jamendo Music) confirms that downloadable
music and music streaming services travel in the same channels of trade and are
offered to the same classes of consumer. See Anderson, 101 USPQ at 1920.
The similarities of the goods and services and their channels of trade weigh
heavily in favor of a finding of likelihood of confusion.
III. Conclusion
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, as they pertain to the relevant du Pont factors. To
the extent that any other du Pont factors not discussed by Applicant may nonetheless
be applicable, we treat them as neutral. We conclude that Applicant’s mark UPRISE
.FM is very similar to the cited mark UPRISE MUSIC, and that the services
identified in the application and the goods identified in the registration are
complementary and otherwise commercially related, and they move through the same
channels of trade to the same class of purchasers. We therefore find that Applicant’s
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mark is likely to cause confusion with the cited mark when used in connection with
the services identified in the application.
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.