Lucian Randolph

Trademark Trial and Appeal Board

Sep 29, 2009

No. 78809938 (T.T.A.B. Sep. 29, 2009)

Mailed: September 29, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Lucian Randolph
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Serial No. 78809938
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Ava K. Doppelt and Allison R. Imber of Allen, Dyer, Doppelt,
Milbrath & Gilchrist, P.A. for Lucian Randolph.

Cimmerian Coleman, Trademark Examining Attorney, Law Office 102,
(Karen M. Strzyz, Managing Attorney).
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Before Bucher, Holtzman and Taylor, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

An application has been filed by Lucian Randolph (applicant)
to register the mark PLANET TV in standard character form for
services identified as "broadcasting programs via a global
computer network" in Class 38.1

1 Serial No. 78809938, filed February 8, 2006, based on an allegation
of first use and first use in commerce on July 1, 2005. The term TV is
disclaimed.
THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Serial No. 78809938
2
The trademark examining attorney has refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant's mark, when applied to applicant's services, so
resembles the mark in Registration No. 3305833 shown below for
"television broadcasting services" in Class 38 and entertainment
services, namely television programming and production" in Class
41 as to be likely to cause confusion.2

When the refusal was made final, applicant appealed. Briefs
have been filed.
Before proceeding to the merits, we address applicant's
contention that the refusal is procedurally improper. Noting
that the cited registration issued from an application that was
filed subsequent to the present application, applicant maintains
that TMEP §1208.01, requires that applicant's mark be allowed to
proceed to registration because its application has an earlier
filing date than the registration.

2 Issued October 9, 2007 from an application filed December 26, 2006.
"TV" is disclaimed. "The color white appears in the words Planet TV
and the star. The color red appears in the outline of the letter 'P',
in the globe design and in the outline of the star." The colors red
and white are claimed as features of the mark.
Serial No. 78809938
3
Applicant's argument is not well taken. Section 1208.01 of
the TMEP states in relevant part, "[i]n ex parte examination,
priority among conflicting pending applications is determined
based on the effective filing dates of the applications."
(Emphasis added.) Once a registration has issued, however, the
filing date becomes irrelevant. Section 2(d) of the Statute
prohibits the registration of a mark which is likely to cause
confusion with a previously registered mark, regardless of the
underlying filing date.
We turn then to the merits. Our determination under Section
2(d) is based on an analysis of all of the probative 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). In any likelihood
of confusion analysis, however, two key considerations are the
similarities or dissimilarities between the marks and the
similarities or dissimilarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
In determining the similarity or dissimilarity of marks, we
must consider the marks in their entireties in terms of sound,
appearance, meaning and commercial impression. See du Pont,
177 USPQ at 567. See also Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
Serial No. 78809938
4
2005). Although the marks must be considered in their
entireties, 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. See In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
The marks are identical in sound. The term PLANET TV is
applicant's entire mark and that same wording is the dominant
entire literal portion of registrant's mark. See, e.g., Giant
Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ
390, 395 (Fed. Cir. 1983) ("Another factor weighing heavily in
our decision is that the dominant portion of both parties' marks
sounds the same when spoken.").
The term PLANET TV is also dominant in conveying the meaning
and commercial impression of registrant's composite mark. While
registrant's mark also includes a prominent design, it is the
wording PLANET TV itself, rather than the design, that is likely
to have a greater impact on purchasers and be remembered by them.
See CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed.
Cir. 1983) ("in a composite mark comprising a design and words,
the verbal portion of the mark is the one most likely to indicate
the origin of the goods to which it is affixed"). Moreover, the
design in registrant's mark which broadly suggests planetary
objects does not change the commercial impression created by
Serial No. 78809938
5
PLANET TV alone, rather it serves to reinforce the image conveyed
the word PLANET.
Furthermore, applicant is seeking registration of the mark
in standard character form. This means that applicant is free to
present his mark in a variety of forms and styles, including the
same, bold, slightly curved style of lettering as registrant
uses, thereby increasing the visual similarity between the marks.
See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1847-48 (Fed. Cir. 2000) (typed drawings are not
limited to any particular rendition of the mark); and Phillips
Petroleum v. C.J. Webb, 442 F.2d 1376, 170 USPQ 35 (CCPA 1971).
We turn to a comparison of applicant's services, identified
as "broadcasting programs via a global computer network," with
registrant's services which include "television broadcasting
services." It is well settled that goods or services need not be
similar or competitive in nature to support a finding of
likelihood of confusion. See Helene Curtis Industries Inc. v.
Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989). It is sufficient
if the respective goods or services are related in some manner
and/or that the conditions surrounding their marketing are such
that they would be encountered by the same persons under
circumstances that could, because of the similarity of the marks
used thereon, give rise to the mistaken belief that they emanate
Serial No. 78809938
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from or are associated with, the same source. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
The services are closely related in that they both involve
broadcasting of programs to the general public, differing only in
the form of the broadcast media. The examining attorney has
submitted a number of use-based, third-party registrations
showing that the same mark has been adopted for broadcasting
services provided over a variety of media, including television
and the Internet. For example, Reg. No. 3415633 for the mark
DIRECTV ACTIVE, Reg. No. 3437948 for the mark THE 101, Reg. No.
3403397 for the mark MEMPHIS GRIZZLIES, Reg. No. 3416202 for the
mark POP BANDIT, and Reg. No. 3407335 for the mark VOOTAGE, all
include "television broadcasting services" as well as
"broadcasting programs via [a global computer network or the
Internet]". The registrations also show that the same programs
broadcast over television are also the subject of broadcasts over
the Internet. For example, Reg. No. 3407335 above for the mark
VOOTAGE is also registered for "entertainment services, namely,
providing a television program in the field of sports via a
global computer network."
Although third-party registrations which are based on use
are not evidence that the marks shown therein are in use or that
the public is familiar with them, they nevertheless have some
probative value in that they serve to suggest that the services
Serial No. 78809938
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listed therein may emanate from a single source. See In re
Albert Trostel & Sons Co., 29 USPQ2d at 1785-86, and In re Mucky
Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).
It is clear that the respective broadcasting services which
are offered through related media and which would potentially
broadcast the same programs would come to the attention of the
same ordinary consumers, who upon encountering these services
offered under highly similar marks would naturally assume the
services come from the same source.
In view of the foregoing, and because highly similar marks
are used in connection with closely related services, we find
that confusion is likely.
Decision: The refusal to register under Section 2(d) of the
Trademark Act is affirmed.