Motion Picture Association of America, Inc.v.Respect Sportswear, Inc.

Trademark Trial and Appeal Board

Apr 13, 2007

No. 91153141 (T.T.A.B. Apr. 13, 2007)

Mailed: April 13, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Motion Picture Association of America, Inc.

v.

Respect Sportswear, Inc.
_____

Opposition No. 91153141
to application Serial No. 75654662
filed on March 5, 1999
_____

Andrew Baum of Darby & Darby P.C. for Motion Picture
Association of America, Inc.

Simon V. Haberman of Simon V. Haberman, P.C. for Respect
Sportswear, Inc.
______

Before Hohein, Bucher and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

On March 5, 1999, applicant, Respect Sportswear, Inc.,
a corporation organized under the laws of the State of New
Jersey, filed an application to register on the Principal
Register the mark RATED R SPORTSWEAR (“SPORTSWEAR”
disclaimed) in typed or standard character form, based upon
an allegation of its bona fide intent to use the mark in
THIS OPINION IS A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91153141
2
commerce on or in connection with “men's and ladies' shirts,
pants, ladies' dresses, shorts and jackets.”1
Registration has been opposed by Motion Picture
Association of America, Inc. ("opposer"). As grounds for
opposition, opposer asserts that it is a corporation
organized under the laws of the State of New York; and that
it is the owner of the following certification marks, which
it has previously used and registered on the Principal
Register:
1) RATED R
in typed or standard character form for “entertainment
services rendered through the medium of motion pictures” in
International Class B and indicating that:
the mark certifies that the motion picture film,
in the opinion of applicant's rating board, is an
adult film in some of its aspects and treatment so
far as language, violence, nudity and sensuality
are concerned, and that because of such elements
no one under the age of 17 should be admitted
unless accompanied by a parent or guardian;2

2)

1 Application Serial No. 75654662.

2 Registration No. 1436926 was issued on April 18, 1987 with a
disclaimer of “RATED” apart from the mark as shown. Section 8
affidavit accepted.

Opposition No. 91153141
3

for “entertainment services rendered through the medium of
motion picture[s]” in International Class B and indicating
that:
this mark certifies that the motion picture film
meets the standards set forth by applicant for R:
restricted under 17 requires accompanying parent
or adult guardian;3

and 3)

for “entertainment services rendered through the medium of
motion pictures,” in International Class B and indicating
that:
the mark certifies that the motion picture film
is, in the opinion of applicant's rating board, an
adult film in some of its aspects and treatment so
far as language, violence, or nudity and sexuality
is concerned, and that because of such elements no
one under the age of 17 should be admitted unless
accompanied by a parent or guardian.4

Opposer alleges that applicant’s RATED R SPORTSWEAR mark and
opposer’s previously used and registered marks are highly
similar; that applicant’s goods and the services certified
by opposer are closely related; that, as a result,

3 Registration No. 0959580 issued on May 22, 1973. Section 8
affidavit accepted; Section 15 affidavit acknowledged. Renewed.

4 Registration No. 1170739 issued on September 22, 1981. Section
8 affidavit accepted; Section 15 affidavit acknowledged.
Renewed.
Opposition No. 91153141
4
confusion, mistake and deception are likely among consumers
as to the source thereof under Trademark Act Section 2(d);
and that opposer will be damaged thereby. Opposer further
alleges that its marks are famous and distinctive and were
so prior to the filing date of the challenged application;
that applicant’s mark dilutes the distinctive quality of
opposer’s marks under Trademark Act Section 43(c)(1); and
that opposer will be damaged thereby.
Applicant's answer consists of a general denial of the
allegations in the notice of opposition.5
The Record
The record consists of the pleadings, and the file of
the involved application. In addition, during its assigned
testimony period, opposer took the depositions, with
accompanying exhibits, of (i) Joan Graves, an officer of
opposer; (ii) Annette McGuire, an employee of opposer’s
counsel; and (iii) Walter McCullough, the president and
chief executive officer of Monroe Mendelsohn Research
Incorporated. Opposer also filed a notice of reliance upon

5 Applicant asserted as an “affirmative defense” that the notice
of opposition fails to state a claim upon which relief can be
granted. Inasmuch as applicant did not file a motion to dismiss
the instant opposition on the basis of Fed. R. Civ. P. 12(b)(6),
we treat this “defense” as having been waived. In addition,
applicant asserted additional “affirmative defenses” that are
more in the nature of amplifications of its denials of the
salient allegations contained in the notice of opposition.
Applicant’s motion to amend its answer to assert a counterclaim
for cancellation of opposer’s pleaded Registration No. 1436926
was denied in a May 26, 2005 Board order.

Opposition No. 91153141
5
certified copies of its pleaded registrations, which show
that the registrations are subsisting and are owned by
opposer; non-confidential portions of the discovery
deposition of Mr. Kishan Kriplani, an officer of applicant;
copies of third-party registrations for trademarks
registered for both motion pictures and wearing apparel;
applicant’s responses to opposer’s Interrogatory Nos. 1, 2,
4, 8, 23, 24 and 25 from opposer’s first set of
interrogatories; applicant’s responses to opposer’s second
set of interrogatories; and portions of articles from
printed publications obtained from the Nexis computer
database.
Applicant did not file any testimony depositions in
this proceeding (although, as discussed infra, it appears
that it may have taken such depositions) nor did it
introduce any other evidence in its own behalf.
Opposer and applicant filed main briefs on the case,
and opposer filed a reply brief.
Evidentiary Matters
Before addressing the merits of the case, certain
evidentiary matters require our attention. In its brief,
opposer asserts that applicant conducted testimony
depositions but did not file transcripts thereof with the
Board. Although opposer did not attach, as an appendix to
its main brief, a copy of any notice of testimony deposition
Opposition No. 91153141
6
served by applicant, applicant nonetheless does not
challenge opposer’s assertion that applicant took, but did
not file, testimony depositions in this case. In point of
fact, applicant is silent in its brief as to whether it took
testimony depositions or sought to introduce evidence
thereby. However, applicant (brief, p. 13) urges as
follows:
The TTAB should take judicial notice of the
Internet search engines, “Google”, “Yahoo” and
others, which display many millions of references
to “RATED R”. Most of these references are not
related to movie ratings. In addition, Ebay sells
items for sale “RATED R”, from films to campaign
buttons. These facts on the Internet are not
subject to reasonable dispute and are capable of
accurate and ready determination by going to these
search engines.

Opposer asserts in its reply brief that applicant sought to
authenticate the same types of evidence in its testimony
depositions. Opposer also argues that applicant’s request
for judicial notice should be denied as improper.
The filing of testimony depositions in inter partes
proceedings before the Board is governed by Trademark Rule
2.123(h), which provides as follows:
All depositions which are taken must be duly filed
in the Patent and Trademark Office. On refusal to
file, the Office at its discretion will not
further hear or consider the contestant with whom
the refusal lies; and the Office may, at its
discretion, receive and consider a copy of the
withheld deposition, attested by such evidence as
is procurable.

Opposition No. 91153141
7
Thus, the Board may, in its discretion, either require a
copy of applicant’s withheld deposition(s) or refuse to
further hear applicant’s arguments on the matter at issue.
See Id. See also TBMP §703.01(l) (2d ed. rev. 2004) and
authorities cited therein. In this case, inasmuch as the
matter before us is fully briefed and ready for decision,
and because opposer does not assert that the testimony or
exhibits that applicant has failed to submit are adverse to
applicant, we decline to delay the proceeding at this point
by requiring applicant to submit copies of its testimony
deposition(s) and will instead consider the parties’
arguments on the record before us.
With regard to applicant’s request for judicial notice,
it is settled that the only kind of fact that may be
judicially noticed by the Board is a fact that is "not
subject to reasonable dispute in that it is either (1)
generally known within the territorial jurisdiction of the
trial court or (2) capable of accurate and ready
determination by resort to sources whose accuracy cannot
reasonably be questioned." See Fed. R. Evid. 201(b). See
also Continental Airlines Inc. v. United Air Lines Inc., 53
USPQ2d 1385, 1393 n.5 (TTAB 1999). In this case, applicant
does not seriously argue, nor do we find, that the “facts”
applicant seeks the Board to notice, namely, results from
queries of Internet search engines and the Internet
Opposition No. 91153141
8
commercial website EBay, are generally known within the
territorial jurisdiction of the Board. Moreover, it is
settled that due to the transitory nature of Internet
postings, materials obtained thereby that cannot readily be
corroborated by printed material are not suitable for
judicial notice. See In re Total Quality Group Inc., 51
USPQ2d 1474, 1476 (TTAB 1999). See also TBMP §704.12 (2d
ed. rev. 2004) and authorities cited therein. As such, the
“facts” of which applicant seeks judicial notice in this
case are not the sort of facts which can be determined by
resort to sources the accuracy of which cannot be
questioned. Accordingly, applicant’s request for judicial
notice is denied.
General Facts
The record shows that opposer is a nonprofit trade
organization that promotes the interest of its member
companies that are involved in the entertainment industry;6
that continuously since 1968, opposer has provided a
voluntary rating system for theatrical movies; that R was
one of the original movie ratings along with G, M, and X;
that the ratings presently include G, PG, PG-13, R and NC-
17; that the R rating signifies that a film so rated
contains adult material and that any child must be

6 Opposer’s member companies include Warner Brothers, Disney,
Universal, 20th Century Fox, Paramount, MGM and Sony.

Opposition No. 91153141
9
accompanied by a parent or guardian in order to gain
admission to a theater showing such a film; that opposer’s
ratings and explanations of their meaning are made available
on opposer’s Internet website, which receives over 135,000
visitors per month; that opposer further makes available
information on its ratings in printed informational fliers
distributed to movie theaters and also to patrons thereof
upon request; that since 1968, opposer has distributed over
2 million such fliers; that once rated, opposer’s ratings
must be displayed on the rated movies themselves and on all
advertisements therefor; that all advertisements for rated
movies must receive prior approval from opposer’s
advertising administration; that theatrical trailers for the
rated movies must display the movie’s rating; that posters
distributed to movie theaters and video rental stores must
also display the movie’s rating; and that failure to comply
with these requirements risks revocation of the movie’s
rating by opposer.
The record further shows that opposer has rated over
twenty thousand films since 1968; that to date, 61 percent
of films rated by opposer are rated R; that there are over
35,000 theatrical motion picture screens in the United
States; and that opposer’s ratings appear on most movie
theater marquees containing such screens. The record shows
Opposition No. 91153141
10
in addition that theatrical motion pictures are promoted
using clothing, including tee shirts and caps.
The record also shows that applicant selected the mark
RATED R SPORTSWEAR on the advice of a clothing designer who
indicated that the mark would be attractive to customers;
and that the clothing identified by the RATED R SPORTSWEAR
mark is intended for adults aged 18 to 30.
Opposer’s Standing
Because opposer has properly made its pleaded
registrations of record, and further has shown, by its use
and registration of marks that are at least arguably similar
to applicant’s mark that it is not a mere intermeddler, we
find that opposer has established its standing to oppose
registration of applicant’s mark. See Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000);
and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185 (CCPA 1982).
Priority of Use
Moreover, because opposer’s pleaded registrations are
of record, Section 2(d) priority is not an issue in this
case as to the marks therein and services certified thereby.
See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974). We further note that
applicant does not contest that opposer has made prior use
of the marks in its pleaded registrations.
Opposition No. 91153141
11
Likelihood of Confusion
Our likelihood of confusion 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. See In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
The test for determining likelihood of confusion with
respect to certification marks is the same as that applied
to trademarks, i.e., the du Pont analysis. However, because
the certification mark owner does not itself use the mark,
the question of whether there is a likelihood of confusion
is based on a comparison of the mark as applied to the goods
or services of the certification mark users. See DuPont v.
Yoshida, 393 F.Supp 502, 185 USPQ 597 (E.D.N.Y. 1975)
("...proximity [of products or services] may be measured
against that of the certification mark user..."). See also
Jos. S. Cohen & Sons Co. v. Hearst Magazines, 220 F.2d 763,
105 USPQ 269 (CCPA 1955); and Community of Roquefort v.
William Faehndrich, Inc., 198 F.Supp. 291, 131 USPQ 435
(S.D.N.Y. 1961), aff'd, 303 F.2d 494, 133 USPQ 633 (2d Cir.
Opposition No. 91153141
12
1962). Other issues relating to the goods and services,
including the channels of trade and purchasers therefor, are
determined from the standpoint of the users as well.
We note that in the notice of opposition opposer
asserts, inter alia, that applicant’s mark is confusingly
similar to the marks in all of its pleaded registrations, to
which opposer refers as its “RATED R marks.” In its brief,
however, opposer argues only that applicant’s mark is
confusingly similar to its registered mark, RATED R.
Accordingly, for purposes of the du Pont factors that are
relevant to this case we will consider applicant’s involved
mark and opposer’s RATED R mark that is the subject of its
Registration No. 1436926 and certifies services that are
essentially identical to those in opposer’s other pleaded
registrations.
Fame of Opposer’s RATED R Mark
We begin our likelihood of confusion analysis with the
fifth du Pont factor, which requires us to consider evidence
of the fame of opposer’s mark and to give great weight to
such evidence if it exists. See Bose Corp. v. QSC Audio
Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir.
2002); Recot Inc. v. Becton, 214 F.3d 1322, 54 F.2d 1894
(Fed. Cir. 2000); and Kenner Parker Toys, Inc. v. Rose Art
Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir.
1992).
Opposition No. 91153141
13
Fame of an opposer’s mark or marks, if it
exists, plays a “dominant role in the process of
balancing the DuPont factors,” Recot, 214 F.3d
at 1327, 54 USPQ2d at 1456, and “[f]amous marks
thus enjoy a wide latitude of legal protection.”
Id. This is true as famous marks are more
likely to be remembered and associated in the
public mind than a weaker mark, and are thus
more attractive as targets for would-be
copyists. Id. Indeed, “[a] strong mark … casts
a long shadow which competitors must avoid.”
Kenner Parker Toys, 963 F.2d at 353, 22 USPQ2d
at 1456. A famous mark is one “with extensive
public recognition and renown.” Id.

Bose Corp. v. QSC Audio Products Inc., supra, 63 USPQ2d at
1305.
The August 17, 2005 testimony deposition of Joan
Graves, opposer’s Chairman of the Classification and Rating
Administration, and the exhibits thereto, establish the
following undisputed facts. Opposer first used its RATED R
mark in connection with certifying the content of motion
pictures in 1968 and has used, inter alia, the RATED R mark
continuously since then (Graves dep. at 8-10, Exhibits 1 and
3). Opposer’s rating system is voluntary, except for its
member organizations that must submit their motion pictures
for rating prior to release (Id. at 10). Nonetheless, a
majority of producers of motion pictures seek and obtain
ratings for their theatrical releases (Id). As previously
noted, since 1968, opposer has rated over 20,000 films, and
of those over 61 percent received an R rating (Id. at 10-13,
Exhibit 2).
Opposition No. 91153141
14
The popularity of motion pictures in the United States
cannot be overstated. As previously indicated, there are
over 35,000 theatrical motion picture screens in the United
States (Id. at 34). In 2004, 1.5 billion theatrical movie
tickets were sold in the United States (Id. at 41). Also in
2004, 1.3 billion DVDs containing theatrical movies were
sold in the United States (Id. at 42). Opposer’s RATED R
mark appears on all movies so rated; on all advertisements
therefor, including posters, flyers, trailers shown in movie
theaters, on television, and on movie DVDs, and Internet
advertisements; on movie theater marquees displaying the
titles of such movies; and on opposer’s Internet website
(Id. at 29-41, Exhibits 5, 8-10). Opposer’s Internet
website receives between 135,000 and 150,000 visitors per
month (Id. at 40). In 2004, opposer’s member companies
spent four billion dollars on advertising and promoting
their movies (Id. at 28). We find these numbers to be
substantial.
Print media coverage of opposer’s RATED R mark is
widespread. Articles concerning opposer’s RATED R mark and
the significance of such rating appear in such major market
newspapers and general interest magazines as The New York
Times; The Washington Post; Los Angeles Times; US News and
World Report; Newsday(NY); The Boston Globe; Chicago
Tribune; Orange County Register; Orlando Sentinel; The
Opposition No. 91153141
15
Washington Times; Newsweek; and Billboard. (Notice of
Reliance, Exhibit F).
Since 1969 opposer has commissioned annual surveys to
measure public awareness of its rating system and the
perceived usefulness thereof (Id. at 43, Exhibit 11). A
survey conducted in 2004 indicated that 95 percent of those
surveyed were aware of opposer’s rating system (Id. at 43-
46, Exhibits 12-22). A report issued in 2000 by the Federal
Trade Commission on the marketing of violent entertainment
to children included a survey of parents and children
concerning their use of, inter alia, rating systems for
movies (Id. at 47-48, Exhibit 23). According to that
survey, 91 percent of parents are aware of and familiar with
opposer’s movie rating system; and 70 percent are familiar
with the R rating (Id. at 48). Furthermore, for purposes of
this proceeding opposer commissioned a third party to
conduct public opinion research to determine the level of
fame of opposer’s RATED R mark (McCullough dep. at 7,
Exhibit 47). The resulting survey of 211 respondents, aged
18 or older, indicates that 85 percent of respondents are
familiar generally with the RATED R mark, while 74 percent
of respondents are familiar with the RATED R mark in
connection with movies or movie ratings.
We note in addition that applicant “concedes that there
are many motion pictures, and that many people are aware
Opposition No. 91153141
16
that RATED R applies to motion picture ratings” (brief, p.
7). Moreover, applicant “concedes that RATED R is useful
for parents to help them decide what motion pictures to see
with their children.” (Id.) Applicant further “concedes
that the ‘RATED R’ mark of Opposer is known for rating
motion pictures, but that is only one factor.” (Id. at 10).
Finally, “[a]pplicant does not deny that Opposer’s RATED R
mark is known for rating films, as it appears to have
monopolized that field” (Id. at 11).
Based upon this undisputed evidence of record, we find
that opposer’s RATED R mark is famous for purposes of the
fifth du Pont factor.7 Such fame must be accorded dominant
weight in our likelihood of confusion analysis. See Recot,
supra, at 1327. See also Miss Universe L.P., LLLP v.
Community Marketing, Inc., __USPQ2d__ (TTAB 2007).
The Marks
We next turn to the first du Pont factor, i.e., whether
applicant’s RATED R SPORTSWEAR mark and opposer’s RATED R
mark are similar or dissimilar when viewed in their
entireties in terms of appearance, sound, connotation and
overall commercial impression. See Palm Bay Imports, Inc.
v. Veuve Clicquot, supra. The test, under the first du Pont
factor, is not whether the marks can be distinguished when

7 We need not and do not consider the issue of whether opposer’s
mark is famous for purposes of its dilution claim, because as
discussed below, we are not reaching that claim.
Opposition No. 91153141
17
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in terms of their overall
commercial impression that confusion as to the source of the
goods and/or services offered under the respective marks is
likely to result. Because the involved goods and services
would be marketed to the general public, our focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks.
See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975). Furthermore, although the marks at issue 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 Chatam International Inc., 380 F.3d
1340, 71 USPQ2d 1944 (Fed. Cir. 2004); and In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
In this case, we find that applicant’s RATED R
SPORTSWEAR mark incorporates in its entirety opposer’s mark,
RATED R. The dominant and distinctive RATED R portion of
applicant’s mark is identical to opposer’s RATED R mark in
appearance, spelling and sound. The disclaimed term
“SPORTSWEAR” is not a dominant term in applicant’s mark.
Rather, the term “SPORTSWEAR” appears to be generic as
intended to be applied to applicant’s various items of
Opposition No. 91153141
18
clothing and thus lacks distinctiveness with regard thereto.
As such, we find that the addition of the term “SPORTSWEAR”
to applicant’s mark does not serve to create a commercial
impression that is distinct from that of opposer’s mark.
Furthermore, because the dominant portion of applicant’s
mark is identical to opposer’s mark, the marks convey highly
similar connotations.
In view of the high degree of similarity between
applicant’s mark and opposer’s RATED R mark in appearance,
sound, connotation and overall commercial impression, this
du Pont factor heavily favors opposer.
The Goods and Services
With regard to the second du Pont factor, i.e., the
similarity or dissimilarity and nature of the goods and
services, it is well-established that the goods and services
of the parties or their certificants 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 services are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods and
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
Opposition No. 91153141
19
Research, Inc. v. Society for Human Resource Management, 27
USPQ2d 1423 (TTAB 1993); and In re International Telephone &
Telephone Corp., 197 USPQ 910, 911 (TTAB 1978). The issue,
of course, is not whether purchasers would confuse the goods
and services, but rather whether there is a likelihood of
confusion as to the source thereof. In re Rexel Inc., 223
USPQ 830 (TTAB 1984).
As previously noted, because opposer’s RATED R mark is
a certification mark, it is not used by opposer. See
Section 4 of the Trademark Act, 15 U.S.C. §1054. Rather,
opposer’s RATED R mark is used by persons certified by
opposer. See TMEP §1306.01(a). Specifically, persons use
opposer’s RATED R mark in connection with “entertainment
services rendered through the medium of motion pictures” to
certify that a motion picture created thereby
…is an adult film in some of its aspects and
treatment so far as language, violence, nudity and
sensuality are concerned, and that because of such
elements no one under the age of 17 should be
admitted unless accompanied by a parent or
guardian.

Thus, for purposes of our likelihood of confusion analysis,
we must determine whether applicant’s “men's and ladies'
shirts, pants, ladies' dresses, shorts and jackets” are
related to the “entertainment services rendered through the
medium of motion pictures” provided by users of opposer’s
RATED R certification mark. See DuPont v. Yoshida, supra.
Opposition No. 91153141
20
See also Tea Board of India v. Republic of Tea, Inc., 80
USPQ2d 1881 (TTAB 2006).
Opposer has submitted by notice of reliance the
following use-based third-party registrations which show
that various entities have adopted a single mark for
clothing items that are identical in part or otherwise
substantially similar to the goods identified in applicant’s
application and the services certified by opposer and
provided by users of opposer’s certification mark (August
24, 2004 Notice of Reliance and Exhibit C thereto):
Registration No. 2759097 for the mark TANK GIRL;
Registration No. 2128539 for the mark SLAMDANCE;
Registration No. 2465680 for the mark shown below;

Registration No. 2652101 for the mark shown below;

Registration No. 2384715 for the mark CENTROPOLIS; and
Registration No. 2374585 for the mark THE SHOOTING
GALLERY.

Third-party registrations which individually cover a number
of different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
Opposition No. 91153141
21
of a type which may emanate from a single source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993).
Opposer further has submitted testimony as well as evidence
in the form of photographs and “screen shots” from Internet
websites that display tee shirts emblazoned with the titles
of theatrical motion pictures and images therefrom (McGuire
dep. at 5-13 and Exhibits 35-46 thereto).8 In addition,
opposer has submitted testimony as well as evidence in the
form of photographs that theatrical motion pictures are
promoted by means of wearing apparel (Graves dep. at 49-51
and Exhibits 24-30).9 The above uncontroverted testimony
and evidence further suggests that users of opposer’s
certification mark, that is, individuals and entities that
provide entertainment in the form of theatrical motion
pictures, produce promotional clothing items bearing the
same mark as the motion picture. In other words, users of
opposer’s certification mark utilize the same marks to
identify both their entertainment services and clothing that
is identical to or closely related to applicant’s goods. We
note in addition that while applicant argues that opposer

8 Examples of these theatrical motion pictures include such
titles as “Scarface,” “Evil Dead,” “Pulp Fiction,” “Sin City,”
“Batman Begins,” “Kill Bill,” and “The Matrix.”

9 Examples of these theatrical motion pictures include such
titles as “Adventures of Pluto Nash,” “Queen of the Damned,”
“Scooby Doo,” “The Mummy Returns,” and “Dr. Seuss’ How the Grinch
Stole Christmas.”

Opposition No. 91153141
22
“has no financial stake in any movie,” (brief, p. 8)
applicant concedes that clothing is used as “a marketing
mechanism to get people to see movies” (Id). Finally, our
primary reviewing court has held that in cases such as this
in which an opposer’s mark is famous, there is an even
greater likelihood that “purchasers will be confused
inasmuch as less care may be taken in purchasing a product
under a famous mark” even when the goods and/or services
involved are not closely related. See Recot, supra, at
1898.
In view of the related nature of applicant’s goods and
the services provided by users of opposer’s certification
mark, and further in view of the dominant weight accorded to
the fame of opposer’s mark, this du Pont factor also favors
opposer.
Channels of Trade
Because the evidence introduced by opposer establishes
that applicant’s goods and the services provided by users of
opposer’s certification mark are related, and because there
are no recited restrictions as to their channels of trade or
classes of purchasers, we must assume that the goods and
services are available in all the normal channels of trade
to all the usual purchasers for such goods and services, and
that the channels of trade and the purchasers for
applicant's goods as well as the services certified by
Opposition No. 91153141
23
opposer would be the same. See Interstate Brands Corp. v.
McKee Foods Corp., 53 USPQ2d 1910 (TTAB 2000). It is
settled that in making our determination regarding the
relatedness of the goods and services provided or certified
by the parties, we must look to the goods and services as
identified in the involved application and pleaded
registration. See Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) (“The authority is legion that the question
of registrability of an applicant’s mark must be decided on
the basis of the identification of goods set forth in the
application regardless of what the record may reveal as to
the particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to
which the sales of goods are directed.”) See also 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.”) Thus,
while we recognize that applicant’s goods may not be
available in movie theaters through which persons render the
services certified by opposer, both the goods and services
are presumed to be marketed to the same consumers, i.e., the
general public. As a result of the foregoing, we find that
if these related goods and services were offered under
Opposition No. 91153141
24
similar marks there would be a likelihood of confusion.
Thus, this du Pont factor also favors opposer.
Use of Similar Marks
In its brief, applicant refers to “millions of
references” (brief, p. 13) to uses of RATED R by entities
unrelated to opposer for goods and services that are not
related to the services certified by opposer. However, and
as noted above, applicant has neither introduced any
evidence on its behalf in this proceeding nor filed the
transcripts of any testimonial depositions by which it might
have introduced evidence of third-party use.10 Applicant’s
mere assertion of such use has no probative value in our
consideration of the relative strength of opposer’s RATED R
mark. Thus, we find that applicant has failed to support
its contention that opposer’s RATED R mark is in widespread
use by third parties.

10 We note that opposer submitted by notice of reliance
applicant’s response to opposer’s Interrogatory No. 26 consisting
of a printout of a search result summary from the Google™
Internet search engine showing use of RATED R as a key word in a
search thereof. Such results are of limited probative value
because they do not show use of RATED R as a heading, link or
content on a website. See In re Fitch IBCA, Inc., 64 USPQ2d
1058, 1060 (TTAB 2002). Further, the search summaries are so
truncated that it is not possible to determine what meaning RATED
R may have, or how it is being used. Because it is not possible
to determine the manner in which RATED R is used in the websites
referenced by the submitted search summary, it is not persuasive
of applicant’s contention regarding the nature and extent, if
any, of third party use of RATED R.
Opposition No. 91153141
25
Accordingly, because there is no evidence of any third-
party use of RATED R as a mark, this du Pont factor must be
considered to favor opposer.
Actual Confusion
The final du Pont factor discussed by the parties is
the lack of instances of actual confusion. Applicant
asserts that the absence of actual confusion suggests no
likelihood of confusion. However, applicant has not
introduced any evidence of the extent of its use of the
applied-for mark. Furthermore, evidence submitted by
opposer suggests that applicant, who applied for its
involved mark on the basis of its bona fide intent to use
the mark in commerce under Trademark Act Section 1(b), has
not yet made use of the mark on most of the goods identified
in its application (Kriplani discovery dep. at 11-13).
Accordingly, there is insufficient evidence for us to
conclude that there has been an opportunity for confusion to
occur if confusion were likely. Furthermore, it is not
necessary to show actual confusion in order to establish
likelihood of confusion. See Weiss Associates Inc. v. HRL
Associates Inc. 902 F.2d 1546, 223 USPQ 1025 (Fed. Cir.
1990). See also Hewlett-Packard Co. v. Packard Press Inc.,
281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
Accordingly, this du Pont factor must be considered to
be neutral.
Opposition No. 91153141
26
Conclusion
We have carefully considered all of the evidence
pertaining to the relevant du Pont factors, as well as all
of the parties’ arguments with respect thereto, including
any evidence and arguments not specifically discussed in
this opinion. We conclude, in view thereof, that opposer
has established that consumers familiar with the services
certified by opposer under its previously used and
registered RATED R mark would be likely to believe, upon
encountering applicant’s RATED R SPORTSWEAR mark for its
identified goods that those goods and the services certified
by opposer originate with or are associated with or
sponsored by the same entity. In making our determination,
we have balanced the relevant du Pont factors. The factors
of the fame of opposer’s RATED R mark, the similarities
between the marks and the relatedness of the goods and
services weigh strongly in opposer’s favor.
To the extent that any of applicant’s points raise a
doubt about our conclusion, all doubt on the issue of
likelihood of confusion must be resolved in favor of the
prior user and against the newcomer. See San Fernando Mfg.
Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196
USPQ 1, 2 (CCPA 1977).
Opposition No. 91153141
27
Dilution
Finally, we note that opposer also argues that given
the demonstrated prior fame of its RATED R mark, applicant’s
use of its RATED R SPORTSWEAR mark is likely to cause
dilution of opposer’s mark under the Federal Trademark
Dilution Act. However, given our determination that there
is a likelihood of confusion herein, we decline to reach a
determination on the question of dilution in this
proceeding.
DECISION: The opposition is sustained, and
registration to applicant is refused on the ground of
likelihood of confusion.