Picture Entertainment Corporation

Trademark Trial and Appeal Board

Jun 10, 2009

No. 78917269 (T.T.A.B. Jun. 10, 2009)

Mailed:
June 10, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Picture Entertainment Corporation
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Serial No. 78917269
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Arthur Aaronson of Aaronson & Aaronson for Picture
Entertainment Corporation

Linda M. Estrada, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney)
_______

Before Seeherman, Taylor and Wellington, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Picture Entertainment Corporation, Inc. has appealed
from the final refusal of the Trademark Examining Attorney
to register LA CONFIDENTIAL, in standard character format,
with LA disclaimed, for “caps, hats, pants, short-sleeved
or long-sleeved t-shirts, shorts, sweat shirts, t-shirts.”
The application, Serial No. 78917269, was filed June 26,
2006, and asserts first use and first use in commerce as
early as July 1, 2001. Registration has been refused
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78917269
2
§1052(d), on the ground that applicant’s mark so resembles
the mark LA CONFIDENTIAL, in typed or standard character
form, with LA disclaimed, previously registered for comic
books and fiction books,1 that when used in connection with
applicant’s identified goods it is likely to cause
confusion or mistake or to deceive.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks
and the similarities between the goods and/or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
Determining the similarity of the marks involves a
consideration of their appearance, pronunciation,
connotation and commercial impression. In re Coors Brewing
Co., 343 F.3d 1340, 68 USPQ2d 1059 (Fed. Cir. 2003). The

1 Registration No. 2875852, issued August 24, 2004.
Ser No. 78917269
3
marks here are identical in all four of these aspects. The
factor of the similarity of the marks thus weighs heavily
in favor of finding a likelihood of confusion.
The greater the degree of similarity between the
applicant's mark and the cited registered mark, the lesser
the degree of similarity between the applicant's goods or
services and the registrant's goods or services that is
required to support a finding of likelihood of confusion.
Where the applicant's mark is identical to the registrant's
mark, as it is in this case, there need be only a viable
relationship between the respective goods or services in
order to find that a likelihood of confusion exists. In re
Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001), citing In
re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir.
1993) and In re Concordia International Forwarding Corp.,
222 USPQ 355 (TTAB 1983). The examining attorney has shown
that viable relationship through the submission of six
third-party registrations which cover both comic books and
items of clothing.2 See, for example, Registration No.

2 The examining attorney also submitted a third-party
registration for, inter alia, a series of fiction books and
articles of clothing. No. 2936761. This single registration
would not be sufficient to show the necessary relatedness of
fiction books and clothing. However, it is not necessary to show
likelihood of confusion with respect to each item in the cited
registration, and therefore the evidence with respect to the
relatedness of applicant’s clothing items and comic books
satisfies this du Pont factor. Cf. Tuxedo Monopoly, Inc. v.
Ser No. 78917269
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3187467 for MADAGASCAR for, inter alia, comic books and
shirts, tops, pants, shorts, sweatshirts, caps and hats;
Registration No. 3002976 for PRINCESS AI for, inter alia,
comic books and t-shirts; Registration No. 3033186 for
CAPTAIN CHARACTER for, inter alia, comic books, t-shirts
and hats; Registration No. 3095934 for DOLPHIN MAN for,
inter alia, comic books and shirts, t-shirts, hats, caps
and sweatshirts; and Registration No. 3040367 for SWEET &
INNOCENT GIRL for, inter alia, comic books and hats,
shirts, shorts, sweat shirts and tee shirts. 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
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Although comic books and clothing items do not appear on
their face to be similar goods, it is not necessary that
the goods or services of applicant and the registrant be
similar or competitive, or even that they move in the same
channels of trade to support a holding of likelihood of
confusion. It is sufficient that the respective goods or
services are such that they would or could be encountered

General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981).
Ser No. 78917269
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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 producer. See In
re International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
With respect to the du Pont factor of the channels of
trade, although the examining attorney has asserted that
the goods travel in the same channels of trade, she has
submitted no evidence to support this contention. We can
say only that because applicant’s identified clothing and
the registrant’s identified comic books and fiction books
are consumer items, the goods must be deemed to be sold to
the same classes of purchasers, namely the public at large.
As for the conditions of purchase, because of the nature of
the goods, the general public who are the purchasers of the
goods cannot be considered to have any particular
sophistication about these purchases. Moreover, because
comic books in particular are inexpensive and subject to
impulse purchase, while some of applicant’s identified
clothing such as t-shirts and caps would also be
inexpensive and impulse purchases, consumers are unlikely
to exercise care in buying such products. This du Pont
factor favors a finding of likelihood of confusion.
Ser No. 78917269
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Applicant has not disputed any of these points. The
only thing applicant has said about the cited registration3
in its brief is a single sentence:
As to U. S. Registration No. 2875852,
that Registration is owned by Lee
Caplin, who is applicant’s principal,
who consents to the pending
application.

Brief, p. 1. Applicant made a similar statement in its
response to the first Office action, submitted on June 4,
2007:
The owner of the registered mark “LA
Confidential”, Lee Caplin, gives
consent to register “LA Confidential”
for use on clothing. LA Confidential
is owned by the individual principal of
Picture Entertainment Corporation
[applicant herein] and he hereby
consents to this registration.

The problem with this statement, as the examining attorney
pointed out in the Office action mailed July 11, 2007, is
that the owner of the cited registration did not actually
submit his consent to the registration of applicant’s mark.
A consent, of course, carries great weight in a
determination of likelihood of confusion. See Bongrain
International (American) Corporation v. Delice de France

3 At the time applicant filed its brief registration was also
refused based on another party’s registration, No. 2182561, for
CONFIDENTIAL for certain items of clothing. This registration
was cancelled after briefing was completed, and therefore we have
considered the refusal based on this registration to be moot.

Ser No. 78917269
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Inc., 811 F.2d 1479, 1 USPQ2d 1775 (Fed. Cir. 1987); In re
E.I. du Pont de Nemours & Co., 177 USPQ at 568. However, a
statement from applicant’s attorney that the registrant
gives his consent is not the same as the submission of a
consent. Applicant’s attorney, in prosecuting the
application and appeal, is representing applicant before
the Patent and Trademark Office, not the owner of the cited
registration. We cannot presume a consent by the
registrant merely on the statement by applicant’s attorney.
We find this situation particularly troubling because
applicant and its attorney were advised by the examining
attorney, during examination, that applicant’s claim that
there was a consent was insufficient, in that a consent
agreement had not been submitted. However, despite having
had this deficiency pointed out, applicant did nothing to
secure and submit a consent document. Applicant has
represented that its principal is the registrant and that
he has no objection to the registration of applicant’s
mark; thus, it would seem a relatively simple matter to
provide the consent agreement. Yet applicant did not
submit the consent or provide any explanation as to why it
did not do so. As a result, we cannot treat applicant’s
statement as an actual consent by the owner of the cited
registration.
Ser No. 78917269
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Considering all of the applicable du Pont factors and
the evidence pertaining thereto, and in light of
applicant’s failure to substantiate its claim that the
registrant consented to the registration of applicant’s
mark, we find that applicant’s mark LA CONFIDENTIAL for its
identified clothing items is likely to cause confusion with
the cited registration.
Decision: The refusal of registration is affirmed.