Propaganda Headquarters, Inc.

Trademark Trial and Appeal Board

Mar 4, 2008

No. 78755108 (T.T.A.B. Mar. 4, 2008)

Mailed: March 4, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Propaganda Headquarters, Inc.
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Serial No. 78755108
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Sunny S. Nassim of Jacobson, Russell, Saltz & Fingerman, LL for
Propaganda Headquarters, Inc.

Patty Evanko, Trademark Examining Attorney, Law Office 117
(Loretta C. Beck, Managing Attorney).
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Before Holtzman, Kuhlke and Bergsman, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

An application has been filed by Propaganda Headquarters,
Inc. to register the mark PROPAGANDA in standard character form
for services ultimately identified as: 1
Advertising and consulting services in the areas of
marketing and branding; management of professional
athletes and entertainers; arranging and conducting
marketing promotional events for others; advertising,

1 Application Serial No. 78755108, filed November 16, 2005 based on an
allegation of first use and first use of the mark in commerce on March
1, 2001.

THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Serial No. 78755108
2
including promotion of products and services for
third parties through sponsorship arrangements and
license agreements relating to various events; and
public relations, in Class 35.

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 PLANET PROPAGANDA in typed form (PROPAGANDA
disclaimed) for the following services, as to be likely to cause
confusion.2
Advertising agency services, namely promoting the
services of others through television, radio,
newspaper, magazine, direct-mail, brochures, outdoor
billboards and Internet websites; business marketing
consulting services; public relations consultation;
creating trademarks and service marks for others,
namely business and product naming, in Class 35.

When the refusal was made final, applicant appealed. Briefs
have been filed.
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

2 Registration No. 2729657, issued June 24, 2003. The registration
includes two additional classes of services. However, the refusal to
register is based solely on the services in Class 35.
Serial No. 78755108
3
goods or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We turn first to the services. As identified, the services
are in part identical or legally identical. Applicant's
"consulting services in the areas of...branding" overlap with
registrant's "business and product naming services," as do
applicant's "public relations services" and registrant's "public
relations consultation." Also, applicant's broadly worded
"advertising...services in the area[] of marketing" encompass
registrant's "advertising agency services, namely promoting the
services of others"; and applicant's "consulting services in the
areas of marketing" include registrant's "business marketing
consulting services."
Applicant argues that its services are marketed towards mid
to large size companies in the sporting industry and, in
particular, "the action sports industry (sports consisting of
surfing, skateboarding, motorcross, [etc.]"; and that applicant
and registrant have no overlapping clientele. Applicant also
argues that unlike registrant, applicant is not an advertising
agency, and that applicant's "main" services involve event
production, branding, marketing and management.
These arguments are not persuasive. It is well settled that
the question of likelihood of confusion must be decided on the
basis of the services set forth in the application and
Serial No. 78755108
4
registration, without limitations as to the actual nature of the
services, their channels of trade and/or classes of purchasers
that are not reflected therein. See J & J Snack Foods Corp. v.
McDonald's Corp., 932 F.2d 1460, 1464, 18 USPQ2d 1889 (Fed. Cir.
1991); Octocom Systems Inc. v. Houston Computers Services Inc.,
918 F.2d 937, 942, 16 USPQ2d 1783 (Fed. Cir. 1990); and CBS Inc.
v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983). Whether
or not applicant is technically an advertising agency, its
marketing services, among its other services, are broadly
described and they include the types of services an advertising
agency would provide. Furthermore, applicant's marketing and
branding services are not limited to the sports industry or to
sports clientele. But, even if applicant's services were so
limited, it would be unavailing because registrant's services
contain no restrictions at all. In the absence of any
limitations in the registration, we must assume registrant's
advertising and promotional services are offered in all the usual
fields, including the sports field; to all potential customers,
including athletes, sports companies, and others in the sports
industry; and that the fields and customers for both applicant's
and registrant's services would therefore be the same.
It is reasonable to assume that the customers for
applicant's and registrant's services would exercise some degree
of care in selecting the services. However, even careful
Serial No. 78755108
5
purchasers can be confused as to source under circumstances where
similar marks are used on identical services. See In re Research
Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986)
citing Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd.,
434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) ("Human memories
even of discriminating purchasers...are not infallible.").
We turn then to the similarity or dissimilarity of the marks
in their entireties in terms sound, appearance, meaning and
commercial impression. See du Pont, supra. See also Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005). In making this determination, we
keep in mind that when marks would appear on identical or legally
identical services, the degree of similarity between the marks
necessary to support a finding of likely confusion declines.
Century 21 Real Estate v. Century Life, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992).
Applicant's mark PROPAGANDA and registrant's mark PLANET
PROPAGANDA are similar in sound and appearance. The term
PROPAGANDA is applicant's entire mark, and that same term is
aurally and visually a major component of registrant's mark.
The word PROPAGANDA is also significant in conveying the
meaning and commercial impression of registrant's mark. The
presence of the word PLANET in registrant's mark does not
significantly change the meaning or commercial impression created
Serial No. 78755108
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by PROPAGANDA alone. Both marks suggest the persuasive or
manipulative nature of the advertising, and the word PLANET added
to PROPAGANDA simply expands on the scope of the "propaganda."3
The fact that PROPAGANDA is disclaimed in applicant's mark
does not detract from the otherwise strong similarity between the
marks. It is well settled that disclaimed matter still forms a
part of the mark and cannot be ignored in determining likelihood
of confusion. See In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985) ("The technicality of a disclaimer
in National's application to register its mark has no legal
effect on the issue of likelihood of confusion. The public is
unaware of what words have been disclaimed..."). As the Court
explained, "the basic principle in determining confusion between
marks is that marks must be compared in their entireties."
National Data, supra at 750. See also Specialty Brands, Inc. v.
Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1282
(Fed. Cir. 1984) (finding SPICE VALLEY confusingly similar to
SPICE ISLAND, both for tea, the Court stated, "Although applicant
disclaimed the word 'spice' apart from SPICE VALLEY as a whole,
the marks are viewed in their entireties.").

3 We take judicial notice of the definition of "propaganda" Compact
Oxford English Dictionary of Current English (2004) (from the website
www.onelook.com) as "noun information, especially of a biased or
misleading nature, used to promote a political cause or point of view."
The Board may take judicial notice of dictionaries, including online
dictionaries, which exist in printed format. See In re
CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002).

Serial No. 78755108
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When the marks are viewed in their entireties, as we have
done here, and considering that the marks are used for services
which are in part identical and legally identical, we find that
the factor of the similarity or dissimilarity of the marks
strongly favors a finding of likelihood of confusion. We also
note that there is no evidence that the term PROPOGANDA is
commonly used or registered by others in the field or that the
term is descriptive or otherwise weak in relation to the
services.
Applicant concedes that the marks are similar. Brief at 1.
Applicant, however, argues that there is no likelihood of
confusion because its business name "Propaganda Headquarters" is
well-known and highly recognized in the sports industry. This
argument is irrelevant inasmuch as applicant's business name is
not part of the mark sought to be registered. See Bellbrook
Dairies, Inc. v. Hawthorn-Mellody Farms Dairy, Inc., 117 USPQ
213, 214 (CCPA 1958); and Blue Cross and Blue Shield Association
v. Harvard Community Health Plan Inc., 17 USPQ2d 1075, 1077 (TTAB
1990). Nor is it relevant that applicant may have used its mark
before registrant. Priority of use is not an issue in an ex
parte proceeding. See In re Calgon Corporation, 435 F.2d 596,
168 USPQ 278, 280 (CCPA 1971).
Serial No. 78755108
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In view of the similarity of the marks, and because the
services, as well as the trade channels and purchasers for the
services are in part identical, we find that confusion is likely.
Decision: The refusal to register under Section 2(d) of the
Trademark Act is affirmed.