Richard H. Wynn

Trademark Trial and Appeal Board

Oct 17, 2000

No. 75011915re (T.T.A.B. Oct. 17, 2000)

Paper No. 25
PTH
8/17/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Richard H. Wynn
________
Serial Nos. 75/011,915 and 75/011,916
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Richard H. Wynn, pro se.
Jill C. Alt, Trademark Examining Attorney, Law Office 114
(Mary Frances Bruce, Managing Attorney).
_______
Before Cissel, Hairston and Bottorff, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Richard H. Wynn has filed applications to register the
marks 21ST CENTURY FOX1 and TWENTY-FIRST CENTURY FOX2 for:
pre-recorded video-discs, pre-recorded video
tapes and cassettes, pre-recorded video-magnetic
tapes all featuring adult live-action
entertainment; pre-recorded compact discs and
pre-recorded audio magnetic tapes, audio
cassette tapes, all featuring adult social
intercourse entertainment, specifically
adults discussing adult entertainment topics
using graphic adult entertainment language;

1 Serial No. 75/011,915, filed on October 30, 1995, which alleges
a bona fide intention to use the mark in commerce.
2 Serial No. 75/011,916, filed on October 30, 1995, which alleges
a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser Nos. 75/011,915 and 75/011,916
2
all products are not advertised, marketed
or presented on the global computer network
in class 9; and
adult entertainment services that include
adult movies and the production and
distribution of adult motion picture films,
adult television programs and television
commercials; all services are not advertised,
marketed or presented on the global computer
network in class 41.
Registration has been refused in both instances
pursuant to Section 2(d) of the Trademark Act, on the
ground that each mark, if used on the identified goods and
services, would so resemble the following registered marks
as to be likely to cause confusion or mistake or to
deceive:
(a) TWENTIETH CENTURY FOX FILM CORPORATION
and design as shown below
for “silent, sound, dialogue, and
talking motion picture films”;3
(b) 20th CENTURY FOX and design as shown
below

3 Registration No. 336,090 issued June 23, 1936; renewed.
Ser Nos. 75/011,915 and 75/011,916
3
for “motion picture films”;4
(c) TWENTIETH CENTURY FOX for “motion
picture films, phonograph records,
audio magnetic tapes, video magnetic
tapes (videocassettes) and
videodiscs”;5
(d) 20th CENTURY FOX and design as shown
below
for “cinematographic films, video tapes,
prerecorded video cassettes and video
discs” in class 9 and “production and
distribution of motion picture films
television programs, pre-recorded
videocassettes” in class 41;6

4 Registration No. 1,011,919 issued May 27, 1975; renewed.
5 Registration No. 1,237,164 issued May 10, 1983; Sections 8 & 15
affidavit filed.
6 Registration No. 1,256,722 issued November 8, 1983; Sections 8
& 15 affidavit filed.
Ser Nos. 75/011,915 and 75/011,916
4
(e) 20th CENTURY FOX and design as shown
below
for “cinematographic films, video tapes,
pre-recorded videocassettes and video
discs” in class 9 and “production and
distribution of motion picture films,
television programs, pre-recorded
videocassettes and videodiscs” in class
41;7
(f) TWENTIETH CENTURY FOX for “production
and distribution of motion picture
films; phonograph records, audio
magnetic tapes, television programs,
video magnetic tapes (videocassettes)
and video-discs”;8
(g) TWENTIETH CENTURY FOX SELECTIONS for
“pre-recorded video tapes, pre-recorded
video cassettes, pre-recorded videodiscs
featuring live action and animated
entertainment9

7 Registration No. 1,465,225 issued November 17, 1987; Sections 8
& 15 affidavit filed.
8 Registration No. 1,602,948 issued June 19, 1990; Sections
8 & 15 affidavit filed.
9 Registration No. 1,956,371 issued February 13, 1996. The word
SELECTIONS has been disclaimed apart from the mark as shown.
Ser Nos. 75/011,915 and 75/011,916
5
(h) 20th CENTURY FOX and design as shown
below
for “motion picture films, pre-recorded
video tapes, pre-recorded video
cassettes, and pre-recorded videodiscs
featuring entertainment”;10
(i) 20th CENTURY FOX HOME ENTERTAINMENT and
design as shown below
for “entertainment services in the nature
of production and distribution of motion
picture films; production of and
distribution for others of television
programs, pre-recorded video cassettes,
pre-recorded video tapes, pre-recorded
video discs, pre-recorded audio cassettes,
pre-recorded audio tapes, pre-recorded

10 Registration No. 1,928,423 issued October 17, 1995. The
registration states: The trademark is a computer generated
sequence showing the central element from several angles as
though a camera is moving around the structure.
Ser Nos. 75/011,915 and 75/011,916
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audio compact discs, and phonograph
records”;11 and
(j) 20th CENTURY FOX and design as shown
below
for “pre-recorded video cassettes,
pre-recorded video tapes, pre-recorded
videodiscs, pre-recorded audio cassettes,
pre-recorded audio tapes, pre-recorded
audio compact discs and phonograph
records, all featuring entertainment,
action, adventure, dramatic, comedic,
children’s and documentary themes and
musical performances”.12
Applicant has appealed, and because both cases involve
essentially identical records and issues, we will render a
single opinion resolving both appeals.
Our determination under Section 2(d) of the Act is
based on an analysis of all of the probative facts in
evidence that are relevant to the factors bearing on the

11 Registration No. 2,092,752 issued September 2, 1997. The words
HOME ENTERTAINMENT have been disclaimed apart from the mark as
shown.
12 Registration No. 2,138,211 issued February 24, 1998.
Ser Nos. 75/011,915 and 75/011,916
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likelihood of confusion issue. In re E. I. duPont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In
any likelihood of confusion analysis, two key
considerations are the relatedness of the goods and
services and the similarities between the marks.
We turn first to a consideration of the goods and
services. It is applicant’s position that the adult-
oriented entertainment products and services which he
intends to offer are in no way similar to the “mainstream”
entertainment products and services in the cited
registration. Applicant contends that his
adult-oriented pre-recorded video discs, tapes and
cassettes, compact discs, etc., will be sold in different
channels of trade than are the products in the cited
registrations. Further, applicant argues that registrant,
which offers entertainment goods and services tailored to
children, would never be involved in the adult-oriented
entertainment business.
As correctly noted by the Examining Attorney, the
issue of likelihood of confusion in a proceeding such as
this must be determined on the basis of the goods and
services specified in the involved application vis-à-vis
the goods and services set forth in the cited
registrations, without limitations or restrictions not
Ser Nos. 75/011,915 and 75/011,916
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reflected therein. See In re Elbaum, 211 USPQ 639, 640
(TTAB 1981). We recognize that the identifications of
goods and services in the involved applications has been
restricted such that applicant’s entertainment goods and
services are limited to those which are adult-oriented in
nature. However, the identifications of goods and services
in the cited registrations have no limitations as to type,
channels of trade or classes of purchasers. Thus, we must
presume that the entertainment goods and services listed in
the cited registrations include the adult-oriented type
which applicant intends to offer. Notwithstanding
applicant’s arguments concerning the actual goods and
services offered by registrant, for purposes of our
likelihood of confusion determination, the goods and
services of applicant and registrant are identical.13
We turn then to a comparison of applicant’s marks 21ST
CENTURY FOX and TWENTY-FIRST CENTURY FOX and the various
cited marks consisting of 20th CENTURY FOX or TWENTIETH
CENTURY FOX.

13 We should add that even if registrant’s entertainment goods and
services were specifically limited to exclude those which are
adult-oriented, there would nonetheless be overlap among
purchasers. For example, adults who purchase registrant’s
“mainstream” pre-recorded video tapes could also purchase
applicant’s pre-recorded video tapes featuring adult social
intercourse entertainment.
Ser Nos. 75/011,915 and 75/011,916
9
There is no dispute that the cited marks consist of
and are dominated by the wording 20th (or TWENTIETH) CENTURY
FOX and that such wording is highly similar to applicant’s
marks 21ST and TWENTY-FIRST CENTURY FOX in appearance and
sound. It is applicant’s position, however, that his marks
21ST and TWENTY-FIRST CENTURY FOX, when used in connection
with its goods and services, would differ significantly in
meaning from 20th and TWENTIETH CENTURY FOX in the cited
registrations, such that confusion would be unlikely. In
particular, applicant argues that the cited marks connote
the twentieth century itself and the surname “Fox,” whereas
applicant’s marks connote a contemporary (“21ST or TWENTY-
FIRST CENTURY”) beautiful and sexually attractive woman
(“FOX”).
When the goods and services are identical or closely
related, it has been held that: “Concerning the question
of the similarity of the marks, it is well established that
similarity in any one of the elements of sound, appearance,
or meaning is sufficient to indicate likelihood of
confusion.” General Foods Corp. v. Wisconsin Bottling,
Inc., 190 USPQ 43, 45 (TTAB 1976). See also In re Mack,
197 USPQ 755 (TTAB 1977) [“It is also well settled that
similarity in any one of the elements of sound, appearance
or meaning is sufficient to indicate likelihood of
Ser Nos. 75/011,915 and 75/011,916
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confusion.”]. Even assuming that applicant’s marks and the
marks in the cited registrations have different
connotations, the marks are so similar in appearance and
sound that, if used in connection with identical goods and
services, confusion would be likely.
Decision: The refusal to register is affirmed.
R. F. Cissel
P. T. Hairston
C. M. Bottorff
Administrative Trademark Judges
Trademark Trial and Appeal Board
Ser Nos. 75/011,915 and 75/011,916
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Ser Nos. 75/011,915 and 75/011,916
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