Robert David Moose DBA Political Media Group

Trademark Trial and Appeal Board

Apr 10, 2020

86930700 (T.T.A.B. Apr. 10, 2020)

Mailed: April 10, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board
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In re Robert David Moose

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Serial No. 86930700
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Robert David Moose, pro se.

Jay K. Flowers, Trademark Examining Attorney, Law Office 112,
Renee Servance, Managing Attorney.
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Before Wolfson, Heasley, and Larkin,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Robert David Moose (“Applicant”) seeks registration on the Principal Register of
the mark depicted below:

for
Entertainment services, namely, providing a web site fea-
turing photographic, audio, video and prose presentations
featuring important political figures; Information relating
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 86930700
2
to entertainment and education provided on-line from a
computer database or the internet; Providing biographical
information of individuals via the Internet for educational
purposes; Providing a web site featuring information on
historic figures; Providing an Internet news portal featur-
ing links to news stories and articles in the field of current
events; Providing an Internet website portal featuring en-
tertainment news and information specifically in the field
of politics and current events
in International Class 41.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(a), 15 U.S.C. § 1052(a), on the ground that the term REAGAN in the
mark “points uniquely and unmistakably to Ronald Wilson Reagan and his name is
currently protected from use by anyone not associated or licensed by The Ronald
Reagan Presidential Foundation and Institute.” February 20, 2018 Office Action,
TSDR 1.2 The Examining Attorney also refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground of likelihood of confusion with the
mark RONALD REAGAN (in standard characters) for, inter alia, “Educational
services, namely, arranging and conducting seminars and educational programs and

1 Application Serial No. 86930700, filed March 7, 2016, based on Applicant’s allegation of use
of the mark in commerce pursuant to Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a),
claiming November 3, 2013 as both the date of first use and the date of first use in commerce.
The description of the mark reads: “The mark consists of a stylized 3- dimensional
representation of the two words ‘Reagan’ and ‘World.’ The two words are in an arch, with
‘Reagan’ on the left and ‘World’ on the right. There is an uppercase ‘R’ in ‘Reagan’ and an
uppercase ‘W’ in ‘World’. All other letters are lowercase. The face of all letters has an olive
green color. The three dimensional parts of the letters are going to the back and have shading
consisting of light blue and dark blue. Here and there are thin strips of white representing
slight reflections of light.” The colors olive green, dark blue, light blue, and white are claimed
as features of the mark
2 The TTABVUE and Trademark Status and Document Retrieval (“TSDR”) citations refer to
the docket and electronic file database for the involved application.
Serial No. 86930700
3
providing webcasts in the fields of history, civics, education, and government” in
International Class 41.3 February 20, 2018 Office Action, TSDR 1. The registration is
owned by The Ronald Reagan Presidential Foundation and Institute.
When the Examining Attorney made the refusal under Section 2(a) final,
Applicant appealed and requested reconsideration. The Examining Attorney denied
the request for reconsideration, requested and obtained a suspension of the appeal
and remand of the application, and then issued the second refusal under Section 2(d).
When the Examining Attorney made the Section 2(d) refusal final and maintained
the Section 2(a) refusal, this appeal resumed. We affirm the refusal to register on
both grounds.4
I. False Suggestion of a Connection
Section 2(a) of the Trademark Act provides, in relevant part:
No trademark by which the goods of the applicant may be
distinguished from the goods of others shall be refused reg-
istration on the principal register on account of its nature

3 Registration No. 5167497, issued on March 21, 2017. The mark is also registered for goods
and services in classes 6, 9, 14, 16, 18, 21, 25, 28, 35, 36 and 43, and for the following addi-
tional Class 41 services: “Arranging and conducting of concerts; Entertainment, namely, live
music concerts; Library and museum services; Special event coordination and consultation
services for social entertainment purposes.”
4 Applicant did not argue against the Section 2(d) refusal in his brief. Because arguments for
and against registrability often shift or narrow during the course of examination, all issues
on appeal must be raised and argued in an applicant’s opening brief. As the Examining At-
torney bears the burden of proof, we have carefully reviewed the application file and have
considered all of the evidence in the record, but we will not sift through the file in an attempt
to divine which additional issues or arguments applicant might have made on appeal, but did
not include in its brief. Cf. Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107
USPQ2d 1750, 1753 (TTAB 2013) (“Insofar as petitioner has not argued the descriptive or
geographically descriptive claims in its brief, we find, in accordance with the Board’s usual
practice, that those claims have been waived.”); Gen. Mills Inc. v. Fage Dairy Processing In-
dus. SA, 100 USPQ2d 1584, 1588 n.1 (TTAB 2011).
Serial No. 86930700
4
unless it —
(a) Consists of or comprises …matter which may disparage
or falsely suggest a connection with persons, living or dead,
institutions, beliefs, or national symbols, ….
The language of the statute is clear. If a mark for which registration has been
applied suggests a connection with any living or deceased person where none exists,
the mark is unregistrable. Applicant’s argument that Section 2(a) “has absolutely no
realistic relevance to this exclusively internet-based trademark request,” 7
TTABVUE 6, is misguided. It is irrelevant whether the medium used to convey the
false messaging, in this case the internet, existed at the time the Trademark Act was
written. The critical inquiry is whether an applicant’s mark creates a false suggestion
of a connection with a person, living or dead, howsoever the false suggestion is
conveyed. Applicant’s further argument that no one would believe that Ronald
Reagan himself had “sanctioned, approved, or was endorsing or influencing the
information” provided on Applicant’s website, 7 TTABVUE 14, is also misplaced.
“While protection of consumers is one of the bases of [Section 2(a)], another is
protection of the person identified from losing the right to control his or her identity.”
In re ADCO Indus.-Techs., L.P., 2020 USPQ2d 53786, *3 (TTAB 2020) (citing Univ.
of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., Inc., 703 F.2d 1372, 217 USPQ
505, 509 (Fed. Cir. 1983), aff’g 213 USPQ 594 (TTAB 1982)). Accordingly, even if
there were no likelihood of confusion stemming from Applicant’s use of the surname
REAGAN, Applicant’s use of a mark that falsely suggests a connection with Ronald
Serial No. 86930700
5
Reagan violates his rights of privacy and publicity.5 The word “connection” in this
context means “association,” and where, as here, the applied-for mark suggests such
an association, the mark is prohibited from registration under Section 2(a). Because
there is a successor to President Reagan’s legacy, namely, the Foundation, the rights
to exploit his “persona” are protected under Section 2(a). See, e.g., Estate of Biro v.
Bic Corp., 18 USPQ2d 1382, 1384 (TTAB 1991) (finding that after death of Ladislao
Jose Biro, his estate and heirs had standing to pursue claim under Section 2(a)
against application for the mark BIRO); cf. In re MC MC S.r.l., 88 USPQ2d 1378,
1380 (TTAB 2008) (finding no estate vested with rights to control use of deceased
opera singer Maria Callas’ name or persona and reversing refusal to register MARIA
CALLAS for jewelry).
“For over twenty years, and following our principal reviewing court’s decision
in [Univ. of Notre Dame du Lac], the Board has utilized a four-part test to determine
whether a false suggestion of a connection under Trademark Act Section 2(a) has
been established.” Id. at 1379. To establish a claim of false suggestion of a connection
under Section 2(a), the Examining Attorney must prove:
(1) that Applicant’s mark is, or is a close approximation of,
Ronald Reagan’s name or identity, as previously used by
him or identified with him;
(2) that Applicant’s mark would be recognized as such by
consumers of Applicant’s services, in that it points

5 As succinctly stated by the Board, “The right of publicity has developed to protect the com-
mercial interest of celebrities in their identities. Under this right, the celebrity has an inter-
est that may be protected from the unauthorized commercial exploitation of that identity. If
the celebrity’s identity is commercially exploited without the consent of the celebrity, there
has been an invasion of his/her right….” In re Nieves & Nieves LLC, 113 USPQ2d 1639,
1644 (TTAB 2015) cited in ADCO Indus., 2020 USPQ2d 53786, *3-4.
Serial No. 86930700
6
uniquely and unmistakably to Ronald Reagan;
(3) that Ronald Reagan is not connected with the services
that are sold or will be sold by Applicant under its mark;
and
(4) that Ronald Reagan’s name or identity is of sufficient
fame or reputation that when used by Applicant as a mark
for its services, a connection with Ronald Reagan would be
presumed.
In re ADCO Indus.-Techs., 2020 USPQ2d 53786, *3; see also In re Pedersen, 109
USPQ2d 1185, 1188-89 (TTAB 2013); In re Jackson Int’l Trading Co., 103 USPQ2d
1417, 1419 (TTAB 2012).6
A. Close Approximation
Applicant’s mark closely approximates the surname of the 40th president of the
United States, Ronald Reagan. Applicant’s mark is made up of two words, the first of
which is the surname “REAGAN,” which is defined in Merriam-Webster’s as the
biographical name of the former president:
.

6 “The right of publicity has developed to protect the commercial interest of celebrities in their
identities.” In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1644 (TTAB 2015) cited in ADCO
Indus., 2020 USPQ2d 53786, *3-4.
Serial No. 86930700
7
January 18, 2017 Office Action, TSDR 2.
Although “dictionary definitions can be enough to demonstrate that an applied-
for mark identifies a particular person or institution,” In re Pedersen, 109 USPQ2d at
1189-90, material obtained from an applicant’s website is acceptable as competent
evidence to show the probable impression the mark will make on relevant consumers.
See In re N.V. Organon, 79 USPQ2d 1639, 1642-43 (TTAB 2006) (finding admissible
printouts from the applicant’s website to show that it touts the taste of its product);
In re Promo Ink, 78 USPQ2d 1301, 1302-03 (TTAB 2006) (finding printouts of the
applicant’s website properly of record even where application filed pursuant to
Section 1(b)).
It is clear from Applicant’s specimen, a page from its website, that Applicant’s use
of “Reagan” in his mark is intended to identify the former President.
Serial No. 86930700
8

The photograph of President Reagan directly under Applicant’s mark underscores
the meaning of the mark and its commercial impression as pertaining to the former
president. The second word, “WORLD,” considered in relation to the recited services,
simply adds to the meaning of the mark that it is about the life and times of Ronald
Reagan. As Applicant put it, “The exact use of the two combined words ‘REAGAN
WORLD’ definitely implies a lighter reference to President Reagan.” TTABVUE 20.
The first part of the test is satisfied.
B. Points Uniquely and Unmistakably
There is no doubt that the “Reagan” to which Applicant’s mark refers is the former
U.S. president, Ronald Reagan. That is clear from the specimen Applicant attached
Serial No. 86930700
9
as evidence of its use of the mark (shown above). Applicant does not dispute that the
mark points uniquely and unmistakably to President Reagan. The second part of the
test is satisfied.
C. No Connection
The Examining Attorney has demonstrated that the “name REAGAN is currently
protected and all rights of publicity ‘in the name, image, likeness, voice and signature
of the late Ronald Wilson Reagan’ are owned by The Ronald Reagan Presidential
Foundation and Institute.” See Reagan Publicity License attached to January 18,
2017 Office Action, TSDR 9-12. Applicant confirmed that there is no connection
between himself and The Ronald Reagan Presidential Foundation and Institute.
August 20, 2018 Response Office Action, TSDR 19 (“[T]he applicant does not have
permission or an executed licensing agreement from The Ronald Reagan Presidential
Foundation and Institute to use the REAGAN name in connection with its services,
which directly relate to subject matters involving President Ronald Reagan.”).
Part three of the test is satisfied.
D. Fame
Under part four of the “false suggestion” test, the person to whom the mark refers
must be so famous or of such repute that relevant consumers of the applicant’s
services would presume that the applicant had a connection with that person.
Applicant does not contest that former president Ronald Reagan has such a
reputation, even though he died nearly 14 years ago. As noted above, the dictionary
definition provided for “Reagan” by Webster’s solely identified the former president.
Serial No. 86930700
10
In addition, the Examining Attorney submitted a copy of the results of a Google
search he conducted using the search term “Reagan.” The results prominently display
information about Reagan as “the number one hit of over 93,000,000 possible results,”
as shown below. 22 TTABVUE 11.

Office Action dated January 18, 2017, TSDR at 13-15.
In addition to this first Google entry shown above, nine truncated search result
“hits” are included. All but two of the excerpts refer to Ronald Reagan’s presidency;
one refers to domain name registration services and the other to the airport that was
named for President Reagan. The Google search results have some probative value
because they show the context in which the term is used on the listed web pages. See
TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 710.01(b) (Oct. 2018).
Accordingly, the evidence demonstrates that Ronald Reagan’s persona, reflected
in the name REAGAN, is sufficiently famous that users of Applicant’s website would
presume an association with the entity responsible for protecting that persona, The
Serial No. 86930700
11
Ronald Reagan Presidential Foundation and Institute. Part four of the test is
satisfied.
E. Conclusion – False Suggestion of a Connection
The term REAGAN in Applicant’s mark points uniquely and unmistakably to
Ronald Reagan. Consumers of Applicant’s services would presume, due to Reagan’s
continuing fame even 14 years after his death, that Applicant was connected to the
entity that inherited Reagan’s rights. Because there is no such connection, the mark
falsely suggests a connection where none exists. The mark is thus unregistrable
under Section 2(a).
II. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973) (“DuPont”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). We consider each DuPont factor for which there
is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d
1160, 1162-63 (Fed. Cir. 2019); M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d
1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands,
Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each factor
for which we have evidence, we focus our analysis on those factors we find to be
relevant.”). “[E]ach case must be decided on its own facts and the differences are often
subtle ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386, 387
(CCPA 1973) (internal citations removed).
Serial No. 86930700
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A. Similarity of the Marks
The first DuPont factor requires examination of “the similarity or dissimilarity of
the marks in their entireties as to appearance, sound, connotation and commercial
impression.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting DuPont, 177
USPQ at 567). “The proper test is not a side-by-side comparison of the marks, but
instead whether the marks are sufficiently similar in terms of their commercial
impression such that persons who encounter the marks would be likely to assume a
connection between the parties.” In re i.am.symbolic, 866 F.3d 1315, 123 USPQ2d
1744, 1748 (Fed. Cir. 2017) (quoting Coach Servs., 101 USPQ2d at 1721 (internal
quotation marks omitted)).
Applicant’s mark is . The cited mark is RONALD REAGAN.
Our comparison of the marks is determined based on the marks in their entireties.
See, e.g., Jack Wolfskin Ausrustung Fur Draussen GmbH KGAA v. New Millenium
Sports, S.L.U., 707 F.3d 1363, 116 USPQ2d 1129, 1134 (Fed. Cir. 2015) (The
“touchstone of this factor is consideration of the marks in total”). Nonetheless, “in
articulating reasons for reaching a conclusion on the issue of confusion, there is
nothing improper in stating that, for rational reasons, more or less weight has been
given to a particular feature of a mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties.” In re Nat’l Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985). The focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
Serial No. 86930700
13
trademarks. Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430
(TTAB 2013); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012). In this
case, because both Applicant and the Registrant provide information about historic
political figures, the average purchaser is an ordinary consumer interested in civics,
government, politics or history.
It is not improper to focus on the term REAGAN in Applicant’s mark because it is
the first term in the mark. See Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d
1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to
be impressed upon the mind of a purchaser and remembered”); see also, Palm Bay
Imps. Inc., 73 USPQ2d 1692; Century 21 Real Estate Corp. v. Century Life of Am., 970
F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). Moreover, it is this term that
modifies “world,” and defines the nature of the information provided by Applicant
over his website. The term is clearly a surname; it is also clearly a reference to Ronald
Reagan, the 40th president of the United States, as demonstrated above. Registrant’s
mark is RONALD REAGAN, the former president’s first and last name. Because both
marks refer to the same person by name, they are similar in sight, sound, connotation
and overall commercial impression. The addition of the term “World” in Applicant’s
mark does not differentiate the two marks; rather, it serves to reinforce the
impression that the educational services provided by Applicant involve facts
concerning Reagan’s life and the times and world in which he lived. Although the
design features of Applicant’s mark distinguish it somewhat from the cited mark in
appearance, because the cited mark is in standard character format, it may be used
Serial No. 86930700
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in any color or font style, including one similar to Applicant’s. See In re Aquitaine
Wine USA, LLC, 126 USPQ2d 1181, 1187 (TTAB 2018) (considering variations of a
standard character mark with regard to font style, size, and color). In short,
notwithstanding the design components of Applicant’s mark, which distinguish it
somewhat visually from the registered mark, we find the sight, sound, connotation,
and overall commercial impression of the two marks, considered in their entireties,
to be highly similar.
The first DuPont factor strongly favors a finding of likelihood of confusion.
B. Relatedness of the Services
In deciding whether the services in Applicant’s application and Registrant’s cited
registration are related, we must look to the services as they have been identified,
“regardless of what the record may reveal” as to their particular nature, the channels
through which they reach consumers, or the particular classes of consumers to whom
they are directed. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d
1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); see also In re i.am.symbolic, 123
USPQ2d at 1749 (“In reviewing the second factor, ‘we consider the applicant’s goods
as set forth in its application, and the [registrant’s] goods as set forth in its
registration.’”) (quoting M2 Software v. M2 Communs., Inc., 78 USPQ2d at 1947).
The services as identified in the application and cited registration are in-part
legally identical. That is, Registrant’s educational services of “arranging and
conducting seminars and educational programs and providing webcasts in the fields
of history, civics, education, and government” encompass Applicant’s narrower
services of providing a website “featuring important political figures,” “biographical
Serial No. 86930700
15
information of individuals” and “information on historic figures.” This overlap is
sufficient for a finding that the services are related. We need not find any other
services in Applicant’s application to be related to those in the cited registration. See
In re Wacker Neuson SE, 97 USPQ2d 1408, 1409 (TTAB 2010) (“It is sufficient if
likelihood of confusion is established for any item encompassed by the identification
of goods in the application.”) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp.,
648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)).
The second DuPont factor favors a finding of likelihood of confusion.
C. Similarity of Trade Channels and Classes of Purchasers
The third DuPont factor considers “[t]he similarity or dissimilarity of established,
likely-to-continue trade channels.” DuPont, 177 USPQ at 567. It is well established
that in the absence of restrictions in the application and registration, legally identical
services are presumed to travel in the same channels of trade to the same class of
purchasers. In re i.am.symbolic, 123 USPQ2d at 1750; see also In re Detroit Athletic
Co., 903 F.3d 1297, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (“The third DuPont
factor -- like the second factor -- must be evaluated with an eye toward the channels
specified in the application and registration, not those as they exist in the real
world.”) Here, neither the application nor the cited registration contains any
restrictions on the channels of trade or classes of customers. As a result, the legally
identical services are presumed to travel in the same channels of trade and be offered
to the same or overlapping classes of purchasers. See, e.g., In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (“[I]t is well established that, ‘absent
restrictions in the application and registration, goods and services are presumed to
Serial No. 86930700
16
travel in the same channels of trade to the same class of purchasers.’”) (citing Hewlett-
Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir.
2002)).
The third DuPont factor weighs in favor of finding a likelihood of confusion.
D. Applicant’s Prior Registrations
The thirteenth DuPont factor examines “any other established fact probative of
the effect of use.” DuPont, 177 USPQ at 567. Typically, cases involving prior
registrations under the thirteenth factor determine whether substantially similar
marks should be allowed to co-exist because of an applicant’s prior registration of a
similar mark. See, e.g., In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d
1790 (TTAB 2017) (finding mark USA WARRIORS ICE HOCKEY NONE TOUGHER
and design likely to cause confusion with USA HOCKEY and design despite
applicant’s prior registration of USA WARRIORS ICE HOCKEY NONE TOUGHER
and design); In re Strategic Partners, Inc. , 102 USPQ2d 1397 (TTAB 2012) (finding
that similarity between applicant’s prior registration of the mark ANYWEARS and
its applied-for mark ANYWEAR (stylized) prevents likelihood of confusion with third-
party cited mark ANYWEAR BY JOSIE NATORI and design). However, the
thirteenth factor is intended to accommodate “the need for flexibility in assessing
each unique set of facts.” Strategic Partners, 102 USPQ2d at 1399. Here, we address
prior registrations that share only structural similarities with the subject mark, in
that they each identify a former president by his surname and combine it with the
term “WORLD,” but do not contain the name REAGAN.
Serial No. 86930700
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Applicant argues that he holds registrations for the marks KENNEDY WORLD,7
NIXON WORLD,8 and JOHNSON WORLD;9 that these registrations also combine a
former president’s name with the term “WORLD”; are for the same recitation of
services as the subject application; and depict the marks in the same color and font
scheme as the subject mark. Therefore, Applicant reasons, he should be allowed to
register REAGAN WORLD. In his August 20, 2018 Response, Applicant included
informal copies of the registration certificates, which fail to show the current status
and title of the registrations. See TRADEMARK BOARD MANUAL OF PROCEDURE (TBMP)
§ 1208.02 (June 2019) (for registrations that are not the subject of the appeal, a copy
from either the electronic records of the USPTO or the paper USPTO record must be
submitted). However, because the Examining Attorney did not object to the
registrations and discussed them in his brief, we have considered Applicant’s
arguments under the thirteenth DuPont factor.10
We agree with the Examining Attorney that Applicant is not entitled to register
the mark REAGAN WORLD simply on the basis of his ownership of registrations for
marks referring to other United States Presidents. As the Examining Attorney notes,
“Trademark rights are not static, and eligibility for registration must be determined

7 Registration No. 4551512, issued June 17, 2014.
8 Registration No. 4551513, issued June 17, 2014.
9 Registration No. 4551516, issued June 17, 2014.
10 We do not, however, consider Applicant’s arguments with respect to two purportedly reg-
istered third-party marks containing the term “Reagan.” See Applicant’s Brief, 7 TTABVUE
18. Applicant did not properly introduce these registrations and the Examining Attorney did
not discuss them in his brief.
Serial No. 86930700
18
on the basis of the facts and evidence of record that exist at the time registration is
sought.” Examining Attorney’s Brief, 22 TTABVUE 13. Each case must be decided on
its own facts, bearing in mind that the USPTO “is required to examine all trademark
applications for compliance with each and every eligibility requirement . . . even if
the PTO earlier mistakenly registered a similar or identical mark suffering the same
defect.” In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635 (Fed. Cir.
2016) (finding that prior registration of CHURRASCOS as a standard character mark
did not preclude a finding that CHURRASCOS in stylized form was generic). The
Board is not bound to reverse a refusal to register a mark in a pending application if
that mark violates a statutory requirement simply because the mark shares some
characteristics with marks in another registration issued for the same goods or
services. While we recognize that consistency is highly desirable, “consistency in
examination is not itself a substantive rule of trademark law, and a desire for
consistency with the decisions of prior examining attorneys must yield to proper
determinations under the Trademark Act and rules.” In re Am. Furniture Warehouse
CO, 126 USPQ2d 1400, 1407 (TTAB 2018); see also In re Cordua Rests., 118 USPQ2d
at 1635. The USPTO must assess each mark on its own facts and record. In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
The thirteenth DuPont factor is neutral.
E. Conclusion – Likelihood of Confusion
We have considered all of the arguments and evidence of record and all relevant
DuPont factors. We find that the marks at issue are highly similar and that
Applicant’s website content and Registrant’s website content are legally identical in
Serial No. 86930700
19
part and would move in the same or overlapping trade channels and be offered to the
same class of purchasers. As such, we conclude that Applicant’s stylized mark
REAGAN WORLD, as used in connection with its entertainment and educational
services, so resembles the cited mark RONALD REAGAN for legally identical
services as to be likely to cause confusion or mistake, or to deceive, under Section 2(d)
of the Trademark Act.
Decision: The refusals to register Applicant’s mark under
Sections 2(a) and 2(d) of the Trademark Act are affirmed.