Romantic Tours, Inc.

Trademark Trial and Appeal Board

Jul 15, 2015

No. 77908876 (T.T.A.B. Jul. 15, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: July 15 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Romantic Tours, Inc.
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Serial No. 77908876
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Joseph J. Weissman of Johnson, Pope, Bokor, Ruppel & Burns, LLP for Romantic
Tours, Inc.

Tejbir Singh, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney.
_____

Before Seeherman, Ritchie and Adlin,
Administrative Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:
Romantic Tours, Inc. (“Applicant”) has appealed the Trademark Examining
Attorney’s refusal of registration of the mark BLACK BOOK in standard characters
for “providing on-line non-downloadable software for keeping track of online
companions and organizing online communications, correspondence history, events,
profiles and preferences in the field of online relationships and dating” in Class 42.1

1 Application Serial No. 77908876, filed January 11, 2010, based on Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), and asserting first use and first use in commerce at
least as early as May 24, 2004.
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Registration was refused pursuant to Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the mark
XXXBLACKBOOK in standard characters for services in Classes 38 and 42, listed
below, that as used in connection with Applicant’s identified services it is likely to
cause confusion or mistake or to deceive:
Chat room services for social networking; telecommunication services,
namely, transmission of webcasts; providing on-line chat rooms for
transmission of messages and photographs among computer users
interested in meeting other people concerning personal relationship
issues; electronic transmission of messages and images relating to
dating; providing email services, namely, providing access to email
boxes on a dating website; electronic transmission of mail and user-
provided information, personal profiles and information via the
Internet; instant messaging services via the Internet; electronic
transmission of information and sound and video clips; providing on-
line forums for transmission of messages among computer users; chat
room services for social networking; providing on-line electronic
bulletin boards for transmission of messages among computer users
concerning personal relationship issues (Class 38); and

Hosting online websites for others for organizing and conducting online
meetings, gatherings and interactive discussions (Class 42).2

We affirm the refusal to register.
I. Preliminary Matters
With its appeal brief Applicant submitted 28 pages of evidence, consisting of
exhibits that Applicant asserts it previously submitted during prosecution of the

2 Registration No. 4051248, issued November 8, 2011. The registration also includes
services in Classes 35, 41 and 45 which are not the basis for the refusal.
During the course of examination, the Examining Attorney also refused registration on
the bases of two additional registrations, Registration No. 3926282 for Blackbook27 and
Registration No. 4065116 for BLACKBOOK 27 in stylized form, both for “Internet based
introduction and social networking services,” and both owned by the same party. He later
withdrew the refusals based on these registrations.
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application. The Board strongly discourages resubmitting evidence that is already
of record; the Board considers all evidence that is properly of record. In addition to
adding to the bulk of the file, ascertaining whether exhibits to a brief are properly of
record wastes the Board’s time. In re Lorillard Licensing Co., 99 USPQ2d 1312,
1315 (TTAB 2011); In re SL&E Training Stable Inc., 88 USPQ2d 1216, 1220 n.9
(TTAB 2008) (attaching as exhibits to brief material already of record requires
Board to determine whether attachments had been properly made of record and
adds to the bulk of the file); In re Thor Tech Inc., 85 USPQ2d 1474, 1475 n.3 (TTAB
2007) (attaching evidence from record to briefs is duplicative and is unnecessary).
Accordingly, we have not separately reviewed the exhibits to Applicant’s brief; to
the extent that copies of the exhibits were properly made of record, we have
considered them.
With his appeal brief the Examining Attorney has included a definition of XXX,
and asks that we take judicial notice of it. As Applicant correctly points out, this
definition was not made of record. However, the Board may take judicial notice of
dictionary definitions, see University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983). We therefore grant the Examining Attorney’s request, although we
add that the probative value of this definition, which states that XXX is the Roman
numeral for 30, is very limited.
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II. Statutory Refusal
The only ground for refusal is likelihood of confusion. Our determination of this
issue 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 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). In fact, both Applicant and
the Examining Attorney have concentrated their arguments on these two factors,
with Applicant including, as a subset of its comments regarding the similarity of the
marks, that the cited mark is “relatively weak.” Brief, 9 TTABVUE 10.
We turn first to the du Pont factor of the similarity or dissimilarity and nature of
the services. It is not necessary that the services be similar or even competitive to
support a finding of likelihood of confusion. Instead, likelihood of confusion can be
found if the respective services “are related in some manner and/or if the
circumstances surrounding their marketing are such that they could give rise to the
mistaken belief that they emanate from the same source.” Coach Services Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012),
quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007). We consider
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the services as they are described in Applicant’s application and the cited
registration. du Pont, 177 USPQ at 567.
Applicant’s services are identified as “providing on-line non-downloadable
software for keeping track of online companions and organizing online
communications, correspondence history, events, profiles and preferences in the
field of online relationships and dating” in Class 42. The Class 42 services in the
cited registration are “hosting online websites for others for organizing and
conducting online meetings, gatherings and interactive discussions,” while the most
relevant of the Class 38 services are “providing on-line chat rooms for transmission
of messages and photographs among computer users interested in meeting other
people concerning personal relationship issues”; “electronic transmission of
messages and images relating to dating” and “providing on-line electronic bulletin
boards for transmission of messages among computer users concerning personal
relationship issues.”
Applicant characterizes its services as “providing non-downloadable software for
maintaining specified records,” while it contends that the cited registration is for
“dating services and actual communications seemingly related to online adult
dating, sex and/or pornography.” Brief, 9 TTABVUE 14 (emphasis in original).
Neither characterization is correct. Applicant’s services, as shown by the
identification, are not just providing software for “maintaining specified records”;
the software it provides is for organizing information, communications, etc. “in the
field of online relationships and dating.” The Registrant’s Class 38 services that we
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have listed above are specifically for “computer users interested in meeting other
people concerning personal relationship issues,” “transmission of messages and
images relating to dating” and “transmission of messages among computer users
concerning personal relationship issues.” Thus, both Applicant’s and the
Registrant’s services, as identified, are in the field of online relationships and
dating, and are directed to computer users, since Applicant’s services are identified
as being on-line services.
Applicant would also have us restrict the Registrant’s services to “adult” dating,
sex or pornography, because the Registrant’s services in Class 45 are identified as
“online adult dating.” However, the Registrant’s services in Classes 38 and 42 have
no such limitation, and we cannot read such a limitation into these identifications.
A multiple-class application/registration may be viewed as a group of
applications/registrations of one mark in connection with goods or services in
particular classes, all combined into one application/registration. See TMEP § 1403.
See also, In re Bonni Keller Collections Ltd., 6 USPQ2d 1224, 1226 (TTAB 1987)
(noting multiple-class application for goods and services is essentially two separate
applications combined for convenience of applicant and USPTO); Electro-Coatings,
Inc. v. Precision National Corp., 204 USPQ 410, 420 (TTAB 1979) (“there are, in
law, three applications and three oppositions to be adjudicated, because each class
in a multiple class application constitutes a separate case.”). Thus, in considering
the services, we must treat the Registrant’s Class 38 services as encompassing
personal relationships and dating in general; in other words, they are basically in
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the same field as Applicant’s online relationship and dating services. As for the
Registrant’s Class 42 services, they are more generally described as “hosting online
websites for others for organizing and conducting online meetings, gatherings and
interactive discussions,” without any restriction as to the subject of such meetings,
gatherings and discussions. This broad identification of services therefore
encompasses online relationships and dating, since those topics could certainly be
the subject of a meeting, gathering or discussion.
We also point out that Applicant’s services, as identified, could be in the field of
online “adult” dating. In this connection, we note that Applicant’s specimen shows
use of the mark for what might be considered dating of an “adult” nature.3 The
website is called “Hot Russian Brides,” and advertises online chatting with
“Beautiful Russian Women,” some of whose attributes (age, height and weight) are
listed.
Based on the identifications as written, we find that the services are related, in
that they have the same subject matter (dating/personal relationships) and the
same consumers, i.e. computer users who are interested in online
dating/relationships. Applicant’s services of providing non-downloadable software
for keeping track of online companions, etc. for online relationships and dating
would certainly be complementary to the Registrant’s services of transmitting
messages relating to dating, providing an on-line chat room for transmission of such

3 Applicant uses “adult” in the same manner as Registrant uses the word in its Class 45
identification of “online adult dating” or in the phrase “adult entertainment.” We use it for
the same meaning in our opinion.
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messages, and the like. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d
1565, 223 USPQ1289, 1290 (Fed. Cir. 1984) (complementary use [of products that
are used together] has long been recognized as a relevant consideration in
determining a likelihood of confusion).
Further, the Examining Attorney has submitted evidence from third-party
websites showing that entities that provide online dating services also provide
ancillary services similar to those of both Applicant and Registrant. For example,
the website for match.com states that it is an online dating provider that hosts web
sites, and makes it possible for “members” to see photos and read about potential
matches in their area, with communications between members going through an
“anonymous” email network.4 It also has a dating app that allows the customer to
“browse profiles, upload photos and exchange emails anywhere,” and to “see who’s
peeked at your profile” and “check out who likes your photos.”5 The website for
OKCupid Dating shows that this dating site has a dating app that gives access to
“Messages, Visitors, and Matches” and can be used on a “hand computer.”6 The
website for Zoosk claims it has the “#1 Dating App” that allows one to chat with
local singles, message singles, scan and show interest in other local singles and use
unlimited chat to get to know other local singles better.7 Zoosk states that its
Messenger app allows customers to text and video chat, and Zoosk helps with

4 November 7, 2013 Office action, p. 13.
5 May 23, 2014 Office action, pp. 4-5.
6 Id. at 2-3.
7 Id. at 7-8.
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“Relationship Needs,” telling customers “what you need in a relationship, where you
screwed up (without knowing it) in past relationships and a customized action plan
to make your next relationship successful.”8 And the play.google.com apps store site
featuring POF (Plenty of Fish) online dating states that POF is the world’s largest
dating site, and customers can “chat, flirt, and exchange messages with local
singles….” It also says the POF app allows one to, inter alia, send and receive
messages, and operates a forum by which people can post on such topics as
“Relationship Issues,” “Dating Over 30” and “Ask a Guy.”9
This evidence shows that online dating companies offer apps for consumers to
communicate with other singles, to be in chat rooms, and to discuss relationship
and dating issues. Although Applicant’s software is designed to keep track of online
companions and organize online communications, etc., the function of the software
is so similar to the services that the Registrant provides, and the services associated
with dating sites in general, that consumers are likely to believe that such software
comes from the same source as the Registrant’s identified Class 38 and 42 services
if they were offered under similar marks. We understand Applicant’s argument that
its software is not downloadable, and the evidence of third-party use relates to a
great extent to downloadable apps, but we think it unlikely that consumers would
believe the services come from different sources merely because some software is
downloadable and other software offered under a similar mark is non-downloadable.

8 Id. at 24, 27.
9 Id. at 10-11, 28.
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We find that Applicant’s and the Registrant’s identified services are closely
related, and that the du Pont factor of the similarity of the services favors a finding
of likelihood of confusion.
The trade channels for and classes of consumers of the services overlap, as they
are offered to computer users for use in connection with online dating. This du Pont
factor favors a finding of likelihood of confusion, as does the conditions of purchase
factor. These services are offered to the public at large, who would not be expected
to be particularly knowledgeable or have a sophistication about such services.
We now turn to the factor of the similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and commercial impression. There
are clear similarities in the marks, as both contain the term BLACK BOOK. The
fact that there is a space between BLACK and BOOK in Applicant’s mark, and the
words are run together in the Registrant’s mark, does not serve to distinguish them.
See Seaguard Corp. v. Seaward Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (SEA
GUARD and SEAGUARD are “essentially identical”); In re Best Western Family
Steak House, Inc., 222 USPQ 827 (TTAB 1984 (BEEFMASTER and BEEF MASTER
“practically identical”). The Registrant’s mark would readily be understood to be
composed of the elements XXX, BLACK, BOOK. Indeed, the only difference in the
marks is that the cited mark also contains the element XXX. There has been much
discussion as to what meaning XXX conveys for these services, with Applicant
asserting that it represents pornography, noting an entry for “Pornography” in
Wikipedia in which a representation of XXX has the caption, “The XXX symbol used
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to designate pornographic material in the U.S. and other regions around the world,”
and an entry for “.xxx” in which it is described as “a sponsored top-level domain
(sTLD) intended as a voluntary option for pornographic sites on the Internet.”10 The
Examining Attorney, on the other hand, has submitted a listing for “XXX” from
InternetSlang.com stating that it means “kisses”11 and the aforementioned Roman
numeral for “thirty.”
It seems unlikely to us that, simply because XXX is the Roman numeral for
thirty, consumers will view it as such when used in the cited mark. We also are not
persuaded that XXX as used in the cited mark would clearly be understood as
“kisses.” The only evidence for this meaning of XXX is from a website called
“InternetSlang.com.” It appears from the single page submitted by the Examining
Attorney that this website attempts to provide meanings for abbreviations used in
online messaging, and to provide “trending Slang, Words and Acronyms.” To the
extent that XXX means “kisses,” we agree with Applicant that it is more likely to be
used at the end of a message, rather than the manner in which it is used in the
Registrant’s mark.
We do accept that, in the context of these services, XXX can mean
“pornography,” and that consumers would understand the term to have this
meaning. In this connection, we note the evidence submitted with the December 19,
2014 Office action that “dating sites” can involve pornography, and are advertised
as having pornographic activities as a central feature. See, e.g., ,

10 November 24, 2014 request for reconsideration, pp. 7-13.
11 December 19, 2014 Office action, p. 2.
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www.liveporndating.com, which has the heading “Join Live Porn Dating And Get
All The Fun Of Porn With Dating”;12 PornDating Site, www.porndatingsite.com;13
and Adult Friend Finder, which advertises itself as “The World’s Largest Sex
Dating Site & Swinger Personals Community,” with a magazine “where you’ll find
sex advice, adult information, and steamy erotica submitted by other
AdultFriendFinder members.”14
As a result, the XXX portion of the Registrant’s mark has a descriptive
connotation, and thus we cannot agree with Applicant’s position that XXX is the
dominant portion of the cited mark. Typically, descriptive portions of a mark are
entitled to less weight in the likelihood of confusion analysis. “That a particular
feature is descriptive or generic with respect to the involved goods or services is one
commonly accepted rationale for giving less weight to a portion of a mark.” In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
As for BLACK BOOK, Applicant has submitted several definitions relating to
“black book”:
little black book: a book containing the names and addresses of
acquaintances who are potential dates, usually put together by men. :
Am I in your little black book, or can you already tell that I wouldn’t go
out with you?.15

Little black book: A related term [to Address book] that has entered
the popular lexicon is little black book (or simply black book). Such

12 p. 7.
13 Id. at 9.
14 Id. at 14-23. .
15 Dictionary of American Slang and Colloquial Expressions (2007), reported in
dictionary.com. Response filed May 7, 2014, p. 9.
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books are used as dating guides, listing people who the owner has
dated in the past or hopes to in the future, and details of their various
relationships. More explicit variations are guides for sexual partners.
It is unclear how prevalent this is in practice or when it originated,
though such books have been mentioned in many pieces of popular
culture. For example, the 1953 film version of Kiss Me, Kate features a
musical scene in which Howard Keel’s character laments the loss of the
social life he enjoyed before marriage, naming numerous female
romantic encounters while perusing a miniature black book. More
recently, the mid-2000 Guiness Brewmasters advertising campaign
features the “little black book” as an invention of one of the
brewmasters.16

black book: A book kept by a single man, containing a list of women
whom he calls occasionally for a social date;--usually used in the
phrase little black book.17

These definitions show that BLACK BOOK is usually used as part of the phrase
LITTLE BLACK BOOK, and that LITTLE BLACK BOOK is a term used in
connection with dating, namely a notebook in which one keeps information about
potential and past dates. Even if we accept that BLACK BOOK per se can have this
meaning, it has only a slightly suggestive connotation for services related to dating,
including online dating. We cannot agree with Applicant’s position that BLACK
BOOK is highly suggestive of either the Registrant’s or Applicant’s services. A
series of mental steps must be taken to go from “black book” as a term for a
notebook in which men write down the names and phone numbers of women they
dated or are interested in dating to, in the Registrant’s case, hosting online websites
so that people can engage in gatherings and discussion and online chat rooms for

16 The Free Dictionary, reported in http://encyclopedia.thefreedictionary.com, Id. at 11.
17 The American Heritage Dictionary of the English Language, 4th ed, reported in
www.wordlink.com. Id. at 12. The same definition appears in the Collaborative
International Dictionary of English, reported in Online Dictionary, Datasegment.com. Id. at
13.
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computer users interested in meeting other people concerning personal
relationships, etc., and in Applicant’s case, to software that organizes online
communications and the like in the field of dating.
Applicant also points to four third-party registrations for marks that contain the
term BLACK BOOK. Registration No. 4013916 is for JANIS SPINDELS VIRTUAL
BLACK BOOK for dating and matchmaking services; No. 3476068 for MATT’S
LITTLE BLACK BOOK for, inter alia, matchmaking services; and the two
registrations owned by the same entity, No. 3926282 BLACKBOOK 27 and No.
4065116 for BLACKBOOK 27 in stylized form, both for Internet based introduction
and social networking services. (As previously noted, the latter two were originally
cited against Applicant’s application.) There is no evidence of use of these
registrations and, in fact, the registration for MATT’S LITTLE BLACK BOOK has
been cancelled pursuant to Section 8. Third-party registrations are entitled to little
weight on the question of likelihood of confusion where there is no evidence of
actual use, although they may be given some weight to show the meaning of a mark
in the same way that dictionaries are used. Id. While the third-party registrations
alone, because of their limited number and lack of evidence of actual use, would
have no probative value in establishing commercial weakness, in view of the
dictionary definitions we can consider them as giving some support for the
suggestive meaning of BLACK BOOK.
Applicant has also submitted some evidence of third-party use of “black book.”
The first has the heading “black book chat,” and is a printout from
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www.blackbookchat.com. The webpage has the subheadings “APPS, SIGN UP,
CHAT, WHO IS ONLINE?, BROWSE and SEARCH, but otherwise the page is
basically blank.18 We cannot ascertain anything from this evidence in terms of
whether a mark is even in use, let alone to ascertain the goods or services. The
second use is from a company called Rusty Brick, Inc., with the logo RB and design,
advertising an iPhone application called Little Black Book.19 There is no
information as to the cost, or the number of sales, if any. Further, although it is
described as an app that would allow the user to keep track of dates, there is no
indication that it would be connected to online dating or ancillary services for online
dating. There are two third-party listings for “black book” in connection with the
title of a book: “The Player’s Black Book,” described as containing “my favorite pick-
up techniques…,”20 and “The Little Black Book of Dating Secrets,” described as “A
complete, powerful, easy to follow guide to dating….”21 Such uses as titles are not
considered to be trademark use. See Herbko Int’l Inc. v. Kappa Books Inc., 308 F.3d
1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002); In re Cooper, 254 F.2d 611, 117
USPQ 396 (CCPA 1958). Finally, there are webpages from
www.blackbookdirectory.com/au, which appear to be advertising a “high class
Sydney escort.”22 Even if we were to regard the listing of Blackbook Directory as
trademark use, third-party use of a mark in Australia would not be relevant to the

18 Response filed May 7, 2014, pp. 15-16.
19 Id. at 17.
20 Id. at 18.
21 Id. at 23-27.
22 Id. at 19-22.
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sixth du Pont factor, the number and nature of similar marks in use on similar
services). In short, there is not sufficient evidence of actual third-party use in the
United States of BLACK BOOK marks for similar services for us to conclude that
consumers would look to other elements in the marks to distinguish one BLACK
BOOK mark from another. We consider the sixth du Pont factor to be neutral.
This is not to say that the cited mark XXXBLACKBOOK is a strong mark. As
noted above, BLACK BOOK is somewhat suggestive for dating and ancillary
services. However, as the Examining Attorney points out, suggestive marks are still
entitled to protection. In the present case BLACK BOOK in both marks conveys the
same suggestive meaning. When the marks are considered in their entireties, and
despite the fact that the cited mark includes the term XXX and Applicant’s mark
does not, overall the similarities in the marks outweigh the differences. The du Pont
factor of the similarity of the marks favors a finding of likelihood of confusion.
Accordingly, we find that Applicant’s mark for its identified services is likely to
cause confusion with the mark and the Class 38 and 42 services in the cited
registration.
Decision: The refusal to register Applicant’s mark BLACK BOOK is affirmed.