Rum Bum Records, LLC

Trademark Trial and Appeal Board

Jun 19, 2014

No. 85512432 (T.T.A.B. Jun. 19, 2014)

From: Bradley, Evelyn

Sent: 6/19/2014 11:46:11 AM

To: TTAB EFiling

CC:

Subject: U.S. TRADEMARK APPLICATION NO. 85512432 - BACARDI RECORDS - Bacardi-SM-0 - EXAMINER
BRIEF

*************************************************
Attachment Information:
Count: 1
Files: 85512432.doc

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

U.S. APPLICATION SERIAL NO. 85512432

MARK: BACARDI RECORDS

*85512432*
CORRESPONDENT ADDRESS:
IRA COHEN
HENKEL & COHEN PA
18001 OLD CUTLER RD STE 600
MIAMI, FL 33157-6444

GENERAL TRADEMARK INFORMATION:
http://www.uspto.gov/trademarks/index.jsp

TTAB INFORMATION:
http://www.uspto.gov/trademarks/process/appeal/index.jsp
APPLICANT: Rum Bum Records, LLC

CORRESPONDENT’S REFERENCE/DOCKET NO:
Bacardi-SM-0
CORRESPONDENT E-MAIL ADDRESS:
ic@miamibusinesslitigators.com

EXAMINING ATTORNEY’S APPEAL BRIEF

Applicant has appealed the examining attorney’s final refusal to register the trademark
“BACARDI RECORDS” for “education, namely, providing training in the field of musical entertainment,
specifically, training relating to live performances by a musical group; organizing community sporting
and cultural events,” on the basis that the mark is likely to be confused with the mark in U.S.
Registration No. 3,665,186 under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).

I. FACTS

Applicant, Rum Bum Records, LLC, applied to register the mark “BACARDI RECORDS” for
“education, namely, providing training in the field of musical entertainment, specifically, training
relating to live performances by a musical group; organizing community sporting and cultural events.”1

The examining attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C.
Section 1052(d) based on the highly similar mark “BACARDI” in pertinent part for “entertainment and
leisure services including those provided via the Internet, namely, providing a web site featuring musical
videos, related film clips, photographs, and other multimedia materials, organization, provision and
running of recreational, cultural and sporting events, exhibitions in the field of music entertainment,
conferences in the field of music entertainment, entertainment and leisure activities; organization,
provision and running of entertainment events, namely, discos and live music concerts, advice,
information and consultancy services relating to all of the aforesaid services; providing prerecorded
digital non-downloadable music on-line via a global computer network; production of radio programs;
radio entertainment and supplying of information in connection therewith, namely, radio programs
featuring live performances, interviews and information relating to music; providing radio, television

1 The identification reflects changes made by the applicant in the correspondence dated October 23, 2012.
and live entertainment programs for non-downloadable retrieval from a global computer network;
providing prerecorded digital music, digital audio and digital video featuring live and prerecorded
cultural and sporting events, online via a global computer network; nightclub services.”

Additionally, the examining attorney asked the applicant to provide an acceptable recitation of
services and a disclaimer of the term “RECORDS.” While accepting the applicant’s amended recitation of
services and disclaimer, the examining attorney issued a final refusal on the likelihood of confusion
refusal issue. This appeal now follows the examining attorney’s final Office action based on the
likelihood of confusion refusal.

II. ARGUMENTS

APPLICANT’S MARK AND REGISTRANT’S MARK ARE HIGHLY SIMILAR AND THE SERVICES ARE RELATED
SUCH THAT THERE EXISTS A LIKELIHOOD OF CONFUSION, MISTAKE, OR DECEPTION UNDER SECTION
2(d) OF THE TRADEMARK ACT.

The Court in In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973),
listed the principal factors to be considered in determining whether there is a likelihood of confusion
under Section 2(d). Any one of the factors listed may be dominant in any given case, depending upon
the evidence of record. In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir.
1997). In this case, the following factors are the most relevant: similarity of the marks and similarity of
trade channels of the services. In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); TMEP
§§1207.01 et seq.

Fundamentally, any doubt as to the issue of likelihood of confusion must be resolved in favor of
the prior registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988);
TMEP §§1207.01(d)(i).

A. THE MARKS ARE CONFUSINGLY SIMILAR

In a likelihood of confusion determination, the marks are compared for similarities in their
appearance, sound, meaning or connotation and commercial impression. In re E .I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973); TMEP §1207.01(b). Similarity in any one of these
elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534,
1535 (TTAB 1988); TMEP §1207.01(b).

The question is not whether people will confuse the marks, but whether the marks will confuse
people into believing that the goods or services they identify come from the same source. In re West
Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (C.C.P.A. 1972). For that reason, the test of likelihood
of confusion is not whether the marks can be distinguished when subjected to a side-by-side
comparison. The issue is whether the marks create the same overall commercial impression. Visual
Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980). Thus, the primary focus in
the analysis is on the recollection of the average purchaser who normally retains a general rather than a
specific impression of trademarks. Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537
(TTAB 1979); TMEP §1207.01(b).

With the above in mind, applicant seeks to register the mark “BACARDI RECORDS” on the
Principal Register. The registered mark “BACARDI” is also on the Principal Register.

Marks may be confusingly similar in appearance where there are similar terms or phrases or
similar parts of terms or phrases appearing in both applicant’s and registrant’s mark. In re Corning Glass
Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); TMEP §1207.01(b)(ii)-(iii). The
applicant’s mark and the registrant’s mark share the term “BACARDI.”

Likelihood of confusion is not necessarily avoided between otherwise confusingly similar marks
merely by adding or deleting distinctive matter, or a term that is descriptive or suggestive of the named
goods or services; if the dominant portion of both marks is the same, then the marks may be confusingly
similar notwithstanding peripheral differences. Stone Lion Capital Partners, L.P. v. Lion Capital LLP, ___
F.3d ____, 110 USPQ2d 1157, 1161 (Fed. Cir. Mar. 26, 2014); TMEP §1207.01(b)(iii). In this case, adding
the descriptive term RECORDS to the registered mark BACARDI does not diminish the likelihood of
confusion.

Overall, the marks have the same commercial impression. A sufficient and clear resemblance
exists between the applicant’s mark and the mark contained in U.S. Registration No. 3,665,186, as to
cause a likelihood of confusion. While applicant has argued that the marks do not create the same
commercial impression, it is clear that overall, the marks have the same commercial impression.

B. THE SERVICES ARE RELATED

The goods or services of the parties need not be identical or directly competitive to find a
likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d
1471, 1475 (Fed. Cir. 2000); TMEP §1207.01(a)(i). Rather, it is sufficient to show that because of the
conditions surrounding their marketing, or because they are otherwise related in some manner, the
goods and/or services would be encountered by the same consumers under circumstances such that
offering the goods and/or services under confusingly similar marks would lead to the mistaken belief
that they come from, or are in some way associated with, the same source. In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984); TMEP §1207.01(a)(i).

The crucial issue is not likelihood of confusion between particular goods or services, but
likelihood of confusion as to the source of those goods or services. In re Shell Oil Co., 992 F.2d 1204,
1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993), and cases cited therein; TMEP § 1207.01.

The applicant’s services are identified in the application as “education, namely, providing
training in the field of musical entertainment, specifically, training relating to live performances by a
musical group; organizing community sporting and cultural events.” The registrant’s services are
identified as “entertainment and leisure services including those provided via the Internet, namely,
providing a web site featuring musical videos, related film clips, photographs, and other multimedia
materials, organization, provision and running of recreational, cultural and sporting events, exhibitions
in the field of music entertainment, conferences in the field of music entertainment, entertainment and
leisure activities; organization, provision and running of entertainment events, namely, discos and live
music concerts, advice, information and consultancy services relating to all of the aforesaid services;
providing prerecorded digital non-downloadable music on-line via a global computer network;
production of radio programs; radio entertainment and supplying of information in connection
therewith, namely, radio programs featuring live performances, interviews and information relating to
music; providing radio, television and live entertainment programs for non-downloadable retrieval from
a global computer network; providing prerecorded digital music, digital audio and digital video featuring
live and prerecorded cultural and sporting events, online via a global computer network; nightclub
services.”

With the above in mind, the parties’ services could potentially be available to the same class of
consumers and would be encountered under circumstances leading one to mistakenly believe that they
originate from the same source.

The examining attorney makes reference to and incorporates herein copies of current U.S.
registrations attached to the first Office action showing entities using the same mark in connection with
services similar to those identified in the application and the cited registration. Such third-party
registrations have probative value to the extent that they serve to suggest that certain goods or services
are of a kind that may emanate from a single source under a single mark. In re Mucky Duck Mustard Co.,
6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii).

The following are examples of said registrations:

U.S. Registration No. 3,613,162 SPICERACK is for among other things, “educational services, namely,
conducting classes, seminars, conferences, workshops in the field of music,” “organizing community
sporting and cultural events,” “entertainment services, namely, providing a web site featuring musical
performances, musical videos, related film clips, photographs, and other multimedia materials,” and
“entertainment services, namely, providing a radio program in the field of music via a global computer
network” [See pages 7-10 of the first Office action dated April 25, 2012.]

U.S. Registration No. 3,501,629 ISRACAMPUS is for among other things, “entertainment services,
namely, providing a web site featuring musical performances, musical videos, related film clips,
photographs, and other multimedia materials,” “organization of exhibitions for cultural or educational
purposes,” “organizing community sporting and cultural events” [See pages 11-12 of the first Office
action dated April 25, 2012.]

U.S. Registration No. 3,059,965 BLACK BACHELORS BALL is for among other things, “entertainment
namely, live performances by a musical band,” “entertainment services, namely, providing a web site
featuring musical performances, musical videos, related film clips, photographs, and other multimedia
materials,” and “organizing community sporting and cultural events” [See pages 19-21 of the first Office
action dated April 25, 2012..]

U.S. Registration No. 4,010,399 LUKE KELVIN is for among other things, “educational and entertainment
services, namely, a continuing program about music and music performers accessible by radio,
television, satellite, audio, video and computer networks,” “entertainment and education services in the
nature of live dance and musical performances,” “entertainment services in the nature of live musical
performances,” “entertainment services, namely, providing a web site featuring non-downloadable
musical performances, musical videos, related film clips, photographs, and other multimedia materials
featuring disk jockeys, bands, and performers of electronic music,” “organizing cultural and arts events,”
“presentation of musical performance” and “workshops and seminars in the field of music” [See pages
30-34 of the first Office action dated April 25, 2012.]

In the final Office action, the examining attorney attached internet evidence showing that
entities that provide training in the field of musical entertainment, specifically, training relating to live
performances by a musical group and/or organize community sporting and cultural events, also offer
some of the registrant's services such as organizing and providing cultural and sporting events, providing
conferences in the field of music entertainment and organizing and providing live music concerts.

The following are examples of these entities.

The University of Albany offers musical performance lessons, organizes community cultural events and
its Performance Arts Center and Department of Music present a wide array of live musical
performances. [See pages 3-4 of the final Office action dated June 21, 2013]
http://www.albany.edu/music/musical_performance_lessons_ensembles.shtml
http://www.albany.edu/museum/archive_public_programs.shtml
http://www.albany.edu/studentlife/arts_and_culture.php

The Fine Arts Association offers group musical performance lessons and organizes cultural events and
live musical performances. [See pages 5-7 of the final Office action dated June 21, 2013]
http://www.fineartsassociation.org/classes/music-class.html
http://www.fineartsassociation.org/theatre/performance.html
http://www.fineartsassociation.org/events/kaleidoscope-concerts.html
http://www.fineartsassociation.org/events/coffeehouse-series.html

The Old Town School of Folk Music offers music lessons and presents live musical performances. [See
pages 9-11 of the final Office action dated June 21, 2013]
http://www.oldtownschool.org/classes/adults/ensemble/
http://www.oldtownschool.org/concerts/

Swallow Hill Music School offers music classes and organizes live musical performances and cultural
community events. [See pages 12-13 of the final Office action dated June 21, 2013]
https://swallowhillmusic.org/denver-music-school/
https://swallowhillmusic.org/events-and-festivals/clyfford-styll-museum-concerts/
https://swallowhillmusic.org/community/cafe-happenings/

Tucson Academy of Music and Dance offers musical classes and live musical concerts. [See pages 14-15
of the final Office action dated June 21, 2013]
http://www.musicdancetucson.com/music/children-programs#musicaltheatre
http://www.musicdancetucson.com/in-the-community

Tufts University – The Perry and Marty Granoff Music Center offers music classes and community music
concerts. [See pages 16-17 of the final Office action dated June 21, 2013]
http://as.tufts.edu/music/musiccenter/program/classes.htm
http://events.tufts.edu/

University of Louisville offers music classes and organizes live music performances. [See pages 18-20 of
the final Office action dated June 21, 2013]
http://louisville.edu/music/ensembles
http://louisville.edu/music/music-unwound-copland-in-mexico
http://louisville.edu/music/calendarx.2008-12-
08.3461547598/multimonth?currentDate=2013/04/30&xmy=0&xsub=ALL

Applicant argues that while the registrant’s mark is well known for its alcohol and spirits
empire as well for bar and cocktail bar services, this mark is not a household name for other goods or
services. Applicant specifically contends that the registrant is not involved in the recording business and
is not a record label. Applicant argues that there is no strong commercial relationship or nexus between
rum and records and that these goods are neither related nor complementary. Furthermore, applicant
argues that the channels of trade and class of consumers for these goods are different and that its goods
are not a natural extension of the registrant’s goods. Applicant contends that marks must be evaluated
and compared not in a legal vacuum but rather from the overall commercial impression in the context of
the market place.

Nevertheless, this refusal is not based on alcoholic beverages, bar or recording services. This
refusal is based on specific educational and entertainment services in the registration that are related to
applicant’s services. Moreover, Trademark Act Section 7(b), 15 U.S.C. §1057(b), provides that a
certificate of registration on the Principal Register is prima facie evidence of the validity of the
registration, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the
mark in commerce on or in connection with the goods and/or services specified in the certificate. TMEP
§1207.01(d)(iv). The owner of the cited registration has the exclusive right to use its mark on the goods
and services specified in the registration.

Regardless of applicant’s arguments, it is clear that applicant’s services are related to the
registrant’s services. Moreover, applicant’s services are encompassed in some of the registrant’s
services. For example, applicant’s services, namely, “training relating to live performances by a musical
group,” could be encompassed in the registrant’s services, namely, providing conferences in the field of
music entertainment. Furthermore, applicant’s services, namely, “organizing community sporting and
cultural events” are encompassed in the registrant’s services, namely, organizing and providing cultural
and sporting events.

Applicant argues that the parties’ marks are used for goods or services in different classes.
Nevertheless, the fact that the Office classifies goods or services in different classes does not establish
that the goods and services are unrelated under Trademark Act Section 2(d). TMEP §1207.01(d)(v). The
determination concerning the proper classification of goods or services is a purely administrative
determination unrelated to the determination of likelihood of confusion. Jean Patou, Inc. v. Theon, Inc.,
9 F.3d 971, 975, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993).

Applicant further argues that the examining attorney did not prove that BACARDI is a famous
mark. Applicant contends that applying unlimited protection to a mark such as this one would have a
chilling effect on commerce, crush smaller business and result in unfair and undue commercial and
economic advantage to the proprietor of the well-known mark. Additionally, applicant contends that if
the registrant’s mark is a strong senior mark, there will be less likelihood of confusion because
consumers will more readily distinguish even small differences in the junior mark.

Nevertheless, the examining attorney did not have to prove that the registrant’s mark is a
famous mark. Moreover, at no point during the prosecution of this application did the examining
attorney raise the issue of fame of the registered. The fame of a mark may be considered only if there is
relevant evidence of record. TMEP §1207.01. In ex parte proceedings, the examining attorney is not
expected to submit evidence regarding the fame of the cited mark. TMEP §1207.01(d)(ix). This refusal
is not based on whether or not the registrant’s mark is famous for any specific goods or services, rather
on the similarity of the marks and the similarity of the channels of trade for the specified services.

Applicant has indicated that its principal Louis Bacardi holds a substantial interest in the
registrant, Bacardi & Company Limited. Nevertheless, this fact alone does not negate a finding of
likelihood of confusion. Applicant has neither claimed ownership of the cited registration, nor raised the
issue of assignment or unity of control over the parties’ marks or services.

Applicant argues that there must be probability that confusion will occur and that “likelihood”
does not mean a mere possibility of confusion. Applicant further argues that there is no hard and fast
rule regarding likelihood of confusion even where identical marks are used on goods or services that are
normally considered related, and that each case must be decided on its own facts. Furthermore,
applicant argues that the fact that one mark may bring another mark to mind does not necessarily
establish likelihood of confusion as to source. Applicant contends that the relevant question is whether
consumers familiar with the senior user’s mark when confronted with the goods sold under the
newcomer’s mark would be likely to believe that the goods originate from the senior user.

Notwithstanding applicant’s arguments, the record clearly shows that the parties’ marks are
similar and that the services are related. Therefore, a finding of likelihood of confusion is appropriate in
this case.

Applicant argues that the examining attorney’s evidence of third party registrations has little or
no probative value and that in the absence of any showing of actual use in the marketplace, there is
generally no basis for determining the effect the marks have had on consumers. Applicant argues that
the board should afford only minimal weight to third party registrations in this instance.

Nevertheless, third party registrations have probative value to show relatedness of the parties’
goods and/or services. In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); TMEP §1207.01(a)(vi).
Moreover, in addition to third party registrations, the examining attorney attached internet evidence
showing that the parties’ services are of a kind that may emanate from a single source or travel in the
same channels of trade.

Applicant argues that its mark was adopted in good faith with no desire to confuse or to trade
on another’s commercial goodwill. Applicant further argues that the board should take into account the
fact that applicant’s principal’s surname is Bacardi and that this person has long been involved in the
recording industry and would now like his entity to use his name.

Nevertheless, the fact that applicant acted in good faith and has no desire to confuse or trade
upon a prior user’s commercial good will does not diminish the likelihood of confusion in this case.
Applicant’s good intentions or desire to use its principal’s surname are not relevant factors in a
likelihood of confusion determination.

Applicant argues that the examining attorney’s decision is based on theory, speculation and
conjecture and that in the real commercial world, the mark BACARDI is known for adult beverages not
records or musical entertainment.

In a likelihood of confusion analysis, the comparison of the parties’ goods and/or services is
based on the goods and/or services as they are identified in the application and registration, without
limitations or restrictions that are not reflected therein. In re Thor Tech, Inc., 90 USPQ2d 1634, 1638-39
(TTAB 2009); TMEP §1207.01(a)(iii). The registration clearly shows that the registrant’s mark is used for
goods and services including those relating to musical entertainment.

Furthermore, the fact that the goods or services of the parties differ is not controlling in
determining likelihood of confusion. The issue is not likelihood of confusion between particular goods
or services, but likelihood of confusion as to the source of those goods or services. In re Shell Oil Co.,
992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993); TMEP §1207.01.

The overriding concern is not only to prevent buyer confusion as to the source of the goods
and/or services, but to protect the registrant from adverse commercial impact due to use of a similar
mark by a newcomer. In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).
Moreover, the Trademark Act not only guards against the misimpression that the senior user is the
source of the junior user’s goods and/or services, but it also protects against “reverse confusion,” that is
the junior user is the source of the senior user’s goods and/or services. In re Shell Oil Co., 992 F.2d 1204,
1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).

Fundamentally, any doubt as to the issue of likelihood of confusion must be resolved in favor of
the prior registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988);
TMEP §§1207.01(d)(i).

Therefore, the examining attorney finds that the similarities between the parties’ marks and
services are so great as to create a likelihood of confusion.

III. CONCLUSION

The marks are highly similar and the services are related. Consumers encountering applicant's
mark and the cited mark in the marketplace are likely to mistakenly believe that the services originate
from a common source. Therefore, the refusal to register the applicant’s mark pursuant to Sections 2(d)
of the Trademark Act should be affirmed.

Respectfully submitted,

/E.Bradley/
Evelyn Bradley
Trademark Examiner
Law Office 105
(571) 272-9292

Susan Hayash
Managing Attorney
Law Office 105