Smith, Kyle

Trademark Trial and Appeal Board

Sep 17, 2020

88151737 (T.T.A.B. Sep. 17, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 17, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Kyle Smith
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Serial No. 88151737
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Andrew S. Fraker of Neal Gerber & Eisenberg LLP,
for Kyle Smith.
John Sullivan, Trademark Examining Attorney, Law Office 114,
Laurie Kaufman, Managing Attorney.
_____

Before Greenbaum, Coggins, and Dunn,
Administrative Trademark Judges.

Opinion by Dunn, Administrative Trademark Judge:
Kyle Smith (“Applicant”) seeks registration on the Principal Register of the mark
ALABASTER (in standard characters) for “entertainment services in the nature of
live musical performances” in International Class 41.1
The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant ’s mark, as applied
to the services identified in the application, so resembles the registered mark

1 Application Serial No. 88151737 was filed October 11, 2018.
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ALABASTER GRACE (in standard characters) for “pre-recorded digital media and
CDs featuring music; audio and video recordings featuring music and artistic
performances; digital music downloadable from the internet” in International Class
9 and “entertainment services in the nature of live musical performances; non-
downloadable digital music provided from the internet” in International Class 412, on
the Principal Register as to be likely to cause confusion, to cause mistake, or to
deceive.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on likelihood of
confusion. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations
are the similarities between the marks and the similarities between the goods or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976). We must 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).

2 Registration No. 5205799 issued May 16, 2017.
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A. Similarity or Dissimilarity of the Services, Trade Channels,
Classes of Consumers, and Sales Conditions
We first consider the second, third, and fourth DuPont factors, the similarity or
dissimilarity of the services and established, likely-to-continue trade channels as
identified in the application and the cited registration, and the conditions under
which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated
purchasing. In our analysis, we will focus our attention on Registrant ’s services in
Class 41, because they are more closely related to Applicant ’s services than are
Registrant’s Class 9 goods. In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1244
(TTAB 2010). It is sufficient for a refusal based on likelihood of confusion that
relatedness is established for any item encompassed by the identification of goods or
services in a particular class in the application or cited registration. Tuxedo
Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981). Accordingly, we will focus on Registrant’s International Class 41
“entertainment services in the nature of live musical performances” In re Midwest
Gaming & Entm’t LLC, 106 USPQ2d 1163, 1066 (TTAB 2013) (where services are
separated by a semicolon from the other wording they are a separate category of
services).
With regard to the three DuPont factors, we must make our determinations under
these factors based on the services as they are identified in the application and cited
registration. See In re Detroit Athletic Co., 903 F3d 1297, 128 USPQ2d 1047, 1052
(Fed. Cir. 2018); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F3d 1317,
110 USPQ2d 1157, 1162 (Fed. Cir. 2014). In comparing Applicant’s “entertainment
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services in the nature of live musical performances” and Registrant’s “entertainment
services in the nature of live musical performances,” we find that those services are
literally and legally identical. Both Registrant and Applicant render live musical
performances. Applicant does not contend that there are any differences in the live
musical performance services as listed in the application and cited registration.
Instead, Applicant argues that the trade channels and sales conditions are
sufficiently different to avoid likelihood of confusion. Applicant contends that similar
marks can be used with the same music performance services, so long as the music is
marketed to different purchasers.3 Applicant relies on a printout from Registrant’s
website and Facebook page indicating that the registered musical performances
feature contemporary Christian songs, traditional hymns, and original Scripture-
based songs performed by a Virginia-based husband and wife duo since 2015,4 and
printouts from Applicant’s Soundcloud and Gigsalad webpages page indicating that
Applicant’s musical performances feature improvisational jam rock performed by a
Chicago-based band, also since 2015.5
An applicant may not restrict the scope of the services covered in its application
or the pleaded registration by argument or extrinsic evidence. In re Detroit Athletic
Co., 128 USPQ2d at 1052 (“The third DuPont factor—like the second factor—must be
evaluated with an eye toward the channels specified in the application and

3 6 TTABVUE 9.
4 July 22, 2019 Respondent, TSDR 16-18.
5 July 22, 2019 Respondent, TSDR 20-21.
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registration, not those as they exist in the real world.”); Octocom Sys., Inc. v. Hous.
Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The
authority is legion that the question of registrability of an applicant’s mark must be
decided on the basis of the identification of goods set forth in the application
regardless of what the record may reveal as to the particular nature of an applicant ’s
goods, the particular channels of trade or the class of purchasers to which the sales
of goods are directed.”). Given the in-part identity of the services as described in the
application and registration, we must presume that the channels of trade and classes
of purchasers for the same services also are the same. See In re Inn at St. John’s,
LLC, 126 USPQ2d 1742, 1745 (TTAB 2018), aff’d, Slip Op. No. 18-2236 (Fed. Cir.
Sept. 13, 2019) (mem) (identical services are presumed to travel in the same channels
of trade to the same class of purchasers).
With respect to sales conditions, based on the parties’ services as they are recited
without limitation in the application and registration, we find that the services are
not restricted to sophisticated consumers, but rather could be offered to, and
consumed by, anyone who likes music, thus including ordinary consumers seeking
live musical performance services. Stone Lion Capital Partners, LP v. Lion Capital
LLP, 110 USPQ2d at 1162 (“the Board properly considered all potential investors for
the recited services, including ordinary consumers seeking to invest in services with
no minimum investment requirement. Although the services recited in the
application also encompass sophisticated investors, Board precedent requires the
decision to be based “on the least sophisticated potential purchasers.”).
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The case on which Applicant relies for consideration of extrinsic evidence in
determining trade channels is a trademark infringement case, and so is not limited
to consideration only of the services as listed in the application and cited registration.
Sunenblick v. Harrell, 895 F. Supp. 616, 38 USPQ2d 1716 (SDNY 1995), aff’d without
op., 101 F.3d 684 (2d Cir. 1996), cert. denied, 519 U.S. 964 (1996). The Federal Circuit
case cited by Applicant for the proposition that there is no likelihood of confusion
between services with different customers featured specific industries listed in the
identification of services in the application and registration. In M2 Software, Inc. v.
M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944 (Fed. Cir. 2006), the Federal
Circuit affirmed the Board’s finding that there was no likelihood of confusion between
the mark M2 COMMUNICATIONS for “interactive multimedia CD-ROMs containing
educational information in the fields of pharmaceutical and medical product
information, therapies and strategies, and medical, pharmaceutical, and healthcare
issues” and the mark M2 for “computer software featuring business management
applications for the film and music industries; and interactive multimedia
applications for entertainment, education and information, in the nature of artists’
performances and biographical information from the film and music industries; and
instructions and information for playing musical instruments.”
Because the breadth of the identical, unrestricted live musical performances
offered by Applicant and Registrant could allow those services to travel in the same
channels of trade, to the same consumers, under the same conditions of sale, we find
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the second, third, and fourth DuPont factors weigh heavily in favor of finding a
likelihood of confusion.
B. Similarity or Dissimilarity of the Marks
We consider next the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression. See Palm Bay Imps.,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). “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, llc, 866 F.3d 1315, 123 USPQ2d
1744, 1748 (Fed. Cir. 2017) (quoting Coach Servs. Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)) (internal quotation marks
omitted). We bear in mind that the marks at issue are for use in connection with
identical services. “When marks would appear on virtually identical goods or services,
the degree of similarity necessary to support a conclusion of likely confusion declines.”
Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992). See also Bridgestone Ams. Tire Operations LLC v. Fed. Corp.,
673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012) (“When the goods are
identical, the appearance of a mark of similar sound, appearance, or connotation is
more likely to cause confusion than if the goods are significantly different.”).
We take judicial notice that the term ALABASTER is a noun defined as “a compact
fine-textured usually white and translucent gypsum often carved into vases and
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ornaments” and “a hard calcite or aragonite that is translucent and sometimes
banded.”6 The Examining Attorney submitted the definition for “grace” which
includes a “seemingly effortless beauty or charm of movement, form, or proportion”
and “(Christianity) divine favor bestowed freely on people, as in granting redemption
from sin.”7 An arbitrary mark is a “known word used in an unexpected or uncommon
way.” Nautilus Grp., Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330, 71 USPQ2d
1173, 1180 (Fed. Cir. 2004). See Palm Bay Imps., 73 USPQ2d at 1692 (an arbitrary
term is “conceptually strong as a trademark”). There is no dispute that ALABASTER
is arbitrary as applied to musical performances.
However, Applicant cites the religious definition of GRACE, and contends that the
term GRACE will have a religious connotation as applied to the registered services.
Moreover, Applicant contends that the addition of the term GRACE to create the term
ALABASTER GRACE evokes a religious connotation to the mark as a whole.
Applicant contends:
The term ALABASTER within the Cited Mark calls to
mind the Biblical figure Mary of Bethany, who brings
priceless perfume in an alabaster vessel to anoint Jesus
Christ for burial after he has prophesied his own death,
about which other listeners had been skeptical. Matthew
26:6-13, Mark 14:3-9, John 12:1-8.8

6 Merriam-Webster.com Dictionary, https://www.merriam-webster.com/dictionary/alabaster.
Accessed 13 Sep. 2020. The Board may take judicial notice of dictionary definitions, including
online dictionaries that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227,
1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016).
7 October 17, 2018 Office Action, TSDR 8, citing THE AMERICAN HERITAGE DICTIONARY OF
THE ENGLISH LANGUAGE, Fifth Edition.
8 To the extent that Applicant’s cite to Biblical scripture (Matthew 26:6-13, Mark 14:3-9,
John 12:1-8) can be construed as a request to take judicial notice of those passages, we note
that Applicant failed to put a copy of the passages in the record. However, because the
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As support for this argument that the combined term ALABASTER GRACE has
a religious connotation, Applicant cites to the definitions for GRACE which include
religious meaning, the Bible story about an alabaster vessel, and Registrant’s
webpage and its references to Christian music. In view of the dictionary definitions
showing ALABASTER is a type of mineral, we regard the reference to an alabaster
vessel in the Bible as highly attenuated support for the argument that the term
ALABASTER has a religious connotation. With the exception of the mark
ALABASTER GRACE, there is no mention of alabaster or grace on Registrant’s
webpage. There is no evidence that the term ALABASTER GRACE is a recognized
phrase with religious significance. Applicant does not contend that there is any
connection between the purported religious connotations for ALABASTER and
GRACE. In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009)
(“Inasmuch as the words ‘Vantage’ and ‘Titan’ are not naturally associated, the term
TITAN will retain its identity as a separately identifiable term in the mark.”). In
these circumstances, we are unconvinced that two terms with both nonreligious and
religious connotations will, when combined, have a religious connotation when
applied to live musical performances.
Comparing the marks, we find that Applicant’s mark ALABASTER differs from
Registrant’s mark ALABASTER GRACE by deleting the second word. Since the word
GRACE adds a syllable to pronunciation, and five letters to length, this creates aural

Examining Attorney accepted and addressed Applicant’s explanation of the story mentioned
in Scripture, we do the same.
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and visual differences between the marks. However, it does not mean that the marks
are wholly dissimilar in appearance and sound. The presence of the same term
ALABASTER means that the appearance and sound of the two marks is in part
identical. The first word in a mark is generally the one which consumers notice first.
See In re Detroit Athletic Co., 128 USPQ2d at 1049 (“The identity of the marks’ initial
two words is particularly significant because consumers typically notice those words
first.”).
Likelihood of confusion is often found where the entirety of one mark is
incorporated within another. See In re Mighty Leaf Tea, 601 USPQ2d 1342, 94
USPQ2d 1257, 1260 (Fed. Cir. 2010) (ML confusingly similar to ML MARK LEES);
In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (BARR GROUP
confusingly similar to BARR); In re U.S. Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)
(CAREER IMAGE for women’s clothing stores and women’s clothing likely to cause
confusion with CREST CAREER IMAGES for uniforms including items of women’s
clothing). Here, the addition of the distinctive term GRACE, which is not a house
mark, does not result in marks that are dissimilar. Squirtco v. Tomy Corp., 697 F.2d
1038, 216 USPQ 937, 939 (Fed. Cir. 1983) (“The marks SQUIRT and SQUIRT SQUAD
are, however, of such similarity that they are more likely to create confusion than
prevent it”).
We note that the addition of a term to a mark can be perceived as an indication of
a new product line. While, as stated, we regard as weak the evidence that the term
ALABASTER GRACE will be perceived as connoting music with a religious theme,
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we find use of the terms ALABASTER and ALABASTER GRACE in connection with
live music performances could connote that different product lines, or genres of music
to be performed, are available from a single source. See, for example, China
Healthways Inst. Inc. v Wang, 491 F.3d 1337, 83 USPQ2d 1123, 1125 (Fed. Cir. 2007)
(“Applying the DuPont factors to the marks viewed in their entirety, the addition of
the word ‘PLUS’ in Wang’s mark is unlikely to avoid the confusion for ‘Plus’ ordinarily
connotes a related superior product, not one from a different source.”); In re Toshiba
Med. Sys. Corp., 91 USPQ2d at 1271 (“In this case, the marks TITAN and VANTAGE
TITAN are more similar than they are different. Applicant has taken registrant ’s
mark and added its ‘product mark’ to it. It is not clear why the addition of the word
VANTAGE would avoid confusion. It is more likely to be considered another product
from the previously anonymous source of TITAN medical diagnostic apparatus,
namely, medical ultrasound devices.”).
Applicant seeks and Respondent obtained registration of their respective word
marks without stylization or design. This ability to employ any font, size, style, or
color when using the marks could result in use of displays which increase or
emphasize the similarities between the marks. See In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Davia, 110 USPQ2d 1810, 1814 (TTAB
2014).
Under the circumstances, while we note the differences between them, we find
that the marks ALABASTER and ALABASTER GRACE are highly similar, and the
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DuPont factor of the similarity or dissimilarity of the marks weighs in favor of a
finding of likelihood of confusion.
C. Length of Time and Conditions without Actual Confusion
In contrast to the second, third, and fourth DuPont factors discussed, which focus
on the services as described in the application and registration, the eighth DuPont
factor addressing “length of time during and conditions under which there has been
concurrent use without evidence of actual confusion” looks at actual market
conditions, to the extent there is record evidence of such conditions. In re Guild Mortg.
Co., 912 F.3d 1376, 129 USPQ2d 1160, 1163-1164 (Fed. Cir. 2019) (“Guild nonetheless
presented evidence of concurrent use of the two marks for a particularly long period
of time—over 40 years—in which the two businesses operated in the same geographic
market—southern California—without any evidence of actual confusion.”). The
absence of any reported instances of confusion is meaningful only if the record
indicates appreciable and continuous use by Applicant of its mark for a significant
period of time in the same markets as those served by Registrant under its mark.
Citigroup Inc. v. Capital City Bank Grp., Inc., 94 USPQ2d 1645, 1660 (TTAB 2010),
aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011). Here, Applicant points out
that there is no evidence of record indicating that there has been actual confusion
relating to the marks at issue, and that the record shows that both parties have been
using their marks in connection with live musical performances since 2015.
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However, the record also indicates that the performances are offered in the
geographically distinct markets of Virginia and Chicago.9 Applicant has presented no
evidence such as sales figures demonstrating that it performs or advertises the
availability of performances outside its area, and so there is no evidence regarding
the extent to which Applicant’s and Registrant’s marks have ever been used in the
same geographic markets. It is not clear that there has been a meaningful
opportunity for confusion to occur. See New Era Cap Co., Inc. v. Pro Era, LLC, 2020
USPQ2d 10596, *17 (TTAB 2020); Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d
1283, 1287 (TTAB 2007). Thus, we cannot conclude from Applicant’s report that there
have been no instances of actual confusion over five years of actual confusion over five
years that confusion is not likely to occur, and so we find this DuPont factor to be
neutral.10
D. Conclusion
The marks ALABASTER and ALABASTER GRACE are in part identical, and
applied to in part identical services that move through the same channels of trade to
the same classes of purchasers who exercise only ordinary care. Insofar as the DuPont
factors discussed above either are neutral or weigh in favor of finding a likelihood of
confusion, we conclude that confusion is likely to occur between Applicant ’s mark

9 July 22, 2019 Respondent, TSDR 16-21.
10 In discussing the two DuPont factors addressing actual confusion (the seventh and eighth
factors) in an ex parte proceeding, it must also be noted that there has been no opportunity
to hear from Registrant about whether it is aware of any reported instances of confusion. See
In re Opus One, Inc., 60 USPQ2d 1812, 1817 (TTAB 2001); In re Kangaroos U.S.A., 223 USPQ
1025, 1026-17 (TTAB 1984).
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ALABASTER and Registrant’s mark ALABASTER GRACE for the same live musical
performance services.
II. Decision
The refusal to register Applicant’s mark ALABASTER is affirmed.