Steve Lancev.Richard Brown

Trademark Trial and Appeal Board

Feb 12, 2001

No. 91112687 (T.T.A.B. Feb. 12, 2001)

2/12/
Edwar
for S
Rober
Befor
Judge
Opini
refer
PICTU
subse
educa
scree
appli
IS NOT
THIS DISPOSITION
CITABLE AS PRECEDENT
OF THE T.T.A.B.
01
Paper No. 16
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Steve Lance
v.
Richard Brown
_____
Opposition No. 112,687
to application Serial No. 75/331,924
filed on July 28, 1997
_____
d H. Rosenthal of Frankfurt, Garbus, Klein & Selz, PC
teve Lance.
t I. Pearlman for Richard Brown.
______
e Simms, Cissel and Rogers, Administrative Trademark
s.
on by Cissel, Administrative Trademark Judge:
On July 28, 1997, Richard Brown filed the above-
enced application to register the mark “TALKING
RES” on the Principal Register for what were
quently identified by amendment as “entertainment and
tional services, namely, seminars, interviews and
nings related to the film industry,” in Class 41. The
cation was based on Mr. Brown’s assertion that he
Opposition No. 112,687
2
possessed a bona fide intention to use the mark in commerce
in connection with the services.
Following publication of the mark, a timely Notice of
Opposition was filed by Steve Lance. As grounds for
Opposition, he asserted that he has used the mark the
applicant seeks to register in connection with a weekly
radio call-in show devoted to the movies and cinema since
prior to the filing date of the opposed application, and
that applicant’s use of the same mark in connection with the
closely related or identical services set forth in the
application would be likely to cause confusion. Applicant
denied the essential allegations put forth in the Notice of
Opposition.
A trial was conducted in accordance with the Trademark
Rules of Practice, but applicant neither took nor provided
discovery, and although opposer took the testimony of Steve
Lance, applicant did not attend that deposition and took no
testimony in defense of his position that confusion is not
likely. Opposer file a brief, but applicant did not. No
oral hearing before the Board was requested.
The issues in this proceeding are priority in
likelihood of confusion. Based on careful consideration of
the record and arguments before us, we find that opposer has
established priority of use of “TALKING PICTURES” in
connection with his services, and if applicant were to use
Opposition No. 112,687
3
the same mark in connection with the services set forth in
the application, confusion would be likely.
In view of the fact that this record contains no proof
that applicant has ever used the mark it seeks to register
and the fact that the application based on applicant’s
intention to use the mark was filed on July 28, 1997, in
order to establish priority, under Section 7(c) of the Act,
opposer needed to prove that he had used the mark before
that date. Miller Brewing Co. v. Anheuser-Bush, Inc., 27
USPQ2d 1711 (TTAB 1993). The testimony and evidence clearly
show this.
Opposer conceived of the idea for his radio show and
decided on “TALKING PICTURES” as the name for it in 1995.
The mark was used in several presentations to prospective
customers, radio stations, in 1996 and 1997, and on June 13,
1997, the first live radio show presented under the mark
“TALKING PICTURES” was aired on radio station WGCH in
Greenwich, Connecticut. The program initially ran for a
half hour each Friday, and later expanded to a full hour on
Saturdays. Movies and the movie industry are the subjects
discussed in each show. Live discussions with listeners who
call in are featured, along with interviews with people in
the attainment field.
Opposer filed a use-based application to register his
mark, but this was not until September 9, 1997, almost two
Opposition No. 112,687
4
months after the opposed intent-to-the use application had
been filed by Mr. Brown.
In view of opposer’s priority of use, we turn to the
question of whether confusion is likely. The predecessor of
our primary reviewing court identified the principal factors
to be considered in resolving this issue in the case of In
re duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). Chief among these factors are the similarities
between the marks and the relationship between the goods or
services.
Applicant has applied to register the same mark that
opposer has previously used. The marks are identical in
appearance, pronunciation and connotation. Their commercial
impressions are indistinguishable.
Additionally, the services specified in the application
are extremely similar to those with which opposer has used
the mark. Applicant intends to use the mark to identify his
entertainment services in the nature of interviews and
seminars relating to the film industry. Opposer has used it
in connection with his entertainment services in the nature
of radio programming featuring interviews and discussions
relating to the film industry. Plainly, the use of the same
mark, featuring the same double entendre about motion
pictures, would be likely to cause confusion. Applicant has
Opposition No. 112,687
5
not provided the Board with any evidence, testimony or
reason to conclude to the contrary.
Decision: The opposition is sustained and registration
to applicant is refused.