Summit Entertainment, LLC

Trademark Trial and Appeal Board

Mar 30, 2015

No. 85566177 (T.T.A.B. Mar. 30, 2015)

Oral Hearing: Mailed:
January 15, 2015 March 30, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Summit Entertainment, LLC
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Serial No. 85566177
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Jill M. Pietrini of Sheppard Mullin Richter & Hampton LLP for Summit
Entertainment, LLC.

Maureen Dall Lott, Trademark Examining Attorney, Law Office 117 (J. Brett
Golden, Managing Attorney).
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Before Kuhlke, Mermelstein and Goodman, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, Summit Entertainment, LLC, filed an application to register on
the Principal Register the standard character mark SUMMIT BASE CAMP FILM
MUSIC (FILM MUSIC disclaimed) for services identified as “music publishing
services,” in International Class 41.1

1 Application Serial No. 85566177, filed on March 10, 2012, based on allegations of first use
and first use in commerce on May 10, 2007, under Section 1(a) of the Trademark Act, 15
U.S.C. § 1051(a). In response to the Examining Attorney’s requirements, Applicant
submitted a disclaimer for the wording “FILM MUSIC” and claimed ownership of “U.S.
Registration Nos. 3,756,889, 3,733,348, 2,097,423, and others” for marks incorporating the
wording “SUMMIT ENTERTAINMENT.”
This Opinion is Not a
Precedent of the TTAB
Serial No. 85566177

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Registration has been refused under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), on the ground that Applicant’s mark, when used with the
identified services, so resembles the standard character mark BASECAMP for
services identified as “Entertainment in the nature of visual and audio
performances, namely, musical band and rock group performances; Entertainment
services in the nature of live musical performances; Entertainment, namely, live
performances by a musical band; Entertainment, namely, live performances by rock
groups; Multimedia entertainment services in the nature of recording, production
and post-production services in the fields of music, video, and films; Music
publishing services; Production of sound and music video recordings” in
International Class 41,2 as to be likely to cause confusion, mistake or deception.
When the refusal was made final, Applicant appealed and filed a request for
reconsideration. On June 18, 2013, the Examining Attorney denied the request for
reconsideration and the appeal was resumed. Applicant and the Examining
Attorney filed briefs, and an oral hearing was held on January 15, 2014.3 We affirm
the refusal to register.
When the question is likelihood of confusion, we analyze the facts as they
relate to the relevant factors set out in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co.,

2 Registration No. 3683094, issued on September 15, 2009.

3 Applicant’s “motion for leave to file reply brief,” filed on January 14, 2015, is granted and
we have considered Applicant’s reply brief inadvertently originally filed in the application
file and not with the Board.
Serial No. 85566177

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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 goods or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
SIMILARITY OF THE SERVICES/CHANNELS OF TRADE/CONSUMERS
We first consider the services, channels of trade and classes of consumers. We
must make our determinations under these factors based on the services as they are
identified in the registration and application. See In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157 (Fed. Cir.
2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001
(Fed. Cir. 2002); and Octocom Systems, Inc. v. Houston Computers Services Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Applicant’s “music publishing services” are identical to Registrant’s “music
publishing services.” Moreover, because these services are identical and there are
no limitations as to channels of trade or classes of consumers in the application or
cited registration, we must presume that Applicant’s and Registrant’s services will
be offered in the same channels of trade to the same classes of consumers. In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); Hewlett-
Packard Co. v. Packard Press Inc., 62 USPQ2d at 1005; Canadian Imperial Bank v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Genesco Inc. v.
Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) and In re Smith and Mehaffey, 31
Serial No. 85566177

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USPQ2d 1531 (TTAB 1994). Applicant’s arguments regarding the differences in the
channels of trade and marketing between Applicant’s and Registrant’s actual
services are not persuasive inasmuch as we must make our determination based on
the services as identified, and here, the identifications of services in the registration
and application are not limited by channels of trade or marketing. See In re Bercut-
Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986) (registrant’s goods may not be
limited by extrinsic evidence or argument). To the extent Applicant attempts to
limit Registrant’s “music publishing services” by the other services listed in the
registration, the “music publishing services” are separated by a semicolon from the
other services, therefore, they are not restricted by any other wording in the
identification. In re Midwest Gaming & Entertainment LLC, 106 USPQ2d 1163,
1166 (TTAB 2013) (“Under standard examination practice, a semicolon is used to
separate distinct categories of goods or services.”) In addition, in the context of
likelihood of confusion, it is sufficient to find likely confusion as to only one of
Registrant’s identified services. Cf. Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Inter IKEA Systems B.V. v.
Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014).
In view of the above, the du Pont factors of the similarity of the services, the
channels of trade and classes of purchasers strongly favor a finding of likelihood of
confusion.
With regard to the conditions of sale, Applicant argues that “[c]onsumers of
Registrant’s services would exercise a high degree of care.” App. Br. p. 10, 12
Serial No. 85566177

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TTABVUE 13. Applicant supports this argument by pointing to Registrant’s actual
services limited to the field of the “San Francisco folk music scene” and consumers
consisting of fans of that “scene” or the folk musicians. Id. However, as noted above,
we must make our determination based on the identifications in the application and
registration and there is no such limitation as to the marketing methods, type of
music, or the type of purchaser in the application or registration.
Consumers of music publishing services would include composers and
songwriters seeking to distribute their creation through sales and licensing, and
those entities or individuals seeking to buy or license the composition for whatever
purpose (sheet music for individual use, compositions for film, television, or
recording, etc.).4 Most of these consumers would exercise a heightened level of care
in their selection for these types of services, the composers and songwriters
presumably more so than the licensees who are seeking a particular composition

4 The USPTO ACCEPTABLE IDENTIFICATION OF GOODS AND SERVICES MANUAL (ID
Manual) has the following note attached to the identification “music publishing services”:

This refers to the service of publishing the periodicals or
printed matter of others. Note that the publication of one’s own
periodical or printed matter is not a service because it is done
primarily for applicant's own benefit and not for the benefit of
others. Rather, it would be considered goods in Class 16, e.g.,
newspapers, magazines.
According to the ID Manual, the licensing of or royalty collection with respect to musical
compositions appears to fall in International Class 36 under the identification “Collecting
license fees on behalf of independent writers and publishers and making payments to the
copyright owners of the music.” See ID Manual. However, from this record and oral
argument, it appears the Applicant and the Examining Attorney view “music publishing
services” as an industry term of art to encompass a more comprehensive service and we
have taken that into account in understanding the relevant consumers. See also Spassman,
Donald S., ALL YOU NEED TO KNOW ABOUT THE MUSIC BUSINESS (Simon & Schuster
2000).
Serial No. 85566177

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regardless of the music publisher. Purchasers of sheet music presumably also would
be exercising care in the choice of the music, in large print at the top of the page,
but not the music publisher, in small print at the bottom of the page, as shown on
Applicant’s specimen of use shown in part below:

We must consider this factor based “on the least sophisticated potential
purchasers.” Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,
110 USPQ2d 1157, 1163 (Fed. Cir. 2014), quoting General Mills, Inc. v. Fage Dairy
Proc. Indus. S.A., 100 USPQ2d 1584, 1600 (TTAB 2011), judgment set aside on other
grounds, slip. op. 91118482 (TTAB Jan. 22, 2014). Based on this record, we find this
factor to be neutral. However, even weighing this factor in favor of Applicant, the
record does not support a finding that the conditions of the music publishing
business in general and the level of sophistication of the consumers in this industry
outweigh the other du Pont factors.
Serial No. 85566177

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SIMILARITY OF THE MARKS
We next consider the marks SUMMIT BASE CAMP FILM MUSIC and
BASECAMP and compare them “in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Cir. 2005) quoting du Pont, 177 USPQ at 567. We must also keep in mind that
“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 America, 970 F.2d 874, 23 USPQ2d 1698, 1701
(Fed. Cir. 1992).
Applicant argues that the difference in the sound and appearance of the
marks by virtue of the additional wording SUMMIT and FILM MUSIC in
Applicant’s mark, a five-word seven-syllable mark versus a one-word two-syllable
mark, distinguish its mark from the registered mark.5 In particular, Applicant
asserts that the dominant portion of its mark is the term SUMMIT because (1) it is
the first portion of the mark and (2) it is well known. Applicant relies on In re
General Motors Corp., 23 USPQ2d 1465 (TTAB 1992) in support of its position that

5 Applicant’s argument to limit the scope of protection for Registrant’s mark based on its
stylization is misplaced, inasmuch as the mark is registered as a standard character mark.
Because Applicant seeks registration in standard characters, and the cited mark is also
registered in standard characters, neither mark is limited to any particular depiction. The
rights associated with a mark in standard characters reside in the wording and not in any
particular display. In re RSI Systems, LLC, 88 USPQ2d 1445 (TTAB 2008); In re Pollio
Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB 1988). Thus, it is presumed that
applicant and registrant may display their marks in the same fonts, styles, and colors. See
Citigroup Inc. v. Capital City Bank Group Inc., 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011).
See also In re Viterra Inc., 101 USPQ2d at 1908.
Serial No. 85566177

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the well-known aspect of the SUMMIT element in Applicant’s mark would avoid
confusion. However, in General Motors the issue of the well-known status of the
applicant’s mark GRAND PRIX for cars, was used in the analysis of the du Pont
factor concerning the “length of time during and conditions under which there has
been concurrent use without evidence of actual confusion.” Id. at 1470. In that case,
the marks were found to be similar but weak in the context of automobiles and
automobile parts in view of the highly suggestive shared meaning pertaining to a
GRAND PRIX race. In view of the fame of the applicant’s mark, the length of time
of concurrent use with opportunity for confusion, the weakness of the marks, and
the difference in the goods, although related, the Board found no likelihood of
confusion. Id. at 1471.
Applicant asserts that “it is not enough to simply note that Applicant’s mark
shares components with the Cited Mark.” Reply Br. p. 2, 17 TTABVUE 10.
However, the Examining Attorney did not simply rest on such a proposition. Rather,
she explained how the addition of other wording in this case is not sufficient to
distinguish Applicant’s mark. The Examining Attorney argues that the marks are
similar because the common element BASE CAMP, written as one word
BASECAMP in Registrant’s mark, engenders the same commercial impression, i.e.,
“an encampment that serves as a staging area or a place where supplies are kept for
mountain climbers.”6 She continues that the addition of the word SUMMIT simply

6 COLLINS ENGLISH DICTIONARY, June 18, 2013 Office Action, TSDR pp. 5-10. We note
this definition is not from the COLLINS AMERICAN ENGLISH DICTIONARY but
approximates the definition in the RANDOM HOUSE DICTIONARY (2015) “a main
encampment providing supplies, shelter, and communications for persons engaged in wide-
Serial No. 85566177

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indicates a particular type of staging area, one near a summit. Ex. Att. Br., 14
TTABVUE 6.
The Examining Attorney also takes Applicant’s evidence to support its
argument that the SUMMIT portion of the mark is famous to assert that SUMMIT
is Applicant’s house mark, and argues that house marks generally are not sufficient
to distinguish otherwise confusingly similar marks. Applicant argues the evidence
does not establish that its mark is a house mark but contends even if it were “it is
well understood that the use of a house mark like SUMMIT can decrease the
likelihood of confusion not increase it.” Reply Br. p. 6, 17 TTABVUE 14. Precedent,
however, teaches that if confusion would otherwise be likely, the addition of a name
or house mark to one of the marks will not mitigate confusion. Celanese Corp. of
Am. v. E.I. du Pont De Neours & Co., 154 F.2d 143, 69 USPQ 69, 71-72 (CCPA
1946). The addition of a house mark may not be sufficient to distinguish the marks,
in particular where the other mark has no additional distinguishing matter. In re
Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010) (ML confusingly
similar to ML MARK LEES); In re Dennison Mfg. Co., 229 USPQ 141, 144 (TTAB
1986) (GLUE STIC confusingly similar to UHU GLU STIC). In fact, the addition of
a house mark “may actually be an aggravation of the likelihood of confusion as
opposed to an aid in distinguishing the marks so as to avoid source confusion.” In re
Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985). Applicant relies on Knight

ranging activities, as exploring, reconnaissance, hunting, or mountain climbing.” The Board
may take judicial notice of dictionary definitions. In re Red Bull GmbH, 78 USPQ2d 1375,
1378 (TTAB 2006). See also University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).

Serial No. 85566177

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Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005) for its blanket
statement; however, in that case the Board simply recognized that when the
common element is weak, a house mark may serve to distinguish the marks. In
Knight Textiles, the common element between the marks was the word
ESSENTIALS which was found to be “a highly suggestive term as applied to
clothing” Id. at 1316. Here, the common element is not weak in the field of music
publishing services. Even if SUMMIT is not a house mark, this does not avoid
confusion where the common element retains its identity as a separately
identifiable term in the mark. In re Toshiba Medical Systems Corp., 91 USPQ2d
1266, 1269 (TTAB 2009) (VANTAGE TITAN confusingly similar to TITAN).
We find that the word SUMMIT in Applicant’s mark modifies the term of art
BASE CAMP clearly indicating a specific type of base camp, one used for climbing
to the summit of the mountain. The connotation and commercial impression of
BASECAMP in Registrant’s mark encompasses this connotation and commercial
impression of BASE CAMP in Applicant’s mark used on identical services as
identified in the application and registration “music publishing services.” We are
not persuaded by Applicant’s argument that consumers would not comprehend this
meaning when used in connection with music publishing services. The clear
meaning and commercial impression of the terms SUMMIT BASE CAMP and
BASECAMP are not changed in the context of music publishing services. Rather,
the addition of the term SUMMIT to the term BASE CAMP could be perceived as a
variant of the BASECAMP mark.
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While we consider the mark as a whole “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… .” In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985). Applicant argues that its decision to disclaim the words “FILM MUSIC” was
done only in the interest of moving the application forward, but maintained the
evidence and law did not support the disclaimer. Reply Br. p. 5, 17 TTABVUE 13.
Regardless of the disclaimer, the record clearly supports a finding that the term
“FILM MUSIC” is merely descriptive of the subject matter of the “music publishing
services.” See, e.g., April 4, 2012 Office Action, TSDR pp. 18-30 (“The Functions of
Film Music … The first kind of necessary film music is called ‘source music’,”
excerpts of an article from the online magazine of motion picture and television
music appreciation; “Women in Film Music … Interestingly, the fact that film music
is male-dominated never occurred to any of our interviewees … The discussion
about women and men both working in film music is important to me, but I do not
think that we can artificially ‘skew’ the reality of the market place,” excerpt from an
online article; “Though often memorable and interesting, with famous composers …
making their reputations in the genre, film music is almost invariably designed to
accompany what is seen on screen,” excerpt from online website Moving Image
Education). In view thereof, the additional wording “FILM MUSIC” does not serve
to distinguish the marks so much as point to a genre of music covered by the
services.
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The additional wording, “SUMMIT” and “FILM MUSIC,” does not serve to
distinguish the marks under these circumstances where the services, as identified,
are identical and the potentially distinguishing element in Applicant’s mark,
SUMMIT, modifies the common element BASE CAMP/BASECAMP, creating a
similar commercial impression.
We find that the similarities between the marks in sound, appearance,
meaning and commercial impression, outweigh the dissimilarities. In view thereof,
the du Pont factor of the similarity of the marks also favors a finding of likelihood of
confusion.
FAME
Applicant argues both that the SUMMIT portion of its mark is famous and
that there is no evidence that Applicant’s mark is famous. It is not necessary to find
Registrant’s mark famous to support a determination of likelihood of confusion. As
to the potential fame of SUMMIT in Applicant’s mark, that does not preclude the
problem of reverse confusion, i.e., consumers believing Registrant is associated with
Applicant.
ACTUAL CONFUSION
Finally, Applicant argues there has been no actual confusion despite
coexisting use for over six years. Applicant supports that statement by asserting
that it is has been using its mark since May 10, 2007, and the first use in commerce
date claimed in the registration is March 6, 2006.
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While a showing of actual confusion would be highly probative, the lack
thereof is not. “The lack of evidence of actual confusion carries little weight,
especially in an ex parte context.” Majestic Distilling Co., Inc., 65 USPQ2d at 1205
(internal citations omitted) (“uncorroborated statements of no known instances of
actual confusion are of little evidentiary value”). See also In re Bisset-Berman Corp.,
476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (stating that testimony of
applicant’s corporate president’s unawareness of instances of actual confusion was
not conclusive that actual confusion did not exist or that there was no likelihood of
confusion). In any event, the record is devoid of probative evidence relating to
whether there have been meaningful opportunities for actual confusion to have
occurred in the marketplace. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1847 (Fed. Cir. 2000); and Gillette Canada Inc. v. Ranir Corp., 23
USPQ2d 1768, 1774 (TTAB 1992). Furthermore, Applicant’s evidence of its and
Registrant’s actual use in a very specific trade channel supports the possibility that
there have not been meaningful opportunities for confusion to occur. Accordingly,
the du Pont factor of the length of time during and conditions under which there
has been contemporaneous use without evidence of actual confusion is considered
neutral.
In conclusion, because the marks are similar, the services are identical, and
the channels of trade and consumers are presumed to overlap, confusion is likely
between Applicant’s mark SUMMIT BASE CAMP FILM MUSIC and the mark
BASECAMP in the cited registration.
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Decision: The refusal to register based on a likelihood of confusion under
Section 2(d) of the Trademark Act is affirmed.