Third Eye Comics, Inc.

Trademark Trial and Appeal Board

Sep 30, 2015

No. 86443223 (T.T.A.B. Sep. 30, 2015)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
September 30, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Third Eye Comics, Inc.
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Serial No. 86443223
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Gene Bolmarcich, Esq. for Third Eye Comics, Inc.

Carolyn A. Pendleton, Trademark Examining Attorney, Law Office 103 (Michael
Hamilton, Managing Attorney).
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Before Zervas, Mermelstein, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Third Eye Comics, Inc. (“Applicant”) has filed an application to register on the
Principal Register the mark THIRD EYE COMICS (in standard characters) for “On-
line retail store services featuring pop culture-related items; Retail store services
featuring pop culture-related items,” in International Class 35.1

1 Application Serial No. 86443223, filed November 3, 2014 under Trademark Act Section
1(a), 15 U.S.C. § 1051(a), stating April 21, 2002 as the date of first use and April 20, 2008
as the date of first use in commerce. Applicant has disclaimed the exclusive right to use
COMICS apart from the mark as shown.
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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 used
in connection with Applicant’s services, so resembles the mark THIRD EYE PRESS
(in standard characters), which is registered for “Book publishing,” in International
Class 41,2 as to be likely to cause confusion. The Examining Attorney made her
refusal final and Applicant appealed. The case is fully briefed.
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 the issue of
likelihood of confusion as set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods and services at issue. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, Applicant
has also submitted arguments regarding relevant customers.
1. The marks.
We consider first the similarity or dissimilarity of the marks at issue in their
entireties as to appearance, sound, connotation and commercial impression. See
Palm Bay Imports, 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

2 Reg. No. 3688643, issued September 29, 2009. Registrant has disclaimed the exclusive
right to use PRESS apart from the mark as shown.
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would be likely to assume a connection between the parties.” Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(citation omitted).
The two marks at issue are identical in appearance, sound and meaning to the
extent that they share the initial and highly distinctive wording THIRD EYE. The
remaining words in the marks, COMICS and PRESS, respectively, are different;
however, each of these words has greatly reduced source-identifying capacity,
because each is highly descriptive in the context of the relevant services.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir.
2000), quoting, In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed.
Cir. 1983) (“Regarding descriptive terms, this court has noted that the descriptive
component of a mark may be given little weight in reaching a conclusion on the
likelihood of confusion”); In re Dixie Rests. Inc., 105 F.3d 1405, 1407, 41 USPQ2d
1531, 1533-34 (Fed. Cir. 1997). It bears noting, as well, that in terms of their
meanings the words COMICS and PRESS are not wholly unrelated, as comic books
and comic strips are products that typically emanate from a press. Overall, we find
that the two marks at issue create highly similar commercial impressions.
Therefore the du Pont factor of the similarity or dissimilarity of the marks weighs
in favor of a finding of likelihood of confusion.
2. The services.
We next consider the similarity or dissimilarity of the services as identified in the
application and the cited registration. Stone Lion Capital Partners, LP v. Lion
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Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-62 (Fed. Cir. 2014); Octocom
Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990). The services do not have to be identical or even competitive in
order to find that there is a likelihood of confusion. See On-line Careline Inc. v. Am.
Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); In re Iolo
Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010). Likelihood of confusion can be
found if the respective services are related in some manner 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, 101 USPQ2d at 1722. The question before us is whether there is
such a relationship between book publishing and retail stores and online stores that
offer “pop culture-related items.”
The term “pop culture-related items” is a curious one and, on the present record, it
is undefined. The specimen of use that Applicant submitted shows that Applicant
offers comic books;3 and Applicant has stated that the “pop culture-related items”
that it offers “admittedly include comic books.”4 Beyond this admission, neither
Applicant nor the Examining Attorney has offered any guidance.
To demonstrate that the services of Applicant and Registrant are related, the
Examining Attorney has primarily sought to show that book publishing is related to
retail stores that sell books. She has proffered approximately 30 third-party

3 Application at 7-8.
4 Applicant’s reply brief, 7 TTABVUE 2. The application, as originally filed, identified
Applicant’s services as “featuring comic books and pop culture-related items.” Application
at 2 (emphasis added).
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registrations that cover both book publishing services and retail stores (including
online stores) offering books or e-books.5 Third-party registrations that are based on
use in commerce and which individually cover a number of different goods and
services may have some probative value to the extent that they serve to suggest
that the listed goods and services are of a type which may emanate from the same
source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786; In re Mucky
Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). Applicant argues
that the Examining Attorney’s evidence shows no connection between Registrant’s
publishing services and Applicant’s retail stores, because Applicant’s stores do not
sell books, but “pop culture-related items.”6 Applicant’s argument is, essentially,
that evidence showing a relationship between book publishing and stores that sell
books is irrelevant to this case.
In analyzing the services, it would be improper to disregard the broad and open-
ended nature of the term “pop culture-related items.” Stone Lion Capital Partners,
LP v. Lion Capital LLP, 110 USPQ2d at 1162 (“Stone Lion effectively asks this
court to disregard the broad scope of services recited in its application … This would
be improper because the services recited in the application determine the scope of
the post-grant benefit of registration.”). If comic books are in the “pop culture-
related” category, there appears to be no reason why other books, especially graphic
novels and popular books such as those on the “best seller” lists, should not also be

5 Office Action of February 24, 2015 at 9-86; Office Action of April 9, 2015 at 8-172. Where
the record contains more than one registration in the name of a single company, we have
counted only one of them.
6 Applicant’s reply brief, 7 TTABVUE 3.
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in this category. Applicant has essentially admitted that comic books are “books.”7
Certainly those comic books that are known as “graphic novels” would be considered
“books” in their own right by most relevant customers. Applicant does not explain
why a comic book is “pop culture-related” but no other kind of book is. We do not see
any such clear distinction. In our view, the term “pop culture-related items” does
not inoculate Applicant against an analysis that considers the sale of books.8
The Examining Attorney has shown that many companies have registered marks
for both book publishing and stores that sell books, suggesting that both services
may emanate from a single source. The link to Applicant’s services is not powerful.
Nonetheless, in the circumstances of this case, we agree that there is a logical
connection between “books” and “comic books”: both are publications offered to
readers for entertainment or edification; the vast majority of both are manufactured
by publishing companies and bear the trademarks of their publishers; and most are
distributed with the assistance of some kind of publishing company. Many relevant
customers would consider a store that sells comic books to be a type of book store.
We find it likely that if customers were to encounter the highly distinctive mark of a
publishing company used for a retail store offering published materials such as

7 Applicant’s reply brief, 7 TTABVUE 3 (“The fact that one item (namely, comic books) may
fall into both categories of goods (books and pop-culture related items) that are the subject
of the respective services, does not make the services similar.”)
8 We note that Applicant’s specimen of use includes the menu items “TOYS,” “GAMES,” and
“SUBSCRIPTIONS” alongside the menu item “COMICS.” (Application at 7.) Presumably,
toys and games are among the other goods that Applicant considers to be “pop culture-
related,” although it is by no means clear why such goods should be so considered. The
specimen does, however, illustrate how broad a reach Applicant’s recitation of services may
have.
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comic books, they would be likely to believe that there is some relationship of
sponsorship or affiliation between the two. We therefore find that there is a
sufficient relationship between the services of Applicant and Registrant to increase
the likelihood of confusion.
3. Customers.
Applicant argues that the services of Applicant and Registrant are not offered to
any consumers in common, and that this factor is sufficient to render confusion
unlikely. “Retail services are provided to the general consuming public. Book
publishing is a service provided to authors of books.”9 We note the following
definition of “publish”:10
1. to issue (printed or otherwise reproduced textual or
graphic material, computer software, etc.) for sale or
distribution to the public. 2. To issue publicly the work of:
Random House publishes Faulkner.
1563 THE RANDOM HOUSE DICTIONARY OF THE ENGLISH LANGUAGE (Second ed. 1987).
Applicant takes too limited a view of the service of publishing. Publishers do not
serve only the authors whose books they issue. They also serve the reading public,
which relies upon publishers to produce books and distribute them into channels
where the readers can obtain them. The ultimate consumers of the book publishing
industry (i.e., the readers) are exposed to the publishers’ products marked with the
publishers’ trademarks in those trade channels that carry books to the public. Even
though book publishing and retail stores are obviously distinct services by their

9 Applicant’s brief, 4 TTABVUE 3.
10 Applicant requested that we take judicial notice of the definition of “book publishing,” but
has not set forth any specific definition. (Reply brief, 7 TTABVUE 3.)
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nature, they both serve the general public of ordinary consumers.11 We see nothing
in the record to persuade us that the readers of books are a class of customers
separate from those who shop in stores offering pop culture-related items, including
comic books. The fact that the customers of both Applicant and Registrant include
ordinary consumers weighs in favor of a finding of likelihood of confusion.
There is no evidence or argument with respect to the conditions under which sales
are made. Accordingly, we treat that aspect of this du Pont factor as neutral.
4. Conclusion.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. In view of the
very high degree of similarity between the marks of Applicant and Registrant and
the degree of commercial relationship between book publishing and Applicant’s
retail services featuring pop culture-related items (including comic books), we find
that confusion is likely as to the source of Applicant’s services.
Decision: The refusal to register is affirmed.

11 To be clear, in mentioning that the books produced by book publishers travel through the
trade channels that carry books, we do not mean to suggest that there is any evidence of
record as to the specific trade channels through which the services of Applicant and
Registrant travel; there is none. Nor is there any reason on this record for us to conclude
that there is any similarity or intersection of the trade channels used by Applicant and
Registrant. We give the factor of trade channels no weight in our analysis.