Virgin Enterprises Ltd.v.David DeFeis

Trademark Trial and Appeal Board

Oct 26, 2000

No. 91108967 (T.T.A.B. Oct. 26, 2000)

Paper No. 33
Bottorff
10/26/00
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Virgin Enterprises Limited
v.
David DeFeis
_____
Opposition No. 108,967
to application Serial No. 75/116,208
filed on June 10, 1996
_____
James W. Dabney of Pennie & Edmonds LLP for Virgin
Enterprises Limited.
John F. Vodopia of Scully, Scott, Murphy & Presser for
David DeFeis
______
Before Hohein, Bottorff and McLeod, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant has filed an application by which he seeks
registration on the Principal Register of the mark VIRGIN
STEELE, in typed form, for goods and services identified
in the application, as amended, as “a series of pre-
recorded audio and video cassettes, compact disks and
records, featuring music,” in Class 9; “posters,” in
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 108,967
2
Class 16; “clothing, namely, t-shirts, hats, headbands,
headwear,” in Class 25; and “entertainment in the nature
of a live musical group,” in Class 41.1 The application
is based on use in commerce under Trademark Act Section
1(a), 15 U.S.C. §1051(a), and includes an allegation of
March 1982 as the date of first use of the mark anywhere
and first use of the mark in commerce on or in connection
with all of the identified goods and services.
Opposer has filed a timely notice of opposition to
registration of applicant’s mark, alleging priority and
likelihood of confusion under Section 2(d) as its ground
of opposition. Specifically, opposer alleges prior use
and registration of various VIRGIN marks for a variety of
goods and services, including goods and services which
are alleged to be identical or closely related to the
goods and services identified in applicant’s application,
and that applicant’s use of the mark VIRGIN STEELE on or
in connection with the identified goods and services is
likely to cause confusion, to cause mistake, or to
deceive.2

1 Serial No. 75/116,208, filed June 10, 1996.
2 As will be discussed more fully, infra at pp. 20-21, opposer,
for the first time in its briefs, argues that its pleading
should be deemed to be amended pursuant to Fed. R. Civ. P. 15(b)
to include, as an additional ground of opposition, a claim that
applicant’s allegation in the original application of use of the
Opposition No. 108,967
3
Applicant has filed an answer by which he denies the
allegations of the notice of opposition which are
essential to opposer’s Section 2(d) claim.
Opposer submitted the following evidence: various
documents, including status and title copies of its
registrations, submitted under notices of reliance filed
during its main testimony period and its rebuttal
testimony period; transcripts of the testimony
depositions of its witnesses David Steel, Lori Levin-
Hyams, and Catherine Clayton, with exhibits; and the
transcript of the testimony deposition of applicant David
DeFeis as an adverse witness, taken by opposer during its
main testimony period. Applicant submitted the following
evidence: the transcript of the (second) testimony

mark on “headgear” and its allegation in the amended application
of use of the mark on “hats, headbands and headwear” were false
and fraudulent, and that the application therefore is void ab
initio in its entirety. Opposer did not file a separate Rule
15(b) motion requesting such amendment of its pleading prior to
or with its main brief on the case. Applicant, in his brief,
argues that opposer’s fraud claim is unpleaded and untimely, and
that it is unfounded as well. Applicant further asserts that if
opposer files a Rule 15(b) motion to amend the notice of
opposition, applicant also will move to amend his answer to add
counterclaims for cancellation of certain of opposer’s
registrations on the ground that opposer is no longer the owner
of those marks or has abandoned those marks by naked licensing.
Opposer, in its reply brief, asserts that it has not and will
not file a separate Rule 15(b) motion because such a motion is
not a prerequisite to the amendment of its pleading under Rule
15(b). Subsequently, applicant did not file any counterclaims.
Opposition No. 108,967
4
deposition of applicant David DeFeis taken by applicant
during its case in chief, with exhibits; and various
documents submitted under notice of reliance.
Opposer and applicant filed main briefs, and opposer
filed a reply brief. No oral hearing was requested. In
reaching its decision herein, the Board has carefully
considered all of the evidence and arguments offered by
the parties, including any evidence or arguments not
specifically mentioned in this opinion.
As discussed below, opposer has proven its ownership
of registrations of various VIRGIN marks for goods and/or
services which are identical and/or related to
applicant’s identified goods and services, as well as its
prior use of VIRGIN as a trade name. In view thereof, we
find that opposer has established its real interest in
the outcome of this proceeding and a reasonable basis for
its belief that it will be damaged by issuance of a
registration to applicant, and that it thus has
established its standing to oppose. See Trademark Act
Section 13; Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d
1023 (Fed. Cir. 1999); Jewelers Vigilance Committee Inc.
Opposition No. 108,967
5
v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed.
Cir. 1987).3
As noted above, Trademark Act Section 2(d) is the
statutory ground of opposition opposer pleaded in the
notice of opposition. Section 2(d) provides, in relevant
part, that registration of an applicant’s mark must be
refused if it:
Consists of or comprises a mark which so
resembles a mark registered in the Patent and
Trademark Office, or a mark or trade name
previously used in the United States by
another and not abandoned, as to be likely,
when used on or in connection with the goods
of the applicant, to cause confusion, or to
cause mistake, or to deceive.
Opposer has made of record, by notice of reliance,
status and title copies of eleven registrations of
various VIRGIN marks, each of which are shown to be
subsisting and owned by opposer.4 Those registrations are
as follows:

3 For the reasons discussed infra with regard to Section 2(d)
priority, applicant’s attacks on the validity of opposer’s
registrations (based on applicant’s asserted priority of use
vis-à-vis certain of the registrations and on opposer’s alleged
abandonment and/or non-ownership of the mark in connection with
music-related goods) will not be heard inasmuch as applicant has
not asserted any counterclaims against those registrations.
Trademark Rule 2.106(b). Opposer’s registrations accordingly
will be given full effect, and they constitute evidence of
opposer’s standing.
4 In its brief, opposer also refers to an additional
registration, Reg. No. 2,237,092. However, opposer has not made
Opposition No. 108,967
6
Registration No. 1,039,574, issued May 18, 1976, of
the mark VIRGIN in stylized form as depicted below
for “sound records in the form of discs and tapes
and cassettes for use therewith” in Class 9.
Affidavits under Section 8 and 15 filed and
acknowledged; renewed under Section 9 for a term of
ten years from May 18, 1996;
Registration No. 1,413,664, issued October 14, 1986,
of the mark VIRGIN, in typed form, for “air travel
services” in Class 39. Affidavits under Section 8
and 15 filed and acknowledged;
Registration No. 1,469,618, issued December 22,
1987, of the mark VIRGIN, in typed form, for
“prerecorded audio and/or video tapes, cassettes and
cartridges; pre-recorded audio and video discs,
phonograph records; photographic and cinematographic
films” in Class 9. Affidavits under Section 8 and
15 filed and acknowledged;
Registration No. 1,517,801, issued December 27,
1988, of the mark VIRGIN in stylized form as
depicted below
for “prerecorded audio and/or video tapes, cassettes
and cartridges; pre-recorded audio and video discs,
phonograph records; photographic and cinematographic
films” in Class 9. Affidavits under Section 8 and
15 filed and acknowledged;

that registration of record, and we have given it no
consideration.
Opposition No. 108,967
7
Registration No. 1,591,952, issued April 17, 1990,
of the mark VIRGIN in the same stylized form
depicted in Reg. No. 1,517,801 (immediately above),
for “printed sheet music; fictional and non-
fictional books, biography and autobiography books,
periodicals, namely, paperback books and magazines,
all dealing with music, films and entertainment;
paper for packaging, paper cases; writing
instruments, namely, pens, pencils, ball point pens,
and crayons; stationery and office supplies, namely,
writing and note paper; playing cards,” all in Class
16; and “articles of outer clothing, namely,
shirts, t-shirts, sweat shirts, jackets, hats,
clothing caps, clothing belts,” in Class 25.
Affidavits under Sections 8 and 15 accepted and
acknowledged;
Registration No. 1,597,386, issued May 22, 1990, of
the mark VIRGIN, in typed form, for “printed sheet
music; mounted photographs; posters; fictional and
non-fictional books, biography and autobiography
books, periodicals, namely, pamphlets, brochures,
newsletters, journals, paperback books and
magazines, all dealing with music, films and
entertainment; paper for packaging, paper cases;
stationery and office supplies, namely, writing and
note paper, tags for index cards; paper tableware,
namely, table mats, coasters, decanter mats, dish
mats, table napkins; and playing cards,” all in
Class 16; and “articles of outer clothing, namely,
shirts, t-shirts, sweat shirts, jackets, hats,
clothing caps, clothing belts,” in Class 25.
Affidavits under Sections 8 and 15 accepted and
acknowledged;
Registration No. 1,851,817, issued August 30, 1994,
of the mark VIRGIN, in typed form, for “direct mail
advertising for others; dissemination of advertising
materials for others; preparing advertising,
promotions, and public relations materials for
others; management of promotional and incentive
plans and services for others; business organization
promotional consulting for others; demonstration of
the goods and services of others and the promotion
thereof; promoting and advertising the goods and
services of others by aircraft, airships and air
balloons; outdoor advertising such as by billboards;
Opposition No. 108,967
8
and distribution of advertising, promotional
materials and sample materials of others,” in Class
35; “transportation of goods and passengers by road,
rail, air and sea; freight transportation services;
tourist agency services; travel agency services;
arranging travel tours; and transportation
reservation services,” in Class 39; Clubs,
nightclubs; bars; hotels; resorts; hotel reservation
services; hotel and resort management for others;
carry-out restaurant and restaurant services;
catering; computer programming for others; computer
software design services for others; artwork and
graphic design services for others; and retail store
services in the fields of cosmetics and laundry
preparations, metal hardware, cameras, records,
audio and video tapes, audio and video recorders,
computers and electronic apparatus, jewelry, clocks
and watches, musical instruments, stationery, sheet
music, books and photography, handbags, purses,
luggage and leather goods, clothing, lace,
embroidery, gifts and sewing materials, toys, games,
video game machines and video game cartridges,
processed foods, jellies and jams, coffee, tea,
bakery items and candy, beer, ale, mineral and
aerated waters and other non-alcoholic drinks,
wines, spirits and liqueurs, and tobacco and
smokers’ articles,” in Class 42;
Registration No. 1,852,776, issued September 6,
1994, of the mark VIRGIN in the stylized form
depicted above in Registration No. 1,517,801, for
the same services as those recited in Registration
No. 1,851,817, immediately above;
Registration No. 1,863,353, issued November 15,
1994, of the mark VIRGIN MEGASTORE (MEGASTORE
disclaimed), in typed form, for “retail department
store services” in Class 42;
Registration No. 2,094,460, issued September 9,
1997, of the mark VIRGIN, in typed form, for
“underwriting life, health and general insurance;
administration of employee pension plans; annuity
underwriting; estate trust management; funds
investment; investment of funds for others; open and
close-ended funds investment; financial analysis and
Opposition No. 108,967
9
consultation in the field of securities, personal
equity and tax advantaged savings,” in Class 36; and
Registration No. 2,151,589, of the mark VIRGIN VODKA
(VODKA disclaimed), in typed form, for “vodka” in
Class 33.
In view of opposer’s ownership of these
registrations, priority is not an issue in this
proceeding. King Candy Co., Inc. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Contrary to applicant’s contention, it is irrelevant
that the dates of first use alleged by opposer in some of
its registrations are subsequent to applicant’s alleged
date of first use of his mark. Section 2(d) provides
that registration must be refused to a mark which is
confusingly similar to “a mark registered in the Patent
and Trademark Office, or a mark or trade name previously
used….” (Emphasis added.) Because opposer has made its
registrations of record, and because applicant has not
asserted any counterclaims for cancellation of those
registrations (such counterclaims being compulsory under
Trademark Rule 2.106(b)(2)), actual priority of use is
not an issue in this case. King Candy, supra.
Applicant also argues that opposer, having sold its
Virgin Music Group to Thorn EMI in 1992, no longer uses
the VIRGIN mark on music-related goods, including the
Opposition No. 108,967
10
music-related goods identified in several of the
registrations made of record in this case, and that
opposer accordingly is not the owner of the VIRGIN mark
as to those goods and/or has abandoned the mark as to
those goods by virtue of its naked licensing of the mark
to Thorn EMI. To the extent that these arguments are an
attack on the validity of those registrations and/or
opposer’s ownership thereof, such attack is a compulsory
counterclaim which should have been pleaded with the
original answer or pleaded promptly after the grounds
therefor were learned, and it will not be heard in the
absence of such counterclaim. See Trademark Rule
2.106(b)(2)(i) and (ii). No counterclaim having been
asserted by applicant, the Board shall give applicant’s
arguments on these issues no consideration, and shall
give full effect to opposer’s registrations, which,
according to the status and title copies opposer has made
of record, are owned by opposer.
Our likelihood of confusion 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 likelihood of confusion issue.
See In re E.I. du Pont de Nemours and Co., 476 F.2d 1357,
177 USPQ 563 (CCPA 1973). In considering the evidence of
Opposition No. 108,967
11
record on these factors, we keep in mind that “[t]he
fundamental inquiry mandated by §2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the
marks.” Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We turn first to a comparison of the parties’ goods
and services, their trade channels and their customers.
It is not necessary that the parties’ respective goods
and/or services be identical or even competitive in order
to support a finding of likelihood of confusion. Rather,
it is sufficient that the goods and/or services are
related in some manner or that the circumstances
surrounding their marketing are such that they would be
likely to be encountered by the same persons in
situations that would give rise, because of the marks
used thereon, to a mistaken belief that they originate
from or are in some way associated with the same producer
or that there is an association or connection between the
producers of the respective goods and/or services. See
In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In re
International Telephone & Telegraph Corp., 197 USPQ 910
(TTAB 1978).
Opposition No. 108,967
12
In this case, the goods identified in applicant’s
application are legally identical and/or highly similar
to the goods identified in one or more of opposer’s
VIRGIN registrations. That is, applicant’s Class 9
goods, i.e., “a series of pre-recorded audio and video
cassettes, compact disks and records, featuring music,”
are legally identical and/or highly similar to the “sound
records in the form of discs and tapes and cassettes for
use therewith” identified in opposer’s Registration No.
1,039,574 and to the “pre-recorded audio and/or video
tapes, cassettes and cartridges; pre-recorded audio and
video discs, phonograph records” identified in opposer’s
Registration Nos. 1,469,618 and 1,517,801. Applicant’s
Class 16 “posters” are legally identical to the “posters”
identified in opposer’s Registration No. 1,597,386.
Applicant’s Class 25 clothing items, “namely, t-shirts,
hats, headbands, headwear” are legally identical and/or
highly similar to the “shirts, t-shirts, sweat shirts,
hats, clothing caps” identified in opposer’s Registration
Nos. 1,591,952 and 1,597,386. Each of applicant’s goods
also must be deemed to be related to the retail store
services identified in opposer’s VIRGIN Registration Nos.
1,851,817 and 1,852,776 and in opposer’s VIRGIN MEGASTORE
Opposition No. 108,967
13
Registration No. 1,863,353, inasmuch as they are the
types of goods which are sold in opposer’s stores.
As for the services recited in applicant’s
application, i.e., “entertainment in the nature of a live
musical group,” we find that these services are related
to the Class 9 audio and video recordings and discs
identified in opposer’s registrations as referenced
above, as well as to the posters and clothing items
identified in certain of opposer’s other registrations.
The relationship between such goods and applicant’s
entertainment services is evidenced by the fact that
applicant itself offers such goods in conjunction with
its entertainment services. We also find that
applicant’s services are related to various services
identified in opposer’s registrations. It is common
knowledge, for example, that “nightclubs,” which are
among the services recited in opposer’s Registration Nos.
1,851,817 and 1,852,776, often feature live performances
by musical groups. Further, opposer’s witness Ms. Levin-
Hyams testified that opposer frequently sponsors and
promotes live performances and other appearances by
musical groups at its retail stores.
Thus, we find that applicant’s goods and services
are identical and closely related to certain of opposer’s
Opposition No. 108,967
14
goods and services, as discussed above. Likewise, we
find that the parties’ identical and closely related
goods and services move in the same trade channels and
are marketed to the same classes of purchasers. There
are no limitations as to trade channels or purchasers in
applicant’s identification of goods and services or in
opposer’s registrations. Accordingly, we presume that
the parties’ identical and closely related goods and
services are marketed in all normal trade channels and to
all normal classes of purchasers for such goods and
services. See In re Elbaum, 211 USPQ 639 (TTAB 1981).
Moreover, the evidence of record shows that both
applicant’s and opposer’s records, discs and videos are
sold at Tower Records, and through the same mail-order
catalogs.
Finally, it appears that the goods involved herein
are common consumer items which are relatively
inexpensive. There is no evidence that the normal
purchasers of these goods are especially sophisticated or
careful in making their purchasing decisions.
We turn next to the issue of whether applicant’s
mark VIRGIN STEELE and opposer’s VIRGIN mark, when viewed
in their entireties, are similar in terms of appearance,
sound, connotation and overall commercial impression.
Opposition No. 108,967
15
The test to be applied is not whether the marks can be
distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impressions
that confusion as to the source of the goods and services
offered under the respective marks is likely to result.
The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp.
v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Furthermore, because applicant’s goods and services are
closely related and in many respects legally identical to
opposer’s goods and services, the degree of similarity
between the marks that is required to support a finding
of likelihood of confusion declines. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992).
Our analysis of the parties’ marks begins with our
finding that opposer’s VIRGIN mark is a strong mark which
is entitled to a relatively broad latitude of protection.5

5 On this record, however, we cannot conclude that opposer’s
VIRGIN mark is “famous.” The news articles (and the district
court order) submitted and relied upon by opposer are
insufficient to prove that opposer’s mark is famous, in the
absence of any direct evidence as to the dollar or unit volume
of sales under the mark, or as to the amount of its advertising
and promotional expenditures, or as to opposer’s market share in
Opposition No. 108,967
16
VIRGIN is an arbitrary term as applied to opposer’s goods
and services. The record shows that opposer uses VIRGIN
both as its trade name and as a house mark on an
extremely wide variety of goods and services, and that
opposer actively cross-promotes its VIRGIN mark among
these various goods and services. There is no evidence
of any use by third parties of VIRGIN marks on or in
connection with the goods and services involved in this
case or, indeed, in connection with any goods or services
at all.6 The record also shows that opposer diligently
polices its rights in the VIRGIN mark and name. Finally,
we find that opposer’s mark is especially strong in
connection with music-related goods and services. The
evidence of record establishes that the VIRGIN record
label is a highly respected and well-known label, with a
roster of famous artists which includes The Rolling

the relevant industries. See Hard Rock Café Licensing Corp. v.
Elsea, 48 USPQ2d 1400, 1409 (TTAB 1998). Moreover, the district
court’s findings and conclusions in the context of opposer’s
lawsuit against a third party are not evidence in this case of
the facts said to underlie such findings and conclusions, nor
are they entitled to any legally preclusive effect as against
applicant, who was not a party to that litigation.
6 The third-party registrations made of record by applicant
(Exhibits 1-9 of applicant’s Notice of Reliance) are not
evidence that the marks depicted therein are in actual use, or
that the public is accustomed to and capable of making source
distinctions among various VIRGIN marks. See AMF Incorporated
v. American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268
(CCPA 1973).
Opposition No. 108,967
17
Stones, Janet Jackson, David Bowie, Tina Turner and Lenny
Kravitz, among others.
Keeping the strength of opposer’s mark in mind, we
turn to a comparison of opposer’s mark and applicant’s
mark. In terms of appearance and sound, we find that
opposer’s VIRGIN mark and applicant’s VIRGIN STEELE mark
obviously are identical to the extent that both marks use
the arbitrary word VIRGIN, but are dissimilar to the
extent that applicant’s mark includes the word STEELE
while opposer’s mark does not. We are not persuaded by
applicant’s argument that the stylized lettering and form
of certain of opposer’s registered marks suffices to
visually distinguish them from applicant’s mark. We do
not believe that opposer’s mark is so highly stylized, in
either Registration No. 1,039,574 or in Registration Nos.
1,517,801, 1,591,952 and 1,852,776 (see supra at footnote
4), as to negate or outweigh the commercial impression
created by those marks’ use of the term VIRGIN, per se.
Moreover, we note that opposer owns registrations of its
VIRGIN mark in typed form for the same goods and services
covered by its registered stylized marks.
In terms of connotation, we find that the word
VIRGIN, as it appears in both marks, carries its normal
meaning, i.e., “free of impurity or stain: unsullied” or
Opposition No. 108,967
18
“fresh, unspoiled.” Webster’s Ninth New Collegiate
Dictionary (1990) at 1317. In applicant’s mark, the word
VIRGIN modifies the word STEELE (or STEEL), whereas in
opposer’s mark it stands alone. Opposer argues that
applicant’s VIRGIN STEELE mark merely takes opposer’s
arbitrary VIRGIN mark and adds the “descriptive” word
STEELE thereto.7 However, the record does not support
opposer’s argument that STEELE is a descriptive term as
applied to “heavy metal” music such as applicant’s. We
find, instead, that it is suggestive of such music, at
most, and that it cannot be discounted in our comparison
of the marks.8

7 Neither party has argued that STEELE would be perceived as a
surname due to the presence of the terminal letter “E.” Rather,
both parties have treated the word as a mere misspelling of the
word STEEL. Based on this record, we do not disagree.
8 Opposer (at page 25 of its brief), in support of its argument
that STEELE is “descriptive” of heavy metal music, cites to
applicant’s testimony at page 51 of applicant’s August 30, 1999
testimony deposition:
Q. When you say this kind of music, what kind
of music are you referring to?
A. It’s a certain kind of heavy metal. A very
specific kind of heavy metal.
Q. Is the word steel supposed to conjure up
metal?
A. It’s supposed to conjure up whatever you
think. Sure. It’s related to steel. Like Iron
Maiden, Led Zeppelin. It’s a combination of light
things and things that are harder or heavier.
(DeFeis depo. (8/30/99) at 51.) We find that this testimony
does not establish that STEELE or STEEL is descriptive of heavy
metal music.
Opposition No. 108,967
19
Further with respect to the connotation of
applicant’s mark, and likewise with respect to the mark’s
overall commercial impression, we find that VIRGIN STEELE
would most likely be perceived as a unitary composite
term much like “virgin wool,” “virgin forest” or “virgin
birth.” Applicant testified: “Also we play what is
called metal music. It’s like a sword, virgin metal,
torching the fires of adversity, like Excalibur, that
kind of thing. It’s a gothic kind of music.” (Id. at
118.) This testimony as to the meaning of VIRGIN STEELE
is corroborated by the artwork appearing on applicant’s
recordings, posters and t-shirts, in which depictions of
swords often figure prominently. (See, e.g., DeFeis
depo. (2/10/99), Exhibits 3, 9, 10, 12-14, and 18.)
Applicant also testified that it is common for heavy
metal rock bands like applicant’s to take a name which
combines opposite characteristics, such as light and
heavy, or light and hard. Applicant cited as examples
the bands named IRON MAIDEN, IRON BUTTERFLY, LED
ZEPPELIN, and BLACK SABBATH. Applicant testified,
persuasively, that the name VIRGIN STEELE creates the
same sort of commercial impression when used in
connection with applicant’s band. (DeFeis depo.

Opposition No. 108,967
20
(8/30/99) at 51; DeFeis depo. (2/10/99), at 4-5 and 117-
118.) Opposer’s VIRGIN mark does not create this same
detailed commercial impression.
In summary, when we compare applicant’s and
opposer’s marks in their entireties as to appearance,
sound and connotation, and as to their overall commercial
impressions, we find that there certainly are
dissimilarities between the marks which result from the
presence of the word STEELE in applicant’s mark and the
absence of that word in opposer’s mark. However, we find
that those dissimilarities are insufficient to outweigh
or negate the basic, underlying similarity between the
marks which arises from both marks’ use of the arbitrary
term VIRGIN. Although we cannot discount the
significance of the word STEELE in applicant’s mark, as
opposer would have us do, we likewise cannot discount the
presence of the word VIRGIN in applicant’s mark, as
applicant would have us do.
As discussed above, opposer’s VIRGIN mark is a
strong mark which is entitled to a wide scope of
protection vis-à-vis other marks. This is especially so
where, as in this case, the other mark in question
(applicant’s mark) is being used on goods and services
which are legally identical and/or closely related to
Opposition No. 108,967
21
opposer’s goods and services. See Century 21 Real Estate
Corp., supra. In these circumstances, and on this
record, we find that applicant’s mark is similar, rather
than dissimilar, to opposer’s mark, under the first du
Pont evidentiary factor.
The only other du Pont factors argued by the parties
relate to the issue of actual confusion. After careful
consideration of the record, we find no evidence that
actual confusion has occurred. The third-party
advertisements for applicant’s live shows which referred
to applicant’s band as “EMI recording artists,” cited by
opposer, do not prove actual confusion the part of the
relevant purchasing public. Opposer argues (and
opposer’s witness Mr. Steel opined) that, because Virgin
Records became a subsidiary of EMI in 1992 and because
applicant’s band’s name is VIRGIN STEELE, the third
parties responsible for the advertisements mistakenly
believed that applicant’s band was affiliated with, or
under contract to, EMI. However, we find this argument
(and Mr. Steel’s testimony on this issue) to be highly
tenuous and based on nothing but conjecture.9

9 There is no testimony from the third party advertisers as to
why they believed that applicant was an EMI recording artist.
It is likely that their quite specific references to applicant’s
band as “EMI recording artists” were based on specific erroneous
Opposition No. 108,967
22
However, we accord no significant weight to the
absence of evidence of actual confusion in this case.
The nature and extent of applicant’s use of the mark in
the United States is not particularly clear from the
record. We cannot conclude that the opportunity for
actual confusion has been so great that the absence of
any evidence of actual confusion is significant. See
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB
1992).
After careful consideration of all of the evidence
of record relating to the du Pont likelihood of confusion
factors, we conclude that a likelihood of confusion
exists in this case. The strength of opposer’s mark,
combined with the legal identity between most of
applicant’s goods and services and those of opposer’s,
suffice to make confusion likely. Any doubts as to this
conclusion which may have been raised by applicant’s
arguments or evidence must be resolved in favor of
opposer, as the prior registrant. In re Hyper Shoppes
(Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir.
1988); In re Martin’s Famous Pastry Shoppe, Inc., 748
F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).

or mistaken information provided to or gathered by them, rather
than on the attenuated chain of reasoning suggested by opposer.
Opposition No. 108,967
23
Opposer has requested that the notice of opposition
be deemed to have been amended, under Fed. R. Civ. P.
15(b), to include the additional ground of fraud. We
find, however, that this ground was not tried by the
express or implied consent of the parties, and that, in
view of applicant’s objection to our consideration of the
additional ground, the requested amendment is not
warranted.
The issue of applicant’s use of the mark on hats and
other headwear, which appears to be the focus of
opposer’s proposed fraud claim, arose only twice during
the course of applicant’s lengthy depositions, and on
those occasions only as part of an extended line of
questioning regarding the history of applicant’s band and
the nature and extent of applicant’s use of its mark on
the identified goods and services. Such questioning was
clearly relevant to opposer’s pleaded Section 2(d) claim,
e.g., to the issues of the nature of applicant’s goods
and the trade channels and customers for such goods, and
we cannot conclude that applicant was fully apprised that
the questioning also was intended to elicit evidence
supporting the additional unpleaded ground of fraud.
“The purpose of Rule 15(b) is to allow the pleadings to

Opposition No. 108,967
24
conform to issues actually tried, not to extend the
pleadings to introduce issues inferentially suggested by
incidental evidence in the record.” ABC Moving Company,
Inc. v. Brown, 218 USPQ 336, 339 (TTAB 1983). See also
Auburn Farms Inc. v. McKee Foods Corp., 51 USPQ2d 1439 at
n.5 (TTAB 1999); Devries v. NCC Corporation, 227 USPQ 705
(TTAB 1985); Color Key Corporation v. Color 1 Associates,
Inc., 219 USPQ 936 (TTAB 1983).
Accordingly, opposer’s request that the notice of
opposition be deemed to be amended under Rule 15(b) to
include a fraud claim is denied.
Decision: The opposition (based on Section 2(d)) is
sustained.
G. D. Hohein
C. M. Bottorff
L. K. McLeod
Administrative Trademark Judges
Trademark Trial and Appeal Board