American Historical Publica-tions, Inc.

Trademark Trial and Appeal Board

Jul 25, 2002

No. 75809901 (T.T.A.B. Jul. 25, 2002)

Mailed: July 25, 2002
Paper No. 14
HRW
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re American Historical Publications, Inc.
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Serial No. 75/809,901
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Joseph J. Previto of Collard & Roe, P.C. for American
Historical Publications, Inc.
Ysa de Jesus, Trademark Examining Attorney, Law Office 101
(Jerry Price, Managing Attorney).
_______
Before Hanak, Wendel and Rogers, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
American Historical Publications, Inc. has filed an
application to register the mark WHAT IF? for, as amended,
“publications, namely, books featuring historical themes.”1
1 Serial No. 75/809,901, filed September 29, 1999, claiming a
first use date and a first use in commerce date of September 13,
1999.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 75/809,901
2
Registration has been finally refused under Section
2(d) of the Trademark Act on the ground of likelihood of
confusion with the mark WHAT IF..., which is registered for
“publications, namely, comic books and comic magazines.”2
The refusal has been appealed and applicant and the
Examining Attorney have filed briefs. An oral hearing was
not requested.
We make our determination of likelihood of confusion
on the basis of those of the du Pont3 factors that are
relevant in view of the evidence of record. Two key
considerations in any analysis are the similarity or
dissimilarity of the respective marks and the similarity or
dissimilarity of the goods or services with which the marks
are being used, or are intended to be used. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976); In re Azteca Restaurant Enterprises,
Inc., 50 USPQ2d 1209 (TTAB 1999).
Looking first to the marks, we agree with the
Examining Attorney that applicant’s mark WHAT IF? and
registrant’s mark WHAT IF... are identical in sound and
highly similar, if not virtually the same, in appearance
2 Registration No. 1,868,234, issued December 20, 1994, Section 8
& 15 affidavits, accepted and acknowledged, respectively.
3 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Ser No. 75/809,901
3
and connotation. Although applicant argues that the
question mark in its mark results in a distinctive
appearance and one different from the ellipsis (or
suspension points as described by the Examining Attorney)
used by registrant, we do not think the variance in
punctuation marks makes a significant difference in the
commercial impressions created by the marks.
First of all, the marks contain the same words and
are, as noted, pronounced the same. Second, the
connotation of the expression WHAT IF is the same
regardless of whether the words are followed by a question
mark or an ellipsis, insofar as registrant’s mark WHAT
IF... implies that a question mark would be at the end if
its question were completed. To put it in the words of the
Examining Attorney, regardless of the punctuation used,
both marks are “luring the reader into using their
imaginations for a proposed setting conjured by the
author.” (Brief, p. 7).
Accordingly, the only distinction whatsoever in the
two marks is the difference in appearance resulting from
the use of a question mark in applicant’s mark and the
ellipsis in registrant’s mark. While this difference would
be apparent on a side-by-side comparison of the marks, this
is not the test to be applied in determining likelihood of
Ser No. 75/809,901
4
confusion. Instead it is the similarity of the general
overall commercial impressions created by the marks which
is the determinative factor, because purchasers may come
upon the marks at different points in time. This
necessarily requires us to consider the fallibility of
memory and the consequent lack of perfect recall. The
proper emphasis is thus on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Spoons Restaurants
Inc. v. Morrison, Inc., 23 USPQ2d 1735 (TTAB 1991); Sealed
Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Here we find the general overall commercial impressions
created by the marks WHAT IF? and WHAT IF... to be
virtually the same. If the difference in the forms of
punctuation is noted at all, both forms simply reinforce
the connotation of the words and leave the purchaser with
the same overall impression, namely, the posing of a
hypothetical situation.
Applicant’s other argument is directed to the manner
of use of the two marks. Applicant has made of record
copies of the covers of two of registrant’s comic books and
points to these as evidence that the character
illustrations are so overwhelming on the covers that the
mark is hardly noticeable and makes little or no commercial
Ser No. 75/809,901
5
impression. Applicant contends that when compared with
applicant’s manner of use of its mark, as evidenced by the
specimens, the differences in the marks are “outstanding,
obvious and startling.”
As pointed out by the Examining Attorney, registrant’s
mark is registered in typed drawing form. As such, the
mark is not limited to use in any particular style and
especially not to the manner in which it is presently being
used in commerce. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Vornado, Inc. v.
Breuer Elec. Mfg. Co., 390 F.2d 724, 156 USPQ 340 (CCPA
1968). The display of the registered mark in the present
style is irrelevant since the display may be changed at any
time according to the whim of the registrant. Simply
because registrant presently uses its mark in a manner
asserted to be “startlingly” different from that of
applicant’s current usage does not preclude registrant from
later adopting a style similar to applicant, or from
displaying its mark in a larger or more prominent display
on its covers. No distinction between the marks can be
drawn on the basis of the particular displays presently
being used by applicant and registrant.
Thus, we turn to a comparison of the respective goods
with which applicant and registrant are using these highly
Ser No. 75/809,901
6
similar marks. In making our analysis, we are guided by
the general principle that the greater the degree of
similarity in the marks, the lesser the degree of
similarity that is required between the goods on which the
marks are being used to support a likelihood of confusion.
If the marks are almost the same, as is the case here,
there need only be a viable relationship between the goods
in order to support a holding of likelihood of confusion.
See In re Peebles Inc., 23 USPQ2d 1795 (TTAB 1992); In re
Concordia International Forwarding Corp., 222 USPQ 255
(TTAB 1983).
The Examining Attorney maintains that the goods are
closely related; and that registrant has not narrowed the
subject matter of its comic books or comic magazines to any
particular subject matter and thus may feature historical
themes such as those covered in applicant’s books. The
Examining Attorney points to copies of third-party
registrations which she has made of record as evidence that
owners of marks used to identify books may also use these
marks to identify comic books or comic magazines.
Applicant, on the other hand, argues that applicant’s
books featuring historic themes and registrant’s comic
books are totally different from one another. Applicant
insists that the goods are not used together, are not
Ser No. 75/809,901
7
considered to be in the same category or area of the
publishing field, and are completely distinguishable by
sight.
The issue of likelihood of confusion must be
determined on the basis of the goods as identified in the
application and in the cited registration. Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813 (Fed.Cir. 1987). It is not necessary
that the goods of applicant and registrant be similar or
even competitive to support a holding of likelihood of
confusion. It is sufficient if the respective goods are
related in some manner and/or that the conditions
surrounding their marketing are such that they would be
encountered by the same persons under circumstances that
could, because of the similarity of the marks used thereon,
give rise to the mistaken belief that they emanate from, or
are associated with, the same source. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993) and the
cases cited therein.
Thus, the question here is not whether registrant’s
comic books and applicant’s books featuring historical
themes are similar or even competitive. There is no need
for the publications to be used together or to be
considered to be in the same category in the publishing
Ser No. 75/809,901
8
field.4 The question is whether a sufficient relationship
exists between these publications that purchasers would be
likely to believe that applicant’s books and registrant’s
comic books originate from a single source, if similar
marks are used thereon.
As identified in the registration, registrant’s comic
books are not limited with respect to subject matter and
thus may feature a historical theme similar to applicant’s.
The only definite difference in the two types of
publications lies in the manner of depiction of this
subject matter. Furthermore, we find from the copies of
third-party registrations which the Examining attorney has
made of record clear evidence that the same source may
produce publications in both the comic book and normal book
formats on a single topic and publish the same under the
same mark. For example, Registration No. 2,427,887 is for
the mark ARE WE THERE YET? for “printed matter, namely, a
series of comic books, picture books and fiction books in
the field of comedy”; Registration No. 2,428,637 is for the
mark STARSHIP TROOPERS for, inter alia, “books and comic
books with science fiction themes”; Registration No.
4 Applicant’s reliance upon the standards applied in the
infringement case of Lang v. Retirement Living Publishing Co.,
Inc., 949 F.2d. 576, 21 USPQ2d 1041 (2nd Cir. 1991) is misplaced.
The issue here is that of registration and the relevant standards
are different.
Ser No. 75/809,901
9
2,410,934 is for the mark UFO INVESTIGATOR for, inter alia,
“comic books, comic magazines, a series of fiction and non-
fiction books all featuring information on unidentified
flying objects”, and Registration No. 2,376,082 is for the
mark POST MORTEM for “printed matter and materials, namely,
a series of fiction books and comic books in the field of
fantasy and adventure.” While these registrations are
admittedly not evidence of use of the marks for these goods
in commerce, they are sufficient to suggest that the goods
are of a type which may be produced by a single entity and
be identified by the same mark. See In re Albert Trostel &
Sons Co., supra, In re Mucky Duck Mustard Co., 6 USPQ2d
1467 (TTAB 1988), aff’d as not citable precedent 88-1444
(Fed. Cir. November 14, 1988). Accordingly, if similar
marks are used on both types of publications, as is the
case here, it may be presumed that purchasers will
mistakenly believe that the publications emanate from the
same source.
Although applicant argues that there is little
resemblance between the two types of publications and a
purchaser would be well aware of whether he is buying comic
books or books relating to history, this does not preclude
the likelihood of confusion if similar marks are used on
the goods. The issue to be determined is not whether the
Ser No. 75/809,901
10
goods of applicant and registrant are likely to be
confused, but rather whether there is a likelihood that
purchasers will be misled into believing that the goods
emanate from a common source. See Helene Curtis Industries
Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989). We
find the evidence previously cited more than adequate to
demonstrate that there is a clear likelihood for purchasers
to mistakenly believe that the two types of publications
come from the same source, particularly when such highly
similar marks are used thereon.
Applicant further argues that the channels of trade
for the two types of publications would be different, with
the comic books and books relating to historic themes being
sold in different types of retail outlets, for different
purposes and to different purchasers. There are no
restrictions, however, in either the application or the
registration as to the channels of trade or class of
purchasers and thus it must be assumed that the goods would
travel in all the normal channels of trade for goods of
this nature and to all the normal classes of purchasers.
See Kangol Ltd. v. KangaROOS U.S.A. Inc., 974 F.2d 161, 23
USPQ2d 1945 (Fed. Cir. 1992). Applicant has made no
evidence of record to support its contention that the two
types of publications would not be sold in the same retail
Ser No. 75/809,901
11
outlets. Instead, we consider it highly likely that there
would be overlapping outlets for these publications, be
they bookstores, variety or discount stores, or even on-
line sources of various publications.
Nor do we have any reason to believe that persons
interested in purchasing comic books would never purchase
books with a historical theme. The audience for
registrant’s comic books is in no way limited by the
registration and thus encompasses all ages and classes of
purchasers, ranging from the adult comic book collector to
the teenage consumer. The potential purchasers for
applicant’s books may similarly vary in age or purpose.
Thus, for our analysis of likelihood of confusion, the
products of both applicant and registrant must be assumed
to travel in the same channels of trade and to be available
to the same classes of purchasers.
Applicant also contends that applicant’s books would
only be purchased after careful selection, and would appeal
to more sophisticated purchasers, who would likely be aware
that the source of the books which they are purchasing is
not the same as that of comic books. Despite the presumed
sophistication of these purchasers in the field of books
dealing with historical themes, this does not make them
immune to source confusion, even though they may not be
Ser No. 75/809,901
12
confused as to the nature of the publications. Both types
of books could still be mistakenly believed to originate
from the same publisher. This is especially true when the
marks are substantially identical in commercial impression,
as is the case here, and a viable relationship has been
shown to exist between the two types of publications. See
In re Total Quality Group Inc., 51 USPQ2d 1474 (TTAB 1999).
Finally, applicant raises the lack of evidence of any
actual confusion, even though applicant has been using its
mark for more than two years. We can give little weight to
this fact, however, under the present circumstances. In
the first place, registrant has not had the opportunity to
be heard from on this point. See In re National Novice
Hockey League, Inc., 222 USPQ 638 (TTAB 1984). Second, in
the absence of any evidence of the extent of applicant’s
use of its mark or the size of the market for its goods,
the question arises as to whether there has been any real
opportunity for confusion. See Gillette Canada Inc. v.
Ranir Corp., 23 USPQ2d 1768 (TTAB 1992). In any event, the
issue is not actual confusion, but rather likelihood of
confusion.
Accordingly, on the basis of the highly similar nature
of the respective marks, the relationship that has been
shown to exist between the publications of applicant and
Ser No. 75/809,901
13
registrant and the common channels of trade, we find that
confusion is likely.
Decision: The refusal to register under Section 2(d)
is affirmed.