Annastasia Mason

Trademark Trial and Appeal Board

Mar 27, 2013

No. 77959377 (T.T.A.B. Mar. 27, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: March 27, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Mason
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Serial No. 77959377
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Louis C. Paul of Louis C. Paul & Associates, PLLC for Annastasia Mason.

Ernest Shosho, Trademark Examining Attorney, Law Office 117 (J. Brett Golden,
Managing Attorney).
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Before Bucher, Taylor and Wellington, Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
Annastasia Mason (applicant) seeks to register on the Principal Register the
mark MISS COSMOS (in standard characters) for services identified as “Arranging
of contests; Entertainment in the nature of beauty pageants; Entertainment
services, namely, conducting contests.”1
Registration has been refused by the examining attorney under Section 2(d) of
the Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s mark, as
applied to applicant’s services, so resembles the mark MISS CHINESE COSMOS
PAGEANT and design, shown below,

1 Application Serial No. 77959377 filed March 15, 2010, and alleging January 12, 2006, as the date of
first use of the mark anywhere and January 18, 2008 as the date of first use of the mark in commerce.
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for
Conducting and organizing of beauty pageants; organization
and production of live shows; presentation of live show
performances and presentation of live performances by a
musical band; conducting and organizing entertainment beauty
contests; education and entertainment services in the nature of
content preparation, production of live or recorded audio, visual
or audiovisual material through film or videotape, and
distribution of motion picture films, television and radio
programs for others; entertainment services provided by means
of the Internet, namely, providing a web site featuring musical
performances, musical videos, related film clips, photographs,
and other multimedia materials featuring beauty pageant and
entertainment information about musicians, actors, celebrities;
providing news in the nature of current event reporting;
providing information on education and entertainment
in International Class 41 as to be likely to cause confusion, or to cause mistake, or
to deceive.2 The non-Latin characters that mean “Chinese” and “Pageant” and the
English words “Chinese” and “Pageant” have been disclaimed.
When the refusal was made final, applicant appealed and requested
reconsideration of the refusal. That request was denied and the appeal resumed on
December 1, 2011.

2 Registration No. 3841848 registered August 31, 2010, and asserting May 25, 2003 as the date of first
use of the mark anywhere and in commerce. The registration includes the following statements: “The
mark consists of stylized design of a female figure surrounded by Chinese characters, and English words,
‘MISS CHINESE COSMOS PAGEANT,’ written beneath the figure and the Chinese characters.”; “Color
is not claimed as a feature of the mark.”; and “The non-Latin character(s) in the mark transliterates into
‘ZHONG-HUA XIAO-JIE HUAN-QIU DA-SAI,’ and this means ‘MISS CHINESE COSMOS
PAGEANT’ in English.” The registration also includes services in International Class 38, but these
services were not referenced by the examining attorney in his refusal.

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Applicant and the examining attorney filed briefs. For the reasons discussed
below, we affirm.
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. 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 Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The 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”). These factors, and any
other relevant du Pont factors in the proceeding now before us, will be considered in
this decision.
We consider first the relatedness of the services. We note that the examining
attorney focused his discussion on conducting and organizing of beauty pageants,
conducting and organizing entertainment beauty contests, and providing a web site
featuring musical performances, musical videos, related film clips, photographs, and
other multimedia materials featuring beauty pageants. We further focus our
discussion on registrant’s conducting and organizing of beauty pageants and
contests, because we find these services are those which are closest to applicant’s,
and we compare those services to applicant’s arranging of contests, entertainment
in the nature of beauty pageants and entertainment services, namely, conducting
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contests. With particular regard to applicant’s arrangement of contests services,
the specimens of record reveal that the contests are in the nature of beauty contests
and pageants. As such, despite the minor differences in wording of the respective
recitations, it is clear that both the cited registrant and applicant provide beauty
pageants and contests. We thus find applicant’s services to be legally identical to
registrant’s. Notably, applicant did not argue otherwise and, in fact, her brief is
silent with respect to the relatedness of the services.
However, applicant, during the prosecution of the application, argued that
registrant’s beauty pageant contestant services are “specifically for Chinese women”
and that consumers would distinguish the marks due to this limitation. It is
unclear whether applicant intended to continue this argument in her brief. In any
case, we are constrained to compare the services as they are identified in the
respective application and cited registration. Because there are no limitations as to
classes of consumers in the recitation of services of the cited registration or, for that
matter, in the recitation of services in applicant’s application, we must presume
that both applicant’s and registrant’s services will be offered in the same channels
of trade and to the same classes of purchasers. See In re Elbaum, 211 USPQ 639,
640 (TTAB 1981).
In view of the above, the du Pont factors of the relatedness of the services,
channels of trade and classes of consumers strongly favor a finding of likelihood of
confusion.
We turn then to the marks. In determining the similarity or dissimilarity
thereof, we must consider the marks in their entireties in terms of sound,
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appearance, meaning and commercial impression. See Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). As
applicant acknowledges, although the marks must be considered in their entireties,
it is well settled that one feature of a mark may be more significant than another,
and it is not improper to give more weight to this dominant feature in determining
the commercial impression created by the mark. See In re National Data Corp., 753
F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). For instance, “that a particular feature
is descriptive or generic with respect to the involved goods or services is one
commonly accepted rationale for giving less weight to a portion of a mark….” Id. at
224 USPQ at 751. Moreover, the test 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 their entireties that confusion as to the source of
the 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). Finally, we are mindful that where, as here, the
services are identical, the degree of similarity necessary to find likelihood of
confusion need not be as great as where there is a recognizable disparity between
the services. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85
USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Products Inc. v. Ing-
Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).
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Applicant maintains that the dissimilarity of the marks in their entireties as to
appearance, sound and connotation is the single determinative du Pont factor that,
even when considered apart from the other factors, unequivocally supports the
conclusion that there is no likelihood of confusion. Applicant specifically argues
that the examining attorney improperly dissected the cited mark and “effectively
simplified a relatively elaborate and intricate composite mark … into a single word
mark COSMOS – the smallest word in the whole applied-for composite mark.”
Applicant’s br. p. 6. Applicant further argues that the word COSMOS is not the
dominant portion of the cited mark.
We agree with applicant that the single word COSMOS does not dominate the
cited mark and, although maintaining his position that the marks are confusingly
similar in light of the common terms in the literal portions of the marks, the
examining attorney appears to have backed off from his former position.
Nonetheless, because both marks include the terms MISS and COSMOS, in the
same order, there are significant similarities in terms of sound, connotation and
commercial impression. The addition of the disclaimed terms CHINESE and
PAGEANT do not serve to distinguish the marks to avoid a likelihood of confusion.
The generic term PAGEANT, while not present in applicant’s mark, adds little to
the overall commercial impression as it merely identifies the type of services
provided under the mark. As regards the term CHINESE; it is defined, in relevant
part, as “a person of Chinese descent”3 or “of or relating to China or its peoples,

3 We take judicial notice of the definition of “Chinese” taken form the Merriam-Webster Online
Dictionary (11th ed.), and retrieved at www.merriam-webster.com on January 31, 2013. The Board may
take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co.,
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languages, or cultures.”4 Under these definitions, the word CHINESE, when used
with MISS and PAGEANT, may suggest a pageant featuring contestants of Chinese
descent or a pageant themed with the customs of the Chinese people. Even if we
were to assume that purchasers did note the difference in the marks because of the
words CHINESE and PAGEANT in the registered mark, in view of the strong
similarities stemming from the identical terms MISS and COSMOS, and in view of
the fact that the marks are used in connection with legally identical services,
purchasers are likely to believe that they are variants of each other and that they
identify services emanating from the same source. For example, the examining
attorney made of record the following third-party registrations for variant marks
owned by the same entity for pageant services: MISS UNIVERSE (Registration
No. 1182063); MISS UNIVERSE U.S. VIRGIN ISLANDS (Registration No.
3894421).5
We also find the “stylized design of a female figure” – which appears to be
dressed in an evening gown – insufficient to distinguish applicant’s mark from the
registrant’s mark. Although the design element is admittedly a prominent visual
element in the cited mark, it simply reinforces the pageant aura surrounding

213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online
dictionaries that exist in printed format or have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d
1375, 1377 (TTAB 2006).
4 The American Heritage Dictionary of the English Language [online edition], retrieved at
http://education.yahoo.com/reference/dictionary/entry/Chinese on January 31, 2013.
5 The pending applications having “UNIVERSE” variant marks have no persuasive value. They only
signify that such applications have been filed. In addition, we find the other four sets of registrations for
variant marks that the examining attorney placed into the record show common ownership of a variety of
marks for pageant services but otherwise are not analogous to the instant case because the marks vary by
gender, age and marital status as opposed to geographic origin or descent.

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registrant’s mark. Further, it is the literal portion MISS CHINESE COSMOS
PAGEANT that would be used by consumers when calling for or discussing
registrant’s services. Thus, it would make a greater impression on consumers and it
is the portion that is more likely to be remembered as the source-signifying portion
of applicant’s mark. See e.g., In re Appetito Provisions Co., Inc., 3 USPQ2d 1553
(TTAB 1987).
We also do not find the Chinese characters present in the cited registered mark
distinguishing. Consumers who are familiar with the written Chinese language
will understand the Chinese characters translate into the English language as
MISS CHINESE COSMOS PAGEANT, having the same connotation as the English
words. Consumers who are unfamiliar with the Chinese language are likely to view
the characters as nondescript decorative background elements.
Accordingly, while there are obvious dissimilarities in the appearance of the
respective marks, these differences are more than outweighed by the substantial
similarity in connotation and commercial impression.
Thus, the factor of the similarity of the marks favors a finding of likelihood of
confusion.
Applicant also maintains that the sophistication of the consumers significantly
favors a finding of no likelihood of confusion. That is, that the consumers are
sophisticated enough to distinguish the services of applicant and registrant. The
problem with this argument is that applicant has limited the “relevant” consumers
to beauty pageant and beauty contest participants and financial sponsors of beauty
pageants and contests. However, applicant has left out an entire class of consumer,
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namely members of the general public who would avail themselves of entertainment
component of both applicant’s and registrant’s services. When the relevant
consumers includes both professionals and members of the general public, the
standard of care for purchasing the services is that of the least sophisticated
purchaser. See Alfacell Corp. v. Anticancer, Inc., 71 USPQ2d 1301, 1306 (TTAB
2004). There is simply nothing on the record that supports a finding that members
of the general public are sufficiently sophisticated to distinguish the very similar
marks given their use on identical services.
Moreover, even if we assume, and we do not, that the purchasers of applicant’s
and registrant’s services are limited to discriminating consumers who are
sophisticated when it comes to their buying decisions, it is settled that even
sophisticated purchasers are not immune from source confusion. See In re Research
Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), citing Carlisle
Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110,
112 (CCPA 1970) (“Human memories even of discriminating purchasers ... are not
infallible.”). See also In re Decombe, 9 USPQ2d 1812 (TTAB 1988). The similarities
between the marks and identity of services offered thereunder outweigh any benefit
of sophisticated purchasing decisions. See HRL Associates, Inc. v. Weiss Associates,
Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL Associates,
Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and
marks outweigh sophisticated purchasers, careful purchasing decision, and
expensive goods). See also Refreshment Machinery Inc. v. Reed Industries, Inc., 196
USPQ 840, 843 (TTAB 1977) (selling to a sophisticated purchaser does not
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automatically eliminate the likelihood of confusion because “[i]t must also be shown
how the purchasers react to trademarks, how observant and discriminating they are
in practice, or that the decision to purchase involves such careful consideration over
a long period of time that even subtle differences are likely to result in recognition
that different marks are involved”). We thus find this du Pont factor is neutral.
Finally, we note that applicant cites to a number of precedential and non-
precedential decisions in its brief, as well as throughout the prosecution of the
application, to support her position that the marks are not confusingly similar.
While we acknowledge that our precedent provides guidance on applying the legal
principles governing the similarity/dissimilarity of marks, the Board must decide
each case on its own facts and record. In re Netts Design Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001); In re International Taste Inc., 53 USPQ2d
1604, 1606 (TTAB 2000). In this case, for the reasons explained above, we find the
marks confusingly similar.
In conclusion, after careful consideration of the arguments and all of the
evidence of record, even if not specifically addressed, we conclude that in view of the
substantial similarity of the marks, their contemporaneous use in connection with
identical services is likely to cause confusion as to the source or sponsorship of such
services. To the extent that any of applicant’s points raises a doubt about likelihood
of confusion, that doubt it required to be resolved in favor of the prior registrant. In
re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusal to register under Section 2(d) of the Trademark Act is
affirmed.