Antonis Karagounis and Panagiotis Kalamoutsos

Trademark Trial and Appeal Board

Jun 10, 2013

No. 85347617 (T.T.A.B. Jun. 10, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
June 10, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Antonis Karagounis and Panagiotis Kalamoutsos
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Serial No. 85347617
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Kurosh Nasseri of Law Offices of Kurosh Nasseri PLLC for Antonis Karagounis and
Panagiotis Kalamoutsos

Shaunia Carlyle, Trademark Examining Attorney, Law Office 110 (Chris A.F.
Pedersen, Managing Attorney).
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Before Holtzman, Adlin and Gorowitz, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Antonis Karagounis and Panagiotis Kalamoutsos (“applicants”) seek
registration of the mark GLOW RECORDINGS, in standard characters and with
RECORDINGS disclaimed, for “musical sound recordings and audio-visual
recordings, namely, pre-recorded phonograph records, audio cassettes, compact
discs, digital video discs, and digital audio files, all featuring music” in
International Class 9.1

1 Application Serial No. 85347617, filed June 16, 2011 based on an intent to use the
mark in commerce.
Serial No. 85347617
2

The examining attorney refused registration of the mark under Section 2(d)
of the Act, on the ground that applicants’ mark, when used in connection with
applicants’ goods, so resembles the previously-registered mark shown below

for, inter alia, “Pre-recorded CD’s, video tapes, laser disks and DVD’s featuring
original music composition and music video”2 as to be likely to cause confusion.
After the refusal was made final, applicants appealed, and applicants and the
examining attorney filed briefs. We affirm the refusal to register.
Analysis
Our determination under Section 2(d) is based on an analysis of all 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

2 Registration No. 3195728, issued January 9, 2007 from an application filed March 1,
2005 (Section 8 affidavit accepted). The registration includes the following description:
“The mark consists of ‘GLOW’ and ‘God lead our way’ wordings, one dividing line, and a
sphere;” and the following color claim: “The color GRAY appears in the ‘W’ in the word
‘Glow’, in the outline of the ‘G’, and in the wording ‘God Lead Our Way’; the color WHITE
appears in the ‘G’ in the word ‘Glow’; the color ORANGE appears in the ‘LO’ in the word
‘Glow’ and in the line separating ‘Glow’ and ‘God Lead Our Way’; the color BLACK appears
in the outline of the ‘O’, ‘G’, and ‘W’ in the word ‘Glow’.” In addition to the goods listed
above, the registration is for “Song book” and “Distribution of publicity materials flyers,
brochures particularly for catalogue long distance sales, whether crossborder or not.”
Serial No. 85347617
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key considerations are the similarities between the marks and the similarities
between the goods and/or 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.”). We discuss each of the
du Pont factors concerning which applicants or the examining attorney submitted
argument or evidence. To the extent that any other du Pont factors for which no
evidence or argument was presented may nonetheless be applicable, we treat them
as neutral.
In their appeal brief, “applicants concede that their International Class 9
goods and the registrant’s International Class 9 goods are similar.” Applicants’
Appeal Brief at 2. In fact, applicants’ Class 9 goods, which include pre-recorded
compact discs and digital video discs featuring music, are legally identical to
registrant’s Class 9 goods, which also include pre-recorded compact discs and digital
video discs featuring original music composition and music video.
Furthermore, because the goods are legally identical, and neither applicants’
nor registrant’s identification of goods includes any limitation with respect to
consumers or channels of trade, we presume that the goods move in the same
channels of trade and are sold to the same classes of consumers. See American
Lebanese Syrian Associated Charities, Inc. v. Child Health Research Institute, 101
USPQ2d 1022, 1028 (TTAB 2011); In re Smith and Mehaffey, 31 USPQ2d 1531,
1532 (TTAB 1994) (“Because the goods are legally identical, they must be presumed
Serial No. 85347617
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to travel in the same channels of trade, and be sold to the same class of
purchasers.”); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); see also In re Viterra
Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there
was no evidence regarding channels of trade and classes of consumers, the Board
was entitled to rely on this legal presumption in determining likelihood of
confusion). These factors both weigh in favor of a finding of likelihood of confusion,
the legal identity of the goods heavily.
As for the marks, we must 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). That is,
we may not dissect the marks into their various components. In re Nat’l Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint
Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981). 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 terms of their
overall commercial impression so that confusion as to the source of the goods and
services offered under the respective marks is likely to result. San Fernando Elec.
Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA
1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991).
The focus is on the recollection of the average purchaser, who normally retains a
Serial No. 85347617
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general rather than a specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Of course, one feature of a mark may be more significant than another, and it
is not improper to give more weight to the dominant feature of a mark in
determining its commercial impression. In re Nat’l Data Corp., 224 USPQ at 751
(“There is nothing improper in stating that, for rational reasons, more or less weight
has been given to a particular feature of a mark, provided the ultimate conclusion
rests on consideration of the marks in their entireties. Indeed, this type of analysis
appears to be unavoidable.”); Price Candy Co. v. Gold Medal Candy Corp., 220 F.2d
759, 105 USPQ 266, 268 (CCPA 1955).
In this case, the dominant element of both applicants’ mark and the cited
mark is the word GLOW. Indeed, applicants’ goods are “recordings,” and applicants
have disclaimed the word RECORDINGS which therefore has little significance in
our likelihood of confusion determination. Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“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.’”) (quoting In re Nat’l
Data, 224 USPQ at 752); In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1533-34 (Fed. Cir. 1997); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009)
(BINION’S, not disclaimed word ROADHOUSE, is dominant element of BINION’S
ROADHOUSE); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001)
Serial No. 85347617
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(disclaimed matter is often “less significant in creating the mark’s commercial
impression”).
As for registrant’s mark, GLOW is significantly larger than the remaining
elements of the mark, and it is effectively highlighted by the claimed orange color of
the letters “LO.” Moreover, GLOW appears first in registrant’s mark, as it does in
applicants’, further establishing that it is the dominant element of both marks.
Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is
often the first part of a mark which is most likely to be impressed upon the mind of
a purchaser and remembered”); Palm Bay Imports Inc., 73 USPQ2d 1692; Century
21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1701 (Fed. Cir. 1992). Finally, our cases “reflect the principle that if a mark
comprises both a word and a design, the word is normally accorded greater weight
because it would be used by purchasers to request the goods or services.” M.C.I.
Foods, Inc. v. Brady Bunte, 96 USPQ2d 1544, 1551 (TTAB 2010); see also, CBS, Inc.
v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983) (“in a composite
mark comprising a design and words, the verbal portion of the mark is the one most
likely to indicate the origin of the goods to which it is affixed”); In re Appetito
Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); Katushiki Kaisha Hattori
Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB 1985).
Applicants argue that the words “God lead our way” are sufficient to
distinguish the cited mark from their mark. We disagree. Not only are those words
significantly smaller and less prominent than the dominant word GLOW, but
Serial No. 85347617
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consumers encountering applicants’ mark would be likely to view it as a version or
perhaps an abbreviation of the cited mark, which simply omits the explanatory
slogan or phrase “God lead our way,” especially because the parties’ goods are
identical. Relatedly, it is settled that because applicants seek registration of their
mark in standard character format, that mark could be displayed in any lettering
style, color or font; in fact, applicants’ rights would reside in the wording or other
literal elements and not in any particular display. Applicants would therefore be
free to display their mark much as registrant displays its mark, heightening the
likelihood of confusion.3 Viterra, 101 USPQ2d at 1909; Citigroup Inc. v. Capital
City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011)
and In re Strategic Partners Inc., 102 USPQ2d 1397, 1399 (TTAB 2012).
In short, while we do not ignore the impact that “God lead our way” has on
the way the cited mark looks and sounds, or its meaning, because the dominant
element of applicants’ mark is essentially identical to the dominant element of the
cited mark, we find that the parties’ marks are similar when considered in their
entireties. This factor therefore also weighs in favor of a finding of likelihood of
confusion.
Conclusion

3 According to applicants, “it is difficult to conceive why the applicants would ever
fashion ‘glow recordings’ in a way likely to cause confusion as to source with ‘glow God lead
our way’ and its distinct design element. It simply defies logic …” While it may be difficult
to conceive why applicants would display their mark in such a manner, that is simply
irrelevant. See, Citigroup Inc., 637 F.3d at 1344, 98 USPQ2d at 1258-59.
Serial No. 85347617
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Where, as here, the applicants’ and registrant’s goods are legally identical,
the degree of similarity between the marks necessary to find likelihood of confusion
need not be as great as where there is a disparity between the goods. Shen Mfg. Co.
v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); Century
21, 970 F.2d at 874, 23 USPQ2d at 1701; Jansen Enterprises, Inc. v. Rind and
Stone, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Products,
Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007). With this principle in
mind, we have considered all of the evidence of record as it pertains to the relevant
du Pont factors, including applicants’ arguments and evidence, even if not
specifically discussed herein. In view of our findings that the goods are identical
and the channels of trade unlimited, and the marks share a dominant element and
create similar overall commercial impressions, we find that use of applicants’ mark
would be likely to cause confusion with the cited registered mark as applied to
registrant’s goods. To the extent that applicants’ arguments raise any doubt
concerning the likelihood of confusion, we resolve any such doubt in registrant’s
favor. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir.
1988); In re Martin’s Famous Pastry Shoppe, 223 USPQ at 1290.
Decision: The examining attorney’s refusal to register applicants’ mark
under Section 2(d) of the Act is affirmed.