Ariel Remosv. Ariel Feierman

Trademark Trial and Appeal Board

Apr 17, 2001

OPP (T.T.A.B. Apr. 17, 2001)

4/17/01
Bottorff
Opposition No. 114,000
Ariel Remos
v.
Ariel Feierman
Before Quinn, Hairston and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark ARIEL, in typed form, for services recited in
the application as “entertainment services, namely, live
performances rendered by a musical group.”1 Opposer filed a
timely notice of opposition to registration of applicant’s
mark, alleging that opposer is the prior user of the mark
ARIEL in connection with musical entertainment services and
that applicant’s use of her mark in connection with her
recited services is likely to cause confusion. See
Trademark Act Section 2(d), 15 U.S.C. §1052(d). Applicant
1 Serial No. 75/476,262, filed April 29, 1998. In the
application, applicant alleges use of the mark since January 14,
1996, and use of the mark in commerce since April 1, 1996.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition No. 114,000
2
filed an answer by which she denied the allegations of the
notice of opposition which are essential to opposer’s claim.
This case now comes up on the parties’ cross-motions
for summary judgment as to opposer’s Section 2(d) claim.
The motions have been fully briefed.2 The evidence of
record on summary judgment includes: the file of the opposed
application; the pleadings; the two declarations of opposer
Ariel Remos and the exhibits attached thereto; the
declaration of opposer’s witness Cliff Walker and the
exhibits attached thereto; the declaration of applicant
Ariel Feierman and the exhibits attached thereto; the
declaration of applicant’s witness Robert Torsello and the
exhibits attached thereto; and the two declarations of
applicant's counsel Lana Fleishman and the exhibits attached
thereto. Applicant has objected to certain of opposer’s
documentary exhibits; those objections will be discussed
infra.
We have carefully considered all of the parties’
arguments and all of the evidence properly made of record,
including any arguments or evidence not specifically
discussed in this opinion. For the reasons discussed below,
we grant opposer’s motion for summary judgment and deny
2 Applicant’s objection to opposer’s sur-reply brief is well-
taken, and we have given that paper no consideration. See
Trademark Rule 2.127(e)(1).
Opposition No. 114,000
3
applicant’s cross-motion for summary judgment. See Fed. R.
Civ. P. 56(c).
Generally, summary judgment is appropriate in cases
where the moving party establishes that there are no genuine
issues of material fact which require resolution at trial
and that it is entitled to judgment as a matter of law.
Fed. R. Civ. P. 56(c). An issue is material when its
resolution would affect the outcome of the proceeding under
governing law. Anderson v. Liberty Lobby, Inc., 477 U.S.
242, 248 (1986). A fact is genuinely in dispute if the
evidence of record is such that a reasonable factfinder
could return a verdict in favor of the nonmoving party. Id.
When the moving party’s motion is supported by evidence
sufficient, if unopposed, to indicate that there is no
genuine issue of material fact, and that the moving party is
entitled to judgment, the nonmoving party may not rest on
mere denials or conclusory assertions, but rather must
proffer countering evidence, by affidavit or as otherwise
provided in Fed. R. Civ. P. 56, showing that there is a
genuine factual dispute for trial. See Fed. R. Civ. P.
56(e); Copelands’ Enterprises Inc. v. CNV Inc., 945 F.2d
1563, 20 USPQ2d 1295 (Fed. Cir. 1991); Octocom Systems Inc.
v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d
1783 (Fed. Cir. 1990). In deciding a motion for summary
judgment, the Board may not resolve an issue of fact; it may
Opposition No. 114,000
4
only determine whether a genuine issue of material fact
exists. See Meyers v. Brooks Shoe Inc., 912 F.2d 1459, 16
USPQ2d 1055 (Fed. Cir. 1990). The nonmoving party must be
given the benefit of all reasonable doubt as to whether
genuine issues of material fact exist, and the evidentiary
record on summary judgment, and all inferences to be drawn
from the undisputed facts, must be viewed in the light most
favorable to the nonmoving party. See Opryland USA, Inc. v.
Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d
1471 (Fed. Cir. 1992); Olde Tyme Foods Inc. v. Roundy's
Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
There is no genuine issue of material fact that opposer
is the owner of application Serial No. 75/477,155, by which
he seeks registration of the mark ARIEL for “entertainment
in the nature of a live or recorded performing musical
group,” or that applicant’s prior-filed application has been
cited against opposer’s application as a potential Section
2(d) bar to registration of opposer’s mark. In view
thereof, we find that opposer has standing to oppose
registration of applicant’s mark in this proceeding. See
Hartwell Co. v. Shane, 17 USPQ2d 1569 (TTAB 1990).
We turn next to the question of priority, which is an
issue in this case because opposer does not own an existing
registration upon which he can rely under Section 2(d).
Distinguish, e.g., King Candy Co., Inc. v. Eunice King’s
Opposition No. 114,000
5
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). To
establish his priority under Section 2(d), opposer must
prove that, vis-à-vis applicant, he owns “a mark or trade
name previously used in the United States… and not
abandoned….”
There is no dispute that the date of applicant’s first
use of her mark, and the earliest date upon which she can
rely for purposes of priority, is January 14, 1996.
Accordingly, opposer’s Section 2(d) priority claim requires
proof that opposer owns a mark or trade name used in the
United States prior to January 14, 1996 and not abandoned.
In his first summary judgment declaration, opposer
Ariel Remos avers as follows, in pertinent part:
1. My name is Ariel Remos and I am the
leader of a four person club band called “Ariel.”
I sing lead vocals, play keyboard and drums and
write, arrange and produce all our original songs.
2. I began to use the mark “Ariel” for the
band on December 12, 1981.
3. The band originally began playing in
South Florida nightclubs and in festivals
throughout the southeast. We now play throughout
the country, in the Caribbean and in Central
America. The band has been featured on “CBS This
Morning” and on the Univision and Telemundo
Spanish Television Networks. I have continued to
use the mark “Ariel” throughout the United States
for the band since 1981. In addition, I am
creating a Web site under the name “ariel-
band.com” to market the band on the Internet. I
currently use it and have never abandoned it.
Opposition No. 114,000
6
4. We have recently finished our first album
in both Spanish and English which will be
distributed worldwide under the “Ariel” mark.
5. On January 8, 1991 I registered the
trademark “Ariel” for Entertainment Services in
the nature of a musical group.
6. My registration was cancelled on July 14,
1997 for failure to file a Section 8 Affidavit.
7. I applied to reregister the mark on April
30, 1998.
8. I first learned of Applicant’s use of the
mark “Ariel” when its application was cited
against mine on February 1, 1999.
In his second summary judgment declaration, submitted
with his response to applicant’s cross-motion for summary
judgment, opposer Ariel Remos avers as follows, in pertinent
part:
1. My name is Ariel Remos and I am the
leader of a four-person club band called “Ariel.”
The band’s name encompasses and refers to all the
members of the band. It has also become
associated with the type of high energy performing
we do. As the band’s leader I handle most of the
financial matters, the advertising and promotion
for the band’s performances and some of the
booking of the band myself.
2. In addition, the band has several booking
agents who book the band and also handle
advertising and promotion of the band always under
the “Ariel” mark. These include Walker
Entertainment, Fantasma, Deco Productions,
Southern Nights, Adam Productions, and Vega
(Louisiana) (See Declaration of Cliff Walker).
3. Since 1981, I estimate that we have spent
approximately $5,000.00 per year on advertising
and promotion of the band under the trademark
“Ariel.” Unfortunately, I have not saved copies
Opposition No. 114,000
7
of many of the materials that have accompanied our
performances over the years or retained many old
records. It has consisted in the past and now
consists of yellow pages advertising, press
releases and promotional flyers, distribution of
business cards and correspondence on Ariel
stationery.
4. Since the band was formed in 1981, the
band has averaged one hundred and four (104) dates
or two dates a week a year including 1995, 1996,
1997, 1998, 1999 and 2000. We play at hotels, on
cruise ships, in clubs and restaurants, at Disney
World, at corporate events, and at country clubs.
We have performed in music festivals, on English
and Spanish television, in Las Vegas, New Orleans,
Nashville and San Antonio as part of a national
tour for the television program “Entertainment
U.S.A.” in 1993. At all performances, the “Ariel”
mark is prominently displayed.
5. Total sales from entertainment services
have ranged from $30,000.00 to $100,000.00 a year.
6. The band is well known in Miami and the
Southeast by the “Ariel” mark.
7. We have begun distributing worldwide our
first CD under the “Ariel” mark.
8. Performing with the band “Ariel” has been
my only job since the early 90’s. It’s the only
work I do. It pays my rent. It supports my
family. I intend to continue writing, playing and
performing as long as possible.
Opposer also has submitted the declaration of Cliff
Walker, who avers as follows, in pertinent part:
2. My company, Walker Entertainment, Inc.
has represented the band Ariel since 1983 as its
booker and promoter. Since that time I have
booked the band in approximately two to ten venues
a year from 1983 to the present. In addition, I
am responsible for providing information regarding
the entertainment services of the band Ariel to
potential venues and engagements.
Opposition No. 114,000
8
3. Upon request, I provide to potential
venues promotional materials, flyers, and direct
mails. The materials are all provided under the
“Ariel” trademark.
4. I have most recently booked entertainment
services under the mark “Ariel” to the Sunfest
Festival held May 3-7, 2000 in West Palm Beach,
Florida. The Sunfest Festival is Florida’s
largest music, art and waterfront festival drawing
300,000 people. The performance by the band was
held under a prominently displayed “Ariel” mark.
5. I also refer potential bookings to the
“ariel-band.com” Web site for information
regarding the band.
We find that the averments contained in these
declarations are sufficient, if unopposed, to establish that
opposer has used ARIEL as a mark for his musical
entertainment services since a date prior to applicant’s
first use of the mark in January 1996, and that opposer’s
use of the mark has not been abandoned.
Applicant has not presented any counter-declarations or
other evidence which rebuts the factual averments made in
opposer’s declarations, nor has applicant identified any
genuine issue of material fact with respect to those
averments. Instead, applicant argues that the declarations
submitted by opposer are entitled to no probative weight on
the question of opposer’s use and priority because they
contain certain alleged internal contradictions which render
the declarations untrustworthy in their entireties, and
because opposer allegedly has failed to present sufficient
Opposition No. 114,000
9
corroborating documentation for all of the averments made in
the declarations. We disagree.
Regarding the alleged internal contradictions in the
declarations, applicant first contends (at page 4 of her
reply brief) that “[i]n his Second Declaration, Opposer
claims that he handles the advertising and promotion for the
band’s performances. (Remos Second Dec. ¶ 1). Opposer then
claims that booking agents are actually responsible for the
band’s advertising and promotional activities.” However, in
paragraphs 1-2 of his second declaration, opposer actually
avers as follows: “As the band’s leader I handle most of the
financial matters, the advertising and promotion for the
band’s performances and some of the booking of the band
myself. In addition, the band has several booking agents
who book the band and also handle advertising and promotion
of the band always under the ‘Ariel’ mark.” (Emphasis
added.) Thus, opposer states that he handles “most of” the
advertising and promotion for the band, in addition to
several booking agents who “also” handle the advertising and
promotion. These statements are not contradictory.3
3 To arrive at her conclusion that the statements in ¶¶ 1 and 2
of opposer’s second declaration are contradictory, applicant
apparently construes opposer’s statement (in ¶ 1 of his
declaration), i.e., “I handle most of the financial matters, the
advertising and promotion for the band’s performances and some of
the booking of the band myself,” such that the words “most of”
modify only the words “the financial matters” and not the words
“the advertising and promotion.” Another valid construction,
however, and one which is more likely to be correct because it
allows ¶¶ 1 and 2 to be read together without contradiction, is
Opposition No. 114,000
10
Likewise, and contrary to applicant’s contention, there
is no contradiction between opposer’s statement (in ¶ 4 of
his second declaration) that “the band has averaged one
hundred and four (104) dates or two dates a week a year,”
and Mr. Walker’s statement (in ¶ 2 of his declaration) that
he has “booked the band in approximately two to ten venues a
year.” As is apparent from ¶¶ 1-2 of Mr. Remos’ second
declaration, Mr. Walker is not the only booking agent for
opposer’s band. Opposer handles some of the booking
himself, and the band also engages several other booking
agents in addition to Mr. Walker. Thus, the fact that Mr.
Walker books opposer’s band for two to ten dates per year is
not inconsistent with Mr. Remos’ assertion that the band
plays 104 dates per year.
In short, applicant’s contentions regarding the alleged
internal contradictions in opposer’s declarations are not
borne out by the declarations themselves. We are not
persuaded by applicant’s argument that the declarations as a
whole should be disregarded on account of the alleged
contradictions.
Applicant also argues that the three declarations
submitted by opposer should be disregarded in their
entireties because the averments contained therein (as to
the details of the nature, duration and extent of opposer’s
that the words “most of” modifies both “the financial matters”
Opposition No. 114,000
11
advertising and sale of his services under his mark) are not
adequately corroborated by admissible, probative documentary
evidence. For the reasons discussed below, we disagree.
Among the documentary exhibits to Mr. Remos’ two
declarations and to Mr. Walker’s declaration are photocopies
of programs, invitations, tickets and advertisements
pertaining to various events and functions at which
performances by opposer and his band were the featured
musical entertainment.4 These documents, which were
prepared and distributed by the third-party sponsors of such
events and functions, include, in chronological order of
performance:
(1) invitation to the April 30, 1988 Florida
Customs Brokers and Forwarders Association “Gala
Installation Banquet” in Miami, Florida, which
states “Music by ‘Ariel’”;
(2) invitation to the November 17, 1990 Cuban
American National Foundation “Gala Dinner Dance”
in Miami, Florida, which states “Music by Ariel”;
(3) ticket to the February 2, 1991 “LBA”
benefit event in Miami, Florida, which states
“Music by: Ariel”;
and “the advertising and promotion.”
4 As discussed infra, we find that these third-party documents
are sufficient to corroborate and establish opposer’s claim of
prior, non-abandoned use of his mark. Opposer has submitted
various other documents as well, to which applicant has objected
on various grounds. In general, we are not persuaded by
applicant’s objections. However, because we find that opposer’s
priority claim is sufficiently established by the documents
discussed in the text of this opinion, we need not and do not
base our decision on these other documents of opposer’s, nor do
we rule specifically on applicant’s objections thereto.
Opposition No. 114,000
12
(4) program for the February 8, 1991 St.
Thomas the Apostle “Eighth Annual Dinner Dance” in
Key Biscayne, Florida, which states “Music by
Ariel”;
(4.A) ticket to the same February 8, 1991 St.
Thomas the Apostle Dinner Dance, which states
“Music by: Ariel”;
(5) program for the March 7, 1992 Saint
Patrick School “Gala Dinner Dance” (location
undisclosed) which states “Music by Ariel”;
(6) ticket to the May 14, 1994 “Baptist
Hospital Ball” in Miami, Florida, which states
“Dancing to Music by Varon and Ariel”;
(7) invitation to the April 27, 1996 Florida
Customs Brokers & Forwarders Association “Gala
Installation Banquet” in Miami, Florida, which
states “Music by ‘Ariel’”;
(8) newspaper advertisement for the December
31, 1997 Doral Golf Resort and Spa “New Year’s Eve
Gala” in Miami, Florida, which states “Dance the
Night Away with Renowned 6 pc. Band “Ariel”;
(9) program for the 1998 Asociacion
Latinoamericana “Latin Fever Ball” in Atlanta
(Buckhead), Georgia, which states “Dancing
throughout the evening to the sound of Ariel”; and
(10) Sunfest 2000 advertisement depicting the
“Performance Schedule” for Saturday May 6, 2000,
which includes a listing for a performance by
“Ariel.”
Applicant has not contended, nor has she presented any
evidence which would suggest, that opposer and his band did
not actually render musical performances at the events and
functions identified in the above-referenced third-party
documents. Instead, applicant asserts various evidentiary
arguments against the admissibility of certain of the
Opposition No. 114,000
13
documents, and various legal arguments for the proposition
that none of the documents establish that opposer has any
service mark or other proprietary rights in ARIEL.
We turn first to a consideration of applicant’s
evidentiary objections to certain of the above-referenced
documents. Specifically, applicant has objected to the
admissibility of the above-numbered documents (3), (4.A),
(6), (7), and (9), which were attached as Exhibit Nos. 2(a)-
(d) to Mr. Remos’ second declaration.5 Applicant objects
to these documents under Fed. R. Evid. 403, on the ground
that they are merely cumulative of the documents which were
attached to the first Remos declaration and are accordingly
a waste of time. The objection is overruled. These
additional documents, even if cumulative, are not so
numerous as to be wasteful of the parties’ or the Board’s
time and efforts.
Applicant also objects to these documents under Fed. R.
Evid. 901, on the ground that they are not properly
authenticated. This objection is overruled. Applicant has
not contended that these documents were manufactured or
fabricated by opposer. Indeed, as applicant herself has
5 Applicant raised no specific evidentiary objections to the
admissibility of above-numbered documents (1), (2), (4), (5), (8)
and (10), and any such objections to those documents are deemed
waived. See Fed. R. Evid. 103(a). Applicant’s various
substantive legal arguments regarding the probative value of all
of the above-referenced documents (Nos. (1)-(10)) will be
discussed below.
Opposition No. 114,000
14
argued, these documents were independently prepared and
distributed by third parties, not by opposer. Any technical
defect in the manner in which opposer introduced and
authenticated these documents via his declaration is not
dispositive, inasmuch as there simply exists no basis in the
record for concluding that these documents are other than
what they appear to be. See Fed. R. Evid. 901(a) and
901(b)(4).
Finally, applicant has objected to documents (3),
(4.A), (6), (7), and (9) under Fed. R. Evid. 401 and 402, on
the ground that they are not relevant to this action. This
evidentiary objection is premised on applicant’s substantive
legal arguments regarding the alleged lack of probative
value of all of the above-referenced third-party documents.
For the reasons discussed below, we reject applicant’s
substantive legal arguments; we accordingly also overrule
applicant’s relevancy objections which are based on those
arguments.
Applicant’s first substantive argument is that none of
the above-referenced documents are evidence of service mark
use of ARIEL by opposer because they were not created or
distributed by or on behalf of opposer for the purpose of
advertising or promoting opposer’s entertainment services to
prospective purchasers of those entertainment services,
i.e., to those who might engage opposer to provide musical
Opposition No. 114,000
15
entertainment services. Rather, the documents are
advertisements, programs, invitations and tickets which were
created and distributed by the various third-party
organizations and sponsors themselves, to advertise and
promote their own hotel, banquet, school dance and
restaurant services to their members and/or to the general
public. According to applicant, the designation ARIEL, as
it appears in the documents, is not used as a service mark
by opposer; rather, it is used by the third parties in a
merely informational sense, to identify the musical
entertainment the third parties are presenting as part of
their hotel, banquet, school dance and restaurant services.
We are not persuaded by this argument. Applicant cites
no case law or statutory authority which supports her
contention that these documents must be disregarded as
evidence of opposer’s use of the mark ARIEL merely because
they were created and distributed by the third parties,
rather than by opposer.6 Indeed, applicant herself has
submitted and relies upon numerous documents of exactly the
same type as evidence of her use of her own mark. On their
face, opposer’s documents show that opposer was engaged by
the various third parties to provide musical entertainment
6 Applicant cites to TMEP §1304.01, which sets forth a non-
exclusive list of types of documents which are acceptable as
specimens in service mark applications. That section is not
apposite to or dispositive of the priority dispute in this
opposition proceeding.
Opposition No. 114,000
16
services under the mark ARIEL at the identified events and
functions. There is no basis in the record for concluding
that opposer and his band did not, in fact, render musical
entertainment services under the mark at those events and
functions. The fact that the advertisements were prepared
and distributed by third parties rather than by opposer is
inconsequential.
Applicant’s second substantive argument with respect to
these third-party documents submitted by opposer is that the
designation ARIEL is used in these documents solely to
identify opposer personally, and not as a service mark for
opposer’s entertainment services. We disagree. The
newspaper advertisement for the Doral New Year’s Eve Gala
(document no. (8) above) specifically refers to the
“Renowned 6 pc. Band ‘Ariel.’” Likewise, there is no
reasonable basis in the record for inferring that the other
documents, when they use the designation ARIEL, are
referring to opposer personally, rather than to the band.
In summary, we find that the above-referenced documents
establish that opposer and his band were engaged to render,
and did render, live musical performances under the mark
ARIEL in 1988, 1990, 1991, 1992, 1994, 1996, 1997, 1998 and
2000. We find that the averments in opposer’s summary
judgment declarations regarding opposer’s prior use and non-
Opposition No. 114,000
17
abandonment of the mark have been corroborated, at least to
that extent.7 Taken together, the documents and the
declaration averments are sufficient to establish opposer’s
Section 2(d) priority in this case.
Applicant makes two other arguments with respect to the
priority issue which require comment. First, applicant has
cited various authorities in support of the proposition that
personal name marks, such as opposer’s, are merely
descriptive and not entitled to protection absent a showing
of secondary meaning. However, applicant has not cited to
any prior decisions of the Board or of its primary reviewing
court in which this proposition has been stated or followed,
and we are aware of no such decisions. For the reasons
discussed below, we are not persuaded that we should follow
the authorities cited by applicant on this issue.
A personal name mark, unless it is primarily merely a
surname, is registrable on the Principal Register without a
showing of secondary meaning, and thus is deemed to be
inherently distinctive under the Lanham Act. Indeed,
applicant’s own mark ARIEL, which is also applicant’s
personal name, was not refused registration as merely
7 It is not dispositive that opposer’s documents do not
corroborate each and every detailed averment made in opposer’s
declarations, i.e., as to the specific dollar amounts of
opposer’s sales and advertising, or as to the geographic scope of
opposer’s use of the mark. Opposer need not substantiate each of
those specific averments in order to establish his Section 2(d)
priority, vis-à-vis applicant.
Opposition No. 114,000
18
descriptive, and was forwarded to publication by the Office
without any requirement for a showing of acquired
distinctiveness. We see no logical basis for holding that a
personal name mark which is inherently distinctive for
registration purposes must nonetheless be shown to have
acquired secondary meaning before it can be relied upon by
an opposer in an opposition proceeding. Thus, we reject
applicant’s argument regarding opposer’s alleged failure to
establish secondary meaning in his mark.
Applicant also argues that she is entitled to an
“adverse inference,” and to dismissal of the opposition, due
to opposer’s alleged failure, despite the pendency of this
proceeding, to retain discoverable documents. Applicant
cites Supreme Oil Co. v. Lico Brands, Inc., 39 USPQ2d 1695
(TTAB 1996) in support of this argument. However, Supreme
Oil Co. involved a fully-briefed motion for discovery
sanctions under Fed. R. Civ. P. 37. No such motion was
filed by applicant in this case; rather, the request for an
adverse inference was raised by applicant for the first time
in her reply brief. Opposer has had no opportunity to
respond on the merits of applicant’s request. In view
thereof, we deny applicant’s request for an unspecified
“adverse inference” and her request for dismissal based
thereon.
Opposition No. 114,000
19
Having found that opposer has established his priority
for purposes of Section 2(d), we turn now to the issue of
likelihood of confusion. Our likelihood of confusion
determination 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 any likelihood of confusion analysis, two
key considerations are the similarities between the
respective marks and the similarities or relatedness of the
respective goods and/or services. See Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976).
There is no genuine issue of material fact that
applicant’s mark and opposer’s mark are identical, i.e.,
ARIEL. There also is no genuine issue of material fact that
applicant’s services, as recited in the application, are
legally identical to opposer’s services. In view of the
absence of any limitations or restrictions in applicant’s
recitation of services, the purported differences in the
parties’ respective musical styles are immaterial.
Likewise, we must presume from the absence of restrictions
in applicant’s recitation of services that applicant’s
services are offered in all normal trade channels and to all
normal classes of purchasers for such services, including
Opposition No. 114,000
20
the trade channels and classes of purchasers in which and to
whom opposer offers his legally identical services. See In
re Elbaum, 211 USPQ 639 (TTAB 1981). There is no evidence
of any use by third parties of similar marks for similar
services. These du Pont factors, as to which there are no
genuine issues of material fact, all weigh heavily in favor
of a finding of likelihood of confusion in this case.
The only du Pont factor which appears to favor
applicant is the absence of evidence of actual confusion.
However, we cannot conclude that the nature and extent of
the parties’ respective uses of their marks, to date, have
been such that the absence of actual confusion should be
accorded any significant weight in our likelihood of
confusion analysis. See Gillette Canada Inc. v. Ranir
Corp., 23 USPQ2d 1768 (TTAB 1992). Certainly, that single
factor is insufficient to overcome the numerous other du
Pont factors which, as discussed above, clearly weigh in
favor of a finding of likelihood of confusion.
In summary, we find that there are no genuine issues of
material fact as to any of the du Pont likelihood of
confusion evidentiary factors. Having carefully considered
all of the evidence of record as to those factors, we find
that a likelihood of confusion exists. Having also found
that no genuine issues of material fact exist with respect
to opposer’s standing and his Section 2(d) priority, we
Opposition No. 114,000
21
conclude that opposer is entitled to judgment as a matter of
law on his Section 2(d) claim. Therefore, we grant
opposer’s motion for summary judgment, and deny applicant’s
cross-motion for summary judgment.
Decision: The opposition is sustained.