Artlife Gallery LLC

Trademark Trial and Appeal Board

Jul 26, 2021

87813535 (T.T.A.B. Jul. 26, 2021)

Mailed: July 26, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re Artlife Gallery LLC
_____
Serial No. 87813535
_____
Shahin Karimian of Karimian Law Group
for Artlife Gallery LLC.

Lyal Fox, Trademark Examining Attorney, Law Office 113,
Myriah Habeeb, Managing Attorney.
_____
Before Zervas, Shaw and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Applicant Artlife Gallery LLC seeks registration of the mark shown below

(ART disclaimed) for: “adult picture books” in International Class 16; “retail store
services for works of art provided by art galleries” in International Class 35; and “art
exhibitions of pictures, paintings, drawings and sculptures” in International Class
This Opinion is Not a
Precedent of the TTAB
Serial No. 87813535
2
41.1 Ultimately, the Examining Attorney refused registration in each class under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s
mark so resembles the following separately-owned registered marks:
ARTLIFE, in standard characters, for “educational
services, namely, conducting programs and events in the
field of visual arts, dance, theater, music, literary and film
arts” in International Class 41;2 and

BAYOU ART LIFE, in standard characters (BAYOU ART
disclaimed), for “children’s storybooks” in International
Class 16 and “works of art made of wood” in International
Class 203

that it is likely to cause confusion. She also maintained her refusal to accept
Applicant’s proposed amendment to its identification of goods in Class 16. After the
refusals became final, Applicant appealed and Applicant and the Examining Attorney
filed briefs.4

1 Application Serial No. 87813535, filed February 27, 2018 under both Section 1(a) of the
Trademark Act based on use of the mark in some classes, and Section 1(b) of the Act based
on an alleged intent to use the mark in other classes. During prosecution, some of the
originally-identified goods and services were deleted or amended, certain classes were deleted
and the filing basis was changed in others. The application now encompasses the goods and
services listed above, and is based on Section 1(b) of the Act for the goods in Class 16, and
Section 1(a) of the Act for the services in Classes 35 and 41. The application includes this
description of the mark: “The mark consists of the stylized wording ‘ART’ followed by the
stylized wording ‘LIFE’ with a vertical bar between.”
2 Registration No. 3212807, issued February 27, 2007; renewed.
3 Registration No. 5492824, issued June 12, 2018.
4 The Examining Attorney’s objection to the new evidence Applicant attached to its Appeal
Brief is sustained. Trademark Rule 2.142(d) (“The record in the application should be
complete prior to the filing of an appeal. Evidence should not be filed with the Board after
the filing of a notice of appeal.”).
Serial No. 87813535
3
I. Issues Not Appealed, Or Not Addressed On Appeal
Before reaching the merits, we should point out that Applicant’s January 21, 2021
Notice of Appeal, 1 TTABVUE5, only covers the refusal to register in Class 41.
Specifically, the Notice of Appeal states “The refusal to register has been appealed as
to the following class of goods/services: − Class 041 ….” In fact, Applicant only paid
the required fee for that one class. Id.6 However, in its Appeal Brief, Applicant
claimed that it is “appealing from the likelihood of confusion issue regarding class 41
and class 35,” and paid the required fee for filing an appeal brief in two classes, 35
and 41. 4 TTABVUE 5. In her Appeal Brief, the Examining Attorney stated that
Applicant “broadened the scope of the appeal to include the Section 2(d) refusal in
International Class 035 as well.” 6 TTABVUE 5.
However, Applicant did not mention or pay the fee for appealing the Class 16
refusals, either in its Notice of Appeal or thereafter. As the Examining Attorney
points out, Applicant “did not address the Section 2(d) [refusal] with respect to the
Class 16 goods or the impermissible identification amendment as part of its brief.”
Id.

5 In citations to the Board’s online docketing system, TTABVUE, the number preceding
“TTABVUE” corresponds to the docket entry number(s), and any number(s) following
“TTABVUE” refer to the page number(s) of the docket entry where the cited materials appear.
6 Applicant stated in its brief that it “would like to inform that is (sic) paying late fees for the
appeal in class 35 because [Applicant’s] attorney had health issue complications when the
deadline for the appeal was due ….” 4 TTABVUE 5. The additional fee was never paid.
Serial No. 87813535
4
Furthermore, Applicant’s Appeal Brief only addresses the Section 2(d) refusal
based on cited Registration No. 3212807. Applicant has not addressed the Section
2(d) refusal based on cited Registration No. 5492824 in its Appeal Brief.
Accordingly, Applicant has waived its right to appeal with respect to: the Section
2(d) refusal to register Applicant’s mark in Class 16; the Examining Attorney’s
refusal to accept Applicant’s proposed amendment to its Class 16 goods; and the
Section 2(d) refusal to register Applicant’s mark in Classes 16 and 35 based on cited
Registration No. 5492824. Thus, the appeal is dismissed with respect to the refusals
to register based on cited Registration No. 5492824; and the refusals relating to
Applicant’s Class 16 goods. In re Rainier Ent., LLC, 2019 USPQ2d 463361 *2-3 (TTAB
2019). Cf. In re Heather Harley and Carolyn Jones, 119 USPQ2d 1755, 1758 (TTAB
2016) (applicant‘s “failure to address these refusals is a basis for affirming the
Examining Attorney’s refusal of registration)”.7 That leaves for decision the refusal
to register Applicant’s mark in Classes 35 and 41 based on cited Registration No.
3212807.
The Examining Attorney nevertheless chose to brief “all issues for completeness
of appeal.” 6 TTABVUE 6. We therefore do the same, in the event our dismissal of
portions of the appeal is overturned.

7 Had we affirmed these refusals rather than dismissing the appeal with respect thereto, the
result would be the same.
Serial No. 87813535
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II. Applicant Waived Its Right to Appeal With Respect to Its Class 16
Goods and Cited Registration No. 5492824, and Its Substantive
Arguments are Unpersuasive in Any Event
Even if Applicant properly pursued an appeal with respect to Class 16 or
Registration No. 5492824 on the merits, the appeal would have been unsuccessful.
A. The Proposed Amendment to Applicant’s Identification of Goods in
Class 16 is Impermissible
Applicant originally sought registration of its mark in connection with “art paper;
art pictures on canvas; art prints; art prints on canvas; color prints; framed art
pictures; graphic art prints; picture books.” Applicant then amended its identification
of goods in Class 16 by deleting all goods except “picture books.” December 18, 2018
Office Action response TSDR 2.8 About one year later, Applicant proposed amending
the identification again, this time to: “adult picture books, art paper, art pictures on
canvas, art prints, art prints on canvas, color prints, framed art picture, graphic art
on prints and framed art prints.” December 27, 2019 Request for Reconsideration
TSDR 2. Thus, Applicant sought to add additional goods to the identification,
including some of the goods for which it originally sought registration, but which were
deleted during prosecution.
This is impermissible. As the Examining Attorney points out, the proposal to limit
the identified “picture books” to “adult picture books” is acceptable. Trademark Rule
2.71(a) (“The applicant may amend the application to clarify or limit, but not to

8 Citations to the prosecution record refer to the USPTO’s Trademark Status & Document
Retrieval (“TSDR”) system’s online database, by page number, in the downloadable .pdf
format.
Serial No. 87813535
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broaden, the identification of goods ….”). However, Applicant’s proposal to add “art
paper, art pictures on canvas, art prints, art prints on canvas, color prints, framed
art picture, graphic art on prints and framed art prints” is not. Id.9
B. Applicant’s Mark is Likely to Cause Confusion With the Mark in
Registration No. 5492824
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”)
(setting forth factors to be considered); see also In re Majestic Distilling Co., 315 F.3d
1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We must consider each DuPont factor
about which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d
1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the goods 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.”).

9 Applicant argued during prosecution that its proposed amendment should be acceptable in
its entirety under TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 1402.07(e)
(Oct. 2018). Applicant is incorrect because that subsection states that once an identification
has been amended, such as Applicant’s prior amendment of its Class 16 goods to “picture
books,” additional “amendments that would add to or expand the scope of the recited goods
or services, as amended, will not be permitted.” Applicant’s reliance on the subsection’s
exception for cases where an examiner’s amendment “does not reflect the agreement between
the applicant and the examining attorney” is misplaced. Here, there was no examiner’s
amendment. Applicant made the change to “picture books” of its own volition, and drafted
the amendment itself. December 18, 2018 Office Action response TSDR 2. There was no
miscommunication with the Examining Attorney, and there was no mistake.
Serial No. 87813535
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1. The Marks Are Quite Similar
The only differences between Applicant’s mark and Registrant’s
mark BAYOU ART LIFE are that Applicant’s mark includes minor stylization and a
vertical line between the words ART and LIFE, and Registrant’s mark includes and
begins with the word BAYOU. These distinctions do not make a meaningful
difference. Applicant has never argued otherwise, even during prosecution.
The stylization is essentially irrelevant, because Registrant’s mark is in standard
characters, and could be displayed in a similar, or even identical, style. In re Viterra
Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); Citigroup Inc. v. Capital
City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011); In re
Strategic Partners Inc., 102 USPQ2d 1397, 1399 (TTAB 2012). See also In re
i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017)
(“Symbolic does not, and cannot, dispute that the mark, I AM in standard character
form, and the registrants’ marks, I AM in standard character, typed, or stylized form,
are pronounced the same way and, at a minimum, legally identical.”).
The vertical line does little to distinguish Applicant’s mark. It is straight, thin,
has no features and serves little purpose other than separating the words ART and
LIFE, as a space would. Cf. Stockpot, Inc. v. Stock Pot Rest., Inc., 220 USPQ 52, 54
(TTAB 1983), aff’d, 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (finding
STOCKPOT and STOCK POT confusingly similar); In re Best Western Family Steak
House, Inc., 222 USPQ 827, 827 (TTAB 1984) (BEEFMASTER and BEEF MASTER
found “practically identical”). Moreover, “the verbal portion of a word and design
mark likely will be the dominant portion.” In re Viterra, 101 USPQ2d at 1911; In re
Serial No. 87813535
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Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987) (holding that “if one
of the marks comprises both a word and a design, then the word is normally accorded
greater weight because it would be used by purchasers to request the goods or
services” and “because applicant’s mark shares with registrant’s mark that element
responsible for creating its overall commercial impression, the marks are confusingly
similar”).
In short, the vertical line and minimal stylization do precious little to impact the
mark’s appearance, change nothing at all about how the mark sounds or the meaning
it conveys, and have almost no impact on its commercial impression. We are also
mindful that “[t]he proper test is not a side-by-side comparison of the marks, but
instead ‘whether the marks are sufficiently similar in terms of their commercial
impression’ such that persons who encounter the marks would be likely to assume a
connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quoting Leading Jewelers Guild,
Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901, 1905 (TTAB 2007)). In fact, we must
consider: (1) “the fallibility of memory over a period of time;” (2) that the “average”
purchaser “normally retains a general rather than a specific impression of
trademarks;” and (3) that Applicant’s and Registrant’s marks both include ART
LIFE. Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). See also
In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (“marks
must be considered in light of the fallibility of memory”) (citation, internal quotation
marks, and ellipsis omitted). Here, if consumers notice the stylization and vertical
Serial No. 87813535
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line in Applicant’s mark, those are likely to be quickly forgotten, while ART LIFE is
likely to be remembered.
While Registrant’s mark includes and begins with BAYOU, Registrant is based in
Louisiana, known for bayous, and the disclaimed term BAYOU ART is descriptive,
geographically or otherwise, as it describes a feature of the identified “works of art
made of wood.” It may also describe or suggest features of “children’s storybooks.”
This makes the term weak, and less important in our analysis. 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 Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985));
see also In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir.
1997) (DELTA, not the disclaimed term CAFÉ, is the dominant portion of the mark
THE DELTA CAFÉ). In fact, consumers familiar with Registrant’s mark who
encounter Applicant’s may very well perceive it to be an abbreviated form of
Registrant’s mark. And consumers familiar with Applicant’s mark could perceive
Registrant’s as a version of Applicant’s, perhaps a brand or geographic extension.
In short, the marks are highly similar. This weighs in favor of finding a likelihood
of confusion.
2. The Class 16 Goods and Their Channels of Trade and Classes of
Consumers
Applicant and Registrant both offer “books,” with Applicant’s being “adult picture
books” and Registrant’s being “children’s storybooks.” The term “storybooks” is broad
Serial No. 87813535
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enough to encompass picture storybooks, and to that extent the goods are
overlapping. By the same token, the term “picture books” is broad enough to
encompass picture storybooks, and to that extent the goods are overlapping.
The Examining Attorney has introduced evidence revealing that third-party
booksellers often offer both “adult picture books” and “children’s storybooks.” These
sources of different types of picture books and storybooks include Books-A-Million,
Barnes & Noble, Powell’s City of Books, the Metropolitan Museum of Art, Burke
Décor, BookShop, ThriftBooks and Book Outlet. January 13, 2020 Office Action TSDR
9-14; July 22, 2020 Office Action TSDR 34-43. Thus, consumers are accustomed to
both storybooks for children and picture books for adults being offered by the same
book stores, or other retailers such as museums.
While it is not clear how many publishers offer both adult picture books and
children’s picture storybooks, we do not find this particularly relevant where the
record reveals that consumers of adult picture books and children’s storybooks expect
to find adult picture books and children’s storybooks in retail outlets such as
bookstores, which, in the consumer’s mind, are a source of children’s storybooks and
adult picture books. In other words, there is no evidence that publishers sell adult
picture books or children’s storybooks directly to consumers; rather, it appears that
consumers often shop for and purchase picture books and storybooks from retailers
such as those from which the Examining Attorney introduced evidence. The
Examining Attorney has established a relationship between these goods.
Serial No. 87813535
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The evidence also establishes that retailers such as bookstores and museums are
also channels of trade for adult picture books and children’s storybooks, and the
record reveals that a number of them sell both adult picture books and children’s
storybooks. While some “readers” of children’s storybooks are by definition different
than the “readers” of adult picture books, we do not need evidence to know that
parents sometimes read to their kids, and oftentimes adults will purchase books (and
other goods) for children, and thus are among the classes of consumers of children’s
storybooks. See Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1472
(TTAB 2016) (“With respect to purchasers, although Opposer asserts that it markets
ice cream to young children, it cannot reasonably be disputed that adult parents at
times play a role in the purchase of Opposer’s ice cream … to the extent that both
products may be purchased by parents, we find there is an overlap in customers.”).
These factors weigh in favor of finding a likelihood of confusion between Registrant’s
children’s storybooks and Applicant’s adult picture books.
3. Applicant’s Class 35 Services, Registrant’s Class 20 Goods, Their
Channels of Trade and Classes of Consumers
Registrant’s “works of art made of wood” and Applicant’s “retail store services for
works of art provided by art galleries” are closely related on their face. “Works of art
made of wood” is broad enough to encompass work of art made of wood which are
provided by art galleries, and “works of art provided by art galleries” is broad enough
to encompass works of art made of wood provided by art galleries.
Here, as in a number of analogous cases, we find that retail store services for
works of art provided by art galleries are related to works of art made of wood. Indeed,
Serial No. 87813535
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consumers would expect to find works of art, including art made of wood, in retail art
stores. See e.g. In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed.
Cir. 2018) (“[W]e have held that confusion is likely where one party engages in retail
services that sell goods of the type produced by the other party”); In re Hyper Shoppes
(Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (BIGGS for retail grocery
and general merchandise store services likely to be confused with BIGGS for
furniture); In re H.J. Seiler Co., 289 F.2d 674, 129 USPQ 347 (CCPA 1961) (“[A]
customer who attends a banquet which he knows is catered by the appellant would,
when he encounters a food product in the grocery store under an almost identical
mark, naturally assum[e] that it came from the catering firm”); In re Thomas, 79
USPQ2d 1021, 1024 (TTAB 2006) (“It is clear that consumers would be likely to
believe that jewelry on the one hand and retail stores selling jewelry on the other
emanate from or are sponsored by the same source if such goods and services are sold
under the same or similar marks.”); see also In re Accelerate s.a.l., 101 USPQ2d 2047,
2050 (TTAB 2012) (affirming refusal to register COLOMBIANO COFFEE HOUSE
for “providing food and drink” based on registered certification mark COLOMBIAN
for “coffee”); In re Opus One, Inc., 60 USPQ2d 1812, 1815 (TTAB 2001) (affirming
refusal to register OPUS ONE for restaurant services based on a likelihood of
confusion with the same mark for wine); In re Peebles Inc., 23 USPQ2d 1795, 1796
(TTAB 1992) (finding “that store services and the goods which may be sold in that
store are related goods and services”). Quite simply, Applicant’s retail artwork stores
Serial No. 87813535
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could offer Registrant’s artwork, or any “works of art made of wood.”10 This
relationship weighs in favor of finding a likelihood of confusion.
Moreover, artwork stores such as Applicant’s are obviously typical channels of
trade for artwork such as Registrant’s. Similarly, there is an obvious overlap between
art consumers and shoppers at artwork stores.11 Thus, the channels of trade and
classes of consumers for these goods and services are largely the same, which also
weighs heavily in favor of finding a likelihood of confusion.12
4. Conclusion: Confusion is Likely
Because the marks are quite similar and the goods are related and travel in
overlapping channels of trade to overlapping classes of consumers, confusion is likely.
In any event, Applicant waived its appeal with respect to Registration No. 5492824.
III. The Refusal to Register Based on Cited Registration No. 3212807
Obviously, we apply the same standards and du Pont factors discussed in Section
II(B) in analyzing this refusal.
A. The Marks
There is little difference between Applicant’s mark and the cited
mark ARTLIFE. Indeed, they consist of the same words in the same order. They
therefore sound identical, convey identical meanings and create highly similar

10 While Applicant’s identification is limited to artwork provided by art galleries, art galleries
could provide Applicant or other retailers with “works of art made of wood.”
11 We perceive no meaningful difference between retail sales of artwork in “stores” and retail
sales of artwork in “galleries.” In both cases, consumers of artwork may inspect and purchase
art.
12 As Applicant stated during prosecution, “art prints and prints are products related to
services of an art gallery.” December 18, 2018 Office Action Response TSDR 16.
Serial No. 87813535
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commercial impressions. The minor differences between the marks are of little
consequence for the same reasons addressed in connection with the cited BAYOU
ART LIFE registration.
That is, the stylization of Applicant’s mark is essentially irrelevant, because
Registrant’s mark is in standard characters, and could be displayed in a similar, or
even identical, style. In re Viterra, 101 USPQ2d at 1909; Citigroup Inc., 98 USPQ2d
at 1258-59; In re Strategic Partners, 102 USPQ2d at 1399. See also In re
i.am.symbolic, 123 USPQ2d at 1748. The vertical line is also not sufficient to
distinguish Applicant’s mark from Registrant’s, because it is straight, thin, has no
features and serves little purpose other than separating the words ART and LIFE, as
a space would. Cf. Stockpot, 220 USPQ at 54; In re Best Western Family Steak House,
222 USPQ at 827. Moreover, “the verbal portion of a word and design mark likely will
be the dominant portion.” In re Viterra, 101 USPQ2d at 1911; In re Appetito
Provisions, 3 USPQ2d at 1554.
Again, we are mindful that “[t]he proper test is not a side-by-side comparison of
the marks, but instead ‘whether the marks are sufficiently similar in terms of their
commercial impression’ such that persons who encounter the marks would be likely
to assume a connection between the parties.” Coach Servs., 101 USPQ2d at 1721. In
fact, we must consider: (1) “the fallibility of memory over a period of time;” (2) that
the “average” purchaser “normally retains a general rather than a specific impression
of trademarks;” and (3) that Applicant’s and Registrant’s marks both include ART
and LIFE, in that order. Sealed Air Corp., 190 USPQ at 108. See also In re St. Helena
Serial No. 87813535
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Hosp., 113 USPQ2d at 1085. Here, if consumers notice the minor stylization and
vertical line in Applicant’s mark, it is likely to be quickly forgotten, while ART LIFE
is likely to be remembered.
Finally, while Registrant’s mark does not include a space between the words ART
and LIFE and Applicant’s mark does (or perhaps substitutes the vertical line for a
space), as we have repeatedly held, this is not a meaningful distinction. Stockpot, 220
USPQ at 54; In re Best Western Family Steak House, 222 USPQ at 827. In short, the
marks are highly similar, and in fact practically identical.13
B. The Services, Channels of Trade and Classes of Consumers
The services need not be identical or even competitive in order to find a likelihood
of confusion. Rather, the question is whether the services are marketed in a manner
that “could give rise to the mistaken belief that [the services] emanate from the same
source.” Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83
USPQ2d 1715, 1724 (TTAB 2007)). See also Hewlett-Packard Co. v. Packard Press
Inc., 227 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (“Even if the goods and

13 Applicant argues that the marks create different commercial impressions. 4 TTABVUE 7-
13. However, the argument is incomplete, because Applicant never indicates what it believes
those commercial impressions to be, or how they purportedly differ. More importantly, the
argument is not based on any evidence, rendering it unpersuasive. Cai v. Diamond Hong,
Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) (“Attorney argument is no
substitute for evidence.”) (quoting Enzo Biochem, Inc. v. Gen-Probe Inc., 424 F.3d 1276, 1284,
76 USPQ2d 1616, 1622 (Fed. Cir. 2005)); see also In re U.S. Tsubaki, Inc., 109 USPQ2d 2002,
2006 (TTAB 2014) (finding that there was no proof to support the statements in the record
by counsel). To the extent Applicant’s argument is based on Registrant’s services being
educational in nature, the argument is unconvincing because, as explained below, the record
belies Applicant’s contention that there is no evidence of an “education services organization
in the field of visual arts serving as an art gallery and providing art exhibitions.” 4 TTABVUE
12-13.
Serial No. 87813535
16
services in question are not identical, the consuming public may perceive them as
related enough to cause confusion about the source or origin of the goods and
services.”); Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir.
2000) (“[E]ven if the goods in question are different from, and thus not related to, one
another in kind, the same goods can be related in the mind of the consuming public
as to the origin of the goods”); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d
1100, 1109 (2007).
1. Applicant’s Class 41 Services
Here, the Examining Attorney has established that services such as those
identified in the cited registration (“educational services, namely, conducting
programs and events in the field of visual arts14 …”) and services such as those
identified in the involved application (“art exhibitions of pictures, paintings, drawings
and sculptures”) are offered under the same marks. For example, Strathmore’s
website includes a “Visual Arts” page which explains that “Strathmore is a premier
art institution of the mid-Atlantic region, hosting more than two dozen exhibitions a
year in its historic Mansion.” Strathmore includes “galleries” that “feature artists,”
and it also “collaborate[s] with … educators to offer programs for children and adults”:

14 “Visual art” is “artwork, such as painting, photography, or sculpture, that appeals
primarily to the visual sense and typically exists in permanent form.” January 13, 2020 Office
Action TSDR 8 (https://ahdictionary.com/word/search.html?q=visual+arts) (emphasis
added). The term is “often” referred to as “visual arts.” Id.
Serial No. 87813535
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July 10, 2019 Office Action TSDR 29. Similarly:
The Cleveland Museum of Art’s website includes links for
“current,” “upcoming,” “past” and “historical” exhibitions,
as well as “Lectures” and an “Annual Lecture Series.” Id.
at 30-31.

The Columbus Museum of Art features “Exhibitions,” and
its website linked to “2019 Summer Art Workshops” which
allow children to “Play, Experiment and Create!” Id. at 32-
33.

The Tennessee Arts Academy offers educational programs
and “art exhibitions,” including Tennessee’s Best of the
Best Student Art Exhibition and Connections: Tennessee
Art Education Association Member Exhibition. Id. at 34-
36.

The Kennedy Center offers “Education,” such as “working
rehearsals” in which “dance scholars provide commentary,
via wireless headsets, about the choreography, dancers,
and history of the art form as companies rehearse on
Serial No. 87813535
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stage.” It also offers “Exhibits,” including by sculptors and
other visual artists. Id. at 37-41.

The Spectrum Gallery offers a variety of exhibits of works
such as paintings, other events, and “art instruction.” Id.
at 44.

The Brown County Art Gallery offers a variety of “exhibits
and events” including drawings and paintings, and the
Stevens Art Education Studio. Id. at 52-53.

Woodbury Art Museum offers sculpture exhibitions and a
School of the Arts. July 22, 2020 Office Action TSDR 10.

The Arts Division at the University of California Santa
Cruz offers “virtual exhibitions and events,” including of
video works. Id. at 13.

Portland State University offers art “exhibitions and
events” at its Museum of Art, which include “rich
educational and collaborative opportunities” and feature
art by “faculty and students.” Id. at 15.

Paradigm Gallery + Studio offers “art exhibitions and
events” and “art classes.” Id. at 17.

The Center for Art in Wood’s mission is achieved through
“exhibitions” and “education.” Id. at 46.

This evidence establishes a relationship between Applicant’s services and
Registrant’s services. See In re Detroit Athletic Co., 128 USPQ2d at 1050 (crediting
relatedness evidence showing that third parties use the same mark for the goods and
services at issue because “[t]his evidence suggests that consumers are accustomed to
seeing a single mark associated with a source that sells both”); Hewlett-Packard Co.
v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002)
(evidence that “a single company sells the goods and services of both parties, if
presented, is relevant to a relatedness analysis”).
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The evidence also establishes that the channels of trade and classes of consumers
for educational programs and events in the field of visual arts overlap with the
channels of trade and classes of consumers for art exhibitions of pictures, paintings,
drawings and sculptures. Thus, these factors also weigh in favor of finding a
likelihood of confusion.
2. Applicant’s Class 35 Services
The Examining Attorney has also established that services such as those
identified in the cited registration (“educational services, namely, conducting
programs and events in the field of visual arts …”) and services such as those
identified in the involved application (“retail store services for works of art provided
by art galleries”) are offered under the same marks. For example, Nucleus Gallery
offers “events,” “workshops” and “exhibitions” in the field of visual arts, as well as a
“drawing club,” and also sells artwork. July 10, 2019 Office Action TSDR 42-43.
Spectrum Gallery offers “exhibits,” “events” and “art instruction” in the field of visual
arts, and also the opportunity to “shop online” for visual art. Id. at 44-45. Haven Art
Gallery promotes its “upcoming shows” in the field of visual arts and also sells visual
artwork at retail. Id. at 46-47. Whidbey Art Gallery offers “art walks” in the field of
visual arts, and the opportunity to “shop online” for visual art. Id. at 48-49. The Art
Students League of New York hosts exhibitions of visual art, including “instructors
exhibitions,” and its website states “All of the artwork on this site is for sale.” Id. at
50-51. Brown County Art Gallery offers “events,” “exhibits” and “workshops” in the
field of visual arts, features the Stevens Art Education Studio and has a
“Consignment Art Program.” It claims on its website that it “has become an important
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venue for those who want to buy or sell early Indian Art.” Id. at 52-53. This evidence
establishes a relationship between Applicant’s retail artwork sales and Registrant’s
educational services in the field of visual arts.
It also establishes that retail artwork sales and educational services in the field
of visual arts have overlapping channels of trade and classes of consumers.
Specifically, galleries and art schools provide educational services in the field of
visual arts, and sell artwork. These factors also weigh in favor of finding a likelihood
of confusion.
C. Conclusion: Confusion is Likely

Because the marks are quite similar and the goods are related and travel in
overlapping channels of trade to overlapping classes of consumers, confusion is likely.
IV. Conclusion
Applicant did not appeal the refusals relating to its Class 16 goods, and therefore
the Section 2(d) refusal to register Applicant’s mark in Class 16 based on cited
Registration No. 5492824, and the refusal to accept Applicant’s proposed amendment
to its Class 16 goods, both stand. Even if Applicant had appealed the Class 16
refusals, they would have been affirmed as explained herein.
Because Applicant did not address the Section 2(d) refusal to register its mark in
Classes 16 and 35 based on Registration No. 5492824 in its Appeal Brief, those
refusals stand. Even if Applicant had addressed the Class 16 and 35 refusals based
on Registration No. 5492824, they would have been affirmed as explained herein.
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Finally, the refusal to register Applicant’s mark in Classes 35 and 41 based on
cited Registration No. 3212807 is affirmed.

Decision: The refusal to register Applicant’s mark in Classes 35 and 41 under
Section 2(d) of the Trademark Act is affirmed. Applicant’s appeal is otherwise
dismissed. Thus, the refusal to accept Applicant’s proposed amendment to its Class
16 goods, and the refusals to register Applicant’s mark in Classes 16 and 35 under
Section 2(d) of the Trademark Act based on Registration No. 5492824 both stand.