Ballyhoo Media, Inc.

Trademark Trial and Appeal Board

Sep 16, 2019

87684794 (T.T.A.B. Sep. 16, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 16, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Ballyhoo Media, Inc.
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Serial No. 87684794

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Daniel J. Kessler and Amanda V. Dwight of Burkhalter
Kessler Clement & George LLP, for Ballyhoo Media, Inc.

Kelly Trusilo, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
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Before Zervas, Taylor and Coggins,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Ballyhoo Media, Inc. (“Applicant”) seeks registration on the Principal Register of
the mark BALLYHOO MEDIA in standard characters for the following International
Class 35 services, as amended:
Out-of-home advertising, namely, boat, billboard, and
water transit advertising; Design and production of the
advertising content of electronic billboards for advertising,
promotional, or marketing purposes via boat and water
transit platforms; Advertising, marketing, and promoting
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the goods and services of others via boat and water transit
platforms.1
Pursuant to the Examining Attorney’s requirement, Applicant disclaimed the
term MEDIA apart from the mark as shown.
The Examining Attorney refused registration pursuant to Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark is likely to
cause confusion with the standard character mark BALIHOO registered on the
Principal Register for services that include the following International Class 35
services:
Advertising and marketing; advertising and publicity
services, namely, promoting the goods, services, brand
identity and commercial information and news of third
parties through print and on-line media; advertising and
business management; … advertising services, namely,
creating corporate and brand identity for others; direct
marketing services; direct mail advertising services;
providing advertising, marketing and promotional
services, namely, development of advertising campaigns
for print media; advertising and marketing services
provided by means of indirect methods of marketing
communications, namely, social media, search engine
marketing, inquiry marketing, internet marketing, mobile
marketing, blogging and other forms of passive, sharable
or viral communication.2
After the Examining Attorney issued a Final Office Action, Applicant appealed
and filed a request for reconsideration. The Examining Attorney denied the request

1 Application Serial No. 87684794, filed on November 14, 2017 pursuant to Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), asserting first use and first use in commerce at least as
early as August 2016.
2 Registration No. 4490471, registered March 4, 2014.
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for reconsideration, the appeal was resumed and Applicant and the Examining
Attorney filed briefs. We affirm the refusal to register.
Likelihood of Confusion
Our determination under Section 2(d) of the Trademark Act is based on an
analysis of the probative facts in evidence that are relevant to the factors bearing on
a likelihood of confusion. See In re E. I. DuPont DeNemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973) (“DuPont”); see also Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005);
In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
considering the evidence of record on these factors, we keep in mind that “[t]he
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.” Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We consider each DuPont factor for which there is evidence and argument. See, e.g.,
In re Guild Mortgage Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019).
a. The Services, Channels of Trade and Classes of Purchasers
When we consider the relatedness of the services, our analysis is premised on a
comparison of the services as they are set out in the application and the cited
registration. Paula Payne Prods. v. Johnson Publ’g Co., 473 F.2d 901, 177 USPQ 76,
77 (CCPA 1973) (“Trademark cases involving the issue of likelihood of confusion must
be decided on the basis of the respective descriptions of goods”). See also In re Dixie
Rests., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) (quoting Canadian
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Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813,
1816 (Fed. Cir. 1987) (“‘Likelihood of confusion must be determined based on an
analysis of the mark applied to the … services recited in applicant’s application vis-
à-vis the … services recited in [a] … registration, rather than what the evidence
shows the … services to be”‘)). We do not read limitations into the recitation of
services. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983)
(“There is no specific limitation and nothing in the inherent nature of Squirtco’s mark
or goods that restricts the usage of SQUIRT for balloons to promotion of soft drinks.
The Board, thus, improperly read limitations into the registration”).
Registrant’s recitation of services broadly includes “advertising and marketing”
as services. Registrant’s services are not limited to any particular medium of
advertising and hence we must assume that Registrant’s services encompass all
forms of advertising including those identified by Applicant in its recitation of
services (i.e., advertising via boat, billboard and water transit platforms). Thus, we
find that Applicant’s and Registrant’s recited services are in part identical because
they both include the same type of advertising, and Applicant’s arguments regarding
differences in the services that Applicant and Registrant actually provide is not
persuasive.3 Because they are in part identical, we must also presume that the
services would travel in the same channels of trade normal for those services and to
all classes of prospective purchasers for those services. See In re Viterra Inc., 671 F.3d

3 Any issues an applicant has with the breadth of an identification in a cited registration
might be addressed by obtaining consent from the owner of the cited registration or seeking
a restriction of the registration under Section 18 of the Trademark Act, 15 U.S.C. § 1068.
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1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods are presumed
to travel in same channels of trade to same class of purchasers); In re Yawata Iron &
Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally
identical goods, the channels of trade and classes of purchasers are considered to be
the same); In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1745 (TTAB 2018)
(“Because the services described in the application and the cited registration are
identical, we presume that the channels of trade and classes of purchasers are the
same.”), aff’d, No. 18–2236 (Fed. Cir. Sept. 13, 2019); United Glob. Media Grp., Inc.
v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); Am. Lebanese Syrian Assoc. Charities
Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).
The Trademark Examining Attorney need not prove, and we need not find,
similarity as to each and every service listed in Applicant’s recitation of services. It
is sufficient for a refusal based on likelihood of confusion that relatedness is
established for any item encompassed by the recitation of services in a particular
class in the application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335,
209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409
(TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).4
In view of the foregoing, the DuPont factors regarding the services, trade channels
and classes of purchasers weigh heavily in favor of a finding of likelihood of confusion.

4 In light of this presumption, Applicant’s trade channel argument that “water transit
advertising must be provided on water while all other advising is provided on land” has no
merit. 4 TTABVUE 10.
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b. The Marks
We compare Applicant’s BALLYHOO MEDIA mark and Registrant’s BALIHOO
mark “in their entireties as to appearance, sound, connotation and commercial
impression.” Palm Bay, 73 USPQ2d at 1691 (quoting DuPont, 177 USPQ at 567).
When comparing marks, the test is not whether the marks can be distinguished in a
side-by-side comparison, but rather whether the marks are sufficiently similar in
terms of their overall commercial impression that confusion as to the source of the
services offered under the respective marks is likely to result. Midwestern Pet Foods,
Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed.
Cir. 2012). “Similarity in any one of these elements may be sufficient to find the
marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing
In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)). Further,
marks “‘must be considered ... in light of the fallibility of memory ....”‘ In re St. Helena
Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting San Fernando
Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1 (CCPA
1977)). The proper focus is on the recollection of the average customer, who retains a
general rather than specific impression of the marks. Winnebago Indus., Inc. v. Oliver
& Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975).
We may not dissect the involved marks when comparing the marks but must
consider them in their entireties. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 750-51 (Fed. Cir. 1985). Nonetheless, there is nothing improper in stating that,
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for rational reasons, more or less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on a consideration of the marks in their
entireties. Stone Lion Capital Partners, LP v. Lion Capital LLP, 76 F.3d 1317, 110
USPQ2d 1157, 1161 (Fed. Cir. 2014). Moreover, in cases such as this, where
Applicant’s services are identical to Registrant’s services, the degree of similarity
between the marks which is required to support a finding of likelihood of confusion is
less than it would be if the services were not identical. In re Viterra Inc., 101 USPQ2d
at 1908 (quoting Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992)).
Applicant’s mark is composed of the terms BALLYHOO and MEDIA. Applicant
disclaimed the term “media” pursuant to a requirement by the Examining Attorney,
conceding that the term is merely descriptive. See In re Pollio Dairy Prods. Corp., 8
USPQ2d 2012, 2014 n.4 (TTAB 1988) (“By its disclaimer of the word LITE, applicant
has conceded that the term is merely descriptive as used in connection with
applicant’s goods.”) (citing State Oil Ref. Corp. v. Quaker Oil Corp., 161 USPQ 547
(TTAB 1969), aff’d, 453 F.2d 1296, 172 USPQ 361 (CCPA 1972)). Descriptive matter
typically is less significant or less dominant when comparing marks. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir.
2000) (quoting In re Nat’l Data Corp., 224 USPQ at 752 (the “descriptive component
of a mark may be given little weight in reaching a conclusion on likelihood of
confusion”)).
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We find that BALLYHOO is the dominant term in Applicant’s mark. It is stronger
as a source identifier than the disclaimed, merely descriptive term “media” and it
appears in the initial position of the mark. See Palm Bay, 73 USPQ2d at 1692
(“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve”
is the first word in the mark and the first word to appear on the label). There is no
evidence of third-party use of the same or a similar term.
“Balihoo,” the only term in Registrant’s mark, is not an English word. There is no
correct pronunciation of a mark which is not a common English word because it is
impossible to predict how the public will pronounce a particular mark. In re Viterra,
101 USPQ2d at 1912 (“It is also true … that there is no correct pronunciation of a
trademark, and consumers may pronounce a mark differently than intended by the
brand owner.”).5 Because BALIHOO is a slight misspelling of BALLYHOO, we find
that BALLYHOO is identical in pronunciation to BALIHOO, that BALLYHOO and
BALIHOO are similar in appearance and that consumers will provide the same
meaning to BALIHOO as to BALLIHOO. Further, because the addition of the merely
descriptive term MEDIA in Applicant’s mark does not distance Applicant’s mark from
Registrant’s mark, we find that Applicant’s mark considered in its entirety is similar
in sound, appearance, meaning and commercial impression to Registrant’s mark.

5 Applicant concedes that the terms BALLYHOO and BALIHOO are “similar in sound.”
4 TTABVUE 11. Similarity in sound alone may be sufficient to support a finding that the
marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988).
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The DuPont factor regarding the similarity of the marks thus favors a finding of
likelihood of confusion.6
c. Purchaser Care and Sophistication
Applicant argues that “consumers for these types of services must be deemed to
be careful and sophisticated. As opposed to general consumer goods, which would be
sold to the public at large, the very nature of the services shows that they are offered
to discriminating and sophisticated consumers.”7 We see no reason why to deem
purchasers of the types of services involved herein as careful and sophisticated.
Because there are no limitations in the identifications of services directed to cost or
purchasers, and where the purchasers consist of both professionals and the public,
the standard of care for purchasing the goods is that of the least sophisticated
potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing
Stone Lion, 110 USPQ2d at 1163). Such purchasers may include small businesses or
even individuals. Additionally, the fact that purchasers are sophisticated or
knowledgeable in a particular field does not necessarily mean that they are
sophisticated or knowledgeable in the field of trademarks or immune from source
confusion. See Stone Lion, 110 USPQ2d at 1163-64; Top Tobacco LP v. N. Atl.
Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Thus, Applicant’s argument is

6 Applicant states, “The differences in the services as well as the conditions under which and
buyers to whom sales of the services at issue are made should be the determinative factors
in this case.” 8 TTABVUE 6. By not mentioning the first DuPont factor regarding the marks,
it appears that Applicant concedes that the first DuPont factor favors a finding of likelihood
of confusion.
7 4 TTABVUE 8.
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unpersuasive, and we consider the DuPont factor regarding conditions of purchase
and purchaser sophistication as neutral.
d. Conclusion
We have considered all of the evidence and arguments of the Examining Attorney
and Applicant. In view of the similar marks, the in part identical services and the
presumed identity in trade channels and classes of purchasers, we conclude that
confusion is likely between Applicant’s BALLYHOO MEDIA mark for its services and
Registrant’s BALIHOO mark for its services.
Decision: The refusal to register is affirmed.