Big Bert Entertainment, LLC

Trademark Trial and Appeal Board

Oct 4, 2007

No. 78387062 (T.T.A.B. Oct. 4, 2007)

Mailed: 10/4/07

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Big Bert Entertainment, LLC
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Serial No. 78387062
_______

Laura A. Kees of Lord, Bissell & Brook for Big Bert
Entertainment, LLC.

Mark Rademacher, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney).
_______

Before Quinn, Taylor and Bergsman, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

Big Bert Entertainment, LLC filed an application to
register the mark BIG BERT ENTERTAINMENT (“ENTERTAINMENT”
disclaimed), in standard character form, for “CDs, DVDs,
and audiocassettes featuring prerecorded music” (in
International Class 9), and “record label services, namely
audio and music production services; [and] music publishing
services” (in International Class 41). The application,
filed on March 18, 2004, is based on a bona fide intention
to use the mark in commerce.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 78387062
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The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, when applied to applicant’s goods and/or
services, so resembles the previously registered mark
BERT’S and design1 for
conducting entertainment exhibitions in
the nature of fashion shows, shooting
of films, of video clips, television
broadcasting, of commercials,
advertisements and advertising spots;
entertainment, namely, live music
concerts; electronic publishing
services, namely, publication of text
and graphic works of others in books,
video cassettes, compact discs, digital
versatile discs, online, field of
cooking (in International Class 41);
and

arena services, namely providing
facilities for sports, concerts,
conventions and exhibitions; providing
banquet and social function facilities
for special occasions; restaurants;
café and bar services; arranging
temporary housing accommodations;
making hotel reservations for others;
consulting services in the field of
film locations; [and] making hotel
reservations for others (in
International Class 43)2

as to be likely to cause confusion.

1 The image of the special form drawing cannot be adequately
reproduced in this opinion. For purposes of our decision, it is
sufficient to note that registrant’s mark consists of the name
“bert’s” in green, lower case letters in a gray rectangular
background.
2 Registration No. 2969907, issued on July 19, 2005.
Ser No. 78387062
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When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Applicant argues the marks are different, the goods
and services are distinguishable, consumers for record
label services and music products are sophisticated, and
the existence of third-party marks renders registrant’s
mark weak with a scope of protection that does not extend
to applicant’s mark. Applicant submitted excerpts from
Wikipedia bearing on “nicknames” such as Big Ben and Big
Apple.
The examining attorney maintains that the marks are
similar with both marks dominated by the name “BERT.” The
examining attorney also contends that the goods and
services are related and, in this connection, he introduced
several use-based third-party registrations showing that a
single entity has registered a single mark for the types of
goods and services involved herein. As to trade channels
and classes of purchasers, the examining attorney asserts
that they are similar, and that relevant consumers exercise
nothing more than ordinary care in their purchasing
decisions.
Before turning to the merits of the likelihood of
confusion issue, we direct our attention to two preliminary
matters.
Ser No. 78387062
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The first one involves applicant’s collateral attack
on the cited registration. In its June 7, 2006 response,
applicant asserted that registrant was currently using its
mark in connection with only restaurant, café and bar
services, and not in connection with any of the other
services listed in the registration. As pointed out by the
examining attorney, however, this constitutes an
impermissible collateral attack on the registration. TMEP
§ 1207.01(d)(iv) (5th ed. Sept. 2007). Section 7(b) of the
Trademark Act provides that a certificate of registration
on the Principal Register shall be prima facie evidence of
the validity of the registration, of the registrant’s
ownership of the mark and of the registrant’s exclusive
right to use the mark in commerce in connection with the
goods or services listed in the certificate. See In re
Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed.
Cir. 1997). Accordingly, applicant’s assertion will not be
given any consideration.
The second matter involves an evidentiary point. In
connection with its argument that there are numerous third-
party registrations incorporating the term “BERT,”
applicant submitted a printout of various BERT
registrations. The examining attorney promptly advised
applicant in the final refusal that the third-party
Ser No. 78387062
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registrations were not properly made of record. Applicant,
in its appeal brief, made specific reference to several of
the registered marks. In his appeal brief, the examining
reiterated his objection to this evidence as being
improperly submitted. The examining attorney went on to
indicate that, even if this evidence were considered, it
was not probative.
We sustain the examining attorney’s objection. The
mere listing of the registrations, whether by way of the
TESS printout or the specific mention in the brief, is
insufficient to make the registrations of record. In re
Ruffin Gaming LLC, 66 USPQ2d 1924, 1925 n.3 (TTAB 2002).
When the examining attorney advised applicant of this
deficiency, applicant did not timely follow up with soft
copies of the registrations. In re JT Tobacconists, 59
USPQ2d 1080, 1081 n.2 (TTAB 2001); and TBMP § 1208.02 (2d
ed. rev. 2004). We hasten to add that in the case of the
TESS printout, even if considered, it has no probative
value since it does not show the goods or services for
which the marks are registered. Accordingly, the listings
of the registrations do not compel a different result in
this case.3

3 As the examining attorney also has pointed out, third-party
registrations are not evidence of use of the marks shown therein.
Ser No. 78387062
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Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also: In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, two 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 (CCPA 1976).
We first turn to compare the marks. In determining
the similarity or dissimilarity of the marks, we must
compare the marks 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 (Fed. Cir. 2005). The
test is not whether the marks can be distinguished when

Thus, they are not proof that consumers familiar with such marks
so as to be accustomed to the existence of the same or similar
marks in the marketplace. Smith Bros. Mfg. Co. v. Stone Mfg.
Co., 476 F.2d 1004, 177 USPQ 462 (CCPA 1973); and Richardson-
Vicks, Inc. v. Franklin Mint Corp., 216 USPQ 989 (TTAB 1982).
Even if we were to find, based on applicant’s evidence, that
registrant’s mark is weak and entitled to a narrow scope of
protection, the scope is still broad enough to prevent the
registration of a similar mark for closely related services. See
In re Farah Manufacturing Co., Inc., 435 F.2d 594, 168 USPQ 277,
278 (CCPA 1971).
Ser No. 78387062
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subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in their entireties that
confusion as to the source of the goods and/or services
offered under the respective marks is likely to result.
With respect to comparing applicant’s mark BIG BERT
ENTERTAINMENT with registrant’s mark BERT’S and design, it
is well settled that one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985) [“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.”]
Descriptive matter generally is subordinate to source-
identifying portions of a mark. For example, in the past
merely descriptive matter that is disclaimed has been
accorded subordinate status relative to the more
distinctive portions of a mark. In re Dixie Restaurants
Inc., 41 USPQ2d at 1533-34; and In re Code Consultants
Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) [Disclaimed matter
Ser No. 78387062
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is often “less significant in creating the mark’s
commercial impression”]. In the present case, applicant
has disclaimed the highly descriptive/generic term
“ENTERTAINMENT.” See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000), quoting,
In re National Data Corp., 224 USPQ at 752 [“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’”].
Thus, we find that BIG BERT is the dominant portion of
applicant’s mark.
Although the dominant portion, BIG BERT, of
applicant’s mark is highly similar to registrant’s mark
BERT’S in sound, appearance, meaning and commercial
impression, we must do more than just compare the
individual components of the marks; it is necessary that we
compare the marks as a whole. M2 Software Inc. v. M2
Communications Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1948-49
(Fed. Cir. 2006) [“When comparing the similarity of marks,
a disclaimed term...may be given little weight, but it may
not be ignored”]. While we have considered the
“ENTERTAINMENT” portion of applicant’s mark, purchasers are
likely to view this commonly understood and recognized term
to describe the nature of applicant’s services. As for
Ser No. 78387062
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registrant’s mark, although we have considered the
background shading and stylization of BERT’S, it is the
literal portion BERT’S that dominates the mark.
We find that the marks, when considered in their
entireties, are similar in sound, appearance, meaning and
commercial impression. Each of the marks serves to
indicate that someone with the name “Bert” is the source of
the goods and/or services.
The next issue is whether applicant’s goods and
services are related to registrant’s services. It is not
necessary that the respective goods and/or services be
competitive, or even that they move in the same channels of
trade to support a holding of likelihood of confusion. It
is sufficient that the respective goods and/or services are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods and/or
services are such that they would or could be encountered
by the same persons under circumstances that could, because
of the similarity of the marks, give rise to the mistaken
belief that they originated from the same producer. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
The examining attorney has submitted several third-
party registrations to establish the relatedness of the
involved goods and/or services. These use-based
Ser No. 78387062
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registrations show that each entity adopted a single mark
for the types of goods and/or services involved herein.
Third-party registrations that individually cover different
items and that are based on use in commerce serve to
suggest that the listed goods and/or services are of a type
that may emanate from a single source. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783; and In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).
The registrations show that various entities, mostly
entertainment groups, have registered the name of their
groups for compact discs featuring prerecorded music, music
publishing services, and live music concerts. This
evidence supports the examining attorney’s finding that the
goods and/or services are commercially related.
The involved goods and some of the services travel in
similar trade channels. Purchasers of the goods and some
of the services (e.g., compact discs and live music
concerts) would include ordinary consumers who would be
expected to use nothing more than ordinary care in their
purchases. Further, some of these purchases can be
expected to be made on impulse. Other services (e.g.,
music production services and music publishing services)
could be expected to be bought by purchasers who would be
more thoughtful in their purchasing decisions.
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Nevertheless, as often stated, even knowledgeable
purchasers may not be sophisticated or knowledgeable in the
field of trademarks or immune from source confusion. See
In re Decombe, 9 USPQ2d 1812 (TTAB 1988). Given the
similarities between the marks and the commercial
relatedness of the goods and/or services, even
knowledgeable purchasers would be confused.
We conclude that the similarities between the marks
and the commercial relatedness between the goods and/or
services make it likely that confusion will occur among
purchasers.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984).
Decision: The refusal to register is affirmed.