Carrv.Garnes

Trademark Trial and Appeal Board

Nov 8, 2010

No. 91171220 (T.T.A.B. Nov. 8, 2010)

Mailed:
November 8, 2010
UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Carr

v.

Garnes
_____

Opposition No. 91171220 to application Serial No.
78613202 filed on April 20, 2005
_____

Alan S. Clarke of Law Office of Alan S. Clarke, LLC for
Reginald Carr.

Edward M. Garnes, Jr. (pro se).
______

Before Quinn, Zervas and Bergsman, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

Applicant, Edward M. Garnes, Jr., seeks
registration on the Principal Register of the mark FROM
AFROS TO SHELLTOES ART, ACTION, AND CONVERSATION (in
standard character form) for the following services, as
amended: “Educational services, namely, conducting
workshops and seminars in arts and entertainment, hip-
hop, cross generational relationships, community
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Opposition No. 91171220
2
building, and art as a political force to lessen
misunderstandings between civil rights and hip hop
generations” in International Class 41. Applicant
claims first use and first use in commerce on April 23,
2004, and acquired distinctiveness of the entire mark
under Section 2(f) of the Trademark Act, 15 U.S.C.
§ 1052(f).1
Opposer Reginald Carr filed a timely notice of
opposition to registration of applicant's mark,
pleading use of the mark AFROS-N-SHELLTOES
ENTERTAINMENT for opposer’s “entertainment business”
since 2002. At paragraph 3 of the complaint, opposer
describes his business services as “entertainment
industry consulting, party promotion, disc jockey
services, entertainment services, party promotion and
poetry readings, primarily for the African American
community.” Opposer alleges (a) priority and
likelihood of confusion under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d); (b) false
suggestion of a connection with opposer’s identity
under Section 2(a) of the Trademark Act, 15 U.S.C.

1 A claim of acquired distinctiveness is made when a mark is
not inherently distinctive. Applicant's entire showing in
support of his claim of acquired distinctiveness, submitted
with his original application, comprised two flyers
(plausibly for the same event) and a copy of applicant’s
Georgia state registration certificate. The trademark
examining attorney did not issue any Office actions in this
Opposition No. 91171220
3
§ 1052(a), and (c) no bona fide use of the mark in
commerce prior to the filing of the application under
Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1051(a).2
Applicant answered the notice of opposition by
denying the salient allegations thereof, but admitted
“there is confusing similarity between the Defendant’s
Georgia state registered mark and the mark of
Plaintiff.”3 Answer ¶ 43.4
The Record
The record consists of the pleadings; the file of
the involved application, including the evidence in
support of applicant’s claim of acquired
distinctiveness set forth in the application; and the

case, and did not question applicant’s reliance on Section
2(f).
2 Opposer also pleaded fraud based on applicant’s submission
of a specimen which incorrectly identifies the date of one
of applicant’s programs. Because opposer has not discussed
his claim of fraud in his brief, opposer has waived his
fraud claim and we do not give it any further consideration.
3 The Georgia state registered mark is “From Afros to
Shelltoes: Art, Action, and Conversation” for “Educational,
dialogues, workshops, trainings, mediations, and panels on
arts & entertainment, hip-hop, cross generational
relationships, community building, and art as political
force to lessen misunderstandings between Civil Rights and
Hip Hop Generations.” Ex. 11 to testimony deposition of
Reginald Carr.
4 Under the heading “General Allegations and Affirmative
Defenses,” applicant set forth factual recitations detailing
his alleged use of his mark, including characterizing
opposer's use of opposer's mark as a “confusingly similar
mark” to applicant's mark. “General Allegations” ¶ 29(vi).
Factual allegations made in a pleading must be proven at
trial to be considered part of the trial record.

Opposition No. 91171220
4
trial testimony of opposer. Applicant did not
introduce any evidence at trial, and did not file a
brief.
Standing
Because opposer’s claimed first use date precedes
the filing date of applicant’s application, and opposer
has testified as to the first and continued use of
AFROS-N-SHELLTOES ENTERTAINMENT, which contains terms
also appearing in applicant’s mark, opposer has proved
his standing to maintain this proceeding. Section
2(d); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d
1023, 1025 (Fed. Cir. 1999) (an opposer must have “a
‘real interest’ in the outcome of a proceeding in order
to have standing.”); and Lipton Industries, Inc. v.
Ralston Purina Company, 670 F.2d 1024, 213 USPQ 185,
189 (CCPA 1982) (“To establish a reasonable basis for a
belief that one is damaged … a petition may assert a
likelihood of confusion which is not wholly without
merit.”)
Priority of Use
The question of priority of use is an issue in
this case because opposer does not own an existing
trademark registration upon which he can rely under
Section 2(d). Cf., King Candy Co., Inc. v. Eunice
King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
Opposition No. 91171220
5
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….”
Opposer has testified that he “began” AFROS-N-
SHELLTOES ENTERTAINMENT in 2002 as an independent
artist services company doing “DJ and promotions” with
“[r]appers, singers, poets, [and] managers at times
that want to promote their acts and groups,” primarily
to the African American community, and that he has used
AFROS-N-SHELLTOES ENTERTAINMENT without interruption
since 2002. Dep. at 8-9. As documentary evidence,
opposer submitted, inter alia, (a) a promotional
brochure which opposer testified he used in the 2002 to
2003 time frame, dep. at 10, and which states in
relevant part:
Afros-n-Shelltoes [E]ntertainment[,] A Consignment
Distribution Company.5 Afros-n-Shelltoes serves
as a Mediator between our valued Artists,
Producers, Writers and Retailers[.]

* * *
Afros and Shelltoes understands the
difficulties in beginning a career in the
music industry. In the world we live in
today, what you know is valuable, but who you
know will open doors for opportunity.
Building relationships is critical to
success. Afros and Shelltoes works as a
network between local independent music

5 Opposer clarified that he distributed CDs and tapes on
consignment.
Opposition No. 91171220
6
stores, producers, writers, and DJ’s [sic].
We work with local music retailers,
affectionately known as mom and pop’s stores,
so your music can be heard. The value will
be developing relationships with an audience
that enjoys listening to your music.”

(b) a domain registration for afros-n-shelltoes.biz
registered on September 29, 2003, which he “run[s]”
presently,6 dep. at 14 – 16; and (c) a business card
with opposer’s mark identifying “General Consultation,
Music Licensing, Copyright Registration and Band
Agreements” as opposer’s services. Additionally,
opposer testified that he promoted his business “afros-
n-shelltoes” on the radio in the 2003 – 2004 timeframe.
Dep. at 18.
The earliest date on which applicant can rely is
the filing date of his application, which is April 20,
2005. See Intersat Corp. v. International
Telecommunications Satellite Organization, 226 USPQ
154, 156 n. 5 (TTAB 1985) (“The earliest date of first
use upon which Intelsat can rely in the absence of
testimony or evidence is the filing date of its
application”).
Because opposer has established that he began
using, and has continuously used, his mark in commerce
from a time earlier than the filing date of applicant’s

6 The registration of the domain name corroborates opposer's
statements regarding use of the mark.
Opposition No. 91171220
7
application, opposer has established his priority for
the services for which opposer has alleged and
demonstrated he has used his mark, namely, “disc jockey
services and artist management and promotion services,
including the representation of rappers, singers and
poets, as well as the representation of managers who
want to promote their acts and groups.”7
Likelihood of Confusion
We now consider the first claim raised by opposer,
his claim of likelihood of confusion. Our
determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are
relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
See also, In re Majestic Distilling Company, Inc., 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 [services] and
differences in the marks.” Federated Foods, Inc. v.

7 At p. 6 of his brief, opposer characterizes his business
as “an ‘independent artist services company’ … for which he
does ‘DJ and promotions’ for ‘rappers, singers, poets,
managers at times that want to promote their acts and
groups.’”
Opposition No. 91171220
8
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976).
At the outset, we note that, as indicated above,
in Paragraph No. 43 of his answer, applicant admitted
that the marks at issue are confusingly similar.
We first turn to the du Pont factor regarding the
similarities of the marks in our likelihood of
confusion analysis, considering whether the marks in
their entireties are similar in sound, appearance,
meaning, 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
subjected to 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. The focus is on
the recollection of the average purchaser, who normally
retains a general rather than a specific impression of
trademarks. See Grandpa Pidgeon's of Missouri, Inc. v.
Borgsmiller, 477 F.2d 586, 177 USPQ 573 (CCPA 1973);
and Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106
(TTAB 1975).
Opposition No. 91171220
9
In articulating reasons for reaching a conclusion
on the issue of likelihood of confusion, “there is
nothing wrong in stating that, for rational reasons,
more or less weight has been given to a particular
feature of a mark, provided [that] the ultimate
conclusion rests on a consideration of the marks in
their entireties.” In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751. For instance, “that a
particular feature is descriptive or generic with
respect to the involved goods or services is one
commonly accepted rationale for giving less weight to a
portion of a mark ….” Id.
Applicant’s mark is FROM AFROS TO SHELLTOES ART,
ACTION, AND CONVERSATION. Applicant, in his original
application, claimed acquired distinctiveness in the
mark as a whole. A claim of distinctiveness, whether
made in the application as filed or in a subsequent
amendment, may be construed as conceding that the
matter to which it pertains is not inherently
distinctive and, thus, not registrable on the Principal
Register absent proof of acquired distinctiveness.
See, e.g., Yamaha Int’l Corp. v. Hoshino Gakki Co.
Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988); In
re Cabot Corp., 15 USPQ2d 1224 (TTAB 1990); and In re
Professional Learning Centers, Inc., 230 USPQ 70 (TTAB
Opposition No. 91171220
10
1986). See also TMEP § 1212.02(b). It is not clear to
us why applicant claimed acquired distinctiveness in
the FROM AFROS TO SHELLTOES portion of his mark and why
the showing applicant made with his initial application
persuaded the examining attorney that applicant had
established acquired distinctiveness in the remaining
terms of the mark, i.e., ART, ACTION, AND CONVERSATION.
Applicant's showing only comprised three items, i.e.,
(a) a flyer for an April 11, 2005 lecture in the
multipurpose room of the university union at an
undisclosed university, (b) another flyer for an April
11, 2005 lecture during Hip Hop Week at an undisclosed
institution’s Union Multipurpose Room,8 and (c) a copy
of a Georgia state trademark registration for
applicant's mark. This type of evidence does not
establish acquired distinctiveness for even the least
merely descriptive mark.
ART, ACTION AND CONVERSATION refers to a feature
of applicant’s educational services; we therefore
accord this portion of applicant's mark less weight in
our consideration of the marks. Applicant’s flyer
states, “This program is an engaging mix of edutainment
[sic], poetry and open forums that aims to build
fruitful cross-generational relationships [to]

8 Presumably, these are flyers for the same event.
Opposition No. 91171220
11
cultivate future leaders and use the Black aesthetic as
a political force”; and his specimen of use states,
“During this solution oriented workshop participants
will learn to build fruitful cross-generational
relationships and recognize community building and art
as political forces.” We therefore find FROM AFROS TO
SHELLTOES is the dominant element in applicant’s mark.
ENTERTAINMENT in opposer's AFROS-N-SHELLTOES
ENTERTAINMENT mark is generic for opposer's
entertainment-related services, with AFROS-N-SHELLTOES
as the dominant portion. AFROS-N-SHELLTOES and FROM
AFROS TO SHELLTOES are highly similar in meaning,
sound, connotation and appearance. The differences in
wording in the marks does not alter the overall meaning
and commercial impression of the marks. We therefore
find, when considering the marks as a whole, that they
are similar and resolve the du Pont factor regarding
the similarity of the marks in opposer's favor.
Next, we consider the similarity of the services.
We consider only those services for which opposer has
established priority and for which he has been and is
continuously using his mark (and which are closest to
applicant’s services), namely, artist management and
promotion services, including the representation of
rappers, singers and poets, as well as the
Opposition No. 91171220
12
representation of managers who want to promote their
acts and groups, and the services identified in
applicant’s application, i.e., “educational services,
namely, conducting workshops and seminars in arts and
entertainment, hip-hop, cross generational
relationships, community building, and art as a
political force to lessen misunderstandings between
civil rights and hip hop generations.”
The parties’ services need not be identical or
even competitive to support a finding of likelihood of
confusion. Rather, it is enough that the services are
related in some manner or the circumstances surrounding
their marketing are such that they would be likely to
be seen by the same persons under circumstances which
could give rise, because of the marks used thereon, to
a mistaken belief that they originate from or are in
some way associated with the same producer or that
there is an association between the producers of each
parties’ services. In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991).
We find that the potential purchasers of opposer's
and applicant's respective services overlap.
Specifically, the same rappers and singers who
participate in applicant’s lecture workshops and
seminars in order to define any message in their works
Opposition No. 91171220
13
tending to lessen misunderstandings between civil
rights and hip hop generations, are likely to take
advantage of opposer's artist management and promotion
services in commercializing their art.
With regard to the marketing of the services, the
record reflects that both parties have advertised, or
at least attempted to advertise, in the same newspaper,
namely, Creative Loafing, “a local publication … in
Atlanta that pretty much caters to independent circuit
artists. Art. Music.” Dep. at 29. (When opposer
sought to advertise in Creative Loafing, applicant sent
a cease and desist letter to opposer with a copy to
Creative Loafing, and Creative Loafing refused to run
opposer's advertisement.) Further, opposer testified
that he advertised his services on the radio, i.e.,
“multi-ethnic [radio] … it’s different, depending on
what time. And I specifically focused on the hip-hop,
African American aspect.” Dep. at 18. Applicant’s
workshops and seminars would also likely be advertised
on the radio, and even during the same radio programs.
Additionally, opposer testified that he distributed
flyers and business cards, and that he distributed
questionnaires to independent record store owners and
managers. Dep. at 9 and 11. Independent record
stores, where new musicians or musical groups would
Opposition No. 91171220
14
likely place their works for sale to the general
public, would also be a place where applicant would
leave his flyers, such as the flyers accompanying
applicant’s original application. Thus, we find the
services are marketed in a similar manner.
Because both parties’ services are directed to the
same purchasers and are marketed in a manner that they
would be likely to be seen by the same persons under
circumstances which could give rise, because of the
marks used thereon, to a mistaken belief that they
originate from or are in some way associated with the
same producer or that there is an association between
the producers of each parties’ services, we find that
the services are related to one another. Our finding
is supported by applicant’s attorney’s statement, in
his April 4, 2005 cease and desist letter sent to
opposer, that opposer’s “advertisements incorporate
similar services and references which are intended to
foster an association with Afros-N-Shelltoes and/or
which would be confusingly similar.” Dep. ex. 6.
Thus, the du Pont factors regarding the similarity
of the purchasers, trade channels and services are all
resolved in opposer's favor.
The next du Pont factor we consider is the number
and nature of similar marks in use on similar goods.
Opposition No. 91171220
15
Because there is no evidence of third-party use of any
mark containing the terms AFROS or SHELLTOES, this
factor is neutral, and insofar as it shows the strength
of opposer's mark, it favors opposer.
The Board has recognized that we may consider bad
faith in the likelihood-of-confusion analysis under the
thirteenth du Pont factor. L.C. Licensing Inc. v.
Berman, 86 USPQ2d 1883, 1890 (TTAB 2008). In this
regard, the record reflects that in May 2004, opposer
met with Marvin Arrington, Jr., a private practice
attorney in Georgia, to review his artist contracts.
Opposer provided Mr. Arrington with his business card
containing AFROS-N-SHELLTOES ENTERTAINMENT, and various
documents bearing “Afros-N-Shelltoes Entertainment.” A
letter from Mr. Arrington dated May 11, 2005 addressed
to opposer's attorney acknowledges that opposer “did
indeed come to see me about the possibility of
incorporating a company Afros-N-Shelltoes, Inc.” Dep.
ex. 14. Mr. Arrington’s May 11, 2005 letter follows
Mr. Arrington’s April 4, 2005 cease and desist letter
addressed to opposer, asserting, inter alia, trademark
infringement and demanding that he cease using AFROS-N-
SHELLTOES.
Mr. Arrington is the sole organizer and registered
agent of Babuke Brothers, LLC (“Babuke”). Ex. 8 to
Opposition No. 91171220
16
dep., i.e., Articles of Organization (in Georgia),
dated August 8, 2001, for Babuke. Babuke registered
the domain name afrostoshelltoes.com on December 13,
2004, seven months after Mr. Arrington met opposer.9
Two months after Babuke registered the domain name, on
February 15, 2005, applicant registered the service
mark FROM AFROS TO SHELLTOES ART, ACTION, AND
CONVERSATION in Georgia. Dep. exs. 10 and 11. On
April 20, 2005, applicant filed for federal
registration of his mark.
Significantly, applicant has admitted that he is a
co-owner of Babuke. Answer, ¶ 18.
We have not heard from applicant regarding these
facts, but note that Mr. Arrington’s May 11, 2005
letter acknowledges that opposer visited his office and
states that he “did not share any information with Mr.
Garnes and that Mr. Garnes approached me with the mark
independent of any actions by your client.” This
general denial does not persuade us that Mr. Arrington
did not communicate with applicant regarding opposer's
mark, especially when (a) opposer consulted with Mr.
Arrington regarding his trademark, and seven months
later, Babuke – jointly owned by applicant and Mr.

9 Applicant admitted that he “process[ed the] Domain name.”
Answer, ¶ 17.

Opposition No. 91171220
17
Arrington – registered a very similar domain name to
opposer's mark, (b) both marks contain the unusual term
“shelltoes,” an undefined term, juxtaposed after the
“Afros,” and (c) both parties are located in Georgia,
dep. at 57, advertising in the same Atlanta newspaper
(suggesting knowledge of one another prior to the
exchange of cease and desist letters). Applicant could
have participated at trial and proffered an explanation
as to how he came to adopt his mark under these
circumstances, but evidently choose not to. We
therefore conclude that applicant filed his application
for services related to those of opposer with the full
knowledge of opposer's prior mark with the intention to
trade off of opposer's goodwill in his mark, and find
that applicant acted in bad faith in adopting his mark
and prosecuting his application. “Such bad faith is
strong evidence that confusion is likely, as such an
inference is drawn from the imitator's expectation of
confusion.” L.C. Licensing Inc. v. Berman, 86 USPQ2d
1883, 1891 (TTAB 2008).
Conclusion
After considering all competent evidence bearing
on the relevant du Pont factors, we conclude that there
is a likelihood of confusion between opposer's mark
when used in connection with “artist management and
Opposition No. 91171220
18
promotion services, including the representation of
rappers, singers and poets, as well as the
representation of managers who want to promote their
acts and groups,” and applicant's mark when used in
connection with “educational services, namely,
conducting workshops and seminars in arts and
entertainment, hip-hop, cross generational
relationships, community building, and art as a
political force to lessen misunderstandings between
civil rights and hip hop generations.” Our conclusion
is based, in particular, on the similarity of the marks
and services, the identical trade channels and
purchasers, and the fact that applicant has acted in
bad faith.
False Suggestion of a Connection
“[I]n inter partes proceedings before the Board,
an essential element of a Section 2(a) claim of false
suggestion of a connection is that the defendant's
mark must point uniquely and unmistakably to the
identity or persona of the ‘person’ or ‘institution’
asserting the claim. If the defendant's mark does not
point uniquely and unmistakably to the plaintiff's
identity or persona, then there can be no false
suggestion of a connection.” Internet Inc. v.
Corporation for National Research Initiatives, 38
Opposition No. 91171220
19
USPQ2d 1435, 1436 (TTAB 1996). In this case, opposer
has failed to allege or demonstrate at trial that
AFROS-N-SHELLTOES ENTERTAINMENT is “uniquely and
unmistakably” his identity or persona. Opposer’s claim
of false suggestion of a connection is therefore
denied.
No Bona Fide Use Prior to Filing
Opposer relies on a typographical error in the
date of applicant's specimen of use filed with his
original application in arguing that applicant had no
bona fide use of his mark in commerce prior to the
filing date of his application. Specifically, he
argues that the January 15, 2004 event noted on the
specimen of use (a flyer) actually occurred on January
15, 2005. However, applicant filed his application on
April 11, 2005, after the actual date of the event.
Opposer has not demonstrated by this evidence, or any
other evidence, that applicant had not made actual bona
fide use of his mark prior to the filing date of his
application. Thus, opposer's claim of no bona fide use
prior to the filing of the application is denied.
DECISION: The opposition is sustained on the
ground of likelihood of confusion and registration to
applicant is refused. Opposer's claims of false
Opposition No. 91171220
20
suggestion of a connection and no bona fide use are
denied.