Edward Watson

Trademark Trial and Appeal Board

Jun 3, 2014

No. 85775921 (T.T.A.B. Jun. 3, 2014)

Mailed: June 3, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Watson
________

Serial No. 85775921
_______

Matthew H. Swyers of The Trademark Company, for Edward Kenneth Watson.

Nicholas Altree, Trademark Examining Attorney, Law Office 107 (J. Leslie Bishop,
Managing Attorney).
_______

Before Kuhlke, Ritchie and Adlin, Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Edward Kenneth Watson (“Applicant”) filed an Application to register the mark
ORGASMIC,1 in standard character form, for goods identified as “books in the field of
sexual education,” in International Class 16. The Trademark Examining Attorney
refused registration of Applicant’s mark under Section 2(d) of the Trademark Act of
1946, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the prior
registered mark ORGAZMIK,2 in typed drawing format,3 for “prerecorded DVDs, CD-

1 Application Serial No. 85775921, filed on November 9, 2012, pursuant to Section 1(b) of the
Trademark Act, alleging a bona fide intent to use.
2 Registration No. 2689986, issued February 25, 2003. Sections 8 and 15 accepted and
acknowledged. Renewed.
This Opinion Is Not a
Precedent Of The TTAB
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Serial No. 85775921
3
particular case.” In re Dixie Restaurants Inc., 41 USPQ2d at 1533 citing du Pont, 177
USPQ at 567. See also Giersch v. Scripps, 90 USPQ2d 1020, 1025 (TTAB 2009).
Marks and Strength

We consider and compare the appearance, sound, connotation and commercial
impression of the marks in their entireties. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). “The 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) (citation omitted). The mark in the cited
Registration is ORGAZMIK, whereas Applicant’s mark is ORGASMIC. As Applicant
concedes, these terms are phonetic equivalents, and they are visually quite similar as
well.
Because the mark in the cited Registration is not an actual word, but would be
construed to be a misspelling of “ORGASMIC,” which is Applicant’s mark, they
provide the same commercial impression of extreme sexual pleasure.4

4 We take judicial notice of the definition of “orgasm” as “intense or paroxysmal excitement;
especially: an explosive discharge of neuromuscular tensions at the height of sexual arousal
that is usually accompanied by the ejaculation of semen in the male and by vaginal
contractions in the female.” Merriam-Webster’s Online Dictionary, 11th Ed. (2008). The Board
may take judicial notice of dictionary definitions. University of Notre Dame du Lac v. J.C.
Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983).

Serial No. 85775921
4
In view thereof, as to the first du Pont factor, we find that the similarity of the
marks and their commercial impressions weigh in favor of finding likelihood of
confusion.
Applicant urges us to consider the weakness of the term “ORGASMIC,” and to that
end has included in the record evidence of 10 third-party registrations that include the
term “ORGASMIC,” or “ORGASM,” for goods or services similar or related to those at
issue in this proceeding, including ORGASMIC BIRTH, ORGASMIC MEDITATION,
MOTORIZED ORGASMIC RELEASE, FLABBERGASMIC, HAPPY ENDINGS
ORGASMICALLY ORGANIC, ORGASM, and design, ORGASM ARTS, REAL
ORGASMS, SCREAMING ORGASM, and I FEMALE ORGASM, and design. We note
that several of these registrations include a disclaimer of the term “orgasm.” Although
third-party registrations are not evidence of use, they may be evidence in the manner
of dictionary definitions to show that a term is highly suggestive. See TBMP
§ 704.03(b)(1)(B), and cases cited therein. Accordingly, we agree with Applicant that
the term “ORGASMIC” is highly suggestive of the goods and services at issue in this
proceeding. Nevertheless, the marks at issue herein are more similar to each other
than to any of the 10 submitted by Applicant, and Applicant did not submit any
evidence of actual use of the term, much less evidence of extensive use of the term by
third parties.
While the evidence is therefore not sufficient to make a finding as to the “number
and nature of similar marks in use on similar goods” under the sixth du Pont factor,
we find that the conceptual weakness of the marks limits the scope of protection to be
accorded the marks.
Serial No. 85775921
5
Goods and Services and Channels of Trade
The Application identifies “books in the field of sexual education” whereas the
cited Registration identifies “prerecorded DVDs, CD-Roms, video tapes, audio tapes
and motion picture films all containing adult entertainment,” and “retail store services
and computerized retail online services available via the Internet in the field of adult
entertainment programs and items.” The Examining Attorney has attempted to
demonstrate the relatedness of these goods and services by submitting third-party
registrations, which, if they include goods and services identified in both the
Application and the cited Registration, may serve to suggest that they are of a type
which may emanate from a single source under a single mark. See In re Davey Prods.
Pty. Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009); In re Albert Trostel & Sons Co., 29
USPQ2d 1783 (TTAB 1993). However, of the many registrations submitted, we find
that not more than one or two show books in the field of sexual education, as identified
by Applicant, included in the same registration as video or other recordings featuring
adult entertainment as identified in the cited Registration.
Furthermore, Applicant has submitted an affidavit attesting that there is no
overlap in the goods and services. (Watson decl., para. 3). Applicant also attested that
there is no overlap in the channels of trade. Id. at para. 7. In sum, we find that the
Examining Attorney did not sustain his burden.
Accordingly, we find that the goods and services are unrelated and travel in
different channels of trade, and these du Pont factors weigh against finding a
likelihood of confusion.

Serial No. 85775921
6
Consumer Sophistication
Applicant urges us to consider consumer sophistication as a factor. To this end,
Applicant’s affidavit expresses that his clients “exercise a very high level of
sophistication.” (Watson decl., para. 9). The affidavit further states that prices for
Applicant’s books begin at $9.99 for e-books, while prices for Registrant’s retail
services begin at $.30/minute.5 These are not price points at which consumers would
exercise an extreme degree of care. Furthermore, as our precedent dictates, with
highly similar marks, even sophisticated buyers are not immune from source
confusion. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844
(Fed. Cir. 2000). Nevertheless, consumers may exercise some degree of care in
choosing between these types of goods and services that are of a personal nature,
which would tend to negate a likelihood of confusion. Accordingly, we find this du Pont
factor to be be neutral.
Balancing the Factors
In summary, we have carefully considered all of the evidence and arguments of
record relevant to the pertinent du Pont likelihood of confusion factors. We conclude
that while the marks are similar and would likely have the same commercial
impression, they are also highly suggestive, and the goods and services have not been
shown to be related. Accordingly, we find there is no likelihood of confusion between
Applicant’s mark ORGASMIC for “books in the field of sexual education,” and the cited
Registered mark ORGAZMIK for “prerecorded DVDs, CD-Roms, video tapes, audio

5 This evidence supports our finding that applicant’s goods and at least Registrant’s retail
services are unrelated – readers do not pay by the minute.
Serial No. 85775921
7
tapes and motion picture films all containing adult entertainment,” and “retail store
services and computerized retail online services available via the Internet in the field
of adult entertainment programs and items.”

Decision: The refusal to register is reversed.