Eric Aguirre and Henry Olortegui

Trademark Trial and Appeal Board

Sep 18, 2013

No. 85423536 (T.T.A.B. Sep. 18, 2013)

Mailed: September 18, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Eric Aguirre and Henry Olortegui
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Serial No. 85423536
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Milord A. Keshishian of Milord & Associates PC for Eric Aguirre and Olortegui.
Curtiss French, Trademark Examining Attorney, Law Office 115 (John Lincoski,
Managing Attorney).
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Before Cataldo, Lykos and Adlin, Administrative Trademark Judges.
Opinion by Lykos, Administrative Trademark Judge:

Eric Aguirre and Henry Olortegui (“applicants”) filed an application to register
the mark FLIGHT CLUB in standard character form for, as amended,
“Entertainment information services, namely, providing information and news
releases about a musical artist; Entertainment services by a musical artist and
producer, namely, musical composition for others and production of musical sound
recordings; Entertainment services in the nature of presenting live musical
performances; Entertainment services in the nature of recording, production and
post-production services in the field of music; Entertainment services, namely,
This Opinion is Not a
Precedent of the TTAB
Serial No. 85423536
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providing information about a recording artist via an online network; Music
composition for others; Music composition services; Music production services;
Music publishing services; Providing a website featuring information in the field of
music and entertainment, excluding information in the field of burlesque shows,
beauty pageants and adult entertainment; Production and distribution of music
recordings” in International Class 41.1
The Trademark Examining Attorney refused registration of applicants’ mark
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground
that applicants’ mark so resembles the registered mark displayed below

for “Night clubs; Entertainment in the nature of live variety and burlesque shows,
beauty pageants, and dances; Computer services, namely, providing online
magazines in the field of adult entertainment” in International Class 41,2 that when
used on or in connection with applicants’ identified services, it is likely to cause
confusion or mistake or to deceive. The description of the cited mark is as follows:
The mark consists of an image of a crossed pair of women's legs wearing
shoes and underwear set on a background of aviator wings with the words

1 Application Serial No. 85423536, filed September 15, 2011, pursuant to Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).

2 Registration No. 3875485, issued November 16, 2010, with a disclaimer of CLUB.
Serial No. 85423536
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"FLIGHT CLUB" appearing above the image with a semi-circle arch
superimposed over the wording. The woman's legs appear in cream color
and the shoes and underwear are colored in black. Each of the two wings
appear in light purple, blue and red transitioning in that order of color
from outward in inward. The words "FLIGHT CLUB" appear in red with
white shading running through the middle of the words. The arch image
appears in purple.

The color(s) red, purple, light purple, white, blue, cream and black are claimed as
features of the mark.
In an attempt to circumvent the refusal, during ex parte prosecution, applicants
amended the recited services in part to “providing a website featuring information
in the field of music and entertainment, excluding information in the field of
burlesque shows, beauty pageants and adult entertainment.” This appeal follows
the Trademark Examining Attorney's final refusal and denial of applicants’ request
for reconsideration. For the reasons explained below, we affirm the refusal to
register.
We base our determination under Section 2(d) on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”).
See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (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). These factors and the other relevant du Pont
factors are discussed below.
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I. Services/Trade Channels/Conditions of Purchase
We first consider the services, channels of trade, and conditions of purchase.
Applicants argue that by amending the recitation of services to add the exclusionary
language noted above to their Internet content provision services, they have
obviated any likelihood of confusion. In addition, applicants contend that their
services are distinct from those provided by registrant insofar as registrant offers
“adult entertainment services at brick and mortar locations and an online adult
entertainment magazine” whereas applicants’ musical recording services consist of
“gathering ideas for a project, selecting songs and musicians, coaching the artist
and musicians in the studio, controlling the recording sessions, [and] mixing and
mastering the music.” Applicants’ Brief, p. 14.
The fact that applicants restricted only their recited Internet content provision
services in their recitation of services does not obviate the refusal in this case. This
is because the remaining services in applicants’ recitation remain unrestricted.
Most notably, applicants’ “[e]ntertainment services in the nature of presenting live
musical performances,” is sufficiently broad to encompass registrant’s more
narrowly defined “[e]ntertainment in the nature of live variety and burlesque
shows,” and therefore the services are legally identical.3 Although applicants are
correct that they are providing some services that are distinct such as “music
composition services,” likelihood of confusion must be found if there is likely to be
confusion with respect to any single service that comes within the recitation of

3 “Burlesque” is defined as “a type of performance or entertainment that involves jokes,
songs, and usually strippers.” www.macmillandictionary.com (July 28, 2012 Office Action).
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services in the application. See Tuxedo Monopoly, Inc. v. General Mills Fun Group,
648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
In addition, because the recitation of services in the involved application and
registrant’s nightclub and entertainment services are unrestricted as to trade
channels, we must presume that these services travel in ordinary trade and
distribution channels for those services and will be marketed to the same potential
consumers. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981), citing Kalart Co., Inc.
v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958). Consequently,
applicants’ argument that registrant’s consumers consist only of those seeking adult
entertainment necessarily fails. As we have often stated, we are bound by the
respective recitations as stated in the involved application and registration(s). Id.
Thus, the in part identical nature of the services and channels of trade weigh
heavily in favor of finding a likelihood of confusion.
II. Comparison of the Marks
We now turn to the du Pont likelihood of confusion factor regarding the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. See Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005). “[T]he 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 so that
confusion as to the source of the services offered under the respective marks is
Serial No. 85423536
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likely to result.” H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1727 (TTAB
2008). The focus is on the recollection of the average purchaser, who normally
retains a general rather than a specific impression of trademarks. In re Jack B.
Binion, 93 USPQ2d 1531 (TTAB 2009); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975). At the outset we note that because the services are legally
identical, the degree of similarity between the marks that is necessary to support a
finding of likely confusion declines. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
Applicants argue that in the present case, this du Pont factor alone is dispositive
because when the marks are compared in their entireties, they are different and not
likely to be confused. See, e.g., Kellogg Co. v. Pack’em Enterprises Inc., 951 F.2d 330,
332-33, 21 USPQ2d 1142, 1144-45 (Fed. Cir. 1991). First, applicants contend that
the examining attorney improperly dissected the cited mark by according more
weight to the shared literal term FLIGHT CLUB while ignoring the design features
of registrant’s mark. Applicants argue that the examining attorney disregarded the
fact that the word FLIGHT is larger than the word CLUB in the registrant’s mark,
and that applicants’ word mark will “never incorporate all the significant design
features of Registrant’s mark, let alone the numerous color combinations.”
Applicants’ Appeal Brief, p. 11. In addition, applicants maintain that the common
element of both marks, the term FLIGHT CLUB, has “widely diverging
connotations” when considered in relation to applicants’ and registrant’s respective
services. Id. at 10. More specifically, applicants argue that while the term FLIGHT
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CLUB is arbitrary when used in relation to their recited services, by contrast it is
descriptive or at best highly suggestive when used in connection with registrant’s
burlesque and dance services. Applicants contend that the mark FLIGHT CLUB
when used to identify applicants’ services connotes applicants’ “skilled contributions
to musical artists melodies, instrumentation, track progression, and/or live
performance or stage production” as inspiring a musical artist to “psychologically
‘take flight’ by formulating creative new ideas for unique musical arrangements,
optimal sound quality, fan-base expansion, and career advancement.” Id. at 11. By
contrast, applicants maintain that registrant’s mark creates the commercial
impression of “aerial erotic performers [who] almost literally take flight with their
bodies” by “suspending themselves from contraptions such as swings” “hence, the
winged nude legs and large “FLIGHT” symbols in Registrant’s composite mark.” Id.
at 12.
Applicants’ arguments are unconvincing. Applicants’ and registrant’s marks
each share the common term FLIGHT CLUB which appears as either the sole term
or prominently in each of the marks. We acknowledge the obvious differences in
stylization and presence of the design element in registrant’s mark. Nonetheless, it
is more likely that prospective consumers will overlook these distinctions and
instead confuse the marks as originating from the same source, given that they
either contain or consist solely of the literal element FLIGHT CLUB. It is well
established that when a mark consists of a word portion and a design portion, the
word portion is more likely to be impressed upon a purchaser’s memory and to be
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used in calling for the services; therefore, the word portion is normally accorded
greater weight in determining whether marks are confusingly similar. In re Dakin’s
Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999). See also CBS Inc. v. Morrow,
708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983); In re Kysela Pere et
Fils, Ltd., 98 USPQ2d 1261, 1267-68 (TTAB 2011).
Moreover, because applicants applied to register their mark in standard
character form, applicants’ mark may be used in any stylized display or color
scheme, including one that is identical to that used by registrant. See Trademark
Rule 2.52(a). That is to say, if applicants’ mark is registered, applicants would have
the right to use their word mark FLIGHT CLUB in the same stylized font, size and
shades of color as registrant.
As to applicants’ argument that the marks engender different commercial
impressions when considered in relation to the services, for the reasons articulated
above, because applicants’ “[e]ntertainment services in the nature of presenting live
musical performances” could necessarily encompass registrant’s more limited
burlesque show services, we find that the marks create the same commercial
impression.
We therefore find that applicants’ mark and registrant’s mark are similar in
appearance, sound, connotation and commercial impression. This first du Pont
factor also weighs in favor of finding a likelihood of confusion.
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III. Scope of Protection
Applicants contend that registrant’s mark is weak in light of the number of other
gentlemen’s clubs bearing the name FLIGHT CLUB. In support of their argument
that FLIGHT CLUB is descriptive and widely used and therefore weak, applicants
have submitted Internet search engine results for the term “flight club stripper”
purporting to show numerous other gentlemen’s clubs bearing the same name as
registrant. Request for Reconsideration, Ex. D.
The Board cannot ascertain the probative value of the evidence due to the
truncated nature of the search results. See In re Thomas Nelson, Inc., 97 USPQ2d
1712, 1715 (TTAB 2011) (search engine results submitted by examining attorney
not considered because they did not provide sufficient context to have any probative
value); In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1833 (Fed.
Cir. 2007) (“Search engine results—which provide little context to discern how a
term is actually used on the web page that can be accessed through the search
result link—may be insufficient to determine the nature of the use of a term or the
relevance of the search results to registration considerations”); In re Innovative
Companies LLC, 88 USPQ2d 1095, 1099 n.4 (TTAB 2008); In re Tea and Sympathy
Inc., 88 USPQ2d 1062, 1064 n.3 (TTAB 2008); In re King Koil Licensing Co., 79
USPQ2d 1048, 1050 (TTAB 2006); In re Thomas, 79 USPQ2d 1021, 1026 (TTAB
2006) (Google hits without any context for the hits is irrelevant); In re International
Business Machines Corp., 81 USPQ2d 1677, 1679 n.3 (TTAB 2006) (listings of
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search results from Google database of limited probative value because the excerpts
are extremely truncated). As such, we deem this du Pont factor neutral.
IV. Fame of the Prior Mark
With regard to the fifth du Pont fact of fame, applicants contend that because
registrant’s services are “limited to the Michigan state area,” their mark cannot be
considered famous. There is no evidence in the record that the cited registered mark
is famous. In any event, it is settled that the absence of such evidence is not
particularly significant in the context of an ex parte proceeding. See In re Thomas,
79 USPQ2d at 1027 n.11. Moreover, “[i]t is not necessary that a registered mark be
famous to be entitled to protection against a confusingly similar mark.” In re Big
Pig Inc., 81 USPQ2d 1436, 1439 (TTAB 2006). We therefore find that the fifth du
Pont factor is neutral in this case.
V. Lack of Actual Confusion
Lastly, we consider the eighth du Pont factor as argued by applicants.
Applicants contend that since they commenced use of their mark two years ago,
there have been no instances of actual confusion. However, “[t]he fact that an
applicant in an ex parte case is unaware of any instances of actual confusion is
generally entitled to little probative weight in the likelihood of confusion analysis,
inasmuch as the Board in such cases generally has no way to know whether the
registrant likewise is unaware of any instances of actual confusion….” In re Opus
One Inc., 60 USPQ2d 1812, 1817 (TTAB 2001). Furthermore, there is no evidence
that the nature and extent of applicants’ and registrant's actual use of their marks
Serial No. 85423536
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in the marketplace, including the extent of any geographical overlap, has been so
substantial so as to render the apparent absence of actual confusion legally
significant. See In re Thomas, 79 USPQ2d at 1028; In re Continental Graphics
Corp., 52 USPQ2d 1377 (TTAB 1999); Gillette Canada, Inc. v. Ranir, 23 USPQ2d
1768 (TTAB 1992). We therefore find that the eighth du Pont factor does not weigh
in applicant's favor in this case.
To the extent that there are any other relevant du Pont factors, we treat them as
neutral.
VI. Conclusion
After considering all of the evidence of record and argument pertaining to the du
Pont likelihood of confusion factors, we find that because the marks are similar and
share the same literal elements, the services are in part legally identical, and the
channels of trade and consumers are presumed to overlap, there is a likelihood of
confusion between applicants' mark and the registered mark when used in
connection with the identified services. To the extent there is any doubt, we resolve
it, as we must, in registrant’s favor. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840,
6 USPQ2d 1025 (Fed. Cir. 1988).
DECISION: The refusal to register under Section 2(d) of the Trademark Act is
affirmed.