No. 91211558 (T.T.A.B. Aug. 5, 2016)

Eric J. Figueroav.Black Entertainment Television LLC aka BET

Trademark Trial and Appeal BoardAug 5, 2016

No. 91211558 (T.T.A.B. Aug. 5, 2016)

This Opinion is Not a Precedent of the TTAB Mailed: August 5, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Eric J. Figueroa v. Black Entertainment Television LLC aka BET _____ Opposition No. 91211558 _____ Eric J. Figueroa, pro se.1 Michelena Hallie, Esq. for Black Entertainment Television LLC. _____ Before Taylor, Wolfson and Greenbaum, Administrative Trademark Judges. Opinion by Greenbaum, Administrative Trademark Judge: Black Entertainment Television, LLC (“Applicant”) seeks registration on the Principal Register of the mark BEING MARY JANE (in standard characters) for Entertainment services, namely, an on-going series featuring scripted content in the nature of a drama, provided through television, cable, satellite, wireless, and the Internet” in International Class 41.2 1 Matthew H. Swyers of The Trademark Company previously represented Opposer. On April 17, 2016, five days after Mr. Swyers filed Opposer’s brief, Opposer entered a written and signed revocation of attorney (25 TTABVUE), and thereafter proceeded pro se. 2 Application Serial No. 85592087 was filed on April 9, 2012, based upon Applicant’s allegation of a bona fide intention to use the marks in commerce under Section 1(b) of the Trademark Act. Opposition No. 91211558 - 2 - Eric J. Figueroa (“Opposer”) has opposed registration of Applicant’s mark on the ground that as used in connection with Applicant’s services, the mark so resembles Opposer’s previously used and registered mark MARY JANE for “Advertising and marketing; Advertising and publicity services, namely, promoting the goods, services, brand identity and commercial information and news of third parties through print, audio, video, digital and on-line medium”3 in International Class 35, as to be likely to cause confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). By its answer, Applicant denied the salient allegations of the Notice of Opposition. Applicant also raised the affirmative defenses of unclean hands, laches and acquiescence, none of which were pursued at trial or mentioned in Applicant’s brief, and therefore are deemed waived. See Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1753 n.6 (TTAB 2013). I. Record The record consists of the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the file of involved application Serial No. 85592087. Pursuant to the parties’ stipulation,4 Applicant submitted the testimony by affidavit of Vicky Free, Applicant’s Executive Vice President and Chief Marketing Officer,5 and Opposer submitted his testimony by affidavit.6 Opposer attached several 3 Reg. No. 3775862 registered on April 13, 2010. Section 8 Affidavit accepted; Section 15 Affidavit acknowledged. 4 17 TTABVUE 2. The Board approved the stipulation on July 7, 2015. 18 TTABVUE 1. 5 23 TTABVUE. 6 21 TTABVUE. Opposition No. 91211558 - 3 - exhibits to his affidavit, including a copy of his pleaded registration.7 In addition, Opposer submitted a Notice of Reliance on Applicant’s Answers to Opposer’s Interrogatories,8 Applicant’s Response to Opposer’s Requests for Admission (“Response to RFAs”),9 and a copy of his pleaded registration with a printout of the underlying application.10 Both parties filed briefs, and Opposer filed a reply brief.11 In addition, on April 17, 2016, concurrently with his revocation of the prior power of attorney, Opposer filed a “Motion to Correct 3 statements filed in Error” in his brief.12 Applicant has not opposed the motion, and we therefore grant the motion as conceded. See Trademark Rule 2.127(a), 37 C.F.R. § 2.127(a). 7 21 TTABVUE 11. 8 20 TTABVUE 5. 9 20 TTABVUE 19. Opposer submitted Applicant’s Response to RFAs in its entirety, even though the response includes denials and qualified admissions. Requests that have been denied have no probative value and, in fact, the Trademark Rules do not provide for submission of such denials by Notice of Reliance. See Trademark Rule 2.120(j)(3)(i); Life Zone Inc. v. Middleman Grp. Inc., 87 USPQ2d 1954, 1957 (TTAB 2008). We note that in their briefs, neither party mentioned Applicant’s Response to RFAs. 10 20 TTABVUE 27. 11 24 TTABVUE (Opposer’s Brief), 27 TTABVUE (Applicant’s Brief), and 28 TTABVUE (Opposer’s Reply Brief). 12 By this motion, Opposer seeks to change statements in his brief that he “uses the trademark MARY JANE on a web site posted to SativaTV.com [and MaryJaneTV.com] in connection with advertisements of others” on those websites, to “Mr. Figueroa uses the trademark MARY JANE in connection with marketing services, including with the web site[s] www.sativa.tv [and www.maryjanetv.com].” 26 TTABVUE 2. Opposition No. 91211558 - 4 - II. Standing/Priority As noted above, Opposer’s pleaded registration is of record.13 Although Opposer did not submit a status and title copy of the registration, or a printout from the USPTO’s electronic database showing the current status and title of this registration, Opposer testified that “[t]he registration is valid and the trademark remains in use today and has been in continuous use since August 31, 2009 in connection with the [identified] services.”14 As for ownership of the pleaded registration, Opposer testified that he filed the opposition because he was concerned about likelihood of confusion with “my registered trademark MARY JANE.”15 Opposer therefore has established his standing to oppose registration of Applicant’s mark. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). In addition, because Applicant did not counterclaim to cancel the registration, Opposer’s priority is not in issue as to the mark and the services listed in the registration. King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Further, in its brief, Applicant does not contest Opposer’s standing or priority. We turn now to the issue of likelihood of confusion under Section 2(d). 13 21 TTABVUE 11. 14 21 TTABVUE 3, ¶ 10. 15 21 TTABVUE 3, ¶¶ 18-19. Opposition No. 91211558 - 5 - III. Likelihood of Confusion Our likelihood of confusion determination under Section 2(d) 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). Opposer must establish that there is a likelihood of confusion by a preponderance of the evidence. In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). A. Comparison of the Marks We consider first the du Pont factor of the similarities and dissimilarities between Applicant’s mark BEING MARY JANE and Opposer’s mark MARY JANE. We analyze “the marks in their entireties as to appearance, sound, connotation and commercial impression.” In re Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting du Pont, 177 USPQ at 567). See also Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). Further, “[t]he 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) Opposition No. 91211558 - 6 - (quoting Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901, 1905 (TTAB 2007)). The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. In re Binion, 93 USPQ2d 1531 (TTAB 2009); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). In comparing the two marks, we note that Applicant’s mark BEING MARY JANE incorporates the entirety of Opposer’s mark MARY JANE. Thus, although the marks are not identical in sound and appearance, they are similar in sound and appearance in that they both contain the same wording MARY JANE. Likelihood of confusion often has been found where the entirety of one mark is incorporated within another. See Coca-Cola Bottling Co. of Memphis, Tennessee, Inc. v. Joseph E. Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) (applicant’s mark BENGAL LANCER for club soda, quinine water and ginger ale is likely to cause confusion with BENGAL for gin); Johnson Publ’g Co. v. Int’l Dev. Ltd., 221 USPQ 155, 156 (TTAB 1982) (applicant’s mark EBONY DRUM for hairdressing and conditioner is likely to cause confusion with EBONY for cosmetics); In re Cosvetic Labs., Inc., 202 USPQ 842 (TTAB 1979) (applicant’s mark HEAD START COSVETIC for vitamins for hair conditioners and shampoo is likely to cause confusion with HEAD START for men’s hair lotion and after-shaving lotion). Applicant argues, without support, that the term “Mary Jane” is weak. Applicant references a “myriad of live registrations … that use the common element of the two Opposition No. 91211558 - 7 - marks – MARY JANE,”16 and lists seven examples in its brief, but none of the “myriad” registrations is of record.17 Likewise, Applicant references “a cursory Internet search [that] reveals scores of common law uses of the term ‘Mary Jane’,”18 including as a slang term for marijuana, a type of candy, and a photography company based in New York, but Applicant failed to make of record the search results. Applicant has not shown the term “Mary Jane” to be conceptually or commercially weak, or to possess any special meaning in the context of Opposer’s identified services. As a result, we find the term arbitrary and strong. Palm Bay, 73 USPQ2d at 1692 (“VEUVE is an arbitrary term as applied to champagne and sparkling wine, and thus conceptually strong as a trademark.”). Applicant also argues that the marks differ in connotation, as “Mary Jane” “is used to refer to marijuana”19 and Opposer’s SativaTV.com and MaryJaneTV.com websites only post articles and videos about marijuana, while the prefatory word “Being” in Applicant’s mark BEING MARY JANE results in a mark that describes the content of a show about a fictional character named Mary Jane.20 However, 16 27 TTABVUE 9. 17 We note that Applicant did not provide copies of the listed registrations, or the full information regarding them in the USPTO TSDR electronic database. Generally, a mere listing is insufficient to make such registrations of record. In re Dos Padres Inc., 49 USPQ2d 1860, 1861 n.2 (TTAB 1998). We see no reason in this case to deviate from our common practice. 18 27 TTABVUE 9. 19 27 TTABVUE 10. 20 Applicant points to an entry from URBAN DICTIONARY as evidence that “’Mary Jane’ has long been used as a slang term for marijuana.” 27 TTABVUE 10 n.4. However, Applicant did not make this entry of record. Although the Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), we decline to take judicial Opposition No. 91211558 - 8 - Opposer’s identification of services is not limited to marketing and advertising services pertaining to marijuana, and we cannot read such limitations into the identified services. Rather, we are bound by the identifications of services in the application and registration. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Overall, we find that the marks MARY JANE and BEING MARY JANE are more similar than they are different in terms of appearance and sound, and that they convey the same commercial impression of a personal name. As such, this du Pont factor favors a finding of likelihood of confusion. B. Comparison of the Services We next consider the services as they are identified in the registration and application. Stone Lion, 110 USPQ2d at 1161; Octocom, 16 USPQ2d at 1787. See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). The registration identifies advertising, marketing and publicity services for third parties, and the application identifies “an on-going series featuring scripted content in the nature of a drama, provided through television, cable, satellite, wireless, and the Internet.” There is no testimony or record evidence concerning the notice of the definition of “Mary Jane” from URBAN DICTIONARY, as we have recognized the limitations of evidence from that source. See In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2062 n.3 (TTAB 2013). However, we take judicial notice of the term “Mary Jane” from the RANDOM HOUSE DICTIONARY (2016) (accessed through Dictionary.com Unabridged), which defines “Mary Jane” variously as a type of cake, a brand of candy, a brand of young girls’ shoes, and as a slang term for marijuana. Opposition No. 91211558 - 9 - relationship between such services and the advertising, marketing and publicity services identified in the pleaded registration, and such a relationship is not apparent on the face of the application and registration. Opposer argues that consumers likely will believe, mistakenly, that Applicant’s television series and Opposer’s advertising and marketing services are connected because Applicant broadcasts and promotes episodes of the show named ‘Being Mary Jane’ on its website, and Applicant also runs unrelated banner advertisements on the same website.21 However, Applicant’s promotion of its own television show on its website does not constitute advertising and marketing services for others. Carefirst of Maryland Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492, 1502 (TTAB 2005) (“To qualify as a ‘service,’ a service must be a real activity; a service must be performed to the order of, or for the benefit of, someone other than the applicant or registrant; and the activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant’s goods or the performance of another service.”) (citing In re Canadian Pac. Ltd., 754 F.2d 992, 224 USPQ 971 (Fed. Cir. 1985)). Cf. In re Radio Corp. of Am., 205 F.2d 180, 98 USPQ 157 (CCPA 1953) (record manufacturer who prepares radio programs primarily designed to advertise and sell records is not rendering a service); In re Reichhold Chems., Inc., 167 USPQ 376, 377 (TTAB 1970) (“It is well settled that promoting the sale and use 21 24 TTABVUE 12. In addition, Opposer avers in his affidavit that he owns the domain names “SativaTV.com” and “MaryJaneTV.com” (21 TTABVUE 3, ¶¶ 11-16) which he claims he uses “in connection with Marketing Services” (21 TTABVUE 3, ¶ 17), but the websites appear to be completely unrelated to marketing services. Thus, Opposer’s statements in his brief (as corrected) that he “uses the trademark MARY JANE in connection with marketing services, including with the [three] web site[s]” (26 TTABVUE 2) are unsubstantiated. Opposition No. 91211558 - 10 - of one’s goods is not, per se, a service within the meaning of the statute.”). Moreover, even if Applicant broadcasts its show “Being Mary Jane” on its website “in close proximity to advertisements for others (e.g., 5-hour Energy),”22 we cannot conclude that consumers consequently could mistakenly believe that Applicant provides marketing and advertising services for others or that Applicant’s “Being Mary Jane” television show and Opposer’s marketing and advertising services are related. The mere running of a third-party banner advertisement does not mean that Applicant provides marketing and advertising services for others. Rather, Applicant simply is providing a platform for a banner advertisement prepared by another entity. Indeed, Applicant’s witness, Ms. Free, testified that Applicant “does not provide, and has never provided, any advertising or marketing services for others, either under the mark ‘Being Mary Jane’ or any other trade mark,” that Applicant “does not use the mark ‘Being Mary Jane’ in any capacity other than in connection with the television series of the same name,” and that Applicant “does not license, and has never licensed the use of the mark ‘Being Mary Jane’ to any other party at any time.”23 We distinguish On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000), on which Opposer relies as support for his position that the services identified in the involved application and pleaded registration are related. Unlike the present case, both parties in On-Line Careline were Internet service providers, the marks were nearly identical and used on services found to be 22 24 TTABVUE 13. 23 TTABVUE ¶¶ 13-15. Opposition No. 91211558 - 11 - “closely related” (ON-LINE TODAY for Internet connection service and ONLINE TODAY for electronic publications), and “available from a single source.” Id., 56 USPQ2d at 1475. The du Pont factor of the similarity of services does not favor a finding of likelihood of confusion. C. Channels of Trade Finally, Opposer contends that because the services identified in the application and registration are provided over the Internet, the services move through the same channels of trade. This argument is contrary to our precedent, and entirely unpersuasive. See Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1743 (TTAB 2014) (citing Parfums de Couer Ltd. v. Lazarus, 83 USPQ2d 1012, 1021 (TTAB 2007) (“[T]he mere fact that goods and services may both be advertised and offered through the Internet is not a sufficient basis to find that they are sold through the same channels of trade.”)). There is nothing of record to demonstrate any relatedness or overlap in the trade channels. We consider this du Pont factor neutral. IV. Conclusion After considering all evidence and arguments bearing on the relevant du Pont factors, we conclude that despite the similarities between Applicant’s mark BEING MARY JANE and Opposer’s mark MARY JANE, the services identified in the application and registration are not sufficiently related such that contemporaneous use of the marks in connection with such services is likely to cause confusion, mistake, Opposition No. 91211558 - 12 - or deception. In view thereof, Opposer has not proven his claim under Section 2(d) of the Trademark Act. Decision: The opposition is dismissed.