F.E.D. Proof, Inc.

Trademark Trial and Appeal Board

Dec 10, 2008

No. 77089708 (T.T.A.B. Dec. 10, 2008)

Mailed: December 10, 2008
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re F.E.D. Proof, Inc.
________

Serial No. 77089708
_______

Stephen Lesavich, Ph.D of Lesavich High-Tech Law Group,
P.C. for F.E.D. Proof Inc.

Steven Fine, Trademark Examining Attorney, Law Office 110
(Chris A. F. Pedersen, Managing Attorney).
_______

Before Quinn, Hairston and Taylor, Administrative Trademark
Judges.

Opinion by Hairston, Administrative Trademark Judge:

F.E.D. Proof Inc. has filed an application to register
the mark AZ IS (in standard character form) for services
ultimately identified as “entertainment services, namely,
live musical performances for others and studio music
production featuring hip-hop and rap music” in
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77089708
2
International Class 41.1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, when used in connection with
applicant’s services, so resembles the mark THE AS-IS
ENSEMBLE which is registered for “entertainment services,
namely, live performances rendered by a musical group” in
International Class 41,2 as to be likely to cause confusion,
mistake or deception.
Applicant has appealed; applicant and the examining
attorney have filed briefs.3
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

1 Serial No. 77089708, filed January 24, 2007, alleging a bona
fide intention to use the mark in commerce.
2 Registration No. 2316785, issued February 8, 2000; Section 8
affidavit accepted. The word ENSEMBLE has been disclaimed apart
from the mark as shown.
3 We note applicant’s request that the examining attorney’s brief
be stricken because it does not contain an alphabetical index of
cases. Trademark Rule 2.142(b)(2) provides that “[e]ach brief
shall contain an alphabetical index of cases.” (emphasis added).
While it is preferred that a brief contain an alphabetical index
of cases, this is not an absolute requirement. In this case, we
decline to strike the examining attorney’s brief for failure to
include such an index of cases.
Ser No. 77089708
3
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 any likelihood of confusion analysis,
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).
It is the examining attorney’s position that
applicant’s and registrant’s respective services are
legally identical and otherwise closely related. The
examining attorney maintains that registrant’s services are
broadly identified and, therefore, encompass applicant’s
services of live musical performances featuring hip-hop and
rap music. In view of the identical and closely related
nature of the services, the examining attorney maintains
that the trade channels and purchasers are identical. With
respect to the marks, the examining attorney argues that
the dominant portion of registrant’s mark is AS-IS, that
AS-IS is highly similar to applicant’s mark AZ IS, and,
therefore, the marks in their entireties are similar.
Applicant, in urging reversal of the refusal to
register, argues that the respective services are different
in nature, and are offered in different channels of trade
to different classes of purchasers. Specifically,
Ser No. 77089708
4
applicant argues that its services feature hip-hop and rap
music and are directed to young free-spirited audiences,
whereas registrant’s services feature jazz music and are
directed to older more sophisticated audiences.
Applicant submitted an Internet printout of what appears to
be the “My Space” profile of applicant’s founder and which
includes information about registrant’s musical
performances. With respect to the marks, applicant argues
that the examining attorney has improperly dissected the
marks, and that when the marks are considered in their
entireties, they are dissimilar.
Considering first the services, it is well settled
that the question of likelihood of confusion must be
determined based on an analysis of the goods or services
recited in applicant’s application vis-à-vis the goods or
services recited in the registration, rather than on the
basis of what the record reveals the services to be.
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490,
1 USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v.
North American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
Furthermore, where the services in an application or cited
registration are broadly described, such that there are no
restrictions as to trade channels and purchasers, it is
presumed that the identification of services encompasses
Ser No. 77089708
5
not only all services of the nature and type described
therein, but that the identified services are provided in
all channels of trade which would be normal therefor, and
that they would be purchased by all potential customers
thereof. See, e.g., In re Elbaum, 211 USPQ 639 (TTAB
1981).
It is true that applicant’s live music performances
and studio music production services, as identified in its
application, are limited in terms of the music genre to
hip-hop and rap music. However, registrant’s live
performances rendered by a musical group, as identified in
its registration, are not limited to any particular music
genre and, therefore, we must assume that such performances
feature hip-hop and rap music. Thus, for purposes of our
likelihood of confusion analysis, the services of applicant
and registrant are identical, in part, and otherwise
closely related. In view of the identity of the services,
they must be deemed to travel in the same channels of trade
to the same classes of purchasers.
With respect to the marks, we must determine whether
applicant’s mark and registrant’s mark, when compared in
their entireties, are similar or dissimilar in terms of
sound, appearance, connotation and commercial impression.
See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Ser No. 77089708
6
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005). Although the marks must be considered in their
entireties, 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.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985). 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 commercial impression that confusion as to
the source of the goods and/or 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 Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975). Furthermore, in comparing the marks, we must keep
in mind that “when marks would appear on virtually
identical goods or services, the degree of similarity
necessary to support a conclusion of likely confusion
declines.” Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 864, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992).
Ser No. 77089708
7
Although there are specific differences between
registrant’s mark THE AS-IS ENSEMBLE and applicant’s mark
AZ IS, we find that, on balance, the similarities outweigh
the differences.
Insofar as registrant’s mark is concerned, it is
dominated by the term AS-IS. The word THE in registrant’s
mark has no source-indicating significance, and the
disclaimed word ENSEMBLE is clearly descriptive of
registrant’s services of live performances by a musical
group.4 In view thereof, these words are entitled to little
weight in our likelihood of confusion analysis.
Furthermore, consumers often use shortened versions of
names, and may well refer to registrant and its mark as
simply AS-IS. Cf. In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 219 (CCPA 1978) [Rich, J., concurring:
“the users of language have a universal habit of shortening

4 We note applicant’s contention that ENSEMBLE is not descriptive
of registrant’s services, relying on the following definition of
“ensemble:” “a complete costume of harmonizing or complementary
clothing and accessories,” taken from the Merriam Webster
dictionary. It is well-settled, however, that the
descriptiveness of a word or mark must be viewed in the context
of the identified services, not in the abstract or in relation to
any other meaning the word or mark might have. See In re
Brightcrest, Ltd., 204 USPQ 591 (TTAB 1979). In the context of
registrant’s services, ENSEMBLE is clearly descriptive as
evidenced by the definition of “ensemble” taken from the Encarta
Dictionary and submitted by the examining attorney: “group of
performers - a group of musicians, dancers, or actors who perform
together with roughly equal contributions from all members.”

Ser No. 77089708
8
full names—-from haste or laziness or just economy of
words”].
The dominant portion of registrant’s mark, AS-IS, is
highly similar to applicant’s mark AZ IS. The dash in
AS-IS is of little significance, and consumers would be
likely to view AZ IS as an alternative spelling of AS IS.
Moreover, AZ IS is the phonetic equivalent of AS-IS. When
the marks are considered in their entireties, giving
appropriate weight to the dominant portion of registrant’s
mark, we find that the marks are similar in sound and
appearance.
In terms of meaning, we find that neither of these
marks has any specific meaning or connotation. However, to
the extent that applicant’s and registrant’s marks have any
connotation, the connotation would be the same.
Furthermore, when the registrant’s mark and
applicant’s mark are considered in their entireties, the
marks engender sufficiently similar overall commercial
impressions such that, if identical and closely related
services were offered thereunder, confusion would be likely
to occur among consumers.
Applicant has cited numerous cases in which this Board
and our primary reviewing court have determined that there
was no likelihood of confusion. Applicant argues that the
Ser No. 77089708
9
marks in those cases are at least as similar as the marks
in the present case. In several of the cited cases, there
was significant evidence of third-party use of similar
marks; other cases involved goods and/or services that were
found not to be related; and still other cases involved
marks with different connotations and commercial
impressions as applied to the respective goods and/or
services. In other words, the facts in each of the cited
cases differ from those herein. It is well-settled that
each case must be decided on its own set of facts. See,
e.g., Colgate-Palmolive Company v. Carter-Wallace, Inc.,
432 F.2d 1400, 167 USPQ 529, 530-531 (CCPA 1970) [“We are
familiar with, and have considered, the array of decided
cases cited and relied on by the parties. Except as the
decided cases enunciate principles of trademark
jurisprudence, they provide but meager assistance in the
disposition of varied cases as they arise”].
We conclude that consumers familiar with registrant’s
live performances rendered by a musical group offered under
the mark THE AS-IS ENSEMBLE would be likely to believe,
upon encountering applicant’s mark AZ IS for live musical
performances for others and studio music production
featuring hip-hop and rap music, that the services
Ser No. 77089708
10
originate from or are somehow associated with or sponsored
by the same source.
Decision: The refusal to register is affirmed.