FremantleMedia North America, Inc.v.AI LLC

Trademark Trial and Appeal Board

Aug 27, 2021

91246713 (T.T.A.B. Aug. 27, 2021)

This Opinion is not a
Precedent of the TTAB

Mailed: August 27, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

FremantleMedia North America, Inc.

v.

AI LLC

_____

Opposition No. 91246713
_____

Michael J. Salvatore, of Holmes Weinberg PC for FremantleMedia
North America, Inc.

Bruce E. Colfin, of Bruce Colfin Law PC for AI LLC
_____

Before Kuhlke, Goodman and Pologeorgis,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
AI LLC (“Applicant”) filed an application to register the mark AMERICAN IDLE
(standard characters, AMERICAN disclaimed) for the following services:1 “Food kiosk

1 Application Serial No. 88120245 was filed on September 17, 2018 based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
Opposition No. 91246713
- 2 -
services; Mobile street vendor services featuring food and drink; Mobile food kiosk
services” in International Class 35 and “Mobile café services for providing food and
drink; Restaurant services, namely, providing of food and beverages for consumption
on and off the premises; Fast-food restaurant services; Restaurant services, including
sit-down service of food and take-out restaurant services” in International Class 43.
FremantleMedia North America, Inc. (“Opposer”) opposes registration of
Applicant’s AMERICAN IDLE mark on the grounds of likelihood of confusion, Section
2(d), 15 U.S.C. § 1052(d), and dilution, Section 43(c), 15 U.S.C. § 1125(c). Opposer has
pleaded ownership of the following registered marks:

2, AMERICAN IDOL (typed drawing)3, and IDOL (standard
characters)4 all for “Entertainment services in the nature of a continuing television

References to the briefs and the record refer to the Board’s TTABVUE docket system.
Opposer’s brief is at 34 TTABVUE with confidential filing at 35 TTABVUE; Applicant’s brief
is at 36 TTABVUE; Opposer’s rebuttal brief is at 37 TTABVUE.
2 Registration No. 2715725, issued May 19, 2009; renewed.
3 Registration No. 2751431, issued August 12, 2003; renewed. A typed mark is the legal
equivalent of a standard character mark. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d
1905, 1909 n.2 (Fed. Cir. 2012) (“until 2003, ‘standard character’ marks formerly were known
as ‘typed’ marks.”).
4 Registration No. 3352837, issued December 11, 2007; renewed.
Opposition No. 91246713
- 3 -
talent show” in International Class 41 and AMERICAN IDOL (standard characters)5
for “entertainment in the nature of live stage shows” in International Class 41.
Applicant filed an answer denying the salient allegations in the notice of
opposition.
Each party filed a trial brief and Opposer filed a reply brief.6
I. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of the involved application.
Opposer introduced notices of reliance upon Applicant’s discovery responses (22
TTABVUE, confidential filing at 23 TTABVUE), Applicant’s responses to requests for
admissions (26 TTABVUE), third-party registrations (24 TTABVUE), and third-
party website pages (25 TTABVUE); and introduced a rebuttal notice of reliance upon
third-party website pages and dictionary definitions (33 TTABVUE). Opposer also
provided the testimony declaration of Tim Grau, (“Grau declaration”) Executive Vice
President, Business and Legal Affairs, of FremantleMedia North America, Inc., and
accompanying exhibits (27 TTABVUE, with confidential filing at 28 TTABVUE).
Applicant filed the declaration of Gregory Allen, (“Allen declaration”) managing
member of Applicant, with exhibits (32 TTABVUE). Applicant also references

5 Registration No. 4150276, issued May 29, 2012, Section 8 accepted and Section 15
acknowledged.
6 Opposer’s brief is at 34 TTABVUE, with confidential filing at 35 TTABVUE. Applicant’s
brief is at 36 TTABVUE. Opposer’s reply brief is at 37 TTABVUE.
Opposition No. 91246713
- 4 -
Opposer’s notice of reliance containing its discovery responses as evidence on its
behalf (22 TTABVUE, with confidential filing at 23 TTABVUE).
II. Evidentiary Objections and Unpleaded Lack of Bona Fide Intent to Use
the Mark Claim
Opposer objects to Applicant’s introduction of testimony regarding a purported
“quick ‘Man on the street’ one on one survey” (Allen declaration, ¶ 13, 32 TTABVUE
4) as inadmissible hearsay. Opposer’s brief, 34 TTABVUE 5.
Applicant’s informal “man on the street” survey conducted by Applicant was not
conducted in accordance with proper survey methods, and therefore is hearsay.
Flowers Indus. Inc. v. Interstate Brands Corp., 5 USPQ2d 1580, 1582 n.4 (TTAB 1987)
(survey not conducted in accordance with principles of survey research is
inadmissible hearsay). Accordingly, Opposer’s objection is sustained as to this portion
of the Allen testimony.
Opposer also objects to two images included as “Exhibit B” to Applicant’s
testimony declaration (32 TTABVUE 4-5) on the grounds that these images are
irrelevant and lack evidentiary value. Opposer’s brief, 34 TTABVUE 6.
This objection is overruled. The Board is able to weigh all evidence and testimony
appropriately, and we see no need to exclude it outright. Inter IKEA Sys. B.V. v. Akea,
LLC, 110 USPQ2d 1734, 1737 (TTAB 2014) (“Ultimately, the Board is capable of
weighing the relevance and strength or weakness of the objected-to testimony and
evidence, including any inherent limitations.”).
Opposer asserts for the first time in its reply brief, 37 TTABVUE 7-8, that we
should find, based on statements made by Applicant in its brief, that Applicant lacks
Opposition No. 91246713
- 5 -
a bona fide intent to use the mark AMERICAN IDLE in commerce. However,
inasmuch as this claim was unpleaded and not tried by implied consent, we do not
consider this claim.
III. Statutory Entitlement to Oppose and Priority
In every inter partes case, the plaintiff must establish its statutory entitlement to
bring and maintain an opposition or cancellation proceeding. Australian Therapeutic
Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837 at *3 (Fed.
Cir. 2020).7 To establish entitlement to a statutory cause of action, a plaintiff must
demonstrate: (i) an interest falling within the zone of interests protected by the
statute and (ii) proximate causation. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298,
2020 USPQ2d 11277, at *4 (Fed. Cir. 2020). Demonstrating a real interest in opposing
registration of a mark satisfies the zone-of-interests requirement, and demonstrating
a reasonable belief in damage by the registration of a mark demonstrates damage
proximately caused by registration of the mark. Id. at 7-8.
Opposer’s witness, Mr. Grau, did not properly make Opposer’s pleaded
registrations of record. Mr. Grau testified to Opposer’s ownership of its registrations
but not as to their status. Trademark Rule 2.122(d)(2), 37 C.F.R. § 2.122(d)(2). Grau

7 The Board previously analyzed the requirements of Sections 13 and 14 of the Trademark
Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” The Board now refers to this inquiry
as entitlement to a statutory cause of action. See Australian Therapeutic Supplies, 2020
USPQ2d 10837, at *2-6 (re-characterizing the issue of the interest required for a party to
pursue an opposition or cancellation proceeding as “entitlement to bring a cause of action”).
Despite the change in nomenclature, the Board's prior decisions and those of the Federal
Circuit interpreting Sections 13 and 14 remain applicable. See Corcamore, LLC v. SFM, LLC,
978 F.3d 1298, 2020 USPQ2d 11277, at *7 (Fed. Cir. 2020) (“[W]e see no meaningful,
substantive difference in the analysis used in Lexmark and Empresa Cubana”).
Opposition No. 91246713
- 6 -
Declaration ¶¶ 28-30, 27 TTABVUE 14, exhibits J, K, L and M, 27 TTABVUE 34-40.
The copies of registration certificates that accompanied the Grau testimony
declaration do not show the pleaded registrations’ current status.
However, Applicant in its brief has treated Opposer’s pleaded registrations as
“evidence of record” so we deem Applicant as having stipulated to the current status
and title of Opposer’s pleaded registrations. Floralife, Inc. v. Floraline Int’l Inc., 225
USPQ 683, 684 n.6 (TTAB 1984) (“[A]pplicant has not contested opposer’s ownership
of the relied upon registrations, nor questioned that they are still in force. In fact,
applicant’s counsel assumes that they are properly of record ... Accordingly, we treat
the registrations’ currency and their ownership by opposer as having been
stipulated.”).
The stipulation of Opposer’s pleaded registrations is sufficient to demonstrate
Opposer’s entitlement to a statutory cause of action. See New Era Cap Co., Inc. v. Pro
Era, LLC, 2020 USPQ2d 10596, at *6 (TTAB 2020) (pleaded registrations establish
statutory entitlement to bring opposition); Barbara’s Bakery v. Landesman, 82
USPQ2d 1283, 1285 (TTAB 2007) (Opposer’s “standing” established by pleaded
registration being of record and non-frivolous likelihood of confusion claim).
As to priority, Applicant has not counterclaimed to cancel the pleaded
registrations, and as we deem the pleaded registrations stipulated into the record,
priority is not an issue in the opposition as to the marks and services covered by the
registrations. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108, 110 (CCPA 1974).
Opposition No. 91246713
- 7 -
IV. Likelihood of Confusion
In this case, we focus our likelihood of confusion analysis on pleaded Registration
No. 2751431, the AMERICAN IDOL typed drawing registration, for “Entertainment
services in the nature of a continuing television talent show.” If we find confusion
likely between this pleaded registration and Applicant’s involved mark, we need not
consider the likelihood of confusion between Applicant’s mark and Opposer’s other
pleaded marks. On the other hand, if we do not find likelihood of confusion between
Registration No. 2751431 and Applicant’s mark, we would not find a likelihood of
confusion between Applicant’s mark and Opposer’s other pleaded marks. In re Max
Capital Grp., 93 USPQ2d 1243, 1245 (TTAB 2010).
Our determination under Trademark Act 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, 567 (CCPA 1973) (setting forth factors to be considered, referred to as
“DuPont factors”). In any likelihood of confusion analysis, two key considerations are
the similarities between the marks and the similarities between the goods or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative
effect of differences in the essential characteristics of the goods and differences in the
marks.”). We discuss the DuPont factors for which there is relevant argument and
evidence. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed.
Cir. 2019) (Board considers each DuPont factor for which there is evidence and
Opposition No. 91246713
- 8 -
argument). Opposer must establish that there is a likelihood of confusion by a
preponderance of the evidence.
A. Strength of the Mark
Opposer asserts that its AMERICAN IDOL marks have “extraordinary
recognition” and are famous. Opposer’s brief, 34 TTABVUE 11-12.
A commercially strong or famous mark is one that has extensive public recognition
and renown. Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 63 USPQ2d 1303,
1305 (Fed. Cir. 2002). “Fame of an opposer’s mark, if it exists, plays a ‘dominant role
in the process of balancing the DuPont factors.”’ Recot, Inc. v. M.C. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000)). Famous marks enjoy a “wide latitude
of legal protection since they are more likely to be remembered and associated in the
public mind than weaker marks.” Palm Bay Imps. v. Veuve Cliquot Ponsardin Maison
Fondee en 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005).
Fame, in the likelihood of confusion context, “varies along a spectrum from very
strong to very weak.” Joseph Phelps Vineyards, LLC v. Fairmount Holdings, LLC,
857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017). In view of the extreme
deference that is accorded a famous mark in terms of the wide latitude of legal
protection it receives, and the dominant role fame plays in the likelihood of confusion
analysis, it is the duty of the party asserting that its mark is famous to prove it
clearly. North Face Apparel Corp. v. Sanyang Indus. Co. Ltd., 116 USPQ2d 1217,
1226 (TTAB 2015).
Opposition No. 91246713
- 9 -
“In determining the strength of a mark, we consider both its inherent strength,
based on the nature of the mark itself, and, if there is evidence in the record of
marketplace recognition of the mark, its commercial strength.” New Era Cap. Co. v.
Pro Era LLC, 2020 USPQ2d 10596 at *10 (TTAB 2020) (citations omitted); Top
Tobacco, L.P. v. N. Atl. Operating Co., 101 USPQ2d 1163, 1171-72 (TTAB 2011) (the
strength of a mark is determined by assessing its inherent strength and its
commercial strength).
1. Inherent Strength
Opposer does not address the inherent strength of the AMERICAN IDOL mark
but its inherent or conceptual strength is not seriously at issue. The AMERICAN
IDOL mark is inherently distinctive as evidenced by the registration on the Principal
Register without a claim of acquired distinctiveness under Section 2(f) of the
Trademark Act. New Era Cap. 2020 USPQ2d 10596 at *10 (citing Tea Bd. of India v.
Republic of Tea, Inc., 80 USPQ2d 1881, 1889 (TTAB 2006)).
2. Commercial Strength or Fame of the mark.
Commercial strength or fame is “based on the marketplace recognition value of
the mark.” Top Tobacco, 101 USPQ2d at 1172. Commercial strength or fame for
likelihood of confusion purposes may be measured indirectly by, for example, “the
volume of sales and advertising expenditures of the goods sold under the mark” “and
other factors such as length of time of use of the mark; wide-spread critical
assessments; notice by independent sources of the products identified by the marks;
and the general reputation of the products and services.” Weider Publ’ns, LLC v. D &
Opposition No. 91246713
- 10 -
D Beauty Care Co., 109 USPQ2d 1347, 1354 (TTAB 2014), appeal dismissed per
stipulation, No. 2014-1461 (Fed. Cir. Oct. 10, 2014).
Opposer’s witness Mr. Grau testified about the commercial strength of Opposer’s
AMERICAN IDOL mark including its success as a top ranked television program over
eighteen seasons and its large social media following.
American Idol “is a singing competition [reality] television series … in which
thousands of unsigned singers perform in front of a panel of three judges through
multiple rounds of eliminations” and later in the competition, a winner is “chosen by
viewers of the series who cast votes” by mobile app, text messages or the Internet.
Grau declaration ¶ 3, 27 TTABVUE 3. American Idol has “launched the careers of
recording artists Carrie Underwood, Kelly Clarkson, Jennifer Hudson, Katharine
McPhee, Jordin Sparks, Adam Lambert and Chris Daughtry, among many others,”
and these recording artists and “other AMERICAN IDOL alumni” have “sold over 61
million albums, including 47 Platinum records, 95 Gold records, 444 Billboard No. 1
hits, as well as 257 million digital downloads.” Grau Declaration ¶ 7, 27 TTABVUE
3. During each television episode, the American Idol mark is prominently featured
onscreen for both the television viewer and studio audience. Grau Declaration ¶ 8, 27
TTABVUE 4.
American Idol aired for 15 seasons on the Fox television network beginning in
June 11, 2002, and moved to the ABC television network in 2018 (season 16). Grau
Declaration ¶¶ 5-6, 21, 27 TTABVUE 3, 9. American Idol has aired for three seasons
on ABC, with the newest season premiering in spring 2021. Grau declaration ¶¶ 5-6,
Opposition No. 91246713
- 11 -
17, 27 TTABVUE 3, 9. According to internal tracking data kept by Opposer, over its
eighteen season history, American Idol “has averaged between 7 million and 30
million viewers per season.” Grau Declaration ¶ 8, 27 TTABVUE 4. “From the 2003-
04 season through the 2010 season,” an American Idol “episode was ranked number
1 in US television ratings for each such year.” Grau Declaration ¶ 9, 27 TTABVUE 4.
According to Nielson, “an industry leading ratings firm,” in 2018, during American
Idol’s sixteenth season and first season on ABC, the show “won audiences of up to
12.2 million viewers.” Grau Declaration ¶ 11, TTABVUE, 27 TTABVUE 5. Nielson
ranked American Idol’s 2018 season “as [the] 8th and 9th highest entertainment series
(because it airs over two nights) amongst households across all US networks,” “the
#1 entertainment show of the 2018 season on ABC in the 18-49 demographic,” and
“the #1 ranked non-news broadcast on Sunday.” Grau Declaration ¶¶ 11, 15, 27
TTABVUE 5, 6.
During its seventeenth season, and the second season with ABC, Nielson ranked
American Idol “among total audiences” as “the #1 entertainment show of the season
on ABC,” reaching “103.2 million total viewers during the 2018/2019 season,” and
winning “audiences of up to 10.5 million viewers for certain episodes.” Grau
Declaration ¶¶ 13, 14, 27 TTABVUE 5, 6.
Across its three seasons on ABC from 2018-2020, on 10% of its broadcast nights,
(“5 out of 51 nights”), American Idol ranked highest, as the number one primetime
show, “winning the night” in viewership compared with other television shows that
aired on the same date, and ranked as the number one or number two “primetime
Opposition No. 91246713
- 12 -
show across all networks on 59% of its broadcast nights” (“30 out of 51 nights”). Grau
Declaration ¶ 16, 27 TTABVUE 7. American Idol’s 2019/2020 season was ranked as
the 9th highest entertainment series amongst households across all U.S. networks.
Grau Declaration ¶ 15, 27 TTABVUE 7.
Audience voting is part of the American Idol competition, and these votes
eventually select the winner. Grau Declaration ¶ 23, 27 TTABVUE 10. The rules of
the competition allow “each contestant to receive up to ten votes per voting method,
per voter.” Grau Declaration ¶ 23, 27 TTABVUE 10. This voting data is “tracked and
validated” by the voting services company Telescope. Grau Declaration ¶ 23, 27
TTABVUE 10. Measurement of “unique votes” by Telescope indicate that for the 2018
season, “105,536,320 votes were cast”; for the 2019 season, “143,986,218 votes were
cast”; and for the 2020 season, “100,040,810 votes were cast.” Grau Declaration ¶ 23,
27 TTABVUE 10. American Idol “holds six Guinness World Records for most public
votes received by a television program.” Grau Declaration ¶ 23, 27 TTABVUE 10.
Opposer uses social media platforms YouTube, Instagram, Twitter, and Facebook
for promoting the American Idol television show; these platforms all prominently
feature the AMERICAN IDOL mark. Grau Declaration ¶¶ 19, 20, 27 TTABVUE 8.
For example, a viewer on Facebook viewing video clips from Season 16 of American
Idol sees the AMERICAN IDOL mark and brand with each view. Grau Declaration ¶
21, 27 TTABVUE 9. In addition, followers and fans of American Idol “on these various
social media platforms are exposed to and receive the marketing posts and videos
Opposition No. 91246713
- 13 -
posted by Fremantle and ABC to advertise and promote” the series. Grau Declaration
¶ 20, 27 TTABVUE 8.
Opposer’s American Idol Twitter account has 1.9 million followers, and its
Instagram social media account has 1.3 million followers. Grau Declaration ¶ 20, 27
TTABVUE 8. Opposer’s “official” American Idol YouTube channel has 2.57 million
subscribers, and over 409 million channel views since March 3, 2006. Grau
Declaration ¶19, 27 TTABVUE 8. According to the internal reporting tool DOMO,
which measures the official American Idol YouTube channel, plus “other associated
channels,” from January 1, 2016 through August 21, 2020, American Idol YouTube
videos have “2.7 billion views.” Grau Declaration ¶ 19, 27 TTABVUE 8. The American
Idol Facebook page has over 15.7 million followers, and, since tracking began on
January 1, 2016, there have been over 4 billion total Facebook page video views of
American Idol videos. Grau Declaration ¶ 20, 27 TTABVUE 8.
For the first season on ABC in 2018, Opposer’s internal reporting (“Digital &
Social Recap deck”) indicates that during this period, there were over 1 billion video
views of American Idol videos on Instagram, Twitter, Facebook, YouTube, and the
American Idol smart phone app. Grau Declaration ¶ 22, 27 TTABVUE 9. Applicant’s
internal research reporting also shows that there were 514,000,000 Facebook video
views of clips during American Idol’s first season on ABC, and American Idol videos
“were viewed over 204,000,000 times on YouTube and over 6,300,000 times on
Instagram,” from March 7, 2018 through May 22, 2018. Grau Declaration ¶ 21, 27
TTABVUE 8-9. According to Opposer’s internal reporting, during its first season on
Opposition No. 91246713
- 14 -
ABC, American Idol was ranked “the #1 performing prime time broadcast on social
media for Sunday and Monday nights, and the #1 performing reality series premiere
on Facebook and Twitter.” Grau Declaration ¶ 21, 27 TTABVUE 8-9.
Social media interactions of viewers of “social reality series” and “broadcast
programs” also are ranked by Nielson. Grau Declaration ¶ 14, 27 TTABVUE 6. Such
social media interactions include ‘“liking’ the post, commenting on the post, or
sharing the post on their own social media account.” Grau Declaration ¶ 14, 27
TTABVUE 6. During the 2018/2019 season with ABC, American Idol ranked “as the
‘most social’ reality series and broadcast program of the season,” with over 23 million
social interactions, outperforming The Today Show (21.7 million interactions), The
Tonight Show (14.8 million interactions) and Saturday Night Live (12.8 million
interactions). Grau Declaration ¶ 14, 27 TTABVUE 6. In 2020, American Idol was
“the #1 most social reality talent competition show and broadcast TV show,” with 27
million social interactions, ranking it above The Bachelor (15.5 million interactions),
Keeping Up With The Kardashians (10.5 million interactions) and The Voice (9.7
million interactions). Grau Declaration ¶ 15, 27 TTABVUE 7.
Opposer’s internal reporting (“Social Media Research Deck”) also shows that
American Idol had more subscribers, viewers and interactions on Facebook than “a
directly competitive singing competition series,” The Voice, during the 2018 season.
Grau Declaration ¶ 21, 27 TTABVUE 8-9. In particular, American Idol had “eight
times the Facebook video views, and eleven times the Facebook interactions” of the
Voice. Grau Declaration ¶ 21, 27 TTABVUE 9. Opposer’s witness also testified as to
Opposition No. 91246713
- 15 -
an internal brand awareness study that tested the “aided awareness” of the American
Idol brand. Grau Declaration ¶ 27, 27 TTABVUE 13. The result was provided
confidentially, but as Opposer’s witness testifies, this result “shows an extremely high
level of [aided] brand awareness.” Grau Declaration ¶ 27, 27 TTABVUE 13. As will
be discussed in more detail below, Opposer has participated in co-branding or co-
promotions with food brands (Pringles and Oscar Mayer), beverage brands (Coca-Cola
and Lipton), fast food brands (McDonalds and Dominos), casual dining restaurant
brands (T.G.I. Fridays), and automobile brands (Ford). Grau Declaration ¶ 26, 27
TTABVUE 12-13.
Opposer also submitted five articles relating to unsolicited media mentions of
American Idol: a posting from the Daily Billboard blog (dailybillboardblog.com) which
shows photographs of American Idol billboards in the Los Angeles area for different
seasons (2011, 2014, 2019, 2020) of the television show; an October 13, 2012 article
(updated January 14, 2019) from al.com which discusses a 2006 American Idol
winner’s restaurant venture; a June 1, 2011 article from TV Guide (tvguide.com)
discussing the top-rated television shows for 2010-2011, including American Idol; a
February 2007 New York Times article discussing American Idol as a “schoolyard
bully”; and a December 18, 2014 article from AdAge discussing Coca-Cola’s 13-season
partnership with American Idol. Opposer’s Notice of Reliance, 25 TTABVUE 27-32,
42-90, 101-104.
However, we find that the articles have less probative value because the
circulation of some of the websites is unknown (Daily Billboard blog and al.com
Opposition No. 91246713
- 16 -
website); some of the articles are brief mentions that do not focus on Opposer’s
services (TV Guide article, al.com article); some of the articles are 13 and 10 years
old (New York Times and TV Guide article), making these articles less relevant in
demonstrating current exposure or recognition of the mark; and one of the articles is
from a trade publication (AdAge) directed to a specific audience segment, and not as
likely to be seen by large numbers of the general public.
Opposer also submitted Bing and Google search result listings for “American Idle”
that included results for the American Idol television show. Although we have no
information as to the algorithms used to provide the search results, the results do
show that a misspelling of “American Idol” includes results for the “American Idol”
television show on Bing, while the Google search indicates it provides results for
“American Idol,” unless the searcher specifies it is seeking search results only for
“American Idle.”8 Opposer’s Notice of Reliance, 33 TTABVUE 5-9.
As a whole, Opposer’s witness testimony easily establishes that AMERICAN
IDOL is “renowned” in connection with the services identified in pleaded Registration
No. 2715725 and a commercially strong mark entitled to a broad scope of protection.
See Joseph Phelps Vineyards, 122 USPQ2d at 1734-35. Applicant has acknowledged
the fame of Opposer’s American Idol mark (“The fame of Opposer’s Mark is rooted
squarely within the realm of “Entertainment services” in various natures, while

8 On Bing, the search “American Idle” provided a first search result of an article that was
titled “American Idle: New Hampshire House Holds Drive-In Session.” 33 TTABVUE 5; and
on Google, the search results for “American Idle” include a book titled “American Idle: A
Journey Through Our Sedentary Culture” as a later search result. 33 TTABVUE 8.
Opposition No. 91246713
- 17 -
secondarily extending such fame to digital music sales, downloads, and retail
products.”). 36 TTABVUE 18. See also 36 TTABVUE 12, 14, 17.
The fame of Opposer’s mark weighs strongly in favor of a finding of likelihood of
confusion.
B. Similarity of the Marks
As to the “similarity or dissimilarity of the marks,” we analyze “the marks in their
entireties as to appearance, sound, connotation and commercial impression.” DuPont,
177 USPQ at 567. See also Palm Bay Imps., 73 USPQ2d at 1691 (quoting DuPont,
177 USPQ at 567). “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 focus is
on the recollection of the average purchaser, who normally retains a general rather
than a specific impression of trademarks. See Inter IKEA Sys., 110 USPQ2d at 1740.
Similarity in any one of the elements of appearance, sound, meaning, or
commercial impression suffices to support a determination of likelihood of confusion.
See Krim-Ko Corp. v. The Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA
1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely
to cause confusion”); In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB
2018) (citation omitted), aff’d mem., 777 F. App’x 516 (Fed. Cir. 2019).
Opposition No. 91246713
- 18 -
“[S]imilarity is not a binary factor but is a matter of degree.” In re St. Helena
Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (citation omitted).
Because the similarity or dissimilarity of the marks is determined based on the marks
in their entireties, “our analysis cannot be predicated on dissecting the marks into
their various components; that is, the decision must be based on a comparison of the
entire marks, not just part of the marks.” In re Ox Paperboard, LLC, 2020 USPQ2d
10878, at *4 (TTAB 2020) (citing Stone Lion Capital Partners, LP v. Lion Capital
LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) and In re Nat’l Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)).
Applicant’s mark is AMERICAN IDLE, and Opposer’s mark is AMERICAN IDOL.
Applicant’s mark is a standard character mark and Opposer’s mark is a typed
drawing mark. As such, both marks could be displayed in the same font, style, or
color. Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253,
1256 (Fed. Cir. 2011) (“Standard character or typed registrations are federal mark
registrations that make no claim to any particular font style, color, or size of display
and, thus, are not limited to any particular presentation.”).
Applicant submits that consumers would not be confused by the parties’ marks
because the American Idol logo mark would be absent from the marketing of
Applicant’s services, pointing out that Opposer “heavily relies” on its American Idol
logo mark when used in connection with co-promotions outside the entertainment
sector. 36 TTABVUE 15.
Opposition No. 91246713
- 19 -
However, we must consider the marks as applied-for and as registered, rather
than as to how they may appear in actual commercial use. Here we are considering
Opposer’s AMERICAN IDOL typed drawing mark, and trade dress may not be used
to prove that the commercial impressions are different because trade dress may be
changed at any time. See Vornado, Inc. v. Breuer Elec. Mfg. Co., 390 F.2d 724, 156
USPQ 340, 342 (CCPA 1968) (“the [advertising] display of the mark in a particular
style is of no material significance since the display may be changed at any time as
may be dictated by the fancy of the applicant or the owner of the mark.”). See also
B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d 1500, 1508 (TTAB 2007) (“we assess
the connotation of applicant’s mark from the perspective that consumers will see only
that which applicant seeks to register”).
Opposer argues that the marks are confusingly similar. It submits that the marks
are similar in sound, appearance, connotation and commercial impression, and that
“[i]n light of these similarities and the immense fame and recognition” of the
AMERICAN IDOL marks, “consumers are likely to associate the name AMERICAN
IDLE” with Opposer.9 34 TTABVUE 15.
Applicant, while acknowledging that the marks share the term AMERICAN,
argues that the difference between the second term in each mark, IDLE and IDOL,
results in marks with different connotations and commercial impressions. 36
TTABVUE 12. Applicant submits that “‘IDOL’ is a noun signifying a person –

9 As supportive of the similarity of the marks, Opposer also references the Google and Bing
“American Idle” search results submitted under notice of reliance that show in the search
results the American Idol television series. 33 TTABVUE 3.
Opposition No. 91246713
- 20 -
presumably, a musical artist – regarded with blind admiration or devotion’ while
‘IDLE’ is an adjective demonstrating the lack of mobility and functionality of a vehicle
– specifically, for idle food trucks and/or the idle cars waiting to be served.” 36
TTABVUE 11; Allen Declaration ¶¶ 3, 10, 32 TTABVUE 2, 3. Applicant asserts that
its word mark “evokes the connotation of American standards of old-fashioned
automobiles, casual indolence, and a relaxed but unique dining experience for
consumers.” 36 TTABVUE 11.
We find that the AMERICAN IDOL and AMERICAN IDLE marks are
substantially similar in appearance and sound. The marks are similar in
construction, each consisting of two words. The marks have the same cadence; both
have as the first term, the word AMERICAN, and as the second term, a four letter
word that contains the letters IDL. Although the second term in each of the marks
have different vowels in different positions (IDLE/IDOL), the marks are very similar
in terms of visual appearance and virtually identical in sound as they can be
pronounced the same.10
As to connotation, the meaning of AMERICAN in the mark is likely to be the same
and Applicant has not argued otherwise. As to the terms IDOL and IDLE, the terms
have different meanings: an “idol” is defined as “someone who is admired and

10 AMERICAN in each mark is identical and would be pronounced the same. As to the terms
IDLE and IDOL, the dictionary definitions submitted by Opposer show that IDLE is
pronounced as \ˈī-dᵊl\, while IDOL is pronounced similarly either as \ˈī-dᵊl\, or /ˈaɪ.dəl/.
MERRIAM-WEBSTER DICTIONARY, 33 TTABVUE 53, 91; CAMBRIDGE DICTIONARY, 33
TTABVUE 79. Additional definitions also display the pronunciation of IDLE as: (ˈaidl), and
/ˈaɪd(ə)l/ COLLINS ENGLISH DICTIONARY, 33 TTABVUE 73; and /ˈaɪd(ə)l/ MACMILLAN
DICTIONARY, 33 TTABVUE 64.
Opposition No. 91246713
- 21 -
respected very much” while “idle” is an adjective that means “: not working, active,
or being used.”11 The connotations of the two marks in their entireties differ only to
the extent that the meaning of the second words in each mark differ.
Further, we find the overall commercial impressions of the two marks are
substantially similar because the difference in meaning of the second word in the
parties’ marks is overshadowed by the visual and phonetic similarities, particularly
the similar phonetic qualities of the two words within each of the respective marks,
and the similar structure and cadence. We find, on balance, that the similarities in
appearance, sound and commercial impression of the respective marks outweigh the
dissimilarity which results from any difference in meanings particularly because “the
average customer ... retains a general rather than specific impression of marks.” In
re i.am.symbolic, llc, 127 USPQ2d 1627, 1630 (TTAB 2018) (citations omitted). See
e.g., In re Microsoft Corp., 68 USPQ2d 1195, 1199 (TTAB 2003) (OFFICENET and
OFFICE.NET are similar in sound and appearance and these similarities outweigh
possible differences in connotation); Breon Lab’y. Inc. v. Vargas, 170 USPQ 532, 536
(TTAB 1971) (BRONCO-FEDRIN and BRONKEPHRINE considered confusingly
similar, because even though they may possess different suggestive connotations,

11 Idle (adj) is defined as “: not working, active, or being used” MERRIAM-WEBSTER
DICTIONARY, 33 TTABVUE 53. Idol (noun) is defined as “: an object of extreme devotion a
movie idol.” MERRIAM-WEBSTER DICTIONARY, 33 TTABVUE 91. Idol is also defined as
“someone who is admired and respected very much:• a pop/sports idol” CAMBRIDGE
DICTIONARY, 33 TTABVUE 79; “any person or thing regarded with blind admiration,
adoration, or devotion” COLLINS ENGLISH DICTIONARY, 33 TTABVUE 73; and “someone that
you admire very much” MACMILLAN DICTIONARY, 33 TTABVUE 64.
Opposition No. 91246713
- 22 -
they are susceptible of a strikingly similar pronunciation and are not unlike in
appearance).
The similarity of the marks weighs in favor of a finding of likelihood of confusion.
C. Similarity or Dissimilarity of the Services
We now turn to consideration of the “similarity or dissimilarity and nature of the
goods or services as described in an application or registration.” DuPont, 177 USPQ
at 567. In our analysis, we look to the identifications of services in the application
and the pleaded registration. See Stone Lion Capital Partners, 110 USPQ2d at 1161;
Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990).
“[L]ikelihood of confusion can be found ‘if the respective goods [or services] are
related in some manner and/or if the circumstances surrounding their marketing are
such that they could give rise to the mistaken belief that they emanate from the same
source.”’ Coach Servs., 101 USPQ2d at 1722. For example, a general knowledge on
the part of consumers as to established marketing practices is likely to give rise to
the mistaken belief of an association between parties. Id. (quoting 7-Eleven Inc. v.
Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007). Therefore, in some instances, the use
of similar marks on seemingly unrelated goods and services could result in a
likelihood of confusion. See Recot Inc. v. M.C. Becton, 54 USPQ2d at 1898 (“[E]ven if
the goods [or services] in question are different from, and thus not related to, one
another in kind, the same goods [or services] can be related in the mind of the
Opposition No. 91246713
- 23 -
consuming public as to the origin of the goods [or services]. It is this sense of
relatedness that matters in the likelihood of confusion analysis.”).
Applicant’s services are “Food kiosk services; Mobile street vendor services
featuring food and drink; Mobile food kiosk services” and “Mobile café services for
providing food and drink; Restaurant services, namely, providing of food and
beverages for consumption on and off the premises; Fast-food restaurant services;
Restaurant services, including sit-down service of food and take-out restaurant
services.” Opposer’s services in Registration No. 2751431 are “Entertainment
services in the nature of a continuing television talent show.” Opposer also relies on
its co-branding and promotional activities with food and beverage companies and
restaurants in support of relatedness.
In its brief, Opposer points to having been “engaged in extensive co-promotion and
sponsorship campaigns with various national food, beverage and restaurant brands”
in advertising and promoting the American Idol television show. 34 TTABVUE 16.
As further support, Opposer references third-party registrations covering both
television shows and restaurants, and Internet website evidence related to television
shows and restaurants, or the entertainment industry and restaurants, submitted
under notice of reliance. 34 TTABVUE 17.
Applicant argues that its restaurant, food kiosk and mobile café services and
Opposer’s entertainment services are unrelated. 36 TTABVUE 15, 16. Applicant
indicates that its services are “food and drink services that incorporate mobile travel
and destination-based dining experiences” and will provide “a confluence of unique
Opposition No. 91246713
- 24 -
American dining and transportation.” 36 TTABVUE 16, 19. Applicant’s discovery
responses, filed confidentially, indicate generally that its concept is automobile-
themed. 23 TTABVUE. See also Allen Declaration ¶¶ 8, 9 (“American idle” stands for:
Automobiles, Travel, and Destinations in America”; “the visualization of the concept
which was a cross between a junk yard, a Racetrack, and an old fashion drive-in
restaurant”), 32 TTABVUE 3.
Applicant submits that the fame of Opposer’s mark is “rooted squarely within the
realm of ‘Entertainment services’ in various natures – reality television shows,
advertising sweepstakes, live stage shows – while secondarily extending such fame
to digital music sales, downloads, and retail products.” 36 TTABVUE 14. Applicant
argues that Opposer’s “various co-promotions and sponsorship campaigns with
various food and beverage brands” “indicate a flawed relatedness between such
endeavors and the intended services rendered by Applicant’s Mark.” 36 TTABVUE
14.
Applicant submits that its services will be marketed differently than Opposer’s co-
promotions involving food and beverages and that “consumers and the general public
will rightfully presume no such relatedness” between Applicant and Opposer. 36
TTABVUE 14-15. Applicant argues that even with Opposer’s past co-branded food
promotions, “something more” is required to establish relatedness with Applicant’s
restaurant services. 36 TTABVUE 15. Applicant asserts that “Opposer simply cannot
show ‘something more’ than the phonetical similarity and shared ‘AMERICAN’
Opposition No. 91246713
- 25 -
patriotism and use between AMERICAN IDLE and Opposer’s Mark as used in
Opposer’s past promotional and sponsorship endeavors.” 36 TTABVUE 15.
We address Applicant’s argument that Opposer “must show ‘something more’” to
establish relatedness. 36 TTABVUE 15. The “something more” requirement
originated in cases involving the relatedness of restaurant services to foods or
beverages and has been applied primarily in such cases. See, Jacobs v. International
Multifoods Corporation, 668 F.2d 1234, 212 USPQ 641, 642 (CCPA 1982) (“To
establish likelihood of confusion a party must show something more than that similar
or even identical marks are used for food products and for restaurant services”). See
e.g., Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1060-62
(TTAB 2017) (holding that “when comparing restaurant services to alcoholic
beverages, we must also follow our reviewing court’s holding that ‘the fact that
restaurants serve food and beverages is not enough to render food and beverages
related to restaurant services for purposes of determining the likelihood of confusion,”
and that “‘to establish likelihood of confusion a party must show something more than
that similar or even identical marks are used for food products and for restaurant
services.”’) (quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063
(Fed. Cir. 2003)).
The Federal Circuit has also held that the “something more” requirement “has
application whenever the relatedness of the goods and services is not evident, well-
known or generally recognized.” In re St. Helena Hosp., 113 USPQ2d at 1087 (finding
that the record did not show that “health care services, namely, evaluating weight
Opposition No. 91246713
- 26 -
and lifestyle health and implementing weight and lifestyle health improvement plans
in a hospital-based residential program” were related to “printed manuals, posters,
stickers, activity cards and educational worksheets dealing with physical activity and
physical fitness”).
For unrelated goods and/or services, even if fame is proved, Opposer must still
“show that its goods [or services] are related in some positive manner to applicant’s
and/or that normal marketing conditions are such that the goods [or services] would
be encountered by the same persons in such an environment that could give rise to
confusion as to source.” Anheuser-Busch, Inc. v. Major Mud & Chem. Co., 221 USPQ
1191 (TTAB 1984) (even though Opposer’s BUDWEISER and related BUDWEISER
marks were shown to be famous for beer, yeast barley-malt syrup, corn syrup and
novelty items, Opposer still had to show relatedness for oil drilling lubricant for the
mark BITWEISER because famous marks do not obtain trademark rights in gross).
Applicant has not presented and we are not aware of decisions requiring
“something more” when comparing only services. In any event, even if “something
more” is necessary to establish the relatedness of the parties’ services, we find, as
discussed below, that Opposer has met that standard.
As stated, Opposer provided printouts of nine third-party registrations from the
Office’s Trademark Electronic Search System (TESS) to show the relatedness of
television programs and restaurant services.12 24 TTABVUE 5-23. Five of the

12 One of the submitted registrations is cancelled. A cancelled or expired registration is not
evidence of anything except that it issued. See, e.g., Sunnen Products Co. v. Sunex Int’l Inc.,
1 USPQ2d 1744, 1747 (TTAB 1987).
Opposition No. 91246713
- 27 -
registrations cover, among other things, television cooking programs and restaurant
services; one covering, among other things, an on-going television game show and
games of chance played in a casino and restaurant services; one covering, among
other things, ongoing television programs and restaurants; and one covering, among
other things, television show production and catering services and restaurant
reservation services. These registrations have some probative value.
Additionally, Opposer provided an Internet website article that talked about
restaurants, diners, cafés or bars that were featured (or inspired by) and used in
scenes in non-reality television series, and their physical location. However, the
statements made in this article are hearsay and cannot go to the truth of the matter.
See Ricardo Media Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355, at *2
(TTAB 2019) (unaccompanied by testimony, articles from the Internet may not be
considered for the truth of the matters asserted but are admissible for what they show
on their face). Opposer also submitted a website printout for Margaritaville Hotel and
Resorts and Planet Hollywood, and an article about a former American Idol
contestant that co-owns a restaurant that will be converted to a barbecue and blues
bar. The statements made on these webpages and in the news article also are hearsay
and are admissible only for what they show on their face. The printout for the
Margaritaville Hotel and Resorts does not reference a restaurant, and the Planet
Hollywood printout also is unclear as to the offering of restaurant services and its
relationship to entertainment, although it does show “group events” with pictures of
food. A separate Planet Hollywood web page makes reference to the Planet Hollywood
Opposition No. 91246713
- 28 -
casino in Las Vegas, with a photograph of Gwen Stefani, and an invitation to buy
tickets. Because these Internet webpages are hearsay, the website evidence only
shows that potential consumers may have been exposed to the webpages or
statements made therein.
We now consider the witness testimony. Opposer’s witness testified that American
Idol “has engaged in numerous co-promotion and sponsorship campaigns with various
national food, beverage and restaurant brands” throughout “its eighteen-season
history.” Grau Declaration ¶ 26, 27 TTABVUE 12. American Idol had a thirteen
season partnership and co-promotion with Coca-Cola, which featured American Idol-
branded Coca-Cola products at retail, Coca-Cola branded judges’ cups and a Coca-
Cola chat room. Grau Declaration ¶ 26, 27 TTABVUE 12. In 2007, American Idol and
McDonalds restaurants engaged in a promotion involving McDonald’s Happy Meals
(“official American Idol Happy Meal line”), advertising the Happy Meals with a
commercial and print campaign, and staging a “meet and greet” at a Los Angeles area
McDonalds to meet Season 5 “American Idol superstars.” Grau Declaration ¶ 26, 27
TTABVUE 12. Also in 2007, American Idol engaged in a promotion with Oscar Mayer
wieners which included commercials, American Idol “branding on packages” of Oscar
Mayer wieners and on the Oscar Mayer Wiener-mobile, and a “‘sing the jingle’ game.”
Grau Declaration ¶ 26, 27 TTABVUE 12. In 2010, Coca-Cola and American Idol
partnered with Dominos and T.G.I. Fridays restaurants for promotions. Grau
Declaration ¶ 26, 27 TTABVUE 12. The Dominos promotion sought to drive traffic to
Domino’s “newly-launched website” and interest in a new pizza recipe, using
Opposition No. 91246713
- 29 -
American Idol branding and graphics on the website and pizza boxes. Grau
Declaration ¶ 26, 27 TTABVUE 12. The T.G.I. Friday’s promotion offered, with a
purchase of a Coke and an entrée, an opportunity to win a trip to the American Idol
final, and featured American Idol branding and graphics on the T.G.I. Friday website.
Grau Declaration ¶ 26, 27 TTABVUE 12. In 2007, American Idol and Pringles entered
into a national partnership featuring American Idol branding on Pringles cans, an
American Idol-themed Pringles TV spot and “other activations, including three
separate national sweepstakes.” Grau Declaration ¶ 26, 27 TTABVUE 12-13. In 2008,
Pringles, American Idol and Ford partnered for a co-promotion involving give-aways
of new Ford vehicles. Grau Declaration ¶ 26, 27 TTABVUE 12-13. In 2019 and 2020,
American Idol partnered with Lipton in a campaign “that included in-show
integrations,” “social media activations,” Lipton-branded judges cups, and a Lipton
sampling station at the “Hometown Parade” where remaining American Idol
contestants visit their hometowns. Grau Declaration ¶ 26, 27 TTABVUE 13.
The practice of trademark holders such as Opposer engaging in co-branding and
strategic partnership marketing and sponsorship, as well as the licensing of
commercial trademarks by trademark holders for use on “collateral” products (such
as clothing, glassware, linens, etc.) for goods or services unrelated in nature to those
goods or services on which the marks are normally used has become a common
practice in recent years. See L.C. Licensing, Inc. v. Berman, 86 USPQ2d 1883, 1889
(TTAB 2008) (“It is common knowledge, and a fact of which we can take judicial
notice, that the licensing of commercial trademarks on ‘collateral products’ has
Opposition No. 91246713
- 30 -
become a part of everyday life.”); Turner Entm’t Co. v. Nelson, 38 USPQ2d 1942, 1945
(TTAB 1996) and cases cited therein (licensing of trademark for use on collateral
products unrelated to goods or services on which mark is used is a common practice).
See also The North Face Apparel Corp. 116 USPQ2d at 1221, 1231 (opposer engaged
in the manufacture and sale of outdoor and athletic clothing, gear, accessories, and
equipment licensed its marks to General Motors for a sport utility vehicle which was
co-branded as “The North Face edition of a Chevrolet Trailblazer”); Starbucks U.S.
Brands, LLC v. Ruben, 78 USPQ2d 1741, 1743, 1748-49 (TTAB 2006) (opposer that
provided coffee and tea beverages and retail store services in connection with coffee
and tea engaged in licensing arrangements, food service accounts and other
initiatives with its STARBUCKS mark and also engaged in co-branding and strategic
partnership marketing of its STARBUCKS mark with firms such as Hewlett-
Packard, T-Mobile, BankOne Corporation, VISA; opposer also supported the
Sundance Film Festival, which displayed the STARBUCKS mark in advertising and
promoting the independent film festival).
We find that consumers encountering Applicant’s AMERICAN IDLE mark as
used in connection with Applicant’s various restaurant, food kiosk and mobile café
services, will associate this mark with Opposer, or are, at the very least, likely to
believe that Applicant has gotten Opposer’s approval and sponsorship. See e.g., DC
Comics Pan Am. Grain Mfg. Co., 77 USPQ2d 1220, 1226 (TTAB 2005) (finding
applicant’s prepared alcoholic fruit cocktail and opposer’s t-shirts and action figures
and accessories related because of the general marketing environment, opposer’s use
Opposition No. 91246713
- 31 -
of the term KRYPTONITE in connection with food and beverage products, and
opposer’s use of the mark as a merchandising mark with respect to a variety of goods).
We make this finding given the general marketing environment by which
trademark holders engage in co-branding, sponsorships and promotions, the
uncontroverted testimony of Mr. Grau detailing Opposer’s past co-branding and
promotions with food and beverage companies, a pizza chain, a restaurant, and an
automobile company, as well as the fame of Opposer’s AMERICAN IDOL mark. See
e.g., Tao Licensing, 125 USPQ2d at 1061-62 (finding alcoholic beverages and
nightclub and restaurant services related, finding the “industry trend [of “bottle
service” that includes alcohol with private labels bearing the mark of the restaurant
or nightclub] and the media attention it has received contribute to [the] ‘something
more’ showing that consumers would be likely to perceive [Applicant’s] goods as
related to [Registrant’s] services.”); L.C. Licensing, Inc. v. Berman, 86 USPQ2d at
1890 ( uncontroverted testimony and evidence of record demonstrates an association
between urban lifestyle clothing and custom automotive accessories “[p]articularly in
today’s marketing environment where licensing of commercial marks is widespread”).
This relatedness of the services favors a finding of likelihood of confusion.
D. Similarity or Dissimilarity of Trade Channels
With regard to the similarity or dissimilarity of established, likely to continue
trade channels, because there are no limitations in the involved application and
Opposer’s pleaded registration, we must presume that the services move in all normal
channels of trade, and that they are available to all classes of purchasers. See, e.g.,
Opposition No. 91246713
- 32 -
Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 107 USPQ2d
1167, 1173 (Fed. Cir. 2013); Schieffelin & Co. v. Molson Companies Ltd., 9 USPQ2d
2069, 2073 (TTAB 1989) (“moreover, since there are no restrictions with respect to
channels of trade in either applicant’s application or opposer’s registrations, we must
assume that the respective products travel in all normal channels of trade” for those
goods).
Applicant argues that the normal trade channels for Applicant’s and Opposer’s
services do not overlap, while Opposer argues that the “interrelationship between
entertainment and restaurant services evidences the overlap in the channels of trade
for the services at issue.” 36 TTABVUE 16-17; 34 TTABVUE 18.
As to trade channels, Applicant’s witness stated that its services are offered in all
normal trade channels, but did not provide any specifics, while Opposer’s witness
testimony did not address trade channels.13 As previously discussed, Opposer’s
Internet evidence did not clearly show on its face the offering of restaurant services
in conjunction with entertainment services.

13 Opposer also argues in its brief that the trade channels overlap because both parties would
use billboards to advertise their services. 36 TTABVUE 18 (billboards are “a common method
of marketing for restaurants”). Because virtually everything can be advertised and/or
promoted through billboards, their common use for such advertising is not a sufficient basis
to say that disparate services are sold through the same channels of trade. See e.g., L.C.
Licensing Inc. v. Berman, 86 USPQ2d at 1890 n.8 (“the fact that the respective goods [clothing
and accessories and custom automotive accessories] are advertised in the same magazines
does not lead to the conclusion that such goods travel in the same trade channels”); Parfums
de Coeur, ltd. v. Lazarus, 83 USPQ2d at 1021 (“mere fact that opposer may advertise its
[fragrance] products on the same cable television channels on which applicant's television
program, or promotions for his television program, is shown, is not enough” to demonstrate
overlapping channels of trade).
Opposition No. 91246713
- 33 -
Because these services are not typically offered in the same channels of trade, we
find the trade channels do not favor a finding of likelihood of confusion. See Packaging
Industries Group, Inc. v. Great American Mktg., Inc., 227 USPQ 734, 735 (TTAB 1985)
(argument in brief regarding overlapping trade channels unsupported by any
evidence, and “there is therefore no proper basis upon which to conclude that they
are the same as or related to the channels of trade through which applicant’s goods
move”).
E. Conditions of Sale
We next turn to “the conditions under which and buyers to whom sales are made,
i.e. “impulse” vs. careful, sophisticated purchasing.” DuPont, 177 USPQ at 567. In
considering this factor, we must look at the services as identified and base our
determination on the least sophisticated consumer. Stone Lion Capital Partners, 110
USPQ2d at 1163.
There is no evidence or testimony on this factor for either Applicant or Opposer,
but Opposer argues that television program viewing is subject to being made on
impulse, referencing the Board’s prior decision, Parfums de Coeur, ltd. v. Lazarus, 83
USPQ2d 1012 (TTAB 2007). In that case, the Board noted that television programs
are not selected with a great deal of care or deliberation because “television series
would be ‘free,’ and the decision to watch the program might well be made on
impulse.” Id. at 1022. This is a similar case, as the American Idol television show is
free programming and would be subject to impulse to watch the show. As to
Opposition No. 91246713
- 34 -
Applicant’s fast food, mobile and fast casual restaurant services, those services are
inexpensive and would also be subject to ordinary care.
The consumers of both Applicant’s and Opposer’s services are members of the
general public. Such consumers would not, therefore, be expected to exercise a great
deal of care or deliberation in their selection of common forms of entertainment such
as choosing which television shows to watch or in choosing what fast-food or fast
casual restaurant to go to. While these services would not be subject to great care,
the record does not show they are of a type where the lack of care would weigh in
favor of confusion. We find this consideration is neutral.
F. Similar Marks in Use on Similar Services
The sixth DuPont factor requires us to consider “the number and nature of similar
marks in use on similar goods [or services].” Opposer points out that Applicant did
not provide any evidence that shows third-party uses of AMERICAN IDOL marks (or
marks similar thereto) on the services at issue.
The absence of evidence of similar marks in use on similar services is neutral in
our likelihood of confusion analysis.
G. Actual Confusion
Opposer points out that this DuPont factor is “irrelevant” because there has been
no opportunity for actual confusion.
Since Applicant has never used the mark on its services, we agree that actual
confusion is irrelevant in the analysis. We find this consideration neutral.
Opposition No. 91246713
- 35 -
H. Effect of Approval for Publication
As further support for his position that there is no likelihood of confusion,
Applicant points out in its brief that the Examining Attorney found no likelihood of
confusion and that the marks could coexist. 36 TTABVUE 20.
It appears that Applicant is arguing that the Board is somehow required to adopt
the examining attorney’s conclusion that Applicant is entitled to registration.
However, this argument is not well taken.
The Board is not bound or restricted in any way by the examining attorney’s
actions. McDonald’s Corp. v. McClain, 37 USPQ2d 1274, 1277 (TTAB 1995). The
Board reviews the pleaded claims based on the record evidence, most of which was
not before the examining attorney during ex parte examination, including evidence
of Opposer’s fame. Accordingly, the examining attorney’s approval of the application
for publication is not dispositive nor relevant to this inter partes proceeding. See Miss
Universe L.P. LLLP v. Cmty. Mktg., Inc., 82 USPQ2d 1562, 1571 (TTAB 2007) (“[I]t
is not dispositive or even relevant that applicant was able to convince the trademark
examining attorney during ex parte examination to pass applicant’s mark to
publication.”).
V. Conclusion
Opposer’s AMERICAN IDOL mark is famous and inherently distinctive, the
services are related under current marketing conditions, and the marks are similar.
We find confusion likely.
Opposition No. 91246713
- 36 -
Because we have found for Opposer on its likelihood of confusion claim, we need
not reach the merits of its dilution claim under Trademark Act Section 43(c). See
Multisorb Tech., Inc. v. Pactiv Corp., 109 USPQ2d 1170, 1172 (TTAB 2013).
Decision: The opposition is sustained under Trademark Act Section 2(d) and
registration to Applicant is refused.