Gene Pahlmann, Jr.

Trademark Trial and Appeal Board

Mar 28, 2014

No. 85415532 (T.T.A.B. Mar. 28, 2014)

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Serial No. 85415532
2

“photography” in International Class 412 that, as used in connection with
applicant’s identified services, it is likely to cause confusion or mistake or to
deceive. The examining attorney issued a final refusal of registration, which
applicant has appealed.
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 1357, 177 USPQ 563 (CCPA 1973). See
also, In re Majestic Distilling Co., 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). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
We start our analysis with the first du Pont factor, the similarity of the marks.
In comparing the marks we must consider the appearance, sound, connotation and
commercial impression of the marks at issue. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005). The emphasis of our analysis must be on the recollection of the
average purchaser who normally retains a general, rather than specific, impression
of trademarks. In re Cynosure, Inc., 90 USPQ2d 1644, 1645 (TTAB 2009), citing
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).

2 Reg. No. 4128162, issued April 17, 2012. The term “Media” in the mark is disclaimed.
Serial No. 85415532
3

In this case, applicant asserts that the marks, when viewed in their entireties,
do not support a finding of likelihood of confusion. We disagree.
While “the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, … there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on a consideration of the marks in their
entireties.” In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985). Looking first at the verbal portion of the marks, we note that “[i]t is often the
first part of a mark which is most likely to be impressed upon the mind of a
purchaser and remembered.” Presto Products Inc. v. Nice-Pak Products, Inc., 9
USPQ2d 1895, 1897 (TTAB 1988) (Likelihood of confusion found between
KIDWIPES and KID STUFF for pre-moistened disposable towelettes). See also
Palm Bay Imports Inc., 73 USPQ2d at 1692 (“Veuve” is the most prominent part of
the mark VEUVE CLICQUOT because “Veuve” is the first word in the mark and
the first word to appear on the label); Century 21 Real Estate Corp. v. Century Life
of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon
encountering the marks, consumers will first notice the identical lead word).
In this case, the first portion of the marks at issue, “LUCKYSTAR” and
“LUCKY STARS,” are not only the dominant portions of the marks, they are also
legally identical. Neither the space between the words of registrant’s mark nor
registrant’s use of the plural term “STARS” creates a significant difference in the
marks. See Stockpot, Inc. v. Stock Pot Restaurant, Inc., 220 USPQ 52, 54 (TTAB
Serial No. 85415532
4

1983), aff’d, 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (The presence or absence
of a space between virtually the same words, e,g., STOCKPOT and STOCK POT, is
not a significant difference); Weider Publ'ns, LLC v. D&D Beauty Care Co., 109
USPQ2d 1347, 1355 (TTAB 2014) (“It is well established that trademarks and/or
service marks consisting of the singular and plural forms of the same term are
essentially the same mark.”) see also Wilson v. Delaunay, 245 F.2d 877, 114 USPQ
339, 341 (CCPA 1957) (finding no material difference between the singular and
plural forms of ZOMBIE such that the marks were considered the same mark); In re
Pix of Am., Inc., 225 USPQ 691, 692 (TTAB 1985) (noting that the pluralization of
NEWPORT is “almost totally insignificant” in terms of likelihood of confusion
among purchasers); and In re Sarjanian, 136 USPQ 307, 308 (TTAB 1962) (finding
no material difference between the singular and plural forms of RED DEVIL).
The suffixes of the respective marks, “Photobooth” and “Media,” are descriptive
terms that have been disclaimed. Applicant’s services include the rental of portable
photo3 booths (aka photography booths); as such, the term “Photobooth” is
descriptive of a feature of applicant’s services. Media is defined as “a mode of
artistic expression or communication.”4 Since photography is clearly a mode of
artistic expression, the word “media” is descriptive of a feature of registrant’s

3 We take judicial notice that one of the definitions of “photo” is “photography.” The
definition was obtained from the Merriam-Webster Online Dictionary, www.m-w.com. The
Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C.
Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular
fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
4 We take judicial notice of the definition of “media” from the Merriam-Webster Online
Dictionary, www.m-w.com.
Serial No. 85415532
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photography services. In general, the addition of merely descriptive matter does not
obviate a finding of similarity. In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d
1944 (Fed. Cir. 2004). Applicant has asserted that “[t]here is no explicit rule that
likelihood of confusion automatically applies where a junior user’s mark contains in
part the whole of another mark.”5 While this assertion is true, the presence of
additional terms in the mark does not necessarily eliminate the likelihood of
confusion if some terms are identical. Id., at 1946 (“Viewed in their entireties with
non-dominant features appropriately discounted, the marks [GASPAR’S ALE for
beer and ale and JOSE GASPAR GOLD for tequila] become nearly identical…”).
Applicant contends that the commercial impressions of the marks are different,
and that registrant’s mark “presents a commercial impression related to astronomy
or constellations of stars,” while “the term ‘star’ in [a]pplicant’s mark connotes being
a [sic] famous or the center of attention.” Appeal Brief, p. 7; 4 TTABVue, 8. While
applicant has submitted no evidence supporting these contentions, the examining
attorney has submitted the only evidence in this record of the meaning of the
expression, “lucky star,” which is: “a certain star or planet which, by itself or with
others, is seriously or jokingly thought to bring a person good luck and success in
life.” Office action dated February 5, 2013 (from the website English Slang, located
at www.english-slang.com). Since there is no evidence that the term has any other
meaning, we find that the commercial impression conveyed by both marks is that of
“good luck stars.” Therefore, the commercial impressions conveyed by both marks

5 Appeal Brief, p.3.; 4 TTABVUE, 4.
Serial No. 85415532
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are similar. Furthermore, since “media” is defined as a mode of artistic expression,
it describes features of both registrant’s photography services and the purpose of
applicant’s photography and videography booths, namely, that they are for the
taking of pictures and videos. In short, the addition of these terms does not change
the commercial impression of the marks.
Applicant also asserts that the “non-word elements” in the cited mark “support[]
a finding that they are clearly different.” Appeal Brief, p. 6, 4 TTABVue, 7. In
support of this position, applicant argues that “there is no general rule as to
whether letters or designs will dominate in composite marks.”6 While applicant is
correct that there is no per se rule, “in the case of a composite mark containing both
words and a design, the verbal portion of the mark is the one most likely to indicate
the origin of the goods to which it is affixed.” In re Viterra Inc., 671 F3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) citing CBS Inc. v. Morrow, 708 F.2d. 1579, 128
USPQ 198 (Fed. Cir. 1983) (internal quotations omitted). Moreover, in this case, the
design portion of registrant’s mark, which consists of a series of stars, is
subordinate to the verbal portion of the mark and thus, the verbal portion indicates
the source of origin of the services.
In view thereof, we find that the similarities in the marks outweigh the
dissimilarities and that the first du Pont factor favors a finding of likelihood of
confusion.

6 Appeal Brief, p. 5; 4 TTABVue, 6 citing TMEP § 1207.01(c)(ii).
Serial No. 85415532
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We look next at the second du Pont factor, the similarity or dissimilarity of the
services. As discussed, supra, the recitation of services in the application is “rental
of portable photography and/or videography booths for taking of pictures and
videos” and the recitation of services in the cited registration is “photography.”
In the context of arguing the commercial impression of its mark, applicant
describes its services as consisting of “renting a portable photo booth to parties and
events, complete with attendants and boxes of props so that attendees can
memorialize the occasion,” which applicant indicates is “a very limited and specific
business model.” Appeal Brief, pp. 7-8; 4 TTABVue, 8-9. However, other than the
limitations inherent in the rental of a portable booth, we are not limited by
applicant’s explication of its business model. See In re Elbaum, 211 USPQ 639, 640
(TTAB 1981). As such, our analysis is restricted to the services described in the
application, “rental of portable photography and/or videography booths for taking of
pictures and videos.” Other than its comments in conjunction with the meaning of
its mark, applicant has submitted no argument regarding the similarity or
dissimilarity of the services at issue.
The examining attorney has submitted evidence that photography services and
the rental of photo booths are rendered by the same parties, at the same events. For
example,
Cheetah Design Studios “offers a variety of products for
today’s modern events and businesses,” which include
photography and Photo Booths for weddings and parties.
(www.cheetahdesignstudio.com) (attachment to Office
action dated July 19, 2012);
Serial No. 85415532
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Glitter Lens –is “equipped with state of the art portable
photo booths and a professional staff of seasoned
photographers. Choose one or both for your party.”
(www.glitterlens.com), (attachment to Office action dated
July 19, 2012);
Counter Clockwise Productions –“provide[s] professionally
attended and operated photo booth rentals with instant
prints personalized for your special event.” Also
“provide[s] professional event photography services with
onsite printing of those photographs.” www.counter-
clockwise.com) (attachment to Office action dated July 19,
2012); and
WeddingWire – CL Photography, Photobooth and
Planning – provides packages, which include “two
photographers and unlimited time … photobooth [added]
to packages …” (www.weddingwire.com) (attachment to
Office action dated February 5, 2013).
The foregoing evidence establishes that photography services and the rental of
photography and/or videography booths for taking of pictures and videos, are closely
related services, which are sold in the same channels of trade to the same
purchasers. Thus, the second and third du Pont factors favor a finding of likelihood
of confusion.
Having considered all the evidence and arguments on the relevant du Pont
factors discussed herein, we find that applicant’s mark Luckystar Photobooth is
likely to cause confusion with the cited mark, LUCKY STARS MEDIA & design.
The remaining du Pont factors we treat as neutral.
Decision: The refusal under Section 2(d) of the Act is affirmed.