87434823 (T.T.A.B. Jun. 13, 2019)

GR OPCO, LLC

Trademark Trial and Appeal BoardJun 13, 2019

87434823 (T.T.A.B. Jun. 13, 2019)

This Opinion Is Not a Precedent of the TTAB Mailed: June 13, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re GR OPCO, LLC _____ Serial Nos. 87228837 and 87434823 (consolidated) _____ Stan C. Sneeringer and Matthew J. Schmidt of Pedersen & Houpt, P.C., for GR OPCO, LLC. Meghan Reinhart, Trademark Examining Attorney, Law Office 108, Steven Berk, Managing Attorney (Application Serial No. 87228837). Tara L. Bhupathi, Trademark Examining Attorney, Law Office 124, Lydia Belzer, Managing Attorney (Application Serial No. 87434823). _____ Before Taylor, Hightower, and Goodman, Administrative Trademark Judges. Opinion by Hightower, Administrative Trademark Judge: Applicant GR OPCO, LLC seeks registration on the Principal Register of the mark E11EVEN in standard characters for the following goods and services (as amended): • “Musical recordings,” in International Class 9; • “Musical production services provided by a music label,” in International Class 41;1 and 1 Application Serial No. 87228837, filed November 7, 2016, based on Applicant’s allegation of a bona fide intention to use the mark in commerce pursuant to Trademark Act Section 1(b), 15 U.S.C. § 1051(b). The application included goods and services in additional classes which were divided into child application Serial No. 87977522 and are not before us. Serial Nos. 87228837 and 87434823 (consolidated) - 2 - • “Night club services,” in International Class 41.2 The Trademark Examining Attorneys refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), due to a likelihood of confusion with the following marks previously registered on the Principal Register: • ELLEEVEN (typed drawing)3 for a “series of prerecorded compact discs, prerecorded audio cassettes and prerecorded video cassettes, all featuring music,” in International Class 9,4 and “entertainment services in the nature of live musical performances,” in International Class 41;5 and • E11EVEN MEDIA (in standard characters and with “MEDIA” disclaimed) for “entertainment services in the nature of development, creation, production and post-production services of multimedia entertainment content; entertainment services, namely, multimedia production services; film and video production; multimedia entertainment services in the nature of development, production and post-production services in the fields of video and films; photography services; post-production editing services in the field of music, videos and film; video production services,” in International Class 43.6 After the Trademark Examining Attorneys7 made the refusals final, Applicant requested reconsideration as to application Serial No. 87228837 (the “’837 Application”) only. Reconsideration was denied. Applicant appealed the refusal of both applications to this Board. 2 Application Serial No. 87434823, filed May 3, 2017, also pursuant to Section 1(b) of the Trademark Act. 3 Before November 2, 2003, “standard character” drawings were known as “typed” drawings. A typed mark is the legal equivalent of a standard character mark. Trademark Manual of Examining Procedure (TMEP) § 807.03(i) (Oct. 2018). 4 Registration No. 2471484, issued July 24, 2001 to Jessica Kunin, an individual with a Los Angeles address; renewed. 5 Registration No. 2302712, issued December 21, 1999, also to Jessica Kunin; renewed. 6 Registration No. 4963786, issued May 24, 2016 to E11EVEN MEDIA LLC. 7 “Examining Attorney” as used infra refers to either Ms. Reinhart or Ms. Bhupathi. Serial Nos. 87228837 and 87434823 (consolidated) - 3 - I. Consolidation These appeals present common questions of law and fact. Therefore, in the interest of judicial economy, we consolidate them and decide them in this single opinion. In re Anderson, 101 USPQ2d 1912, 1915 (TTAB 2012). We have considered all arguments and evidence filed in each appeal and taken into account relevant factual differences between them. We affirm the refusal to register as to each application and all three classes. II. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all probative 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); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the goods 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.”). A. Similarity of the Marks We begin our assessment with the similarity of the marks. In a likelihood of confusion analysis, we compare the marks in their entireties for similarities and dissimilarities in appearance, sound, connotation and overall commercial impression. Serial Nos. 87228837 and 87434823 (consolidated) - 4 - In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1048 (Fed. Cir. 2018). Similarity in any one of these elements may be sufficient to find the marks confusingly similar. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018). “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.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018), cert. denied, 139 S. Ct. 1550 (April 15, 2019) (quotation omitted). Because similarity is determined based on the marks in their entireties, our analysis is not predicated on dissecting the marks into their various components. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015). On the other hand, “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 consideration of the marks in their entireties.” In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). 1. E11EVEN MEDIA We first consider the mark E11EVEN MEDIA in Registration No. 4963786 (the “’786 Registration”), cited against the ’837 Application. This mark is highly similar to Applicant’s mark, E11EVEN. Applicant’s entire mark is identical to the first term in the cited mark, which we find to be its dominant part. As we have often said, the lead element in a mark has a position of prominence; it is likely to be noticed and remembered by consumers and so to play a dominant role in the mark. See, e.g., Serial Nos. 87228837 and 87434823 (consolidated) - 5 - Detroit Athletic, 128 USPQ2d at 1049 (“The identity of the marks’ initial two words is particularly significant because consumers typically notice those words first.”); Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (stating that VEUVE is a prominent feature of the mark VEUVE CLICQUOT because it is the first word in the mark); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (stating that dominance of BARR in BARR GROUP is reinforced by its location as the first word in the mark). The only point of distinction between Applicant’s mark and this cited mark is the addition of the disclaimed term MEDIA to the latter. Because it is highly descriptive or generic in association with Registrant’s services, consumers are unlikely to rely on MEDIA to identify the source of those services; thus, we do not ignore this word but we do give it little weight. While there is no rule that likelihood of confusion automatically applies where one mark subsumes another, in this case, the fact that Applicant’s entire mark E11EVEN is identical to the dominant and only distinctive term in the cited mark E11EVEN MEDIA increases the similarity between the two. See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (affirming Board decision that ML is likely to be perceived as a shortened version of ML MARK LEES, and stating that “the presence of an additional term in the mark does not necessarily eliminate the likelihood of confusion if some terms are identical”); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406, 407 (CCPA 1967) (affirming that THE LILLY is Serial Nos. 87228837 and 87434823 (consolidated) - 6 - likely to be confused with LILLI ANN); Hunter Indus., Inc. v. Toro Co., 110 USPQ2d 1651, 1660-61 (TTAB 2014) (finding applicant’s mark PRECISION similar to opposer’s mark PRECISION DISTRIBUTION CONTROL); see also China Healthways Inst., Inc. v. Wang, 491 F.3d 1337, 83 USPQ2d 1123, 1125 (Fed. Cir. 2007) (finding the common word in CHI and CHI PLUS likely to cause confusion despite differences in the marks’ designs). Given the dominant shared term E11EVEN, we find the marks considered in their entireties sufficiently similar in appearance, sound, meaning, and overall commercial impression that persons who encounter them would be likely to assume a connection between Applicant and Registrant. The first du Pont factor therefore weighs in favor of a finding that confusion is likely between Applicant’s mark and the cited mark E11EVEN MEDIA. 2. ELLEEVEN We now turn to a comparison of Applicant’s mark with the mark ELLEEVEN, in Registration Nos. 2302712 and 2471484 (the “’712 Registration” and “’484 Registration,” respectively), cited against both subject applications. Like Applicant’s mark E11EVEN, this cited mark is a coined term that appears to be a variation on the word “eleven.” We make no finding as to whether the two marks are aurally similar, recognizing that there is no “correct” pronunciation of these terms. See, e.g., StonCor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 111 USPQ2d 1649, 1651 (Fed. Cir. 2014) (“There is no correct pronunciation of a trademark that is not a recognized word.”); In re Allegiance Staffing, 115 USPQ2d 1319, 1325 (TTAB 2015) (agreeing that there Serial Nos. 87228837 and 87434823 (consolidated) - 7 - is no correct pronunciation of mark that is a coined term); see also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012) (stating that “there is no correct pronunciation of a trademark, and consumers may pronounce a mark differently than intended by the brand owner”). This cited mark has an extra “e” in the middle and incorporates two “Ls” where Applicant’s mark uses two “1s.” Contrary to Applicant’s argument, however, Registrant is not limited to any particular depiction of its standard-character mark and may use lower case “ls” that appear similar or identical to “1s.” See ’837 Application Reply Brief, 13 TTABVUE 6; Viterra, 101 USPQ2d at 1910. We find the differences between the marks to be minor and the marks to be similar visually as well as in connotation and overall commercial impression. We bear in mind that, as discussed in Subsection B(1) infra, where goods or services are legally identical, “the degree of similarity necessary to support a conclusion of likely confusion declines.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012). We find Applicant’s mark to be sufficiently similar to the cited mark ELLEEVEN that the first du Pont factor weighs in favor of a likelihood of confusion. B. Similarity of the Goods and Services, Channels of Trade, and Classes of Customers We next consider the second and third du Pont factors, assessing the similarity or dissimilarity of the goods and services, customers, and trade channels. The test is not whether consumers would be likely to confuse the goods and services, but rather whether they would be likely to be confused as to their source. Anderson, 101 USPQ2d Serial Nos. 87228837 and 87434823 (consolidated) - 8 - at 1919. Therefore, to support a finding of likelihood of confusion, it is not necessary that the goods and services be identical or even competitive. It is sufficient that the goods and services are related in some manner, or that the circumstances surrounding their marketing are such that they would be encountered by the same persons in situations that would give rise, because of the marks, to a mistaken belief that they originate from the same source or that there is an association or connection between the sources. In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009). We must look to the goods and services as identified in the involved applications and cited registrations, not to any extrinsic evidence of actual use. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014). For this reason, Applicant’s evidence and arguments pertaining to its and Registrants’ geographic locations and actual uses of their marks are inapposite. E.g., Detroit Athletic, 128 USPQ2d at 1052 (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)). A likelihood of confusion must be found as to the entire class if confusion is likely for any item within the identification for that class. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); C.H. Hanson, 116 USPQ2d at 1355. 1. Applicant’s Class 9 Goods (“musical recordings”) The goods identified in the ’837 Application are “musical recordings.” The cited ’484 Registration for the mark ELLEEVEN identifies a “series of prerecorded compact discs, prerecorded audio cassettes and prerecorded video cassettes, all featuring music.” Applicant’s musical recordings encompass Registrant’s prerecorded compact Serial Nos. 87228837 and 87434823 (consolidated) - 9 - discs and audio cassettes featuring music. See In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and commercial furniture.’”). These goods thus are legally identical, and the second du Pont factor weighs heavily in favor of finding a likelihood of confusion. Because the goods are legally identical in part, moreover, we must presume that the channels of trade and classes of purchasers for these goods are the same. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1518-19 (TTAB 2016); see also Viterra, 101 USPQ2d at 1908 (finding Board entitled to rely on this legal presumption in determining likelihood of confusion). The third du Pont factor strongly supports a finding that confusion is likely between the Class 9 goods identified in the ’837 Application and the ’484 Registration. 2. “Musical production services provided by a music label” (Class 41) We move to the Class 41 services recited in the ’837 Application, “musical production services provided by a music label.” Registration is refused due to a likelihood of confusion with the mark E11EVEN MEDIA for, inter alia, “post- production editing services in the field of music, videos and film” (the ’786 Registration). We disagree with the assertion in the Examining Attorney’s brief for the ’837 Application that: “In this case, the registration uses broad wording to describe its video production services, which presumably encompasses all services of the type described, including applicant’s more narrow ‘music production services provided by a music label.’” 12 TTABVUE 17. Nonetheless, the Examining Attorney submitted Serial Nos. 87228837 and 87434823 (consolidated) - 10 - nine existing, use-based registrations owned by third parties reciting both musical production services and post-production services in the field of music.8 This evidence suggests that the respective services are of a kind which may emanate from a single source under a single mark. See, e.g., In re I-Coat Co., 126 USPQ2d 1730, 1738 (TTAB 2018); C.H. Hanson, 116 USPQ2d at 1355-56. Although none of the services are identified in the third-party registrations as being offered by a music label, based on this record, we find that “musical production services” and “post-production editing services in the field of music” are similar and related whether offered by a record label or different type of provider. The second du Pont factor weighs in favor of a finding that confusion is likely as to these services. 3. “Night club services” (Class 41) Finally, we address the “night club services” identified in Application Serial No. 8743823 (the “’823 Application”). The Examining Attorney refused registration of the ’823 Application on the ground that confusion is likely with the mark ELLEEVEN for “entertainment services in the nature of live musical performances” in the ’712 Registration. The Examining Attorney submitted evidence that night clubs often feature live musical performances. In fact, a Wikipedia.org entry characterizes the provision of live music as a defining characteristic of a nightclub: “A nightclub is generally distinguished from regular bars, pubs or taverns by the inclusion of a stage for live 8 See September 20, 2017 Office Action at TSDR 57-75; February 23, 2017 Office Action at TSDR 75-96. Serial Nos. 87228837 and 87434823 (consolidated) - 11 - music, one or more dance floor areas and a DJ booth, where a DJ plays recorded music.”9 The Examining Attorney also submitted a definition of “nightclub” as “a place of entertainment open at night usually serving food and liquor and providing music and space for dancing and often having a floor show.”10 In addition, the Examining Attorney made of record 17 existing, use-based registrations owned by third parties reciting both night club services and entertainment services in the nature of live musical performances.11 She also proffered printouts from at least five night club websites offering live musical performances.12 This evidence supports a finding that the services recited in the ’823 Application and the ’712 Registration are related and complementary, and travel through the same channels of trade to the same consumers; that is, night club patrons are the audience for live musical performances offered at those venues. The similarity of the marks, coupled with the related, complementary nature of the services, marketed in the same trade channels, leads us to the conclusion that prospective consumers are likely to confuse the involved services as originating from or associated with or sponsored by the same entity. See, e.g., In re Martin’s Famous Pastry Shoppe, Inc., 9 March 10, 2018 Final Office Action at TSDR 39. 10 August 8, 2017 Office Action at TSDR 27 (from merriam-webster.com/dictionary/ nightclub). Because the Board may take judicial notice of definitions from dictionaries, including online dictionaries that exist in printed format, we deny the Examining Attorney’s objection to another definition of “nightclub” cited by Applicant in its appeal brief. ’823 Application, Appeal Brief, 4 TTABVUE 13; Examiner’s Brief, 6 TTABVUE 12; Reply Brief, 7 TTABVUE 7 n.1. See, e.g., In re S. Malhotra & Co. AG, 128 USPQ2d 1100, 1104 n.9 (TTAB 2018). Applicant also cited, but did not submit a printout of, this definition in its February 8, 2018 Response to Office Action at TSDR 4. 11 March 10, 2018 Final Office Action at 2-31; August 8, 2017 Office Action at TSDR 4-26. 12 March 10, 2018 Final Office Action at 32-38; August 8, 2017 Office Action at TSDR 29-30. Serial Nos. 87228837 and 87434823 (consolidated) - 12 - 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (“[C]omplementary use has long been recognized as a relevant consideration in determining a likelihood of confusion.”); Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1713 (TTAB 2010) (stating that, by definition, flashlights and flashlight bulbs are complementary). In our likelihood of confusion analysis, these findings under the second and third du Pont factors weigh in favor of finding a likelihood of confusion. III. Conclusion We have found that the first and second du Pont factors favor a likelihood of confusion as to each cited mark and class of goods and services, and that the third factor supports a finding that confusion is likely for Applicant’s “musical recordings” and “night club services.” Applicant and the Examining Attorney have not presented evidence regarding other du Pont factors. To the extent that such du Pont factors may nonetheless be applicable, we treat them as neutral. For all the reasons detailed above, we find that Applicant’s mark E11EVEN is likely to cause confusion with the marks in cited Registration Nos. 2302712, 2471484, and 4963786 when used in association with the goods and services identified in the subject applications. Decision: The refusal to register Applicant’s mark under Section 2(d) of the Trademark Act is affirmed as to both applications.