Greenspring Media Group Inc.

Trademark Trial and Appeal Board

Feb 9, 2006

No. 78298486 (T.T.A.B. Feb. 9, 2006)

Mailed:
February 9, 2006
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Greenspring Media Group Inc.
(by change of name from Minnesota Monthly Publications Inc.)1
________

Serial No. 78298486
_______

Linda M. Byrne of Crawford Maunu PLLC for Greenspring Media
Group Inc.

Florentina Blandu, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney).
_______

Before Quinn, Bucher and Drost, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Greenspring Media Group Inc. seeks registration on the
Principal Register of the mark GIRLS NIGHT OUT (standard
character drawing) for services recited in the application, as
follows:
“arranging and conducting trade show
exhibitions in the field of food and wine
[featuring food and wine samples and
demonstrations by gourmet chefs], in
International Class 35.2

1 Applicant’s name change was recorded with the Assignment
Division of the United States Patent and Trademark Office at
Reel 3078, Frame 0133.
2 Application Serial No. 78298486 was filed by Minnesota Monthly
Publications Inc. on September 10, 2003 based upon applicant’s
allegation of first use anywhere and first use in commerce at least
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 78298486
- 2 -
The Trademark Examining Attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d),
on the ground that applicant’s mark, when used in connection
with the recited services, so resembles the mark GIRLS NIGHT
OUT (standard character drawing), which is registered for
services recited as “advertising agencies, namely, promoting
the services of retailers through the distribution of printed,
broadcast and Internet promotional materials, and rendering
sales promotion advice as to retail sales events” also in
International Class 35,3 as to be likely to cause confusion, to
cause mistake or to deceive.
When the refusal was made final, applicant appealed and
requested reconsideration of the final decision. On April 7,
2005, the Trademark Examining Attorney denied the request for
reconsideration and the appeal was resumed. The Trademark
Examining Attorney and applicant have each filed a brief in

as early as February 2000. The Trademark Examining Attorney has
been silent about whether or not she accepted applicant’s proffer of
an amended recitation of services put forward by applicant on
February 7, 2005 [e.g., the wording shown above in brackets]. Our
decision herein is not affected by the Trademark Examining
Attorney’s acceptance or rejection of this proposed addition of a
clause narrowing the recitation of services. However, should
applicant ultimately prevail on the issue of likelihood of
confusion, the application would be forwarded back to the Trademark
Examining Attorney for consideration of the proposed amendment.
3 Reg. No. 2637948 issued to 2XL Strategic Marketing, Inc. on
October 22, 2002, alleging use in commerce since at least as early
as March 11, 1999.
Serial No. 78298486
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the case, but applicant did not request an oral hearing before
the Board. We affirm the refusal to register.
In arguing for registrability, applicant contends that
there in no likelihood of confusion with the cited
registration because the trademark register shows this to be a
weak mark for these services, because of the dissimilarity of
the respective services, and because the relevant consumers of
these services are sophisticated purchasers.
By contrast, the Trademark Examining Attorney contends
that the services of applicant and the registrant are related,
and that the channels of trade are closely related, if not
identical. She argues that applicant has failed to
demonstrate why persons attending a wine and food exposition
should be considered sophisticated consumers, and of course,
that even sophisticated consumers are not immune from source
confusion.
Likelihood of confusion
Our determination under Section 2(d) is based upon an
analysis of all of the facts in evidence that are relevant to
the factors bearing upon the issue of likelihood of confusion.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and
Serial No. 78298486
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the relationship of the goods or services. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976).
The marks
Accordingly, we turn first to the du Pont factor focusing
on the similarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression. See
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). There is no issue with respect to the similarity
between the marks as they are identical, and both are
presented in standard character form. This factor heavily
favors the position of the Trademark Examining Attorney.
Third-Party Use
The sixth du Pont factor requires consideration of any
evidence pertaining to “the number and nature of similar marks
in use on similar goods.” In an attempt to show that
registrant’s mark is less distinctive and is entitled to a
narrow scope of protection, applicant relied upon a number of
third-party registrations of the same, or similar, marks.4

4 We have not listed the third-party marks identified by
applicant that were the subject of abandoned applications or
cancelled registrations as they have no probative value as to the
scope of protection afforded to registrant’s cited mark. Although
the Office strives for consistency, the fact that years ago an
Trademark Examining Attorney allowed another application loses all
Serial No. 78298486
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GIRLS NIGHT OUT
(standard character
drawing)
for “cosmetic kits composed of a cosmetic bag and one
or more of the following, antiperspirant, blush,
body glitter, bubble bath, cologne, cream for the
body, cream for the eyes, cream for the face,
cream for the hands, deodorant for personal use,
eye shadow, hair conditioner, hair shampoo, hair
spray, hair styling gel, lip gloss, lipstick,
lotion for the body, lotion for the face, lotion
for the hands, makeup, makeup remover, mascara,
nail polish, nail polish remover, non-medicated
face cleanser, perfume, powder for the body,
powder for the face, shower gel, soap for the
body, soap for the face and soap for the hands,”
in International Class 35;
GIRLS NIGHT IN
(standard character
drawing)
for “heat and steam facial saunas; footbaths;
whirlpool baths for feet; portable electric water
heaters and aerators for washing and refreshing
feet, for domestic use; parts and replacement
parts therefore” in International Class 116;
GIRLS NIGHT-
OUT PARTIES
(standard character
drawing)
for “distributorships and mail order catalog services
in the field of adult novelty items, marital
aids, and gift items sold through party plans” in
International Class 35.7

This evidence is entitled to little probative value in
determining likelihood of confusion. Olde Tyme Foods Inc. v.
Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992);
and Carl Karcher Enterprises, Inc. v. Stars Restaurants Corp.,
35 USPQ2d 1125 (TTAB 1995). The registrations are not

relevance if the application is subsequently abandoned due to a
failure to file a Statement of Use. See Applicant’s appeal brief,
pp. 4-5.
5 Reg. No. 2799879 issued on December 30, 2003 based upon a claim
of use anywhere and use in commerce since at least as early as March
4, 2002.
6 Reg. No. 2789811 issued on December 2, 2003 based upon a claim
of use anywhere and use in commerce since at least as early as
January 17, 2003.
7 Reg. No. 2855014 issued on June 15, 2004 based upon a claim of
use anywhere and use in commerce since at least as early as July 29,
2002.
Serial No. 78298486
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evidence that the marks are in use, much less that purchasers
are familiar with them. Further, contrary to the gist of
applicant’s remarks, the probative value of this evidence is
greatly diminished by the fact that the goods and services
covered in the third-party registrations are distinctly
different from advertising services.
Moreover, although third-party registrations are
probative to show, in the manner of dictionary definitions,
that the term has a significance or meaning in this field (See
Conde Nast Publications Inc. v. Miss Quality, Inc., 180 USPQ
149 (TTAB 1973)), given the paucity of third-party, registered
marks that are the same as, or similar to, the GIRLS NIGHT OUT
mark, applicant has failed to demonstrate that the term has a
significance or meaning in this field.
Hence, applicant has not rebutted the position of the
Trademark Examining Attorney that registrant’s mark should be
regarded as a strong mark entitled to broad protection.8
Accordingly, this factor weighs in the Office’s favor.

8 Moreover, although applicant points out that the term “Girls
Night Out” is “ubiquitous” in our society [e.g., applicant got
16.8 million hits on a Google search done on February 1, 2005], this
result has no relevance to the question before us as to the strength
of this term to serve as a source indicator for registrant’s
services.
Serial No. 78298486
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The Services
With respect to the services, it is well established that
the services of registrant and of applicant need not be
similar or competitive, or even that they are offered through
the same channels of trade, to support a holding of likelihood
of confusion. It is sufficient that the respective services
of registrant and applicant are related in some manner, and/or
that the conditions and activities surrounding the marketing
of the services are such that they would or could be
encountered by the same persons under circumstances that
could, because of the similarity of the marks, give rise to
the mistaken belief that they originate from the same source.
See Hilson Research, Inc. v. Society for Human Resource
Management, 27 USPQ2d 1423 (TTAB 1993); and In re
International Telephone & Telephone Corp., 197 USPQ 910, 911
(TTAB 1978). The issue, of course, is not whether purchasers
would confuse the goods or services, but rather whether there
is a likelihood of confusion as to the source of the goods (or
services). In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
In comparing the services, we initially note that where
identical marks are involved, as is the case here, the degree
of similarity between the respective services that is required
to support a finding of likelihood of confusion declines. In
re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688-1689
Serial No. 78298486
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(Fed. Cir. 1993); Time Warner Entertainment Co. v. Jones, 65
USPQ2d 1650, 1661 (TTAB 2002); and In re Opus One Inc., 60
USPQ2d 1812 (TTAB 2001).
In support of her position on the relatedness of the
services, the Trademark Examining Attorney initially did a
Google search of the words TRADE SHOWS AND ADVERTISING
AGENCIES. Summary pages for hits 1 – 40 and 71 - 80 were
attached to her Office action of March 5, 2004. She attached
additional Internet web pages to later Office actions.
Several of the websites are municipal, regional or
national directories of advertising agencies, some of which
list “trade shows support” as one of the services offered by
advertising agencies.9 At least one site reports that
advertising agencies are often reluctant to include trade

9 ▪ http://dir.yahoo.com/
▪ http://www.ad-mkt-review.com/public_html/docs/fs040.html,
Advertising and Marketing Review: “you are either already a trade
show exhibitor, or you should be”
▪ http://directory.google.com/Top/Business/Business_Services/
Event_Planning_and_Production/Convention_and_Trade_Show_Services/Exh
ibit_and_Display_Vendors/Custom_Exhibits/
▪ http://www.business.com/directory/advertising_and_marketing/
advertising/agencies/full-service/us_states/illinois/
▪ http://boston.about.com/
▪ http://www.houstonadagencies.com/
▪ http://www.pureim.com/chicago/chicago-advertising-
agency/chicago-advertising-agency.htm, Pure Imagination, a Chicago
advertising agency does trade show booth design
▪ http://www.coloradoarts.net/
Serial No. 78298486
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shows in their clients’ marketing plans.10 However, many of
the listed sites are totally irrelevant to the point for which
the Trademark Examining Attorney cites to them.11 For example,
given the way the syntax of the search was set up, there is
nothing in some of the sites about “trade shows,” but rather,
the words “trade” and “shows” appeared in distinctly different
portions of the website.12 Several websites show that national
associations of advertising agencies have their own industry
trade shows.13 Some other sites appear to be Internet portals

10 ▪ http://www.tenonline.org/art/mm/9708.html, Trade Show
Marketing: Ad Agencies … Help or Hindrance?
11 ▪ http://www.schipul.com/agencies/index.asp, hypothetical
intended to sell an Internet tracking function: “It might also
interest you that we have turned around complete projects with full
Tendenci™ marketing tracking functionality in less than a week for
those sometimes unreasonable clients of yours. Ya, you know the
ones with the trade show next week they forgot to mention.”
▪ http://www.apparelnews.net/Links/tradeshows.html, major
international apparel and textile trade shows
▪ http://www.advertising.com/Contact/ContactAgency.html,
information request form to have an Advertising.com representative
evaluate one’s objectives
▪ http://www.jobpilot.cz/content/service/jobjournal/, a job
listing in Switzerland
▪ http://www.buyusa.gov/korea/en/, U.S. government agency
promoting U.S. business interests in South Korea
▪ http://www.gcn.com/adinfo/shows.pdf, Government Computer News
blurbs
▪ http://www.vss.com/, Veronis Suhler Stevenson, an investment
firm serving media clients in North America and Europe.
12 ▪ http://www.museum.tv/archives/etv/A/htmlA/advertisinga/
advertisinga.htm
▪ www.adforum.com
▪ http://archive.thisisworcestershire.co.uk/2002/5/2/
272417.html
13 ▪ www.aaaa.org/, American Association of Advertising Agencies
has an annual conference including a tradeshow
▪ www.adweek.com discusses American Association of Advertising
Agencies’ annual media conference and tradeshow
Serial No. 78298486
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for foreign or international ventures.14 Others are primarily
devoted to foreign food and wine shows, but do include some
trade shows in the United States.15
In summarizing these Internet hits, we find that many
were not particularly helpful in showing the relationship
between advertising agency services and arranging trade show
exhibitions in any field. On the other hand, a number of

▪ http://www.ana.net/news/2001/01_18_01.cfm, a national e-
business conference and trade show, designed to help advertising
agencies and advertising executives steeped in Internet marketing
practices
▪ http://www.mediapost.com/index.cfm
14 ▪ http://www.ctv.ca/servlet/ArticleNews/story/CTVNews/, in
Canada
▪ http://trade.indiamart.com/offer/media-advertising, the
gateway to markets in India
▪ http://www.modaitalia.net/common/about.htm, the Italian
Fashion Portal
▪ http://www.internettradeshowlist.com, IT and Business Trade
Shows Around the World
▪ http://www.theemrgroup.com/index.html, in the UK
▪ http://archive.thisisworcestershire.co.uk/2002/5/2/
272417.html, in the UK
▪ http://www.tdctrade.com/prodmag/house/hou199811nw.htm, in
Hong Kong
▪ http://www.world-food.ru/about/index_e.asp or
http://www.world-food.ru/eng/about/sections/, World Food Show and
Conference in Moscow.
15 ▪ http://www.expocentral.com/food_and_beverage/industry_food_
and_beverage_wine.html, local, national and global trade shows and
companies organized into subject-based categories and sub-
categories, including wine trade shows in cities in the United
States, including Boston, New Orleans, San Francisco and Sacramento
▪ http://atn-riae.agr.ca/events/3683_e.htm, New Brunswick
office of the Agri-Food Trade Service, Canada, website listing food
trade shows from seventy countries chosen based on their relevance
to the agri-food, fish and seafood sectors, including expositions in
Washington DC, New York City, Boston, Chicago, San Francisco, Los
Angeles, Long Beach, Portland (OR), and Tacoma
▪ http://www.divbusiness.com/ts_byindustry_detail.asp?Show
TypeID=5, of ten shows, all but one is offered within Australia,
that one exception being an office in Portland, ME.
Serial No. 78298486
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these websites do make it clear that it is not unusual that
among the services advertising agencies offer to their retail
clients, one such service is support for trade shows.
Applicant argues that its services “function in a
specialized and niche area of commercial discourse that is
separate and distinct from ‘advertising agencies’.”
Applicant’s brief, p. 7. Applicant goes on to argue that
“[t]hese services are NOT a sub-set of advertising agency
services.” Applicant’s brief, p. 8, EMPHASIS in original. In
support of its position, applicant argues there are also
differences in the trade channels and classes of purchasers.
However, other than naming retailers, there are no
restrictions as to the retail field of registrant’s customers.
Hence, we must presume that registrant’s advertising services
promoting the services of retailers includes those in the
field of food and wine, and rendering advice as to retail
sales events would include events in the field of food and
wine, such as trade shows.
Although the respective services recited herein are
different, we find that registrant’s advertising agency
services and applicant’s arranging trade show exhibitions in
the field of food and wine are commercially related. Again,
the test is not whether purchasers would confuse advertising
agency services generally with arranging and conducting trade
Serial No. 78298486
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show exhibitions in the field of food and wine, but rather
whether purchasers would be confused as to the source of these
services. On balance, we conclude that this factor favors the
position taken by the Trademark Examining Attorney.
Trade Channels
It is clear on the face of registrant’s recitation of
services that its customers are retailers seeking promotional
services and advice on retail sales events.
As to applicant’s services, the record demonstrates that
the success of the “Twin Cities Food and Wine Experience,” the
event with which this mark is used, depends upon the response
of demographically-targeted consumers – namely, women from the
metropolitan areas of Minneapolis and St. Paul, Minnesota,
having disposable income who are interested in an experience
of gourmet food and fine wine. However, applicant does not
dispute the fact that its primary customers are the featured
gourmet chefs from area restaurants and vintners from various
wineries – entrepreneurs on whose behalf the trade show is
arranged each year. These same chefs and vintners may very
well have had occasion in the past to seek out an advertising
agency offering services like those provided by registrant.
Given this overlap of potential customers, we find that
chefs and vintners familiar with GIRLS NIGHT OUT advertising
services would likely believe that GIRLS NIGHT OUT for the
Serial No. 78298486
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arranging and conducting of food and wine trade shows emanates
from the same source, even though applicant does not provide
advertising agency services.
Conditions of Sale and Classes of Purchasers
As to the du Pont factor focusing on the conditions under
which and buyers to whom these sales are made, applicant
argues that its customers are careful, sophisticated
consumers:
For the present application, the sophistication
of the consumers is a particularly important
consideration in that the trade show events are
complex and expensive events. Thus, the
relevant consumer in the present case is going
to be very discerning and will typically spend
a large sum of time contemplating any purchase
of services from the Applicant by first
determining if and how the Applicant can
effectively provide the trade show services.

Applicant’s appeal brief, p. 11.
In response, the Trademark Examining Attorney argues that
applicant has failed to prove that persons merely attending a
wine and food exposition are sophisticated consumers (appeal
brief, p. 7). Consistent with our discussion supra about
trade channels, it appears from the above quotation that
rather than referring to the women attending the food
exposition, applicant is referring instead to restaurant
owners, managers, vintners and gourmet chefs. Nonetheless, we
are not convinced from this record that every restaurateur,
Serial No. 78298486
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chef or vintner has a great deal of sophistication in
marketing and promotional activities. Moreover, even if we
accept the proposition “that the trade show events are complex
and expensive events,” and hence, presume that purchases of
applicant’s and registrant’s related services will be made
with at least some degree of care and sophistication, it is
well settled that the fact that consumers may indeed exercise
some deliberation in choosing the respective services at issue
“does not necessarily preclude their mistaking one trademark
for another” or that they otherwise are entirely immune from
confusion as to source or sponsorship. Wincharger Corp. v.
Rinco, Inc., 297 F.2d 261, 132 USPQ 289, 292 (CCPA 1962). See
also In re Decombe, 9 USPQ2d 1812, 1814-15 (TTAB 1988); In re
Hester Industries, Inc., 231 USPQ 881, 883 (TTAB 1986); and In
re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983). Such
is especially the case where, as here, the marks at issue are
identical in all respects.
Resolve any doubt against the newcomer
Finally, after weighing all the relevant du Pont factors,
should we retain any doubt on the issue of likelihood of
confusion, such doubt must be resolved in favor of the prior
user and against the newcomer. Gillette Canada Inc. v. Ranir
Corp., 23 USPQ2d 1768 (TTAB 1992).
Serial No. 78298486
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Conclusion
Accordingly, we conclude that customers and potential
customers, who are familiar or acquainted with registrant’s
mark GIRLS NIGHT OUT, which is registered for providing
advertising agency services for retailers and rendering sales
promotion advice about retail sales events, would be likely to
believe, upon encountering applicant’s identical GIRLS NIGHT
OUT mark for arranging and conducting trade show exhibitions
in the field of food and wine, that such related services
emanate from, or are sponsored by or associated with, the same
source.
Decision: The refusal to register under Section 2(d) of
the Lanham Act is hereby affirmed.