Hayden Productions, LLC

Trademark Trial and Appeal Board

Nov 22, 2016

No. 86471501 (T.T.A.B. Nov. 22, 2016)

This Opinion is Not a
Precedent of the TTAB
Mailed: November 22, 2016
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Hayden Productions, LLC
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Serial No. 86471501
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Matthew H. Swyers of The Trademark Company, PLLC
for Hayden Productions, LLC.

Karen Sulita Dindayal, Trademark Examining Attorney, Law Office 117,
Hellen Bryan-Johnson, Managing Attorney.
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Before Seeherman, Adlin and Goodman,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Hayden Productions, LLC (“Applicant”) seeks registration of the mark HAYDEN
PRODUCTIONS, in standard characters (with “PRODUCTIONS” disclaimed), for
Entertainment services in the nature of arranging social
entertainment events; Entertainment services in the
nature of hosting social entertainment events;
Entertainment services in the nature of live visual and
audio performances by World Class Performing Artists,
Corporate Professionals, LED, Circus performers, Living
Decor, Hologram, Projection and 3D mapping along with
models, dancers, magicians, Dj's, staging, and fire
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performers; Entertainment services in the nature of
organizing social entertainment events.1

The Examining Attorney refused registration under Section 2(d) of the Act on the
ground that Applicant’s mark so resembles the registered mark shown below:

for
Entertainment services, namely, organizing and
conducting online and live film festivals and exhibitions;
Providing on-line information regarding films, and
providing information on film industry events in the nature
of film festivals, and exhibiting non-downloadable films via
a global computer network; Planning and conducting live
award shows for the purpose of providing recognition by
the way of live awards to demonstrate excellence in the
field of films; Planning and conducting film screening
events in the nature of planning and conducting film
festivals that screen contemporary movies, documentaries
and short films; Planning and conducting cultural events,
exhibitions, conferences and panel discussions in the fields
of art, literature, music, and cinema2

that use of Applicant’s mark in connection with Applicant’s services is likely to cause
confusion or mistake or to deceive. After the refusal became final, Applicant appealed
and Applicant and the Examining Attorney filed briefs.

1 Application Serial No. 86471501, filed December 4, 2014 under Section 1(a) of the
Trademark Act, based on alleged first use and first use in commerce dates of January 22,
2011.
2 Registration No. 3515473, issued October 14, 2008; Section 8 Affidavit accepted, Section 15
Affidavit acknowledged. The registration includes this description of the mark: “The mark
consists of the words HAYDENFILMS.com plus the design of a segment of movie film.”
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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 Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the 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.”).
Turning first to the marks, they are highly similar “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). In fact, the dominant
portion of each mark is the surname HAYDEN, spelled identically in each mark.
More specifically, in Applicant’s mark, the word PRODUCTIONS is merely
descriptive and disclaimed, because Applicant produces entertainment events.
Applicant does not dispute that PRODUCTIONS is merely descriptive.
In Registrant’s mark, the term “films” is merely descriptive because all of
Applicant’s services relate to “films” or “cinema.” And the “.com” in the cited mark
merely designates a commercial organization in internet addresses, and has no
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source-identifying significance. See In re 1800Mattress.com IP LLC, 586 F.3d 1359,
92 USPQ2d 1682, 1684 (Fed. Cir. 2009); In re Hotels.com LP, 87 USPQ2d 1100, 1105
(TTAB 2008), aff’d, 573 F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009) (“The term
HOTELS.COM is no more registrable than the generic word ‘hotels,’ alone.”). It is
settled that disclaimed and descriptive components of marks, such as these features
of Registrant’s mark, are entitled to less weight in a likelihood of confusion analysis.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir.
2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive
component of a mark may be given little weight in reaching a conclusion on the
likelihood of confusion.’”) (quoting In re Nat’l Data, 224 USPQ at 752); In re Dixie
Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Binion,
93 USPQ2d 1531, 1534 (TTAB 2009) (BINION’S, not disclaimed word ROADHOUSE,
is dominant element of BINION’S ROADHOUSE); In re Code Consultants, Inc., 60
USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in
creating the mark’s commercial impression”).
While Registrant’s mark also includes a design, Registrant describes the design
as “a segment of movie film,” so it is at best suggestive of Registrant’s film-related
services and has limited source-identifying significance. In any event, where, as here,
a mark is comprised of both words and a design, the words are normally accorded
greater weight, because consumers are likely to remember and use the word(s) to
request the goods. In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB
1987) (holding that “if one of the marks comprises both a word and a design, then the
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word is normally accorded greater weight because it would be used by purchasers to
request the goods or services” and “because applicant’s mark shares with registrant’s
mark that element responsible for creating its overall commercial impression, the
marks are confusingly similar”); see also In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1911 (Fed. Cir. 2012) (“the verbal portion of a word and design mark
likely will be the dominant portion”).
It is more significant that Applicant’s and Registrant’s marks both begin with
HAYDEN, which heightens the likelihood of confusion between them. Presto Prods.
Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first
part of a mark which is most likely to be impressed upon the mind of a purchaser and
remembered”); see also, Palm Bay Imports Inc., 73 USPQ2d at 1692; Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.
Cir. 1992).
Applicant’s argument that the shared term HAYDEN is weak because it is a
surname is not well-taken. While each case must be decided on its own merits, we
have previously found that marks which include and share surnames are confusingly
similar, even if they also include additional terms or features. For example, in In re
Hughes Furniture Indus., Inc., 114 USPQ2d 1134 (TTAB 2015), we found a likelihood
of confusion between the marks BRADLEY HUGHES and the mark shown below

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for furniture, stating that “the surname significance of the term ‘Hughes’ … makes it
more likely to be the focus of prospective customers in calling for the goods” and
holding that consumers “are more likely to focus on the common surname ‘Hughes’
and mistakenly believe that the goods of the parties emanate from or are sponsored
by the same source.” Id. at 1138, 1139. Similarly, in In re H&H Products, 228 USPQ
771, 772 (TTAB 1986), we found a likelihood of confusion between HARTLEY’S &
Design and WM. P. HARTLEY’S in stylized format for related goods, stating “[t]he
different logos and background designs do not detract from this conclusion because
they might easily be thought to differentiate two product lines of same producer …
rather than to distinguish source.” See also In re Chatam International Inc., 380 F.3d
1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (affirming finding of likelihood of confusion
between JOSE GASPAR GOLD for tequila and GASPAR’S ALE for beer, and holding
that the evidence supports a finding that the marks are “strikingly similar”); Cf.
Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, (TTAB 2014)
(BRUCE WINSTON likely to be confused with WINSTON and HARRY WINSTON,
finding that “[a] surname preceded by a given name is a common, highly conventional
combination of word elements, and the mark BRUCE WINSTON could well be
interpreted as a more specific reference to a person or company that is otherwise
identified by the designation WINSTON”).
In short, because the marks share the term HAYDEN, which is the first, dominant
and source-identifying part of both Applicant’s and Registrant’s marks, the marks
look and sound similar, convey similar meanings and present similar overall
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commercial impressions. In fact, consumers familiar with Registrant’s mark are
likely to believe that HAYDEN PRODUCTIONS is an affiliate, subsidiary or
otherwise connected with Registrant, and focuses on social entertainment events.
Turning to the services, they need not be identical or competitive in order to
support a finding of likelihood of confusion. It is enough that the services are related
in some manner or that the circumstances surrounding their marketing are such that
they would be likely to be seen by the same persons under circumstances which could
give rise, because of the marks used, to a mistaken belief that Applicant’s and
Registrant’s services originate from or are in some way associated with the same
source or that there is an association between the sources of the services. Hilson
Research, Inc. v. Society for Human Resource Management, 27 USPQ2d 1423, 1432
(TTAB 1993); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); Schering
Corp. v. Alza Corp., 207 USPQ 504, 507 (TTAB 1980); Oxford Pendaflex Corp. v.
Anixter Bros. Inc., 201 USPQ 851, 854 (TTAB 1978); In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The issue is not whether
purchasers would confuse the services, but rather whether there is a likelihood of
confusion as to the source of the services. In re Rexel Inc., 223 USPQ 830, 832 (TTAB
1984).
Here, Applicant’s “entertainment services in the nature of
[arranging/hosting/organizing] social entertainment events” encompasses
Registrant’s “planning and conducting” both “film screening events …” and “cultural
events, exhibitions, conferences and panel discussions in the fields of art literature,
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music, and cinema.” Indeed, “social entertainment events” are broad enough to
include at least film screening events, cultural events and exhibitions. Therefore,
these services are legally identical, which weighs heavily in favor of finding a
likelihood of confusion.
Furthermore, because the services are legally identical, we must presume that the
channels of trade and classes of purchasers for those services are also the same. See
In re Viterra, 101 USPQ2d 1905, 1908 (even though there was no evidence regarding
channels of trade and classes of consumers, the Board was entitled to rely on this
legal presumption in determining likelihood of confusion); In re Yawata Iron & Steel
Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical
goods, the channels of trade and classes of purchasers are considered to be the same);
American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011). This factor also weighs heavily in
favor of finding a likelihood of confusion.
Even if the services are not legally identical, the evidence establishes that there
is more than enough of a relationship between them that consumers would likely
believe they originate from the same source. Specifically, Applicant’s specimen
reveals that it bills itself as providing “World Class Entertainment and Production,”
which includes not just “specialty acts,” but also “LED/Hologram/Projection
Products,” which have much in common with film (which is Registrant’s focus), in
that they all involve the display of images:
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Furthermore, the Examining Attorney introduced evidence that film studios and
others involved in the movie business also provide various types of “events” similar
to those Applicant provides under its mark:
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Serial No. 86471501
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Office Action of March 26, 2015.
This evidence reveals that: (1) Paramount Pictures Studios is a “production lot”
which hosts “special events,” including “award shows” and “movie premieres” which
fall within Registrant’s identification of services, and “entertainment events” which
fall within Applicant’s identification of services; (2) like Registrant, National
Serial No. 86471501
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Geographic offers “film festivals,” and like Applicant, it offers “entertaining and
educational events;” and (3) Harkins Theatres offers both “film festivals” and “online
information regarding films,” which fall within Registrant’s identification of services,
and “entertainment events,” which fall within Applicant’s identification of services.
Furthermore, event planners work on both film festivals such as those Registrant
offers, as well as entertainment events such those as Applicant offers:

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Office Actions of March 26 and August 26, 2015.
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This evidence establishes that the activities identified in the involved application
encompass or are related to those identified in the cited registration, in that: (1) Elan
Event Studio plans events including film festivals, included in Registrant’s
identification of services, and other entertainment events, encompassed by
Applicant’s identification of services; (2) Blue Lotus Insights organizes social
entertainment events, which are encompassed by Applicant’s identification of
services, including in connection with film festivals, which are encompassed by
Registrant’s identification of services; (3) 15│40 Productions produces entertainment
events, including film award programs, encompassed by Registrant’s identification of
services, and other types of social entertainment events, encompassed by Applicant’s
identification of services; (4) The Film Festival Group provides a variety of social
entertainment events in connection with film festivals; and (5) Crisher
Entertainment offers “online information regarding films” which falls within
Registrant’s identification of services and “entertainment services in the nature of
organizing social entertainment events” which falls within Applicant’s identification
of services. Not only does this evidence establish a relationship between Applicant’s
and Registrant’s services, but it also establishes that the channels of trade for
Applicant’s and Registrant’s services overlap, as social entertainment events may be
provided with or connected to film festivals and screenings. Therefore, even assuming
Applicant’s and Registrant’s services are not legally identical, the services are
Serial No. 86471501
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nevertheless related and move in the same channels of trade, and these factors weigh
in favor of finding a likelihood of confusion.3
Applicant’s attorney claims without evidentiary support that there has been no
actual confusion between Applicant and Registrant and their services. However,
there is no evidence regarding the nature and extent of any contemporaneous use in
the marketplace that would show that there has been an opportunity for confusion to
occur if it were likely to occur. In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27
(TTAB 1984). In any event, the lack of evidence of actual confusion carries little
weight, especially in an ex parte context. In re Majestic Distilling, 65 USPQ2d at 1205.
This factor is neutral.
Finally, we accept Applicant’s argument that consumers will be more careful in
purchasing Applicant’s and Registrant’s services than they would be in making
“impulse” purchases. However, it is settled that even careful purchasers are not
immune from source confusion. This is especially true where, as here, they are faced
with highly similar marks. See, In re Research Trading Corp., 793 F.2d 1276, 230
USPQ 49, 50 (Fed. Cir. 1986); Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd.,
434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970); In re Decombe, 9 USPQ2d 1812,
1814-15 (TTAB 1988); see also, HRL Associates, Inc. v. Weiss Associates, Inc., 12
USPQ2d 1819 (TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL Associates, Inc., 902
F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks

3 While Applicant now takes a different position, in its August 4, 2015 Office Action response
it stated “[a]s for HAYDENFILMS.COM, we agree that the services are related.”
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outweigh sophisticated purchasers, careful purchasing decision, and expensive
goods). While this factor weighs against finding a likelihood of confusion, it is
outweighed by the similarity between the marks, the relatedness of the services and
their overlapping channels of trade.
Conclusion
Even assuming that consumers will exercise care in purchasing Applicant’s and
Registrant’s services, confusion is likely because the marks are similar, the services
are related, and they move in the same channels of trade.

Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.