HOB Entertainment, Inc.

Trademark Trial and Appeal Board

Sep 18, 2012

No. 85002891 (T.T.A.B. Sep. 18, 2012)

Mailed:
September 18, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re HOB Entertainment, Inc.
________

Serial No. 85002891
_______

Tara Rose, Esq., of Keats, McFarland & Wilson for HOB
Entertainment, Inc.

Tina H. Mai, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
_______

Before Holtzman, Wellington, and Lykos Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
HOB Entertainment, Inc., applicant, filed an
application to register the mark KARMA KASH (in standard
character form) on the Principal Register for “coupons” in
International Class 16.1 The term CASH was initially
disclaimed by applicant in response to an Office action,
but this disclaimer was later retracted.

1 Application Serial No. 85002891 is based on an alleged date of
first use anywhere and in commerce on August 31, 2007, under
Section 1(a) of the Trademark Act.
THIS OPINION
IS NOT A PRECEDENT
OF THE TTAB
Serial No. 85002891
2
The examining attorney has refused registration of
applicant's mark pursuant to Section 2(d) of the Trademark
Act, 15 U.S.C. 1052(d), on the ground that applicant’s mark
so resembles the previously registered mark KARMA COUPON
(in standard character form) for “Coupon books; Coupons” in
International Class 162, that, as used on applicant’s
identified goods, applicant's mark is likely to cause
confusion or mistake or to deceive. The cited registration
contains a disclaimer of the term COUPON.
Registration has also been refused pursuant to Section
6(a) of the Trademark Act, 15 U.S.C. § 1056(a), based on
applicant’s failure to comply with the requirement to
disclaim the word CASH. The examining attorney contends
that term KASH in applicant’s mark is an obvious
misspelling of “cash,” a term that is merely descriptive of
applicant’s goods within the meaning of Section 2(e)(1) of
the Trademark Act, 15 U.S.C. § 1052(e)(1).
Applicant appealed the final refusals and briefs were
filed. For the following reasons, we affirm the refusal to
register on both the disclaimer requirement and the
likelihood of confusion ground.
Disclaimer Requirement

2 Registration No. 3722779 issued December 8, 2009.
Serial No. 85002891
3
An examining attorney may require an applicant to
disclaim an unregistrable component of a mark otherwise
registrable. Trademark Act Section 6(a). Merely
descriptive terms are unregistrable, under Trademark Act
Section 2(e)(1) and, therefore, are subject to disclaimer
if the mark is otherwise registrable. Failure to comply
with a disclaimer requirement is grounds for refusal of
registration. See In re Omaha Nat’l Corp., 819 F.2d 1117,
2 USPQ2d 1859 (Fed. Cir. 1987); In re Richardson Ink Co.,
511 F.2d 559, 185 USPQ 46 (CCPA 1975); In re National
Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); and In
re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB
1968).
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. See, e.g., In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828 (Fed. Cir.
2007); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987), and In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215 (CCPA 1978). A term need not immediately
convey an idea of each and every specific feature of the
applicant’s goods or services in order to be considered
Serial No. 85002891
4
merely descriptive; it is enough that the term describes
one significant attribute, function or property of the
goods or services. See In re H.U.D.D.L.E., 216 USPQ 358
(TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services
for which registration is sought, the context in which it
is being used on or in connection with those goods or
services, and the possible significance that the term would
have to the average purchaser of the goods or services
because of the manner of its use. That a term may have
other meanings in different contexts is not controlling.
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Finally, if a mark comprises a word or words that are
misspelled but nonetheless must be disclaimed, the
examining attorney should require disclaimer of the word or
words in the correct spelling. See, In re Omaha Nat’l
Corp., 819 F.2d at 1119; In re Carlson, 91 USPQ2d 1198,
1203 (TTAB 2009); In re Newport Fastener Co., 5 USPQ2d
1064, 1067 n.4 (TTAB 1987). See also, TMEP § 1213.08(c)
Initially, we find that the term KASH, as used in
applicant’s mark and in connection with the identified
goods, will be perceived as mere misspelling of the word
“cash.” Applicant does not dispute this and actually
Serial No. 85002891
5
acknowledges that KASH will be understood as “cash” --
arguing that its mark will be perceived in this manner and,
thus, may be distinguished from the registered mark. See
Brief, p. 5. Accordingly, the examining attorney’s
decision to require the correct spelling of the term is
appropriate.
In determining whether “cash” is descriptive of
coupons, we take note of its defined meaning as supplied by
applicant:3
CASH: Money in the form of coins or banknotes,
especially that issued by a government.

We further take notice of the following definition for
“coupons”:4
COUPONS: a detachable part of a ticket or
advertisement entitling the holder to a discount, free
gift, etc.

While “cash” and “coupons” are clearly not synonymous,
the evidentiary materials submitted by the examining
attorney shows that the term “cash” is merely descriptive
of a feature or function of coupons, namely, that they have
a “cash value” and that they may be used as a discount in
the form of or very similar to cash being used. In

3 From Dictionary.com, taken from The Random House Dictionary
(Random House, Inc. 2011).
4 Collins English Dictionary – Complete & Unabridged 10th Edition
(William Collins Sons & Co, 2009). The Board may take judicial
notice of dictionary evidence. University of Notre Dame du Lac
Serial No. 85002891
6
particular, we point to the evidentiary materials submitted
with Office action June 17, 2011 that, taken together, show
that coupons can be used in a similar manner as cash. For
example, in one website entitled “Coupons Equal Cash,” a
“$5/$20 CVS coupon” is described as being redeemable for
five dollars once the consumer spends twenty dollars, and
that “you can also use manufacturer’s coupons after they
deduct the $5 to bring your total down even more.”5
Furthermore, coupons may be sold in coupon books and at
least one state government treats these goods as being a
“cash equivalent” for tax purposes:6
CASH EQUIVALENTS: “Cash equivalents” are items
purchased that entitle a person to redeem them in
future... Examples...include...coupon books.”

Coupons are also regarded by consumers as having a
“cash value,” usually a minimal amount, but as one article
points out it would not be uncommon to view coupons as
having a “cash equivalent value” that equals the price
reduction resulting from the coupon being used. According
to one online article discussing new legislation, the
author first notes that “As you may be aware, coupons have
always had a cash value. Usually, it’s something small,

v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982),
aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
5 From www.couponsequalcash.com.
6 State of Connecticut Department of Revenue Services website,
www.ct.gov/drs/cwp.
Serial No. 85002891
7
like $ .01.” The author goes on to note that consumers
have found this misleading and then posits: “If something
is $2 less, that coupon should have a cash equivalent value
of $2, and not 1/100 of a dollar.” Regardless of the
subject matter, this article indicates that consumers view
coupons as having a “cash value.”
The examining attorney has also submitted printouts
from several third-party websites referencing applicant’s
“Karma Kash.” On the website “San Diego – The Official
Travel Resource for the San Diego Region,” a music event is
described and then a mention to applicant’s services, “You
and your crew can make the rock ‘n’ roll life last a few
days longer with $200 Karma Kash for dinner at the
legendary House of Blues San Diego and nights handing out
at the trendy Siren Pool...”
Based on the record, we find that KASH, which will be
understood as mere misspelling of “cash”, is merely
descriptive of applicant’s identified goods because coupons
are viewed as having a “cash value” or, in some cases, may
be used in the same manner as cash. As shown in one
advertisement, applicant’s own coupons are touted as
allowing the holders thereof to use “$200 Karma Kash” in
the same manner as one would use cash, e.g., by purchasing
Serial No. 85002891
8
dinner. Thus, while the coupons are not the same as cash,
it is possible to redeem them in a manner similar to cash.
In response to the disclaimer requirement, applicant
argues that KASH is only suggestive of its coupons and,
noting the defined meaning of cash, asserts that
[b]ecause Applicant’s coupons do not function as
‘cash’ in the form of ‘coins or banknotes, especially
that issued by a government’ as Applicant’s coupons
are only redeemable for food, beverage and retail
merchandise at certain locations, the term ‘KASH’ is
not descriptive and need not be disclaimed in
Applicant’s Mark.

We do not agree with applicant’s argument to the
extent that it is premised on the assumption that its
coupons must literally function as cash, as that term is
literally defined. Rather, as noted, a term need only
convey an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the
goods. Thus, while applicant’s coupons cannot be
considered “coins or banknotes,” they may be used, as shown
by the evidence, in a similar fashion as one would use
cash. In other words, and by way of example, a consumer
would use applicant’s $ 200 Karma Kash coupon to pay for
dinner in lieu of actually using government-issued
currency.
Finally, although applicant has not necessarily argued
the point, we find that any alliterative value found in
Serial No. 85002891
9
applicant’s proposed mark does not obviate the disclaimer
requirement. That is, the fact that the two terms KARMA
KASH begin with the letter “k” does not create a single and
distinct commercial impression separate and apart from the
meaning of its constituent elements, i.e., a unitary mark
whereby disclaimer of one term would be inappropriate. See,
e.g., In re EBS Data Processing, Inc., 212 USPQ 964, 966
(TTAB 1981) (“Pocket Profile” separable element from PHACTS
POCKET PROFILE, disclaimer requirement for “Pocket Profile”
upheld).
In sum, we find that consumers will perceive KASH as
the equivalent of “cash” and merely describing a key
feature or function of applicant’s coupons and,
accordingly, must be disclaimed.
We now turn to the likelihood of confusion ground for
refusing registration of applicant’s mark.
Likelihood of Confusion
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.
Serial No. 85002891
10
Cir. 2003). In any likelihood of confusion analysis,
however, two key, although not exclusive, 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).
We first consider the du Pont factors regarding the
goods, trade channels and classes of purchasers. In an ex
parte appeal, likelihood of confusion is determined on the
basis of the goods as they are identified in the
application and the cited registration. In re Shell Oil
Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n. 4 (Fed. Cir.
1993); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); In re
William Hodges & Co., Inc., 190 USPQ 47, 48 (TTAB 1976).
Here, the goods are identical inasmuch as applicant
seeks registration of its mark for coupons, which are
covered by the cited registration. This factor therefore
weighs strongly in favor of finding a likelihood of
confusion.
Because the goods in the application and the cited
registration are identical, we must presume that the
channels of trade and classes of purchasers at least in
part are the same. Genesco Inc. v. Martz, 66 USPQ2d 1260,
1268 (TTAB 2003) (“Given the in-part identical and in-part
Serial No. 85002891
11
related nature of the parties’ goods, and the lack of any
restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be
offered and sold to the same classes of purchasers through
the same channels of trade”); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of
purchasers”). Thus, the du Pont factors involving trade
channels and classes of purchasers also favor a finding of
likelihood of confusion.
This brings us to the similarity of the marks. We
keep in mind that when marks would appear on identical
goods, as they partially do here, the degree of similarity
necessary to support a conclusion of likely confusion
declines with respect to that class of goods (in this case,
International Class 30). Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992). Our focus is on whether the marks are
similar in sound, appearance, meaning, and commercial
impression. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). In articulating reasons for
reaching a conclusion on the issue of likelihood of
Serial No. 85002891
12
confusion, 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). For example, merely
descriptive matter that is disclaimed may be accorded
subordinate status relative to the more distinctive
portions of a mark. In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997).
In the present case and as explained above, applicant
is required to disclaim the word CASH, the correct spelling
for KASH, because it is merely descriptive of coupons.
Likewise, registrant has disclaimed the word COUPON because
it is the generic term for the goods, i.e., coupons.
It is thus clear that the identical term KARMA forms
the dominant portion of both marks. As the first and only
non-descriptive element both marks, KARMA is the term most
likely to be impressed upon a prospective consumer. Presto
Products, Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895,
1897 (TTAB 1988) (“it is often the first part of a mark
which is likely to be impressed upon the mind of a
purchaser and remembered”). See also, Palm Bay, 73 USPQ2d
at 1692. Furthermore, we take notice that KARMA is defined
Serial No. 85002891
13
as “from Hinduism and Buddhism: action, seen as bringing
upon oneself inevitable results, good or bad, either in
this life or in reincarnation” or, more simply, as “fate;
destiny.”7 We find no specific connotation, suggestive or
otherwise, created by the term KARMA when used in either
mark or in connection with either coupons in general. The
record does not show that KARMA is used frequently or
generally in connection with coupons. Based on the record,
applicant employs a coupon scheme that rewards persons for
various acts and thus the term KARMA may be suggestive in
that regard. However, it has not been shown that this is a
common practice or that consumers, unfamiliar with
applicant’s goods would even be aware of this concept.
Although the marks have the same dominant portion, we
must compare the marks as a whole. M2 Software Inc. v. M2
Communications Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1948-49
(Fed. Cir. 2006) [“When comparing the similarity of marks,
a disclaimed term...may be given little weight, but it may
not be ignored”]. We do not ignore that KASH is not to be
found in the registered mark and COUPON is not to be found
in the proposed mark. Nevertheless, because the terms are

7 Collins English Dictionary – Complete & Unabridged 10th Edition
(William Collins Sons & Co, 2009). The Board may take judicial
notice of dictionary evidence. University of Notre Dame du Lac,
213 USPQ 594.

Serial No. 85002891
14
secondary, both in position and because they have less
source-identifying value due to their descriptive nature,
they do not suffice for purposes of distinguishing the two
marks. Moreover, all words in both marks begin with either
the letter “K” or a hard “C”, the pronunciation is not so
different. That is, there is a similar alliteration
created by the marks.
We have also considered applicant’s argument that the
two marks may be distinguished because the term KARMA is
generally weak and should be accorded a limited scope of
protection. Specifically, applicant argues that “based
upon the evidence submitted, it is proper to infer here
that purchasers have been conditioned to expect different
sources for goods and services offered under ‘karma’ marks
and that they will not be confused as to the source of
origin of the marks KARMA KASH and KARMA COUPON based on
the obvious differences in the sight, sound, meaning and
commercial impression of these marks as a whole.” Reply
brief, p. 9. In support, applicant submitted the following
with its request for reconsideration: a list showing
numerous third-party applications and registrations for
marks containing, in part or entirely, of the term KARMA; a
second list indicating that nine registrations, from the
first list, are for goods in International Class 16; and
Serial No. 85002891
15
printout copies of three applications identified in the
lists. Neither of the two lists identifies the goods
and/or services covered by the applications and
registrations.
In response to applicant’s submission of the lists of
third-party applications and registrations, the examining
attorney did not advise applicant that the mere listing
does not suffice for purposes of making the applications
and registrations of record. In her appeal brief, the
examining attorney actually discusses the relevance of
several of the listed registrations.
The Trademark Trial and Appeal Board Manual of
Procedure (TBMP) provides:
Mere listings of registrations, or copies of private
company search reports, are not sufficient to make the
registrations of record. However, there are limited
circumstances in which the Board will consider such
listings. In particular, if an applicant includes a
listing of registrations in a response to an Office
action, and the examining attorney does not advise the
applicant that the listing is insufficient to make the
registrations of record at a point when the applicant
can correct the error, the examining attorney will be
deemed to have waived any objection to consideration
of the list itself, for whatever probative value it
may have. Similarly, if the examining attorney
discusses the registrations in an Office action or
brief, without objecting to them, the registrations
will be treated as stipulated into the record.
However, the Board will not consider more than the
information provided by the applicant. Thus, if the
applicant has provided only a list of registration
numbers and/or marks, the list will have very limited
probative value.
Serial No. 85002891
16

TBMP § 1208.02 (3rd Edition 2012)(internal citations
omitted; emphasis added).

As to applicant’s submission of copies of three
applications, the TBMP further provides that “[t]hird-party
applications, as opposed to registrations, have no
probative value other than as evidence that the
applications were filed.” Id.
Accordingly, applicant’s submission of lists of third-
party applications and registrations do very little to show
that KARMA is a weak term in connection with coupons or in
general. At most, the lists show that the term KARMA has
often been adopted by others seeking to register marks in
connection with unknown goods and services. Even
considering the third-party registrations and information
discussed by the examining attorney in connection
therewith, we find said registrations do not involve
coupons or similar goods and likewise do not show any
weakness in the term KARMA in connection with the
identified goods.
Even had applicant properly submitted copies of
registrations, and it did not, we point out that they are
not evidence of use of the marks and therefore do not show
that consumers are even familiar with the marks so as to be
accustomed to the existence of similar marks in the
Serial No. 85002891
17
marketplace and are thus able to distinguish between the
similar marks based on slight differences. Smith Bros.
Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462
(CCPA 1973); and Richardson-Vicks, Inc. v. Franklin Mint
Corp., 216 USPQ 989 (TTAB 1982).
Accordingly, we are unconvinced to the extent that
applicant seeks to persuade us to resolve the du Pont
factor regarding the weakness or strength of the
registrant’s mark in applicant’s favor; instead, we find
this factor to be neutral.
When we consider the record and the relevant
likelihood of confusion factors, we conclude that, should
potential purchasers encounter the marks KARMA KASH and
KARMA COUPON being used on identical goods, i.e., coupons,
they are likely to believe that the sources of these goods
are in some way related or associated. As a result, there
is a likelihood of confusion.
DECISION: The refusal to register the mark under
Section 2(d) of the Trademark Act is affirmed. We further
affirm the refusal to register based on applicant’s failure
to comply with the requirement to disclaim the word CASH.