No. 85871649 (T.T.A.B. Jan. 9, 2015)

Howard Rosario

Trademark Trial and Appeal BoardJan 9, 2015

No. 85871649 (T.T.A.B. Jan. 9, 2015)

This Opinion is Not a Precedent of the TTAB Mailed: January 9, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Howard Rosario _____ Serial No. 85871649 _____ Aaron P. Peacock of Gagnon, Peacock & Vereeke P.C. for Howard Rosario. Cimmerian Coleman, Trademark Examining Attorney, Law Office 102, Mitchell Front, Managing Attorney. _____ Before Bergsman, Lykos and Gorowitz, Administrative Trademark Judges. Opinion by Gorowitz, Administrative Trademark Judge: Howard Rosario (“Applicant”) seeks registration on the Principal Register of the mark HEY MOIST! (in standard characters) for, as amended: Entertainment, namely, live performance by a musical band; entertainment services in the nature of live musical performances; live performances by a musical group; instruction in the field of music; teaching in the field of music in International Class 41.1 1 Application Serial No. 85871649 was filed on March 8, 2013, based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as February 23, 2013. Serial No. 85 The mark un that Ap resembl discs, a Interna After affirm t I. L Our of all of re E. I. also, In 2003). I similari services USPQ 2 USPQ2d 2 Registr 871649 Trademar der Secti plicant’s m es the regi udio tape tional Clas the Exam he refusal ikelihood determina the probat du Pont de re Majest n any lik ties betwe . See Fede 4 (CCPA 1531 (Fe ation No. 1 k Examin on 2(d) of ark as us stered ma s, cassette s 9 as to b ining Att to register of Confus tion of the ive facts in Nemours ic Distillin elihood of en the m rated Food 1976). See d. Cir. 199 952678 was ing Attor the Trade ed in conn rk MOIST s and vid e likely to orney mad . ion. issue of li evidence & Co., 476 g Co., Inc. confusion arks and s, Inc. v. also, In r 7). issued on J - 2 - ney has r mark Act, ection wit for a “seri eo tapes cause conf e the refu kelihood o that are re F.2d 1357 , 315 F.3d analysis the simil Fort Howa e Dixie R anuary 30 efused reg 15 U.S.C. h Applican es of pre-r featuring usion or m sal final, f confusion levant to , 177 USP 1311, 65 , two key arities be rd Paper estaurants , 1996 and h istration § 1052(d) t's identif ecorded re musical istake or t Applicant is based the factors Q 563 (CC USPQ2d 1 considera tween the Co., 544 F Inc., 105 as been re of Applica on the gro ied service cords, com recordings o deceive. appealed on an ana set forth i PA 1973) 201 (Fed. tions are goods an .2d 1098, F.3d 1405 newed. nt’s und s so pact ” in 2 . We lysis n In . See Cir. the d/or 192 , 41 Serial No. 85 A We l nature factor, t services band or music; a “series o featurin Appeal Furt relation twenty- services covering and Reg are of a 871649 . Relatio trade/s ook first a of the goo he channe consist of a musical nd teachin f pre-recor g musical [n]eit instru sound They sound enter doesn and e hand Brief, p. 16 her, evide ship betwe five third and the g goods an istrant’s g kind that nship betw imilarity o t the seco ds and ser ls of trade “entertai group an g in the f ded record recordings her live p ction/teac recordin are not id recordin tainment ’t mean th ntertainm , are relate ; 4 TTABV nce intro en the goo -party reg oods in the d/or servic oods or se may eman een the g f purchase nd du Po vices and and purc nment in d live mus ield of mu s, compac .” Applican erformanc hing in th gs as pro entical nor gs can b or sold b at the sou ent and m d. Any ove UE at 17. duced by ds and se istrations cited regi es in both rvices may ate from a - 3 - oods and s rs. nt factor, in conjun hasers of t the nature ical perfor sic.” The g t discs, au t contend es by a m e field of m vided in t are they e sold at y a musi nd record usical ins rlap, if an We disagr the Exa rvices. The each of stration. U Applican serve to s single so ervices an the simila ction there he goods of live pe mances; i oods in th dio tapes, s that usical ba usic relat he cited r related …j an even cal teache ings, on th truction, o y, is de mi ee. mining A evidence which in se-based, t’s descrip uggest tha urce. See I d channels rity or dis with, the and servic rformance nstruction e cited reg cassettes a nd or [si e to music egistratio ust becau t featurin r/instructo e one han n the oth nimus. ttorney e consists o cludes bo third-part tion of goo t the good n re RiseS of similarity third du es. Applica by a mu in the fie istration a nd video t c] al n. se g r d, er stablishes f copies of th Applica y registrat ds or serv s and serv mart Inc., and Pont nt’s sical ld of re a apes the over nt’s ions ices ices 104 Serial No. 85871649 - 4 - USPQ2d 1931, 1934-1935 (TTAB 2012); In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); and In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). See, for example, Reg. No. 4320721 – WHISKEY SISTER Goods include Audio and video recordings featuring pre- recorded compact discs and DVDs featuring musical entertainment; digital media, namely, downloadable audio files and downloadable audio and video recordings featuring musical entertainment; downloadable musical sound recordings, Services include Entertainment in the nature of live performances by live music concerts, (issued April 16, 2013) – Office Action dated June 26, 2013; Reg. No. 4342419 – GARY U.S. BONDS Goods include Digital music downloadable from the Internet; Downloadable music files; Downloadable musical sound recordings; Musical recordings; Musical sound recordings, Services include Entertainment services in the nature of live musical performances; Entertainment, namely, live music concerts; Entertainment, namely, live performances by a musical band; Entertainment, namely, live performances by musical bands; Entertainment, namely, live performances by rock groups; Live performances by a musical group, (issued May 28, 2013) – Office Action dated June 26, 2013; Reg. No. 4150099 – MRS. SKANNOTTO Goods include Audio and video recordings featuring music and artistic performances; Audio discs featuring musical recordings; Audio recordings featuring music; Audio tapes featuring music; Compact discs featuring music; Musical sound recordings; Phonograph records featuring music; Sound recordings featuring music, Services include Entertainment in the nature of live performances by a musical band; Entertainment, namely, live music concerts, Serial No. 85871649 - 5 - (issued May 29, 2012) – Office Action dated November 25, 2013; Reg. No. 4400810 – RUSTIC MATERIALS Goods include Downloadable musical sound recordings; Musical recordings; Sound recordings featuring music Services include Entertainment in the nature of live performances by the musical artist Rustic Materials; Entertainment services in the nature of musical performances, (issued September 10, 2013) – Office Action dated November 25, 2013; and Reg. No. 4424579 – REQUIEM FOR THE DEAD Goods include Audio and video recordings featuring music and artistic performances; Downloadable music files; Musical recordings; Musical sound recordings, Services include Entertainment services in the nature of live musical performances; Entertainment, namely, live music concerts; Entertainment, namely, live performances by a musical band; Entertainment, namely, live performances by musical bands; Live performances by a musical group, (issued October 29, 2013) – Office Action dated November 25, 2013. In addition, as acknowledged by Applicant, sound recordings can be sold at an event featuring musical entertainment.3 Based on the proximity between sale of the goods and services, purchasers know that the sound recordings and musical entertainment offered under the same or similar marks may emanate from the same source. In this regard, the goods and services need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000). The respective goods and services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the 3 See Appeal Brief, p. 16; 4 TTABVUE at 17. Serial No. 85871649 - 6 - mistaken belief that [the goods and services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012), quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007). Given the sale of musical recordings at the same venue as live musical performances and general knowledge that performers use the same mark (or name) for both live performances and musical recordings, Applicant’s entertainment services consisting of live performance by a musical band, live musical performances and live performances by a musical group are closely related to the goods in the cited registration (pre-recorded records, compact discs, audio tapes, cassettes and video tapes featuring musical recordings). Moreover, any finding of likelihood of confusion will include Applicant’s educational services consisting of instruction in the field of music and teaching in the field of music since they are within the same International Class as the entertainment services. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion must be found if there is likely to be confusion with respect to any item that comes within the identification of goods in the application). Accordingly, we find that the second and third du Pont factors favor a finding of likelihood of confusion. B. Similarity of Marks. Next, we consider the first du Pont factor, the similarity or dissimilarity of the marks HEY MOIST! and MOIST, and compare them “in their entireties as to Serial No. 85871649 - 7 - 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. “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.” Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721. While we analyze the marks in their entireties, it is well settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature when evaluating the similarities of the marks. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Further, our analysis must be based 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). In this case, the average purchaser is an ordinary consumer who attends musical performances and purchases musical recordings. Although his mark consists of the word HEY as a prefix to the registered mark MOIST, Applicant asserts that the since the word HEY is first, “it is the dominate [sic] portion and most important part of the mark when comparing the mark to others for purposes of a likelihood of confusion.” Appeal Brief, p. 10, 4 TTABVUE at 11. We disagree. While generally, the first word in the mark often may dominate, there is no per se rule to that effect. In this case, Applicant’s mark incorporates the Serial No. 85 entire r Random simply c the wor 1317, 1 mark ST the adje Appl the end punctua Int’l LL hyphen Inc., 20 attribut with ap 4 We tak Unabrid January The Boa J.C. Gou 505 (Fed regular f 5 To sup Products permitte USPQ2d 871649 egistered House D alls attent d HEY. Se 10 USPQ2 ONE LIO ctive STON icant also of his tion does C, 107 US is insignif 3 USPQ 1 ed to apos plicant's m e judicial ged. Rand 07, 2015). rd may tak rmet Food . Cir. 1983 ixed edition port this po , 2000 WL d, they are 1119, 1120 mark, add ictionary ion to the e Stone Li d 1157, 11 N CAPITA E). argues tha mark dis not chang PQ2d 1257 icant to ou 40, 143 (T trophe an ark “Win notice of th om House, e judicial no Imp. Co., 2 ), includin s. In re Re sition, App 714189 (T not bindin -21 (TTAB ing the w as “an exc dominant on Capita 61 (Fed. C L is LION t the punc tinguishes e the char , 1258 n.2 r . . . deci TAB 1979 d letter “s” -Way”); Co e definitio Inc. http tice of dict 13 USPQ 5 g online di d Bull Gmb licant discu TAB 2000 g on the B 2012). - 8 - ord HEY, lamation word MOI l Partners, ir. 2014) and that tuation, co it from acter of th (TTAB 20 sion”); Wi ) (little if in oppose nwood Co n of “hey.” ://dictionary ionary defin 94 (TTAB 1 ctionaries H, 78 USP sses the un ). Although oard. In re which is to call att ST. As suc LP v. Lio (finding th little weig nsisting o the regis e mark. N 13) (“the nn's Store any tradem r's mark “ rporation from Dicti .reference. itions, Uni 982), aff'd that exist Q2d 1375, 1 published citation o the Procter defined, i ention to, h, less we n Capital e domina ht was pro f an exclam tered ma ahshin v presence o s, Incorpor ark signi Winn's” w v. S.A. Bo onary.com. com/browse v. of Notre , 703 F.2d 1 in printed 377 (TTAB decision, In f unpublish & Gamble n part by ”4 and w ight is give LLP, 746 nt word in perly acco ation poin rk.5 Howe . Prod. So r absence ated v. H ficance ca hen comp ngrain-Ge Dictionary /hey (acce Dame du L 372, 217 U format or 2006). re Genera ed decisio Company the hich n to F.3d the rded t at ver, urce of a i-Lo, n be ared rard .com ssed: ac v. SPQ have tions ns is , 105 Serial No. 85871649 - 9 - (Les Maitres Fromagers), 190 USPQ 155, 158 (TTAB 1976) (purchasers are not apt to place much significance as recognition factor on accent mark appearing above letter in trademark). Cf. In re Samuel Moore & Co., 195 USPQ 237, 240 (TTAB 1977) (existence of exclamation point does not change merely descriptive nature of the term SUPERHOSE! for “hydraulic hose made of synthetic resinous material”); In re Promo Ink, 78 USPQ2d 1301 (TTAB 2006) (existence of exclamation point does not change merely descriptive nature of PARTY AT A DISCOUNT! for preparation and dissemination for others of advertising and promotional matter via global computer communications networks in the field of shopping for goods and services). Thus, since the dominant portion of Applicant’s mark is identical to the registered mark, neither the addition of the subordinate element HEY nor the addition of the punctuation mark eliminates the similarity of the two marks. Accordingly, the first du Pont factor favors a finding of likelihood of confusion. C. The number and nature of similar marks in use on similar goods. Applicant contends that “the word MOIST … in the cited mark is weak because it is used by many others in connection with music, musical sound recordings and musical bands, entertainment, live performances, etc.” Appeal Brief, p. 13, 4 TTABVUE at 14. To support this argument, Applicant has submitted several documents, which he asserts are printouts from the Internet and feature references to bands with the word “Moist” as part of their name. The documents that mention bands or CDs appear to be from Facebook, MySpace, blogs, and foreign sites. While consumers in the U.S. may be encountered these bands or CDs, there is no evidence Serial No. 85871649 - 10 - that any of the bands or CDs are commercially known or known at all in the United States. Thus, these documents are of little probative value. Applicant also submitted a document for a New York City based electronic dance music record label, which uses “Moist” as part of its name. There is no evidence about the size of this entity, its sales or its purchasers. Therefore, this listing is of limited probative value. As such, the evidence does not establish that the word MOIST is weak in the music field. Accordingly, this du Pont factor is neutral. D. Conclusion. Having considered all the evidence and argument on the relevant du Pont factors, whether specifically discussed herein or not, we find that Applicant’s use of the mark HEY MOIST! in standard characters for entertainment, namely, live performance by a musical band; entertainment services in the nature of live musical performances; live performances by a musical group; instruction in the field of music; teaching in the field of music” is likely to cause confusion with the registered mark MOIST for “pre-recorded records, compact discs, audio tapes, cassettes and video tapes featuring musical recordings.” Decision: The refusal to register Applicant’s mark HEY MOIST! is affirmed.