IMG Universe, LLCv.Melisa Martin

Trademark Trial and Appeal Board

Nov 26, 2019

91238496 (T.T.A.B. Nov. 26, 2019)

mbm
November 26, 2019

Opposition No. 91232744 (Parent)
Opposition No. 91238496

IMG Universe, LLC

v.
Melisa Martin

Before Cataldo, Bergsman, and Shaw,
Administrative Trademark Judges.

By the Board:

This proceeding now comes before the Board for consideration of Opposer’s motion
for summary judgment (filed May 7, 2019) on its pleaded claims of likelihood of
confusion and dilution. The motion is fully briefed.1
I. Background
Applicant seeks to register the mark MS. USA, in standard characters, for the
following services in International Class 41: “Providing recognition and incentives by
the way of awards to demonstrate excellence in the field of bettering their local

1 On July 8, 2019, Applicant filed a response to Opposer’s summary judgment motion, which
included the declaration of Melisa Martin and accompanying exhibits in support thereof. 36
TTABVUE. On the same day, Applicant filed a separate copy of the declaration of Ms. Martin
and the accompanying exhibits. 37 TTABVUE. The declaration and accompanying exhibits
at 37 TTABVUE appear to be duplicates of the declaration and exhibits at 36 TTABVUE.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
General Email: TTABInfo@uspto.gov
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Opposition Nos. 91232744 and 91238496

2
community and state through charity work and community service; Providing
recognition and incentives by the way of awards and contests to demonstrate
excellence in the field of bettering their local community and state through charity
work and community service.”2
Applicant also seeks to register the mark MRS. USA, in standard characters, for
the following services in International Class 41: “Educational services, namely,
conducting club and public meetings and events regarding married women’s issues
such as domestic violence, children’s issues, faith, family, and home dynamics, human
trafficking, military support, and other feminine social issues, along with skills
training and leadership opportunities, honors, recognition and awards for exemplary
acts of service and encouragement.”3
On February 8, 2017, Opposer filed a notice of opposition opposing registration of
Applicant’s MS. USA mark on the grounds of likelihood of confusion under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), and dilution by blurring under Section
43(c) of the Trademark Act, 15 U.S.C. § 1125(c). On August 10, 2017, Opposer filed
an amended notice of opposition, with Applicant’s consent, clarifying its claims of
likelihood of confusion and dilution by blurring. 7 TTABVUE.

2 Application Serial No. 87034141, filed May 12, 2016, under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), claiming March 24, 2015 as the date of first use anywhere and July
31, 2015 as the date of first use in commerce.
3 Application Serial No. 87179106, filed September 21, 2016, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), claiming January 1, 2014 as the date of first use
anywhere and April 17, 2016 as the date of first use in commerce. “USA” is disclaimed.
Opposition Nos. 91232744 and 91238496

3
On December 19, 2017, Opposer filed a notice of opposition of Applicant’s MRS.
USA mark, also on the grounds of likelihood of confusion and dilution by blurring.
In support of its standing and claims, Opposer has pleaded prior use of the marks
MISS USA and MISS TEEN USA since at least as early as 1952 and 1979,
respectively, in connection with “beauty pageants and related goods and services,
including promoting charitable initiatives through partnerships with nonprofit
and/or charitable organizations, and providing community outreach through
fundraising, community service and volunteer and/or charity work at the local, state
and national levels.” Amended notice of opposition ¶ 1 in Opposition No. 91232744
and notice of opposition ¶ 1 in Opposition No. 91238496.4
Opposer also pleaded ownership of numerous registrations for marks consisting
of or containing variations of “MISS USA” and “MISS TEEN USA,” including, inter
alia, the following:
• Registration No. 808974, for the mark MISS USA, in standard characters,
for “promoting the sale of goods and services of others through the medium
of a beauty contest conducted on a national and regional basis” in
International Class 35;5

4 In its response to Opposer’s summary judgment motion, Applicant argues that Opposer has
not pleaded common law rights. 36 TTABVUE 13. We find that Opposer has sufficiently
pleaded common law rights in its MISS USA and MISS TEEN USA marks with respect to
the services specifically identified in the notices of opposition.
5 Registration No. 808974, issued May 24, 1966, alleging 1952 as both the date of first use
anywhere and the date of first use in commerce. Renewed April 29, 2016.
Opposition Nos. 91232744 and 91238496

4
• Registration No. 1601484, for the mark MISS USA, in typed form,6 for
“entertainment services, namely, presentation of pageants and contests” in
International Class 41;7
• Registration No. 1710147, for the mark MISS USA, in typed form, for
“clothing; namely, T-shirts, sweatshirts and hats” in International Class
25;8
• Registration No. 1660124, for the mark MISS TEEN USA, in typed form,
for “entertainment services; namely, promoting and conducting beauty
pageants” in International Class 41.9
In its answers, Applicant denies the salient allegations in the notices of opposition.
In its answer to the amended notice of opposition in Opposition No. 91232744,
Applicant also asserts numerous putative “defenses/amplifications.”10

6 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings.
A typed or typeset mark is the legal equivalent of a standard character mark. TMEP
§ 807.03(i) (October 2018).
7 Registration No. 1601484, issued June 12, 1990, alleging 1952 as both the date of first use
anywhere and the date of first use in commerce. Renewed April 30, 2010.
8 Registration No. 1710147, issued August 25, 1992, alleging March 16, 1979 as both the date
of first use anywhere and the date of first use in commerce. Renewed September 12, 2012.
9 Registration No. 1660124, issued October 8, 1991, alleging August 20, 1983 as the date of
first use anywhere and August 30, 1983 as the date of first use in commerce. “TEEN” is
disclaimed. The registration issued with a claim of acquired distinctiveness in part under
Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), with respect to “USA.” Renewed
September 22, 2011.
10 None of Applicant’s “defenses/amplifications” pleads an appropriate affirmative defense.
Paragraphs 1-8 provide background information on Applicant and her predecessor-in-
interest, as well as Applicant’s purported continuous use of her mark as of 1976. To the extent
Applicant was attempting to plead that she is the senior user and has priority, the allegation
constitutes an impermissible collateral attack on Opposer’s pleaded registrations, which
could not be heard in the absence of a counterclaim. In any event, many of Opposer’s pleaded
registrations are more than five years old and could not be cancelled on a likelihood of
confusion claim. Paragraphs 9 and 10 allege that there has been no actual confusion and that
the parties’ respective goods and services are dissimilar. These allegations are not affirmative
defenses, but mere amplifications of Applicant’s denial of Opposer’s claim of likelihood of
confusion. None of these “amplifications” constitute an affirmative defense to Opposer’s
claims.
Opposition Nos. 91232744 and 91238496

5
The Board consolidated these proceedings on January 20, 2018. 17 TTABVUE.11
II. Applicant’s Consented Motion to Extend
On June 6, 2019, Applicant filed a motion to extend remaining deadlines in this
proceeding by thirty days, with Opposer’s consent. 35 TTABVUE. At the time
Applicant filed its consented motion, proceedings were suspended pending disposition
of Opposer’s motion for summary judgment. 34 TTABVUE. Accordingly, we presume
that Applicant intended to seek a thirty-day extension of time in which to file and
serve its response to Opposer’s motion for summary judgment. Applicant’s consented
motion to extend is retroactively granted.
III. Opposer’s Motion for Summary Judgment
Opposer moves for summary judgment in each of these consolidated proceedings
on its pleaded claims of likelihood of confusion and dilution.
In support of its motion for summary judgment, Opposer submits the declaration
of Andrea L. Calvaruso, counsel for Opposer, who introduces, inter alia, the following:
(1) copies of selected portions of Applicant’s responses to Opposer’s Requests for
Admission and Interrogatories in each of these consolidated proceedings; (2) a copy
of selected portions of the file history of Applicant’s involved MRS. USA application;12
(3) copies of online dictionary definitions for the term “Ms.” obtained from

11 Unless otherwise specified, citations to TTABVUE entry numbers refer to entries in
Opposition No. 91232744.
12 The file of an application subject to an opposition proceeding forms part of the record
without any action by the parties. Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1). It is
therefore not necessary for a party to file copies of the file for any involved application with
the Board.
Opposition Nos. 91232744 and 91238496

6
www.merriam-webster.com and www.oxforddictionaries.com; (4) copies of online
dictionary definitions for the terms “diadem” and “regalia” obtained from
www.dictionary.com, www.merriam-webster.com, and www.oxforddictionaries.com;
(5) copies of selected documents produced by Applicant in these consolidated
proceedings; (6) copies of screenshots of Applicant’s Facebook page and websites
located at www.msusa.club and www.mrsusa.club; and (7) screenshots of third party
social media accounts.
Opposer also provides the declaration of Paula M. Shugart, President of Opposer
and its predecessor, Miss Universe L.P., LLLP, who attaches, inter alia, the
following:13 (1) copies of Opposer’s websites located at www.missusa.com and
www.missteenusa.com; (2) a copy of the Wikipedia entry for Opposer’s MISS USA
and MISS TEEN USA contests; (3) a list of the MISS USA and MISS TEEN USA
contest titleholders; (4) excerpts of selected program books for Opposer’s MISS USA
and MISS TEEN USA contests, as well as program books created by state licensees;
(5) documents purporting to evidence Opposer’s use of its MISS USA mark in
connection with various merchandise; (6) advertisements and promotional material

13 Several of the attached exhibits are illegible or difficult to read. See, e.g., 25 TTABVUE 18-
38. It is the responsibility of the party making submissions to the Board to ensure that the
testimony or evidence has, in fact, been properly made of record. See Weider Publ’ns, LLC v.
D&D Beauty Care Co., 109 USPQ2d 1347, 1350-51 (TTAB 2014); Alcatraz Media, Inc. v.
Chesapeake Marine Tours Inc. dba Watermark Cruises, 107 USPQ2d 1750, 1758 n.16 (TTAB
2013) (“[T]he onus is on the party making the submissions to ensure that, at a minimum, all
materials are clearly readable by the adverse party and the Board”); Hard Rock Cafe
Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1404 (TTAB 1998) (“It is reasonable to assume
that it is opposer’s responsibility to review the documents it submits as evidence to ensure
that such submissions meet certain basic requirements, such as that they are legible and
identified as to source and date.”). Illegible evidence is given no consideration.

Opposition Nos. 91232744 and 91238496

7
featuring MISS USA and MISS TEEN USA contestants; (7) copies of documents
purporting to demonstrate Opposer’s licensing of its MISS USA marks to third
parties, including charitable organizations; (8) copies of its pleaded registrations from
the USPTO’s Trademark Electronic Search System (“TESS”) database; (9) copies of
state trademark registrations for Opposer’s MISS USA and MISS TEEN USA
formative marks; (10) samples of Opposer’s advertisements showing use of its MISS
USA and MISS TEEN USA marks; (11) copies of selected pages from Opposer’s social
media accounts and mobile application; (12) copies of press releases concerning the
MISS USA contests; (13) a copy of the Nielsen Media ratings for Opposer’s contests;
(14) copies of print and online articles; (15) samples of media coverage of Opposer’s
MISS USA and MISS TEEN USA contests; (16) copies of third party websites; (17)
documents produced by Opposer to Applicant in these consolidated proceedings; (18)
copies of broadcast coverage by third parties of Opposer’s MISS USA and MISS TEEN
USA contests; (19) a chart containing information regarding Opposer’s enforcement
efforts against third parties; and (20) copies of decisions from Board proceedings and
district courts between Opposer and its predecessor-in-interest and third parties.
In response to Opposer’s motion for summary judgment, Applicant submitted the
declaration of Ms. Martin, who introduces, inter alia, the following: (1) selected
portions of the file history for Applicant’s involved applications;14 (2) a copy of
Applicant’s website available at www.msusa.club; (3) a copy of Applicant’s

14 As noted above, the file of an application subject to an opposition proceeding forms part of
the record without any action by the parties. Trademark Rule 2.122(b)(1), 37 C.F.R.
§ 2.122(b)(1).
Opposition Nos. 91232744 and 91238496

8
Supplemental Responses to Opposer’s First Set of Interrogatories; (4) a statement
signed by Isaura Pardo, regarding the origins of Applicant’s services; (5) documents
evidencing Applicant’s use of her involved marks; (6) screenshots of videos on social
media and pictures of Applicant and Applicant’s club members; (7) a copy of a 2016
“report” for Applicant’s club;15 (8) copies of printouts from Applicant’s social media
accounts; and (9) pictures of newspaper articles.
For purposes of this order, we presume the parties’ familiarity with the pleadings,
the history of the proceedings, and the arguments and evidence submitted with
respect to Opposer’s motion for summary judgment.
A. Summary Judgment Standard
Summary judgment is appropriate where the movant shows that there is no
genuine dispute as to any material fact and that it is entitled to judgment as a matter
of law. Fed. R. Civ. P. 56(a). A party asserting that a fact cannot be or is genuinely
disputed must support its assertion by either (1) citing to particular parts of materials
in the record, or (2) showing that the materials cited do not establish the absence or

15 Opposer objects to the report on the ground that it appears to contain financial summaries,
but there is no accompanying information to explain the evidence or the nature of the
document and its origin. 38 TTABVUE 6. Additionally, Opposer contends that the document
should have been produced in response to Opposer’s Document Request No. 4. Id. The nature
and origin of the document is unclear. Ms. Martin’s declaration identifies it as a “report”
created by “the Club” about its charity in 2016. 36 TTABVUE 30. The document clearly
includes a purported summary of information through 2017, however. Additionally, many of
the numbers and figures are provided without context or support. See, e.g., id. at 170
(calculator shows “3,586,026.895” with no explanation or indication what this number
indicates). It is also not clear if the document was a summary created for purposes of
responding to the summary judgment motion, or if it was a document in Applicant’s
possession, custody or control that should have been produced in response to Opposer’s
document request. Similarly, we do not have sufficient information to determine if the
document is a business record. In either case, however, we find that consideration of the
document has no bearing on our determination of the motion for summary judgment.
Opposition Nos. 91232744 and 91238496

9
presence of a genuine dispute, or that an adverse party cannot produce admissible
evidence to support the fact. Fed. R. Civ. P. 56(c).
A movant for summary judgment carries the burden of proof in regard to its
motion. See Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986). In deciding the
motion, the function of the Board is not to try issues of fact, but to determine if there
are any genuine disputes of material fact to be tried. See TBMP § 529.01 and cases
cited therein. When the moving party has supported its motion with sufficient
evidence that, if unopposed, indicates there is no genuine dispute of material fact and
that the moving party is entitled to judgment as a matter of law, the burden then
shifts to the non-moving party to demonstrate the existence of a genuine dispute of
material fact to be resolved at trial. Enbridge, Inc. v. Excelerate Energy LP, 92
USPQ2d 1537, 1540 (TTAB 2009).
The nonmoving party must be given the benefit of all reasonable doubt as to
whether genuine issues of material fact exist, and the evidentiary record on summary
judgment, and all inferences to be drawn from the undisputed facts, must be viewed
in the light most favorable to the nonmoving party. See Opryland USA, Inc. v. Great
Am. Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992).
B. Discussion
We first consider Opposer’s standing, which is a threshold issue that must be
pleaded and proven by the plaintiff in every inter partes case. See Empresa Cubana
del Tabaco v. Gen. Cigar Co., 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) (citing Ritchie
v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999) (holding that
Opposition Nos. 91232744 and 91238496

10
to establish standing an opposer must have a “real interest” in the proceeding and a
“reasonable basis” for its belief that it would suffer damage if the mark is registered).
Opposer has asserted, inter alia, a likelihood of confusion with the marks in its
pleaded registrations and submitted printouts from the USPTO’s TESS electronic
database for each of its pleaded registrations. See Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982); Edwards Lifesciences
Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1407-08 (TTAB 2010). Accordingly, for
purposes of this motion only, there is no genuine dispute of material fact regarding
Opposer’s standing.16
In these consolidated proceedings, Opposer has opposed registration of two
different applications for different marks with different recitations of services. We
therefore consider each mark separately for purposes of determining Opposer’s
motion for summary judgment.
1. Opposition No. 91232744—MS. USA
To prevail on its claim of likelihood of confusion, Opposer must establish that
there is no genuine dispute of material fact that it has standing to maintain these
proceedings, that it has priority of use, and that contemporaneous use of the parties’
marks on their respective goods and services would be likely to cause confusion,
mistake, or to deceive consumers. See 15 U.S.C. § 1052(d); Hornblower & Weeks, Inc.

16 Although we find, for purposes of this motion only, that the attached copies of Opposer’s
pleaded registrations establish its standing, Opposer fails to even address its standing in its
brief. Opposer is reminded that it is required to establish its standing as part of its case in
chief and that it will be required to maintain its standing throughout these proceedings.
Opposition Nos. 91232744 and 91238496

11
v. Hornblower & Weeks, Inc., 60 USPQ2d 1733, 1735 (TTAB 2001). As provided above,
Opposer has established its standing for purposes of its summary judgment motion
by virtue of its submission of copies of its pleaded registrations showing that the
registrations are valid and subsisting and owned by Opposer.
Opposer has also established its priority in this case, because Opposer submitted
copies of its pleaded registrations showing that the registrations are valid and
subsisting and owned by Opposer. See King Candy Co. v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974); see also TBMP § 309.03(c)(2) and
authorities cited therein. Accordingly, there is no genuine dispute of material fact as
to Opposer’s priority.
In determining the issue of likelihood of confusion and whether there is any
genuine dispute of material fact, we consider all of the du Pont factors that are
relevant under the circumstances and for which there is evidence of record. See In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). Two
key factors in determining likelihood of confusion are the degree of similarity of the
parties’ respective marks and the degree of similarity in their respective goods and
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 the
differences in the marks.”).
Applicant argues that the parties’ respective goods and services are different,
because Opposer offers beauty pageants and dolls and apparel related to beauty
Opposition Nos. 91232744 and 91238496

12
pageants, while Applicant “runs a membership-based club and the members perform
charitable works for the communities in which they live.” 36 TTABVUE 7. As
Applicant also acknowledges, however, to determine the similarity of the goods and
services, we must compare the services identified in the opposed application to the
goods and services identified in Opposer’s pleaded registrations. See Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161
(Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62
USPQ2d 1001, 1004 (Fed. Cir. 2002). Contrary to Applicant’s assertion, Opposer has
established its ownership of at least one registration, Registration No. 1601484, for
the mark MISS USA that broadly identifies “entertainment services, namely
presentation of pageants and contests.” Opposer’s MISS USA registration is not
limited to beauty pageants, but includes “contests” without limitation. Applicant’s
involved MS. USA application identifies, in part, a narrower subset of “contests,”
namely, “contests to demonstrate excellence in the field of bettering their local
community and state through charity work and community service.” Accordingly,
there is no genuine dispute that the services in Applicant’s involved MS. USA
application are partially encompassed by the services in Opposer’s Registration No.
1601484.17 Where services are broadly identified in an application or registration, “we

17 Applicant appears to assert that the fact that the parties disagree is sufficient to raise a
genuine dispute of material fact. 36 TTABVUE 14 (“[T]here is zero evidence of the similarities
of the parties’ goods/services, let alone of the parties agreeing on those similarities, as is
required in a motion for summary judgment.” Applicant is mistaken. A party does not raise
a genuine dispute of material fact by merely disagreeing with the moving party. See Octocom
Sys. Inc. v. Houston Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1786 (Fed. Cir.
1990) (nonmoving party’s response was not supported by contradictory facts, but merely
expressed disagreement with facts); Venture Out Properties LLC v. Wynn Resort Holdings
Opposition Nos. 91232744 and 91238496

13
must presume that the services encompass all services of the type identified.” Sw.
Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); see also 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.’”); Venture Out Props. LLC
v. Wynn Resorts Holdings, LLC, 81 USPQ2d 1887, 1893 (TTAB 2007).
Where likelihood of confusion is found with respect to any of the goods or services
in the application, likelihood of confusion must be found as to all of the goods or
services in the application. See Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc.,
648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (stating that it is sufficient for a
finding of likelihood of confusion if relatedness is established for any item
encompassed by the identification of goods within a particular class in an
application); see also Research in Motion Ltd. v. Defining Presence Mktg. Grp., Inc.,
102 USPQ2d 1187, 1194 (TTAB 2012) (“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.”); Hewlett-Packard Dev. Co. v. Vudu, Inc., 92 USPQ2d
1630, 1633 n.4 (TTAB 2009) (“[I]t is sufficient if likelihood of confusion is found with
respect to use of the mark on any item that comes within the description of goods in
the application or registration”) (internal citations omitted). We therefore find that
there is no genuine dispute of material fact that Applicant’s services in her MS. USA

LLC, 81 USPQ2d 1887, 1890 (TTAB 2007) (“The nonmoving party may not rest on the mere
allegations of its pleadings and assertions of counsel, but must designate specific portions of
the record or produce additional evidence showing the existence of a genuine issue of material
fact for trial.”).
Opposition Nos. 91232744 and 91238496

14
application are, at least in part, the same as, or encompassed by, Opposer’s broader
recitation of services in its Registration No. 1601484.
With respect to the similarity of the marks, we look to the marks in their entireties
as to appearance, sound, meaning or connotation, and commercial impression. See du
Pont, 177 USPQ at 567; Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). Where the
goods or services of the parties are identical or virtually identical in part, as is the
case here, it has been held that the degree of similarity between the marks need not
be as great to support a finding of likelihood of confusion. Century 21 Real Estate v.
Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). Further,
“[t]he 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, 668 F.3d 1456, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012) (internal citation omitted).
Applicant’s MS. USA mark and Opposer’s MISS USA mark are highly similar in
appearance, sound, and meaning. Both begin with a female courtesy title that begins
with an “m” and ends in an “s”. “Ms.” is defined as “[a] title used before the surname
or full name of any woman regardless of her marital status (a neutral alternative to
Mrs. or Miss).” 24 TTABVUE 135. “Ms.” is therefore defined as an alternative term
for “Miss.” Both marks also end in the identical term “USA.” Applicant has not
submitted any evidence to raise a genuine dispute regarding any potential differences
Opposition Nos. 91232744 and 91238496

15
between the marks or their commercial impressions.18 We therefore find that there is
no genuine dispute of material fact that the marks at issue are highly similar in
appearance, sound, meaning, connotation, and overall commercial impression.
Applicant argues that the parties’ services travel through different channels of
trade. See 36 TTABVUE 16 (“Meanwhile, Applicant’s services must be for those who
need charitable services and must be for those who need the educational services that
the Applicant and the Applicant’s club provide.”).19 However, Applicant has only
provided attorney argument and assertions with no factual or evidentiary support.
As the Federal Circuit recently reiterated, “[a]ttorney argument is no substitute for
evidence.” Zheng Cai, d/b/a Tai Chi Green Tea Inc. v. Diamond Hong, Inc., 901 F.3d
1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) (quoting Enzo Biochem, Inc. v. Gen-
Probe Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005)).
Moreover, where, as here, the services are in part identical, we presume that the
channels of trade and classes of purchasers are the same. See In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods are
presumed to travel in same channels of trade to same class of purchasers); In re

18 Applicant states that “[c]onsidering the visual appearance of the marks in their entireties,
as well as the significance of the ending part of the marks to differentiate, in making an
impression with consumers, the marks look different. This only matters when the dominant
portion is more than a descriptive portion of the trademark.” 36 TTABVUE 19. Applicant’s
argument is unclear. It appears that Applicant may be arguing that “MS.” is the dominant
portion of the mark, while “USA” is descriptive, but again, Applicant has offered no evidence
beyond mere attorney argument. See Venture Out Properties LLC, 81 USPQ2d at 1890
(assertions of counsel unsupported by evidence insufficient to raise a genuine dispute of
material fact).
19 As explained above, Opposer’s recitation of “contests” in its Registration No. 1601484
contains no limitations and is not limited to beauty pageants and contests.
Opposition Nos. 91232744 and 91238496

16
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); In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1745
(TTAB 2018), aff’d mem. (No. 18-2236) (Fed. Cir. September 13, 2019) (“Because the
services described in the application and the cited registration are identical, we
presume that the channels of trade and classes of purchasers are the same.”); United
Glob. Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); Am. Lebanese
Syrian Associated Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022,
1028 (TTAB 2011). Accordingly, there is no genuine dispute as to the material fact
that both parties’ consumers encompass the same, ordinary consumers for contests
and that the services are offered in the same channels of trade. See Adidas AG and
Adidas Am., Inc. v. Etonic Holdings, LLC, 121 USPQ2d 1188, 1195 (TTAB 2016).
Applicant argues that “the conditions between the goods and services that the
parties sell must be different,” 36 TTABVUE 18, but the assertion is not supported
by evidence in the record. Applicant includes a hyperlink to a website in support of
her contention that it is expensive to participate in Opposer’s contests. Id. We have
made clear that providing hyperlinks to Internet materials is insufficient to make
such materials of record. See, e.g., In re Olin Corp., 124 USPQ2d 1327, 1332 n.15
(TTAB 2017). A copy of the website is not attached as an exhibit and it is therefore
not of record for purposes of the summary judgment motion. See Trademark Rule
2.122(e)(2) (a website may be submitted in evidence if it includes the date the website
was accessed and the URL). In any event, even had Applicant properly submitted a
Opposition Nos. 91232744 and 91238496

17
copy of the website with its brief, the website could not be offered to establish the
truth of the statements made on that website. See TBMP § 528.05(e) and authorities
cited therein.
In addition, as noted above, we must compare Applicant’s and Registrant’s
respective goods as they are identified in the application and the cited registration.
See Stone Lion Capital Partners, 110 USPQ2d at 1161 (Fed. Cir. 2014).
Notwithstanding Applicant’s argument and purported evidence regarding the actual
scope of the parties’ services, we may not limit, by resort to extrinsic evidence, the
scope of services as identified in the descriptions of services. See, e.g., In re Dixie Rests.
Inc., 105 USPQ2d, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); In re Fisher Scientific Co.,
440 F.2d 43, 169 USPQ 436, 437 (CCPA 1971); In re La Peregrina Ltd., 86 USPQ2d
1645, 1646 (TTAB 2008); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB
1986). Therefore, because there are no restrictions, limitations, or explanations in the
descriptions of services as to how the services are sold or rendered we may not
consider Applicant’s contention that the conditions under which the services are sold
or rendered are different.
Applicant also argues that it does not have sufficient information regarding the
cost of Opposer’s goods and services, because Opposer objected to certain discovery
requests. 36 TTABVUE 17. To the extent Applicant believed that she needed
additional discovery in order to respond to the motion for summary judgment, it was
incumbent upon Applicant to file a motion for discovery under Fed. R. Civ. P. 56(d).
Applicant did not do so and, instead, filed a response to Opposer’s summary judgment
Opposition Nos. 91232744 and 91238496

18
motion on the merits. Accordingly, Applicant will not be heard to complain of an
inability to respond effectively to the summary judgment motion without additional
discovery.20 See Ron Cauldwell Jewelry, Inc. v. Clothestime Clothes, Inc., 63 USPQ2d
2009, 2012 n.8 (TTAB 2002).
Finally, Applicant argues that Opposer has not submitted any evidence of actual
confusion. Actual confusion is not necessary to establish likelihood of confusion and
the lack of actual confusion is insufficient to raise a genuine dispute of material fact.
See Apple Comp. v. TVNET.net, Inc., 90 USPQ2d 1393, 1397 (TTAB 2007)
(“[A]pplicant’s arguments regarding the lack of actual confusion and its good faith
adoption of its VTUNES.NET mark do not raise genuine issues of material fact that
preclude entry of summary judgment.”).
Based on the foregoing, and viewing the evidence in the light most favorable to
Applicant and drawing all reasonable inferences in favor of Applicant as the
nonmoving party, we find that Opposer has satisfied its burden of setting forth a
prima facie case showing that there is no genuine dispute as to any material fact
remaining for trial with respect to Opposer’s standing and priority or Opposer’s
likelihood of confusion claim against Applicant’s MS. USA mark. We also find that
Applicant has failed to demonstrate the existence of a genuine dispute regarding at
least one material fact that would require resolution by trial. Opposer is therefore

20 Nor did Applicant file a motion to compel. If a party that served a discovery request believes
that a response is deficient, but fails to file a motion to compel, it may not thereafter be heard
to complain about the sufficiency thereof. Time Warner Ent. Co. v. Jones, 65 USPQ2d 1650,
1656 (TTAB 2002).
Opposition Nos. 91232744 and 91238496

19
entitled to judgment as a matter of law on its claim of likelihood of confusion against
Applicant’s Serial No. 87034141 for the mark MS. USA.
In view thereof, Opposer’s motion for summary judgment on its likelihood of
confusion claim in Opposition No. 91232744 is granted. Judgment is hereby entered
against Applicant, Opposition No. 91232744 is sustained, and registration of
Applicant’s MS. USA mark is refused.21
Having determined that Opposer is entitled to judgment as a matter of law based
on its likelihood of confusion claim, we need not and do not reach Opposer’s motion
for summary judgment in Opposition No. 91232744 on Opposer’s pleaded claim of
dilution by blurring.
2. Opposition No. 91238496—MRS. USA
We turn next to Opposer’s motion for summary judgment on its claims of
likelihood of confusion and dilution as to Application Serial No. 87179106.
With respect to Opposer’s claim of likelihood of confusion, upon careful
consideration of the parties’ arguments and evidence, and drawing all reasonable
inferences in favor of Applicant as the nonmoving party, we find that Opposer has
not met its initial burden of establishing the absence of any genuine dispute of
material fact for trial and that Opposer is not entitled to summary judgment under
applicable law on its claim of likelihood of confusion.

21 Inasmuch as this is a final decision of the Board in Opposition No. 91232744, it may be
appealed to the Court of Appeals for the Federal Circuit or to a U.S. District Court with
appropriate jurisdiction. See Sections 21(a)(1) and 21(b)(1) of the Trademark Act, 15 U.S.C.
§§ 1071(a)(1) and (b)(1); Trademark Rule 2.145, 37 C.F.R. § 2.145.
Opposition Nos. 91232744 and 91238496

20
Based upon the present record, we find, at a minimum, that a genuine dispute of
material fact remains as to the relatedness of the parties’ respective goods and
services.
Accordingly, Opposer’s motion for summary judgment on its claim of likelihood of
confusion as to Application Serial No. 87179106 is denied.
To prevail on its claims of dilution, Opposer must establish that there is no
genuine dispute as to all elements of Opposer’s dilution claim. A plaintiff asserting a
claim of dilution by blurring must establish that its mark “became famous prior to
any established, continuous use of the defendant’s involved mark as a trademark or
trade name” and that defendant’s use of its mark is likely to impair the
distinctiveness of the famous mark. Omega SA v. Alpha Phi Omega, 118 USPQ2d
1289 (TTAB 2016); 15 U.S.C. § 1125(c)(2)(B).
Upon careful consideration of the parties’ arguments and evidence, and drawing
all reasonable inferences in favor of Applicant as the nonmoving party, we find that
Opposer has not demonstrated the absence of a genuine dispute of material fact for
trial and that Opposer is not entitled to summary judgment under applicable law on
its claim of dilution.
Based upon the present record, we find, at a minimum, that a genuine dispute of
material fact remains as to the fame of Opposer’s pleaded marks. 22

22 The fact that we have identified certain genuine disputes of material fact as a sufficient
basis for denying Opposer’s motion for summary judgment should not be construed as a
finding that such disputes necessarily are the only disputes that remain for trial.
Opposition Nos. 91232744 and 91238496

21
In view thereof, Opposer’s motion for summary judgment on its dilution claim as
to Application Serial No. 87179106 is denied.
Inasmuch as Opposition No. 91232744 has been sustained, Opposition No.
91238496 is no longer considered to be consolidated with Opposition No. 91232744,
and shall hereafter proceed as a single proceeding.23
IV. Accelerated Case Resolution
The legal issues presented in Opposition No. 91238496 appear to be appropriate
for resolution by means of the Board’s accelerated case resolution (“ACR”) procedure,
and the Board suggests that the parties stipulate to continuing the opposition by that
process.24 This may take the form of the summary judgment briefing, and the
evidence submitted therewith, with or without supplementation. See, e.g., Freeman
v. Nat’l Ass’n of Realtors, 64 USPQ2d 1700 (TTAB 2002) (parties agreed that evidence
and arguments submitted with Opposer’s motion for summary judgment and
Applicant’s response could be treated as the final record and briefs); see also TBMP
§ 528.05(a)(2) and authorities cited therein. In the event the parties agree to ACR
using summary judgment briefs and incorporating the current evidence, including

23 The decision in Opposition No. 91238496 is interlocutory in nature; therefore, any appeal
can only be raised after final disposition of this proceeding. See Copeland’s Enters. Inc. v.
CNV Inc., 887 F.2d 1065, 12 USPQ2d 1562 (Fed. Cir. 1989).
24 However, absent such agreement, the parties should note that the evidence submitted in
connection with a motion for summary judgment or opposition thereto is of record only for
consideration of that motion. Any such evidence to be considered at final hearing must be
properly introduced in evidence during the appropriate trial period. See Levi Strauss & Co.
v. R. Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993); Pet Inc. v. Bassetti, 219 USPQ
911 (TTAB 1983). The parties may, however, stipulate that any or all of the summary
judgment evidence be treated as properly of record for purposes of final decision. See, e.g.,
Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628, 1629 n.2 (TTAB 1998).
Opposition Nos. 91232744 and 91238496

22
any supplementation of evidence they may agree would be appropriate, they will need
to stipulate that the Board may determine any genuine disputes of material fact the
Board may find to exist. See TBMP § 702.04 for more information.
The parties are therefore encouraged, within fifteen days of the mailing date of
this order, to jointly contact the Board’s interlocutory attorney responsible for this
proceeding by telephone to discuss the possibility of ACR, any necessary or desired
stipulations, and an agreed schedule for proceeding under ACR.
If the parties decide not to proceed via ACR, the proceeding will continue on the
schedule set below.
The parties are precluded from filing any further motions for summary judgment
in this matter.
V. Schedule
Proceedings herein are resumed. Remaining dates in Opposition No. 91238496 are
reset as follows:

Plaintiff's Pretrial Disclosures Due 12/10/2019
Plaintiff's 30-day Trial Period Ends 1/24/2020
Defendant's Pretrial Disclosures Due 2/8/2020
Defendant's 30-day Trial Period Ends 3/24/2020
Plaintiff's Rebuttal Disclosures Due 4/8/2020
Plaintiff's 15-day Rebuttal Period Ends 5/8/2020
Plaintiff's Opening Brief Due 7/7/2020
Defendant's Brief Due 8/6/2020
Plaintiff's Reply Brief Due 8/21/2020
Request for Oral Hearing (optional) Due 8/31/2020

Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is
taken and introduced out of the presence of the Board during the assigned testimony
Opposition Nos. 91232744 and 91238496

23
periods. The parties may stipulate to a wide variety of matters, and many
requirements relevant to the trial phase of Board proceedings are set forth in
Trademark Rules 2.121 through 2.125. These include pretrial disclosures, the
manner and timing of taking testimony, matters in evidence, and the procedures for
submitting and serving testimony and other evidence, including affidavits,
declarations, deposition transcripts and stipulated evidence. Trial briefs shall be
submitted in accordance with Trademark Rules 2.128(a) and (b). Oral argument at
final hearing will be scheduled only upon the timely submission of a separate notice
as allowed by Trademark Rule 2.129(a).