Infinite 8

Trademark Trial and Appeal Board

Mar 30, 2017

No. 86487128 (T.T.A.B. Mar. 30, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: March 30, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
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In re Infinite 8
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Serial No. 86487128
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Gary M. Anderson of Fulwider Patton LLP,
for Infinite 8.
Ronald L. Fairbanks, Trademark Examining Attorney, Law Office 119,
Brett J. Golden, Managing Attorney.
_____

Before Cataldo, Greenbaum, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Applicant Infinite 8 seeks registration on the Principal Register of the mark
ARIELLE, in standard characters, for the following goods and services (as amended):
Musical sound recordings; pre-recorded compact discs,
LPs, tape cassettes, audio cassettes, audio tapes, audio
discs, records, CD-ROMs, video tapes, video cassettes,
video discs, DVDs, DATs, MP3s, and laser discs all
featuring music; audio and video recordings featuring
music and artistic performances; digital music
downloadable via the Internet and wireless devices;
downloadable musical sound recordings and video
recordings, in International Class 9; and
Serial No. 86487128
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Entertainment services in the nature of live musical
performances; music video production; production of sound
and music video recordings; providing a website featuring
non-downloadable videos in the field of music and
entertainment; providing on-line videos featuring music,
not downloadable, in International Class 41.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark, as applied to the goods and services identified in the application,
so resembles the mark ARIEL (in typeset form), previously registered on the
Principal Register for “entertainment in the nature of a live musical performance” in
International Class 41,2 as to be likely to cause confusion, to cause mistake, or to
deceive.
We affirm the refusal to register.
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 Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d

1 Application Serial No. 86487128 was filed December 20, 2014, based on Applicant’s claim of
first use anywhere and use in commerce since at least as early as December 1, 2009. The
name shown in the mark identifies a living individual whose consent is of record.
2 Registration No. 2679297, issued January 28, 2003; renewed. Before November 2, 2003,
standard character drawings were known as typed drawings. A typed mark is the legal
equivalent of a standard character mark. TMEP § 807.03(i) (Jan. 2017).
Serial No. 86487128
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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.”).
We first address the second du Pont factor, the similarity of the goods and services,
recognizing at the outset that Applicant does not contend that the goods and services
are dissimilar. As noted, the services in the cited registration are “entertainment in
the nature of a live musical performance,” and the services recited in the application
include “entertainment services in the nature of live musical performances.” The
respective services thus are identical in part.
Because there are no limitations as to channels of trade or classes of purchasers
in the description of services in the cited registration, we presume that Registrant’s
services move in all channels of trade normal for such services and are available to
all potential classes of ordinary consumers. See Citigroup Inc. v. Capital City Bank
Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump
Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640
(TTAB 1981). Moreover, because the services described in the application and the
cited registration are identical in part, we must presume that the channels of trade
and classes of purchasers are the same, considerations under the third du Pont factor.
See American Lebanese Syrian Assoc. Charities Inc. v. Child Health Research Inst.,
101 USPQ2d 1022, 1028 (TTAB 2011); see also In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this legal
presumption in determining likelihood of confusion).
Serial No. 86487128
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Applicant’s identified goods include “musical sound recordings,” “audio and video
recordings featuring music and artistic performances,” and other types of musical
recordings. Applicant’s goods thus are highly related to Registrant’s musical
performance services. In addition, the Examining Attorney made of record 12
existing, use-based third-party registrations for both entertainment services in the
nature of live musical performances on the one hand and musical recordings on the
other.3 These registrations suggest that the goods and services are of a type that may
emanate from a single source under the same mark. See, e.g., In re i.am.symbolic, llc,
116 USPQ2d 1406, 1412 (TTAB 2015).
In our likelihood of confusion analysis, these findings under the second and third
du Pont factors strongly support a finding that confusion is likely.
We turn next to the du Pont likelihood of confusion factor focusing on “the
similarity or dissimilarity of the marks 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). “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, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(citation omitted).

3 November 13, 2015 Final Office Action at TSDR 2-37.
Serial No. 86487128
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Because the similarity or dissimilarity of the marks is determined as to the marks
in their entireties, our analysis cannot be predicated on dissecting the marks into
their various components; that is, the decision must be based on the entire marks,
not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212
USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected
and considered piecemeal; rather, it must be considered as a whole in determining
likelihood of confusion.”). On the other hand, 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 Nat’l Data, 224 USPQ at 751. The focus is on the recollection of
the average purchaser, who normally retains a general rather than a specific
impression of trademarks.4 In re C.H. Hanson Co., 116 USPQ2d 1351, 1353
(TTAB 2015).
When, as here, marks would appear on goods and services that are identical in
part and otherwise highly related, “the degree of similarity necessary to support a
conclusion of likely confusion declines.” Century 21 Real Estate Corp. v. Century Life
of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enters. Inc. v.
Rind, 85 USPQ2d 1104, 1108 (TTAB 2007).

4 For this reason, we are not persuaded by Applicant’s argument that searches of iTunes and
Amazon.com do not return Registrant’s music when Applicant’s mark is spelled correctly,
and vice-versa. See Appeal Brief, 12 TTABVUE 12. We also note that it appears Applicant’s
search of Amazon.com for “arielle” in “Digital Music : Albums” prompted the query: “Did you
mean: ‘ariel’”? October 7, 2015 Response to Office Action, Exhibit P at TSDR 201.
Serial No. 86487128
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The cited mark is ARIEL, while Applicant’s mark is ARIELLE. Comparing the
marks in their entireties, we find them to be nearly identical in sight, sound,
meaning, and overall commercial impression. Applicant’s mark merely appends the
two letters LE to the end of the cited mark. Although it does create a slight visual
distinction between the marks, we do not agree with Applicant that this minor
difference in spelling “dispel[s] any possible likelihood of confusion.”5 Moreover, while
there is no correct pronunciation of a mark, there is no indication that the two added
letters in ARIELLE would influence pronunciation of that word. In re Viterra, 101
USPQ2d at 1912.
Likelihood of confusion has been found where, as here, the entirety of one mark is
incorporated within another. See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 94
USPQ2d 1257, 1260 (Fed. Cir. 2010) (finding applicant’s mark ML similar to
registrant’s stylized mark ML MARK LEES); China Healthways Inst. Inc. v. Wang,
491 F.3d 1337, 83 USPQ2d 1123, 1125 (Fed. Cir. 2007) (finding the common word in
CHI and CHI PLUS likely to cause confusion despite differences in the marks’
designs); Coca-Cola Bottling Co. of Memphis, Tenn., Inc. v. Joseph E. Seagram &
Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) (BENGAL LANCER for club
soda, quinine water and ginger ale likely to cause confusion with BENGAL for gin).
We find Applicant’s mark, considered in its entirety, to be highly similar to the
cited mark. The first du Pont factor thus also supports a finding that confusion is
likely.

5 Appeal Brief, 12 TTABVUE 11-12.
Serial No. 86487128
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Finally, Applicant argues that the cited mark is weak and entitled to only a
narrow scope of protection because third parties have used and registered marks
incorporating the term ARIEL. This argument pertains to the sixth du Pont factor,
the number and nature of similar marks in use on similar goods. Applicant submitted
copies of the following use-based registrations registered to different third parties:6
Registration No. Mark Goods/Services
1 4612922 MARLY ARIEL Entertainment services in the nature of musical and vocal performances (Class 41)
2 4102463 Board games; jigsaw puzzles; manipulative
puzzles; playing cards; puzzle games
(Class 28)
3 3973748 Charitable services, namely, organizing and conducting fundraising events to increase
awareness of and assist children and families
dealing with pediatric and adolescent bipolar
disorder (Class 36)
4 4046385 ARIEL STREAM Entertainment services, namely, providing nondownloadable prerecorded music via a
global communications network, and music
programs for traditional, terrestrial broadcast
radio, namely, radio program syndication
(Class 41); Broadcasting services (Class 38)
5 3879010 ARIEL YVE Special events, party and wedding planning, coordination and consultation services
(Class 41)
6 3814910 ARIEL Various toys, games, and playthings (Class 28)

Among these registrations, only two are for the same or similar services as those
provided by Applicant and Registrant: the first (MARLY ARIEL) and fourth (ARIEL
STREAM). Both are less similar to the cited mark than is Applicant’s mark because
they contain additional material. This is particularly true for MARLY ARIEL, which

6 October 7, 2015 Response to Office Action, Exhibit B at TSDR 6-12.
Serial No. 86487128
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identifies a particular living individual and has another distinctive term as the first
word in the mark, which consumers are likely to notice first. See, e.g., Century 21 Real
Estate, 23 USPQ2d at 1700; In re Integrated Embedded, 120 USPQ2d 1504, 1513
(TTAB 2016). With respect to the fourth listed mark, ARIEL STREAM, the subject
application was initially refused due to a likelihood of confusion with this registered
mark, but the refusal was withdrawn after Applicant submitted a consent agreement
from the registrant.7 The remaining registrations are for unrelated goods and services
and therefore of limited probative value. See, e.g., In re Thor Tech Inc., 90 USPQ2d
1634, 1639 (TTAB 2009).
Applicant also made of record Internet evidence supporting its contentions that
(1) at least nine other music artists and bands use marks comprising or, in two
instances, consisting of the term ARIEL, and (2) there are what Applicant
characterizes as “over twenty (20) additional music artists and bands performing
under the ARIEL name and mark, whose music sound recordings are actively offered
and sold through iTunes.”8 Applicant does not specify who it considers to be these 20
other artists, and it is not clear from the evidence of record that an additional 20
artists offer music sound recordings incorporating the mark ARIEL in the United
States,9 but we accept Applicant’s characterization for purposes of our analysis.

7 Id. at Exhibit A, TSDR 2-5.
8 Appeal Brief, 12 TTABVUE 8-9.
9 October 7, 2015 Response to Office Action, Exhibit C and attachments at TSDR 13-212.
Serial No. 86487128
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Evidence of third-party use is relevant to show that a term “may have a normally
understood and well-recognized descriptive or suggestive meaning, leading to the
conclusion that that [term] is relatively weak, and can show that customers have been
educated to distinguish between different marks on the basis of minute distinctions.”
Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030,
1036 (TTAB 2016) (quotations omitted). Our primary reviewing court, the Court of
Appeals for the Federal Circuit, has instructed that evidence of extensive use and
registration of a term by others as a mark can be “‘powerful on its face,’ even where
the specific extent and impact of the usage has not been established.” Jack Wolfskin
Ausrustung Fur Draussen GmbH v. New Millennium Sports, S.L.U., 797 F.3d 1363,
116 USPQ2d 1129, 1136 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 982 (Jan. 25, 2016)
(quoting Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671,
1674 (Fed. Cir. 2015)).
Although we give probative weight to Applicant’s evidence of third-party use, we
find that it does not establish that the cited mark ARIEL is so weak that confusion is
not likely to result from the registration of the nearly identical mark ARIELLE for
services that are identical in part and goods that are highly related. Applicant’s
evidence of similar marks in use for similar goods and services does not appear to
approach the quantum of evidence of use in the Primrose, Jack Wolfskin, and Juice
Generation cases. In addition, all of the registrations in evidence, and all but two of
the specifically identified third-party uses, concern marks with additional
differentiating characteristics, not ARIEL alone. We find that the evidence does not
Serial No. 86487128
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establish that customers “‘have been educated to distinguish between different . . .
marks on the basis of minute distinctions,’” particularly the two-letter difference at
issue here. Juice Generation, 115 USPQ2d at 1674 (quoting 2 J. THOMAS MCCARTHY,
MCCARTHY ON TRADEMARKS & UNFAIR COMPETITION § 11:88 (4th ed. 2015)).
It has been stated many times that we must decide each case on its own facts. See
In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even
if some prior registrations had some characteristics similar to [Applicant’s]
application, the PTO’s allowance of such prior registrations does not bind the Board
or this court.”); In re Max Capital Group Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010)
(noting that third-party registrations “cannot justify the registration of another
confusingly similar mark”) (citations omitted). Even were we to find that third-party
marks dilute and limit the scope of protection afforded to the cited registration, marks
considered “weak” are nonetheless entitled to protection from registration by a
subsequent user of a confusingly similar mark for identical services and highly
related goods. See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108, 109 (CCPA 1974).
We have considered all of the arguments and evidence of record as they pertain to
the du Pont likelihood of confusion factors, including any not specifically addressed.
To the extent that any other du Pont factors for which no evidence was presented by
Applicant or the Trademark Examining Attorney may nonetheless be applicable, we
treat them as neutral.
Serial No. 86487128
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In view of our findings that the marks in their entireties are similar, the services
are identical in part and move in the same channels of trade to the same customers,
and Applicant’s goods are related to Registrant’s services, we find that Applicant’s
mark ARIELLE is likely to cause confusion with the cited mark ARIEL when used in
association with the goods and services identified in the application.
Decision: The refusal to register Applicant’s mark is affirmed.