87721487 (T.T.A.B. Oct. 16, 2019)

Jersey Goat Media LLC

Trademark Trial and Appeal BoardOct 16, 2019

87721487 (T.T.A.B. Oct. 16, 2019)

Mailed: October 16, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Jersey Goat Media LLC _____ Serial No. 87721487 _____ Lydia Vradi of Pardalis & Nohavicka LLP, for Jersey Goat Media LLC. Esther Queen, Trademark Examining Attorney, Law Office 111, Chris Doninger, Managing Attorney. _____ Before Ritchie, Wolfson, and Pologeorgis, Administrative Trademark Judges. Opinion by Wolfson, Administrative Trademark Judge: Jersey Goat Media LLC (“Applicant”) seeks registration on the Principal Register of the mark JERSEY XYZ, in standard characters (“JERSEY” disclaimed), for goods and services ultimately identified as: • “Downloadable podcasts in the field of politics, news and current events,” in International Class 9; This Opinion is Not a Precedent of the TTAB Serial No. 87721487 - 2 - • “Providing audio, video, broadcasts and podcasts in the field of politics, news and current events, namely, transmission of sound, video and information,” in International Class 38; and • “Entertainment services, namely, providing audio and video podcasts in the field of news and current events; Providing an Internet news portal featuring links to news stories and articles in the field of news and current events; providing information, news, and commentary in the field of current events via the Internet; online journals, namely, blogs featuring information focusing primarily on news and current events,” in International Class 41.1 The Examining Attorney refused registration of Applicant’s mark under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a prior registration of the mark XYZ FILMS, in standard characters (“FILMS” disclaimed), for: • “Downloadable motion pictures and television shows featuring information, news, music and entertainment, namely, action adventures, dramas, comedies, romances, science fiction, animated productions, live action narratives, documentaries, horror and mysteries; Motion picture films and television programs featuring information, news, music and entertainment, namely, action adventures, dramas, comedies, romances, science fiction, animated productions, live action narratives, documentaries, horror and mysteries” in International Class 9; and • “Entertainment services in the nature of development, creation, production, distribution, and post-production of motion pictures, television shows, and multimedia entertainment content; Production and distribution of monoscopic and stereoscopic, electronic, digital video and film; Film distribution; Providing a website featuring non-downloadable videos in the field of information, news, music and entertainment, namely, action adventures, dramas, comedies, romances, science fiction, animated productions, live action 1 Serial No. 87721487, filed on December 14, 2017, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), and claiming November 1, 2017 as the date of first and November 13, 2017 as the date of first use in commerce for each of the identified classes of goods and services. Serial No. 87721487 - 3 - narratives, documentaries, horror and mysteries; providing on- line information in the field of entertainment, namely, information in the field of motion pictures, documentaries, television programs, animation, videos and DVDs, and other audiovisual works” in International Class 41.2 After the Examining Attorney made the refusal final, Applicant filed a request for reconsideration. When the request for reconsideration was denied, Applicant filed a timely appeal. Both Applicant and the Examining Attorney filed briefs. For the reasons discussed herein, we affirm the refusal to register. I. Preliminary Matters The Examining Attorney objected to “Wikipedia evidence” as untimely submitted with Applicant’s brief. 3 The Examining Attorney also objected to screenshots or printouts of webpages submitted with Applicant’s Request for Reconsideration submitted on March 29, 2019, as failing to specify the date they were downloaded or accessed.4 Regarding the “Wikipedia evidence,” Applicant did not file any evidence with its appeal brief and the evidence attached to Applicant’s Request for Reconsideration is timely. 5 That being said, however, none of the web pages (including one from en.wiktionary.org) attached to the Request for Reconsideration includes the date upon which the website was accessed or downloaded, with the exception of a page from 2 Registration No. 5099394, issued December 13, 2016. 3 8 TTABVUE 9, n. 1. 4 Id. 5 We note that Applicant refers to an “attached excerpt from the online dictionary www.wikipedia.com,” but did not include an attachment with the brief. 6 TTABVUE 20. Serial No. 87721487 - 4 - Registrant’s website.6 “To make Internet material properly of record, the offering party must provide the full address (URL) for the web page, and the date it was accessed or printed, either by the information displayed on the web page itself, or by providing this information in an Office action or an applicant’s response.” TRADEMARK BOARD MANUAL OF PROCEDURE (TBMP) § 1208.03 (2019); see also In re I-Coat Co., LLC, 126 USPQ2d 1730, 1733 (TTAB 2018) (“[W]e will no longer consider Internet evidence filed by an applicant in an ex parte proceeding to be properly of record unless the URL and access or print date has been identified, either directly on the webpage itself, or by providing this information in a response, except where the examining attorney does not object.”). Accordingly, the Examining Attorney’s objection is sustained to the extent that we do not consider the web pages attached to Applicant’s Request for Reconsideration other than that of Registrant’s specimen. II. Likelihood of Confusion Our determination of the issue of likelihood of confusion is based on an analysis of all 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) (“DuPont”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976); In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). We 6 Applicant’s March 29, 2019 Request for Reconsideration, TSDR p. 30. Serial No. 87721487 - 5 - consider the DuPont factors for which arguments or evidence were presented.7 We consider the other factors to be neutral. A. Similarity of the Marks We initially consider and compare the appearance, sound, connotation and commercial impression of the marks in their entireties. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). “For rational reasons, the comparison may give more or less weight to a particular feature of the marks.” Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002). Disclaimed and generic matter are typically “less significant in creating the mark’s commercial impression.” In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“That a particular feature is descriptive or generic with respect to the involved goods or services is one commonly accepted rationale for giving less weight to a portion of a mark.”); see also In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (“DELTA,” not the disclaimed generic term “CAFE,” is the dominant portion of the mark THE DELTA CAFE). Applicant’s mark, JERSEY XYZ, is similar in appearance and pronunciation to the mark in the cited registration, XYZ FILMS, because they both share the term “XYZ.” There is no evidence of record regarding the conceptual and commercial strength of 7 We do not consider Applicant’s arguments made during prosecution regarding conditions of sale under the fourth DuPont factor inasmuch as Applicant did not pursue these arguments on appeal. Serial No. 87721487 - 6 - Registrant’s mark. Thus, at a minimum, the XYZ portion is not inherently weak and therefore should be provided the scope of protection that is afforded arbitrary marks. Accordingly, the term “JERSEY,” in Applicant’s mark, refers to the state of New Jersey, a well-recognized geographical location, and the term “FILMS,” in Registrant’s mark, is the generic term for the goods provided by the Registrant under its mark. For these reasons, we find that the term “XYZ” is the dominant portion of each mark, and it is not improper to give more or less weight to this particular feature, provided the ultimate conclusion rests on a consideration of the marks in their entireties. National Data, 224 USPQ at 751. Turning to connotation and commercial impression of the marks, Applicant argues that its mark “suggests that the goods/services offered under the Mark express the opinions of Generations X, Y and Z, particularly of people originally from or residing in the State of New Jersey,” whereas the term XYZ in Registrant’s mark “could also be perceived as meaning: ‘For reasons unknown and not worth speculating on.’”8 Presuming the designation “XYZ” could have either, or both, connotations, there is nothing in the record that compels the conclusion the former definition applies only to Applicant’s mark, while the latter applies only to Registrant’s mark. Rather, it is likely that consumers will ascribe similar meanings to both uses of the term XYZ as applied to the parties’ respective entertainment and film-related goods and services. Therefore, when viewed in their entireties, we find that the marks are more similar than dissimilar in sight, sound, connotation, and commercial impression, 8 6 TTABVUE 20. Serial No. 87721487 - 7 - particularly since they both share the identical, arbitrary phrase “XYZ.”. Thus, the first DuPont factor weighs in favor of finding a likelihood of confusion. B. Relatedness of the Goods and Services We turn next to the second DuPont factor, which requires us to determine the similarity or dissimilarity of the goods and services as identified in Applicant’s application and the cited registration. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-1162 (Fed. Cir. 2014) (“the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application”); Octocom Sys., Inc. v. Houston Comps. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); Hewlett-Packard Co., 62 USPQ2d at 1001. The goods and services need not be identical or even competitive in order to support a finding of likelihood of confusion. Rather, it is enough that they are related in some manner or that some circumstances surrounding their marketing are such that they would be likely to be seen by the same persons under circumstances which could give rise, because of the marks used or intended to be used therewith, to a mistaken belief that they originate from or are in some way associated with the same producer or that there is an association between the producers of the parties’ goods or services. In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). From the identifications themselves, we note that Applicant’s goods are downloadable podcasts, and its services include transmitting “audio, video, broadcasts and podcasts,” as well as providing podcasts, an Internet news portal, “information, news, and commentary” via the Internet, and blogs. Applicant directs its focus to Serial No. 87721487 - 8 - politics, news and current events. Registrant’s goods are motion pictures and television shows (both as downloadable products and as classic goods), and its services include the production and distribution of motion pictures, television shows, and the provision of a website featuring non-downloadable videos. The subject matter content of Registrant’s downloadable and non-downloadable motion pictures, television shows, and videos includes news. Both Applicant’s and Registrant’s identifications demonstrate that both parties provide news information over the Internet. To demonstrate the relatedness of the identified goods and services, the Examining Attorney submitted third-party web pages, showing that numerous television news channels such as FOX, CBS, NBC, and ABC broadcast TV provide both programming and related podcasts over the Internet, all directed to news and current political events. Illustrative examples include: • FOX – at https://radio.foxnews.com/category/podcasts/ viewers can watch podcasts on news and current events. At https://www.fox.com/shows/collection/ viewers can select TV shows to watch.9 • CBS – at http://www.cbsfilms.com/films/, viewers can select movies from the CBS Films library. At https://www.cbs.com/shows/, viewers can select TV programming, including news shows such as “60 Minutes.” At https://www.cbsnews.com/podcasts/ “CBS News” offers “CBS News Podcasts.”10 • PBS – podcasts are offered at https://www.pbs.org/newshour/podcasts under the mark “PBS NEWS HOUR.” At http://www.pbs.org/shows/ PBS offers 9 Office Action April 2, 2018, TSDR 6-7. 10 Id. at TSDR 15-17. Serial No. 87721487 - 9 - videos, containing both fictional content and non-fiction, current news content.11 In addition, the Examining Attorney provided web pages of other networks offering similar TV programming and podcast services to various geographic regions, including New Jersey. For example: • NJTV – at https://www.njtvonline.org/, viewers can watch news programs, and at https://player.fm/podcasts/Njtv, they can listen to news podcasts.12 • ABC ACTION NEWS – at https://6abc.com/new-jersey/, viewers can watch news stories of local interest to New Jersey, and at https://6abc.com/politices/listen-to-inside-storey-as -a- podcast/, subscribers can listen to an “audio-only edition of Inside Story delivered to [sic] directly to your podcast player every week.”13 Applicant argues that “[m]ost of the applied-for goods are completely unrelated to the goods covered by the Registered Mark” but appears to concede that the services “could potentially be considered to be more closely related to certain services covered by the Registered Mark, such as the provision of a website featuring non- downloadable videos in the field of information, news, music and entertainment.”14 The goods are also closely related: Registrant’s goods include “downloadable motion pictures and television shows featuring…, news” and Applicant’s goods include 11 Id. at TSDR 18-19. 12 Denial of Request for Reconsideration, April 19, 2019, TSDR 2-3. 13 Id. at TSDR 6-7. 14 6 TTABVUE 8. Serial No. 87721487 - 10 - “downloadable podcasts in the field of …, news.” Likelihood of confusion must be found with respect to a class of goods or services in an application if there is likely to be confusion with respect to any item that comes within the identification of the goods or services in that class. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). We find both Applicant’s goods and services to be related to Registrant’s services. Applicant argues that the USPTO has allowed similar marks, owned by different parties, to co-exist as third-party registrations, where the same mark has been registered by one entity for a podcast and by a different entity for films or movies. In support, Applicant provided copies of six registrations and one application15 as follows (each registration in the pairing is owned by a different entity): • Reg. No. 5572957 for the mark CHANT for, inter alia, “transmission of webcasts and podcasts”; based on Section 44(e);16 • Reg. No. 4729329 for the mark CHANT for, inter alia, “providing ongoing television programs and radio programs in the field of…documentaries”; registered on the Supplemental Register and based on Section 44(e); 17 15 Application Serial No. 87933941 for the mark CHANT for, inter alia, “production of radio and television programmes; film distribution; providing television programmes, not downloadable, via video-on demand transmission services,” based on Section 44(d), suspended. The application has no probative value. Third-party applications are evidence only of the fact that they have been filed. Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003). 16 Applicant’s March 29, 2019 Request for Reconsideration, TSDR 42-44. 17 Id. at 45-51. Serial No. 87721487 - 11 - • Reg. No. 5511168 for the mark JUMBO for, inter alia, “transmission of webcasts and podcasts”; based on Section 44(e);18 • Reg. No. 4404609 for the mark JUMBO CINEMA for “providing movies and theater online”; based on Section 1(a);19 • Reg. No. 3435762 for the mark for, inter alia, “downloadable podcasts featuring music and musical artists”; based on Section 1(a);20 and • Reg. No. 5590990 for the mark RHINO STEW for “film production”; based on Section 1(a).21 Applicant argues that this evidence demonstrates that “examining attorneys tend to consider that news podcasts and films are not confusingly similar, even if the relevant marks share a common word or are identical.” 22 Here, the third-party registration pairings are entitled to little weight on the issue of confusing similarity because the registrations are “not evidence that the registered marks are actually in use or that the public is familiar with them.” In re Midwest Gaming & Entm’t LLC , 106 USPQ2d 1163, 1167 n.5 (TTAB 2013) (citing In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)); see TMEP § 1207.01(d)(iii). This is especially true because three of these registrations were registered under Section 18 Id. at 52-54. 19 Id. at 55-56. 20 Id. at 57-69. 21 Id. at 70-74. 22 6 TTABVUE 18019 Serial No. 87721487 - 12 - 44(e) of the Trademark Act; thus, they did not have to be supported by use prior to their registration. In addition, the marks JUMBO and JUMBO CINEMA and RHINO and RHINO STEW are not identical and these pairs may simply reflect the views of the registration owners that given the dissimilarities in the marks, coexistence is possible. In this regard, prior decisions and actions of other examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board. In re Midwest Gaming & Entm’t, 106 USPQ2d at 1165 n.3 (citing In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)); TMEP § 1207.01(d)(vi). It has been noted many times that each case is decided on its own facts, and each mark stands on its own merits. See AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973); In re Binion, 93 USPQ2d 1531, 1536 (TTAB 2009). Finally, we note that to the extent we consider the third-party registration pairs submitted by Applicant, Applicant submitted evidence of only three even arguably similar sets of marks, which is not very probative of consumer impressions or of industry practice. Such evidence is outweighed by the similarity shown by the evidence submitted by the Examining Attorney. Cf. In re Thor Tech, Inc., 113 USPQ2d 1546, 1549 (TTAB 2015) (applicant’s fifty sets of co-existing third-party registrations were weighed against only two registrations submitted by examining attorney showing similarity of goods). The second DuPont factor also weighs in favor of finding a likelihood of confusion. C. Channels of Trade and Classes of Purchasers Serial No. 87721487 - 13 - Regarding channels of trade and classes of purchasers, in the absence of any restrictions or limitations in the application or registration, we must assume the goods and services are sold or marketed through all the normal and usual trade channels for such goods and services to offered to all the usual purchasers of such goods and services. See Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); Hewlett-Packard Co., 62 USPQ2d at 1005; In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006). Applicant argues that “the targeted consumer base and market are distinct.” As noted above, however, the Examining Attorney has submitted evidence that various companies and organizations offer both the goods and services identified by Applicant and those identified in the cited registration, via the same web source. We find the third DuPont factor to also favor finding a likelihood of confusion. D. Conclusion After considering all of the arguments and evidence of record as they pertain to the relevant DuPont factors, we find that the marks are substantially similar in sight, sound, connotation and commercial impression. We further find the goods and services are related, as are the channels of trade. The remaining factors are neutral. Accordingly, we find that there is a likelihood of confusion between Applicant’s mark JERSEY XYZ and the cited mark XYZ FILMS, for the goods and services as identified. Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.