Joe J. Alfaro, Jr.v.Guy A. Hoffmann

Trademark Trial and Appeal Board

Feb 23, 2007

No. 91155188 (T.T.A.B. Feb. 23, 2007)

Mailed:
February 23, 2007
UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Joe J. Alfaro, Jr.

v.

Guy A. Hoffmann
_____

Opposition No. 91155188 to application Serial No. 78110344
filed on February 22, 2002
_____

Richard A. Clegg of Seltzer Caplan McMahon Vitek for Joe J.
Alfaro, Jr.

Leonard H. Mandel for Guy A. Hoffmann.
______

Before Hairston, Zervas and Cataldo, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

Applicant, Guy A. Hoffmann, seeks registration on the
Principal Register of the mark SUPERFREAKS FUNKY DISCO
REVUE1 (in standard character form) for the following
services, as amended: “Entertainment services namely, live

1 Application Serial No. 78110344, filed February 22, 2002, is
based on applicant's assertion of a bona fide intention to use
the mark in commerce on the identified services under Section
1(b) of the Trademark Act, 15 U.S.C. §1051(b).
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Opposition No. 91155188
2
musical performances by a disco musical band” in
International Class 41. Applicant has disclaimed the
wording FUNKY DISCO REVUE.
Opposer Joe J. Alfaro, Jr. filed a timely notice of
opposition to registration of applicant's mark. In
opposer's amended notice of opposition, opposer pleaded that
he has used the mark THE SUPERFREAKS in interstate commerce
since at least as early as 1999 and continues to use the
mark in connection with “entertainment services in the
nature of live disco music from the ’70s and ’80s as
performed by live musicians”; that applicant was dismissed
from THE SUPERFREAKS band by opposer and then filed his
intent-to-use application; and that applicant's mark, as
applied to the services identified in the application, so
resembles opposer's mark THE SUPERFREAKS as to be likely to
cause confusion, to cause mistake, or to deceive. Trademark
Act Section 2(d), 15 U.S.C. §1052(d). Applicant further
pleads that “Applicant filed a false oath in its [sic]
‘intent-to-use’ application submitted to the USPTO and
knowingly made willful, false material misrepresentations of
fact in his application by filing an application to register
a mark which it [sic] knew infringed on the superior rights
of the Opposer. Applicant had an obligation to disclose the
existence of the Opposer's band and rights in the mark.”
Notice of opposition ¶ 7.
Opposition No. 91155188
3
Applicant answered the amended notice of opposition by
denying the salient allegations thereof, and asserted an
affirmative defense of unclean hands based on the alleged
filing by opposer of an application for registration in the
State of California for a service mark registration for THE
SUPERFREAKS four days after applicant filed the present
application.
Preliminary Matters
On February 25, 2006, opposer filed a notice of
reliance, submitting the following: (i) applicant's answer
to the original notice of opposition, which includes one
exhibit, (ii) applicant's response to opposer's motion for
summary judgment, (iii) applicant's answer to the amended
notice of opposition, and (iv) printouts from
www.socalrocks.com. Applicant's answer to the original
notice of opposition and applicant's answer to the amended
notice of opposition are already in evidence. Pleadings are
automatically in evidence. However, the exhibit that
accompanied applicant's answer to the original notice of
opposition is not in evidence. With the exception of a
current status and title copy, prepared by the Patent and
Trademark Office, of a plaintiff's pleaded registration,
exhibits attached to a pleading are not evidence on behalf
of the party to whose pleading they are attached unless they
are thereafter, during the time for taking testimony,
Opposition No. 91155188
4
properly identified and introduced in evidence as exhibits.
Thus, applicant’s answers to the original notice of
opposition and the amended notice of opposition are in
evidence but the exhibit attached to the answer to the
original notice of opposition is not in evidence. Trademark
Rules 2.122(c) and (d), 37 C.F.R. §§ 2.122(c) and (d); TBMP
§§ 317 and 704.05(a) (2d ed. rev. 2004).
Further, the notice of reliance procedure is not
available for introducing applicant’s response to the motion
for summary judgment into evidence. The notice of reliance
procedure does not extend to papers filed in the present
proceeding. See Trademark Rule 2.122; 37 C.F.R. § 2.122.
Thus, applicant’s response to the motion for summary
judgment is not in evidence. As for the printouts from
www.socalrocks.com, it is well settled that Internet
printouts are not self-authenticating and are “not proper
subject matter for introduction by means of a notice or
reliance under Trademark Rule 2.122(e).” Plyboo America
Inc. v. Smith & Fong Co., 51 USPQ2d 1633, 1634 n.3 (TTAB
1999). See also Michael S. Sachs Inc. v. Cordon Art B.V.,
56 USPQ2d 1132, 1134 (TTAB 2000); Raccioppi v. Apogee Inc.,
47 USPQ2d 1368, 1370 (TTAB 1998). Thus, the
Opposition No. 91155188
5
www.socalrocks.com printouts submitted with opposer's notice
of reliance are not in evidence.2
Additionally, opposer has sought to enter into evidence
through his testimonial deposition a copy of an email
purportedly sent by applicant to a part-time member of THE
SUPERFREAKS band named Dave Gully. Opposer's Exhibit 11;
Alfaro dep. p. 28. Opposer testified that Mr. Gully
forwarded the email to opposer. Id. at p. 29. Applicant's
attorney objected to this exhibit when opposer sought to
introduce it during opposer's testimonial deposition, and
renewed his objection in his main brief. We sustain
applicant's objection to Exhibit 11 on the grounds of
hearsay. There is no direct testimony that applicant indeed
authored the email. We therefore do not further consider
Exhibit 11.
The Record
The record consists of the pleadings; the file of the
involved application; the trial testimony taken by opposer
of (i) opposer, (ii) Elva Handler, opposer's sister who
assists opposer, including with “secretarial type work”;
(iii) Danny Alfaro, a former member of opposer's band; and
(iv) Eric Handler, opposer's brother-in-law, with related

2 Our ruling does not extend to those www.socalrocks.com
printouts which are exhibits to opposer’s testimonial deposition.
Opposition No. 91155188
6
exhibits (except for Exhibit 11 discussed above). Applicant
has not introduced any evidence that we may consider.3
The case has been fully briefed.4
Factual Findings
Opposer is a professional musician and founded a band
named THE SUPERFREAKS in August 1999. Opposer then chose
Danny Arroyo to be the lead vocalist and Danny Alfaro to be
the drummer. Subsequently, opposer chose applicant to be a
member of the band. The band plays disco and funk music
from the 1970s, first rehearsed in August 1999 and plays at
casinos, nightclubs, wedding receptions, festivals and
private parties. Applicant was a member of THE SUPERFREAKS
for about two years and participated in approximately 200
performances with THE SUPERFREAKS.
THE SUPERFREAKS first show was in October 15, 1999 at
the Olympic Club in San Francisco. Alfaro, Jr. dep. p. 12.
On New Year’s Eve, 1999, the band performed in Laughlin,
Nevada. Id. at p. 12 – 13. The band has given about 400
shows in the last five years. Id. at p. 13.

3 On July 6, 2005, the Board granted opposer's motion to exclude
applicant’s responses to applicant’s testimonial deposition upon
written questions. Thus, there is no testimony from applicant in
the trial record.
4 Applicant filed his main brief late because he mailed his brief
to an old address for the U.S. Patent and Trademark Office.
Because opposer has not objected to the late submission of
applicant's brief, we have exercised our discretion and have
considered applicant's main brief.

Opposition No. 91155188
7
Opposer markets THE SUPERFREAKS through a web site,
flyers and advertisements, and mails postcards to event
coordinators and event planners. He also has business cards
and promotional videos. In either late 2001 or 2002,
opposer terminated applicant’s involvement in the band due
to inter alia an incident during a performance of the band.
Priority
The question of priority is an issue in this case
because opposer does not own an existing registration upon
which he can rely under Section 2(d). C.f., King Candy Co.,
Inc. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108 (CCPA 1974). To establish his priority under Section
2(d), opposer must prove that, vis-à-vis applicant, he owns
“a mark or trade name previously used in the United States …
and not abandoned….”
Opposer has testified in his testimonial deposition
that he “came up with the name Superfreaks” for the band;
that the band’s first show was on October 15, 1999; that the
band performed in Laughlin, Nevada on New Year’s Eve, 1999;
that he has “used the service mark the Superfreaks
continuously since October 15, 1999”; and that over the past
five years, THE SUPERFREAKS have performed in about 400
shows. Alfaro, Jr. dep. pp. 12 – 13. There is nothing in
the record that controverts opposer’s testimony. Also,
included within Exhibit 7 to opposer's deposition is
Opposition No. 91155188
8
Internal Revenue Service Form 1099 for the year 2000 for
“Joe J. Alfaro, Jr.[,] DBA SUPER FREAKS.” Because opposer’s
claimed first use date and the date of Form 1099 precede the
filing date of applicant’s intent-to-use application, and
opposer has testified as to the continued use of the mark,
opposer has proved his standing to maintain this proceeding
and we award priority to opposer. Section 2(d); Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir.
1999) (an opposer must have “a ‘real interest’ in the
outcome of a proceeding in order to have standing.”); Lipton
Industries, Inc. v. Ralston Purina Company, 670 F.2d 1024,
213 USPQ 185, 189 (CCPA 1982) (“To establish a reasonable
basis for a belief that one is damaged … a petition may
assert a likelihood of confusion which is not wholly without
merit.”)
Likelihood of Confusion
We next consider the question of likelihood of
confusion. Our determination under Section 2(d) is based on
an analysis of all of the 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 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). In considering the evidence of
record on these factors, we keep in mind that “[t]he
Opposition No. 91155188
9
fundamental inquiry mandated by §2(d) goes to the cumulative
effect of differences in the essential characteristics of
the [services] and differences in the marks.” Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976).
Opposer has established that he provides live musical
performances featuring disco music. Applicant’s services as
stated in his application, i.e., “Entertainment services
namely, live musical performances by a disco musical band,”
are identical to opposer’s services. Because applicant’s
services are identical to opposer’s services, we presume
that the parties’ services travel in at least overlapping
trade channels to at least overlapping classes of consumers.
Therefore, the second, third and fourth du Pont factors
concerning the similarities of the services, trade channels
and conditions of purchase are resolved in opposer’s favor.
We next consider the first du Pont factor concerning
the similarities between the marks, looking to whether the
marks in their entireties are similar in sound, appearance,
meaning, and commercial impression. Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
Opposition No. 91155188
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impression that confusion as to the source of the services
offered under the respective marks is likely to result. The
focus is on the recollection of the average purchaser, who
normally retains a general rather than a specific impression
of trademarks. See Grandpa Pidgeon's of Missouri, Inc. v.
Borgsmiller, 477 F.2d 586, 177 USPQ 573 (CCPA 1973); Sealed
Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
In articulating reasons for reaching a conclusion on
the issue of likelihood of confusion, “there is nothing
wrong in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark,
provided [that] the ultimate conclusion rests on a
consideration of the marks in their entireties.” In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751. For
instance, “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 ….” Id. In this case, applicant’s mark
is SUPERFREAKS FUNKY DISCO REVUE. The wording FUNKY DISCO
REVUE is descriptive of applicant’s services, i.e., that he
provides a “funky disco revue.” Applicant has disclaimed
this descriptive matter in his mark. We therefore find that
SUPERFREAKS is the dominant portion of applicant’s mark.
SUPERFREAKS is also the dominant portion of opposer’s mark –
the word “the” does not serve as an indication of origin.
Opposition No. 91155188
11
See Conde Nast Publications v. The Redbook Publishing Co.,
217 USPQ 356 (TTAB 1983). Thus, while the marks in their
entireties have obvious differences in appearances and
pronunciations due to the inclusion of the other wording in
the marks, these differences are not as significant as the
similarities created by the identical common dominant term.
In view of the shared dominant term, we find that the
meanings of the marks and their commercial impressions are
not dissimilar – the additional wording in the marks does
not alter the overall meaning and commercial impression of
the marks and the differences in the meanings and commercial
impressions of the marks are not very significant. We
conclude that, when we consider these marks in their
entireties, the differences in appearance, pronunciation,
meaning, and commercial impression are eclipsed by the
similarities of the marks. The first du Pont factor hence
is resolved in opposer's favor.
Opposer has argued that applicant adopted his mark in
bad faith. According to opposer, “[i]t is clear that
Applicant chose a name virtually identical to the Opposer’s
mark, in an intentional effort to ‘payback’ Opposer and
cause confusion.” Brief at p. 11. Opposer's proofs fall
short of proving bad faith adoption of applicant's mark and,
thus, this factor is neutral in our analysis. However, in
view of the manner in which we have resolved the du Pont
Opposition No. 91155188
12
factors listed above, opposer hardly needs to rely on
applicant’s intent in support of his allegation that there
is a likelihood of confusion between the two marks.
Thus, as demonstrated above, opposer’s and applicant’s
services are identical, their trade channels and classes of
consumers overlap and the marks are similar. When marks
appear on identical services, the degree of similarity
necessary to support a conclusion of likely confusion
declines. See Century 21 Real Estate Corp. v. Century Life
of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992). Accordingly, we find that applicant’s mark
SUPERFREAKS FUNKY DISCO REVIEW, when used on “Entertainment
services namely, live musical performances by a disco
musical band,” is likely to cause confusion with opposer’s
mark THE SUPERFREAKS used on identical services.
As mentioned above, applicant has asserted an
affirmative defense of unclean hands based on opposer’s
filing in California for a state registration for THE
SUPERFREAKS four days after applicant filed his application
with the Office. Because applicant’s affirmative defense is
unrelated to opposer’s claim of likelihood of confusion, and
has no bearing on whether the consuming public would be
confused by the registration of applicant’s mark, we reject
applicant’s unclean hands defense.
Opposition No. 91155188
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Finally, in light of our finding for opposer on the
likelihood of confusion claim, to the extent that opposer
also pleaded a claim of fraud, we need not reach such claim.
DECISION: The opposition is sustained on the ground of
likelihood of confusion and registration to applicant is
refused.