Kay Ford and Will Carter

Trademark Trial and Appeal Board

May 15, 2017

No. 86812446 (T.T.A.B. May. 15, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: May 15, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Kay Ford and Will Carter
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Serial No. 86812446
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Gene Bolmarcich, Law Offices of Gene Bolmarcich,
for Kay Ford and Will Carter.
Kara E. Jackson, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
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Before Bergsman, Kuczma, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Applicants Kay Ford and Will Carter seek registration on the Principal Register
of the mark TC3 DRINKING CLUB, in standard characters and with “club”
disclaimed, for the following services (as amended) in International Class 41:1
Fan clubs for the musical band, known for their many
songs about beer, whiskey and hot girls, that is a three
piece southern rock and country band, with all three
members born and raised in Nashville, Tennessee, and best
friends since middle school, and who put on loud, hard-

1 Application Serial No. 86812446 was filed on November 6, 2015, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on allegations of first use anywhere since
December 22, 2014, and use in commerce since April 21, 2015.
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rocking live shows, and whose fans refer to them as the best
live band on the planet.
The Trademark Examining Attorney has refused registration of Applicants’ mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicants’ mark, as used in connection with their services, so resembles the
previously registered mark as to be likely to cause confusion, to cause
mistake, or to deceive. The cited mark is registered on the Principal Register for the
following services in International Class 41:2
Animal training; Rental of movie projectors and
accessories; Rental of stage scenery; Rental of tennis
courts; Rental of motion pictures; Rental of sound
recordings; Providing sports facilities; Casino services;
Circuses; Boarding schools; Music composition services;
Conducting fitness classes; Timing of sports events;
Dubbing; Religious education; Educational examination;
Providing on-line music, not downloadable; Photography;
Gambling; Recreation information; Entertainment
information; Education information; Gymnastic
instruction; Correspondence courses; Sign language
interpretation; Layout services, other than for advertising
purposes; Night clubs; Providing karaoke services;
Microfilming; Production of television and radio programs;
Videotape editing; Rental of audio equipment; Rental of
lighting apparatus for theatrical sets or television studios;
Rental of radios and televisions; Games equipment rental;
Rental of sports equipment, except vehicles; Rental of skin
diving equipment; Rental of toys; Rental of sports grounds;
Rental of video recorders; Rental of stadium facilities;
Rental of camcorders; Rental of videotapes; Organization
of sports competitions; Arranging of beauty contests;

2 Registration No. 4779452, issued July 28, 2015. The description of the mark states: “The
mark consists of the letters ‘T’ and ‘C’ in fanciful capital letters; the body of the letters is
decorated with a pattern of squares; placed partly inside the letter ‘C’ there is a fanciful
number ‘3’.” Color is not claimed as a feature of the mark.
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Organization of exhibitions for cultural or educational
purposes; Operating of lotteries; Organization of fashion
shows for entertainment purposes; Organization of shows
impresario services; Arranging and conducting of concerts;
Vocational guidance; Amusement park services; Booking of
seats for shows; Rental of books; Film production, other
than advertising films; Production of music; Movie
showing; Publication of books; Electronic desktop
publishing; Theatre productions; Script writing services;
Videotaping; Photographic reporting; Nursery schools;
Modelling for artists; Mobile library services; Calligraphy
services; Health club services; Health and fitness training;
News reporter services; Disc jockey services; Discotheque
services; Zoological garden services; Language interpreter
services; Orchestra services; Personal trainer services;
Providing gaming house facilities; Recording studios;
Subtitling; Movie studios; Music halls.
When the refusal was made final, Applicants appealed and filed an appeal brief.
Subsequently, the appeal was suspended for additional examination.3 The appeal
resumed, and Applicants were allowed 60 days to file a supplemental brief, which
they did not.
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

3 The Examining Attorney requested remand to issue a new requirement that Applicants
remove the wording “The Cadillac Three” from the identification of services – which at the
time read “Fan clubs for the musical band ‘The Cadillac Three’” – because THE CADILLAC
THREE is a registered mark not owned by Applicants. 6 TTABVUE. After the Board granted
remand and suspended the appeal, 7 TTABVUE, Applicants complied with the new
requirement, amending the recitation of services to “Fan clubs for the musical band ‘TC3.’”
In a subsequent final Office Action, the Examining Attorney once again refused registration
because the amended identification included the wording “TC3,” also a registered mark not
owned by Applicants. 8 TTABVUE. Applicants then requested reconsideration to amend the
identification to its current wording. 10 TTABVUE.
Serial No. 86812446
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(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. 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
differences in the marks.”).
We first address 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)
(quotation omitted).
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, our analysis is not predicated on dissecting the marks into
their various components. 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
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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 cited mark consists in its entirety of the two letters T and C with the
number 3 nested within the curve of the C, all in stylized form. Applicants’ mark
begins with the identical letters and number in the same order, followed by the phrase
DRINKING CLUB. TC3 has a position of prominence as the lead element in
Applicants’ mark, heightening its similarity to Registrant’s mark. See, e.g., Palm Bay,
73 USPQ2d at 1692 (stating that “veuve” is a prominent part of the mark VEUVE
CLICQUOT because it is the first word in the mark); Century 21 Real Estate Corp. v.
Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (stating
that consumers will first notice the identical lead word on encountering the marks);
Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (stating
that “it is often the first part of a mark which is most likely to be impressed upon the
mind of a purchaser and remembered”).
We are mindful that marks comprising letter combinations can be more
susceptible to confusion than word marks. B.V.D. Licensing Corp. v. Rodriguez, 83
USPQ2d 1500, 1509 (TTAB 2007). Applicants argue that the fact that their fan club
services “are obviously directed to fans of a band known as ‘TC3’ imparts a meaning
to TC3 in Applicant[s’] Mark that is completely absent in the Cited Mark.” Appeal
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Brief, 4 TTABVUE 3. The respective names of Applicants and Registrant, however,
are not part of either mark. See Christian Broadcasting Network Inc. v. ABS-CBN
Int’l, 84 USPQ2d 1560, 1569 (TTAB 2007). The derivations of letter marks, acronyms,
or initialisms are of no particular significance in our analysis under Section 2(d),
particularly where, as here, there is no evidence that purchasers are aware of the
derivations. B.V.D. Licensing Corp., 83 USPQ2d at 1508; see also Edison Bros. Stores,
Inc. v. Brutting E. B. Sport-Int’l GmbH, 230 USPQ 530, 533 (TTAB 1986) (“It should
be noted that the lettered marks in almost all of the cited decisions were, as in the
case before us, derived from the trade or corporate names of the involved parties, but
these facts had no negative influence upon the likelihood of confusion conclusions
which were reached.”).
Also, because Applicants have applied to register their mark in standard
characters, they may choose to display TC3 in a manner similar or identical to
Registrant’s stylized form, increasing the likelihood of confusion. See In re Viterra
Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012) (pointing out that
standard character marks are not limited to any particular font, size, style, or color);
Weider Publ’ns, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014).
The terms in the cited mark, moreover, are subsumed within Applicants’ mark.
While there is no rule that likelihood of confusion automatically applies where one
mark encompasses another, in this case, that Registrant’s mark is subsumed within
Applicants’ mark increases the similarity between the two. See, e.g., In Re Mighty
Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (affirming Board
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decision that ML is likely to be perceived as a shortened version of ML MARK LEES,
and noting that “the presence of an additional term in the mark does not necessarily
eliminate the likelihood of confusion if some terms are identical”); Coca-Cola Bottling
Co. of Memphis, Tennessee, Inc. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188
USPQ 105, 106 (CCPA 1975) (finding applicant’s mark BENGAL LANCER for club
soda, quinine water, and ginger ale likely to cause confusion with BENGAL for gin);
In re El Torito Rests. Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (MACHO COMBOS,
with “combos” disclaimed, likely to cause confusion with MACHO).
Applicants argue that the additional words in their mark, DRINKING CLUB, “are
highly distinctive and arbitrary in connection with the fan club services identified.”
Appeal Brief, 4 TTABVUE 3. This assertion is obviously incorrect with respect to the
disclaimed word “club,” which is generic in association with Applicants’ identified fan
club services. Nor do we agree that the phrase DRINKING CLUB as a whole is
arbitrary in association with the services recited in the application. The ID begins:
“Fan clubs for the musical band, known for their many songs about beer, whiskey
. . . .” “Drinking” too has a descriptive aspect in association with appreciation of a
band known for its many songs about beer and whiskey, as demonstrated by the
empty bottles and cans illustrated at the bottom of Applicants’ specimen:

Serial No. 86812446
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Therefore, we find the dominant part of Applicants’ mark to be the distinctive
element TC3. The additional matter in Applicants’ mark does distinguish it
somewhat from the cited mark, but we find that these differences are outweighed by
the fact that the dominant portion of Applicants’ mark is identical to the whole of the
cited mark. Considered in its entirety, we find that TC3 DRINKING CLUB is similar
to the cited mark in appearance, sound, connotation, and overall commercial
impression.
The first du Pont factor thus favors a finding of a likelihood of confusion.
We next address the second du Pont factor, the similarity of the services. The test
is not whether consumers would be likely to confuse the services, but rather whether
they are likely to be confused as to their source. In re Anderson, 101 USPQ2d 1912,
1919 (TTAB 2012). Therefore, to support a finding of likelihood of confusion, it is not
necessary that the services be identical or even competitive. It is sufficient that the
services are related in some manner, or that the circumstances surrounding their
marketing are such that they would be encountered by the same persons in situations
that would give rise, because of the marks, to a mistaken belief that they originate
from the same source or that there is an association or connection between the sources
of the services. In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009).
We must make our determination regarding the similarities between the services
based on how they are identified in the subject application and cited registration,
respectively, not on any extrinsic evidence of actual use. Stone Lion Capital Partners,
LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014). A
Serial No. 86812446
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likelihood of confusion may be found with respect to a particular class based on any
item within the identification of services for that class. Tuxedo Monopoly, Inc. v. Gen.
Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
Among the services recited by Registrant, those the Examining Attorney identifies
as relevant include “arranging and conducting of concerts.” As noted supra,
Applicants’ identified services are:
Fan clubs for the musical band, known for their many
songs about beer, whiskey and hot girls, that is a three
piece southern rock and country band, with all three
members born and raised in Nashville, Tennessee, and best
friends since middle school, and who put on loud, hard-
rocking live shows, and whose fans refer to them as the best
live band on the planet.
Applicants’ fan club services pertain to a “musical band” that puts on “live shows,”
which overlaps at least with Registrant’s identified services “arranging and
conducting of concerts.”
The Examining Attorney introduced evidence that third-party musical bands and
performers offer concert and fan club services – the types of services identified by
Registrant and Applicants, respectively – under a single mark. To list a few examples:
• MAROON 5, offering fan club services and marketing the band’s live
shows.4
• MARIAH CAREY, official fan club site also providing information about the
singer’s concerts.5
• BLAKE SHELTON, offering fan club services and listing concert dates.6

4 June 23, 2016 Final Office Action at TSDR 16-25 (from maroon5sin.com).
5 March 4, 2016 Office Action at TSDR 59-65 (from forum.mariahcarey.com).
6 June 23, 2016 Final Office Action at TSDR 8-15 (from blakeshelton.com).
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This evidence establishes that fan club services are related to “arranging and
conducting of concerts.”
Applicants argue that the record evidence does not prove relatedness because the
third-party services do not pertain to the band The Cadillac Three:
In short, the fact that musical artists have fan clubs and
also provide information specific to that artist is not at all
probative of whether anyone (who would have to be a fan
of The Cadillac Three in order to encounter both marks)
would be confused as to the source of Applicant[s’] fan club
and the registrant’s services, based solely on the minimal
similarity between the marks (where the meanings of
“TC3” are, as discussed above, completely different).
Appeal Brief, 4 TTABVUE 4. This argument overlooks the fact that although
Applicants’ fan club services are narrowly identified in an attempt to describe just
one band, Registrant’s more broadly identified services “arranging and conducting of
concerts” may concern any musical artist putting on live shows. We find that the
evidence shows the respective identified concert and fan club services to be related.
Based on the record before us, the second du Pont factor also favors a finding of a
likelihood of confusion.
We have carefully considered all evidence of record and Applicants’ arguments as
they pertain to the relevant du Pont factors. We treat any du Pont factors for which
there is no record evidence as neutral. In view of our findings that the marks are
similar and the services are related, we find that Applicants’ mark is likely to cause
confusion with the mark in cited Registration No. 4779452 when used in association
with Applicants’ identified services.
Decision: The refusal to register Applicants’ mark is affirmed.