Leon Hughes, Sr.

Trademark Trial and Appeal Board

Jul 6, 2015

No. 86079547 (T.T.A.B. Jul. 6, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: July 6, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Leon Hughes, Sr.
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Serial No. 86079547
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Matthew H. Swyers of The Trademark Company,
for Leon Hughes, Sr.,
Cory Boone, Trademark Examining Attorney, Law Office 104,
Chris Doninger, Managing Attorney.
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Before Kuczma, Greenbaum and Masiello,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Leon Hughes, Sr. (“Applicant”) seeks registration on the Principal Register of the
mark LEON HUGHES’ COASTERS (in standard characters) for
Live performances by a musical group 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), citing

1 Application Serial No. 86079547 was filed on October 1, 2013, based upon Applicant’s
claim of first use anywhere and use in commerce since at least as early as 1999. The name
shown in the mark, LEON HUGHES, identifies Applicant Leon Hughes, Sr., whose express
consent to register is of record. October 5, 2013 Voluntary Amendment.
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Registration No. 2146911 as a bar to registration. Registration No. 2146911 owned
by The Original Coasters, Inc. is for the mark THE COASTERS (in standard
characters) for “entertainment services in the nature of a musical group” in
International Class 41.2
After the refusal to register was made final, Applicant appealed to this Board,
and Applicant and the Examining Attorney filed briefs. For the reasons set forth
below, the refusal to register is affirmed.
I. Likelihood of Confusion
Applicant contends that in view of the differences between the marks due to the
name LEON HUGHES’ being included as part of his mark, the differences in his
services and those in the cited registration, and the sophistication of the purchasers,
there is no likelihood of confusion.
Our determination under § 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., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). Not all of the du Pont factors are relevant to every case,
and only factors of significance to the particular mark need be considered. In re
Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010).

2 Registration No. 2146911 issued on March 31, 1998; renewed.
Serial No. 86079547
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We carefully considered all of the evidence of record as it pertains to the relevant
du Pont factors, as well as Applicant’s arguments (including any evidence3 and
arguments not specifically discussed in this opinion). To the extent that any other
du Pont factors for which no evidence or argument were presented may nonetheless
be applicable, we treat them as neutral.
A. Similarity of the Marks
We consider the first du Pont factor focusing on the similarity or dissimilarity of
the marks in their entireties as to appearance, sound, connotation, and commercial
impression. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012); du Pont, 177 USPQ at 567. In comparing the marks, we are mindful that 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 impression so that confusion as to the source of the goods offered
under the respective marks is likely to result. San Fernando Elec. Mfg. Co. v. JFD
Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); In re
Cook Medical Technologies LLC, 105 USPQ2d 1377, 1381 (TTAB 2012).
Although registrant’s mark begins with the word “The,” the definitive article
“the” at the beginning of mark does not generally affect or otherwise diminish the
overall similarity between the marks. See In re Thor Tech Inc., 90 USPQ2d 1634,
1635 (TTAB 2009) (the addition of the word “the” at the beginning of the registered

3 While the Brief of the Applicant at p. 10 (4 TTABVUE 11) refers to “the attached
affidavit,” no affidavit was filed with the Brief. Moreover, even if an affidavit was filed with
the Brief, it would not have been given any consideration. Trademark Trial and Appeal
Board Manual of Procedure § 1207.01 (June 2015).
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mark does not have any trademark significance); In re The Place Inc., 76 USPQ2d
1467, 1468 (TTAB 2005) (the definite article THE and the generic term BAR are not
distinctive terms, and add no source-indicating significance to the mark as a whole).
Looking at registrant’s mark, THE COASTERS, the inclusion of the word “THE” in
the beginning of registrant’s mark is not distinctive and does not serve to
distinguish the mark.
Applicant’s mark and registrant’s mark are similar, in part, in appearance,
sound and meaning due to the COASTERS portion of each mark. However, we are
mindful that we must consider the entire marks, including the presence of the name
“LEON HUGHES’” in Applicant’s mark, in light of the evidence of record to
determine their commercial impressions.
Applicant argues the marks at issue do not create the same appearance, sound,
connotation and commercial impression. Applicant’s mark “is clearly focusing on the
fact that this is Leon Hughes’ version of ‘The Coasters’ band, which he was once a
part of.”4 In essence, due to his former membership as one of the singers in The
Coasters, Applicant maintains that the additional element of his name (in the
possessive form) in the mark LEON HUGHES’ COASTERS creates a different
commercial impression from THE COASTERS.5
The mere addition of a term or name to a registered mark generally does not
obviate the similarity between the marks nor does it overcome a likelihood of

4 Response to Office Action, p. 4, attached to Petition to Revive Abandoned Application filed
July 14, 2014.
5 Brief of the Applicant p.8 (4 TTABVUE 9).
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confusion under Trademark Act Section 2(d). See In re Chatam International Inc.,
380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (GASPAR’S ALE and JOSE
GASPAR GOLD); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d
556, 188 USPQ 105 (CCPA 1975) (BENGAL and BENGAL LANCER); Lilly Pulitzer,
Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (CCPA 1967) (THE LILLY and
LILLI ANN); In re Riddle, 225 USPQ 630 (TTAB 1985) (ACCUTUNE and
RICHARD PETTY’S ACCU TUNE); Nina Ricci S.A.R.L. v. Haymaker Sports Inc.,
134 USPQ 26, 28 (TTAB 1962) (persons familiar with NINA RICCI or RICCI for
women’s apparel would logically assume that women’s clothing bearing RICCI OF
HAYMAKER emanates from same source or is connected in some way).
Customers who see or hear Applicant’s mark are likely to assume that it simply
identifies what had previously been an unidentified anonymous source behind
registrant’s mark. Seeing the mark LEON HUGHES’ COASTERS, even those
customers who recognize the name Leon Hughes as a former member of THE
COASTERS could likely think that he is reunited with THE COASTERS singing
group. Thus, the addition of the name LEON HUGHES’ to the otherwise nearly
identical COASTERS portion of Applicant’s mark does not avoid a likelihood of
confusion with THE COASTERS.6 Instead, it likely suggests that Applicant’s
services are related to registrant’s services or that registrant’s services are related
to Applicant’s services. See, e.g., In re Riddle, 225 USPQ at 632 (finding RICHARD
PETTY’S ACCU TUNE and design for automotive service centers specializing in

6 Applicant does not argue, and we do not see, that the inclusion of an apostrophe after the
name LEON HUGHES has any significance regarding source.
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engine tune-ups and oil changes likely to cause confusion with ACCUTUNE
automotive testing equipment) and 4 J. Thomas McCarthy, MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION § 23:43 (4th ed. June 2015).
Applicant argues that when comparing the marks, the Examining Attorney did
not consider the marks in their entireties. While marks are compared in their
entireties in a likelihood of confusion analysis, one feature of a mark may be more
significant or dominant in creating a commercial impression. See In re Viterra Inc.,
101 USPQ2d at 1908; In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985). The term “COASTERS” in Applicant’s mark is arbitrary as applied
to a musical group, and accordingly it is at least as significant as LEON HUGHES
for purposes of indicating the source of the underlying services. The fact that both
marks feature this highly important element makes them confusingly similar as
indicators of source. Moreover, the use of Applicant’s name, LEON HUGHES’, in his
applied-for mark may only tend to increase and not decrease the likelihood of
confusion, mistake or deception by suggesting that Applicant is now the source of,
or at minimum affiliated with, THE COASTERS vocal group.7 Saks & Co. v. TFM
Industries Inc., 5 USPQ2d 1762, 1764 (TTAB 1987); In re Christian Dior, S.A., 225
USPQ 533, 535 (TTAB 1985).

7 As Applicant admits, he was once a member of The Coasters singing group. See Brief of
the Applicant p. 8 (4 TTABVUE 9); Response to Office Action p. 4 submitted with Petition
to Revive Abandoned Application, and Exhibit A to Affidavit of Leon Hughes submitted
therewith. This fact only increases the likelihood that customers may mistakenly perceive a
continuing association between the two.
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Given the identity of the “COASTERS” portions of both marks and the absence
of any evidence showing that this term is weak or diluted, we accord the cited
registered mark an ordinary scope of protection in our likelihood of confusion
analysis. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108, 109 (CCPA 1974); In re Colonial Stores, Inc., 216 USPQ 793, 795 (TTAB 1982).
Therefore, in view of the foregoing, the marks LEON HUGHES’ COASTERS and
THE COASTERS are similar in sight, sound, meaning and commercial impression.
B. Similarity of Services
We next consider the second du Pont factor, namely, the similarity of the
services. It is well-settled that the issue of likelihood of confusion between applied-
for and registered marks must be determined on the basis of the goods and services
as they are identified in the involved application and cited registration. See Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1161 (Fed.Cir. 2014); Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473
F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
Here, Applicant’s services are “live performances by a musical group,” and the
services identified in the cited registration are “entertainment services in the
nature of a musical group.” While the recited services are nearly identical,
Applicant maintains that his services are marketed through live performances and
via his online website to fans intending to see Leon Hughes perform, while
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registrant’s services “appear[] to primarily be marketed to consumers interested in
seeing non-original members of the older band using THE COASTERS mark.”8
Notwithstanding Applicant’s argument and evidence regarding the actual scope
of his own services, Applicant’s services, as identified, are included within the scope
of the services identified in the cited registration for THE COASTERS.
C. Channels of Trade and Class(es) of Customers
We next consider whether the services travel in the same trade channels to the
same classes of customers. Because there are no limitations as to trade channels or
classes of customers in the identification of services in either the application at
issue or the cited registration, and because the services of Applicant and registrant
overlap, we must presume that the respective services travel through the same
channels of trade and are available to the same classes of customers for those
services. In re Viterra Inc., 101 USPQ2d at 1908; Edom Laboratories Inc. v. Lichter,
102 USPQ2d 1546, 1551-52 (TTAB 2012); In re Smith and Mehaffey, 31 USPQ2d
1531, 1532 (TTAB 1994).
In view of the foregoing, the du Pont factors of the similarity of the trade
channels and classes of customers favor a finding of likelihood of confusion.
D. Sophistication of Customers
While tickets to see Applicant perform are not necessarily purchased only by the
sophisticated “fans” identified by Applicant,9 even sophisticated customers are

8 See July 14, 2014 Petition to Revive Abandoned Application, Response to Office Action, p.
5, and Ex. 3, Affidavit of Leon Hughes, Sr., ¶ 4.
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subject to source confusion in view of the similarity of the marks. In re Total Quality
Group, Inc., 51 USPQ2d 1474, 1477 (TTAB 1999). Furthermore, because the marks
contain the same term “COASTERS,” even a sophisticated consumer who knows of
Applicant’s prior association with “The Coasters” would be susceptible to confusion
as to a possible continuation or renewal of such association.
Moreover, even if customers are sophisticated or knowledgeable, or exercise a
higher degree of care in a particular field, such as live musical group performances,
this does not necessarily mean that they are sophisticated or knowledgeable in the
field of trademarks or immune from source confusion, especially in cases such as the
instant one involving highly similar marks and nearly identical services. See, e.g.,
Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 110 USPQ2d at 1163;
Tobacco LP v. North Atlantic Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011);
In re Decombe, 9 USPQ2d 1812, 1814-1815 (TTAB 1988) (“Being knowledgeable
and/or sophisticated in a particular field does not necessarily endow one with
knowledge and sophistication in connection with the use of trademarks.”).
Thus, the sophistication of purchasers is neutral.
E. Absence of Actual Confusion
Applicant contends that he is not aware of any instances of actual confusion as
between the services offered in connection with his mark and the services offered
under the registered mark. Noting the length of time during which Applicant has

9 See July 14, 2014 Petition to Revive Abandoned Application, Ex. 3, Affidavit of Leon
Hughes, Sr., ¶ 3, 5.
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used his mark and has co-existed with the registered mark without confusion (i.e.,
since 1999), Applicant maintains that confusion is not likely.10
The fact that an applicant in an ex parte case is unaware of any instances of
actual confusion is generally entitled to little probative weight in the likelihood of
confusion analysis. The Board in such cases, and in this case, generally has no way
to know whether the registrant likewise is unaware of any instances of actual
confusion, nor is it usually possible to determine that there has been any significant
opportunity for actual confusion to have occurred. See, e.g., In re Opus One Inc., 60
USPQ2d 1812, 1817 (TTAB 2001); In re Jeep Corporation, 222 USPQ 333, 337
(TTAB 1984); In re Barbizon International, Inc., 217 USPQ 735, 737 (TTAB 1983).
In any event, Applicant’s uncorroborated statement of no known instances of
actual confusion is entitled to little weight. In re Cook Medical Technologies LLC,
105 USPQ2d 1377, 1383-84 (TTAB 2012); In re Bissett-Berman Corp., 476 F.2d 640,
177 USPQ 528, 529 (CCPA 1973) (self-serving testimony of appellant’s corporate
president’s unawareness of instances of actual confusion was not conclusive that
actual confusion did not exist or that there was no likelihood of confusion). While a
showing of actual confusion is highly probative, if not conclusive, of a high
likelihood of confusion, a lack of evidence of actual confusion carries little weight,
especially in an ex parte context. In re Majestic Distilling Co., 65 USPQ2d at 1205.

10 See Affidavit of Leon Hughes, ¶¶ 5 and 6, submitted as Exhibit 3 to July 14, 2014 Petition
to Revive Abandoned Application.
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F. Conclusion
Applicant’s mark is similar to the registered mark as they both contain the
identical distinctive word COASTERS. While the possessive of Applicant’s name,
LEON HUGHES’, is a difference between the marks, it does not result in marks
that are dissimilar for likelihood of confusion purposes, especially since Applicant
used to be a member of THE COASTERS vocal group.11 Potential customers seeing
Applicant’s mark are likely to assume that it identifies LEON HUGHES as a
member of, or appearing with, THE COASTERS. Because the marks are similar,
and the services are essentially identical and travel in the same trade channels to
the same customers, there is a likelihood of confusion between Applicant’s LEON
HUGHES’ COASTERS mark and THE COASTERS mark in the cited registration.

Decision: The refusal to register Applicant’s mark LEON HUGHES’
COASTERS is affirmed.

11 See Wikipedia attachments to October 18, 2013 Office Action.