Lil Fats, Inc. dba Coast 2 Coast Mixtapes

Trademark Trial and Appeal Board

Aug 8, 2013

No. 85404979 (T.T.A.B. Aug. 8, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
August 8, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Lil Fats, Inc. dba Coast 2 Coast Mixtapes
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Serial No. 85404979
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Cassandra Spangler for Lil Fats, Inc. dba Coast 2 Coast Mixtapes.

Howard Smiga, Trademark Examining Attorney, Law Office 102 (Mitchell Front,
Managing Attorney).
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Before Kuhlke, Taylor and Mermelstein, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, Lil Fats, Inc. d/b/a Coast 2 Coast Mixtapes, filed an application to
register on the Principal Register the mark COAST 2 COAST in standard
characters for services ultimately identified as “Arranging and conducting nightclub
entertainment events in the nature of ‘music industry mixer’ networking events;
Arranging and conducting nightclub entertainment events in the nature of live
competitions by rap, hip-hop, and urban artists and DJs; Providing a website for
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entertainment purposes where users can view and submit songs, videos and photos
featuring musical bands and artists,” in International Class 41.1
Registration has been refused under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), on the ground that applicant’s mark, when used with its identified
services, is likely to cause confusion, mistake or deception with the following
registered marks:
COAST2COAST in standard characters for “entertainment services,
namely, a continuing variety show featuring live audiences broadcast
over television, satellite, internet, audio and video media” in
International Class 41, Registration No. 3812275, issued on June 29,
2010 on the Supplemental Register to Melvin J. Laney; and

COAST TO COAST BLUES BAND in standard characters, BLUES
BAND disclaimed, for “entertainment, namely, live performances by a
musical band” in International Class 41, Registration No. 3613653,
issued on April 28, 2009 on the Principal Register to Glenn
Herskowitz.

When the question is likelihood of confusion, we analyze the facts as they
relate to the relevant factors set out in 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 (Fed. Cir. 2003). In any likelihood of
confusion analysis, 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 1098, 192 USPQ 24 (CCPA 1976).

1 Application Serial No. 85404979, filed on August 23, 2011, based on allegations of first use
on May 1, 2004 and first use in commerce on May 1, 2009, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a).

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We turn first to a consideration of the services, channels of trade and class of
purchasers. We must make our determinations under these factors based on the
services as they are recited in the registrations and application. See In re Elbaum,
211 USPQ 639 (TTAB 1981). We base our evaluation on the goods as they are
identified in the registrations and application. In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). It is settled that it is not necessary that the respective
services be identical or even competitive in order to find that they are related for
purposes of our likelihood of confusion analysis. That is, the issue is not whether
consumers would confuse the services themselves, but rather whether they would
be confused as to the source of the services. See In re Rexel Inc., 223 USPQ 830
(TTAB 1984).
The examining attorney argues that “the [identified] services of the parties
could well be presumed to be from the same source inasmuch as the services of the
parties relate to music entertainment and live musical performances” and
applicant’s evidence “that the services of the parties are targeted to a limited and
distinct genre within the music industry is irrelevant.”2

2 E.A. Br. pp. 12-13.
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Applicant counters that “the fact that goods or services are offered in the
same general industry ... is not dispositive in an analysis of their similarity and
nature.”3
The examining attorney bases his argument on the general statement that
the services all encompass musical entertainment. However, while the services are
all generally in the field of music or could encompass music, the services are quite
different. Applicant is not a band providing live performances which is the sole
service in Registration No. 3613153. Moreover, there is nothing in the record to
connect the services of providing networking events, live competitions or a website
for viewing and submitting videos and photos featuring various bands and artists,
to being a band providing live musical performances.4
Applicant is also not a variety show which is defined as “entertainment
consisting of a series of short unrelated performances or acts, such as comedy turns,
songs, dances, sketches, etc.”5 While, as identified, registrant’s “variety shows”
could encompass all types of musical and dance entertainment, it does not clearly
encompass a live competition or networking event. Arguably, perhaps, a variety
show could include a short act that consists of a nightclub live competition, but we

3 App. Br. p. 5.

4 While a band, like every other business entity, may have a website to post its own clips,
we do not consider this to create a per se relationship to the service of providing a website in
the field of music for viewing and posting various artists.

5 Collins English Dictionary (10th ed. 2009) retrieved from www.dictionary.com. The Board
may take judicial notice of dictionary definitions. In re Red Bull GmbH, 78 USPQ2d 1375,
1378 (TTAB 2006). See also University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).

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are concerned with likelihood of confusion not “mere theoretical possibilities of
confusion, deception, or mistake or with de minimis situations but with the
practicalities of the commercial world, with which the trademark laws deal.”
Electronic Design & Sales, Inc. et al v. Electronic Data Systems Corporation, 954
F.2d 713, 21 USPQ2d 1388, 1392 (Fed. Cir. 1992). Without evidence or further
explanation as to how applicant’s specific services are related to the registrants’
band or broadcast variety show, the record fails to establish that the services are
sufficiently related.
The examining attorney is correct that applicant’s contention that the
services of applicant and the registrants are targeted to distinct genres (hip hop and
rap v. blues and Alaskan culture)6 within the music industry is misplaced inasmuch
as there are no such limitations in the registrations or as to two of applicant’s
services.7 As is well-established we must make our determination on the services as
identified and the identifications of services in the registrations and in the
application for the networking events and the website are not limited to any
particular genre of music. See In re Bercut-Vandervoort & Co., 229 USPQ 763, 764
(TTAB 1986). However, as discussed above, the nature of the services themselves is

6 Applicant submitted printouts of web pages purporting to be connected to the respective
registrants. With regard to Reg. No. 3615653, the web page indicates that COAST TO
COAST BLUES BAND is a tribute band to John Lee Hooker the renowned blues artist.
With regard to Reg. No. 3812275, the web page indicates that COAST2COAST is used in
connection with a locally broadcast television show in Alaska that features Alaskan politics
and culture and a Bob Hope impersonation. Resp. to Office Action (June 5, 2012) Exhs. B-
D.

7 Only the “live competitions” in applicant’s identification are modified by the genre of
music; the other services are separated by semi colons.
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sufficiently distinct to avoid likely confusion in these circumstances when the marks
are weak as discussed below.
Considering the channels of trade and classes of purchasers, the examining
attorney argues that we must presume overlapping trade channels in the absence of
limitations. However, the proper analysis is that we presume the respective
services will travel in and be offered to the ordinary channels of trade and classes of
consumers for the services identified in the application and the cited registrations.
There is no evidence to show what the ordinary channel of trade is for these types of
services or how they overlap. While they all presumably use the Internet to
advertise or provide their services, this alone is not sufficient to find that the trade
channels overlap in a manner that creates a likelihood of confusion.
With regard to the conditions of sale, applicant argues that consumers of
music are discriminating purchasers who exercise care to insure the goods or
services feature the music they seek.8 Applicant also argues that its services are
targeted toward artists and professionals within the music industry. However,
applicant’s customers, at least of the web services, would include the general music
consumer and the standard of care, for our analysis is that of the least sophisticated
purchaser. Alfacell Corp. v. Anticancer, Inc., 71 USPQ2d 1301, 1306 (TTAB 2004).
Nonetheless, we agree that music consumers would exercise some degree of care
and we find this factor to be neutral.

8 App. Br. p. 8.

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We next consider the marks and compare them “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.
We begin by noting that the phrase COAST TO COAST and its phonetic
equivalent COAST 2 COAST are, at a minimum, highly suggestive of all of the
services.9 “Coast to coast” is defined as “extending, going, or operating from one
coast of the U.S. to the other: a coast-to-coast television network.”10 Thus, the
marks all suggest the territorial scope of the services. We first consider the mark in
Reg. No. 3613653 COAST TO COAST BLUES BAND. Given the suggestive nature
of the phrase and the differences in the services we find that the addition of BLUES
BAND and the visual distinction presented by replacement of the “TO” with “2” to
be sufficient to distinguish the marks.
With regard the mark in Reg. No. 3812275 COAST2COAST, this mark is
nearly identical to applicant’s COAST 2 COAST mark and the additional spaces in
applicant’s mark do not distinguish the marks. Giersch v. Scripps Networks Inc., 90
USPQ2d 1020 (TTAB 2009) (spaces respondent used between words of mark did not
distinguish it from petitioner’s mark); In re 1st USA Realty Prof’ls, Inc., 84
USPQ2d 1581, 1586 (TTAB 2007) (similarity in sound alone may be sufficient to
find marks confusingly similar); In re White Swan Ltd., 8 USPQ2d 1534, 1535

9 Reg. No. 3812275 is registered on the Supplemental Register which indicates that
COAST2COAST is merely descriptive for the identified broadcast services.

10 Random House Dictionary (2013) retrieved from www.dictionary.com.

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(TTAB 1988). Thus, as to Registration No. 3812275 we find applicant’s and
registrant’s marks to be similar.
Applicant argues that the marks in the registrations are not famous. 11 There
is nothing in the record to support a finding of fame, and therefore, this factor is
neutral.
Applicant also argues under the du Pont factor concerning the number and
nature of similar marks in use on similar services, that confusion is not likely in
view of the two coexisting cited prior registrations. However, registrations have
little weight in determining the strength of a mark because they do not establish
that the registered marks identified therein are in actual use in the marketplace or
that consumers are accustomed to seeing them. See AMF Inc. v. Am. Leisure Prods.,
Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (CCPA 1973); In re Davey Prods. Pty
Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009). Moreover, prior decisions by examining
attorneys are not binding on the Board. In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001). However, as noted above the mark is
conceptually weak in that it is highly suggestive.
Applicant’s argument that there have been no known instances of actual
confusion is not persuasive. The contemporaneous use of applicant’s and
registrants’ marks for a period of approximately three years without actual
confusion is entitled to little weight. See Majestic Distilling Co., Inc., 65 USPQ2d at

11 We note that applicant’s statements regarding possible nonuse of the registered marks.
However, any possible abandonment of the mark in a cited registration is not relevant in
the context of an ex parte appeal and arguments on that point constitute an impermissible
collateral attack on the cited registration. Dixie Rests., 41 USPQ2d at 1534-35.
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1205 (“uncorroborated statements of no known instances of actual confusion are of
little evidentiary value”). See also In re Bisset-Berman Corp., 476 F.2d 640, 177
USPQ 528, 529 (CCPA 1973) (stating that self-serving testimony of applicant’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). The lack of evidence of actual confusion carries little weight, J.C. Hall
Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965),
especially in an ex parte context. In any event, there is no evidence of record to
indicate wide use of the registered marks and applicant argues that there is not
such wide use of the registered marks. Thus, it appears there have not been
meaningful opportunities for instances of actual confusion to have occurred in the
marketplace. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1847 (Fed. Cir. 2000); and Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768,
1774 (TTAB 1992). Accordingly, the du Pont factor of the length of time during and
conditions under which there has been contemporaneous use without evidence of
actual confusion is considered neutral.
Finally, under the catch-all thirteenth du Pont factor, applicant argues that
it “has increasingly become the victim of third parties attempting to capitalize on
this fame and goodwill by passing off their music-industry products as Applicant’s
… [and] believes it is highly relevant in order for the TTAB to understand
Applicant’s need for registered trademark protection, as well as the benefit to
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consumers which will be served in granting such registration.”12 Further, applicant
asserts that “confusion between Applicant’s Mark and unauthorized third-party
users poses a greater risk to consumers, which can be eradicated by approval of
Applicant’s Mark for publication, than any risk of confusion between Applicant’s
Mark and either cited prior mark which, for all of the reasons set forth herein,
Applicant submits is de minimis.”13
While we appreciate applicant’s concerns we must make our determination
based on the prior registrations.
In conclusion, because the services are different and the common element in
the marks is conceptually weak, confusion is not likely between applicant’s mark
COAST 2 COAST and the marks COAST TO COAST BLUES BAND and
COAST2COAST in the cited registrations.
Decision: The refusal to register is reversed.

12 App. Br. p. 13.

13 Id.