Live Nation Worldwide, Inc.

Trademark Trial and Appeal Board

May 9, 2018

No. 87240723 (T.T.A.B. May. 9, 2018)

Mailed: May 9, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Live Nation Worldwide, Inc.
_____

Serial No. 87240723
_____

Ellie Schwimmer, Esq. for Live Nation Worldwide, Inc.
Kara E. Jackson, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
_____

Before Cataldo, Wolfson and Adlin,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Live Nation Worldwide, Inc. (“Applicant”) seeks registration on the Principal
Register of the mark STARPLEX (in standard characters) for “Promoting live
entertainment events for others; business and event management of live
entertainment events; operation and management of live entertainment venues;
promoting ticket sales for live entertainment events, all of the foregoing not offered
at motion picture theaters” in International Class 35 and “Entertainment services,
This Opinion is Not a
Precedent of the TTAB
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namely, providing facilities for live entertainment events, all of the foregoing not
offered at motion picture theaters” in International Class 41.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a likelihood of
confusion with the standard character mark STARPLEX CINEMAS (Registration
No. 3886164) for “motion picture theaters.”2
After the Trademark Examining Attorney made the refusal final, Applicant filed
a Request for Reconsideration and appealed to this Board. Following the Examining
Attorney’s denial of the Request for Reconsideration, the appeal resumed. We affirm
the refusal to register.
I. EVIDENTIARY OBJECTION
The Examining Attorney objects to evidence submitted for the first time with
Applicant’s brief. Applicant points out, however, that it has only submitted “more
complete excerpts from the websites relied upon by the Examiner.”3 With its brief,
Applicant submitted copies of additional web pages from websites that were, in part,
already in the record, having been submitted by the Examining Attorney as
attachments to the December 12, 2016 and February 15, 2017 Office Actions and the
September 1, 2017 denial of the Request for Reconsideration (compare, e.g., printouts

1 Application Serial No. 87240723 was filed on November 17, 2016, under Section 1(b) of the
Trademark Act, based upon Applicant’s allegation a bona fide intent to use the mark in
commerce.
2 Registered on December 7, 2010; Sections 8 and 15 combined declaration accepted and
acknowledged. The term “CINEMAS” is disclaimed.
3 Applicant’s Reply Brief, 11 TTABVUE 2.
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from www.rocklandstrand.com (12/12/16 Office Action at 8-19),
www.franklintheatre.com (id. at 20-36), and http://acdh.arlingtondrafthouse.com
(denial of Request for Reconsideration, 5 TTABVUE 5) with additional pages supplied
by Applicant at 8 TTABVUE 106-111 (rocklandstrand.com); 8 TTABVUE 116
(franklintheatre.com) and 8 TTABVUE 122-3 (acdh.arlingtondrafthouse.com)). We
agree with Applicant that the additional excerpts it submitted show that potential
consumers may have been exposed to fuller detail about the venues discussed in the
webpages. Cf. In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818, 820 (Fed.
Cir. 1986) (court considered applicant’s submission of more extensive excerpts,
showing “additional and qualifying text,” of articles first placed in the record by
Examining Attorney during prosecution, noting that “[t]he Board erred in considering
the examiner’s fragment while refusing to permit the applicant to place that fragment
in context.”); TBMP § 1207.01 (June 2017) (if applicant or the examining attorney
submits excerpts from articles during examination, the nonoffering party may submit
the complete article, even if such submission is made after the appeal is filed). The
additional webpages attached to Applicant’s brief are thus admissible and we have
considered them for whatever probative value they have.4 Applicant’s request for

4 Of the 26 Exhibits that Applicant submitted with its appeal brief, at least twelve of them
are identical to exhibits that were previously submitted. There is no useful reason for
submitting materials that have already been made of record. See In re Thor Tech Inc., 85
USPQ2d 1474, 1475 n.3 (TTAB 2007); Trademark Rule 2.142(b)(3), 37 C.F.R. § 2.142(b)(3);
cf. Trademark Rule 2.122(a), 37 C.F.R. § 2.122(a) (“When evidence has been made of record
by one party in accordance with these rules, it may be referred to by any party for any purpose
permitted by the Federal Rules of Evidence.”). The better practice, as contemplated by
Trademark Rule 2.142(b)(3), is to cite to evidence in the electronic application record by name
of the document under which the evidence has been submitted (e.g., Office Action, final Office
Action, Request for Reconsideration, Denial of Request for Reconsideration) and the date;
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suspension of the appeal and remand of the application for further examination is
denied as moot.
II. LIKELIHOOD OF CONFUSION
Our determination of likelihood of confusion is based on an analysis of all of 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) (“du Pont”); 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, though not exclusive,
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); In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d
1531 (Fed. Cir. 1997).
A. THE MARKS
We consider whether Applicant’s STARPLEX mark and Registrant’s STARPLEX
CINEMAS mark are similar or dissimilar when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial impression. See Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160
(Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)). While our

applicants should also provide the page number(s) in the document where the specific
evidence can be found. To facilitate access, an applicant may download a .pdf copy of any
document in the electronic record and refer to pages within the document according to the
page numbering as generated by the download process; in such case, the applicant should
indicate that it is numbering pages according to their sequence in the downloadable .pdf
version of the document.
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decision must be based on the entire marks, not just part of the marks, “in
articulating reasons for reaching a conclusion on the issue of confusion, 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
consideration of the marks in their entireties.” In re Nat’l Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985). The proper focus is on the recollection of the
average purchaser, who normally retains a general rather than a specific impression
of trademarks. See Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470
(TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016); Sealed
Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Because Applicant
promotes and manages live entertainment events and Registrant provides “motion
picture theaters,” the relevant customer is an ordinary consumer who is interested in
attending entertainment events and movies.
The marks share the term “STARPLEX,” which is the dominant term in
Registrant’s mark and the only term in Applicant’s mark. In Registrant’s mark,
STARPLEX is also its first term. The first part in a mark may have more source-
identifying significance than the remainder, as it is “often the first part of a mark
which is most likely to be impressed upon the mind of a purchaser and remembered.”
Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)
(KIDWIPES confusingly similar to KID STUFF). See also Palm Bay Imps., 73
USPQ2d at 1692 (“The presence of this strong distinctive term as the first word in
both parties’ marks renders the marks similar, especially in light of the largely
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laudatory (and hence non-source identifying) significance of the word ROYALE.”).
The term STARPLEX is also distinctive, whereas the word CINEMAS in Registrant’s
mark is merely descriptive, if not generic,5 for Registrant’s services, and has been
disclaimed in Registrant’s mark. Although there is no mechanical test to select a
“dominant” element of a composite word mark, consumers would be more likely to
perceive a fanciful or arbitrary term which comes first as source-identifying, rather
than a descriptive or generic term modifier which comes second. See, e.g., In re Dixie
Rests., 41 USPQ2d at 1533-34 (affirming TTAB’s finding that “DELTA,” not the
disclaimed generic term “CAFE,” is the dominant portion of the mark THE DELTA
CAFE). The addition of the term CINEMAS to Registrant’s mark is insufficient to
distinguish the marks.
Applicant argues that because Registrant’s mark contains the term CINEMAS,
the “meaning of Registrant’s mark indicates very clearly motion picture theaters, and
not live entertainment.” 8 TTABVUE 21. Furthermore, Applicant points out that the
suffix “-plex” suggests a “multiplex,” defined as a “complex that houses several movie
theaters”6 while Applicant’s services are expressly “not offered at motion picture
theaters.” To the extent the suffix “-plex” in the term STARPLEX conjures up the

5 The terms “cinema” and “motion picture theater” are interchangeable. Applicant submitted
pages from the Merriam-Webster.com online dictionary defining “cinema” as, inter alia, “a
motion–picture theater” and an article from Wikipedia, which equated a “movie theater” with
a “cinema.” At www.merriam-webster.com/dictionary/cinema, January 24, 2017, Response
to Office Action at 12. Wikipedia entry at https://en.wikipedia.org/wiki/Movie_theater, id. at
14-28. Citations to evidence contained in prosecution history documents are to the
downloadable .pdf version of the documents.
6 At https://www.merriam-webster.com/dictionary/multiplex, January 24, 2017 Response to
Office Action at 30.
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idea of a multi-use facility, however, it has the same connotation in Applicant’s mark
as it does in Registrant’s mark.7 As the Examining Attorney points out, Applicant’s
STARPLEX mark “is likely to appear to prospective purchasers as a shortened form
of registrant’s mark.” 10 TTABVUE 6.
Considering the marks in their entireties, given the resemblance in sound,
appearance, connotation, and commercial impression, we find that Applicant’s mark
is similar to the cited mark. Accordingly, the first du Pont factor regarding the
similarity of the marks weighs in favor of a likelihood of confusion.
B. THE SERVICES
We next turn to the similarity or dissimilarity and nature of the services as they
are identified in the application and cited registration. See Stone Lion, 110 USPQ2d
at 1161; Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001,
1004 (Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937,
16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The services need not be identical or even
competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online
Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000). They need only be
“related in some manner and/or if the circumstances surrounding their marketing
[be] such that they could give rise to the mistaken belief that [the services] emanate
from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,

7 The definition of “cinema” includes “a motion-picture theater.” At https://www.merriam-
webster.com, Exhibit A attached to Applicant’s January 24, 2017 Response.
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101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83
USPQ2d 1715, 1724 (TTAB 2007)).
Applicant’s services are “promoting live entertainment events for others; business
and event management of live entertainment events; operation and management of
live entertainment venues; promoting ticket sales for live entertainment events, all
of the foregoing not offered at motion picture theaters” and “entertainment services,
namely, providing facilities for live entertainment events, all of the foregoing not
offered at motion picture theaters.” Registrant’s services are “motion picture
theaters.” Applicant points out that its services have been limited to exclude services
provided by motion picture theaters, and argues that “live entertainment events,
which generally involve a stage, extensive lighting and sound apparatus, relating of
performers to the audience, and the uniquely unpredictable elements that come with
performing live, are very different from motion pictures (a.k.a. movies), which are
projected onto a large screen with pre-recorded audio played over a sound system.” 8
TTABVUE 9. However, the issue is not whether consumers would confuse live
entertainment events with motion pictures, but rather whether there is a likelihood
of confusion as to the source of the respective services. In re Davia, 110 USPQ2d 1810,
1814 (TTAB 2014). The screen captures from third-party motion picture theater
websites submitted by the Examining Attorney demonstrate that confusion is likely,
as shown by the following examples:8

8 The Examining Attorney also submitted copies of two news articles describing the advent
of motion picture theaters’ inroads into live entertainment: R. Verrier, “Movie theaters make
play for more live events -- Cinemas want to feature concerts, sporting events and even TV
shows as they seek to broaden their base,” The Portland Press Herald, March 29, 2014
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• Strand Theater. The Strand is a motion picture theater
that also provides facilities for live events.9 It advertises
itself as a multi-use venue “offering … cinema, live musical
performances & concerts, comedy, conferences.”

10

(reporting on the growing trend of motion picture theaters hosting alternative content on
their screens, including live entertainment). At www.pressherald.com/, attached to February
25, 2017 final Office Action at 117-119. See also R. Verrier, “Movie theaters turn to live event
screenings to fill seats,” Los Angeles Times, April 20, 2010. At http://articles.latimes.com/, id.
at 120-122. While the type of live entertainment discussed in these articles appears to be live
broadcasts, the fact that a motion picture theater is broadcasting live events on the same
screen on which it shows movies corroborates our finding that the services are related.
9 At http://www.rocklandstrand.com/events/live, December 12, 2016 Office Action at 8-19.
10 Id., at 12-13.
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• Franklin Theater. Franklin Theater is a motion picture
theater that also provides live theater.11
12
13

11 At http://www.franklintheatre.com/tickets/movies/, December 12, 2016 Office Action at 20-
36.
12 Id. at 20.
13 Id. at 22.
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• Arena Theater. Arena Theater also is a motion picture
theater that offers live entertainment events.14

14 At http://www.arenatheater.org/#, February 15, 2017 Office Action at 66-78.
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Applicant argues that most of the examples offered by the Examining Attorney to
show the relatedness of the services are multi-use facilities: “[w]here the evidence
shows or involves actual motion picture theaters, they are either part of enormous
entertainment destinations that provide everything from shopping to
accommodations to museums, or do not offer live entertainment events at all.”15
Applicant’s arguments are not persuasive. The majority of motion picture theater
websites of record, like those cited above, are not multiplexes, but rather single-
complex theaters that offer movies and live entertainment.16 Indeed, Applicant’s
additional webpages submitted with its appeal brief include additional examples of
motion picture theaters that also offer live entertainment:
• The Arlington Cinema and Drafthouse webpages note the “Drafthouse is a
historic 1930’s Art Deco Theater that has been converted into a comfortable
unique restaurant/theater … Our live entertainment includes comedians,
karaoke, family friendly entertainment theater and MORE!”17

• The Franklin Theatre webpage states “the new Franklin Theatre continues
the cherished tradition of showing movies, but also adds a new dimension
to Main street – live music.”18

15 8 TTABVUE 10.
16 Only two of the 19 website venues appear to be motion picture theaters that may not offer
live entertainment events. Enzian, at http://enzian.org, is a restaurant that shows movies
and rents out space for corporate meetings but may not produce live events, 8 TTABVUE 95
and Colusa Theatre is a movie theater that rents out space but may not produce live events,
8 TTABVUE 99.
17 At http://acdh.arlingtondrafthouse.com, 8 TTABVUE 122-3. The page submitted by the
Examining Attorney shows that the venue can be rented for “advance screenings [and]
private movie viewing parties.” 5 TTABVUE 5.
18 At www.franklintheatre.com, 8 TTABVUE 116.
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Moreover, that many other types of facilities (such as airlines and cruise ships)
show movies but are not considered motion picture theaters, has no bearing on the
issue of whether a consumer of motion picture theater services would mistakenly
believe that a provider of live entertainment under the same name is connected,
affiliated, or sponsored by the motion picture theater. Further, the third-party
registrations submitted by Applicant to show that the Office has registered the same
mark for motion picture theater services and live entertainment services are of little
probative value.19 In the majority of them, the marks are clearly distinguishable.20
The single pair of registrations for the mark PREMIER for “movie theater services”
on the one hand and “promotion of live or recorded events” on the other,21 is
insufficient to support a finding that the services are not related.
The second du Pont factor favors a finding of likelihood of confusion.
C. CHANNELS OF TRADE; CONSUMERS
The evidence presented by the Examining Attorney demonstrates that motion
picture theaters may also present live entertainment and motion pictures on the

19 Request for Reconsideration, 4 TTABVUE 34-130. Applicant submitted 30 registrations,
and one application. The application has been disregarded. Third-party applications are
evidence only of the fact that they have been filed. Interpayment Servs. Ltd. v. Docters &
Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003).
20 For example, Reg. No. 5076088 for the mark MOVIES INC. and design, Reg. No. 4600533
for the mark LIKE THE MOVIES, and Reg. No. 3774817 for the mark MAKIN’ MOVIES.
21 Reg. No. 2767154 for PREMIER for “movie theater services.” The complete recitation of
services of Reg. No. 3913155 for PREMIER is “Promotion of live or recorded events, television,
radio, internet, and pod cast programs for others and promoting merchandise related thereto;
business and event management and organization of musical, theatrical, night dub,
educational, cultural, and family/variety tours and presentations; operation and
management of venues; retail store services featuring artist, performer and tour-related
merchandise and collectibles; promoting ticket sales and VIP privileges for live
entertainment events.” 4 TTABVUE 42.
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same stage and at the same venue. Thus, the trade channels are identical. As for the
consumers of Applicant’s and Registrant’s services, despite Applicant’s limitation of
its services to those “not offered at motion picture theaters,” consumers are ordinary
purchasers who exercise only average care. The third and fourth du Pont factors favor
a finding of likelihood of confusion.
D. ALLEGED CO-EXISTENCE OF THIRD-PARTY VENUE
Applicant argues that an outdoor performance venue, known from 1988 to 1998
as the Coca-Cola Starplex Amphitheater, and from 1998 to 2000 as the Starplex
Amphitheater (hereinafter “Starplex Amphitheater”), was operating in Dallas, Texas
at the time (in 1995) when Registrant started using its STARPLEX CINEMAS
mark.22 Applicant assumes: that the Starplex Amphitheater “undoubtedly enjoyed
residual goodwill in the ‘Starplex’ name”23 from its use of the term since 1988, even
though from 2000 to 2017 the venue appears not to have had the term STARPLEX in
its name;24 and that Registrant likely “knew about the Starplex [Amphitheater] when
it applied to register STARPLEX CINEMA [sic], and did not believe there would be a
conflict in the marketplace.”25 Applicant’s assumptions about the purported

22 8 TTABVUE 8.
23 8 TTABVUE 8.
24 At http://www.fox4news.com, the article “Fair Park concert venue to be known as Starplex,
again,” notes that the site was renamed in 2000 as the Smirnoff Music Center, that it changed
its name in 2008 to the Superpages.com Center, and that it has been called the Gexa Energy
Pavilion since 2011. Request for Reconsideration, 4 TTABVUE 158.
25 8 TTABVUE 8. Applicant does not contend that it is related to the Starplex Amphitheater,
but points to news articles discussing the naming of the venue that suggest Applicant
operates it. See, e.g., Mollie Jamison, “A Brief Look at the Naming Rights History of Gexa
Energy Pavilion, Recently Renamed Starplex,” DALLAS OBSERVER, January 4, 2017
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coexistence of the third-party venue with Registrant are irrelevant. Even if the
Starplex Amphitheater was in continuous operation under names including the term
STARPLEX from 1988 until the present, one third-party use does not establish
commercial weakness. This factor is neutral or at best weighs only slightly in
Applicant’s favor.
III. SUMMARY
Applicant’s mark STARPLEX is likely to cause confusion, mistake or deceive
consumers of movie and live event services because Applicant’s mark and
Registrant’s mark are highly similar in appearance and pronunciation and are
similar in connotation and overall commercial impression. The evidence shows that
motion picture theaters commonly provide live entertainment and screen movies.
Prospective consumers familiar with Registrant’s mark STARPLEX CINEMAS
would be likely, when confronted with Applicant’s mark STARPLEX, to believe that
Applicant’s and Registrant’s services emanate from the same source.
Decision:
The refusal to register Applicant’s mark under Trademark Act Section 2(d) is
affirmed.

(“News recently broke that the Live Nation-operated concert venue will now go by Starplex
Pavilion, a name similar to its 1998 title, Starplex Amphitheater.”).