Manwin Licensing International Sarl

Trademark Trial and Appeal Board

Nov 13, 2013

No. 85392503 (T.T.A.B. Nov. 13, 2013)

Mailed:
November 13, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Manwin Licensing International Sàrl
________

Serial Nos. 85390145 and 85392503
_______

Alexa L. Lewis of Mitchell, Silberberg & Knupp, LLP for
Manwin Licensing International Sàrl.

Eli J. Hellman, Trademark Examining Attorney, Law Office
112 (Angela Bishop Wilson, Managing Attorney).
_______

Before Seeherman, Bucher and Mermelstein, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

On August 8, 2011, Manwin Licensing International Sàrl
filed applications to register the marks XTUBE in standard
characters,1 and XTUBE and design, as shown below,2

1 Application Serial No. 85390145.
2 Application Serial No. 85392503.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. Nos. 85390145 and 85392503
2
for the following services:
video on-demand transmission services; video
broadcasting; electronic, electric, and digital
transmission of voice, data, and images, all in
the field of adult entertainment, in Class 38;
and

entertainment services, namely, providing a
website featuring non-downloadable video,
photographs, images, audio, and text in the field
of adult entertainment via a global computer
network, in Class 41.

Both applications assert first use and first use in
commerce on February 9, 2006.
The trademark examining attorney has refused
registration pursuant to Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), on the ground that applicant’s marks,
as used in connection with the identified services, so
resemble the mark XXXTUBE, in standard characters,
registered for the services set forth below,3 that they are
likely to cause confusion or mistake or to deceive:
entertainment services, namely, providing a web
site featuring adult-themed photographs and
videos; entertainment services, namely, providing
webcasts in the field of adult entertainment;
entertainment, namely, production of adult
entertainment videos and films, in Class 41.

Applicant has appealed the refusals in both
applications, and the appeals have been fully briefed.4

3 Registration No. 3605311, issued April 14, 2009.
4 We note applicant’s assertion in its reply briefs that,
because the examining attorney did not address particular
arguments made by applicant in its appeal briefs regarding the
Ser. Nos. 85390145 and 85392503
3
Because both appeals involve common issues of law and fact,
we are consolidating the appeals and issuing a single
decision. See TBMP § 1214. Citations to page
numbers/evidence, unless otherwise indicated, are to Serial
No. 85392503.
We affirm the refusals in both appeals.
Our determination of the issue 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). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003).
We turn first to a consideration of the services.
Applicant’s Class 41 services are “entertainment services,
namely, providing a website featuring non-downloadable
video, photographs, images, audio, and text in the field of
adult entertainment via a global computer network.” The

similarity of the marks, he has conceded these points. Applicant
has not submitted any case law to support this position, nor do
we accept it. Not discussing a particular argument on a du Pont
factor in a brief is not the same as conceding that the factor
favors the applicant. In his brief the examining attorney has
clearly stated that the marks are similar, and has discussed the
similarity in appearance, pronunciation, connotation and
commercial impression of the marks; the fact that he has not
addressed each assertion made by applicant in arguing against
this position does not mean that he agrees with all of them.

Ser. Nos. 85390145 and 85392503
4
services described in the cited registration are, inter
alia, “entertainment services, namely, providing a web site
featuring adult-themed photographs and videos.” These
services are legally identical. As such, they are presumed
to travel in the same channels of trade and be offered to
the same classes of consumers. In re Smith and Mehaffey.
31 USPQ2d 1531, 1532 (TTAB 1994). These du Pont factors
favor a finding of likelihood of confusion.
Applicant points out that its entertainment services
“also contemplate the provision of images, audio, and text”
(brief, p. 10). However, there is no requirement that
applicant’s services must be coextensive with those of the
registrant in order for us to find the services legally
identical. See Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981))
(likelihood of confusion must be found with respect to the
entire class of an application if there is likely to be
confusion with respect to any item that comes within the
identification of goods or services in the application).
Both applicant’s and the registrant’s services include
providing a website featuring adult-themed photographs and
video (or, as the applicant’s identification expresses it,
a website featuring video and photographs in the field of
adult entertainment).
Ser. Nos. 85390145 and 85392503
5
As for applicant’s Class 38 services, they are,
although not identical to the registrant’s Class 41
services, closely related to them, since they are in effect
two sides to the same coin; one service involves the
digital transmission of, inter alia, voice and images in
the field of adult entertainment, and the other involves
providing a web site featuring adult-themed photographs and
videos. Further, the registrant’s production of adult
entertainment videos and films provides the content for the
“video broadcasting and electronic, electric, and digital
transmission of voice and images in the field of adult
entertainment” identified in applicant’s application. The
complementary nature of the services is obvious.
In addition, the examining attorney has submitted
evidence, in the form of third-party registrations, to show
the relatedness of the services. These third-party
registrations include, in their identifications, services
of the type listed in applicant’s Class 38 identification,
e.g., video on demand transmission services, and the Class
41 services listed in the registrant’s identification,
e.g., providing a website featuring video and photographs.
See, for example, Registration Nos. 3517534, 4250331,
3884412, 4145084, 4262305 and 4186682. Third-party
registrations which individually cover a number of
Ser. Nos. 85390145 and 85392503
6
different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Moreover, the fact that applicant lists these Class 38
services as well as the same entertainment services as
those of the registrant in not only the subject
applications but in other registrations it owns, e.g.
Registration Nos. 4220491, 4244365 and 4228853, shows that
these types of services may emanate from a single source
under a single mark.5
In addition, applicant’s transmission and video
broadcasting services, which would encompass adult
entertainment subject matter, and its electronic, electric
and digital transmission of video, data and images in the
field of adult entertainment, would have the same consumers
as those viewing a website featuring adult-themed
photographs and video.
Thus, we find that applicant’s Class 38 services are
closely related to the registrant’s Class 41 services, and
that they can be encountered by the same classes of
consumers.

5 These registrations were made of record by the examining
attorney in the Office action mailed March 31, 2013.
Ser. Nos. 85390145 and 85392503
7
These du Pont factors favor a finding of likelihood of
confusion.
We turn next to the du Pont factor of the similarity
of the marks. First, we compare applicant’s mark XTUBE in
standard characters with the cited mark XXXTUBE. These
marks are extremely similar in appearance, differing only
by the additional XX at the beginning of the cited mark.
Applicant places great weight on this difference, arguing
that the XXX should be viewed as the dominant feature of
that mark because it appears at the beginning of the term.
On the other hand, applicant would not apply this
beginning-of-the-term approach to its mark, asserting that
TUBE is the dominant element because “tube” is slang for
television. Brief, p. 3-4.
To the extent that one element of the marks would be
considered dominant, we cannot agree with applicant that
the dominant element is different in the two marks. In
both marks, X or XXX describes the nature of the content of
the subject matter of the services, while TUBE is highly
suggestive of the manner in which the subject matter can be
watched. When used in connection with adult-themed
services, the X or XXX portion of the marks conveys the
same meaning, that of pornography, albeit “X” connotes a
less extreme degree of pornographic content than “XXX”
Ser. Nos. 85390145 and 85392503
8
does.6 See February 2, 2005 Los Angeles Times article,
www.latimes.com, submitted with November 29, 2011 Office
action, describing the features of single-X, double-X and
triple-X rated movies. Although consumers will recognize
the difference between XTUBE and XXXTUBE, and indeed may
pay particular attention to this portion of the mark to
identify the degree of pornography they are seeking, they
are not likely to view the number of X’s in the marks as
indicating separate sources for the services, but only the
nature of the content of the material transmitted or
provided. As a result, the differences between the marks
do not distinguish them as indicators of source. For
similar reasons, the differences in pronunciation of the
marks do not distinguish them either. Even if we assume

6 We are not persuaded by applicant’s argument that consumers
would see XTUBE as “part of a trend of recently coined words
beginning with the letter ‘x,’ such as ‘xtreme,’[and]
‘xtranormal’…. Brief, pp. 5-6 (citations to exhibits omitted).
First, as the examining attorney points out, in these examples
the letter “X” is merely substituted for “ex” in an actual word.
More importantly, the meaning that a mark conveys, or in this
case the letter X in the mark, must be assessed in connection
with the goods or services with which it is used. Cf. In re Polo
International Inc., 51 USPQ2d 1061 (TTAB 1999) (although “doc” is
defined as both “doctor” and “document” the relevant meaning will
be understood as document by the purchasing public in relation to
document management software). It is because the meaning of the
mark will depend on the goods or services with which the mark is
used that in some cases identical word marks have been found not
confusingly similar. See Coach Services Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (COACH when applied to
educational materials brings to mind someone who instructs
students, while COACH when used in connection with luxury leather
goods, brings to mind traveling by carriage).
Ser. Nos. 85390145 and 85392503
9
that consumers will pronounce the registrant’s mark as
“Triple X Tube,” and applicant’s mark as “X Tube,” as
applicant contends, the difference will only signal to
consumers information about the nature of the content of
the services, and not that they emanate from separate
sources.
Overall, the marks are similar in appearance,
connotation and commercial impression, and the differences
in pronunciation are not sufficient to distinguish them.
As for applicant’s word and design mark,

the “X” portion is highlighted because it is depicted in a
larger size and in a different font from TUBE, further
emphasizing that the mark consists of two elements, X and
TUBE. However, this does not serve to distinguish it from
the registrant’s mark XXXTUBE. XXXTUBE would also be
viewed as consisting of the two elements, XXX and TUBE. As
previously discussed, consumers will understand the element
X and XXX in the respective marks as describing the nature
of the content of the material that is the subject of the
services, rather than understanding the different prefixes
X or XXX as identifying separate sources of the services.
Ser. Nos. 85390145 and 85392503
10
We also point out that, because the cited registration is
for a standard character mark, the registrant would be
entitled to depict it in any form, including in the fonts
which applicant uses for the elements X and TUBE, and with
the XXX in larger size. In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1909 (Fed. Cir. 2012) (a standard
character mark is not limited to any particular font, size,
style, or color. As for the sound, meaning and commercial
impression of the marks, our analysis with respect to
applicant’s standard character mark and the cited mark
applies to applicant’s stylized mark.
We find that applicant’s marks and the cited mark are
similar, and that this du Pont factor favors a finding of
likelihood of confusion.
In reaching this conclusion, we have considered the
evidence and argument regarding the strength of the cited
registration, and the du Pont factor of the number and
nature of similar marks in use for similar services.
Applicant has shown that various marks containing the
elements XXX and TUBE have been registered in connection
with “adult goods and services.” Brief, p. 8. Third-party
registrations can be used in the manner of dictionary
definitions to show that a particular term has a meaning or
significance in a particular industry. See Tektronix, Inc.
Ser. Nos. 85390145 and 85392503
11
v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA
1976). We have no doubt that XXX has a significance in the
adult entertainment industry. Both applicant and the
examining attorney are in agreement on this point: (“xxx”
is a universal abbreviation for pornography,” applicant’s
brief, p. 4; February 5, 2005 Los Angeles Times article
submitted by examining attorney, reporting the ratings
system developed by adult entertainment industry). And, as
we have already found, TUBE has a suggestive significance
for the manner in which the services are delivered.
Because the cited mark is composed of a descriptive and a
suggestive element, we agree that the scope of protection
to which it is entitled is not as great as would be due an
arbitrary mark. However, even weak marks are entitled to
protection. See American Lebanese Syrian Associated
Charities Inc. v. Child Health Research Institute, 101
USPQ2d 1022, 1028 (TTAB 2011); In re Max Capital Group
Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010); In re Chica Inc.,
84 USPQ2d 1845, 1850 (TTAB 2007). In this case, where the
marks are so similar and the services are in part identical
and otherwise closely related, the scope of protection due
to the cited registration extends to prevent the
registration of applicant’s marks for its identified
services.
Ser. Nos. 85390145 and 85392503
12
As for the third-party registrations for TUBEX and
XTUBE relied on by applicant, they have no probative value.
They are for goods and services far removed from the
services at issue, i.e., medical devices, apparatus for use
with saplings and trees, and freight transportation
services, and therefore cannot show any significance of the
terms in connection with the involved services. Further,
they are not evidence of use of the marks; even if they
were, they do not show that XXXTUBE is part of a crowded
field of similar marks for the services at issue herein.
Neither applicant nor the examining attorney have
discussed or submitted evidence on any other du Pont
factors. To the extent that any factors are relevant, we
treat them as neutral.
In view of our analysis of the evidence pertaining to
the du Pont factors, we find that applicant’s use of its
marks for its identified services is likely to cause
confusion with the registered mark.
Decision: The refusals of registration are affirmed
with respect to both applications.