MarvelousAQL Inc.

Trademark Trial and Appeal Board

Oct 24, 2013

No. 79975267 (T.T.A.B. Oct. 24, 2013)

This opinion is Not a
Precedent of the TTAB

Mailed: October 24, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re MarvelousAQL Inc.
_____

Serial No. 79975267
_____

Jeremy D. Bisdorf, Peter M. Falkenstein, Joan H. Lowenstein and Lawrence R.
Jordan of Jaffe Raitt Heuer & Weiss PC, for MarvelousAQL Inc.

Matthew T. Einstein, Trademark Examining Attorney, Law Office 115,
John Lincoski, Managing Attorney.
_____

Before Bucher, Bergsman and Ritchie,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
MarvelousAQL Inc. (“applicant”) seeks registration on the Principal Register of
the following mark:

Serial No. 79975267
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for the “production and distribution of movies” in International Class 41.1
The examining attorney has taken the position that applicant’s mark, when
used in connection with the recited services, so resembles the mark,
MARVELOUS MEDIA (in standard character format) registered for services
recited as “production and distribution of television shows and movies; production of
DVDs featuring documentaries, sporting events, music videos, dramas and comedy,”
also in International Class 41,2 as to be likely to cause confusion, to cause mistake
or to deceive under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d).
When the refusal was made final, applicant appealed and requested
reconsideration. After the examining attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
Arguments of applicant and the examining attorney

Applicant argues that the only commonality between its applied-for mark and
the cited mark is that they share a single word, “Marvelous,” and that this alone is
not sufficient to support a finding of likelihood of confusion. Specifically, applicant
argues that the word “Marvelous” is weak and that the other differences between
the marks greatly outweigh their similarities. Furthermore, applicant argues that

1 Application Serial No. 79975267 was filed on October 12, 2011. The application is based
on a request for protection filed under Section 66a of the Trademark Act of 1946, 15 U.S.C.
§ 1144f(a). The mark consists of a stylized letter “M” above the stylized wording
“MarvelousAQL.”
2 Registration No. 3528103 issued on November 4, 2008. No claim is made to the exclusive
right to use the word “Media” apart from the mark as shown.
Serial No. 79975267
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these services necessarily involve sophisticated customers. Finally, applicant argues
the cited mark is not famous and thus is not entitled to heightened protection.
By contrast, the examining attorney contends that inasmuch as the services are
legally identical, the degree of similarity between the marks required to support a
finding of likelihood of confusion is not as great as in the case of more distant
services; that the evidence does not show that the term “Marvelous” is weak in the
field of production and distribution of movies; that even if the term “Marvelous”
should be determined to be weak, even weak marks are entitled to protection
against the registration by a subsequent user of a similar mark for identical
services; there is no probative evidence in the record that all the relevant customers
of these services will be sophisticated; and that even sophisticated customers can be
confused when similar marks are used in connection with identical services.
Likelihood of Confusion

Our determination under Trademark Act § 2(d) is based upon an analysis of the
probative facts in evidence that are relevant to the factors bearing on a likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the
evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of differences in the essential
Serial No. 79975267
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characteristics of the goods and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In
re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
A. Identical services and trade channels
We turn first to the relationship of the respective services, and the channels of
trade, the second and third du Pont factors, respectively. In its brief, “Applicant
concedes that the services described in the Application and Registration are
identical and that Applicant has made no claims regarding [a difference in]
channels of trade.” Applicant’s brief at 3. Similarly, we presume that they are
available to the same classes of purchasers. See Midwestern Pet Foods, Inc. v.
Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir.
2012). Accordingly, these critical du Pont factors weigh in favor of a finding of
likelihood of confusion.
B. Strength of the Mark of the Cited Registration
Applicant has argued at some length that the word “Marvelous” is weak both
conceptually and commercially. In support of their respective positions on this
question, both applicant and the examining attorney have provided for the record
quite similar dictionary definitions of the word “marvelous”:
Serial No. 79975267
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marvelous (mär v -l s) adj.
1. Causing wonder or astonishment.
2. Miraculous; supernatural.
3. Of the highest or best kind or quality; first-rate: has a marvelous
collection of rare books 3

marvelous adjective \ˈmärv-(ə-)ləs\
: extremely good or enjoyable
1 : causing wonder : ASTONISHING
2 : MIRACULOUS, SUPERNATURAL
3 : of the highest kind or quality : notably superior 4

Applicant argues that the word “Marvelous” is conceptually an inherently weak
source identifier. In the context of the cited mark, MARVELOUS MEDIA,
applicant argues that the definition, “of the highest or best kind or quality; first-
rate” would probably be the intended meaning of “Marvelous” – suggesting media of
the best kind or highest quality. While the term “Marvelous” may well create
mental images of something of the highest quality, it certainly carries with it over-
the-top, superlative connotations well beyond the attempted reach of most widely-
used laudatory terms, as shown in the initial dictionary entries.5 Accordingly, we
disagree with applicant that as applied to these services it should be deemed to be

3 The American Heritage® Dictionary of the English Language (4th ed. 2000),
http://www.thefreedictionary.com/marvelous, as submitted by applicant on March 12, 2013.
4 http://www.merriam-webster.com/dictionary/marvelous, as attached to the examining
attorney’s denial (April 2, 2013) of applicant’s Request For Reconsideration.
5 In fact, applicant refers to a thesaurus entry from its own dictionary entry
(“extraordinarily good or great; used especially as intensifiers”) – a section that also
contains synonyms for this adjective that few merchants or manufacturers would use, such
as “miraculous,” “supernatural,” “improbable,” “incredible” and “unbelievable.”
Serial No. 79975267
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weak as a matter of law. Even if suggestive, it is still deemed to be an inherently
distinctive term when used in connection with the production and distribution of
movies.
As to the commercial strength of the cited mark, the sixth du Pont factor
requires consideration of any evidence pertaining to the number and nature of
similar marks in use on similar goods or services. Based upon at least nineteen
extant federal trademark registrations6 having marks containing the word
“Marvelous,” applicant argues that the cited mark is commercially weak.
Of course, third-party registrations by themselves are not evidence of actual
use of the marks and we therefore cannot conclude that consumers are even
familiar with the following registered marks. Bearing this in mind, we clearly
cannot say that consumers have become accustomed to the existence of similar
marks in the marketplace and are thus able to distinguish between similar marks
based on slight differences. Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004,
177 USPQ 462 (CCPA 1973); and Richardson-Vicks, Inc. v. Franklin Mint Corp.,
216 USPQ 989 (TTAB 1982).
MARVELOUS
MULTIPLES
for educational services, namely, conducting classes and
seminars in the field of prenatal and postnatal education
in International Class 41;7

6 Of applicant’s twenty-four listed registrations, two were listed twice, one issued under
Section 66A (Registration No. 4137517) and two have been cancelled under Section 8
(Registration Nos. 3085073 and 3042998).
7 Registration No. 2246079 issued on May 18, 1999; renewed.
Serial No. 79975267
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for educational science experiment and activity kits
primarily comprising printed books and printed activity
workbooks, and also containing tools for making
observations and conducting experiments, namely,
magnifying lenses, nets, insect viewers, goggles, brushes,
chemicals in vials, beakers, test tubes, cork stoppers,
measuring spoons, funnels, stirring rods, tubing, and
teacher/parent guides containing instructions for
experiments in International Class 16;8
MARVELOUS
PHOTO
for portrait photography services in International Class
41;9
MARVELOUS
MIGUN
for therapeutic electrical apparatus in International
Class 10;
independent sales representatives in the field of medical
instruments and physical treatment instruments in
International Class 35;10

for “herbal teas for food purposes; and tea in
International Class 30;11

8 Registration No. 2784342 issued on November 18, 2003; renewed. No claim is made to the
exclusive right to use the words “Science and Stories” apart from the mark as shown.
9 Registration No. 2887841 issued on September 21, 2004; Section 8 affidavit (six-year)
accepted. No claim is made to the exclusive right to use the word “Photo” apart from the
mark as shown.
10 Registration No. 3087566 issued on May 2, 2006; Section 8 affidavit (six-year) accepted
and Section 15 affidavit acknowledged. The English translation of the Korean word
“MIGUN” in the mark is “Beauty Is Health.”
11 Registration No. 3125832 issued on August 8, 2006; Section 8 affidavit (six-year)
accepted. The mark consists of five Chinese characters pronounced as XIANG; HUA; DA;
MIAO; and CHA; meaning FRAGRANT; FLOWERY; BIG; MARVELOUS; TEA; and an
abstract drawing symbolizing MARVELOUS. No claim is made to the exclusive right to use
the word “TEA” or the non-Latin character that transliterates to CHA, which means TEA in
English, apart from the mark as shown.
Serial No. 79975267
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for soft drinks in International Class 32;12

for organizational services for home or personal purposes,
namely, cleaning, organizing spaces, rearranging items
and eliminating unnecessary items and personal
shopping services in International Class 45;13
MARVELOUS
MATH
for educational services – math enrichment provided
through a child care center in International Class 41;14
THE MARVELOUS
MISADVENTURES
OF FLAPJACK
for entertainment services in the nature of a continuing
comedy, drama, action, adventure and/or animation
program series provided through cable television,
broadcast television, and the Internet in International
Class 41;15
THE MARVELOUS
MISADVENTURES
OF FLAPJACK
for clothing in International Class 25;16
Marvelous World for many class 16 items devoted to science fiction,
adventure and/or action in International Class 16;17
Marvelous Work and
a Wonder
for religious books in International Class 16;18

12 Registration No. 3144534 issued on September 19, 2006; Section 8 affidavit (six-year)
accepted and Section 15 affidavit acknowledged. The English translation of the non-Latin
characters in the mark is “Marvelous Bluebell.” The non-Latin characters in the mark
transliterate to “choudo-kolokolchik.”
13 Registration No. 3272330 issued on July 31, 2007; Section 8 affidavit (six-year) accepted
and Section 15 affidavit acknowledged. No claim is made to the exclusive right to use the
words “Simply Marvelous Organizing” apart from the mark as shown.
14 Registration No. 3320007 issued on October 23, 2007. No claim is made to the exclusive
right to use the word “Math” apart from the mark as shown.
15 Registration No. 3477961 issued on July 29, 2008.
16 Registration No. 3633193 issued on June 2, 2009.
17 Registration No. 3750716 issued on February 16, 2010.
Serial No. 79975267
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MARVELOUS
MAMA
for women’s apparel, namely, body shapers, pantyhose
and tights in International Class 25;19
YOU’LL LOOK
MARVELOUS
for pet grooming services in International Class 44;20
ONE MARVELOUS
MINIMIZER
for foundation garments; women’s undergarments;
lingerie; brassieres in International Class 25;21
SAN MARVELOUS for clothing in International Class 25;22
THE MARVELOUS
MISADVENTURES
OF FLAPJACK
for digital versatile discs featuring music, comedy,
drama, action, adventure and/or animation in
International Class 9;23
MARVELOUS CUTS for barbershops in International Class 44;24

for, inter alia, educational and entertainment services in
the field of music in International Class 41;25

The examining attorney included for the record copies of some of the same
third-party registrations shown above, as well as the following ones:

18 Registration No. 3804512 issued on June 15, 2010.
19 Registration No. 3853563 issued on September 28, 2010.
20 Registration No. 3854793 issued on September 28, 2010.
21 Registration No. 3966810 issued on May 24, 2011. Registrant claims acquired
distinctiveness as to the word “Minimizer.”
22 Registration No. 4039669 issued on October 11, 2011.
23 Registration No. 4042489 issued on October 18, 2011.
24 Registration No. 4151970 issued on the Supplemental Register on May 29, 2012. No
claim is made to the exclusive right to use the word “Cuts” apart from the mark as shown.
25 Registration No. 4210937 issued on September 18, 2012.
Serial No. 79975267
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for canned shrimps in International Class 29;26
MARVELOUS
MARKET
for bread, pastries and bakery desserts in International
Class 30; and
retail bakery stores in International Class 35;27
MARVELOUS
MATTE
for skin and body care preparations, namely, cosmetics,
in International Class 3;28
MARVELOUS LIFT for bras in International Class 25;29

While it is true that the cited mark has co-existed and continues to co-exist with
a number of other marks containing the word “Marvelous” registered in connection
with a wide variety of goods and services, we note that most of these composite
marks contain other distinguishing matter, creating quite disparate commercial
impressions. In some registrations, the word “Marvelous” is treated as the sole
distinctive term in the composite (e.g., MARVELOUS PHOTO, MARVELOUS
MARKET, MARVELOUS MATTE, MARVELOUS MATH and MARVELOUS
LIFT), not as a merely descriptive term, as argued by applicant.

26 Registration No. 0538007 issued on February 20, 1951; [4th renewal?]
27 Registration No. 2951182 issued on May 17, 2005; Section 8 affidavit (six-year) accepted
and Section 15 affidavit acknowledged. No claim is made to the exclusive right to use the
word “Market” apart from the mark as shown.
28 Registration No. 2967457 issued on July 12, 2005; Section 8 affidavit (six-year) accepted.
No claim is made to the exclusive right to use the word “Matte” apart from the mark as
shown.
29 Registration No. 3690370 issued on September 29, 2009. No claim is made to the
exclusive right to use the word “Lift” apart from the mark as shown.
Serial No. 79975267
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In addition to the conclusion that the word “Marvelous” has not been adopted as
frequently as applicant has suggested, we find that none of these referenced third-
party registrations is for the services which are the subject of this appeal.
Finally, applicant points to a website for Marvelous Productions,30 which
appears on its face to be a DJ’s largely-inactive and little-used site. We certainly
question the probative value of this single site to demonstrate the weakness of
registrant’s mark.
Accordingly, to the extent that applicant seeks to persuade us that the cited
mark is both conceptually and commercially weak, we remain unconvinced based
upon the totality of this record, and we find this to be, at best for applicant, a
neutral du Pont factor.
C. Comparison of the Marks
In comparing the marks we must consider the marks in their entireties as to
appearance, sound, connotation and commercial impression, to determine the
similarity or dissimilarity between them. In re E. I. du Pont de Nemours & Co., 177
USPQ at 567; and Palm Bay, 73 USPQ2d at 1692. In a particular case, any one of
these means of comparison may be critical in finding the marks to be similar. In re
White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6
USPQ2d 1041, 1042 (TTAB 1987). In comparing the marks, we are mindful that
where, as here, the services are legally identical, the degree of similarity necessary
to find likelihood of confusion need not be as great as where there is a recognizable

30 http://marvelousproductions.webs.com/
Serial No. 79
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Serial No. 79975267
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mark, provided the ultimate conclusion rests on a consideration of the marks in
their entireties. Id.
As to the appearance of the respective marks, the examining attorney
minimizes the differences, saying applicant merely added the letter “M” and the
AQL initialism to the word “Marvelous.”
Applicant responds that the examining
attorney’s “statement is incorrect because it fails
to acknowledge that over 85% of the Mark is
actually a stylized drawing of the letter M and
that this drawing has its own unique creative
elements that are not the same as the mere addition of a letter M to a standard
character mark. Further, the [letters] AQL follow immediately after the word
MARVELOUS, not even separated by a space, such that the word in the Mark is
actually ‘MarvelousAQL’.”
In making determinations as to whether two marks are confusingly similar, the
relative percentage of surface area consumed by each region of a composite mark is
rarely the decisive factor. Yet we do agree with applicant that the large, stylized
letter “M’ is a significant portion of its composite mark, and cannot be discarded so
cavalierly when considering the dissimilarities in the respective marks.
However, even among prospective consumers who recognize the large image as
the letter “M,” the examining attorney notes that “[c]onsumers are not likely to
refer to applicant’s services as ‘highly stylized M production services’.” Rather,
Serial No. 79975267
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applicant’s mark will be vocalized as “Marvelous AQL.” Sounding out the initialism,
A-Q-L, does add another three syllables to the enunciation of “Marvelous.” On the
other hand, there is no indication in the record that consumers will attach any
special source-indicating significance to this letter string. In fact, given the
difficulty in vocalizing and recalling letter strings, the most likely portion of this
mark that the average person would recall and repeat is the leading and familiar
word “Marvelous.” See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257,
1260 (Fed. Cir. 2010) (“the presence of an additional term in the mark does not
necessarily eliminate the likelihood of confusion if some terms are identical.”) and
the cases cited therein.
Inasmuch as the word “Media” in registrant’s mark has substantially no source
indicating value, the connotation of both marks will inevitably boil down to the
suggestive word, “Marvelous.” Accordingly, the respective marks, while clearly
dissimilar in several respects, create quite similar overall commercial impressions
around the common word, “Marvelous.” Hence, we find that this du Pont factor
supports a finding of likelihood of confusion.
D. Conditions surrounding sales
The fourth du Pont factor focuses on the conditions under which and buyers to
whom sales are made, i.e., “impulse” versus careful, sophisticated purchasing.
Applicant argues that the fact registrant and applicant are offering legally identical
services is much less significant than the fact that the services are so expensive that
it would be practically impossible for a client to mistake registrant’s and applicant’s
Serial No. 79975267
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respective identities due to the mere sharing of the word “Marvelous” in their
service marks.
Applicant has cited to three articles suggesting that engaging the services of a
movie or video production company will require “a large sum of money.” None of
these articles actually cites specific costs. Moreover, to the extent that the third-
party website for Marvelous Productions placed into the record by applicant
demonstrates a similar service, we find that the costs of this type of service in a
digital age have been greatly reduced, especially given the amateur quality of some
online video productions. Hence, we are not convinced that all purchasers of
applicant’s and registrant’s services will be sophisticated buyers, and this du Pont
factor is deemed to be neutral.
E. The fame of the prior mark
Applicant argues in its brief that the cited mark is not famous and the cited
mark should not be given any increase in protection as a result. Clearly, it is well-
settled that a famous mark is afforded a wide latitude of protection. See, for
example, Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303
(Fed. Cir. 2002). However, in an ex parte proceeding before the Board, “we would not
expect the examining attorney to submit evidence of fame of the cited mark.” See In
re Thomas, 79 USPQ2d 1021, 1027 n. 11 (TTAB 2006). Also, even if applicant could
show that the mark in the cited registration is not famous, the absence of fame does
not justify narrowing the ordinary scope of protection to which such a mark is
entitled. Majestic Distilling, 65 USPQ2d at 1205.
Serial No. 79975267
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Furthermore, inasmuch as registrant is not a party to this proceeding, it has no
opportunity to introduce evidence of fame of its mark. In this case, there is no
evidence regarding the strength of the registered MARVELOUS MEDIA mark,
and we accordingly make no finding on whether it is – or is not – famous. Cf.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1845 (Fed. Cir.
2000). Accordingly, we find that the cited registration is entitled to the normal scope
of protection that would be afforded such a mark and this du Pont factor is also
neutral.
F. Balancing the factors
In summary, we have carefully considered all of the evidence and arguments of
record relevant to the pertinent du Pont likelihood of confusion factors. As our
precedent dictates, we resolve doubt in favor of the prior registrant. See In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988). We have noted
that the services herein are identical and may not be restricted to sophisticated
purchasers, and that the cited mark has not been shown to be famous, on the one
hand, nor is there evidence of extensive third-party use, on the other hand. In spite
of some differences in the appearance and sound of the two marks, we find that the
marks are similar enough in connotation and overall commercial impression to
support a finding of a likelihood of confusion herein.
Decision: The refusal to register applicant’s applied-for mark under Section
2(d) of the Lanham Act is hereby affirmed.