Masquerade of Tampa Bay, Inc.

Trademark Trial and Appeal Board

Jun 7, 2013

No. 85325500 (T.T.A.B. Jun. 7, 2013)

Mailed: June 7, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Masquerade of Tampa Bay, Inc.
________

Serial No. 85325500
_______

Kenneth L. Mitchell of Woodling, Krost and Rust for Masquerade of Tampa Bay,
Inc.
Maria-Victoria Suarez, Trademark Examining Attorney, Law Office 102 (Mitchell
Front, Managing Attorney).
_______

Before Holtzman, Lykos and Adlin, Administrative Trademark Judges.
Opinion by Lykos, Administrative Trademark Judge:

On May 19, 2011, Masquerade of Tampa Bay, Inc. (“applicant”) filed an
application to register the mark displayed below

This Opinion is Not a
Precedent of the TTAB
Serial No. 85325500
2
for “charitable fund raising services for the benefit of multiple sclerosis research” in
International Class 36.1 The description of the mark is as follows:
The mark consists of the word "MASQUERADE" with a large "MS" in hot
pink overlapping the black letters "AQUERADE" with a black mask and a
swooping gray line leading from the mask underneath the word
"MASQUERADE" with spots of purple, blue, brown, yellow and green and
gray lines in the form of party tassels emanating from the mask, and the
words "ONE STEP CLOSER TO UNMASKING A CURE FOR MULTIPLE
SCLEROSIS" in black.

In addition, applicant claims the colors “hot pink, purple, blue, brown, yellow,
green, black and gray” as features of the mark.
The Trademark Examining Attorney refused registration of applicant’s mark
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground
that applicant’s mark so resembles the registered marks MASQUERADE,2 in
standard character format, and the design mark displayed below3

both owned by the same individual and both for services identified as “charitable
fundraising services” in International Class 36, that when used on or in connection

1 Application Serial No. 85325500, filed pursuant to Section 1(a) of the Trademark Act, 15
U.S.C. § 1051(a), alleging February 26, 2011 as the date of first use anywhere and in
commerce.
2 Registration No. 3247585, registered on May 29, 2007, alleging March 22, 2006 as the
date of first use anywhere and in commerce.

Serial No. 85325500
3
with applicant’s identified services, it is likely to cause confusion or mistake or to
deceive.
Following a request for reconsideration which was denied, applicant has
appealed the examining attorney’s final refusal to register the application. The case
is fully briefed. For the reasons explained below, we affirm the refusal to register.
We base our determination under Section 2(d) on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”).
See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). These factors and the other relevant du Pont
factors are discussed below.
At the outset, we note that as identified, applicant and registrant are offering
legally identical services. This is because registrant’s charitable fundraising
services are recited broadly without any limitation as to the beneficiary. As such,
the registrations necessarily encompass applicant’s more narrowly defined
“charitable fund raising services for the benefit of multiple sclerosis research.” See
In re Thor Tech, Inc., 90 USPQ2d 1634, 1638-39 (TTAB 2009). In addition, because
the recitations of the involved application and registrations are unrestricted as to

3 Registration No. 3574143, registered February 10, 2009, alleging September 21, 2006 as
the date of first use anywhere and in commerce. Color is not claimed as a feature of the
Serial No. 85325500
4
trade channels, we must presume that both parties’ legally identical charitable
fundraising services travel in the same ordinary trade and distribution channels
and will be marketed to the same potential consumers (in this case, donors). In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981), citing Kalart Co., Inc. v. Camera-Mart,
Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958). Consequently, applicant’s
argument that the services are distinct because applicant raises money by dinner
fundraisers to benefit multiple sclerosis research whereas registrant’s fundraising
activities consist of “$5 dollar jewelry sales” (Applicant’s Brief, p. 9) necessarily
fails. As we have often stated, we are bound by the respective recitations as stated
in the involved application and registration(s). Id. Thus, the identical nature of the
services and channels of trade weigh heavily in favor of finding a likelihood of
confusion.
Because the services are identical, the degree of similarity between the marks
that is necessary to support a finding of likely confusion declines. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir.
1992). With this in mind, we now turn to the first du Pont likelihood of confusion
factor regarding the similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression. See Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005). “[T]he 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

mark.
Serial No. 85325500
5
that confusion as to the source of the goods offered under the respective marks is
likely to result.” H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1727 (TTAB
2008). The focus is on the recollection of the average purchaser, who normally
retains a general rather than a specific impression of trademarks. In re Jack B.
Binion, 93 USPQ2d 1531 (TTAB 2009); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
Applicant argues that when the marks are compared in their entireties, they are
different and not likely to be confused. More specifically, applicant contends that its
design mark includes as a prominent term the abbreviation "MS" denoting
"multiple sclerosis," the disease for which donations are sought. Based on this
distinction, applicant asserts that the presentation of the acronym “MS” in
combination with, and overlapping the letters "a” and “querade," creates a different
commercial impression than the registered marks. Applicant also points to the
additional phrasing in its mark, "ONE STEP CLOSER TO UNMASKING A CURE
FOR MULTIPLE SCLEROSIS," as entirely different in sound, appearance, and
meaning from registrant’s stylized design mark MASQUERADE which includes the
phrase “EXPERIENCE THE FRENZY!” as well as registrant’s word mark
MASQUERADE. In addition, applicant emphasizes the color elements of its
applied-for design mark as creating a meaningful difference in commercial
impression.
Applicant’s arguments are unconvincing. Applicant’s and registrant’s marks all
share the common term MASQUERADE which appears as either the sole term or
Serial No. 85325500
6
prominently as the first term in each of the marks. It is well-established that
prospective consumers are often more inclined to focus on the first part of a
trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 73 USPQ2d at 1692. See also Mattel Inc. v. Funline Merch.
Co., 81 USPQ2d 1372, 1374-75 (TTAB 2006); Presto Prods., Inc. v. Nice-Pak Prods.,
Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which
is most likely to be impressed upon the mind of a purchaser and remembered” when
making purchasing decisions). We acknowledge the obvious differences in wording,
stylization, and design elements in the marks. Nonetheless, it is more likely that
prospective consumers will overlook these distinctions and instead confuse the
marks as identifying the same charitable fundraising services from the same source,
given that they either commence with or consist solely of the word MASQUERADE.
To elaborate, the design elements in applicant’s mark when compared with those
of Registration No. 3574143 do not obviate the similarity between the marks. When
a mark consists of a word portion and a design portion, the word portion is more
likely to be impressed upon a purchaser’s memory and to be used in calling for the
goods and/or services; therefore, the word portion is normally accorded greater
weight in determining whether marks are confusingly similar. In re Dakin’s
Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999). See also CBS Inc. v. Morrow,
708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983); In re Kysela Pere et
Fils, Ltd., 98 USPQ2d 1261, 1267-68 (TTAB 2011).
Serial No. 85325500
7
In addition, we note that because registrant’s word mark MASQUERADE is
registered in standard format, it may be used in any stylized display or color
scheme, including one that is identical to the special form drawing of the term
MASQUERADE in applicant’s applied-for mark. See Trademark Rule 2.52(a). That
is to say, registrant has the right to use the mark MASQUERADE with “MS”
appearing in larger, more prominent “hot pink” lettering and overlapping over the
remaining letters “a” and “querade” in the same stylized font, size and shades of
color as applicant’s mark.
We therefore find that applicant’s marks and registrant’s marks are similar in
appearance, sound, connotation and commercial impression. This first du Pont
factor also weighs in favor of finding a likelihood of confusion.
To the extent that there are any other relevant du Pont factors, we treat them as
neutral.
After considering all of the evidence of record and argument pertaining to the du
Pont likelihood of confusion factors, we find that because the marks are similar, the
services are legally identical, and the channels of trade and consumers are
presumed to overlap, there is a likelihood of confusion between applicant’s mark
and the registered marks when used in connection with the identified services. To
the extent there is any doubt, we resolve it, as we must, in registrant’s favor. In re
Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988).
DECISION: The refusal to register is affirmed.