Merchan

Trademark Trial and Appeal Board

Mar 23, 2011

No. 77817141 (T.T.A.B. Mar. 23, 2011)

Mailed: March 23, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Merchan
________

Serial No. 77817141
_______

Sven W. Hanson, Atty. for Efrain Merchan.

Ernest Shosho, Trademark Examining Attorney, Law Office 117
(J. Brett Golden, Managing Attorney).
_______

Before Walters, Holtzman and Taylor, Administrative
Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Efrain Merchan (“applicant”) has filed an application
to register on the Principal Register the mark

for services identified as “Advertising and publicity
services, namely, promoting the goods, services, brand
identity and commercial information and news of third
parties through print, audio, video, digital and on-line
THIS DISPOSITION
IS NOT A PRECEDENT
OF THE TTAB
Ser No. 77817141
2
medium” in International Class 35.1 Upon the request of the
examining attorney, the words “LATINO USA” and “the
representation of the map of the United States of America”
were disclaimed.
The examining attorney has refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on
the ground that applicant’s mark, as applied to applicant’s
services, so resembles the nine registered USA TODAY marks
owned by the same entity set forth below as to be likely to
cause confusion, or to cause mistake, or to deceive.
Registration No. 3361301 for the mark USA TODAY
(USA disclaimed), in standard character format,
for “Providing news, current events and general
interest information via the Internet” in
International Class 41;2

Registration No. 1524446 for the mark
USA TODAY (USA disclaimed), in typed form, for
“Magazines containing viewpoints and analysis on
topics of general interest to the upscale
reader, available by subscription only” in
International Class 16;3 and

Registration No. 1332045 for the mark USA TODAY
(USA disclaimed), in typed form;4

and the following seven registrations, all for
“Daily newspapers containing news of general
interest in International Class 16:

1 Application Serial No. 77817141 filed September 1, 2009 and
asserting a bona fide intention to use the mark in commerce. The
application includes the following statement: “The mark consists
of the literal elements “LATINO USA TODAY” with the “USA”
overlying an outline of the states of the United States.
2 Issued January 1, 2008.
3 Issued February 14, 1989, renewed.
4 Issued April 23, 1985, renewed.
Ser No. 77817141
3
Registration No. 1330859 for the mark

(USA and the geographic representation of North
and South America disclaimed);5

Registration No. 1334239 for the mark

(USA and the geographic representation of North
and South America disclaimed);6

Registration No. 1337847 for the mark

(USA and the geographic representation of North
and South America disclaimed);7

Registration No. 1337848 for the mark

5 Issued April 16, 1985, renewed. The registration includes the
following statement: “The lining inside the globe and extending
horizontally from the globe design is a feature of the mark and
does not indicate color.”
6 Issued May 7, 1985, renewed. The registration includes the
following statement: “The lining inside the globe and extending
horizontally from the globe design is a feature of the mark and
does not indicate color.”
7 Issued May 28, 1985, renewed. The registration includes the
following statements: “The lining inside the globe and extending
horizontally from the globe design is a feature of the mark and
does not indicate color. The drawing is otherwise lined for the
color blue.”
Ser No. 77817141
4
(USA and the geographic representation of North
and South America disclaimed);8

Registration No. 1415845 for the mark

(USA and the geographic representation of North
and South America disclaimed);9 and

Registration No. 1415846 for the mark

(USA and the geographic representation of North
and South America disclaimed).10

After the refusal was made final, applicant appealed.
Both applicant and the examining attorney filed briefs. We
affirm the refusal to register.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative

8 Issued May 28, 1985, renewed. The registration includes the
following statements: “The lining inside the globe and extending
horizontally from the globe design is a feature of the mark and
does not indicate color. The drawing is otherwise lined for the
color blue.”
9 Issued November 4, 1986, renewed. The registration includes
the following statements: “The lining inside the globe and
extending horizontally from the globe design is a feature of the
mark and does not indicate color. The drawing is otherwise lined
for the color blue.”
10 Issued November 4, 1986, renewed. The registration includes
the following statement: “The lining inside the globe and
extending horizontally from the globe design is a feature of the
mark and does not indicate color.”

Ser No. 77817141
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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 Company, 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 and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
In analyzing likelihood of confusion, we limit our
discussion to cited Registration Nos. 1332045, 1524446,
3361301, each for the mark USA TODAY (in typed or standard
character format), as it is the mark most similar to
applicant’s mark and addressed by applicant in its brief.
We first consider the goods and services. It is well
settled that the question of likelihood of confusion must
be determined based on an analysis of the services recited
in applicant’s application vis-à-vis the goods and services
identified in the cited registrations. In re Shell Oil
Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n. 4 (Fed. Cir.
1993); and Canadian Imperial Bank v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992). Further, it is
Ser No. 77817141
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a general rule that goods and/or services need not be
identical or even competitive in order to support a finding
of likelihood of confusion. Rather, it is enough that the
goods and/or services are related in some manner or that
some circumstances surrounding their marketing are such
that they would be likely to be seen by the same persons
under circumstances which would give rise, because of the
marks used therewith, to a mistaken belief that they
originate from or are in some way associated with the same
producer or that there is an association between the
producers of each party’s goods and/or services. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and the cases
cited therein.
Here, applicant’s services are identified as
“advertising and publicity services, namely, promoting the
goods, services, brand identity and commercial information
and news of third parties through print, audio, video,
digital and on-line medium” and the goods and services
identified in the cited registrations are “daily newspapers
containing news of general interest,”11 “magazines
containing viewpoints and analysis on topics of general
interest to the upscale reader, available by subscription

11 Registration No. 1332045.
Ser No. 77817141
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only”12 and “providing news, current events and general
interest information via the Internet.”13
The examining attorney maintains that “the goods and
services are related in that it is very common for entities
that provide newspapers, magazines and news via the
Internet to also provide advertising, promotion and
publicity services for others through print, audio, video,
and on-line media.” Br. unnumbered p. 5. To support his
position, the examining attorney made of record copies of
use-based third-party registrations to show that various
trademark owners have registered, under the same mark, the
same or similar goods and services as those of applicant
and registrant. Third-party registrations have probative
value to the extent that they may serve to suggest that
such goods or services are of a type which may emanate from
a single source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1786 (TTAB 1993); and In re Mucky Duck Mustard
Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
These registrations include, for example:
Registration No. 346094 for “news bulletins,”
“providing news in the nature of current event
reporting” and “advertising and publicity
services, namely promoting the goods, services,
brand identity and commercial information and news

12 Registration No. 1524446.
13 Registration No. 3361301.

Ser No. 77817141
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of third parties through print, audio, digital and
on-line medium”;

Registration No. 3596088 for “advertising and
publicity services, namely promoting the goods,
services, brand identity and commercial
information and news of third parties through
print, audio, digital and on-line medium” and
“publication of electronic newspapers accessible
via a global computer network”;

Registration No. 2927701 for, “promoting the goods
and services of others through the placing of
advertisements…” and “magazines containing
advertisements and redeemable coupons for the
goods and services of others”;

Registration No. 3206851 for, inter alia, “general
feature magazines” and “advertising and promotion
services”;

Registration No. 3091760 for “magazines featuring
topics of interest to brides and grooms…” and
“promoting the goods and services of others …
through the dissemination of advertising
material”; and

Registration No. 3307211 for, inter alia, “on-line
magazines…,” “magazines…,” and “promoting the
goods and services of others by preparing and
placing advertisements in a [sic] electric
magazine….”

The examining attorney has also made of record web
pages from websites of various magazines and newspapers
showing that applicant’s recited services and the goods and
services identified in the cited registrations are commonly
offered by the same source. For example:
The Baltimore Sun’s website’s “media kit” states:
“Here you’ll find information on Maryland’s #1
local news web site and how you can leverage our
reach to promote your business organization and
Ser No. 77817141
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or service.” The website includes links for
“custom built creative services for advertisers”
and “display and classified ad solutions.”
(http://essentials.baltimoresun.com)

The website for the Wall Street Journal touts
that “The Wall Street Journal has worldwide
advertising sales offices to meet every
advertiser’s special needs” and includes
information about ad rates as well as information
about the magazine, newspaper and internet site
where advertising is available.
(http://wsjmediakit.com)

The website for The Washington Times states that
“The Washington Times has many exciting
advertising opportunities available to help you
promote your business” and includes links to both
digital and print advertising opportunities.”
(http://www.washingtontimes.com)

The New York Times’ media kit includes
information on “ad rates” and “ad specs” and
states that “The New York Times offers a variety
of innovative, high impact advertising
solutions.”
(http://www.nytimes.whsites.net/mediakit)

On its website, The Washington Post includes
information and links for ad rates and
specifications to “Maximize Your Advertising
Impact.”
(www.washingtonpostads.com)

The website for Time magazine includes
advertising rates and links to “marketing
programs.”
(www.timemediakit.com)

The website for The Buffalo News includes a
section titled “Advertise with The Buffalo News”
and states that “The Buffalo News reaches
consumers who are in the market for products and
services. … Whatever your advertising needs are
The Buffalo News can help you meet them.”
(http://corp.buffalonews.com)
Ser No. 77817141
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This evidence clearly demonstrates that consumers will
see the same marks used on or in connection with goods and
services of the type identified in both applicant’s
application, i.e., advertising and publicity services, and
the cited registrations, namely newspapers, magazines and
on-line news services. Under these circumstances, we find
applicant’s services and registrant’s goods and services
related for purposes of our likelihood of confusion
analysis.14 Notably, applicant does not contend otherwise.
Indeed, applicant’s brief is silent on this issue.
In view of the foregoing, the du Pont factor of the
relatedness of the goods and/or services favors a finding
of likelihood of confusion.
We now consider the marks, the only du Pont factor
addressed by applicant in its brief. Applicant maintains
that when the overall impressions of the two marks are
considered, there is little likelihood of confusion.
Applicant particularly argues:
Applicant’s mark includes the letters USA
overlaying an outline of the states of the
United States. This combined word/design
element spatially separates the word elements
LATINO and TODAY, which both have a stylized
form different from the style of the USA letters

14 In coming to this conclusion, we have focused on the evidence
that was recounted by the examining attorney in his brief, as it
is the most probative of the relationship between applicant’s
services and registrant’s goods and services.

Ser No. 77817141
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in Applicant’s mark. The common style of the
LATINO and TODAY words induces them to be read
together, distinguishing LATINO TODAY from the
cited marks, while the separation of the two
word elements by the distinct combined
word/design element (USA over the map) creates a
unique and distinctive overall impression that
avoid confusion with the cited marks.

Br. unnumbered p. 2.
In determining the similarity or dissimilarity of
marks, we must consider the marks in their entireties in
terms of sound, appearance, meaning and commercial
impression. See Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
The 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 their entireties that
confusion as to the source of the services offered under
the respective marks is likely to result. The focus is on
the recollection of the average purchaser, who normally
retains a general, rather than a specific impression of
trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
With these principles in mind, we compare applicant’s
mark with the registrant’s mark USA TODAY. It
is our view that when viewed in their entireties, the marks
are similar in appearance, sound, connotation and
Ser No. 77817141
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commercial impression due to the shared presence of the
term USA TODAY. Although we must compare the marks in
their entireties, one feature of a mark may be more
significant than another and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985) (“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. Indeed, this type of analysis appears to be
unavoidable.”).
Further, with a composite mark comprising a design and
words, it is the wording that would make a greater
impression on purchasers and is the portion that is more
likely to be remembered as the source-signifying portion of
the applicant’s mark. In re Dakin’s Miniatures, Inc., 59
USPQ2d 1593 (TTAB 2001) (“words are normally accorded
greater weight because they would be used by purchasers to
request the goods”). See also, e.g., In re Appetito
Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
Applicant’s mark LATINO USA TODAY encompasses the
entirety of registrant’s USA TODAY mark and, while it adds
Ser No. 77817141
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the word USA superimposed over a map of the United States,
these additions do not distinguish applicant’s mark from
the cited mark. First, the term LATINO connotes “a person
of Latin-American origin living in the United States.”15
(Ex. Atty. Office Action, Attachment 1). Thus, LATINO
serves a modifying rather than a distinguishing function,
describing either the focus of applicant’s services or its
target consumer. See In re National Data Corp., 224 USPQ
at 751 (“That a particular feature is descriptive or
generic with respect to the involved goods or services is
one commonly accepted rationale for giving less weight to a
portion of the mark.”). As such, it does not significantly
alter the commercial impression conveyed by the words USA
TODAY in applicant’s mark. Further, we do we not find the
map design source-identifying as it is, in essence, a
visual representation of the abbreviation “USA” and merely
serves to reinforce its meaning. It is the wording LATINO
USA TODAY that will be used by consumers to call for
applicant’s services.
In terms of appearance, because the registered marks
are registered in typed or standard characters, we are
required to consider that registrant may display the words

15 Merriam-Webster Online, www.merriam-webster.com retrieved
December 5, 2009.
Ser No. 77817141
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in any reasonable form of lettering, including the one or
both fonts used by applicant. See Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847-1848 (Fed. Cir.
2000).
We simply are not persuaded by applicant’s argument
that the spatial separation of the terms LATINO and TODAY,
and the different lettering styles of those words and the
abbreviation USA, create a unique and distinguishing
commercial impression. Although USA is in a different
font, and is positioned over a map design and in between
the words LATINO and TODAY, it is of similar size to the
other words and is a clearly noticeable and prominent
element of applicant’s mark. That is, given the visual
prominence of USA and the map design in applicant’s mark,
we do not believe that consumers will focus solely on the
words LATIN and TODAY in spite of their different fonts.
We conclude that while differences admittedly exist
between the marks, we find that in their entireties,
applicant’s mark is substantially similar in appearance,
sound, connotation and commercial impression to the cited
mark. As such, purchasers of applicant’s advertising and
publicity services who are familiar with registrant’s USA
TODAY mark may view applicant’s mark as a
Ser No. 77817141
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variant thereof, and that such mark identifies a new
service sponsored by or approved by registrant.
Based on all of the evidence of record bearing on the
relevant du Pont factors, we find applicant’s mark LATINO
USA TODAY for its identified services is likely to cause
confusion with the USA TODAY marks in the cited
registrations. We conclude so principally due to the
similarity of the marks and the relatedness of applicant’s
services to the registrant’s goods and services. Last, to
the extent that any of the points raised by applicant raise
a doubt about likelihood of confusion, that doubt is
required to be resolved in favor of the prior registrant.
In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d
1025 (Fed. Cir. 1988).
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.