Miss Universe L.P., LLLPv.Rainbow Productions and Publica-tions, Inc.

Trademark Trial and Appeal Board

Nov 10, 2004

No. 91122676 (T.T.A.B. Nov. 10, 2004)

Mailed:
November 10, 2004
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
Miss Universe L.P., LLLP
v.
Rainbow Productions and Publications, Inc.
________
Opposition No. 91122676
against Application Serial No. 78019444
________
Opposition No. 91124156
against Application Serial No. 78019435
_______
Andrea L. Calvaruso and Marya Lenn Yee of Donovan & Yee LLP
for Miss Universe L.P., LLLP.
Rainbow Productions and Publications, Inc., pro se.
_______
Before Hohein, Chapman and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Rainbow Productions and Publications, Inc. seeks
registration on the Principal Register of the mark MISS T-
GIRL USA for services recited as “entertainment services in
the nature of promoting and conducting gay beauty
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition Nos. 91122676 & 91124156
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pageants,”1 and for MISS DRAGQUEEN USA for services
recited as “entertainment services in the nature of
conducting gay beauty pageants,”2 both in International
Class 41.
The above-captioned opposition proceedings were
consolidated by order of the Board dated February 25, 2002.
The cases are now ready for decision and shall be decided
in this single opinion, which shall be entered in the
proceeding files of both oppositions.
Opposer has opposed registration of the marks in both
of applicant’s applications, alleging as grounds therefor
that it is the prior user of a family of marks, including
MISS USA, MISS TEEN USA, variants of these marks having
fifty state designations, e.g., MISS [STATE] USA and MISS
[STATE] TEEN USA, and MRS. USA, all used on or in
connection with beauty pageants and promotional goods
related to these pageants; that opposer owns a Principal
Register registration for the mark MISS USA for
“entertainment services, namely, presentation of pageants
1 Application Serial No. 78019444 was filed on August 2, 2000
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce. Applicant disclaimed the words T-GIRL USA.
2 Application Serial No. 78019435 was filed on August 2, 2000
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce. Applicant disclaimed the words DRAGQUEEN
USA.
Opposition Nos. 91122676 & 91124156
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and contests” in International Class 413 and a Principal
Register registration for the mark MISS TEEN USA for
“entertainment services, namely, promoting and conducting
beauty pageants” in International Class 41;4 that it is the
owner of other variants of the MISS USA marks for all fifty
states and the District of Columbia; that applicant’s
marks, when used in connection with the services identified
in applicant’s applications, so resemble opposer’s
previously-used and registered marks, including MISS USA
and MISS TEEN USA, that it would be likely to cause
confusion, to cause mistake, or to deceive, under Trademark
Act Section 2(d), 15 U.S.C. §1052(d); and that applicant’s
proposed marks “will dilute the distinctive quality of
Opposer’s famous marks.”
Applicant, in its answer to Opposition No. 91122676
(against MISS T-GIRL USA), denied the salient allegations
of the opposition. However, applicant never filed an
answer to Opposition No. 91124156 (against MISS DRAGQUEEN
3 Registration No. 1601484 issued to Miss Universe, Inc. on
June 12, 1990 based upon a claim of use in commerce since at
least as early as 1952, section 8 affidavit accepted and section
15 affidavit acknowledged; renewed.
4 Registration No. 1660124 issued to Miss Universe, Inc. on
October 8, 1991 based upon a claim of use in commerce since at
least as early as 1983, section 8 affidavit accepted and section
15 affidavit acknowledged; renewed. The word TEEN is disclaimed
apart from the mark as shown.
Opposition Nos. 91122676 & 91124156
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USA). Furthermore, applicant did not take any testimony or
submit any evidence in the consolidated proceeding, and did
not file a brief on the consolidated cases. Neither party
requested an oral hearing.
The record consists of the pleadings; the files of the
involved applications; trial testimony, with related
exhibits, taken by opposer of Anthony Santomauro, opposer’s
vice president of business planning and development; and
status and title copies of opposer’s pleaded registrations,
introduced by way of opposer’s notices of reliance.
As noted above, in its order of February 25, 2002, the
Board consolidated these two proceedings, based upon
opposer’s motion of November 6, 2001 to do so. In
addition, the Board’s order noted that inasmuch as the
answer to Opposition No. 91124156 was due on November 14,
2001, and it appeared that no answer had been filed, notice
of default was entered against applicant under Fed. R. Civ.
P. 55(a). Applicant was given thirty days to show cause
why judgment by default should not be entered against
applicant. The record reflects no response from applicant.
Accordingly, default judgment is hereby entered against
applicant in Opposition No. 91124156; the opposition is
Opposition Nos. 91122676 & 91124156
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sustained; and registration to applicant for that
application is refused.
We turn then to a discussion of the merits of
Opposition No. 91122676.
Likelihood of Confusion
THERE IS NO ISSUE AS TO PRIORITY
Opposer has introduced into the record by way of its
notices of reliance copies of its pleaded registrations,
which show that they are valid, subsisting and owned by
opposer. Thus, this proof removes the issue of priority
from this case. See King Candy Co. v. Eunice King's
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
LIKELIHOOD OF CONFUSION FACTORS
The record demonstrates that opposer produces three
large beauty pageants each year: “Miss USA,” “Miss Teen
USA” and “Miss Universe.” Opposer also licenses all fifty
states and the District of Columbia to use its service
marks in promoting and conducting local pageants in each of
the states and the District of Columbia (e.g., MISS NEW
YORK USA, MISS ALABAMA TEEN USA, etc.).
Opposer and its predecessor have used MISS USA
continuously in presenting pageants and contests each year
Opposition Nos. 91122676 & 91124156
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since 1952, and have used MISS TEEN USA continuously in
promoting and conducting beauty pageants each year since
1983. According to the Nielsen Media ratings, in both 2001
and 2002, approximately eight million viewers watched the
MISS USA pageant while seven million viewers watched the
MISS TEEN USA pageant. In the year 2001, both of these
pageants were also broadcast in fifty-six foreign
countries.
In addition to the television broadcasts of the
pageants themselves, opposer’s MISS USA and MISS TEEN USA
events are covered on entertainment television programs
such as the “Late Show,” “Late Night with David Letterman,”
“E! Entertainment Television,” “Extra,” “Access Hollywood,”
“The Today Show,” etc. Print media coverage includes
regular pieces in The New York Times, LA Times, People,
Business Week, USA Today, JET, The Washington Post, The New
York Times, Oprah, etc.
Opposer promotes its MISS USA and MISS TEEN USA
pageants each year, spending almost three million dollars
annually to produce its “world-famous pageants.” Its
Internet websites (www.missusa.com and www.missteenusa.com)
received approximately 300 million hits between September
2001 and September 2002. Opposer earns approximately $20
Opposition Nos. 91122676 & 91124156
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million in gross annual revenues from corporate
sponsorships, from licensing its marks and from the
broadcast rights for the various pageants. Opposer spends
approximately $300,000 per year enforcing its rights in
these claimed marks.
Other than the file of the involved application, the
record contains little information about applicant or its
intended services. In fact, there is no evidence in the
record that applicant has made any use of its MISS T-GIRL
USA mark.
Our determination under Section 2(d) is based upon an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973).
We turn first to a consideration of the services. The
evidence shows that opposer is in the business of putting
on beauty pageants. Applicant’s recitation of services in
the involved application is for “entertainment services in
the nature of promoting and conducting gay beauty
pageants.” While presumably the contestants in applicant’s
pageants would be homosexuals, and this would not be the
case in opposer’s pageants, both are for entertainment
Opposition Nos. 91122676 & 91124156
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services in the nature of beauty pageants in International
Class 41. Accordingly, while the services would not be
identical, we find these services to be similar and
related.
We turn next to a consideration of the
similarities/dissimilarities of applicant’s mark, MISS T-
GIRL USA, and opposer’s marks, MISS USA and MISS TEEN
USA. It is well settled that marks must be considered in
their entireties because the commercial impression of a
mark on an ordinary consumer is created by the mark as a
whole, not by its component parts. This principle is based
upon the common sense observation that the overall
impression is created by the purchaser’s cursory reaction
to a mark in the marketplace, not from a meticulous
comparison of it to others to assess possible legal
differences or similarities. See 3 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition, §23:41 (4th
ed. 2001). See also, Dassler KG v. Roller Derby Skate
Corp., 206 USPQ 255 (TTAB 1980). Stated differently, the
proper test in determining likelihood of confusion does not
involve a side-by-side comparison of the marks, but rather
must be based on the similarity of the general overall
commercial impressions engendered by the involved marks.
Opposition Nos. 91122676 & 91124156
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In this case, when compared as to sound and
appearance, both applicant’s mark, MISS T-GIRL USA, and
opposer’s marks, MISS USA and MISS TEEN USA, all consist
of a beginning, which is “MISS,” and an ending having the
designation “USA.” Thus, the beginning and ending sounds
are identical and the structure of the composite marks is
similar. In all fifty states and the District of Columbia,
applicant licenses the use of these marks for local
pageants where the name of the state (or the District of
Columbia) is inserted between the word “MISS” and the “USA”
(or “TEEN USA”) designation (e.g., MISS TEXAS USA, MISS
GEORGIA TEEN USA, etc.). This structure, familiar to those
consumers who are exposed to the state pageants, is
identical to the structure and cadence of applicant’s
applied-for mark.
As to connotation, no evidence was properly made of
record showing the meaning of the “T-Girl” portion of
applicant’s mark. Accordingly, in the absence of any clear
insights into how prospective consumers might perceive this
term, when the parties’ respective marks are considered in
their entireties, we find that consumers may well attribute
the related beauty pageant services to a single source or
sponsorship by the same entity. Hence, while the parties’
Opposition Nos. 91122676 & 91124156
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respective marks are obviously not identical, when
considered in their entireties, we find that the mark MISS
T-GIRL USA, when compared with MISS USA and/or MISS TEEN
USA, creates similar overall commercial impressions.
We turn next to the du Pont factor focusing on the
variety of goods and/or services on which the prior marks
are used. A finding of likelihood of confusion herein is
also supported by the common law usages of an entire family
of marks, including the variants of opposer’s registered
marks having fifty state designations used on or in
connection with beauty pageants and promotional goods
related to these pageants. Specifically, we find that the
record supports the fact that the marks asserted to
comprise the “family” have been used and advertised in
promotional material in such a manner as to create common
exposure and, thereafter, recognition of common ownership
based upon a feature common to each mark, namely the “MISS
… USA” designation. See J & J Snack Foods Corp. v.
McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir.
1991); Witco Chemical Co. v. Whitfield Chemical Co., 418
F.2d 403, 164 USPQ 43 (CCPA 1969); and Dan River, Inc. v.
Apparel Unlimited, Inc. 226 USPQ 186 (TTAB 1985).
Opposition Nos. 91122676 & 91124156
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We turn then to the du Pont factor focusing on the
fame of opposer’s prior marks (e.g., the revenue,
advertising and other promotional activities, the length of
use, etc.). The record is clear that opposer has engaged
in extensive marketing of its MISS USA and MISS TEEN USA
services and collateral products. The record shows that
opposer has consistently spent a great deal of money
advertising and marketing its beauty pageants and related
goods. Also contributing to the strength and renown of
opposer’s marks is the wide variety of free media
promotional exposure provided for opposer’s beauty
pageants. Opposer takes in annual revenues of more than
$20 million, having spent three million dollars each year
to produce its world-famous pageants. In the most recent
years for which there is data in this record, eight million
viewers in the United States watched the MISS USA pageant
while seven million viewers watched the MISS TEEN USA
pageant. Both pageants were also broadcast in fifty-six
foreign countries. Opposer’s Internet websites receive 300
million hits each year, and opposer spends an average of
$300,000 each year enforcing its rights in these claimed
marks.
Opposition Nos. 91122676 & 91124156
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Accordingly, we find the record sufficient to
establish recognition of opposer’s beauty pageant services
and the involved marks among vast numbers of consumers.
The record of opposer’s marketing efforts and media
exposure is most impressive. On the record before us, we
conclude that opposer’s services are not unlike the product
of the opposer in Kenner Parker Toys Inc. v. Rose Art
Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir.
1992), insofar as the opposer in that case was said to have
had a “piece of gold” that, at one time, had been the most
advertised product in its industry. For purposes of our
likelihood of confusion determination herein, we agree with
other tribunals who have been faced with this question,5 and
we find, based upon the record before us, that the terms
MISS USA and MISS TEEN USA are well-known marks, deserving
of a wide scope of protection.
In balancing all the relevant du Pont factors, we find
that applicant’s MISS T-GIRL USA mark, when used in
connection with the services set forth in its application,
so resembles opposer’s MISS USA and MISS TEEN USA marks,
5 See e.g., Miss Universe, Inc. v. Miss Teen U.S.A., Inc.,
209 USPQ 698 (N.D. Georgia 1980); Miss Universe, Inc. v. Little
Miss U.S.A., Inc., 212 USPQ 425 (N.D. Georgia 1981); Miss
Universe, Inc. v. Pitts, 714 F.Supp. 209, 14 USPQ2d 2004 (N.D.
Louisiana 1989).
Opposition Nos. 91122676 & 91124156
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for its beauty pageant services and related promotional
goods, as to be likely to cause confusion, to cause mistake
or to deceive as to source or sponsorship.
In conclusion, we find the evidence of record clearly
supports a finding that there is a likelihood of confusion,
and we sustain the opposition based thereon. Having
sustained the opposition on this basis, we do not reach the
claim asserted by opposer that applicant’s proposed mark
“will dilute the distinctive quality of Opposer’s famous
marks.”
Decision: Opposition No. 91124156 is sustained based
upon a default judgment under Fed. R. Civ. P. 55, and
registration to applicant for application Serial No.
78019435 is refused. Opposition No. 91122676 is sustained
based upon a likelihood of confusion, and registration to
applicant for application Serial No. 78019444 is also
refused.