MUS, Inc.

Trademark Trial and Appeal Board

May 24, 2012

No. 77865028 (T.T.A.B. May. 24, 2012)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: May 24, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re MUS, Inc.
________

Serial No. 77865028
_______

Barry W. Chapin and Christopher J. Lutz of Chapin
Intellectual Property Law LLC for MUS, Inc.

Ada P. Han, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
_______

Before Seeherman, Cataldo and Mermelstein,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, MUS, Inc., filed an application to register
the mark GREEN DOOR in standard characters on the Principal
Register for the following services, as amended: “Adult
entertainment services, namely, an adult-themed social club
for engaging in adult-themed erotic activities, excluding
restaurant and bar services” in International Class 41.1

1 Application Serial No. 77865028 was filed on November 4, 2009
based upon applicant’s assertion of August 1, 1998 as a date of
first use of the mark anywhere and in commerce in connection with
the services.
Ser. No. 77865028
2
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used in connection with its services,
so resembles the mark THE GREEN DOOR, previously registered
on the Principal Register in standard characters for
“restaurant and bar services,” in International Class 43,2
as to be likely to cause confusion, mistake or deception.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs on the
issue on appeal.
Likelihood of Confusion
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, 567 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (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, 27 (CCPA

2 Registration No. 3513748 issued on October 7, 2008.

Ser. No. 77865028
3
1976). See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
The Marks
We first consider the similarity of the marks. To
state the obvious, applicant’s GREEN DOOR mark is
essentially identical to registrant’s mark, THE GREEN DOOR.
The mere absence of the definite article THE from
applicant’s mark does not serve to distinguish it from
registrant’s mark. It is settled that definite articles
such as THE generally possess little, if any, source-
indicating significance. See In re Thor Tech, Inc. 90
USPQ2d 1634, 1635 (TTAB 2009); and In re Narwood
Productions, Inc., 223 USPQ 1034 (TTAB 1984) (noting the
insignificance of the word “the” in comparison of THE MUSIC
MAKERS and MUSICMAKERS). See also In re Universal Package
Corporation, 222 USPQ 344, 345 (TTAB 1984); Conde Nast
Publications Inc. v. Redbook Publishing Company, 217 USPQ
356, 357 (TTAB 1983); and United States National Bank of
Oregon v. Midwest Savings and Loan Association, 194 USPQ
232, 236 (TTAB 1977).
As a result, besides applicant’s GREEN DOOR mark being
nearly identical to registrant’s THE GREEN DOOR mark in
appearance and sound, we find that the marks are identical
in meaning or connotation and that, as a whole, the marks
Ser. No. 77865028
4
convey identical commercial impressions. The fact that the
marks are essentially identical results in this factor
strongly supporting the examining attorney’s position. In
re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir.
1993). See also Amcor, Inc. v. Amcor Industries, Inc., 210
USPQ 70, 78 (TTAB 1981). This du Pont factor weighs in
favor of a finding of likelihood of confusion.
The Services
We next turn to the similarity or dissimilarity
between applicant’s recited services and the services
identified in the cited registration. We note that “it is
not necessary that the goods or services be identical or
even competitive in nature in order to support a finding of
likelihood of confusion, it being sufficient that the goods
or services are related in some manner and/or that the
circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons
under circumstances that would give rise, because of the
marks employed thereon, to the mistaken belief that they
originate from or are in some way associated with the same
producer.” In re Home Builders Assn. of Greenville, 18
USPQ2d 1313, 1317 (TTAB 1990).
When we address the question of whether services are
related, we must compare the services as they are described
Ser. No. 77865028
5
in the application and registration. Octocom Systems, Inc.
v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990) (“The authority is legion that
the question of registrability of an applicant’s mark must
be decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed”). See also Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods”); and Dixie
Restaurants, 41 USPQ2d at 1534 (punctuation in original),
quoting Canadian Imperial Bank of Commerce v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1816 (Fed. Cir. 1987)
(“‘Likelihood of confusion must be determined based on an
analysis of the mark as applied to the … services recited
in applicant’s application vis-à-vis the … services recited
in [a] … registration, rather than what the evidence shows
the … services to be’”).
The services identified in the subject application are
“Adult entertainment services, namely, an adult-themed
social club for engaging in adult-themed erotic activities,
Ser. No. 77865028
6
excluding restaurant and bar services.” We find this
recitation of services to be sufficiently self-explanatory
that we do not need to consider extrinsic evidence in order
to understand the nature of the services. Cf. In re
Trackmobile, Inc., 15 USPQ2d 1152 (TTAB 1990). We note
nonetheless that evidence made of record by applicant and
the examining attorney corroborates that applicant provides
a sex club or “swingers” club in which couples and
individuals may engage in sexual activity or observe others
so engaged.3 These services do not appear to be related to
registrant’s “restaurant and bar services.” That is to
say, on the face of the respective recitations, it is clear
that applicant’s services are different from those of
registrant. We therefore look to the evidence of record to
determine whether these services are related.
In support of the refusal to register, the examining
attorney has made of record approximately 20 third-party
registrations reciting “restaurant and bar services” along
with other goods and/or services. However, only one also
recites adult-oriented services that arguably may be

3 See exhibits to the examining attorney’s February 9, 2010
Office action and applicant’s brief. While exhibits submitted
for the first time with an applicant’s brief normally would be
untimely, the examining attorney discussed these materials in her
brief and did not otherwise object thereto. Accordingly, they
are deemed to have been stipulated into the record. See TBMP
§ 1207.03 (3d ed. 2011).
Ser. No. 77865028
7
related to those in the involved application: Registration
No. 2852441 for services including “Adult entertainment in
the nature of live nude, semi-nude, erotic, lap and table
dancing; adult cabarets; night clubs; show clubs” as well
as “restaurant and bar services.”
The remaining registrations generally recite night
club services in addition to “restaurant and bar services.”
However, applicant does not provide night club services.
We hereby take judicial notice of the following definition
of night club: “an establishment for evening
entertainment, generally open until the early morning, that
serves liquor and usually food and offers patrons music,
comedy acts, a floor show, or dancing; nightspot.”4 The
examining attorney made of record several pages from the
internet website of a single entity identifying itself as a
bar and night club5 that provides night club services in
accordance with the above definition and, on Saturday
nights, also provides private rooms for “swingers.” We
find the services provided by this single entity do not
establish that applicant’s adult social club may be

4 Random House Dictionary (2012). The Board may take judicial
notice of dictionary definitions. See In re CyberFinancial.Net
Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002). See also University
of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213
USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983).
5 Sugarhousedenver.com.
Ser. No. 77865028
8
considered a night club such that the third-party
registrations reciting night club services may be
considered probative of the similarity or dissimilarity of
the services at issue herein.
Nor do we find the examining attorney’s evidence from
applicant’s internet web site which indicate that its adult
social club includes a bar and serves alcoholic drinks
persuasive of her position that applicant’s services are
related to registrant’s services. To be clear on this
point, the language in applicant’s amended recitation of
services “excluding restaurant and bar services” is not
sufficient to render applicant’s services unrelated to
those of registrant. Nonetheless, based on the respective
identifications, we cannot treat the services for which
applicant seeks registration as encompassing bar services.
As discussed above, our determination of the relatedness of
the services is based upon the services as recited in the
involved application and cited registration. Octocom
Systems, Inc., 16 USPQ2d at 1787; and Paula Payne Products,
177 USPQ at 77.
The examining attorney must present evidence that
applicant’s recited services are related to those in the
cited registration. Evidence that applicant’s club may in
fact include a bar and may provide alcoholic drinks to its
Ser. No. 77865028
9
members (and the evidence of record is contradictory on
these points) does not establish a similarity between
applicant’s sex or “swingers” club and registrant’s
restaurant and bar. In this case, the examining attorney
has provided a single third-party registration and pages
from a single third-party Internet web site suggesting that
a viable relationship exists between adult-themed social
clubs for engaging in adult-themed erotic activities,
regardless of whether alcoholic beverages are provided
there, and “restaurant and bar services.” This simply is
insufficient to show that consumers would expect that bar
services and social club services for engaging in adult-
themed erotic activities would emanate from the same
source, even if they were offered under the same mark.
We recognize the multifarious connection that exists
between alcohol and sexual activity. We further are
mindful that habitués of bars may utilize such venues as a
prelude to adult-themed erotic activities. However, this
tangential connection between bar services and erotic
activities is not a basis for finding the offering of bar
services and an adult-themed social club to be related.
Accordingly, based upon the record before us this du
Pont factor weighs against a finding of likelihood of
confusion.
Ser. No. 77865028
10
Summary
We have considered all of the evidence of record
directed toward the refusal to register, including any
evidence not specifically discussed herein. We observe
that neither applicant nor the examining attorney has
presented evidence with regard to any du Pont factors other
than the similarity or dissimilarity of the services.
Despite the near identity of the marks, we find that the
paucity of evidence of a relationship between the services
outweighs this factor. Any one of the du Pont factors may,
from case to case, play a dominant role. Du Pont, 476 F.2d
at 1361, 177 USPQ at 567. See also Kellogg Co. v. Pack’em
Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed.
Cir. 1991) (Court found “no reason why, in a particular
case, a single DuPont factor may not be dispositive”). In
this case, because of the dissimilarity of the services, we
find that confusion is not likely.
Decision: The refusal of registration is reversed.
Accordingly, the involved application will be forwarded for
publication in due course.