Nick BovisDownload PDFTrademark Trial and Appeal BoardMay 14, 2010No. 77502616 (T.T.A.B. May. 14, 2010) Copy Citation Mailed: May 14, 2010 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Nick Bovis ________ Serial No. 77502616 _______ Erik M. Pelton of Erik M. Pelton & Associates, PLLC, for Nick Bovis. Jason F. Turner, Trademark Examining Attorney, Law Office 108 (Andrew Lawrence, Managing Attorney). _______ Before Quinn, Zervas, and Ritchie, Administrative Trademark Judges. Opinion by Ritchie, Administrative Trademark Judge: Nick Bovis (“applicant”) filed an application to register the mark MOTOWN MONDAY,1 for services identified as “entertainment services in the nature of live musical performances.” 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 1 Serial No. 77502616, in International Class 41, filed June 19, 2008, pursuant to Section 1(a) of the Trademark Act, 15 U.S.C. §1051(a), alleging dates of first use anywhere and first in commerce on January 7, 2006, and disclaiming the exclusive right to use “MONDAY” apart from the mark as shown. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77502616 2 applicant’s mark so resembles the registered mark MOTOWN,2 for “providing popular musical musical entertainment,” that when used on or in connection with applicant’s identified services, it is likely to cause confusion or mistake or to deceive. Upon final refusal of registration, applicant filed a timely appeal. Both applicant and the examining attorney filed briefs and applicant filed a reply brief. For the reasons discussed herein, the Board affirms 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); 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, two key considerations are the similarities between the marks and the similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in 2 Registration No. 0881471, in International Class 41, issued November 25, 1969, based on first use anywhere and first use in commerce on October 16, 1966. Sections 8 and 15 affidavits acknowledged and accepted. Renewed three times. Registered to Motown Record Corporation (last listed owner UMG Recordings, Inc.). Serial No. 77502616 3 the marks”). We discuss each of the du Pont factors as to which applicant or the examining attorney submitted argument or evidence. The Services, Channels of Trade and Classes of Purchasers The cited registration identifies “providing popular musical entertainment” while the application identifies “entertainment services in the nature of live musical performances.” Although the term “popular” might be deemed to exclude certain types of music, such as classical music, the services clearly overlap, and indeed may be considered to be legally identical. Applicant has not argued to the contrary. We find that this du Pont factor strongly favors finding a likelihood of confusion. We presume that the services are marketed in all normal trade channels and to all normal classes of purchasers for such services. Both the services in the application and those in the cited registration cover popular music, and there are no limits to trade channels and purchasers for that kind of music. Packard Press Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351 (Fed. Cir. 2000); Octocom Systems Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990). Moreover, because registrant’s services and applicant’s services as identified in the application and the cited registration are legally identical, we presume that the respective services are or will be rendered in the same trade channels and to the same classes of purchasers. Brown Shoe Co. v. Robbins, 90 USPQ2d 1752 (TTAB 2009); Genesco Inc. v. Martz, Serial No. 77502616 4 66 USPQ2d 1260 (TTAB 2003); In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994). Accordingly, we find that this du Pont factor also weighs in favor of finding a likelihood of confusion. The Marks Preliminarily, we note “When marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines.” Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992). We consider and compare the appearance, sound, connotation and commercial impression of the marks in their entireties. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). In comparing the marks, we are mindful that 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 terms of their overall commercial impression so that confusion as to the source of the goods and/or services offered under the respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff'd unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. Winnebago Industries, Inc. v. Oliver & Winston, Serial No. 77502616 5 Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). The mark in the cited registration consists solely of the word “MOTOWN.” Applicant argues that this is a weak mark, entitled to little scope of protection. Applicant offered a great deal of evidence regarding his argument, to wit, close to seven hundred pages. However, at core, the relevant question is whether so many third parties use the shared term MOTOWN that consumers will look to their points of differentiation to distinguish the marks. See In re Broadway Chicken Inc., 38 USPQ2d 1559 (TTAB 1996). In that case, the Board found no likelihood of confusion where the applicant submitted evidence that “hundreds of businesses” use the shared term for the service for which applicant sought registration. In this case, by contrast, applicant’s evidence consists primarily of showing that the word “Motown” is sometimes used as a nickname for the city of Detroit. Although the original registrant of the cited registration was apparently based in Detroit, it is still an inherently strong mark for registrant’s music services. Applicant submitted little evidence of third- party use of the term “Motown” for music. In particular, applicant was able to point to just a few trademark and trade names incorporating the term “Motown” for music-related services. Rather, most of the evidence pointed to registrant or its predecessor. For example, several of the dictionary defintions of “Motown” submitted by applicant refer to Serial No. 77502616 6 registrant’s trademark rights in the name. Some examples include: Motown: the proprietary name for records produced by the Motown Record Corporation of Detroit, Michigan, United States, founded in 1959 by Berry Gordy Jr.., shortened Copy with citationCopy as parenthetical citation