Nielsen Business Media, Inc.

Trademark Trial and Appeal Board

Jan 28, 2010

No. 77223738 (T.T.A.B. Jan. 28, 2010)

Mailed:
January 28, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Nielsen Business Media, Inc.
________

Serial No. 77223725
Serial No. 77223738
_______

Gene S. Winter of St. Onge Steward Johnston & Reens LLC for
Neilsen Business Media, Inc.

Julie A. Watson, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Seeherman, Bergsman and Ritchie, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Nielsen Business Media, Inc. (“applicant”) filed
intent-to-use applications for the mark THE BOLLYWOOD
REPORTER, in standard character form, for “newspapers in
the field of entertainment,” in Class 16 (Serial No.
77223725) and “providing on-line publications in the nature
of newspapers in the field of entertainment,” in Class 41
(Serial No. 77223738). Applicant claimed ownership of
“U.S. Registration Number(s) 0856584, 1140385, 1185696, and
THIS OPINION IS A
PRECEDENT OF THE TTAB
Serial No. 77223725
Serial No. 77223738
2
others.” The registrations are for various forms of the
mark THE HOLLYWOOD REPORTER, and they are set forth below.
1. Registration No. 0856584 for the mark THE
HOLLYWOOD REPORTER and design, shown below, for a “daily
newspaper dealing primarily with the entertainment
industry,” in Class 16.

2. Registration No. 1140385 for the mark THE
HOLLYWOOD REPORTER and design, shown below, for “a daily
newspaper dealing primarily with the entertainment
industry,” in Class 16.

3. Registration No. 1185696 for the mark THE
HOLLYWOOD REPORTER STUDIO BLU-BOOK and design, shown below,
for a “motion picture, television and radio directory
issued yearly,” in Class 16.

Serial No. 77223725
Serial No. 77223738
3
During the prosecution of the application, applicant
also claimed ownership of Registration No. 2245657 for the
mark THEHOLLYWOODREPORTER.COM, in typed drawing form, for
“providing information in the field of film, television,
music and entertainment via a global computer network,” in
Class 41. In its brief, applicant claimed ownership of
Registration No. 3519615, for the mark THE HOLLYWOOD
REPORTER, in standard character form, for “printed
newspapers, magazines, and periodicals in the field of the
entertainment industry,” in Class 16 and “providing
information in the field of film, television, music and
entertainment via the internet,” in Class 41.1
In response to the refusal to register on the ground
that the mark is merely descriptive of the goods, applicant
claimed that its mark had acquired distinctiveness, or
secondary meaning, and was therefore registrable in
accordance with the provisions of Section 2(f) of the
Trademark Act of 1946, 15 U.S.C. §1052(f). Applicant
asserted that pursuant to Trademark Rule 2.41(b), the mark
sought to be registered had acquired distinctiveness by
virture of applicant’s ownership of the THE HOLLYWOOD

1 We consider the two additional registrations as part of the
record because the electronic application form does not permit
applicant to list more than three registrations and the Examining
Attorney did not object to the applicant’s reference to the
registrations.
Serial No. 77223725
Serial No. 77223738
4
REPORTER registrations for related goods and services.
However, the Examining Attorney concluded that the mark THE
BOLLYWOOD REPORTER is not the same as or legally equivalent
to the mark THE HOLLYWOOD REPORTER, and she refused
registration.
The two applications were consolidated in the Board’s
February 20, 2009 order.
The issue on appeal is whether applicant’s ownership
of the registrations for THE HOLLYWOOD REPORTER is
sufficient to support applicant’s claim that the mark THE
BOLLYWOOD REPORTER has acquired distinctiveness or
secondary meaning.
As noted earlier, the applications at issue are based
on an intent to use each mark in commerce as provided under
Section 1(b) of the Trademark Act of 1946. Section 2(f) is
limited by its terms to “a mark used by the applicant.” A
claim of distinctiveness under Section 2(f) is normally not
filed in a Section 1(b) application before the applicant
files an amendment to allege use or a statement of use,
because a claim of acquired distinctiveness, by definition,
requires prior use. However, an intent-to-use applicant
that has used the same mark on related goods or services
may file a claim of acquired distinctiveness under Section
2(f) before filing an amendment to allege use or statement
Serial No. 77223725
Serial No. 77223738
5
of use, if the applicant can establish that, as a result of
the applicant’s use of the previously registered mark on
other goods or services, the mark has become distinctive of
the goods or services in the intent-to-use application, and
that this previously created distinctiveness will transfer
to the goods and services in the intent-to-use application
when use in commerce begins. In re Dial-A-Matress
Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed.
Cir. 2001); In re Jack B. Binion, ___ USPQ2d ___ (TTAB
December 23, 2009, Serial Nos. 76590702 and 76590729).
Trademark Rule 2.41(b) provides that ownership of a
registration of “the same mark” on the Principal Register
may be accepted as prima facie evidence of acquired
distinctiveness. In relying on this rule, an applicant is
essentially seeking to “tack” the use of the registered
mark to its use, or intended use, of the present mark for
purposes of transferring distinctiveness to the new mark.
In re Flex-O-Glass, Inc., 194 USPQ 203, 205-206 (TTAB
1977). Thus, the analysis used to determine whether the
mark at issue is “the same mark” as its previously
registered mark, for purposes of this rule, is the analysis
used in tacking cases (i.e., whether the marks are legal
equivalents). In re Dial-A-Matress Operating Corp.,
Serial No. 77223725
Serial No. 77223738
6
57 USPQ2d at 1812; Van Dyne-Crotty, Inc. v. Wear-Guard
Corp., 926 F.2d 1156, 17 USPQ2d 1866, 1868 (Fed. Cir.
1991).
To meet the legal equivalents test, the marks must be
indistinguishable from one another or create the same,
continuing commercial impression such that the consumer
would consider both marks as the same mark. In re Dial-A-
Matress Operating Corp., 57 USPQ2d at 1812; Van Dyne-
Crotty, Inc. v. Wear-Guard Corp., 17 USPQ2d at 1868.
“[T]he standard of legal equivalence used in reviewing
efforts to ‘tack’ the prior use of one mark onto that of
another is higher than that used in evaluating two
competing marks. … [E]ven if the two marks are confusingly
similar, they still may not be legal equivalents. … [T]he
later mark should not materially differ from or alter the
character of the mark attempted to be ‘tacked.’” Van Dyne-
Crotty, Inc. v. Wear-Guard Corp., 17 USPQ2d at 1868.
The marks at issue are not legal equivalents because
they have different meanings and engender different
commercial impressions. “Bollywood” is “the extravagantly
theatrical Indian motion picture industry.”2 “Hollywood” is
“the center of the American motion picture industry located

2 MSN.ENCARTA Dictionary (encarta.msn.com) attached to the
September 25, 2007 Office Action.
Serial No. 77223725
Serial No. 77223738
7
in Hollywood, California.”3 THE BOLLYWOOD REPORTER means
and creates the commercial impression of a news source
regarding the Indian movie industry while THE HOLLYWOOD
REPORTER means and creates the commercial impression of a
news source regarding the American movie industry.
Applicant argues that there is only an inconsequential
difference between the marks.
The only literal difference between the
marks THE BOLLYWOOD REPORTER and THE
HOLLYWOOD REPORTER is the substitution
of the letter H to the letter B. Both
BOLLYWOOD and HOLLYWOOD are recognized
as descriptive terms referencing film
industries in India and the United
States respectively. Therefore, the
only difference in connotation between
the marks is a single letter difference
in a descriptive term. … Indeed, the
term Bollywood would not exist if it
were not for the well-known use of the
word Hollywood.4

The substitution of the letter “B” for the letter “H”
is not an inconsequential difference between the marks. An
inconsequential difference does not change the meaning or
commercial impression engendered by the marks as
applicant’s letter substitution does. See e.g., In re

3 The Random House Dictionary of the English Language
(Unabridged), p. 912 (2nd ed. 1987). The Board may take judicial
notice of dictionary evidence. University of Notre Dame du Lac
v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
4 Applicant’s Brief, p. 5.
Serial No. 77223725
Serial No. 77223738
8
Dial-A-Matress Operating Corp., 57 USPQ2d at 1813 (“1-888-
M-A-T-R-E-S-S” is the legal equivalent of
“(212) M-A-T-R-E-S” because the difference in spelling
between M-A-T-R-E-S-S and M-A-T-R-E-S is immaterial and
different area codes are limited by the telephone
companies); American Security Bank v. American Security and
Trust Company, 571 F.2d 564, 197 USPQ 65, 67 (CCPA 1978)
(AMERICAN SECURITY is legally equivalent to AMERICAN
SECURITY BANK); Hollowform, Inc. v. Delma AEH, 515 F.2d
1174, 185 USPQ 790, 790 (CCPA 1975) (TOPKAT and TOP KAT are
legally identical marks); In re Loew’s Theaters, Inc., 223
USPQ 513, 514 n.5 (TTAB 1984), aff’d, 769 F.2d 764, 226
USPQ 865 (Fed. Cir. 1985) (“We do not, however, agree with
the Examining Attorney that a minor difference in the marks
(i.e., here, merely that the mark of the existing
registration is in plural form) is a proper basis for
excluding any consideration of this evidence under the rule
[2.41(b)]”). In this case, however, the substitution of
the letter “B” for the letter “H” is not an immaterial
misspelling or pluralization of previously registered mark,
nor is it the addition of a generic term to the previously
registered mark. Although Bollywood and Hollywood both
connote movie industries, they identify different movie
Serial No. 77223725
Serial No. 77223738
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industries that specialize in different types of movies.
Consumers will not equate “Bollywood” with “Hollywood.”
Because THE HOLLYWOOD REPORTER and THE BOLLYWOOD
REPORTER are not legal equivalents, applicant may not rely
on its previously registered marks to show that THE
BOLLYWOOD REPORTER has acquired distinctiveness in
accordance with Trademark Rule 2.41(b).
Decision: The refusal to register is affirmed.