Oddesse, Inc.

Trademark Trial and Appeal Board

Jan 7, 2008

No. 78856580 (T.T.A.B. Jan. 7, 2008)

Mailed:
January 7, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Oddesse, Inc.
________

Serial No. 78856580
_______

Matthew H. Swyers of The Swyers Law Firm, PLLC for Oddesse,
Inc.

Rudy R. Singleton, Trademark Examining Attorney, Law Office
102 (Karen Strzyz, Managing Attorney).
_______

Before Seeherman, Hohein and Hairston, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Oddesse, Inc. has appealed from the final refusal of
the Trademark Examining Attorney to register SUGARVOD, in
standard characters, for “streaming of adult-themed video
material on the Internet; and Adult-themed video-on-demand
transmission services” in Class 38.1 Registration has been
refused pursuant to Section 2(d) of the Trademark Act, 15
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78856580
2
U.S.C. §1052(d), on the ground that applicant’s mark so
resembles the mark SUGAR and design, as depicted below,
which is registered for, inter alia, “telecommunication
services which allow a person to get in oral and visual
communication with another, namely, transmission of voice,
data and graphics by means of telephone, telegraphic,
television, radio, cable, computer network and satellite
transmissions,” as to be likely, when used in connection
with applicant’s services, to cause confusion or mistake or
to deceive.2

The description of the mark that appears in the
registration states that “the mark consists of the word

1 Application Serial No. 78856580, filed April 7, 2006, based on
Section 1(b) of the Trademark Act (intent to use).
2 Registration No. 2829011, issued April 6, 2004. The
registration also includes goods in Classes 9 and 16, but it is
clear that the Examining Attorney considers applicant’s mark is
likely to cause confusion only with respect to the services in
Class 38, and therefore we have limited our discussion to such
services.

Ser No. 78856580
3
‘SUGAR’ in blue over a circle design which contains shades
of dark and light blue.”
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 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, 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).
Applicant’s mark is SUGARVOD; the cited mark is the
word SUGAR depicted within a circular design. As applicant
has recognized, in comparing marks 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 a
consideration of the marks in their entireties. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). In the present case, the term VOD is highly
Ser No. 78856580
4
descriptive of applicant’s services. The Examining
Attorney has submitted evidence showing that VOD is a
recognized abbreviation for “video-on-demand.” See
definition in “Compact Oxford English Dictionary,” reported
at AskOxford.com. An entry in Webopedia,
www.pcwebopaedia.com, states that “VoD” is
short for Video-on-Demand, an umbrella
term for a wide set of technologies and
companies whose common goal is to
enable individuals to select videos
from a central server for viewing on a
television or computer screen. VoD can
be used for entertainment (ordering
movies transmitted digitally),
education (viewing training videos),
and videoconferencing (enhancing
presentations with video clips).
Although VoD is being used somewhat in
all of these areas, it is not yet
widely implemented. VoD’s biggest
obstacle is the lack of a network
infrastructure that can handle the
large amounts of data required by
video.

Thus, VOD in applicant’s mark would be viewed as a
descriptive or generic term for applicant’s “video-on-
demand” transmission services, and it is the SUGAR portion
of applicant’s mark that consumers would regard as having
source-indicating significance. As for the cited mark,
again applicant has recognized that if a mark comprises
both a word and a design, then the word is normally
accorded greater weight because it would be used by
Ser No. 78856580
5
purchasers to request the goods or services. See In re
Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). That
is the situation with the registrant’s mark. The circle
design is likely to be perceived as a mere background for
the word SUGAR--in effect, as a “carrier” for the word
mark. It is the word SUGAR, which is visually the most
prominent part of the mark, and which is the only part of
the mark that can be articulated, that will make the far
greater impression on consumers. Thus, although we have
compared the marks in their entireties, we give greater
weight to the word SUGAR in both marks, and find that both
marks are similar in appearance, pronunciation and meaning,
and convey substantially the same commercial impression.
Again, we recognize that when the marks are compared side-
by-side, there are specific differences that can be
identified. However, under actual marketing conditions,
consumers do not necessarily have the luxury of making
side-by-side comparisons between marks, and must rely upon
their imperfect recollections. Dassler KG v. Roller Derby
Skate Corporation, 206 USPQ 255 (TTAB 1980). In the
present case, even if consumers were to notice that
applicant’s mark contains the additional element VOD, they
are likely to assume that the owner of the registered mark
was using SUGARVOD to inform purchasers of the particular
Ser No. 78856580
6
nature of the video on demand services, rather than to view
SUGARVOD as a mark indicating services coming from a
separate source.
Accordingly, we find that the du Pont factor of the
similarity of the marks favors a finding of likelihood of
confusion.
During the course of prosecution, applicant submitted
various third-party registrations for marks that contain
the word SUGAR. Third-party registrations can be used in
the manner of dictionary definitions, to show that a term
has a particular significance in an industry. Mead Johnson
& Company v. Peter Eckes, 195 USPQ 187 (TTAB 1977). We
note that the third-party registrations submitted by
applicant are primarily for goods in Class 9 and 16, and
therefore these registrations do not show that SUGAR has a
suggestive or descriptive meaning for services in Class 38,
or that registrant’s mark is entitled to a limited scope of
protection vis-à-vis applicant’s mark for Class 38
services.
The only third-party registration for services in
Class 38 that applicant can point to is Registration No.
2698785 for the mark SUGARCULT for “providing on-line
electronic bulletin boards for transmission of messages
among computer users concerning musical groups; providing
Ser No. 78856580
7
on-line chat rooms for transmission of messages among
computer users concerning musical groups.” This single
registration certainly does not prove that SUGAR has a
suggestive or descriptive meaning for the registrant’s
identified telecommunication services. Moreover, there is
a greater difference between SUGARCULT and the cited mark
than there is between applicant’s mark and the cited mark.
Thus, the fact that the Office considered the two
registered marks different enough to coexist does not show
that there would be no confusion between applicant’s mark
and the cited mark. We also point out that the Board must
decide each case on its own merits and that the USPTO's
allowance of prior registrations does not bind the Board.
In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564,
1566 (Fed. Cir. 2001). Thus, to the extent that applicant
has relied on the third-party registrations to show that
the cited registration is a weak mark and is entitled to a
limited scope of protection, we are not persuaded by this
argument.
We turn now to a consideration of the services.
Applicant has, through the course of prosecution of its
application, narrowed its identification and it now is
limited to services which transmit material with an adult-
themed content, namely, streaming of adult-themed video
Ser No. 78856580
8
material on the Internet and adult-themed video-on-demand
transmission services. The cited registration is not
limited as to the content of the communications it
transmits; the services are identified as telecommunication
services which allow a person to get in oral and visual
communication with another, and it lists a variety of media
for such communications, including computer network,
satellite and television transmissions. Because the
registrant’s services are broadly described, they can
include adult-themed communications, and the media for the
transmissions include the same media as applicant’s
identified services, e.g., streamed on the Internet or
video on demand transmissions through the Internet or
television or satellite. Thus, applicant’s services and
the registrant’s services, as they are identified, must be
deemed to include the same classes of consumers, such as
adults who wish to engage, through the Internet, in
communications of a sexual nature with another person or
persons, and also wish to view adult entertainment on a
video on demand basis or through video streaming.
This similarity in the nature of the services and the
consumers for the services would be sufficient for us to
find the services related. However, the Examining Attorney
has also made of record several third-party registrations
Ser No. 78856580
9
which show that entities have adopted a single mark for
services similar to those identified in applicant’s
application and the cited registration. See, for example,
Registration No. 2934820 for, inter alia, electronic
transmission of images, audio, voice and messages via
satellite, television and communication networks and video-
on-demand transmission services; Registration No. 3074361
for, inter alia, providing transmission of voice, data,
facsimile and video via computer, television and
telecommunications networks, voice and video conferencing
services, and video on demand transmission services;
Registration No. 3021927 for, inter alia, interactive
communications services, namely, receipt, transmission and
broadcasting of video and video-on-demand by means of
satellite, the global computer network and other
technologies that enable communications; Registration No.
2670316 for, inter alia, streaming of audio and video
material on the Internet, electronic, electric and digital
transmission of voice, images and messages, local and long
distance transmission of voice, data, graphics by means of
telephone, telegraphic, cable and satellite transmissions,
and video on demand transmission services; and Registration
No. 3023147 for, inter alia, video on demand television
broadcasting and transmission services and electronic
Ser No. 78856580
10
transmission of voice, images, signals and messages. We
acknowledge that only a few of the third-party
registrations specifically mention that the transmissions
have an adult-themed content, but that does not lessen the
probative value of the registrations as showing that the
general type of services identified in applicant’s
application and those identified in the cited registration
are of a type which may emanate from a single source. See
In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB
1993). We also point out that registrants are not required
to identify with particularity the specific subject matter
of the communications that are transmitted using their
services, and therefore one would not expect third-party
registrations to contain such information. In this
connection, we note that applicant originally identified
its services as “Broadcasting services and provision of
telecommunication access to films and tv programmes
provided via a video-on-demand service; Streaming of video
material on the Internet; Transmission of sound, video and
information; Video teleconferencing; Video–on-demand
transmission services.” It was not until applicant filed
its request for reconsideration that it restricted its
identification to identify the content of its transmissions
as having an adult theme.
Ser No. 78856580
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We find that the du Pont factor of the similarity of
the services favors a finding of likelihood of confusion.
Both applicant and the Examining Attorney have limited
their arguments to the du Pont factors discussed above.
Because of this, and because no evidence has been submitted
on other factors, we, too, have limited our discussion to
these factors. To the extent that any other factors are
applicable, we must treat them as neutral.
Considering all of the evidence of record as it
pertains to the du Pont factors, and for the reasons
discussed above, we find that applicant’s use of the mark
SUGARVOD for its identified services is likely to cause
confusion with the mark SUGAR and design for the services
set forth in Registration No. 2829011.
Decision: The refusal of registration is affirmed.