Pamela Mayo a/k/a gfirev.Boosweet Enterprises, LLC

Trademark Trial and Appeal Board

Sep 28, 2015

No. 92050622 (T.T.A.B. Sep. 28, 2015)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: September 28, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board

______

Pamela Mayo a/k/a gfire

v.

Boosweet Enterprises, LLC
___

Cancellation No. 92050622
___

Mark J. Groff of Akin Gump Strauss Hauer & Feld LLP for Pamela Mayo.

Richard B. Jefferson of M.E.T.A.L. Law Group, LLC for Boosweet Enterprises, LLC.
______

Before Cataldo, Wellington and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Boosweet Enterprises, LLC (“Respondent”) owns a registration for the mark G-
FIRE, in standard characters, for “Downloadable musical sound recordings; Musical
sound recordings; Musical video recordings; Sound recordings featuring music;
Video recordings featuring music; Pre-recorded CDs, video tape, laser disks and
DVDs featuring music” (the “Registration”).1 In her amended petition for

1 Registration No. 3520150, issued October 21, 2008; Section 8 Affidavit accepted.
Cancellation No. 92050622

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cancellation, Pamela Mayo a/k/a gfire (“Petitioner”) alleges prior use of GFIRE for
“various music related goods and services, live musical performances and DJ
services,” and that use of Respondent’s mark is likely to cause confusion with
Petitioner’s mark.2 In its answer, Respondent denies the salient allegations in the
petition for cancellation.3
Bifurcation and Accelerated Case Resolution
In the June 14, 2011 order on Petitioner’s motion for summary judgment, the
Board found that Respondent conceded Petitioner’s priority with respect to her live
musical performances and DJ services. 28 TTABVue 4.4 In the November 24, 2014
order concerning accelerated case resolution (“ACR”) and trial, the Board approved
the parties’ stipulation to bifurcate Petitioner’s likelihood of confusion and fraud
claims, and to try the likelihood of confusion claim first. In that order, the Board
also approved the parties’ stipulations: (1) to proceed under ACR; and (2) that there
is a likelihood of confusion between Petitioner’s mark GFIRE for musical sound
recordings and the mark in the involved registration for the goods identified

2 Petitioner also alleged fraud and false suggestion of a connection, but as indicated below,
the fraud claim is not currently before us. The false suggestion claim was not adequately
pled or pursued at trial, and is accordingly waived. Viacom International Inc. v. Komm, 46
USPQ2d 1233, 1235 n.3 (TTAB 1998); Krause v. Krause Publications, Inc., 76 USPQ2d
1904, 1906 n.2 (TTAB 2005).
3 Respondent also asserted a number of “affirmative defenses,” most of which are merely
amplifications of Respondent’s denials. To the extent Respondent asserted any true
affirmative defenses, they were not pursued at trial and are accordingly waived. Miller v.
Miller, 105 USPQ2d 1615, 1616 n.3 (TTAB 2013); Baroness Small Estates Inc. v. American
Wine Trade Inc., 104 USPQ2d 1224, 1225 n.2 (TTAB 2012).
4 Citations to the record reference TTABVue, the Board’s online docketing system.
Specifically, the number preceding “TTABVue” corresponds to the docket entry number,
and the number(s) following “TTABVue” refer to the page number(s) of that particular
docket entry where the cited materials appear.
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therein.5 “Accordingly, two issues remain for ACR, namely, whether: (1) Petitioner
has priority in the [GFIRE] mark for musical sound recordings, and (2) there is a
likelihood of confusion between Petitioner’s use of the GFIRE mark for live musical
performances and DJ services and Respondent’s use of the G-FIRE mark for the”
goods identified in the involved Registration. 37 TTABVue 3; 39 TTABVue 6
(Respondent’s ACR Brief at 3) (“Petitioner and Respondent have already stipulated
that a likelihood of confusion exists between [Petitioner’s mark] and Respondent’s
Mark in connection with international class 009 goods.”). In other words, Petitioner
will prevail in this proceeding if she establishes either that she has priority for
musical sound recordings, or that there is a likelihood of confusion between her use
of her mark for her DJ services and live musical performances on the one hand and
use of Respondent’s mark for the goods in the involved Registration on the other.
The Record
The record consists of the pleadings, the file of the involved Registration, and the
following evidence submitted with the parties’ ACR filings:
Petitioner’s ACR Brief (TTABVue Dkt. No. 38) includes as
attachments correspondence between the parties,
Respondent’s written responses to Petitioner’s
interrogatories and Petitioner’s Affidavit (“Mayo Aff.”)
and the exhibits thereto. Petitioner’s Affidavit includes as
exhibits materials related to her sound recordings,
printed publications and promotional materials, corporate

5 While Petitioner only specifically pleaded prior use of her mark for her “live musical
performances and DJ services,” she generally pleaded prior use for “other various music
related goods ….” 21 TTABVue 6. Pursuant to the parties’ stipulation and the November
24, 2014 order, the amended petition for cancellation was effectively amended to specifically
plead likelihood of confusion between Respondent’s mark for the goods identified in the
Registration and Petitioner’s mark for musical sound recordings.
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documents, correspondence between the parties and
Internet printouts.

Respondent’s ACR Brief (TTABVue Dkt. No. 39) includes
as attachments Internet printouts, printed publications
and materials related to its sound recordings.

Standing
Petitioner has been providing live musical performances, including DJ services,
under the GFIRE mark since 1997. 28 TTABVue 4; 38 TTABVue 34-40 (Mayo Aff.
¶¶ 2-23) and 42-110 (Exs. 3A-3M). This establishes her standing. Giersch v. Scripps
Networks, Inc., 90 USPQ2d 1020, 1022 (TTAB 2009) (“Petitioner has established his
common-law rights in the mark DESIGNED2SELL, and has thereby established his
standing to bring this proceeding.”); Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90
USPQ2d 1112, 1118 (TTAB 2009) (testimony that opposer uses its mark “is
sufficient to support opposer’s allegations of a reasonable belief that it would be
damaged …” where opposer alleged likelihood of confusion).
Priority
We previously found, and Respondent concedes, that Petitioner has priority in
her GFIRE mark with respect to her pleaded DJ and live musical performance
services. 28 TTABVue 4; 34 TTABVue 3-4; 35 TTABVue 3; 37 TTABVue 2; 39
TTABVue 4 (Respondent’s ACR Brief at 1 n. 1) (“Respondent acknowledges that the
Board has determined that Petitioner has priority in disc jockey services.”). With
respect to the goods, Respondent claims in its ACR brief to have first used its G-
FIRE mark for musical sound recordings on an unspecified date “in 2003.” 39
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TTABVue 7.6 The question is whether Petitioner can establish first use of her
GFIRE mark for musical sound recordings prior to that date.
“To establish priority, the petitioner must show proprietary rights in the mark
that produce a likelihood of confusion…. These proprietary rights may arise from a
prior registration, prior trademark or service mark use, prior use as a trade name,
prior use analogous to trademark or service mark use, or any other use sufficient to
establish proprietary rights.” Herbko International, Inc. v. Kappa Books, Inc., 308
F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) [internal citations omitted]; Otto
Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 1320, 209 USPQ 40, 43 (CCPA
1981). “While oral testimony, if sufficiently probative, is normally satisfactory to
establish priority of use in a trademark proceeding,” where oral testimony is
characterized “by inconsistencies, contradictions and uncertainties,” it is not
sufficient, standing alone, to establish priority. Powermatics, Inc. v. Globe Roofing
Products Co., 341 F.2d 127, 144 USPQ 430, 432 (CCPA 1965); National Blank Book
Co., Inc. v. Leather Crafted Products, Inc., 218 USPQ 827, 828 (TTAB 1983). We
must weigh the evidence as a whole, rather than considering each piece of evidence
in isolation. West Florida Seafood Inc. v. Jet Restaurants Inc., 31 F.3d 1122, 31
USPQ2d 1660, 1663 (Fed. Cir. 1994) (“However, whether a particular piece of
evidence by itself establishes prior use is not necessarily dispositive as to whether a
party has established prior use by a preponderance. Rather one should look at the

6 In its involved Registration, Respondent claimed first use dates of January 15, 2002, but
does not explain the discrepancy in its ACR Brief.
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evidence as a whole, as if each piece of evidence were part of a puzzle which, when
fitted together, establishes prior use.”).
Here, Petitioner testifies that “[i]n late 1997, I released a DJ mixed cassette tape
entitled gfire1. In 1998, I released another DJ mixed cassette tape entitled gfire –
The Space between the Lines … I sold gfire1 and gfire – The Space between the Lines,
at Alien Records and System 7 in Austin Texas. I also sold these releases at my
performances during the years 1998 through approximately 2001.” 38 TTABVue 35
(Mayo Aff. ¶ 5). Petitioner introduced copies of the “sleeves” from these tapes, which
are reproduced below:

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Petitioner’s testimonial and documentary evidence about these mixtapes is
corroborated by a printout from the website “cdbaby.com.” Id. Ex. 3M. Specifically,
the website provides information about, and the opportunity to purchase, a
recording featuring “Gfire” which was not released until 2004, but also provides
Petitioner’s “discography,” which lists the mixtapes “gfire1,” which the website
indicates was released in 1997, and “The Space Between the Lines,” which the
website indicates was released in 1999.
Petitioner’s evidence is also supported, if not specifically corroborated, by an
Austin Chronicle article from May 29, 1998, which indicates that Petitioner was at
the time providing DJ services, and quotes her as stating that she originally
pursued music “to write tracks.” 38 TTABVue 53 (Mayo Aff. Ex. C). The article also
mentions Petitioner’s relationship with Mike Hernandez of Alien Records, which is
one of the stores which Petitioner claims sold her recordings. Id.7
While it would have certainly been preferable for Petitioner to have provided
additional evidence about her recordings, such as sales information, promotional
materials and additional testimony, we find that Petitioner’s testimony, when
combined with the other “parts of the puzzle,” i.e. documentary evidence, is
sufficient to establish her priority for musical sound recordings. The testimony is
consistent, uncontradicted and certain. It is also corroborated by the sleeves
reproduced above, and the Austin Chronicle article lends it further support. While

7 We only rely on this article for what it shows on its face. On its face, the article reveals
that in 1998 Petitioner was perceived as having some type of relationship with Alien
Records and as having an interest in writing tracks.
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the “cdbaby.com” listing would not be particularly probative standing alone, it
appears to corroborate Petitioner’s testimony and other evidence, and, more
importantly, in its Answer Respondent relied on the same website in asserting a
priority-based “defense.” 4 TTABVue 5 (Answer ¶ 2). Under the circumstances, we
find that the “cdbaby.com” printout further supports Petitioner’s reliable testimony
of priority in sound recordings.
Likelihood of Confusion (Petitioner’s Musical Sound Recordings)
The petition is granted because Petitioner has established prior rights in GFIRE
for musical sound recordings, and, as we previously found, “the parties have
stipulated that there is a likelihood of confusion with respect to Petitioner’s use of
the GFIRE mark for musical sound recordings and Respondent’s use of the G-FIRE
mark for the [in-part identical] goods identified in involved Registration No.
3520150 ….” 37 TTABVue 2-3; see also 39 TTABVue 6 (Respondent’s ACR Brief at
3) (“Petitioner and Respondent have already stipulated that a likelihood of
confusion exists between [Petitioner’s mark] and Respondent’s Mark in connection
with international class 009 goods.”).
Likelihood of Confusion
(Petitioner’s DJ and Live Musical Performance Services)

Even if Petitioner had not established prior rights in her mark for musical sound
recordings, we would still grant the petition because there is a likelihood of
confusion between Petitioner’s mark for DJ services/live musical performances and
Respondent’s mark for the goods identified in the Registration. For completeness,
we now analyze that issue.
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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, two key considerations are the
similarities between the marks and the similarities between the goods and services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976). Petitioner bears the burden of establishing that there is a likelihood
of confusion by a preponderance of the evidence. Cunningham, 222 F.3d at 943, 55
USPQ2d at 1848. We consider the likelihood of confusion factors about which the
parties introduced evidence, and treat the remaining factors as neutral.8
The Marks
The marks are virtually identical, with the only difference between them being
that Respondent’s mark includes a hyphen between “G” and “FIRE,” while
Petitioner’s does not. This is a distinction without a meaningful difference. The
marks sound identical, look almost identical and convey at least similar meanings.
See, e.g., Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1712 (TTAB
2010), aff’d, ___ Fed.Appx. ___, 2011 WL 5400095 (Fed. Cir. 2011) (“… both marks
begin with the term MAGNUM or MAG-NUM. Thus, the initial term in both marks
is essentially identical; the hyphen in the Mag Instrument’s mark does not
distinguish them.”); Charette Corp. v. Bowater Communication Papers Inc., 13

8 Respondent did not introduce evidence concerning any du Pont factors other than the
similarities between the marks and the similarities between the goods and services.
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USPQ2d 2040, 2042 (TTAB 1989) (finding PRO-PRINT confusingly similar to
PROPRINT, and stating “[i]t is also quite obvious that the marks are identical
except for the division of registrant’s mark by a hyphen between the syllables”).
This factor weighs in favor of a finding of likelihood of confusion.
The Goods and Services
As for the goods and services, there can be no doubt that they are closely related.
We do not require evidence to know that musical performers often offer musical
recordings, sometimes recordings of their live performances, and that music
consumers sometimes first encounter performers through live performances, and
then seek out the performers’ recordings. In fact, the specimen submitted with
Respondent’s Section 8 Affidavit reveals that Respondent’s website, to the left of the
listing of one of Respondent’s recordings, has a link to “live performance.”
Furthermore, after Petitioner contacted Respondent about the similarity of the
parties’ marks, Respondent indicated that it not only offers musical recordings, but
also performs live, further establishing a relationship between the goods and
services. 38 TTABVue 102 (Mayo Aff. Ex. K) (“We have had no problems selling
product, bookings for this artist, or any of the aforemention (sic) things in your
email concerning our artist who is international as the situation stands ….”)
(emphasis added). Finally, Respondent concedes that it “has engaged in live
performances throughout the United States.” 39 TTABVue 12 (Respondent’s ACR
Brief at 9 fn. 4). In short, as illustrated by Respondent’s offering of both live musical
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performances and musical sound recordings, the parties’ goods and services are at
least related.9
Conclusion
Petitioner has established prior use of her mark for sound recordings, and
Respondent has conceded that there is a likelihood of confusion between the parties’
sound recordings. Moreover, Petitioner previously established prior use of her mark
for DJ services and live musical performances, and the record establishes that there
is a likelihood of confusion between these services and Respondent’s sound
recordings.

Decision: The petition to cancel is granted under Section 2(d) of the
Trademark Act and the Registration will be cancelled in due course.10

9 To the extent that Respondent argues that confusion is unlikely because Petitioner’s
services and Respondent’s goods are in different classes, that is irrelevant. Jean Patou Inc.
v. Theon Inc., 9 F.3d 971, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993) (stating that classification
is for the convenience of the Office and “wholly irrelevant to the issue of registrability under
section 1052(d), which makes no reference to classification”).
10 Petitioner’s fraud claim is dismissed as moot.