Pegasus Communications

Trademark Trial and Appeal Board

May 23, 2002

No. 75925969 (T.T.A.B. May. 23, 2002)

5/23/02

Paper No. 9
RFC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Pegasus Communications
________

Serial No. 75/925,969
_______

David E. Dougherty of Dougherty & Troxell for Pegasus
Communications.

Ronald McMorrow, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Cissel, Hohein and Hairston, Administrative
Trademark Judges.

Opinion by Cissel, Administrative Trademark Judge:
On February 22, 2000, applicant, a Pennsylvania
corporation, filed the above-identified application to
register the mark “PGTV” on the Principal Register for
“communication services[,] namely broadcasting audio,
television, and Internet programming by satellite and cable
transmission,” in Class 38; and “satellite and cable
distribution of TV, radio and Internet programs for others,
education entertainment services in the field of TV, radio
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/925,969
2
and the Internet and production of TV, radio and Internet
programs,” in Class 41. The basis for filing the
application was applicant’s assertion that it possessed a
bona fide intention to use the mark in commerce in
connection with these services.
In addition to requiring applicant to amend the
recitation of services to eliminate indefinite terminology,
the Examining Attorney refused registration under Section
2(d) of the Lanham Act, 15 U.S.C. Section 1052(d), on the
grounds that if applicant were to use the mark it seeks to
register in connection with the services set forth in the
application, applicant’s mark would so resemble three
registered marks, all owned by the same entity, that
confusion would be likely.
All three of the cited registered marks are
certification marks in Class B, which is for marks used to
certify services. The first cited mark is shown below.

Ser No. 75/925,969
3
This mark is registered1 for the certification of
“entertainment services rendered through the medium of
motion pictures.” The second cited mark is shown below.

This mark is registered2 for the certification of the same
services. The third registered mark cited as a bar to
registration of applicant’s proposed mark is “RATED PG,”
which is registered3 for the certification of “the content
of entertainment services rendered through the medium of
motion pictures.” In this registration, registrant
disclaims the exclusive right to use the word “RATED” apart
from the mark as shown.
Responsive to the first Office Action, applicant
amended the recitation of services to read as follows:
“communication services, namely, broadcasting audio,

1 Reg. No. 1,169,742, issued on the Principal Register on Sept.
15, 1981, to Motion Picture Association of America, Inc.;
affidavit under Sections 8 and 15 of the Act accepted and
acknowledged; renewed.
2 Reg. No. 959,581, issued on the Principal Register on May 22,
1973; affidavit under Sections 8 and 15 of the Act accepted and
acknowledged; renewed.
3 Reg. No. 1,439, 617, issued on the Principal Register on May
12, 1987; affidavit under Sections 8 and 15 of the Act accepted
and acknowledged.
Ser No. 75/925,969
4
television and global computer network programming by
satellite and cable transmission,” in Class 38; and
“satellite and cable distribution of television, radio and
global computer network programs for others, and production
of television, radio and global computer network
programming,” in Class 41.
Applicant also argued that the refusal to register
under Section 2(d) of the Act should be withdrawn because
the marks, when viewed in their entireties, are not
similar, and the channels of trade through which applicant
intends to render its services are different from the trade
channels in which the three cited registered marks are
used. Applicant took the position that its services are
relatively expensive and are sold to sophisticated
purchasers, although no evidence was submitted in support
of this argument, and no evidence or argument with respect
to the level of sophistication of people using the cited
registered marks was presented.
The Examining Attorney accepted applicant’s amended
recitation of services, but was not persuaded by
applicant’s arguments on the issue of likelihood of
confusion. The refusal to register was made final in the
second Office Action.
Ser No. 75/925,969
5
Applicant timely filed a Notice of Appeal, which was
followed by an appeal brief. The Examining Attorney then
filed his appeal brief, but applicant did not file a reply
brief or request an oral hearing before the Board.
Based on careful consideration of the record in this
application, the arguments presented by both applicant and
the Examining Attorney, and the relevant legal authority,
we find that the refusal to register is well taken.
The predecessor to our primary reviewing court set out the
factors to be considered in determining whether confusion
is likely in In re E. I. Du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). Chief among these factors
are the similarity of the marks and the similarity of the
goods or services set forth in the application and the
registrations, respectively.
Section 4 of the Lanham Act provides that
certification marks are entitled to the same protection
under Section 2(d) of the Act as trademarks and service
marks, except in the case where a certification mark is
used so as to falsely represent that the owner or user
thereof makes or sells the goods or performs the services
on or in connection with which the mark is used. In the
case at hand, applicant has not contended that the owner of
Ser No. 75/925,969
6
the cited registered marks uses them to represent falsely
that it makes goods or sells services.
We thus turn to consideration of whether applicant’s
mark is similar to the cited registered marks. Although
applicant argues to the contrary, these marks are similar
because they create similar commercial impressions.
Applicant argues that the stylization in two of the
registered marks results in differences which would allow
consumers to distinguish easily among these marks. It is
well settled, however, that the literal portions in marks
are usually their dominant and most significant features
because consumers in the marketplace call for goods and
services by the letters and words in them, rather than by
trying to describe their design elements. In re Appitito
Provisions Co., 3 USPQ2d 1553 (TTAB 1987). Clearly, the
letters “PG” are the dominant element in each of the two
registrations incorporating design elements and/or other
language, as well as in the third registered mark, “PG
RATED,” which combines the letters with the descriptive
word “RATED,” which has been disclaimed.
In a similar sense, the dominant portion of the mark
applicant seeks to register is the same two-letter
combination, “PG.” The “TV” portion of applicant’s mark is
descriptive in connection with television broadcasting
Ser No. 75/925,969
7
services and distribution and production of television
programming, and hence would not be accorded as much
significance as the first portion of the mark would be.
Applicant argues that the “PG” portion of the
registered marks is weak, as evidenced by a search it
conducted of the Patent & Trademark Office’s Trademark
Electronic Search System. The dictionary definition
submitted with the Examining Attorney’s brief (of which we
may take judicial notice) notes that the letters “PG” are
“used to certify that a motion picture is of such a nature
that all ages may be allowed admission but parental
guidance is suggested.” While we recognize that these
letters possess some suggestive significance, this fact
does not persuade us that when the marks of the applicant
and registrant are considered in their entireties, they
create different commercial impressions.
As the Examining Attorney also points out, applicant
submitted no evidence in support of its arguments with
regard to the alleged differences in trade channels or the
alleged sophistication of the purchasers of the services
specified in the application or the users of the registered
certification marks.
In comparing the services set forth in this
application with the statements in the cited registrations
Ser No. 75/925,969
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regarding what these certification marks are used to
certify, it is clear that if similar marks are used in
connection with both, confusion will be likely.
Applicant’s services include producing, distributing and
broadcasting television programming. The cited registered
marks are used to certify that entertainment services
rendered through the medium of motion pictures meet the
standards set by the registrant with respect to whether
parental guidance is suggested because some material in the
motion picture may not be suitable for pre-teenagers. In
that movies are produced for, distributed to, and broadcast
by television stations, if applicant were to use “PGTV” in
connection with its services of producing, distributing or
broadcasting television programming, viewers who are
familiar with the certification marks of the registrant,
which are dominated by the letters “PG” and are used to
rate movies, would be likely to assume, mistakenly as it
would turn out, that “PGTV” programming meets registrant’s
certification standards or is in some other way endorsed,
sponsored by or affiliated with the owner of the registered
certification marks.
Applicant’s arguments to the contrary are not
persuasive. Applicant contends that its mark “serves as an
abbreviation for Pegasus and is suggestive, for example, it
Ser No. 75/925,969
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might also be interpreted as an abbreviation for
professional golf, program guide, personal guide, pocket
guide or a number of other abbreviations.” (Response to
first Office Action, p. 5). When the mark is considered in
connection with the services identified in the application,
however, these are not likely scenarios. What is likely is
that viewers of applicant’s programming will assume that
“PGTV” indicates that the programming is suitable for
viewing by pre-teens if parental guidance is exercised,
e.g., that it has met the standards symbolized by the cited
registered certification marks. This is exactly the kind
of confusion that the Lanham Act is designed to preclude.
In summary, confusion would be likely because
applicant’s mark and the cited registered marks, when
considered in their entireties, create similar commercial
impressions because of the dominant letters “PG,” and the
services with which applicant intends to use its mark are
related to the services certified by the registered mark.
We do not doubt that we have reached the correct
disposition of this appeal, but even if were not completely
sure that confusion would be likely if applicant were to
use the mark it seeks to register in connection with its
services, any such doubt would have to be resolved in favor
of registrant and against applicant, which, as the second
Ser No. 75/925,969
10
comer, has a duty to select a mark which is not likely to
cause confusion with marks already in use in its field of
commerce. Burroughs-Wellcomme Co. v. Warner-Lambert Co.,
203 USPQ 191 (TTAB 1979).
DECISION: The refusal to register is affirmed.