Petite Four, Inc.

Trademark Trial and Appeal Board

Aug 24, 2004

No. 76280243 (T.T.A.B. Aug. 24, 2004)

Mailed: August 24, 2004
csl
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Petite Four, Inc.
________
Serial No. 76280243
______
Robert Berliner of Fulbright & Jaworski L.L.P. for Petite
Four, Inc.
Tracy Cross, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_______
Before Simms, Quinn and Chapman, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Petite Four, Inc. (applicant), a California
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register the mark EMPEROR
NORTON RECORDS (“RECORDS” disclaimed) for “musical sound
recordings” in Class 9, and “promoting the goods and
services of others through direct mail advertising and the
distribution of printed and audio promotional materials in
the field of sound recordings and musical performances;
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76280243
2
advertising agency services in the field of sound
recordings and musical performances of entertainment
personalities; management of musical performers” in Class
35.1
Applicant and the Examining Attorney have filed briefs
but no oral hearing was requested.2
The Examining Attorney has refused registration under
Section 2(d) of the Act, 15 USC §1052(d), on the basis of
Registration No. 2,191,742, issued September 29, 1998, for
the mark NORTON RECORDS (“RECORDS” disclaimed) for
prerecorded vinyl phonograph records, audio cassettes and
compact discs featuring music.
It is the Examining Attorney’s position that, in this
case, the most important factors are the similarities of
the marks, the goods and services, and the trade channels.
With respect to the marks, the Examining Attorney maintains
that the dominant term in both applicant’s and registrant’s
marks is the word “NORTON” and that the addition of the
word “EMPEROR” to the registered mark does not avoid
likelihood of confusion. The Examining Attorney argues

1 Serial No. 76280243, filed July 3, 2001, based on allegations
of use since January 15, 1996, and use in commerce since April
15, 1996. In the application, applicant states that Emperor
Norton does not identify a living individual.
2 The material attached to applicant’s reply brief is excluded to
the extent it was not previously made of record. See Trademark
Rule 2.142(d).
Serial No. 76280243
3
that consumers may refer to applicant’s goods and services
as simply “NORTON RECORDS.” Concerning the goods, the
Examining Attorney notes that applicant’s musical sound
recordings are substantially identical to registrant’s
phonograph records, audio cassettes and compact discs (CDs)
featuring music. The Examining Attorney also contends that
the same entity may offer sound recordings and render
promotional and management services, as does applicant
herein. It is the Examining Attorney’s position that
consumers may encounter the goods and services of applicant
and registrant in the same marketplace.
It appears reasonable to conclude that
registrant’s goods may be the subject matter of
the applicant’s services. Consumers are likely
to perceive that the applicant’s company manages
or promotes artists and personalities associated
with the registrant. The purchasing public may
further believe that the applicant’s services are
an extension of the registrant’s line of
goods/services or vice versa.
Examining Attorney’s brief, unnumbered page 3. The
Examining Attorney has cited a number of cases involving
goods and services where likelihood of confusion was found.
Applicant, on the other hand, contends that the marks
are different in sound, appearance, meaning and commercial
impression. Contrary to the Examining Attorney, applicant
maintains that the dominant part of its mark is the first
word “EMPEROR,” which distinguishes its mark in sound and
Serial No. 76280243
4
appearance. Applicant also notes that “Norton” is a
surname, and has submitted a listing of applications and
registrations of marks containing this term. Applicant
argues, therefore, that the registered mark is entitled to
only weak trademark protection. Applicant also contends
that the word “RECORDS” is “weak” and that the public is
able to distinguish marks containing this term as well.
Applicant has submitted a listing of third-party
applications and registrations containing this word.
Finally, applicant states that Emperor Norton was a well-
known historical character and that, therefore, EMPEROR
NORTON RECORDS is not likely to be confused with NORTON
RECORDS.3 Applicant contends that this case is analogous to
such names as Arthur and King Arthur.
With respect to the goods and services, applicant
admits that its goods are similar or related to
registrant’s goods. However, applicant maintains that
registrant’s records, cassettes and CDs are different from
applicant’s promotional, advertising agency and management

3 According to various articles of record, a man named Joshua Abraham
Norton was born in London in 1819. He came to San Francisco in 1849,
opening a business selling supplies to gold miners. He later
unsuccessfully tried to corner the rice market in San Francisco, but
lost his money in so doing. In 1859 he proclaimed himself “Emperor” of
the United States and thereafter issued various decrees and
proclamations. He died penniless in 1880. There are a number of
articles of record concerning Emperor Norton, and Internet evidence of
record shows that there are a number of Web sites pertaining to Emperor
Norton.
Serial No. 76280243
5
services. In this regard, applicant argues that its
services are expensive and not impulsively purchased. The
discriminating purchasers of applicant’s services take more
care in the purchasing decision and are not likely to be
confused, according to applicant. Further, applicant
contends that these services appeal to and are purchased by
different customers than registrant’s records, cassettes
and CDs, and that applicant’s services are offered to a
different market.
Finally, applicant notes that it filed applications in
1996 to register the mark EMPEROR NORTON, before the filing
of the application which matured into the cited
registration. Applicant’s marks were published and no
oppositions were filed. However, these applications became
abandoned when applicant failed to file statements of use.
The registered mark was approved during the pendency of
applicant’s previous applications. Applicant states that
not only did the previous Examining Attorneys not refuse
registration, but also that the registrant did not oppose
applicant’s earlier applications.
In response, the Examining Attorney maintains that
even weak marks are entitled to protection, and that even
sophisticated purchasers are not immune from confusion. As
to the allowance of registrant’s mark over applicant’s
Serial No. 76280243
6
prior then-pending applications, the Examining Attorney
contends that prior decisions and actions of other
Examining Attorneys are not binding on the USPTO, and that
each case must be decided on its own merits.
The 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 Company, 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/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).
Turning first to the Class 9 goods in the application
and registration—-musical sound recordings versus
phonograph records, audio cassettes and CDs featuring
music—-these goods are, for our purposes, identical.
Applicant’s goods are broadly described and may well
include (and in fact do include) CDs featuring music. When
marks are applied to legally identical goods, as is the
Serial No. 76280243
7
case here, “the degree of similarity [between the marks]
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, 1700 (Fed. Cir.
1992).
Turning then to a consideration of the involved marks,
it is well settled that marks must be considered in their
entireties because the commercial impression of a mark on
an ordinary consumer is created by the mark as a whole, not
by its component parts. See Kangol Ltd. v. KangaROOS
U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992);
and Franklin Mint Corp. v. Master Manufacturing Co., 667
F.2d 1005, 212 USPQ 233 (CCPA 1981). However, the test to
be applied in determining likelihood of confusion is not
whether the marks are distinguishable upon a side-by-side
comparison, but rather whether the marks, as they are used
in connection with the registrant’s and applicant’s goods,
so resemble one another as to be likely to cause confusion.
Under actual marketing conditions, consumers do not
necessarily have the opportunity to make side-by-side
comparisons between marks. Dassler KG v. Roller Derby
Skate Corp., 206 USPQ 255, 259 (TTAB 1980). The proper
emphasis is therefore on the recollection of the average
customer, and the correct legal test requires us to
Serial No. 76280243
8
consider the fallibility of human memory. The average
purchaser normally retains a general rather than a specific
impression of trademarks. See Spoons Restaurants Inc. v.
Morrison Inc., 23 USPQ2d 1735 (TTAB 1991), affirmed in
unpublished opinion, Appeal No. 92-1086 (Fed. Cir. June 5,
1992)(SILVER SPOON CAFÉ and SILVER SPOON BAR & GRILL for
restaurant and bar services v. SPOONS, SPOONBURGER, SPOONS
with cactus design, and SPOONS within a diamond logo
design); and Envirotech Corp. v. Solaron Corp., 211 USPQ
724, 733 (TTAB 1981).
Although the marks EMPEROR NORTON RECORDS and NORTON
RECORDS are different in sound and appearance to the extent
that applicant’s mark contains the additional word
“EMPEROR,” applying the foregoing principles to this case,
we believe that these marks are simply so similar that, as
applied to identical, relatively inexpensive and casually
purchased goods, confusion would be likely. That is to
say, a consumer who had purchased a NORTON RECORDS CD and
who at some later time sees applicant’s EMPEROR NORTON
RECORDS CD may believe that the same entity has produced
both CDs. Even if the purchaser does realize that these
marks are not the same, the purchaser may believe that the
new EMPEROR NORTON RECORDS CD is a line of the NORTON
RECORDS products.
Serial No. 76280243
9
However, we reach a different conclusion with respect
to applicant’s services in Class 35, identified as
“promoting the goods and services of others through direct
mail advertising and the distribution of printed and audio
promotional materials in the field of sound recordings and
musical performances; advertising agency services in the
field of sound recordings and musical performances of
entertainment personalities; management of musical
performers.”
First, we realize that it is not necessary that the
respective goods and services be similar or competitive, or
even that they move in the same channels of trade to
support a holding of likelihood of confusion. Rather, it
is sufficient that the respective goods and services are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods and
services are such that they would or could be encountered
by the same persons under circumstances that could, because
of the similarity of the marks, give rise to the mistaken
belief that they originate from the same producer. In re
International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978). Here, however, we agree with applicant
that its promotional services, its advertising agency
services and its management services of musical performers
Serial No. 76280243
10
would be offered to rather sophisticated purchasers who are
seeking to have their musical recordings or musical
performances promoted or advertised, or who are seeking a
management agency for themselves. In other words, contrary
to records, cassettes and CDs, which would be purchased by
the general public, these promotional, advertising agency
and management services would be offered to a different
class of purchaser, who would be more likely to spend some
time and effort in the selection of a company to promote
his or her (or its) musical recordings and/or performances,
or to manage his or her (or its) musical group. These
relatively sophisticated purchasers are in a different
class from the ordinary consumers who may buy relatively
inexpensive CDs in a music store.
Accordingly, while we find that confusion is likely
with respect to the Class 9 goods, we find that confusion
with respect to applicant’s EMPEROR NORTON RECORDS
promotional, advertising agency and management services is
not likely as a result of the use and registration of the
mark NORTON RECORDS for records, audio cassettes and CDs.
Decision: The refusal to register applicant's mark
for its goods in Class 9 is affirmed. The refusal to
register applicant's mark for its services in Class 35 is
Serial No. 76280243
11
reversed, and the mark will be published for opposition as
to the services in Class 35.