Playboy Enterprises International, Inc.

Trademark Trial and Appeal Board

Apr 6, 2018

No. 86943084 (T.T.A.B. Apr. 6, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: April 6, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Playboy Enterprises International, Inc.
_____

Serial No. 86943084
_____

Kristen S. Ruisi of Venable LLP for
Playboy Enterprises International, Inc.

Amer Raja, Trademark Examining Attorney, Law Office 121,
Kevin Mittler, Managing Attorney.
_____

Before Wellington, Wolfson and Goodman,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Playboy Enterprises International, Inc. (“Applicant”) seeks registration on the
Principal Register of the mark CENTERFOLD, in standard character format, for:
Computer services, namely, providing an on-line service in the nature of
hosting an online website for others, and providing a secured-access,
members only website featuring technology that gives members the ability
to access documents and images stored electronically featuring adult-
themed discussions and topics, images of female models, and news related
Serial No. 86943084
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to art, fashion, entertainment, health, sports, music, lifestyle and other
topics of general interest in International Class 42.1

Applicant’s claim that the mark has acquired distinctiveness for the identified
services, under Section 2(f) of the Act, was accepted by the Examining Attorney.2
The Trademark Examining Attorney has refused registration of Applicant’s mark
on the ground of likelihood of confusion under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), in view of the registered, standard character mark SWIMSUIT
CENTERFOLD for “entertainment services, namely, ongoing reality based
television series; providing entertainment information concerning television program
via global computer network” in International Class 41.3 The term SWIMSUIT has
been disclaimed in the registration.
When the refusal was made final, Applicant filed an appeal and requested
reconsideration of the refusal. The appeal was instituted, but action on the appeal
was suspended and the application was remanded to the Examining Attorney for
consideration of the request. The Examining Attorney denied the request for
reconsideration and this appeal was resumed. The appeal has been briefed. For the
following reasons, we affirm the refusal.

1 Application Serial No. 86943084 was filed on March 16, 2016, based on an allegation of a
bona fide intent to use the mark in commerce, under Trademark Act Section 1(b),15 U.S.C. §
1051(b).
2 See Office action issued on February 10, 2017.
3 Registration No. 4945427 issued on April 26, 2016.
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I. Background and Evidentiary Objection
With the first Office Action, the Examining Attorney not only asserted the
likelihood of confusion refusal currently before us, but, inter alia, refused registration
on the ground that the mark merely describes a feature and characteristic of
Applicant’s services, under Trademark Act Section 2(e)(1).4 The Examining Attorney
advised Applicant that it may respond to this particular refusal by amending the
application to seek registration under Section 2(f) based on a claim of acquired
distinctiveness or seek registration on the Supplemental Register.5
In its response to the first Office Action, Applicant asserted that its mark “has
acquired distinctiveness” and made the following statement:6
Prior to the present application, PLAYBOY owned the exact, identical
mark, for the identical services at hand. See U.S. Registration No. 2995430
(PLAYBOY registration for the mark CENTERFOLD in class
42). PLAYBOY had used the CENTERFOLD mark in commerce to
identify its services over the last decade – enabling PLAYBOY to file, and
the USPTO to grant, a declaration of use and incontestability under
Sections 8 and 15. Additionally, PLAYBOY currently owns marks in the
CENTERFOLD family that have been registered and used in commerce
continuously over the past five years. See, e.g., U.S. Registration No.
2275173 (CENTERFOLD); U.S. Registration No. 3934718 (VIDEO

4 Office Action issued June 22, 2016.
5 The application is based on Applicant’s claim of bona fide intent to use the mark in
commerce (See Note 1). Thus, Applicant should have been informed that it could not amend
the application to seek registration on the Supplemental Register until an acceptable
allegation of use was filed. 37 C.F.R. §§ 2.47(d) and 2.75(b); see also Trademark Manual of
Examining Procedure (TMEP) § 1102.03 (Oct. 2017).
6 Response filed December 13, 2016. In the same response, Applicant also entered the
following formal statement into its application:
SECTION 2(f) Claim of Acquired Distinctiveness, based on Active Prior
Registration(s)
The mark has become distinctive of the goods/services as evidenced by the ownership on
the Principal Register for the same mark for sufficiently similar goods/services of active
U.S. Registration No(s). 2275173; 3934718; 3416873; 2356709; 2322825; [and] 2114146.
Serial No. 86943084
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CENTERFOLD); U.S. Registration No. 3416873 (PLAYBOY
CENTERFOLD); U.S. Registration No. 2356709 (CELEBRITY
CENTERFOLD); Registration No. 2322825 (PLAYBOY CENTERFOLDS);
U.S. Registration No. 2114146 (CENTERFOLD COLLECTOR CARDS).
Specifically, U.S. Registration No. 3416873 (PLAYBOY CENTERFOLD)
demonstrates the acquired distinctiveness of PLAYBOY’s
mark. Registration PLAYBOY CENTERFOLD has been continuously
used in commerce since 2008, establishing acquired distinctiveness as to
the mark.

In the same response, Applicant argued against the likelihood of confusion refusal
by identifying its registered marks as well as third-party registered marks that
contain the term CENTERFOLD. Based on the listed registrations, Applicant
asserted that “this term is quite common [and therefore] consumers have been
conditioned to look to the rest of the mark for differentiation.”7
In the next Office Action, the Examining Attorney withdrew the descriptiveness
refusal “as a result of applicant’s Section 2(f) claim based on acquired
distinctiveness.”8 The Examining Attorney did not specify which of Applicant’s
registration(s) served as a basis for the Section 2(f) claim. However, the Examining
Attorney did inform Applicant that the mere listing of registrations to support its
contention that the term CENTERFOLD is weak does not make the registrations
part of the record.9 The Examining Attorney also correctly informed Applicant that
“to make third party registrations part of the record, an applicant must submit copies
of the registrations, or the complete electronic equivalent from the USPTO’s

7 Id.
8 Office Action issued on February 10, 2017.
9 Id.
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automated systems, prior to appeal.”10 When Applicant merely listed these
registrations again in its request for reconsideration, the Examining Attorney issued
an Office Action denying the request (as noted above) and repeated the objection
regarding the proper manner to make registrations of record.11
Attached as exhibits with its appeal brief, Applicant submitted the following
materials for the first time:12 Internet printouts containing the definition of
“swimsuit”; printouts from “Playboy” websites, a “Swimsuit Centerfold” website, and
online articles regarding Applicant and its magazine; and copies of four (4) third-
party registrations along with copies of the following registrations owned by
Applicant -- Reg. Nos. 2275173 (CENTERFOLD); 3934718 (VIDEO CENTERFOLD);
3416873 (PLAYBOY CENTERFOLD); 2356709 (CELEBRITY CENTERFOLD);
2322825 (PLAYBOY CENTERFOLDS); 2260234 (PLAYBOY CENTERFOLD). All of
Applicant’s registrations, except for the last, were previously identified in Applicant’s
claim of acquired distinctiveness.
The Examining Attorney objects to the Applicant’s submission of evidence with its
brief on the ground that the materials were not previously submitted and thus are
untimely.13 The objection is well taken. “Evidence should not be filed with the Board

10 Id. The Examining Attorney also noted that Applicant had provided a web address
(purportedly belonging to Registrant) and attempted to rely on information from that
website. The Examining Attorney informed Applicant that “providing only a web address to
Internet materials is insufficient to make the associated webpages of record.” Id., citing to In
re Powermat Inc., 105 USPQ2d 1789, 1791 (TTAB 2013); In re HSB Solomon Assocs., 102
USPQ2d 1269, 1274 (TTAB 2012); TMEP §710.01(b).
11 Office Action issued on August 31, 2017.
12 7 TTABVUE 12-52.
13 9 TTABVUE 3.
Serial No. 86943084
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after the filing of a notice of appeal. If the appellant or the examining attorney desires
to introduce additional evidence after an appeal is filed, the appellant or the
examining attorney should submit a request to the Board to suspend the appeal and
to remand the application for further examination.” Trademark Rule 2.142(d), 37
C.F.R. § 2.142(d); see also Trademark Trial and Appeal Board Manual of Procedure
(TBMP) § 1207.01 (June 2017). Accordingly, the materials attached to Applicant’s
brief that were not previously submitted are not given consideration.
However, with respect Applicant’s own registrations, Applicant entered a formal
statement claiming that its mark had acquired distinctiveness based on these “active
prior registrations,” and identified each of them by registration number.14 We
construe the Examining Attorney’s acceptance of Applicant’s Section 2(f) acquired
distinctiveness claim as an acknowledgement of Applicant’s ownership and the
current active status of Registration Nos. 2275173; 3934718; 3416873; 2356709;
2322825; and 2114146.
II. Likelihood of Confusion
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., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
In any likelihood of confusion analysis, however, two key considerations are the

14 Applicant’s response filed on December 13, 2016; see also Note 6.

Serial No. 86943084
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similarities between the marks and the relatedness of the goods 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).
A. Similarity or Dissimilarity of the Marks
We first look to the du Pont likelihood of confusion factor focusing on “the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005) (quoting du Pont, 177 USPQ at 567). “The proper test is not a side-by-side
comparison of the marks, but instead whether the marks are sufficiently similar in
terms of their commercial impression such that persons who encounter the marks
would be likely to assume a connection between the parties.” In re i.am.symbolic,
LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017) (quoting Coach Servs.
Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir.
2012)) (internal quotation marks omitted).
The marks are similar in appearance, sound, and meaning due to the shared term
CENTERFOLD. Although the additional word SWIMSUIT in Registrant’s mark does
create a point of difference as to appearance and sound of the marks, and somewhat
impacts tweaks the meaning of the shared term, the marks remain overall more
similar than dissimilar.
Serial No. 86943084
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In terms of connotation and commercial impression, the Examining Attorney
submitted the following definitions of “centerfold”:15
1. The two middle pages of a magazines, typically taken up by a single
illustration or feature.
1.1 An illustration on the two middle pages of a magazine, typically a
picture of a naked or scantily clad model.
[from Oxford Dictionaries (www.oxforddictionaries.com), “US English”
version]
***
1. A magazine center spread, especially a foldout of an oversize
photograph or feature.
2. a. The subject of a photograph used as a centerfold, often a nude
model.
[from THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE
(www.ahdictionary.com) – based on print version, Fifth Edition (2015),
published by Houghton Mifflin Harcourt Publishing Company].

Given its defined meaning, Applicant’s mark CENTERFOLD is likely to be
understood as describing the content of an adult online magazine visible when
Applicant’s services are rendered – specifically, the type of entertainment and images
of female models that one can expect to view on Applicant’s member-only website.
That is, the term “centerfold” strongly suggests that Applicant’s website features
nude or scantily clad female models. Indeed, Applicant acknowledged this meaning
by seeking registration of its mark pursuant to Section 2(f) in response to the
Examining Attorney’s determination that the term was merely descriptive of the
services. See In re RiseSmart Inc., 104 USPQ2d 1931, 1932 (TTAB 2012) (“[W]hen
an applicant responds to a refusal based on mere descriptiveness of a mark, or portion
of a mark, by claiming acquired distinctiveness, such amendment to seek registration

15 Attached to Office Action issued on June 22, 2016.
Serial No. 86943084
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under Section 2(f) of the Trademark Act is considered an admission that the proposed
mark is not inherently distinctive.”). See also Cold War Museum Inc. v. Cold War Air
Museum Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009).
With respect to Registrant’s mark, the use of the same term CENTERFOLD is
prefaced with SWIMSUIT. However, the commercial meaning and connotation of
Registrant’s mark remains very similar to Applicant’s mark. Consumers viewing the
mark SWIMSUIT CENTERFOLD in connection with “providing entertainment
information concerning television program via global computer network,” will likely
understand it as strongly suggestive of the television program’s content, namely, a
show involving “scantily clad female models,” who will likely appear in swimsuits.
In view of our findings with respect to each mark, we disagree with Applicant’s
assertion that Registrant’s mark “evokes a different commercial impression than
[Applicant’s] mark because it calls to mind clothing or a garment.” The term
“centerfold,” as defined, includes nude or scantily clad models. A model in a swimsuit
could fall into the “scantily clad” realm. Thus, the fact that one mark simply suggests
a centerfold model and the other a centerfold model in a swimsuit does not adequately
distinguish the marks’ overall commercial impressions and connotations.
In sum, the involved marks are similar in appearance and sound, and are also
likely to be understood by consumers in a similar manner. Accordingly, the first du
Pont factor weighs in favor of finding a likelihood of confusion.
Serial No. 86943084
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B. Relatedness of Services
We now consider the du Pont factor involving the relatedness of the involved
services. It is settled that in making our determinations, we must look to the services
as identified in the application vis-à-vis those recited in the cited registration. See
Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Computers Servs., Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Giovanni Food Co., 97
USPQ2d 1990, 1991 (TTAB 2011). In analyzing the relatedness of the services, “it is
not necessary that the products [or services] of the parties be similar or even
competitive to support a finding of likelihood of confusion.” Coach Servs., 101
USPQ2d 1722; (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB
2007)); see also On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d
1471, 1475 (Fed. Cir. 2000) (The goods or services need not be identical or even
competitive to find a likelihood of confusion). “[L]ikelihood of confusion can be found
‘if the respective products are related in some manner and/or if the circumstances
surrounding their marketing are such that they could give rise to the mistaken belief
that they emanate from the same source.’” Coach Servs., 101 USPQ2d at 1722
(quoting 7-Eleven, 83 USPQ2d at 1724). The issue is whether there is a likelihood of
confusion as to the source of the services, not whether purchasers would confuse the
services. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In re Rexel
Inc., 223 USPQ 830 (TTAB 1984).
Serial No. 86943084
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The Examining Attorney asserts that the record “demonstrates that consumers
commonly encounter services like [Registrant’s] providing entertainment information
concerning television programs and [Applicant’s] providing a secured-access
members only website featuring technology that allows members to access
‘documents and images featuring news related to art, fashion, entertainment, health,
sports, music, lifestyle, and other topics of general interest’ as being provided through
the same channels of trade and often under the same mark.”16 In particular, he relies
on Internet printouts from various third-party websites, including the following:17
People (www.people.com)18
Entertainment information concerning television programs and a separate
“People Premium” website “to access your subscriber-only content” that
includes information and images covering a variety of topics including
television, art, fashion, entertainment, health, music, lifestyle and other
topics of general interest.

New York Times (www.nytimes.com)19
Provides a secure-access members only website such as The New York
Times Insider featuring technology that gives members the ability to
access documents and images featuring news related to art, fashion,
entertainment, health, sports, music, lifestyle and other topics of general
interest, as well as providing entertainment information concerning
television programs via global computer networks.

TV Guide (www.tvguide.com)20
An online magazine website featuring entertainment information
concerning television programs (“popular shows … popular celebrities”)
and also featuring a secured, members-only website which allows users to
access documents and images relating to entertainment and other topics of
general interest as part of the TV Guide members area which allows

16 9 TTABVUE 5.
17 Attached to Office action issued on February 10, 2017.
18 Id. at pp. 58-62.
19 Id. at pp. 28-35.
20 Id. at pp. 28-35.
Serial No. 86943084
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consumers to “comment on articles, videos and TV show recaps; create a
personalized TV watch list; receive [a] Watchlist email . . . with top
headlines, editors’ picks and more.”

Washington Post (www.washingtonpost.com)21
Providing entertainment information relating to television programs and
access only (“sign in to start reading”) to Washington Post documents and
news.

We agree that the evidence shows that some of Applicant’s services are related to
Registrant’s “providing entertainment information concerning television program via
global computer network.” We specifically point out that our finding of relatedness of
the services does not involve Applicant’s service of allowing members the ability to
“access documents and images stored electronically featuring adult-themed
discussions and topics, images of female models.” Rather, the relatedness of
Applicant’s and Registrant’s services stems from Applicant’s services described at the
end of the recitation in the application, namely, providing members with “news
related to art, fashion, entertainment, health, sports, music, lifestyle and other topics
of general interest.” In this regard, we further point out that “it is sufficient for
finding a likelihood of confusion if relatedness is established for any item
encompassed by the identification of goods [and services] within a particular class in
the application.” In re Aquamar, Inc., 115 USPQ2d 1122, 1126, n.5 (TTAB 2015); see
also Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ
986, 988 (CCPA 1981).

21 Id. at pp. 18-19.
Serial No. 86943084
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The third-party website evidence, described above, is probative because it shows
that a single entity may provide both Applicant’s and Registrant’s services, either
through a single website or by link to a related website. Websites owned by companies
such as People, New York Times, TV Guide, etc. offer information online to consumers
regarding television programs, and, have a members-only or secure (password
protected) section of the same or related website displayed under the same mark,
where consumers access additional entertainment information or articles that
involve fashion, health, sports, music, and lifestyle. Consumers are accustomed to
accessing the aforementioned types of articles and information through both an open
website and a secure, limited access website.
Moreover, the record rebuts Applicant’s argument that the marks “do not compete
for the same customers.”22 Indeed, as discussed above, websites offering both
television programming and entertainment information are directed to consumers
interested in this material. In other words, the type of consumer who enjoys having
access to Applicant’s members-only service because it features entertainment and
arts information will also be interested in information about television programs
featuring similar content, such as that provided via Registrant’s website.
Finally, we note Applicant’s attempt to distinguish the involved services based on
their classification – Applicant’s services are in Class 41 and Registrant’s services are
in Class 42. Applicant asserts “[t]his difference in class avoids any likelihood of

22 7 TTABVUE 9.
Serial No. 86943084
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confusion.”23 Classification, however, is not a factor in our likelihood of confusion
analysis. The classification of goods and services by the USPTO is a
purely administrative determination that has no bearing on the issue of likelihood
of confusion. Trademark Act Section 30, 15 U.S.C. § 1112 (“The Director may
establish a classification of goods and services, for convenience of Patent and
Trademark Office administration, but not to limit or extend the applicant’s or
registrant’s rights.”); Jean Patou Inc. v. Theon Inc., 9 F.3d 971, 29 USPQ2d 1771,
1774 (Fed. Cir. 1993) (stating that classification is “wholly irrelevant to the issue of
registrability under section 1052(d), which makes no reference to classification”).
Accordingly, the du Pont factor involving the relatedness of the services weighs in
favor of finding a likelihood of confusion.
C. Weakness of the Term CENTERFOLD and Applicant’s
Ownership of Similar Registered Marks
Throughout the prosecution of the application, Applicant has argued that there
are several, coexisting, third-party marks containing the term CENTERFOLD.
However, as discussed supra, Applicant’s mere identification of third-party
registrations does not make them of record. There is no evidence of any third-party
registration or use of marks containing the term CENTERFOLD in the record.
Accordingly, we find no commercial weakness in the term.
With respect to Applicant’s own registrations, they do not help avoid the likelihood
of confusion. Applicant argues they show that Applicant “has expanded its

23 Id. at 8.
Serial No. 86943084
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unapologetic portrayal of nudity to the online arena, among others” and that they
“cement the association of Playboy with CENTERFOLD, and with nudity in the
minds of consumer.”24 Applicant has also argued that due to the notoriety of its
PLAYBOY mark, the proposed mark CENTERFOLD has become closely associated
with it. These arguments are not persuasive because the record does not reflect a
strong association between Applicant (or its mark PLAYBOY) and CENTERFOLD
and this is not a fact of which the Board may take judicial notice.25 Even if there was
a demonstrated strong association between Applicant and the term CENTERFOLD,
the problem remains with consumers familiar with Registrant’s services, upon seeing
Applicant’s mark, or vice versa. These consumers would be likely assume that the
services were related and that the SWIMSUIT CENTERFOLD website that provides
information regarding a television program is related to the CENTERFOLD
members-only website.
D. Conclusion
We have carefully reviewed the entire record and considered all relevant factors
concerning likelihood of confusion. Here, we find the involved marks, CENTERFOLD
and SWIMSUIT CENTERFOLD, are overall very similar and when used,
respectively, in connection with Applicant’s services that include “computer services,
namely, … providing a secured-access, members only website featuring technology

24 Id. at 7.
25 Although Applicant is the owner of various registrations that include the terms PLAYBOY
and/or CENTERFOLD(S), there is no evidence regarding their usage or extent to which the
public has been exposed to these marks.
Serial No. 86943084
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that gives members the ability to access documents and images stored electronically
featuring … news related to art, fashion, entertainment, health, sports, music,
lifestyle” and Registrant’s “providing entertainment information concerning
television program via global computer network,” the marks are likely to cause
confusion, mistake, or deception of relevant consumers.
Decision: The refusal to register Applicant’s mark under Section 2(d) is affirmed.