QVC, Inc.

Trademark Trial and Appeal Board

Apr 11, 2000

No. 75118932 (T.T.A.B. Apr. 11, 2000)

Hearing:
October 21, 1999
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB APRIL 11, 00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re QVC, Inc.
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Serial No. 75/118,932
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Manny Pokotilow of Caesar, Rivise, Bernstein, Cohen & Pokotilow
for applicant.
Elizabeth A. Dunn, Trademark Senior Attorney, Law Office 102
(Thomas V. Shaw, Managing Attorney).
_______
Before Simms, Bucher and McLeod, Administrative Trademark
Judges.
Opinion by McLeod, Administrative Trademark Judge:
An application has been filed by QVC, Inc. to register the
mark QVC MUSEUM TOUR and design shown below for "home shopping
services featuring museum tours through the use of television."1
Ser No. 75/118,932
2
The Trademark Senior Attorney has refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on
the ground that applicant's mark, when used in connection with
the identified services, so resembles the previously registered
mark MUSEUM TOUR for "retail catalog and online electronic
retail services featuring gifts, toys, games, books, puzzles,
CD-ROMs, videos, software, and apparel"2 as to be likely to cause
confusion.
When the refusal was made final, applicant appealed.
Applicant and the Senior Attorney have filed briefs. An oral
hearing was held. We affirm.
Applicant contends that confusion is unlikely because the
overall commercial impression of the involved marks is
dissimilar. According to applicant, the “famous” QVC mark,
coupled with the stylized words MUSEUM TOUR and design, create a
composite mark which is distinguishable from the registered
mark. Applicant submits that the design creates an artistic
effect which is at least as prominent as the literal portion of
applicant’s mark. Even if the literal portion is accorded
greater weight, applicant maintains that the words MUSEUM TOUR

1 Application Serial No. 75/118,932, filed June 14, 1996, alleging
dates of first use of June 3, 1996. The words “MUSEUM TOUR” are
disclaimed apart from the mark as shown.
2 Registration No. 2,058,385, issued to Informal Education Products
Ltd. on April 29, 1997, setting forth dates of first use of August
1985, and first use in commerce of September 1985.
Ser No. 75/118,932
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are merely descriptive, and thus the addition of applicant’s
house mark QVC is sufficient to avoid confusion. Applicant also
asserts, among other things, that the respective services of the
applicant and the registrant are offered through different
channels of trade.
The Senior Attorney, on the other hand, contends that the
marks are similar in overall commercial impression because both
marks contain the words MUSEUM TOUR. The Senior Attorney
maintains that registrant is entitled to display its mark in the
same lettering style as the applied-for mark. The Senior
Attorney also asserts that the addition of a geometric
background design does not alter the commercial impression of
applicant’s mark. According to the Senior Attorney, the word
portion of applicant’s mark is of greater importance, and the
addition of applicant’s QVC house mark does not distinguish the
literal portion of applicant’s mark from the cited registered
mark. With respect to the involved services, the Senior
Attorney argues that both the applicant and the registrant
perform retail services, and that applicant’s recitation of
services is broad enough to include the same products sold by
registrant.
Ser No. 75/118,932
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The evidence of record consists of a glossary dictionary
definition, catalog excerpts, and articles from the Nexis
database.3
In determining whether there is likelihood of confusion
between two marks, we must consider all relevant factors as set
forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357,
1361, 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973). In this case, we
have focused on the likelihood of confusion factors discussed in
the appeal briefs, including the similarities between the marks,
the relatedness of the services, and the channels of trade.
Applicant does not seriously contest the fact that both the
applicant and the registrant offer retail services targeted to
home shoppers. (Applicant’s Reply Br. at 2 & 4). We recognize
that the services are offered through different media.
Applicant’s recitation of services is limited to television,
whereas registrant’s recitation is limited to online and
catalogs. Contrary to applicant’s contention, however,
applicant’s recitation is not restricted to applicant’s own
cable television network or to any specific type of retail

3 Although the glossary evidence was not submitted prior to appeal,
the Board may take judicial notice of such definitions. See Trademark
Rule 2.142(d); University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., Inc., 213 U.S.P.Q. 594, 596 (T.T.A.B. 1982), aff’d, 703
F.2d 1372, 217 U.S.P.Q. 505 (Fed. Cir. 1983). Applicant also
submitted a printout from the Internet with its reply brief. We
decline to take judicial notice of Internet evidence. In view
thereof, and inasmuch as the Internet evidence is untimely filed, it
has been given no consideration. See Trademark Rule 2.142(d).
Ser No. 75/118,932
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products. Applicant’s broad recitation of services is assumed
to encompass all forms of television, as well as retail gifts,
toys, games, books, puzzles, CD-ROMs, videos, software, and
apparel similar to registrant. See In re Elbaum, 211 U.S.P.Q.
639, 640 (T.T.A.B. 1981). Moreover, the average consumer may
purchase these types of retail products online, by catalog or by
television. Accordingly, we conclude that the services are
sufficiently related for purposes of likelihood of confusion.
Turning to the involved marks, it is true that the marks
must be considered in their entireties and that the design
portion of applicant’s mark cannot be ignored. However, there
is nothing improper in giving more weight to a dominant feature
of a mark. See In re National Data Corp., 753 F.2d 1056, 1058,
224 U.S.P.Q. 749, 751 (Fed. Cir. 1985). In this regard, we note
that applicant’s design element is a geometric backdrop for the
word portion of applicant’s mark. It is our opinion that the
design element is not as prominent as the word portion of
applicant’s mark. See In re Dixie Restaurants, Inc., 105 F.3d
1405, 1407, 41 U.S.P.Q.2d 1531, 1534 (Fed. Cir. 1997). The
literal portion of applicant’s mark is considered dominant
because it is more likely to be remembered and used by consumers
in requesting the services. See In re Appetito Provisions Co.,
3 U.S.P.Q.2d 1553, 1554 (T.T.A.B. 1987).
Ser No. 75/118,932
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With respect to the word portion of the involved marks,
applicant’s mark QVC MUSEUM TOUR has incorporated registrant’s
entire mark MUSEUM TOUR. The incorporation of the entire
registered trademark into a composite mark sought to be
registered will increase the likelihood of confusion. See In re
Hyper Shoppes, Inc., 837 F.2d 463, 464-65, 6 U.S.P.Q.2d 1025,
1026 (Fed. Cir. 1988); Wella Corp. v. California Concept Corp.,
558 F.2d 1019, 1022, 194 U.S.P.Q. 419, 422 (C.C.P.A. 1977).
We are not convinced that the addition of applicant’s house
mark QVC avoids confusion. As a general rule, the addition of a
house mark to an otherwise confusingly similar mark will not
serve to avoid confusion. In re Christian Dior, S.A., 225
U.S.P.Q. 533, 535 (T.T.A.B. 1985); In re C. F. Hathaway, Co.,
190 U.S.P.Q. 343, 344 (T.T.A.B. 1976). An exception to this
general rule may occur when the marks are merely descriptive,
and the addition of the house mark is then sufficient to render
the marks as a whole distinguishable. Christian Dior, supra.; 2
J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition, §22:43 (4th ed. 1999).
Contrary to applicant’s contention, however, this case does
not fall within the exception. While applicant concedes that
the words MUSEUM TOUR are descriptive of applicant’s services,
there is simply no compelling evidence that the words are also
merely descriptive of registrant’s services. Thus, contrary to
Ser No. 75/118,932
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applicant’s argument, this situation is not parallel to that in
Food Specialty Co., Inc. v. Kal Kan Foods, Inc., 487 F.2d 1389,
1391, 180 U.S.P.Q. 136, 138 (C.C.P.A. 1973)(no likelihood of
confusion between KAL KAN KITTY STEW and KITTY both for cat
food) or In re Merchandising Motivation, Inc., 184 U.S.P.Q. 364,
365 (T.T.A.B. 1974)(no likelihood of confusion between MMI
MENSWEAR for clothing services and MEN’S WEAR for magazine).
Rather, the addition of applicant’s house mark QVC to the
registered mark MUSEUM TOUR may increase likelihood of
confusion. It is not unreasonable to conclude that consumers
familiar with applicant’s “famous” QVC house mark may mistakenly
believe that registrant’s MUSEUM TOUR retail services are
affiliated with applicant’s home shopping services –-in the
sense of reverse likelihood of confusion. See K2 Corp. v.
Philip Morris Inc., 192 U.S.P.Q. 174, 178 (T.T.A.B. 1976),
aff’d, 555 F.2d 815, 194 U.S.P.Q. 81 (CCPA 1977); American
HygienicLaboratories v. Tiffany & Co., 12 U.S.P.Q.2d 1979, 1983
(T.T.A.B. 1989).
Decision: The refusal to register is affirmed.
R. L. Simms
D. E. Bucher
Ser No. 75/118,932
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L. K. McLeod
Administrative Trademark
Judges, Trademark
Trial and Appeal Board