Science Fiction Writers of America, Inc.v.James Stout

Trademark Trial and Appeal Board

Aug 9, 2000

No. 91111717 (T.T.A.B. Aug. 9, 2000)

Paper No. 10
GFR
8/9/00
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Science Fiction Writers of America, Inc., d/b/a Science
Fiction and Fantasy Writers of America
v.
James Stout
_____
Opposition No. 111,717
to application Serial No. 75/377,639
filed on October 14, 1997
_____
M. Christine Valada, Esq. for Science Fiction Writers of
America, Inc.
Anthony DeToro, Esq. for James Stout.
______
Before Walters, Bucher and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 111,717
2
James Stout has filed an application to register the
mark NEBULA NINE for "entertainment, namely, live
performances by a musical group."1
Science Fiction Writers of America, Inc., d/b/a
Science Fiction and Fantasy Writers of America has
opposed registration on the ground that since 1965 it has
continuously used the mark NEBULA AWARD in connection
with the sale of goods and services in interstate
commerce "to honor the work of outstanding science
fiction writers and promote the field of science fiction
to readers and other consumers of science fiction
materials; that its use of the mark has been valid and
continuous and not abandoned; that the mark is used to
promote an annual awards banquet and for "the annual
publication of anthologies"; that opposer has developed
extensive good will and consumer recognition; and that,
"[i]n view of the similarity of the respective marks and
the related nature of the services of the respective
parties" that there is a likelihood of confusion or
mistake by consumers or that they would be deceived.
Applicant has expressly or effectively denied the
salient allegations of the notice of opposition.

1 Serial No. 75/377,639, filed on October 14, 1997, which
alleges a date of first use of October 31, 1992 and a date of
first use in commerce of March 15, 1993.
Opposition No. 111,717
3
Applicant also affirmatively pleads that its mark is
distinctive, but that opposer's mark is not, since
"'NEBULA' is a common astronomical term and cannot be
distinctive to the opposer." Finally, applicant
affirmatively pleads that there is no likelihood of
confusion because the parties' marks are not similar and
opposer uses its mark "in connection with a literary
award given by writers while Applicant's mark is used in
the music field."
The record includes the pleadings, the file of the
opposed application, and a single notice of reliance
filed by opposer. The notice of reliance introduces
applicant's responses to opposer's interrogatories;
applicant's responses to opposer's request for
admissions; applicant's written responses to opposer's
request for production of documents and things, and
documents actually produced; certain printed
publications; a stipulation by the parties that testimony
may be taken by affidavit; and affidavits from three
witnesses, including attached exhibits.2

2 A notice of reliance must be filed during a party's testimony
period. See TBMP §718.02(a). In addition, documents produced
in response to a party's request for production usually cannot
be introduced into the record by notice of reliance, but may be
considered by the Board if the non-offering party does not
object. See TBMP §711.
Opposition No. 111,717
4
Applicant did not submit any testimony or other
evidence. Both parties submitted briefs, but no oral
hearing was requested.
Although the applicant has alleged dates of first
use in the application, these dates have not been
established by evidence in this case. Thus, we consider
the application filing date as applicant's constructive
date of first use. See Lone Star Manufacturing Co., Inc.
v. Bill Beasley, Inc., 182 USPQ 368 (CCPA 1974) and The
Chicago Corporation v. North American Chicago Corp., 20
USPQ2d 1715 (TTAB 1991). We find the evidence submitted
by opposer sufficient to prove that opposer not only used
its mark prior to applicant's filing date, but also that
opposer's use of its mark, both for its annual award
ceremonies and for its annual anthologies, has been
continuous and has not been abandoned. Moreover,
applicant submitted no evidence to the contrary. Thus,
we find for opposer on the issue of priority and are left
to consider the question of likelihood of confusion.

In this case, opposer's testimony period closed August 2, 1999,
but its notice of reliance has a certificate of mailing dated
September 1, 1999. Applicant has filed a brief but did not
object therein to either opposer's late filing of its notice of
reliance or opposer's submission of produced documents by notice
of reliance. Nor did applicant, prior to briefing, separately
object to, or move to strike, the notice of reliance or any
portion thereof. Accordingly, we have considered the notice and
all accompanying material.
Opposition No. 111,717
5
In any likelihood of confusion analysis, two key
considerations are the similarity or dissimilarity of the
goods and the similarity or dissimilarity of the marks.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“the fundamental
inquiry mandated by Section 2(d) goes to the cumulative
effect of differences in the essential characteristics of
the goods and differences in the mark”). We consider,
first, the parties' respective goods and services.
Opposer has established that it uses its mark in
connection with an annual awards ceremony, and related
activities, and a series of books which, on an annual
basis, collect and reprint literary works which have won
opposer's awards. Applicant, in contrast, seeks
registration of its mark for "entertainment, namely, live
performances by a musical group." We find the goods and
services of the parties dissimilar. Opposer argues that
"[b]ecause of the nature of dissemination of
entertainment services today, 'entertainment' is an
amorphous and expanding class." The argument, however,
is without any evidentiary support.
In regard to the channels of trade for the parties'
respective goods and services, opposer argues that "the
number of potential markets for goods or services such as
Opposition No. 111,717
6
those provided by both Opposer and Applicant are
consolidated" and "the goods or services are so similar
that the channels of trade have merged." The record,
however, provides no support for these arguments.
Opposer, for example, asserts that its anthologies
"are available through brick and mortar and on-line book
dealers and are promoted with advertising in traditional
print publications as well as on-line publications."
However, apart from the Summer 1996 issue of its own
member publication, The Bulletin of the Science Fiction
and Fantasy Writers of America, which contains an
advertisement from the publisher of NEBULA AWARDS 30,
opposer has offered no testimony or evidence to support
this argument.3
Opposer also alleges the following as facts: that
"in the recent past" it has "optioned the NEBULA mark for
a television anthology series based on NEBULA AWARD
winning stories"; that its anthologies and applicant's
musical recordings are available through "the Amazon.com
website"; that other Internet search engines can retrieve
references to both parties; and that both parties use the

3 The Bulletin, according to the evidence, is primarily a
publication for members of opposer's organization, but may be
available in some bookstores and can be purchased by
subscription by any member of the public. We have no evidence,
Opposition No. 111,717
7
Internet to promote their goods and services. Apart from
evidence that opposer maintains a website and that
applicant markets its music via the Internet, none of
these allegations is supported by the record.
Moreover, opposer's argument regarding trade
channels overlooks the fact that applicant's services, as
identified, are limited to live musical performances. We
look to the respective identifications of the parties'
goods and services to determine their scope.
In further support of its allegation of likelihood
of confusion, opposer notes that applicant has, in
response to a request for admission, admitted familiarity
with science fiction; and opposer goes on to assert that
applicant's "music invokes science fiction" and opposer
is, therefore, "justifiably concerned that Applicant is
treading on the good will Opposer has developed." The
only evidence which can be argued to support opposer's
characterization of applicant's music is a document filed
as a specimen in applicant's application, produced by
applicant to opposer during discovery, and made of record
with opposer's notice of reliance, which states: "From
the outer limits of our universe, these two powerful
performers [applicant and his former musical partner]

however, regarding outlets in which it may be sold or number of
Opposition No. 111,717
8
will inspire you with their uplifting progressive
trance." We find this insufficient support for opposer's
allegation that applicant is "treading on the good will
Opposer has developed."
Next we turn to the parties' marks. For our
assessment of the marks4, we take judicial notice of the
following definition of "Nebula":
1. Astron. a. a cloudlike, luminous or dark mass
composed of gases and small amounts of dust. b.
Also called planetary nebula. a central star
surrounded by a gaseous envelope. c. Also called
extragalactic nebula. an exterior galaxy.
889 The Random House College Dictionary (Rev.
ed. 1982)
Thus, in connection with opposer's goods and
services, the term "NEBULA," at most, vaguely suggests
outer space, which often is the setting for science
fiction stories. The term "AWARD" in opposer's mark is
descriptive when used in conjunction with opposer's

subscribers.
4 Opposer has established that, in 1975, a licensee produced
NEBULA AWARD STORIES NINE. There is no evidence, however, that
this title functioned as a trademark or, if so, that opposer has
any current trademark rights in this phrase. Moreover, opposer
did not plead use of any specific mark other than NEBULA AWARD.
Therefore, our focus herein is only on opposer's NEBULA AWARD
mark and applicant's NEBULA NINE mark.
Opposition No. 111,717
9
annual award ceremonies and published anthologies of
award-winning literary works.5
Opposer claims it has a strong mark; and, in this
regard, opposer has established that it has held its
annual award ceremonies throughout the United States and
that the ceremonies and related events are open to the
public, so long as they are willing to pay requisite
entrance fees. There is no evidence, however, regarding
public attendance at any particular ceremony or event.
Though opposer argues that its ceremonies "have been
covered by the printed press and on such television
programs as SCI-FI Buzz on the SCI-FI Channel," it has
offered no testimony or evidence to support the argument,
other than evidence of coverage in the Pittsburgh Post-
Gazette of the 1999 ceremony.
Opposer estimates that it has earned "substantial
royalties" from sales of its anthologies, yet has
proffered no revenue figures to support this claim,

5 During the pendency of this proceeding, opposer obtained two
registrations for the mark NEBULA AWARDS; one is for the mark as
used for opposer's annual awards ceremonies and the other is for
opposer's annual anthologies. In each instance, the
registration includes a disclaimer of "AWARDS". In this case,
however, opposer is relying not on these registrations, but on
its allegation of prior and continuous use of NEBULA AWARD for
its goods and services. Opposer does not contend that "AWARD"
is not descriptive in connection with its goods and services and
there can be no serious question on the point.
Opposition No. 111,717
10
either for all the years it has published anthologies or
for any particular year. The most we have been able to
determine, based on our review of opposer's submission of
its 1988 application for tax exempt status, is that
opposer's income from anthologies for the years 1984-87
totaled no more than $20,000.6 Thus, we have insufficient
evidence from which to draw conclusions about the nature
and extent of public awareness of opposer's mark in
connection with its goods and services.
Regarding applicant's mark, there is insufficient
evidence to establish that NEBULA NINE, or the individual
terms in the mark, have any descriptive or suggestive
significance in connection with applicant's recited
services.
Comparing the parties' marks, while it is true that
both marks share the initial term "NEBULA," we find that
the difference in the additional terms in each mark lend
the marks, considered in their entireties, different
appearances and connotations. We find the overall
commercial impressions of the parties' marks to be quite
different.

6 The application reports total income for those four years of
$189,500, and states that approximately 10 percent of opposer's
income is attributable to sales of its anthologies.
Opposition No. 111,717
11
In sum, notwithstanding that the marks share the
same initial term, the marks are sufficiently different
that, when used on the dissimilar goods and services
involved in this case, we find no likelihood that
consumers would be confused, or mistaken, or deceived.
Opposition No. 111,717
12
Decision: The opposition is dismissed.
C. E. Walters
D. E. Bucher
G. F. Rogers
Administrative Trademark
Judges, Trademark Trial
and Appeal Board