Solem and King III

Trademark Trial and Appeal Board

Jan 8, 2008

No. 78626205 (T.T.A.B. Jan. 8, 2008)

Mailed:
January 8, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Solem and King III
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Serial No. 78626205
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Bryan E. Solem (pro se).

Richard F. White, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Holtzman, Zervas and Wellington, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
On May 10, 2005, Bryan E. Solem and LeRoyal King III,
a partnership, filed an application under Trademark Act
Section 1(b), 25 U.S.C. § 1051(b), for registration on the
Principal Register the mark VOLUNTEER MUSE (in standard
character form) for goods identified as “audio recording
featuring music” in International Class 9. The application
recites March 27, 2005 as applicant's dates of first use
anywhere and first use in commerce.
THIS OPINION
IS NOT A PRECEDENT
OF THE T.T.A.B.
Serial No. 78626205
2
The examining attorney has refused registration of
applicant's mark pursuant to Section 2(d) of the Trademark
Act, 15 U.S.C. 1052(d), on the ground that applicant’s mark
so resembles the previously registered mark MUSE (in typed
form) of Registration No. 2322679 (issued February 29,
2000)1 for, “pre-recorded compact discs and audio cassette
tapes featuring music,” in International Class 9, that, as
used on applicant’s identified goods, applicant's mark is
likely to cause confusion or mistake or to deceive.2
Applicant has appealed the final refusal of its
application. Both applicant and the examining attorney
have filed briefs.
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

1 Section 8 affidavit accepted and Section 15 affidavit
acknowledged.
2 The registration also recites the following International Class
41 services; “entertainment, namely, live performances by a
musical band.” In his brief, the examining attorney states that
registration has been refused on the basis of these entertainment
services in addition to the International Class 9 goods.
However, nowhere in his three Office actions did the examining
attorney state that he was refusing registration in view of such
services. Because the examining attorney has not given applicant
any notice that he was refusing registration in view of the
entertainment services, we do not give any such refusal further
consideration. See TMEP § 704.04 (“The examining attorney’s
first Office action must be complete, so the applicant will be
advised of all … grounds for refusal[.] … Every effort should be
made to avoid piecemeal prosecution, because it prolongs the time
needed to dispose of an application.”).

Serial No. 78626205
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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., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, two key, although not exclusive, 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).
We first consider the du Pont factors regarding the
goods, trade channels and classes of purchasers. In an ex
parte appeal, likelihood of confusion is determined on the
basis of the goods as they are identified in the
application and the cited registration. Hewlett-Packard
Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001
(Fed. Cir. 2002); In re Elbaum, 211 USPQ 639 (TTAB 1981);
In re William Hodges & Co., Inc., 190 USPQ 47 (TTAB 1976).
Because both applicant's and registrant’s goods are audio
recordings which feature music, we find that applicant's
and registrant’s goods are legally identical. Further,
because the goods are legally identical, they must be
deemed to be sold in the same channels of trade and to the
same classes of customers, which is the public at large.
Serial No. 78626205
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Thus, these three du Pont factors favor a finding of
likelihood of confusion.
Applicant has argued that its music “is rooted in the
analysis and exposition of religious themes, specifically
the Christian religion, thus significantly distinguishing
the music from that of Muse, and thus appealing to a
different audience from that of Muse.” Brief at p. 2.
However, there are no limitations to the type of music in
registrant’s or applicant's identifications of goods. As
noted above, the question of likelihood of confusion must
be determined based on an analysis of the mark as applied
to the goods recited in applicant’s application vis-à-vis
the goods recited in registrant’s registration. If there
are no limitations in an identification of goods, we must
presume that the “registration encompasses all goods of the
nature and type described, [and] that the identified goods
move in all channels of trade that would be normal for such
goods.” Elbaum, 211 USPQ at 640. See also Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority
is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
Serial No. 78626205
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particular nature of an applicant's goods, the particular
channels of trade or the class of purchasers to which the
sales of goods are directed.”). Thus, applicant's argument
is not persuasive.
With respect to the conditions of purchase, applicant
argues that “[t]oday’s consumer of music exhibits
sophisticated purchasing habits that mitigate possible
confusion, aided in part by a marketplace that allows
consumers to listen to free samples of music in retail
stores and on the internet.” Brief at pp. 1 – 2. We are
not persuaded that the conditions of purchase are as
applicant describes. First, even if free samples of music
are available, the prospective purchaser is not required to
listen to such free samples prior to making a purchase and
indeed may not listen to them at all. Second, applicant,
at p. 3 of its request for reconsideration, states that
“[i]t seems reasonable to assert that the average consumer
buys an audio recording because … (3) it was recommended to
them by someone ….” As to those who are purchasing based
on a recommendation, there is no reason to assume based on
the record before us that such purchasers would use
anything but ordinary care in their purchasing decisions.
Third, applicant acknowledges, also at p. 3 of its request
for reconsideration, that some of its purchasers may buy
Serial No. 78626205
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audio recordings on impulse. As to such purchasers, they
cannot be said to “exhibit[] sophisticated purchasing
habits.” Fourth, it is well settled that the fact that
consumers may exercise deliberation in choosing goods in a
particular field or genre of music does not necessarily
preclude their mistaking one mark for another or that they
otherwise are entirely immune from confusion as to source
or sponsorship. Wincharger Corp. v. Rinco, Inc., 297 F.2d
261, 132 USPQ 289 (CCPA 1962). See also, In re Decombe, 9
USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221
USPQ 558 (TTAB 1983). In view thereof, and because we must
consider those purchasers who are least sophisticated, we
resolve the fourth du Pont factor against registrant.3
This brings us to the similarity of the marks as
considered in their entireties. We keep in mind that when
marks would appear on virtually identical goods, as they do
here, the degree of similarity necessary to support a
conclusion of likely confusion declines. Century 21 Real

3 In support of its contention that purchasers of its goods are
sophisticated, applicant relies in part on records of applicant's
sales of individual songs at CDBaby.com, an online retailer of
music. According to applicant, 82% of its sales are for one song
on its CD “Melancholy High” and the remaining five songs consist
of approximately 2% to 6% of sales. This evidence is of limited
probative because applicant's identification of goods is not
limited to online sales, or sales at locations where purchasers
may purchase only one song from a collection of songs, and even
CDBaby.com allows for the purchase of entire “albums” and not
individual songs.
Serial No. 78626205
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Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992). Our focus is on
whether the marks are similar in sound, appearance,
meaning, and commercial impression. Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005). In articulating
reasons for reaching a conclusion on the issue of
likelihood of confusion, there is nothing improper in
stating that, for rational reasons, more or less weight has
been given to a particular feature of a mark, provided the
ultimate conclusion rests on a consideration of the marks
in their entireties. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
The only difference in the wording of the marks is
applicant's addition of VOLUNTEER to MUSE of registrant’s
mark. Nonetheless, applicant maintains that the marks
taken as a whole are dissimilar because VOLUNTEER is the
dominant portion of the mark due to its position as the
initial term in the mark and because MUSE is a weak term.4
In support of its contention that MUSE is a weak term,
applicant has submitted its search results for “muse” on

4 Applicant has not disclaimed the term MUSE, although it has
offered to do so at p. 9 of its request for reconsideration. In
any event, a disclaimer of MUSE would not serve to avoid
confusion. See Cancer Care, Inc. v. American Family Life
Assurance Company of Columbus, 211 USPQ 1005 (TTAB 1981).
Serial No. 78626205
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CDBaby.com, which is a website where one may purchase
musical recordings. Applicant located the following:
MUSE: flute music by Christopher Caliendo
World music combined with Latin rhythms meets
classical flute to create energetic and seductive
melodies played by today’s sexiest flute duo.

BLUE MUSE: will I be free
Blue Muse is a female fronted rock band …

MELISSA MAJEAU & THE MUSE: the time has come
With elements of rock, folk, reggae, it’s a real
mélange.

CELTIC MUSE: VALERIE BLESSLEY & JENNIFER PRATT-
WALTER: wind and wood: a sylvan dance
Celtic Muse – Music to gentle the spirit and
gladden the heart.

DARK MUSE: sounds from beyond the silver wheel
An otherworldly journey that traverses the
listener through isolated atmospheres and dimly
lit corridors … this is music for haunted spaces.

SCOOTER MUSE: saddell abbey
“… a haunting and beautiful piece of music … just
wonderful….”

THE DORIAN MUSE: emily
Mello contemporary music with a classical
influence.

MEEKA MUSE: between you & me
Soulful, Sultry, Sensual – Meeka’s Story-Line
Poetry delves into our lives and penetrates your
soul.

Serial No. 78626205
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PLANET MUSE: uncharted talents
An eclectic mix of 17 rock, pop, folk and country
flavored, digitally mastered songs from a
talented cadre of songwriters who got together
through the Muse’s Muse message boards.

LORETTA MUSE: raingarden
Poetic and beautifully performed, Loretta
seamlessly integrates an adult contemporary pop
style ….

THE ADODI MUSE: A GAY NEGRO ENSEMBLE: ain’t got
sense enuf to be ‘shamed
Atlanta’s only black gay male performance poets
collective bring you an in-your-face collection
of performance poetry, songs, revealing interview
interludes and more ….

SHAY MUSE: shay muse
This lovely soul-o artist comes from the Boston
area and delivers a unique blend of R&B/Soul with
a twist of Hip-Hop and Jazz.

Applicant adds at pp. 8 – 9 of its request for
reconsideration that “‘muse’ is commonly used by artists to
convey to their audience that they are working within a
tradition of inspiration, and that what they offer
artistically is meant to inspire,” relying on an entry for
“muse” from wikipedia.org which provides that in Greek
mythology, the Muses were “nine goddesses who embody the
right evocation of myth, inspired through remembered and
improvised song, traditional music and dances.” We have
Serial No. 78626205
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also located the following definition of “muse” of which we
take judicial notice:5
1 capitalized : any of the nine sister goddesses in Greek mythology presiding over song
and poetry and the arts and sciences
2: a source of inspiration; especially : a guiding genius
3: POET

Applicant concludes that “muse” is widely used in artistic
fields, and should consequently be considered to be a weak
term. Request for reconsideration at p. 9.6
We have carefully considered applicant's evidence and
arguments, but do not find them sufficiently compelling so
as to persuade us to resolve the du Pont factor regarding
the similarity of the marks in applicant's favor. First,
applicant has not submitted evidence showing the extent of
consumers’ exposure to the CDBaby.com website, and we
cannot determine the same from what is in the record.

5 From Merriam-Webster’s Online Dictionary. The Board may take
judicial notice of dictionary definitions, including online
dictionaries which exist in printed format. See In re
CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002). See also
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
6 Applicant's other evidence in support of its contention that
“muse” is a weak term in connection with its goods has no
probative value; the advertisement for a music industry
conference MUSEXPO is a combination of “mus,” ostensibly an
abbreviation for “music” and “expo,” not “muse expo”; and Muse
Research’s “Receptor” discussed in the article from “Electronic
Musician” magazine is not sufficiently related to the goods at
issue in this appeal.
Serial No. 78626205
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Second, the record does not indicate the extent of
consumers’ familiarity with the artists whose names contain
the term MUSE. Third, even if the CDBaby.com evidence
along with the Wikipedia evidence and the dictionary
definition show that “muse” is a suggestive term in
connection with music, and does have some significance, on
this record we do not find that it is so suggestive as to
render VOLUNTEER as the dominant term in applicant's mark.
VOLUNTEER still modifies MUSE in applicant's mark,
identifying a type of MUSE. We therefore find the meaning
and commercial impression of the marks to be similar, in
that both refer to a muse. Further, as far as sound and
appearance of the marks, while there are differences due to
the addition of VOLUNTEER to MUSE, the differences are
outweighed by the similarities created by the shared common
term MUSE.
In view of the foregoing, and because we do not
consider whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar that confusion as to the
source of the goods offered under the respective marks is
likely to result, see Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106 (TTAB 1975), we find that the du Pont factor
Serial No. 78626205
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regarding the similarity of the marks favors a finding of a
likelihood of confusion.
When we consider the record and the relevant
likelihood of confusion factors, and all of applicant's
arguments relating thereto, we conclude that, when
potential purchasers of applicant's “audio recording
featuring music” and registrant’s “pre recorded compact
discs and audio cassette tapes featuring music” encounter
the marks VOLUNTEER MUSE and MUSE, respectively, for these
goods, they are likely to believe that the sources of these
goods are in some way related or associated. As a result,
there is a likelihood of confusion.
DECISION: The refusal to register the mark under
Section 2(d) of the Trademark Act in view of Registration
No. 2322679 is affirmed.