Soulfire Studios, LLC

Trademark Trial and Appeal Board

Aug 1, 2013

No. 85429769 (T.T.A.B. Aug. 1, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
August 1, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Soulfire Studios, LLC
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Serial No. 85429769
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Matthew H. Swyers of The Trademark Company, PLLC for Soulfire Studios, LLC.

Andrea Koyner Nadelman, Trademark Examining Attorney, Law Office 110 (Chris
A. F. Pedersen, Managing Attorney).
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Before Bucher, Holtzman, and Hightower, Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
On September 22, 2011, Soulfire Studios, LLC applied to register the mark
StoryDance, in standard character form, for “Dance events; Dance instruction;
Dance instruction for children” in International Class 41 pursuant to Section 1(a) of
the Trademark Act, 15 U.S.C. § 1051(a).1
Registration has been refused on the ground that there exists a likelihood of
confusion pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), with

1 Application Serial No. 85429769, alleging first use anywhere and first use in commerce at
least as early as April 8, 2011.
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the mark Stories That Dance, in standard characters and with the word “Dance”
disclaimed, registered for “Educational dance program for children” in International
Class 41.2
Applicant timely appealed. Both applicant and the examining attorney filed
appeal briefs.
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative
facts in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (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, 29 (CCPA 1976) (“The fundamental inquiry mandated by
§ 2(d) goes to the cumulative effect of differences in the essential characteristics of
the goods and differences in the marks.”). We discuss each of the du Pont factors as
to which applicant or the examining attorney submitted argument or evidence. To
the extent that any other du Pont factors for which no argument or evidence was
presented may nonetheless be applicable, we treat them as neutral.

2 Registration No. 3557024, issued January 6, 2009.
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A. Similarity of the Goods, Channels of Trade, and Classes of Customers
We turn first to the similarity of the goods and the channels of trade, the
second and third du Pont factors, respectively. Applicant’s goods are “dance events;
dance instruction; dance instruction for children.” The services in the cited
registration are “educational dance program for children.” We find applicant’s
“dance instruction for children” highly related, if not identical to, the “educational
dance program for children” services identified in the cited registration.
Because the services are closely related and there are no limitations to the
services in the application or the cited registration as to channels of trade and
classes of purchasers, we must presume that the respective services travel through
the same channels of trade and are offered to the same potential purchasers – here,
primarily parents. See Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261,
62 USPQ2d 1001, 1005 (Fed. Cir. 2002); American Lebanese Syrian Associated
Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011);
In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994). In view of the above,
we find that the goods are closely related, travel in the same channels of trade, and
are sold to the same classes of purchasers.
Applicant made of record the Affidavit of Nadia Jaafar (“Jaafar Affidavit”),
which, like applicant’s brief, is devoted in large part to distinguishing between the
services actually offered under applicant’s mark and those apparently offered under
the cited registration.3 However, we are bound by the identifications as written in

3 November 27, 2012 response to Office action, Exhibit 3, at 26-29 (“Jaafar Affidavit”).
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the application and the cited registration and cannot limit the parties’ services,
channels of trade, or classes of customers to what any evidence shows them to be.
In re Bercut-Vandervoort & Co., 229 USPQ 763, 764-65 (TTAB 1986) (“It is well
settled that in a proceeding such as this, the question of likelihood of confusion
must be determined by an analysis of the marks as applied to the goods identified in
the application vis-a-vis the goods recited in the registration, rather than what
extrinsic evidence shows those goods to be.”).
Accordingly, in our likelihood of confusion analysis, these findings under the
second and third du Pont factors strongly support a finding of likely confusion.
B. Similarity of the Marks
We next consider the first du Pont likelihood of confusion factor, which
focuses on the similarity or dissimilarity of “the marks in their entireties as to
appearance, sound, connotation, and commercial impression.” Palm Bay Imps. 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). In comparing the
marks, we are mindful that the test is not whether the marks can be distinguished
when subjected to a side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial impression so that
confusion as to the source of the services offered under the respective marks is
likely to result. San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp.,
565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc.,
23 USPQ2d 1735, 1741 (TTAB 1991), aff’d, No. 92-1086 (Fed. Cir. June 5, 1992).
We focus on the recollection of the average purchaser, who normally retains a
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general rather than a specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Slight differences in marks do
not normally create dissimilar marks. See In re Great Lakes Canning, Inc., 227
USPQ 483, 485 (TTAB 1985); In re Narwood Prods., Inc., 223 USPQ 1034, 1036
(TTAB 1984) (finding composite mark with wording THE MUSIC MAKERS
confusingly similar to MUSICMAKERS).
Applicant’s mark is StoryDance and the cited registered mark is Stories That
Dance. The marks share the identical first word “Story” – in singular and plural
form, respectively – followed by the identical term “Dance.” There is no material
difference between singular and plural forms of the same term. See, e.g., In re
Belgrade Shoe, 411 F.2d 1352, 162 USPQ 227 (CCPA 1969); Wilson v. Delaunay,
245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957); In re Sarjanian, 136 USPQ 307,
308 (TTAB 1962). Likewise, the additional pronoun “That” in the cited registration
does not distinguish applicant’s mark from the cited registration in any meaningful
way. Nor does the telescoping of applicant’s mark into a single term serve to
change its commercial impression or make the marks dissimilar.
We find that StoryDance is surely to be perceived by prospective purchasers as a
combination of the words “Story” and “Dance.”
Applicant argues that the term “Story” is diluted by other registrations of
that term for similar services. Applicant made of record the following five
registrations, owned by different third parties, each covering Class 41 services:
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1. STORYSMITH (Registration No. 2438401)
2. STORYTIME (Registration No. 4218895)
3. BASED ON A TRUE STORY (Registration No. 3779492)
4. DJ STORY (Registration No. 4006588)
5. SERIOUS CLOWNING A STORY BEHIND EVERY SMILE
(Registration No. 3783237)
The persuasive value of these registrations is limited. First, although each
incorporates the term “STORY” somewhere in the mark, none also features the final
term embodied in both applicant’s mark and the cited registered mark, “Dance.”
Instead, these registered marks all incorporate other terms that serve to distinguish
them from the cited registered mark, Stories That Dance.
Second, these third-party registrations are not evidence that the marks
therein have been used at all, let alone used so extensively that consumers have
become sufficiently conditioned by their usage that they can distinguish between
marks incorporating the word “STORY” on the basis of minor differences. The
probative value of third-party trademarks depends entirely on their usage. Palm
Bay Imps., Inc., 78 USPQ2d at 1693. Where, as here, the record includes no
evidence about the extent of third-party uses, the probative value of this evidence is
minimal. Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557,
1561 (Fed. Cir. 2001); see also Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200,
22 USPQ2d 1542, 1545 (Fed. Cir. 1992) (“As to strength of a mark, however,
registration evidence may not be given any weight.”). “The existence of [third-
party] registrations is not evidence of what happens in the market place or that
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consumers are familiar with them nor should the existence on the register of
confusingly similar marks aid an applicant to register another likely to cause
confusion, mistake or to deceive.” AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d
1403, 177 USPQ 268, 269 (CCPA 1973); see also In re Max Capital Group Ltd., 93
USPQ2d 1243, 1248 (TTAB 2010) (third-party registrations cannot justify
registration of another confusingly similar mark).
Further, each case must be decided on its own merits. We are not privy to
the records of these five registrations, and moreover, the determination of the
registrability of different marks by a trademark examining attorney cannot control
the results in the case now before us. In re Nett Designs Inc., 236 F.3d 139, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some
characteristics similar to [applicant’s] application, the PTO’s allowance of such prior
registrations does not bind the Board or this court.”).
We find applicant’s mark to be highly similar to the cited mark in
appearance, sound, connotation, and commercial impression. Therefore, the first
du Pont factor supports a conclusion that confusion is likely.
C. Consumer Sophistication
Applicant makes two additional arguments that confusion is not likely. First,
applicant contends that consumers of the respective services are highly
sophisticated. In support, applicant cites the Jaafar Affidavit, which states that
applicant’s dance classes are priced at $14 to $17.50 per class and birthday parties
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and special events range from $60 to $500.4 Presumably based on a website that
appears to be related to the cited registration, Ms. Jaafar also states that
registrant’s services range from $7 to $9 per ticket.5
The most highly related services, priced from $7 to $17.50, are not so
expensive that we presume consumers of them to be sophisticated. More
importantly, neither the application nor the cited registration is restricted to goods
of any particular price. Even assuming on the basis of the Jaafar Affidavit that
consumers of dance instruction and educational dance programs for children are
sophisticated when it comes to their buying decisions,6 it is settled that careful or
sophisticated purchasers are not immune from source confusion, especially in cases
such as the instant one involving similar marks and closely related services. See In
re Research & Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986)
(“‘Human memories even of discriminating purchasers . . . are not infallible.”’)
(quoting Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168
USPQ 110, 112 (CCPA 1970)). We find that the similarities between the marks and
the services offered thereunder outweigh any sophisticated purchasing decision.
See HRL Assocs. Inc. v. Weiss Assocs. Inc., 12 USPQ2d 1819, 1823 (TTAB 1989),
aff’d, Weiss Assocs., Inc. v. HRL Assocs., Inc., 902 F.2d 1546, 14 USPQ2d 1840
(Fed. Cir. 1990). This factor is neutral.

4 See Jaafar Affidavit at ¶ 10.
5 Id. at ¶ 9.
6 Id.
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D. Absence of Actual Confusion
Finally, applicant argues that it has used its mark concurrently with the
cited registration continuously since April 2011 with no evidence of actual
confusion. This argument pertains to the seventh and eighth du Pont factors, i.e.,
the nature and extent of any actual confusion and the length of time during and
conditions under which there has been concurrent use without evidence of actual
confusion. See du Pont, 177 USPQ at 567.
The lack of evidence of actual confusion carries little weight, J. C. Hall Co. v.
Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965), especially in
this ex parte context. Less than two years elapsed between the dates of applicant’s
first use in April 2011 and the Jaafar Affidavit in November 2012, a relatively short
period of coexistence. Moreover, the record is devoid of probative evidence relating
to the extent of use of applicant’s and registrant’s marks and, thus, whether there
have been meaningful opportunities for instances of actual confusion to have
occurred in the marketplace. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1847 (Fed. Cir. 2000); Gillette Canada Inc. v. Ranir Corp., 23
USPQ2d 1768, 1774 (TTAB 1992). Accordingly, the du Pont factors regarding the
length of time during and conditions under which there has been contemporaneous
use without evidence of actual confusion are considered neutral.
Conclusion as to Likelihood of Confusion
We have considered all evidence of record as it pertains to the relevant
du Pont factors. We have carefully considered applicant’s arguments and evidence,
even if not specifically discussed herein, but have not found them persuasive. In
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view of our findings that the marks are highly similar and the services are related
and move in the same or similar channels of trade to the same customers, we find
that applicant’s mark StoryDance is likely to cause confusion with the registered
mark Stories That Dance.
Decision: We affirm the refusal to register applicant’s mark due to a
likelihood of confusion with Registration No. 3557024 under Trademark Act Section
2(d), 15 U.S.C. § 1052(d).