Spice Entertainment, Inc.

Trademark Trial and Appeal Board

Aug 26, 2008

No. 78912571 (T.T.A.B. Aug. 26, 2008)

Mailed: August 26, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Spice Entertainment, Inc.
________

Consolidated
Serial Nos. 77031138 and 78912571
_______

William T. McGrath, Marsha K. Hoover and Maureen B. Gorman
of Davis McGrath, LLC for Spice Entertainment, Inc.

David H. Stine, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney).
_______

Before Cataldo, Bergsman and Ritchie de Larena,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applications were filed by Spice Entertainment, Inc.
to register the following marks on the Principal Register:
1

1 Application Serial No. 77031138 was filed on October 27, 2006,
based upon applicant’s assertion of its bona fide intent to use
the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser Nos. 77031138 and 78912571
2
and
FRESH! (in standard characters)2
both for “broadcasting programs via a global computer
network; television broadcasting” in International Class
38; and “entertainment in the nature of on-going television
programs in the field of adult entertainment; television
programming; television scheduling; television show
production” in International Class 41.
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s marks, as intended to be used on or in
connection with its services, so resemble the mark FRESH!,
previously registered on the Principal Register in typed or
standard character form for “entertainment magazine” in
International Class 16,3 as to be likely to cause confusion.
When the refusal was made final in both cases,
applicant appealed. Applicant and the examining attorney
filed briefs on the issue under appeal in both cases. In
addition, applicant filed a motion to consolidate the
above-referenced appeals. In a paralegal order issued on

2 Application Serial No. 78912571 was filed on June 20, 2006,
based upon applicant’s assertion of its bona fide intent to use
the mark in commerce.
3 Registration No. 1502139 issued on August 30, 1998. Section 8
affidavit accepted; Section 15 affidavit acknowledged.
Ser Nos. 77031138 and 78912571
3
March 26, 2008, the Board granted applicant’s motion to
consolidate.
Because the examining attorney has cited Registration
No. 1502139 as a bar to registration of both applications
under consideration herein, and further because applicant
and the examining attorney have presented essentially
identical arguments on the issue under appeal on the same
records, we will come to our determination with regard to
both applications in this decision.
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, 567 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis, however, two key, though 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, 27 (CCPA 1976).

Ser Nos. 77031138 and 78912571
4
The Marks
We turn to the first du Pont factor, i.e., whether
applicant’s marks and registrant’s mark are similar or
dissimilar when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial
impression. See Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). We note initially that the test
under the first du Pont factor 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
that confusion as to the source of the goods or services
offered under the respective marks is likely to result.
The focus is on the recollection of the average purchaser,
who normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975).
In this case, however, applicant’s mark, FRESH!, in
its application Serial No. 78912571 is identical to the
mark in the cited registration in every respect. Use of
identical marks is a fact which “weighs heavily against
applicant.” See In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 165, 223 USPQ 1289 (Fed. Cir. 1984); and In re
Ser Nos. 77031138 and 78912571
5
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir.
1993).
In addition, applicant’s mark in its application
Serial No. 77031138, displayed below,

incorporates in its entirety the cited mark, FRESH!, as its
most distinctive element. The three petal design in
applicant’s mark appears after and slightly below the word
FRESH! and the design is also smaller in size relative
thereto. As a result, the petal design visually
contributes less to the mark’s overall commercial
impression than the wording. Furthermore, there is nothing
to suggest that consumers will verbalize the petal design.
Thus, the design is less significant than the wording
because consumers will refer to or request the identified
services by the word FRESH!. See In re Appetito Provisions
Co., 3 USPQ2d 1553 (TTAB 1987). In addition, the three
petal design connotes freshness, lending additional
emphasis to the word FRESH!. For these reasons, we
consider FRESH! to be the dominant feature of the applied-
for mark. When viewed in its entirety, we find that the
applied-for mark is nearly identical to registrant’s mark
in appearance and identical in sound. We further find that
Ser Nos. 77031138 and 78912571
6
inasmuch as both marks may connote that the content of the
goods or services identified thereby is “fresh” as opposed
to dated, stale or passé, applicant’s mark is identical to
the mark in the cited registration in connotation. We find
therefore that the marks convey nearly identical commercial
impressions. As a result, consumers are likely to view the
marks as variations of each other, but indicating a single
source.
Thus, as discussed above, applicant’s mark in its
application Serial No. 78912571 is identical to the mark in
the cited registration. Applicant’s mark in its
application Serial No. 77031138 is essentially identical
thereto in appearance, sound, connotation and overall
commercial impression. Accordingly, this du Pont factor
heavily favors a finding of likelihood of confusion.
Strength of the Cited Mark
Applicant argues that registrant’s mark is weak and
entitled to a limited scope of protection. In support of
this contention, applicant has submitted a dictionary
definition of “fresh” with its appeal brief.4 According to

4 The American Heritage Dictionary of the English Language, 4th
Ed. (2000). The Board hereby takes judicial notice of this
dictionary definition. See In re CyberFinancial.Net Inc., 65
USPQ2d 1789, 1791 n.3 (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).

Ser Nos. 77031138 and 78912571
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this definition, fresh may be defined, inter alia, as
follows: new to one’s experience, not encountered before;
novel, different; having the glowing, unspoiled appearance
of youth; untried, inexperienced; bold and saucy, impudent;
excellent, first rate. This dictionary definition supports
a finding that FRESH may suggest that the subject matter of
registrant’s goods or, for that matter, applicant’s
services, is novel, first rate, or even bold and saucy.
However, such definition does not support a finding that
FRESH is a highly suggestive or otherwise weak mark as
applied to either the goods or services.
In addition, applicant has made of record printed
copies of a number of third-party registrations taken from
the United States Patent and Trademark Office’s (USPTO)
Trademark Applications and Registrations Retrieval (TARR)
database, containing the word FRESH alone or in context
with other words and designs for magazines as well as a
variety of other goods and services. The following are
illustrative:
1. Registration No. 2985481 for the mark FRESH for
supermarket magazines;
2. Registration No. 2799388 for the mark FRESH
ATTITUDES for magazines for mass merchandising of retail
and grocery store consumer products;
Ser Nos. 77031138 and 78912571
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3. Registration No. 1812891 for the mark FRESH MEN
for magazine featuring erotic articles and photographs of
young male models;
4. Registration No. 2666331 for the mark FRESH FAITH
for greeting cards, note cards, and stationery;
5. Registration No. 2824644 for FRESH for notebooks,
binders, zipper pouches for pens and pencils, stationery-
type portfolios; and
6. Registration No. 2450997 for FRESH TRENDS for
trade publications, namely, a magazine for growers,
wholesalers, and retailers of fresh fruits and vegetables.
However, applicant’s evidence of third-party
registrations is entitled to limited probative value.5 The
registrations are not evidence of use of the marks shown
therein. As a result, they are not proof that consumers
are familiar with such marks so as to be accustomed to the
existence of the same or similar marks in the marketplace.
See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004,
177 USPQ 462 (CCPA 1973); and Richardson-Vicks, Inc. v.
Franklin Mint Corp., 216 USPQ 989 (TTAB 1982). Thus,
applicant’s proffered third-party registrations simply

5 The third-party applications also submitted by applicant are
only evidence that an applicant has filed for registration of a
mark, and thus have no probative value. See In re Phillips-Van
Heusen Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB 2002).
Ser Nos. 77031138 and 78912571
9
indicate that the USPTO has registered a number of “FRESH”
formative marks in relation to various goods and services,
only one of which, FRESH MEN, is arguably related to the
goods or services in the involved applications or cited
registration. Such evidence fails to establish that the
consuming public has been exposed to third-party use of
similar marks on similar goods or services, such that
consumers would distinguish applicant’s mark, FRESH! and
petal design, from the cited mark, FRESH!, based on the
very minor differences between them, to say nothing of
applicant’s FRESH! mark that is identical to the mark in
the cited registration.
Third-party registrations also may be used in the
manner of dictionary definitions to show that a term has a
certain significance in a particular field. Similar to
dictionary definition submitted by applicant, the
registrations made of record suggest that the content of
the goods and services recited therein is novel, first
rate, or otherwise current. However, even if we were to
conclude, based on applicant’s evidence, that registrant’s
mark is entitled to a more narrow scope of protection than
a totally arbitrary mark, the scope is still broad enough
to prevent the registration of an identical or a highly
similar mark for services that are highly similar to the
Ser Nos. 77031138 and 78912571
10
services identified in the cited registrations. See In re
Farah Manufacturing Co., Inc., 435 F.2d 594, 168 USPQ 277,
278 (CCPA 1971).
The Goods and Services
We turn then to a consideration of the goods and
services. In making our determination regarding the
relatedness thereof, we must look to the goods and services
as identified in the involved applications and cited
registration. See Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990).6 See also Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
We note, at the outset of considering this du Pont
factor, that the greater the degree of similarity between
applicant’s marks and the cited registered mark, the lesser
the degree of similarity between applicant’s services and
registrant’s goods that is required to support a finding of
likelihood of confusion. See In re Opus One Inc., 60
USPQ2d 1812, 1815 (TTAB 2001). If the marks are the same,
as in this case, it is only necessary that there be a

6 Applicant acknowledges that because the recited goods and
services contain no limitations as to their trade channels,
registrant’s goods and applicant’s services are presumed to move
in all normal channels of trade therefor and be available to all
classes of potential consumers. See In re Elbaum, 211 USPQ 639,
640 (TTAB 1981).

Ser Nos. 77031138 and 78912571
11
viable relationship between the goods and services in order
to support a finding of likelihood of confusion. See In re
Concordia International Forwarding Corp., 222 USPQ 355, 356
(TTAB 1983).
Furthermore, it is not necessary that the goods and
services at issue be similar or competitive, or even that
they move in the same channels of trade, to support a
holding of likelihood of confusion. It is sufficient
instead that the respective goods and services are related
in some manner, and/or that the conditions and activities
surrounding the marketing of the goods and services are
such that they would or could be encountered by the same
persons under circumstances that could, because of the
similarity of the marks, give rise to the mistaken belief
that they originate from the same producer. See In re
International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
In this case, applicant’s services are “broadcasting
programs via a global computer network; television
broadcasting” in Class 38 and “entertainment in the nature
of on-going television programs in the field of adult
entertainment; television programming; television
scheduling; television show production” in Class 41.
Clearly, these services are not the same as registrant’s
Ser Nos. 77031138 and 78912571
12
“entertainment magazines.” We note, however, that
“entertainment,” which is the subject matter of
registrant’s magazines, is very broad and encompasses
applicant’s more narrowly identified “adult entertainment”
which is the subject matter of its television programs.
Further, applicant’s television programming, scheduling and
production may be presumed to involve television programs
featuring entertainment. Thus, as identified, applicant’s
Class 41 services and registrant’s goods would appear to be
related inasmuch as both pertain to providing entertainment
in different media, that is, television versus printed
magazines.
In addition, the examining attorney has made of record
the following use-based, third-party registrations which
show that various entities have adopted a single mark both
for magazines as well as television programs, television
production services and on-line entertainment involving
various subject matter:7

7 The Examining Attorney further made of record registrations
based on Section 44 of the Trademark Act. Because these
registrations are not based on use in commerce they have no
probative value in showing the relatedness of the goods and
services, and they have not been considered. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). Nor do we find
probative those third-party registrations which are for goods
and/or services that are different from those identified in the
applications and the cited registration. Also, as discussed
above, the examining attorney’s submitted applications are only
Ser Nos. 77031138 and 78912571
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Registration Nos. 3301964 and 3352327 (owned by
the same entity) for, inter alia, magazines in
the field of sexual statistics and trivia,
outstanding and unusual sexual achievements, and
failures or occurrences related to sex, for
entertaining and education, and on-going
television and radio programs in the field of
sexual statistics and trivia, outstanding and
unusual sexual achievements, and failures or
occurrences related to sex; and

Registration No. 3045741 for, inter alia,
publications, namely, periodicals, books, and
magazines in the field of dance performances,
television show production, production of radio
and television programs.

Third-party registrations which individually cover a number
of different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB
1993).
Based upon the goods identified in the cited
registration and the services recited in Class 41 of the
involved applications, as well as the above third-party
evidence of record, we find that applicant’s adult
entertainment television shows, as well as applicant’s
television programming, scheduling and television show

evidence that an applicant has filed for registration of a mark.
See In re Phillips-Van Heusen Corp., supra.

Ser Nos. 77031138 and 78912571
14
production, are related to registrant’s entertainment
magazines.
Further, and as discussed above, applicant’s Class 38
services, identified as “broadcasting programs via a global
computer network; television broadcasting” may be presumed
to include the broadcasting of television and internet
programs featuring entertainment. As such, the subject
matter of applicant’s broadcasting services includes the
subject matter of registrant’s “entertainment magazines.”
Viewed another way, registrant’s magazines, which broadly
cover entertainment, may feature articles or otherwise
discuss applicant’s broadcasts. As a result, we find that
a viable relationship exists between registrant’s magazines
and applicant’s broadcasting services such that consumers
encountering them under their identical or nearly identical
marks are likely to believe that these goods and services
may emanate from a common source.
As such, based upon the record before us this du Pont
factor also favors a finding of likelihood of confusion.
Summary
In light of the foregoing, particularly given that
applicant’s marks are, respectively, identical and nearly
identical to the mark in the cited registration, and
resolving any doubt as we must in favor of the prior
Ser Nos. 77031138 and 78912571
15
registrant, we find that a likelihood of confusion exists
between the applied-for marks in both applications and the
mark in the cited registration as to both classes of
services. See Hewlett-Packard Co. v. Packard Press Inc.,
281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and In re
Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025
(Fed. Cir. 1988).
Decision: The refusal of registration of application
Serial Nos. 77031138 and 78912571 is affirmed.