Splendor Productions, Inc.

Trademark Trial and Appeal Board

Jun 1, 2004

No. 76152209 (T.T.A.B. Jun. 1, 2004)

Mailed: June 1, 2004
Paper No. 10
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Splendor Productions, Inc.
________
Serial No. 76152209
_______
Ava K. Doppelt of Allen, Dyer, Doppelt, Milbrath & Gilchrist,
P.A.
Brian J. Pino, Trademark Examining Attorney, Law Office 114
(Margaret Le, Managing Attorney).
_______
Before Hohein, Bottorff and Holtzman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Splendor Productions, Inc. has filed an application to
register the mark "THE MUSIC OF LIFE" and design, as reproduced
below,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76152209
2
for "prerecorded musical products, namely, compact discs and
videotapes featuring music."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its goods, so resembles each of
the following marks, which are owned by the same registrant for
the goods and services indicated, as to be likely to cause
confusion, or to cause mistake, or to deceive:
(i) the mark "THE MUSIC OF YOUR LIFE"
for "pre-recorded phonograph records and
magnetic tapes";2 and
(ii) the mark "MUSIC OF YOUR LIFE" for
"entertainment services rendered by an
orchestra".3
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
1 Ser. No. 76152209, filed on October 23, 2000, which is based on an
allegation of a bona fide intention to use the mark in commerce. The
word "Music" is disclaimed.
2 Reg. No. 1,275,953, issued on May 1, 1984, which sets forth a date of
first use anywhere of December 23, 1982 and a date of first use in
commerce of January 19, 1983; combined affidavit §§8 and 15. The word
"MUSIC" is disclaimed.
3 Reg. No. 1,367,083, issued on October 22, 1985, which sets forth a
date of first use anywhere and in commerce of January 19, 1983;
combined affidavit §§8 and 15. The word "MUSIC" is disclaimed.
Ser. No. 76152209
3
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion
analysis, two key considerations are the similarity or
dissimilarity in the goods and/or services at issue and the
similarity or dissimilarity of the respective marks in their
entireties.4
Turning first to the similarity or dissimilarity in the
goods at issue, applicant argues in its main brief that "there is
no basis for concluding that the goods and services themselves
are similar," asserting that its "goods are for compact discs,
which include a four-volume collection of multifarious musical
compositions[,] and video tapes" while "[t]he cited registrations
are for phonograph records, magnetic tapes and entertainment
services rendered by an orchestra" (emphasis in original).
Applicant also alternatively argues, in its main brief, that it
"is willing to amend the description" of its goods "to read:
'pre-recorded musical products namely, compact disks and video
tapes featuring Christian music,'" noting that:
Applicant ... is in the business of
retail Christian music sales. As such, sales
of the subject goods are intended to be
directed to the Christian retail consumer.
The [goods and services associated with the]
marks upon which the Examining Attorney bases
his refusal to register are for general
retail sales and are not intended for
Christian music sales. General retail sales
and Christian music sales are separate and
distinct channels of trade, and Applicant
4 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods [and/or services] and
differences in the marks." 192 USPQ at 29.
Ser. No. 76152209
4
respectfully submits that this factor weights
in favor of registration of Applicant's Mark.
Applicant, in its main brief, additionally contends that because
the "sophistication of consumers desiring to purchase Christian
music is generally greater than the average consumer," it is the
case that "[t]hose purchasing Christian music often tend to be
particular about the specific types and genres that they
purchase"; that they "are unlikely to seek their product in the
same area that sales made" of registrant's goods; and that "[i]t
is more likely that they will carefully scrutinize their purchase
so that it conforms to their specific tastes and desires."
However, as the Examining Attorney observes in his
brief, applicant's arguments that the respective goods and
services are not related because of asserted differences in the
channels of trade for the goods and the sophistication of
purchasers for the goods and services are not well taken. As the
Examining Attorney correctly points out, it is well settled that
the issue of likelihood of confusion must be determined on the
basis of the goods and services as they are set forth in the
involved application and the cited registrations, and not in
light of what such goods and services are asserted to actually
be. See, e.g., Octocom Systems Inc. v. Houston Computer Services
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990);
Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813, 1815-16 (Fed. Cir. 1987); CBS Inc. v.
Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983);
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed.
Ser. No. 76152209
5
Cir. 1983); and Paula Payne Products Co. v. Johnson Publishing
Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
As the Examining Attorney, in view thereof, accurately
observes, "applicant's identification of goods does not limit the
goods to Christian music, nor does it limit the sale of the goods
to Christian music stores." Moreover, as the Examining Attorney
properly notes, even if applicant were to amend its application
to so limit its goods, the fact remains that registrant's
identification of goods, as well as its identification of
services, "does not contain any limitation of the type of music
it sells [or performs] or to whom the music [or orchestral
entertainment] may be sold. Therefore, one must presume that the
registrant's goods [and services] include Christian music and are
also sold to Christian music stores [and to Christian music
listeners]." Furthermore, even if purchasers of and listeners to
Christian music could be considered to be careful and
discriminating consumers, the Examining Attorney is again correct
in noting that, nevertheless, it is well settled that the fact
that consumers may exercise deliberation in choosing goods and
services 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, 292 (CCPA 1962). See also In re Decombe, 9 USPQ2d
1812, 1814-15 (TTAB 1988); and In re Pellerin Milnor Corp., 221
USPQ 558, 560 (TTAB 1983).
Ser. No. 76152209
6
With respect to applicant's contentions that "there is
no basis for concluding that the goods and services themselves
are similar," it is well established, as the Examining Attorney
points out, that the goods and services at issue need not be
identical or even competitive in nature in order to support a
finding of likelihood of confusion. Instead, it is sufficient
that the goods and services are related in some manner and/or
that the circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons under
situations that would give rise, because of the marks employed in
connection therewith, to the mistaken belief that they originate
from or are in some way associated with the same producer or
provider. See, e.g., Monsanto Co. v. Enviro-Chem Corp., 199 USPQ
590, 595-96 (TTAB 1978) and In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
In support of his contention that applicant's goods are
related to registrant's goods and services, the Examining
Attorney has made of record copies of ten use-based third-party
registrations in which, in each instance, the same mark is not
only registered for various pre-recorded forms of music and
musical performances, such as compact discs, audio cassettes,
video cassettes and phonograph records, but is also registered
for live entertainment services rendered by a musical group,
artist or orchestra. Nine other use-based third-party
registrations furnished by the Examining Attorney similarly
feature a mark which is registered for compact discs, phonograph
records, audio cassettes and/or video cassettes. It is settled,
Ser. No. 76152209
7
in this regard, that while use-based third-party registrations
are not evidence that the different marks shown therein are in
use or that the public is familiar with them, such registrations
may nevertheless have some probative value to the extent that
they serve to suggest that the goods and/or services listed
therein are of the kinds which may emanate from a single source.
See, e.g., In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-
86 (TTAB 1993) and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d
1467, 1470 at n. 6 (TTAB 1988). Here, the registrations noted by
the Examining Attorney serve to confirm the obvious, namely, that
compact discs, phonograph records, audio cassettes and video
cassettes are all forms of pre-recorded music available from or
produced by a single source, while those which list both goods
and services also demonstrate that musical sound recordings and
live musical performances likewise may be regarded by consumers
of prerecorded music and musical entertainment services as
emanating from a common source. The respective goods and
services at issue herein are thus sufficiently related that, if
sold or offered under the same or similar marks, confusion as to
the origin or affiliation thereof would be likely to occur.
Turning, therefore, to the respective marks, applicant
argues in its main brief that confusion is unlikely because the
marks "do not look or sound alike, and as such, make different
overall commercial impressions." Specifically, applicant urges
that (bold in original; citation omitted):
Applicant respectfully asserts that THE
MUSIC OF YOUR LIFE and MUSIC OF YOUR LIFE
differ from THE MUSIC OF LIFE. Both of the
Ser. No. 76152209
8
[cited] references include the word "YOUR"
where it is omitted in Applicant's Mark.
"YOUR" is a possessive modifier which
significantly alters the meaning of the Mark.
"YOUR" also results in a different sounding
mark when pronounced orally. Furthermore,
Applicant asserts that the marks are
dissimilar in appearance, as the cited
references for THE MUSIC OF YOUR LIFE and
MUSIC OF YOUR LIFE are typed drawings whereas
the subject Mark contains highly stylized
writing in addition to a piano design.
Because the dominant features of Applicant's
Mark are the stylized writing and the piano
design, "it is proper to give greater face
[sic] and effect to that feature for purposes
of determining likelihood of confusion."
....
The Examining Attorney, on the other hand, contends
that, when considered in their entireties, the respective marks
are so substantially similar that, when used in connection with
musical sound recordings and musical entertainment services,
confusion as to source or sponsorship would be likely to take
place. As the Examining Attorney points out in his brief
(citation omitted):
The marks are identical in all respects,
except for the applicant's piano design and
the wording THE and/or YOUR. If the goods or
services ... are closely related, as is the
case here, the degree of similarity between
marks required to support a finding of
likelihood of confusion is not as great as
would apply with diverse goods or services.
.... The wording YOUR and THE are non-
distinctive and do not create a distinct
commercial impression that obviates the
likelihood of confusion between the marks.
Moreover, the applicant's stylization of its
mark does not obviate the likelihood of
confusion between the marks ... because the
registrant's marks are in typed form.
Therefore, the registrant may display its
mark in any stylization, including the exact
stylization that appears in applicant's mark.
.... Additionally, both [applicant and
Ser. No. 76152209
9
registrant] ... have disclaimed the wording
MUSIC apart from the mark. Thus, the
dominant portion of the marks is LIFE; the
respective marks share the dominant wording
LIFE as the last word in each mark.
Accordingly, the positioning of the dominant
portion of each mark is the same, leading to
the same look and connotation of the
respective marks.
In view thereof, and inasmuch as it is also the case that, not
only is the piano design in applicant' mark "highly descriptive
of the goods, especially if the music includes the piano as an
instrument," but the word portion of such mark, namely, "THE
MUSIC OF LIFE," is the part which, where a mark consists of a
word portion and a design, "is more likely to be impressed upon a
purchaser's memory and to be used in calling for the goods,"5 the
Examining Attorney concludes that confusion is likely.
We agree with the Examining Attorney that
contemporaneous use of the marks at issue in connection with the
respective goods and services is likely to cause confusion.
Admittedly, there are differences between applicant's mark and
registrant's marks which are apparent upon a side-by-side
comparison. However, as the Examining Attorney correctly
observes, such a comparison is not the proper test to be used in
determining the issue of likelihood of confusion because it is
not the ordinary way that customers will be exposed to the marks.
Instead, it is the similarity of the general overall commercial
impression engendered by the marks which must determine, due to
the fallibility of memory and the concomitant lack of perfect
5 See, e.g., In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554
(TTAB 1987).
Ser. No. 76152209
10
recall, whether confusion as to source or sponsorship is likely.
The proper emphasis is accordingly on the recollection of the
average purchaser, who normally retains a general rather than a
specific impression of marks. See, e.g., Grandpa Pidgeon's of
Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573, 574
(CCPA 1973); Envirotech Corp. v. Solaron Corp., 211 USPQ 724, 733
(TTAB 1981); and Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106, 108 (TTAB 1975).
In the present case, it is apparent that applicant's
"THE MUSIC OF LIFE" and design mark is substantially similar to
both registrant's "THE MUSIC OF YOUR LIFE" mark and its "MUSIC OF
YOUR LIFE" mark in sound, appearance and general overall
commercial impression due, in significant part, to the fact that
structurally, each prominently features essentially the same or
highly similar phrase "(THE) MUSIC OF (YOUR) LIFE". Moreover,
contrary to applicant's argument that the stylized wording in its
mark renders such mark visually distinct from registrant's typed
format marks, it is pointed out that the fact that registrant's
marks are in typed form means that the display thereof could
include not only the same stylization for the wording therein as
utilized by applicant for its mark, but also the same manner of
placing the individual words one beneath another rather than on a
single line. See, e.g., Phillips Petroleum Co. v. C. J. Webb,
Inc. 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971) [a mark
registered in typed format is not limited to the depiction
thereof in any special form]; and INB National Bank v. Metrohost
Inc., 22 USPQ2d 1585, 1588 (TTAB 1992) ["[a]s the Phillips
Ser. No. 76152209
11
Petroleum case makes clear, when [an] applicant seeks a typed or
block letter registration of its word mark, then the Board must
consider all reasonable manners in which ... [the word] could be
depicted"]. The presence, therefore, of a piano design in
applicant's "THE MUSIC OF LIFE" and design mark, along with the
absence of the possessive word "YOUR," is simply insufficient to
distinguish such mark from registrant's "THE MUSIC OF YOUR LIFE"
and "MUSIC OF YOUR LIFE" marks. Such marks are substantially
similar in sound and appearance, and engender substantially the
same general overall commercial impression.
Applicant, nevertheless, further contends in its main
brief that "in light of similar marks in use on similar goods
[and services]" by third parties, applicant's mark and those of
registrant "should be able to co-exist as well."6 In particular,
applicant asserts that "[t]he Patent and Trademark Office has
registered many marks similar to Applicant's that suggest music-
related goods or services and require a disclaimer for the word
'MUSIC.'" Applicant lists, as examples thereof, the following
four registrations:7 (i) "Reg. No. 2,268,522" for the mark
6 While applicant additionally urges with respect to registrant's marks
that "[n]either of these marks qualify as 'famous' marks and that such
"factor weighs in favor of Applicant," it is pointed out that there is
no evidence of record as to whether registrant's marks are famous.
Accordingly, the du Pont factor of "[t]he fame of the prior mark[s]
(sales, advertising, length of use)" is simply not applicable herein.
7 Ordinarily, a mere list of third-party registrations would be
insufficient to make such registrations properly of record. The Board
does not take judicial notice of third-party registrations, see, e.g.,
In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974), and thus the proper
procedure for making information concerning third-party registrations
of record is to submit either copies of the actual registrations or
the electronic equivalents thereof, i.e., printouts of the
registrations which have been taken from the PTO's own computerized
database. See, e.g., In re Consolidated Cigar Corp., 35 USPQ2d 1290,
Ser. No. 76152209
12
"MUSIC OF YOUR LIFE" for "entertainment services rendered through
the medium of radio, namely music programs"; (ii) "Reg. No.
1,287,892" for "THE MUSIC OF YOUR LIFE" for "printed music
folios"; (iii) "Reg. No. 2,158,771" for "LIFE MUSIC" for "pre-
recorded compact discs featuring musical arrangements designed to
enhance personal well-being and positive mental states and
instructional manuals for use therewith, sold as a unit"; and
(iv) "Reg. No. 1,914,107" for "MUSIC FOR LIFE" for a variety of
"electronic and audio apparatus" including "phonograph and record
turntables," and "compact disc players."
Applicant's contention is not persuasive. As the
Examining Attorney points out, the registration for the mark "THE
MUSIC OF YOUR LIFE" for "printed music folios" is not a third-
party registration but, rather, is owned by the same registrant
as is the owner of the cited registrations herein, while the
registration for the mark "MUSIC FOR LIFE" for a variety of
"electronic and audio apparatus" is no longer valid. Moreover,
as the Examining Attorney observes "Reg. No. 2,268,522" does not
correspond to the mark "MUSIC OF YOUR LIFE" for "entertainment
services rendered through the medium of radio, namely music
programs" but instead is for the mark "THEAEGIS.COM" for the
service of "providing an on-line newspaper featuring general and
local news and information," while the mark "LIFE MUSIC" for
"pre-recorded compact discs featuring musical arrangements
1292 n. 3 (TTAB 1995); In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 n.
3 (TTAB 1994); and In re Melville Corp., 18 USPQ2d 1386, 1388 n. 2
(TTAB 1991). Nonetheless, because the Examining Attorney treated the
third-party registrations as if they were properly of record, we have
Ser. No. 76152209
13
designed to enhance personal well-being and positive mental
states" projects "a different commercial impression" from that
engendered by the marks at issue herein. Furthermore, and most
importantly, it is pointed out that the information provided by
applicant with respect to what at most amount to three third-
party registrations simply does not constitute proof of actual
use of any of the registered marks and that the purchasing
public, having become conditioned to encountering various goods
and services under those marks, is therefore able to distinguish
the source thereof based upon differences in such marks. See,
e.g., AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403,
177 USPQ 268, 269 (CCPA 1973) and In re Hub Distributing, Inc.,
218 USPQ 284, 285-86 (TTAB 1983). Thus, the number and nature of
similar marks in use on similar goods is not a relevant du Pont
factor in this appeal.
We accordingly conclude that consumers who are familiar
or acquainted with registrant's "THE MUSIC OF YOUR LIFE" mark for
"pre-recorded phonograph records and magnetic tapes" and its
"MUSIC OF YOUR LIFE" mark for "entertainment services rendered by
an orchestra" would be likely to believe, upon encountering
applicant's substantially similar "THE MUSIC OF LIFE" and design
mark for "prerecorded musical products, namely, compact discs and
videotapes featuring music," that such closely related goods and
services emanate from, or are sponsored by or affiliated with,
the same source. Even those consumers, for example, who happen
to notice the minor differences between applicant's mark for its
considered the information furnished by applicant with respect
Ser. No. 76152209
14
goods and registrant's marks for its goods and services could
reasonably believe that applicant's goods constitute a new
product line from the same source as registrant's goods and
services.
Decision: The refusal under Section 2(d) is affirmed.
thereto.