The University of Houston System

Trademark Trial and Appeal Board

Aug 5, 2013

No. 76979102 (T.T.A.B. Aug. 5, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: August 5, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re The University of Houston System
_____

Serial No. 76979102
_____

Jennifer S. Sickler of Thompson & Knight LLP,
for The University of Houston System.
Matt Einstein, Trademark Examining Attorney, Law Office 115,
John Lincoski, Managing Attorney.
_____

Before Bucher, Holtzman and Masiello,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
The University of Houston System (“applicant”) seeks registration on the
Principal Register of the mark THE FRONT ROW (in standard character format)
for the following services:
radio broadcasting and radio program broadcasting not
including Christian, gospel, and inspirational music;
communication services, namely, transmitting streamed
audio material through media of cable and satellite
Serial No. 76979102
2

systems, the Internet, and portable and wireless devices
in International Class 38; and
educational and entertainment services, namely,
providing radio programs in the field of theater,
comedians, classical music, musicals, films, videos, dance,
and opera, not including Christian, gospel, and
inspirational music; and educational services, namely,
panel discussions with faculty, musicians, singers, and
music professionals in the field of music, theater,
musicals, films, opera, and dance, not including Christian,
gospel, and inspirational music in International Class 41.1
The examining attorney has refused registration of applicant’s mark under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), having determined that
registration would lead to a likelihood of confusion in view of the services recited in
Reg. No. 3266071 for the mark FRONT ROW LIVE (in standard character format)
for “production of television programming; entertainment in the nature of ongoing
television programs in the field of Christian, gospel and inspirational music;
distribution of television programming to cable television systems; providing
information relating to television programming via a global computer network” in
International Class 41.2

1 Application Serial No. 76709368 was filed on October 12, 2011, based upon an allegation
of first use anywhere and first use in commerce in connection with goods and services in
classes 16, 38 and 41 at least as early as January 19, 2004. The ‘368 application was
divided on February 21, 2013, and with only the goods, as amended, in International Class
16, issued as Registration No. 4362620. The two classes of involved services were moved
into the “child” application, Serial No. 76979102, which is the subject of this appeal.
2 Registration No. 3266071 issued on July 17, 2007; Section 8 affidavit accepted and Section
15 affidavit acknowledged. No claim is made to the exclusive right to use the word “Live”
apart from the mark as shown.
Serial No. 76979102
3

When the refusal was made final, applicant appealed and requested
reconsideration. After the examining attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
Our determination under Trademark Act § 2(d) is based on an analysis of the
probative facts in evidence that are relevant to the factors bearing on a likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the
evidence of record on these factors, we keep in mind that “[t]he 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 marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In
re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
A. Comparison of the Marks
Applicant has applied to register the mark THE FRONT ROW. The registered
mark is FRONT ROW LIVE. In comparing the marks, we must consider the marks
in their entireties as to appearance, sound, connotation and commercial impression,
to determine the similarity or dissimilarity between them. Palm Bay, 73 USPQ2d at
1692. 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
Serial No. 76979102
4

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.
Because the similarity or dissimilarity of the marks is determined based upon
the marks in their entireties, the analysis cannot be predicated on dissecting the
marks into their various components; that is, the decision must be based on the
entire marks, not just part of the marks. In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).
On the other hand, different features may be analyzed to determine whether
the marks are similar. Price Candy Company v. Gold Medal Candy Corporation,
220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955). In fact, 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., 224 USPQ
at 751. In this context, we note that disclaimed matter is typically less significant or
less dominant when comparing marks. See Id. at 752; In re Dixie Rests., Inc., 41
USPQ2d at 1533-34. 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 the case at bar, the marks share the identical dominant wording, “Front
Row.” Registrant’s mark tacks onto the end of “Front Row” the highly descriptive
and disclaimed term “Live,” while applicant’s mark prefaces “Front Row” with the
Serial No. 76979102
5

definite article, “The.” While this may provide some dissimilarities as to sound,
inasmuch as the identical term “Front Row” is the dominant element in both
applicant’s and registrant’s marks, we find a strong similarity between the two marks
as to appearance, connotation and overall commercial impression. See In re Dixie
Rests., Inc., 41 USPQ2d at 1533-34.
Accordingly, we find that this du Pont factor weighs in favor of a finding of
likelihood of confusion.
B. Relationship of the Services and Trade Channels
We next turn our attention to the relationship of the services as they are recited
in the registration and application. Octocom Systems, Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002). It is settled that it is not necessary that the respective services be
identical or even competitive in order to find that they are related for purposes of
our likelihood of confusion analysis. The services need only be sufficiently related
that consumers would be likely to assume, upon encountering the services under
similar marks, that they originate from, are sponsored or authorized by, or are
otherwise connected to the same source. See In re Martin’s Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18
USPQ2d 1386 (TTAB 1991).
The involved services as recited by applicant involve broadcasting, educational
and entertainment services, carefully carving out in each instance “Christian,
Serial No. 76979102
6

gospel, and inspirational music.” The argument that this exclusionary language
obviates a likelihood of confusion has some degree of persuasiveness only if we
construe all of registrant’s services as being limited to the field of inspirational,
religious music. However, in the context of applicant’s attempts to eliminate any
overlap with registrant’s services, we note that among the four independent clauses
comprising registrant’s recitation of services, only one has limitations as to the
“field of Christian, gospel and inspirational music.” Hence, given that this one
clause is separated by a semicolon from the other wording in the recitation of
services, the other three are deemed to be separate categories of services and
independent bases for the Section 2(d) refusal. See In re Midwest Gaming &
Entertainment LLC, 106 USPQ2d 1163, 1167 (TTAB 2013). Hence, we must
construe registrant’s production of TV programming and distribution of these
programs via cable and the Internet as involving non-religious subject matter
and/or non-musical offerings.
Applicant also makes arguments about the difference between radio and
television broadcasting. As to the difference in the types of media alleged by
applicant, the examining attorney has placed into the record use-based, third-party
registrations to suggest that the services are of types which may well emanate from
a single source. In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB
1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988). See also In re Albert Trostel & Sons Co.,
29 USPQ2d 1783, 1785-86 (TTAB 1993). Accordingly, the examining attorney has
submitted copies of the following registrations:
Serial No. 76979102
7

KABILLION3 SFS MEDIA4 SPIKE5
STAND-UP COOKING6 SMILE OF A CHILD7
8 9 10
HARDWORK ENTERTAINMENT11
12
JC-TV13
MASSEY PRODUCTIONS14 PTL15

3 Registration No. 3952365 issued on April 26, 2011.
4 Registration No. 3823289 issued on July 20, 2010. No claim is made to the exclusive right
to use the word “Media” apart from the mark as shown.
5 Registration No. 4065809 issued on December 6, 2011.
6 Registration No. 3157396 issued on October 17, 2006. No claim is made to the exclusive
right to use the word “Cooking” apart from the mark as shown.
7 Registration No. 3779547 issued on April 20, 2010.
8 Registration No. 3302413 issued on October 2, 2007. The foreign wording in the mark
translates into English as “Conquer or Die.”
9 Registration No. 3274458 issued on August 7, 2007. No claim is made to the exclusive
right to use the term “Hip Hop” apart from the mark as shown.
10 Registration No. 3779548 issued on April 20, 2010.
11 Registration No. 4089951 issued on January 24, 2012. No claim is made to the exclusive
right to use the word “Entertainment” apart from the mark as shown.
12 Registration No. 3998609 issued on July 19, 2011.
13 Registration No. 3429195 issued on May 20, 2008. Registered under § 2(f) of the Act.
14 Registration No. 3003128 issued on the Supplemental Register on September 27, 2005;
Section 8 affidavit (six-year) accepted.
15 Registration No. 3912377 issued on January 25, 2011.
Serial No. 76

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Serial No. 76979102
9

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Serial No. 76

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Serial No. 76979102
11

variations on the term, “Front Row.” From this, applicant argues that the term
“Front Row” is diluted and weak.
However, as noted by the examining attorney, the mere submission of a list of
registrations does not make the listed registrations part of the record. In re Promo
Ink, 78 USPQ2d 1301, 1304 (TTAB 2006); TBMP § 1208.02. To make third-party
registrations part of the record, an applicant must submit copies of the
registrations, or the complete electronic equivalent from the United States Patent
and Trademark Office’s automated systems, prior to appeal. In re Jump Designs
LLC, 80 USPQ2d 1370, 1372-73 (TTAB 2006); In re Ruffin Gaming, 66 USPQ2d,
1924, 1925 n.3 (TTAB 2002). Given the summary nature of applicant’s Exhibit A,
the mere listing of marks is irrelevant because the listing provides no indication of
the goods or services identified in the registrations. Accordingly, we have not
considered this submission, and this du Pont factor is deemed to be neutral.
D. Lack of Actual Confusion
Applicant argues that there has been no actual confusion between the marks
despite over eight years of contemporaneous use. Certainly, actual confusion is not
necessary in order to show a likelihood of confusion. See Giant Food, Inc. v. Nation's
Foodservice, Inc., 710 F.2d 1565, 1571, 218 USPQ 390, 396 (Fed. Cir. 1983).
Additionally, applicant’s assertion, in this ex parte proceeding, of the
contemporaneous use of applicant’s and registrant’s marks for a period of eight
years without actual confusion is entitled to little weight. See In re Majestic
Distilling Co., 65 USPQ2d at 1205 (“uncorroborated statements of no known
Serial No. 76979102
12

instances of actual confusion are of little evidentiary value”). See also In re Bisset-
Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (stating that self-
serving testimony of applicant’s corporate president’s unawareness of instances of
actual confusion was not conclusive that actual confusion did not exist or that there
was no likelihood of confusion); In re Binion, 93 USPQ2d at 1536; In re 1st USA
Realty Professionals Inc., 84 USPQ2d 1581, 1588 (TTAB 2007); and In re Kangaroos
U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984). In any event, 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); and In re Wilson, 57
USPQ2d at 1869 (“[I]nasmuch as we have heard from neither registrant nor the
Highland Orange Association in this appeal, we cannot conclude that, in fact, no
instances of actual confusion ever occurred.”). Accordingly, the du Pont factor of the
length of time during and conditions under which there has been contemporaneous
use of the marks without evidence of actual confusion is considered neutral in this
case.
E. Fame
Finally, applicant’s assertion that its mark is well-known is not supported by
the record. However, in any event, the fifth du Pont factor refers to “the fame of
the prior mark,” which in this case means registrant’s mark. Cf. Wet Seal Inc. v.
FD Management Inc., 82 USPQ2d 1629, 1638 n.18 (TTAB 2007).
Serial No. 76979102
13

Applicant claims ownership in a subsequently adopted mark, so its degree of
fame is irrelevant to this ex parte proceeding. Logically, should applicant, as the
junior user, achieve a high degree of renown nationwide, it could ultimately result
in a case of “reverse confusion” where the junior user is mistakenly viewed by
many consumers as the source of the senior user’s services. In re Shell Oil Co., 992
F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993); Fisons Horticulture, Inc. v.
Vigoro Indust., Inc., 30 F.3d 466, 31 USPQ2d 1592, 1597-98 (3d Cir. 1994); and
Banff, Ltd. v. Federated Dept. Stores, Inc., 841 F.2d 486, 6 USPQ2d 1187, 1190-91
(2d Cir. 1988).
Hence, at best for applicant, this too is determined to be a neutral factor.
F. Conclusion
In view of the facts that the marks are quite similar, the services are related
and they move through the same channels of trade to the same classes of ordinary
consumers, we find that applicant’s registration of its applied-for mark in
connection with the recited services is likely to cause confusion.
Decision: The refusal to register applicant’s mark under Section 2(d) of the
Lanham Act is hereby affirmed.