The Village Recorderv.Roger Schnur, AKA Allworks Media, LLC

Trademark Trial and Appeal Board

May 20, 2013

No. 91195190 (T.T.A.B. May. 20, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: May 20, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

The Village Recorder
v.
Roger Schnur, AKA Allworks Media, LLC
_____

Opposition No. 91195190
to Application Serial No. 77826784
_____

Michael P. Martin of Fischbach, Perlstein, Lieberman & Almond, LLP for Opposer,
The Village Recorder.

Anthony M. Verna III, Esq. of Kravitz & Verna LLC for Applicant, Roger Schnur,
AKA Allworks Media, LLC.
_____

Before Kuhlke, Kuczma and Hightower, Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Roger Schnur, AKA Allworks Media, LLC, (“applicant”) filed an intent-to-use
application under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), to register
the following mark in standard character form on the Principal Register:

for the following goods and services:
Opposition No. 91195190

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Downloadable computer software for use on wireless
devices and computers in Class 9;
Advertising and publicity services, namely, promoting the
goods, services, brand identity and commercial
information and news of third parties through print,
audio, video, digital and on-line medium in Class 35;
Streaming of audio, visual and audiovisual material via a
global computer network in Class 38; and
Entertainment services, namely, providing on-line
computer games in Class 41.1
The Village Recorder (“opposer”) filed a notice of opposition against the
registration of applicant’s mark on the grounds of priority of use, likelihood of
confusion and dilution, pursuant to Sections 2(d) and 43(c) of the Trademark Act, 15
U.S.C. §§ 1052(d) and 1143(c), respectively.2 Specifically, opposer alleged that
applicant’s MUSIC VILLAGE mark for the foregoing goods and services is likely to
cause confusion with and dilute opposer’s previously registered marks for: THE
VILLAGE for recording studio services as set forth in Registration No. 2071311 and
for shirts as set forth in Registration No. 2478744; VILLAGE STUDIOS for

1 Application Serial No. 77826784 filed September 15, 2009; the word MUSIC was
disclaimed via the December 15, 2009 Examiner’s Amendment.
2 Opposer also challenged applicant’s bona fide intention to use the mark for the first time
in its appeal brief. (See Brief of Opposer pp. 13 and 23). Opposer has not sought leave to
amend its notice of opposition to plead a claim for applicant’s lack of bona fide intention to
use the MUSIC VILLAGE mark at the time of filing, opposer’s notices of reliance do not
indicate that any evidence was submitted for the purpose of challenging applicant’s bona
fide intention to use the mark, and applicant did not address this issue in his appeal brief.
Accordingly, we find that applicant was not fairly apprised that evidence was being offered
in support of the unpleaded lack of bona fide intent to use claim. Therefore, applicant was
not on notice at the time of trial that its bona fide intent to use the MUSIC VILLAGE mark
was at issue and the issue was not tried by the parties as contemplated under Fed. R.
Civ. P. 15(b). See Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628, 1629 (TTAB 1998)
and 37 C.F.R. § 2.116.
Opposition No. 91195190

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recording studio services as set forth in Registration No. 3665377; and a Door
Design for recording studio services as set forth in Registration No. 2071346 and for
shirts as set forth in Registration No. 2106339.3 Opposer also alleges common law
rights in its THE VILLAGE and VILLAGE STUDIOS marks and for its THE
VILLAGE and VILLAGE RECORDER trade names, for entertainment services,
recording studio services, sound recordings, and other multi-media uses. Applicant
admits opposer’s ownership of the pleaded Registrations and denied the remaining
salient allegations in the notice of opposition. Both parties have submitted trial
briefs and opposer has submitted a reply brief.
Procedural Matters
A. Service on Applicant
Applicant argues that although he filed a Notice of Change of Address of
Attorney on January 13, 2011, opposer failed to mail subsequent documents to the
proper address and thus, has not properly served applicant with any papers since
that time.4 Despite opposer’s non-compliance with Trademark Rule 2.119, 37 C.F.R.
§ 2.119, applicant has not been prejudiced as he acknowledged that mail is still
being forwarded to his counsel and presumably, his counsel has received copies of
all papers filed by opposer. However, opposer is advised that any further papers
filed in connection with this proceeding that are not properly served at the address
reflected in the Notice of Change of Address will not be considered.

3 Registration Nos. 2071311, 2478744 and 3665377 are of record. Opposer’s pleaded
Registration Nos. 2071346 and 2106339 for a Door Design mark are not of record and were
not relied upon at trial.
4 Applicant’s Final Brief p. 4.
Opposition No. 91195190

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B. Timeliness of Applicant’s Appeal Brief
Opposer contends that applicant’s brief was not timely filed and therefore
should not be considered. According to the Board’s Order of December 7, 2011,
applicant’s brief was due by November 10, 2012. Because November 10, 2012, fell
on a Saturday, under Rule 2.196, applicant had until Monday, November 12, 2012
to file its trial brief. 37 C.F.R. § 2.196.5 Applicant’s brief was filed on November 19,
2012, and was therefore filed late. It is within the Board’s discretion to permit a
party to reopen an expired time period where the failure to act is shown to be due to
excusable neglect. Pioneer Investment Services Co. v. Brunswick Associates Limited
Partnership, 507 U.S. 380 (1993); Pumpkin Ltd. v. The Seed Corps., 43 USPQ2d
1582, 1586 (TTAB 1997). Inasmuch as the timeliness of applicant’s brief was raised
in opposer’s Reply Brief instead of a motion to strike, applicant had no opportunity
to make a showing of excusable neglect. Cf. Ariola-Eurodisc Gesellschaft Mit
Beschrankter Haftung v. Eurotone International Ltd., 175 USPQ 250 (TTAB 1972).
Therefore, we deem opposer’s failure to properly serve its appeal brief by mailing a
copy of its brief to the address set forth in the Notice of Change of Address filed by
applicant’s counsel to constitute excusable neglect on the part of applicant. The
delay had negligible impact on this proceeding and there is no evidence that opposer

5 Rule 2.119, 37 C.F.R. § 2.119, which permits a party to add 5 days when the party is
required to take some action within a prescribed period after the service of a paper upon the
party by mail, does not apply to the filing of applicant’s trial brief. Rule 2.128, 37 C.F.R. §
2.128, provides that applicant, as the party in the position of defendant, must file his trial
brief not later than thirty days after the due date of the first [i.e., opposer’s] brief. Because
the time period for applicant to file his trial brief is not based on a prescribed period after
the service of a paper upon it, applicant is not entitled to an additional 5 days.
Opposition No. 91195190

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was prejudiced or harmed by the delay. Accordingly, we shall consider applicant’s
brief as timely filed.
Evidentiary Objections
A. Admissibility of Greenberg Testimony
Applicant asserts the testimony of opposer’s witness Jeff Greenberg is not
admissible because the testimony deposition of Mr. Greenberg was taken without
participation of applicant’s counsel.6 Prior to the filing of opposer’s Notice of Taking
Testimonial Examination of Jeff Greenberg, applicant’s counsel advised opposer’s
counsel that he would have to attend the deposition “telephonically” and requested
that opposer’s counsel “arrange for me to call in to represent my client [applicant].”
One week later, opposer filed its Notice of Taking Testimonial Examination of Jeff
Greenberg which identified the time and place for the deposition, as well as the
contact information, including the telephone number, for opposer’s counsel.7
Having received no response to his email notifying opposer’s counsel of his intention
to participate via telephone, applicant’s counsel did not attend the deposition nor
did he contact opposer’s office on the day of the deposition.
Because the Notice of Taking Testimonial Examination stated the testimony
deposition would take place at the office of opposer’s counsel, and the telephone
number for opposer’s counsel was set forth at the bottom of the Notice, it was

6 Applicant’s Final Brief p. 6.
7 The Notice of Taking Testimonial Examination of Jeff Greenberg was not mailed to the
correct mailing address for applicant’s counsel. However, applicant has stated that mail
was being forwarded to applicant’s counsel, and applicant’s counsel has not complained that
he did not receive the Notice of Taking Testimonial Examination. See Applicant’s Final
Brief p. 4.
Opposition No. 91195190

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incumbent upon applicant’s counsel to either contact opposer’s counsel prior to the
date of the deposition to confirm that he would be calling in, or to call opposer’s
office on the day of the deposition to participate in the deposition via telephone. In
view of the failure of applicant’s counsel to establish contact with opposer’s counsel
subsequent to the issuance of the Notice of Taking Testimonial Examination and
prior to the start of the deposition, the lack of participation by applicant’s counsel
was through no fault of opposer. Accordingly, the testimony deposition of Mr.
Greenberg was not taken in contravention of Fed. R. Civ. P. 32(a)(5) and is
admissible.8
B. Evidence of Settlement Negotiations
Applicant contends, and we agree, that to the extent opposer relies on
statements made in connection with settlement negotiations between the parties,
such statements are inadmissible pursuant to Fed. R. Evid. 408.9 Specifically,
applicant objects to opposer’s argument that applicant “was only trying to file this
application to shake down the Opposer . . . .”10 It appears the foregoing objection
relates to opposer’s argument on pages 3-4 of its brief, that applicant had a bad
faith intent to sell the infringing application and domain name to opposer. In
making this argument, opposer cites to applicant’s discovery responses. Applicant’s

8 Fed. R. Civ. P. 32(a)(5) states: “A deposition taken without leave of court under the
unavailability provision of Rule 30(a)(2)(A)(iii) must not be used against a party who shows
that, when served with the notice, it could not, despite diligent efforts, obtain an attorney to
represent it at the deposition.” Given the procedural posture of this case at the time the
Notice of Taking Testimony was issued, applicant has not shown that this Rule is
applicable.
9 Applicant’s Final Brief pp. 5-6.
10 Applicant’s Final Brief p. 6.
Opposition No. 91195190

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responses however, do not make any reference to his alleged attempt to sell the
application and domain name to opposer. More importantly, to the extent opposer’s
argument is based on statements made by applicant in connection with settlement
negotiations, it is improper under Rule 408, and shall not be considered.
Upon reviewing the evidence, we note that Exhibit 10 to the Testimony
Deposition of Jeff Greenberg, comprising a letter dated June 9, 2010, sent by Roger
Schnur on behalf of Allworks Media, LLC to opposer, was sent after the institution
of this proceeding. Because the subject matter of the letter appears to be related to
purposes of settlement, under Rule 408, the letter is not admissible for purposes of
establishing or disputing opposer’s claims.
The Record
A. Opposer’s Evidence
By rule, the record includes applicant’s application file and the pleadings.
Trademark Rule 2.122(b), 37 CFR § 2.122(b). The record also includes the following
testimony and evidence submitted by opposer via notices of reliance:
1. Copy of printouts from opposer’s www.villagestudios.com website
printed on March 28, 2012 (Docket # 19);
2. Copy of article from www.wikipedia.org/wiki/The_Village_(Studio)
printed on March 28, 2012 (Docket # 20);
3. Copy of June 16, 2010 article entitled The Village Recording Studio
published online by LAX Magazine at www.lax-magazine.com/the-village-recording-
studio/, printed March 28, 2012 (Docket #21; same content as Docket # 22);
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4. Certified copy of trademark file wrapper and contents thereof for
opposer’s suspended trademark application Serial No. 85400738 for the standard
character mark THE VILLAGE for “Streaming of audio, visual and audiovisual
material via a global computer network; Streaming of live musical performances
and audiovisual material on the Internet” in Class 38, claiming dates of first use
and first use in commerce as of April 29, 2003 (Docket # 23);
5. Opposer’s First Set of Requests for Admissions (FRCP 36) and
Applicant’s Response to First Set of Requests for Admission (Docket # 23);
6. Applicant’s [Opposer’s] First Set of Interrogatories (FRCP 33) and
Applicant’s Response to First Set of Interrogatories (Docket # 23);
7. Applicant’s [Opposer’s] First Set of Requests for Production of
Documents and Things and Applicant’s Response to First Set of Document Requests
accompanied by two attachments showing a stylized “MV Music Village™” logo
(Docket # 23);
8. List of links to music streams available at www.kcrw.com,
www.thelivebuzz.com, and http://new.music.yahoo.com/fall-out-
boy/videos/view/dance-dance--205782496 (Docket # 23);
9. Certified copy showing status of U.S. Registration No. 207131111 for
THE VILLAGE mark in typed format for “recording studio services” in Class 41,
claiming dates of first use and first use in commerce of January 1, 1995 (Docket
# 23);

11 Registration No. 2071311 issued on the Principal Register on June 17, 1997, based on an
application filed on January 11, 1996; the Registration has been renewed.
Opposition No. 91195190

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10. Certified copy showing status of U.S. Registration No. 247874412 for
THE VILLAGE mark in typed format for “clothing, namely, shirts” in Class 25,
claiming dates of first use and first use in commerce of January 1, 1995 (Docket
# 23);
11. Certified copy showing status of U.S. Registration No. 366537713 for
the standard character mark VILLAGE STUDIOS for “recording studio services” in
Class 41, claiming dates of first use and first use in commerce of February 1967
(Docket # 23);
12. Copy of April 15, 2008 Office Action refusing registration of the mark
“Shadows of Abbey Road Soar” in application Serial No. 77361820 based on an
existing registration for the mark “Abbey Road” (Docket # 23);
13. Certified copy of file wrapper and contents of applicant’s application
Serial No. 77826784 for the mark MUSIC VILLAGE, the word “Music” being
disclaimed, filed on an intent to use basis under § 1(b) of the Trademark Act on
September 15, 2009 (Docket # 23);
14. Copies of screenshots purportedly showing use of the VILLAGE mark
in online streaming of musical live performances submitted via Notice of Reliance
(Docket # 24);14 and,

12 Registration No. 2478744 issued on the Principal Register on August 21, 2001, based on
an application filed on January 11, 1996; the Registration has been renewed.
13 Registration No. 3665377 issued on the Principal Register on August 11, 2009, based on
an application filed on July 30, 2007; the word “Studios” is disclaimed.
14 The Notice of Reliance stated that “This evidence was accessed from the internet on
March 1, 2011 and remains available today. The URL is www.kcrw.com.” (Docket # 24).
Although the date the host site was accessed and the screenshots were printed, as well as
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15. Testimony Deposition of Jeffrey Bruce Greenberg taken on April 24,
2012, and Exhibits 1-8 and 10 (Docket # 35); Exhibit 9 to Greenberg Testimony
Deposition (Docket # 26).
B. Applicant’s Evidence
Applicant did not submit any evidence. To the extent that Applicant’s Final
Brief refers to facts that are not in evidence, such facts have not been considered
and do not form a basis for our decision.
Standing
Standing is a threshold issue that must be proved in every inter partes case.
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982). In order to meet the standing requirement, a plaintiff need only show
that it has a real interest, i.e., a personal stake, in the outcome of the proceeding.
See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1026 (Fed. Cir. 1999); and
Jewelers Vigilance Committee, Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d
2021, 2023-24 (Fed. Cir. 1987). Because opposer has properly made its pleaded
registrations for THE VILLAGE and VILLAGE STUDIOS marks of record, it has
established standing to oppose registration of applicant’s mark. See King Candy Co.
v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).

the source of the screenshots are not identified on the documents, see Safer Inc. v. OMS
Investments Inc., 94 USPQ2d 1031, 1039 (TTAB 2010) and TBMP § 704.08(b), applicant did
not object to this evidence and sufficient information was provided in the Notice of Reliance
to enable applicant to verify the screenshots. In view thereof, we have considered this
evidence.
Opposition No. 91195190

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Priority
In order for opposer to prevail on its § 2(d) claim, it must first prove it has a
proprietary interest in its THE VILLAGE mark and trade name, or the VILLAGE
STUDIOS mark (collectively the “VILLAGE marks”), and that interest was
obtained prior to either the filing date of applicant’s application for registration or
his date of first use in commerce. These proprietary rights may arise from a prior
registration, prior service mark use, prior use as a trade name,15 prior use
analogous to service mark use, or any other use sufficient to establish proprietary
rights. Herbko International Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d
1375, 1378 (Fed. Cir. 2002); Otto Roth & Co., Inc. v. Universal Foods Corp., 640 F.2d
1317, 209 USPQ 40, 43 (CCPA 1981); Miller Brewing Co. v. Anheuser-Busch Inc., 27
USPQ2d 1711, 1714 (TTAB 1993). If opposer cannot prove prior registration or that
it used the VILLAGE marks as a trademark, service mark, or trade name, or in a
manner analogous to a mark, before either the filing date of applicant’s application
or applicant’s proven date of first use (whichever is earlier), opposer cannot
establish priority. Cf. Herbko, 64 USPQ2d at 1378; Otto Roth 209 USPQ at 43;
Miller Brewing, 27 USPQ2d at1714.
Because opposer’s pleaded registrations for THE VILLAGE and VILLAGE
STUDIOS marks on the Principal Register are of record, § 2(d) priority is not an

15 “A ‘trade name’ is any name used by a person to identify his or her business or vocation,
and a ‘service mark’ is any word, name, symbol, or device, or any combination thereof, used
to identify and distinguish services from those of others and to indicate the source of those
services. . . . Nevertheless, a trade name lacking any independent trademark or service
mark significance may bar registration of a trademark or service mark that is confusingly
similar to that trade name.” Martahus v. Video Duplication Services Inc., 27 USPQ2d 1846,
1850 (Fed. Cir. 1993).
Opposition No. 91195190

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issue in this case as to those marks and the goods and services covered by the
registrations, i.e., “recording studio services” and “shirts.” King Candy, 182 USPQ
at 110. To establish priority on its likelihood of confusion claim under § 2(d) of the
Trademark Act for its unregistered services, opposer must prove that its VILLAGE
marks are inherently distinctive, or have acquired distinctiveness and have been in
use before the date on which applicant can establish its rights. Threshold.TV, Inc.
v. Metronome Enterprises, Inc., 96 USPQ2d 1031, 1036-37 (TTAB 2010) citing Otto
Roth, 209 USPQ at 44.
Based on the testimony of Jeffrey Greenberg, CEO and owner of applicant,
the word “Village” has no meaning or descriptive significance in the music industry,
including the online streaming of music, and is therefore, arbitrary and
distinctive.16 Moreover, applicant has admitted that opposer’s marks are valid.17
Opposer has been in the music business since late 1967 or early 1968. It has
provided music recording studio and production services; and produced musical
sound recordings and musical scoring for films since at least 1968. Since 2003,
several years prior to applicant’s filing date, it has provided online streaming of
audio, video and audiovisual musical performances and materials over the internet.
Opposer has identified its business and provided such services and products under

16 Greenberg Testimony Dep. pp. 7, 37-38 (Docket # 35).
17 Applicant’s Response to First Set of Requests for Admission, Response to Request No. 5
(Docket # 23).
Opposition No. 91195190

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various trade names and trademarks including “Village,” “Village Studios,” “The
Village,” and “Village Recorder.”18
According to Mr. Greenberg, opposer began streaming music on the internet
in the early 2000’s and has continuously done so since 2003 in connection with the
name “The Village” which is seen by consumers when they encounter opposer’s
music services online. Mr. Greenberg testified that opposer has used the following
websites to stream music online: “villagerecorder@gmail.com, villagerec@aol.com,19
Village Studios and also through a large variety of [web]sites: Yahoo, Google, Apple,
KCRW . . . KNAC, a lot of major radio stations throughout the country. We’ve done
lots of NPR, World Café, a variety -- a large variety of different forums[.]” including
MTV. Opposer’s music is also credited in television, film and other programs which
are available online for streaming.20 Mr. Greenberg further testified that live
sessions broadcast from opposer’s studio can be streamed from the approximately
150 [third-party] URL’s listed in Exhibit 5.21 Similarly, recording sessions held at
opposer’s studio that feature opposer’s “The Village logo” were “streamed out over
KCRW and/or NPR” (radio stations) and screenshots of the streamed sessions are
shown in Exhibit 4.22

18 Greenberg Testimony Dep. pp. 9-11 (Docket # 35).
19 We take judicial notice that villagerecorder@gmail.com and villagerec@aol.com are not
websites, but appear to be email addresses which by nature, are not vehicles utilized for
online streaming.
20 Greenberg Testimony Dep. pp. 11-13 (Docket # 35).
21 Greenberg Testimony Dep. p. 20, Exhibit 5 (Docket # 35).
22 Greenberg Testimony Dep. pp. 17-18, Exhibit 4 (Docket # 35). Mr. Greenberg testified
that all of the screen shots in Exhibit 4, except for the last screen shot, feature The Village
logo. He also explained that the logo would have been part of the streamed visual shown in
Opposition No. 91195190

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According to applicant, the radio show Morning Becomes Eclectic broadcast
by KCRW radio station from opposer’s studio, is streamed by the radio station and
not opposer.23 From this, applicant concludes that opposer does not provide
streaming services because it does not stream music from its own studio. However,
applicant presented no evidence to support his conjecture and therefore, opposer’s
oral testimony that it has been streaming performances featuring its mark THE
VILLAGE since 2003 stands unrebutted.
Oral testimony, if sufficiently probative, is normally satisfactory to establish
priority of use. Powermatics, Inc. v. Globe Roofing Products Co., 341 F.2d 127, 144
USPQ 430, 432 (CCPA 1965) and Productos Lacteos Tocumbo S.A. de C.V. v.
Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1931 (TTAB 2011). In this regard,
the oral testimony should be clear, consistent, convincing, and uncontradicted. See
National Bank Book Co. v. Leather Crafted Products, Inc., 218 USPQ 827, 828
(TTAB 1993) (oral testimony may be sufficient to prove the first use of a party’s
mark when it is based on personal knowledge, it is clear and convincing, and it has
not been contradicted); Liqwacon Corp. v. Browning-Ferris Industries, Inc., 203
USPQ 305, 316 (TTAB 1979) (oral testimony may be sufficient to establish both
prior use and continuous use when the testimony is proffered by a witness with
knowledge of the facts and the testimony is clear, convincing, consistent, and
sufficiently circumstantial to convince the Board of its probative value); GAF Corp.

the last screen shot; the logo just was not captured in the particular screen shot contained
in Exhibit 4.
23 See Applicant’s Final Brief p. 10.
Opposition No. 91195190

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v. Anatox Analytical Services, Inc., 192 USPQ 576, 577 (TTAB 1976) (oral testimony
may establish prior use when the testimony is clear, consistent, convincing, and
uncontradicted). The testimony of Mr. Greenberg (who has been employed by
opposer since 1995, is currently the CEO and owner of opposer, and has personal
knowledge of its business operations and services)24 that THE VILLAGE mark has
been used in connection with opposer’s streaming services and in streamed musical
performances, is clear, convincing, consistent and uncontradicted. Moreover, it has
been corroborated by documentary evidence.
Because applicant has not used his mark in commerce or in any other
manner, the earliest date on which applicant may rely is the September 15, 2009,
filing date of his application.25 Based on its ownership of the VILLAGE
Registrations for recording services as well as its prior use of THE VILLAGE mark
for streaming musical performances via the internet and in streamed musical
performances, sound recordings and audiovisual works since 2003, opposer has
established priority for such services.
Likelihood of Confusion
In determining the likelihood of confusion, we must analyze 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 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.

24 Greenberg Testimony Dep. p. 7 (Docket # 35).
25 See Applicant’s Response to First Set of Interrogatories, Response to Interrogatory No. 3
(Docket # 23).
Opposition No. 91195190

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2003). 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). We have
considered these and any other du Pont factors on which the parties have submitted
evidence and argument. To the extent that other factors are applicable, we treat
them as neutral.
Our determination of likelihood of confusion in this case is limited to
opposer’s two most relevant registrations of record, namely, Registration Nos.
2071311 for THE VILLAGE and 3665377 for VILLAGE STUDIOS both for
recording studio services, and opposer’s common law rights in THE VILLAGE mark
and trade name for music production, sound recording, recording studio and
streaming services.
A. Similarity of Marks
We turn first to the du Pont factor focusing on the similarity or dissimilarity
of the marks in their entireties as to appearance, sound, meaning and commercial
impression. du Pont, 177 USPQ at 567.
Opposer’s THE VILLAGE mark and applicant’s MUSIC VILLAGE mark are
similar in appearance and sound to the extent that they both contain the word
“Village.” 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 in their entireties are sufficiently similar in terms of their
overall commercial impression so that confusion as to the source of the goods offered
under the respective marks is likely to result. Coach Services Inc. v. Triumph
Opposition No. 91195190

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Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) and San
Fernando Elec. Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196
USPQ 1, 3 (CCPA 1977). The focus is on the recollection of the average purchaser
who normally retains a general rather than specific impression of trademarks. See
L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); and Sealed Air Corp.
v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
As to the meaning of the parties’ marks, the evidence shows the word
“Village” has no particular significance in the music industry or with respect to
streaming services.26 The word “the” does not typically contribute to the
distinctiveness of a mark and the word “studios” is generic for recording studio
services which is consistent with opposer’s disclaimer of the word “Studio” in
Registration No. 3665377 for the mark VILLAGE STUDIOS. Therefore, VILLAGE
is the dominant portion of opposer’s THE VILLAGE and VILLAGE STUDIOS
marks.
The word MUSIC in applicant’s mark is descriptive of applicant’s audio-
related products and services as indicated by the disclaimer of this word in
applicant’s mark. Although the marks must be compared in their entireties and a
disclaimed portion of a mark cannot be ignored, one feature of a mark may be more
significant in creating a commercial impression. Disclaimed matter is typically less
significant or less dominant when comparing marks. See In re Dixie Restaurants,
Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re National Data

26 Greenberg Testimony Dep. pp. 37-38 (Docket # 35).
Opposition No. 91195190

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Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985); and SMS, Inc. v. Byn-
Mar, Inc., 228 USPQ 219, 220 (TTAB 1985) (descriptive feature can be afforded less
weight in confusion analysis). Accordingly, VILLAGE is the dominant portion of
applicant’s MUSIC VILLAGE mark. In view of the foregoing, the dominant portion
of both opposer’s and applicant’s marks is the word “Village.”
Applicant argues the word MUSIC in his mark serves to distinguish its mark
from the cited mark. We do not agree. The inclusion of the word MUSIC in
applicant’s mark is insufficient to avoid confusion with opposer’s VILLAGE marks.
Given the inherent relationship between music and the recording studio services
recited in opposer’s Registrations, the inclusion of the word MUSIC in applicant’s
mark reinforces the similarity of the marks. The absence of evidence showing that
“Village” is a weak term for opposer’s services indicates that opposer’s mark is
relatively strong providing additional support for finding the marks to be similar.
B. Fame of Opposer’s Marks
We next turn our attention to opposer’s contention that its VILLAGE marks
are famous. Under this fifth du Pont factor, we are required to consider evidence of
the fame of opposer’s mark and to give great weight to such evidence if it exists. See
Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed.
Cir. 2002); Recot Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir.
2000); and Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22
USPQ2d 1453, 1456 (Fed. Cir. 1992).
In support of the fame of the VILLAGE marks, opposer’s witness testified
that it has used the marks for over 45 years in connection with its recording studio
Opposition No. 91195190

19

services and sound recordings for an impressive number of world-renowned
recording artists and bands including, for example:
The Doors, The Eagles, Aretha Franklin, Kenny G,
Grateful Dead, George Harrison, Janet Jackson, Mick
Jagger, Elton John, Quincy Jones, Rickie Lee Jones, B.B.
King, Carole King, KD Lang, Lady Gaga, Henry Mancini,
Barry Manilow, Ricky Martin, Meatloaf, Joni Mitchell,
Stevie Nicks, Dolly Parton, Pink Floyd, Bonnie Raitt, The
Rolling Stones, Frank Sinatra, Snoop Dogg, Britney
Spears, Taylor Swift, Rick Springfield, Ringo Starr,
Barbara Streisand, Donna Summer, Talking Heads, Tina
Turner, Stephen Tyler, Luther Vandross and Muddy
Waters.27
In the recording industry, the Recording Industry Association of America
(“RIAA”) issues awards in recognition of high volume of sales of sound recordings. A
“platinum” award recognizes sales of a million units, and a gold award recognizes
sales of 500,000 units.28 Many of the recordings produced at opposer’s studios were
top selling albums receiving platinum and gold awards. Exhibit 9 to the Greenberg
Testimony Deposition contains images of various album covers and inlays (i.e., CD
covers or inserts) for albums recorded at “The Village” and which have received
RIAA awards.29 These include for example, the Smashing Pumpkins’ “Mellon Collie
and the Infinite Sadness” albums (8 million copies); Nine Inch Nails’ “Nellyville”
album (6 million copies); the “Californication” album by the Red Hot Chili Peppers
(at least 4 million copies); Pink Floyd’s “A Momentary Lapse of Reason” (“way more
than” 3 million copies); Heart’s “Little Queen” album (1 million); Neil Diamond’s

27 Greenberg Testimony Dep. pp. 23-26, Exhibits 6 and 8 identify some of the artists that
have recorded at opposer’s studio (Docket # 35).
28 Greenberg Testimony Dep. pp. 30-31 (Docket # 35).
29 Greenberg Testimony Dep. pp. 27-28, 30-31 (Docket # 35).
Opposition No. 91195190

20

“Love at the Greek” long-playing record album (more than 1 million); and Elton
John/Leann Rimes’ “Written In The Stars” (more than 1 million singles and
cassettes); Talking Heads’ “True Stories” album and cassettes (½ million copies).30
For each of these albums, “The Village” would have been shown in the credits
printed on the album cover or on the inlays.31 The poor quality of the award plaque,
album cover and inlay images contained in Exhibit 9 renders it difficult or
impossible to read the information indicated for many of the albums.32 However,
the following examples demonstrate the manner in which THE VILLAGE name has
been used on some of the award-winning albums shown in Exhibit 9:
Foo Fighters’ “One by One” album mentions “Mixed by
Rich Costey at The Village, Los Angeles . . . Those things
happened at Village Recorders in LA . . . ”
Neil Young “Hawks & Doves” album mentions “ ‘Little
Wing’ Recorded at The Village Recorder, Los Angeles;”
“Wall•E” original Walt Disney Soundtrack mentions
“Recorded and Mixed by Tommy Vicari at The Village” . . .
Elton John/Leon Russell “The Union” album mentions
“Recorded and Mixed at The Village Recorder, Los
Angeles, CA” . . .

30 Greenberg Testimony Dep. pp. 27-35 (Docket # 35); Greenberg Testimony Dep. Exhibit 9
(Docket # 26).
31 Greenberg Testimony Dep. pp. 30-31 (Docket # 35).
32 Opposer is reminded that it is “. . . responsible for ensuring that all Board submissions –
including attachments to ESTTA filings – are legible.” See TBMP §110.09(c)(2) (3d ed. rev.
2012). Similarly, § 703.01(i) provides: “each party which files a document, either
electronically or in paper form, is responsible for ensuring that its submission is legible . . .
TTABVUE contains the same images that the Board will use in considering the submission;
if the TTABVUE image is not of acceptable quality, the user should not assume that the
Board will be able to view and consider it appropriately.” Because many of the images in
Exhibit 9 were not legible, they could not be fully considered.
Opposition No. 91195190

21

Bob Dylan’s “Planet Waves” album mentions “Recorded at
The Village Recorder, Los Angeles, CA” . . .
Frank Sinatra’s “L.A. Is My Lady” album mentions
“Recorded Village Recorders in Los Angeles.” . . .
Kiss’ “Hotter Than Hell” album mentions “This album
was . . . engineered by Warren Dewey at the Village
Recorder, Los Angeles, CA” . . .
Meat Loaf’s “Bat Out of Hell III The Monster Is Loose”
album mentions “Recorded at The Village” . . .
Melissa Etheridge’s “Skin” album mentions “Recorded at
The Village Recorder Los Angeles, CA.”
Soundtrack for “Crazy Heart” mentions “Recorded at The
Village Studios, West Los Angeles, CA.”
For most works recorded at opposer’s studio, the name THE VILLAGE appears on
the sound recordings.33
Opposer has also produced soundtracks for motion pictures such as Almost
Famous, Bodyguard (which sold over 15 million records), Carwash, Crazy Heart,
Dirty Dancing, Wall-E and Walk the Line, and all of these soundtrack recordings
bore “The Village” name.34
In support of the fame of THE VILLAGE mark to the public, opposer notes
the testimony of its witness that “certainly probably over 100 million” sound
recording albums have been sold worldwide that contain the name/mark “The
Village” on the album or in the credits.35

33 Greenberg Testimony Dep. p. 26 (Docket # 35).
34 Greenberg Testimony Dep. pp. 30-33 (Docket # 35).
35 Greenberg Testimony Dep. p. 36 (Docket # 35).
Opposition No. 91195190

22

In addition to the foregoing, opposer submitted two online articles in support
of the fame of THE VILLAGE mark. The first is a Wikipedia article that begins:
“The Village (a.k.a. Village Recorders, or The Village Recorder) is a famous
recording studio in Los Angeles, California,” and continues with:
“. . . The Village is renowned for its extensive inventory of
vintage microphones and outboard gear. . . . Many major
motion picture and television soundtracks have also been
recorded at the studio, including Ace Ventura, Dead Poets
Society, O Brother, Where Art Thou?, The Simpsons, Toy
Story 2, Walk the Line, The X files, Wall-E, Revolutionary
Road, The Shawshank Redemption and others.”
The article also notes that “The Village” is the home of the KCRW radio show
Morning Becomes Eclectic and contains a list of well-known artists who have used
the services provided by The Village.36
The second online article dated June 16, 2010, published by LAX Magazine at
lax-magazine.com/the-village-recording-studio/, describes opposer as:
“The Village recording studio in West Los Angeles is a
famous historic landmark, it’s iconic in the music
industry, and most importantly, it’s where some of our
favorite music has been created. . . . The Village has had
immense success recording movie soundtracks, including
Almost Famous, The Bodyguard and most recently, Crazy
Heart.”37
The article published in the LAX Magazine and the Wikipedia entry about
opposer constitute the type of evidence, which when aggregated with numerous
similar articles, may support the fame of a mark. However, these two articles alone
fail to support the fame of opposer’s mark which requires a significantly higher

36 See Wikipedia article submitted via Notice of Reliance (Docket # 20).
37 Greenberg Testimony Dep. Exhibit 7 (Docket # 35), also (Docket # 21).
Opposition No. 91195190

23

amount of proof. See Blue Man Productions Inc. v. Tarmann, 75 USPQ2d 1811,
1818-19 (TTAB 2005) (numerous articles and national exposure on television
programs such as the Tonight Show and the Grammy Award show, and local
exposure in articles and mentions on local television news broadcasts insufficient to
prove fame), rev’d on other grounds, 2008 WL 6862402 (D.D.C. April 3, 2008).
The proper legal standard for evaluating the fame of a mark under this fifth
du Pont factor is with respect to the class of customers and potential customers of a
product or service, and not the general public. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1695
(Fed. Cir. 2005). Opposer argues that its evidence establishes that its VILLAGE
marks are famous to recording artists and those involved in the music industry.38
While tens of millions of record albums bear THE VILLAGE name, the name
appears in the credits which are shown in small fonts and located on the album
itself or on the album cover or inlay, such that the name is not used in a prominent
manner. The record is silent as to whether the information contained in the credits
affects purchasing decisions, is viewable prior to purchase or, whether those in the
music industry or the general public even read or are aware of the information
contained in the credits. In view of the foregoing, it is not clear that these uses of
THE VILLAGE name have been in a manner that is recognized by those in the
music industry or the general public. Thus, despite the many years of use of
opposer’s mark, the evidence falls short of the showing required of a party asserting

38 See Brief of Opposer p. 2, “Village . . . is famous in the music industry.”
Opposition No. 91195190

24

fame of its mark for purposes of a determination of likelihood of confusion. Mere
length of time that a mark is in use does not by itself establish consumer awareness
of the mark, such that the mark can be found to be famous, see Shen Manufacturing
Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004) (mark
in use for over a century with $5 million in annual sales and hundreds of thousands
of dollars annually for national advertising does not enjoy extensive public
recognition and renown).
In view of the extreme deference that is accorded to a famous mark in terms
of the wide latitude of legal protection it receives, and the dominant role fame plays
in the likelihood of confusion analysis, it is the duty of a plaintiff asserting that its
mark is famous to clearly prove it definitively. Research in Motion Ltd. v. Defining
Presence Marketing Group Inc., 102 USPQ 1187, 1192 (TTAB 2012).
We have no evidence of the amount of sales or advertising expenditures by
opposer for advertising directed either to the general public or to the trade and
there is a dearth of articles or publicity relating to opposer or the services it
provides in the music industry. There is little question that opposer’s mark has
achieved a degree of recognition among those involved in the music industry. Fame
is relative, however, not absolute, and the evidence, when considered as a whole,
falls short of a convincing showing of fame. Carefirst of Maryland Inc. v.
FirstHealth of the Carolinas Inc., 77 USPQ2d 1492, 1507 (TTAB 2005).
Based on the foregoing, we are not persuaded that opposer has made the
necessary showing of fame for its VILLAGE marks and trade name. Rather, the
Opposition No. 91195190

25

evidence indicates that the VILLAGE marks and name are strong which is
consistent with opposer’s testimony that it is not aware of any other companies who
use the name VILLAGE in connection with recording studio or music streaming
services.39 Thus, we find that the strength of the VILLAGE marks and trade name
favors opposer, but not to the extent that it would if the marks and name were
proven to be famous, as fame has been contemplated in prior decisions of this Board
and of the Federal Circuit. Therefore, although the VILLAGE marks and name are
deemed to be strong and entitled to a broader scope of protection, the scope of
protection is less than that granted to famous marks.
C. Similarity of Services, Trade Channels and Purchasers
We next consider the du Pont factor involving the similarity or dissimilarity
of the parties’ goods and services and their channels of trade and classes of
purchasers. It is well-settled that the issue of likelihood of confusion between
applied-for and registered marks must be determined on the basis of the goods and
services as they are identified in the involved application and registrations. Paula
Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77
(CCPA 1973). In addition to the recording studio services identified in opposer’s
Registration Nos. 2071311 and 3665377, opposer has submitted evidence of its prior
use of THE VILLAGE mark in connection with audiovisual streaming of musical
performances. In addition, opposer is credited on musical scores and soundtracks
for television, film and other programs that are available on line and

39 Greenberg Testimony Dep. p. 38 (Docket # 35).
Opposition No. 91195190

26

downloadable.40 Accordingly, our consideration of the similarity of applicant’s goods
and services to opposer’s services encompasses all of the various manners in which
opposer’s VILLAGE marks and trade names have been and continue to be used.
We now consider the goods and services listed in each of the four Classes in
applicant’s application. Applicant’s application covers streaming of audio, visual
and audiovisual material via a global computer network in Class 38. Inasmuch as
opposer has shown that it has also provided streaming of musical performances, the
streaming services of opposer and applicant are identical.
Because there are no recited restrictions as to the channels of trade or classes
of purchasers of applicant’s streaming services, we must assume that the services
are available in all the normal channels of trade to all the usual purchasers for such
services, and that the channels of trade and the purchasers for the streaming
services provided by opposer would be the same. 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
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); and Interstate Brands Corp. v.
McKee Foods Corp., 53 USPQ2d 1910, 1913 (TTAB 2000).
Opposer has provided recording and production services for musical
performances and other audiovisual works that are available online and
downloadable. To the extent that such works are downloadable, they could be
downloaded onto wireless devices and computers. Thus, online users familiar with

40 Greenberg Testimony Dep. p. 13 (Docket # 35).
Opposition No. 91195190

27

opposer’s name and reputation in the music industry and its online and
downloadable offerings, upon seeing applicant’s MUSIC VILLAGE mark for
downloadable computer software for use on wireless devices and computers in Class
9, would likely associate applicant’s software with music and with opposer’s services
and musical productions. This is particularly likely when online music consumers
are apt to make impulse decisions about the websites they visit.41
Opposer’s witness testified that opposer will expand its services in the future
to include downloadable computer software for use on wireless devices and
computers and that it intends to provide online computer games under THE
VILLAGE mark.42 He also testified that opposer currently provides advertising and
publicity services, namely, promoting the goods, services, brand identity and
commercial information and news of third parties through print, audio, video,
digital and online media.43 Although his testimony on these points was very brief
and is not corroborated by any documents, there is no evidence that rebuts or calls
his testimony into question. To the extent applicant seeks to register its mark for
online computer games in Class 41 and advertising and publicity services through
the use of online media in Class 35, there is little doubt that online users would
believe applicant’s online games and advertising and publicity services were
associated with music based on applicant’s MUSIC VILLAGE mark. Those online
users familiar with opposer’s online offerings would necessarily believe that

41 Greenberg Testimony Dep. p. 38 (Docket # 35).
42 Greenberg Testimony Dep. p. 40 (Docket # 35).
43 Greenberg Testimony Dep. p. 40 (Docket # 35).
Opposition No. 91195190

28

applicant’s services are associated with opposer, even if opposer never actually
expands into online games or downloadable software that is separate from its online
and downloadable offerings.44 In view of the foregoing, applicant’s services in
Classes 35 and 41, and its software in Class 9, are related to opposer’s business and
the services it provides in connection with its VILLAGE marks.
Based on the legally identical and related nature of the goods and services set
forth in the application, and those being provided by opposer and recited in its
Registrations, and the similar trade channels and customers, the du Pont factors of
the similarity of the goods, trade channels and customers favor a finding of
likelihood of confusion.
Dilution
In addition to its § 2(d) claim, opposer has asserted a dilution claim under
§ 43(c) of the Trademark Act.45 Opposer contends that applicant’s mark will “blur”
the distinctiveness of opposer’s VILLAGE marks. Inasmuch as dilution by blurring

44 Although our determination of the similarity of the goods and services is limited to the
identifications set forth in applicant’s application, we note applicant’s statement of his
intended use of MUSIC VILLAGE mark for “a website game that simulates a band’s career
progression and, the ability to stream songs in the website application and in a similar
mobile application.” See Applicant’s Response to First Set of Interrogatories, Interrogatory
No. 2 (Docket # 23). Applicant’s expressed intention to use the MUSIC VILLAGE mark for
music-related computer games reinforces our underlying assumption that the word MUSIC
in applicant’s mark would be understood by users to relate to the nature of the goods and
services.
45 Opposer never amended its dilution claim subsequent to the July 30, 2010 Board Order
mentioning “the deficiency in opposer’s dilution claim” and its counsel’s indication “that he
may file a motion for leave to amend the notice of opposition shortly.” However, any such
deficiencies are not deemed fatal. The dilution claim has been tried by consent of the
parties as it was the subject of opposer’s discovery requests and applicant’s responses
thereto, and argued in the parties’ trial briefs (see Brief of Opposer p. 24 and Applicant’s
Final Brief pp. 16-18). See TBMP § 507.03 (3d ed. rev. 2012).
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Opposition No. 91195190

30

VILLAGE mark is likely to cause confusion with opposer’s VILLAGE marks,
including its registered THE VILLAGE and VILLAGE STUDIOS marks and
VILLAGE common law marks and trade names, in which opposer has established
prior rights.

Decision: The opposition under § 2(d) of the Trademark Act is sustained.