Tree of Star’s, Inc.

Trademark Trial and Appeal Board

Aug 24, 2000

No. 75208730 (T.T.A.B. Aug. 24, 2000)

Paper No. 11
GFR
8/24/00
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Tree of Star's, Incorporated
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Serial No. 75/208,730
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Peter M. DeJonge of Thorpe, North & Western for Tree of
Star's, Incorporated.
John S. Yard, Trademark Examining Attorney, Law Office 104
(Sidney Moskowitz, Managing Attorney).
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Before Simms, Cissel and Rogers, Administrative Trademark
Judges.
Opinion by Rogers, Administrative Trademark Judge:
Tree of Star's, Incorporated has filed an application
to register the mark WHAT IS REALLY GOING ON? in
International Class 41 for services identified, following
amendment, as "production of radio and television programs
relating to current events and items of general public
interest."1 The Examining Attorney refused registration of
applicant's mark under Section 2(d) of the Trademark Act,

1 Serial No. 75/208,730, filed December 5, 1996. Applicant
alleges a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/208,730
2
15 U.S.C. § 1052(d), because of the prior registration of
WHAT'S GOING ON, for "radio programming" in Class 41 and
"newsletters for radio listeners featuring news and
information about people and events in radio," in Class 16.2
When the Examining Attorney made the refusal of
registration final, applicant appealed. Both applicant and
the Examining Attorney have filed briefs, but an oral
argument was not requested. We affirm the refusal.
Our determination of registrability under Section 2(d)
of the Trademark Act is based on an analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on the likelihood of confusion issue. See
In re E.I. du Pont de Nemours and Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). In the analysis of likelihood of
confusion presented by this case, key considerations are
the substantial similarities of the marks, the legally
identical nature of the services, and the presumptively
similar classes of consumers for these services. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976).
Considering the services first, we note that there are
no restrictions as to the type or content of radio

2 Registration No. 1,858,589, issued October 18, 1994, based on a
claimed date of first use in commerce of January 1, 1993.
Ser. No. 75/208,730
3
programming offered by registrant in connection with its
mark. Applicant argues that registrant's radio programs
are limited in their focus to "news and information about
people and events in radio." The Examining Attorney,
however, is entirely correct in discounting this argument,
as the limitation applies only to registrant's newsletter,
not its programming. In view thereof, registrant's radio
programs are presumed to include the types of radio
programs produced by applicant. Moreover, there are no
restrictions on the types of radio stations or radio
networks that would air the programs of registrant or
applicant. Accordingly, we presume that they could air, at
a minimum, in similar markets and be presented to the same
categories of listeners.
When the services of parties are directly competitive,
as are the radio programming and production services in
this case, the degree of similarity in the marks necessary
to conclude that confusion among consumers is likely is not
as great as when there are differences in the services.
See Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768,
1773 (TTAB 1992). We turn, then, to the marks.
Applicant argues that there are three significant
differences between its mark and registrant's. First,
applicant notes that its mark uses "WHAT IS" rather than
Ser. No. 75/208,730
4
the contraction "WHAT'S." Second, applicant notes that its
mark includes the term "REALLY." Third, applicant asserts
that its mark poses a question while registrant's mark
presents a statement. Applicant argues that all three of
these differences make the marks distinguishable in sight
and sound, and that the latter two differences illustrate
the different commercial impressions created by the marks.
We disagree.
In appropriate cases, similarity as to any one element
of the sight, sound and meaning trilogy can result in a
finding of likelihood of confusion. See Krim-Ko Corp. v.
Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968);
In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988).
Moreover, when products are frequently purchased by calling
for them by name, or, as in this case, competitive radio
programs are presented so that the marks for those programs
typically are heard rather than read, it is appropriate to
accord greater weight to the similarity of aural
presentation of marks. See Krim-Ko Corp., 156 USPQ at 526.
Even when compared for visual similarity, the use of
"WHAT IS" rather than the contraction "WHAT'S" is an
inconsequential difference between applicant's and
registrant's marks. When the marks are spoken, we find it
highly unlikely that radio listeners will note the
Ser. No. 75/208,730
5
difference. In regard to applicant's use of the term
"REALLY", listeners may not readily recognize that
applicant's mark includes an additional term that
registrant's mark does not. It is well settled that the
average consumer, including the average radio listener,
normally retains general, rather than a specific
impressions of marks. See Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106 (TTAB 1975). Finally, while applicant
relies greatly on its argument that its mark is a question
and registrant's mark is a statement, we note that
registrant's mark includes no punctuation whatsoever and
might very well be spoken either as a statement or a
question. Moreover, while the difference between a
question and a statement is readily apparent when viewing
printed words, it may not be so clear when words are spoken
on the radio, when a question may be posed for rhetorical
effect rather than, as in conversation, to obtain a
response from the listener. In sum, we find the marks
likely to be perceived as similar in sound and connotation;
and we find these similarities critical in this case.
We note applicant's argument that the marks both are
suggestive and weak, so that registrant's mark should be
entitled to only a narrow scope of protection. Applicant
has presented no evidence of weakness; even if we assume
Ser. No. 75/208,730
6
weakness, this will not necessarily avoid a finding of
likelihood of confusion. See In re Copytele Inc., 31
USPQ2d 1540, 1542 (TTAB 1994) (weakness of cited mark
"overbalanced by the virtual identity of the applicant's
and the cited registrant's goods and the substantial
similarity in the overall appearance of their marks.").
Applicant, as the newcomer, has a duty to select a mark for
its radio productions unlike marks that are already in use.
See Burroughs-Wellcome Co. v. Warner-Lambert Co., 203 USPQ
191 (TTAB 1979). It has failed to do so. In sum, given
the directly competitive nature of registrant's radio
programs and applicant's radio productions, and considering
the context of use and prospective use of these aurally
similar marks, we find a likelihood of confusion to exist.
Decision: The refusal of registration under Section
2(d) of the Trademark Act is affirmed.
R. L. Simms
R. F. Cissel
G. F. Rogers
Administrative Trademark
Judges, Trademark Trial
and Appeal Board