Twentieth Century Fox Film Corp.

Trademark Trial and Appeal Board

Nov 8, 2013

No. 77824292 (T.T.A.B. Nov. 8, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: November 8, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Twentieth Century Fox Film Corp.
_____

Serial No. 77824292
_____

Jamie E. Platkin, Michelle P. Ciotola, and Curt Krechevsky of Cantor Colburn LLP
for Twentieth Century Fox Film Corp.

Naakwama S. Ankrah, Trademark Examining Attorney, Law Office 109 (Dan
Vavonese, Managing Attorney).
_____

Before Cataldo, Wolfson, and Gorowitz, Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
Twentieth Century Fox Film Corp. (applicant) filed an application to register the
mark PANDORAPEDIA for, as amended, “shirts; pants; shorts; underwear; boxer
shorts; hats; caps; sweatshirts; sweaters; skirts; gloves; socks; shoes; boots; coats;
jackets; swimwear; belts; scarves; pajamas; slippers; infant wear; hosiery;
Halloween and masquerade costumes and masks sold in connection therewith; all of
the foregoing related to motion picture films.”1 Registration has been refused

1 Application Serial No. 77824292, filed September 10, 2009, pursuant to Section 1(b) of the
Trademark Act (intent-to-use).
Serial No. 77824292
2

pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground
that applicant’s mark so resembles the registered mark PANDORA for “men’s[,]
women’s and children’s sportswear, namely, sweaters, swimwear, pants, shorts,
shirts, blouses, skirts, jumpers, blazers, jackets, culottes, dresses, cotton knit tops,
shifts, swimsuits, and swim suit cover-ups”2 that, when used in connection with
applicant’s identified goods, it is likely to cause confusion or mistake or to deceive
prospective purchasers. The examining attorney issued a final refusal of
registration, which applicant has appealed.
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). In any likelihood of confusion analysis, 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 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
We turn first to the du Pont factor of the similarity or dissimilarity of the goods.
Applicant’s goods are identified as “shirts; pants; shorts; underwear; boxer shorts;
hats; caps; sweatshirts; sweaters; skirts; gloves; socks; shoes; boots; coats; jackets;
swimwear; belts; scarves; pajamas; slippers; infant wear; hosiery; Halloween and

2 Registration No. 2827439, issued March 30, 2004, Section 8 Affidavit accepted and Section
15 Affidavit acknowledged.
Serial N

masque
related
as “men
pants, s
cotton
acknowl
[m]ark,”
jackets.
address
be foun
item in
Mills Fu
the poss
items of
registra
Appl
picture
limited
registra
“clothin
that con

3 Appeal
o. 778242
rade costu
to motion p
’s[,] wom
horts, shi
knit tops
edges that
3 specific
” Accordin
any of the
d as to the
the identi
n Group,
ible excep
casual ap
tion.
icant has
films.” Ho
in any w
tion encom
g related t
trols, not

Brief, p. 13
92
mes and m
icture film
en’s and
rts, blouse
, shifts,
“its [a]pp
ally, “swe
gly, the g
other goo
entire cla
fication of
648 F.2d 1
tion of the
parel are
specificall
wever, th
ay. We th
passes a
o motion p
what extri

.
asks sold
s” and th
children’s
s, skirts,
swimsuit
lication co
aters, sw
oods are i
ds in the a
ss if there
goods for
335, 209 U
Halloween
closely re
y restrict
e clothing
erefore m
ll goods o
ictures.” It
nsic eviden
3
in connec
e goods in
sportswe
jumpers,
s, and s
vers some
imwear, p
dentical in
pplication
is likely t
that class
SPQ 986
and masq
lated to th
ed its goo
identifie
ust presum
f the natu
is settled
ce may sh
tion there
the cited r
ar, namel
blazers, ja
wim suit
of the sam
ants, sho
part. It
since like
o be confu
. Tuxedo M
, 988 (CCP
uerade co
e other ap
ds to clot
d in the c
e that t
re and ty
that it is t
ow about
with; all o
egistration
y, sweate
ckets, cul
cover-up
e goods a
rts, shirt
is unneces
lihood of c
sion with
onopoly,
A 1981). M
stumes, ap
parel item
hing “rela
ited regis
he clothin
pe identi
he identifi
the specifi
f the foreg
are ident
rs, swimw
ottes, dre
s.” Appli
s [r]egistra
s, skirts,
sary for u
onfusion m
respect to
Inc. v. Gen
oreover,
plicant’s o
s in the c
ted to mo
tration is
g in the c
fied, inclu
cation of g
c nature o
oing
ified
ear,
sses,
cant
nt’s
and
s to
ust
any
eral
with
ther
ited
tion
not
ited
ding
oods
f the
Serial N

goods. A
registra
Enterta
Bank of
(Fed. Ci
In re F
Applica
purport
reliance
the good
goods a
94 USP
1154 (T
are easi
Acco
second d
Look
establis
[identic
to the s
1905, 19
the chan
o. 778242
n applica
tion by a
inment LL
Commerce
r. 1987); I
isher Scie
nt attemp
edly expla
on extrins
s set fort
re of a tec
Q2d 1399,
TAB 1990)
ly underst
rdingly, si
u Pont fac
ing next a
hed princi
al] goods a
ame class
08 (Fed. C
nels of tra
92
nt may no
rgument
C, 106 US
, N.A. v. W
n re La Pe
ntific Co.,
ts to rely
in its good
ic evidenc
h in the a
hnical nat
1410 (TTA
. Since th
ood items o
nce the go
tor favors
t the chan
ple “that a
nd service
of purcha
ir. 2012).
de or clas
t restrict
or extrin
PQ2d 116
ells Fargo
regrina Lt
440 Fed.
on extrin
s. Howeve
e if such e
pplication
ure. See E
B 2010) a
e goods at
f clothing
ods are in-
a finding o
nels of tra
bsent res
s are pres
sers.” In r
There are
s of custom
4
the scope
sic evide
3 (TTAB 2
Bank, 81
d., 86 USP
2d 434, 1
sic eviden
r, the cas
vidence is
and/or reg
dwards Li
nd In re T
issue here
, these cas
part ident
f likelihoo
de and cla
trictions in
umed to tr
e Viterra
no restric
ers. Even
of the go
nce. In r
013), See
1 F.2d 149
Q2d 1645
69 USPQ
ce regardi
es cited b
needed to
istration,
fesciences
rackmobile
are not o
es are not
ical and in
d of confus
ss of purc
the appl
avel in th
Inc., 671
tions in th
if we view
ods covere
e Midwes
also Cana
0, 1 USPQ
, 1647 (TT
436, 437
ng the mo
y applican
establish t
i.e. in a c
Corp. v. V
, Inc., 15
f a techni
applicable
-part close
ion.
hasers, we
ication an
e same cha
F.3d 1358
e cited reg
the langu
d in the c
t Gaming
dian Imp
2d 1813,
AB 2008);
(CCPA 19
vie Avata
t only sup
he meanin
ase where
igiLanz C
USQP2d 1
cal nature
.
ly related
note the w
d registra
nnels of t
, 101 USP
istration a
age “all o
ited
&
erial
1815
and
71).
r to
port
g of
the
orp.,
152,
and
, the
ell-
tion,
rade
Q2d
s to
f the
Serial No. 77824292
5

foregoing related to motion picture films” in applicant’s identification of goods as
imposing a restriction on their trade channels or the classes of consumers to which
they are marketed, registrant’s goods, unlimited as to trade channels and classes of
consumers, must be presumed to encompass those recited in the involved
application. Thus, in the case at bar, because the goods are in-part legally identical
and there are no restrictions in trade channels restrictions identified in the cited
registration, they are presumed to travel in the same channels of trade to the same
classes of purchasers. We further observe that because there are no limitations on
the goods identified in the involved application and cited registration relating to
cost, we must presume that such goods include items of apparel that are
inexpensive, and subject to impulse purchases made with nothing more than
ordinary care.
Accordingly, we find that the third and fourth du Pont factors favor a finding of
likelihood of confusion.
Next, we determine the similarities or dissimilarities in the marks, which we do
by examining the marks “in their entireties as to appearance, sound, connotation
and commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)
quoting du Pont, 177 USPQ at 567. We start by noting that in cases such as the case
at bar, where the goods are in-part legally identical, “the degree of similarity [of the
marks] necessary to support a conclusion of likely confusion declines.” In re Viterra
Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (citing Century 21
Serial No. 77824292
6

Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.
Cir. 1992)); In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir.
2010); In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987).
While the ultimate conclusion of similarity of the marks must rest on a
consideration of the marks in their entireties, “[i]t is a well-established principle
that, in articulating reasons for reaching a conclusion on the issue of likelihood of
confusion, there is nothing improper in stating that, for rational reasons, more or
less weight has been given to a particular feature of a mark.” In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Applicant has adopted the entire mark in the cited registration PANDORA,
which, as used in connection with clothing, is arbitrary.4 The only difference
between the cited mark and applicant’s mark is the addition of the suffix “PEDIA”
to the term PANDORA. “PEDIA” is defined by applicant as “relating to learning” or
“a specialized encyclopedia [sic] about the prefix or a general encyclopedia in the
structured of the prefix,5 Thus, the term “PEDIA” modifies PANDORA and is
subordinate thereto.

4 In an attempt to show that the registered mark is weak, applicant relies on four
registrations for the mark PANDORA in various formats for, inter alia, jewelry;
broadcasting and entertainment; dietary supplements; and computer software and related
services, as well as a Danish website using the mark PANDORA for jewelry. The
registrations do not establish use and there is no evidence that the website is viewed by
consumers in the United States. In any event, four registrations and one Danish website
are not sufficient to establish consumer recognition of PANDORA “for a wide range of goods
and services” (Appeal Brief, pp. 14-15).
5 Exhibit B to July 27, 2012 Response to Office Action – Definition obtained from
Wiktionary.org (http://en.wiktionary.org/wiki/-pedia)/
Serial No. 77824292
7

“The general rule is that a subsequent user may not appropriate the entire mark
of another and avoid a likelihood of confusion by adding descriptive or subordinate
matter thereto.” In re Jump Designs LLC, 80 USPQ2d 1370 (TTAB 2006), cf.
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002) [HEWLETT PACKARD and PACKARD TECHNOLOGIES]; In re El
Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988) [MACHO and MACHO
COMBOS]; In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986)
[RESPONSE and RESPONSE CARD]; and In re Corning Glass Works, 229 USPQ
65 (TTAB 1985) [CONFIRM and CONFIRMCELLS].
Applicant contends that this principle in not applicable in the current case
because the suffix “-PEDIA” is not descriptive or generic. This argument is not
persuasive. The general rule, discussed supra, is that a subsequent user cannot
avoid confusion by adding subordinate matter thereto. Id. Applicant has added the
subordinate term “PEDIA” to registrant’s mark PANDORA, which does not change
its overall commercial impression or distinguish it from registrant’s mark.
Applicant further argues that courts have “found that even when word marks
with overlapping elements are applied to the same or related goods or services, they
can function to signify different sources.” Appeal Brief, p. 6. To support this
allegation, Applicant cited General Mills Inc. v. Kellogg Co., 824 F.2d 622, 3
USPQ2d 1442 (8th Cir. 1987) (APPLE RAISIN CRISP for cereal and OATMEAL
RAISIN CRISP for cereal); and Little Caesar Enterprises Inc. v. Pizza Caesar Inc.,
834 F.2d 568, 4 USPQ2d 1942 (6th Cir. 1987) (LITTLE CAESARS for pizza and
Serial No. 77824292
8

PIZZA CAESAR USA for an Italian restaurant). These cases can be distinguished
from the case at bar because the common element in each of the marks was
descriptive (“raisin crisp” – highly descriptive of ingredients of cereal) or otherwise
weak (“Caesar” – commonly used in conjunction with Italian food). Similarly, in all
of the other cases relied on by applicant, wherein the goods were identical, the
common element(s) in each mark was weak. See, e.g., Keebler Co. v. Murray Bakery
Prods., 866 F.2d 1386, 9 USPQ2d 1736 (Fed. Cir. 1989) (PECAN SANDIES v.
PECAN SHORTIES); Land-O-Nod Co. v. Paulison, 220 USPQ 61 (TTAB 1983)
(CHIRO-MATIC v. CHIROPRACTIC); Taco Time Intl., Inc. v. Taco Town, Inc., 217
USPQ 268 (TTAB 1982) (TACO TOWN and TACO TIME); Approved
Pharmaceutical Corp. v. P. Leiner Nutritional Prods. Inc., 5 USPQ2d 1219 (TTAB
1987) (HEALTHY LIFE v. HEALTH FOR LIFE); and U.S. Shoe Corp. v. Chapman,
229 USPQ 74 (TTAB 1985) (COBBLER’S OUTLET v. CALIFORNIA COBBLERS).
Based on the foregoing, we find that the marks PANDORA and
PANDORAPEDIA are similar and thus, the first du Pont factor favors a finding of
likelihood of confusion.
Having considered all the evidence and arguments on the relevant du Pont
factors discussed herein, we find that applicant’s mark PANDORAPEDIA is likely
to cause confusion with the cited mark, PANDORA. The remaining du Pont factors
not discussed above we treat as neutral.
Decision: The refusal to register is affirmed.