United Global Media Group, Inc.v.Bonnie Tseng

Trademark Trial and Appeal Board

Sep 24, 2014

No. 91200786 (T.T.A.B. Sep. 24, 2014)

THIS OPINION IS A
PRECEDENT OF THE TTAB

Mailed:
September 24, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

United Global Media Group, Inc.
v.
Bonnie Tseng
_____

Opposition No. 91200786
_____

Aaron Silverstein of Saunders & Silverstein LLP for United Global Media Group,
Inc.

Bonnie Tseng pro se.
_____

Before Seeherman, Bergsman and Ritchie, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Bonnie Tseng, dba BeauTV, (“Applicant”) filed a use-based application on the
Principal Register to register the mark BeauTV, in standard character form, for
“providing information about beauty,” in Class 44.1
United Global Media Group, Inc. (“Opposer”) opposed the registration of
applicant’s mark on the following grounds:

1 Serial No. 85155593, filed October 19, 2010. Applicant claimed January 1, 1999 as her
dates of first use anywhere and first use in commerce.
Opposition No. 91200786

2

1. Likelihood of confusion under Section 2(d) of the Trademark Act of
1946, 15 U.S.C. § 1052(d); and
2. Applicant’s application is void ab initio because applicant was not
using the mark when she filed her application and has never used the mark sought
to be registered.2
With respect to its likelihood of confusion claim, opposer pleaded ownership
of eight BEAUTY-formative registered marks and two pending BEAUTY-formative
applications “for a variety of entertainment and educational services related to the
production and distribution of multimedia properties in the field of beauty,
healthcare, and cosmetics, as discussed infra.”3

2 Opposer also asserted a ground of dilution. However, it did not properly plead the
dilution claim because it did not allege that its marks became famous prior to the filing
date of applicant’s application or any other date of use upon which applicant may rely.
Section 43(c) of the Trademark Act, 15 U.S.C. § 1025(c) (“Subject to the principles of equity,
the owner of a famous mark that is distinctive ... shall be entitled to an injunction against
another person who, at any time after the owner’s mark has become famous, commences
use of a mark … in commerce that is likely to cause dilution by blurring or dilution by
tarnishment of the famous mark.”). See also Toro Co. v. ToroHead Inc., 61 UPSQ2d 1164,
1174 (TTAB 2001) (“We hold that in the case of an intent-to-use application, an owner of an
allegedly famous mark must establish that its mark had become famous prior to the filing
date of the trademark application or registration against which it intends to file an
opposition or cancellation proceeding.”). Moreover, in its brief, opposer did not present any
argument regarding dilution. Where a party fails to reference a pleaded claim in its brief,
the Board will deem the clam to have been waived. See Knight Textile Corp. v. Jones
Investment Co., 75 USPQ2d 1313, 1314 n.4 (TTAB 2005) (where opposer presented no
arguments in its brief regarding the claim of dilution, opposer is deemed to have waived the
claim). In view thereof, we give no further consideration to this claim.
3 Notice of Opposition ¶¶ 2 and 11. Opposer originally pleaded ownership of eight
registrations. One of the registrations, Registration No. 3086867, was cancelled during this
proceeding. Also, opposer pleaded ownership of application Serial Nos. 85045748 and
85289521 which matured into Registration Nos. 4080802 and 4101422 during this
proceeding. When an opposer pleads ownership of the underlying applications in the notice
of opposition, the opposer may make the registrations which issue during the opposition of
record without having to amend the notice of opposition to assert reliance on the
Opposition No. 91200786

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In her answer, applicant admitted that opposer owns its pleaded
registrations and denied the remaining allegations in the notice of opposition.
I. Evidentiary Issues
A. Opposer’s pleaded registrations.
Opposer attached copies of the following registrations to its notice of
opposition:4
1. Registration No. 3077921 for the mark The Beauty Network;5
2. Registration No. 3451561 for the mark Beauty MD;6
3. Registration No. 3688141 for the mark BEAUTY TV;7
4. Registration No. 3741286 for the mark THE BEAUTY CHANNEL;8
and
5. Registration No. 3936977 for the mark SYNCHRONIZING
BEAUTY.9

registrations. See UMG Recordings, Inc. v. Charles O’Rourke, 92 USPQ2d 1042, 1045 n.12
(TTAB 2009).
4 Opposer also attached a printout from the USPTO assignment database indicating that
none of the registrations has been assigned.
5 Registered on April 4, 2006; Section 8 affidavit accepted. Opposer disclaimed the
exclusive right to use the word “Network.”
6 Registered on June 17, 2008. Opposer disclaimed the exclusive right to use the term
“MD.”
7 Registered on September 29, 2009. Opposer disclaimed the exclusive right to use the term
“TV.”
8 Registered on January 19, 2010. Opposer disclaimed the exclusive right to use the word
“Channel.”
9 Registered on March 29, 2011. Opposer disclaimed the exclusive right to use the word
“Beauty.”
Opposition No. 91200786

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With respect to the first four registrations noted above, the copies of the
registrations filed by Opposer were neither: (a) prepared and issued by the United
States Patent and Trademark Office, showing both the current status and current
title to the registrations; nor (b) printed from the electronic database records of the
USPTO showing the current status of the registrations.
Trademark Rule 2.122(d) provides the manner in which a plaintiff may
properly make its pleaded registration(s) of record:
(1) A registration of the opposer or petitioner pleaded
in an opposition or petition to cancel will be received in
evidence and made part of the record if the opposition or
petition is accompanied by an original or photocopy of the
registration prepared and issued by the United States
Patent and Trademark Office showing both the current
status of and current title to the registration, or by a
current printout of information from the electronic
database records of the USPTO showing the current
status and title of the registration; or
(2) A registration owned by any party to a proceeding
may be made of record in the proceeding by that party by
appropriate identification and introduction during the
taking of testimony or by filing a notice of reliance, which
shall be accompanied by a copy (original or photocopy) of
the registration prepared and issued by the Patent and
Trademark Office showing both the current status of and
current title to the registration. The notice of reliance
shall be filed during the testimony period of the party
that files the notice.

Copies of registrations prepared and issued by the USPTO “amount to an
acknowledgment by the Office as to what the Office records show with respect to a
particular registration as of the time of the mailing of the copies, and thus are
sufficient to constitute a prima facie showing of the status and title to the
registration.” Peters Sportswear Co., Inc. v. Peter’s Bag Corp., 187 USPQ 647, 647
Opposition No. 91200786

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(TTAB 1975), quoted in Maybelline Co. v. Matney, 194 USPQ 438, 439 (TTAB
1977). In other words, they are sufficiently trustworthy to be placed into
evidence. Peters Sportswear, 187 USPQ at 650. As the Board further explained in
Peters Sportswear, the problem with unauthenticated copies of pleaded registrations
is that they
… are insufficient to meet the requirements of Trademark
Rule 2.122(b) [now subsection d] and hence are
incompetent to establish the current status of opposer’s
pleaded registrations, that is, to show that such
registrations are still subsisting. Moreover, the fact that
the copies of the registration certificates filed by opposer
indicate on their face that the registrations originally
issued to opposer cannot serve to show that opposer is
still the owner thereof and thus the “registrant” within
the meaning of Section 7(b) of the Act of 1946.
Id.
Here, opposer merely attached as exhibits to its notice of opposition copies of
the original certificates of its pleaded registrations which issued years earlier. The
Board has routinely held that the submission of such a copy of a pleaded
registration, by itself, is insufficient for purposes of establishing the continuing
subsistence and the current title of the registration and, therefore, does not suffice
to make the registration of record. See, e.g., Teledyne Techs., Inc. v. Western
Skyways, Inc., 78 USPQ2d 1203, 1206 (TTAB 2006) (“[i]nasmuch as the copy
attached to the petition is not a status and title copy prepared by the Office, the
submission does not conform to Rule 2.122(d)”). See also TBMP § 704.03(b)(1)(A)
(June 2014) and authorities cited therein. Further, opposer did not otherwise
establish the status, such as by submitting under a notice of reliance printouts from
Opposition No. 91200786

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USPTO databases showing status, or taking testimony sufficient to establish status,
pursuant to Trademark Rule 2.122(d)(2). Thus, the above-noted registrations were
not properly made of record. As the Federal Circuit noted in Hewlett-Packard Co. v.
Olympus Corp., 931 F.2d 1551, 18 USPQ2d 1710 (Fed. Cir. 1991):
The Trademark Rules provide a means for implementing this proof of a
prima facie case. They require that, in an opposition proceeding,
registrations may be entered into evidence by (1) furnishing two copies
of each registration prepared and issued by the Patent and Trademark
Office showing both the current status of and current title to the
registration; (2) appropriate identification and introduction of the
registrations during the taking of testimony; or (3) filing a notice of
reliance on the registrations during Opposer's testimony period. 37
C.F.R. §2.122(d) (emphasis added). These rules are simple and clear,
but Hewlett did not follow them.10

Id., 18 USPQ2d at 1713 (Court affirmed Board dismissal of the opposition for
failure to properly prove the registrations where the defendant had admitted only
issuance of pleaded registrations to the plaintiff “on the dates indicated” but had
denied that the registrations were valid and subsisting, and the parties agreed the
attached copies of the registrations did not show status or title).11
The fact that applicant admitted in her answer that opposer owned the
registrations does not suffice to show their current status. The Hewlett-Packard
Court’s discussion of Tiffany & Co. v. Columbia Indus., Inc., 455 F.2d 582, 173
USPQ 6 (CCPA 1972) is instructive. In Tiffany, the issue before the Court of

10 Board rules were amended in 2007 to allow an even easier method of proving the validity
of pleaded registrations, i.e., through submission of USPTO records, as discussed earlier in
this opinion.
11 Also, “a plaintiff’s mere inputting of a registration number when prompted by ESTTA,
the Board’s on-line filing system, to list any registration upon which the plaintiff relies,” is
not sufficient to make the registration(s) of record. Melwani v. Allegiance Corp., 97
USPQ2d 1537, 1540 (TTAB 2010).
Opposition No. 91200786

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Customs and Patent Appeals was not whether the plaintiff had complied with the
provisions of Rule 2.122 for proving pleaded registrations, but whether the
defendant’s answer excused plaintiff from having to prove the registrations. 173
USPQ at 7. The defendant in Tiffany, represented by counsel, was found to have
“admitted ‘the registrations referred to in the notice of opposition.’” Id. at 8.
Moreover, the panel did not believe that the defendant was deprived of fair notice of
the case it had to meet and that “it would work an injustice on appellant under
these circumstances” were it not able to rely on the plaintiff’s pleading and
defendant’s admission, particularly in view of the defendant having originally been
presented with a copy of plaintiff’s registration during examination, as the basis for
a refusal of registration (subsequently withdrawn). Id. at 8.
These concerns about the fairness of notice and possible injustice apparently
were not present in the Hewlett-Packard case, which involved more specific
pleadings by both parties. Likewise, in the case currently before us, applicant
admitted only opposer’s ownership of the registrations, not the status of the
registrations per se, and opposer, though represented by counsel, did not include
allegations relating to the validity of the registrations it claimed to own.12 We
conclude that it would work an injustice to hold that applicant, under these
circumstances, must deny unpleaded matter to avoid admitting what, at best, might
be considered an implied allegation in opposer’s pleading, i.e., validity and status of
the registrations it claimed to own. Accordingly, we do not view applicant as having

12 This case is also unlike the Tiffany case in that the instant opposer’s pleaded
registrations were not cited against the instant applicant during examination.
Opposition No. 91200786

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admitted the registrations in a manner that would excuse opposer from having to
prove their validity and status.
Because opposer failed to comply with Trademark Rule 2.122(d), opposer’s
four pleaded registrations noted above are not of record. Nor are the issue dates for
these registrations substantially contemporaneous with the filing of the notice of
opposition, such that the copy of each issued registration alone would be sufficient
because the date the registration was issued was very near the date the opposition
was filed. See TBMP § 704.03(b)(1)(A) (2014); Royal Hawaiian Perfumes, Ltd. v.
Diamond Head Prods. of Haw., Inc., 204 USPQ 144, 146 (TTAB 1979) (status and
title copy of pleaded registration mailed by USPTO on January 12, 1977 was
reasonably contemporaneous with the notice of opposition filed on March 14, 1977).
In contrast, we will accept the copy of the fifth registration noted above
(Registration No. 3936977 for the mark SYNCHRONIZING BEAUTY) as being
sufficient to make it of record because the date that registration was issued (March
29, 2011) is reasonably contemporaneous with the date the notice of opposition was
filed (July 20, 2011). Further, as noted supra in note 3, during its testimony period,
opposer filed a notice of reliance on, inter alia, copies of two additional registrations:
Registration No. 4080802 (BEAUTY EVERYWHERE), and Registration No.
4101422 (THE BEAUTY CHANNEL), both of which were printed from the
electronic database records of the USPTO showing the current status and current
title to the registrations. See Res. In Motion Ltd. v. NBOR Corp., 92 USPQ2d 1926,
1928 (TTAB 2009) (permitting proof of a pleaded registration by the submission of a
Opposition No. 91200786

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printout of information from the electronic database records of the USPTO through
a notice of reliance although not expressly authorized by Trademark Rule 2.122(d)
(2) in an effort to “liberalize the means for proving a pleaded registration”).
In sum, opposer’s Registration Nos. 3936977, 4080802 and 4101422, details of
which are shown below, are properly of record.
1. Registration No. 3936977 (Principal Register) for the mark
SYNCHRONIZING BEAUTY, in standard character form, for the following
services:
Providing audio-visual information in the fields of beauty
care and health, online via a global computer network;
Providing information relating to beauty care and health,
online via a global computer network; Providing reviews,
commentary, and other information relating to beauty
care and health, online via a global computer network;
Providing a website featuring information in the fields of
beauty care and health; Providing a website featuring
videos, images, and other audiovisual or multimedia
materials in the fields of beauty care and health, in Class
44;13
2. Registration No. 4080802 (Principal Register) for the mark BEAUTY
EVERYWHERE, in standard character form, for the following services:
Providing audio-visual information in the fields of beauty
care and health, online via a global computer network;
Providing information relating to beauty care and health,
online via a global computer network; Providing reviews,
commentary, and other information relating to beauty
care and health, online via a global computer network;
Providing a website featuring information in the fields of
beauty care and health; Providing a website featuring
videos, images, and other audiovisual or multimedia

13 Registered on March 29, 2011. Opposer disclaimed the exclusive right to use “Beauty.”
Opposition No. 91200786

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materials in the fields of beauty care and health, in Class
44;14 and
3. Registration No. 4101422 (Principal Register under Section 2(f)) for the
mark THE BEAUTY CHANNEL, in standard character form, for the following
services:
Providing audio-visual information in the fields of beauty,
salon services, hair, nails, makeup, facials, spa services
and treatments, hair loss and treatments, waxing, and
electrolysis, lasers, cosmetic surgery, health, nutrition
and anti-aging treatments via electronic communications
networks, mobile devices and networks, or device-to-
device communications; Providing information online
relating to beauty, salon services, hair, nails, makeup,
facials, spa services and treatments, hair loss and
treatments, waxing, and electrolysis, lasers, cosmetic
surgery, health, nutrition and anti-aging treatments via
electronic communications networks, mobile devices and
networks, or device-to-device communications; Providing
a web site featuring videos, images, and other audiovisual
or multimedia materials featuring information in the
fields of beauty, salon services, hair, nails, makeup,
facials, spa services and treatments, hair loss and
treatments, waxing, and electrolysis, lasers, cosmetic
surgery, fashion, health, nutrition and anti-aging
treatments; Providing reviews, commentary, and other
information relating to beauty, salon services, hair, nails,
makeup, facials, spa services and treatments, hair loss
and treatments, waxing, and electrolysis, lasers, cosmetic
surgery, health, nutrition and anti-aging treatments via
electronic communications networks, mobile devices and
networks, or device-to-device communication, in Class
44.15

14 Registered on January 3, 2012. Opposer disclaimed the exclusive right to use the word
“Beauty.”
15 Registered on February 21, 2012.
Opposition No. 91200786

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B. Applicant’s notice of reliance.
Applicant filed a notice of reliance on 18 documents. Opposer filed a motion
to strike virtually all of the documents on the ground that they “consist of
unauthenticated correspondence, press releases and unofficial records.”16 None of
the evidence sought to be excluded is outcome determinative. Given this fact,
coupled with the number of objections, we see no compelling reason to discuss the
specific objections one at a time. As necessary and appropriate, we will point out in
this decision any limitations applied to the evidence or otherwise note that the
evidence cannot be relied upon in the manner sought. While we have considered all
the evidence and arguments of the parties, we do not rely on evidence not discussed
herein.
II. The Record
The record includes the pleadings and, by operation of Trademark Rule
2.122(b), 37 C.F.R. § 2.122(b), applicant’s application file. In addition, the parties
introduced the following testimony and evidence:
A. Opposer’s evidence.
Opposer’s pleaded Registration No. 3936977 for the mark
SYNCHRONIZING BEAUTY, filed with the notice of opposition, which we have
found properly of record.
Opposer also filed a notice of reliance on the following items:

16 Opposer’s motion to strike, p. 1 (TTABVue 31, p. 2).
Opposition No. 91200786

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1. Copies of Registration No. 4080802 for the mark BEAUTY
EVERYWHERE and Registration No. 4101422 for the mark THE BEAUTY
CHANNEL printed from the electronic records of the USPTO and showing the
current status and title to the registrations;
2. Applicant’s amended responses to opposer’s interrogatory Nos. 15, 16,
18, 19, 31, 34, 36, 37, 38, 40 and 41;
3. Applicant’s responses to opposer’s requests for admission Nos. 1 and
16;
4. Opposer’s second set of requests for admission to which applicant
failed to respond; and
5. Applicant’s responses to opposer’s request for production of documents.
Although documents produced in response to a document production request cannot
be made of record by notice of reliance, see Trademark Rule 2.120(j)(3)(ii), we may
consider applicant’s written responses to opposer’s request for production of
documents to the extent that she has responded that no documents exist. See
Pioneer Kabushiki Kaisha v. Hitachi High Technologies America, Inc., 74 USPQ2d
1672, 1679 (TTAB 2009) (a party may rely on the response that responsive
documents do not exist). In this regard, we construe applicant’s responses that a
specific document request is “not applicable” as indicating there is no responsive
document.
Opposition No. 91200786

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B. Applicant’s evidence.
Applicant submitted the notice of reliance noted above in our discussion of
evidentiary issues and discussed more fully below.
III. Standing
Because opposer has properly made of record one of its pleaded registrations
and two pleaded applications that became registrations, opposer has established its
standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844
(Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982).
IV. Whether applicant’s application is void ab initio for nonuse?
In an application based on use in commerce under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), the applicant must use the mark in commerce
on or in connection with all the goods and services listed in the application as of the
application filing date. See Trademark Rule 2.34(a)(1)(i), 37 CFR § 2.34(a)(1)(i).
Section 45 of the Trademark Act, 15 U.S.C. § 1127, provides that a service
mark is used in commerce “on services when it is used or displayed in the sale or
advertising of services and the services are rendered in commerce, or the services
are rendered in more than one State.”
The services identified in a use-based service mark application must be
rendered before the filing of a service mark application.
[A] service mark applicant seeking to meet the use
requirements of Section 1(a) of the Trademark Act of
1946, 15 U.S.C. § 1051(a), must (1) use the mark in the
sale or advertising of a service and (2) show that the
Opposition No. 91200786

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service was either rendered in interstate commerce or
rendered in more than one state or in this and a foreign
country by a person engaged in commerce.
Aycock Eng’g Inc. v. Airflite Inc., 560 F.3d 1350, 90 USPQ2d 1301, 1306 (Fed. Cir.
2009). See also Gay Toys, Inc. v. McDonald’s Corp., 585 F.2d 1067, 199 USPQ 722,
723 (CCPA 1978) (because applicant did not use the mark in commerce in
association with the goods at the time it filed the application, its application was
void); In re Cedar Point, Inc., 220 USPQ 533, 535 (TTAB 1983) (rights in mark arise
through its use in connection with existing services); Greyhound Corp. v. Armour
Life Ins. Co., 214 USPQ 473, 474 (TTAB 1982) (application was void because at the
time it was filed the mark had not been used in the sale or advertising of existing
services); Intermed Commc’ns, Inc. v. Chaney, 197 USPQ 501, 507-08 (TTAB 1977)
(“The statute requires not only the display of the mark in the sale or advertising of
services but also the rendition of those services in order to constitute use of the
service mark in commerce.”).
Based on the record in this case, we find that opposer has shown that
applicant did not use the mark BeauTV to identify the services of “providing
information about beauty” prior to her October 10, 2010 filing date. We recount
below the evidence.
Applicant admitted that her services of “providing information about beauty”
are related to “electronic publishing, namely, publishing of blogs featuring
information in the fields of beauty care and cosmetics.”17

17 Applicant’s response to opposer’s request for admission No. 16 (TTABVue 23, p. 31).
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In response to opposer’s interrogatories relating to the identity of her
purchasers (Interrogatory Nos. 15, 16 and 37) and where she advertised her services
(Interrogatory Nos. 18 and 19), applicant responded that the interrogatories were
“inapplicable.”18 Likewise, in response to opposer’s request for production of
documents relating to the first sale (Request No. 11), financial statements from the
sale of her services (Request No. 12), annual revenues from the sale of her services
(Request No. 15), representative samples of advertising or promotional materials
(Request No. 18), business plans relating to the services she is offering (Request No.
19), and documents identifying the purchasers to whom she intends to render her
services (Request No. 26), applicant responded that the requests were
“inapplicable.”19
Finally, opposer served a second set of requests for admission seeking
admissions regarding applicant’s use of her mark; however, applicant did not serve
any responses.20 “A matter is admitted unless, within 30 days after being served,
the party to whom the request is directed serves on the requesting party a written
answer or objection addressed to the matter and signed by the party or its
attorney.” Fed. R. Civ. P. 36(a) (3). Those requests for admission include the
following requests:

18 Applicant’s responses to opposer’s interrogatories (TTABVue 23, pp. 20-27).
19 Applicant’s responses to opposer’s request for production of documents (TTABVue 23, pp.
35-42).
20 Opposer’s second requests for admission (TTABVue 23, pp. 54-60).
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Request No. 49
Admit that applicant has not rendered “providing
information about beauty” services through her
beautv.com website for at least three years [since
November 11, 2009].
Request Nos. 51-63
Admit that applicant cannot document rendering of
“providing information about beauty” services under
Applicant’s Designation for the year _____ [listing each
year from 2000-2012 in the separate requests].
Through discovery, opposer was unable to obtain any evidence documenting
applicant’s use of her mark BeauTV, and based on the discovery requests and
responses that opposer made of record, opposer has made out a prima facie showing
of nonuse by applicant. In response to opposer’s evidentiary showing, applicant, in
her notice of reliance, submitted a number of documents, none of which showed use
of the mark BeauTV.21 Opposer objected to the submission of this evidence.
At this point, we offer the following regarding notices of reliance. Printed
publications, such as books and periodicals, available to the general public in
libraries or of general circulation among members of the public or that segment of
the public which are relevant to the proceeding, may be introduced through a notice
of reliance. Trademark Rule 2.122(e), 37 CFR § 2.122(e). The purpose of Rule
2.122(e) is to expedite and facilitate the presentation and evaluation of such
evidence.
[Rule 2.122(e)] is intended to facilitate the introduction of
books and publications for what they show on their face
subject to the safeguard that the party against whom the

21 Applicant’s notice of reliance (TTABVue 28).
Opposition No. 91200786

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evidence is offered is readily able to corroborate or refute
the authenticity of what is proffered. The assumption
underlying the rule is that a party is or may readily
become familiar with printed matter in libraries open to
the public or in general circulation. The burden of
showing public availability, in case of reasonable doubt,
lies on the proponent of the evidence. Private promotional
literature is not presumed to be publicly available in the
sense of being readily accessible for inspection in libraries
open to the public or of such currency that the other party
is presumably familiar with it.
Glamorene Prod. Corp. v. Earl Grissmer Co., 203 USPQ 1090, 1092 n.5 (TTAB
1979).
In 2010, the Board made an exception to Rule 2.122(e) and held that a
document obtained from the Internet may be admitted into evidence in an inter
partes proceeding pursuant to notice of reliance in the same manner as printed
publications in general circulation, in accordance with 37 C.F.R. §2.122(e), provided
the document identifies the date of publication or the date the document was
accessed and printed, as well as its source (e.g., URL). Safer Inc. v. OMS Invs., Inc.,
94 USPQ2d 1031, 1039 (TTAB 2010). The purpose of the Safer expansion of the use
of notices of reliance was intended to expedite and facilitate the presentation and
evaluation of evidence that is readily available to the public through the Internet.
Turning to the documents applicant submitted by her notice of reliance,
namely:
1. Applicant’s Exhibit A is the Network Solutions “Whois” printout for
the domain name BEAUTV.com.22 It is not clear whether this document originated

22 Applicant’s notice of reliance Exhibit A (TTABVue 28, p. 6).
Opposition No. 91200786

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from the Internet but, if it did, it does not meet the requirements set forth in Safer
because the printout does not include the URL or date when it was printed. In any
case, even if the “Whois” printout were admitted into evidence, it does not show use
of BeauTV as a trademark in commerce for the services identified in applicant’s
application;
2. Applicant’s Exhibit B is the Network Solutions invoice for the domain
name BEAUTV.com. An invoice is not admissible through a notice of reliance
because it is not a printed publication in general circulation. Even if the invoice
were admissible, it also does not show trademark use of the BeauTV mark;23
3. Applicant’s Exhibit C is an InfoQuest Internet Business Solutions
summary of charges.24 It displays applicant’s account information accessed through
a password through which the user logs in. In addition, the web page indicates that
the user may “update security settings.” Although it is printed from the Internet
and bears both a URL and print date, as required by Safer, it is a document
personal to applicant and not available to the general public. Accordingly, it is not
the type of document that is admissible through a notice of reliance. In any event,
it does not refer to BeauTV, it does not show use of the mark BeauTV, and it does
not show that applicant paid that Internet service provider for hosting a website
related to BeauTV;

23 Applicant’s notice of reliance Exhibit B (TTABVue 28, p. 8).
24 Applicant’s notice of reliance Exhibit C (TTABVue 28, pp. 10-13).
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4. Applicant’s Exhibit G is a copy of applicant’s certificate of
incorporation for Beautv, Inc. Although admissible as an official record under the
notice of reliance procedure, it does not show use of the mark BeauTV;25
5. Applicant’s Exhibits H through L are invoices for the annual
registration fee for applicant’s corporation Beautv, Inc.26 Exhibits I, K and L are
Internet documents that bear a URL and print date. However, like the invoices
noted in No. 3 supra, they are personal to applicant, not available to the general
public and, therefore, not the type of document admissible through a notice of
reliance pursuant to Safer. Exhibits H and J are merely invoices and are not
admissible through a notice of reliance. In any event, the documents have no
probative value because they do not show use of the mark BeauTV;
6. Applicant’s Exhibit M comprises two letters to applicant from Tommy
Hilfiger’s and Elizabeth Arden’s public relations agencies and a letter from Tuff
Scentence Inc.27 Correspondence is not admissible through a notice of reliance
because it does not constitute printed publications in general circulation. Even if
they were admissible, they do not show use of the mark BeauTV;
7. Exhibits and O and Q are press releases or purported press releases,
some dated August and September 1999.28 In pre-Safer decisions, the Board has
held that press releases are not admissible through a notice of reliance. See Hard

25 Applicant’s notice of reliance Exhibit G (TTABVue 28, p. 22).
26 Applicant’s notice of reliance Exhibit H – L (TTABVue 28, pp. 24-34).
27 Applicant’s notice of reliance Exhibit M (TTABVue 28, pp. 36-40).
28 Applicant’s notice of reliance Exhibits O and Q (TTABVue 28, pp. 57-60 and 66-70).
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Rock Café Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1403 (TTAB 1998); Colt
Industries Operating Corp. v. Olivetti Controllo Nuermico S.p.A, 221 USPQ 73, 74
n.2 (TTAB 1983). Under Safer, press releases that have been posted on the Internet
and have thereby become publicly available may be introduced by notice of reliance,
but the press releases submitted by applicant have not been shown to be of this
type. Even if they were admissible, they do not show use of the mark BeauTV; and
8. Applicant’s Exhibit P appears to be excerpts from the Beautv.com
website.29 However, the only reference to BeauTV is the copyright notice and the
URL, neither of which shows trademark use of BeauTV. If a mark is depicted as
part of a URL, to constitute trademark use, it must be more than merely an
informational indication of the domain name address used to access a website. See
In re Roberts, 87 USPQ2d 1474, 1479 (TTAB 2008) (irestmycase did not function
as a mark for legal services where it was used only as part of an address by means
of which one could reach applicant’s website); In re Eilberg, 49 USPQ2d 1955, 1957
(TTAB 1998). With respect to the use of BeauTV in the copyright notice, at best it
creates the impression that the designation is a trade (company) name, but that by
itself is not trademark use.
Opposer argues that “[a]pplicant has consistently failed to support her claim
that the mark was in use at the time she filed the application. Applicant has not
established a single instance of the use of the BEAUTV mark in commerce in the
United States. Applicant has failed to introduce any evidence to show that she

29 Applicant’s notice of reliance Exhibits P (TTABVue 28, pp. 61-65).
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rendered any of the services listed in the application in connection with the
BEAUTV mark when the application was filed.”30
Applicant, on the other hand, argues that her “mark has been clearly and
prominently displayed on the www.beautv.com web site since inception” and that
she “was continuously using mark [sic] to provide information about beauty, and
has been paying all fees associated with BEAUTV mark, corporate entity, and
related delivery channels since 1999.”31 The problem with applicant’s argument is
that it is not supported by any admissible and probative testimony or evidence. In
response to opposer’s discovery requests, applicant produced nothing to show her
use of the mark BeauTV for “providing information about beauty.” During her own
testimony period, applicant did not introduce any evidence or testimony showing
use of the mark.
In view of the foregoing, we find that applicant did not use her mark
BeauTV for “providing information about beauty” at the time she filed her use-
based application and, therefore, the application at issue in this proceeding is void
ab initio.
Although our finding on this ground is a sufficient basis for sustaining the
opposition, we also address the ground of likelihood of confusion.
V. Likelihood of Confusion.
Priority is an element of the likelihood of confusion ground. In this case,
because three of opposer’s registrations are of record, priority is not an issue as to

30 Opposer’s Brief, p. 16 (TTABVue 33, p. 22).
31 Applicant’s Brief p. 20 (TTABVue 34, p. 23).
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the marks and the services covered by these registrations. King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). This is true
even as to registrations that issued after publication of an application for
opposition. See UMG Recordings Inc. v. O’Rourke, 92 USPQ2d at 1045 n.12 (“while
an opposer that pleads ownership of an application would have to make any
subsequently issued registration of record, it would not have to amend its notice of
opposition prior to doing so. The pleading of the application would be viewed as
having provided sufficient notice to the applicant that the opposer would rely on a
registration from the application for its likelihood of confusion claim.”).
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d)
goes to the cumulative effect of differences in the essential characteristics of the
goods and differences in the marks”). These factors, and any other relevant du Pont
factors in the proceeding now before us, will be considered in this decision.
As noted above, opposer made of record only Registration No. 3936977 for the
mark SYNCHRONIZING BEAUTY, Registration No. 4080802 for the mark
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BEAUTY EVERYWHERE and Registration No. 4101422 for the mark THE
BEAUTY CHANNEL. We focus our analysis on Registration No. 4101422 for the
mark THE BEAUTY CHANNEL as the mark most similar to applicant’s mark; if
confusion is likely between that mark and applicant’s mark, there is no need for us
to consider the likelihood of confusion with BEAUTY EVERYWHERE or
SYNCHRONIZING BEAUTY, because if there is no likelihood of confusion
between applicant's mark and THE BEAUTY CHANNEL, then there would be no
likelihood of confusion with BEAUTY EVERYWHERE or SYNCHRONIZING
BEAUTY. See, e.g., In re Max Cap. Group Ltd., 93 USPQ2d 1243, 1245 (TTAB
2010).
A. The similarity or dissimilarity and nature of the services described
in the application and opposer’s registrations.

Applicant is seeking to register her mark for “providing information about
beauty.”
Opposer’s Registration No. 4101422 for the mark THE BEAUTY CHANNEL
is registered for the following services (emphasis added):
Providing audio-visual information in the fields of
beauty, salon services, hair, nails, makeup, facials, spa
services and treatments, hair loss and treatments,
waxing, and electrolysis, lasers, cosmetic surgery, health,
nutrition and anti-aging treatments via electronic
communications networks, mobile devices and networks,
or device-to-device communications; providing
information online relating to beauty, salon services,
hair, nails, makeup, facials, spa services and treatments,
hair loss and treatments, waxing, and electrolysis, lasers,
cosmetic surgery, health, nutrition and anti-aging
treatments via electronic communications networks,
mobile devices and networks, or device-to-device
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communications; providing a web site featuring
videos, images, and other audiovisual or multimedia
materials featuring information in the fields of
beauty, salon services, hair, nails, makeup, facials, spa
services and treatments, hair loss and treatments,
waxing, and electrolysis, lasers, cosmetic surgery, fashion,
health, nutrition and anti-aging treatments; providing
reviews, commentary, and other information relating
to beauty, salon services, hair, nails, makeup, facials, spa
services and treatments, hair loss and treatments,
waxing, and electrolysis, lasers, cosmetic surgery, health,
nutrition and anti-aging treatments via electronic
communications networks, mobile devices and networks,
or device-to-device communication.
Because applicant’s identification of services is unrestricted, applicant’s services of
“providing information about beauty” encompass opposer’s online services of
providing information about beauty.
B. The established, likely-to-continue channels of trade and classes of
consumers.

Because applicant’s services encompass opposer’s services, we must presume
that the channels of trade and classes of purchasers are the same. See Am.
Lebanese Syrian Associated Charities Inc. v. Child Health Res. Inst., 101 USPQ2d
1022, 1028 (TTAB 2011); In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 (TTAB
1994) (“Because the goods are legally identical, they must be presumed to travel in
the same channels of trade, and be sold to the same class of purchasers.”). See also
In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even
though there was no evidence regarding channels of trade and classes of consumers,
the Board was entitled to rely on this legal presumption in determining likelihood of
confusion).
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25

C. The similarity or dissimilarity of the marks in their entireties in terms of
their appearance, sound, connotation and commercial impression.

We now turn to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 177
USPQ at 567. In a particular case, any one of these means of comparison may be
critical in finding the marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534,
1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1987). In
comparing the marks, we are mindful that “[w]hen marks would appear on virtually
identical goods or services, the degree of similarity necessary to support a
conclusion of likely confusion declines.” Century 21 Real Est. Corp. v. Century Life
of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enters. Inc. v.
Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Prods. Inc.
v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).
The test is not whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are sufficiently similar in
terms of their overall commercial impression so that confusion as to the source of
the goods or services offered under the respective marks is likely to result. San
Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ
1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The proper
focus is on the recollection of the average customer, who retains a general rather
than specific impression of the marks. Winnebago Indus., Inc. v. Oliver & Winston,
Opposition No. 91200786

26

Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106, 108 (TTAB 1975). Since the services involve providing information
about beauty, the average customer must be considered to be an ordinary member
of the general public.
Applicant’s mark is BeauTV and opposer’s mark is THE BEAUTY
CHANNEL. There is, as we have frequently stated, no correct pronunciation for a
trademark that is coined or unusual. Edwards Lifesciences Corp. v. VigiLanz Corp.,
94 USPQ2d 1399, 1409 (TTAB 2010). Given applicant’s services, consumers would
likely pronounce applicant’s mark “byoo´ tē vee” rather than “bō tē vē,” because the
services concern beauty. Therefore consumers would likely understand the mark to
represent a “telescoped” form of “BEAUTY TV.” “TV” is the abbreviation for
“television,” which is defined as “the broadcasting of a still or moving image via
radiowaves [sic] to receivers that project an image on a picture tube.”32 “Channel” is
defined as, inter alia, “a frequency band of sufficient width for one- or two-way
communication from or to a transmitter used for television, radio, CB radio,
telephone, or telegraph communication.”33 In both marks TV and CHANNEL have
a similar significance. Accordingly, viewing the marks in their entireties, we find
that consumers will perceive the marks BeauTV and THE BEAUTY CHANNEL
as having the same meaning and engendering the same commercial impression.

32 THE RANDOM HOUSE DICTIONARY OF THE ENGLISH LANGUAGE (UNABRIDGED), p.
1953 (2nd ed. 1987). The Board may take judicial notice of dictionary definitions, Univ. of
Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
33 THE RANDOM HOUSE DICTIONARY OF THE ENGLISH LANGUAGE (UNABRIDGED), p.
345.
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27

We find that the similarities in the meaning and commercial impression
engendered by the marks outweigh any specific differences in the appearance and
sound of the marks that might be apparent upon a side-by-side comparison of the
marks. Thus, the marks are similar.
D. Balancing the factors.
Because the marks are similar, and because the services are in part identical
and therefore are presumed to travel in the same channels of trade and are sold to
the same classes of consumers, we find that applicant’s mark BeauTV for
“providing information about beauty” is likely to cause confusion with opposer’s
mark THE BEAUTY CHANNEL for providing audio-visual information in the
field of beauty, providing information online relating to beauty, providing a web site
featuring videos, images, and other audiovisual or multimedia materials featuring
information in the field of beauty and providing reviews, commentary, and other
information relating to beauty.
Decision: The opposition is sustained on both the ground that the
application is void ab initio on the basis of nonuse, and the ground of likelihood of
confusion.