Big Vision Business, Inc.

Trademark Trial and Appeal BoardJul 10, 2014

No. 85670910 (T.T.A.B. Jul. 10, 2014)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: July 10, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ________ In re Big Vision Business, Inc. ________ Serial No. 85670910 _______ Dana B. Robinson of TechLawLLP for Big Vision Business, Inc. D. Beryl Gardner, Trademark Examining Attorney, Law Office 117 (Hellen Bryan- Johnson, Managing Attorney). _______ Before Quinn, Wellington and Hightower, Administrative Trademark Judges. Opinion by Quinn, Administrative Trademark Judge: Big Vision Business, Inc. (“Applicant”) filed, on July 6, 2012, an application under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), to register the mark BIG VISION BUSINESS (“BUSINESS” disclaimed) (in standard characters) for education services, namely, providing live and on-line classes, seminars, and workshops all in the field of business and financial success; education services, namely, providing non-downloadable webinars in the field of business and financial success; educational and entertainment services, namely, providing podcasts and motivational speaking services all in the field of business and financial success; production and distribution of videos in the field of business and financial success (in International Class 41). Application Serial No. 85670910 2 Applicant alleges first use anywhere and first use in commerce at least as early as January 31, 2012. The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when used in connection with Applicant’s services, so resembles the previously registered mark BIG VISION (in standard characters) for the services below as to be likely to cause confusion: Entertainment services in the nature of production and distribution of motion picture films, music video production services, and television show production; entertainment in the nature of ongoing television programs in the fields of drama, comedy, action, music, variety, and documentaries; entertainment services in the nature of ongoing television programs in the area of sports entertainment, namely, boxing, wrestling, bowling, volleyball, softball, boating, canoeing, kayaking, camping, fishing, hunting, martial arts, motocross, racquetball, surfing, auto racing, soccer, baseball, basketball, football, hockey, tennis, skiing, water-skiing, snowboarding, skateboarding, swimming, track and field, marathons, running, golf, cycling, cross-country cycle racing, ice skating, in-line skating, climbing, fitness competitions, bull-riding, horse racing, and poker; entertainment services in the nature of ongoing television programs in the areas of motorized vehicles, namely, automobiles, trucks, motorcycles, boats and recreational watercraft, aircraft, and snowmobiles; entertainment services in the nature of ongoing television programs in the fields of news, legal and general interest, namely, banking, financial management, investment, local economics and politics, national economics and politics, international economics and politics, real estate realtors, interest rate information, news, legal information, public information, government information, tax and accounting information, financial information, medical information, and doctors; rental of film and video recording equipment; rental of video editing equipment; providing facilities for producing Application Serial No. 85670910 3 video, audio, and cinema productions (in International Class 41). When the Examining Attorney made the refusal final, Applicant appealed. Applicant and the Examining Attorney filed briefs. Applicant argues that the marks are dissimilar, and that the services are not related and do not travel in the same trade channels. Applicant also contends that consumer sophistication will prevent confusion, and that the Examining Attorney has made no showing of actual confusion. The Examining Attorney maintains that the marks in their entireties are similar, and that the services offered thereunder are similar. In connection with her latter contention, the Examining Attorney furnished third-party registrations. Before turning to the substantive merits of this appeal, we direct our attention to an evidentiary matter. Applicant submitted for the first time with its appeal brief evidence related to five third-party uses of “Big Vision” names; this information was retrieved using the Google search engine in an attempt to show that similar third-party marks already coexist with Registrant’s mark. The Examining Attorney objected to this submission as untimely. The objection is sustained. The evidentiary record in an application should be complete prior to the filing of an appeal to the Board. Trademark Rule 2.142(d). See also TBMP § 1207.01 (2014). In view of the untimely submission, the evidence and Application Serial No. 85670910 4 remarks relating to third-party use in Applicant’s appeal brief have not been considered in making our decision.1 Our determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). 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). These factors, and the other relevant du Pont factors in the proceeding now before us, are discussed below. We turn to the first du Pont factor focusing on the similarity between the marks. We must compare Applicant’s mark BIG VISION BUSINESS to Registrant’s mark BIG VISION in their entireties as to appearance, sound, connotation and commercial impression to determine the similarity or dissimilarity between them. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1960 (Fed. Cir. 2005), quoting In re E. I. du Pont de Nemours & Co., 177 USPQ at 567. “The proper test is not a side-by-side comparison 1 Even if considered, this evidence is of limited probative value given the absence of any corroborating facts bearing on the extent of these uses. That is to say, there are no specifics regarding the extent of sales or promotional efforts surrounding the third-party marks and, thus, what impact, if any, these uses have made in the minds of the purchasing public. Accordingly, we would be unable to find that customers have become conditioned to recognize that other entities use BIG VISION marks for similar services. See Anthony’s Pizza & Pasta Int’l, Inc. v. Anthonys Pizza Holding Co., 95 USPQ2d 1271, 1276-78 (TTAB 2009), aff’d, 415 Fed. Appx. 222 (Fed. Cir. 2010); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1112 (TTAB 2007); Carl Karcher Enterprises Inc. v. Stars Restaurant Corp., 35 USPQ2d 1125, 1130-31 (TTAB 1995). Application Serial No. 85670910 5 of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB 2014). Although applicant appropriately argues that the presence of the word “BUSINESS” in its mark cannot be ignored when comparing its mark to Registrant’s mark, it is settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“There is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties. Indeed, this type of analysis appears to be unavoidable.”). In applicant’s mark, the generic word “BUSINESS” (serving to identify the subject matter of applicant’s services) is disclaimed. Thus, we view “BIG VISION” in Applicant’s mark to be the dominant portion. See, e.g., In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (“DELTA,” not the disclaimed generic term “CAFE,” is the dominant portion of the mark THE DELTA CAFE). Moreover, purchasers in general are inclined to focus on the first Application Serial No. 85670910 6 word or portion in a trademark; in Applicant’s mark, “BIG VISION” is the first portion. Presto Products, Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is likely to be impressed upon the mind of a purchaser and remembered”). See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692. Accordingly, the dominant portion of Applicant’s mark is identical to the entirety of Registrant’s mark. Applicant has adopted the entirety of Registrant’s mark and merely added generic and disclaimed wording to it. The marks BIG VISION BUSINESS and BIG VISION, when considered in their entireties, are similar in sound, appearance and meaning. Given these similarities, when the marks are considered in their entireties, the marks engender very similar overall commercial impressions. The similarity between the marks is a factor that weighs in favor of a finding of a likelihood of confusion. With respect to the services, it is well settled that they need not be identical or competitive, or even be offered through the same channels of trade, to support a holding of likelihood of confusion. It is sufficient that the respective services of Applicant and Registrant are related in some manner, and/or that the conditions and activities surrounding the marketing of the services are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same source. See Hilson Research, Inc. v. Society for Human Resource Application Serial No. 85670910 7 Management, 27 USPQ2d 1423 (TTAB 1993); In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The issue here, of course, is not whether purchasers would confuse the services, but rather whether there is a likelihood of confusion as to the source of these services. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830 (TTAB 1984). It is settled that in making our determination regarding the relatedness of the services, we must look to the services as identified in the application and the cited registration. See Octocom Sys., Inc. v. Houston Computer Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). Applicant’s services are identified as follows: “education services, namely, providing live and on-line classes, seminars, and workshops all in the field of business and financial success; education services, namely, providing non-downloadable webinars in the field of business and financial success; educational and entertainment services, namely, providing podcasts and motivational speaking services all in the field of business and financial success; production and distribution of videos in the field of business and financial success.” Registrant’s recitation includes several types of services; of these, the closest to Applicant’s services are the following services: “entertainment services in the nature of ongoing television programs in the fields of news, legal and general interest, namely, banking, financial management, investment, local economics and politics, national economics and politics, international economics and politics, real estate realtors, interest rate information, news, legal information, public Application Serial No. 85670910 8 information, government information, tax and accounting information, financial information.” The services are similar in that they feature business and financial information, albeit conveyed in different media such as television, podcasts, videos and motivational speeches. More specifically, for example, Applicant provides podcasts in the fields of business and finance; Registrant provides television programs in the fields of business and finance. The Examining Attorney submitted numerous use-based third-party registrations which individually cover transmissions of information via media, such as television and webcasts, as well as motivational speaking services, all under the same mark. See, e.g., Reg. Nos. 3571907; 3711420; 3778634; 3991519; and 4221633. “Third-party registrations which cover a number of differing goods and/or services, and which are based on use in commerce, although not evidence that the marks shown therein are in use on a commercial scale or that the public is familiar with them, may nevertheless have some probative value to the extent that they may serve to suggest that such goods or services are of a type which may emanate from a single source.” In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988). See also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). We find that the services are similar. Although the services may be offered in different media and, thus, may travel in different trade channels, this difference is outweighed by the Examining Attorney’s evidence. Further, the services are likely Application Serial No. 85670910 9 to be encountered by the same classes of purchasers, including ordinary consumers interested in receiving business or financial information. In sum, the du Pont factors related to the services weigh in favor of a finding of likelihood of confusion. Contrary to applicant’s contention regarding the sophistication of purchasers, there is nothing in the respective recitations of services that warrants a finding that consumers of either Applicant’s or Registrants’ services would make a careful purchasing decision. However, even assuming that Applicant’s and/or Registrant’s services may involve a careful purchase, it is settled that even sophisticated purchasers are not immune from source confusion, especially in cases such as the instant one involving very similar marks and similar services. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), citing Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human memories even of discriminating purchasers...are not infallible.”). See also In re Decombe, 9 USPQ2d 1812 (TTAB 1988). We find that the similarity between the marks and the similarity between the services sold thereunder outweigh any presumed sophisticated purchasing decision. See HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks outweigh sophisticated purchasers, careful purchasing decision, and expensive goods). In view thereof, we find this factor to be neutral. Application Serial No. 85670910 10 Applicant also faults the Examining Attorney for failing to introduce evidence of actual confusion between the involved marks. However, it is not necessary to show actual confusion in order to establish likelihood of confusion. See Weiss Associates Inc. v. HRL Associates Inc. 902 F.2d 1546, 223 USPQ 1025 (Fed. Cir. 1990). Applicant’s assertion, particularly in this ex parte proceeding, is entitled to little weight. See In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003) (“uncorroborated statements of no known instances of actual confusion are of little evidentiary value”). See also In re Bisset-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (stating that testimony of applicant’s corporate president’s unawareness of instances of actual confusion was not conclusive that actual confusion did not exist or that there was no likelihood of confusion); In re Binion, 93 USPQ2d 1531, 1536 (TTAB 2009); In re 1st USA Realty Professionals Inc., 84 USPQ2d 1581, 1588 (TTAB 2007); In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984). In any event, the record is devoid of evidence relating to the extent of use of Applicant’s and Registrants’ marks and, thus, whether there have been meaningful opportunities for instances of actual confusion to have occurred in the marketplace. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000). Accordingly, the du Pont factor of the length of time during and conditions under which there has been contemporaneous use of the marks without evidence of actual confusion is considered neutral. Application Serial No. 85670910 11 We conclude that purchasers familiar with Registrant’s entertainment services in the nature of ongoing television programs in the fields of banking, investment and financial information rendered under the mark BIG VISION would be likely to believe, upon encountering Applicant’s mark BIG VISION BUSINESS for educational and entertainment services, namely, providing podcasts and motivational speaking services all in the field of business and financial success, that the respective services originated from or are associated with or sponsored by the same entity. Decision: The refusal to register is affirmed.