Brad W. Coxv.Darrion Scoggins

Trademark Trial and Appeal Board

Apr 2, 2021

92073504 (T.T.A.B. Apr. 2, 2021)

GMM
April 2, 2021

Cancellation No. 92073504

Brad W. Cox

v.
Darrion Scoggins

Before Zervas, Kuczma, and Johnson,
Administrative Trademark Judges.

By the Board:

This case comes before the Board for consideration of Brad Cox’s (“Petitioner”)
motion for summary judgment on his claim of likelihood of confusion. Darrion
Scoggins (“Respondent”), who is not represented by counsel,1 did not file a response
to the motion for summary judgment, but instead filed what he identified as his
pretrial disclosures and initial disclosures.2 Although Respondent did not file a brief
in response to the summary judgment, Respondent’s submissions indicate that he
does not concede the case. Therefore, we decline to treat the summary judgment
motion as conceded, but instead consider the motion on its merits. See Promgirl Inc.

1 Respondent was advised in the Board’s institution order and during the parties’ discovery
conference that the Board strongly advises all parties to secure the services of a trademark
attorney. See 2 TTABVUE 6 and 7 TTABVUE 21.
2 See 12–14 TTABVUE.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
General Email: TTABInfo@uspto.gov
THIS ORDER IS NOT A
PRECEDENT OF THE
TTAB
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v. JPC Co., 94 USPQ2d 1759, 1760 n.1 (TTAB 2009); see also TRADEMARK TRIAL AND
APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 502.04 (June 2020).
I. Background
Respondent owns a registration for the mark SKITSO (in standard characters) for
“Entertainment services in the nature of live musical performances; Music production
services; Music video production” in International Class 41.3
Petitioner seeks cancellation of the registration on the ground of likelihood of
confusion under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on
Petitioner’s alleged prior use of the mark SKITZO CALYPSO (“CALYPSO”
disclaimed) for “digital media, namely, pre-recorded DVDs, downloadable audio and
video recordings, and CDs, all featuring and promoting an alternative rock band.”4
In his amended answer, Respondent “admits that the [parties’] marks are
identical and likely to cause likeliness of confusion.”5 Although the amended answer
is not a model of clarity, we construe it as denying Petitioner’s allegations of priority.6

3 Registration No. 4819488, issued on September 22, 2015, based on Respondent’s allege use
of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. § 1051(a), and
claiming January 20, 2015, as both the date of first use of the mark anywhere and the date
of first use in commerce.
4 Petition to Cancel ¶¶ 3–4, 10–17 (1 TTABVUE 3–6). Petitioner is relying on its alleged prior
use of the SKITZO CALYPSO mark for the same Class 9 goods identified in Petitioner’s
pleaded Application Serial No. 87710921. Id. As discussed below, in the pleaded application
Petitioner has disclaimed the term “CALYPSO.”
5 Amended Answer ¶ 17 (9 TTABVUE 11).
The amended answer appears in the docket at 9 TTABVUE 8–14, showing Respondent’s
amendments in red font. Although Respondent did not file a motion for leave to amend his
answer, the amended answer was filed after the parties’ discovery conference, in which the
Board participated. Petitioner did not object to the amended answer and we therefore accept
it and enter it as Respondent’s operative pleading. See Fed. R. Civ. P. 15(a)(2).
6 Amended Answer ¶¶ 11–12 (8 TTABVUE 9–10).
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In the amended answer, and as part of his response to certain allegations, Respondent
also interspersed certain putative affirmative defenses. However, we need not
address the legal sufficiency of the defenses because Respondent has not cross-moved
for summary judgment on any of them.
II. Preliminary Issues
A. The Scope and Basis of Petitioner’s Claim
With his motion for summary judgment, Petitioner submitted evidence and
arguments regarding his use of SKITZO CALYPSO as the name of a musical group.
However, in the petition to cancel, Petitioner did not allege prior use of the mark for
entertainment services in the nature of live performances by a musical group.
Instead, Petitioner alleged use of the mark in connection with the goods identified in
his pleaded application for registration of the mark. In this regard, in the petition to
cancel Petitioner alleged:7
2. Petitioner is the Applicant of U.S. Trademark
Application Serial No. 87710921 (“Application”) for the
mark SKITZO CALYPSO, filed on December 6, 2017.
3. Petitioner is actively engaged in the music industry
under the mark SKITZO CALYPSO, and as such Petitioner
applied in International Class 009 for the goods and
services (“Goods and Services”):
Digital media, namely, pre-recorded DVDs,
downloadable audio and video recordings, and
CDs, all featuring and promoting an
alternative rock band.

7 1 TTABVUE 3.
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In the petition to cancel, Petitioner proceeds to use the defined wording “Goods
and Services” when referring to his use of the SKITZO CALYPSO mark. In Paragraph
4, Petitioner alleges that “Petitioner has used the mark SKITZO CALYPSO in the
United States exclusively and continuously since at least as early as June 1, 1998 in
connection with these Goods and Services, and has not abandoned said mark”; in
Paragraph 5 Petitioner alleges, inter alia, “Petitioner has and continues to invest
significant time, money, and effort, to promote the reputation of the mark SKITZO
CALYPSO as widely as possible and to identify the mark SKITZO CALYPSO as the
source of the Goods and Services”; and in Paragraph 12 Petitioner alleges that
“Petitioner has made exclusive and continuous use of SKITZO CALYPSO in
commerce in connection with its Good and Services in the United States since at
least as early as June 1, 1998, and as such has priority.”8
Because Petitioner has defined the wording “Goods and Services” as referring to
the goods in his pleaded application, the Section 2(d) claim is limited to Petitioner’s
alleged prior use of the mark SKITZO CALYPSO in connection with “Digital media,
namely, pre-recorded DVDs, downloadable audio and video recordings, and CDs, all
featuring and promoting an alternative rock band.”9
A Board attorney raised this issue with Petitioner’ counsel during the parties’
discovery and settlement conference, at which time Petitioner’s counsel was advised
that “[i]f Petitioner intended to allege prior use of the SKITZO CALYPSO mark in

8 See Petition to Cancel ¶¶ 4–5, 12 (1 TTABVUE 4–5).
9 Id. ¶ 3.
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connection with services, then he would need to file a motion for leave to amend the
petition to cancel, together with a proposed amended petition.”10 Petitioner did not
amend his petition to cancel, and thus we confine our determination of the issues of
priority and likelihood of confusion to Petitioner’s “digital media, namely, pre-
recorded DVDs, downloadable audio and video recordings, and CDs, all featuring and
promoting an alternative rock band.” However, we consider Petitioner’s evidence
regarding prior use of the mark SKITZO CALYPSO as the name of a musical group
to the extent that such evidence corroborates Petitioner’s evidence of prior of use of
the mark in connection with the goods identified in the petition to cancel. We also
consider Petitioner’s evidence regarding prior use of the mark SKITZO CALYPSO as
the name of a musical group to the extent that it shows that musical sound recordings
and live musical performances are related goods and services. Ultimately, however,
evidence of use of the mark SKITZO CALYPSO as the name of a musical group cannot
independently support Petitioner’s efforts to establish priority or show that the
parties’ goods and services are similar or related for purposes of likelihood of
confusion.
B. Respondent’s Submissions
Respondent did not submit a brief in opposition to the motion for summary
judgment, but instead filed his pretrial disclosures, with certain evidentiary
submissions, and his initial disclosures.11 Because the pretrial disclosures were filed

10 7 TTABVUE 4.
11 See 12–14 TTABVUE. Respondent filed duplicate copies of his pretrial disclosures.
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first, and were filed within the time for responding to the summary judgment motion,
we will consider the submission solely to the limited extent that it contains any
arguments or evidence that are properly of record and responsive to the summary
judgment motion.
III. The Motion for Summary Judgment
A. Legal Standard for Summary Judgment
Summary judgment is an appropriate method of disposing of cases in which the
moving party is able to demonstrate, prior to trial, that there is no genuine dispute
of material fact, and that it is entitled to judgment as a matter of law. See Fed. R.
Civ. P. 56(a). Celotex Corp. v. Catrett, 477 U.S. 317, 323–24 (1986); Opryland USA
Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992);
The party moving for summary judgment has the initial burden of demonstrating
that there is no genuine dispute of material fact remaining for trial and that it is
entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(c); Celotex, 477 U.S. at
323; Sweats Fashions, Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d
1793, 1796 (Fed. Cir. 1987). All evidence of record must be viewed in a light favorable
to the non-movant, in this case Respondent, and all justifiable inferences are to be
drawn in the non-movant’s favor. See Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d
766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993). In deciding a summary judgment
motion, the Board may not resolve disputes of material fact; it may only ascertain
whether such disputes exist. Lloyd’s Food Prods., 25 USPQ2d at 2029; Opryland
USA, 23 USPQ2d at 1472. A factual dispute is genuine only if a reasonable fact finder
viewing the evidence of record could resolve the disputed matter in favor of the non-
Cancellation No. 92073504

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movant. Lloyd’s Food Prods., 25 USPQ2d at 2029; Opryland USA, 23 USPQ2d at
1472.
When the party moving for summary judgment sufficiently demonstrates that
there is no genuine dispute of material fact, and that it is entitled to judgment as a
matter of law, the burden shifts to the non-movant to demonstrate the existence of
specific genuinely disputed facts that must be resolved at trial. Freki Corp. N.V. v.
Pinnacle Entm’t, Inc., 126 USPQ2d 1697, 1700 (TTAB 2018); Enbridge, Inc. v.
Excelerate Energy L.P., 92 USPQ2d 1537, 1540 (TTAB 2009). To carry this burden,
“[t]he party opposing the motion must point to an evidentiary conflict created on the
record at least by a counter statement of a fact or facts set forth in detail in an
affidavit by a knowledgeable affiant.” Barmag Barmer Maschinenfabrik AG v.
Murata Mach., Ltd., 731 F.3d 831, 221 USPQ 561, 564 (Fed. Cir. 1984). The non-
movant may not rest on the mere allegations in its pleadings, but must designate
specific portions of the record or produce additional evidence showing the existence
of a genuine dispute as to a material fact for trial. See Fed. R. Civ. P. 56(c); Celotex,
477 U.S. at 324; Freki, 126 USPQ2d at 1700.
Petitioner, as the party moving for summary judgment on his claim of likelihood
of confusion under Trademark Act Section 2(d) based on alleged common law rights
in the pleaded SKITZO CALYPSO mark, must establish that there is no genuine
dispute that: (1) he is entitled to maintain a statutory cause of action; (2) he is the
prior user of the pleaded mark; and (3) the contemporaneous use of the parties’
respective marks for their respective goods and services would be likely to cause
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confusion or mistake or deceive consumers. See Fram Trak Indus., Inc. v. WireTracks
LLC, 77 USPQ2d 2000, 2004 (TTAB 2006); Hornblower & Weeks, Inc. v. Hornblower
& Weeks, Inc., 60 USPQ2d 1733, 1735 (TTAB 2001).
B. Entitlement to a Statutory Cause of Action12
Entitlement to a statutory cause of action is an essential element in every inter
partes case. See Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965
F.3d 1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v.
Static Control Components, Inc., 572 U.S. 118, 109 USPQ2d 2061, 2067 n.4 (2014)).
A party in the position of plaintiff may petition to cancel a registration of a mark
when it demonstrates an interest falling within the zone of interests protected by the
statute, 15 U.S.C. § 1064, and a reasonable belief in damage that is proximately
caused by registration of the mark. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298,
2020 USPQ2d 11277, at * 6–7 (Fed. Cir. 2020).
Petitioner has established his entitlement to a statutory cause of action by making
of record copies of his pleaded application Serial No. 87009692 for the mark SKITZO
CALYPSO and the USPTO office action refusing registration of Petitioner’s mark
based on likelihood of confusion with Respondent’s registered mark under Trademark
Act Section 2(d). See ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036, 1042

12 Board decisions have previously analyzed the requirements of Trademark Act Sections 13
and 14, 15 U.S.C. §§ 1063–64, under the rubric of “standing.” Despite the change in
nomenclature, our prior decisions and those of the Federal Circuit interpreting Sections 13
and 14 remain applicable. See Spanishtown Enters., Inc. v. Transcend Resources, Inc., 2020
USPQ2d 11388, at *2 (TTAB 2020).
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(TTAB 2012); Tri-Star Mktg., LLC v. Nino Franco Spumanti S.R.L., 84 USPQ2d
1912, 1914 (TTAB 2007).
Petitioner also has established his entitlement, as discussed in more detail below,
by evidence of prior use of the SKITZO CALYPSO mark as the basis for his claim of
likelihood of confusion under Trademark Act Section 2(d). Giersch v. Scripps
Networks Inc., 90 USPQ2d 1020, 1022 (TTAB 2009) (common law use sufficient to
establish standing).
C. Priority
Because Respondent failed to introduce any competent evidence of use of his
involved SKITSO mark, the earliest priority date upon which Respondent can rely is
August 21, 2014, the date on which he filed the application that subsequently issued
as his involved registration.13 See Trademark Act Section 7(c), 15 U.S.C. § 1057(c)
(establishing nationwide priority rights from the filing date of the application); M.C.I.
Foods Inc. v. Bunte, 96 USPQ2d 1544, 1550 (TTAB 2010) (citing Brewski Beer Co. v.
Brewski Bros. Inc., 7 USPQ2d 1281, 1284 (TTAB 1998)).

13 Even if Respondent’s May 31, 2020, submission was competent evidence of his first use of
his mark (and it is not), Respondent states that he “has been using the trademark SKITSO
for 15 years.” See 12 TTABVUE 3. Respondent’s use of his mark since 2005, even if
established, would be insufficient to establish priority. Moreover, 2005 is significantly earlier
than January 20, 2015, the date of first use of the SKITSO mark alleged by Respondent in
his registration. The dates of use in the registration are not self-proving, but must be
established by competent evidence pursuant to Trademark Rule 2.122(b)(2), 37 C.F.R.
§ 2.122(b)(2). But if Respondent intended to argue that he made use of the mark prior to the
date claimed in the registration, then it was incumbent on him to establish such earlier use
by “clear and convincing evidence.” See Hydro-Dynamics Inc. v. George Putnam & Co., Inc.,
811 F.2d 1470, 1 USPQ2d 1772, 1773 (Fed. Cir. 1987); TiVo Brands LLC v. Tivoli, LLC, 129
USPQ2d 1097, 1102 n.38 (TTAB 2019). Respondent submitted no evidence to establish the
date of first use alleged in his registration, let alone clear and convincing evidence of earlier
use of the mark.
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Under Trademark Act Section 2(d), priority is established by ownership of a mark
that has been “previously used … and not abandoned.”14 15 U.S.C. § 1052(d). See also
Giersch, 90 USPQ2d at 1023; Fram Trak Indus., 77 USPQ2d at 2004. Accordingly, to
establish priority on summary judgment, Petitioner must establish that there is no
genuine dispute regarding his use of the wording SKITZO CALYPSO as a distinctive
mark (either inherently or through acquired distinctiveness) prior to Respondent’s
constructive first use date of August 21, 2014. Otto Roth & Co. v. Universal Foods
Corp., 640 F.2d 1317, 209 USPQ 40, 44–44 (CCPA 1981); DeVivo v. Ortiz, 2020
USPQ2d 10153, *3 (TTAB 2020); Giersch, 90 USPQ2d at 1023.
Respondent has not challenged the distinctiveness of Petitioner’s SKITZO
CALYPSO mark as used with “pre-recorded DVDs, downloadable audio and video
recordings, and CDs, all featuring and promoting an alternative rock band,” and there
is nothing in the record to suggest that Petitioner’s mark is not distinctive. We
therefore find that the mark is distinctive as used with Petitioner’s goods. See
Giersch, 90 USPQ2d at 1023; Wet Seal Inc. v. FD Mgmt. Inc., 82 USPQ2d 1629, 1634
(TTAB 2007) (absent argument or evidence from applicant or elsewhere in the record,
opposer’s mark deemed distinctive); cf. The Chicago Corp. v. N. Am. Chicago Corp.,
20 USPQ2d 1715, note 5 (TTAB 1991) (affirmative defense regarding descriptiveness

14 Evidence of prior use that is strictly intrastate is all that is required; Petitioner need not
show prior use “in commerce.” See Nat’l Cable Tel. Assoc. Inc. v. Am. Cinema Editors Inc.,
937 F.2d 1572, 19 USPQ2d 1424, 1429 n.4 (Fed. Cir. 1991); Daniel J. Quirk, Inc. v. Vill. Car
Co., 120 USPQ2d 1146, 1150 n.19 (TTAB 2016). Additionally, in the absence of a properly
asserted abandonment defense, Petitioner is not required to prove “continuous use” of his
mark. See West Fla. Seafood Inc. v. Jet Rests. Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1665–66
(Fed. Cir. 1994).
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of opposer’s mark, raised for the first time in applicant’s brief, was untimely and not
considered by the Board).
Petitioner has established that his pleaded mark has been used to identify the
source of a series of creative works (i.e., musical sound recordings), and therefore
functions as a trademark. Specifically, Petitioner has introduced evidence, which is
unrebutted, that since 1998 he has performed live music concerts under the SKITZO
CALYPSO mark,15 and that the mark has been used on thirteen different musical
sound recordings between 1998 and 2019, including ten prior to 2014.16 Petitioner’s
evidence of use of the mark on a series of sound recordings establishes that he used
the SKITZO CALYPSO mark as a source identifier for musical sound recordings prior
to August 2014. See In re Polar Music Int’l, AB, 714 F.2d 1567, 221 USPQ 315, 318
(Fed. Cir. 1983) (holding that the term “ABBA” functioned as a trademark for a series
of sound recordings); In re Scholastic Inc., 23 USPQ2d 1774, 1778 (TTAB 1992)
(holding that the wording “THE MAGIC SCHOOL BUS” functioned as a trademark
because the wording had been used for multiple books in a series); see also Kohler Co.
v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1108 (TTAB 2007) (testimony based
on personal knowledge, internally consistent, and corroborated by documentary
evidence). Petitioner’s evidence establishes his use of SKITZO CALYPSO as a

15 Cox Decl. ¶¶ 11, 18–19, 21 (10 TTABVUE 297, 301–303).
16 Id. ¶¶ 12, 14–15 and Exs. D and L, (10 TTABVUE 297–98, 299–300, 308–11, 335, 358–62);
see also Declaration of Mark S. Mekker ¶¶ 4–8 and Exs. F–G (10 TTABVUE 314–21);
Declaration of Sara Ann Hawkey ¶¶ 3–4 (10 TTABVUE 323–24); Declaration of Melissa Lane
¶¶ 3 (10 TTABVUE 327); Declaration of Tyler Ingersoll ¶¶ 4–6 (10 TTABVUE 330);
Declaration of S. James Fredo ¶¶ 3–5 (10 TTABVUE 332–33); Declaration of John Glassman
¶¶ 3–6 (10 TTABVUE 338).
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trademark for musical sound recordings at least as early as 1999, when the mark was
used in connection with his second sound recording.17
Petitioner further avers in his declaration that starting as early as 1998, audio-
video recordings of his live musical performances were distributed and released for
marketing and advertising purposes in various media formats; uploaded to streaming
websites such as YouTube.com; and offered for sale on USB flash/thumb drive media
custom-printed with the mark SKITZO CALYPSO.18 Additionally, Petitioner has
attached to his declaration printouts of the following archived web pages retrieved
from the Internet Archive’s “Wayback Machine” that show use of his SKITZO
CALYPSO mark in connection with downloadable audio and video recordings:
 www.IUMA.com from December 26, 2001;19
 www.MP3.com from October 12, 2000;20
 www.mPulse.com from July 2, 2002.21
Each of these Internet materials shows the date on which it was accessed and its
source (e.g., URL), as required by Trademark Rule 2.122(e)(2), 37 C.F.R. § 2.122(e)(2).
Moreover, Petitioner avers in his declaration that these materials are true and correct
copies of the webpages as they existed on the dates shown in the Wayback Machine.22

17 Cox Decl. ¶ 14 (10 TTABVUE 299); Mekker Decl. ¶ 5 (10 TATBVUER 314); Fedo Decl. ¶ 4
(10 TTABVUE 333).
18 Cox. Decl. ¶¶ 18–19 (10 TTABVUE 301–02).
19 11 TTABVUE 37–38.
20 Id. at 39–41.
21 Id. at 42–43
22 Cox Decl. ¶ 19 (10 TTABVUE 302–03).
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The dates of the first two webpages are further corroborated by the copyright dates
on the pages. Accordingly, the proffered Internet materials are competent to show
use of the mark SKITZO CALYPSO in connection with downloadable audio and video
recordings at least as early as October 12, 2000.
In sum, based on the uncontroverted evidence of record, there is no genuine
dispute regarding Petitioner’s prior use of SKITZO CALYPSO as a trademark for
downloadable audio and video recordings and CDs (compact discs), all featuring and
promoting an alternative rock band.
D. Likelihood of Confusion
In determining the issue of likelihood of confusion and, in this case, whether there
are any genuine disputes of material fact, we consider all of the evidence of record
bearing on the factors delineated in In re E.I. DuPont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973) (the “DuPont factors”). See also In re Guild
Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1161–62 (Fed. Cir. 2019); M2 Software,
Inc. v. M2 Commc’ns., Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1946 (Fed. Cir. 2006).
We have considered each DuPont factor that is relevant and for which there is
evidence of record and argument. M2 Software, 78 USPQ2d at 1947; ProMark Brands
Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015). We treat as neutral
any DuPont factors for which there is no record evidence or argument.
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods. In re i.am.symbolic, llc,
866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v.
Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)) (“The
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likelihood of confusion analysis considers all DuPont factors for which there is record
evidence but ‘may focus ... on dispositive factors, such as similarity of the marks and
relatedness of the goods.”‘); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by
[Section] 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”).
1. Similarity or Dissimilarity of the Marks
Under the first DuPont factor, we consider the degree of similarity or dissimilarity
of Petitioner’s SKITZO CALYPSO mark and Respondent’s SKITSO mark in their
entireties, taking into account their appearance, sound, connotation and commercial
impression. DuPont, 177 USPQ at 567; Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014); Palm Bay
Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1691 (Fed. Cir. 2005). Similarity in any one of these elements will
suffice to find that the marks are similar. See, e.g., Krim-Ko Corp. v. Coca-Cola Co.,
390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in
either form, spelling or sound alone is likely to cause confusion.”); In re Inn at St.
John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) aff’d, 777 Fed. App’x 516 (Fed.
Cir. 2019); In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014); In re White Swan Ltd.,
8 USPQ2d 1534, 1536 (TTAB 1988).
Turning then to consideration of the parties’ marks, the word SKITZO in
Petitioner’s mark and Respondent’s SKITSO mark differ by only one letter, and both
SKITZO and SKITSO consist of six letters, beginning with “SKIT–“ and ending with
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the letter “O.” Moreover, there is no genuine dispute that the words SKITZO and
SKITSO sound nearly identical. See Krim-Ko Corp., 156 USPQ at 526 (finding the
aural similarities of the marks VEEP and BEEP to be such that confusion would be
likely); Centraz Indus. Inc. v. Spartan Chem. Co., 77 USPQ2d 1698, 1701 (TTAB
2006) (“what stands out in the comparison between the marks ICE SHINE and
ISHINE (stylized) is the similarity in sound … despite the stylization and different
spelling”); Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910, 1913
(TTAB 2000) (finding HOHOs and YOYO’S “highly similar in sound”); Beck & Co. v.
Package Distribs. of Am., Inc., 198 USPQ 573, 576 (TTAB 1978) (despite differences
in significance and appearance, likelihood of confusion found between BECK’S BEER
and EX BIER because the marks were “substantially similar in sound”).
Additionally, because neither party submitted evidence regarding the meaning of
SKITZO or SKITSO there is no basis for determining that the words have different
meanings or connotations. To the extent that SKITZO and SKITSO might have a
recognized meaning, and are similar in sound, both marks could be perceived as a
phonetic equivalent of the term “schizo,” thus evoking the idea of “schizophrenia.”23
See Interlego AG v. Abrams/Gentile Entm’t Inc., 63 USPQ2d 1862, 1863 (TTAB 2002)
(finding that consumers did not know the alleged derivation of applicant’s MEGO
mark, and therefore Applicant’ s MEGO mark and Opposer’s LEGO mark “are similar
in that they lack any connotation”). In sum the words SKITZO and SKITSO are

23 See 10 TTABVUE 145 (definition of “schizo”).
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virtually identical in sound and appearance, and either lack any connotation or share
the identical connotation.
While our ultimate determination regarding likelihood confusion must rest on a
consideration of the marks in their entireties, we may give one constituent term more
or less weight depending on its effect on the overall commercial impression of the
mark. Stone Lion, 110 USPQ2d at 1160–61; In re Viterra, 101 USPQ2d at 1908; In re
Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1948 (Fed. Cir. 2004).
Here, SKITZO is the dominant element of Petitioner’s SKITZO CALYPSO mark
because the word SKITZO is displayed prominently as the first word. See Palm Bay
Imps., 73 USPQ2d at 1692 (“Veuve” is the most prominent part of the mark VEUVE
CLICQUOT because “veuve” is the first word in the mark and the first word to appear
on the label); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and
CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e]
identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d
1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is
particularly significant because consumers typically notice those words first”); Presto
Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often
the first part of a mark which is most likely to be impressed in the mind of a purchaser
and remembered”).
Additionally, during the ex parte examination of Petitioner’s pleaded application,
the Examining Attorney required that Petitioner disclaim the word “CALYPSO”
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based on evidence that it merely describes a genre of music.24 Petitioner responded
by disclaiming the term CALYPSO.25 “When a mark consists of two or more words,
some of which are disclaimed, the word that not disclaimed is generally regarded as
the dominant or critical term.” See Citigroup Inc. v. Capital City Bank Grp., Inc., 637
F.3d 1344, 98 USPQ2d 1253, 1257 (Fed. Cir. 2011) quoted in In re Aquitaine Wine
USA, LLC, 126 USPQ2d 1181, 1186 (TTAB 2018).
In his amended answer, Respondent “admits that the [parties’] marks are
identical and likely to cause likeliness of confusion.”26 Respondent’s admission of
likelihood of confusion is not dispositive because likelihood of confusion is question of
law and “opinions of law [are] not admissions of fact and thus cannot serve ... as
admissions against interest ...” Brooks v. Creative Arts By Calloway, LLC, 93 USPQ2d
1823, 1826 (TTAB 2009); see also Interstate Brands Corp. v. Celestial Seasonings, Inc.,
576 F.2d 926, 198 USPQ 151, 153–54 (CCPA 1978) (opposer’s prior statement “that
confusion is unlikely to occur” was a legal conclusion that could not be an admission).
On the other hand, facts may be admitted. Interstate Brands, 198 USPQ at 153–54
(“Facts alone may be ‘admitted.’ In reaching the legal conclusion, the decision maker
may find that a fact, among those on which the conclusion rests, has been
admitted[.]”); see also Anheuser-Busch, Inc. v. Holt, 92 USPQ2d 1101, 1103 (TTAB
2009) (applicant’s factual admission in his answer that “opposer markets beer”

24 See 10 TTABVUE 128, 134–144.
25 Id. at 80.
26 Amended Answer ¶ 17 (9 TTABVUE 11).
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established opposer’s standing as a competitor of applicant in the beer market).
Obviously, the parties’ marks are not “identical.” We therefore construe Respondent’s
admission that the parties’ marks are “identical” as admitting the fact that the
parties’ marks are substantially similar.
In sum, upon consideration of Petitioner’s SKITZO CALYPSO mark and
Respondent’s SKITSO mark in their entireties, the word SKITZO is the dominant
element of Petitioner’s mark; the words SKITZO and SKITSO are virtually identical
in appearance, differing by only one letter; sound nearly identical and are virtually
phonetically equivalent; and either lack any connotation or share the identical
connotation. Accordingly, there is no genuine dispute that the parties’ marks are
similar.
2. Similarity of Goods and Services and Trade Channels
For the reasons explained above, at pages 3–4, we have construed Petitioner’s
Section 2(d) claim as based solely on his alleged prior use of the SKITZO CALYPSO
mark for “Digital media, namely, pre-recorded DVDs, downloadable audio and video
recordings, and CDs, all featuring and promoting an alternative rock band.”
Petitioner has established prior common law use of his mark for downloadable audio
and video recordings and CDs featuring and promoting an alternative rock band.
Respondent’s services are identified as “Entertainment services in the nature of live
musical performances; Music production services; Music video production” in
International Class 41.
We compare the parties’ respective goods and services to determine whether they
are similar, commercially related, or travel in the same trade channels. See Coach
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Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722–23
(Fed. Cir. 2012); Herbko Int’l, 64 USPQ2d at 1375.
A finding of likelihood of confusion as to any one of the Respondent’s services in
Class 41 would result in a finding of likelihood of confusion for the entire class.
Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986 (CCPA
1981); see also Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB
2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB
2004).
Petitioner has made of record 14 active, use-based third-party registrations of
marks registered in connection with musical sound recordings in Class 9 and
entertainment services in the nature of live musical performances in Class 41.27
These active third-party registrations show that Petitioner’s goods and Respondent’s
services are of a type that may emanate from a single source under a single mark.
See, e.g., Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1432
(TTAB 2013) (third-party registrations covering both wine and water were probative
of the relatedness of those beverages); L’Oreal S.A. v. Macron, 102 USPQ2d 1434,
1440 (TTAB 2012) (third-party websites and registrations showed that a single entity
may offer both parties’ products under the same mark); see also In re Aquamar, Inc.,
115 USPQ2d 1122, 1126 n.5 (TTAB 2015).
Respondent has not attempted to refute Petitioner’s evidence. To the contrary, in
the pretrial disclosures that Respondent submitted thirteen days after Petitioner

27 19 TTABVUE 160–197.
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filed the motion for summary judgment, Respondent stated that he has used the
SKITSO trademark in connection with “recorded media and related goods.”28
Petitioner, for his part, avers in his declaration that since at least as early as 1998 he
has been writing, performing, recording music, and distributing sound recordings of
the music under the mark SKITZO CALYPSO and has performed live concerts where
he also sold musical sound recordings.29 Thus, both parties have indicated that they
use their respective marks in connection with both musical sound recordings and live
musical performances. This further confirms that the parties’ respective goods and
services are related.
Additionally, Petitioner avers that “[Respondent] has used the identical sales and
distribution channels of trade to sell his recordings created by his music production
services under the mark SKITSO as [Petitioner] did for [his] recordings under the
mark SKITZO CALYPSO, that is, CDBaby and variously its 150+ affiliate retail
online outlets including as examples Amazon, (Apple) iTunes, and Pandora.30 While
we base our finding on the goods relied upon by Petitioner as the basis for his Section
2(d) claim, and the services identified by Respondent in his involved registration, we
note the evidence showing that both parties have offered digital downloads of their of
music through iTunes.com and CDBaby.com, and that Respondent filed “take down
notices” against Petitioner with iTunes and CDBaby seeking removal of Petitioner’s

28 See, e.g., 12 TTABVUE 3.
29 Cox Decl. ¶¶ 11 and 18 (10 TTABVUE 297, 301–02).
30 Id. ¶ 26 (10 TTABVUE 305).
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streaming and digital music and videos on the ground that Petitioner’s mark was
similar to Respondent’s mark.31
Based on the third-party registrations and the evidence that both parties have
used their respective marks in connection with both musical sound recordings and
live musical performances, and have offered their music in digital format that is
available to be downloaded over the Internet from some of the same websites, we find
that there is no genuine dispute that Petitioner’s downloadable audio and video
recordings and CDs featuring and promoting an alternative rock band and
Respondent’s services in the nature of live musical performances are related and will
travel through the same trade channels to the same classes of consumers.
3. Other DuPont Factors
Because Respondent did not submit arguments or evidence in response to the
summary judgment motion, Petitioner’s evidence and arguments regarding priority
and likelihood of confusion are uncontroverted.
Additionally, because Respondent did not submit any evidence or arguments,
there is no evidence to raise a genuine dispute of material fact regarding any other
DuPont factors. For example, there is no evidence regarding the conditions under
which the parties’ respective goods and services are purchased; the sophistication of
the likely purchasers of the goods and services; the number and nature of similar

31 See Cox Decl. ¶¶ 24–27 and Ex. W (10 TTABVUE 304–05 and 11 TTABVUE 15–16);
Petition to Cancel ¶ 16 (1 TTABVUE 5–6) and Amended Answer ¶ 16 (9 TTABVUE 4).
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marks in use on similar goods and services; and whether the parties have used their
respective marks concurrently and without evidence of actual confusion.
IV. Determination
In summary, Petitioner has met his burden of establishing that he is entitled to
summary judgment on his pleaded claim of likelihood of confusion under Trademark
Act Section 2(d). There are no genuine issues of material fact that Petitioner is
entitled to maintain a statutory cause of action; Petitioner has prior common law
rights in his SKITZO CALYPSO mark for downloadable audio and video recordings
and CDs featuring and promoting an alternative rock band; that the marks are
similar and the goods and services are related, and that the consumers and trade
channels overlap. We therefore conclude that there is likelihood of confusion between
Petitioner’s SKITZO CALYPSO mark for “downloadable audio and video recordings
and CDs featuring and promoting an alternative rock band” and Respondent’s
SKITSO mark for “Entertainment services in the nature of live musical
performances; Music production services; Music video production.”
Petitioner’s motion for summary judgment on his claim of likelihood of confusion
under Trademark Act Section 2(d) is granted. Registration No. 4819488 will be
cancelled in due course.