Fab Four Enterprises

Trademark Trial and Appeal BoardAug 30, 2017

No. 86731031 (T.T.A.B. Aug. 30, 2017)

This Opinion is not a Precedent of the TTAB Mailed: August 30, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Fab Four Enterprises _____ Serial No. 86731031 _____ Travis D. Wilson of Law Office of Travis D. Wilson, for Fab Four Enterprises. Jennifer O’Brien, Trademark Examining Attorney, Law Office 120, David Miller, Managing Attorney. _____ Before Mermelstein, Ritchie, and Hightower, Administrative Trademark Judges. Opinion by Ritchie, Administrative Trademark Judge: Fab Four Enterprises (“Applicant”) seeks registration on the Principal Register of the mark FAB FOUR STORE, in standard character format, for services identified as “on-line retail store services featuring clothing and collectable goods,” in International Class 35.1 The Trademark Examining Attorney refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on 1 Application Serial No. 86731031 was filed on August 20, 2015, under Section 1(a) of the Trademark Act, claiming dates of first use on August 29, 2006 and first use in commerce on September 9, 2006, and disclaiming the right to use “STORE” apart from the mark as shown. Serial No. 86731031 - 2 - the ground that Applicant’s mark, when applied to the identified services, so resembles the previously registered marks shown below, all registered to the same registrant, as to be likely to cause confusion, mistake, or to deceive: 1. THE FAB FOUR, in standard character format, for “entertainment, namely, live performances by a musical band,” in International Class 41;2 2. for, “entertainment, namely, live performances by a musical band,” in International Class 41;3 3. THE FABFOUR, in standard character format, for “entertainment, namely, live performances by musical bands,” in International Class 41;4 and 2 Registration No. 4142566 issued May 15, 2012. Section 8 and 15 affidavit accepted and acknowledged. 3 Registration No. 3879562 issued November 23, 2010. Section 8 and 15 affidavit accepted and acknowledged. 4 Registration No. 3985740 issued June 28, 2011. Section 8 and 15 affidavit accepted and acknowledged. Serial No. 86731031 - 3 - 4. for “entertainment, namely, live musical concerts,” in International Class 41.5 The Examining Attorney further refused registration of Applicant’s mark under Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a), on the ground that Applicant’s mark falsely suggests a connection with THE BEATLES. When the refusals were made final, Applicant filed this appeal, which is fully briefed. I. Likelihood of Confusion Our determination of the issue of likelihood of confusion is based on an analysis of all the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 5 Registration No. 3736064 issued January 12, 2010. Section 8 and 15 affidavit accepted and acknowledged. Serial No. 86731031 - 4 - USPQ2d 1531 (Fed. Cir. 1997). We consider the du Pont factors for which there were arguments and evidence. The others, we consider to be neutral. For purposes of our likelihood of confusion analysis, we focus on the most relevant cited registration, Registration No. 4142566 (THE FAB FOUR). We find this mark to be the most relevant of the cited registrations for our du Pont analysis. Accordingly, if we find a likelihood of confusion as to this cited registration, we need not find it as to the others. On the other hand, if we do not reach that conclusion, we would not find it as to the other cited registrations either. See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). The Similarity/Dissimilarity of the Marks We consider and compare the appearance, sound, connotation and commercial impression of the marks in their entireties. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). In comparing the marks, we are mindful that 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 services offered under the respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff'd mem., 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 Industries, Inc. v. Oliver & Serial No. 86731031 - 5 - Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). The mark in the Registration No. 4142566 is THE FAB FOUR, in standard characters. Applicant’s mark is FAB FOUR STORE, also in standard characters. Both marks contain the shared and dominant term, “FAB FOUR.” In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“[T]here 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.”). Applicant has disclaimed the descriptive term “STORE.” Id. Similarly, the article “THE” has little or no source- identifying capacity as used in the registered mark. In re Thor Tech, Inc., 90 USPQ2d 1634, 1635 (TTAB 2009) (“The addition of the word “The” at the beginning of the registered mark does not have any trademark significance.”). We consider the commercial impressions and connotations of the marks, in their entireties. Applicant argues that the commercial impressions and connotations are different, stating specifically during examination that “[i]n this context, Applicant’s trademark creates a connotation of goods related to the Beatles Band.”6 We note in this regard that Applicant’s specimens all reference the offering of clothing and collectable goods that feature The Beatles: 6 June 27, 2016 Response to Office Action, at 8. Applicant also references in its brief that: “FAB FOUR STORE is a toast made prior taking [sic] a tequila shot, used and understood as ‘bottoms up.’ ‘Bottoms up’ is not typical for drinking wine.” 4 TTABVUE 15. This argument appears to be misplaced, and to the extent Applicant intended it, there is no evidence of record to support the argument in this case. Serial No. 86731031 - 6 - There is nothing, however, to indicate that consumers would understand THE FAB FOUR to have a different commercial impression than that created by the same, Serial No. 86731031 - 7 - shared wording in Applicant’s mark, i.e., The Beatles. In particular, Applicant’s mark gives the commercial impression of an online store selling attire related to The Beatles, while the mark in the cited registration gives the commercial impression of live performance by a musical band paying tribute to The Beatles. Accordingly, we find that the marks, when considered in their entireties, are highly similar in commercial impression, as well as similar in sight and sound, and this first du Pont factor weighs heavily in favor of finding a likelihood of confusion. Services/Channels of Trade/Classes of Purchasers We consider next the relatedness of the services. The cited Registration No. 4142566 identifies “entertainment, namely, live performances by a musical band.” Applicant identifies “on-line retail store services featuring clothing and collectable goods.” Applicant argues that the services are not related. The Examining Attorney, however, submitted web evidence showing third parties offering both live performances by a musical band, generally by advertising tour dates, and on-line retail of clothing, often directly related to the musical tour. Some examples include tour dates and clothing from Metallica;7 Brue Springsteen;8 Guns N’ Roses;9 Zac Brown Band;10 and Heart.11 The Examining Attorney also submitted evidence that Registrant itself offers on-line retail of clothing and collectable goods associated with 7 Attached to December 9, 2015 Office Action, at 14-18. 8 Attached to December 9, 2015 Office Action, at 19-28. 9 Attached to July 27, 2016 Final Office Action, at 2-6. 10 Attached to July 27, 2016 Final Office Action, at 13-18. 11 Attached to July 27, 2016 Final Office Action, at 44-47. Serial No. 86731031 - 8 - its live musical entertainment.12 Although Applicant argues that the channels of trade are not related, the above-cited web evidence indicates that consumers may expect to find “on-line retail store services featuring clothing and collectable goods,” as offered by Applicant, and “entertainment, namely, live performances by a musical band,” as offered by Registrant, via the same channels, such as when they seek clothing related to a musical tour of a band and information related to the tour itself, both of which can be viewed and/or purchased at the official website of a band, as noted above. We find these du Pont factors to also favor finding a likelihood of confusion. II. Conclusion on Likelihood of Confusion On balance, after considering all of the arguments and evidence of record as they pertain to the relevant du Pont factors, we find that the marks are similar in sight and sound, and highly similar in commercial impression, and that the services are related and would be expected to travel through some of the same channels of trade to some of the same consumers. We therefore find that Applicant’s mark FAB FOUR STORE for “on-line retail store services featuring clothing and collectable goods” is likely to cause confusion with the cited mark THE FAB FOUR in Registration No. 4142566 for “entertainment, namely, live performances by a musical band.”13 12 Attached to December 9, 2015 Office Action, at 37-38. 13 Due to our conclusion on likelihood of confusion, we do not find it necessary to consider the Section 2(a) refusal. Serial No. 86731031 - 9 - Decision: The Section 2(d) refusal to register Applicant’s mark for the services in International Class 35 is affirmed as to Registration No. 4142566.