Maurice Whitev.Gary Benson

Trademark Trial and Appeal BoardNov 2, 2009

No. 91179429 (T.T.A.B. Nov. 2, 2009)

Mailed: November 2, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ______ Maurice White v. Gary Benson _____ Opposition No. 91179429 to application Serial No. 77026128 filed on September 11, 2007 _____ David I. Greenbaum of Edwards Angell Palmer & Dodge, LLP for Maurice White. Gary Benson, pro se. ______ Before Drost, Kuhlke, and Wellington, Administrative Trademark Judges. Opinion by Wellington, Administrative Trademark Judge: Applicant, Gary Benson, seeks registration on the Principal Register of the mark shown below for “arranging concerts; arranging health conferences; both with ecological theme” in International Class 41.1 1 Application Serial No. 77026128, filed October 20, 2006, is based on an allegation of first use of the mark in connection with the recited services anywhere and in commerce on February 15, 1988 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). The colors are claimed as features of the mark. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opposition No. 91179429 2 Opposer Maurice White has filed an opposition to registration of applicant's mark. In his notice of opposition, opposer pleaded ownership of three registrations for the mark EARTH WIND & FIRE (either in typed or standard characters) on or in connection with the following goods and services: Entertainment services rendered by a vocal and instrumental group;2 Sound and video recordings featuring music; DVDs featuring musical performances; compact discs and audio cassettes featuring music; providing downloadable ring tones, graphics, video and sound via a global computer network and wireless devices;3 and Clothing, namely, t-shirts, sweatshirts, jackets; headwear.4 Opposer alleges that he has used his mark on the identified goods and services long before any date applicant 2 Reg. No. 1084313 issued January 31, 1978, second renewal filed. 3 Reg. No. 3092308 issued May 16, 2006. 4 Reg. No. 3063785 issued February 28, 2006. Opposition No. 91179429 3 may rely upon; that the marks are similar “in sound, meaning, appearance and commercial impression”; that applicant’s recited services are “highly related to opposer’s music entertainment services”; that, based on these similarities, there is a likelihood of confusion as the public is “likely to associate” applicant’s services under his mark to opposer or “to believe that applicant’s services are sponsored, endorsed or licensed by opposer, or that there is some relationship between applicant and opposer.” Opposer requests that registration therefore be refused under Trademark Act Section 2(d), 15 U.S.C. § 1052(d). Applicant filed an answer to the notice of opposition.5 The answer is argumentative and does not actually respond to the notice of opposition by affirming or denying opposer’s allegations. As a result, it does not appear to comply with Rule 8(b) of the Federal Rules of Civil Procedure. Nevertheless, for purposes of this decision, we will construe the answer as denying all of the salient allegations in the notice of opposition. 5 Applicant filed this paper in response to a Board order (dated February 27, 2008) vacating default judgment and allowing applicant time to file an answer. Subsequent to applicant’s filing of the paper, the Board issued an order (dated April 8, 2008) referencing the paper as an “answer” and, noting that applicant failed to include proof of service of a copy of the answer on opposer. As a result, we forwarded a copy to opposer. Opposition No. 91179429 4 The record consists of the pleadings; the file of the involved application; and opposer’s pleaded registrations.6 Neither party took testimony or offered any evidence during their assigned trial periods. Both opposer and applicant filed briefs. Before discussing the merits of opposer’s claim, we address a few preliminary matters. First, applicant filed concurrently with his trial brief a motion to amend the subject application’s recitation of services. By way of his motion, applicant seeks to delete the phrase “arranging concerts” from the recitation of services. The motion does not contain opposer’s express or implied consent to the proposed amendment nor does it indicate any attempt by applicant to obtain such consent. Furthermore, applicant does not provide an explanation as to why the motion was not previously filed or why applicant waited until essentially the last moment to indicate that he was willing to accept the proposed deletion. When a motion to amend an application is made without the consent of the other party, it should be made prior to trial. See TBMP § 514.03 (2d ed. rev. 2004). In order to give the other party or parties fair notice thereof, an 6 As noted in the Board’s January 16, 2009 order, the pleaded registrations are of record by virtue of opposer submitting copies of the registrations obtained from the TESS database of the USPTO, in accordance with Trademark Rule 2.122(d)(1) (as amended for cases commenced after August 31, 2007). Opposition No. 91179429 5 unconsented motion to amend which is not made prior to trial, and which, if granted, would affect the issues involved in the proceeding, normally will be denied by the Board unless the matter is tried by express or implied consent of the parties pursuant to Fed. R. Civ. P. 15(b). Id. Here, the matter clearly was not tried by the parties. In view thereof, applicant’s motion to amend the subject application is denied as untimely. See Personnel Data Systems, Inc. v. Parameter Driven Software, Inc., 20 USPQ2d 1863 (TTAB 1991) (defendant’s motion to restrict identification of goods in involved registration, filed with brief on case, denied); and Peopleware Systems, Inc. v. Peopleware, Inc., 226 USPQ 320 (TTAB 1985). Another preliminary matter involves applicant’s attachment of various materials with his brief. This is improper and applicant may not rely on these materials because a brief may not be used as a vehicle for the introduction of evidence. Hard Rock Café Intentional (USA) Inc. v. Elsea, 56 USPQ2d 1504, 1511 (TTAB 2000). See also TBMP § 704.05(b) and the cases cited therein. Accordingly, the attached materials have been given no consideration. Standing and Priority Because opposer properly made his pleaded registrations of record, opposer has established his standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 Opposition No. 91179429 6 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). The pleaded registrations of record also serve to establish opposer’s Section 2(d) priority of use. King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Likelihood of Confusion Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). With respect to the parties’ marks, we initially note that applicant’s proposed mark incorporates opposer’s mark, EARTH WIND & FIRE, in its entirety. In cases such as this, a likelihood of confusion has frequently been found. “When one incorporates the entire arbitrary mark of another into a Opposition No. 91179429 7 composite mark, the inclusion of a significant, nonsuggestive element will not necessarily preclude a likelihood of confusion. [Internal citations omitted]. An inclusion of a merely suggestive or descriptive element, of course, is of much less significance in avoiding a likelihood of confusion.” The Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and surfer design is similar the mark CONCEPT). See also Coca-Cola Bottling Co. v. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (BENGAL LANCER and Bengal Lancer soldier design is similar to the mark BENGAL); In re Bissett-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (E-CELL is similar to the mark E). Thus, the importance of applicant’s incorporation of opposer’s mark depends greatly on the degree of suggestiveness of that mark in connection with both parties’ goods and/or services. In this regard, EARTH WIND & FIRE is arbitrary in connection with opposer’s music entertainment services. In relation to applicant’s mark, there is no evidence of record, but it stands to reason that the terms “earth” and “wind” may be considered suggestive when used in connection with applicant’s ecologically-themed services. Nevertheless, we note that applicant is not just incorporating a single word, but opposer’s entire mark, that is, three separate words and in the same order. Again, we Opposition No. 91179429 8 have no evidence that opposer’s mark, as a phrase, has any meaning in the context of applicant’s services. Thus, even allowing for the suggestive nature of opposer’s mark in connection with applicant’s services, the fact that applicant has incorporated the identical phrase, i.e., opposer’s mark, greatly increases the level of similarity between the marks. We do not disregard the additional matter in applicant’s mark and, as required, we consider the parties’ marks in their totality. Applicant’s mark contains the additional wording, WE NEED A REBIRTH OF THE EARTH; however, we note that this phrase appears in black lettering above and distinctly apart from the common portion, EARTH WIND & FIRE, which appears in bright red letters on a yellow border. The literal portions are separable and consumers viewing applicant’s mark will be able to easily pull out the portion of the mark that is identical to opposer’s mark. And for those consumers already familiar with opposer’s mark, they are likely to perceive applicant’s mark as merely the addition of a phrase or slogan and a design to opposer’s mark. As to the design feature of applicant’s mark, again we must consider this element of applicant’s mark in connection with determining the overall degree of similarity of the parties’ marks. However, as we have often stated, a design Opposition No. 91179429 9 portion in the mark is usually accorded less weight than the literal element(s) because it is the word portion of the mark that consumers use to request and to identify respondent's products or services. In re Dakin's Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 2001); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB 1985). In any event, we find that to the extent the design in applicant’s mark contributes to the overall commercial impression of the mark, it may reinforce the literal element EARTH WIND & FIRE. The design is clearly an effort to provide, in part, a pictorial representation of the phrase, i.e., it contains a fanciful picture of “the earth” (land and water), wind blowing, and fire. Ultimately, when considered in their totality, we find the parties’ marks are highly similar. Of course, applicant’s adoption of opposer’s mark into his mark figures significantly in our determination. The design portion in applicant’s mark underscores the significance of that same literal element. Accordingly, the du Pont factor involving the level of similarity of the marks weighs heavily in favor of opposer and finding a likelihood of confusion. This brings us then to our consideration of the similarities between opposer's and applicant's services. We must make our determinations under these factors based on Opposition No. 91179429 10 the services as they are recited in the application and registrations, respectively. See In re Elbaum, 211 USPQ 636 (TTAB 1981). Again, applicant’s services, as recited in the application, are “arranging concerts; arranging health conferences; both with ecological theme” and opposer’s services, as recited in one of his registrations, are “entertainment services rendered by a vocal and instrumental group.” A “concert” is defined as “a performance given by one or more singers or instrumentalists or both.”7 Thus, taken in their literal meanings, the respective services are closely related. Applicant’s arrangement of concerts, albeit with an ecological theme, would likely involve vocal and instrumental musical groups providing entertainment services. Consumers familiar with opposer’s entertainment services rendered under the mark EARTH WIND & FIRE are very likely to believe opposer will be performing or somehow connected to applicant’s concerts being advertised under a mark containing the phrase EARTH, WIND & FIRE. Even though the concerts have an ecological theme, it would be reasonable for the consumer to believe that the musicians are offering their services to benefit the cause. In fact, applicant indicated that such collaboration was the impetus 7 The American Heritage Dictionary of the English Language (Fourth Edition 2000). The Board may take judicial notice of dictionary definitions. University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Opposition No. 91179429 11 behind including “arranging concert” services stating, “[t]he phrase was put in [the recitation of services] for the Sole Purpose only Of and if Earth Wind and Fire [opposer] the band wanted to Merge/ engage with this Pre- Established Eco Group [applicant].” Applicant’s Motion to Amend Recitation of Services (filed with Brief on August 6, 2009, use of upper and lower case lettering in original). There is no evidence that the purchasers or channels of trade would be different or that any other du Pont factor is significant. We therefore treat them as neutral. Considering all of the du Pont factors as to which there is evidence, we find that applicant's mark, WE NEED A REBIRTH OF THE EARTH – EARTH WIND & FIRE (and design) for “arranging concerts; arranging health conferences; both with ecological theme” is likely to cause confusion with opposer's mark EARTH WIND & FIRE for goods and services that include “entertainment services rendered by a vocal and instrumental group.” Decision: The opposition is sustained and registration to applicant is refused.