National Academy of Recording Arts & Sciences, Inc.v.Robert Repko

Trademark Trial and Appeal Board

Aug 24, 2012

No. 91196507 (T.T.A.B. Aug. 24, 2012)

Baxley Mailed: August 24, 2012

Opposition No. 91196507

National Academy of Recording
Arts & Sciences, Inc.

v.

Robert Repko

Before Quinn, Holtzman, and Ritchie,
Administartive Trademark Judges,

By the Board:

Robert Repko (“applicant”) filed an application to
register the mark GLAMMY AWARDS in standard character form
for “[p]roviding recognition and incentives by the way of
awards to demonstrate excellence in the field of arts and
entertainment, namely, club nightlife,” in International
Class 41.1
National Academy of Recording Arts & Sciences, Inc.
(“opposer”) filed a notice of opposition to registration of
applicant’s mark based on likelihood of confusion with its
previously used and registered marks GRAMMY AWARDS and

1 Application Serial No. 77900628, filed December 23, 2009, based
on an assertion of use in commerce under Trademark Act Section
1(a), 15 U.S.C. Section 1051(a), and alleging December 7, 1997 as
the date of first use anywhere and the date of first use in
commerce. The application includes a disclaimer of “AWARDS.”
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Opposition No. 91196507
2
GRAMMY under Trademark Act Section 2(d), 15 U.S.C. Section
1052(d), and dilution under Trademark Act Section 43(c), 15
U.S.C. Section 1125(c).2 Applicant, in his answer, denied
the salient allegations of the notice of opposition.
This case now comes up for consideration of opposer’s
motion (filed March 27, 2012) for summary judgment on its
pleaded Section 2(d) claim based on likelihood of confusion
between its registered GRAMMY AWARDS mark and applicant’s
GLAMMY AWARDS mark. The motion has been fully briefed.
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine disputes as to
material facts, thus leaving the case to be resolved as a

2 Opposer’s eight pleaded registrations include:
Registration No. 3202218, issued January 23, 2007, for the mark
GRAMMY AWARDS in standard character form for “[e]ducational
services, namely, providing incentives to people to demonstrate
excellence in the field of music and video arts and sciences
through the issuance of awards; entertainment services, namely,
live performances by musical artists and musical groups;
entertainment in the nature of televised music awards programs;
an annual awards program for the presentation of awards in
recognition of distinguished achievement in the field of music;
providing a website featuring prerecorded music, musical
performances, audio clips, video clips, photographs, news,
reviews and other multimedia articles in connection with the
field of music” in International Class 41 (emphasis added). The
registration includes a disclaimer of AWARDS.
Opposer included copies of its five pleaded registrations for
the mark GRAMMY AWARDS that were obtained from the USPTO's
Trademark Applications and Registrations Retrieval (TARR)
database showing current status and title thereof. See Trademark
Rule 2.122(d)(1). Although opposer referred in its notice of
opposition to three registrations for the mark GRAMMY and
indicated that copies thereof were attached as exhibits to the
notice of opposition, no such copies were included with the
notice of opposition.

Opposition No. 91196507
3
matter of law. See Fed. R. Civ. P. 56(c). In deciding
motions for summary judgment, the Board must follow the
well-established principles that, in considering the
propriety of summary judgment, all evidence must be viewed
in a light favorable to the non-movant, and all justifiable
inferences are to be drawn in the nonmovant's favor. The
Board may not resolve disputes of material fact; it may
only ascertain whether such disputes are present. See
Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25
USPQ2d 2027 (Fed. Cir. 1993); Opryland USA Inc. v. Great
American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471
(Fed. Cir. 1992); Olde Tyme Foods Inc. v. Roundy's Inc.,
961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
When the moving party's motion is supported by
evidence sufficient to indicate that there is no genuine
dispute as to any material fact, and that the moving party
is entitled to judgment, the burden shifts to the nonmoving
party to demonstrate the existence of specific genuinely-
disputed facts that must be resolved at trial. The
nonmoving party may not rest on the mere allegations of its
pleadings and assertions of counsel, but must designate
specific portions of the record or produce additional
evidence showing the existence of a genuine issue of
material fact for trial. In general, to establish the
Opposition No. 91196507
4
existence of disputed facts requiring trial, the nonmoving
party "must point to an evidentiary conflict created on the
record at least by a counterstatement of facts set forth in
detail in an affidavit by a knowledgeable affiant."
Octocom Systems Inc. v. Houston Computer Services Inc., 918
F.2d 937, 941, 16 USPQ2d 1783, 1786 (Fed. Cir. 1990).
As a party moving for summary judgment in its favor on
its Section 2(d) claim, opposer must establish that there
is no genuine dispute that: (1) it has standing to
maintain this proceeding; (2) it is the prior user of its
pleaded mark; and (3) contemporaneous use of the parties'
respective marks on their respective services would be
likely to cause confusion, mistake or to deceive consumers.
See Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc.,
60 USPQ2d 1733, 1735 (TTAB 2001). If the nonmoving party
fails to make a sufficient showing on an essential element
of its case with respect to which it would have the burden
of proof at trial, judgment as a matter of law may be
entered in favor of the moving party. See Fed. R. Civ. P.
56(c); Celotex Corp. v. Catrett, 477 U.S. at 322-23.
With regard to whether opposer has standing to
maintain this proceeding, opposer did not expressly seek
entry of judgment on the ground that there is no genuine
dispute as to its standing; however, applicant has not
Opposition No. 91196507
5
challenged opposer's standing to oppose the involved
applicant. Moreover, opposer has submitted as exhibits to
the notice of opposition copies of five of its pleaded
registrations, including Registration No. 3202218, which
were obtained from the USPTO's Trademark Applications and
Registrations Retrieval (TARR) database showing current
status and title thereof. See Trademark Rule 2.122(d)(1);
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842 (Fed. Cir. 2000). Therefore, there is no genuine
dispute of material fact on opposer’s standing.
Further, priority is not an issue herein because
opposer has submitted the aforementioned copies of status
and title copies of five of its pleaded registrations
obtained from the USPTO's Trademark Applications and
Registrations Retrieval (TARR) database. See Trademark
Rule 2.122(d)(1); King Candy Co. v. Eunice King's Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Turning to the likelihood of confusion issue,
applicant admitted during his discovery deposition that
GRAMMY AWARDS is a famous mark in the United States. See
deposition of Robert Repko at 110. Famous marks enjoy a
broad scope of protection or exclusivity of use in view of
their extensive public recognition and renown. See Bose
Opposition No. 91196507
6
Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d
1303, 1305 (Fed. Cir. 2002).
Two key factors in this case are the degree of
similarity of the parties' marks and the degree of
similarity of their respective services. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976). As to the word marks at issue,
opposer’s mark GRAMMY AWARDS (with AWARDS disclaimed) and
applicant’s mark GLAMMY AWARDS (with AWARDS disclaimed),
the marks rhyme and differ by a single consonant. The test
of likelihood of confusion is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but whether the marks are sufficiently similar that there
is a likelihood of confusion as to the source of the goods
or services. See, e.g., In re Iolo Techs., LLC, 95 USPQ2d
1498, 1499 (TTAB 2010). When comparing the marks, “[a]ll
relevant facts pertaining to appearance, sound, and
connotation must be considered before similarity as to one
or more of those factors may be sufficient to support a
finding that the marks are similar or dissimilar.” Recot,
Inc. v. M.C. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894,
1899 (Fed. Cir. 2000). Even if we assume, as applicant
argues, that the words GRAMMY and GLAMMY are “different
words with different meanings,” we must bear in mind the
Opposition No. 91196507
7
admitted fame of the GRAMMY AWARDS mark. In comparing
opposer’s famous mark with applicant’s mark, we find that
there is no genuine dispute that the marks GRAMMY AWARDS
and GLAMMY AWARDS are substantially similar in sound and
appearance, and engender similar overall commercial
impressions. See In re Appetito Co. Inc., 3 USPQ2d 1553
(TTAB 1987).
With regard to the services at issue, the Board's
determination of likelihood of confusion is based upon the
parties' services as they are identified in the application
and registrations at issue, not on how the parties may
actually use their marks. See Canadian Imperial Bank v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir.
1992). The Board must presume that the scope of the
services at issue encompasses all of the services of the
nature and type described, that they travel in all channels
of trade normal for those services, and that they are sold
to all classes of prospective purchasers for those
services. See In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
The more similar the marks at issue, the less similar the
goods or services need to be to cause a likelihood of
confusion. See In re Shell Oil Co., 992 F.2d 1204, 1207,
26 USPQ2d 1687, 1689 (Fed. Cir. 1993).
Opposition No. 91196507
8
The recited services in opposer’s pleaded Registration
No. 3202218 include “an annual awards program for the
presentation of awards in recognition of distinguished
achievement in the field of music.” The Board must presume
that the scope of opposer’s services encompasses all
services of the nature and type described, including awards
in recognition of distinguished achievement in the field of
live and recorded musical performances.
Applicant’s services are identified in his application
as “[p]roviding recognition and incentives by the way of
awards to demonstrate excellence in the field of arts and
entertainment, namely, club nightlife.” In his brief,
applicant argues that “[t]he GLAMMY AWARDS strictly honors
the LGBT3 community and their glamorous accomplishments of
varied talents such as performance art, dance performance,
burlesque performance, stripping, bartending, dressing,
make up, hair style, club promotion, door god or goddess
etc.” However, applicant admitted in his discovery
deposition that awards in the field of arts and
entertainment presented through his services include awards
for live musical performances. In particular, applicant
admitted that the GLAMMY AWARDS include presentations of

3 The record herein indicates that LGBT is an acronym for
Lesbian, Gay, Bisexual, and Transgender.
Opposition No. 91196507
9
awards for live musical performances and performers,
including “Entertainer of the Year,” “Breakthrough Artist,”
“Best Vocalist,” “Best Duo or Group,” and “Best DJ.” Repko
discovery deposition at 72-73, 77-80. Because the
respective services include presentation of awards for live
musical performances, the services are essentially
overlapping.
Based on the foregoing, we find that opposer has met
its burden by supporting its motion with evidence that
establishes its right to judgment. Accordingly, the burden
shifts to applicant to proffer countering evidence which
establishes that there is a genuine factual dispute for
trial. However, applicant did not submit any evidence
whatsoever, and did not point to evidence submitted by
opposer that is sufficient to show that there is a genuine
issue of material fact for trial.
In summary, considering the substantial similarity in
sound, appearance and commercial impression of opposer’s
GRAMMY AWARDS mark and applicant’s GLAMMY AWARDS mark and
the overlapping nature of the services as identified in
opposer’s pleaded Registration No. 3202218 and applicant’s
involved application, we find that there is no genuine
dispute of material fact for trial, and that confusion is
likely to result.
Opposition No. 91196507
10
In view thereof, we hereby grant opposer's motion for
summary judgment on its pleaded Section 2(d) claim.4
Judgment is hereby entered against applicant on the pleaded
Section 2(d) claim, the opposition is sustained, and
registration to applicant is refused.

4 Opposer’s dilution claim is moot.