Saguaro Productions Inc.

Trademark Trial and Appeal Board

Jan 13, 2012

No. 85016667 (T.T.A.B. Jan. 13, 2012)

Mailed:
January 13, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In Re Saguaro Productions Inc.
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Serial No. 85016667
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Theresa Campbell, in pro per, for Saguaro Productions Inc.1

Tamara G. Frazier, Trademark Examining Attorney, Law Office 116
(Michael W. Baird, Managing Attorney).
_______

Before Quinn, Holtzman, and Ritchie, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Saguaro Productions LLC (“applicant”) filed an application
to register on the Principal Register the mark SAGUARO
PRODUCTIONS, and design, as set forth below,2 for services listed
as “production and distribution of television shows and movies,”

1 Ms. Campbell filed the appeal for applicant. She is not apparently
an attorney. She is listed on the application as applicant’s
president.
2 Serial No. 865016667, filed April 18, 2010, pursuant to Section 1(a)
of the Trademark Act, 15 U.S.C. §1051(a), alleging dates of first use
on May 1, 2006 and first use in commerce on June 1, 2006, and
disclaiming the exclusive right to use the term “PRODUCTIONS” apart
from the mark as shown. The application contains the following
description of the mark: The mark consists of a green saguaro cactus inside
of a green circle both outlined in black, the wording "SAGUARO PRODUCTIONS"
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 85016667
2
in International Class 41:

The Trademark Examining Attorney refused registration of
applicant’s mark under Section 2(d) of the Trademark Act of
1946, 15 U.S.C. §1052(d), on the ground that applicant’s mark so
resembles the registered mark SAGUARO ROAD RECORDS,3 in standard
character format, for services listed as “entertainment
services, namely, providing pre-recorded music, information in
the field of music, and commentary and articles about music, all
on-line via a global computer network,” in International Class
41, as well as the registered mark SAGUARO ROAD RECORDS, and
design, as shown below, for goods listed as “musical sound
recordings and video recordings featuring musical performances;

appears in black, the entire mark is located inside of a green rectangle with
black outline.
3 Registration No. 3718244, issued December 1, 2009, disclaiming the
exclusive right to use the term “RECORDS” apart from the mark as
shown.
Serial No. 85016667
3
downloadable musical sound recordings and video recordings,”4 in
International Class 9, both owned by the same registrant, that
when used on or in connection with applicant’s identified goods,
it is likely to cause confusion or mistake or to deceive:

Upon final refusal of registration, applicant filed a
timely appeal. Both applicant and the examining attorney filed
briefs. For the reasons discussed herein, the Board affirms the
refusal to register.
Likelihood of Confusion
We base our determination under Section 2(d) on an analysis
of all of the probative evidence of record bearing on a

4 Registration No. 3652195, issued July 7, 2009, disclaiming the
exclusive right to use the term “RECORDS” apart from the mark as
Serial No. 85016667
4
likelihood of confusion. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (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, 29 (CCPA 1976) (“The fundamental
inquiry mandated by § 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods and
differences in the marks”). We discuss each of the du Pont
factors as to which applicant or the examining attorney
submitted argument or evidence.
The Marks
We consider and compare the appearance, sound, connotation
and commercial impression of the marks in their entireties. In
re E. I. du Pont De Nemours & Co., 177 USPQ at 567. The
question 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 their entireties that
confusion as to the source of the goods or services offered
under the respective marks is likely to result. The focus is on
the recollection of the average purchaser, who normally retains

shown.
Serial No. 85016667
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a general rather than a specific impression of trademarks. In
re Jack B. Binion, 93 USPQ2d 1531 (TTAB 2009); Sealed Air Corp.
v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
The mark in the application consists of the words SAGUARO
PRODUCTIONS, with accompanying design, as follows:

We find that the dominant portion of applicant’s mark is
the literal term, “SAGUARO PRODUCTIONS,” and in particular
“SAGUARO,” since the term “PRODUCTIONS” describes the services
for which applicant seeks registration and is appropriately
disclaimed. The presence of the cactus design does not detract
from the commercial impression created by the words since
consumers are likely to call for, or refer to, the services by
their name. In any event, as applicant has admitted in the
description of its mark, the cactus design in the mark is of a
saguaro cactus. Therefore, it reinforces the literal portion of
the mark. CBS Inc. v. Morrow, 708 F.2d 1579, 1581-82 (Fed. Cir.
1983); In re Dakin’s Miniatures Inc., 59 UPSQ2d 1593, 1596 (TTAB
2001); In re Appetito Provisions Co., Inc., 3 USPQ2d 1553, 1554
(TTAB 1987); See also In re National Data Corp., 224 USPQ 749,
Serial No. 85016667
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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.”).
The cited registration No. 3718244 consists solely of the
term “SAGUARO ROAD RECORDS.” The cited registration No. 3652195
consists of the words SAGUARO ROAD RECORDS with a design
element, as follows:

Although the design is not insignificant in this mark, the
literal portion, consisting of the words “SAGUARO ROAD RECORDS”
stands out as the central portion of the mark, and the words by
which consumers will ask, or call, for the services. See cases
Serial No. 85016667
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cited supra. For both of the cited registrations, since the
term “RECORDS” describes registrant’s services and is
appropriately disclaimed, we find the words “SAGUARO ROAD” to be
dominant. As with applicant’s mark, the presence of what is
apparently a saguaro cactus in the mark merely serves to
emphasize the literal portion.
Applicant argued that numerous third-party marks which
share matching or common characteristics to each other (although
not to the registrations or to the application at issue in this
proceeding) co-exist with each other. The evidence submitted by
applicant does not show an established practice regarding the
addition of a word, nor more specifically when a word is added
to the inherently distinctive word “SAGUARO.” Furthermore, the
Board is not bound by those decisions or those records, which
are not, in any event, of record in this proceeding. As the
Federal Circuit instructs, every case must be decided on its own
merits. In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564 (Fed.
Cir. 2001).
Accordingly, we find that the commercial impressions of the
mark in the application and that in each of the cited
registrations are similar in that they begin with the same,
arbitrary term, “SAGUARO,” and then describe a function or
feature of the services identified, i.e., either “productions”
or “records.” See Presto Products, Inc. v. Nice-Pak Products
Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)(“…[it is] a matter of some
importance since it is often the first part of a mark which is
Serial No. 85016667
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most likely to be impressed upon the mind of a purchaser and
remembered.”). See also Palm Bay Imports, 73 USPQ2d at 1692
(“The presence of this strong distinctive term as the first word
in both parties’ marks renders the marks similar, especially in
light of the largely laudatory (and hence non-source
identifying) significance of ROYALE.”).
In addition, consumers are often known to use shortened
forms of names, and it is likely that both applicant and
registrant and their services are referred to as SAGUARO. Cf.
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 219
(CCPA 1978) [Rich, J., concurring: “the users of language have
a universal habit of shortening full names – from haste or
laziness or just economy of words”]. See In re National Data
Corp., 224 USPQ at 750 (descriptive or disclaimed matter is
generally considered a less dominant portion of a mark).
Viewing the marks in their entireties, we find that the
strong similarities in commercial impression outweigh the
differences of the marks as to their sight and sound, and this
du Pont factor weighs in favor of finding a likelihood of
consumer confusion.

The Goods and Services and Channels of Trade

Next we consider the similarities or dissimilarities of the
goods and services. We keep in mind that the test is not
whether consumers would be likely to confuse the goods and
services, but rather would be likely to be confused into
Serial No. 85016667
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believing that the goods and services emanate from a single
source. 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 unpublished, No. 92-1086 (Fed. Cir. June 5,
1992).
Applicant’s identification of services includes “production
and distribution of television shows and movies” while the
identification of goods and services in the cited registrations
are for “musical sound recordings and video recordings featuring
musical performances; downloadable performances” and for
“entertainment services, namely, providing pre-recorded music,
information in the field of music, and commentary and articles
about music, all on-line via a global computer network.” In an
email applicant submitted into the record, applicant admits it
did both “film production” and “acquiring music rights” on the
same movie that applicant was producing (September 10, 2010
response to office action). The same response to the office
action includes an email to applicant with the subject “Credits
for music tracks.” Id. These entries by applicant both show
applicant’s understanding of the relatedness of “musical sound
recordings” as identified in cited registration No. 3652195 and
“production and distribution of television shows and movies” as
identified in the application. To further show that
Serial No. 85016667
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relatedness, the examining attorney submitted evidence of a
television show production seeking musical recordings around the
world, at www.fashiontelevision.com. The examining attorney
further submitted evidence of television channels such as MTV
(Music Television) that both produce television shows, as
identified in the application, and feature “video recordings
featuring musical performances” as identified in the
registration No. 3652195. www.wikipedia.com. See In re IP
Carrier Consulting Group, 84 USPQ2d 1028, 1033-34 (TTAB 2007)
(“the Board will consider evidence taken from Wikipedia so long
as the non-offering party has an opportunity to rebut that
evidence by submitting other evidence that may call into
question the accuracy of the particular Wikpedia information.”)
The examining attorney also submitted information about VH1,
which offers both “TV series” and “extensive video” both on
television and “online,” thereby encompassing the services of
both cited registrations as well as the application.
www.prnewswire.com (9/9/2010). Accordingly, we find the
respective goods and services to be related.
Regarding channels of trade, we note again that there are
no limitations on the goods and services in the cited
registrations, nor on those identified in the application.
Squirtco v. Tomy Corporation, 697 F.2d 1038, 216 USPQ 937, 939
(Fed. Cir. 1983); see also In re Linkvest S.A., 24 USPQ2d 1716,
Serial No. 85016667
11
1716 (TTAB 1992) (because there are no limitations as to
channels of trade or classes of purchasers in either the
application or the cited registration, it is presumed that the
services in the registration and the application move in all
channels of trade normal for those services, and that the
services are available to all classes of purchasers for the
listed services). In other words, there is nothing to stop
registrant from offering its “musical sound recordings and video
recordings” together to the same end users who may be purchasing
applicant’s “television shows and movies.” Accordingly, we find
that these du Pont factors also weigh in favor of finding a
likelihood of consumer confusion.
Consumer Sophistication
Applicant urges us to consider the sophistication of “the
general public.” (appl’s brief at unnumbered 1). There is
nothing in the record that would give us insight as to the
possible sophistication of consumers of the relevant goods and
services. See Alfacell Corp. v. Anticancer, Inc., 71 USPQ2d
1301, 1306 (TTAB 2004) (the applicable standard of care is that
of the least sophisticated consumer). To the extent they are
marketed, as noted by applicant, to the general public, we must
consider this du Pont factor to weigh in favor of finding a
likelihood of confusion.
Balancing the Factors
Serial No. 85016667
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In summary, we have carefully considered all of the
evidence of record pertaining to the du Pont likelihood of
confusion factors, as well as applicant’s arguments with respect
thereto. We conclude that there is a likelihood of confusion
between applicant’s SAGUARO PRODUCTIONS, and design mark for the
services sought to be registered and the registered marks
SAGUARO ROAD RECORDS, and SAGUARO ROAD RECORDS, and design, as
discussed herein. To the extent that we have any doubts
regarding our finding, it is well-established that any doubts as
to likelihood of confusion are to be resolved in favor of the
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6
USPQ2d 1025 (Fed. Cir. 1988).

Decision: The refusal to register is affirmed.