The Clarion-Ledgerv.Curtis B. Lyons

Trademark Trial and Appeal BoardSep 21, 2010

No. 92049745 (T.T.A.B. Sep. 21, 2010)

Mailed: 9/21/10 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ The Clarion-Ledger v. Curtis B. Lyons _____ Cancellation No. 92049745 _____ Christopher R. Shaw of Watkins Ludlam Winter & Stennis for The Clarion-Ledger. Craig B. Lyons, pro se. _____ Before Quinn, Grendel and Walsh, Administrative Trademark Judges. Opinion by Quinn, Administrative Trademark Judge: The Clarion-Ledger, a division of Gannett River States Publishing Corporation, filed a petition to cancel Curtis B. Lyons’ registrations of the marks JACKSONS VIP (in standard characters) for “advertisement of nightclub, parties and special events” (in International Class 35),1 and “providing 1 Registration No. 3333281, issued November 13, 2007, alleging first use anywhere on January 22, 2006, and first use in commerce on January 9, 2007. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Cancellation No. 92049745 2 databases featuring general, local, national and international news” (in International Class 41).2 As grounds for cancellation under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), petitioner alleges that respondent’s mark, when used in connection with respondent’s services, so resembles petitioner’s previously used mark VIP JACKSON for magazines as to be likely to cause confusion. Respondent, in his answer, made a general denial of the allegations in the petition for cancellation. The record consists of the pleadings; the file of the involved registration; trial testimony of Leigh Reeves, with related exhibits, taken by petitioner; and respondent’s discovery deposition, with related exhibits (including discovery responses), introduced by way of petitioner’s notice of reliance. Respondent neither took testimony nor introduced any other evidence. Only petitioner filed a brief. Leigh Reeves, a resident of Jackson, Mississippi, developed in 2004 a magazine for the greater Jackson, Mississippi area titled “VIP Jackson Magazine.” Ms. Reeves subsequently sold her rights in the publication to petitioner, but Ms. Reeves remained as the magazine’s general manager. Petitioner launched the magazine with the 2 Registration No. 3457265, issued July 1, 2008, alleging first use anywhere on January 22, 2006, and first use in commerce on January 9, 2007. Cancellation No. 92049745 3 publication of the first issue of “VIP Jackson Magazine” in January, 2005. The magazine’s target audience comprises readers with a high level of disposable income. The magazine covers social and charitable events, as well as a variety of topics, including arts, entertainment, fashion, and home. The magazine attracts advertisers with high-end demographics, such as salons, spas, surgeons, and upscale fashion retailers. Petitioner also has maintained a website, vipjacksonmag.com, which was created in late spring, 2006. Respondent has used his mark in connection with his website, jacksonsvip.com, which is aimed at promotion and advertisement of nightclubs, parties and events, and offering news of local interest in the Jackson, Mississippi area. Respondent also has used his mark in connection with his sponsorship of two fashion show events, one each in 2007 and 2008. Petitioner has demonstrated its standing to bring this cancellation proceeding against the involved registration. In particular, petitioner has shown use of its mark, and that it is not a mere intermeddler. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). Cancellation No. 92049745 4 With respect to priority, respondent failed to offer testimony or any other evidence regarding the first use of his registered mark. Generally, in this situation, the earliest date upon which a respondent can rely is the filing date of the application which matured into his registration. See Brewski Beer Co. v. Brewski Brothers Inc., 47 USPQ2d 1281, 1284 (TTAB 1998). The filing date of application Serial No. 76671795 which matured into Registration No. 3333281 is January 25, 2007; and the filing date of application Serial No. 77309209 which matured into Registration No. 3457265 is October 20, 2007. However, petitioner introduced, by way of a notice of reliance, the entirety of respondent’s discovery deposition, portions of which deal with respondent’s first use of his mark on a date that pre-dates the filing dates of the underlying applications.3 Petitioner also introduced documents produced by respondent that relate to his first use. The date of first use set forth each in the involved registrations is January 22, 2006.4 During his discovery deposition, Mr. Lyons testified that he first used the 3 Rather than rely on only selected portions of the deposition, as provided under Trademark Rule 2.120(j), petitioner inexplicably introduced the entire deposition and, thus, we must consider those portions pertaining to respondent’s testimony about the first use of his registered mark for purposes of determining priority. 4 Contrary to the gist of some of petitioner’s argument, a party may rely on the date of first use of the mark anywhere, rather than the date of first use in commerce, for purposes of determining priority. Cancellation No. 92049745 5 registered mark on that date: “So but at these dates, I can testify under oath that these marks were--it was used at least as soon as 1/22 of 2006...and so that’s my testimony.” (Lyons dep., p. 22). Accordingly, we find that the earliest date upon which respondent can rely for purposes of priority is January 22, 2006.5 Petitioner’s testimony and evidence establishes that it commenced use of the mark VIP JACKSON for magazines with the publication of the first issue in January, 2005. Accordingly, petitioner has shown its priority of use in connection with magazines. We now turn to the only issue that remains for decision, namely likelihood of confusion. Our determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Petitioner must establish that there is a likelihood of confusion by a preponderance of the evidence. In any likelihood of confusion analysis, however, two key 5 Mr. Lysons hinted that he may have used his mark earlier than January 22, 2006 (that is, the first use date set forth in his registrations), pointing to various documents, and that additional documents may exist (but which were not produced) to establish an earlier first use date. (Lyons dep., pp. 21-24). Suffice it to say, the record falls far short of proving any earlier date by evidence that must be “clear and convincing.” See Hydro-Dynamics, Inc. v. George Putnam & Co., 811 F.2d 1470, 1 USPQ2d 1772, 1773 (Fed. Cir. 1987). Cancellation No. 92049745 6 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). These factors, and the other relevant du Pont factors in the proceeding now before us are discussed below. With respect to the marks, we must compare respondent’s mark JACKSONS VIP to petitioner’s mark VIP JACKSON in their entireties as to appearance, sound, connotation and commercial impression to determine the similarity or dissimilarity between them. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test, under the first du Pont factor, 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 that confusion as to the source of the goods and services offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). The marks JACKSONS VIP and VIP JACKSON are similar in appearance and sound, with each comprising virtually Cancellation No. 92049745 7 identical components. The possessive letter “s” in respondent’s mark hardly is sufficient to distinguish the marks in any manner. See, e.g., Georgia-Southern Oil, Inc. v. Harvey Richardson, 16 USPQ2d 1723, 1725 (TTAB 1990). The marks also engender virtually identical meanings and overall commercial impressions, namely that the respective goods and services deal with subjects of interest to a “very important person” or “VIP” in Jackson (Mississippi). The only appreciable difference between the marks is that the two words comprising the marks are transposed. This difference is minor, however, as it relates to the overall commercial impressions conveyed by these marks. See, e.g., In re Wine Society of America Inc., 12 USPQ2d 1139 (TTAB 1989) (THE WINE SOCIETY OF AMERICA is substantially similar to AMERICAN WINE SOCIETY); In re Nationwide Industries Inc., 6 USPQ2d 1882 (TTAB 1988) (RUST BUSTER (“RUST” disclaimed) for rust-penetrating spray lubricant held likely to be confused with BUST RUST for penetrating oil); and Bank of America National Trust and Savings Association v. American Bank of St. Joseph, 201 USPQ 842 (TTAB 1978) (confusion is likely where the sole significant difference between marks applied to similar goods or services is the transposition of the words which comprise those marks and where the transposition of words does not change the overall commercial impression). Cancellation No. 92049745 8 Although the transposition of the two terms comprising the marks results in the marks’ being specifically different, these differences are easily outweighed by the similarities. Accordingly, the first du Pont factor weighs in favor of a finding of likelihood of confusion. Insofar as the goods and services are concerned, it is well established that the goods and services of the parties need not be similar or competitive, or even offered through the same channels of trade, to support a holding of likelihood of confusion. It is sufficient that the respective goods and services of the parties are related in some manner, and/or that the conditions and activities surrounding the marketing of the goods and services are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same source. See Hilson Research, Inc. v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993); and In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The issue, of course, is not whether purchasers would confuse the goods and services, but rather whether there is a likelihood of confusion as to the source of the goods and services. In re Rexel Inc., 223 USPQ 830 (TTAB 1984). Cancellation No. 92049745 9 Petitioner is relying upon its prior common law rights, and Ms. Reeves testified that petitioner’s magazine covers local social and charitable events in Jackson, Mississippi, as well as home, arts, entertainment, and fashion. A primary focus of the magazine has been on high-end fashion. Petitioner’s magazine features include a fashion columnist and photographic fashion spreads. Petitioner’s magazine includes advertisements for clothing boutiques, restaurants and salons, among others. Petitioner also has a website, vipjackson.com. Respondent has touted its website as “home for news and listings on the best places to eat, sleep and play VIP style. Jacksons VIP has the insider’s track on all things Jackson.” (Lyons’ response to production request no. 27). We find that petitioner’s magazine, featuring content and advertisements targeted to residents of Jackson, Mississippi, and respondent’s services of providing databases featuring local news, and advertisement of nightclubs, parties and special events, also directed to residents of Jackson, Mississippi, are closely related. Further, according to Ms. Reeves, petitioner has maintained a web site, vipjacksonmag.com, that features many of the same topics covered in its printed magazine. In addition to the fact that petitioner itself offers both magazines and web-based information under essentially the Cancellation No. 92049745 10 same mark, it is indisputable that magazine publishers routinely operate websites to provide an electronic or perhaps enhanced version of their printed magazines. Petitioner appears to be no exception, and it is beyond dispute that the general public is aware of this industry practice, and has come to expect such circumstances. Ordinary consumers of petitioner’s magazine are likely to expect that petitioner would also offer an online version of its VIP JACKSON magazine or otherwise provide related content on the Internet. Petitioner’s web-based content and advertisements are similar to the type of entertainment information and advertisements provided by respondent. See The Conde Nast Publications Inc. v. Vogue Travel, Inc., 205 USPQ 579 (TTAB 1979) (VOGUE for magazine likely to cause confusion with VOGUE and design for travel agency services). Simply put, petitioner’s publication of a magazine under the mark VIP JACKSON, which is concomitant with petitioner’s offering of web-based content and advertisements at vipjacksonmag.com, would lead consumers to mistakenly believe that respondent’s services offered under the mark JACKSONS VIP originated with petitioner. See Penthouse International, Ltd. v. Dyn Electronics, Inc., 196 USPQ 251 (TTAB 1977), aff’d unpublished opinion, (CCPA, Appeal No. 77-615, Jan. 26, 1978); American Heritage Publishing Co., Inc. v. Camillus Cutlery Co., 154 USPQ 451 (TTAB 1967); HMH Cancellation No. 92049745 11 Publishing Co., Inc. v. Breglia, 141 USPQ 36 (TTAB 1964); and Johnson Publishing Company, Inc. v. McLendon, 133 USPQ 486 (TTAB 1962). The du Pont factors relating to the similarity between the goods and services, trade channels and prospective purchasers all weigh in favor of petitioner’s position on likelihood of confusion. We are not troubled by the absence of evidence of actual confusion. (Reeves dep., p. 58). A showing of actual confusion would of course be highly probative, if not conclusive, of a high likelihood of confusion. The opposite is not true, however. The lack of evidence of actual confusion carries little weight. J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965). In addition to our noting that the time period of any contemporaneous use has been relatively brief, the record is devoid, in any event, of probative evidence relating to the extent of use of respondent’s mark and, thus, whether there have been meaningful opportunities for instances of actual confusion to have occurred in the marketplace. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); and Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). Accordingly, the du Pont factor of the length of time during and Cancellation No. 92049745 12 conditions under which there has been contemporaneous use without evidence of actual confusion is considered neutral. We find that the du Pont factors weigh in favor of a finding of likelihood of confusion. We conclude that consumers familiar with petitioner’s magazine offered under the mark VIP JACKSON would be likely to mistakenly believe, upon encountering respondent’s mark JACKSONS VIP for advertisement of nightclub, parties and special events, and providing databases featuring general, local, national and international news, that the goods and services originated with or are somehow associated with or sponsored by the same entity. Lastly, to the extent there is any doubt about our finding of a likelihood of confusion, we resolve that doubt, as we must, in favor of petitioner as the prior user. See Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983). Decision: The petition for cancellation is granted, and Registration Nos. 3333281 and 3457265 will be cancelled in due course.