UMG Recordings, Inc.v.Charles O'Rourke

Trademark Trial and Appeal Board

Aug 27, 2009

No. 91178937 (T.T.A.B. Aug. 27, 2009)

Hearing:
May 26, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

UMG Recordings, Inc., substituted for Universal Music Group
v.
Charles O’Rourke
_____

Opposition No. 91178937
to application Serial No. 78918694
filed on June 28, 2006
_____

David Donahue and Michael Chiappetta of Fross Zelnick
Lehrman & Zissu, P.C. for Universal Music Group.

Lynne Petillo and Douglas J. Katich of Ansell Zaro Grimm &
Aaron PC for Charles O’Rourke.
______

Before Seeherman, Rogers and Mermelstein, Administrative
Trademark Judges.

Opinion by Rogers, Administrative Trademark Judge:

Applicant Charles O’Rourke seeks registration of the
mark displayed below for goods identified as “Beanies; Caps;
Footwear; Hats; Headbands; Headwear; Jackets; Jogging suits;
Pajamas; Polo shirts; Pullovers; Short-sleeved or long-
sleeved t-shirts; Shorts; Suits; Sweat pants; Sweat shirts;
Swimsuits; T-shirts; Tank tops; Trunks; Underwear;
Wristbands.” The application is based on applicant’s claim
This Opinion is a
Precedent of the TTAB
Opposition No. 91178937
2
of use of the mark in commerce, with May 1, 2006 asserted as
the date of first use and first use in commerce; and the
application includes a disclaimer of exclusive right to use
of the term “clothing.”1

The Pleadings and Stipulations
A notice of opposition to registration of the mark was
filed variously listing as opposer Universal Music Group (in
the ESTTA2 cover sheet) and UMG Recordings, Inc. (throughout
the attached statement of grounds). That pleading relies on
ownership of various registrations for the mark MOTOWN, and
asserted claims under Trademark Act Section 2(d) (prior
registration, priority of use and likelihood of confusion,

1 As shown on the original specimen of use, the mark is not a
“reversal,” i.e., white letters set against a black or dark
background. Rather, the mark appears as light colored lettering
displayed across the front of a baseball cap, with the word
clothing appearing in black or darker lettering against the
lighter coloring of the rest of the mark. A substitute specimen
also shows the mark in colored lettering, without a rectangular
background, and the word clothing in white lettering. Applicant
explained that the substitute specimen is a label affixed to the
goods. After it was filed, the examining attorney withdrew a
refusal to register the mark on the ground that it constitutes
mere ornamental matter appearing on the goods.

2 ESTTA is the Board’s electronic filing system.

Opposition No. 91178937
3
hereafter, the likelihood of confusion claim) and under
Section 43(c) (dilution). More specifically, opposer claims
use of its MOTOWN mark for “pre-recorded audio and video
tapes and cassettes, DVDs, CDs, and phonograph records
featuring music and entertainment; and musical and
theatrical sound and video recordings,” for “clothing,
footwear and headgear,” and “entertainment services,
promotion and distribution of musical and theatrical sound
and video recordings,” all beginning prior to applicant’s
asserted date of first use. In addition, the notice of
opposition claims ownership of two registrations and three
pending applications for the MOTOWN mark. The registrations
are both for the word mark MOTOWN in standard character form
and cover, respectively, “providing popular musical
entertainment” and “restaurant services.”
As for the designation of opposer, the ESTTA cover
sheet listing Universal Music Group as the opposer and the
statement of grounds for the opposition listing UMG
Recordings, Inc. (hereinafter may be referred to as UMG)
clearly are inconsistent. The statement of grounds asserts
that the use of the pleaded MOTOWN marks has been by
“opposer, its affiliates and its predecessors in interest
(collectively, the ‘UMG entities’),” and the statement’s
signature line lists UMG Recordings, Inc., “c/o Universal
Music Group.” Throughout the proceeding, the ESTTA cover
Opposition No. 91178937
4
sheets for the parties’ respective filings have listed
Universal Music Group as the opposer, but attached
documents, including all submissions by opposer and
applicant, have listed opposer as UMG Recordings, Inc.3
Accordingly, we consider the parties to have agreed that UMG
Recordings, Inc. (hereafter UMG) is the opposer of record.4
However, in some of our references to opposer’s history and
legacy in the music industry, references to opposer or to
“Motown” should be read to include the various entities
related to opposer and its predecessors in interest.5
In his answer applicant admitted “that the Opposer is
the owner of record” of the pleaded registrations and
applications. Apart from this admission, applicant
effectively denied the pleaded grounds and asserted what are
denominated as affirmative defenses; but these are not true
affirmative defenses and we construe them to be mere
amplifications of applicant’s denial of opposer’s claims.

3 After institution of a proceeding, when a party submits a
filing via ESTTA, the ESTTA cover sheet is automatically “pre-
populated” with the name of the party listed in TTABIS, the
Board’s docket of electronic proceeding files.

4 The certified copies of opposer’s pleaded registrations, made
of record during trial, list UMG Recordings, Inc. as the owner.

5 There have been many assignments involving Motown entities,
particularly as relates to copyrights and trademarks for musical
and video recordings. There is not, however, any question raised
in this proceeding about chain of title, validity of assignments,
or the related nature of the various Motown entities that have
existed over the years.
Opposition No. 91178937
5
The parties filed a stipulated agreement for protecting
confidential information as well as a stipulation allowing
both introduction of documents produced by the parties from
their respective files as “authentic business records” and
introduction of testimony by sworn declaration.
The Record
Opposer included in its main brief on the case a
listing of evidence, which applicant did not contest; and
applicant did not include his own recitation of evidence of
record. Accordingly, we accept as accurate opposer’s
statement of the record.
The record includes declaration testimony and exhibits
offered on behalf of opposer from Michael Reinert, Executive
Vice President, Business & Legal Affairs of Universal Motown
Records Group (an unincorporated division of UMG),6 Lori
Froeling, former Senior Vice President, Business & Legal
Affairs of Universal Music Enterprises (also an
unincorporated division of UMG),7 Deanna Czapla, Retail
Operations Manager and Buyer for Delaware North Companies
Travel Hospitality Services, Inc. (a licensee of opposer’s
MOTOWN mark for clothing and other merchandise), and Mario
Ortiz, a paralegal for opposer’s counsel. Opposer also

6 Mr. Reinert presented both main and rebuttal testimony.

7 Ms. Froeling worked for Universal Music Enterprises at the time
she provided her testimony.

Opposition No. 91178937
6
filed two notices of reliance, one for the introduction of
information regarding registrations, applications and other
official records, and the other for introduction of certain
interrogatory responses by applicant. Applicant Charles
O’Rourke submitted his own testimony, and opposer then
exercised its right under the parties’ stipulation to
conduct live cross-examination of Mr. O’Rourke. Both the
direct and cross-examination testimony is of record.
Finally, applicant filed a notice of reliance on opposer’s
interrogatory responses.
Questions Presented
In its main brief (pp. 14-15), opposer lists the only
question presented as whether there exists a likelihood of
confusion, and we therefore consider opposer to have waived
its dilution claim. Thus, to the extent opposer is correct
in its allegation that applicant has conceded the fame of
opposer’s MOTOWN mark, applicant will be considered to have
only conceded the type of fame relevant to a likelihood of
confusion analysis.8 Opposer also asserts in its brief that
there is no dispute as to opposer’s priority, and applicant
neither contests the point in his brief nor presents any
argument regarding priority. Therefore, to the extent

8 Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005)
(contrasts fame for likelihood of confusion analysis and for
dilution analysis).

Opposition No. 91178937
7
opposer relies on prior use of its mark in commerce, rather
than on its registrations for the mark, we consider the
question of opposer’s priority to be undisputed. We do not,
however, consider applicant to have specifically conceded
opposer’s prior use of the MOTOWN mark for clothing items.9
We address, infra, what the record shows about such use but
before commencing such analysis, we address issues relating
to opposer’s pleading of various registrations of, and
applications seeking registration of, its MOTOWN mark.
Opposer’s Registrations, Standing
In his brief (p. 3), applicant contends that “Opposer
does not own a registered mark in the class of goods for
which Applicant has applied, i.e. apparel.” However, one of
the applications pleaded in the notice of opposition, serial
no. 77/045567, covers numerous items of footwear, headwear
and clothing, for both adults and children. Such
application resulted in issuance of registration no.
3550672, albeit on December 23, 2008, after applicant’s
brief had been filed in this case.10 Opposer made the

9 See testimony declaration of Charles O’Rourke [O’Rourke dec.]
at paragraph 13: “Opposer’s Mark is familiar to the baby boomer
age group, and in the recording industry, not the clothing
industry.”

10 The full identification for this registration is “Footwear;
shoes; ties; hats; caps; jackets; scarves; shirts; visors; sweat
shirts; sweat pants; sweat jackets; sweaters; t-shirts; tank
tops; tops; wrist bands; and children[’]s clothing, namely,
infantwear, headwear, shirts, t-shirts, tank tops, cloth bibs,
sweat shirts.”

Opposition No. 91178937
8
application of record by notice of reliance during its
testimony period, as an “official record.” See Trademark
Rule 2.122(e). In its main brief (pp. 11-12), opposer
included a request that the Board take judicial notice of
any registration that might issue before issuance of a final
decision in this case. In its reply brief (p. 3, n. 3),
opposer noted both that the anticipated registration had
issued and that applicant, in his response brief, did not
object to opposer’s request in its main brief that judicial
notice be taken of the anticipated registration. Opposer
concluded that the registration should therefore be
considered of record.
After briefing was completed, opposer received from the
USPTO a “status and title copy” of the registration that it
had ordered promptly upon issuance of the registration.11
That copy was filed with the Board after the completion of
briefing under cover of a request that the Board take
judicial notice of the registration.
The particular circumstances under which opposer
pleaded its ownership of its application to register MOTOWN
for various clothing items, obtained a registration after
trial, and submitted a certified copy showing status and

11 A “status and title copy” of an issued registration is a copy
of the registration, prepared by the USPTO, which indicates the
status of the registration and the last recorded owner, according
to USPTO Assignment Branch records.

Opposition No. 91178937
9
title after briefing are unlike those presented by other
precedential decisions involving initial pleading of a
pending application. Accordingly, we address in some detail
whether to consider the registration to be of record or
whether we may take judicial notice of it.
As noted, the pending application was referenced in the
notice of opposition and applicant admitted opposer’s
ownership of such. Such an admission, however, does not
dictate that the resulting registration is automatically of
record whenever it should issue. An admission obviates the
need to prove the admitted allegation of fact, but no more.
Thus, had a registration issued prior to trial, applicant’s
admission would not have excused opposer from the need to
make the registration properly of record.12
Arguing for consideration of its registration, opposer
relies in part on the fact that applicant did not object to
opposer’s submission of the application by notice of

12 In contrast, while an opposer that pleads ownership of an
application would have to make any subsequently issued
registration of record, it would not have to amend its notice of
opposition prior to doing so. The pleading of the application
would be viewed as having provided sufficient notice to the
applicant that the opposer would rely on a registration from the
application for its likelihood of confusion claim. Cf. Standard
Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917,
1919-20 (TTAB 2006). In Standard Knitting, the notice of
opposition put applicant on notice of opposer’s reliance on a
pending application, and applicant later amended its counterclaim
to seek cancellation of the registration that issued based on the
pending application. In contrast, when at trial opposer
introduced an unpleaded registration by notice of reliance,
applicant’s objection to it was sustained. Id.

Opposition No. 91178937
10
reliance. But a copy of a pending application is admissible
as an official record and could scarcely be objected to
merely because it was introduced at trial. See Life Zone
Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1957 (TTAB
2008) (copy of opposer’s pending application admissible
under notice of reliance as official record).
Next, opposer argues that applicant did not object to
the request in opposer’s brief that the Board take judicial
notice of the anticipated registration, but this argument is
unavailing. First, applicant did assert in his responsive
brief that opposer did not have a registration for its mark
for apparel items. This must be taken as an indication that
applicant viewed the introduction of the application as
insufficient to make the anticipated registration of record.
Second, even though applicant did not specifically object to
opposer’s request that the Board take judicial notice, it is
well settled that the Board does not take judicial notice of
USPTO records. See Corporate Fitness Programs Inc. v.
Weider Health and Fitness Inc., 2 USPQ2d 1682, 1683-84, n.3
(TTAB 1987) (“The Board does not take judicial notice of
registrations that reside in the Patent and Trademark
Office.”). Given this established practice, we cannot
conclude that applicant’s failure to contest opposer’s
request constituted his agreement that the Board could take
judicial notice of the anticipated issuance of a
Opposition No. 91178937
11
registration. See Edison Brothers Stores, Inc. v. Brutting
E.B. Sport-International GmbH, 230 USPQ 530, 531 n.8 (TTAB
1986)(“Brutting’s motion, filed after it received opposer’s
main brief, requesting us to make its [registration] part of
the record of this proceeding is denied…. That opposer did
not object is also of no consequence. A party is obviously
not required to object to evidence which has not been
proffered in accordance with our rules.”).
Opposer’s final effort to have the registration made of
record was its submission, after completion of briefing, of
the status and title copy that it had obtained from the
USPTO, with a request that the Board take judicial notice of
it. We deny the request for the reasons explained above in
regard to the request for judicial notice included in
opposer’s brief. See also, Jean Patou Inc. v. Theon Inc.,
18 USPQ2d 1072, 1075 (TTAB 1990). In Jean Patou, during its
testimony period, the opposer had put into the record a poor
photocopy of a four-year old status and title copy of a
pleaded registration and, one week later, but after the
close of the testimony period, filed a supplemental notice
of reliance with a current status and title copy prepared by
the USPTO. The Board refused applicant’s request to strike
the timely notice of reliance, though it noted that the
question of the competency of a poor photocopy of a
four-year old status and title copy remained; but the Board
Opposition No. 91178937
12
granted applicant’s request to strike the notice of reliance
submitted after the testimony period had closed. Id. at
1075-76.13
In sum, applicant’s admission during pleading of
opposer’s ownership of its application to register the
MOTOWN mark for various items of clothing did not make the
resulting registration of record, and we deny each of
opposer’s requests that we take judicial notice of such
registration. Notwithstanding that we therefore do not have
this registration properly before us, because opposer
properly made of record other registrations for the mark
MOTOWN, it has established its standing to oppose the
involved application. See Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); see
also, Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023,
1025 (Fed. Cir. 1999). Moreover, opposer is entitled to
rely upon the evidence it introduced to show use of the mark
MOTOWN for clothing items. Corporate Fitness, supra,
2 USPQ2d at 1683-84 n.3. We turn, then, to consider the
evidence regarding use of the parties’ respective marks for
clothing. We acknowledge that opposer is relying on two

13 Though the opposer in Jean Patou also argued that its
supplemental notice of reliance should be considered timely
because it had requested an extension of its testimony period,
the Board rejected this argument because the opposer had not
requested a general extension but only an extension for the
limited purpose of completing a testimony deposition. Jean
Patou, 18 USPQ2d at 1075.
Opposition No. 91178937
13
registrations of its mark for “providing popular musical
entertainment” services and “restaurant services”, but if
the record reveals prior use by opposer of its mark(s) for
clothing items, that presents the strongest case for
likelihood of confusion.14
Priority of Use as to Clothing
Applicant is entitled to rely on the filing date of his
involved application, or whatever date of first use is
established by the evidence of record. The filing date of
the application is June 28, 2006. The application asserts
that applicant first used his MTOWN and design mark on the
goods listed in the application as of May 1, 2006. In their
respective briefs, both parties recite these dates, but
opposer refers to the asserted date of first use as
“alleged” and clearly considers it subject to proof. See
opposer’s brief, pp. 15-16. Applicant, however, has not put
any evidence in the record to substantiate the date of first
use. For example, neither the O’Rourke declaration nor the
transcript of the in-person cross-examination of the witness
includes any discussion of the date on which applicant first
began to use his mark for the identified goods.

14 Nonetheless, the fame of opposer’s mark in the music industry
influences our decision in this case, as discussed infra, for
when evidence of fame of a mark is present it is always of
significance. See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1897 (Fed. Cir. 2000).
Opposition No. 91178937
14
The only reference to use by applicant of his mark on
May 1, 2006 is the allegation of such use in the
application; and it is well-settled that, although an
opposed application is automatically part of the record for
the opposition, the allegations contained therein are not
evidence in the opposition. See Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b) (“The allegation in an application for
registration … of a date of use is not evidence on behalf of
the applicant [and] must be established by competent
evidence.”); see also, authorities discussed in TBMP section
704.04. Accordingly, the earliest date on which applicant
may rely is the June 28, 2006 filing date of his
application.
Opposer, in contrast, has put substantial evidence in
the record establishing its use of various marks featuring a
capital letter M and MOTOWN, for clothing items sold by
licensees. In particular, and as noted earlier in the
description of the record, opposer presented declaration
testimony from Deanna Czapla, Retail Operations Manager and
Buyer for a licensee of opposer who testified from her own
knowledge and her review of records and documents of the
licensee. Czapla dec. ¶ 2. Czapla is responsible for “the
business affairs and operation of the Motown Music Review
store” in the Detroit Metro Airport. Id. ¶ 1. Czapla
further testified as to the parties to the original
Opposition No. 91178937
15
licensing agreement, the subsequent change of name of the
licensee, and introduced a copy of the agreement, which
lists opposer as the general partner of the licensor.
Czapla dec. ¶¶ 3-4, exh. 1. The store opened in 2002 and
offers for sale “an array of clothing and merchandise
bearing the MOTOWN marks, including, for example, short-
sleeved and long-sleeved shirts, sweatshirts, pull-overs,
jackets and hats,” and photographs of the store and
merchandise are exhibits to the declaration. Czapla dec.
¶¶ 5-6, exhs. 2-3. While we cannot report the sales figures
for the store because they are protected by the parties’
confidentiality agreement, suffice it to say that sales
since 2003 have been continuous and substantial.
In addition to the Czapla declaration, opposer also
presented declaration testimony of Lori Froeling, Senior
Vice President of a division of opposer, and the individual
responsible for, among other activities, licensing of
trademarks for the “Motown” recording label. Froeling dec.
¶ 1. Based on her personal knowledge or familiarity with
records and documents, Froeling testified that the MOTOWN
marks have been used for “a wide range of goods and
services” including “clothing, headwear and footwear.”
Froeling dec. ¶¶ 2-3. A licensing arrangement beginning in
1988 with the Motown Historical Museum covers the sale of
clothing bearing the MOTOWN marks both in the museum gift
Opposition No. 91178937
16
shop and on its website, www.motownmuseum.com. Froeling
dec. ¶ 8, exhs. 18-20. Another arrangement, beginning March
3, 1999, involves sales of MOTOWN branded clothing at the
Motown Café Orlando in Orlando, Florida. Froeling dec. ¶ 9,
exh. 21. And the Froeling declaration corroborates the
Czapla declaration regarding sales of licensed clothing at
the Detroit airport. Froeling dec. ¶ 10.
All of these activities predate the filing date of
applicant’s application and are sufficient to establish
opposer’s priority of use of various versions of its MOTOWN
mark, some with a large uppercase M, for clothing items. We
therefore turn to the question of likelihood of confusion.
Likelihood of Confusion
The record created by opposer is substantial,
especially as it relates to the history of “Motown” records
and music and the public recognition and fame of “Motown”
recordings and performing artists. While there are many
factors which are considered as part of the likelihood of
confusion analysis when there is evidence of record bearing
on such factors, see In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973), and In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003), in the case at hand the similarities in
the marks, the use of the marks for many identical items,
and the overlap in channels of trade and classes of
Opposition No. 91178937
17
consumers are the most significant. See Han Beauty, Inc. v.
Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557, 1559
(Fed. Cir. 2001) (“While it must consider each factor for
which it has evidence, the Board may focus its analysis on
dispositive factors, such as similarity of the marks and
relatedness of the goods.”). The fame of opposer’s marks in
the music industry also has some effect on our analysis.
Applicant seeks to register his mark for various items
of clothing, headwear and footwear, as listed at the outset
of this opinion. Opposer’s evidence demonstrates use of
opposer’s MOTOWN or M MOTOWN marks for short-sleeved and
long-sleeved t-shirts, sweatshirts and baseball-style caps,
all items included in applicant’s identification of goods.
Thus, the parties’ goods are in part identical and are
otherwise closely related apparel items.15 When marks are
used on identical goods, the marks do not have to be as
similar, to support a conclusion that confusion among
consumers is likely, as they would have to be if the goods
were different. See Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.

15 Although dated after applicant’s filing date, another license
in the record shows that opposer has expanded into footwear by
licensing its marks for use by a footwear manufacturer. See
Froeling dec. ¶ 11, exhs. 22-23. While opposer has not
demonstrated prior use on footwear, opposer’s natural expansion
into this field serves to demonstrate the relationship between
the apparel items for which opposer has demonstrated its priority
and footwear, which is among the items identified in applicant’s
identification of goods.
Opposition No. 91178937
18
Cir. 1992) (“When marks would appear on virtually identical
goods or services, the degree of similarity necessary to
support a conclusion of likely confusion declines.”).
When comparing the marks, we must consider the
appearance, sound, connotation and commercial impression of
each mark. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). Moreover, it is a
well-established principle that, in articulating reasons for
reaching a conclusion on the issue of likelihood of
confusion, while the marks are compared in their entireties,
including descriptive or disclaimed portions thereof, “there
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. Indeed,
this type of analysis appears to be unavoidable.” In re
National Data Corp., 732 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). In the case at hand, we give little weight to
the inclusion of the disclaimed word CLOTHING in applicant’s
mark. It is much smaller than MTOWN and would not be viewed
as distinctive and an indicator of source, for it is a
generic term for applicant’s identified goods.
As for the appearances of the involved marks, the
capital letter M is stressed in applicant’s mark, because of
Opposition No. 91178937
19
its comparatively larger size, and is distinguishable from
the remainder in that the M has more rounded edges than does
the word TOWN. Opposer’s MOTOWN marks for clothing
generally present the letters in equal size and the same
font. Some displays, however, are similar to the display
and font employed by applicant. See, for example, Froeling
exh. 19, which shows a sweatshirt with Motown in a script
form with an underscoring flourish similar to the extension
of applicant’s capital M under the word TOWN. The same
exhibit also illustrates use of opposer’s M MOTOWN mark
which stresses the letter M. And the entire record shows
use by opposer of various M MOTOWN marks that similarly
stress a large M. While the involved marks have some
differences in appearance, they also have similarities.
In comparing the pronunciation of the marks, it is a
reasonable conclusion that many will articulate applicant’s
mark MTOWN as “EM TOWN.” As for opposer’s mark MOTOWN, as
applicant acknowledges, consumers pronounce it as “MOW
TOWN.” For consumers who will speak opposer’s M MOTOWN
mark, it is reasonable to conclude they will articulate it
as “EM MOW TOWN,” but they may also refer to it as the “MOW
TOWN EM.” As with the appearances of the marks, the sounds
of the marks have some differences but also significant
similarities.
Opposition No. 91178937
20
As for the connotations of the marks, for those who
know the history of “Motown” records and performers, and the
record is substantial that the “Motown” legacy and
contributions to the music industry are well-known, the
connotation of opposer’s marks will mirror that history and
legacy. In this regard, we note that opposer’s licensees
and franchisees not only sell MOTOWN branded clothing but
utilize décor and memorabilia evocative of the legions of
“Motown” artists, performers and recordings. Applicant
contends (brief, p. 6) that the connotation of his mark will
be distinctly different because the M in applicant’s mark
“is an abbreviation for the ‘Middle’ in ‘Middletown,’ New
Jersey” and therefore connotes hometown pride in that place
and in other towns whose names begin with the letter M.
Although the record reveals that applicant has only sold
clothing items in New Jersey, his identification of goods is
unlimited as to classes of consumers or channels of trade or
geographic scope. Because we must therefore assume that the
goods will be marketed in all customary channels of trade
for, and to all customary consumers for, clothing items, see
Octocom Systems, Inc. v. Houston Computers Services Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990),
consumers outside applicant’s hometown are unlikely to
equate MTOWN with Middletown, New Jersey. Even if we accept
applicant’s argument that consumers who reside in or near
Opposition No. 91178937
21
towns beginning with the letter M may associate applicant’s
mark with such places, consumers who do not reside in such
places may view the mark as having the same connotation as
opposer’s marks, because of opposer’s use not only of MOTOWN
marks but of marks that feature a large letter M. In short,
many consumers may find the marks to have the same or very
similar connotations.
The overall commercial impressions of the marks is a
consideration “occasionally used as a proxy for the ultimate
conclusion of similarity or dissimilarity.” Palm Bay,
supra, 73 USPQ2d at 1692. In the case at hand, however, we
specifically consider commercial impression as a distinct
consideration when comparing the marks. Even though
applicant overcame an initial refusal of registration based
on the ornamental nature of the MTOWN CLOTHING mark, as
shown by the original specimen of use, the fact remains that
the record is replete with evidence showing that both
parties’ marks tend to be emblazoned across the fronts of
items such as shirts and caps. Indeed, applicant
essentially argues that his goods are bought to be worn as
displays of hometown pride. When used in this way, the
marks have very similar commercial impressions, and both are
used in ways that turn a spotlight on the letter M.
Overall, while the marks may have some dissimilarities as to
sound or appearance, their connotations and overall
Opposition No. 91178937
22
commercial impressions are likely to be the same for many
consumers. Hewlett-Packard Co. v. Packard Press, Inc., 281
F.3d 1261, 62 USPQ2d 1001, 1003-04 (Fed. Cir. 2002) (holding
that PACKARD TECHNOLOGIES and HEWLETT PACKARD differ in
appearance and sound, but the marks convey a similar
commercial impression because consumers would be aware of
Hewlett-Packard’s heavy involvement in technology-based
goods, and therefore the marks are similar in their
entireties). See also, Ava Enterprises Inc. v. Audio Boss
USA Inc., 77 USPQ2d 1783 (TTAB 2006) (likelihood of
confusion found when stylized marks “Audio Bss USA” and
“Boss Audio Systems,” were used on legally identical or
otherwise closely related goods, because of similarities in
display of marks and overall commercial impression).
Turning to the classes of consumers and channels of
trade for the involved goods, we have already noted, above,
that applicant’s identification is not limited and we must
assume that his goods can be marketed to all customary
consumers of the identified clothing, headwear and footwear
items. This class of consumers would include the same class
of consumers to whom opposer’s identical goods are sold,
i.e., any members of the general public who visit the stores
or web sites of opposer’s licensees or franchisees who are
selling MOTOWN branded clothing at retail. Similarly, we
must assume that marketing of applicant’s goods can or will
Opposition No. 91178937
23
occur in all normal channels of trade for such items. This
would include retail stores featuring clothing items and
sales on the internet, which, as the record shows, are means
by which opposer’s licensed goods are marketed.
Accordingly, there is an overlap in the parties’ classes of
consumers and channels of trade.
The last du Pont factor which we consider is the fame
of opposer’s MOTOWN mark in the music industry, a fact which
applicant has admitted. While we have already stated that
we do not view applicant as having conceded the fame of
opposer’s mark for clothing items, we note that opposer’s
licensed or franchised operations may utilize décor and
displays of memorabilia that draw an association between
opposer’s history in the music industry and the items
marketed in locations such as the Motown Music Review store
in the Detroit airport and the Motown Café Orlando.
Opposer’s mark is famous for musical recordings and
performances, and opposer has demonstrated that such fame
has been exploited by its use of the mark on collateral
products, including clothing. See Turner Entertainment Co.
v. Nelson, 38 USPQ2d 1942, 1944 (TTAB 1996) for a discussion
of cases involving use of a famous or well-known mark on
collateral products. As a result, consumers familiar with
opposer’s famous music industry marks, including the various
MOTOWN and M MOTOWN marks, when subsequently confronted with
Opposition No. 91178937
24
clothing items adorned with applicant’s mark would likely
conclude it was another variation on the marks used by or
authorized by opposer for such goods.
Considering all the evidence of record, whether
specifically discussed herein or not, and balancing all the
du Pont factors, we conclude that there exists a likelihood
of confusion among consumers.
Decision: The opposition is sustained and registration
to applicant is refused.