IN RE KOLVET, 85021329 (TTAB 5-18-2011)
Serial No. 85021329United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: May 18, 2011Page 1
Kerry J. Kolvet, of Drinkwater Law Offices for Kerry J. Kolvet.
Kaelie E. Kung, Trademark Examining Attorney, Law Office 103 (Michael Hamilton, Managing Attorney).
Before Bucher, Kuhlke and Taylor, Administrative Trademark Judges.
Opinion by Kuhlke, Administrative Trademark Judge:
On April 22, 2010, Kerry J. Kolvet applied to register the standard character mark STILETTO on the Principal Register based on a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act,15 U.S.C. ? 1052(b), for services ultimately identified as “entertainment in the nature of conducting boudoir photography parties; photography services” in International Class 41.Page 2
Registration has been refused under Section 2(d) of the Trademark Act, 15 U.S.C. ? 1052(d), on the ground that applicant’s mark, when used with its identified services, so resembles the registered typed form mark STILETTO for “consulting services in the field of entertainment; entertainment services namely, production of recordings, audio and/or visual images in various media; arranging for personal appearances of entertainers; music publishing services,” in International Class 41, as to be likely to cause confusion, mistake or deception.[fn1]
Applicant has appealed the final refusal and the appeal is fully briefed. We reverse the refusal to register.
When there is a question of likelihood of confusion, we analyze the facts as they relate to the relevant factors set out in 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 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 goodsPage 3
and services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
The marks are identical, “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) quoting du Pont, 177 USPQ at 567. Thus, we turn to consider the possible relatedness of the services. In making our determination we are constrained to make our determination based on the services as identified in the cited registration and the application. Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). Our analysis is not whether the services will be confused with each other, but rather whether the potential consumers will be confused about their source. See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 186 USPQ 476, 480 (CCPA 1975). It is sufficient that the services of the applicant and the registrant are so related that the circumstances surrounding their marketing are such that they are likely to be encountered by the same persons under circumstances that would give rise to the mistaken belief that theyPage 4
originate from the same source. See, e.g., On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000). Finally, where the marks are identical the relationship between the services need not be as close to support a finding of likelihood of confusion as would be required in a case where there are differences between the marks. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993).
The examining attorney argues that “applicant’s boudoir photography party entertainment services are related to registrant’s entertainment consulting services, as registrant’s services are broadly worded and encompass consultation relating to applicant’s services . . . [and] applicant’s photography service are also related to registrant’s production of visual images services as such production services would be used in tandem with applicant’s photography services or are encompassed by such services.” Br. p. 5.
While the examining attorney argued that registrant’s consulting services were related to applicant’s party services and applicant’s photography services were related to registrant’s production services, she submitted third-party registrations to show that “entertainment consulting services and photography services, are of a kind that mayPage 5
emanate from a single source.” Br. p. 6. In re Albert Trostel Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993) (third-party registrations probative to the extent they show that the services listed therein are of a kind that may emanate from a single source). We note that the examining attorney did not highlight any of these third-party registrations in her brief. Upon our review, we do not find them to be probative on this point, primarily because, for the most part, either they do not include both applicant’s and registrant’s services or the list of services are lengthy and include a broad variety of services.
The examining attorney also submitted printouts of third-party websites in support of her position that applicant’s and registrant’s services are related. Below are a few examples of the third-party websites highlighted by the examining attorney to show a relationship between registrant’s consulting services and applicant’s boudoir party services and registrant’s production services and applicant’s photography services:
Gateway Productions provides event production services including provision of design, management, planning, and contracting of production services to providing musical acts, variety acts, special effects, decoration, photography, novelties, etc.;Page 6
Victoria Consultants an “event and party planning agency” that provides musicians, photographers, DJs, models, entertainers, etc.;
PR Entertainment Consulting a professional event management firm;
Pro Photo Productions.com an “on-site photography service” that produces “event DVDs, TV commercials, as well as various types of multimedia video coverage all with the idea of promoting your event”;
Heidi Production that organizes and manages “photo shootings for ad campaigns, catalogues and editorials worldwide”; and Photo Video Productions “pre-production, production, and post-production” supplies all “Audio, Video, CD and DVD Needs.”
We find the examining attorney’s reading of registrant’s “consulting services in the field of entertainment” to be overreaching. It is admittedly a broad identification; however, general consulting in the entertainment field and conducting a boudoir photography party are distinct services and this record is not sufficient to find that they are related in a manner that could give rise to a likelihood of confusion. Similarly, we read the “entertainment services namely, production of recordings, audio and/or visual images in various media” as very different from simply a photography studio. The examples provided by the examining attorney are more in the nature of film and video production and not part of anPage 7
entertainment service. While, film and video production companies may provide photography services, the entertainment service of producing recordings is a much more involved service. To the extent the photography services work “in tandem,” with registrant’s production services, because they potentially hire photographers or take photos in the provision of the broader entertainment services, there may be a de minimus possibility of likelihood of confusion.[fn2]
However, that is not the standard by which we make our determination. There must be a likelihood of confusion, not a mere theoretical possibility. We understand the examining attorney’s concern due to the identical marks; however, we do not believe a case has been made on this record to support a finding that the services are sufficiently related to conclude that a likelihood of confusion exists.
In conclusion, we find that because the services are not related, confusion is not likely between applicant’sPage 8
mark for its identified services and the mark in the cited registration.
Decision: The refusal to register under Section 2(d) of the Trademark Act is reversed.
[fn1] Registration No. 1536653, issued April 25, 1989, renewed. The registration also includes “merchandising services in the field of entertainment,” in International Class 35. [fn2] We note that we make our determination based on the services as identified. As to applicant’s arguments regarding registrant’s services, we cannot limit registrant’s services to what any evidence shows its “actual services” to be. In re BercutVandervoort Co., 229 USPQ 763 (TTAB 1986) (“It is well settled that in a proceeding such as this, the question of likelihood of confusion must be determined by an analysis of the marks applied to the goods as identified in the application vis-?-vis those recited in the registration, rather than what extrinsic evidence shows those goods to be.”)