in re rodeowave entertainment, llc
TRANSCRIPT
This Opinion is Not a
Precedent of the TTAB
Mailed: September 17, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Rodeowave Entertainment, LLC
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Serial No. 87801131
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Amy J. Everhart of Everhart Law Firm, PLC,
for Rodeowave Entertainment, LLC.
Leslee A. Friedman, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
_____
Before Thurmon, Deputy Chief Administrative Trademark Judge,
Lykos and English, Administrative Trademark Judges.
Opinion by English, Administrative Trademark Judge:
Rodeowave Entertainment, LLC (“Applicant”) seeks registration on the Principal
Register of the standard character mark JUST ANOTHER DAY IN PARADISE for
“shirts” in International Class 25.1
1 Application Serial No. 87801131; filed February 16, 2018 based on a claim of use under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). After the Office refused registration
on the ground that Applicant’s mark was merely an ornamental feature of Applicant’s clothing under Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§ 1051-1052, 1127, Applicant
amended its filing basis to claim a bona fide intent to use the mark under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). June 1, 2018 Office Action at TSDR 4; December 3, 2018
Office Action Response at TSDR 4 and 7. The amendment to the filing basis obviated the
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The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the
registered standard character mark JUST ANOTHER DAY on the Principal Register
for “caps; hats; jerseys; shirts; shorts; socks; sweat pants; sweatshirts; t-shirts; tank
tops; hooded sweatshirts.”2 The Examining Attorney also refused registration under
Sections 1, 2, and 45 of the Trademark Act U.S.C. §§ 1051-52 and 1127, on the ground
that the applied-for-mark fails to function as a trademark because it is a widely used
commonplace message or expression. When the refusals were made final, Applicant
appealed and requested reconsideration. The Examining Attorney denied Applicant’s
request for reconsideration, and the appeal was resumed.
We affirm the refusal to register under Section 2(d). We do not reach the failure
to function refusal under Sections 1, 2, and 45 of the Trademark Act. See, e.g., In re
Brack, 114 USPQ2d 1338, 1343 (TTAB 2015).
I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”); see
also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). We consider each DuPont factor for which there is evidence or argument. See,
ornamental refusal so that issue is not before us. December 31, 2018 Final Office Action at TSDR 2.
2 Registration No. 5157732; issued March 7, 2017. “T-shirts” is listed twice in the identification of goods.
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e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir.
2019); M2 Software, Inc. v. M2 Commc’ns., Inc., 450 F.3d 1378, 78 USPQ2d 1944,
1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232,
1242 (TTAB 2015) (“While we have considered each factor for which we have
evidence, we focus our analysis on those factors we find to be relevant.”).
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods. See In re Chatam Int’l
Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); 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.”); see also
In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017)
(“The likelihood of confusion analysis considers all DuPont factors for which there is
record evidence but ‘may focus … on dispositive factors, such as similarity of the
marks and relatedness of the goods.’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc.,
308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
We discuss the relevant DuPont factors below.
A. Similarity or Dissimilarity of the Goods, Trade Channels, and Classes
of Consumers
Applicant does not dispute that both the application and cited registration cover
“shirts.” Because the goods in Applicant’s application and the cited registration are
identical in part and because there are no restrictions or limitations in the respective
identifications, we must presume that those particular goods travel through the same
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channels of trade to the same classes of purchasers. See Cai v. Diamond Hong, Inc.,
901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018); In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this
legal presumption in determining likelihood of confusion); In re Yawata Iron & Steel
Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical
goods, the channels of trade and classes of purchasers are considered to be the same).
Accordingly, the second and third DuPont factors weigh heavily in favor of finding
a likelihood of confusion.
B. Strength of the Cited Mark
Applicant argues that “the registered mark JUST ANOTHER DAY is commonly
used by third-parties in connection with clothing and shirts … suggest[ing] the
registered mark is relatively weak” and entitled to a narrow scope of protection.3 To
support its assertion, Applicant submitted purported evidence of third-party
trademark use of the phrase JUST ANOTHER DAY, and iterations thereof, in
connection with shirts. Examples include:4
3 Applicant’s Brief, 8 TTABVUE 9-10. During prosecution, the Examining Attorney refused
to consider this argument on the ground that it was a collateral attack against the validity of the cited registration. July 19, 2019 Denial of Request for Reconsideration at TSDR2. This
argument, however, concerns the strength of the cited mark, which is a factor to consider in a likelihood of confusion analysis.
4 December 3, 2018 Office Action Response at 95-98; Request for Reconsideration at TSDR
17-24. Some of the noted examples are from the Examining Attorney’s evidence. June 1, 2018 Office Action at TSDR 10; July 19, 2019 Request for Reconsideration Denial at TSDR 13-18.
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Serial No. 87801131
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(Redbubble) (Zazzle.com)
(Zazzel.com) (I Love Apparel) (Paradise Shirts)
(Cafe Press) (Chummy Tees) (TeePublic)
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(Redbubble) (Angry Stick Figure (Spreadshirt.com)
Computer Tees)
(Zazzle.com) (Zazzle.com) (Zazzel.com)
(Cafe Press) (Chummy Tees) (Nickelodeon)
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Under the sixth DuPont factor, evidence of third-party use of similar marks on
similar goods is relevant to show that a mark is relatively weak and entitled to only
a narrow scope of protection. Most of the third-party examples of record show the
phrase JUST ANOTHER DAY and variations thereof, as ornamental use rather than
use in a manner that would be perceived as indicating source because the wording is
emblazoned on the front of a shirt. The number of ornamental uses of the cited mark,
and variations thereof, on the same goods as those covered by the cited registration
suggests that consumers may be less likely to perceive JUST ANOTHER DAY as a
mark therefore diluting the source identifying significance of the cited mark.5 See,
e.g., D.C. One Wholesaler, Inc. v. Chien, 120 USQ2d 1710, 1716 (TTAB 2016) (“The
widespread ornamental use of the phrase by third parties ‘is part of the environment
in which the [mark] is perceived by the public and ... may influence how the [mark]
is perceived.”’) (quoting In re Hulting, 107 USPQ2d 1175, 1178 (TTAB 2013) and In
re Tilcon Warren Inc., 221 USPQ 86, 88 (TTAB 1984)). Given the number of third-
party uses, including the ornamental uses, consumers also may be conditioned to look
for minor differences in marks consisting of or incorporating JUST ANOTHER DAY
for shirts. See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1406 (TTAB
2018) (including consideration of third-party ornamental use in assessing the
strength of the cited mark I LUV U for jewelry and finding that “consumers are
5 We are not making any determination as to the validity of the cited mark. The cited mark is registered on the Principal Register without a claim of acquired distinctiveness and is
entitled to a presumption of validity that cannot be challenged through this ex parte proceeding. 15 U.S.C. § 1057(b). But the third-party ornamental use is relevant to how the
cited mark is likely to be perceived, and therefore, this evidence is relevant to the likelihood of confusion analysis.
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conditioned to look for differences among trademarks consisting of or including I
LOVE YOU for jewelry”) (citing Jack Wolfskin Ausrustung Fur Draussen GmbH &
Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136
(Fed. Cir. 2015)). For these reasons, we find that the cited mark is commercially weak.
This weighs against a likelihood of confusion.
C. Similarity or Dissimilarity of the Marks
We next consider the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression. Stone Lion Capital
Partners v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir.
2014); DuPont, 177 USPQ at 567. “Similarity in any one of these elements may be
sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126
USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB
2014)).
The issue 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
offered under the respective marks is likely to result. Coach Servs., Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). The focus is
on the recollection of the average purchaser, who normally retains a general rather
than specific impression of trademarks. Geigy Chem. Corp. v. Atlas Chem. Indus.,
Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v. Marcon, 102
USPQ2d 1434, 1438 (TTAB 2012); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106,
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108 (TTAB 1975). We do not predicate our analysis on a dissection of the involved
marks; we consider the marks in their entireties. Stone Lion, 110 USPQ2d at 1160;
Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA
1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal;
rather, it must be considered as a whole in determining likelihood of confusion.”).
There is, however, “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 a consideration of the marks in their entireties.” In re Nat’l Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); See also, e.g., In re Dixie
Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997).
The marks here are both phrases that are overall more similar than dissimilar,
particularly with respect to meaning and commercial impression. The cited mark
JUST ANOTHER DAY connotes another ordinary day in a series of similar days.
Applicant’s mark, by adding the wording “IN PARADISE,” plays off this concept
connoting another day in a series of blissful days.6 Applicant has acknowledged that
the marks have reciprocal meanings, asserting that “[a]dding the phrase IN
PARADISE renders the entire phrase ironic, matching an ordinary day with a blissful
one in a play on words.”7 Accordingly, the marks share a similar overall commercial
impression connoting the sameness or uniformity of days, whether the days are good,
6 The record includes evidence that Applicant’s mark also may be perceived sarcastically to refer to another day in a series of miserable days. July 19, 2019 Denial of Request for
Reconsideration at TSDR 4-7 and 9-10; see also December 31, 2018 Final Office Action at TSDR 5, 8 and 18-20.
7 Applicant’s Brief, 8 TTABVUE 6.
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bad or ordinary. It is this general concept that is likely to make an impression on and
be remembered by the average consumer of “shirts.” See, e.g., Downtowner Corp. v.
Uptowner Inns, Inc., 178 USPQ 105, 109 (TTAB 1973) (considering the “associative
nature of the terms ‘downtown’ and ‘uptown’ and holding UPTOWNER for motor inn
and restaurant services likely to be confused with DOWNTOWNER for the same
services); Procter & Gamble Co. v. Conway, 419 F.2d 1332, 164 USPQ 301, 304 (CCPA
1970) (MISTER STAIN for a stain removing compound and MISTER CLEAN for
cleaners, cleansers and detergents conveyed the same idea and stimulated the same
mental reaction). Indeed, consumers may perceive Applicant’s mark as a variant of
the cited mark. See, e.g., Schieffelin & Co. v. Molson Cos., Ltd., 9 USPQ2d 2069, 2073
(TTAB 1989) (“Those consumers who do recognize the differences in the marks may
believe that applicant’s mark is a variation of opposer’s mark that opposer has
adopted for use on a different product.”); cf. In re Toshiba Med. Sys. Corp., 91 USPQ2d
at 1271 (VANTAGE TITAN “more likely to be considered another product from the
previously anonymous source of TITAN medical diagnostic apparatus, namely,
medical ultrasound devices”).
In an attempt to distinguish the marks, Applicant asserts that it “holds brands of
renowned country artist Phil Vassar” and that its applied-for-mark is the title of a
number-one song by Phil Vassar that “has risen to the level o f an anthem for Mr.
Vassar’s fans” and has “come to symbolize to country music fans the joy in the ‘little
things’ that comprise our every day.”8 Applicant, however, has not demonstrated that
8 Applicant’s Brief, 8 TTABVUE 2 and 6-7.
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it has any relationship with Vassar.9 In re OEP Enters., 2019 USPQ2d 309323, *14
(TTAB 2019) (Applicant “made no showing” to support certain arguments); see also
Cai v. Diamond Hong, 127 USPQ2d at 1799 (counsel’s arguments are no substitute
for evidence). Moreover, the goods in the involved application are not limited to shirts
for fans of country music or Vassar. Accordingly, there is no basis for finding that the
mark conveys the meaning of Vassar’s song.
Applicant also argues that “the likelihood of confusion is negated because the
phrase is used in association with Phil Vassar and his well-known anthem [‘Just
Another Day in Paradise’]” and “proof of use may show the mark in close proximity
to the mark PHIL VASSAR.”10 The evidence does not support Applicant’s position.
The record includes some articles describing Vassar as a singer/songwriter of a hit
song titled “Just Another Day in Paradise.”11 But the only evidence of Applicant’s use
of the proposed mark for “shirts” are the specimens Applicant submitted with its
application. The specimens are website printouts showing auction packages
consisting of a t-shirt displaying the applied-for-mark signed by Vassar, a signed
photo of Vassar, and a signed Vassar CD.12 These few examples simply are not a
9 The record includes two declarations from counsel, but counsel attests only that the exhibits
attached to the Office action responses are “true and correct” copies of Internet printouts. December 3, 2018 Office Action Response at TSDR 13; July 1, 2019 Request for Reconsideration at TSDR 12.
10 Applicant’s Brief, 8 TTABVUE 8.
11 December 3, 2018 Office Action Response at TSDR 18-36, 69-72, 77-78, 83-84, 86-89, and 91-92.
12 February 16, 2018 specimen.
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sufficient basis for finding that consumers would associate shirts bearing JUST
ANOTHER DAY IN PARADISE with Vassar or his song.
To the extent Applicant is arguing that confusion will be avoided because the
applied-for-mark will be displayed in connection with the mark PHIL VASSAR, such
argument is unavailing. The applied-for-mark does not include the name PHIL
VASSAR, and so if registered, Applicant would be free to use the applied-for-mark on
its own without the name PHIL VASSAR. See In re i.am.symbolic, 123 USPQ2d at
1749 (“To the extent that Symbolic is advocating that we consider another mark,
will.i.am, that is not part of the applied-for mark in analyzing the similarity of the
marks, we decline to do so. The correct inquiry requires comparison of the applied-for
mark, which only includes the words ‘I AM,’ to the registrants’ marks.”); SCM Corp.
v. Royal McBee Corp., 395 F.2d 1018, 158 USPQ 36, 37 n.4 (CCPA 1968) (“Certain
exhibits reflect the parties’ current practice of associating their house marks ‘SCM’
and ‘Royal’ with ‘ELECTRA’ and ‘ELECTRESS’, respectively. However, our concern
here, of course, is whether ‘ELECTRA’, the mark actually registered, and
‘ELECTRESS’, the mark for which registration is sought, are confusingly similar
when applied to the instant goods.”); In re Aquitaine Wine USA, LLC, 126 USPQ2d
1181, 1186 (TTAB 2018) (“We must compare the marks as they appear in the
drawings, and not on any [actual use] that may have additional wording or
information.”).
Finally, the cases Applicant cites to support that the marks have different
commercial impressions are inapposite because in those cases the differences in the
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goods and services resulted in the marks’ different commercial impressions.13 See, e.g.
Coach Servs., Inc, 101 USPQ2d at 1721-22 (finding the mark COACH for educational
materials had a different connotation from COACH for fashion accessories); Blue Man
Prods. Inc. v. Tarmann, 75 USPQ2d 1811, 1820-21 (TTAB 2005) (BLUE MAN
GROUP for entertainment services and musical sound recordings had the
connotation of the appearance of the opposer’s blue-headed performers whereas
applicant’s BLUEMAN mark for cigarettes and tobacco had “no such connotation”);
Here, the goods are the same.
For all of the foregoing reasons, we find that the marks overall are similar in
appearance, sound, meaning and commercial impression. When we take into account
that the degree of similarity necessary to support a likelihood of confusion lessens
when goods are identical in part, as is the case here, we find that the first DuPont
factor tips in favor of finding a likelihood of confusion. See Coach Servs., Inc., 101
USPQ2d at 1722; Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
D. Conclusion
Registrant’s and Applicant’s goods are identical and the trade channels and
classes of consumers overlap. The marks also are overall similar in appearance,
sound, meaning, and commercial impression. Accordingly, even though the evidence
supports that the cited mark is rather weak, we find that Applicant’s mark is likely
to be confused with the cited mark.
13 Applicant’s Brief, 8 TTABVUE 5-6 and 8.
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Decision: The refusal to register Applicant’s mark under Section 2(d) of the
Trademark Act is affirmed.