THIS DISPOSITION IS NOT
`CITABLE AS PRECEDENT
`OF THE TTAB
`
`Mailed:
`February 9, 2006
`Bucher
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________
`
`Trademark Trial and Appeal Board
`________
`
`In re Greenspring Media Group Inc.
`(by change of name from Minnesota Monthly Publications Inc.)1
`________
`
`Serial No. 78298486
`_______
`
`Linda M. Byrne of Crawford Maunu PLLC for Greenspring Media
`Group Inc.
`
`
`Florentina Blandu, Trademark Examining Attorney, Law Office
`112 (Janice O’Lear, Managing Attorney).
`_______
`
`Before Quinn, Bucher and Drost, Administrative Trademark
`Judges.
`
`Opinion by Bucher, Administrative Trademark Judge:
`
`Greenspring Media Group Inc. seeks registration on the
`
`Principal Register of the mark GIRLS NIGHT OUT (standard
`
`character drawing) for services recited in the application, as
`
`follows:
`
`“arranging and conducting trade show
`exhibitions in the field of food and wine
`[featuring food and wine samples and
`demonstrations by gourmet chefs], in
`International Class 35.2
`
`
`1
`Applicant’s name change was recorded with the Assignment
`Division of the United States Patent and Trademark Office at
`Reel 3078, Frame 0133.
`2
`Application Serial No. 78298486 was filed by Minnesota Monthly
`Publications Inc. on September 10, 2003 based upon applicant’s
`allegation of first use anywhere and first use in commerce at least
`
`

`
`Serial No. 78298486
`
`The Trademark Examining Attorney refused registration
`
`under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d),
`
`on the ground that applicant’s mark, when used in connection
`
`with the recited services, so resembles the mark GIRLS NIGHT
`
`OUT (standard character drawing), which is registered for
`
`services recited as “advertising agencies, namely, promoting
`
`the services of retailers through the distribution of printed,
`
`broadcast and Internet promotional materials, and rendering
`
`sales promotion advice as to retail sales events” also in
`
`International Class 35,3 as to be likely to cause confusion, to
`
`cause mistake or to deceive.
`
`When the refusal was made final, applicant appealed and
`
`requested reconsideration of the final decision. On April 7,
`
`2005, the Trademark Examining Attorney denied the request for
`
`reconsideration and the appeal was resumed. The Trademark
`
`Examining Attorney and applicant have each filed a brief in
`
`
`as early as February 2000. The Trademark Examining Attorney has
`been silent about whether or not she accepted applicant’s proffer of
`an amended recitation of services put forward by applicant on
`February 7, 2005 [e.g., the wording shown above in brackets]. Our
`decision herein is not affected by the Trademark Examining
`Attorney’s acceptance or rejection of this proposed addition of a
`clause narrowing the recitation of services. However, should
`applicant ultimately prevail on the issue of likelihood of
`confusion, the application would be forwarded back to the Trademark
`Examining Attorney for consideration of the proposed amendment.
`3
`Reg. No. 2637948 issued to 2XL Strategic Marketing, Inc. on
`October 22, 2002, alleging use in commerce since at least as early
`as March 11, 1999.
`
`- 2 -
`
`

`
`Serial No. 78298486
`
`the case, but applicant did not request an oral hearing before
`
`the Board. We affirm the refusal to register.
`
`In arguing for registrability, applicant contends that
`
`there in no likelihood of confusion with the cited
`
`registration because the trademark register shows this to be a
`
`weak mark for these services, because of the dissimilarity of
`
`the respective services, and because the relevant consumers of
`
`these services are sophisticated purchasers.
`
`By contrast, the Trademark Examining Attorney contends
`
`that the services of applicant and the registrant are related,
`
`and that the channels of trade are closely related, if not
`
`identical. She argues that applicant has failed to
`
`demonstrate why persons attending a wine and food exposition
`
`should be considered sophisticated consumers, and of course,
`
`that even sophisticated consumers are not immune from source
`
`confusion.
`
`Likelihood of confusion
`
`Our determination under Section 2(d) is based upon an
`
`analysis of all of the facts in evidence that are relevant to
`
`the factors bearing upon the issue of likelihood of confusion.
`
`In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
`
`563 (CCPA 1973). In any likelihood of confusion analysis, two
`
`key considerations are the similarities between the marks and
`
`- 3 -
`
`

`
`Serial No. 78298486
`
`the relationship of the goods or services. Federated Foods,
`
`Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
`
`(CCPA 1976).
`
`The marks
`
`Accordingly, we turn first to the du Pont factor focusing
`
`on the similarity of the marks in their entireties as to
`
`appearance, sound, connotation and commercial impression. See
`
`Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
`
`Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
`
`2005). There is no issue with respect to the similarity
`
`between the marks as they are identical, and both are
`
`presented in standard character form. This factor heavily
`
`favors the position of the Trademark Examining Attorney.
`
`Third-Party Use
`
`The sixth du Pont factor requires consideration of any
`
`evidence pertaining to “the number and nature of similar marks
`
`in use on similar goods.” In an attempt to show that
`
`registrant’s mark is less distinctive and is entitled to a
`
`narrow scope of protection, applicant relied upon a number of
`
`third-party registrations of the same, or similar, marks.4
`
`
`4
`We have not listed the third-party marks identified by
`applicant that were the subject of abandoned applications or
`cancelled registrations as they have no probative value as to the
`scope of protection afforded to registrant’s cited mark. Although
`the Office strives for consistency, the fact that years ago an
`Trademark Examining Attorney allowed another application loses all
`
`- 4 -
`
`

`
`Serial No. 78298486
`
`GIRLS NIGHT OUT
`(standard character
`drawing)
`
`for “cosmetic kits composed of a cosmetic bag and one
`or more of the following, antiperspirant, blush,
`body glitter, bubble bath, cologne, cream for the
`body, cream for the eyes, cream for the face,
`cream for the hands, deodorant for personal use,
`eye shadow, hair conditioner, hair shampoo, hair
`spray, hair styling gel, lip gloss, lipstick,
`lotion for the body, lotion for the face, lotion
`for the hands, makeup, makeup remover, mascara,
`nail polish, nail polish remover, non-medicated
`face cleanser, perfume, powder for the body,
`powder for the face, shower gel, soap for the
`body, soap for the face and soap for the hands,”
`in International Class 35;
`
`GIRLS NIGHT IN
`(standard character
`drawing)
`
`for “heat and steam facial saunas; footbaths;
`whirlpool baths for feet; portable electric water
`heaters and aerators for washing and refreshing
`feet, for domestic use; parts and replacement
`parts therefore” in International Class 116;
`
`GIRLS NIGHT-
`OUT PARTIES
`(standard character
`drawing)
`
`This evidence is entitled to little probative value in
`
`for “distributorships and mail order catalog services
`in the field of adult novelty items, marital
`aids, and gift items sold through party plans” in
`International Class 35.7
`
`determining likelihood of confusion. Olde Tyme Foods Inc. v.
`
`Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992);
`
`and Carl Karcher Enterprises, Inc. v. Stars Restaurants Corp.,
`
`35 USPQ2d 1125 (TTAB 1995). The registrations are not
`
`
`relevance if the application is subsequently abandoned due to a
`failure to file a Statement of Use. See Applicant’s appeal brief,
`pp. 4-5.
`5
`Reg. No. 2799879 issued on December 30, 2003 based upon a claim
`of use anywhere and use in commerce since at least as early as March
`4, 2002.
`6
`Reg. No. 2789811 issued on December 2, 2003 based upon a claim
`of use anywhere and use in commerce since at least as early as
`January 17, 2003.
`7
`Reg. No. 2855014 issued on June 15, 2004 based upon a claim of
`use anywhere and use in commerce since at least as early as July 29,
`2002.
`
`- 5 -
`
`

`
`Serial No. 78298486
`
`evidence that the marks are in use, much less that purchasers
`
`are familiar with them. Further, contrary to the gist of
`
`applicant’s remarks, the probative value of this evidence is
`
`greatly diminished by the fact that the goods and services
`
`covered in the third-party registrations are distinctly
`
`different from advertising services.
`
`Moreover, although third-party registrations are
`
`probative to show, in the manner of dictionary definitions,
`
`that the term has a significance or meaning in this field (See
`
`Conde Nast Publications Inc. v. Miss Quality, Inc., 180 USPQ
`
`149 (TTAB 1973)), given the paucity of third-party, registered
`
`marks that are the same as, or similar to, the GIRLS NIGHT OUT
`
`mark, applicant has failed to demonstrate that the term has a
`
`significance or meaning in this field.
`
`Hence, applicant has not rebutted the position of the
`
`Trademark Examining Attorney that registrant’s mark should be
`
`regarded as a strong mark entitled to broad protection.8
`
`Accordingly, this factor weighs in the Office’s favor.
`
`
`8
`Moreover, although applicant points out that the term “Girls
`Night Out” is “ubiquitous” in our society [e.g., applicant got
`16.8 million hits on a Google search done on February 1, 2005], this
`result has no relevance to the question before us as to the strength
`of this term to serve as a source indicator for registrant’s
`services.
`
`- 6 -
`
`

`
`Serial No. 78298486
`
`The Services
`
`With respect to the services, it is well established that
`
`the services of registrant and of applicant need not be
`
`similar or competitive, or even that they are offered through
`
`the same channels of trade, to support a holding of likelihood
`
`of confusion. It is sufficient that the respective services
`
`of registrant and applicant are related in some manner, and/or
`
`that the conditions and activities surrounding the marketing
`
`of the 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 & Telephone Corp., 197 USPQ 910, 911
`
`(TTAB 1978). The issue, of course, is not whether purchasers
`
`would confuse the goods or services, but rather whether there
`
`is a likelihood of confusion as to the source of the goods (or
`
`services). In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
`
`In comparing the services, we initially note that where
`
`identical marks are involved, as is the case here, the degree
`
`of similarity between the respective services that is required
`
`to support a finding of likelihood of confusion declines. In
`
`re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688-1689
`
`- 7 -
`
`

`
`Serial No. 78298486
`
`(Fed. Cir. 1993); Time Warner Entertainment Co. v. Jones, 65
`
`USPQ2d 1650, 1661 (TTAB 2002); and In re Opus One Inc., 60
`
`USPQ2d 1812 (TTAB 2001).
`
`In support of her position on the relatedness of the
`
`services, the Trademark Examining Attorney initially did a
`
`Google search of the words TRADE SHOWS AND ADVERTISING
`
`AGENCIES. Summary pages for hits 1 – 40 and 71 - 80 were
`
`attached to her Office action of March 5, 2004. She attached
`
`additional Internet web pages to later Office actions.
`
`Several of the websites are municipal, regional or
`
`national directories of advertising agencies, some of which
`
`list “trade shows support” as one of the services offered by
`
`advertising agencies.9 At least one site reports that
`
`advertising agencies are often reluctant to include trade
`
`
`▪ http://dir.yahoo.com/
`9
`▪ http://www.ad-mkt-review.com/public_html/docs/fs040.html,
`Advertising and Marketing Review: “you are either already a trade
`show exhibitor, or you should be”
`▪ http://directory.google.com/Top/Business/Business_Services/
`Event_Planning_and_Production/Convention_and_Trade_Show_Services/Exh
`ibit_and_Display_Vendors/Custom_Exhibits/
`▪ http://www.business.com/directory/advertising_and_marketing/
`advertising/agencies/full-service/us_states/illinois/
`▪ http://boston.about.com/
`▪ http://www.houstonadagencies.com/
`▪ http://www.pureim.com/chicago/chicago-advertising-
`agency/chicago-advertising-agency.htm, Pure Imagination, a Chicago
`advertising agency does trade show booth design
`▪ http://www.coloradoarts.net/
`
`- 8 -
`
`

`
`Serial No. 78298486
`
`shows in their clients’ marketing plans.10 However, many of
`
`the listed sites are totally irrelevant to the point for which
`
`the Trademark Examining Attorney cites to them.11 For example,
`
`given the way the syntax of the search was set up, there is
`
`nothing in some of the sites about “trade shows,” but rather,
`
`the words “trade” and “shows” appeared in distinctly different
`
`portions of the website.12 Several websites show that national
`
`associations of advertising agencies have their own industry
`
`trade shows.13 Some other sites appear to be Internet portals
`
`
`▪ http://www.tenonline.org/art/mm/9708.html, Trade Show
`10
`Marketing: Ad Agencies … Help or Hindrance?
`▪ http://www.schipul.com/agencies/index.asp, hypothetical
`11
`intended to sell an Internet tracking function: “It might also
`interest you that we have turned around complete projects with full
`Tendenci™ marketing tracking functionality in less than a week for
`those sometimes unreasonable clients of yours. Ya, you know the
`ones with the trade show next week they forgot to mention.”
`▪ http://www.apparelnews.net/Links/tradeshows.html, major
`international apparel and textile trade shows
`▪ http://www.advertising.com/Contact/ContactAgency.html,
`information request form to have an Advertising.com representative
`evaluate one’s objectives
`▪ http://www.jobpilot.cz/content/service/jobjournal/, a job
`listing in Switzerland
`▪ http://www.buyusa.gov/korea/en/, U.S. government agency
`promoting U.S. business interests in South Korea
`▪ http://www.gcn.com/adinfo/shows.pdf, Government Computer News
`blurbs
`▪ http://www.vss.com/, Veronis Suhler Stevenson, an investment
`firm serving media clients in North America and Europe.
`▪ http://www.museum.tv/archives/etv/A/htmlA/advertisinga/
`12
`advertisinga.htm
`▪ www.adforum.com
`▪ http://archive.thisisworcestershire.co.uk/2002/5/2/
`272417.html
`▪ www.aaaa.org/, American Association of Advertising Agencies
`13
`has an annual conference including a tradeshow
`▪ www.adweek.com discusses American Association of Advertising
`Agencies’ annual media conference and tradeshow
`
`- 9 -
`
`

`
`Serial No. 78298486
`
`for foreign or international ventures.14 Others are primarily
`
`devoted to foreign food and wine shows, but do include some
`
`trade shows in the United States.15
`
`In summarizing these Internet hits, we find that many
`
`were not particularly helpful in showing the relationship
`
`between advertising agency services and arranging trade show
`
`exhibitions in any field. On the other hand, a number of
`
`
`▪ http://www.ana.net/news/2001/01_18_01.cfm, a national e-
`business conference and trade show, designed to help advertising
`agencies and advertising executives steeped in Internet marketing
`practices
`▪ http://www.mediapost.com/index.cfm
`▪ http://www.ctv.ca/servlet/ArticleNews/story/CTVNews/, in
`14
`Canada
`▪ http://trade.indiamart.com/offer/media-advertising, the
`gateway to markets in India
`▪ http://www.modaitalia.net/common/about.htm, the Italian
`Fashion Portal
`▪ http://www.internettradeshowlist.com, IT and Business Trade
`Shows Around the World
`▪ http://www.theemrgroup.com/index.html, in the UK
`▪ http://archive.thisisworcestershire.co.uk/2002/5/2/
`272417.html, in the UK
`▪ http://www.tdctrade.com/prodmag/house/hou199811nw.htm, in
`Hong Kong
`▪ http://www.world-food.ru/about/index_e.asp or
`http://www.world-food.ru/eng/about/sections/, World Food Show and
`Conference in Moscow.
`▪ http://www.expocentral.com/food_and_beverage/industry_food_
`15
`and_beverage_wine.html, local, national and global trade shows and
`companies organized into subject-based categories and sub-
`categories, including wine trade shows in cities in the United
`States, including Boston, New Orleans, San Francisco and Sacramento
`▪ http://atn-riae.agr.ca/events/3683_e.htm, New Brunswick
`office of the Agri-Food Trade Service, Canada, website listing food
`trade shows from seventy countries chosen based on their relevance
`to the agri-food, fish and seafood sectors, including expositions in
`Washington DC, New York City, Boston, Chicago, San Francisco, Los
`Angeles, Long Beach, Portland (OR), and Tacoma
`▪ http://www.divbusiness.com/ts_byindustry_detail.asp?Show
`TypeID=5, of ten shows, all but one is offered within Australia,
`that one exception being an office in Portland, ME.
`
`- 10 -
`
`

`
`Serial No. 78298486
`
`these websites do make it clear that it is not unusual that
`
`among the services advertising agencies offer to their retail
`
`clients, one such service is support for trade shows.
`
`Applicant argues that its services “function in a
`
`specialized and niche area of commercial discourse that is
`
`separate and distinct from ‘advertising agencies’.”
`
`Applicant’s brief, p. 7. Applicant goes on to argue that
`
`“[t]hese services are NOT a sub-set of advertising agency
`
`services.” Applicant’s brief, p. 8, EMPHASIS in original. In
`
`support of its position, applicant argues there are also
`
`differences in the trade channels and classes of purchasers.
`
`However, other than naming retailers, there are no
`
`restrictions as to the retail field of registrant’s customers.
`
`Hence, we must presume that registrant’s advertising services
`
`promoting the services of retailers includes those in the
`
`field of food and wine, and rendering advice as to retail
`
`sales events would include events in the field of food and
`
`wine, such as trade shows.
`
`Although the respective services recited herein are
`
`different, we find that registrant’s advertising agency
`
`services and applicant’s arranging trade show exhibitions in
`
`the field of food and wine are commercially related. Again,
`
`the test is not whether purchasers would confuse advertising
`
`agency services generally with arranging and conducting trade
`
`- 11 -
`
`

`
`Serial No. 78298486
`
`show exhibitions in the field of food and wine, but rather
`
`whether purchasers would be confused as to the source of these
`
`services. On balance, we conclude that this factor favors the
`
`position taken by the Trademark Examining Attorney.
`
`Trade Channels
`
`It is clear on the face of registrant’s recitation of
`
`services that its customers are retailers seeking promotional
`
`services and advice on retail sales events.
`
`As to applicant’s services, the record demonstrates that
`
`the success of the “Twin Cities Food and Wine Experience,” the
`
`event with which this mark is used, depends upon the response
`
`of demographically-targeted consumers – namely, women from the
`
`metropolitan areas of Minneapolis and St. Paul, Minnesota,
`
`having disposable income who are interested in an experience
`
`of gourmet food and fine wine. However, applicant does not
`
`dispute the fact that its primary customers are the featured
`
`gourmet chefs from area restaurants and vintners from various
`
`wineries – entrepreneurs on whose behalf the trade show is
`
`arranged each year. These same chefs and vintners may very
`
`well have had occasion in the past to seek out an advertising
`
`agency offering services like those provided by registrant.
`
`Given this overlap of potential customers, we find that
`
`chefs and vintners familiar with GIRLS NIGHT OUT advertising
`
`services would likely believe that GIRLS NIGHT OUT for the
`
`- 12 -
`
`

`
`Serial No. 78298486
`
`arranging and conducting of food and wine trade shows emanates
`
`from the same source, even though applicant does not provide
`
`advertising agency services.
`
`Conditions of Sale and Classes of Purchasers
`
`
`
`As to the du Pont factor focusing on the conditions under
`
`which and buyers to whom these sales are made, applicant
`
`argues that its customers are careful, sophisticated
`
`consumers:
`
`For the present application, the sophistication
`of the consumers is a particularly important
`consideration in that the trade show events are
`complex and expensive events. Thus, the
`relevant consumer in the present case is going
`to be very discerning and will typically spend
`a large sum of time contemplating any purchase
`of services from the Applicant by first
`determining if and how the Applicant can
`effectively provide the trade show services.
`
`Applicant’s appeal brief, p. 11.
`
`In response, the Trademark Examining Attorney argues that
`
`applicant has failed to prove that persons merely attending a
`
`wine and food exposition are sophisticated consumers (appeal
`
`brief, p. 7). Consistent with our discussion supra about
`
`trade channels, it appears from the above quotation that
`
`rather than referring to the women attending the food
`
`exposition, applicant is referring instead to restaurant
`
`owners, managers, vintners and gourmet chefs. Nonetheless, we
`
`are not convinced from this record that every restaurateur,
`
`- 13 -
`
`

`
`Serial No. 78298486
`
`chef or vintner has a great deal of sophistication in
`
`marketing and promotional activities. Moreover, even if we
`
`accept the proposition “that the trade show events are complex
`
`and expensive events,” and hence, presume that purchases of
`
`applicant’s and registrant’s related services will be made
`
`with at least some degree of care and sophistication, it is
`
`well settled that the fact that consumers may indeed exercise
`
`some deliberation in choosing the respective services at issue
`
`“does not necessarily preclude their mistaking one trademark
`
`for another” or that they otherwise are entirely immune from
`
`confusion as to source or sponsorship. Wincharger Corp. v.
`
`Rinco, Inc., 297 F.2d 261, 132 USPQ 289, 292 (CCPA 1962). See
`
`also In re Decombe, 9 USPQ2d 1812, 1814-15 (TTAB 1988); In re
`
`Hester Industries, Inc., 231 USPQ 881, 883 (TTAB 1986); and In
`
`re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983). Such
`
`is especially the case where, as here, the marks at issue are
`
`identical in all respects.
`
`Resolve any doubt against the newcomer
`
`Finally, after weighing all the relevant du Pont factors,
`
`should we retain any doubt on the issue of likelihood of
`
`confusion, such doubt must be resolved in favor of the prior
`
`user and against the newcomer. Gillette Canada Inc. v. Ranir
`
`Corp., 23 USPQ2d 1768 (TTAB 1992).
`
`- 14 -
`
`

`
`Serial No. 78298486
`
`Conclusion
`
`Accordingly, we conclude that customers and potential
`
`customers, who are familiar or acquainted with registrant’s
`
`mark GIRLS NIGHT OUT, which is registered for providing
`
`advertising agency services for retailers and rendering sales
`
`promotion advice about retail sales events, would be likely to
`
`believe, upon encountering applicant’s identical GIRLS NIGHT
`
`OUT mark for arranging and conducting trade show exhibitions
`
`in the field of food and wine, that such related services
`
`emanate from, or are sponsored by or associated with, the same
`
`source.
`
`Decision: The refusal to register under Section 2(d) of
`
`the Lanham Act is hereby affirmed.
`
`- 15 -