Offc Action Outgoing

The applicant has appealed the final refusal to register the mark PROPAGANDA for “advertising and consulting services in the areas of marketing and branding; management of professional athletes and entertainers; arranging and conducting marketing promotional events for others; advertising, including promotion of products and services for third parties through sponsorship arrangements and license agreements relating to various events; and public relations.” Registration is refused pursuant to Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), on the ground that the mark, when used in connection with the identified services, is likely to be confused with the mark in U.S. Registration No. 2729657.

FACTS

On November 16, 2005, the applicant, Propaganda Headquarters, Inc., applied for registration of the mark PROPAGANDA on the Principal Register, for use in connection with “advertising and consulting services in the areas of marketing, branding and product development; management of professional athletes and entertainers; arranging and conducting marketing promotional events for others; advertising, including promotion of products and services of third parties through sponsorship arrangements and license agreements relating to various events; and public relations.”

On May 25, 2006, the examining attorney issued an Office action, refusing registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant’s mark is likely to be confused with U.S. Registration No. 2729657 for the mark PLANET PROPAGANDA used in connection with “advertising agency services, namely, promoting the services of others through television, radio, newspaper, magazine, direct mail, brochures, outdoor billboards, and Internet websites; business marketing consulting services, public relations consultation; and creating trademarks and service marks for others, namely, business and product naming.” The applicant was also required to amend the recitation of services to clarify the nature of the “product development” services.

The applicant submitted a response on November 25, 2006 traversing the refusal, wherein it agreed that the marks are similar, but argued: (1) that the services are different because its services are marketed to mid- to- large size companies in the sporting industry; and (2) that there is no evidence that the registrant caters to the sports industry or that the applicant and registrant have any overlapping clientele. The amended identification of services was accepted and made of record.

On January 5, 2007, the refusal to register was maintained and made final.

This appeal followed.

ARGUMENT

The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), listed the principal factors to consider in determining whether there is a likelihood of confusion. Not all of the DuPont factors are relevant or given the same weight in every case, and any one of the factors listed may be dominant in any given case, depending upon the evidence of record. See Opryland USA Inc. vs. The Great American Music Show Inc., 23 USPQ2d 1471, 1473 (Fed. Cir. 1992). In this case the following factors are the most relevant: similarity of the marks, similarity of the goods and similarity of the trade channels of the goods.

I. THE APPLICANT’S MARK PROPAGANDA IS CONFUSINGLY SIMILAR TO THE REGISTRANT’S MARK PLANET PROPAGANDA.

The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977). TMEP §§1207.01(b) et seq.

The applicant’s mark is PROPAGANDA. The registrant’s mark is PLANET PROPAGANDA. The marks are similar because they both contain the identical term PROPAGANDA. It is noted that the applicant makes the following statement in both its response and its brief:

“Applicant disagrees with Examining Attorney's determination that the two marks are identical in appearance but does agree that they are similar because Registrant's mark contains the words PLANET in addition to PROPAGANDA.”

In neither action did the examining attorney take the position that the marks are identical. Rather, in both the first and final Office actions, the examining attorney explained that the marks are similar because they contain the identical term PROPAGANDA. (Emphasis added). It is well settled that when the applicant’s mark is compared to a registered mark, “the points of similarity are of greater importance than the points of difference.” Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956). TMEP §1207.01(b). In this case, the point of similarity between the marks is the identical term PROPAGANDA. This similarity is more significant than the difference between the marks, namely, the additional term PLANET that appears in the registrant’s mark, but not in the applicant’s mark. Marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark. See e.g., Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §§1207.01(b)(ii) and (b)(iii). In the present case, the applicant’s mark does not create a distinct commercial impression because it contains the same common wording, PROPAGANDA, as the registrant’s mark, and there is no other additional wording to distinguish it from the registrant’s mark.

Moreover, in its brief, the applicant concedes that the marks are similar, arguing only that the PROPAGANDA mark will not be directed to the same clientele as the PLANET PROPAGANDA mark. (Brief at page 2). Thus, the primary issue in this case is whether the services and the channels of trade are related such that use of similar marks in connection with the services is likely to cause confusion.

II. THE APPLICANT’S SERVICES AND THE REGISTRANT’S SERVICES ARE CLOSELY RELATED, AS ARE THE CHANNELS OF TRADE AND CLASSES OF PROSPECTIVE PURCHASERS.

The second step in the Section 2(d) analysis of likelihood of confusion is a comparison of the services to determine if they are related or if the activities surrounding their marketing are such that confusion as to the origin is likely. In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) ; In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co. V. Scott Paper Co., 200 USPQ 738 (TTAB 1978).

Likelihood of confusion is determined on the basis of the services identified in the application and registration. If the application or registration describes services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the identification encompasses all services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers. See In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (“With reference to the channels of trade, applicant’s argument that its goods are sold only in its own retail stores is not persuasive …There is no restriction [in its identification of goods] as to the channels of trade in which the goods are sold”); TMEP §1207.01(a)(iii).

The applicant’s services are identified as: “advertising and consulting services in the areas of marketing and branding; management of professional athletes and entertainers; arranging and conducting marketing promotional events for others; advertising, including promotion of products and services for third parties through sponsorship arrangements and license agreements relating to various events; and public relations.” The registrant’s services include “advertising agency services, namely, promoting the services of others through television, radio, newspaper, magazine, direct mail, brochures, outdoor billboards, and Internet websites; business marketing consulting services, public relations consultation; and creating trademarks and service marks for others, namely, business and product naming.”

The registration is not limited in any way; the advertising agency services and public relations consultation are not restricted as to nature, type, channels of trade or classes of purchasers. Thus, it is presumed that the registrant’s advertising and public relations services are provided to athletes, sports companies, and others in the sports industry, as these fields are all considered “normal channels of trade.” The registrant’s broader advertising and marketing description of services encompasses sports marketing as well as the other services identified in the applicant’s description of services. While the applicant argues that its services are limited to mid-to-large size companies in the action sports industry, the applicant did not limit its description of services to this industry. However, even if the applicant had limited its services to the action sports industry, it would be to no avail because the registrant’s description of services is not limited and thus is broad enough to include this industry.

Moreover, advertising directed specifically to a particular industry, such as the sports industry, is clearly within the registrant’s normal zone of expansion. Any goods or services in the registrant’s normal fields of expansion must also be considered in order to determine whether the registrant’s goods or services are related to the applicant’s identified goods or services for purposes of analysis under Section 2(d). In re General Motors Corp., 196 USPQ 574 (TTAB 1977). The test is whether purchasers would believe the product or service is within the registrant’s logical zone of expansion. CPG Prods. Corp. v. Perceptual Play, Inc., 221 USPQ 88 (TTAB 1983); TMEP §1207.01(a)(v). In this case, purchasers who encounter the applicant’s mark are likely to mistakenly believe that the services come from the same source as the registrant’s more general advertising and marketing services.

The applicant argues that its business name, PROPAGANDA HEADQUARTERS, is highly recognized and well known in the sports industry, concluding that there is no likelihood of confusion with the registrant’s mark. This argument is not persuasive. The applicant is not seeking to register PROPAGANDA HEADQUARTERS, but is only seeking to register PROPAGANDA. As conceded by the applicant, PROPAGANDA and PLANET PROPAGANDA are similar marks. Inasmuch as the services are also related, consumers are likely to be confused as to the source of the services.

CONCLUSION

The foregoing demonstrates that the applicant’s mark PROPAGANDA is likely to cause confusion with the mark PLANET PROPAGANDA due to the similarities in the marks and services. Accordingly, it is respectfully requested that the refusal to register the mark under Trademark Act Section 2(d), 15 U.S.C. §1052(d), be affirmed.

Respectfully submitted,

/Patty Evanko/

Trademark Attorney

Law Office 117

571-272-9404

patty.evanko@uspto.gov (questions only)

Loretta C. Beck

Managing Attorney

Law Office 117