Crown Garland, LLC

This Opinion is not a
Precedent of the TTAB

Mailed: July 12, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Crown Garland, LLC
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Serial No. 87776751
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Mark Terry of Mark Terry PA,
for Crown Garland, LLC.

John LaMont, Trademark Examining Attorney, Law Office 123,
Susan Hayash, Managing Attorney.

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Before Kuhlke, Kuczma and Pologeorgis,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Crown Garland, LLC (“Applicant”) seeks registration on the Principal Register for

the mark COSMOS INTERNATIONAL PAGEANTS, in standard characters with

INTERNATIONAL PAGEANTS disclaimed, for services identified as

“Entertainment in the nature of beauty pageants” in International Class 41.1

1 ApplicationSerial No. 87776751 was filed on January 30, 2018, based on an allegation of an
intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C.
§1051(b).
Serial No. 87776751

The Trademark Examining Attorney has refused registration of Applicant’s mark

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 identified services, so resembles

the mark shown below (with the wording CHINESE and PAGEANT in Chinese

characters and English disclaimed) for, inter alia, “conducting and organizing of

beauty pageants” and conducting and organizing entertainment beauty contests” as

to be likely to cause confusion, mistake or deception:2

When the Section 2(d) refusal was made final, Applicant appealed and briefs have

been filed. We affirm the refusal to register.

I. Likelihood of Confusion

When the question is 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., 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 services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192

2Registration No. 3841848, issued on August 31, 2010, Sections 8 and 15 declaration accepted
and acknowledged.

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Serial No. 87776751

USPQ 24 (CCPA 1976). See also M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d

1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (even within the du Pont list of factors,

only factors that are “relevant and of record” need be considered).

A. Similarity of the Services/Channels of Trade/Consumers

With regard to the services, channels of trade and classes of consumers, we must

make our determinations under these factors based on the services as they are

identified in the application and cited registration. See In re Dixie Rests. Inc., 105

F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Capital

Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.

2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001

(Fed. Cir. 2002); Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937,

16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Applicant presents no argument on these du

Pont factors.

Applicant’s “Entertainment in the nature of beauty pageants” are encompassed

by and, as such, legally identical to Registrant’s “conducting and organizing of beauty

pageants” and “conducting and organizing entertainment beauty contests.” Moreover,

because the services are legally identical and there are no limitations as to channels

of trade or classes of purchasers, we presume that Applicant’s and Registrant’s

services will be offered via the same channels of trade to the same classes of

consumers. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)

(even though there was no evidence regarding channels of trade and classes of

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consumers, the Board was entitled to rely on this legal presumption in determining

likelihood of confusion).

In view thereof, these du Pont factors strongly favor a finding of likelihood of

confusion.

B. The number and nature of similar marks in use on similar goods

Before we turn to a comparison of the marks, we address Applicant’s argument

that the common term COSMOS in the marks is weak. To support this argument,

Applicant relies on several third-party registrations that contain the word COSMOS

— there is no evidence of third-party use.3

Under the sixth du Pont factor, a mark’s commercial strength may be curtailed by

third-party use of similar marks with similar goods or services. Jack Wolfskin

Austrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U.,

797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015); Juice Generation, Inc. v. GS

Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-75 (Fed. Cir. 2015). However,

registrations are not evidence of use in the marketplace. AMF Inc. v. American

Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 128, 129 (CCPA 1973) (“The

existence of these registrations is not evidence of what happens in the market place

or that customers are familiar with them nor should the existence on the register of

confusingly similar marks aid an applicant to register another likely to cause

confusion, mistake or to deceive.”). Active third-party registrations for similar goods

3August 22, 2018 Response, TSDR at 15-35. All citations to the application record are to
the Trademark Status and Document Retrieval (“TSDR”) system.

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Serial No. 87776751

or services may be relevant to show that a mark or a portion of a mark is descriptive,

suggestive, or so common that the public will look to other elements to distinguish

the source of the goods or services. See, e.g., In re i.am.symbolic, 866 F.3d 1315, 123

USPQ2d 1744, 1751 (Fed. Cir. 2017); Jack Wolfskin v. New Millennium, 116 USPQ2d

at 1129; Juice Generation v. GS Enters., 115 USPQ2d at 1674-75. However, the third-

party registrations Applicant has submitted are not for similar services. Several are

for the COSMOS soccer team for use in connection with “entertainment in the nature

of soccer exhibitions” (Reg. Nos. 4212378, 4202646, 4202645, 4194899, 3451687,

4522113). Other registrations are for “social club services” (Reg. No. 5336574),

“educational services … in the field of arts” (Reg. No. 5155006), “educational services

… in the field of science” (Reg. No. 47214485), “museum services” (Reg. No. 3993689),

“educational services … in the field of medical therapies” (Reg. No. 3796214), and

“educational services … to assist … living a more positive and productive life” (Reg.

No. 1487861).4 These registrations have “no bearing on the strength of the term in

the context relevant to this case.” Tao Licensing, LLC v. Bender Consulting Ltd.

d/b/a/, 125 USPQ2d 1043, 1058 (TTAB 2017). To the extent Applicant is arguing

that they cover services in the same International Class, such argument is not

persuasive. The classification of goods and services has no bearing on the question of

4Two other registrations issued under Section 44, 15 U.S.C. § 1126, and one issued under
Section 66(a), 15 U.S.C. § 1141f, based on foreign registrations and do not have Section 8, 15
U.S.C. § 1058, declarations of continuing use. Generally, such registrations have little to no
probative value on the perception of U.S. consumers. Cf. In re 1st USA Realty Prof’ls, Inc., 84
USPQ2d 1581, 1583 (TTAB 2007). Moreover, they are also for different services.

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Serial No. 87776751

likelihood of confusion. In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047,

1051 (Fed. Cir. 2018).

Applicant has not shown that the word COSMOS is in such widespread use for

similar services that consumers have come to distinguish marks containing that term

based on minute differences. See i.am.symbolic, 123 USPQ2d at 1751 (stating that

evidence of third-party use for similar goods “falls short of the ‘ubiquitous’ or

‘considerable’ use of the mark components present in [applicant’s] cited cases”); cf.

Jack Wolfskin v. New Millennium, 116 USPQ2d at 1136 (discussing “voluminous

evidence” of registration and use of paw print design elements); Juice Generation v.

GS Enters., 115 USPQ2d at 1674 (referring to evidence of “a fair number” of third-

party marks). In view thereof, this factor is neutral.

C. Similarity/Dissimilarity of the Marks

We consider Applicant’s mark COSMOS INTERNATIONAL PAGEANTS and

Registrant’s mark MISS CHINESE COSMOS PAGENT (and design) and compare

them “in their entireties as to appearance, sound, connotation and commercial

impression.” Palm Bay Imps. 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). “Similarity in any one of these elements may be sufficient to find the

marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing

In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)). When comparing marks,

the test is not whether the marks can be distinguished in a side-by-side comparison,

but rather whether the marks are sufficiently similar in terms of their overall

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Serial No. 87776751

commercial impression that confusion as to the source of the services offered under

the respective marks is likely to result. Midwestern Pet Foods, Inc. v. Societe des

Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012). In

addition, because Applicant’s mark is in standard characters it is not limited to any

particular depiction. The rights associated with a mark in standard characters reside

in the wording and not in any particular display. In re RSI Sys., LLC, 88 USPQ2d

1445 (TTAB 2008); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB

1988); TMEP § 1207.01(c)(iii) (Oct. 2018). We must consider Applicant’s mark

“regardless of font style, size, or color,” Citigroup Inc. v. Capital City Bank Group,

Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011), including

iterations that emphasize the common element COSMOS.

Further, marks “‘must be considered … in light of the fallibility of memory ….’” In

re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting

San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196

USPQ 1 (CCPA 1977)). The proper focus is on the recollection of the average

customer, who retains a general rather than specific impression of the marks. Inter

IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB 2014); Sealed Air Corp.

v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Finally, we keep in mind that

“when marks would appear on virtually identical goods or services, the degree of

similarity necessary to support a conclusion of likely confusion declines.” Century 21

Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed.

Cir. 1992). See also Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d

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Serial No. 87776751

1797, 1801 (Fed. Cir. 2018); Bridgestone Americas Tire Operations LLC v. Fed. Corp.,

673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012).

Applicant argues that the Examining Attorney did not “give enough weight to the

visual, audio and connoted differences between the words COSMOS

INTERNATIONAL PAGEANTS and MISS CHINESE COSMOS PAGEANT on the

overall impression of the marks.” 7 TTABVUE 24. We find no error in the Examining

Attorney’s analysis. Rather, both Applicant and the Examining Attorney analyzed

the marks in their entireties while at the same time looking at different elements in

the marks, which is appropriate. While marks must be considered in their entireties,

“‘in articulating reasons for reaching a conclusion on the issue of confusion, 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.”’ Detroit Athletic, 128 USPQ2d at 1051

(quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).

Not surprisingly, they came to different conclusions as to what element dominates

the respective marks in terms of consumer impressions. The Examining Attorney

contends that the common word COSMOS is the dominant element in both marks;

whereas, Applicant takes the position that MISS CHINESE is the dominant portion

of the cited mark.

We find that the word COSMOS is the most dominant part of Applicant’s mark.

The disclaimed terms “INTERNATIONAL PAGEANTS” are highly descriptive in

association with beauty pageants. Descriptive or generic matter may have less

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Serial No. 87776751

significance in creating a mark’s commercial impression and little weight in

likelihood of confusion determinations. See Detroit Athletic, 128 USPQ2d at 1050;

Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir.

2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive

component of a mark may be given little weight in reaching a conclusion on likelihood

of confusion.”’) (quoting In re Nat’l Data Corp., 224 USPQ at 752); In re Code

Consultants, Inc., 69 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often

“less significant in creating the mark’s commercial impression”). Similarly, the

disclaimed terms “CHINESE” and “PAGEANT” in the cited registered mark also have

descriptive significance for the identified services. While the word COSMOS may not

fully stand alone in Registrant’s mark, to the extent that it is part of a phrase MISS

CHINESE COSMOS PAGEANTS, it appears as the name of the pageant that is

further defined by the participants in that particular COSMOS PAGEANT.

Moreover, the word COSMOS in both marks is the only term that is not merely

descriptive or, in the case of the word MISS, highly suggestive. As Applicant explains

the “word MISS is honorific and has a descriptive significance – i.e., representative

of the gender and marital status.” 7 TTABVUE 26.

Additions or deletions to marks may be sufficient to avoid a likelihood of confusion

if: (1) the marks in their entireties convey significantly different commercial

impressions; or (2) the matter common to the marks is not likely to be perceived by

purchasers as distinguishing source because it is merely descriptive or diluted. See,

e.g., Citigroup v. Capital City Bank Group, 98 USPQ2d at 1261 (affirming TTAB’s

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holding that contemporaneous use of applicant’s CAPITAL CITY BANK marks for

banking and financial services, and opposer’s CITIBANK marks for banking and

financial services, is not likely to cause confusion, based, in part, on findings that the

phrase “City Bank” is frequently used in the banking industry and that “CAPITAL”

is the dominant element of applicant’s marks, which gives the marks a geographic

connotation as well as a look and sound distinct from opposer’s marks); Shen Mfg. Co.

v. Ritz Hotel Ltd., 393 F.3d 1238, 1245, 73 USPQ2d 1350, 1356-57 (Fed. Cir. 2004)

(reversing TTAB’s holding that contemporaneous use of THE RITZ KIDS for clothing

items (including gloves) and RITZ for various kitchen textiles (including barbeque

mitts) is likely to cause confusion, because, inter alia, THE RITZ KIDS creates a

different commercial impression). Here, it is the common element that has the most

source identifying significance. The addition of the terms MISS and CHINESE in the

cited mark and INTERNATIONAL in the Applicant’s mark do not serve to change

the commercial impression in a way that obviates likely confusion.

Applicant asserts that its “mark provides a commercial impression of being all-

inclusive to women of all nationalities, cultures and countries, due to the dominant

portion of Applicant’s mark – COSMOS – which encompasses the entire universe [but

t]he cited mark, however, provides the commercial impression of a pageant that

caters to women of Chinese or mainly Chinese origin, due to the dominant portion of

the cited mark – MISS CHINESE [giving] an impression of being more exclusive and

limited to Chinese or main[ly] Chinese contestants.” 7 TTABVUE 31. Applicant is

correct in observing that “the cited mark presumably caters to single females of full

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or partial Chinese ethnicity or origin [and] Applicant’s mark is broad and not limited

by gender, marital status, or ethnic origin … .” 7 TTABVUE 26. However, rather than

being “a noticeable difference” that would distinguish the marks, the additional

descriptors in the mark in the cited registration and the absence of such descriptors

in the cited mark merely serve “to identify and differentiate the … pools of

contestants for the respective pageants, not the source of the two pageants, which is

likely to be determined by consumers based on the presence of” COSMOS in both

marks. Miss Universe L.P., LLLP v. Community Marketing, Inc., 82 USPQ2d 1562,

1570 (TTAB 2007); see also Miss Universe Inc. v. Drost, 189 USPQ2d 212 (TTAB 1975)

(likely confusion between MISS NUDE U.S.A. and MISS U.S.A. where the word

NUDE is merely an adjective, subordinate to the notation U.S.A.).

Applicant further argues that the design element in the Registrant’s mark is a

significant point of distinction “because its placement, size, and location, draws the

viewer’s eye to the design portion before the viewer can consider the textual portion.”

7 TTABVUE 29. It is well established that “[i]n the case of a composite mark

containing both words and a design, ‘the verbal portion of the mark is the one most

likely to indicate the origin of the goods to which it is affixed,”’ Viterra, 101 USPQ2d

at 1908 (quoting CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir.

1983)), because “the literal component of brand names likely will appear alone when

used in text and will be spoken when requested by consumers.” Id. at 1911. See also,

In re Bay State Brewing Company, Inc., 117 USPQ2d 1958, 1961 (TTAB 2016); L.C.

Licensing, Inc. v. Berman, 86 USPQ2d 1883, 1887 (TTAB 2008). Moreover, the design

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Serial No. 87776751

of a figure enhances the connotation and commercial impression of a beauty pageant,

the legally identical services. The Chinese characters have the identical meaning of

the English wording and are also disclaimed. For those consumers who are familiar

with these characters the connotation and commercial impression is the same and for

those who are not the characters do not change the connotation or commercial

impression as they will focus on the English wording.

We find that, viewed as a whole, the similarities between the marks in

appearance, sound, connotation and commercial impression, due to the identical word

COSMOS combined with the respective words PAGEANT and PAGEANTS, outweigh

the dissimilarities. Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 110

USPQ2d at 1161. In view thereof, the du Pont factor of the similarity of the marks

favors a finding of likelihood of confusion.

II. Conclusion

Overall, we find that in view of the legally identical services, trade channels and

classes of customers and the similarity of the marks, confusion is likely between

Applicant’s mark COSMOS INTERNATIONAL PAGEANT and Registrant’s mark

MISS CHINESE COSMOS PAGEANT (and design).

Decision: The refusal to register Applicant’s mark is affirmed.

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