This Opinion is not a
Precedent of the TTAB

Mailed: July 23, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

TRADEMARK TRIAL AND APPEAL BOARD
_____

Jonathan Robles dba Variance
Magazine
v.
Crony, LLC

Opposition No. 91235766
to Application Serial No. 87062163

Kevin Hartley of Trust Tree Legal PC
for Opposer, Jonathan Robles dba Variance Magazine.

Samuel Ollunga of Thomson Gabriele & Ollunga LLP
for Applicant, Crony, LLC.
_____

Before Bergsman, Kuczma and Goodman,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:

Crony, LLC (“Applicant”) filed an application to register the mark VARIANCE

(standard character mark) for:

Entertainment services in the nature of a live music and
arts festival; organizing music festivals for cultural
purposes; arranging and conducting of concerts;
entertainment services in the nature of live visual and
audio performances, namely, musical band performances,
artistic performances, video art installations and live
paintings; ticket reservation and booking services for
entertainment and cultural events; advisory and
Opposition No. 91235766

consultancy services relating to all of the aforesaid services
International Class 41.1

Jonathan Robles dba Variance Magazine2 (“Opposer”) opposes registration of

Applicant’s mark on the ground of likelihood of confusion under Section 2(d) of the

Trademark Act, 15 U.S.C. § 1052(d). Opposer alleges that Applicant’s mark, when

used in connection with Applicant’s identified services, so resembles Opposer’s earlier

used VARIANCE mark which is the subject of the later-filed application Serial No.

87193043 for services including “entertainment services, namely, providing a web site

featuring photographic, video, audio and prose presentations featuring music

recordings, performances, audio-visual works, and popular culture” in International

Class 41, as to be likely to cause confusion, mistake or deception in violation of

Trademark Act § 2(d).

Applicant denies the salient allegations of the Notice of Opposition and asserts

affirmative defenses which were not pursued at trial. Accordingly, the affirmative

defenses are waived. Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107

USPQ2d 1750, 1753 (TTAB 2013), aff’d, 565 Fed. App’x 900 (Fed. Cir. 2014) (mem.);

TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”)

§ 801.01 (2019).

1Application Serial No. 87062163 filed on June 6, 2016, under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), alleging May 17, 2016 as the date of first use of the mark and first
use of the mark in commerce.
2 Inasmuch as Opposer is Jonathan Robles doing business as Variance Magazine, we will
refer to Opposer using the pronoun “it.”

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Opposition No. 91235766

I. The Record

The record includes the pleadings and, by operation of Trademark Rule

2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the file history for Applicant’s application Serial

No. 87062163 which is the subject of this proceeding, and the following evidence3:

Opposer’s testimony and evidence:

1. Opposer’s Notice of Reliance (5 TTABVUE)4

• Exhibit Nos. 4-5, 7-42: copies of print and Internet
articles (5 TTABVUE 9-309);

2. Declaration of Jonathan Robles and Exhibit Nos. 1-36 (6 TTABVUE 2-254);

3. Second Declaration of Jonathan Robles and Exhibit Nos. 43-46 (10
TTABVUE 2-10).

Applicant’s testimony and evidence:

1. Declaration of Christopher Whitman and Exhibit A (7 TTABVUE 2-9);

2. Applicant’s Notice of Reliance (8 TTABVUE 2-164)

• Exhibit A: printouts of common law marks used in
commerce (8 TTABVUE 9-27);

• Exhibit B: printouts from Applicant’s Facebook and
Instagram pages and other Facebook and Instagram
pages mentioning Applicant’s VARIANCE Music & Arts
Festival (8 TTABVUE 3-4) (9 TTABVUE 2-3, 5-142);

• Exhibit C: printouts from Applicant’s Facebook and
Instagram homepages and Opposer’s website and
Twitter homepages (8 TTABVUE 28-32);

3Opposer’s Exhibits to the Notice of Opposition and Applicant’s Exhibit to the Answer are
not evidence on behalf of Opposer and Applicant. See Trademark Rule 2.122(c) and (d), 37
CFR § 2.122(c) and (d), TBMP § 317.
4Citations to the record are by entry and page number to TTABVUE, the Board’s online
docketing information and file database.

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Opposition No. 91235766

• Exhibit D: copy of Opposer’s application bearing Serial
No. 87193043 and printouts of Opposer’s website,
Facebook page, and Opposer’s two Twitter accounts (8
TTABVUE 33-67);

• Exhibit E: printouts of representative copies of
Opposer’s website’s homepage from 2010 to 2018 (8
TTABVUE 68-107);

• Exhibit F: printouts of Opposer’s website page showing
magazines published under Opposer’s mark, and
Opposer’s homepage (8 TTABVUE 108-114); and

• Exhibit G: printout of article by Shontavia Johnson,
Trademark Territoriality in Cyberspace: an Internet
Framework for Common-Law Trademarks, 29 Berkeley
Tech. L. Rev. 1253 (2014) (8 TTABVUE 115-164).

4. Applicant’s Notice of Reliance (9 TTABVUE)

• Exhibit B: copies of website printouts (9 TTABVUE 2-
142).

In addition to the foregoing, both Opposer and Applicant submitted trial briefs

and Opposer submitted a reply brief.

II. Standing

Standing is a threshold issue that must be proven by the plaintiff in every inter

partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111

USPQ2d 1058, 1062 (Fed. Cir. 2014); John W. Carson Found. v. Toilets.com Inc., 94

USPQ2d 1942, 1945 (TTAB 2010) (citing Ritchie v. Simpson, 170 F.3d 1092, 50

USPQ2d 1023, 1025 (Fed. Cir. 1999)). The U.S. Court of Appeals for the Federal

Circuit has enunciated a liberal threshold for determining standing, namely that a

plaintiff must demonstrate that it possesses a “real interest” in a proceeding beyond

that of a mere intermeddler, and “a reasonable basis for his belief of damage.”

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Opposition No. 91235766

Empresa Cubana Del Tabaco v. Gen. Cigar, 111 USPQ2d at 1062; Ritchie v. Simpson,

50 USPQ2d at 1025; Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213

USPQ 185, 189 (CCPA 1982).

A copy of Opposer’s application Serial No. 87193043 for its mark VARIANCE filed

after the filing date of Applicant’s application, is of record.5 On February 24, 2017,

the USPTO suspended Opposer’s application until Applicant’s earlier-filed

application is either registered or abandoned. If Applicant’s mark is registered,

Opposer has been advised that its application may be refused registration under

§ 2(d) of the Trademark Act due to a likelihood of confusion with Applicant’s mark.6

Opposer’s standing is established by its ownership of an application for the mark

VARIANCE wherein Opposer has been advised that its application may be refused

registration due to a likelihood of confusion with Applicant’s mark. The Board has

frequently held that “[t]he filing of opposer’s application and the Office’s action taken

in regard to that application provides opposer with a basis for pleading its standing.”

Fiat Group Automobiles S.p.A. v. ISM, Inc., 94 USPQ2d 1111, 1112 (TTAB 2010),

citing Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1959 (TTAB 2008)

(standing found based on opposer’s ownership of pending trademark application and

Office Action which resulted in suspension of its application due to involved

application being cited as a potential bar to registration); see also Spirits Int’l B.V. v.

5 See Applicant’s Notice of Reliance, Exhibit D (8 TTABVUE 36-43).
6See Applicant’s Notice of Reliance, Exhibit D, February 24, 2017 Suspension Notice (8
TTABVUE 55-56).

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Opposition No. 91235766

S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPQ2d 1545,

1548 (TTAB 2011).

Applicant challenges Opposer’s standing based on Opposer’s amendment of the

mark in its application as filed from “VARIANCE MAGAZINE” to “VARIANCE” in

response to the January 17, 2017 Office Action. According to Applicant, “Opposer

created the circumstances in which it now claims is its basis for having standing.”7

Inasmuch as the January 17, 2017 Office Action advised Opposer that Applicant’s

prior-filed application may present a bar to registration of Opposer’s “VARIANCE

MAGAZINE” mark, even if Opposer did not amend its mark, it would still have

standing.

Accordingly, Opposer has a real interest in this proceeding and a reasonable basis

for its belief that it will be damaged by the registration of Applicant’s VARIANCE

mark.

III. Priority

The question of priority is an issue in this case because Opposer does not own an

existing registration upon which it can rely under § 2(d). Therefore, Opposer must

establish proprietary rights in its pleaded common-law mark. Otto Roth & Co. v.

Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981). “To establish

7 Trial Brief of Applicant pp. 12-14 (13 TTABVUE 13-15); see Applicant’s Notice of Reliance,
Exhibit D, January 17, 2017 Office Action, February 24, 2017 Examiner’s Amendment and
February 24, 2017 Suspension Notice (8 TTABVUE 44-46, 52, 55). Opposer’s amendment of
its mark was in accordance with the procedure set forth in the TRADEMARK MANUAL OF
EXAMINING PROCEDURE (TMEP). If a specimen shows that matter included on a drawing
is not part of the mark, the examining attorney may require that such matter be deleted from
the mark on the drawing, if the deletion would not materially alter the mark. See In re
Sazerac Co., 136 USPQ 607 (TTAB 1963) and TMEP § 807.14(a) (Oct. 2018).

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Opposition No. 91235766

its priority under Section 2(d), opposer must prove that, vis-à-vis applicant, it owns

‘a mark or trade name previously used in the United States . . . and not abandoned

. . . .’” Threshold.TV, Inc. v. Metronome Enters., Inc., 96 USPQ2d 1031, 1036 (TTAB

2010) citing Trademark Act Section 7(c), 15 U.S.C. § 1057(c).

On May 17, 2016, Applicant founded “VARIANCE” as a live event festival for

music and the performing arts.8 Applicant held its first VARIANCE music and art

festival on August 6, 2016 which it advertised as early as June 2016. Inasmuch as

there is no evidence specifying what uses of VARIANCE, if any, were made prior to

its June 6, 2016 filing date, the earliest date on which Applicant can rely is the filing

date of its application. 15 U.S.C. § 1057(c). Opposer, on the other hand, published a

quarterly print magazine covering the music industry under the name VARIANCE

between 2010 and 2016, which was converted to digital content in 2016. Opposer has

also been using the VARIANCE mark on its website at the domain name

since May 2010.9 In view of the foregoing, Opposer has

priority in the VARIANCE mark.

IV. Likelihood of Confusion

Our determination under Section 2(d) of the Trademark Act is based on an

analysis of all of the relevant probative evidence in the record related to a likelihood

of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563

8 Declaration of Whitman ¶ 3 (7 TTABVUE 2).
9Declaration of Jonathan Robles ¶ 3, 8-10, 13-14 and Opposer’s Exhibits 2, 4-5 (6 TTABVUE
2-3, 14-37; the publication dates for several of the magazine covers submitted by Opposer are
not legible; but see 24 dated July 2012 and 26 dated October 2011); Robles Second Decl. ¶¶ 7-
8 (10 TTABVUE 2-3).

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Opposition No. 91235766

(CCPA 1973); see also Palm Bay Imports, Inc. v. Veuve Clicquot Pansardin Maison

Fondee En 1722, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). In any likelihood

of confusion analysis, two key considerations are the similarities between the marks

and the similarities between the goods and services. See Federated Foods, Inc., v. Fort

Howard 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.”); Bell’s Brewery, Inc. v.

Innovation Brewing, 125 USPQ2d 1340, 1344-45 (TTAB 2017).

To the extent that any other du Pont factors for which no evidence or argument

were presented may nonetheless be applicable, we treat them as neutral.

A. Number and Nature of Similar Marks in Use on Similar Goods

Under the sixth du Pont factor, the Federal Circuit has stated that “evidence of

third-party registrations is relevant to ‘show the sense in which a mark is used in

ordinary parlance,’ that is, some segment that is common to both parties’ marks may

have ‘a normally understood and well-recognized descriptive or suggestive meaning,

leading to the conclusion that that segment is relatively weak.’” 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) (quoting Juice Generation, Inc.

v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015)). “The

weaker an opposer’s mark, the closer an applicant’s mark can come without causing

a likelihood of confusion and thereby invading what amounts to its comparatively

narrower range of protection.” Juice Generation, 115 USPQ2d at 1674.

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Opposition No. 91235766

Here the third-party registration10 evidence Applicant relies on covers goods and

services in unrelated industries including financial services, business management

services, temporary use of non-downloadable computer software for use in detecting

differences in finished construction compared to the initial plans, quality assurance

services in the field of telemarketing, website featuring software for quality

assurance of customer data management, distribution of motion picture films, beer,

non-metal clips and clamps, plaster, casualty actuarial science journals, bandage

cleaning preparations, and electronic animal avoidance devices.11 Only one of these

10 Serial Nos. 88111980, 88111975, 88209563, 87645802 and 87813377 were not considered
as they have not yet matured into registrations. Third-party applications have no probative
value because they evidence only the fact that they were filed. See Nike Inc. v. WNBA Enters.
LLC, 85 USPQ2d 1187, 1193 n.8 (TTAB 2007); Interpayment Servs. Ltd. v. Docters & Thiede,
66 USPQ2d 1463, 1468 n.6 (TTAB 2003). Additionally, Reg. No. 4208853 has been cancelled
and is of no probative value. Action Temporary Services Inc. v. Labor Force Inc., 870 F.2d
1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (“[A] cancelled registration does not provide
constructive notice of anything”).
11 Applicant submits evidence of fourteen registrations owned by twelve different owners:
Reg. Nos. 5269875 and 3936027 (Supplemental Register) for VARIANCE ADVISORY
SERVICES for financial restructuring services in Class 36; 4806597 for VarianceBridge &
design for business management; business consultancy; business advice and information; in
Class 35; 4999407 for VISUALIZING VARIANCE for providing temporary use of non-
downloadable computer software for use in detecting differences in finished construction
compared to the initial plans in Class 42; 4667103 for VARIANCE for ale; beer; in Class 32;
324627171 for ZERO VARIANCE INTELLIGENT QUALITY for providing a web site
featuring temporary use of non-downloadable software for quality assurance in the field of
customer data management in Class 42; 4056101 for VARIANCE FILMS for distribution of
motion picture films in Class 41; 5088836 for DIVARIO for assembly parts of plastic, namely,
connectors in the nature of non-metal clips and clamps for furniture, cabinets, shelves and
shop fittings being display cases for merchandise in Class 20; 3120583 for VARIANCE for
plasters, namely surface plasters, colored finish plasters, sealed plasters in Class 19; 2945058
and 2945059 for ZERO VARIANCE and ZERO VARIANCE & design respectively, for
providing quality assurance services in the field of telemarketing; reviewing standards and
practices to assure compliance with telemarketing laws and regulations and consultation
related thereto in Class 42; 3369992 for VARIANCE for journals concerning casualty
actuarial science, research, and practice in Class 16; 2822889 for VARIANCE for cleaning
preparations for bandages, compression garments and support garments in Class 3; 2374685
for WV WAVE VARIANCE TUNED & design for electronic animal avoidance device in that

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Opposition No. 91235766

registrations, Registration No. 4056101 for the mark VARIANCE FILMS for

distribution of motion picture films, is arguably related to Registrant’s website

featuring music recordings, performances, and audio-visual works used in connection

with VARIANCE. Unlike Juice Generation, where the third-party evidence involved

the restaurant services covered by the marks at issue, and Jack Wolfskin, where the

third-party evidence involved the very same clothing covered by the marks in

question, here the third-party registration evidence Applicant relies upon covers

goods and services in unrelated industries. The single registration covering motion

picture film distribution falls well short of the “voluminous” and “extensive” evidence

presented in Jack Wolfskin, 116 USPQ2d at 1136. See also i.am.symbolic, llc, 866

F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017) (disregarding third-party

registrations for goods in other classes where the proffering party “has neither

introduced evidence, nor provided adequate explanation to support a determination

that the existence of I AM marks for goods in other classes, … support a finding that

registrants’ marks are weak with respect to the goods identified in their

registrations”).

Applicant argues that “[c]ourts have found extensive third-party uses of a

trademark to substantially weaken the strength of a mark” citing Homeowners Grp.,

Inc. v. Home Mktg. Specialists, Inc., 931 F.2d 1100, 18 USPQ2d 1587 (6th Cir. 1991).

According to Applicant, “[i]n Homeowners, the Sixth Circuit found that a mark’s lack

of strength was indicated by ‘numerous third-party registrations of the mark . . . ,

[sic] nature of device installed on vehicles which emit sonic sounds to reduce risk of
animal/vehicle collisions in Class 9.

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Opposition No. 91235766

either alone or in conjunction with other words or designs, in the U.S. Patent and

Trademark Office and in various states.’ Id. at 1108.”12 However, the court further

explained that Applicant must introduce evidence showing what happens in the

marketplace:

It is true that merely showing the existence of marks in the
records of the Patent and Trademark Office will not
materially affect the distinctiveness of another’s mark
which is actively used in commerce. In order to be accorded
weight a defendant must show what actually happens in
the marketplace.

18 USPQ2d at 1593.

To show use of “Variance” in the marketplace, Applicant submits copies of

Facebook and Twitter printouts13 showing uses of “Variance:” Variance TV,14

Variance Media,15 Variance Studios,16 Variance Techno,17 Variance Lab,18 Variance

Gaming,19 Variance Comic Book,20 five apparently different Variance bands,21 and

12 Trial Brief of Applicant pp. 27-28 (13 TTABVUE 28-29).
13 Trial Brief of Applicant p. 30 (13 TTABVUE 31) citing to Applicant’s Exhibits A(i)-(xiii)
located at 8 TTABVUE 10-27. Inasmuch as Opposer did not object to the admissibility of
Exhibit A, any objection to its admissibility is waived. While the Notice of Reliance indicates
that the documents in Applicant’s Exhibit A were “accessed, retrieved and printed on August
28, 2018,” (8 TTABVUE 2), Applicant did not provide the URL addresses from which Exhibits
A(i)-(xiii) were obtained. Therefore, this evidence is of limited probative value.
14 See Applicant’s Notice of Reliance, Applicant’s Exhibit A(i), 8 TTABVUE 10-12.
15 Applicant’s Exhibit A(ii), 8 TTABVUE 13.
16 Applicant’s Exhibit A(iii), 8 TTABVUE 14.
17 Actual use is “Variance.” Applicant’s Exhibit A(iv), 8 TTABVUE 15-16.
18 Applicant’s Exhibit A(v), 8 TTABVUE 17.
19 Applicant’s Exhibit A(vi), 8 TTABVUE 19-20.
20 Applicant’s Exhibit A(vii), 8 TTABVUE 21.
21 Applicant’s Exhibit A(viii-xii), 8 TTABVUE 22-26.

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Opposition No. 91235766

Variance Festival.22 While these printouts introduced with Applicant’s Notice of

Reliance are admitted into evidence, they are limited in probative value to what they

“show on their face.” Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031, 1039

(TTAB 2010) (“We underscore that a printout from a webpage may have more

limitations on its probative value than traditional printed publications. A party may

increase the weight we will give such website evidence by submitting testimony and

proof of the extent to which a particular website has been viewed. Otherwise, it might

not have much probative value.”). Most of the evidence shown in Applicant’s Exhibit

A, lacks foundation including who the owners of the Facebook and Twitter sites are,

what subject matter is covered, and who their market is, resulting in Applicant’s

evidence being of marginal probative value.23

22Applicant’s Exhibit A(xiii), 8 TTABVUE 27; Applicant indicates that this Facebook page
has no affiliation with Applicant or Applicant’s mark.
23Applicant introduced the following pages from Facebook and Twitter to show third-party
use of “Variance” (8 TTABVUE 2-3): Variance TV @varianceTV Facebook and Twitter pages
(8 TTABVUE 10-12); Variance Media @variancemedia Facebook page (8 TTABVUE 13);
Variance Studios @VarianceStudios Facebook page (8 TTABVUE 14); VARIANCE
@variancetechno Facebook page indicates “Our Story Variance was founded in 2014, the story
of the record label has just begun.” and Twitter page (8 TTABVUE 15-16); Variance lab
@variancelab indicates “We make things. Creative Studio, including photography, graphic
design (web/print), cinematography, from weddings to media.” on its Twitter page (8
TTABVUE 17); Variance Gaming @teamvariance indicates “competitive esports
organization” on its Facebook and Twitter pages (8 TTABVUE 19-20); Variance-Comic Book
headline says “Maxwell Pride is Variance” on its Facebook page (8 TTABVUE 21); Variance
Facebook page featuring black and white imagery of a band (8 TTABVUE 22); Variance
@VarianceBand featuring a photo of three band members on Facebook (8 TTABVUE 23);
Variance on Facebook with posts they are “writing some songs, and will hopefully be playing
a show for you in the upcoming months.” (8 TTABVUE 24); Variance @VarianceCA includes
part of a photo featuring two guitarists (8 TTABVUE 25); Variance @VarianceTX shows
partial images of a couple guitar players and a group shot of 5 guys (8 TTABVUE 26);
Variance Festival @variancefest (8 TTABVUE 27).

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Opposition No. 91235766

While “evidence of third-party use of similar marks on similar goods ‘can show

that customers have been educated to distinguish between different marks on the

basis of minute distinctions”’ Jack Wolfskin, 116 USPQ2d at 1136 (quoting Juice

Generation, 115 USPQ2d at 1674), unlike Juice Generation, where at least 26

relevant third-party uses or registrations of record involved the restaurant services

covered by the marks at issue, 115 USPQ2d at 1673 n.1, and Jack Wolfskin, where at

least 14 relevant third-party uses or registrations of record involved the clothing

covered by the marks in question, 116 USPQ2d at 1136, here the third-party

registration and third-party use evidence relied upon by Applicant covers goods and

services in unrelated industries, or does not identify the specific services offered.

These third-party registrations and third-party uses fail to show that in the context

of Applicant’s live music and arts festivals and Opposer’s website platform magazine

including photographic, video, audio and prose presentations featuring music

recordings, performances and audio-visual works, consumers could rely on their

differences to distinguish them, especially when provided under identical marks.

B. Similarity of the Marks

Next, we consider the appearance, sound, connotation and commercial impression

of the marks in their entireties. Palm Bay, 73 USPQ2d at 1692. The test is whether

the marks are sufficiently similar in their entireties such that confusion is likely to

result. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d

1713, 1721 (Fed. Cir. 2012); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108

(TTAB 1975).

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Opposition No. 91235766

Here, Applicant’s mark VARIANCE is in standard characters and may be

displayed in any lettering style, as any rights reside in the wording or other literal

elements and not in any particular display.24 Trademark Rule 2.52(a), 37 C.F.R.

§ 2.52(a); TMEP § 1207.01(c)(iii). A standard character mark, like Applicant’s mark,

will not avoid likelihood of confusion with a mark even if that mark is presented in

stylized characters or in a special form because the marks could be presented in the

same manner of display. See Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937,

939 (Fed. Cir. 1983) (rejecting argument that a mark in standard character format is

distinct from a mark in a logo format); see also In re Viterra Inc., 671 F.3d 1358, 101

USPQ2d 1905, 1909-10 (Fed. Cir. 2012); Citigroup v. Capital City Bank, 98 USPQ2d

at 1259.

Applicant argues that its mark “includes the word ‘Festival’ or the words “Music

& Arts Festival. . . .” attempting to distinguish it from Opposer’s mark where “[a] key

feature . . . is that it includes the word ‘Magazine,’” noting Opposer’s mark was

initially filed as “VARIANCE MAGAZINE” and later amended to VARIANCE.25

However, Applicant’s mark in application Serial No. 87062163, the subject of this

opposition proceeding, is VARIANCE not “Variance Festival” or “Variance Music &

24Applicant’s arguments distinguishing the uses of its mark and Opposer’s mark appearing
in different colors with other differing accompanying words on their respective websites and
Facebook pages, see Trial Brief of Applicant pp. 15-17 (13 TTABVUE 16-18), are not relevant
to the determination of the similarity of the marks as Applicant’s mark is in standard
characters and is not limited to any particular manner of display. See Citigroup Inc. v.
Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011).
25 Trial Brief of Applicant pp. 16-17 (13 TTABVUE 17-18).

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Opposition No. 91235766

Arts Festival.” Similarly, the mark which Opposer has proven priority for and on

which it bases its opposition is “VARIANCE” not “VARIANCE MAGAZINE.”

Inasmuch as there is nothing which distinguishes Applicant’s standard character

VARIANCE mark from Opposer’s VARIANCE mark or renders a different

commercial impression of the marks, the identity of the marks strongly favors a

likelihood of confusion. Citigroup v. Capital City Bank, 98 USPQ2d at 1259;

Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir.

2000); In re Shell Oil, 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“The

identity of words, connotation, and commercial impression weighs heavily against the

applicant.”).

C. Similarity of Services

Moving to the second du Pont factor, we look to the parties’ respective services to

determine their similarity or dissimilarity. Applicant’s identified services are:

entertainment services in the nature of a live music and
arts festival; organizing music festivals for cultural
purposes; arranging and conducting of concerts;
entertainment services in the nature of live visual and
audio performances, namely, musical band performances,
artistic performances, video art installations and live
paintings; ticket reservation and booking services for
entertainment and cultural events; advisory and
consultancy services relating to all of the aforesaid
services;

while Opposer’s common law services include:

online publication coving the music industry, including
music festivals26;

26 Declaration of Jonathan Robles ¶¶6-7, 9-13, 15-16 (6 TTABVUE 2-4).

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Opposition No. 91235766

also described in its pending application as: entertainment
services, namely, providing a web site featuring
photographic, video, audio and prose presentations
featuring music recordings, performances, audio-visual
works, and popular culture.27

Applicant describes its services as “a music and arts festival and live

entertainment platform to which people purchase tickets or are otherwise granted

admission and must physically attend in-person to experience.” Applicant’s

VARIANCE “live events are a cultural and entertainment experience platform that

at once celebrate and shape music, entertainment and performing arts culture

through actual individual in-person presence at events and active participation.”28

Applicant distinguishes its services from those of Opposer whose “[m]agazine offers

a website platform featuring news in popular culture, which can only be accessed and

experienced by being online and on their platform,” contending that its mark involves

“‘live’ festival events whose target audience must attend in-person to derive benefit

of Applicant’s services.” On the other hand, to derive the benefit of Opposer’s services,

according to Applicant, the target audience “must therefore read, watch or listen to

what Opposer has to offer, only on the Internet.”29

The second du Pont factor considers whether the consuming public may perceive

the respective services of the parties as related enough to cause confusion about the

source or origin of the services. Hewlett Packard Co. v. Packard Press, Inc., 281 F.2d

1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (citing Recot, Inc. v. Becton, 214 F.3d

27 Opposer’s services identified in its application Serial No. 87193043.
28 Declaration of Christopher Whitman ¶ 11 (7 TTABVUE 4).
29 Trial Brief of Applicant p. 19 (13 TTABVUE 20).

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1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (Thus, even if the goods in question are

different from, and thus not related to, one another in kind, the same goods can be

related in the mind of the consuming public as to the origin of the goods.)).

Opposer began providing print magazines which it later changed to an online

publication featuring articles regarding the music industry, including music

festivals.30 Applicant’s services are live music and arts festivals, including live

musical band performances and artistic performances.31 Both parties’ services are

directed to entertainment services, specifically including music events or festivals.

Persons attending Applicant’s music and arts festivals are likely to associate

Applicant with Opposer’s website platform magazine covering music and music

related events such as concerts. Applicant’s attempt to distinguish Opposer’s services

as “news it packages on the Internet is its product,” by comparing it to Applicant’s

services where “the Internet is merely an ancillary means of attracting and informing

customers of its live events, and is not part of its product,”32 misses the point.

Applicant’s live music and arts festival services are directly related to Opposer’s

website platform magazine covering music events such as concerts. In further support

of the relationship between Applicant’s live music festivals and band performances,

and Opposer’s website magazine services covering music and music events, Opposer

introduces evidence showing that known third-parties, namely Pitchfork and

30 Robles Declaration ¶¶ 10, 13, (6 TTABVUE 3).
31 Declaration of Christopher Whitman ¶¶ 3-4, 6 (7 TTABVUE 2-3).
32 Applicant’s Trial Brief p. 22 (13 TTABVUE 23).

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Opposition No. 91235766

Billboard, offer websites featuring articles regarding bands and their music, and live

music festivals, under the same marks, further supporting a likelihood of confusion.33

Opposer’s and Applicant’s services need not be identical or directly competitive to

find a likelihood of confusion. Their respective services need only be “related in some

manner and/or if the circumstances surrounding their marketing [be] such that they

could give rise to the mistaken belief that [the services] emanate from the same

source.” Coach Servs. v. Triumph Learning, 101 USPQ2d at 1722 (quoting 7-Eleven

Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); On-line Careline Inc. v. Am.

Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000).

When both parties use the identical mark, as we have here, the relationship

between the services on which the parties use their marks need not be as great or as

close as in the situation where the marks are not identical or substantially similar.

Thus, the degree of similarity between the services that is required to support a

finding of likelihood of confusion declines. Century 21 Real Estate Corp. v. Century

Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Time Warner

Entm’t Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002); see also In re i.am.symbolic,

llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil, 26 USPQ2d at 1689

(“even when goods or services are not competitive or intrinsically related, the use of

33Opposer’s Reply Brief p. (15 TTABVUE 9); Opposer’s Notice of Reliance, Exhibits 39-42 (5
TTABVUE 6, 256-309); Exhibit 39 (5 TTABVUE 256-260) Billboard Magazine web page
accessed on June 29, 2018 at https:// shop.billboard.com; Exhibit 40 (5 TTABVUE 261-280)
Billboard Hot 100 Music Festival web page accessed on June 29, 2018 at
https://www.hot100fest.com; Exhibit 41 (5 TTABVUE 281-293) Pitchfork home page accessed
on June 29, 2018 at https://pitchfork.com; Exhibit 42 (5 TTABVUE 294-309) Pitchfork Music
Festival accessed on June 29, 2018 at http://pitchforkmusicfestival.com/p/1?utm_source=p4k-
nav.

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Opposition No. 91235766

identical marks can lead to an assumption that there is a common source”)), aff’d,

866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Because the marks are identical,

it is only necessary that there be a viable relationship between Opposer’s and

Applicant’s services to support a finding of likelihood of confusion. In re Concordia

Int’l Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983).

D. Established, likely-to-continue channels of trade and classes of
consumers.

Turning to the classes of consumers and channels of trade, because there is no

limitation in the description of services in Applicant’s application, we must presume

that Applicant’s services are marketed in all normal trade channels for such services

and to all normal classes of purchasers for such services. See Stone Lion Capital

Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir.)

(“An application with ‘no restriction on trade channels’ cannot be ‘narrowed by

testimony that the applicant’s use is, in fact, restricted to a particular class of

purchasers.’”) (quoting Octocom Sys. Inc. v. Hous. Comput. Servs., Inc., 16 USPQ2d

1783, 1788 (Fed. Cir. 1990); Coach Servs. v. Triumph Learning, 101 USPQ2d at 1722;

Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1357

(Fed. Cir. 2000) (“When the registration does not contain limitations describing a

particular channel of trade or class of customer, the goods or services are assumed to

travel in all normal channels of trade.”).

The class of customers who are interested in attending Applicant’s live in-person

music festivals undoubtedly overlaps with the class of customers who are interested

in reading online about music, musicians and music festivals. Thus, both marks are

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Opposition No. 91235766

likely to be encountered by some of the same customers under circumstances that

would give rise to the mistaken belief that they originate from the same source or

that there is an association between the parties. To the extent that Applicant’s and

Opposer’s services will be encountered by at least some of the same customers, the

channels of trade and classes of customers overlap.

Applicant argues that its live festival event services do not compete with Opposer’s

online publication services, and that Opposer has a weaker and far less distinct mark

than the plaintiff did in the Advance Magazine Publishers, Inc. v. Brown, Opposition

No. 91118342 (TTAB 2003) case cited by Applicant.34 In addition to being a non-

precedential decision,35 the opposer’s mark in Advance Magazine v. Brown case was

registered for a men’s magazine dealing with fashion, entertainment and other topics

of general interest while the applicant’s goods were full beauty care salon services.

The Board held that “given the absence of evidence on this record of any proof as to

. . . the claimed closely related nature of the parties’ services and goods, the fact that

applicant’s mark G.Q. NAILS is substantially similar to opposer’s mark GQ does not

suffice to meet opposer’s burden of demonstrating” that contemporaneous use of the

parties’ respective marks in connection with their “specifically different services and

goods is likely to cause confusion . . . .” Here, however, Opposer’s and Applicant’s

34 Applicant’s Trial Brief pp. 20-21 (13 TTABVUE 21-22).
35Although parties may cite to non-precedential decisions, the Board does not encourage the
practice. Corporacion Habanos SA v. Rodriguez, 99 USPQ2d 1873, 1875 n.5 (TTAB 2011).
See also In re Luxuria s.r.o., 100 USPQ2d 1146, 1151 n.7 (TTAB 2011) (parties may cite to
non-precedential decisions, but they are not binding on the Board and because they have no
precedential effect, the Board generally will not discuss them in other decisions).

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Opposition No. 91235766

marks are identical and are used on related services which are offered to at least

some of the same customers.

Applicant’s argument that “[e]ven the least sophisticated consumer would not

confuse an online news magazine with live art and music festivals”36 is unsupported.

On this record, there is no basis upon which to find that Applicant’s services or

Opposer’s services necessarily are so expensive, or so different, or that the customers

of these services necessarily are so knowledgeable and careful in purchasing the

services, that the likelihood of confusion arising from the use of identical marks on

such services would be avoided.

Moreover, even if customers of Applicant’s music festival and Opposer’s website

magazine services covering among other things music and music events could be

considered sophisticated and discriminating, it is settled that “even sophisticated

customers are not necessarily knowledgeable in the field of trademarks or immune to

source confusion arising from the use of confusingly similar, and in this case, identical

marks, in connection with related services. In re Research Trading Corp., 793 F.2d

1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (citing Carlisle Chemical Works, Inc. v.

Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human

memories even of discriminating purchasers … are not infallible.”)); see also In re

Shell Oil, 26 USPQ2d at 1690; Giersch v. Scripps Networks Inc., 90 USPQ2d 1020,

1027 (TTAB 2009) (it is well-established that sophisticated purchasers are not

necessarily knowledgeable in the field of trademarks or immune from source

36 Trial Brief of Applicant p. 25 (13 TTABVUE 26).

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Opposition No. 91235766

confusion). The identity of the marks and the relatedness of the services sold

thereunder outweigh any presumed sophisticated purchasing decision. See HRL

Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, 902

F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks

outweigh sophisticated purchasers, careful purchasing decision, and expensive

goods).

E. Actual Confusion

Opposer identifies two events which it contends supports actual confusion

resulting from Applicant’s use of the mark VARIANCE.37 First, Opposer points to an

email message sent on behalf of Black Dots Music Group by a music industry contact

who knows Opposer’s business and saw “Variance” associated with a music festival,

and “thought of [Opposer].” Opposer contends this evidence “illustrates that

confusion is more than a theoretical possibility—it has actually happened.”38 Next,

Opposer notes that in March 2017, ATX Concert erroneously tweeted using

37 Applicant argues that these Exhibits should be disregarded because they “do not comply
with evidentiary requirements, which raise[s] a question as to their admissibility . . .” (13
TTABVUE 26). Rule 2.122 (c) of the Trademark Rules of Practice, 37 C.F.R. § 2.122(c), states:
(c) Exhibits to pleadings. . . . an exhibit attached to a pleading is not evidence on behalf of
the party to whose pleading the exhibit is attached, and must be identified and introduced in
evidence as an exhibit during the period for the taking of testimony.
Inasmuch as paragraphs 18 and 20 to the Declaration of Jonathan Robles identified and
referred to Opposer’s Exhibits C and D attached to the Notice of Opposition, they are
considered as exhibits to the Declaration and are not excluded. While we note that neither
the Declaration of Jonathan Robles nor the Second Declaration of Jonathan Robles were
submitted pursuant to § 2.20 and in conformance with the Federal Rules of Evidence, and
therefore were not properly introduced into evidence, see Rule 2.123(a)(1), 37 C.F.R.
§ 2.123(a)(1), Applicant did not object to them and they have been considered.
38Reply Brief of Opposer p. 6 (15 TTABVUE 10) referring to Notice of Opposition, Exhibit C
(1 TTABVUE 19).

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Opposition No. 91235766

“@VarianceMag” that Opposer was holding an official SXSW showcase under the

mistaken belief that Opposer was associated with Applicant.39 Inasmuch as this

evidence does not reflect confusion on the part of potential customers of Applicant or

Opposer mistaking the source of Applicant’s music festivals as coming from Opposer,

they are inconclusive as to the existence of actual confusion.

While evidence of actual confusion, if it exists, would strongly support a finding of

likelihood of confusion, the absence thereof does not necessarily overcome a finding

of likelihood of confusion. The test under § 2(d) is likelihood of confusion, not actual

confusion. Therefore, a showing of actual confusion is not necessary to establish a

likelihood of confusion. Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64

USPQ2d 1375 (Fed. Cir. 2002); Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d

1565, 218 USPQ 390, 396 (Fed.Cir.1983). Accordingly, this factor is neutral.

V. Conclusion

Applicant’s and Opposer’s marks are identical. “[E]ven when goods or services are

not competitive or intrinsically related, the use of identical marks can lead to the

assumption that there is a common source.” In re Shell Oil, 26 USPQ2d at 1689.

Here, use of Applicant’s identical mark on its services which are related to those of

Opposer is likely to cause confusion with Opposer’s VARIANCE mark.

Decision: The Opposition under § 2(d) of the Trademark Act is sustained.

39 Id., Notice of Opposition, Exhibit D (1 TTABVUE 21).

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