Miss Universe L.P., LLLP v. Community Marketing, Inc.

• Decision Date: 09 February 2007
• Docket Number: application Serial 78132432,Opposition 91160627
• Court: United States Patent and Trademark Office. United States Patent and Trademark Office, Trademark Trial and Appeal Board
• Parties: Miss Universe L.P., LLLP v. Community Marketing, Inc.

Miss Universe L.P., LLLP v. Community Marketing, Inc.

Opposition No. 91160627

application Serial No. 78132432

United States Patent and Trademark Office, Trademark Trial and Appeal Board

February 9, 2007

Filed on May 31, 2002

Andrea L. Calvaruso of Donovan & Yee LLP for Miss Universe L.P LLLP.

Community Marketing, Inc., pro se.

Before Grendel, Zervas and Kuhlke, Administrative Trademark Judges.

OPINION

Grendel, Administrative Trademark Judge:

On May 22, 2002, Community Marketing, Inc. ("applicant") filed the above-referenced application by which it seeks registration on the Principal Register of the mark MR. GAY UNIVERSE (in standard character form) for services recited in the application as "entertainment services in the nature of conducting gay beauty pageant," in Class 41. Applicant has disclaimed the exclusive right to use GAY apart from the mark as shown, pursuant to the Trademark Examining Attorney's requirement during ex parte prosecution. The application is based on applicant's asserted bona fide intention to use the mark in commerce. Trademark Act Section 1(b), 15 U.S.C. § 1051(b).^[1]

Registration of applicant's mark has been opposed by Miss Universe L.P., LLLP ("opposer"). As grounds for opposition opposer alleges a claim of priority and likelihood of confusion under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), and a dilution claim under Trademark Act Sections 43(c) and 13(a), 15 U.S.C. §§ 1125(c) and 1063(a). Opposer asserts ownership, registration and prior use of the mark MISS UNIVERSE and variations thereof, in connection with various goods and services related to beauty pageants. In particular, opposer has made of record status and title copies of the following registrations it owns:^[2]

-Registration No. 1597876, of the mark MISS UNIVERSE (in standard character form), for "entertainment services, namely, presentations of pageants and contests," in Class 41. Issued May 22, 1990; Affidavits under Sections 8 and 15 accepted and acknowledged; renewed;

-Registration No. 620557, of the mark MISS UNIVERSE (in standard character form), for "promoting the sale of goods and services by others through the medium of a beauty contest conducted on a national and regional basis," in Class 35. Issued January 31, 1956; Affidavits under Sections 8 and 15 accepted and acknowledged; renewed (twice);

-Registration No. 1182063, of the mark MISS UNIVERSE (in standard character form), for "magazine concerning the schedule and participants in beauty pageants," in Class 16. Issued December 15, 1981; Affidavits under Sections 8 and 15 accepted and acknowledged; renewed;

-Registration No. 1146211, of the mark MISS UNIVERSE (in standard character form), for "ladies' blouses, shirts, bathing suits, shoes, beach jackets, pants, sweaters, skirts, T-shirts, slips, petticoats, nightgowns, robes, gloves, hosiery and panties," in Class 25. Issued January 20, 1981; Affidavits under Sections 8 and 15 accepted and acknowledged; renewed; and

-Registration No. 2733781, of the mark MISS NUDE UNIVERSE (in standard character form; NUDE disclaimed), for "entertainment in the nature of beauty pageants," in Class 41. Issued July 8, 2003.

Applicant filed an answer by which it denied the salient allegations of the notice of opposition, and asserted several "affirmative defenses" which in fact are merely further arguments in support of its denials.

The evidence of record consists of the file of applicant's involved application; the pleadings herein; opposer's testimony deposition of Anthony Santomauro (opposer's Vice President of Business Planning) and exhibits thereto; opposer's notice of reliance on the discovery deposition of Thomas Roth (applicant's president) and exhibits thereto; opposer's notices of reliance on status and title copies of the above-referenced registrations; and applicant's notice of reliance on various documents including opposer's interrogatory responses, certain Office records, and certain articles from printed publications.^[3]

The case is fully briefed, and an oral hearing was held at which both parties presented arguments. After careful consideration of all of the evidence and the arguments of the parties (including any evidence and arguments not specifically discussed in this opinion), we sustain opposer's Section 2(d) ground of opposition. In view thereof, we need not and do not reach opposer's dilution claim.

Before we reach the merits of this case, an initial comment is in order. We note that opposer has submitted with its brief an appendix consisting of a nearly six-inch stack of documents, which are duplicates of essentially all of the depositions, exhibits and documents already made of record by the parties at trial. Although the Board infers that such appendix was included with the intent of aiding the Board in its review of the case and/or supporting the assertions and arguments contained in opposer's brief, in actuality the appendix merely adds unnecessarily to the size of the record, which the Board must review in its entirety in any event. See ITC Entertainment Group Ltd. v. Nintendo of America Inc., 45 U.S.P.Q.2d 2021, 2022 (TTAB 1998), wherein the Board stated:

The Board notes that the parties' attorneys have filed unnecessary copies of motions and briefs and unnecessary attachments to motions and briefs. The stack of such papers is nearly a foot high and weighs in excess of 15 pounds. Apart from the natural resources wasted on these filings, and the unnecessary and no doubt significant expense to the parties attributable to organizing and copying these papers, the Board has wasted precious time sorting through the case files to determine what documents must be retained and which may be ignored as unnecessary.

Thus, references in the brief to particular pieces of evidence should be to the location of the evidence in the actual record, not to its location in an appendix. Opposer should forego such "appendix" practice in any future cases before the Board.

Because opposer has properly made its pleaded registrations of record, and because opposer's likelihood of confusion claim is not frivolous, we find that opposer has established its standing to oppose registration of applicant's mark. See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 U.S.P.Q. 185 (CCPA 1982); see also Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 U.S.P.Q.2d 1842 (Fed. Cir. 2000);

Moreover, because opposer's pleaded registrations are of record, Section 2(d) priority is not an issue in this case as to the mark and goods or services covered by said registrations. See King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 U.S.P.Q. 108 (CCPA 1974). In any event, opposer has proven use of its MISS UNIVERSE mark which predates applicant's May 31, 2002 application filing date, which is the earliest date upon which applicant may rely for priority purposes in this case.

Our likelihood of confusion determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue (the du Pont factors). See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (CCPA 1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 U.S.P.Q.2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Co., 315 F.3d 1311, 65 U.S.P.Q.2d 1201 (Fed. Cir. 2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41 U.S.P.Q.2d 1531 (Fed. Cir. 1997).

We begin our likelihood of confusion analysis with the fifth du Pont factor, which requires us to consider evidence of the fame of opposer's mark and to give great weight to such evidence if it exists. See Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 U.S.P.Q.2d 1303 (Fed. Cir. 2002); Recot Inc. v. Becton, 214 F.3d 1322, 54 U.S.P.Q.2d 1894 (Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 U.S.P.Q.2d 1453 (Fed. Cir. 1992). As the court noted in Bose Corp.:

Fame of an opposer's mark or marks, if it exists, plays a "dominant role in the process of balancing the DuPont factors," Recot, 214 F.3d at 1327, 54 U.S.P.Q.2d at 1456 [sic - 1897], and "[f]amous marks thus enjoy a wide latitude of legal protection." Id. This is true as famous marks are more likely to be remembered and associated in the public mind than a weaker mark, and are thus more attractive as targets for would-be copyists. Id. Indeed, "[a] strong mark … casts a long shadow which competitors must avoid." Kenner Parker Toys, 963 F.2d at 353, 22 U.S.P.Q.2d at 1456. A famous mark is one "with extensive public recognition and renown." Id.

Bose Corp. v. QSC Audio Products Inc., supra, 63 U.S.P.Q.2d at 1305.

The March 3, 2005 testimony deposition of Anthony Santomauro, opposer's Vice President of Business Planning, and the exhibits thereto, establish the following undisputed facts. Opposer first used its MISS UNIVERSE mark in connection with beauty pageants "around 1950" and has conducted its pageant every year since then. (Santomauro Dep. at 12.) In format, opposer's annual MISS UNIVERSE pageant is the finals of an international contest, at which all of the winners of approximately ninety preliminary national pageants compete for the title of MISS UNIVERSE. (Id. at 21.) These ninety contestants are eventually narrowed to fifteen finalists, who make up the field for the final contest which is televised internationally. (Id. at 21-22.)

The airing on television of opposer's annual MISS UNIVERSE pageant is quite successful, by any measure. According to Exhibit 2 to Mr. Santomauro's deposition (which consists of records from opposer's television network partners) and to Mr. Santomauro's testimony regarding Exhibit 2, the 2004 MISS UNIVERSE...