Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA581521
`ESTTA Tracking number:
`01/13/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`85396538
`Sherrilyn Kenyon
`THE LEAGUE
`ROBERT L BREWER
`BASS BERRY & SIMS PLC
`150 3RD AVE S, SUITE 2800
`NASHVILLE, TN 37201-2017
`UNITED STATES
`trademarks@bassberry.com
`Appeal Brief
`1-2014 applicant appeal brief.pdf(854056 bytes )
`2013_US_Dist_LEXIS_8758.pdf(87673 bytes )
`Martha B. Allard
`trademarks@bassberry.com
`/Martha B. Allard/
`01/13/2014
`
`Proceeding
`Applicant
`Applied for Mark
`Correspondence
`Address
`
`Submission
`Attachments
`
`Filer's Name
`Filer's e-mail
`Signature
`Date
`
`

`
`IN
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Applicant Name: Kenyon, Sherrilyn
`
`Mark: THE LEAGUE
`
`Ser. No. 85396538
`
`Filing Date: August 12, 2011
`
`Attorney Ref. No.: 118999-100
`
`APPELLANT’S APPEAL BRIEF
`
`BOX TTAB FEE
`
`Commissioner for Trademarks
`P.O.Box'1451 _
`Alexandria, Virginia 223 13~1451
`
`Appellant, Mrs. Sherrilyn Kenyon, Applicant in the above-captioned matter, hereby
`
`submits her brief in support of her" Notice of Appeal in the above—eaptioned mark (herein
`
`“Appellant/Applicant”).
`
`

`
`TABLE OF CONTENTS
`
`E§g§
`
`.........3
`..........
`..............................
`"A. Table of Authorities ...........'.................................................
`B. Description of the Record ............_.............................
`...............................................................5
`
`C. Statement of the Issues ..................................................................
`
`......................................... ..5
`
`D. Recitation of the Facts ..........................................
`
`................................................................. ..5
`
`E. Argument ............................................................................................................................... ..11
`
`1. Caselaw Supports Registration of the AboVe—captioned Mark ........................................ ..12
`
`2. Third Paity Registrations Cited by the Examiner ............
`
`.............................
`
`............... ..15
`
`3. No Confusion To Date ..................................................................................................... ..15
`
`F. Conclusion ....................................
`
`...................................................................................... ..16
`
`

`
`
`
`INDEX OF CASES
`
`A.
`
`Table o1'Authorities -
`
`_
`CASES
`
`.
`
`Page(s)
`
`A&I-I Sportswear Co. v. Victoria ’s Secret Stores, Inc.,
`926 F. Supp. 1233 (E.D. Pa. 1996), afi"’d, 49 U.S.P.Q.2d1493(3d Cir. 1999) ..................... ..11
`
`Astra Pharmaceutical Products, Inc. v. Beckman Instruments, Inc.,
`718 F.2d 1201 (1st Cir. 1983) ................................................................................................ ..12
`
`I Bongrain Int ’l (American) Corp. v. Delice de France, Inc.,
`811 F.2d 1479 (Fed. Cir. 1987) ........................................................................ .. .................... ..11 '
`
`Continental Grain Co. v. Central Soya Co.,
`69 F.3d 555 (Fed. Cir. 1995) .................................................................................................. ..11
`
`Davis v. Walt Disney Co.,
`430 F.3d 901 (D. Minn. 2005) ....................................................
`
`........................................ ..14
`
`Electronic Design & Sales, Inc. v. Electronic Data Systems Corp.,
`954 F.2d 713 (Fed. Cir. 1992) .............................................................
`
`................................. ..12
`
`Estee Lauder Inc. v. The Gap, Inc.,
`108 F.3d 1503 (2d Cir. 1997) ..................................................... ... ......................................... ..12
`
`GlenwoodLaboratories v. American Home Products Corp.,
`455 F.2d 1384 (C.C.P.A. 1972) .....................................................
`
`I
`.......................... ..;.11
`
`........
`
`.
`'
`In re Appetito Provisions Co". Inc.,
`3 U.S.P.Q.2d 1553 (T.T.A.B. 1987) ...........................................................................
`
`......... ..11
`
`-
`_
`In re E.I, DuPontDeNemours & Co.,
`476 F.2d1357(C.C.P.A.1973)............................................................................................. .. 12
`
`In re National Data Corp.,
`753 F.2d 1056, 224 U.S.P.Q. 749 (Fed. Cir. 1985) ............................................................... ..11
`
`Industria Espanola v. National Silver Co.,
`459 F.2d1049, 173 U.S.P.Q. 796 (1972) .............................................................................. ..11
`
`Louis J. Scorpiniti v. Fox Television Studios, Inc.,
`2013 U.S. Dist. LEXIS 8758 (N.D. Iowa 2013) ........................................................ ..12, 13, 14
`
`

`
`Motown Prods, Inc. v. Cacomm, Inc.,
`668 F. Supp. 285 (S.D.N.Y. 1987), rev ’d on other grounds, 849 F.2d 781 (2d Cir.
`1988) ............
`........................................................................................................................ .. 14
`
`Rockwood Chocolate Co., Inc. v. Hoflman Candy Co:,
`372 F.2d 552,152 U.S.P.Q. 599 (1967) .................. .. ............................................................ ..11
`Sands, Taylor & Wood Co. v. Quaker Oats Co.,
`I
`978 F.2d 947 (7th Cir. 1992) ................................................................................................. ..11
`
`Star Fin. Serv., Inc. v. AASTAR Mortgage Corp.,
`89 F.3d.5 (1st Cir. 1996) ........................................................................................................ ..12
`
`Vitek Systems, Inc. v. Abbott Labs,
`675 F.2d 190, 216 U.S.P.Q. 476 (8th Cir. 1982) ................................................................... ..11
`
`Warner Bros. Inc. v. ABC, Inc.,
`720 F.2d 231 (2d Cir. 1983) ................................................................................................... ..14'
`
`OTHER AUTHORITIES
`
`New York Times ............................................................................................................................. ..5
`
`

`
`B.
`
`Description of the Record
`
`Registration of THE LEAGUE mark of the above-captioned application has been refused
`because the mark is asseitedly likely to be confused with the mark THE LEA_GUE (Reg. No.
`
`4,012,633).l Appellant submits that the marks are used on unrelated goods and services such
`
`that confusion between the marks is not likely. Appellant filed brief in support of its appeal of
`the decision, and in the course of responding the Examiner noted that some of the goods/services
`
`were iniselassified. The application was returned to the Examiner, a proper amendment was
`
`entered and now the present appeal resumes. Applicant herein submits its updated Appeal Brief.
`
`C.
`
`Statement of the Issues
`
`The issue is whether the mark THE LEAGUE for use with “motion picture films in the
`
`field of science fiction; entertainment in the nature of a television program in the field of science
`
`fiction” is confusingly similar to the prior registered mark THE LEAGUE for use with
`
`“entertainment services in the nature of a television series featuring comedy” (Reg. No.
`
`4,012,633).
`
`D.
`
`Recitation of the Facts
`
`Appellant seeks to register the mark THE LEAGUE for use with “motion picture films in
`
`the field of science fiction; entertainment in the nature of a television program in the field of
`
`science fiction.”
`
`
`
`1 The Official Action dated July 12, 20l2 asserts that registration ofthe applied-for mark is refused due to a likelihood ofconfusion with U.S.
`Reg. No, 2,849,295. This registration relates to the mark MR0 and Design for use with electric switches. This registration appears to be
`asserted in error, as the subsequent Office action dated March 19, 2013 returristlie focus of the refusal to US: Reg. No. 4,0l2,633 For the
`mark THE LEAGUE, which is discussed substantively above.
`Indeed, the Office Action dated July 30, 20l3 asserts that the refusal in
`connection with Registration No. 4,0l2,633 is maintained.
`
`

`
`By way of background Applicant/Appellant, Ms. Sherrilyn Kenyon, is a New York Times
`bestselling author and, in the past three years, Ms. Kenyon has claimed the #1 spot sixteen times.
`
`Ms. Kenyon has more than 25 million copies of her books in print in over 100 countries. Her
`
`current series include The Dark~Hzmters, The League, Chronicles of Nick and Belador. Since
`
`2004, she has placed more than 65 novels on the New York Times’ list. Ms. Kenyon is the
`
`preeminent voice in garcmormal zfzctioni Kenyon not only helped to pioneer the genre but
`
`defined the current paranormal trend that captivates the world.
`
`Applicant‘/Appellant seeks to. register her mark THE LEAGUE for use with “motion
`
`picturefilms in the field of science fiction; entertainment in the nature of a television program in
`
`the field of science fiction.” The motion picture and television show would, if aired, be based
`
`on Ms. Kenyon’s book series sold under THE LEAGUE mark. The book series has been hugely
`
`successful for Ms. Kenyon. Below is a screen shot of some of the covers of her books in THE
`
`LEAGUE series.
`
`The League Series
`
`Sun Bucks up ‘fl rig.‘
`
`ighl
`Born 0
`(E l!».<:kA\'allahle)
`
`BoruofFA'1-e '
`(E-Hunk .1».35|aid.)
`
`(E-E1cnl(Avalluhli)
`
`'
`
`'
`
`(2 I‘-H2K.\\.‘aH».\liIe]
`
`..‘,..(,‘ >91‘.
`IHHI \/I\l§
`l‘ VHN 3
`
`, lioruflfslnadows
`‘
`(L n-.vJkAmiam..-)
`
`liornflfSilence
`uruoul Available)
`
`Rom rpt'F\lry
`‘
`
`‘ Cloak & Sflellcé
`
`

`
`Ms. Kenyon’s website (the “Site”) offers the following description of THE LEAGUE
`
`series:
`
`‘‘In the Ichidian Universe no one was safe. People were dragged from their homes and
`
`killed in the streets — victims of a ruthless tyrant who was bent on being the sole ruler of their
`
`entire empire. Those who opposed him and his army formed an alliance called The League
`
`which fell under the leadership of the Quorum.” The Site goes on to state:
`
`v THE LEAGUE
`
`The #1 new York Times bestselling series.
`NEWS New Ht-.‘l'l.\BS
`
`in the lchldian Universe no one was sate. People were draggedtrom their homes and killed in the :-;treelss~ .
`‘
`.~ victims ofa ruthless tyraniwho was bent on heing the sole ruler oitheir entire empire. Tlioeewho opposed
`3 him and his army formed an alliance called The League which fell under the leadership otlhe Cluorum.
`
`‘ Alter they put down the tyrant, the 0.uorurn realized that the best way to lceep trouble from starting was to omit
`oft atits head. A separate group ofeoldiers was neerlerl, The League Aseae-siris. Highly trali'1eLl and highly
`valued, they are the backbone of the government
`
`J
`
`But not even the League is trnrnune to corruption. ,.
`
`'. Welcome to a world where corrupt aseas-einaiion politics tic-nnnaie everything and everyone because
`
`‘:5
`
`sornetirnes the cure reailyls worse than the illness. it's kill or be killed. You're either the hunter or the prey
`
`Elulthere are those who will protect you, Men and women who come from the streets and horn bloodied
`backgrounds of survival, Youjust have to decide is they're oelterthan the ones chasing you. ;‘
`» Or worse.
`
`. Sarcastic, loyal, highly trained and lethal, these men and women are the next generation ofheroee. They know ~
`how to laugh in the face ofniartnessianrl danger, and to endure the worst The League and their enemies can
`: hurl at them.
`‘
`i
`‘
`
`Most of all, they lanuw to fight and protect.
`
`Registration of Ms.~Kenyon’s marlclihas been refused in favor of THE LEAGUE, which is
`registered for use with “entertainment services in the natureiof a .television series featuring
`
` ” (Reg. No. 4,012,633). The comedy show of the cited registration is extremely different
`
`from ‘Ms. Kenyon’s show involving a ruthless tyrant in a fictional universe, which is properly
`
`categorized as in the field of “science fiction.” Specifically, the show of the cited mark is a
`
`

`
`
`
`
`
`situational comedy about a group of old friends in a fantasy football
`
`league. The comedy
`
`explores how the online sports obsession affects marriages, friendships, families, and completely
`
`shuts down Sundays. Below is a screen shot from the official web site for THE LEAGUE
`
`comedy show.
`
`_ nisin-m. mists
`Tim Era:-garcs ram m-mm I}:-cs
`vrsilu {mm «of Mt!
`Ergmim it
`1:’
`
`r){lI1‘:an*&x.|J-. igxmmr-,1 who 5::-ma
`as one -mlw mandates: and
`In-2: ml?“ [-11
`.
`,
`. 3 by Hi §'tvn=:fi.a-films.
`- 5
`me it e-a.;§.w i~r.z’:=:5!¢~a an
`
`
`
`
`
` ii‘: mmua I Fa-Javlrfi H.v:(m N4
`
`It
`
`is obvious from the Registrant’s own descriptions that
`
`the show is a situational
`
`comedy, drawing laughs from one-liners, raunchy language, and awkward and embanassing
`
`situations. Further, the show’s website (at www.fxnetworks.com/theleague/about) describes the
`
`show as follows:
`
`
`
`l1,
`
`i
`
`

`
`
`
`To be a fan of The League on FX, you don’t need to know much about fantasy
`football, or sports at all. You just need to have friends that you hate. FX’s
`ensemble comedy follows a group of old friends in a fantasy football league who
`care deeply about one another — so deeply that they use every opportunity to make
`each other’s lives miserable.
`'
`
`The League website at www.fxnetworks.com/theleagge/about.
`
`Below is a screen shot from a website for the cited mark, describing the plot line of one
`
`episode of Registrant’s comedy series:
`
`.:-i'l°.
`
`The League
`0!‘ Smoke Crotch
`SE‘::2i<E<"zt'§ .3. T{it:=:<'»ztr:
`-3.
`;’xirr:.w..:3 (..‘J¢.':>. ‘N,
`
`V
`
`‘raggatwrpam
`
`irn-J.«te3g'Qm;xr—;s_ '
`
`.i’j..—eg;;ap’ t
`
`;.—,C.ast—>:aCi'e;v
`
`
`
`EPiSODE SUMMARY
`
`i
`
`4
`
`Kevin struggles with getting older. Ruxin is. so desperate to get rid of his an
`pairthat he gets F:ai'I‘s help. Taco finds a market for Kevin and Jennvs
`wedding cocktail napkins. And Pete learns a new sexual pnsition. and regrets
`
`it.
`
`
`
`.‘-.i‘\l.f’t"?"!"“!..l {”“si‘\Sl
`
`llxtii
`
`As is obvious
`
`3
`
`this comed
`
`series focuses on “realistic”
`
`eo le — or at
`
`least not
`
`paranormal beings in a fictional universe — who suffer from arrested emotional development and
`
`who act silly and immature.
`
`

`
`Appellant submits that the genres of the two shows — situational, slapstick comedy vs.
`
`science fiction — is enough such that confusion between the marks is unlikely. Mrs. Kenyon’s _
`
`storylines are dark, violent stories taking place in a fictional universe.
`
`In contrast, the slapstick
`
`comedy offered under the cited mark is based on “realistic” persons, suffering from some
`
`arrested emotional development, who are inane and silly.
`
`The Examiner refuses registration of the mark, asserting that the marks are identical, both
`
`marks are for use with television programs and related motion pictures, and that the third party
`
`registrations she attached to the Office Action support
`
`the proposition that producers of
`
`television and motion“ picture programs often cross genres and may even include science fiction
`
`and comedy in the same program and film. The Examiner further states that “[t]he proposed
`
`mark is a film and program based on the writings of the applicant and may include films or
`
`programs in any genre in which she writes. .. [and that] the applicant uses comedic relief in her
`
`material.” Office Action dated March 19, 2013, page 2, first paragraph.
`
`The identification of‘goods and services expressly states that the present mark is intended
`
`to be used with “motion picture films in the field of science Zzction; entertainment in the nature
`
`of a television program in the field-of science zzction,” not “any genre in which she writes." The
`
`Examiner is impermissibly reading the scope of goods and services more broadly than is written
`
`to impermissibly support her refusal to register the mark. When considering Appellant’s mark
`
`for use with science fiction films and television programs, it is obvious that the Appellant’s mark
`
`is not likely to be confused with the cited mark for use with slapstick comedy television shows.
`
`For
`
`the reasons discussed herein below, Appellant
`
`respectfully requests that
`
`the
`
`Examiner’s refusal to register the mark be reversed.
`
`

`
`E.
`
`Argument
`
`Trademark law prohibits use of a senior user’s mark on products which would reasonably
`
`be thought by the buying public to come from the same source, or thought to be affiliated with,
`
`connected with, or sponsored by, the trademark owner. Sands, Taylor & Wood Co. v. Quaker
`
`Oats Co., 978 F.2d 947, 958 (7th Cir. 1992). The basic principle in determining confusion
`between marks is that they must be compared in their entireties and must be considered in
`connection with the particular goods or services for which they are used. Glenwoocl Laboratories
`v. American Home Products Corp., 455 F.2d 1384, 1385 (C.C.P.A. 1972); Inciustria Espanola v,
`
`National Silver Co., 459 F.2d 1049, 173 U.S.P.Q. 796 (1972); Rockwood Chocolate Co., Inc. v.
`
`Hofifman Candy Co., 372 F.2d 552, 555, 152 U.S.P.Q. 599, 602 (1967) (finding “each case
`
`requires consideration of the effect of the entire mark including any term in addition to that
`
`which closely resembles the opposing mark”); In re National Data Corp., 753 F.2d 1056, 1058,
`
`. 224 U.S.P.Q. 749, 750-51 (Fed, Cir. 1985).
`
`The test for likelihood of confusion does) not focus on the similarity of competing marks
`
`in the abstract, but compels an evaluation of objective evidence that the competing marks, when
`
`used in the marketplace, are likely to confuse the purchasing public about the source of the
`
`products.
`
`In re Appetito Provisions Co. Inc., 3 U.S.P.Q.2d1553, 1557 (T.T.A.B. 1987);
`
`Continental Grain Co. v. Central Soya Co., 69 F.3d 555 (Fed. Cir. 1995).
`
`In respect to the term “likelihood,” in the likelihood of confusion standard, the Lanham
`
`Act refers to likelihood, not the mere possibility of confusion. Bongrain Int’l (American) Corp.
`
`v. Delice de France, Inc., 811 F.2d 1479, 1486 (Fed. Cir. 1987). Proof that confusion is only
`
`“possible” is insufficient to establish that confusion is likely. See Vite/c Systems, Inc. v. Abbott
`
`Labs, 675 F.2d 190, 216 U.S.P.Q. 476 (8th Cir. 1982); A&H Sportswear Co. v. Victoria ’s Secret
`
`ll
`
`

`
`Stores, Inc., 926 F. Supp. 1233, 1268 (E.D. Pa. 1996), aff’d, 49 1I.S.P.Q.2d 1493 (3d Cir. 1999);
`
`Estee Lauder Inc. v. The Gap, Inc., 108 F.3d 1503, 1511 (2d Cir. 1997); Star Fin. Serv., Inc. v.
`
`AAST/IR Mortgage Corp., 89 F.3d 5, 10 (lst Cir. 1996) (“We require evidence of a ‘substantial’
`
`likelihood of confusion not a mere possibility.’’).
`
`The factors pertinent to the issue of likelihood of confusion are set forth in In re E.I.
`
`DuPont DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). When reviewing a trademark
`using the DuPont factors, “it is the duty of the examiner, the board, and .[the] court to find, upon
`
`consideration of all the evidence, whether or not confusion appears likely.” Id. at 1362. An
`
`examination of the relevant factors in this matter demonstrates that no likelihood of confusion
`
`exists, and Appellant’s mark THE LEAGUE should be permitted to register.
`
`The only similarity between the services offered ‘under the cited registration and those
`
`recited in the above—captioned application is one based on the broad category of entertainment
`
`services.‘ The services offered by Appellant and Registrantin connection with their respective
`
`marks are unique and are directed to entirely different audiences. The mere fact that both
`
`parties’ services fall
`
`into the same broad category does not render the parties’ services
`
`sufficiently related to warrant an automatic conclusion of likelihood of confusion. Astra
`
`Pharmaceutical Products, Inc. v. Beckrnan Instruments, Inc., 718 F.2d 1201 (lst Cir. 1983);
`
`Electronic Design & Sales, Inc. 12. Electronic Data Systems Corp., 954 F.2d 713 (Fed. Cir. 1992).
`
`1.
`
`Caselaw Supports Registration of the Aboveecaptioned Mark
`
`The facts of the case strikingly similar to those of Louis J. Scorpiniti v. Fox Television
`
`Studios, Inc., 2013 U.S. Dist. LEXIS 8758 (N.D. Iowa 2013) (attached).
`
`In Scorpiniti, Fox
`
`Television Studios Inc.
`
`(Fox), creator of the television series THE GATES for use with
`
`“entertainment services in the nature of a television series featuring drama,” was held not to
`
`

`
`A infringe the registered service mark THE GATE, which was held by a producer and broadcaster
`
`of religious-based television programs (Louis J. Scorpiniti).
`
`Id. at * 8-9, 57-59. Consequently,
`
`Mr. Scorpiniti’s trademark infringement claim was subsequently dismissed. Id. at * 57-59.
`
`Specifically, Scoipiniti used his registered marknin connection with two television
`
`programs:
`
`(1) Soul Search, a religious music program that was produced by a friend and
`
`televised on a public access cable system, and (2) The Gate, a music television program that
`
`lasted for two episodes, one of which was broadcast on YouTube and Facebook. Id. at *5-8.
`
`Fox’s television show under THE GATES mark is a fictional one-hour long crime drama
`
`set in Los Angeles, featuring a former Chicago police officer who has moved with his family
`
`into a gated community called “The Gates,’ which is filled with supernatural beings, such as
`
`witches, werewolves and vampires. Id. at * 9.
`
`Fox received a federal trademark registration for THE GATES, but only after its initial
`
`application was denied due to a perceived likelihood of confusion with two marks: Scorpiniti’s_
`THE GATE and another mark.
`Id. at * 8-10. Significantly, Fox overcame the refusal by
`
`successfully arguing that
`
`its mark referenced a television series featuring a specific gated
`
`community inhabited by suggernatural beings, while in contrast, Scorpiniti’ s mark had religious
`
`significance. Id.
`
`Scorpiniti failed to show use of his mark in interstate commerce, so the Scorpiniti Court
`
`granted summary judgment
`
`to Fox on the trademark infringement claim and cancelled
`
`Scorpiniti’s registration.Id. at * 28-29. Fox argued that, even if Scorpiniti had a valid registered
`
`service mark at the time that Fox’s THE ‘GATES aired, Sco1piniti’s infringement claim would
`
`fail because there is no likelihood of confusion.
`
`Id. at * 28. To determine whether a likelihood
`
`of confusion was present,
`
`the Eighth Circuit considered the likelihood of confusion factors;
`
`13
`
`

`
`however, the Couit’s analysis of the proximity of the services is most relevant to the instant
`
`appeal.
`
`When analyzing competitive proximity, notably, the Scorpiniti Court held that there was
`
`“little to no competition between the Qrograms.” Id. at * 47 (emphasis added). THE GATES is a
`
`television series that features supernatural beings residing in a gated community. Id. THE I
`
`GATE, however, was a half-hour program that featured religious music videos and one or two
`
`hosts. In addition, the content of the two slzows——sciencefiction vs. religious music videos——was
`
`dissimilar. The court thus found that competitive proximity weighed against a likelihood of
`
`confusion. Id. at * 45-49. 1ndeed,lthey were considered “almost the opposite.” Id. at_* 47. See
`
`also, Davis v. Walt Disney Co., 430 F.3d 901, 904 (D. Minn. 2005) (concluding that there was
`
`not competitive proximity between a movie designed for children’s entertainment and an
`
`environmental advocacy television program); Warner Bros. Inc. v. ABC, Inc., 720 F.2d 231, 246
`
`(2d Cir. l983)(concluding there was no likelihood of confusion due to differences in the “total
`
`concept and feel” of a television program and a superhero franchise that includes television
`
`programs); Motown Prods, Inc. v. Cacomm, Inc., 668 F. Supp. 285, 290 (S.D.N.Y. l987)(“Even
`
`a brief look at the two programs establishes beyond doubt that no ‘purchaser’
`
`could confuse
`
`the two versions.”), rev ‘d on other grounds, 849 F.2d 781 (2d Cir. 1988). After analyzing all of
`
`the factors, the Court held that the competitive proximity factor weighs against a finding of a
`
`likelihood of confusion. Scorpiniti at * 49.
`
`Similarly, the TTAB should find that there is no likelihood of confusion in this matter.
`
`In
`
`the instant appeal, the mark of the present appeal is identical to the mark of the cited registration.
`
`However, the programs with which the two marks are used are or will be completely different
`
`and directed to vastly different audiences. The mark of the present appeal
`
`is for use with
`
`14
`
`

`
`television programs in the field of science fiction, involving beings from the fictional universe of
`
`Ichidian, where people are dragged from their homes and killed in the streets — victims of a
`
`ruthless tyrant.
`
`In contrast, the mark of the cited registration is for use with a situational comedy
`
`show involving immature friends and their obsession with fantasy football. The two shows are
`
`completely different. A viewer seeking a comedy show about fantasy football or immature 1
`
`friends isnot likely, upon seeing the mark for use with a dark,,violent science fiction show, to be
`
`confused between the two.
`
`Appellant submits that
`
`television viewers are savvy and
`
`discriminating enough to understand that the programs will emanate from different sources and
`
`avoid a likelihood of confusion.
`
`2.
`
`Third Party Registrations Cited by the Examiner
`
`The Examining Attorney bases the decision of a likelihood of confusion between
`
`Applicant/Appellant’s mark and the cited registration on third—party registration evidence. The
`
`third—party registrations offered by the Examining Attomey do little more than show that some
`
`comedies have a science fiction setting. Even comic relief sprinkled in an otherwise dark,
`
`dramatic storyline does not cause the drama to be recharacterized as a “comedy.” Mrs. Kenyon’s
`
`television shows are expected to be dark, Violent, science fiction shows and, while they may have
`sporadic comedic relief that would not be sufficient to cause the shows to be categorized as
`
`“comedies.” Much like the vastly different genres subject to THE GATES and_THE GATE mark
`
`discussed above, there is little to no competition between the shows and the content of the shows
`
`is so dissimilar that confusion between them is not likely.
`
`3.
`
`No Confusion To Date
`
`The first book in Appellant’s THE LEAGUE series was published as earlyas September
`
`2009 and Registrant’s comedy show aired at least as early as August 2010. Applicant’s books
`
`15
`
`

`
`have been on the NY Times best-seller’s list and Registrant’s comedy show aired on cable
`
`television. Despite the fact that both Appellant and Registrant have reached wide audiences,
`
`Appellant is unaware of any incidents of actual confusion between the marks. Continued use of
`
`the same marks will not cause any additional confusion.
`
`F.
`
`Conclusion
`
`Based on the foregoing discussion, Appellant contends that there is no likelihood of
`
`confusion between the marks and that
`
`the refusal
`
`to register Appellant’s mark should be
`
`revers ed.
`
`Please charge any fees in connection with this matter to Deposit Account No. 502483-1211
`
`and charge our client-matter number 118999-100.
`
`Respectfully submitted,
`
`5%.
`
`
`Robert L, Brewer
`
`MarthaAllard
`
`Attorneys for Appellant
`
`Date:
`
`January 13, 2014
`
`Submitted by:
`
`Bass, Berry & Sims, PLC
`150 3'“ Ave. s., Suite 2800
`Nashville, Tennessee 37201
`(615) 742-6200
`
`1 l 883222. I
`
`

`
`Page 1
`
`LOUIS J. SCORPINITI, Plaintiff, vs. FOX TELEVISION STUDIOS, INC.,
`Defendant.
`
`No. 11-CV-64-LRR
`
`UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF
`IOWA, CEDAR RAPIDS DIVISION
`
`918 F. Supp. 2d 866; 2013 U.S. Dist. LEXIS 8758
`
`January 23, 2013, Decided
`January 23, 2013, Filed
`
`PRIOR HISTORY: Scorpiniti v. Fox TV Studios, Inc.,
`2012 U.S. Dist. LEXIS 166918 (N.D. Iowa, Nov. 26,
`2012)
`
`COUNSEL:
`[**1] For Louis J Scorpiniti, Plaintiff,
`Counter Defendant:
`Timothy
`J
`Zarley,
`LEAD
`ATTORNEY, Zarley Law Firm, PLC, Des Moines, IA.
`
`For Fox Television Studios Inc, Defendant: Christine
`Lebron-Dykeman,
`Jeffrey
`D
`Harty,
`LEAD
`ATTORNEYS, Bradley J Powers, McKee, Voorhees &
`Sease, PLC, Des Moines, IA.
`
`For Fox Television Studios Inc, Counter Claimant:
`Bradley
`J Powers,
`Jeffrey D Harty, LEAD
`
`ATTORNEYS, McKee, Voorhees & Sease, PLC, Des
`Moines, IA.
`
`JUDGES: LINDA R. READE, CHIEF UNITED
`STATES DISTRICT JUDGE.
`
`OPINION BY: LINDA R. READE
`
`OPINION
`
`[*868] ORDER
`
`TABLE OF CONTENTS
`
`I. INTRODUCTION
`
`II. PROCEDURAL HISTORY
`
`III. SUBJECT MATTER JURISDICTION
`
`IV. SUMMARY JUDGMENT STANDARD
`
`V. RELEVANT FACTUAL BACKGROUND
`
`A. Parties
`
`B. Scorpiniti's THE GATE Mark
`
`C. FTVS's THE GATES Mark
`
`D. Alleged Infringement
`
`

`
`918 F. Supp. 2d 866, *868; 2013 U.S. Dist. LEXIS 8758, **1
`
`Page 2
`
`VI. ANALYSIS
`
`A. Infringement Claim
`
`1. Protectible interest
`
`a. Use in commerce
`
`b. Use in connection with television broadcasting services
`
`c. Summary
`
`2. Likelihood of confusion
`
`a. Strength of Scorpiniti's mark
`
`I. Conceptual strength
`
`ii. Commercial strength
`
`iii. Summary
`
`b. Similarity
`
`c. Competitive proximity
`
`d. Intent
`
`e. Degree of care
`
`f. Actual confusion
`
`g. Summary
`
`3. First Amendment
`
`4. Damages
`
`B. Remaining Claims
`
`VII. CONCLUSION
`
`[*869] I. INTRODUCTION
`
`The matter before the court is Defendant [**2] Fox
`Television Studios,
`Inc.'s
`("FTVS")
`"Motion
`for
`Summary Judgment" ("Motion") (docket no. 55).
`
`II. PROCEDURAL HISTORY
`
`On December 21, 2011, Plaintiff Louis J. Scorpiniti
`filed an Amended Complaint ("Complaint") (docket no.
`15)
`against
`FTVS. Count
`I
`alleges
`trademark
`infringement in violation of 15 U.S.C. § 1114. 1 Count II
`alleges false designation of origin and unfair competition
`in violation of 15 U.S.C. § 1125. Count III alleges unfair
`competition under Iowa law.
`
`On September 26, 2012, FTVS filed an Answer
`(docket no. 47), denying Scorpiniti's allegations, asserting
`affirmative defenses and counterclaims against Scorpiniti.
`Counterclaim I requests that the court cancel Scorpiniti's
`trademark for nonuse. Counterclaim II requests that the
`court cancel Scorpiniti's trademark due to fraud on the
`United States Patent and Trademark Office ("USPTO").
`
`On November 14, 2012, FTVS filed the Motion. On
`December 12, 2012, Scorpiniti filed a Resistance (docket
`no. 66). On December 21, 2012, FTVS filed a Reply
`(docket no. 69). In the Motion, FTVS requests the
`opportunity to present oral argument. The court finds that
`a hearing is
`[**3] unnecessary. The matter is fully
`submitted and ready for decision.
`
`III. SUBJECT MATTER JURISDICTION
`
`1 Scorpiniti mistakenly cites to 15 U.S.C. § 1117
`in the Complaint.
`
`federal question subject matter
`The court has
`jurisdiction over Scorpiniti's first two claims because they
`
`

`
`918 F. Supp. 2d 866, *869; 2013 U.S. Dist. LEXIS 8758, **3
`
`Page 3
`
`arise under the Lanham Act, 15 U.S.C. §§ 1114 and 1125.
`See 28 U.S.C. § 1331 ("The district courts shall have
`original jurisdiction of all civil actions arising under the
`Constitution, laws, or treaties of the United States."). The
`court has supplemental jurisdiction over Scorpiniti's third
`claim because "the federal-law claims and state-law
`claim[] in the case derive from a common nucleus of
`operative fact and are such that [a plaintiff] would
`ordinarily be expected to try them all in one judicial
`proceeding." Kan. Pub. Emps. Ret. Sys. v. Reimer &
`Koger Assocs., Inc., 77 F.3d 1063, 1067 (8th Cir. 1996)
`(second alteration in original) (quoting Carnegie-Mellon
`Univ. v. Cohill, 484 U.S. 343, 349, 108 S. Ct. 614, 98 L.
`Ed. 2d 720 (1988)) (internal quotation marks omitted);
`see also 28 U.S.C. § 1367 ("[I]n any civil action of which
`the district courts have original jurisdiction, the district
`courts shall have supplemental jurisdiction over all other
`claims that are so related to claims in the action within
`such original [**4] jurisdiction that they form part of the
`same case or controversy under Article III of the United
`States Constitution.").
`
`IV. SUMMARY JUDGMENT STANDARD
`
`Summary judgment is appropriate "if the movant
`shows that there is no genuine dispute as to any material
`fact and the movant is entitled to judgment as a matter of
`law." Fed. R. Civ. P. 56(a). "A dispute is genuine if the
`evidence is such that it could cause a reasonable jury to
`return a verdict for either party; a fact is material if its
`resolution affects the outcome of the case." Amini v. City
`of Minneapolis, 643 F.3d 1068, 1074 (8th Cir. 2011)
`(citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
`248, 252, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986)), cert.
`denied, 132 S. Ct. 1144, 181 L. Ed. 2d 1018 (2012).
`"[S]elf-serving allegations and denials are insufficient to
`create a genuine issue of material fact." Anuforo v.
`Comm'r, 614 F.3d 799, 807 (8th [*870] Cir. 2010). "To
`survive a motion for summary judgment, the nonmoving
`party must substantiate [its] allegations with sufficient
`probative evidence [that] would permit a finding in [its]
`favor based on more than mere speculation, conjecture, or
`fantasy." Barber v. C1 Truck Driver Training, LLC, 656
`F.3d 782, 801 (8th Cir. 2011) (second alteration [**5] in
`original) (quoting Putman v. Unity Health Sys., 348 F.3d
`732, 733-34 (8th Cir. 2003)) (internal quotation marks
`omitted). The cour