Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA538935
`ESTTA Tracking number:
`05/20/2013
`
`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
`appeal brief.pdf(744045 bytes )
`appeal brief attachment.pdf(1352011 bytes )
`Martha B. Allard
`trademarks@bassberry.com
`/Martha B. Allard/
`05/20/2013
`
`Proceeding
`Applicant
`Applied for Mark
`Correspondence
`Address
`
`Submission
`Attachments
`
`Filer's Name
`Filer's e-mail
`Signature
`Date
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`V Applicant Name: Kenyon, Sherrilyn
`
`Mark: THE LEAGUE
`
`Ser. No. 85396538
`
`Filing Date: August 12, 2011 ,
`
`Attorney Ref. No.2 118999-100
`
`APPELLANT’S APPEAL BRIEF
`
`BOX TTAB FEE
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`Alexandria, Virginia 22313-1451
`
`Appellant, Mrs. Sherrilyn Kenyon, Applicant
`
`in the abo_ve-captioned matter, hereby
`
`submits her brief in support of her Notice of Appeal
`
`in the above-captioned mark (herein
`
`‘i‘Appe1lant/Applicant”).
`
`

`
`TABLE OF CONTENTS
`
`Page
`
`A. Description of the Record ......................................................................................
`
`................ ..5
`
`B. Statement of the Issues ..................... .._ ...................................................................................... ..5
`
`.C. Recitation of the Facts .....................
`
`...... ., ........................................................
`
`............
`
`D. Argument ............................................................................................................................... ..10'
`
`_l.
`
`g Caselaw Sdpports Registration of the AboVe—captioned Mark........................................ ..12
`
`2. Third Party Registrations Cited by the Examiner ............................................................ ..15
`
`3. No Confusion To Date ....... .L .................................
`
`........................................................ ..15
`
`E. Conclusion ............................................. .; ............................................... ..16
`
`

`
`INDEX OF CASES
`
`CASES.
`
`Page(s)
`
`.
`A&H Sportswear Co. v. Victoria ’s Secret Stores, Inc.,
`926 F. Supp. 1233 (E.D. Pa. 1996), aff’d, 49 U.S.P.Q.2d 1493 (3d Cir. 1999) ...........
`
`....... ..11
`
`Astra Pharmaceutical Products, Inc. v. Beckman Instruments, Inc.,
`718 F.2d 1201 (1st Cir. 1983) ................................................................................................ ..12
`
`~
`Bongrain Int (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
`
`I
`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) ................................................................................................. ..11
`
`1
`Glenwood Laboratories v. American Home Products Corp.,
`455 F.2d 1384 (C.C.P.A. 1972).........................................................................
`
`.................. ..11
`
`,
`In re Appetito Provisions Co. Inc.,
`3 U.S.P.Q.2d 1553 (T.T.A.B. 1987) ...................................................................................... ..11
`
`In re E.I. DuPont DeNemours & Co.,
`476 F.2d 1357 (C.C.P.A. 1973) ........................................................................................... .._..11, 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.2d 1049, 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) (attached) ........................................... .. 12 - 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
`
`A
`Rockwood Chocolate Co., Inc. v. Hofinan Candy Co.,
`54 C.C.P.A. 1061 ..................................................................................................................... ..9
`
`Sands, Taylor & Wood Co. V. Quaker Oats Co.,
`978 F.2d 947 (7th Cir. 1992) ....................
`...............................
`
`.......................................... ..10
`
`Star Fin. Serv., Inc. v. AASTAR Mortgage Corp.,
`‘
`89 F.3d5 (1st Cir. 1996)........................................................................................................ ..11
`
`Vitek Systems, Inc. v. Abbott Labs,
`675 F.2d 190, 216 U.S.P.Q, 476 (8th Cir, 1982) ................................................................... ..11
`
`' IWarner Bros. Inc. v. ABC, Inc.,
`720 F.2d 231 (2d Cir. 1983) ..... .; ...............................................
`
`........................................... ..14
`
`

`
`A.
`
`Description of the'Record
`
`Registration of THE LEAGUE mark of the above-captioned application has been refused
`
`because the mark is assertedly likely to be confused with the mark THE LEAGUE (Reg. No.
`
`4,012,633)‘ Appellant submits that the marks are used on unrelated’ goods and services such
`
`that confusion between the marks is not likely.
`
`B.
`
`_ Statement of the Issues
`
`The issue is whether the mark THE LEAGUE for usewith “motion picture films in the
`
`field of sciencefiction; 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).
`
`C.
`
`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.”
`
`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-Hunters, The League, Chronicles ofNick and Belador. Since
`2004, she has placed more than 50 novels on the New York Times’ list. Ms. Kenyon is the
`
`1 The Official Action dated July 12, 2012 asserts that registration ofthe applied-for mark is refused due to a likelihood of confusion with U.S.
`Reg. No. 2,849,295. This registration relates to the mark MIRO and Design for use with electric switches. This registration appears to be
`asserted in error, as the subsequent Office action dated March 19,2013 returns the focus of the refusal to U.S. Reg. No. 4,012,633 for the
`mark THE LEAGUE, which is discussed substantively above.
`
`

`
`preeminent voice in garanormal tzction. Kenyon not only helped to pioneer the ‘genre but
`
`defined the current paranonnal trend that captivates the world.
`
`Applicant/Appellant seeks to register her 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.” 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
`
`Ice
`Fir
`«,5 xz«.~-I-.'«.-.m.sm=5
`
`Inn.
`
`:1
`
`rl
`
`’
`
`lg
`
`llom Of Shadows
`[E tar-ilrA\val1able)
`
`Born Ofsilencu
`[E‘.—H:«‘i:A\'ailal1IE)
`
`Born of Fury
`
`Cloak & Silence
`
`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 ben on being the sole ruler of their
`
`entire empire. Those who opposed him and his army formed an alliance called The League
`
`which fellunder the leadership of the Quorum.” The Site goes on to state:
`
`

`
`TH E LEAGUE
`
`The #1 New York Times bestselting series.
`
`Hell's flew Heroes
`
`els-
`=afE.-. People were dr:3gg>:=.d from their homes. and killed in the
`as hent on being true sale ruler -znftheir entire empire. Those who opposed
`him and his army formed an alliance called The l_eaguewl‘rii::l1fell undertlie leadership Ufthe Ctuorurn.
`
`valu ed, they are the h
`
`needed, The L.
`.
`lthone olthe goverr'lrr1er'rt.
`
`..
`
`But not ever’: the Leagile l5 imrnuhe to corruption ..
`
`‘.'\'elc.on1etc: a world where corrupt assassinaticxn politics dominate e‘-zerssthirig arid everyorie» because
`SCIF'l‘l9ill'r'leE- the cure really‘ is woree than the illnes.-5. lt:. lull or be l-’.|l|B|1 You're either the hunter or the prey‘.
`
`Elutthere are those who will nrotectyotr, Men and women who came from the streets and from hloodied
`haclzgrounds cit:-;u
`val. Youjusthave to decide is the',r‘re hetterthan the one
`
`Of "u".l'C||'S G.
`
`Sarcastic, loyal, highly trained and lethal, these men and women are the next generation c-fheroee. They l~:ncrw
`howth laugh in the face of madness and danger, andto endure the worst The League andtheir enemies can
`hurl atlhem.
`
`Most of all, th ey tin ow to fight and protect,
`
`The war is un,..
`
`E Registration of Ms. Kenyon’s marlc has been refused in favor of THE LEAGUE, which is
`
`registered for use with “entertaimnent services in the nature of a television series featuring
`
`may” (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
`9
`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 theionline 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.
`
`

`
`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 embarrassing
`
`situations. Further, the show’s website (at www.fxnetworks.com/theleague/about) describes the
`
`show- as follows:
`
`To be a fan of The League on FX, you don’t need to know much about fantasy
`football, or spots at all, You just need to have fiiends that you hate. FX’s
`ensemble comedy follows a group of old fiiends in a fantasy football league who
`care deeply about tone another — so deeply that they use every opportunity to
`make each other’s lives miserable.
`
`r
`
`The League website at www.fxnetworks.com/theleague/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:
`
`
`
`The League
`Oi‘ Smoke Crotch
`Season 3. Episode it, {aired Oct 27, 2931
`
`.
`
`
`
` if
`
`5
`
`EPISODE SUMMARY
`
`'
`
`4 EM
`
`Kevin struggles with getting older. Ruxin is so desperate to get rid of his au,
`pairthat he gets Rafiis help. Taco finds a market for Kevin anc£Jenny‘s
`wedding cocktall napkins. And Pete learns a new sexual position, and regrets
`ll.
`'
`'
`
`8 :f_if‘L‘fKt"‘*E
`;,H:‘:,e_E_
`‘
`.
`agfiglfiaaig
`were ti“-.'}\:l:‘§
`
`_
`
`
`\Ml\T:"l...l ["\?\ll INC
`
`As is obvious, this comedy series focuses on “realistic” people — or at least not
`
`paranormal beings in a fictional universe ~ that suffer from arrested emotional development and
`
`who act silly and immature.
`
`Appellant submits that the genres ofthe 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 “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 furtherstates that “[t]he proposed,
`mark is a film and program based on the writings of the applicant and may include films or
`
`,
`
`grograrns 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 ofscience fiction; entertainment in the nature
`
`of a television program in the field ofscience fiction,” 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.
`
`D.
`
`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. Glenwood Laboratories
`v. American‘Horne Products Corp., 455 F.2d_ 1384, 1385 (C.C.P.A. 1972); Industria Espanola v.
`National Silver Co., 459 F.2d 1049, 173 U.S.P.Q. 796(1972); Rockwood Chocolate Co., Inc. v.
`
`Hofiinan Candy Co., 54 C.C.P.A. 1061, 1065; 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 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.2d 1553, 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
`
`Pictl 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 Vitek Systems, Inc. v. Abbott
`Labs, 675 F.2d 190, 216 U.S.P.Q. 476 (8th Cir. 1982); A&I-I Sportswear Co. v. Victoria ‘s Secret
`
`Stores, Inc., 926 F. Supp. 1233, 1268 (E.D. Pa. 1996), affd, 49 U.S.P.Q.2d 1493 (3d Cir. 1999);
`
`Estee Lauder Inc. v.1 The Gap, Inc., 108 F.3d 1503, 1511 (2d Cir. 1997); Star Fin. Serv., Inc. v.
`
`AASTAR Mortgage Corp., 89 F.3d 5, 10 (1st 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
`
`ll
`
`

`
`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 Registrant in 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. Beckman Instruments, Inc., 718 F.2d 1201 (lst Cir. 1983);
`
`Electronic Design & Sales, Inc. v. Electronic Data Systems Corp, 954 F.2d 713 (Fed. Cir. 1992).
`
`1. ,
`
`Caselaw Supports Reg.istration of the Above-captioned 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 thenature of a television series featuring drama,” was held not to
`
`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,
`
`A Mr. Scorpiniti’s trademark infringement claim was subsequently dismissed. Id. at * 57-59.
`
`T
`
`Specifically, Scorpiniti used his registered mark in 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 supernatural 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, Scorpiniti’s infiingement 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‘,
`
`however, the Court’s analysis of the proximity of the services is most relevant to the instant
`
`appeal.
`
`Whenanalyzing competitive proximity, notably, the Scorpiniti Court held that there was
`
`“ ittle to no competition between the programs.” Id. at * 47 (emphasis added). THE GATES is a
`
`television series that features supernatural beings residing in a gated community. Id. THE
`
`

`
`GATE, however, was a half-hour program that featured religious music videos and one or two
`
`hosts. In addition, the content of the two shows—sciencefiction vs. religious music videos—was
`
`dissimilar. The court thus found that competitive proximity weighed against a likelihood of
`
`. confusion. Id. at * 45-49.
`
`Indeed, they were considered “almost the opposite.” Id. at * 47. See
`
`also, Davis v. Walt Disney Co., 430 F.3d 901, 904 (D. Minn. 2006) (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. 1983)(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
`
`television programs in the field of science fiction, involving beings from the fictional universe of
`
`Ichidian, where people were 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 situational comedy
`
`shows 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
`
`I4
`
`

`
`friends is not 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 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 Attorney do little more than show that
`
`producers of science fiction and comedy often cross genres and may even include science fiction
`
`and a comedy in the same program, but that does not mean programs that are characterized as
`
`science fiction would lik_ewise be characterized as comedies. 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 tobe 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.”
`
`3.
`
`N0 Confusion To Date
`
`The first book in Appellant’s THE LEAGUE series was published as early as September
`
`2009 and Registrant’s comedy show aired at least as early as August 2010. Applicant’s books
`
`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.
`
`

`
`CONCLUSION
`
`Based on the foregoing discussion, Applicant _contends that there is no likelihood of
`
`confusion between the marks and that
`
`the refusal to register Appellant’s mark should be
`
`reversed.
`
`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,
`
`Robert L. Brewer
`
`Martha Allard
`
`Attorneys for Appellant
`
`Date: May 20, 2013 -
`
`Submitted by:
`
`Bass, Berry & Sims, PLC
`150 3”’ Ave. s., Suite 2800
`1 Nashville, Tennessee 37201
`(615) 742-6200
`
`1l883222.l
`
`

`
`Page 1
`
`
`
`LexisNexi§*
`
`LOUIS J. SCORPINITI, Plaintiff, vs. FOX TELEVISION STUDIOS, INC.,
`Defendant.
`
`N0. 11-CV-64-LRR
`
`UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF
`IOWA, CEDAR RAPIDS DIVISION
`
`2013 U.S. Dist. LEXIS 8 258
`
`January 23, 2013, Decided
`January 23, 2013, Filed
`
`PRIOR HISTORY; Scorpiniti v. Fox TV Studios, Inc.,
`2012 US. Dist. LEXIS 166918 (N.D.
`Iowa, Nov. 26,
`2012)
`
`J Scorpiniti, Plaintiff,
`[*1] For Louis
`COUNSEL:
`J
`Zarley,
`LEAD
`Counter Defendant:
`Timothy
`ATTORNEY, Zarley Law Firm, PLC, Des Moines, IA.
`
`ATTORNEYS, McKee, Voorhees & Sease, PLC, Des
`Moines, IA.
`-
`
`JUDGES: LINDA R. READE, CHIEF UNITED
`STATES DISTRICT JUDGE.
`
`OPINION BY: LINDA R. READE
`
`For Fox Television Studios Inc, Defendant: Christine
`Lebron-Dykeman,
`Jeffrey
`D
`Harty,
`LEAD
`ATTORNEYS, Bradley J Powers, McKee, Voorhees &
`Sease, PLC, Des Moines, IA.
`
`OPINION A
`
`ORDER
`
`Inc, Counter Claimant:
`For Fox Television Studios
`Bradley
`J
`Powers,
`Jeffrey. D Harty, LEAD
`
`TABLE
`
`CONTENTS
`
`
`
`
`
` I. INTRODUCTION
`,
`H. PROCEDURAL HISTORY
`III. SUBJECT MATTER JURISDICTION
`
`
`
`IV. SUMMARY JUDGIVIENTSTANDARD
`
`V. RELEVANT FACTUAL BACKGROUND
`A. Parties
`
`B. Scorpiniti's THE GATE Mark
`C. FTVS's THE GATES Mark
`
`D. Alleged Infringement
`
`
`
`
`
`
`

`
`2013 U.S. Dist. LEXIS 3753, *1
`
`Page 2
`
` VI. ANALYSIS
`A. Infringement Claim .
`1. Protectible interest
`
`
`
`
`
`
`a. Use in commerce
`
`
`
`c. Summary
`2. Likelihood of confusion
`
`a. Strength of Scorpiniti's mark
`
`b. Use in connection with television broadcasting services
`
`
`
`1. 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
`
`I..I1>\/TRODUCTION
`
`[*2] Fox
`The matter before the court is Defendant
`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 of15 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.
`I
`
`l Scorpiniti mistakenly cites to 15
`in the Complaint.
`
`§'1]17
`
`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. SUBJECTMA TTER JURISDICTION
`
`federal question subject matter
`court has
`The
`jurisdiction over Scorpiniti's first two claims because they
`
`

`
`2013 U.S. Dist. LEXIS 8758, *3
`
`Page 3
`
`arise under the Lanham Act, 15 US. 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 US. 343, 349, 108 S. Ct. 614, 98 L.
`
`Ed. 2d 720 (1988)) (internal quotation marks omitted);
`see also 28 US. 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
`
`V
`
`[*4] jurisdiction that they form part of the
`such original
`same case or controversy under Article HI of the United
`States Constitution.").
`I
`
`IV. SUMMAR Y JUDGMENT STANDARD
`
`is appropriate "if the movant
`Summary judgment
`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,
`lnc., 477 US. 242,
`248, 252, 106.5‘. 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 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 court must view the record in the light most
`favorable to the nonmoving party and afford it all
`reasonable inferences. See Schmidt v. Des Moines Pub.
`
`Sch, 655 F.3d 811, 819 (8th Cir. 2011).
`
`V. RELEVANT FAICTUAL 15321CKGROUND
`
`Viewing the evidence in the light most favorable to
`Scorpiniti and affording him all reasonable inferences,
`the uncontested material facts are as follows.
`
`A. Parties
`
`is a citizen of Iowa who resides in Des
`Scorpiniti
`Moines,
`Iowa. Scorpiniti produces
`and
`broadcasts
`religious-based television programs.
`
`-
`
`FTVS is a Delaware corporation with its principal
`place of business in Los Angeles, California. FTVS is a '
`television production company that creates and produces
`television shows.
`
`B. Scorpiniti ’s THE GA TE Mark
`
`On November 25, 2008, the USPTO registered "THE
`GATE," U.S. Reg. 3,536,556, to Scorpiniti as a service
`mark in International Class 38 for use in relation to
`
`"television broadcasting." Plaintiffs Exhibit 1 (docket no.
`15-1) at
`1.
`In his trademark registration application,
`Scorpiniti included the disclaimer, "[n]o claim is made to
`the exclusive [*6] right to use the, gate apart from the
`mark as shown." Defendant's Appendix ("Def. App'x")
`(docket nos. 55-3 through 55-4) at 48.
`
`first used THE GATE in 2007 in
`Scorpiniti
`association with the program_ Soul Search, which is
`broadcast on the central Iowa Mediacom public access
`cable system. During his deposition, Scorpiniti testified
`that, while he had no documentation about the broadcast
`
`. distribution of the central Iowa Mediacom public access
`cable system, he had heard that the "footprint is central '
`Iowa to on occasion the footprint is considerably larger."
`Def. App‘x at 3. Scorpiniti‘s friend, Craig Hutc