opposer's motion for summary judgment

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

VANM.PHAM ) ) ) ) ) ) ) ) )

Opposer, V.

Opposition No.: 91251367 Serial No. 87/225280

WORLD AWARD, LLC, Mark: MISS GLOBAL MISS GLOBAL

(with LOGO)

Applicant.

OPPOSER'S MOTION FOR SUMMARY JUDGMENT

I. Introduction.

Opposer, Van M. Pham ("Mr. Pham"), is the founder and owner of Miss Global

Organization, LLC which arranges and conducts the beauty pageants around the world. Each

year the finalist is awarded the title "Miss Global" and is invited to participate in a wide variety

of marketing, charitable, and humanitarian activities.

Mr. Pham is the owner of several MISS GLOBAL-formative trademarks, including two

federal registrations in connection with arranging and conducting beauty pageants and clothing.

Both of Mr. Pham's federally registered trademarks have been in used in US commerce

continuously since at least as early as 2012 and both have reached incontestable status.

On November 3, 2016, Applicant, World Award, LLC, filed a federal intent-to-use

trademark application for the mark MISS GLOBAL MISS GLOBAL (with a logo consisting of a

black circle or sphere) for entertainment services, namely, conducting beauty competitions,

arranging of beauty contests; organization of educational, entertainment; and cultural

exhibitions for non-profitpurposes on November 3, 2016.

Applicant has not alleged any actual use of its mark to date; therefore, it is not disputed

that Opposer is the senior user.

Further, it is not disputed that both parties' services are providing essentially identical

services and the dominant portion of each of the parties ' marks are identical.

OPPOSER'S MOTION FOR SUMMARY JUDGMENT IIIIIII IIIIIIIIIIIIIIIIIIIIIIIIIII IIIIIIIIIIIIIIIIIIIIIIIIII

12/ 14/2020 U S P?tent & TMCfC/ TM Mail "i cpt Dt ii22

Still further, while Appl icant has not actually used its mark in commerce it is highly

likely that the trade channels and class of purchasers would be identical as well.

Therefore, having demonstrates that the likelihood of consumer confusion is very high,

Opposer respectfully requests that the Board grant Summary Judgment in Opposer' s favor and

refuse registration of Applicant ' s mark.

II. Opposer and his MISS GLOBAL Marks.

Opposer is the owner of several MISS GLOBAL-formative marks. These include the

following:

1) G MISS GLOBAL, reg. no. 4219443 for entertainment services, namely, arranging

and conducting beauty pageants in international class 041 (registered on October 2,

2012).

2) MISS GLOBAL (word mark), reg. no. 4140556 for clothing, namely, tops, bottoms, t

shirts, sweatshirts and hooded sweatshirts, jackets, coats, polos, tank tops, flip flops, pajamas,

underwear and panties, shorts, skirts, dresses, hats and caps, aprons in international class 025

(registered on May 8. 2012).

3) MISS GLOBAL (common law) currently the subject of application no. 87730533 for

the word mark MISS GLOBAL for entertainment services, namely, arranging and conducting

beauty pageants which was first used in US commerce on May 7, 2012.


III. Applicant and its Intent-to-Use Application

Applicant is attempting to register the following mark:

1) MISS GLOBAL MISS GLOBAL (with logo) for entertainment services, namely,

conducting beauty competitions, arranging of beauty contests; Organization of educational,

entertainment, and cultural exhibitions for non-profit purposes in international class 041.

Applicant's mark has evolved a couple times since it was originally filed in response to

the examining attorney' s rejection for including the flags of several nations pursuant to

Trademark Act Section 2(b ), 15 U.S.C. § 1052(b) and for including material alteration of the

mark as filed pursuant to Trademark Act 37 C.F.R. §2.72(a)(2), (b)(2). See previous versions

appear as follws:

IV. Legal Standard.

Summary judgment is an appropriate method of disposing of cases in which there are no

genuine disputes as to material facts , thus leaving such cases to be resolved as a matter of law.

See Fed. R. Civ. P. 56(c). The burden is on the moving party to demonstrate the absence of any

genuine dispute of material fact and that it is entitled to summary judgment as a matter of law.

See id. When a moving party's motion for summary judgment is supported by evidence

sufficient to indicate that there can be no genuine dispute as to any material fact and that the

moving party is entitled to judgment, the burden shifts to the non-moving party to demonstrate


the existence of at least one genuine di spute as to material fact that requires resolution at trial.

See id.; Kellog Co. v. Pack'Em Enters. Inc. , 14 USPQ2d 1545, 1549 (TTAB 1990). The

nonmoving party may not rest on the mere allegations of its pleadings and assertions, but must

designate specific portions of the record or produce additional evidence showing the existence of

a genuine dispute as to a material fact for trial. Id. ; Sweat Fashions, Inc. v. Pannill Knitting Co.

Inc., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987). Consequently, factual assertions, without

evidentiary support, are insufficient to defend against a motion for summary judgment. See

Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc. , 60 USPQ2d 1733 , 1739 (TTAB 2001)

("applicant has produced no evidence, or raised any expectation that at trial it could produce

evidence") .

"Opposer, as the party moving for summary judgment in its favor on its Section 2( d)

claim based on prior use, must establish that there is no genuine dispute as to (1) its priority of

use and (2) that contemporaneous use of the [MISS GLOBAL MISS GLOBAL (with logo)]

mark by the parties, for their respective services, would be likely to cause confusion, mistake or

to deceive consumers." Id. At 1735.

V. It is Undisputed that Opposer has Priority of Use.

With its Notice of Opposition, Opposer identified its two MISS GLOBAL- formative federal

registrations, both of which have been registered since 2012 and both have reached incontestable

status. See Notice of Opposition.

Whereas, Applicant ' s application is an intent-to-use application and Applicant has not

filed an Amendment to Allege Use or alleged any use otherwise.

Further, Applicant did not seek to cancel or otherwise challenge either of Opposer' s

registrations. See Answer to Notice of Opposition. Because Opposer introduced evidence that it

owns its pleaded registrations and that those registrations are valid and subsisting, and there is no

counterclaim to cancel such registrations, priority is not at issue. See, e.g. , Penguin Books Ltd. v.

Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998). Thus, no genuine dispute of material fact

exists with respect to the issue of priority.


VI. Applicants' Application Should be Denied Because Consumer Confusion is Likely.

"We determine likelihood of confusion by focusing on .. . whether the purchasing public

would mistakenly assume that the applicant' s [goods or services] originate from the same source

as, or are associated with [opposer' s goods or services.]" In re Majestic Distilling Co. , 315 F.3d

1311 , 65 USPQ2d 1201 (Fed. Cir. 2003). The determination of likelihood of confusion is based

on an analysis of all the probative facts that are properly in evidence that are relevant to the

thirteen factors set forth in In re E.J. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563

(CCP A 1973 ). In any likelihood of confusion analysis, however, two key considerations are the

similarities between the marks and the similarities between the goods and/or services. See, e.g. ,

Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976);

In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). This case is no

different. The similarity of the parties' marks and services as well as the other relevant DuPont

factors weigh strongly in favor of finding a likelihood of confusion and denying registration of

Applicants ' mark.

A. The Parties' Services Are Identical.

With respect to the similarity of the parties ' services, the Board must compare the

services identified in the opposed application to those identified in Opposer' s pleaded

registrations. See, e. g. , Hewlett-Packard Co. v. Packard Press, Inc. , 281 F.3d 126 I , 62 USPQ2d

1001 , 1004 (Fed. Cir. 2002). Here, both parties use their MISS GLOBAL marks in connection

with "arranging and conducting beauty pageants" . Therefore, the parties' services are identical

and this factor weighs strongly in favor of a likelihood of confusion.

B. The Parties' Marks Are Confusingly Similar.

With respect to similarity of the marks, the Board looks to the marks in their entireties as

to appearance, sounds, meaning or connotation, and commercial impression. See, e. g. , Palm Bay

Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d

1689, 1692 (Fed. Cir. 2005). "The proper test is not a side-by-side comparison of the marks, but

instead whether the marks are sufficiently similar in terms of their commercial impression such

that persons who encounter the marks would be likely to assume a connection between the


parties." Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721

(Fed. Cir. 2012) (internal quotations and citation omitted). It is well-established that when the

respective goods or services of the parties are identical, as in this case, the degree of similarity

between the marks need not be as great to support a finding of likelihood of confusion. See, e.g. ,

Century 21 Real Estate v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.

Cir. 1992).

The words "MISS GLOBAL" are the dominant portion of both parties' marks because

they comes first and are the literal portion of the parties' marks. See, e.g., Presto Prods. Inc. v.

Nice-Pak Prods. , Inc., 9 USPQ2d 1895, 1897 (1988) ("It is often the first part of a mark which is

most likely to be impressed upon the mind of a purchaser and remembered.").

This is especially true in this case where both parties marks are referred to audibly as

"MISS GLOBAL" because the other features in the marks are graphical and do not translate well

when audibly referencing the respective marks.

Thus, Opposer's and Applicants' marks look and sound similar and their commercial

impression is identical. Accordingly, this factor weighs strongly in favor of a likelihood of

confusion.

C. The Parties' Services Are Offered In the Same Trade Channels To The Same Classes Of Purchasers.

When the identification of goods in an applicant's application and in an opposer's

registration include no limitations or restrictions as to trade channels or classes of purchasers, the

Board must presume that both parties' goods are or can be marketed in all normal trade channels

and to all normal classes of purchasers for such goods. See, e.g. , Canadian Imperial Bank of

Commerce v. Wells Fargo Bank, NA. , 811 F.2d 1490, l USPQ2d 1813 (Fed. Cir. 1987).

Here, Opposer's registrations and Applicant's application do not include any limitations

or restrictions on trade channels or classes of goods; therefore, there is no genuine dispute as to

the material fact that both parties' purchasers encompass the same, ordinary purchasers for

beauty pageants in the same trade channels. Tea Board of India v. Republic of Tea, 80 USPQ2d

1881, 1897 (TTAB 2008) ("Because the goods are identical and there are no restrictions in the

identification of goods, the channels of trade as well as the purchasers for such goods are deemed

identical.") . This is true regardless of the parties' actual use of their respective marks. Id.

("[T]he question of likelihood of confusion is based on the goods as identified in the application


and registrations regardless of what the record may show as to actual channels of trade or

purchasers for the goods."). Thus, this factor weighs strongly in favor of a 1 ikelihood of

confusion.

D. Purchasers' of the Parties' Services Exercise A Lower Degree Of Care.

With regard to the conditions of sale, " [ w ]hen products are relatively low-priced and

subject to impulse buying, the risk of likelihood of confusion is increased because purchasers of

such products are held to a lesser standard of purchasing care." Re cot Inc. v. MC. Becton, 54

USPQ2d 1894, 1899 (Fed. Cir. 2000).

Here, while some consumers pay a modest price to view beauty pageants in person, many

consumers view beauty pageants on television or social media for free, and while advertising

revuw can be substantial , the cost to the actually consumer to consume the services is often very

little or nothing at all. Therefore, this factor weighs strongly in favor of a likelihood of

confusion.

E. Opposer's Marks Are Well-Known.

Fame of an opposer's mark, if it exists, plays a "dominant role in the process of balancing

the DuPont factors ." Recot, Inc. v. M C Becton, 214 F.3d 1322, 1327 (Fed. Cir. 2000). Indeed,

"[a] strong mark . . . casts a long shadow which competitors must avoid." Kenner Parker Toys ,

Inc. v. Rose Art Indus., Inc. , 963 F.2d 350, 353 (Fed. Cir. 1992).

Opposer has been using his MISS GLOBAL marks in connection with arranging an

conducting beauty pageants since 2012 and has grown his organization each year reaching a

larger audiences and presenting more elaborate events.

As a result of Opposer's longstanding use and investment in his MISS GLOBAL marks,

consumers have come to associate the marks with Opposer, which weighs in favor of a

likelihood of confusion.

F. The Other DuPont Factors Are Irrelevant Or Do Not Support Applicants' Position.

The remaining Dupont factors are irrelevant to the Board's analysis of this case. For

example, "actual confusion" has little relevance to the current case because Applicants have not

yet amended their application to allege use in commerce (See Applicant's application). Further,

with respect to actual confusion, is well-established that "it is unnecessary to show actual


. ' .

confusion in establishing a likelihood of confusion." Giant Food, Inc. v. Nation 's Foodservice,

Inc., 710 F.2d,1565, 218 USPQ 390, 396 (Fed. Cir. 1983).

Likewise, the remaining DuPont factors are also irrelevant to the Board's analysis in this

case. Because the relevant DuPont factors weigh strongly in favor of a likelihood of confusion,

the Board should refuse to register Applicant ' s MISS GLOBAL MISS GLOBAL (with logo)

mark.

VII. CONCLUSION

For these reasons, Opposer respectfully requests that the Board GRANT his motion for

summary judgment and deny registration of the MISS GLOBAL MISS GLOBAL (with logo)

mark in Applicants' pending trademark application.

Dated: December 6, 2020

Respectfully submitted,

By: /Kevin M. Welch/ Kevin M. Welch

The Law Office of Kevin M. Welch P.O. Box 494, Hermosa Beach, CA 90254 Tel.: (310) 929-0553 Fax (310) 698-1626

Attorney for Opposer VanM. Pham


. . .

CERTIFICATE OF SERVICE

I hereby certify that a true and complete copy of the forgoing OPPOSER'S MOTION

FOR SUMMARY JUDGMENT has been served upon Cathrine S. Mitros, counsel for

Applicant, World Award, LLC, via electronic mail at the following address:

[email protected]

Dated: December 6, 2020 By: /Kevin M. Welch/ Kevin M. Welch

The Law Office of Kevin M. Welch P.O. Box 494, Hermosa Beach, CA 90254 Tel.: (310) 929-0553 Fax (310) 698-1626

Attorney for Opposer VanM. Pham


CERTIFICATE OF MAILING

I tried to filed the accompanying document titled " Opposer' s Motion for Summary Judgment"

using the Electronic System for Trademark Trail and Appeals ("ESTT A") on December 6, 2020

but I was repeatedly informed that the system was experiencing technical problem and to try

again later. Eventually, I utilized an alternative method of filing, namely by first class mail with

a Certificate of Mailing.

I hereby certify that this correspondence is being deposited with the United States Post

Service with sufficient postage as First- class in an envelope addressed to:

United States Patent and Trademark Office Trademark Trail and Appeal Board P.O. Box 1451 Alexandria, Virginia 22313 -1451

On the Date Shown below:

December 6, 2020

By:

Date: December 6, 2020


opposer's motion for summary judgment

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