Blue Man Productions, Inc. v. Erich Tarmann

THIS DISPOSITION IS CITABLE

AS PRECEDENT OF THE TTAB

Mailed:

August 18, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE

_____

Trademark Trial and Appeal Board

______

Blue Man Productions, Inc.

v.

Erich Tarmann

_____

Opposition No. 91154055

to application Serial No. 76295724

filed on August 6, 2001

_____

Robert W. Clarida and Antonio Borrelli of Cowan, Liebowitz &

Latman, P.C. for Blue Man Productions, Inc.

Lawrence Harbin and Amy M. Jones-Baskaran of McIntyre,

Harbin & King LLP for Erich Tarmann.

______

Before Seeherman, Bucher and Holtzman, Administrative

Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Blue Man Productions, Inc. has opposed the application

of Erich Tarmann, an Austrian citizen, to register BLUEMAN

as a trademark for “tobacco, smokers’ articles, namely

cigarettes.”1 As grounds for opposition, opposer has

1

Application Serial No. 76295724, filed August 6, 2001, and

asserting first use and first use in commerce on March 6, 2000.

Opposition No. 91154055

alleged that since prior to March 6, 2000, applicant’s

claimed date of first use, opposer has used the mark BLUE

MAN GROUP in connection with a wide variety of goods and

services, and that it owns registrations for BLUE MAN GROUP

for “gift items, namely decorative magnets; paper goods,

namely, postcards and posters; apparel, namely hats,

T-shirts, sweatshirts”;2 and for BLUE MAN GROUP, with the

word GROUP disclaimed, for “entertainment services in the

nature of live musical and theatrical performances”3 and for

“musical sound recordings”;4 that opposer owns pending

applications for BLUE MAN GROUP for mugs, watches and

ornamental pins, jackets and caps, and prerecorded videos;

that as a result of extensive promotion of goods and

services bearing its mark, opposer has built up goodwill for

its mark, and its advertising and promotional efforts have

brought the mark high recognition and visibility among

consumers; that the mark has achieved widespread fame; that

applicant’s use of BLUEMAN is likely, when applied to

applicant’s goods, to cause confusion, mistake and to

deceive; and that opposer’s mark was famous and distinctive

prior to applicant’s claimed date of first use, and that

We read the identification as being for tobacco and for smoker’s

articles, namely cigarettes.

2

Registration No. 2438222, issued March 27, 2001.

3

Registration No. 2450660, issued May 15, 2001.

4

Registration No. 2617550, issued May 10, 2002.

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Opposition No. 91154055

applicant’s BLUEMAN mark will dilute the distinctive quality

of opposer’s BLUE MAN GROUP mark.5

Applicant has denied the salient allegations of the

notice of opposition in his answer.

The Record

By operation of the rules, the record includes the

pleadings and the file of the opposed application. Opposer

has also made of record its pleaded registrations by

submitting certified status and title copies of them.

Opposer has also submitted, under notice of reliance, a

large number of printed publications/materials and tapes of

television broadcasts and other video recordings. Applicant

moved to strike these materials for various reasons, which

motion was opposed by opposer. Decision on the motion was

deferred until final hearing, and we therefore turn to it

now.

Applicant objected to some of the materials, in

particular press releases, Internet pages and videos of

television broadcasts, on the basis that they are not

printed publications that may be submitted under a notice of

reliance and/or that they are not self-authenticating. In

5

Opposer also alleged that applicant’s mark would falsely

suggest a connection between applicant’s mark and opposer.

However, it is clear from opposer’s brief, which states that the

only two grounds at issue are likelihood of confusion and

dilution, that opposer was not attempting to assert a claim under

Section 2(a) of the Act.

3

Opposition No. 91154055

its response to the motion, opposer stated, inter alia, that

“to the extent that any of these documents do not qualify on

their face as ‘printed publications,’ Opposer will show in

its rebuttal testimony period, which has yet to begin, that

such publications otherwise qualify as ‘printed

publications’ under Rule 1.222(e)[sic, should be 2.122(e)].”

During its rebuttal testimony period opposer took the

testimony of Laura Camien, its marketing director, who

testified that a service called Video Monitoring Service

provides a report listing any mentions of BLUE MAN GROUP on

television, and that opposer can obtain cassettes from this

service, or from another company, of such appearances. She

also testified that print mentions are provided to opposer

by a clipping service, which monitors both domestic and

foreign publications. She explained that some of the

clippings might bear handwritten indications of the source

of the article, and that this is done by the clipping

service. Ms. Camien also explained that two other services

keep track of mentions of BLUE MAN GROUP on the Internet,

and that if opposer itself is not able to find the actual

article on a website, it would obtain a copy from the

service and keep it with opposer’s business records.

We should mention at this point that applicant

submitted no testimony, so therefore any rebuttal testimony

by opposer would be inappropriate. Rebuttal testimony

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Opposition No. 91154055

cannot normally be used to supplement any inadequacies in

the plaintiff’s main trial testimony. However, we have a

somewhat odd situation in this case, in that applicant filed

a consented motion “to extend opposer’s rebuttal testimony

period to July 23, 2004.” This motion was signed by

applicant’s counsel on July 8, 2004, after applicant’s

testimony period had closed and at the point that opposer’s

rebuttal testimony period had already opened. Thus,

applicant was aware that he had not submitted any testimony

when he consented to an extension of opposer’s rebuttal

testimony period. We therefore deem applicant’s request for

an extension of opposer’s rebuttal testimony period to be a

consent to the inclusion in the record of the testimony

deposition, with exhibits, of Laura Camien, taken on

July 15, 2004.

Ms. Camien’s testimony does not, in general,

authenticate specific exhibits. In fact, for many of the

exhibits, opposer’s attorney stated that he was identifying

them.6 However, we find that the testimony is sufficient to

identify how opposer obtained the various clippings.

Therefore, although such materials as videocassettes and

6

See, for example, the following: Opposer’s attorney: “I

would like to show you what I marked as Opposer’s Exhibit 3, and

I’ll identify this as a one-page press clipping on Blue Man Group

letterhead, with a tag or slag with—with a bar code indicating

that it’s from Burrelle’s Information Services. Could you tell

me what Burrelle is?” p. 10. The response dealt only with

Burrelle’s, and not the particular exhibit.

5

Opposition No. 91154055

website materials would not be suitable for a notice of

reliance, because Ms. Camien’s testimony has adequately

authenticated them, we deem them to be of record.

Similarly, although some of the newspaper articles bear

notations from the clipping service as to their source and

date rather than from the actual publication, we find them

to be authenticated, as we do those clippings that have been

pasted onto opposer’s letterhead.

Applicant has raised certain other objections to the

notice of reliance. Applicant has asserted that it was

untimely. This is not correct. The notice of reliance was

timely filed with the Board on January 21, 2004, within

opposer’s testimony period which closed on January 22, 2004.

Applicant also asserts that opposer did not indicate the

relevance of the identified material, as required by

Trademark Rule 2.122(e). This is also not correct. The

notice of reliance states that “these printed publications

and broadcasts are offered to show that Opposer’s mark BLUE

MAN GROUP, used in connection with entertainment services

and related merchandise, have [sic] been the subject of

numerous articles and broadcasts in publicly circulated

media.” Although it would certainly have been more helpful

to the Board if opposer, for each article and video clip,

had specified the information it considered probative and

the reason therefor, in order to direct the Board’s

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Opposition No. 91154055

attention to that point, we find the general statement by

opposer to be a sufficient statement of the relevance of

this material.

Applicant has also objected to the material submitted

under notice of reliance on the ground of hearsay. Printed

publications or broadcast news reports would be hearsay if

they were offered to prove the truth of the statements made

therein, and to the extent that opposer seeks to rely on

them as evidence of the statements made in the articles or

broadcasts, applicant’s objection is well taken. However,

they are acceptable to show that the stories have been

circulated to the public. See Hard Rock Cafe Licensing

Corp. v. Elsea, 48 USPQ2d 1400 (TTAB 1998). Thus, we have

considered these documents and the videocassettes only for

that purpose.7

Because there are literally hundreds of documents, and

multiple excerpts of programs recorded on the various

videocassettes, we will not discuss each one here. Further,

because opposer has not separately numbered these exhibits,

we cannot easily group them by referring to them by number,

and it would make this opinion unduly long if we were to

list each of them by the name of publication (or program)

7

The video submissions showing performances by opposer are,

however, evidence of opposer’s rendering of its performing

services, and they are also evidence of television commercials in

which opposer appears or which advertise opposer’s goods or

services.

7

Opposition No. 91154055

and date. Thus, we will refer to certain exhibits as

examples of more general problems.

In addition to the hearsay problem noted above, some of

the materials have limited or no probative value. For

example, a large number of the articles submitted by opposer

are in a foreign language; not only can we not understand

the articles, but there is no indication that they (or the

English language articles that are from foreign

publications) have been circulated in the United States, and

therefore they are of no probative value in terms of showing

recognition by the relevant consuming public. Hard Rock

Cafe Licensing Corp. v. Elsea, supra. Some of the exhibits

have been submitted in duplicate. In particular, opposer

has separately submitted the covers and the articles that

appeared in the particular periodicals, so that the list of

documents in the notice of reliance is greater than the

actual number of articles in which the mark appears.

Similarly, some of the video excerpts have been submitted in

duplicate and separately listed in the notice of reliance

(for example, the appearance on “The Tonight Show” in 1997,

and the appearance on the “Grammy Awards” show). Further,

some of the covers and articles and television excerpts do

not refer to the mark BLUE MAN GROUP at all. See, for

example, the articles in “Esquire” February 1992

(performance group is referred to as “Blue Man”); “PR Week,”

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Opposition No. 91154055

March 18, 2002 (photo of performers, no mention in article

of mark BLUE MAN GROUP); the cover of “Travelocity”

March/April 2001 (only a photo of three people with blue

heads and hands); the cover of “Improper Bostonian” May 1-

14, 2002 (photo of three people with blue heads, text “How

to be a Blue Man”); and the television clip for “Las Vegas”

January 6, 2004 (costumed blue-colored characters shown

doing various things, but the mark BLUE MAN GROUP is not

mentioned).

Moreover, some of the submissions are clearly only

excerpts from larger articles, e.g., “Philadelphia City

Paper,” August 7, 2003 (portion of paragraph in article

headlined “icepack” in which appears the sentence, “They

also tackle backstage foodstuffs for DFC, like recent gigs

with Blue Man Group and Jane’s Addiction.” emphasis in

original); “Greenwich Time (Greenwich, CT),” August 3, 2003

(article headlined "This week off-Broadway" of which the

only portion submitted is a listing for “‘Blue Man Group’

They paint each other. They paint the audience. They

unroll toilet paper. Foreign tourists love this long-

running new vaudeville show. Astor Place. Ticketmaster.”).

Because these submissions do not show the reference to BLUE

MAN GROUP in context, we cannot ascertain what impact these

articles may have had on the consuming public.

9

Opposition No. 91154055

There are certain other materials submitted by opposer

that are inappropriate for a notice of reliance, and that

were not separately authenticated by opposer’s witness.

They include, for example, a letter dated January 7, 1998

from Guides Gallimard to Blue Man Group; what appears to be

an advertisement, without any indication of source, for a

performance at The Performing Garage; what appears to be a

train schedule; a theater program; and pages from something

described as “The Game & Guide That Capture The City!”

Further, we have given no probative value to those articles

or clippings which do not indicate their source or their

date. We point out that opposer was placed on notice that

there were deficiencies in its submissions under the notice

of reliance, and that Ms. Camien’s “rebuttal” testimony was

specifically designed to cure those deficiencies.

Particularly under these circumstances opposer had a clear

obligation to cure any deficiencies. As for the press

releases submitted under notice of reliance, Ms. Camien

testified that opposer generates press releases and, if a

publication on the press list is interested in a release, it

will run it. In view of this, to the extent that opposer

submitted any press releases, we have considered them only

if it is clear that they appeared in a publication.

Finally, some of the video clips which appear on the

cassettes submitted by opposer are not listed in the notice

10

Opposition No. 91154055

of reliance. Because the purpose of Ms. Camien’s “rebuttal”

testimony was essentially to cure any deficiencies in the

notice of reliance, we do not consider her general testimony

regarding opposer’s use of a video clipping service as

sufficient to make of record excerpts which were not

identified during opposer’s main testimony period. Thus,

video clips which were not listed in opposer’s notice of

reliance or in Exhibit 2 to her testimony have not been

considered. This includes a segment of what appears to be

an interview with Charlie Rose.

We grant applicant’s motion to strike to the extent

that we have not considered the materials submitted with

opposer’s notice of reliance that are not self-

authenticating (and therefore are not acceptable as printed

publications under Trademark Rule 2.122(e)), or that have

not been authenticated by opposer’s witness.

As part of his motion to strike opposer’s notice of

reliance, applicant also moved to dismiss the opposition for

failure to prosecute, based on the assumption that his

motion to strike opposer’s notice of reliance would be

granted, and his position that the pleaded registrations

submitted by opposer under notice of reliance are not

sufficient to show that opposer has a right to relief. See

Trademark Rule 2.132(b). Because the Board deferred a

decision on the motion to strike until final hearing, it

11

Opposition No. 91154055

denied the motion to dismiss on the basis that it was

premature. Applicant also moved for summary judgment; this

motion was denied as untimely, as it was filed by applicant

at the beginning of his testimony period, rather than before

trial commenced. Although opposer has, in its brief,

referred to some of the assertions made by applicant in his

motion to dismiss/motion for summary judgment, we do not

deem opposer to have stipulated to these assertions as

facts. Further, any evidence submitted with such motions is

not of record, as applicant did not submit any evidence

during trial, and mere statements made in a motion do not

constitute evidence.

Only opposer filed a brief. Neither party requested an

oral hearing.

Facts

As noted above, applicant has not properly made any

evidence of record, and we therefore do not know anything

about him or his activities. Moreover, since there is no

evidence of applicant’s use, even though his application is

based on Section 1(a) of the Trademark Act, the earliest

date on which he can rely is August 6, 2001, the filing date

of his application.

As for opposer, as we have previously stated, the

various articles or broadcast reports submitted under notice

of reliance cannot be used as evidence of the “facts” stated

12

Opposition No. 91154055

therein. Thus, many of the facts asserted by opposer in its

brief have no evidentiary support. For example, opposer

states that “the BLUE MAN GROUP mark has sold more than

seven million theater tickets in the U.S.,” brief, p. 5,

citing to an article in the “Pittsburgh Post-Gazette,” but

any statements made in this article about opposer’s sales

are hearsay. Similarly, characterizations of opposer as

“world famous,” taken from “Official City Guide,” do not

prove that opposer, or the mark BLUE MAN GROUP, is famous.8

At most, the latter characterizations can only be considered

as the author’s view (or that of the press release on which

the article was based).

It has been difficult to ascertain facts about opposer

and its activities because opposer did not submit any

narrative testimony. The testimony of Ms. Camien was very

limited, and was essentially directed to authenticating the

materials submitted with opposer’s notice of reliance.

Thus, there is no testimony about what goods or services

opposer offers under the mark BLUE MAN GROUP. Further, the

notice of reliance under which the “printed publications”

8

Opposer also asserted in its brief, as it did in its notice of

opposition, that it owns pending applications for BLUE MAN GROUP

for additional goods. However, opposer did not submit evidence

of ownership of such applications, so the statement in its brief

has no support. Submission of an application has no probative

value other than to show that the application was filed, so the

failure to make the applications of record has no effect on our

decision herein. We merely point this out as another example of

the unsupported statements made by opposer in its brief.

13

Opposition No. 91154055

were submitted does not highlight the particular evidentiary

value of each document; rather, opposer has simply presented

the Board with four expandable folders of documents and

videocassettes, and let the Board search through them for

any information that the Board might consider pertinent.

Based on the materials submitted under notice of

reliance or otherwise authenticated by Ms. Camien, we can

conclude that the term BLUE MAN GROUP has appeared in

various articles and other published and broadcast forms,

and identifies a performing group. The entertainment

services rendered by these performers are, as shown by the

video excerpts, a combination of music, movement, comedy,

audience participation, and perhaps performance art. Ms.

Camien identified a flyer in which “The Blue Man Group

invites you to be a part of a Happening Sunday, May 22,

1988” in New York’s Central Park.9 We consider this flyer

acceptable evidence of use of the mark for entertainment

services as of that date. There are also video clips

showing appearances of the BLUE MAN GROUP performers on

programs such as “A Closer Look,” and the “Tonight Show.”

These clips evidence musical/comedy entertainment services

9

Several times in its brief, which was filed in September 2004,

opposer asserts that the mark BLUE MAN GROUP has been used “over

the last twenty-five years,” and that numerous articles featuring

opposer have circulated during this time. However, opposer has

pointed to no articles or documents dated earlier than 1988, nor

have we found any in our review of the extensive group of

exhibits.

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Opposition No. 91154055

under the mark as early as 1991, and continuing through

2003. Advertisements in the video clips indicate that the

show BLUE MAN GROUP has appeared in New York and Boston.

The record also shows that there have been a large

number of references to BLUE MAN GROUP as a performing group

in both consumer and trade publications. Some of the

articles submitted by opposer feature BLUE MAN GROUP; others

simply mention the name in passing.

The evidence regarding opposer’s advertising efforts is

rather limited. Opposer has provided no figures regarding

its advertising expenditures. The only testimony about its

advertising is from Ms. Camien, and it centers on one

advertisement that appears on a large electronic billboard

in New York City’s Times Square. The advertisement consists

of some photos of the performers, followed by the name BLUE

MAN GROUP and Astor Place Theatre. The ad, which appears

three times an hour from 9 AM until 1 AM, began running in

late 2002 or the beginning of 2003, and was still running as

of the time of Ms. Camien’s testimony in July 2004.10 Ms.

Camien also testified that, in addition to this single

billboard in New York, opposer has “several billboards in

10

One frame of this ad says “New Album in Stores Now” (although

if there is any additional wording or a photo in this frame, it

is not visible in the exhibit). Thus, we cannot determine if the

advertisement is for the word mark BLUE MAN GROUP for records.

It also appears, since the frame refers to a new album, that it

was not part of the advertisement during the entire time that the

advertisement has run.

15

Opposition No. 91154055

Las Vegas, Boston, Chicago.” p. 14. In addition,

commercials showing that opposer was performing at the Astor

Place Theatre in New York and at Charles Playhouse in Boston

aired during the episode of “The Tonight Show” in which

opposer appeared in 1997. Although not specifically

advertisements for the performance services, the performers

are featured in television advertisements for Intel’s

Pentium processors.

Analysis

Standing

Opposer has submitted copies of its registrations for

BLUE MAN GROUP, and has also shown that it renders

musical/comedy entertainment services under the name BLUE

MAN GROUP. Therefore, it has established its standing.

Priority

First, we note that, because opposer has made its

pleaded registrations of record, priority is not in issue.

King Candy Company v. Eunice King’s Kitchen, Inc., 496 F.2d

1400, 182 USPQ 108 (CCPA 1974). Moreover, the evidence of

record shows that opposer advertised a performance under the

mark BLUE MAN GROUP in 1988, and performed in broadcast

television appearances as early as 1991, well before the

August 6, 2001 filing date of applicant’s application which,

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Opposition No. 91154055

as we previously stated, is the earliest date on which

applicant can rely.11

Likelihood of Confusion

With respect to the issue of likelihood of confusion,

our determination of this issue is based on an analysis of

all of the probative facts in evidence that are relevant to

the factors set forth in In re E. I. du Pont de Nemours &

Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In

re Majestic Distilling Company, Inc., 315 F.3d 1311, 65

USPQ2d 1201 (Fed. Cir. 2003).

We turn first to the factor of fame, because this

factor plays a dominant role in cases featuring a famous or

strong mark. Kenner Parker Toys Inc. v. Rose Art

Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir.

1992). Initially, we point out that, to the extent that any

fame attaches to opposer’s mark, it is in connection with

opposer’s live musical and theatrical performances. There

is literally no evidence of sales, advertising or any public

recognition of opposer’s mark in connection with magnets,

postcards, posters and clothing. As for opposer’s musical

11

There has been some discussion, in both applicant’s motion to

dismiss and in opposer’s brief, about applicant having filed a

foreign application and/or based its application on a foreign

registration under the provisions of the Madrid Protocol. There

is no evidence regarding such a filing in the record, and the

application which is the subject of this proceeding was filed

under Section 1(a) of the Trademark Act, based on use in

commerce, and not claiming any benefits or rights under the

Madrid Protocol.

17

Opposition No. 91154055

sound recordings, there is limited evidence of a couple of

television advertisements, but no evidence as to sales of

recordings, nor of advertising expenditures, nor of any

impact on or recognition by the public of the mark for such

goods.

We also point out that we are considering the fame of

the word mark BLUE MAN GROUP, not whether the distinctive

appearance of the performers is recognized or famous. Thus,

the video segment from the television show “The Simpsons”

where, in the opening sequence, cartoon characters with

hairless blue heads are sitting on a couch, but in which the

words “Blue Man Group” are not mentioned, is not evidence of

fame of the mark. Nor is a segment from the “Early Today”

show about Intel’s advertising campaign, in which the mark

is never used, but the performers are referred to throughout

as “The Blue Men.” As for the television commercials for

Intel Pentium processors, although the performers are

prominently featured, the words BLUE MAN GROUP appear in

relatively small letters in a corner of the screen for just

a few seconds; as a result, these commercials do little to

show fame of the word mark. The mark that is being

advertised is clearly PENTIUM, and it is not clear to what

extent viewers would even notice, let alone remember, the

word mark BLUE MAN GROUP in these commercials. As an

additional point, although opposer’s witness has testified

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Opposition No. 91154055

about the millions of dollars spent by Intel to buy media

time for these commercials, there is no evidence about the

number of times the commercials were shown. It appears that

one reason for the high costs for this advertising is that

Intel has chosen to run these commercials on programs,

including the Super Bowl, where air time is very expensive.

But as the Court specifically pointed out with respect to

commercials during the Super Bowl, “a 30-second spot

commercial shown during a Super Bowl football game may cost

a vast sum, but the expenditure may have little if any

impact on how the public reacts to the commercial message.”

Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63

USPQ2d 1303, 1309 (Fed. Cir. 2002).

Normally we look to the volume of sales and advertising

expenditures for the goods and services sold under the mark,

and by the length of time those indicia of commercial

awareness have been evident, in order to measure the fame of

a mark. Id. Here, opposer has provided no evidence of the

volume of its sales or of its advertising expenditures.

Although we accept that the flyer advertising a “happening”

in 1988 is evidence of opposer’s use of BLUE MAN GROUP for

performing services, opposer has provided no clear evidence

about the extent of its use of the mark, or its sales under

the mark, since that date.

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Opposition No. 91154055

What we do have are the articles, Internet materials

and television clips that refer to the BLUE MAN GROUP

performers, and to entertainment services rendered under the

mark. As previously discussed, many of these articles have

no or very little probative value. We have already said

that many of the articles made of record by opposer mention

the mark BLUE MAN GROUP only in passing. We are reminded by

the diligence of opposer’s clipping services of a statement

made by the Court of Appeals for the Federal Circuit in

another context: “It is indeed remarkable to see the

thoroughness with which NEXIS can regurgitate a placename

casually mentioned in the news.” In re Societe Generale des

Eaux Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450,

1451 (Fed. Cir. 1987). Opposer’s clipping services appear

to be equally thorough in finding all mentions of or

references to BLUE MAN GROUP, whether it be the mark or the

performers. For example, an article in the August 19, 2002

“People” magazine about Moby and David Bowie and their

summer tour mentions, in a parenthetical, “The eclectic bill

includes Blue Man Group and rapper Busta Rhymes”; a

September 6, 2002 article in “The New York Times” discussing

many programs commemorating 9/11 contains the sentence, “In

tribute to the victims of the 9/11 attacks, Blue Man Group

has created an eloquent video.”

20

Opposition No. 91154055

In addition, some of the publications appear to be of

limited circulation or are trade publications or are

directed to specific audience segments, such that they are

not likely to be seen by large numbers of the general

public. These include “The Calvin Spark, The Magazine for

Alumni and Friends of Calvin College”; “FSB Fortune Small

Business”; “Ad Age”; “DVD WORKS The Art and Science of DVD

Production”; “Brandweek”; “Picture Framing Magazine”; and

“American Cemetery.” We consider these articles to be of

extremely limited value in proving the fame of opposer’s

mark.

Quite a number of the remaining articles, many of which

are about or prominently feature the BLUE MAN GROUP

performers and their performances under the mark, are from

periodicals from Las Vegas, and are about the BLUE MAN GROUP

show in that city. The publications include specialty

entertainment magazines such as “NEON The Las Vegas Guide to

Entertainment”; “Las Vegas Weekly”; “What’s On The Las Vegas

Guide”; “Today in Las Vegas” and “Las Vegas City Life.”

There are similar groups of articles from periodicals

located in Chicago, Boston and New York and their respective

surrounding areas that discuss the BLUE MAN GROUP show being

performed in those cities. Although people living or

visiting in these cities during the time the articles ran,

and who were interested in the entertainment opportunities

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Opposition No. 91154055

available at those times, may have been exposed to the

articles, they do not show general recognition of the mark

BLUE MAN GROUP.

We acknowledge that opposer has made of record articles

from national publications as well as from newspapers

located around the country, from Pittsburgh, PA to Savannah,

Georgia to San Diego, CA. Some of these articles feature

the BLUE MAN GROUP performances, while others simply mention

the mark in passing. For example, BLUE MAN GROUP is the

subject of a cover story in the Sunday Calendar section of

the March 4, 2001 “Los Angeles Times,” and is also the

subject of articles in the November 17, 1991 “New York

Times,” the July 11, 2003 “Observer-Reporter” (Washington,

PA), the May 16, 2003 “Record” (Hackensack, NJ) and the

May 7, 2003 “Cherokeean/Herald” (Rusk, TX). On the other

hand, there is a food recipe article in the September 16,

2001 issue of the “The New York Times” about the color blue

as it relates to food in which the group is pictured, but

there is only a brief reference to the mark.

Evidence of national magazines that feature the

performers or performance services is rather limited. For

example, there is an article in the July 24, 2000 “Time”

magazine about BLUE MAN GROUP playing at a theater in Las

Vegas. Mere mentions include the April-May 2002 issue of

“Bride’s Magazine” which, in an article on honeymoons in Las

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Opposition No. 91154055

Vegas, includes the sentence, “Elvis impersonators are

competing for arena space with cutting-edge acts like Blue

Man Group, while all-you-can-eat buffets vie with a cadre of

celebrity chefs for visitors’ palates.” There are also some

articles in national magazines from the early 1990s, e.g., a

“Vanity Fair” two-paragraph article, with photo, in April

1991; a July 20, 1992 travel section article in “Business

Week,” discussing dining and show options in New York which

includes a photo of the performers and a mention of the BLUE

MAN GROUP show; and an article in the January 20, 1992 issue

of “Time” magazine about the group and their performances.

The BLUE MAN GROUP entertainment services have received

exposure through television appearances or mentions on

television programs. Many of the video clips that opposer

has submitted are of local news broadcasts, including

segments about INTEL, its financial position and its new

advertising campaign. Although the BLUE MAN GROUP

performers are shown in these broadcasts, the mark itself is

mentioned only briefly. There have also been some

nationally broadcast programs. Some, again, contain only

mere mentions of the mark, for example, an appearance by the

performers on the Sunday “Today” show of December 22, 2002,

where they are seen very briefly standing outside the studio

handing out toys to the gathered audience, and during which

the mark BLUE MAN GROUP is mentioned only once. However,

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Opposition No. 91154055

some of the national television appearances are more

significant. These include opposer’s appearances at the

2001 Grammy Awards show, on the “Drew Carey Show” and on

“The Tonight Show.” Opposer performed at the Grammy Awards

show with Jill Scott and Moby. Various local newscasts

about the show stated that BLUE MAN GROUP had been nominated

for an award in the Best Pop Album Instrumental Category,

although according to the newscasts opposer did not win. On

a live telecast of the “Drew Carey Show” which aired on

November 29, 2001, the performers, dressed in their

characters as BLUE MAN GROUP, played featured roles, and the

mark and their theater performances were mentioned as part

of the story. Opposer also appeared on “The Tonight Show”

eleven times between 1992 and 2003 (twice in 1992, once each

in 1993, 1994, 1997, 1999 and 2000, and four times in 2003),

where it gave its musical/comedic/theatrical performances

under the mark BLUE MAN GROUP.

Thus, there are a number of articles that show opposer

and its performances under the mark BLUE MAN GROUP have

received publicity, particularly in the cities where opposer

has performed. The performances and the mark have also

received some national exposure, particularly through the

group’s appearances on such programs as the “Tonight Show”

and the “Grammy Award” show, as well as exposure in various

cities throughout the country through articles that have

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Opposition No. 91154055

appeared in different newspapers and mentions on local

television news broadcasts.

While opposer has certainly submitted a large number of

articles and other materials, when unacceptable material,

duplicative material, and material with no real probative

value is removed, the amount of evidence showing recognition

of opposer’s mark is far less than the eleven-page listing

in opposer’s notice of reliance would lead one to expect.

From the probative evidence, we conclude that BLUE MAN GROUP

has achieved a degree of recognition as a mark for

entertainment services, such that the mark would be viewed

as a strong and distinctive mark, and not be considered only

as highly suggestive of performance services rendered by a

group of men who are colored blue.

However, we cannot find on this record that consumers

have been so exposed to the mark BLUE MAN GROUP, or that

they are so aware of it, that it can be considered a famous

mark. Certainly the evidence of fame in this record is much

less compelling than that compiled in other cases where

marks have been found to be famous. See Bose Corp. v. QSC

Audio Products Inc., supra, and examples given therein. In

this respect, the situation is similar to that in Hard Rock

Cafe Licensing Corp. v. Elsea, supra at 1409, in which the

opposer also submitted only printed publications in its

attempt to prove the fame of its mark, and in which the

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Opposition No. 91154055

Board stated that “opposer failed to properly introduce any

specific evidence regarding the nature and extent of its

promotion of its mark in connection with its products and

services, U.S. sales figures, advertising and other

promotional expenditures or evidence regarding the

reputation of opposer's mark to the relevant purchasing

group.”

The Court confirmed, in Packard Press Inc. v. Hewlett-

Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1356 (Fed. Cir.

2000), the importance of evidence such as sales figures and

promotional expenditures in terms of proving the fame of a

mark:

We hold that the Board correctly

declined to consider the fame factor.

Our caselaw has consistently stated that

the conclusion that a mark is famous is

based on several important factual

findings. See DuPont, 476 F.2d at 1361,

177 USPQ at 567 (indicating that the

sales, advertising, and length of use of

the mark are to be considered when

evaluating the fame of the mark); Recot,

214 F.3d at 1326, 54 USPQ at 1896

(describing relevant evidence of record

supporting conclusion that the FRITO-LAY

mark is famous). That the fame factor

is based on underlying factfinding

dictates that relevant evidence must be

submitted in support of a request for

treatment under the fame factor. This

responsibility to create a factual

record is heightened under the more

deferential standard that this court

must apply when reviewing PTO

factfinding. See Zurko, 527 U.S. at

165, 50 USPQ2d at 1937; Gartside, 203

F.3d at 1315, 53 USPQ2d at 1775. This

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Opposition No. 91154055

is because judicial review under the

substantial evidence standard, see

Gartside, 203 F.3d at 1314, can only

take place when the agency explains its

decisions with precision, including the

underlying factfindings and the agency's

rationale. This necessarily requires

that facts be submitted to the agency to

create the record on which the agency

bases its decision. Because HP did not

proffer such evidence in support of its

argument that its marks are famous, the

Board properly declined to address this

issue.

In view of the extreme deference that is accorded to a

famous mark in terms of the wide latitude of legal

protection it receives, and the dominant role fame plays in

the likelihood of confusion analysis, we think that it is

the duty of a plaintiff asserting that its mark is famous to

clearly prove it. Although opposer has shown that its mark

has achieved some recognition for musical/comedy/theatrical

performance services, the evidence of record is insufficient

to support a finding that the mark is famous. Thus, we find

that the factor of the strength of the mark favors opposer,

but not to the extent that it would if the mark were truly

famous.

Even if opposer had proved that its mark is famous for

entertainment services, the factor of fame alone is not

sufficient to establish likelihood of confusion. If that

were the case, having a famous mark would entitle the owner

to a right in gross, and that is against the principles of

trademark law. See University of Notre Dame du Lac v. J. C.

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Opposition No. 91154055

Gourmet Food Imports Co., Inc., 703 F.2d 1372, 217 USPQ 505,

507 (Fed. Cir. 1983):

The fame of the [plaintiff’s] name is

insufficient in itself to establish

likelihood of confusion under § 2(d).

"Likely * * * to cause confusion" means

more than the likelihood that the public

will recall a famous mark on seeing the

same mark used by another. It must also

be established that there is a

reasonable basis for the public to

attribute the particular product or

service of another to the source of the

goods or services associated with the

famous mark. To hold otherwise would

result in recognizing a right in gross,

which is contrary to principles of

trademark law and to concepts embodied

in 15 USC § 1052(d).

See also Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d

1894, 1898 (Fed. Cir. 2000) (“fame alone cannot overwhelm

the other du Pont factors as a matter of law”).

In this case, we find that the differences in the

goods, as well as the different commercial impressions

engendered by the marks, are significant countervailing

factors. See Burns Philp Food Inc. v. Modern Products Inc.,

24 USPQ2d 1157 (TTAB 1992), aff’d unpub op. 1 F.3d 1252, 28

USPQ2d 1687 (Fed. Cir. 1993).

Turning to the goods and services, there are clear and

significant differences between applicant’s goods, tobacco

and cigarettes, and the various goods and services

identified in opposer’s registrations, i.e., musical

recordings, magnets, postcards, posters, hats, T-shirts,

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Opposition No. 91154055

sweatshirts, and musical and theatrical performances. In

particular, there are significant differences between

applicant’s goods and the entertainment services for which

opposer contends that its mark is famous. Opposer has

asserted in its brief that cigarettes and opposer’s goods

and services are complementary, but has submitted no

evidence in support of such a statement. Opposer states

that it features cigarette lighters as the focus of a

segment in its current production, but again, there is no

evidence of this in the record. (As we stated previously,

articles may not be used to prove the truth of the matters

asserted therein, as that would constitute reliance on

hearsay.) Nor has opposer submitted evidence of what it

characterizes as an “unusual ‘empire’ or ‘franchise’ of

products and services with which [opposer] has been

associated.” Brief, p. 16. The fact that opposer’s

performers are seen in Intel commercials does not create an

“empire” or “franchise”; it does not even make opposer a

franchisor of its mark for Intel’s computer chips. And the

fact that opposer has registered its mark for magnets, post

cards, posters and clothing items does not demonstrate that

consumers are likely to believe that opposer sponsors or has

licensed the use of its mark for cigarettes or tobacco. The

present situation is different from that in McDonald’s Corp.

v. McClain, 37 USPQ2d 1274 (TTAB 1995), cited by opposer, in

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Opposition No. 91154055

which the Board found that, in view of the fact that

McDonald’s used and licensed its marks on a wide variety of

goods and services, consumers were likely to believe that

McDonald’s was connected with applicant’s legal services.

Here, on the other hand, opposer has not shown that it has a

history of licensing, or that it has done any licensing at

all. Nor has opposer even shown that cigarettes or tobacco

are products for which owners of merchandising marks would

license their marks.

We recognize that, when a mark is famous, the degree of

relatedness of the goods need not be as great. We also

recognize that, even if the goods in question are different

from, and thus not related to, one another in kind, the same

goods can be related in the mind of the consuming public as

to the origin of the goods. See Recot Inc. v. M.C. Becton,

214 F.3d at 1329, 54 USPQ2d at 1898. However, there must be

something more than just a similarity of marks to show this

relatedness or, again, the owner of a famous mark would have

a right in gross. Therefore, even if opposer had been able

to establish that its mark is famous, opposer has simply

failed to show any relatedness as to origin of cigarettes or

tobacco and opposer’s performing services or its other

goods. Because there is no evidence that opposer licenses

its marks at all, or that other companies license, for use

on cigarettes and tobacco, marks that are used for

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Opposition No. 91154055

entertainment services and on such goods as posters,

clothing, magnets and sound recordings, opposer has not

proven that cigarettes or tobacco would be related to its

goods and services in the mind of the consuming public.

Thus, the factor regarding the similarity or dissimilarity

of the goods favors applicant.

This brings us to a consideration of the marks. We

agree with opposer that the marks are very similar in

appearance and pronunciation, differing essentially only in

that opposer’s mark has the additional word GROUP, and

depicts BLUE MAN as two words rather than one. In terms of

meaning, opposer’s live musical and theatrical performances

feature three men whose heads and hands (the only parts of

their bodies that show) are a shade of bright blue. When

opposer’s mark is viewed in connection with these services,

the mark obviously refers to these performers, and the fact

that each person in this group is a “blue man.” As for the

musical recordings, the commercials and advertisements for

these recordings prominently feature the blue-headed

performers, such that, with respect to the recordings, too,

the mark BLUE MAN GROUP has the connotation of the

appearance of the performers. On the other hand,

applicant’s mark has no such connotation for cigarettes or

tobacco. Thus, the marks differ in their connotations and

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Opposition No. 91154055

commercial impressions.12 We consider these differences in

the connotations and the commercial impressions of the marks

to outweigh the visual and phonetic similarity. As a

result, this factor favors applicant.

Opposer asserts that the parties’ goods and services

travel through the same channels of trade but, again, has

submitted no evidence to support this claim. We agree with

opposer that there are no restrictions as to the channels of

trade for the goods and services identified in opposer’s

registrations and applicant’s application, and that they

must be assumed to travel in all of the normal channels of

trade for such goods and services. However, it is not

apparent to us from merely viewing the identifications that

the normal channels of trade for the sale of cigarettes or

tobacco are the same as the channels of trade for live

musical and theatrical performances, or for magnets,

posters, postcards and clothing. Opposer also states that

“the Board can take notice that many of the national

publications which prominently featured articles about

Opposer … also run advertisements for cigarettes and other

12

As for opposer’s identified goods, with the exception of the

musical recordings, there is no evidence in the record as to how

the goods appear, so the mark BLUE MAN GROUP may not have the

same connotation as it does for the entertainment services and

recordings when it is used for these other goods. However, even

if the parties’ marks had the same connotation, because there is

no evidence whatsoever that opposer has achieved any recognition

for its mark for these other goods, the differences in the goods

themselves is sufficient to avoid any likelihood of confusion.

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Opposition No. 91154055

tobacco products.” Brief, p. 22. However, we have found no

such advertisements in opposer’s submissions, and we decline

to take judicial notice as to whether specific magazines or

newspapers carry cigarette ads. In any event, the fact that

a cigarette ad may appear on one page of a magazine or

newspaper, far removed from any article referencing

opposer’s mark and services, is not sufficient to

demonstrate that readers/consumers would be exposed to both

the goods and services under circumstances that would give

rise to the mistaken belief that they originate from the

same producer. See International Telephone & Telegraph

Corp., 197 USOQ 910, 911 (TTAB 1986). The factor of the

channels of trade favors applicant.

Opposer has not discussed any of the other du Pont

factors, so we will not burden this opinion with an

exhaustive discussion of them. Briefly, there is no

evidence of third-party use of similar marks, so this factor

favors opposer. There is also no evidence of actual

confusion, but because we have no information regarding the

nature or extent of applicant’s use, we consider this

factor, and the related factor of use without evidence of

confusion, to be neutral. The class of consumers for the

parties’ goods and services must be considered, in part, to

be the same, in that both may be marketed to and purchased

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Opposition No. 91154055

by adult members of the general public. This factor favors

opposer.

Opposer has also asserted that “where there is evidence

of an applicant’s intent to adopt a mark to benefit from the

goodwill of an already successful mark, this factor weighs

toward a likelihood of confusion.” Brief, p. 18. However,

opposer has not submitted any evidence that this was

applicant’s intent in adopting its mark. We cannot infer a

bad intent merely from the fact of applicant’s adoption of a

mark with some similarity to opposer’s mark.

Opposer is correct that any doubt as to whether

confusion is likely must be resolved against the newcomer.

However, the burden still rests with the opposer to prove

its case. Based on the record herein, and considering all

the du Pont factors on which there is evidence, we find that

opposer has failed to establish that applicant’s use of

BLUEMAN for cigarettes or tobacco is likely to cause

confusion with opposer’s mark BLUE MAN GROUP for its

identified goods and services. We have no doubt on this

issue, and thus the presumption for resolving doubt does not

come into play.

Dilution

The second ground asserted by opposer is that of

dilution. Section 43(c)(1) of the Trademark Act, 15 U.S.C.

§ 1145, provides that “The owner of a famous mark shall be

34

Opposition No. 91154055

entitled, subject to the principles of equity and upon such

terms as the court deems reasonable, to an injunction

against another person’s commercial use in commerce of a

mark or trade name, if such use begins after the mark has

become famous and causes dilution of the distinctive quality

of the mark, and to obtain such other relief as is provided

in this subsection.” This ground is made available for

opposition proceedings by Section 13(a) of the Act, 15

U.S.C. § 1063(a). As set out in the Act itself, and as

interpreted by case law, one of the factors to be considered

in determining whether dilution has been proven is whether

the opposer’s mark is famous. See Toro Co. v. ToroHead

Inc., 61 USPQ2d 1164 (TTAB 2001).

The operative date by which opposer must prove its mark

became famous is August 6, 2001, which is the filing date of

applicant’s application. In Toro Co. v. ToroHead Inc.,

supra at 1174, the Board held that in the case of an intent-

to-use application, an owner of an allegedly famous mark

must establish that its mark had become famous prior to the

filing date of the trademark application or registration

against which it files an opposition or cancellation

proceeding. In the present case, we note that applicant’s

application is based on use (Section 1(a) of the Act),

rather than on an intention to use the mark, as was the

situation in the TORO case. However, because applicant has

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Opposition No. 91154055

not submitted any evidence of his use, it is consistent with

the analysis set out in TORO, as well as case law involving

a determination of priority, to treat the filing date of

applicant’s application as the date of his first use and/or

constructive use of the mark. See Levi Strauss & Co. v. R.

Josephs Sportswear Inc., 36 USPQ2d 1328 (TTAB 1994) and

cases cited therein. Accordingly, in our determination of

whether opposer has proven dilution, much of the evidence

submitted by opposer can be given no consideration because

it consists of printed materials dated after August 6, 2001,

and copies of television broadcasts which aired after that

date.

Fame for likelihood of confusion purposes and fame for

dilution purposes are distinct concepts. Palm Bay Imports

Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396

F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). A mark may have

acquired sufficient public recognition and renown to

demonstrate that it is a strong mark for likelihood of

confusion purposes without meeting the stringent

requirements to establish that it is a famous mark for

dilution purposes. Toro Co. v. ToroHead Inc., supra at

1170.

We have already found that opposer has failed to prove

that BLUE MAN GROUP is a famous mark in our likelihood of

confusion analysis. Therefore, given the stricter standard

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Opposition No. 91154055

required to prove fame in order to obtain protection under

the dilution statute, and given that all articles and

television broadcasts and other evidence dated after

August 6, 2001 cannot be considered as evidence of fame, it

is clear that opposer has not proven that BLUE MAN GROUP is

famous for dilution purposes.

Accordingly, we find that opposer has failed to

establish its claim of dilution.

Decision: The opposition is dismissed on both the

ground of likelihood of confusion and the ground of

dilution.

37