TTAB Test: Is ROSA VELENO for Music Production Services Confusable with VELENO for Guitars?

John M. Veleno opposed an application to register the mark ROSA VELENO for "entertainment services by a musical artist and producer, namely, musical composition for others and production of musical sound recordings," alleging a likelihood of confusion with his registered mark VELENO for guitars. Typically, the addition of a "personal name" to a surname would not avoid a likely confusion, but what about the goods and services? How do you think this came out? John M. Veleno v. Sheena S. Todd, Opposition No. 91229357 (April 6, 2018) [not precedential] (Opinion by Judge Michael B. Adlin).

Rosa Veleno
The Marks: Applicant claimed that his mark is famous, asserting that a number of famous musicians (including my favorite, Todd Rundgren) have purchased VELENO guitars, and that his guitars have been displayed at the Hard Rock Cafe in Orlando, at Boston's Museum of Fine Arts, and at Dolly Parton's Dollywood Rags to Riches Museum. The Board found that VELENO guitars are "somewhat well known, at least among guitar aficionados." However, Opposer failed to provide total sales figures or evidence of significant advertising expenditures. "The sales figures provided lack context and are underwhelming, and Opposer admits to being unable to produce guitars for long periods of time." Therefore, the sixth du Pont factor weighed only slightly in Opposer's favor.

The Board found that consumers familiar with VELENO guitars could assume that a musical artist, composer and producer named Rosa Veleno is part of the Veleno family that offers guitars under the VELENO mark. Applicant's mark could be seen as a variation of the VELENO mark or as identifying a new venture by the source of VELENO guitars. Considering the marks in their entireties, the Board concluded that the marks are more similar than dissimilar in overall commercial impression, and so this factor weighed in favor of finding a likelihood of confusion.

VELENO guitar
The Goods/Services: Opposer did not establish use of the mark VELENO for anything other than guitars: i.e., there was no evidence that Opposer had used VELENO for composing or producing music or for related services. "The fact that Opposer’s goods and Applicant’s services are both music-related in the broadest sense is not enough by itself to establish that the goods and services are related for likelihood of confusion purposes."

Here, while musical compositions may be played on guitars, and musical recordings may feature guitars, there is no evidence, argument or reason to believe that guitars would come from the same source as music composition or production services. In fact, the record contains no evidence of any relationship between manufacturing guitars, which according to Opposer’s testimony requires engineering and fabrication skills, and composing and producing music, which are artistic endeavors. Nor is there any evidence that guitars and music composition and production services travel in the same channels of trade.

The Board concluded that although the marks are more similar than dissimilar, "Opposer’s mark is not strong enough, and the marks are not close enough, to overcome the lack of any evidence of a relationship between the goods and services, or that the channels of trade overlap."

Conclusion: The Board found confusion unlikely, and it therefore dismissed the opposition.

Read comments and post your comment here.

TTABlog comment: The Board also dismissed Opposer's dilution claim. Since Opposer failed to prove fame for likelihood of confusion purposes, it perforce could not satisfy the higher standard for dilution fame.

Text Copyright John L. Welch 2018.