Crowded Field & Consumer Awareness Mitigate Likelihood of Confusion

Overview

The Board acknowledged that while the services are identical and the marks share some structural similarities, the legal standard for a likelihood of confusion was not met. The decision emphasized several key points:

• The Scope of Protection: The cited mark’s inherent weakness allows for closer proximity by competing marks without infringing on its narrow scope of protection.
• Commercial Impression: The gender modifier ("MISTER" vs. "MISS") effectively alters the overall commercial impression of the mark.
• Marketplace Reality: The specific marketplace conditions, specially, how pageants are named and marketed, significantly mitigate the potential for consumer confusion.

Ultimately, the applicant successfully argued that naming conventions in the pageant field rely heavily on modifiers to indicate the specific nature of the competition. Because these titles also refer directly to the honor bestowed upon the winner, consumers do not rely on these courtesy titles alone as source indicators.

Background

The Applicant, Connecting Forward, LLC, filed an application for the standard-character mark MISTER JUNETEENTH, seeking registration in International Class 41 for "Organizing events in the field of pageants for cultural or educational purposes; Entertainment in the nature of pageant competitions." The application included a disclaimer of the term "JUNETEENTH."

The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, citing a likelihood of confusion with three existing registrations (Registration No. 6835111, 6835110, and 7350182)owned by a single entity:

• JUNIOR MISS JUNETEENTH (Reg. No. 6835111)
• TEEN MISS JUNETEENTH (Reg. No. 6835110)
• MISS JUNETEENTH SCHOLARSHIP PAGEANTRY PROGRAM (Reg. No. 7350182)

These cited marks were registered for "Entertainment in the nature of pageant competitions" and the "organization of events for cultural purposes" within the same class.

After a final refusal, the Applicant appealed.

How the Board Analyzed the DuPont Factors

The Board focused its analysis primarily on the registered mark MISS JUNETEENTH SCHOLARSHIP PAGEANTRY PROGRAM, finding it to be the most similar to the Applicant’s mark in structure and initial wording. This focus was especially justified given that "SCHOLARSHIP PAGEANTRY PROGRAM" is highly descriptive, if not entirely generic, as applied to the identified services.

Consequently, the Board treated this mark as the determining factor for the appeal: a finding of a likelihood of confusion regarding MISS JUNETEENTH SCHOLARSHIP PAGEANTRY PROGRAM would suffice to affirm the Section 2(d) refusal. Conversely, a finding of no likelihood of confusion here would compel the same conclusion for the other two cited marks.

DuPont #2: Similarity or Dissimilarity of the Services

The Board began by comparing the identified services in both the application and the cited registrations, finding them to be "identical in substance" or otherwise overlapping. Because the Applicant did not contest this finding, the Board determined that this factor weighed heavily in favor of a likelihood of confusion.

DuPont #3: Similarity of Trade Channels and Consumer Classes

Because the services identified in the application and the cited registration were identical, the Board applied the legal presumption that the trade channels and classes of purchasers are also the same. The Board noted that neither party's identification contained restrictions regarding specific trade channels or target consumers. Consequently, it is presumed that the services travel through all customary trade channels to all potential purchasers. Because the Applicant did not dispute this point, the Board concluded that this factor also weighed in favor of finding a likelihood of confusion.

DuPont #6: Strength of the Cited Mark

Because the mark resides on the Principal Register without a Section 2(f) claim of acquired distinctiveness, it is presumed to be inherently distinctive. However, the Board looked to the record evidence to determine the true extent of its conceptual and commercial strength.

Conceptual Strength

To demonstrate the ubiquity of the term, the Applicant submitted 27 active, use-based third-party registrations from 22 different owners featuring the word "MISS" for pageant services.

The Board then analyzed the term "JUNETEENTH," noting its significance as a federal holiday commemorating the end of slavery. Evidence introduced by the Applicant showed that Juneteenth is celebrated nationwide with cultural events, including beauty pageants that frequently utilize the title "Miss Juneteenth" or close variations.

Based on this widespread use, the Board concluded that the wording "MISS JUNETEENTH" is "highly suggestive" of pageants intended for young women and centered around the holiday. Consequently, despite its registration status, the mark was found to be "conceptually very weak."

Commercial Strength

Regarding commercial strength, the Board reviewed internet evidence provided by the Applicant consisting of at least eight distinct sources. This evidence included excerpts from various third-party websites advertising beauty pageants for young women that either take place in connection with Juneteenth celebrations or feature Juneteenth-oriented themes.

The Board agreed with the Applicant that the beauty pageant industry is a "crowded field." Furthermore, the Board noted that relevant consumers have been repeatedly exposed to the widespread use of "MISS," "JUNETEENTH," and "MISS JUNETEENTH" by various unrelated parties in connection with pageant and event services.

Ultimately, the Board explicitly disagreed with the Examining Attorney's assertion that this evidence was insufficient. Instead, it concluded that the cited mark is "commercially very weak." Because the mark is both conceptually and commercially weak, the Board held that it is entitled only to a "comparatively narrower scope of protection."

DuPont #1: The Similarity or Dissimilarity of the Marks

The Board compared MISTER JUNETEENTH to MISS JUNETEENTH SCHOLARSHIP PAGEANTRY PROGRAM. Both marks are similar in appearance because they share an identical structure: a courtesy title ("MISTER" or "MISS") followed by "JUNETEENTH." The initial portions of the marks also sound similar, and the additional wording "SCHOLARSHIP PAGEANTRY PROGRAM" in the cited registration did little to distinguish the two.

However, the Board agreed with the Applicant that the use of a male gender modifier ("MISTER") creates a distinct commercial impression compared to a female modifier ("MISS"). The Board noted that in the context of pageants, courtesy titles serve a specific function, as they "identify the gender, and often the age, of the competitors." Because consumers are "conditioned to distinguish pageants on minute distinctions," the shift from "MISS" to "MISTER" was deemed legally significant.

The Board found that while the marks look and sound similar in their initial portions, they are "distinguishable in connotation and commercial impression." Consequently, this factor was found to weigh only "slightly" in favor of a likelihood of confusion.

DuPont #4: Condition of Sale and Consumer Sophistication

The Board next addressed the sophistication of purchasers, noting that because pageant services are available to the general public, the analysis would typically default to the "least sophisticated potential purchaser." However, the Board found that the unique context of the pageant industry alters this standard approach.

The Board observed that given the "ubiquity of similarly-named pageants" and their "specific, localized nature," even a member of the general public with little knowledge of pageants would be unlikely to assume that all "JUNETEENTH" pageants originate from a single source. The Board concluded that the "manner in which pageants are named and marketed would mitigate potential consumer confusion." As a result, this factor was found to weigh slightly

Board’s Decision

The TTAB reversed the refusal to register MISTER JUNETEENTH. While the Board acknowledged that the underlying services were identical and the marks shared a similar structure, it emphasized that not all DuPont factors carry equal weight.

The Board concluded that the extreme conceptual and commercial weakness of the cited marks, combined with the distinct commercial impressions created by the gender modifiers "MISS" and "MISTER," easily outweighed the structural similarities. Because consumers in the pageant field are accustomed to distinguishing competitions by these precise naming modifiers, the Board held that a likelihood of confusion did not exist.

What I found most interesting about this decision was how the Board approached the fourth DuPont factor (the conditions of sale and consumer sophistication). Normally, when services are offered to the general public, this factor becomes a wash. Because the analysis defaults to the "least sophisticated potential purchaser," I personally have not had success arguing that consumers will exercise a high degree of care.

In this case, however, the Board recognized a fascinating exception. They found that the sheer ubiquity of similarly named pageants has essentially conditioned the ordinary consumer to be more discerning. Because pageants are highly localized and rely heavily on precise naming distinctions, a typical consumer automatically looks for modifiers rather than just assuming every "Juneteenth" competition comes from the same source. Logically, this makes perfect sense.

But it raises a broader strategic question in my mind: could this same line of reasoning apply to other industries?

If an applicant can show that a marketplace is a heavily crowded field, can they use that ubiquity to argue that the everyday consumer has been "conditioned" to notice minor differences? For instance, in fields saturated with common descriptive terms, does the crowded nature of the market automatically lower the likelihood of confusion by forcing consumers to look closer?

I don't know. I'll share more if I find out!