NBCUniversal Media, LLC

OCR transcription for search; preserved printed pages are authoritative

This Opinion is Not a
Precedent of the TTAB

Mailed: March 24, 2026

UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

In re NBCUniversal Media, LLC

Serial No. 97831933

Timothy D. Hance of NBCUniversal Media, LLC, and Rick D. McMurtry of M C
Law Group, for NBCUniversal Media, LLC.

Elaine Xu, Trademark Examining Attorney, Law Office 128,
Travis Wheatley, Managing Attorney.

Before Dunn, Thurmon, and Elgin,
Administrative Trademark Judges.

Opinion by Dunn, Administrative Trademark Judge:

NBCUniversal Media, LLC (Applicant) seeks registration on the Principal

Register of the mark DUNDER MIFFLIN (in standard characters) for (inter alia): 2

1 Attorney Hance filed Applicant’s appeal brief and Attorney McMurtry filed the reply brief.

2 Application Serial No. 97831933 was filed March 9, 2023 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide
intention to use the mark in commerce. The application also includes the following goods in
Class 16 which are not subject to the refusal:

Printed Books and magazines in the fields of entertainment; printed children's
activity books; printed storybooks; printed comic books; printed graphic novels;
printed coloring books; book marks; loose leaf binders; stationery-type portfolios;
scrapbook albums; sketchbook albums; sticker albums; stamp pads; inking pads;
rubber stamps; temporary tattoo transfers; slateboards for writing; pen cases and

Serial No 97831933
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Paper party decorations; paper party supplies, namely, paper napkins, paper
place mats, gift wrapping paper and paper gift wrapping ribbons, paper gift
wrap bows, paper table cloths and paper party bags; wire-bound notebooks;
paper note pads; writing pads; blank journals for writing; printed diaries;
printed daily planners; printed calendars; photograph albums; stickers, decals;
pencils; pens; pencil erasers; decorative pencil-top ornaments; printed posters;
printed postcards; printed greeting cards; stationery packs consisting of
writing paper, envelopes, markers, and stencils, in International Class 16.
The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied
to the goods identified in the application, so resembles the mark MIFFLIN for the
goods listed below on the Principal Register as to be likely to cause confusion, to cause
mistake, or to deceive.3
Paper labels and tags, in International Class 16;
Luggage tags, in International Class 18;
Replacement plastic sheets specially adapted for picture frames, in
International Class 20;
Plastic ornamental bows for decoration and gift wrapping, in International
Class 26.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed.
We reverse the refusal to register.
pencil cases; pen boxes and pencil boxes; pencil sharpeners; chalk; markers; printed
trading cards, other than for games; pennants made of paper; painting sets, other than
for artists being a type of arts and craft paint kit; arts and crafts paint kits; study kits,
consisting of pencil erasers, drawing rulers, pencil sharpeners and pencil case; activity
kits consisting of stickers and rubber stamps.
3 Registration No. 6106662, issued July 21, 2020, Sec. 8 and 15 accepted.

Serial No 97831933
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I. Evidentiary Matter
The Examining Attorney objects to consideration of third-party registrations
(Exhibit A) that Applicant attached to its appeal brief.4 Trademark Rule 2.142(d)
provides that “[t]he record in the application should be complete prior to the filing of
the appeal. Evidence should not be filed with the Board after the filing of a notice of
appeal.” 37 C.F.R. § 2.142(d); In re Inn at St. John’s, LLC, No. 87075988, 2018 TTAB
LEXIS 170, at *4 (“The evidence submitted with Applicant’s appeal brief that
Applicant did not previously submit during prosecution ... is untimely and will not be
considered.”), aff’d mem., 777 F. App’x 516 (Fed. Cir. 2019). We give the third-party
registrations no consideration.
Applicant’s brief also was accompanied by Exhibits B-F. The Examining Attorney
made no objection to these exhibits. Exhibits B, C, D, and E were submitted during
examination. As duplicates, they do not warrant separate consideration. Exhibit F
comprises excerpts from Registrant’s website. Because the Examining Attorney did
not object to these excerpted pages and discussed them in her brief,5 we have
considered them. In re Chestek PLLC, No. 88938938, 2022 TTAB LEXIS 100, at *6
n.14 (“[E]vidence submitted after an appeal may be considered by the Board when
there is no objection to the evidence and it is either discussed or otherwise
affirmatively treated as being of record by the nonoffering party.”), aff’d, 92 F.4th
1105 (Fed. Cir. 2024).
4 9 TTABVUE 8.
5 9 TTABVUE 13.

Serial No 97831933
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II. Likelihood of Confusion
Section 2(d) of the Trademark Act prohibits the registration of a mark that
“[c]onsists of or comprises a mark which so resembles a mark registered in the Patent
and Trademark Office … as to be likely, when used on or in connection with the goods
of the applicant, to cause confusion, or to cause mistake, or to deceive ….”15 U.S.C.
§ 1052(d). Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E.I. Du Pont
de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (DuPont). We consider each
DuPont factor for which there is evidence and argument. In re Guild Mortg. Co., 912
F.3d 1376, 1379 (Fed. Cir. 2019). Varying weights may be assigned to each DuPont
factor depending on the evidence presented. See Citigroup Inc. v. Cap. City Bank Grp.,
Inc., 637 F.3d 1344, 1356 (Fed. Cir. 2011).
In every Section 2(d) case, two key factors are the similarity or dissimilarity of the
marks and the goods or services. See In re i.am.symbolic, llc, 866 F.3d 1315, 1322
(Fed. Cir. 2017). These two factors are addressed in this decision.
A. Similarity or Dissimilarity and Nature of the Goods; Similarity
or Dissimilarity of Established and Likely-to-Continue Channels
of Trade and Classes of Purchasers
We turn first to the second DuPont factor, “[t]he similarity or dissimilarity and
nature of the goods or services as described in an application or registration.” In re
Detroit Athletic Co., 903 F.3d 1297, 1307 (Fed. Cir. 2018) (quoting DuPont, 476 F.2d
at 1361). Our analysis under this factor is based on the identifications of goods in the

Serial No 97831933
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application and the cited registration. Id.6 It is sufficient for finding a likelihood of
confusion if relatedness is established for any item encompassed by the identification
of goods within a particular class in the application. Tuxedo Monopoly, Inc. v. Gen.
Mills Fun Grp., 648 F.2d 1335, 1336 (CCPA 1981).
For convenience, we restate that the goods identified in the application subject to
the refusal are:
Paper party decorations; paper party supplies, namely, paper napkins, paper
place mats, gift wrapping paper and paper gift wrapping ribbons, paper gift
wrap bows, paper table cloths and paper party bags; wire-bound notebooks;
paper note pads; writing pads; blank journals for writing; printed diaries;
printed daily planners; printed calendars; photograph albums; stickers, decals;
pencils; pens; pencil erasers; decorative pencil-top ornaments; printed posters;
printed postcards; printed greeting cards; stationery packs consisting of
writing paper, envelopes, markers, and stencils.
The goods identified in the cited registration include: Paper labels and tags, and
Plastic ornamental bows for decoration and gift wrapping.
We find a close inherent relationship between Applicant’s “paper gift wrap bows”
and the registered “plastic ornamental bows for decoration and gift wrapping.” That
is, the goods are the same item (bows) used for the same purpose (gift wrap), and only
differ in their material composition (paper v. plastic). The application and
registration themselves may provide evidence of the relationship between the goods.
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267 (Fed. Cir. 2002).
6 As a result, we need not address Applicant’s argument and evidence (6 TTABVUE 14) that
the goods in actual use are more specialized than the goods listed in the registration. Octocom
Sys., Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 942 (Fed. Cir. 1990) (“The authority is
legion that the question of registrability of an applicant's mark must be decided on the basis
of the identification of goods set forth in the application regardless of what the record may
reveal as to the particular nature of an applicant's goods, the particular channels of trade or
the class of purchasers to which sales of the goods are directed.”).

Serial No 97831933
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In addition, we find a relationship based on the complementary uses of the
registered goods “plastic ornamental bows for decoration and gift wrapping” and
Applicant’s goods “gift wrapping paper and paper gift wrapping ribbons.” Goods
which are “used in combination” are complementary, and “complementary use has
long been recognized as a relevant consideration in determining a likelihood of
confusion.” In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1567 (Fed. Cir.
1984). “Merely because goods can be used together is not a sufficient basis on which
to find them to be complementary. Rather, there must be some showing that
customers would seek out both types of goods for the same purpose, for example,
making an outfit by matching shoes and clothing, or making a sandwich by combining
bread and cheese, to show that the goods are complementary.” N. Face Apparel Corp.
v. Sanyang Indus. Co., No. 91187593, 2015 TTAB LEXIS 328, at *46 (internal citation
omitted). Here, the bows, ribbons and paper are all used to wrap gifts, and so we find
the goods to be not just complementary, but intrinsically related.
Finally, the record includes webpage excerpts demonstrating that the “paper
labels and tags” and “plastic ornamental bows for decoration and gift wrapping” listed
in the cited registration, and the gift wrapping paper, paper gift wrapping ribbons,
printed greeting cards, paper party supplies, listed in the application are available
under the same mark from the same specialty online retail sources (Hallmark, Paper
Source, Papyrus, American Greetings, Rifle Paper Co., Sugar Paper, Gartner Studios,
Caspari, Anchor Point Paper Co., Favorite Story Paperie, Oblation Papers & Press,

Serial No 97831933
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Shelworks Stationery, Karen Adams, Hester & Cook,).7 We find that this evidence
shows that Applicant’s goods are related to Registrant’s goods because consumers
may encounter the same entity offering both under the same mark. See Hewlett-
Packard Co. 281 F.3d at 1267 (evidence that “a single company sells the goods and
services of both parties, if presented, is relevant to a relatedness analysis”).
Accordingly, the similarity and nature of the goods weighs in favor of a finding of
likelihood of confusion.
B. Similarity or Dissimilarity of the Marks
We next turn to the first DuPont factor, which assesses the similarity or
dissimilarity of Applicant’s and Registrant’s marks. DuPont, 476 F.2d at 1361. We
analyze the marks in their entireties, considering their appearance, sound, meaning
and commercial impression. Id.; see also Detroit Athletic, 903 F.3d at 1303. The test
is not whether the marks can be distinguished in a side-by-side comparison, but
rather whether the marks are sufficiently similar in terms of their overall commercial
impression that confusion as to the source of the goods offered under the respective
marks is likely to result. Midwestern Pet Foods, Inc. v. Societe des Produits Nestle
S.A., 685 F.3d 1046, 1053 (Fed. Cir. 2012). “The commercial impression of a
trademark is derived from it as a whole, not from its elements separated and
considered in detail.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1340
(Fed. Cir. 2015) (citation omitted).
7 December 8, 2023 Office Action TSDR 21, 23, 27, 41, 42, 43, 45; August 7, 2024 Office
Action TSDR 12-272.

Serial No 97831933
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As stated, the registered mark is MIFFLIN, and Applicant seeks to register the
mark DUNDER MIFFLIN. The record indicates that the term MIFFLIN is a
surname, a Pennsylvania county named for Pennsylvania’s first governor, a township
in Ohio, and a street in Madison, Wisconsin.8 There is no assertion or evidence that
the term has any descriptive significance as applied to the registered goods or
Applicant’s goods.
We disagree with the Examining Attorney’s unsupported assertion that MIFFLIN
is the dominant part of the DUNDER MIFFLIN mark. In support, the Examining
Attorney asserts: 9
MIFFLIN could be seen as a shortened version or reference to DUNDER
MIFFLIN. For example, DUNDER could be considered suggestive of
dunderhead, which refers to an idiot in colloquial terms and thus act as a
modifier to MIFFLIN, evoking humorous buffoonery.
There is no assertion or evidence that the term DUNDER is a dictionary term, or
has any descriptive significance as applied to the registered goods or Applicant’s
goods. There is no evidence that DUNDER has any meaning, making it a fanciful
term. See Nautilus Grp., Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330, 1340 (Fed.
Cir. 2004) (defining a fanciful mark as “a non-dictionary word concocted by the
trademark holder for its product” and observing that such marks are typically
strong). We find the assertion regarding consumer perception of DUNDER to be
entirely speculative. The record provides no reason to find that the term DUNDER
8 February 7, 2025 Response TSDR 17-31.
9 9 TTABVUE 5.

Serial No 97831933
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would be perceived as a form of “dunderhead,” or that the term DUNDER would be
perceived as a modifier of MIFFLIN.
Based on its fanciful nature and first position in the mark, we find the term
DUNDER is slightly dominant in creating the commercial impression of Applicant’s
DUNDER MIFFLIN mark. See Detroit Athletic, 903 F.3d at 1303 (“The identity of the
marks’ initial two words is particularly significant because consumers typically notice
those words first.”); Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 1372 (Fed. Cir. 2005) (“To be sure, CLICQUOT is an
important term in the mark, but VEUVE nevertheless remains a ‘prominent feature’
as the first word in the mark and the first word to appear on the label.”). In fact, we
find that the mark DUNDER MIFFLIN creates a different commercial impression
than the one created by the mark MIFFLIN alone.
As corroboration, we address the record evidence in the form of Google search
results for “DUNDER MIFFLIN.” These results uniformly refer to the fictional paper
supply company which is the setting for the television show “The Office,” including
excerpts from the website for the fictional company, a Wikipedia entry, a LinkedIn
account, a Reddit thread, a podcast, the “Dunderpedia – the Office Wiki,” and Dunder
Mifflin merchandise such as books about the show, mousepads, stickers, building
toys, lanyards, and t-shirts and sweatshirts.10 The record also includes an article from
the entertainment publication Variety on the show’s popularity: 11
10 February 7, 2025 Response TSDR 33-37.
11 June 10, 2024 Response TSDR 22-23.

Serial No 97831933
- 10 -
“The Office” Was by Far the Most-Streamed TV show in 2020, Nielsen Says
(January 12, 2021)
Amid the acceleration of the streaming wars in 2020, one thing was clear: “The
Office” stood head and shoulders above every other TV show available on major
subscription-video platforms. Last year, Americans cumulatively streamed
more than 57 billion minutes of “The Office,” the comedy favorite that
originally aired for nine seasons on NBC, on Netflix, according to figures
released Tuesday by Nielsen.
…
The more than 57 billion minutes of the “The Office” spanned 192 episodes.
In addition, the record includes website photographs of merchandise (from
Amazon, Peacock Shop, Etsy, Spencer’s) bearing the DUNDER MIFFLIN mark which
associate the mark with the show:
12
12 Id. at TSDR 40.

Serial No 97831933

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18 Td. at TSDR 35-36.
M4 Td. at TSDR 51.
15 Id. at TSDR 65.

-1l1-

Serial No 97831933
- 12 -
The Examining Attorney contends that this argument argues the comparative
fame of the two marks, and “the purported lack of fame of the cited mark is not
significant” in an ex parte appeal.16 While we agree with the general principle, it is
inapplicable here. As set forth above, determining the connotation and overall
commercial impression created by the two marks is part of the likelihood of confusion
analysis. We find the evidence of how the purchasing public encounters Applicant’s
DUNDER MIFFLIN mark to be directly relevant to our assessment of the term’s
connotation and commercial impression. That the same type of evidence may be
considered in connection with fame does not bar its consideration here.
We also disagree with the Examining Attorney’s argument that “[A]pplicant has
not established the relevant consumer of the applied-for goods would readily
recognize the reference of DUNDER MIFFLIN to a fictional paper company
associated with The Office.”17 The paper labels and tags and paper gift wrap involved
here are paper products available to the general consumer. The Office was a television
show about a paper company, and originally available to the general consumer on a
television network, and, as demonstrated by the article in Variety, subsequently
viewed by many more consumers via streaming services.
In sum, despite the similarities in appearance and sound based on the common
term MIFFLIN, we find the connotation and commercial impression of the marks
16 9 TTABVUE 6.
17 9 TTABVUE 7.

Serial No 97831933
- 13 -
MIFFLIN and DUNDER MIFFLIN are not similar. There is no record support for
finding that MIFFLIN is an abbreviated form of DUNDER MIFFLIN or that
DUNDER MIFFLIN is a humorous reference to MIFFLIN. We find that the fanciful
prefatory term DUNDER alters the overall commercial impression created by the
term MIFFLIN alone. In addition, we find significant evidence that the connotation
of the term DUNDER MIFFLIN to the general consumer of Applicant’s goods is a
reference to the setting for the television show “The Office.” See Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797
F.3d 1363, 1372 (Fed. Cir. 2015) (“We agree with Jack Wolfskin that the Board failed
to adequately account for the presence of the literal, KELME component of the New
Millennium mark … and found that the two paw print designs were substantially
similar.”). Cf. Detroit Athletic, 903 F.3d at 1304 (“[W]hile it is true that the words ‘Co.’
and ‘Club’ technically differentiate the marks, those words do little to alleviate the
confusion that is likely to ensue. Both words are descriptive insofar as they merely
describe the business form of the entity that owns the marks [and] … Those words
are therefore unlikely to change the overall commercial impression engendered by
the marks.”).
C. Balancing the Factors
We have considered all of the arguments and evidence of record, and the relevant
DuPont factors. Because Applicant’s and the registered goods are related, DuPont
factor two weighs in favor of finding a likelihood of confusion. Because Applicant’s
mark DUNDER MIFFLIN and the registered mark MIFFLIN create different

Serial No 97831933
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commercial impressions, DuPont factor one weighs against finding a likelihood of
confusion. When we balance the DuPont factors, the lack of similarity between the
marks outweighs the similar goods, and so we find no likelihood of confusion between
Applicant’s and the registered mark.
III. Decision
The refusal to register Applicant’s mark is reversed.