Carlos O.Calderone

Trademark Trial and Appeal Board

May 17, 2006

No. 78308526 (T.T.A.B. May. 17, 2006)

Mailed:
May 17, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Carlos O. Calderone
________

Serial No. 78308526
_______

Jeffrey M. Furr, Esq., for Carlos O. Calderone.

Brian D. Brown, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney)
_______

Before Seeherman, Drost and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

On October 2, 2003, Carlos O. Calderone (applicant), a
citizen of Spain, applied to register the mark VIDEOMATIC
in standard-character form for goods now identified as
“audio tape recorders, digital audio tape recorders, DVD
recorders and players, CD recorders and VHS recorders” in
International Class 9.1

1 At filing, applicant based the application on both its intent
to use the mark in commerce, under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), and a foreign registration, under
Section 44(e) of the Trademark Act, 15 U.S.C. § 1126(e). During
prosecution applicant abandoned the Section 44(e) basis. At
filing applicant identified its goods as “audio-visual product
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78308526
2
The examining attorney refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), in
view of Reg. No. 824369, issued February 21, 1967, owned by
SONY Corporation of America, for the mark VIDEO-MAT in
standard-character form for “electronic apparatus
comprising a video tape recorder, a monitor, and a
television camera and sold as a unit (sic)” in
International Class 9. The cited registration has been
renewed.
The examining attorney issued a final refusal and
applicant appealed.2 Both applicant and the examining
attorney have filed briefs. Applicant did not request an
oral hearing. We affirm.
Section 2(d) of the Act precludes registration of an
applicant’s 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 . . .” 15 U.S.C. § 1052(d).
To determine whether there is a likelihood of confusion, we

machines for VHS, DVD, music disc, and CD Rom.” During
prosecution applicant amended the identification as indicated.
2 On April 6, 2006, we issued an opinion in a related application
(Ser. No. 78308526) filed by the same applicant that affirmed a
similar refusal for the mark VIDEOMATIC (and design). The
application at issue here was declared abandoned in error
after this appeal was filed. It was later reinstated. We regret
the resulting delay in acting on the appeal in this application.

Ser No. 78308526
3
must consider all evidence of record bearing on the factors
delineated in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1977). Here, as is
often the case, the crucial factors are the similarity of
the marks and the similarity of the goods of the applicant
and registrant. Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In
addition to those factors, we will also address applicant’s
and the examining attorney’s arguments relating to other
factors.
Comparison of the Marks
In comparing the marks we must consider the
appearance, sound, connotation and commercial impression of
both marks. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005).
With regard to the marks, Applicant argues as follows:
The points of comparison for a word mark are
appearance, sound, and meaning or connotation.
Similarity of the marks in one respect – sight, sound
or meaning – will not automatically result in a
finding of a likelihood of confusion even if the goods
are identical or closely related. Rather, the rule is
that taking into account all of the relevant facts of
a particular case, similarity as to one factor alone
may be sufficient to support a holding that the marks
are confusingly similar. (citation omitted, emphasis
in the original)

Applicant argues further:
Ser No. 78308526
4
There are over 900 live marks in International Class
009 which include “Video” as part of the mark.
Furthermore, in Class 009 there are several registered
marks which consist of the word “Videomat” with only
an additional letter or two to differentiate it; these
include VIDEOMATE, VIDEOMAKER and VIDEOMAX.

On the other hand, the examining attorney argues as
follows:
Comparing the marks, the literal elements in both
marks are similar. For instance, VIDEOMATIC and
VIDEO-MAT are similar in sound, spelling and
connotation. In addition, both marks contain eight
identical letters that appear in the same order.

We note that applicant refers to third-party
registrations for the first time in his brief. He did not
submit any records in support of his statements. The
examining attorney objects to this “evidence” and points
out that Trademark Rule 2.142(d) specifies that, “The
record in an application should be complete prior to the
filing of an appeal. The Trademark Trial and Appeal Board
will ordinarily not consider additional evidence filed by
the appellant or the examining attorney after the appeal is
filed.” 37 C.F.R. § 2.142(d). In this case no evidence
has been filed in an acceptable form. See In re Volvo Cars
of North America Inc., 46 USPQ2d 1455, 1456 n.2 (TTAB 1998)
and other authorities cited in TBMP § 1208.02 (2d ed. rev.
2004). In the absence of any properly submitted evidence
Ser No. 78308526
5
of third-party registrations, we have not considered
applicant’s representations regarding such registrations.3
Turning to the marks, we agree with the examining
attorney’s conclusion that the literal elements of
applicant’s mark and the registered mark are similar in
appearance, sound, connotation and commercial impression.
The letter string “V I D E O M A T” begins each of the
marks. It is the entirety of the registered mark;
applicant’s mark merely adds “IC” to the registered mark.
This addition is commonly used merely to change the syntax
of a term, and here it does not alter either the
appearance, sound, connotation or commercial impression of
the registered mark to any significant degree.
Consequently “VIDEOMAT” is the beginning and dominant
element in both marks. In this case, as in many others,
the first part of the mark is most important in evaluating
similarity. Palm Bay Imports, Inc. v. Veuve Clicquot, 73
USPQ2d at 1690. See also Presto Products v. Nice-Pak
Products, 9 USPQ2d 1895, 1897 (TTAB 1998) (“It is often the
first part of a mark which is most likely to be impressed
upon the mind of a purchaser and remembered.”).

3 Had we considered applicant’s “evidence” we would find it
unpersuasive.
Ser No. 78308526
6
In this case, we conclude that the marks of applicant
and registrant, when viewed in their entireties, are highly
similar in appearance, sound, connotation and commercial
impression.

The Goods, Channels of Trade and Sophistication of
Purchasers

Applicant essentially combines arguments which address
factors relating to the goods, the channels of trade and
the sophistication of the purchasers.
With respect to the goods, applicant argues:
Applicant has performed an online search (both general
and of the products associated with the owner of U.S.
Registration Number 0824369) to find the goods
associated with U.S. Registration Number 0824369 in
order to compare the goods with the goods associated
with Applicant’s mark, but Applicant could not find
any reference to the mark associated with Registration
Number 0824369 on any Internet sites. Applicant’s
goods are units which are sold to business owners,
rather than the typical machines found in the average
consumer’s home. Applicant’s goods are a machine with
a totally modular structure, allowing each owner to
select a configuration specifically designed to meet
his/her needs. These units allow a business owner to
record advertising spots, trailers, film covers, etc.
with high quality image and sound, to reach the
business owner’s customers with the greatest
efficiency.

Applicant states further:
Applicant’s goods are sold to professionals in order
to be integrated in their business, or sold to
professionals that create new businesses with
Applicant’s goods. These units are available in
Ser No. 78308526
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several different models with several different
options, are approximately the same size as a bank’s
automatic teller machine (with some models being
larger), and are rather expensive. These units are
not units which would be purchased by the general
public nor are they units which would be purchased as
an ‘impulse’ buy, but rather would be purchased after
a thorough review of the options and models available
in consideration with the needs of the professional
and his/her business.

On the other hand, the examining attorney argues,
“. . . the marks of both the applicant and registrant, as
identified in the application and registration, identify
goods that appear to serve an identical function, namely,
recording. As the application also reveals, video
recorders, as well as audio tape recorders and DVD
recorders emanate from the same source under the same
mark.” The examining attorney also argues that the
protection afforded by the registration extends to products
within the registrant’s logical zone of expansion.
Once again we must begin by addressing applicant’s
reference to Internet searches he conducted. Here also,
applicant refers to this for the first time in his brief,
and applicant has not provided any documentation related to
these searches. Again, the examining attorney has objected
to this evidence. Here too, the evidence is both untimely
and not in proper form. Accordingly, we have not
considered it. See 37 C.F.R. § 2.142(d); In re Trans
Ser No. 78308526
8
Continental Records Inc., 62 USPQ 1541 (TTAB 2002) and
other authorities cited in TBMP § 1207.01 et seq. (2d ed.
rev. 2004).
In any event, in considering the goods, we must
consider the goods as identified in the application and
registration and, in the absence of any restrictions,
assume that the goods travel in all trade channels
appropriate for such goods. CBS Inc. v. Morrow, 708 F.2d
1579, 218 USPQ 198, 199 (Fed. Cir. 1983); In re Melville
Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).
Applicant identifies his goods as “audio tape
recorders, digital audio tape recorders, DVD recorders and
players, CD recorders and VHS recorders.” The cited
registration covers “electronic apparatus comprising a
video tape recorder, a monitor, and a television camera and
sold as a unit (sic).” Applicant’s goods include “VHS
recorders” which appear to fall within the broader term
“video recorders” included in the registration.
Furthermore, the examining attorney’s point is well
taken, that is, the goods of applicant and registrant
perform identical functions, recording. While it appears
that the registrant’s goods are sold as a multi-component
package, the fact remains that applicant’s goods, as
identified, can fulfill the same function as specific
Ser No. 78308526
9
components within that package, and therefore, may be
interchangeable with specific goods identified in the
registration. Thus, a consumer familiar with the
registrant’s use of its mark on its goods, who may then see
applicant’s highly similar mark on a component of the goods
registrant sells as a unit, is likely to assume the
registrant is selling the component separately.
Applicant also argues that the technology employed in
his products was not available in 1967 when the
registration issued. Whatever technology might have been
used in registrant’s goods at that time, the registration
does not limit registrant’s rights to specific technology.
Thus, it is possible that the goods registrant now sells
under its mark employ technology similar to that used by
applicant. In any event, whether or not applicant’s goods
employ technology which did not exist at the time the cited
registration issued, because applicant’s and registrant’s
goods perform the same or similar functions, they are
overlapping or closely related.
It is not necessary in this case to invoke the “zone
of expansion” doctrine, as the examining attorney suggests,
to reach this conclusion. Applicant’s goods are, at least
in part, of the same type and description as those of the
registrant. Thus, we need not conclude that relevant
Ser No. 78308526
10
purchasers of registrant’s goods are likely to believe that
registrant has expanded its use of the mark to include
goods of a different type that are similar to the goods
identified in applicant’s application.
Applicant devotes much of his argument to a discussion
of the restricted trade channels for his goods, that is,
the fact that the goods would be sold to businesses or
professionals. However, neither the application nor the
registration at issue here include any restrictions as to
the channels of trade. Accordingly, we cannot take into
account the asserted limitations in the actual trade
channels of applicant. In re Bercut-Vandervoort & Co., 229
USPQ 763, 764 (TTAB 1986)(extrinsic evidence and argument
suggesting trade-channel restrictions not specified in
application rejected). We must assume that applicant’s
“audio tape recorders, digital audio tape recorders, DVD
recorders and players, CD recorders and VHS recorders” and
registrant’s “electronic apparatus comprising a video tape
recorder, a monitor, and a television camera and sold as a
unit (sic)” would travel in all normal trade channels for
such products and reach all potential purchasers of such
products. Applicant’s goods, in particular, audio and
video tape recorders and DVD players, are clearly items
that the general public would purchase and use. While
Ser No. 78308526
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registrant’s identified apparatus appears to be designed
for people with a more serious interest in video taping,
consumers for this product too would include the general
public. Therefore, we conclude that applicant’s goods and
registrant’s goods could travel through the same trade
channels and could reach the same purchasers.
Even if we were to assume that applicant’s customers
were limited to businesses and professionals, as applicant
argues, we must assume that these same individuals are
potential purchasers of registrant’s goods.
Applicant also asserts that the customers for his
products are sophisticated consumers and that his goods are
“rather expensive.”4 Even sophisticated purchasers, such as
those identified by applicant, are not immune from
trademark confusion. In re Pellerin Milnor Corp., 221 USPQ
558, 560 (TTAB 1983). Here, because of the strong
similarity of the marks and the relatedness/overlapping
nature of the goods, sophisticated and careful purchasers,
if they notice the difference in the marks at all, are
still likely to view the products as emanating from the
same source. Accordingly, we conclude that the

4 Applicant has not indicated what he means by “rather
expensive.” In the final analysis it would not be relevant
because we must confine our consideration to the nature of the
goods, including cost, as identified in the application.

Ser No. 78308526
12
sophistication of relevant purchasers does not eliminate
the likelihood of confusion in this case.
Actual Confusion
Applicant also argues that there has been no actual
confusion: “The Applicant has been using the VIDEOMATIC
mark for the past several years throughout the world
without any actual confusion between its mark and the mark
in U.S. Registration number 0824369.” Applicant asserts
that he has registered his mark in several other countries.
However, neither use nor registration of applicant’s mark
outside the United States is relevant for purposes of our
determination. Applicant has neither alleged in his
application nor argued that he has used his mark in the
United States. Therefore, there is no evidence that there
has been an opportunity for confusion to occur.
Furthermore, particularly in an ex parte proceeding,
“uncorroborated statements of no known instances of actual
confusion are of little evidentiary value.” In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed.
Cir. 2003). See also In re Kangaroos U.S.A., 223 USPQ
1025, 1026-27 (TTAB 1984). Therefore, we find applicant’s
argument regarding actual confusion unpersuasive.
In sum, after considering all evidence of record
bearing on the du Pont factors, we conclude that there is a
Ser No. 78308526
13
likelihood of confusion in this case. We conclude so
principally because the marks of applicant and registrant
are highly similar and because the goods of applicant and
registrant are overlapping or closely related.
Decision: The refusal to register applicant’s mark
under Section 2(d) of the Act is affirmed.