Globo Comunicacao E Participacoes S.A.v.The Media Globo Corporation

Trademark Trial and Appeal Board

Sep 10, 2012

No. 91184401 (T.T.A.B. Sep. 10, 2012)

Mailed:
September 10, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Globo Comunicacao E Participacoes S.A.
v.
The Media Globo Corporation
_____

Opposition No. 91184401
to application Serial No. 77174169
filed on May 7, 2007
_____

Robert L. Brooke and Michael D. Hobbs, Jr. of Troutman
Sanders LLP for Globo Comunicacao E Participacoes S.A.

Michael Grandon for The Media Globo Corporation pro se
______

Before Bucher, Kuhlke and Ritchie, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, The Media Globo Corporation, seeks
registration on the Principal Register of the mark MEDIA
GLOBO (“MEDIA” disclaimed) in standard characters, for
services ultimately identified in the application as
“providing financial and investment services, namely, asset
acquisition, consultation, development and management
services and venture capital services, namely, providing
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91184401
2
financing to emerging and start-up companies, all in the
field of [I]nternet media,” in International Class 36. The
application also includes the following translation
statement: “The foreign wording in the mark translates into
English as ‘GLOBE’; as derived from the generic Spanish,
Italian and Portuguese word ‘globo’; which as used in the
mark means ‘globe’ in English.”1
Opposer, Globo Comunicacao E Participacoes S.A.,
opposed registration of applicant’s mark, on the grounds
that, as used with applicant’s services, the mark so
resembles opposer’s previously used and registered GLOBO-
formative marks for a variety of services, including
entertainment, broadcasting and television production
services provided via the Internet and on television, as to
be likely to cause confusion, to cause mistake, or to
deceive under Trademark Act Section 2(d), 15 U.S.C. §
1052(d). Opposer pleaded several registrations and alleged
prior rights in two common law marks.
Applicant filed an answer by which it denied the
salient allegations.2

1 Application Serial No. 77174169, filed on May 7, 2007, was
ultimately amended to seek registration under Trademark Act
Section 1(b), 15 U.S.C. § 1051(b) based on an allegation of a
bona fide intention to use the mark in commerce.

2 Applicant’s answer also includes affirmative defenses, many of
which are more in the nature of amplifications of its denials.
As to those affirmative defenses for which applicant did not
present argument in its brief (e.g., laches and acquiescence), we
consider them to have been waived.
Opposition No. 91184401
3
THE RECORD
By operation of the rules, the evidence of record
includes the pleadings and the file of the opposed
application. Opposer submitted a notice of reliance upon
various documents, including copies of opposer’s
registrations retrieved from the USPTO TARR database;
applicant’s responses to discovery requests; the discovery
deposition of Michael Grandon, applicant’s president
(Grandon Dep.); and printed publications. Opposer also
submitted the trial testimony upon written questions of
Antonio Claudio Ferreira Neto, opposer’s legal director in
Brazil (Ferreira Test.).
Applicant submitted a notice of reliance upon various
documents including applicant’s pretrial disclosures;
opposer’s recent trademark application; opposer’s responses
to discovery requests; and printed publications.3
THE PARTIES
Opposer is a Brazilian media conglomerate that provides
a variety of broadcasting, production and entertainment
services via television, radio and the Internet. Ferreira
Test. pp. 3-4. Opposer provides these services worldwide
and has provided these services in the United States since

3 Applicant also resubmitted material that opposer had
introduced, which was unnecessary. Once material has been made
of record, it may be relied upon by either party for any
appropriate purpose.

Opposition No. 91184401
4
1998. Ferreira Test. p. 8. Currently, opposer has
approximately 85,000 U.S. subscribers which translates
approximately into 450,000-500,000 U.S. viewers. Ferreira
Test. p. 6. In addition, since March 2000, opposer has
provided content through its Internet portal GLOBO.COM.
Ferreira Test. p. 6. In 2010, the GLOBO.COM portal had an
average volume of 5.8 million visits per month in the United
States. Ferreira Test. p. 12.
Applicant describes its business as “venture capital
and financing for development, production and distribution
on the Internet of ‘The Education Channel’..., as a global
web-based learning super portal, and ‘Walden high’..., as
one of the world’s leading internationally accredited online
high schools and virtual academies.” App. Br. p. 14. See
also Grandon Dep.
STANDING/PRIORITY
Because opposer has made its pleaded registrations of
record and has shown that the registrations are valid and
subsisting and owned by opposer, opposer has established its
standing to oppose registration of applicant’s mark and its
priority is not in issue as to the marks and services in
those registrations.4 See Jewelers Vigilance Committee,
Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed.
Cir. 1987); Lipton Industries, Inc. v. Ralston Purina Co.,

4 Opp. NOR.
Opposition No. 91184401
5
670 F.2d 1024, 213 USPQ 185 (CCPA 1982); and King Candy Co.,
Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108 (CCPA 1974).
The registrations are set forth below:
Registration No. 2521724, filed on December 14,
1999, issued on December 25, 2001, renewed, for
the mark

for “television broadcasting services,” in
International Class 38, “entertainment services,
namely, on-going television programs in the field
of news, soap operas, sports and variety shows;
and television production,” in International Class
41, and “news agency, namely, gathering and
dissemination of news” in International Class 42,
the words TV and INTERNACIONAL are disclaimed and
GLOBO INTERNACIONAL is translated as INTERNATIONAL
GLOBE;

Registration No. 2630021, filed on July 5, 2000,
issued on October 8, 2002 Section 8 and 15
declaration accepted and acknowledged for the mark
GLOBO.COM in typed form for “providing on-line
electronic bulletin boards for transmission of
messages among computer users for numerous fields,
namely, sports, politics, economy, games,
entertainment, medicine and education; electronic
mail services; electronic transmission of data and
documents via a global computer network,” in
International Class 38, “computer services,
namely, providing a website featuring and a search
engine for obtaining general and local news, and
information of interest to specific geographic
areas via a global computer network; news agency
services, namely, gathering and dissemination of
news,” in International Class 42, GLOBO is
translated as GLOBE;

Opposition No. 91184401
6
Registration No. 3290772, filed on April 18, 2006,
issued on September 11, 2007, for the mark GLOBO
REPORTER in standard characters for “production of
television programs; entertainment in the nature
of television programs in the field of news,
variety, education and topics of general interest”
in International Class 41, REPORTER disclaimed,
GLOBO is translated as GLOBE; and

Registration No. 3380213, filed November 16, 2006,
issued on February 12, 2008 for the mark

for “entertainment services in the nature of
television programs in the field of sports events
and news; production of entertainment and sports
television programs,” in International Class 41,
SPORTS disclaimed.5

Opposer also asserted prior common law rights in the
phrases GLOBO MEDIA and GLOBAL MEDIA CENTER used in
connection with entertainment services in the nature of a
website concerning entertainment, sports, and news. In
order to prove priority as to the asserted GLOBO common law
marks, opposer must establish use prior to applicant’s
filing date, i.e., May 7, 2007. In addition, “[u]nder the
rule of Otto Roth, a party opposing registration of a
trademark due to a likelihood of confusion with his own
unregistered term cannot prevail unless he shows that his

5 Pleaded Registration No. 2359682 for the mark GLOBOPAR expired
under Section 9 and was cancelled on January 21, 2011.

Opposition No. 91184401
7
term is distinctive of his goods, whether inherently or
through the acquisition of secondary meaning or through
‘whatever other type of use may have developed a trade
identity.’” Towers v. Advent Software Inc., 913 F.2d 942,
16 USPQ2d 1039, 1041 (Fed. Cir. 1990), citing, Otto Roth &
Co. v. Universal Food Corp., 640 F.2d 1317, 209 USPQ 40, 43
(CCPA 1981).
With regard to the issue of the distinctiveness of the
asserted marks, applicant contends that both of the GLOBO
common law marks are descriptive and generic, but does not
cite to any evidence or specify how the marks are merely
descriptive of opposer’s services. In the reply brief,
Opposer asserts that the term “GLOBO” which translates to
“globe” does not “immediately convey any thought” of the
entertainment services being provided and therefore is not
descriptive or generic of the services. Opp. Reply Br. p.
3. Inasmuch as there is no evidence that the term “GLOBO”
is merely descriptive or generic of opposer’s claimed
website entertainment services, we consider the alleged
marks in their entireties to be inherently distinctive.
In order to establish prior use in these asserted
marks, opposer relies on the following responses in Mr.
Ferreira’s testimony by written questions:
Q. What is the date of first use of the mark
GLOBO MEDIA by Globo in the United States?

A. The date of first use was July 1, 2004.
Opposition No. 91184401
8

Q. Has the mark GLOBO MEDIA been used
continuously by Globo since its date of first use
in the United States?

A. Yes.

Q. What services does Globo provide in the United
States in connection with the mark GLOBO MEDIA?

A. Globo uses the GLOBO MEDIA mark in the United
States in connection with entertainment in the
form of a website relating to entertainment,
sports and news. ...

Q. What is your estimate of the number of people
in the United States who have received the
services provided by Globo in connection with the
mark GLOBO MEDIA?

A. It is estimated that approximately 450,000 to
500,000 people have received the services.

Ferreira Test. pp. 23-26.
These questions and answers are the same with regard to
GLOBO MEDIA CENTER and opposer’s registered marks GLOBO.COM,
GLOBO REPORTER, GLOBOTV SPORTS and TV GLOBO INTERNACIONAL.
However, opposer does not cite to, nor have we found, any
examples in the record of service mark use in the United
States of either GLOBO MEDIA or GLOBO MEDIA CENTER in
connection with website entertainment services.
Testimony of a witness can be sufficient to prove
priority if the witness is “personally conversant with the
facts, and [the testimony] is clear, convincing, consistent,
and sufficiently circumstantial to convince the trier of
fact of the probative value thereof.” Liqwacon Corp. v.
Browning-Ferris Indus., Inc., 203 USPQ 305, 316 (TTAB 1979).
Opposition No. 91184401
9
See also National Bank Book Co. v. Leather Crafted Products,
Inc., 218 USPQ 826, 828 (TTAB 1993). In this case, Mr.
Ferreira is opposer’s legal director but there is no further
testimony to fully understand the level of his personal
knowledge as to the use of opposer’s various marks.
Moreover, there is no evidence to corroborate use of these
marks in connection with a website in the United States.
The testimony deposition would have been the time to do so,
but the only exhibit submitted showing the phrase GLOBO
MEDIA CENTER is a Power Point presentation which has the
title GLOBO MEDIA CENTER. The presentation is in Portuguese
and there is no information as to where, i.e., which
country, and when this was presented; nor is it an example
of service mark use in connection with an entertainment
website. Opposer also submitted various Internet websites
owned and operated by Opposer and third-party websites
describing and discussing “opposer’s global footprint and
global use” of its GLOBO marks. Not a single one of
opposer’s websites uses the phrases GLOBO MEDIA or GLOBAL
MEDIA CENTER.6 Moreover, GLOBO MEDIA and GLOBO MEDIA CENTER
do not appear in a list of websites apparently connected
with GLOBO.COM. Opp. NOR Exh. 0-6

6 We note these are all in Portuguese and no translations were
provided, which substantially limits their probative value. In
terms of common law rights, these excerpts would limit the
classes of customers to Portuguese-speaking consumers.

Opposition No. 91184401
10
(www.globo.com/Globo.com/sites). With regard to the third-
party websites, the UCLA press release announcing an event
titled “THE FACE OF BRAZIL: The Globo Media Network” is not
trademark use by opposer. Opp. NOR Exh. 0-6. At most this
example shows a third party referring to opposer simply as
GLOBO. Similarly, the printout of the New York Times
article refers to GLOBO CABO and describes it as “part of
the Globo media empire.” Id. See also Access My Library
(“Globo.com, a Brazilian Internet venture launched by the
Globo media empire just over a year ago”).7 Finally, there
is one example of a printout dated May 19, 2008, from a
third-party website called “Find Internet TV” that shows the
phrase GLOBO MEDIA CENTER as the heading above text
describing Globo.com as an Internet access provider for TV
Globo programming. Opp. NOR Exh. 0-6, see also Grandon Dep.
p. 147, Exh. 27. Put simply, this does not serve to
corroborate opposer’s use of the phrase as a trademark.
This stands in contrast to the examples of opposer’s
website, attached as exhibits to Mr. Grandon’s deposition
wherein opposer’s registered marks GLOBO.COM, GLOBOTV
SPORTS, and TV/GLOBO INTERNACIONAL are prominently
displayed. Grandon Dep. pp. 141-143, Exh. 21-25. We also

7 If these examples support trademark rights to the term GLOBO
MEDIA then opposer also holds trademark rights in the term GLOBO
AFFILIATES based on the sentence in the article stating “That new
version would provide Internet access, as well as feature all
sites of Globo affiliates.” Id.
Opposition No. 91184401
11
note the printout of applicant’s search result for the
phrase “Global Media Center” showing no results, also
authenticated by applicant’s discovery deposition testimony.
Grandon Dep. p. 147, Exh. 26.
Given the absence of examples of use of these marks on
opposer’s website that is accessible in the United States,
in contrast to the examples of use of some of opposer’s
other registered marks shown in Exhibit 0-6 and Exhibits 21-
25 attached to Mr. Grandon’s deposition, Mr. Ferreira’s
limited testimony is not convincing.
In view of the above, opposer has not established prior
trademark rights in GLOBO MEDIA or GLOBO MEDIA CENTER.
Therefore, the opposition based on these alleged trademarks
must fail and we do not reach the issue of likelihood of
confusion as to these marks. Accordingly, we turn to the
question of likelihood of confusion as it pertains to
opposer’s registered marks.
LIKELIHOOD OF CONFUSION
Our likelihood of confusion determination under Section
2(d) 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 and Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). See also, In re Majestic Distilling Co.
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).

Opposition No. 91184401
12
Fame/Strength of Opposer’s GLOBO-formative marks
We begin by addressing opposer’s assertion that its
marks are famous, because fame plays a dominant role in the
likelihood of confusion analysis. The strength of a mark
“may be measured indirectly, among other things, by the
volume of sales and advertising expenditures of the goods
traveling under the mark, and by the length of time those
indicia of commercial awareness have been evident.” Bose
Corp. v. QSC Audio Products, Inc., 293 F.3d 1367, 63 USPQ2d
1303, 1305 (Fed. Cir. 2002).
Opposer has provided testimony that it has millions of
viewers worldwide and is the third most watched broadcaster
in the world. Ferreira Test. pp. 7-8. Opposer has 85,000
U.S. subscribers to its television programming and estimates
this translates into 450,000 – 500,000 viewers in the United
States. Id. Opposer also indicates that the GLOBO.COM
website received 5.4 million visitors each month, with a
significant number of U.S. users. Ferreira Test. pp. 10-12.
“…[R]aw numbers in today’s word may be
misleading…consequently, some context in which to place raw
statistics is reasonable.” Bose, 63 USPQ2d at 1309. The
total number of viewers, at half a million, is a small
fraction of the U.S. population, and fewer than seventy hits
a year on a website is miniscule. Without further context
here, it is questionable whether the numbers of viewers
Opposition No. 91184401
13
would be considered significant in the relevant market. See
Morgan Creek Productions Inc. v. Foria International Inc.,
91 USPQ2d 1134, 1140 (TTAB 2009) (Board found that opposer
had not met its burden to establish fame because opposer
failed to provide context for the numbers provided, which
included 150 to 250 million viewers of their films).
Furthermore, other evidence of fame, such as the volume
of sales and advertising expenditures for the services, has
not been provided.8 “It is the duty of a party asserting
that its mark is famous to clearly prove it.” Leading
Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901,
1904 (TTAB 2007). Based on this extremely limited evidence
on this factor, we cannot find fame, or even have an
understanding of the commercial strength of the GLOBO-
formative marks in the United States.
Conversely, applicant argues that the shared term GLOBO
is weak due to third party use and entitled to limited
protection under the du Pont factor of “the number and
nature of similar marks on similar goods.” In re E.I. du
Pont de Nemours and Co., 177 USPQ at 567. The evidence of
third-party use of GLOBO in connection with entertainment
and media services is minimal, consisting of a list of

8 In fact, opposer’s witness, Mr. Ferreira, in response to
inquiries regarding opposer’s revenue and advertising expenses
simply stated that it is confidential information that “is not
relevant to the case,” and “it is not possible to separate the
revenue from advertising by trademark.”
Opposition No. 91184401
14
domains that include the letters “glob” (which captures
GLOB, GLOBI, GLOBION, GLOBIR, GLOBO, GLOBE, GLOBAL, etc.)
(Grandon Dep. p. 177, Exh. 47), a search results page from
the USPTO search database (Grandon Dep. p. 163, Exh. 37),
several Google search results pages (Grandon Dep. p. 162,
Exh. 36), and a handful of third-party websites (Grandon
Dep. pp. 168-176, Exhs. 38-39, 42-46).
The list of available domains does not provide any
evidence of third-party use of the term GLOBO for opposer’s
various television and website services. With regard to the
USPTO search results, a party may not make the registrations
of record by merely introducing a listing of third-party
registrations and the listing itself is of little probative
value inasmuch as it does not include the services the marks
are used with, which is necessary to determine that a term
has become weak. TBMP § 704.03(b)(1)(B) (3d ed. rev. 2012).
Similarly, the Google search results have little to no
evidentiary value because they do not make clear the use of
the mark on the underlying web pages found through the
links. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82
USPQ2d 1828, 1833 (Fed. Cir. 2007).
Finally, the third-party websites that have been
authenticated via applicant’s deposition testimony9 are (1)

9 Third-party websites in the record that do not include the
source or universal resource locators (URLs) or dates the
materials were accessed or published and have not been otherwise
Opposition No. 91184401
15
the home page for globomedia.es a Spanish company offering
television programming under the term GLOBOMEDIA (Grandon
Dep. p. 168, Exh. 38); (2) a website development firm using
the term GlOBO-MEDIA (Grandon Dep. pp. 169-170, Exh. 39,
40); (3) the home page from the website globo.org.uk for a
music group (Grandon Dep. p. 173, Exh. 42); (4) a web page
titled GLOBO from a Greek company in the software services
and solutions business (Grandon Dep. p. 174, Exh. 43); (5)
the web page GLOBOWEBDESIGN.COM (Grandon Dep. pp. 174-75,
Exh. 44); and (6) a web page from RADIOGLOBO.IT an Italian
website apparently in the field of music (Grandon Dep. p.
176-77, Exh. 46). Notably, they are all from foreign
websites and while they may be accessible to U.S. consumers,
they are not sufficient evidence to support a finding that
GLOBO is commercially weak in the United States in relation
to opposer’s services.
On the other hand, the evidence of record does support
a finding that the term GLOBO is suggestive rather than
arbitrary, inasmuch as it is the foreign equivalent of the
English word GLOBE, and, to that extent, suggests the scope
of the provision of the services and the offered content --
what opposer refers to as opposer’s “global footprint.” See
Opp. NOR.

authenticated in Mr. Grandon’s deposition are of not properly of
record and have not been considered. Safer Inc. v. OMS Invs.
Inc., 94 USPQ 2d 1031, 1039 (TTAB 2010).
Opposition No. 91184401
16
Similarity/Dissimilarity of the Marks
We now consider whether applicant’s mark MEDIA GLOBO
and opposer’s GLOBO-formative registered marks are similar
or dissimilar when compared in their entireties in terms of
appearance, sound, connotation and commercial impression.
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Cir. 2005) quoting du Pont, 177 USPQ at 567. In making this
finding, the focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).
We find that the term GLOBO, although suggestive, is
the dominant element in applicant’s mark and in each of
opposer’s marks. With regard to applicant’s mark, the term
MEDIA is, at minimum, merely descriptive of the subject
matter of applicant’s services which are “in the field of
Internet media.” Applicant has disclaimed this term.
Similarly, the additional wording or literal elements in
each of opposer’s marks is merely descriptive and disclaimed
(TV INTERNACIONAL, REPORTER and SPORTS) or of no source-
indicating significance (.COM). In addition, the design
elements in opposer’s marks in Registration Nos. 2521724 and
3380213 are either subordinate to the literal elements
(stylization, background) or simply support the meaning of
Opposition No. 91184401
17
the literal elements (globe/tv design). In re Max Capital
Grp. Ltd., 93 USPQ2d 1243, 1247 (TTAB 2010); In re Appetito
Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987). Thus,
the additional elements in the parties’ marks are entitled
to less weight in the likelihood of confusion analysis. See
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985) (It is well settled that one feature of a
mark may be more significant than another, and it is not
improper to give more weight to this dominant feature when
evaluating the similarities of the marks.) While additions
to marks may be sufficient to avoid a likelihood of
confusion where the marks in their entireties convey
significantly different commercial impressions or the matter
common to the marks is not likely to be perceived by
purchasers as distinguishing source because it is merely
descriptive or diluted, the circumstances presented in this
case do not fall in either of these categories. See
Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d
1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); Shen Mfg. Co.
v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1356-57
(Fed. Cir. 2004). As found above, although suggestive, this
record does not support a finding that GLOBO is merely
descriptive or diluted.
This leaves the term GLOBO as the dominant portion of
all of these marks. In view thereof, we find the marks to
Opposition No. 91184401
18
be similar in sound and appearance. As to connotation, the
additional wording TV is a subset of MEDIA and REPORTER and
SPORTS also relate to the all-inclusive word MEDIA, thus,
the additional wording does not detract from the identical
connotation engendered by the shared term GLOBO. In view of
the above, we find that the similarities in sound,
appearance, connotation and overall commercial impression
outweigh the dissimilarities. However, the scope of
protection is tempered by the conceptually weak nature of
the common element GLOBO.
Services/Channels of Trade/Classes of Customers
This brings us then to our consideration of the
similarities between opposer’s and applicant’s services,
channels of trade and classes of purchasers. In a Section
2(d) determination, the services do not have to be identical
or even competitive in order to find that there is a
likelihood of confusion. In re Iolo Techs., LLC, 95 USPQ2d
1498, 1499 (TTAB 2010); In re G.B.I. Tile & Stone, Inc., 92
USPQ2d 1366, 1368 (TTAB 2009). The issue is not whether the
services will be confused with each other, but rather
whether the public will be confused as to their source. See
Recot Inc. v. M.C. Becton, 214 F.3d 1322, 1329, 54 USPQ2d
1894, 1898 (Fed. Cir. 2000). It is sufficient that the
services of the applicant and the opposer are related in
some manner or that the conditions surrounding their
Opposition No. 91184401
19
marketing are such that they are likely to be encountered by
the same persons under circumstances that, because of the
marks used in connection therewith, would lead to the
mistaken belief that they originate from the same source.
See, e.g., On-line Careline Inc. v. America Online Inc., 229
F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000) (holding ON-LINE
TODAY for Internet connection services and ONLINE TODAY for
an electronic publication likely to cause confusion).
Finally, in evaluating the relationship between the
services, it is well settled that we must consider the
services as they are identified in the application and
registrations and we cannot read limitations into those
services that are not reflected therein. Octocom Systems
Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1987); Hewlett-Packard Co. v. Packard
Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
Where the services are broadly described, and there are no
limitations as to their nature or type, it is presumed that
the scope of the application and registration encompasses
all services of the nature and type described. See Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1992).
Applicant’s services in the application are listed as
“providing financial and investment services, namely, asset
acquisition, consultation, development and management
Opposition No. 91184401
20
services and venture capital services, namely, providing
financing to emerging and start-up companies, all in the
field of [I]nternet media.” These services are financial in
nature, but provided to those in the Internet media field.
Opposer asserts that because the services are in the
same field, the services are related. Specifically, Mr.
Ferreira testifies that “Basically, the services of the
application for registration of the MEDIA GLOBO trademark of
The Media Globo Corporation are financing services for
companies operating in the same segment as Globo, i.e.,
there is clear potential to cause confusion in the minds of
the consumer public or induce the consumer public to believe
that these services are from Globo, which is not the case.”
Ferreira Test. p. 13.
The fact that the subject matter of applicant’s
financial services are provided in the general field of some
of opposer’s services alone without additional evidence of
relatedness of the services, is insufficient to find the
services are related. Cooper Industries, Inc. v. Repcoparts
USA, Inc., 218 USPQ 81, 84 (TTAB 1983) (“the mere fact that
the products involved in this case (or any products with
significant differences in character) are sold in the same
industry does not of itself provide an adequate basis to
find the required ‘relatedness’”).
Opposition No. 91184401
21
Opposer attempts to give an example of how this
confusion will occur in the marketplace by stating that if
the applicant’s mark was NBC MEDIA or GOOGLE MEDIA for
applicant’s financial services, consumers would confuse them
with NBC or GOOGLE for their media services. Opp. Br. p.
19. Speculating on possible confusion between a third-
party’s mark and a hypothetical mark does not substitute for
evidence demonstrating the relatedness, not only between
applicant’s and opposer’s services, but also how their
channels of trade and classes of consumers would overlap.10
Opposer also attempts to rely on information on
applicant’s website indicating it intends to be an Internet
media conglomerate. Opp. Br. p. 19. However, as stated
above, opposition proceedings are limited to registrability
of the applied-for mark for the services specified in the
application. Octocom, 16 USPQ2d at 1787. We must make our
determination based on the services as they are recited in
the application and registrations, and we may not extend the
services based on what extrinsic evidence may reveal. In re
Bercut-Vandervoort & Co., 229 USPQ 763 (TTAB 1986).
Based upon the information and evidence of record,
opposer has not shown that applicant’s financial services
are related to opposer’s various entertainment,

10 We further note that the record here does not support a finding
that opposer’s mark is strong let alone famous and, therefore,
the wide latitude given famous marks does not apply here.
Opposition No. 91184401
22
broadcasting, and website services, and opposer has failed
to sustain its burden of proof on this factor. We are not
persuaded that simply because applicant provides financial
investment services in the field of Internet media,
applicant’s services are related to opposer’s television and
website services. “We are not concerned with mere
theoretical possibilities of confusion, deception, or
mistake or with de minimis situations but with the
practicalities of the commercial world, with which the
trademark laws deal.” Electronic Design & Sales, Inc. et al
v. Electronic Data Systems Corporation, 954 F.2d 713, 21
USPQ2d 1388, 1392 (Fed. Cir. 1992). Without evidence or
further explanation as to how applicant’s financial services
are related to opposer’s television and website services,
opposer has failed to show that any company provides both
venture capital/investment, and television and website
services, and that the relevant consumers are accustomed to
such services emanating from a common source.
The final relevant factor is the similarity of the
established, likely-to-continue trade channels. Again,
opposer relied upon the Internet evidence of applicant’s
intentions to provide services outside of those listed in
the application to presume that the services will travel in
the same trade channels and be provided to the same
Opposition No. 91184401
23
consumers.11 However, as mentioned above, the determination
is to be made based on the services listed in the
application. Opposer also argues that because the
application and registrations are not limited by channels of
trade and classes of consumers, an overlap is presumed.
However, the proper analysis is that we presume the
respective services will travel in and be offered to the
ordinary channels of trade and classes of consumers for
those respective services. Opposer has provided no
arguments or evidence that the ordinary trade channels of
financial/venture capital services are similar to or overlap
with the trade channels and customers of entertainment
services, television production, broadcasting services, or
provision of news and entertainment via a website. While
they both use the Internet to advertise or provide their
services, this alone is not sufficient to find that the
trade channels overlap in a manner that creates a likelihood
of confusion.
In addition, opposer seems to argue that confusion
would occur within the general public or the ultimate
consumers of entertainment services provided via television
and the Internet. However, that is not the ordinary class
of consumers for applicant’s identified services. Based on

11 We also note that it is not clear from this record what
specific additional services applicant intends to provide under
the MEDIA GLOBO mark.
Opposition No. 91184401
24
a reading of the identification and corroborated by the
record, applicant’s consumers would be potential investors.
While it is possible overlap could occur in a class of
consumers that we will generalize as “content providers,” we
would have to speculate on that point inasmuch as opposer
has not provided sufficient evidence to make such a finding.
Moreover, such a consumer base, “content providers seeking
investors,” would be a highly sophisticated group.
Because opposer has not shown that the services are
related and the trade channels and classes of customers
overlap, we conclude there is no likelihood of confusion
between applicant’s MEDIA GLOBO mark and opposer’s
registered GLOBO-formative marks.
Decision: The opposition is dismissed.