Magnadyne Corporationv.Movievision, Inc.

Trademark Trial and Appeal Board

Apr 9, 2009

No. 91175280 (T.T.A.B. Apr. 9, 2009)

Mailed:
April 9, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Magnadyne Corporation
v.
Movievision, Inc.
_____

Opposition No. 91175280
to application Serial No. 76655958
filed on March 2, 2006
_____

Hope V. Shovein of Brooks Kushman P.C. for Magnadyne
Corporation.

Movievision, Inc. pro se.
______

Before Grendel, Mermelstein and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Movievision, Inc. (“applicant”) filed an intent-to-use
application for the mark MOVIEVISION and Design, shown
below, for services ultimately identified as “pay-per-view
television transmission services featuring recently released
movies in English, Spanish, Cantonese, and Russian via
cable,” in Class 38.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition Nos. 91175280
2
Magnadyne Corporation (“opposer”) filed a notice of
opposition against the registration of applicant’s mark on
the ground of priority of use and likelihood of confusion
pursuant to Section 2(d) of the Trademark Act of 1946, 15
U.S.C. §1052(d).1 Specifically, opposer alleged that it has
used and that it is the owner of two federally-registered
marks for MOVIE VISION, in standard character form,2 and in
a logo format, shown below,3 both for “video entertainment
systems for vehicles; namely, electronic audio, video and
video game components in the nature of video cassette
players, digital video disk players, video game players and
television receivers with video display devices,” in Class
9, and that applicant’s mark is likely to cause confusion
with opposer’s marks.

1 Opposer also alleged that applicant’s mark consists of matter
which falsely suggests an association with opposer pursuant to
Section 2(a) of the Trademark Act of 1946, 15 U.S.C. §1052(a),
and that applicant’s mark is likely to dilute the distinctive
character of opposer’s mark under Section 43(c) of the Trademark
Act of 1946, 15 U.S.C. §1125(c). However, because opposer did
not refer to either of these grounds in its brief, we find that
opposer has waived those grounds of opposition.
2 Registration No. 2518066, issued December 11, 2001; Section 8
and 15 affidavits accepted and acknowledged. Applicant
disclaimed the exclusive right to use the word “movie.”
3 Registration No. 2520719, issued December 18, 2001; Section 8
and 15 affidavits accepted and acknowledged. Applicant
disclaimed the exclusive right to use the word “movie.”
Opposition Nos. 91175280
3
Applicant, in its answer, denied the allegations in the
notice of opposition.
The Record
By rule, the record includes applicant’s application
file and the pleadings. Trademark Rule 2.122(b), 37 CFR
§2.122(b). In addition, opposer introduced the following
testimony:
1. The testimony deposition of Barry Lawrence Caren,
the President and CEO of opposer, with attached exhibits;
and,
2. The testimony deposition of Indiana Retana, the
President and owner of applicant, with attached exhibits.
Applicant did not introduce any testimony or evidence
during its testimony period.
Opposer submitted its brief with evidentiary
attachments comprising duplicates of evidence and testimony
previously filed during its assigned testimony period.
Evidence which was timely filed during the parties’ trial
periods need not, and should not, be resubmitted. Life Zone
Inc. v. Middleman Group, Inc., 87 USPQ2d 1953, 1955 (TTAB
2008); Entm't Group Ltd. v. Nintendo of Am. Inc., 45 USPQ2d
2021, 2022 (TTAB 1998). Opposer seems to be under the
impression that attaching previously-filed evidence to a
brief (and citing to the attachments, rather than to the
original testimony) is a courtesy or a convenience to the
Opposition Nos. 91175280
4
Board. It is neither. When considering a case for final
disposition, the entire record is readily available to the
panel. Because we must determine whether such attachments
are properly of record, Trademark Rule 2.123(l), citation to
the attachment requires examination of the attachment and
then an attempt to locate the same evidence in the record
developed during trial, requiring more time and effort than
would have been necessary if citations were directly to the
trial record. Accordingly, we did not consider the
attachments to the brief. We only considered the evidence
that was timely filed during the assigned testimony periods.
Standing and Priority
Barry Lawrence Caren, the President and CEO of opposer,
testified that since 1999, opposer has continuously been
using the mark MOVIE VISION in connection with the products
listed in its federal registrations (i.e., “video
entertainment systems for vehicles; namely, electronic
audio, video and video game components in the nature of
video cassette players, digital video disk players, video
game players and television receivers with video display
devices”).4 Because applicant proffered no testimony

4 Curan Dep., pp. 6-8 and 24. Opposer failed to establish that
its pleaded registrations were subsisting pursuant to the
requirements of Trademark Rule 2.122(d)(2) (testimony by a
witness having knowledge of the current status and title of the
registration). Mr. Curan never testified regarding the current
status of opposer’s pleaded registrations (e.g., Mr. Curan did
not testify that the registrations were subsisting, active, live,
Opposition Nos. 91175280
5
regarding the use of its mark, the earliest date on which
applicant may rely to establish priority is the filing date
of its application (i.e., March 2, 2006).5 Mason
Engineering v. Mateson Chemical, 225 USPQ 956, 960 (TTAB
1985) (in the absence of evidence regarding its date of
first use, the earliest date of first use on which applicant
may rely is the filing date of its application). In view of
the foregoing, we find that Mr. Curan’s testimony proves
both opposer’s personal interest in the outcome of the
proceeding and opposer’s priority of use.
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d

etc.). See Cadence Industries Corp. v. Kerr, 225 USPQ 331, 332,
n.2 (TTAB 1985) (no probative value where testimony established
opposer’s ownership of the registration, but not the current
status).
5 Ms. Retana, applicant’s President, testified that applicant had
not rendered any services under the mark. (Retana Dep., p. 6).
Opposition Nos. 91175280
6
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks”).
A. The similarity of the marks in their entireties in
terms of appearance, sound, meaning, and connotation.

We turn first to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
de Nemours & Co., 177 USPQ at 567. In a particular case,
any one of these means of comparison may be critical in
finding the marks to be similar. In re White Swan Ltd., 9
USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6
USPQ2d 1041, 1042 (TTAB 1988). In addition, in comparing
the marks, we are mindful that the test is not whether the
marks can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression so
that confusion as to the source of the goods offered under
the respective marks is likely to result. San Fernando
Electric Mfg. Co. v. JFD Electronics Components Corp., 565
F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc.
v. Morrison Inc., 23 USPQ 1735, 1741 (TTAB 1991), aff’d
unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The
proper focus is on the recollection of the average customer,
Opposition Nos. 91175280
7
who retains a general rather than specific impression of the
marks. Winnebago Industries, Inc. v. Oliver & Winston,
Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Opposer’s MOVIE VISION marks and applicant’s mark
MOVIEVISION and Design mark are very similar. While the
marks must be compared in their entireties, in analyzing the
similarity or dissimilarity of two marks, there is nothing
improper in stating that for rational reasons, more or less
weight has been given to a particular feature of a mark. In
re National Data Corporation, 753 F.2d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985). In the case of marks consisting of
words and a design, the words are normally given greater
weight because they would be used by consumers to request
the products. See In re Dakin’s Miniatures, Inc., 59 USPQ2d
1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 2
USPQ2d 1553, 1554 (TTAB 1987).
In this case, the word “MovieVision” is the dominant
element of applicant’s mark. The design element is merely a
stylized presentation of the words. By the same token, the
term “Movie Vision” is the dominant portion the opposer’s
MOVIE VISION and design mark. The design element is
subordinate to the term “Movie Vision” and the letters MV
reinforce the term “Movie Vision,” rather than create a
separate commercial impression. In comparing the marks of
Opposition Nos. 91175280
8
the parties, any differences in the way they are displayed
is inconsequential. Inasmuch as MOVIE VISION and
MOVIEVISION are virtually identical, we find that the marks
are substantially similar in terms of their appearance,
sound, meaning and commercial impression.
B. The similarity or dissimilarity and nature of the goods
and services at issue, as well as the classes of
consumers.

Having found that applicant’s mark is very similar to
opposer’s marks, we turn to the similarity or dissimilarity
and nature of applicant’s proposed “pay-per-view television
transmission services featuring recently released movies in
English, Spanish, Cantonese, and Russian via cable” and
opposer’s “video entertainment systems for vehicles; namely,
electronic audio, video and video game components in the
nature of video cassette players, digital video disk
players, video game players and television receivers with
video display devices.”
It is not necessary that the goods and services be
competitive to support a finding of likelihood of confusion.
Rather, it is sufficient that the goods and services are
related in some manner, or that the circumstances
surrounding their marketing are such, that they would be
encountered by the same persons in situations that would
give rise, because of the marks, to a mistaken belief that
they originate from the same source or that there is an
Opposition Nos. 91175280
9
association or connection between the sources of the goods.
See In re Opus One, Inc., 60 USPQ2d 1812, 1815 (TTAB 2001);
In re Melville Corp., 18 USPQ2d 1386, 1387 (TTAB 1991).
Moreover, the greater the degree of similarity between
applicant’s mark and opposer’s marks, the lesser the degree
of similarity between the applicant’s services and opposer’s
goods is required to support a finding of likelihood of
confusion. In re Opus One, Inc., 60 USPQ2d at 1815; In re
Concordia International Forwarding Corp., 222 USPQ 355, 356
(TTAB 1983). Where, as in this case, the applicant’s mark
is substantially similar to the opposer’s mark, there need
only be a viable relationship between the goods and services
to find that there is a likelihood of confusion. See In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed.
Cir. 1993) (“even when the goods or services are not
competitive or intrinsically related, the use of identical
marks can lead to the assumption that there is a common
source”); In re Concordia International Forwarding Corp.,
222 USPQ2d at 356.
There is very little evidence in this record regarding
the relationship between pay-per-view cable services, on the
one hand, and video entertainment systems on the other.
However, Mr. Curan testified that when a user turns on
opposer’s MOVIE VISION equipment, the system displays the
Opposition Nos. 91175280
10
legend, “You have now entered Movie Vision.”6 Furthermore,
Mr. Curan asserted that opposer’s systems are capable of
receiving broadcast movies and other programming through an
antenna,7 and that “[c]ontent and usage are more or less the
same. People are going to be downloading product via the
Internet, via whatever means they can. And that will be
played on our units.”8 The “people” referred to by Mr.
Curan is “[a]nyone who would like to watch a movie,”
“ordinary purchasers,” “people who buy minivans,” “anyone.”9
By the same token, Ms. Retana testified that applicant
intends to render its services through cable television
providers to cable television subscribers.10
In view of the foregoing, we find that purchasers of
opposer’s video entertainment systems and purchasers of
applicant’s pay-per-view cable services would overlap and
said purchasers would be likely to ascribe a common origin
or sponsorship to the goods and services.
C. Balancing the factors.
Because of the similarity of the marks, the similarity
of the goods and services, and similarity of the purchasers,
we find that applicant’s mark MOVIEVISION and Design for
“pay-per-view television transmission services featuring

6 Curan Dep., p. 12.
7 Curan Dep., p. 16.
8 Curan Dep., p. 24.
9 Curan Dep., pp. 13-14.
10 Retana Dep., p. 20.
Opposition Nos. 91175280
11
recently released movies in English, Spanish, Cantonese, and
Russian via cable” is likely to cause confusion with
opposer’s MOVIE VISION marks for “video entertainment
systems for vehicles; namely, electronic audio, video and
video game components in the nature of video cassette
players, digital video disk players, video game players and
television receivers with video display devices.”
Decision: The opposition is sustained and registration
to applicant is refused.