Media.Net Communi-cations, Inc.

Trademark Trial and Appeal Board

Jul 18, 2002

No. 75780993 (T.T.A.B. Jul. 18, 2002)

Mailed: July 18, 2002
Paper No. 10
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Media.Net Communications, Inc., by change of name
from XL Networks, Inc.1
________
Serial No. 75/780,993
_______
Francie R. Gorowitz of O’Melveny & Myers LLP for applicant.
Michael L. Engel, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Simms, Walters and Chapman, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
On August 20, 1999, Media.Net Communications, Inc., by
change of name from XL Networks, Inc. (a Delaware
corporation) filed an application to register the mark
MEDIA.NET COMMUNICATIONS on the Principal Register for
services identified, as amended, as “providing high
1 Applicant’s change of name is recorded with the Assignment
Branch of the USPTO at reel 2035, frame 0984.
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75/780993
2
bandwidth fiber optic network services to medium and large
sized businesses in the entertainment industry, which
enables them to create, produce, edit and distribute
various entertainment and media products” in International
Class 38. Applicant disclaimed the word “communications.”
The application is based on applicant’s assertion of a bona
fide intention to use the mark in commerce.
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used in connection with its
identified services, so resembles the mark MEDIANET, which
is registered for “communication services, namely,
transmitting the data and messages of others between
terminals, primarily via coaxial cable” in International
Class 38,2 as to be likely to cause confusion, or to cause
mistake, or to deceive.
When the refusal was made final, applicant appealed to
this Board. Both applicant and the Examining Attorney have
briefed the issue before us, and an oral hearing was not
requested.
2 Registration No. 2,118,639, issued December 9, 1997. The
original applicant in this registration was Media General Cable
of Fairfax County, Inc. (a Virginia corporation). Prior to
registration, the application was assigned and the registration
issued to Dymaxion Research, Ltd. (a Canadian corporation). See
reel 1539, frame 0488.
Ser. No. 75/780993
3
We affirm the refusal to register. In reaching this
conclusion, we have followed the guidance of the Court in
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976); and In
re Azteca Restaurant Enterprises Inc., 50 USPQ2d 1209 (TTAB
1999).
We turn first to a consideration of the registrant’s
services and applicant’s services. It is well settled that
goods and/or services need not be identical or even
competitive in order to support a finding of likelihood of
confusion. Rather, it is sufficient that the goods and/or
services are related in some manner or that the
circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons
in situations that would give rise, because of the marks
used thereon, to a mistaken belief that they originate from
or are in some way associated with the same producer or
that there is an association between the producers of the
goods and/or services. See In re Martin’s Famous Pastry
Ser. No. 75/780993
4
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984); and In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001).
Further, it has been repeatedly held that in
determining the registrability of a mark, this Board is
constrained to compare the goods and/or services as
identified in the application with the goods and/or
services as identified in the registration. See In re
Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed.
Cir. 1997); Octocom Systems Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1990); and Canadian Imperial Bank of Commerce, National
Association v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987).
Applicant argues that its services are fiber optic
network services sold only to medium and large sized
business in the entertainment industry, whereas registrant
offers its network primarily by coaxial cable and it is in
Fairfax County, Virginia only. Applicant submitted into
the record the file history of the cited registration
including the specimen contained therein. In the specimen
registrant describes its MEDIANET services as “a broadband
cable network” which “interconnects business firms, public
offices, financial institutions and health care facilities
in Fairfax County...”; and it also specifically states that
Ser. No. 75/780993
5
“the MEDIANET cable network will be supplemented with
microwave links and/or fiber optic links” and registrant
“will build dedicated coaxial cable or fiber optic links
for customers, on request.”
Even though applicant has restricted its
identification of services to a fiber optic network,
registrant’s identified services are not solely restricted
to coaxial cable, and in fact, registrant’s identification
specifically refers to “primarily” carried via coaxial
cable, clearly implying that other methods of delivery are
included. (Registrant’s specimen makes clear that fiber
optic is one of those other available delivery methods.)
Also, applicant’s identification of services sets forth a
specific set of consumers, namely, “medium and large sized
businesses in the entertainment industry.” However, the
cited registrant’s services, identified as “communications
services, namely transmitting the data and messages of
others between terminals...” is not so limited, and
therefore encompasses medium and large sized businesses in
the entertainment industry. Thus, the cited registration’s
identification of services encompasses the more specific or
limited nature of applicant’s identified services. There
is no restriction in the cited registrant’s identification
of services limiting same to Fairfax County, Virginia
Ser. No. 75/780993
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businesses and residents. Applicant’s and registrant’s
services are essentially the same or closely related
services, except for the means of providing the services,
with fiber optic being the more recent technology.
Based on the record before us, we readily conclude
that applicant’s services, as identified, are encompassed
by and otherwise closely related to the cited registrant’s
broadly identified services, and would be sold through
similar channels of trade to the same class of purchasers.
See Octocom Systems Inc. v. Houston Computer Services Inc.,
supra, at 1787.
Applicant argues that the customers for both
applicant’s and registrant’s services are careful,
sophisticated purchasers, each seeking a specialized
service, and these purchasers will fully understand and
distinguish these services. Even if we assume that the
purchasers of the services in question in the instant case
are sophisticated purchasers, and that the purchase of the
respective services is done after careful consideration,
this does not mean that such purchasers are immune from
confusion as to the origin of the respective services,
especially when sold under similar marks. See Wincharger
Corporation v. Rinco, Inc., 297 F.2d 261, 132 USPQ 289
(CCPA 1962); and In re Decombe, 9 USPQ2d 1812 (TTAB 1988).
Ser. No. 75/780993
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That is, even relatively sophisticated purchasers and users
of these services, including people in medium and large
businesses in the entertainment industry, could believe
that these services come from the same source, if
identified by substantially similar marks. See Weiss
Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990); and Aries Systems Corp. v.
World Book Inc., 23 USPQ2d 1742, footnote 17 (TTAB 1992).
Turning next to a consideration of the respective
marks, it is well settled that marks must be considered in
their entireties as to the similarities and dissimilarities
thereof. However, our primary reviewing court has held
that in articulating reasons for reaching a conclusion on
the question of likelihood of confusion, there is nothing
improper in stating that, for rational reasons, more or
less weight has been given to a particular feature or
portion of a mark. That is, one feature of a mark may have
more significance than another. See Sweats Fashions Inc.
v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798
(Fed. Cir. 1987); and In re National Data Corporation, 753
F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985).
In this case, both applicant’s mark and registrant’s
mark share the term MEDIANET or MEDIA.NET, the former being
registrant’s mark in its entirety and the latter being the
Ser. No. 75/780993
8
dominant part of applicant’s mark. Applicant acknowledges
and agrees that the dominant portion of its mark is
MEDIA.NET. (See applicant’s brief, p. 3 and applicant’s
reply brief, p. 1.)
However, applicant contends that the “.” in
applicant’s mark would be read as “dot” not simply as a
“period”; and that applicant’s mark then creates a
different commercial impression being that of a domain
name, while registrant’s does not. We agree that the “.”
in applicant’s mark is likely to be read as “dot.” But, we
do not find that this changes the connotation or commercial
impression of applicant’s mark significantly from that of
registrant’s mark, MEDIANET. In fact, purchasers familiar
with registrant’s services sold under the registered mark
MEDIANET may, upon seeing applicant’s mark MEDIA.NET
COMMUNICATIONS on the same or closely related services,
assume that registrant is now using its mark MEDIANET as a
domain name, and that the services originate from the same
entity.
Further, under actual market conditions, consumers
generally do not have the luxury of making side-by-side
comparisons. The proper test in determining likelihood of
confusion is not a side-by-side comparison of the marks,
but rather must be based on the similarity of the general
Ser. No. 75/780993
9
overall commercial impressions engendered by the involved
marks. See Puma-Sportschuhfabriken Rudolf Dassler KG v.
Roller Derby Skate Corporation, 206 USPQ 255 (TTAB 1980).
The differences in the marks (applicant’s addition of a “.”
and the highly descriptive/generic word “communications”)
do not serve to distinguish the marks in issue here. That
is, purchasers are unlikely to remember the specific
differences between the marks due to the recollection of
the average purchaser, who normally retains a general,
rather than a specific, impression of the many trademarks
encountered. See Grandpa Pidgeon’s of Missouri, Inc. v.
Borgsmiller, 477 F.2d 586, 177 USPQ 573 (CCPA 1973); Spoons
Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735 (TTAB
1991), aff’d unpub’d (Fed. Cir., June 5, 1992); and Edison
Brothers Stores v. Brutting E.B. Sport-International, 230
USPQ 530 (TTAB 1986).
We find that applicant’s mark MEDIA.NET COMMUNICATIONS
and registrant’s mark MEDIANET, although obviously not
identical, are similar in sound, appearance, connotation
and commercial impression. Purchasers would assume that
applicant’s services come from the same source as
registrant’s services, or are somehow sponsored by or
associated with registrant, when offered under these
respective marks.
Ser. No. 75/780993
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Finally, applicant argues that registrant’s mark
MEDIANET is “highly suggestive” of its “communications
through the medium of a cable network,” and is “only
entitled to a narrow scope of protection.” (Brief, p. 4.)
Applicant offered no evidence to support its contention
that registrant’s mark should be afforded only a narrow
scope of protection. Even if we were to assume that the
mark MEDIANET is highly suggestive of registrant’s
services, which we do not, it is nonetheless a mark
registered on the Principal Register and entitled to
protection under the Trademark Act.
Decision: The refusal to register under Section 2(d)
is affirmed.