Medusa Film S.p.A.

Trademark Trial and Appeal Board

Jul 15, 2004

No. 76350858 (T.T.A.B. Jul. 15, 2004)

Mailed:
July 15, 2004
Hearing: Paper No. 15
May 12, 2004 Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Medusa Film S.p.A.
________
Serial No. 76350858
_______
James V. Costigan of Hedman & Costigan, P.C. for Medusa
Film S.p.A.
Josette M. Beverly, Trademark Examining Attorney, Law
Office 112 (Janice O’Lear, Managing Attorney).
_______
Before Seeherman, Quinn and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
On December 14, 2001, applicant filed the above-
captioned application seeking registration on the Principal
Register of the mark MEDUSA EMOTION PICTURE (in typed form)
for various goods and services in Classes 9, 16, 35, 38 and
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76350858
2
41.1 Applicant has voluntarily disclaimed the exclusive
right to use EMOTION PICTURE apart from the mark as shown.
1 The application is based on applicant’s asserted bona fide
intention to use the mark in commerce, pursuant to Trademark Act
Section 1(b), 15 U.S.C. §1051(b), and on applicant’s ownership of
Italian Registration No. 00855327, pursuant to Trademark Act
Section 44(e), 15 U.S.C. §1126(e). The goods and services
identified in the application (as amended) are as follows:
Cinematographic film; television sets; decoders for
television sets namely devices for visualizing special
TV transmissions; radios; radio and audio tape
recorders; radio transmitters; radio-telephones;
compact discs featuring music; compact disc players
for music; cd-rom and audio cassettes featuring music;
video tapes containing works of fiction namely movies,
TV movies; video tape recorders; photographic cameras;
telecameras; cinematographic cameras; spectacles;
stereo amplifiers; computer operating programs;
computers; computer printers; modems; facsimile
machines; telephone sets namely telephones and
telephone answering machines, in International Class
9;
Books about art; books about cinema; books about
history; books about geography; books about sports;
fiction-books; poetry books; dictionaries; newspaper
comic strips; newspaper cartoons; periodicals about
cinema; periodicals about history; periodicals about
sport; periodicals about geography; periodicals about
computers; periodicals of fiction; mail order catalogs
featuring video cassettes and DVDs containing works of
fiction and documentaries; CDs, audio cassettes and
cd-roms featuring music, books about cinema, fiction-
books; periodicals about cinema and television;
photographs; envelopes; letter paper; self-adhesive
address labels; posters; visiting cards; diaries, in
International Class 16;
Dissemination of advertising matter; business
consultation; public relations and market research
services, and direction of cinema-halls on behalf of
others, in International Class 35;
Activity consisting of television broadcasting and
television program transmission; an activity
consisting of cable television transmission; an
activity in the field of electronic transmission of
Ser. No. 76350858
3
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark as to
the Class 9 goods and the Class 41 services identified in
the application.2 See supra at footnote 1. The ground for
data and documents via computer terminals; an activity
consisting of computer aided recording storage and
subsequent transmission of voice and image messages
through electronic mail and provider services;
internet provider services, in International Class 38;
and
Writing television and radio program scripts;
television and cinema motion picture production and
distribution of television and cinema motion pictures
for others; music production services; film editing,
namely, print negative film cutting; radio and cinema
studio rental; cinema studios; direction of cinema-
halls, namely, activity consisting of choosing films
to be shown, on own behalf or on behalf of others, in
cinema-halls; video record and cinema motion picture
hire; rental of sound recordings; show production and
performances; theater performances; publication of
books, magazines and music; modeling for artists; live
musical and song performances; discotheques; motion
picture film production; motion picture song
production; motion picture theaters; cinema theaters;
organizing community festivals featuring a variety of
activities, namely, sporting events, art exhibitions,
flea markets, ethnic dances and the like; organizing
exhibitions for cinema amateurs; conducting workshops
and seminars about motion pictures, in International
Class 41.
2 No refusal was made as to the goods and services in Classes 16,
35 and 38. We note that applicant’s counsel, in applicant’s June
12, 2003 notice of appeal, authorized and requested that its
Deposit Account be charged in the sum of five hundred dollars for
“the appeal fee.” Because the final refusal at issue on appeal
pertains only to two classes, not five, the proper appeal fee was
two hundred dollars. See Trademark Rule 2.6(a)(18). The Board
accordingly shall process a credit to counsel’s Deposit Account
in the sum of three hundred dollars.
Ser. No. 76350858
4
the refusal to register is that applicant’s mark so
resembles the mark depicted below,
previously registered3 (with a disclaimer of PICTURES) for
Class 41 services recited in the registration as “motion
picture film and video tape production services in the
areas of corporate training films, original narrative films
for broadcast on network and cable, and feature-length
motion pictures,” as to be likely, when used on or in
connection with the Class 9 goods and the Class 41 services
identified in applicant’s application, to cause confusion,
to cause mistake, or to deceive. See Trademark Act Section
2(d), 15 U.S.C. §1052(d).
3 Registration No. 2365987, issued July 11, 2000 on the Principal
Register. The registration includes the following “Description
of Mark” statement: “The mark consists of the wording ‘Emotion
pictures’ with the fanciful design of a strip of film with a
projection camera lens.”
Ser. No. 76350858
5
Applicant and the Trademark Examining Attorney filed
main appeal briefs, but applicant filed no reply brief. An
oral hearing was held at which applicant’s counsel and the
Trademark Examining Attorney presented arguments.4 We
affirm the refusal to register.
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
likelihood of confusion factors set forth in In re E. I. du
Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In considering the evidence of record on these
factors, we keep in mind that “[t]he 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.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
The second du Pont evidentiary factor requires us to
consider evidence pertaining to “the similarity or
dissimilarity and nature of the goods or services as
described” in the applicant’s application and in the cited
4 The Trademark Examining Attorney identified on page 1 of this
order submitted the appeal brief and appeared at the oral
hearing. A different Trademark Examining Attorney handled the
application prior to appeal.
Ser. No. 76350858
6
registration. It is not necessary that the respective
goods or services be identical or even competitive in order
to support a finding of likelihood of confusion. Rather,
it is sufficient that the goods 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 source or that there is an
association or connection between the sources of the
respective goods or services. See In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed.
Cir. 1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991); In re International Telephone & Telegraph Corp., 197
USPQ2d 910 (TTAB 1978).
We find that the Class 41 services broadly recited in
the cited registration as “motion picture film and video
tape production services in the areas of corporate training
films, original narrative films for broadcast on network
and cable, and feature-length motion pictures,” are legally
identical to the Class 41 services broadly recited in
applicant’s application as “television and cinema motion
picture production” and “motion picture film production.”
Ser. No. 76350858
7
We also find that the registrant’s recited services are
similar and related (even if not identical) to the Class 9
goods identified in applicant’s application as “video tapes
containing works of fiction namely movies, TV movies.” The
legal identity and/or similarity and relatedness of the
respective goods and services is apparent from the wording
of applicant’s and registrant’s respective identifications
of goods and/or services. See Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002). Applicant’s counsel conceded as much at the
oral hearing in this case. Thus, we find that the second
du Pont evidentiary factor weighs in favor of a finding of
likelihood of confusion.5
Given the legal identity and/or similarity of
registrant’s services and the above-referenced goods and
services of applicant, and the absence of any restrictions
5 If a likelihood of confusion is found to exist as to any of the
Class 9 goods or Class 41 services listed in applicant’s
application, then refusal of registration as to all of the Class
9 goods and Class 41 services identified in the application is
proper. See Tuxedo Monopoly, Inc. v. General Mills Fun Group,
648 F.2d 1335, 209 USPQ 986 (CCPA 1981); Shunk Manufacturing
Company v. Tarrant Manufacturing Company, 137 USPQ 881 (CCPA
1963); Alabama Board of Trustees v. BAMA-Werke Curt Baumann, 231
USPQ 408, 411 n.7 (TTAB 1986); and In re Alfred Dunhill Ltd., 224
USPQ 501 (TTAB 1984). Thus, we need not and do not decide
whether a likelihood of confusion exists with respect to
applicant’s Class 9 goods other than “video tapes containing
works of fiction namely movies, TV movies,” or with respect to
applicant’s Class 41 services other than “television and cinema
motion picture production” and “motion picture film production.”
Ser. No. 76350858
8
or limitations in registrant’s and applicant’s
identifications of goods and/or services, we also find that
the trade channels and classes of purchasers for these
respective goods and services are the same or similar. See
In re Elbaum, 211 USPQ 639 (TTAB 1981). We also find that
the purchasers of these goods and services are normal
consumers, television watchers and movie-goers, who would
exercise only normal care in deciding to purchase the goods
and/or services. These facts weigh in favor of a finding
of likelihood of confusion.
We next must determine whether applicant’s mark and
the cited registered mark, when compared in their
entireties in terms of appearance, sound and connotation,
are similar or dissimilar in their overall commercial
impressions. 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 that confusion
as to the source of the goods offered under the respective
marks is likely to result. 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). Furthermore, although the marks at issue must be
Ser. No. 76350858
9
considered in their entireties, 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 in determining the commercial impression created by
the mark. See In re National Data Corp., 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985). Finally, where, as in the
present case, the marks would appear on virtually identical
goods and services, the degree of similarity between the
marks which is necessary to support a finding of likely
confusion declines. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed.
Cir. 1992).
We begin by finding that the dominant feature in the
commercial impression created by the cited registered mark
is the wording in the mark, i.e., EMOTION PICTURES. In
many cases, it is the wording in the mark which has a
greater source-indicating impact on the purchaser, because
often it is the wording which the purchaser is more likely
to use to refer to the goods or services sold under the
mark. In re Appetito Provisions Co. Inc., 3 USPQ2d 1553
(TTAB 1987). We find that this is such a case, for the
following reasons.
First, we find that the wording in registrant’s mark,
EMOTION PICTURES, is highly distinctive and that it thus
Ser. No. 76350858
10
serves a strong source-indicating function.6
Notwithstanding registrant’s disclaimer of PICTURES, we
find that EMOTION PICTURES is a cleverly-constructed (and
arguably unitary) phrase. It transforms a term which is
generic as applied to the registrant’s services, i.e.,
“motion pictures,” into a witty and memorable double
entendre which suggests both motion pictures themselves and
the emotions that such motion pictures can evoke in the
audience. Applicant argues that because motion pictures
can evoke emotions, EMOTION PICTURES is “descriptive” of
registrant’s (and applicant’s) services.7 In making this
argument, applicant either fails to appreciate or ignores
the obvious double entendre nature of the phrase.
6 This case thus is distinguishable from In re Electrolyte
Laboratories Inc., 929 F.2d 645, 16 USPQ2d 1239 (Fed. Cir. 1990),
a case upon which applicant places great reliance. In that case,
the literal portion of the mark was highly descriptive of the
goods. The design element of the mark therefore was found to
contribute relatively more to the mark’s commercial impression.
7 To the extent that applicant is arguing that the wording
EMOTION or EMOTION PICTURES in the cited registered mark is
merely descriptive and that the mark therefore should not have
been registered without a disclaimer of that wording, we note
that, aside from its unpersuasiveness, such argument constitutes
an impermissible attack on the validity of the cited registration
which cannot be entertained in the context of this ex parte
proceeding. See In re Dixie Restaurants, 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997); In re C.F. Hathaway Company, 190
USPQ 343 (TTAB 1976); TMEP §1207.01(d)(iv). Also, applicant’s
voluntary disclaimer (in its own application) of the wording
EMOTION PICTURES is not evidence that this phrase is merely
descriptive, nor does it have any effect on our likelihood of
confusion analysis. See In re MCI Communications Corp., 21
USPQ2d 1534 (Comm’r Pats. 1991); TMEP §1213.01(c).
Ser. No. 76350858
11
Second, although we cannot and do not ignore the
design element in the cited registered mark, we find that
it contributes relatively less to the mark’s commercial
impression than does the wording in the mark. The design
element is highly stylized, almost abstract.8 It is not
easy to verbalize, or even to understand, just what it is
that the design depicts and what it means. Purchasers, who
utilize the mark as a means of identifying and
distinguishing the source of the services, will more
readily perceive, understand and recall the wording EMOTION
PICTURES than they will the design element. The design
element serves as a decorative (albeit evocative)
background for that wording.
For these reasons, we find that it is the wording in
the cited registered mark which plays the greater source-
indicating role in the mark’s commercial impression, and we
therefore accord to it greater weight in our comparison of
applicant’s and registrant’s marks. See In re National
Data Corp., supra.
8 As noted above, the “Description of Mark” statement in the
registration states that the non-literal portion of the mark
depicts “a fanciful design of a strip of film with a projection
camera lens.” Of course, purchasers viewing the mark are not
privy to this statement in the registration, and they therefore
will not be aided by it in their efforts to perceive or
understand what it is that the mark depicts.
Ser. No. 76350858
12
Turning now to that comparison, we find that
applicant’s mark is identical to the cited registered mark
in terms of appearance, sound and connotation to the extent
that both marks include the phrase EMOTION PICTURE(S). The
marks are visually dissimilar to the extent that the cited
registered mark includes a design element, and applicant’s
mark includes the house mark MEDUSA. Likewise, the
presence of the word MEDUSA in applicant’s mark renders the
marks non-identical in terms of pronunciation and
connotation.
Viewing the marks in their entireties, we find that
the similarity between the marks which arises from the
presence in both marks of the distinctive, double entendre
phrase EMOTION PICTURE(S) outweighs the points of
dissimilarity between the marks. First, the fact that
applicant’s mark uses the singular PICTURE while
registrant’s mark uses the plural PICTURES does not serve
to distinguish the marks’ overall commercial impressions in
any meaningful way. Second, as discussed above, the design
element in the cited registered mark is subordinate to the
wording EMOTION PICTURES in the overall commercial
impression of the mark; it plays more of a background role
in the mark’s commercial impression. Although we do not
ignore the design element, we find that its presence in the
Ser. No. 76350858
13
registered mark does not suffice to distinguish the two
marks when they are viewed in their entireties. Purchasers
encountering goods and services sold under marks which both
include the distinctive wording EMOTION PICTURE(S) are
likely to mistakenly assume that a source connection
exists, even if one of the marks has the design element and
the other does not.
Finally, we find that applicant’s inclusion in its
mark of the house mark MEDUSA does not eliminate the
confusing similarity between the marks which arises from
the presence in both marks of the distinctive wording
EMOTION PICTURE(S). The addition of a house mark or trade
name to one of two otherwise confusingly similar marks
generally does not serve to avoid a likelihood of confusion
between them, except (1) where there are other recognizable
and significant differences between the marks, such that
the addition of the house mark is enough to render the
marks as a whole distinguishable, or (2) where the wording
which is common to both marks is merely descriptive of the
goods or services, or is otherwise lacking in source-
indicating significance. See In re Hill-Behan Lumber
Company, 201 USPQ 246 (TTAB 1978); Envirotech Corporation
v. National Service Industries, Inc., 197 USPQ 292 (TTAB
1977); In re C.F. Hathaway Company, 190 USPQ 343 (TTAB
Ser. No. 76350858
14
1976); see also J. Thomas McCarthy, McCarthy on Trademarks
and Unfair Competition at §23:43 (4th ed. June 2001).
Neither exception applies in this case. As discussed
above, the differences between the marks (i.e., the
singular PICTURE versus the plural PICTURES, and the
presence of the design element in the registered mark) are
not so significant in themselves that the addition of the
house mark renders the marks as a whole distinguishable.
Likewise, as discussed above, the wording EMOTION
PICTURE(S) in the two marks is not descriptive but rather
is distinctive; applicant’s addition of its house mark to
this distinctive wording does not distinguish the marks as
a whole.9
For these reasons, we find that applicant’s mark is
more similar than dissimilar to the cited registered mark.
Applicant’s mark certainly is sufficiently similar to the
cited registered mark that source confusion is likely to
result from the use of these marks on the identical and
closely related goods and services involved herein. See
9 Applicant argues that its mark, unlike the cited registered
mark, connotes the “emotion picture” of a particular individual,
i.e., Medusa. We find this argument to be wholly unpersuasive.
Applicant’s mark is MEDUSA EMOTION PICTURE, not the possessive-
form MEDUSA’S EMOTION PICTURE. Moreover, it is highly unlikely
that consumers would assume that there is an actual person
(unflatteringly) named Medusa who possesses or is the source of
the “emotion picture,” much less that it is the mythical gorgon
herself who possesses or is the source of the “emotion picture.”
Ser. No. 76350858
15
Century 21 Real Estate Corp. v. Century Life of America,
supra.
Applicant argues that there is no evidence that the
cited registered mark is famous, and that, by contrast, its
own MEDUSA mark and name are famous. While evidence
establishing the fame of the prior registered mark would
weigh heavily in support of a finding of likelihood of
confusion, the absence of such evidence does not weigh
against a finding of likelihood of confusion. Moreover,
the fame of the cited registered mark is usually not a
factor in an ex parte case such as this; evidence of such
fame (i.e., sales and advertising figures) is not readily
available to the Trademark Examining Attorney. Finally,
applicant’s assertion that its own mark is famous is not
supported by the record, and any such fame would be
irrelevant to our likelihood of confusion determination in
any event. The fifth du Pont factor requires consideration
of evidence pertaining to “the fame of the prior mark,”
which in the context of an ex parte case means the fame of
the cited registered mark.
Applicant also contends that it “conducted a
preliminary search of the USPTO online databases and found
204 current registrations which employ the term EMOTION in
various international classes.” Applicant did not make any
Ser. No. 76350858
16
such registrations of record, but the Trademark Examining
Attorney has not objected on this basis and in fact has
presented argument as to the import of the existence of
such registrations. We thus shall assume that applicant is
correct in its assertion that there are 204 current
registrations of marks which employ some form of the word
EMOTION.
However, we are not persuaded by this “evidence” that
EMOTION is a weak or diluted term as applied to the goods
and services at issue here, or that the cited registered
mark therefore should be accorded a narrow scope of
protection, as applicant argues. Third-party registrations
are not evidence that the marks are currently in use or
that the public is aware of them, and they therefore are of
no probative value under the sixth du Pont evidentiary
factor (i.e., “the number and nature of similar marks in
use on similar goods”). See Olde Tyme Foods Inc. v.
Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir.
1992). Moreover, because none of the alleged third-party
registrations is of record, we do not know what the
registered marks are or what the goods and services
identified in the registrations are. Thus, we cannot
conclude that EMOTION is so highly suggestive of the goods
Ser. No. 76350858
17
and services involved herein that the cited registration
should be accorded a narrow scope of protection.
In any event, the alleged existence of these third-
party registrations which employ the word EMOTION is beside
the point in this case. Whatever suggestive significance
the word EMOTION, by itself, might have as applied to
motion pictures, it is the highly distinctive double
entendre EMOTION PICTURE(S), not just the word EMOTION,
that is at issue in this case. Thus, we disagree with
applicant’s contention that the word EMOTION is “the only
common element” of applicant’s mark and the cited
registered mark. Rather, the two marks share the
distinctive and unitary phrase EMOTION PICTURE(S). Indeed,
it appears on this record that applicant’s mark and the
cited registered mark are the only marks which use this
distinctive double entendre. This fact weighs in favor of,
not against, a finding of likelihood of confusion.
Having considered all of the evidence of record
pertaining to the relevant du Pont evidentiary factors, we
conclude that applicant’s mark so resembles the cited
registered mark as to be likely, when used on or in
connection with the Class 9 goods identified in applicant’s
application as “video tapes containing works of fiction
namely movies, TV movies” and the Class 41 services recited
Ser. No. 76350858
18
in applicant’s application as “television and cinema motion
picture production” and “motion picture film production,”
to cause confusion, to cause mistake, or to deceive. See
Trademark Act Section 2(d), 15 U.S.C. §1052(d).
Decision: The Section 2(d) refusal of registration
as to Classes 9 and 41 is affirmed. However, the
application shall proceed to publication in the Official
Gazette as to the goods and services in Classes 16, 35 and
38.