Mnet Media Corp.

Trademark Trial and Appeal Board

Sep 28, 2012

No. 77753457 (T.T.A.B. Sep. 28, 2012)

Mailed:
September 28, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Mnet Media Corp.
________

Serial No. 77753457
_______

Mark J. Liss of Leydig Voit & Mayer Ltd. for Mnet Media
Corp.

Kim Saito, Trademark Examining Attorney, Law Office 102
(Mitchell Front, Managing Attorney).
_______

Before Seeherman, Bucher and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Applicant, Mnet Media Corp., has filed an application
seeking registration on the Principal Register of the
following mark:

for “presentation of musical performance; music video
production; presentation of live show performances;
entertainment in the nature of visual and audio
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77753457
2
performances and musical, variety, and comedy shows; audio
tape production featuring musical performances;
distribution of television programs for others; production
of television programs featuring musical performances;
entertainment services in the nature of live musical
performances; entertainment services in the nature of a
website featuring non-downloadable music files and musical
recordings” in International Class 41.1 The term NET has
been disclaimed. The mark is described in the application
as “consist[ing] of the letter ‘M’ in white contained in a
pink rounded-corner rectangle-shaped graphic element with
the word ‘net’ in pink to the right.” The color pink is
claimed as a feature of the mark.
The examining attorney has issued a final refusal to
register applicant’s mark on the ground that the mark, as
applied to the services recited in the application, so
resembles the mark:

previously registered for services recited in the
registration as, inter alia, “production of educational and

1 Serial No. 77753453, filed on June 5, 2009. The application is
an intent-to-use application filed under Trademark Act Section
Serial No. 77753457
3
informational documentary programs; production of audio and
video news programs” in International Class 41,2 as to be
likely to cause confusion, to cause mistake, or to deceive.
Trademark Act Section 2(d), 15 U.S.C. § 1052(d). Color is
not claimed as a feature and the word NETWORK in the
registered mark is disclaimed.
Applicant filed a request for reconsideration of the
final refusal and appealed the final refusal. The
examining attorney denied the request for reconsideration.
Applicant and the examining attorney then filed appeal
briefs, including a reply brief from applicant.3

1(b), 15 U.S.C. § 1051(b).
2 Reg. No. 3578453, issued on February 24, 2009.
3 In its brief, applicant objected to the examining attorney’s
submission of printouts from online dictionaries with her Office
action denying the request for reconsideration. Applicant argues
that it was prevented from responding to this “new evidence.”
Applicant, with its brief, submitted its own printouts from
online dictionaries which definitions are based on print
dictionaries and requested that the Board consider this
additional information or, in the alternative, not consider the
printouts submitted by the examining attorney. Applicant’s
objection is not well-taken. The examining attorney was well
within her right to attach additional evidence to the Office
action. See TMEP Section 715.03 and authorities cited therein.
In any event, the additional materials submitted by both the
examining attorney and applicant are taken from authoritative
sources and the Board may take judicial notice thereof.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983) and In re Red Bull GmbH, 78 USPQ2d 1375, 1377
(TTAB 2006). Accordingly, we have considered the dictionary-
based materials submitted by both the examining attorney and
applicant.
Serial No. 77753457
4
After careful consideration of the evidence of record
and the arguments presented, we affirm the refusal to
register.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
The first du Pont factor requires us to determine the
similarity or dissimilarity of the marks when viewed in
their entireties in terms of appearance, sound, connotation
and commercial impression. Palm Bay Imports, Inc., 73
USPQ2d at 1691-92. The test, under the first du Pont
factor, 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 or services offered under the
Serial No. 77753457
5
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
and service marks. See Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106 (TTAB 1975).
Applicant’s mark comprises the term MNET in stylized
lettering and featuring the colors pink and white. The
initial letter M is more prominently displayed and
separated from NET as it is more stylized and appears in a
pink box. The cited registered mark likewise emphasizes
the letter M, as it appears in a much larger font above the
word NETWORK. A shadow or shaded design in the form of the
letter M appears in the background and the letters NET are
also shaded lightly versus the remaining lettering.
We recognize that the letter M in the cited mark is
highly stylized, and therefore takes on some of the indicia
of a design mark. See In re Electrolyte Laboratories,
Inc., 929 F.2d 645, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990).
Nevertheless, the “M” will clearly be perceived as the
letter, due the shadow form of the “M.” Therefore, the
marks are similar due to the fact that they both consist of
the prominent letter “M”, followed by either “net” or
“network.” Further, the marks will be pronounced in a
very similar manner because the literal elements comprise
Serial No. 77753457
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the letter M followed by either NET or NETWORK. Likewise,
the literal elements result in the marks having a similar
connotation and commercial impression. That is, the marks
will likely be understood as being the letter “M” followed
by the descriptive term “net” or “network,” which, in the
context of these services, will convey the same meaning.
In fact, the term “net” is defined as meaning “a radio,
television, or telephone network.”4
While the marks may be visually distinguishable if
placed side-by-side based on their respective design and
stylization features, this is not the test and consumers
rarely have the benefit of such a comparison. Sealed Air
Corp. v. Scott Paper Co., 190 USPQ at 108). Rather, we
must consider that consumers often encounter different
marks at various times. The consumers will later try to
recall the marks and, in so doing, are more likely to
remember the previously-viewed marks based on the literal
elements more so than any design, stylization or color
elements. See, e.g., In re Dakin's Miniatures Inc., 59
USPQ2d 1593, 1596 (TTAB 2001); and In re Appetito
Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987). As a
result and with respect to the particular marks at issue in

4 The American Heritage Dictionary of the English Language (4th
Edition, Houghton Mifflin Company).
Serial No. 77753457
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this proceeding, consumers will likely verbalize the marks
in an extremely similar manner when requesting or
identifying applicant’s and registrant’s services, i.e., as
“M Net” or “M Network.”
Applicant argues that the marks can be distinguished
because the registered mark depicts the letter M with a
missing vertical bar and that the M and WORK elements are
further emphasized because they appear in darker lettering
whereas the “shadow” letter M and the NET element appear in
a lighter shade. While applicant is correct in its
description of the registered mark, we disagree as to the
importance of such features in distinguishing the two
marks. We believe consumers will likely focus on the M
NETWORK portion of the registered mark and will accord less
importance to the shading.
Applicant also argues that, with respect to its own
mark, consumers “would be more apt to associate ‘net’ with
‘Internet’ than with ‘Network’.” Brief, p. 4. Again, we
disagree. Given that television-related services are
recited in the application, we find that the term NET will
be more likely understood as meaning “network,” as in a
television network. Indeed, in its brief, applicant
identifies several television networks and states that they
Serial No. 77753457
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“engage in the exact type of programming and production
that Applicant does.” Brief, p. 12.
Ultimately, the dissimilarities between the marks are
outweighed by the points of similarity. The marks are
sufficiently similar such that source confusion is likely
to result should the marks be used in connection with
similar services. The first du Pont factor weighs in favor
of a finding of likelihood of confusion.
The second du Pont factor requires us to determine the
similarity or dissimilarity of the services as identified
in the application and in the cited registration,
respectively. It is settled that it is not necessary that
the respective services be identical or even competitive in
order to find that they are related for purposes of our
likelihood of confusion analysis. That is, the issue is
not whether consumers would confuse the services
themselves, but rather whether they would be confused as to
the source of the services. See In re Rexel Inc., 223 USPQ
830 (TTAB 1984). It is sufficient that the services be
related in some manner, or that the circumstances
surrounding their use be 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
Serial No. 77753457
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associated with the same source or that there is an
association or connection between the sources of the
respective 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);
and In re International Telephone & Telegraph Corp., 197
USPQ 910 (TTAB 1978).
Applicant’s services, as recited in the application,
are generally in the field of entertainment. More
specifically, though, the services include “entertainment
in the nature of visual and audio performances and musical,
variety, and comedy shows; audio tape production featuring
musical performances; distribution of television programs
for others; production of television programs featuring
musical performances.” The cited registration covers
services that include the “production of educational and
informational documentary programs; production of audio and
video news programs.”
Applicant characterizes its services as being “focused
on the music industry and on music performance in
particular. Applicant’s services do not include the
providing of information and news nor the production of
documentaries.” Brief, p. 7. Applicant contends that
registrant’s services, on the other hand, are “exclusively
Serial No. 77753457
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the production of documentaries and news programs.” Id.
Applicant, in its brief, individually addresses the various
services in its application and attempts to distinguish
them from registrant’s services. Applicant concludes that
“the services in this case are so distinct as to make
confusion not likely.” Id. at p. 13.
Based on the record, we find that certain services
found in the application are indeed related to the services
found in the cited registration. Specifically, applicant’s
“production of television programs featuring musical
performances” are related to registrant’s “production of
educational and informational documentary programs” as well
as registrant’s “production of audio and video news
programs.” Although the respective production services
are not for the same topics, i.e., news versus musical
performances, they are certainly related.
The examining attorney has made of record nine use-
based, third-party registrations which include in their
recitations of services both the production of
entertainment services as well as the production of news
and/or documentaries. These registrations are not evidence
that the marks shown therein are in use or that the public
is familiar with them, but they nonetheless have probative
value to the extent that they serve to suggest that the
Serial No. 77753457
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goods or services listed therein are of a kind which may
emanate from a single source under a single mark. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993);
and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB
1988).
In addition to the third-party registrations, the
Trademark Examining Attorney has submitted internet
evidence showing that the same entities actually do engage
in the production of news programs as well as music or
other entertainment programs. As indicated earlier,
applicant compared its services to those of more well-known
networks such as, “MTV, BET, VH1, TVONE, CMT, or GMC.”
Brief, p. 12 (“The corroborated evidence from the Wikipedia
entry shows that [the listed networks] engage in the exact
type of programming and production that Applicant does.”).
While applicant disagrees, we find that the evidence does
show that these specific companies, in addition to
rendering services like applicant’s, are capable of
producing “audio and video news programs” and “educational
and informational documentary programs,” as identified in
the cited registration. The printouts from websites for
many of the aforementioned companies clearly show that they
provide music and other entertainment programs in addition
to “news” and “documentaries” under a single mark. For
Serial No. 77753457
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example, TV ONE is described as airing “original lifestyle,
documentaries, and entertainment-oriented shows, movies,
concert performances….”5 Likewise, BET (Black Entertainment
Television) is described as having provided, at least
initially, a “wide scope of comedy, music, public affairs,
and news programming.”6 Even if we were to construe the
evidence as not conclusively demonstrating that these
entities are currently offering entertainment as well as
news or documentary programming, the evidence at the very
least shows that consumers are not unaccustomed to the idea
of one entity producing music and entertainment programming
in addition to news or documentary programs. Furthermore,
although we can presume, and as the evidence tends to show,
that in most cases the “news” and “documentary” programs
being provided by the aforementioned companies will be in
the field of entertainment, we further note that
registrant’s recitation of services does not limit the
subject matter of its “news programs” or “educational and
informational documentary programs.” Thus we must construe
registrant’s services to include the production of
educational and informational documentary programs or audio
and video news programs in the field of music, e.g., a

5 From printout of www.wikipedia.org, an online encyclopedia,
attached to Office action dated July 8, 2011.
Serial No. 77753457
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documentary on the history of a certain genre of music or
focusing on one specific musical group, e.g., the Beatles.
Again, the respective services need not be the same or
even competitive in order to be sufficiently related for
this du Pont factor to favor a finding of likelihood of
confusion. The issue is not whether purchasers would be
able to distinguish the specific services themselves, but
rather whether they would be likely to assume that there is
some source, sponsorship or other affiliation between the
services. Here, we find there is ample evidence showing
that applicant’s services, in particular its production of
music and entertainment programs, are related to
registrant’s production of documentaries and audio and
video news programs. And if there is a likelihood of
confusion with respect to any of the items that come within
the recitation of services in the application, likelihood
of confusion must be found as to the entire class. See
Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981). The second du Pont
factor accordingly weighs in favor of a finding of
likelihood of confusion.

6 From printout of www.wikipedia.org, attached to Office action
dated July 8, 2011.
Serial No. 77753457
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As to the du Pont factor involving classes of
consumers, the recipients of applicant’s entertainment
services as well as registrant’s news programming services
will be, inter alia, the general public. In this regard,
we must assume the same consumers will encounter said
services. This factor weighs in favor of finding a
likelihood of confusion.
Finally, applicant relies on five third-party
registrations for marks comprising the letter M and NETWORK
(or NET) and internet evidence depicting use of several of
these marks. Applicant argues that this evidence indicates
“the marketplace conditions under which consumers would
encounter Applicant’s mark and the other MNET formative
marks, showing that consumers would be cognizant of the
different companies engaged in different fields and take
care to ensure they are not being confused.” Brief, p. 17.
Specifically, applicant points to the following
registrations:
1. m-Network (Registration No. 3158004) for:
Providing research, design and development of
business-to-business computer software for e-commerce,
and server-based software matching e-commerce buyers
and merchants in International Class 42;7

2. M-NETWORK (Cancelled Registration No. 3046500)
for:

7 Registration issued on October 17, 2006, based on a foreign
registration and without any assertion of use in commerce.
Serial No. 77753457
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Providing research, design and development of
business-to-business computer software for e-commerce,
and server-based software matching e-commerce buyers
and merchants;

3. M/NET (Registration No. 1745593) for:

Computer programs for use in data base management and
user manuals packaged with those computer programs in
International Class 9;

Computer instruction manuals for use in the
development and execution of computer programs in
International Class 38;

4. mNET (Registration No. 3193872) for:
Computer software, namely, software development tools
for the creation of mobile internet applications and
client interfaces in International Class 9; and

5. MNET (Registration No. 1926986) for:
Telecommunications services, namely transmission of
voice, video and data by means of a telecommunications
network; local and long distance telephone services;
facsimile telephone services; telephone operator
services in International Class 38.

Applicant asserts that “just as [the cited]
Registrant’s Mark can peacefully coexist with these five
registrations, so too can Applicant’s mark peacefully
coexist with the Registration.” Id. at 18.
Applicant also relies on a separate application it
filed (Serial No. 77981897) for the same mark as that
involved in this proceeding and covering “rental of audio
recordings; rental of audio discs; digital imaging
services; providing of radio studios; rental of sound
Serial No. 77753457
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recordings; operating of television studios; on-line
publication of electronic books and journals; night clubs”
in International Class 41. This application has matured
into Registration No. 4211967, issued on September 25,
2012.
The existence of the six registrations, including
applicant’s, does not persuade us that a likelihood of
confusion does not exist. We initially point out that the
second-listed registration above has been cancelled and was
owned by the same entity that owns the first listed
registration.8 Moreover, third-party registrations are not
evidence that the marks are in use, or that the public is
aware of them.9 Although they can be used in the manner of
dictionaries, to show that a term has a certain meaning or
significance within an industry, and as a result multiple
entities have adopted marks which include that term because
of its significance, we cannot conclude that MNET or
MNETWORK has a particular significance for applicant’s or
the cited registrant’s services. As to applicant’s
internet evidence showing that certain registered marks are
being used, this evidence has little persuasive value. The
Bloomberg Businessweek website merely identifies and

8 Registration cancelled on August 24, 2012, pursuant to Section
8.
Serial No. 77753457
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briefly describes Intuwave Ltd. (owner of the first two
listed registrations) in a “private company information,”
and provides their address and headquarters in England
without any mention of a presence in the United States.
The remaining internet printouts, comprising three pages,
are extremely limited in what they show and it is not
possible to determine the extent of exposure for these
third-party marks. In any event, these printouts describe
the third-party marks in the context of fields of use that
are wholly different from the production of entertainment
or news programming.
In addition to the third-party registrations lacking
relevance because, by themselves, they are not evidence of
use of the marks, we note they also cover goods and
services that are significantly different from the services
recited in the involved application and cited registration.
Four of the third-party registrations involve computer
software or related computer services and are thus totally
unrelated to the production of news or entertainment
programming. Only one third-party registration is not for
computer software and services, and that registration
involves telecommunications services. Applicant’s own

9 In fact, as noted in footnote 7, Registration No. 3158004 is
not even based on use in the United States.
Serial No. 77753457
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registration likewise covers services such as the rental of
recordings, publication of electronic books and journals,
and night clubs; it has not been shown nor is it self-
evident how these services are related to those recited in
the involved application and cited registration.
Taken together, these five third-party registrations,
and applicant’s own registration, hardly suffice to show
that the elements M and NET(WORK) are so commonly adopted
that they have a meaning in the industry, and/or that
consumers would distinguish the involved marks based on the
other stylistic elements in these marks.
We have carefully considered the entire record and all
of the arguments and evidence submitted by applicant and
the examining attorney. As discussed, applicant’s mark is
similar to that of the cited registrant, and the involved
services will both be offered to the same class of
consumers, i.e., the general public, and are otherwise
related in that they are of a type which may emanate from a
common source.
Decision: The refusal to register under Trademark Act
§ 2(d) is accordingly affirmed.