Mnet Media Corp.

Trademark Trial and Appeal Board

Sep 26, 2012

No. 77753453 (T.T.A.B. Sep. 26, 2012)

Mailed:
September 26, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Mnet Media Corp.
________

Serial No. 77753453
_______

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 “cable television broadcasting; satellite television
broadcasting; radio broadcasting; video-on-demand
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77753453
2
transmission services; pay-per-view television transmission
services; digital video broadcasting; digital television
broadcasting; internet broadcasting” services in
International Class 38.1 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 MNET (in typed character form),
previously registered for services recited in the
registration as “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 Class 38,2 as to be likely to cause

1 Serial No. 77753453, filed on June 5, 2009. The application is
an intent-to-use application filed under Trademark Act Section
1(b), 15 U.S.C. § 1051(b).
2 Reg. No. 1926986 issued on October 17, 1995; renewed.

Serial No. 77753453
3
confusion, to cause mistake, or to deceive. Trademark Act
Section 2(d), 15 U.S.C. § 1052(d).
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.
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
Serial No. 77753453
4
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
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 slightly more prominent and separated
from NET inasmuch as it is more stylized and appears in a
pink box. The cited registered mark is MNET in typed
characters. The word NET is descriptive and is disclaimed
by applicant in the involved application.
Applicant’s and registrant’s marks are extremely
similar in terms of appearance and would be pronounced
identically to the extent that the marks contain the same
terms. As noted, there is more emphasis on the letter “M”
in applicant’s mark; however, consumers will also likely
Serial No. 77753453
5
separate the letter “M” in the registered mark because
“net” is a pronounceable word and also in view of the
services, i.e., the term “net” is also descriptive of
registrant’s “network” services.3 Moreover, because the
registrant’s mark is registered in typed form, it is
entitled to protection for all manners in which the mark
may be depicted, including in the same type fonts as
applicant’s mark, and with the letter “M” emphasized.
In terms of connotation and the commercial impression
created by the marks, we find that the literal elements
would be perceived as having the same meaning in the minds
of consumers. That is, each mark will be understood as
having the letter “M” followed by descriptive term, “net.”
It has not been shown that the letter “M” combined with
“net” has a recognized or particular meaning in connection
with the services identified in the application and cited
registration.
Applicant argues that “users of the registrant’s
services clearly would understand that the mark ‘MNET’ is
an initialism for the words ‘Minnesota Network for
Enterprise Telecommunications’” (brief, p. 11); however,
the record does not show that this is common knowledge or

3 NET is defined as “A radio, television, or telephone network.”
The American Heritage Dictionary of the English Language (4th
Serial No. 77753453
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so well-known consumers will make such a connection. We
cannot assume that consumers will necessarily be aware that
MNET is meant to be an abbreviation for this phrase.
On balance, the marks are more similar than not when
viewed in their entireties in terms of appearance, sound,
connotation and commercial impression. 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

Edition, Houghton Mifflin Company).

Serial No. 77753453
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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
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 are identified as follows:
cable television broadcasting; satellite television
broadcasting; radio broadcasting; video-on-demand
transmission services; pay-per-view television
transmission services; digital video broadcasting;
digital television broadcasting; internet
broadcasting.

The services identified in the cited registration are:

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.

Applicant describes its services as being “limited
strictly to broadcasting and transmissions. They do not
allow for a method of interactive communication, but are
instead the one-way providing of information from a media
Serial No. 77753453
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outlet, such as a television station, to the viewer or
listener. ...[Its services are] directed at using radio,
television, and existing internet connections to provide
the public with information and entertainment content.”
Brief, pp. 4-5. Applicant contends that registrant’s
services, on the other hand, are “strictly
telecommunications services”; that registrant is “not
providing content, but instead the methods to communicate
with one another such as by telephone, facsimile, and the
internet”; and that such services “include no broadcast-
type services.” Id., p. 5.
The examining attorney sets forth two arguments
regarding the similarity of the services. First, she
asserts that the respective services are overlapping.
Specifically, the examining attorney relies on the word
“telecommunications” being defined as “[t]he transmission
of information, as words, sounds, or images, usually over
great distances, in the form of electromagnetic signals, as
by telegraph, telephone, radio, or television.”4 She
further notes that the registration’s recitation of
services specifies the “transmission of voice, video and
data by means of a telecommunications network.” Based

4 Random House Dictionary (Random House, Inc. 2010), attached to
Office action dated August 1, 2010.
Serial No. 77753453
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thereon, as well as applicant’s own recitation of services,
she concludes that the respective services are overlapping.
The examining attorney’s second argument is that the
respective services are related because they “could be
directed to the same consumers.” In support of this
contention, she relies on copies of approximately twenty
third-party, use-based registrations for marks that cover
the same or similar services of both applicant and
registrant. In addition, she relies on internet evidence
that “demonstrate[s] that consumers who use the
registrant’s telephone services may receive broadcast
transmissions over their mobile devices.” Brief, p. 11.
We first address the examining attorney’s assertion
that the respective services are overlapping, which is
based mainly on recitations of services in the application
and cited registration, as well as the defined meaning of
the term “telecommunications.” We agree that
telecommunications, as defined above, is a broad term and
may include applicant’s recited services such as “radio
broadcasting...video-on-demand transmission services.”
That is, applicant’s services certainly fall within the
scope of “the transmission of information, as words,
sounds, or images...by radio, or television.” We remain
cognizant of the fact that registrant’s services are not
Serial No. 77753453
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simply recited as “telecommunications services,” but are
further specified in the registration as, inter alia, the
“transmission of voice, video and data by means of a
telecommunications network.”5 Applicant seems to imply that
because registrant’s services are being transmitted by
means of a “telecommunications network,” this precludes
registrant from rendering services akin to applicant’s own
broadcasting services. However, as demonstrated by the
evidence submitted by the examining attorney, this is not
necessarily true. The record shows that broadcasting
services may be transmitted to mobile devices via a
telecommunications network. In particular, several
internet article excerpts describe the ability of consumers
to stream broadcasted (radio and video) programs via a
telecommunications network to their mobile devices.6 One
Wikipedia entry also describes a type of technology, named
Integrated Mobile Broadcast (iMB), that enables “the
broadcast of content (live TV channels, media files…) at
the cellular transmitter level, using the 3G or 4G licensed

5 Any attempt by applicant to further limit registrant’s services
by showing a smaller scope of services actually being rendered by
registrant is not well-taken. An applicant may not restrict the
scope of the services covered in the cited registration by
extrinsic evidence. In re Bercut-Vandervoort & Co., 229 USPQ
763, 764 (TTAB 1986). We thus consider the cited registration to
cover all services consistent with those described in the
recitation of services.
6 Attached to Office action dated March 11, 2011.
Serial No. 77753453
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radio spectrum.” Although we do not make a conclusive
finding, based on this evidence, that the respective
services are overlapping, we find that, at the very least,
the record demonstrates a convergence of applicant’s
services, i.e., radio and television broadcasting services,
with those of registrant, i.e., the transmission of
transmission of voice, video and data by means of a
telecommunications network.
Moreover, as previously mentioned, the respective
services need not be identical 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. In this regard,
the Trademark Examining Attorney has made of record
persuasive evidence showing that broadcasting services like
applicant’s, and telecommunications services, like
registrant’s, could be marketed by a single source under a
single mark. As noted, of record are approximately twenty
use-based, third-party registrations which include in their
recitations of services both applicant’s type of services
and registrant’s type of services. These registrations are
Serial No. 77753453
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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 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).
Based on the record before us, we find that
applicant’s services, even if not overlapping with
registrant’s services, are sufficiently related that
confusion as to source, sponsorship or other affiliation is
likely to occur if the respective services are offered
under confusingly similar marks. The second du Pont factor
accordingly weighs in favor of a finding of likelihood of
confusion.
As to the du Pont factor involving classes of
consumers, the general public are the consumers of
applicant’s radio and television broadcasting services as
well as registrant’s telecommunications services. In this
regard, we must assume the same consumers will encounter
said services. This factor weighs in favor of finding a
likelihood of confusion.
Serial No. 77753453
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There is little evidence of record and it is not
readily apparent to us what would be the customary trade
channels. Indeed, applicant argues that they are
different, but in doing so relies mostly on the differences
in the actual services being rendered by applicant and the
registrant, and not on the normal channels of trade. We
therefore find the factor addressing the channels of trade
for the identified services to be neutral.
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 emanate from a
common source.
Decision: The refusal to register under Trademark Act
§ 2(d) is accordingly affirmed.