Ronald C. Goodman and Spacecam Systems, Inc.

Trademark Trial and Appeal Board

Jan 31, 2002

No. 91107318 (T.T.A.B. Jan. 31, 2002)

1/31/02

Paper No. 15
ejs

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Ronald C. Goodman and
Spacecam Systems, Inc.

v.

Space Corporation
_____

Opposition No. 107,318
to application Serial No. 75/114,794
filed on June 6, 1996
_____

Jay R. Ziegler of Buchalter, Nemer, Fields & Younger for
Ronald C. Goodman and Spacecam Systems, Inc.

Ian F. Burns of Ian F. Burns & Associates for Space
Corporation
______

Before Seeherman, Walters and Wendel, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Ronald C. Goodman and Spacecam Systems, Inc.
(hereafter “Goodman,” “Spacecam Systems” or “opposers”)
have opposed the application of Space Corporation to
register SPACECAM as a trademark for “stereoscopic,
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 107,318
2
virtual reality products, namely, video cameras, computer
port interface boards, device drivers for stereoscopic
viewing devices, and data and computer software recorded
on magnetic tape and compact disks for making and viewing
stereoscopic presentations.” As grounds for opposition,
opposers allege that opposer Goodman has used, and has
licensed for use by opposer Spacecam Systems which itself
has used, continuously since 1989 the trade name and
trademark SPACECAM in connection with photographic
equipment, namely specially designed and mounted camera
equipment used in photography and filming of motion
pictures, television productions and commercials, and in
connection with photography and filming of motion
pictures, television productions and commercials; and
that applicant’s use of the mark SPACECAM for its
identified goods is likely to cause confusion.
Applicant has denied the allegations in the notice
of opposition.
The record includes the pleadings and the testimony
deposition, with exhibits, of opposer Goodman. Applicant
did not submit any evidence. Only opposers filed a
brief. An oral hearing was not requested.
Opposer Goodman is the president of opposer Spacecam
Systems, and the designer of the SpaceCam system.
Opposition No. 107,318
3
Spacecam Systems was incorporated in 1989, and is
licensed by Goodman to use the SPACECAM mark in
connection with its business. Spacecam Systems has
conducted business under the trade name SpaceCam Systems,
Inc. since its incorporation. Spacecam Systems designs,
builds and operates gyro-stabilized camera systems. They
are used primarily in the feature film industry, but are
also used in television commercials, documentaries and
music videos. In addition, they are used for large
format specialized productions for amusement park rides
in which the seats of the viewing audience move in
conjunction with what is shown on the screen to create a
three-dimensional special environment.
Since 1990 opposers have used the mark SPACECAM1 on a
remotely controlled gyro-stabilized camera system. The
purpose of the system is to provide steady images, so
that it can, for example, film from vehicles such as
helicopters. It includes a control console which allows
the camera operator to steer, aim, focus and do the
various other camera controls that one could do if the
camera were mounted on a tripod. The film camera is
equipped with a video camera which allows the display of

1 Opposers’ exhibits depict the mark as both SPACECAM and
SpaceCam; we will refer to the mark as SPACECAM in our opinion.

Opposition No. 107,318
4
the video image that the film camera will be capturing at
the control console. The camera operator controls the
steering, focusing, etc. through an image displayed on a
monitor at the control console, which is a computer. The
entire system is computer based.
Since 1990 opposers have offered various services
under the SPACECAM mark, specifically providing personnel
such as a cameraman, director of photography and camera
technician assistant; assisting in organizing the
logistical aspects of the filming; and renting of the
camera system. These services are offered to all aspects
of the film industry, including feature films, television
productions, music videos and theme parks. In their
first year of operation opposers worked on 16 feature
films; they now provide their services on 45-60 films per
year, and 60-90 television commercials.
Since 1990 opposers have advertised their camera
system and related services through, inter alia,
advertisements in trade publications such as “Film and
Video,”; brochures distributed to film production
companies, film directors, and the like; direct mailings;
distribution of a video demo; telephone marketing
campaign; and exhibits at trade shows. In addition,
opposers get screen credit for 80% of the projects they
Opposition No. 107,318
5
do, and this is major publicity because interested
consumers will notice such credit. Opposers' advertising
expenditures have risen from $31,000 in 1993 to $100,000
in 1997 (the year opposers’ testimony was taken).
We do not have any information about applicant’s
product or activities.
Opposers have demonstrated their priority of use.
The evidence shows that they have used the mark SPACECAM
on their camera system and in connection with their
services since 1990, well before the June 6, 1996 filing
date of applicant’s application which, in the absence of
evidence of use, is the earliest date on which applicant
may rely.
Turning to the issue of likelihood of confusion, in
making such a determination we must consider all relevant
factors as set forth 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 under Section 2(d) of
the Trademark Act, two of the most important
considerations are the similarities or dissimilarities
between the marks and the similarities or dissimilarities
between the goods. Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
Opposition No. 107,318
6
In this case, the marks of the parties are
identical. This fact "weighs heavily against applicant."
In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565,
223 USPQ 1289, 1290 (Fed. Cir. 1984). When the marks in
question are identical, their contemporaneous use can
lead to the assumption that there is a common source
"even when [the] goods or services are not competitive or
intrinsically related." In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993). Thus, when
marks are identical, it is only necessary that there be a
viable relationship between the goods or services in
order to support a holding of likelihood of confusion. In
re Concordia International Forwarding Corp., 222 USPQ 355
(TTAB 1983).
With respect to the parties’ goods and services,
although opposers use the mark SPACECAM on their camera
system, it is not clear that they actually sell their
SPACECAM camera system. Certainly opposers have not
provided any information regarding sales of the system.
However, there is no question that the camera system
bearing the mark is transported in interstate or foreign
commerce and the SPACECAM mark is prominently placed on
the camera equipment, including on the three foot sphere
in which the system is housed, and some of the camera
Opposition No. 107,318
7
bodies. Moreover, the central feature of opposers’
services is the furnishing of the camera system, which is
subject to several patents and proprietary software, and
their services of operating the system are ancillary to
the rental of the system itself.
Both opposers’ camera system and applicant’s
identified virtual reality products, including video
cameras and computer software for making stereoscopic
presentations, are technical systems based on cameras and
computer hardware and software. Both are used for film
and/or video production. Opposers’ camera system and
services are even involved in one aspect of virtual
environment production, in that they make films used in
amusement park entertainments in which the audience
experiences, rather than simply views, what is shown on
the screen through a correlation between the movement of
their seats and what is shown on the screen. Both
parties’ goods and/or services would be offered to the
same class of consumers, e.g., film production companies.
They would also, based on the goods as they are
identified in applicant’s application, be advertised in
the same channels of trade, e.g., trade magazines and
trade shows. In this connection, we note that since 1991
opposers have presented a booth at the annual Biz Expo
Opposition No. 107,318
8
West, the largest trade show in the film industry, where
virtually all products and services related to the film
industry are promoted.
Although there are obvious differences in opposers’
services and equipment and applicant’s goods, goods and
services need not be identical to support a finding of
likelihood of confusion and, as indicated above, because
the marks are identical, the degree of similarity
required in this case is smaller. Here, opposers have
shown sufficient similarity between opposers’ services
and, in particular, the equipment used in the performance
of their services, and applicant’s goods to support such
a finding.
Based on this record, we find that SPACECAM is a
strong mark in the film industry. There is no evidence
of any third-party use of similar marks. Further,
although opposers’ advertising expenditures would be
considered small if they were offering a consumer good,
it is clear that opposers’ services, including the
equipment they supply, are directed to a specific
industry, and that within that industry they have
publicized their services and equipment through trade
ads, trade shows and on-screen credits.
Opposition No. 107,318
9
As a result, the relevant consumers, knowing of
opposers’ SPACECAM camera system with its technological
features, upon seeing the identical mark SPACECAM for
virtual reality cameras and ancillary products, are
likely to believe that opposers have turned their
technical expertise to this area. In saying this, we
recognize that the consumers of both parties’ goods and
services are sophisticated purchasers. However, given
the fact that the marks are identical, we find that even
these discriminating purchasers are likely to be
deceived.
Finally, we acknowledge that, given the differences
in the goods, the question of likelihood of confusion is
not free from doubt. However, it is a well-established
principle of trademark law that such doubts must be
resolved against the newcomer and in favor of the prior
user. See San Fernando Electric Mfg. Co. v. JFD
Electronics Components Corp., 565 F.2d 683, 196 USPQ 1
(CCPA 1977).
Decision: The opposition is sustained.