Anita Dhaliwalv.DVD World Pictures Corp.

Trademark Trial and Appeal Board

Jul 26, 2011

No. 91167207 (T.T.A.B. Jul. 26, 2011)

Hearing: Mailing:
2/10/11 7/26/11

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Anita Dhaliwal
v.
DVD World Pictures Corp.
_____

Opposition No. 91167207
to application Serial No. 778495856
filed on October 6, 2004
_____

R. Joseph Trojan of Trojan Law Offices for Anita Dhaliwal.

Erik M. Pelton of Erik M. Pelton & Associates for DVD World
Pictures Corp.
______

Before Quinn, Walters and Mermelstein, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

DVD World Pictures Corporation filed an application to
register the mark shown below (in standard characters)

(“DVD” disclaimed) for “online retail store services and
distributorships of DVD movies” (in International Class 35),
and “motion picture production and distribution” (in
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Opposition No. 91167207
2
International Class 41). The application asserts in each
class first use anywhere on May 14, 1997, and first use in
commerce on November 19, 1998. The application includes a
claim of ownership of Registration No. 2912970 on the
Principal Register of the mark shown below

(“DVD” disclaimed) for “online retailing of DVDs” (in
International Class 35).1
Anita Dhaliwal opposed registration on the grounds that
applicant’s mark, when applied to applicant’s goods, is
merely descriptive thereof under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052(e)(1); and that applicant has
failed to use its mark in connection with the services
identified in the application. (see “Issues” discussion,
infra).
Applicant, in its answer, denied the salient
allegations of the notice of opposition.
EVIDENTIARY OBJECTION
Applicant, in its brief, moved to strike an exhibit and
testimony related thereto, as well as any discussion of the
testimony and exhibit in opposer’s briefs. More

1 Office records show the acceptance of a Section 8 affidavit,
and the filing of a Section 15 affidavit.
Opposition No. 91167207
3
specifically, applicant moves to strike Exhibit 30 to the
Papetti testimony, also submitted as Exhibit 65 to the
Lahoti testimony, because, according to applicant, opposer
first produced the evidence during testimony, despite
opposer’s denial that any such evidence existed in response
to applicant’s discovery requests, and despite opposer’s
failure to supplement its discovery responses prior to
trial. The exhibit comprises an advertising flyer showing
use of “DVD WORLD” by a third party in Corvallis, Oregon.
Applicant’s Request for Production of Documents No. 26
requested the following: “All documents referring or
relating to uses known to Opposer by persons other than
itself of a mark or domain name containing the word ‘DVD
WORLD’ or any variants thereof.” Opposer responded as
follows: “Subject to and consistent with all of its
objections, Opposer hereby produces, where appropriate, non-
privileged, responsive documents in its possession, custody
and control.” Nevertheless, during discovery, opposer
neither produced the Corvallis advertisement nor informed
applicant that the document existed. Further, opposer’s
response was never supplemented before the exhibit was
introduced at trial. When the document was introduced
during trial, applicant objected to the introduction on the
basis that it was not produced during discovery in response
to applicant’s request.
Opposition No. 91167207
4
Opposer, in her reply brief, does not directly dispute
applicant’s allegation that the document was not produced
prior to trial. Rather, she states that since the
disclosure of the document in November at a trial
deposition, “Applicant had many months to conduct any
necessary follow-up discovery, but failed to ask for further
discovery or otherwise to take any step to investigate this
issue. It is plainly disingenuous of Applicant to now argue
that it did not have sufficient opportunity to conduct
discovery.” (Reply Brief, p. 16, n.5).
Documents not produced until after the start of trial
generally are stricken when the documents are within the
scope of documents requested but not produced during
discovery. See Panda Travel, Inc. v. Resort Option
Enterprises, Inc., 94 USPQ2d 1789 (TTAB 2009); ConAgra Inc.
v. Saavedra, 4 USPQ2d 1245, 1247 n.6 (TTAB 1987); and
National Aeronautics and Space Administration v. Bully Hill
Vineyards Inc., 3 USPQ2d 1671, 1672 n.3 (TTAB 1987).
Inasmuch as the advertising flyer was encompassed within the
scope of Document Request No. 26, and opposer did not
produce the document prior to its introduction at trial,
applicant’s motion to strike is granted. Because discovery
had closed and trial had commenced, we do not understand
opposer’s rationalization (i.e., faulting applicant for not
taking follow-up discovery) for why the document should be
Opposition No. 91167207
5
treated as properly part of the evidentiary record. The
advertising flyer and testimony related thereto, as well as
any reference to same in the briefs, have not been
considered.
We hasten to add, however, that even if considered, the
testimony and evidence now stricken would not change the
result in this case. One lone third-party use, especially
in the absence of any corroborating evidence bearing on the
extent of such use and exposure to consumers in the
marketplace, is hardly the caliber of evidence necessary to
diminish the distinctiveness of applicant’s mark sought to
be registered. See No Nonsense Fashions, Inc. v.
Consolidated Foods Corp., 226 USPQ 502, 506-07 (TTAB 1985);
and R.J. Reynolds Tobacco Co. v. Brown & Williamson Tobacco
Corp.,226 USPQ 169, 178-79 (TTAB 1985).
THE RECORD
The record consists of the pleadings; the file of the
involved application; trial testimony, with related
exhibits, taken by each party; and opposer’s discovery
responses to certain discovery requests propounded by
applicant, third-party registrations and other official
records, and excerpts of printed publications, all
introduced by applicant’s notices of reliance. Both parties
filed briefs, and both were represented by counsel at an
oral hearing held before this Board panel.
Opposition No. 91167207
6
ISSUES
Opposer, in the notice of opposition, pleaded five
grounds for relief, namely 1) that applicant’s mark is
merely descriptive; 2) that applicant has failed to use the
mark in connection with the services; 3) that applicant
committed fraud when it claimed use in connection with the
Class 41 services; 4) that applicant misused the ® notice;
and 5) that applicant failed to disclaim the merely
descriptive designation “DVD” apart from its mark.
Claims 3, 4 and 5 identified above were not identified
or otherwise raised by opposer in its brief; so as to be
clear, opposer neither set forth these claims as “issues” to
be decided, nor made any arguments relative thereto.
Moreover, there was no trial, either express or implicit, of
these issues. Further, claim 5 clearly has no basis in fact
as the application includes a disclaimer of “DVD.”
Accordingly, we agree with applicant’s assessment in
its brief, and we deem claims 3, 4 and 5 to be waived. In
this regard, we note that opposer, in her reply brief, does
not take issue with applicant’s assessment. No
consideration will be given to these claims.
In addition, opposer raised for the first time in her
brief certain additional claims, namely 1) that opposer made
false statements regarding dates of first use and actual use
of the mark in connection with the sale of DVDs, that is,
Opposition No. 91167207
7
the Class 35 services; 2) that the application is void ab
initio because it was not filed in the name of the correct
owner of the mark; and 3) that due to extensive third-party
use, applicant has abandoned its mark.
These issues were not pleaded as grounds in the notice
of opposition, and were raised for the first time in
opposer’s brief. Further, the parties did not try these
issues, either expressly or implicitly.2 Accordingly, we
again agree with applicant’s assessment; and as is the case
with the waived claims discussed above, opposer, in her
reply brief, did not dispute applicant’s position that these
issues should not be considered by the Board. In view of
the above, we will not consider these issues on the merits.
In the face of applicant’s objections, opposer, in her
reply brief, listed only mere descriptiveness, and lack of
use of the mark for the Class 35 services as the issues for
our determination. As to the later issue, opposer described
it in the following terms: “Applicant Failed to Use DVD
WORLD as Trademark.” (Reply Brief, p. 17).
In view of the above, the only pleaded issues tried and
argued by the parties for our consideration are 1) whether

2 We add also that pursuant to long-standing precedent, opposer’s
unpleaded argument that applicant provided false dates of first
use in its application fails to state a claim. E.g., L. & J.G.
Stickley Inc. v. Cosser, 81 USPQ2d 1956, 1970 n.17 (TTAB 2007);
and Colt Indus. Operating Corp. v. Olivetti Controllo Numerico
S.p.A., 221 USPQ 73, 76 (TTAB 1983).
Opposition No. 91167207
8
applicant’s mark is merely descriptive for its services, and
2) whether applicant has failed to use its mark in
connection with its Class 35 services.
STANDING
Standing is an essential element of opposer’s case
which, if it is not proved at trial, defeats opposer’s
claim. To establish standing, opposer must show a real
interest in the proceeding. Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023 (Fed. Cir. 1999). Generally, where a
claim of mere descriptiveness is asserted (or, for that
matter, that an applicant has failed to use the mark), it is
sufficient for the plaintiff to establish that it has an
equal right to use the mark at issue. Montecash LLC v.
Anzar Enterprises, Inc., 95 USPQ2d 1060 (TTAB 2010); Plyboo
America, Inc. v. Smith & Fong Co., 51 USPQ2d 1633 (TTAB
1999); and No Nonsense Fashions, Inc. v. Consolidated Foods
Corp., supra. See Jewelers Vigilance Committee Inc. v.
Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021, 2023 (Fed.
Cir. 1987).
Applicant invested a significant amount of effort in
attacking opposer’s standing. (Brief, pp. 16-27). The
essence of applicant’s attack is that opposer has not
established her ownership of the “dvdworld.com” domain name;
and that opposer has failed to prove that she is a
competitor in the sale of the type of goods and/or services
Opposition No. 91167207
9
involved herein. Applicant contends that “[t]he true owner
of the dvdworld.com domain name is Dave Lahoti, an
adjudicated cyber squatter who had motivation to conceal his
involvement in this proceeding. The named Opposer...has
demonstrated her complete lack of involvement with this
Opposition.” (Brief, pp. 20-21).3 Opposer responds by
asserting that she owned the domain name when she filed the
notice of opposition, and that she continues to own 25% of
the domain name; that her real interest is based on her
partnership with her brother, Dave Lahoti, to use the domain
name, and her role as “creative director” for their business
activities; and that she is not required to demonstrate that
she is a present competitor. (Reply Brief, pp. 2-12).
We should note, at the outset of our consideration of
the question of standing, that opposer’s proofs hardly
present a clear picture. Dates of certain events are
imprecise (e.g., the specific date opposer bought the
“dvdworld.com” domain name and the date opposer was repaid

3 In connection with this accusation, applicant relies on the
decision in Lahoti v. VeriCheck, Inc., 636 F.3d 501, 97 USPQ2d
1878 (9th Cir. 2011), wherein the circuit court affirmed the
district court’s finding that David Lahoti (opposer’s brother and
business partner) exhibited a “pattern and practice of cyber
squatting, including a pattern of abusive litigation practices.”
Id. at 1884 (affirming an award of fees under the Trademark Act
based in part on Mr. Lahoti’s “bad faith”). In an earlier
opinion, the circuit court stated: “It is undisputed that Lahoti
is a repeat cyber squatter who has registered hundreds of domain
names resembling distinctive or famous trademarks and has been
admonished by judicial bodies for doing so.” Lahoti v.
Vericheck, 586 F.3d 1190, 92 USPQ2d 1641, 1649 (9th Cir. 2009).
Opposition No. 91167207
10
by her brother), as are the details about subsequent events
relating to ownership of the domain name and activities
undertaken by opposer through her partnership with her
brother. Further, we certainly cannot commend the lack of
attention given by opposer to this proceeding. Opposer
testified essentially as to her utter lack of knowledge
about who initiated this proceeding, and the purpose behind
bringing the opposition. (Dhaliwal dep., pp. 38-40). In
this connection, opposer also testified that Mr. Lahoti
handled the business operations, including legal matters, of
their partnership. Although we certainly have considered
the judicial findings about Mr. Lahoti’s cyber squatting
activities, they are not fatal to his sister’s standing to
bring the present opposition.
Opposer purchased the “dvdworld.com” domain name “in
the end of 2004,” using her credit card to pay the $20,100
fee. (Dhaliwal dep. p. 28-30). “Within a month’s time,”
Mr. Lahoti repaid his sister in full. (Dhaliwal dep., p.
31). Opposer maintains that she and her brother have had a
partnership since the purchase of the domain name, based on
a verbal agreement, for which she is the “creative
director.” (Dhaliwal dep., pp. 32-33, and 38; Lahoti dep.,
pp. 24-25). One of Mr. Lahoti’s companies, Virtual Point,
gained ownership of the domain name in 2007. In January
Opposition No. 91167207
11
2010, opposer paid $1 consideration for a 25% ownership
interest in the domain name.
We also have considered a cease and desist letter sent
by applicant. As indicated by opposer, she purchased the
domain name “dvdworld.com” with her credit card at “the end
of 2004.” Applicant sent a cease and desist letter dated
December 22, 2004; the letter was addressed to “DN [Domain
Name] Manager” and received by opposer. (Lahoti ex. no. 1).
Although opposer was not mentioned by name, the letter
indicated that “you registered the domain name
www.dvdworld.com on 11/29/2004,” and that “your use of the
Marks and Registered Marks, including registration as a
domain name, constitutes trademark infringement and unfair
competition practices.” (emphasis added). In the letter,
DVD World Company (a related company to applicant)
essentially stated that it owned the mark DVD WORLD, also
making reference to its ownership of Reg. No. 2912970.
Applicant demanded that “you” cease and desist any further
use, and requested “that you transfer immediately the domain
name www.dvdworld.com to [applicant].” Applicant concluded
that if “you” failed to immediately comply with applicant’s
demands, applicant would file a complaint with the WIPO
Domain Name Dispute Resolution Service, “and pursue all
other remedies and seek recovery of all damages to which
[applicant] is entitled.”
Opposition No. 91167207
12
We find that the record is sufficient to establish that
opposer has crossed the threshold for standing.
MERE DESCRIPTIVENESS
Opposer bears the burden of showing, by a preponderance
of the evidence, that the designation sought to be
registered is merely descriptive. Goodyear Tire & Rubber
Co. v. Continental General Tire Inc., 70 USPQ2d 1067, 1070
(TTAB 2003). A mark is descriptive if it "forthwith conveys
an immediate idea of the ingredients, qualities or
characteristics of the goods [and/or services]."
Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4,
189 USPQ 759, 765 (2nd Cir. 1976) (emphasis added). See In
re Abcor Development Corp., 616 F.2d 525, 200 USPQ 215 (CCPA
1978). Moreover, in order to be descriptive, the mark must
immediately convey information as to the qualities, features
or characteristics of the goods and/or services with a
"degree of particularity." Plus Products v. Medical
Modalities Associates, Inc., 211 USPQ 1199, 1204-1205 (TTAB
1981). See In re Diet Tabs, Inc., 231 USPQ 587, 588 (TTAB
1986); Holiday Inns, Inc. v. Monolith Enterprises, 212 USPQ
949, 952 (TTAB 1981); In re TMS Corp. of the Americas, 200
USPQ 57, 59 (TTAB 1978); and In re Gourmet Bakers, Inc., 173
USPQ 565 (TTAB 1972).
A term need not immediately convey information about
each and every specific feature of the applicant’s goods
Opposition No. 91167207
13
and/or services in order to be considered merely
descriptive; rather, it is sufficient that the term
describes one significant attribute, function or property of
the goods and/or services. In re H.U.D.D.L.E., 216 USPQ 358
(TTAB 1982); and In re MBAssociates, 180 USPQ 338 (TTAB
1973).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods and/or
services for which registration is sought, the context in
which it is being used on or in connection with the goods
and/or services, and the possible significance that the term
would have to the average purchaser of the goods and/or
services because of the manner of its use; that a term may
have other meanings in different contexts is not
controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979). It is settled that “[t]he question is not
whether someone presented with only the mark could guess
what the goods or services are. Rather, the question is
whether someone who knows what the goods or services are
will understand the mark to convey information about them.”
In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
The “average” or “ordinary” consumer is the class or classes
of actual or prospective customers of the parties’ goods in
this case. In re Omaha National Corporation, 819 F.2d 1117,
2 USPQ2d 1859 (Fed. Cir. 1987).
Opposition No. 91167207
14
There is often a fine line between merely descriptive
marks and those which are just suggestive. These
determinations are often subjective, this case being no
exception. The determination of whether a mark is
descriptive or suggestive is not an exact science. Our
primary reviewing court has observed:
In the complex world of etymology,
connotation, syntax, and meaning, a term
may possess elements of suggestiveness
and descriptiveness at the same time.
No clean boundaries separate these legal
categories. Rather, a term may slide
along the continuum between
suggestiveness and descriptiveness
depending on usage, context, and other
factors that affect the relevant
public’s perception of the term.

In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001).
Applicant does not dispute that the designation “DVD”
is merely descriptive, and applicant has disclaimed the
designation apart from the mark. The dispute centers on the
mere descriptiveness of the word “WORLD,” and if
descriptive, whether the mark as a whole is merely
descriptive and, thus, unregistrable on the Principal
Register absent a showing of acquired distinctiveness.
The word “world” means, inter alia, “a distinctive
class of persons or their sphere of interest or activity;
Opposition No. 91167207
15
the academic world; the digital world.” (Merriam Webster’s
Online Dictionary (2010); www.m-w.com).4
Opposer has introduced a list of 206 domain names that
contain the words “dvd” and “world.” (Lahoti ex. no. 5).
The list is entitled to very minimal probative value
inasmuch as no information is given other than the domain
name itself. The mere listing does not show that any of the
domain names are used at all, let alone used in connection
with the type of services involved herein, or that the
domain names are even used in the United States (some
include foreign country top level domains such as “.uk”).
Applicant owns 107 domain names containing “dvd” and “world”
(Papetti dep., p. 21), and opposer’s list even includes some
of the domain names listed by applicant. In sum, the record
is devoid of any evidence showing actual use or promotion of
any of the listed third-party domain names, or that they are
used to describe specific goods and/or services.
Mr. Lahoti admitted that he did not examine each of the
web sites that appear at each of the listed domain names,
nor does he remember much of what he saw when he visited

4 Applicant, in its brief, requested that the Board take judicial
notice of this dictionary definition. Opposer, in her reply
brief, did not object to the request, but rather she referred to
the same definition, contending that it supported her claim that
“world” is merely descriptive.
The Board may take judicial notice of dictionary definitions,
and such notice may be taken at any stage of a Board proceeding.
Continental Airlines Inc. v. United Air Lines Inc., 53 USPQ2d
1385, 1393 n.5 (TTAB 1999).
Opposition No. 91167207
16
approximately two dozen of them. (Lahoti dep., pp. 32-33).
Mr. Lahoti conceded that some of the web sites may have been
“Under Construction” or “Coming Soon.” (Lahoti dep., p.
34). The deposition also includes the following exchange:
Well, do you remember approximately how
many sites were actually selling DVDs
that contained “dvdworld” in their
domain name?

I think I must have encountered at least
half a dozen, and then maybe I just
pretty much stopped there and thought,
well, there’s pretty much – I don’t –
you know, I was pretty convinced it was
a lot. So, I must have encountered
about a half dozen, at least.

(Lahoti dep., p. 8).
Opposer’s proofs fall short of proving that applicant’s
mark as a whole is merely descriptive. Rather, applicant’s
mark DVD WORLD, when considered as a whole, falls on the
suggestive side of the line. The mark does not immediately
describe a characteristic or feature of applicant’s services
with any degree of particularity. At most, the mark
suggests that applicant’s Class 35 services offer a wide
breadth or range of DVDs.
It is not fatal that a mark is informational. One may
be informed by suggestion as well as by description. In re
Reynolds Metals Company, 480 F.2d 902, 178 USPQ 296 (CCPA
1973). That is to say, the terms “descriptive” and
“suggestive” are not mutually exclusive. There is some
Opposition No. 91167207
17
description in any suggestion or the suggestive process does
not occur. Applicant’s mark is no exception.
The mark at issue, DVD WORLD, is typical of so many
marks that consumers might encounter in the marketplace: a
suggestive mark that tells consumers something general about
the goods and/or services, without being specific or
immediately telling consumers anything with a degree of
particularity. The information given by the mark is
indirect and vague, suggesting that the “sphere of interest”
of applicant’s services relates to DVDs. The mark here
conjures up indirect mental associations in the consumer’s
mind; the thought process beginning with the mark DVD WORLD
and leading to a characteristic or feature of the services
is neither immediate nor direct.
In making this determination, we have considered Edwin
Papetti’s statement that applicant sells “across the world.”
(Papetti dep., p. 34; and ex. no. 23). We also have
considered applicant’s statements about its history:
The Following Year Would Bring A Name
Change To “DVD WORLD”, It Would Now Be
Called “DVD WORLD ONLINE”. This Was
Done Due To The Numerous Amount Of
International Stores That Were Saying
They Were “DVD WORLD” But Weren’t.

(Papetti ex. no. 3). In connection with this document, Mr.
Papetti testified that he was familiar with “at least one
other store” using DVD WORLD as part of their name. Mr.
Papetti also indicated that “the person who wrote this was
Opposition No. 91167207
18
obviously being dramatic to promote the name of ‘DVD World
Online,’ which was becoming our new online portal for
everything DVD World related.” (Papetti dep., p. 25-26).
This evidence is entitled to little weight. There is
nothing to establish the extent of the purported third-party
uses and, in any event, the “numerous amount” of other uses
is described as being “international.” Any foreign uses by
third parties are irrelevant to whether the mark is merely
descriptive in the United States.
We also have considered the forty-five third-party
registrations of “WORLD” marks introduced by applicant, all
registered on the Principal Register (without a Section 2(f)
claim), but they are entitled to little probative value. A
representative sample of the registered marks includes Reg.
No. 3200757 of STAFFING WORLD (“STAFFING” disclaimed) for
services related to employment and human resources; Reg. No.
2992295 of BRIDES WORLD (“BRIDES” disclaimed) for services
related to weddings; Reg. No. 3056291 of WOMEN’S WORKOUT
WORLD (“WOMEN’S WORKOUT” disclaimed) for clothing and health
club services; Reg. No. 3474597 of BLACK BELT WORLD (“BLACK
BELT” disclaimed) for training services in the field of
martial arts; and Reg. No. 2538543 of DIGITAL MUSIC WORLD
(“DIGITAL MUSIC” disclaimed) for on-line retail services in
the field of computer software and games and music. Third-
party registrations are not conclusive on the question of
Opposition No. 91167207
19
mere descriptiveness. Each case must stand on its own
merits, and a mark that is merely descriptive should not be
registered on the Principal Register simply because other
such marks appear on the register. In re Scholastic Testing
Service, Inc., 196 USPQ 517 (TTAB 1977). Further, as often
stated, we are not bound by the prior actions of examining
attorneys. See In re Nett Designs Inc., 57 USPQ2d at 1566
(“Even if some prior registrations had some characteristics
similar to [applicant’s] application, the PTO’s allowance of
such prior registrations does not bind the board or this
court.”). Nevertheless, the similarly constructed “WORLD”
registered marks are illustrative in suggesting that the
Office on numerous occasions has not considered the word
“WORLD” to be merely descriptive.
When confronting the mark DVD WORLD for applicant’s
services, the ordinary consumer will pause and reflect on
the use of the mark before understanding anything specific
about a feature or characteristic of the services. One must
exercise thought or engage in a multi-step reasoning process
to determine what attribute may be identified by the mark as
a whole. The mark does not, in any clear or precise way,
serve to immediately describe a particular characteristic or
feature of the services with any degree of particularity.
The mark DVD WORLD does not serve to directly tell consumers
anything other than DVDs are involved.
Opposition No. 91167207
20
We find, based on the record before us, that opposer
has not established by a preponderance of the evidence that
the mark DVD WORLD as a whole is merely descriptive of
applicant’s services.
NONUSE
Opposer argues that applicant has failed to use the
mark DVD WORLD in connection with applicant’s “online retail
store services and distributorships of DVD movies” in Class
35.5 Opposer does not take issue with applicant’s use of
the mark in connection with the services identified in Class
41, namely “motion picture production and distribution.”
(Opposer’s Brief, pp. 3 and 18). Accordingly, with respect
to opposer’s allegation of nonuse, as pleaded by opposer and
tried by the parties, the only question for us to determine

5 According to opposer, “[i]t is neigh impossible for the
public to determine who is who, or who is doing what, among
all these different entities. Given the changing faces of
these different entities, all of which are using variants of
the mark, Applicant’s usage of DVD WORLD can hardly be
considered indicative of source.” (Brief, p. 18). So as to
be clear, however, opposer’s belated claim that the
application is void ab initio because the application was
filed in the name of the incorrect owner of the mark is not
at issue.
To the extent that opposer is asserting that applicant’s
mark does not function as an indicator of source because Mr.
Papetti’s various entities own and use variations of the
mark on a range of goods and services, opposer has not shown
that the public is even aware that the marks may be owned by
different legal entities, let alone that the public is
confused thereby. In any event, there is in fact a unity of
control among applicant’s various marks, since it is clear
the Mr. Papetti personally controls all uses of the marks
through his closely-held entities.
Opposition No. 91167207
21
is whether applicant, DVD World Pictures Corp., has used the
mark DVD WORLD for online retail store services and
distributorships of DVD movies (in Class 35). As was the
case with her mere descriptiveness claim, opposer bears the
burden of proving nonuse by a preponderance of the evidence.
We find that opposer’s proofs fall short.
Opposer asserts that applicant’s claim of use of its
mark for online retail sales of DVDs is entirely based on
applicant’s website, “www.dvdworldonline.com”; that is,
there is no designated website for the named applicant.
Opposer alleges that no sales go through the specific
applicant in this case, that is, DVD World Pictures Corp.
Opposer also points to the purported lack of any advertising
on behalf of applicant for any services.
As best we understand the argument, opposer essentially
asserts that because applicant is DVD World Pictures, but
use of DVD WORLD is made on “dvdworldonline.com, then any
use must be by DVD World Online, and not applicant. This
argument misses the mark. Applicant may very well own the
dvdworldonline.com website, but even if it does not, there
is no evidence to suggest that use of DVD WORLD on the
website dvdworldonline.com does not inure to the benefit of
applicant.
Mr. Pepetti testified that applicant offers
commercially available movie titles at its websites
Opposition No. 91167207
22
“www.dvddestination.com” and “www.dvdworldonline.com.”
Applicant also offers at retail DVDs of applicant’s own
motion picture productions:
Q. But, to be clear, the services
offered with respect to the sale of
DVD’s are not services that are offered
by DVD World Pictures Corporation on
either the DVDDestination.com website or
the DVDWorldOnline.com website; correct?

A. As stated before, DVD World Pictures
covers the retail and distribution of
titles that we record, edit, and
produce. The titles handled by
DVDDestination.com, DVDWorldOnline.com
and HDDVDWorld.com would be held under
the DVD World Company, which is also the
parent company of DVD World Pictures
Corp.

(Papetti dep., p. 62).
Below is a screenshot of a webpage at one of
applicant’s websites, “www.dvdworldhomevideo.com,” showing
applicant’s offer of DVDs of its own productions for sale to
the general consuming public. According to Mr. Pepetti,
“this particular website would sell the live event DVDs.”
(Papetti dep., p. 57). As is shown by the exhibit, DVD
WORLD is used in no less than four instances on this
webpage.
Opposition No. 91167207
23

Further, a screenshot of a webpage at another one of
applicant’s websites, “www.dvdworldonline.com” (Papetti ex.
no. 35), shows the following use of DVD WORLD:

Opposition No. 91167207
24
The above evidence shows applicant’s use of its mark DVD
WORLD in connection with its Class 35 services.
Opposer also has pointed to Mr. Papetti’s testimony
below as evidence of nonuse.
Q. Has the DVD World Pictures
Corporation website ever sold any DVDs?

A. The actual site? No. No it has not.

As explained above, however, the mark DVD WORLD has appeared
on the websites of related companies, all owned solely by
Mr. Papetti. Similar to the case with a “brick-and-mortar”
store, the actual owner of the website through which the
services are rendered is of little importance; the services
here are provided in connection with applicant’s mark and
the use thus inures to applicant’s benefit.
Mr. Papetti testified that applicant is owned solely by
him through his sole proprietorship DVD World Company.
Applicant, as well as Mr. Papetti’s other entities, have
used the mark DVD WORLD as related entities; there is a
unity of control and ownership by Mr. Papetti (who is often
the only person employed by his companies). Several of
applicant’s websites include the following statement:
The “DVD World” name and design are
either registered trademarks or
trademarks of DVD World Pictures Corp.,
a division of the DVD World Company.
Any use of the DVD World name or design
without the permission of the DVD World
Company is strictly prohibited.

Opposition No. 91167207
25
That Mr. Papetti’s various closely-controlled entities
work together for mutual benefit is neither surprising nor
particularly significant.
To reiterate, opposer bears the burden of proof to show
that applicant has not used the mark DVD WORLD for “online
retail store services and distributorships of DVD movies.”
Opposer’s proofs fall short. Although applicant’s business
model is hardly a model of clarity, the record shows that
applicant has used the mark DVD WORLD in connection with the
Class 35 services through Mr. Papetti’s entities (all owned
solely by him).
Accordingly, this claim must fail.
CONCLUSION
In reaching our decision we have considered all of the
evidence pertaining to the issues tried by the parties, as
well as all of the parties’ arguments with respect thereto
(including any evidence and arguments not specifically
discussed in this opinion).
We find that 1) applicant’s mark is not merely
descriptive; and 2) applicant has used DVD WORLD as a mark
to identify and distinguish its services from those of
others.
Decision: The opposition is dismissed.