Apple Computerv.TVNET.net, Inc.

Trademark Trial and Appeal Board

Aug 28, 2007

No. 91168875 (T.T.A.B. Aug. 28, 2007)

Goodman

Mailed: August 28, 2007

Opposition No. 91168875

Apple Computer

v.

TVNET.net, Inc.

Before Quinn, Rogers and Cataldo, Administrative Trademark
Judges.

By the Board:

TVNET.net, Inc. has filed an application to register
the mark VTUNES.NET in standard character form for “digital
music video internet downloads for entertainment purposes”
in International Class 9.1 As grounds for the opposition,
opposer alleges that applicant’s mark, if used on the
identified goods, would so resemble opposer’s registered
ITUNES2 mark for “computer software for use in authoring,
downloading, transmitting, receiving, editing, extracting,
encoding, decoding, playing, storing and organizing audio
data” in International Class 9 and opposer’s registered
ITUNES MUSIC STORE marks for a wide range of services
including the following: “retail store services in the

1 Application Serial No. 78586859, filed March 14, 2005 asserting
intent to use the mark under Section 1(b) of the Trademark Act.
2 Reg. No. 2653465, issued November 26, 2002, Section 2(f)
claimed.
UNITED STATES PATENT AND TRADEMARK
OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS A
PRECEDENT OF
THE T.T.A.B
Opposition No. 91168875
2
field of entertainment, namely, musical and audiovisual
works and related merchandise, provided via the internet and
other computer and electronic communication networks” in
International Class 353; “telecommunication services,
namely, electronic transmission of streamed and downloadable
audio and video files via computer and other communications
networks” in International Class 384; “providing on-line
facilities, via a global computer network, to enable users
to program audio, video, text and other multimedia content”
in International Class 41, and “providing temporary use of
on-line non-downloadable software to enable users to program
audio, video, text and other multimedia content” in
International Class 425, as to be likely to cause confusion,
mistake or to deceive. Opposer has also pleaded a claim of
dilution of its ITUNES and ITUNES MUSIC STORE marks.
In its answer, applicant denies the salient allegations
in the notice of opposition.
This case now comes up on opposer’s motion, filed
January 16, 2007, for summary judgment on the ground of
likelihood of confusion. In support of its motion, opposer
relies on, among other things, applicant’s timely served

3 Reg. No. 2828093, issued March 30, 2004; “Music Store”
disclaimed and Section 2(f) claimed as to “Itunes.”
4 Reg. No. 3048602, issued January 24, 2006, “Music Store”
disclaimed and Section 2(f) claimed as to “Itunes.”
5 Reg. No. 2993227, issued September 6, 2005; “Music Store”
disclaimed.

Opposition No. 91168875
3
responses to opposer’s requests for admissions. The motion
is fully briefed, and in our discretion, we have considered
opposer’s reply brief.
A party is entitled to summary judgment when it has
demonstrated that there are no genuine issues as to any
material fact and that it is entitled to judgment as a
matter of law. Fed. R. Civ. P. 56(c). In reviewing a
motion for summary judgment, the evidentiary record and all
reasonable inferences to be drawn from the undisputed facts
must be viewed in the light most favorable to the nonmoving
party. Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200,
22 USPQ2d 1542, 1544 (Fed. Cir. 1992).
The facts set out below are not in dispute. Some have
been admitted by applicant in response to opposer’s requests
for admissions [listed below as "Response, request to admit
no. __"]. Others have been conceded either in applicant's
responses to opposer’s interrogatories [listed below as
"Response, interrogatory no. __"] or in its brief in
response to the motion for summary judgment [listed below as
["Response brief, p. __"]:
1. VTUNES is the dominant part of applicant’s VTUNES.NET
mark. (Response, request to admit no. 12).
2. The letter “v” in applicant’s mark stands for video
and “.net” is the generic top level domain identifier
Opposition No. 91168875
4
for the URL linked to applicant’s website.
(Responses, requests to admit nos. 9 and 12).
3. The terms ITUNES and VTUNES differ by one letter and
both parties’ marks have “some similarities” in that
the parties’ marks contain the word “tunes.”
(Response, request to admit no. 11; Response brief,
p. 6).
4. The parties’ goods are competitive and both parties’
goods/services are similar in that they both offer
music video downloads. (Responses, requests to admit
nos. 13 and 16; Response brief, p. 7).
5. Both parties use the internet as a channel of trade
to market their services and opposer uses the
internet to extensively market its services.
(Responses, requests to admit nos. 20 and 21;
Response brief, pp. 8 and 11; and Response,
interrogatory no. 4).
6. Opposer’s marks are famous. (Response, request to
admit no. 22; Response, interrogatory no. 34).
In addition, the following facts asserted in opposer's
declaration of Thomas R. La Perle have not been contested or
disputed by applicant:
7. Opposer markets its services in more channels than
applicant such as print and television advertising,
and “spends tremendously more on marketing” than
Opposition No. 91168875
5
applicant. (Response brief, pp. 8 and 11; La Perle,
paragraphs 14, 15, 16, and 17).
8. The ITUNES MUSIC STORE online retail store allows
users to “to browse, preview and download popular
music through ITUNES software” and to “stream music
videos by popular music artists”. (La Perle,
paragraph 9.)
9. On October 12, 2005, Apple released a new version of
its ITUNES software that allows users to purchase and
download over 2,000 music videos from the ITUNES
MUSIC STORE retail store. (La Perle, paragraph 12.)
10. From October 23, 2001 to March 31, 2005, opposer sold
fifteen million IPOD devices bundled with a copy of
ITUNES software. (La Perle, paragraphs 6 and 7.)
11. In the fourth quarter of [the fiscal year ending]
September 30, 2006, opposer sold 8,729,000 IPOD
devices bundled with ITUNES software. (La Perle,
paragraph 8.)
12. From April 2003 to Febrary 23, 2006, one billion
songs were downloaded from the ITUNES MUSIC STORE
using ITUNES software. (La Perle, paragraphs 9 and
13.)
13. Between October 12, 2005 and Febrary 23, 2006, more
than 15 million videos were downloaded from the
Opposition No. 91168875
6
ITUNES MUSIC STORE retail store using ITUNES
software. (La Perle, paragraphs 11 and 13.)
14. “Apple has expended significant resources in
advertising and promotion of its ITUNES products.”
(La Perle, paragraph 14.)
15. Opposer’s marketing efforts are extensive and include
the use of print, television, outdoor advertising and
public relations. (La Perle, paragraphs 15, 16, 17
and 19.)
16. Viewership of opposer’s ITUNES television
advertisements are “in the billions.” (La Perle,
paragraph 15.)
17. Through extensive marketing efforts, opposer has been
successful in “developing a loyal customer following
and valuable brand identity” for its ITUNES mark. (La
Perle, paragraph 14.)
18. The media has extensively covered ITUNES software and
ITUNES MUSIC STORE services. (La Perle, paragraph
20.)
Opposer has submitted copies of its pleaded
registrations, prepared by the USPTO, showing the current
title to its registrations for its ITUNES and ITUNES MUSIC
STORE marks and that such registrations are valid and
subsisting. This proof, in addition to establishing that
there are no genuine issues of material fact regarding
Opposition No. 91168875
7
opposer’s standing, removes the issue of priority from this
case. See King Candy Company v. Eunice King's Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
Accordingly, the focus of our analysis is whether there
are any genuine issues of material fact in dispute as to
opposer’s claim of likelihood of confusion. Such analysis
involves consideration of all of the undisputed facts in
evidence that are relevant to the factors set forth in In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973). In this case, the most important factors
are the fame of opposer’s marks, the similarity of the
marks, the similarity of the goods and services, and the
similarity of the trade channels.
We turn first to the factor of fame, because, when
present, evidence pertaining to this factor “plays a
‘dominant role’ in the process of balancing the du Pont
factors.” Recot Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d
1894, 1897 (Fed. Cir. 2000); see also Kenner Parker Toys
Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d
1453, 1456 (Fed. Cir. 1992).
Applicant has admitted the fame of opposer’s marks in
its discovery responses, and opposer has provided
corroborating evidence of fame.6 See undisputed fact nos.

6 The fame or strength of a mark is determined by a variety of
factors, including the length of time the mark has been in use,
the volume of sales under the mark and the extent of advertising
Opposition No. 91168875
8
6, 7, 10, 11, 12, 13, 14, 15, 16, 17 and 18. Based on
applicant's admissions and opposer’s corroborating evidence,
there is no genuine issue of material fact that opposer's
ITUNES and ITUNES MUSIC STORE marks are famous as used in
connection with opposer’s goods and services.
Turning next to the similarity of the marks, we must
compare the marks in their entireties as to appearance,
sound, connotation and commercial impression. Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
Nevertheless, 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. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
Opposer’s marks are ITUNES and ITUNES MUSIC STORES. We
consider the dominant feature of opposer’s ITUNES MUSIC
STORE marks to be ITUNES. This term is entitled to greater
weight in the likelihood of confusion analysis because the
term MUSIC STORE is descriptive or generic and has been
disclaimed by opposer. Applicant’s mark is VTUNES.NET.

or promotion of the goods or services with which the mark is
used. Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d
1565, 218 USPQ 390, 394 (Fed. Cir. 1983). Opposer has provided
such evidence.

Opposition No. 91168875
9
With regard to applicant’s mark, as applicant has admitted,
the dominant feature is the term VTUNES as the term “.net”
is a generic top level domain name indicator. See
undisputed fact nos. 1 and 2. See also In re Martin
Container Inc., 65 USPQ2d 1058, 1060 (TTAB 2002) (top level
domain indicator has no source indicating significance).
The dominant, distinctive portions of the parties’
marks (ITUNES/VTUNES), differ by only one letter, namely,
the substitution of the letter “v” at the beginning of
applicant’s mark for the letter “i” in opposer’s marks. See
also undisputed fact no. 3. Although applicant has argued
that the presence of the letter “v” distinguishes its mark,
such letter is insufficient to distinguish the dominant
portions of the parties’ marks. Cf. Weiss Associates, Inc.
v. HRL Associates, 902 F.2d 1546, 14 USPQ2d 1840, 1841 (Fed.
Cir. 1990) ("It is especially hard to distinguish between
TMS and TMM when the marks only differ by the last letter”).
Thus, the VTUNES portion of applicant's mark is nearly
identical in appearance to opposer’s ITUNES mark and is
nearly identical to the dominant portion of opposer’s ITUNES
MUSIC STORE marks. Moreover, although applicant has also
argued that the parties’ marks are dissimilar due to the
addition of “.net” in its mark, the similarities between the
parties' marks are greater than the differences. See In re
Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1217
Opposition No. 91168875
10
(TTAB 2001) (Board found KYNG similar to KING-TV and KING
FM, noting that TV and FM were descriptive or generic and
had no source indicating value). When considered in their
entireties, the involved marks engender sufficiently similar
overall commercial impressions that confusion will be likely
when the marks are used on the admittedly competitive goods
involved in this case. Therefore, due to the similarities
of the parties’ marks as well as overall commercial
impressions, we find no genuine issues of material fact that
the marks are confusingly similar.
With respect to the relatedness of the parties’ goods
and services, it is undisputed that applicant’s goods will
compete with opposer’s goods and services, that the parties’
goods and services are similar, and that opposer’s goods and
services provided under its ITUNES and ITUNES MUSIC STORE
marks include providing digital music video internet
downloads. See undisputed fact nos. 4, 8 and 9. Despite
these admissions and concessions, applicant argues that
confusion is unlikely because “the services offered by both
parties are not that similar in use or function” and because
opposer’s “use of iTunes also includes, music, audio books,
podcasts, TV shows and games.”
However, it is not necessary that the respective goods
and services be identical or even competitive to support a
finding of likelihood of confusion. It is sufficient that
Opposition No. 91168875
11
the goods and 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 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, 1290 (Fed. Cir.
1984). Moreover, in the context of likelihood of confusion,
it is sufficient if likelihood of confusion is found with
respect to use of the mark on any item that comes within the
description of goods in the application or registration.
Tuxedo Monopoly Inc. v. General Mills Fun Group, 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981) (MONOPOLY on T-shirts,
where application included “shirts,” would be likely to
cause confusion with plaintiff's mark on board game).
In this case, when we consider the respective
identifications of goods and services in opposer’s pleaded
registrations and the involved application, there is no
genuine issue that applicant's “digital music video internet
downloads” are related to, encompassed within or identical
to opposer’s computer software used in connection with audio
data, opposer’s online downloadable software used in
connection with audio and video data, opposer’s online
Opposition No. 91168875
12
retail store services in the field of musical and
audiovisual works, opposer’s telecommunication services that
provide audio and video files, and opposer’s services of
providing on-line facilities with respect to audio and video
content. Therefore, we find no genuine issue of material
fact that the parties’ goods or services are related, if not
identical.
Turning next to the channels of trade, it is undisputed
that both parties offer their goods and services over the
internet to the general public. See undisputed fact no. 5.
The fact that opposer also uses other media such as print
and television advertising to market its services does not
raise a genuine issue regarding the parties' channels of
trade. See Octocom Systems Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1788 (Fed. Cir.
1990). Therefore, we find there is no genuine issue of
material fact that the parties’ channels of trade are
identical.
Applicant has also argued, in an effort to raise a
genuine issue, that opposer has permitted many companies to
use the prefix “i” in the names of various products that are
used in connection with opposer’s IPOD device and therefore,
applicant should not be precluded from being able to use its
VTUNES.NET mark. However, we find that use of the “i”
prefix by others for products used in connection with
Opposition No. 91168875
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opposer’s IPOD device is not relevant to the issue of
likelihood of confusion between opposer's and applicant's
respective marks and therefore, this does not create a
genuine issue of material fact.
Lastly, applicant’s arguments regarding the lack of
actual confusion and its good faith adoption of its
VTUNES.NET mark do not raise genuine issues of material fact
that preclude entry of summary judgment. Evidence of actual
confusion is not a prerequisite for finding likelihood of
confusion. Also, even accepting as fact that applicant
adopted its mark in good faith, this does not mean that
confusion is less likely.7
In summary, we find that opposer has carried its
burden of proof and that no genuine issues of material fact
remain as to opposer’s standing, priority, or the ground of
likelihood of confusion. In view thereof, opposer’s motion
for summary judgment is granted, the opposition is sustained
on the likelihood of confusion ground, and registration of
applicant's mark is refused.

7 While evidence of bad faith adoption typically will weigh
against an applicant, good faith adoption typically does not aid
an applicant attempting to establish no likelihood of confusion.
J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18
USPQ2d 1889, 1891 (Fed. Cir. 1991).