Atmel Corp.v.Bedini Electronics

Trademark Trial and Appeal Board

Sep 29, 2000

No. 91103356 (T.T.A.B. Sep. 29, 2000)

Paper No. 34
RS/JMP
9/29/00
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Atmel Corporation
v.
Bedini Electronics, Inc.
_____
Opposition No. 103,356
to application Serial No. 74/725,454
filed on September 5, 1995
_____
Thomas Schneck of Law Offices of Thomas Schneck for Atmel
Corporation
Thomas G. Walsh of Walsh & Associates for Bedini
Electronics, Inc.
______
Before Simms, Walters and McLeod, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Atmel Corporation (opposer), a California coporation,
has opposed the application of Bedini Electronics, Inc.
(applicant), a Nevada coporation, to register the mark shown
below:
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 103,356
2
for the following goods: electronic stereo amplifiers, pre-
amplifiers, audio speakers, processors, audio enhancement
devices and systems, namely a binaural spacial electronic
processor.1 In the notice of opposition, opposer asserts
that it has a wholly owned subsidiary, DREAM S.A., a French
societe anonyme; that since 1991, that subsidiary has used
the trade name and trademark DREAM in the United States in
connection with digital signal processors for audio
applications; that applicant’s mark so resembles the
subsidiary’s previously used mark as to be likely to cause
confusion, to cause mistake or to deceive; and that the
phrase “DYNAMIC REALISTIC & ENHANCED AUDIO FOR MULTIMEDIA”
is merely descriptive of multimedia audio products and that
opposer’s subsidiary has a right to describe its goods by
this phrase. The Board granted opposer’s motion to amend
its pleading to assert the additional grounds that applicant
has never used its asserted mark on amplifiers, pre-
amplifiers, speakers, processors and audio enhancement
devices as individual items; and that the application
contains an overly broad description of applicant’s goods,
which may block opposer’s pending application to register
its mark for “processors”.

1 Application Serial No. 74/725,454, filed September 5, 1995,
claiming use in commerce since May 15, 1995. In the application,
applicant has disclaimed exclusive rights to the words “ENHANCED
AUDIO” and “MULTIMEDIA”.
Opposition No. 103,356
3
In its answer, applicant has denied the essential
allegations of the notice of opposition and has asserted, as
affirmative defenses, that opposer has no proprietary rights
in the pleaded mark and that this opposition is barred by
acquiescence, laches and estoppel because of opposer’s delay
of two years. Applicant also asserts that it adopted its
mark without knowledge of any rights that opposer may
possess.
Only opposer has taken testimony. The record consists
of depositions of opposer’s witnesses, with accompanying
exhibits, and dictionary definitions, relied upon by
opposer’s notice of reliance. Only opposer has filed a
brief, and no oral hearing was requested.
Opposer has briefed only the issue of likelihood of
confusion, and that is the only issue that we shall
consider. Also, because applicant offered no testimony or
evidence and did not file a brief, we shall not consider any
affirmative defense pleaded by applicant.
Opposer took the testimony of Claus Dorner, an employee
of DREAM, S.A. Mr. Dorner testified that DREAM sold
integrated circuits bearing the name DREAM in the United
States from 1990 until 1997. Over the years, about one
million integrated circuits were sold. These products were
also displayed at trade shows.
Opposition No. 103,356
4
DREAM integrated circuits are used for sound synthesis
and sound processing. These sound synthesis processors
(also called digital signal processors) are used to make
multimedia sound cards for playing games on personal
computers to synthesize music, to add sound effects and to
improve the sound of a multimedia device. Mr. Dorner
testified that these goods are sold to manufacturers and to
engineers who design circuit boards. DREAM sound processors
may be mounted on circuit boards with other integrated
circuits. One customer, Crystal Semiconductor, used DREAM
integrated circuits with its own integrated circuits to make
chip sets, which were in turn used by others for personal
computers or for electronic musical instruments and arcade
games.
Mr. Dorner also testified that DREAM digital sound
processors, made by opposer and opposer’s European
subsidiary, were to be shown at an April 1998 trade show.
According to the testimony of Mike Ross, opposer’s vice
president and general counsel, DREAM S.A. is a wholly owned
subsidiary (of a wholly owned subsidiary). Mr. Ross
testified that, since the acquisition in May 1996, DREAM
S.A. has sold integrated circuits with the mark to customers
outside of the United States, which customers have placed
DREAM integrated circuits into larger systems such as music
synthesizer devices, some of which have been shipped to this
Opposition No. 103,356
5
country under various brand names. Mr. Ross further
testified that a third party uses the DREAM mark on digital
signal processors with permission. Recently, although
opposer has not introduced a DREAM integrated circuit
product into this country, opposer was planning to do so
during the third or fourth quarter of 1997.
When asked about possible confusion as a result of
applicant’s use of its mark on its goods, Mr. Dorner
testified, at 50:
A. I see a big problem, problems related
to that for a customer. This can be
misleading and will be to a higher
percentage be misleading in order to
make him believe that inside of the box
there is one of the well-known Dream
sound processors installed.
Q. But to your knowledge this company is
not one of your customers; is that correct?
A. Bedini Electronics never showed up in
our records as one of our customers.
Q. So as far as you’re concerned they
have no right from Atmel or Dream, S.A. to
use the Dream mark; is that correct?
A. That’s absolutely correct.
Opposer argues that it has established its standing as
well as its priority. With respect to the issue of
likelihood of confusion, opposer argues that the dominant
part of each mark is the term DREAM, and that applicant’s
Opposition No. 103,356
6
goods include processors, which are the same goods on which
opposer’s subsidiary uses the trade name and trademark
DREAM.
Upon careful consideration of this record and opposer’s
arguments, we conclude that opposer has prior use2 of the
trade name and trademark DREAM and that applicant’s mark,
used on its goods, is likely to cause confusion with
opposer’s mark and trade name. Concerning the marks, both
are dominated by the term DREAM or D.R.E.A.M., such that, if
applicant’s mark in its entirety and opposer’s mark and
trade name were used on related goods, confusion would be
likely to result. Here, opposer designs and sells
integrated circuits and processors used in musical
instruments and sound cards for computers and video games.
Applicant uses its mark on stereo amplifiers, speakers,
processors and “binaural spacial electronic processors.” In
the face of opposer’s testimony that both parties are using
their marks in connection with sound processors and that
opposer’s goods are similar to applicant’s audio products,
we have no testimony, evidence or argument from applicant to
the contrary. We conclude that purchasers, aware of
opposer’s DREAM trade name and mark used for integrated
circuits and processors for musical applications, who then

2 In the absence of evidence, applicant is limited to the filing
date of its application as the earliest date on which it may
rely.
Opposition No. 103,356
7
encounter applicant’s similar mark in connection with its
goods, which include processors, are likely to believe that
these goods all come from the same source or are sponsored
or approved by the same entity.
Decision: The opposition is sustained and registration
to applicant is refused.
R. L. Simms

C. E. Walters
L. K. McLeod
Administrative Trademark Judges,
Trademark Trial and Appeal Board