Behavioral Dynamics, Inc.v.Motivision, PLC

Trademark Trial and Appeal Board

Mar 18, 2003

No. 91104893 (T.T.A.B. Mar. 18, 2003)

Mailed:
March 18, 2003
Paper No. 33
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
Behavioral Dynamics, Inc.
v.
Motivision, PLC (formerly Unicorn Services, PLC.)
________
Opposition No. 104,893
to Application No. 74/713,159
filed on August 9, 1995
_______
Royal W. Craig, Gregory M. Stone and Deborah J. Westervelt
of Law Offices of Royal W. Craig for Behavioral Dynamics,
Inc.
Edward P. Kelly of Lelfe & Lynch for Motivision, PLC.
_______
Before Seeherman, Hairston and Bucher, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
An application has been filed by Motivision, PLC
(formerly Unicorn Services, PLC) to register the mark
MOTIVATOR PLUS for “scientific and electrical devices,
namely, a device for delivering minimally liminal
electrical signals for behavioral modification” in
International Class 9.1
1 Application Serial No. 74/713,159 filed on August 9, 1995
alleging a bona fide intention to use the mark in commerce in
addition to claiming a basis for registration under Section 44(e)
on the basis of a Benelux registration.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 104,893
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Registration has been opposed by Behavioral Dynamics,
Inc. on the ground that it is the owner of a registration
for the mark MotivAider in the form shown below:
for “electronic unit for providing a sensory stimulus to an
individual to effect a response,” also in International
Class 9,2 and that applicant’s mark, if used in connection
with the identified goods, so resembles opposer’s mark as
to be likely to cause confusion, to cause mistake or to
deceive.
Applicant, in its answer, denied the salient
allegations of the likelihood of confusion claim. Only
opposer has filed a brief in this case.
The record consists of the file of the involved
application; the trial testimony deposition of Steve
Levinson, opposer’s president, with accompanying exhibits,
including a copy of opposer’s pleaded registration; the
trial testimony deposition, with exhibits, of James B.
2 Registration No. 1,625,784 issued on December 4, 1990,
Section 8 affidavit accepted and Section 15 affidavit
acknowledged; first renewal. The special form drawing is lined
for the color gray but color is not claimed as a feature of the
mark.
Opposition No. 104,893
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Caldwell, president and owner of Future Thunder
Productions, Inc.; and the trial testimony deposition, with
exhibits, of Leslie S. Weber, applicant’s President and
CEO.
Initially, we find that based upon the submission into
the record of its federal trademark registration, opposer
has demonstrated standing in this case. Further, in view
of that registration, priority is not in issue. King Candy
Company v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974).
Accordingly, we turn our attention to the issue of
likelihood of confusion, the crux of this controversy. In
the course of rendering this decision, we have followed the
guidance of In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 1362, 177 USPQ 563, 567-68 (CCPA 1973). The du Pont
case sets forth the factors that should be considered, if
relevant, in determining likelihood of confusion.
We begin our analysis by turning to the similarity or
dissimilarity of the marks in their entireties as to sound,
appearance and meaning.
As opposer has consistently argued, the aural
differences in the pronunciation of the words “Motivator”
and “MotivAider” would be difficult for most listeners to
discern. To the extent the host of an infomercial, for
Opposition No. 104,893
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example, were repeatedly to pronounce opposer’s
“MotivAider” without benefit of a graphic presentation
appearing on the screen, opposer’s mark would likely sound
to the listener exactly like “Motivator.”
As to appearance, while the capital letter “A” in the
middle of opposer’s mark sets apart the word “Aider,” the
evidence indicates that this novel depiction does not have
a great impact on consumers. Specifically, opposer has
submitted a series of orders and letters in which its
customers incorrectly use the term “Motivator” to refer to
its “MotivAider” product. Under actual marketing
conditions consumers do not have the luxury of making side-
by-side comparisons between marks. Rather, they must rely
upon hazy, past recollections. See Dassler KG v. Roller
Derby Skate Corporation, 206 USPQ 255 (TTAB 1980). The
evidence that consumers refer to opposer’s goods as
“Motivator” demonstrates that consumers do not note or
remember the novel presentation of opposer’s mark, and
therefore they are not likely to distinguish the parties’
marks on the basis of this difference in appearance.
We also note that applicant’s mark contains the
additional word PLUS. However, the word “Plus” follows the
Opposition No. 104,893
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leading word, “Motivator,” and is lauditorily descriptive3
of applicant’s goods, and is insufficient to distinguish
the marks. See In re National Data Corp., 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985)[in comparing marks, it is
permissible to accord more or less weight to a particular
feature of a mark, provided that the marks are considered
in their entireties]. Moreover, despite the difference in
spelling, the two marks have the same basic connotation of
a device that can help to motivate or change behavior.
Applicant’s addition of the word “Plus” to the phonetic
equivalent of opposer’s mark does not alter that
connotation.
While both of the marks appear to be somewhat
suggestive of behavior modification devices where human
“motivation” plays a key role, there is no probative
evidence that the term “motivator” is weak for these goods.
Specifically, there is no evidence of third-party use or
registrations for “Motivator” marks in conjunction with
similar goods (e.g., the du Pont factor dealing with the
number and nature of similar marks in use on similar
goods). Further, to whatever extent the marks are
3 Plus: (adj) … (2) Added or extra … The American Heritage
Dictionary of the English Language (3rd Ed. 1992).
Opposition No. 104,893
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suggestive, they are both suggestive in the same way, i.e.,
their connotation is the same.
Accordingly, although there are some differences in
the appearance of the marks, we find that they are similar
in their overall commercial impressions.
We turn next to the du Pont factor dealing with the
similarity or dissimilarity and nature of the goods as
described in the application and registration. The record
shows that applicant’s device is to be attached to one’s
television, and that applicant claims based upon the
science of mind/body communications, its device delivers
visual subliminal messages designed to modify behavior to,
for example, achieve weight loss. Opposer’s device is a
small hand-held device that vibrates at intervals set by
the user. It, too, is designed to modify behaviors in
order to lose weight, stop smoking, or make other personal
changes.
Hence, both devices are designed to help modify
behaviors. Although applicant’s device is a fairly large
peripheral attached to one’s television and opposer’s
device is a small portable device having characteristics
similar to an egg timer or stopwatch, these specific
differences are not set forth in the respective
identifications of goods in the application and
Opposition No. 104,893
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registration. Rather, as identified, the goods must be
deemed to be quite similar if not legally identical.
As to the similarity or dissimilarity of established,
likely-to-continue trade channels, the record shows that
both applicant and opposer have used infomercials broadcast
over television to tout the benefits of their respective
products.4 Both are directed to the same ordinary
purchasers, especially those wanting, for example, to lose
weight.
As to any market interface between applicant and
opposer, the record reflects an initiative taken by
applicant in 1995 to acquire opposer’s company based upon
its belief that there may be some synergy between their
respective product lines. While applicant drafted a letter
of intent and a letter of non-opposition, the documents
were never executed and the acquisition did not go forward.5
In his trial testimony deposition, applicant’s President
and CEO Leslie S. Weber stressed that opposer’s device is
completely different from applicant’s product. On the
other hand, in a letter to Dr. Steve Levinson, opposer’s
4 Although applicant’s instant application is based upon an
intention to use the mark, the evidence of record indicates that
applicant has commenced use.
5 The record does not suggest that there was any litigation
between the parties in 1995. Hence, this exchange was a good
faith exploration of a potential business venture and not in any
way part of a proposed settlement of any litigation.
Opposition No. 104,893
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president, dated November 16, 1995, Mr. Weber included the
following paragraph:
If you choose, for whatever reason, not to
sign the Letter of Intent and the Letter of
Non-opposition, then we will instruct our
marketing and design people to proceed with
different trademarks, redesign our packaging
with the result that the Motivator Plus will
be re-named. We would then withdraw our
letter of Intent and attempt to reach new
understandings which would hopefully result
in the acquisition ultimately being
completed.
Opposer points out that when the acquisition deal fell
through, applicant reneged on its offer to rename its
product and continued to pursue the instant federal
trademark application.
In an attempt to demonstrate the extent of actual
confusion between the respective marks, opposer has, as
noted previously, made of record a series of orders and
letters in which its customers incorrectly use the term
“Motivator” to refer to its “MotivAider” product. However,
none of these examples appears to be probative of confusion
with applicant’s specific “Motivator Plus” product.
Rather, they appear to be misspellings of opposer’s
trademark on the part of its customers who failed to
appreciate opposer’s choice of a clever spelling when
naming its product.
Opposition No. 104,893
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Accordingly, based upon the fact that the respective
marks form similar overall commercial impressions, that the
goods are very similar if not legally identical, that they
will move in similar channels of trade to ordinary
consumers pursuing similar behavior modifications, and that
there is no evidence in the record of third-party use or
registrations for related products, we find that
applicant’s MOTIVATOR PLUS trademark for its identified
goods is likely to cause confusion with opposer’s mark.
Decision: The opposition is sustained, and
registration to applicant is refused.