Compact Disc World, Inc.v.Artistic Visions, Inc.

Trademark Trial and Appeal Board

Sep 20, 2000

No. 91112680 (T.T.A.B. Sep. 20, 2000)

9/20/00
skoro
Opposition No. 112,680
Compact Disc World, Inc.
v.
Artistic Visions, Inc.
Before Seeherman, Chapman, and Holtzman, Administrative
Trademark Judges.
By the Board:
An application has been filed by Artistic Visions, Inc.
for “computerized on-line retail services in the field of
music, compact discs and audio cassettes featuring music,
movies, music videos, digital video disks (DVD) players and
related accessories for the foregoing, namely, carrying and
storage cases for the aforesaid goods, and headphones” in
class 35,1 for the mark shown below:
CDworld
Compact Disc World, Inc., has filed an opposition
claiming priority of use and ownership of Registration No.
1,582,010, for COMPACT DISC WORLD, for “retail store sales

1 Serial No. 74/646,399, filed March 14, 1995, alleging a date
of first use and first use in commerce of December 16, 1994.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 112,680
2
of compact discs, audio cassettes, records, audio components
and accessories, compact discs video, laser disc and video
tapes”.2 Opposer alleges that applicant’s mark, “CDworld”,3
when used in connection with the identified services, is
likely to cause confusion, mistake, or deception.
Applicant, in its answer, denies the salient
allegations of the notice of opposition.
This case now comes up on opposer’s motion for summary
judgment filed July 9, 1999.4 In support of its motion,
opposer has submitted the affidavit of David C. Lang,
opposer’s president, who avers that opposer has used its
mark in connection with retail stores since 1986; that the
mark COMPACT DISC WORLD has been registered since 1990, and
that opposer has submitted a status and title copy of
Registration No. 1,582,010; that opposer has used “CD World”
in many of its print and radio advertisements, copies of
which have been submitted, and Mr. Lang uses this term in

2 Reg. No. 1,582,010 issued on February 6, 1990, Section 8
affidavit accepted, with “compact disc” disclaimed. (Opposer
also pleaded ownership of two additional registrations, Reg. No.
1,582,018, and Reg. No. 1,593,564, for COMPACT DISC WORLD and
design, which have been cancelled under Section 8).
3 In order to approximate the commercial impression of the
stylized drawing of applicant’s mark, we have departed from our
usual practice of reproducing trademarks in all capital letters,
and have depicted it as “CDworld.”
4 On April 19, 2000, opposer filed a motion to supplement its
evidence in support of its motion for summary judgment. Opposer
sought to introduce newly discovered evidence that a customer at
one of its stores presented two of applicant’s gift certificates
on April 9, 2000. Because opposer’s motion is unopposed and
Opposition No. 112,680
3
his conversations with customers; and that music compact
discs are very often referred to as “CDs”. In further
support of this point, Mr. Lang submitted definitions from
two dictionaries showing “CD” is an abbreviation for
“compact disc”. Mr. Lang also testified that it is not
unusual for retailers to market their goods in stores as
well as over the Internet and that opposer established its
own Internet site in 1998. In connection with this
testimony he submitted print-outs from the Internet of four
different retail music store businesses, namely, Tower
Records, J & R Music World, Blockbuster and Borders, in
which they offer for sale, through the Internet, videos,
compact discs, and video and audio equipment. Finally, Mr.
Lang states that actual confusion stemming from applicant’s
use of “Cdworld” has occurred because (i) he received four
items of mail from record producers addressed to him at CD
WORLD, rather than COMPACT DISC WORLD; (ii) a web server on
the Internet has associated opposer’s store locations with
applicant’s Internet address; and (iii) in response to
interrogatory number 12, applicant stated that “in the years
1996-97, Applicant received 2 or 3 e-mail messages
questioning whether Applicant would give the sender a
discount on products like given in the store.” A further
declaration from Veronica Geyer, one of opposer’s retail

well-taken as newly discovered evidence, it is hereby granted.
Trademark Rule 2.127(a).
Opposition No. 112,680
4
managers, was submitted wherein she avered that gift
certificates which appeared to be printed from applicant’s
web site were presented for redemption at one of opposer’s
stores.
In opposing the motion, applicant submitted the
declaration of its president, Bruce Pettyjohn, who avers,
inter alia, that when applicant’s application was examined
by the Patent and Trademark Office, opposer’s registration
was not cited against it; that it is Mr. Pettyjohn’s
understanding that although opposer did not provide
documents relating to its “annual gross dollar sales”, it is
Mr. Pettyjohn’s belief, based on a print-out from a Dun &
Bradstreet report that discloses annual sales for COMPACT
DISC WORLD, INC., that opposer has received “many tens of
millions of dollars in revenue from its use of its COMPACT
DISC WORLD mark during the last four (4) years.” Thus, in
its brief applicant argues that considering the amount of
advertising and sales of each party over the years,5 the
alleged instances of confusion are de minimis and “can not
[sic] be considered to establish a likelihood of confusion
as a matter of fact for granting summary judgment.”

5 Applicant’s answer to interrogatory number 4 states that first
use of its mark on “Internet site live and demo occurred on or
about December 31, 1994.” Applicant’s answer to interrogatory
number 6 describing the type of service offered under the mark
states “Internet retail sales first demo on or about December
31, 1994, and first sales on or about April 1, 1995, for CDs,
movies, video games, audio books, cassettes, laser discs and
music videos”.
Opposition No. 112,680
5
(Applicant’s brief p. 8). Finally, applicant argues in its
brief that “while the meanings of the respective marks may
be the same, the appearance and sound of the marks are
drastically different…”. (Applicant’s brief p. 6).
A party moving for summary judgment has the burden of
demonstrating the absence of any genuine issue of material
fact, and that it is entitled to summary judgment as a
matter of law. Fed. R. Civ. P. 56(c). See also, Celotex
Corp. v. Catrett, 477 U.S. 317 (1986). When the moving
party’s motion is supported by evidence sufficient, if
unopposed, to indicate that there is no genuine issue of
material fact and that the moving party is entitled to
judgment, the nonmoving party may not rest on mere denials
or conclusory assertions, but rather must offer countering
evidence, by affidavit or as otherwise provided in Fed. R.
Civ. P. 56, showing that there is a genuine factual dispute
for trial. See Fed. R. Civ. P. 56(e), and Octocom Systems
Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1990). In 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.
See Lloyd’s Food Products Inc. v. Eli’s Inc., 987 F.2d 766,
25 USPQ2d 2027 (Fed. Cir. 1993).
Opposition No. 112,680
6
Based on the submissions of the parties, we find that
there are no genuine issues of material fact, and that
opposer is entitled to judgment as a matter of law.
Priority is not in issue because opposer has made of
record a status and title copy of its pleaded Registration
No. 1,582,010 for COMPACT DISC WORLD for retail store
services. This document, prepared by the Patent and
Trademark Office, shows that the registration is valid and
that opposer is the owner. Moreover, there is no genuine
issue that opposer began using the mark COMPACT DISC WORLD
for retail store services in 1986, long before applicant’s
first use in 1994.6
Turning to the issue of likelihood of confusion, we are
guided by the factors set forth in the case of In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973).
Applicant’s mark is “CDworld” and opposer’s mark is
COMPACT DISC WORLD. There is no genuine issue that CD is an
abbreviation for COMPACT DISC. Further, opposer has shown
that customers refer to it by the abbreviated phrase CD
WORLD. Thus, both marks consist of the equivalent terms CD
or COMPACT DISC, which are generic for the goods the parties
sell, followed by the identical word WORLD, which is the
only distinguishing term in both marks. When the marks are

6 See footnote 5 supra.
Opposition No. 112,680
7
compared in their entireties, they are similar in appearance
and pronunciation, and identical in connotation and
commercial impression.
With respect to the services, there is no genuine issue
that the parties sell the same type of goods. Both
applicant’s identification in its application and opposer’s
registration list, inter alia, compact discs and
audiocassettes. The only difference in the services is that
opposer’s registration identifies its services as being
rendered through retail stores, and applicant’s are
identified as being rendered on-line. However, there is no
genuine issue that these are related services. Opposer has
submitted evidence that four third parties offer both retail
store and on-line retail services in the field of compact
discs and the like. As a result, consumers familiar with
the sale of compact discs and the like in retail stores
under the mark COMPACT DISC WORLD are likely, upon seeing
the highly similar mark “CDworld” for computer on-line
retail services for compact discs and the like, to believe
that both services emanate from a single source.
Further, we note that opposer has itself expanded into
Internet sales, although it did so subsequent to applicant’s
adoption of its mark.7 In addition to sales, opposer uses

7 Applicant argues that it is necessary for opposer to have
expanded into on-line sales through the Internet at the time
applicant first began to use its mark for Internet sales in
order to establish that the services are related. However, it
Opposition No. 112,680
8
its Internet site to advertise sales at its stores, and to
provide customers information on newly released recordings
and information on how to order by mail.8 Further opposer’s
URL address appears in its in-store newspaper (see Exhibit E
to Mr. Lang’s declaration filed in support of its reply
brief).
There is no genuine issue that opposer’s and
applicant’s services are offered to the same class of
consumers, i.e., the general public who purchase music and
music related items. There is also no genuine issue that the
purchasers are not sophisticated, and that the items sold by
both parties are impulse, relatively inexpensive purchases,
as shown by the fact that applicant’s Internet site offers
compact discs for $12.47. (Opposer’s brief p. 21). Such
consumers, obviously, would not exercise a great degree of
care in shopping retail stores or on-line for the goods sold
through the parties’ respective services.

is not necessary for opposer to prove prior use in connection
with Internet sales in order to show the relatedness of the
services. See Mason Engineering and Design Corporation v.
Mateson Chemical Corporation, 225 USPQ 956, 962 (TTAB 1985) (the
first user of a mark in connection with particular services
possesses superior rights in the mark against subsequent users
of the same or similar mark for any goods or services which
purchasers might reasonably expect to emanate from it in the
normal expansion of its business under the mark, whether or not
the first user of the mark has actually expanded its use of its
mark, after the commencement of the subsequent user’s use, to
services which are the same as or closely related to those of
the subsequent user).
8 Affidavit of David Lang, par. 16.
Opposition No. 112,680
9
Opposer has argued, in terms of the duPont factor of
fame, that during the more than twelve years it has used its
mark, it has spent a substantial amount of money for
advertising and establishing name recognition of the mark
with consumers. In particular, opposer asserts that from
1995 until Mr. Lang’s affidavit was signed in July 1999, it
spent over $3.4 million in advertising.9 The evidence
submitted by opposer does not establish the fame of its mark
and, in reaching our decision that confusion is likely,we
have not considered fame as a factor in opposer’s favor.
Nor have we given weight to opposer’s evidence of
alleged instances of actual confusion. As indicated
previously, in determining a motion for summary judgment,
all inferences must be viewed in the light most favorable to
the nonmoving party. Drawing such inferences in applicant’s
favor, we cannot say that opposer has established actual
confusion. However, the lack of evidence of actual confusion
does not mean that opposer is not entitled to judgment. The
statute prohibits the registration of marks that are likely
to cause confusion, and it is unnecessary to show actual
confusion to establish a likelihood of confusion. See Weiss
Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990).

9 Lang affidavit, par. 17.
Opposition No. 112,680
10
Applicant also asserts that opposer’s mark was not
cited against applicant’s application during the ex parte
examination process as support for its position that
confusion between the parties’ marks is not likely. We
cannot determine whether the examining attorney was even
aware of opposer’s registration, let alone what his reasons
might have been for not citing it. In any event, the fact
that the examining attorney did not cite opposer’s
registration as a basis for refusal on the ground of
likelihood of confusion is not binding on the Board. If it
were, there would be no point in allowing any oppositions to
be brought on the basis of a registered mark.
Based on the record before us, we find that there is no
genuine issue of material fact and that opposer is entitled
to judgment as a matter of law. Accordingly, opposer’s
motion for summary judgment is granted, the opposition is
sustained, and registration to applicant is refused.
E. J. Seeherman
B. A. Chapman
T. E. Holtzman
Administrative Trademark
Judges, Trademark Trial
and Appeal Board