Futura, D.O.O.v.Media Farm Solutions, LLC

Trademark Trial and Appeal Board

Sep 23, 2008

No. 91174999 (T.T.A.B. Sep. 23, 2008)

Mailed: September 23, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Futura, D.O.O.
v.
Media Farm Solutions, LLC
_____

Opposition No. 91174999
to application Serial No. 78773408
filed on December 14, 2005
_____

Marsha G. Gentner of Jacobson Holman PLLC for Futura, D.O.O.

Robert S. Broder of Robert S. Broder, P.C. for Media Farm
Solutions, LLC.
______

Before Kuhlke, Cataldo and Bergsman, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Media Farm Solutions, LLC, seeks
registration of the standard character mark OPENPAD for
goods identified in the application as “computer software
for designing, authoring, editing, maintaining, publishing,
exporting and storing user-defined text, graphics,
animation, video and database content on and over computer
networks, intranets, the Internet and personal computers;
computer software for use in collaborating and conducting
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91174999
2
interactive discussions and messaging over computer
networks, intranets and the Internet and instruction manuals
for use with the foregoing sold as a unit” in International
Class 9 and “computer services, namely, hosting online
websites for others and creating customized websites for
others; computer software consultation; computer software
design for others” in International Class 42.1
Opposer, Futura, D.O.O., opposed registration of
applicant’s mark on the grounds that, as applied to
applicant’s goods, the mark so resembles opposer’s
previously used and applied-for mark for “a variety
of business, management, and consulting services, including
the preparation, dissemination and streaming of audio, video
and multi media materials and presentations via the
Internet, web hosting and other web-related services” as to
be likely to cause confusion, to cause mistake, or to
deceive under Trademark Act Section 2(d), 15 U.S.C.
§1052(d).
Applicant filed an answer by which it denied the
salient allegations.
The evidence of record consists of the pleadings
herein; the file of the opposed application; opposer’s

1 Serial No. 78773408, filed December 14, 2005. The application
is based on an allegation of a bona fide intention to use the
mark in commerce under Trademark Act Section 1(b), 15 U.S.C.
§1051(b).

Opposition No. 91174999
3
notices of reliance on its pleaded registration, printed
publications and applicant’s discovery responses, and
opposer’s testimony deposition, with exhibits, of James Earl
Mills, Information Technology Manager for opposer’s outside
counsel.
Applicant did not attend the deposition of opposer’s
witness, nor did applicant submit any evidence on its own
behalf. Applicant’s unsupported factual statements in its
brief, have been accorded no evidentiary value or
consideration. See TBMP §§ 704.06(a) and (b) (2d ed. rev.
2004).
Both parties also filed main briefs and opposer filed a
reply brief.
PRIORITY/STANDING
Because opposer has made its pleaded registration of
record by way of notice of reliance, opposer has established
its standing to oppose registration of applicant’s mark and
its priority is not in issue.2 See King Candy Co., Inc. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).

2 In the notice of opposition, opposer pleaded its pending
application and further pleaded that “when registration issues on
Opposer’s OpenAd Application, Opposer will rely herein in such
registration.” Opposer’s registration issued on June 12, 2007
and we consider the pleadings amended to incorporate that
registration.

Opposition No. 91174999
4
Accordingly, we turn to the question of likelihood of
confusion.
LIKELIHOOD OF CONFUSION
Opposer’s pleaded registration is in full force and
effect and the services are set forth as follows:
Registration No. 2629732 for the mark for
“business marketing and direct mail consulting
services; providing business marketing
information; arranging and conducting trade show
exhibitions for associations, companies, and
groups for advertising and marketing purposes;
advertising agencies; advertising services,
namely, promoting the goods and services of others
through the distribution of printed and audio
visual promotional materials and by rendering
sales promotion advice; advertising services,
namely, creating corporate logos, corporate and
brand identity for others; advertising slogan
licensing; direct mail advertising; direct
marketing advertising for others; dissemination of
advertising matter; preparing audio-visual
presentations for use in advertising; providing
television, electronic, multi-media and print
advertising for others; real estate advertising
services; advertising services, namely, providing
advertising space in a periodical; agencies for
advertising time and space; cooperative
advertising and marketing; contests and incentive
award programs to promote the sale of products and
services of others; promoting the sale of goods
and services of others by awarding purchase points
for credit card use; promoting the sale of goods
and services of others through the distribution of
printed material and promotional contests;
providing a web site at which users can offer
goods for sale and buy goods offered for sale; on-
line trading services in which the seller posts
products to be auctioned and bidding is done via
the Internet; providing consumer product
information via the Internet; business management
and consultation; business management
consultation; business management planning;
conducting business and market research surveys;
conducting business research and surveys;
Opposition No. 91174999
5
consultation in the field of business
acquisitions; developing promotional campaigns for
business; advertising services, namely design for
others in the field of print and multimedia
advertising, marketing and promotional materials,
and point of purchase displays” in International
Class 35,

“commercial lending services” in International
Class 36,

“streaming of audio material on the Internet,
streaming of video material on the Internet;
telecommunication services in the field of
providing long distance service with audio
advertising for others as a component of the long
distance service” in International Class 38,

“arranging of exhibitions, seminars and
conferences” in International Class 41, and
“providing on-line intellectual property
consultation; licensing of intellectual property
via the Internet” in International Class 42.

Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the probative facts
in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). See also, In re Majestic Distilling Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
In any likelihood of confusion analysis, however, two
key considerations are the similarities between the marks
and the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
Another factor is the fame of the mark. While fame has
not been pleaded, opposer argues that its mark is strong in
Opposition No. 91174999
6
that it is inherently distinctive and has received wide
unsolicited media coverage and publicity and there is no
evidence of third-party use of similar marks. The record
supports a finding that opposer’s mark is a strong mark, to
the extent that we must presume that it is inherently
distinctive in view of its registration on the Principal
Register, has received some amount of publicity and there
are no third-party uses of record. However, the strength of
the mark on this record does not reach the level of playing
“a ‘dominant’ role in the process of balancing the du Pont
factors.” Recot Inc. v. Benton, 214 F.3d 1322, 54 USPQ2d
1894, 1897 (Fed. Cir. 2000). See also, Palm Bay Imports,
Inc. v. Veuve Clicquot, 396 F.3d 1369, 73 USPQ2d 1689, 1694
(Fed. Cir. 2005); In re Coors Brewing Co., 343 F.3d 1340, 68
USPQ2d 1059 (Fed. Cir. 2003); and Bose Corp. v. QSC Audio
Products, Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir.
2002).
We turn then to a consideration of the first du Pont
factor, i.e., whether applicant’s standard character mark
OPENPAD and opposer’s stylized mark OpenAd are similar or
dissimilar when compared in their entireties in terms of
appearance, sound, connotation and commercial impression.
We make this determination in accordance with the following
principles. The test, under this du Pont factor, is not
whether the marks can be distinguished when subjected to a
Opposition No. 91174999
7
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impressions that confusion as to the source of the goods
offered under the respective marks is likely to result. The
focus is on the recollection of the average purchaser, who
normally retains a general rather than a specific impression
of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975). The average overlapping purchaser in
this case would have some level of sophistication as
discussed below.
Certainly the sound, appearance and commercial
impression are similar in that the marks begin with the word
OPEN and end with AD. The fact that opposer’s registration
is for a stylized mark is of no consequence here inasmuch as
applicant’s mark is in standard character form and therefore
we must consider all reasonable presentations of that mark
including in the same stylization found in registrant’s
mark. See Phillips Petroleum v. C.J. Webb, 442 F.2d 1376,
170 USPQ 35, 36 (CCPA 1971). See also Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847-48 (Fed. Cir.
2000). In fact, the record shows that applicant uses its
mark in a similar style depicted as OpenPad.
The difference in the marks is the addition of the P in
applicant’s mark which does create some difference in
connotation. The AD portion of opposer’s mark, in
Opposition No. 91174999
8
particular in relation to its services, connotes
advertising, whereas the PAD portion of applicant’s mark, in
particular in relation to its goods and services, connotes a
writing or sketch pad, resulting in two different meanings,
namely, open advertising versus open pad. However, although
the letter P creates a difference in meaning, this does not
serve to obviate a likelihood of confusion in view of the
relatedness of the goods and services as discussed below.
Rather, it may serve to indicate an extension of opposer’s
services. Further, the first term, OPEN, is identical in
both marks and would have the same connotation. Moreover,
the word OPEN is the prominent feature of each mark due to
its placement at the beginning of each mark. Palm Bay, 73
USPQ2d at 1692. Thus, despite the addition of the letter P
in the middle of applicant’s mark, the overall commercial
impression of each mark is similar. In view thereof, and
considering the near identity in sound, appearance, and
commercial impression, we find the marks to be similar.
This brings us then to our consideration of the
similarities between opposer’s and applicant’s goods and
services, channels of trade and class of purchasers. We
must make our determinations under these factors based on
the goods and services as they are recited in the
application and registrations, respectively. See In re
Elbaum, 211 USPQ 636 (TTAB 1981). Although opposer argues
Opposition No. 91174999
9
that it also may rely on its established common law uses,
the record does not sufficiently establish the dates of use
based on common law use. Opposer relies on articles from
various publications as evidence of its use and while
applicant did not object on hearsay grounds even if we were
to take the statements made in the articles for “the truth
of the matter asserted” it is unclear what the date of first
use is in the United States. Thus, the relevance of the
evidence regarding actual use, both as to opposer’s use and
applicant’s use is confined to assisting the Board in
understanding what is encompassed by the identification of
goods and services in the registration and application. In
re Steelbuilding.com, 75 USPQ2d 1420 (Fed. Cir. 2005).
Finally, “the greater the degree of similarity in the marks,
the lesser the degree of similarity that is required of the
products or services on which they are being used in order
to support a likelihood of confusion ... [i]f the marks are
the same or almost so, it is only necessary that there be a
viable relationship between the goods or services in order
to support a holding of likelihood of confusion.” In re
Concordia International Forwarding, Corp., 222 USPQ 355, 356
(TTAB 1983).
Opposer argues that:
There is a precise or near identity between at
least some of the goods of OpenAd’s pleaded
registration and those of the opposed application
... For example, providing television, electronic
Opposition No. 91174999
10
multimedia and print advertising and design for
others in the field of multimedia and print
advertising [OpenAd registration] is the same as
[computer software for] designing, authoring,
editing, maintaining, publishing, exporting and
storing user-defined text, graphics, animation,
video and database content on and over the
Internet and creating customized web sites for
others (web sites, being, after all advertising)
[OPENPAD application]; and providing a web site at
which users can offer goods for sale and buy goods
offered for sale [OpenAd registration] is the same
as hosting online web sites for others [OPENPAD
applications].

Br. pp. 10-11.

Opposer also points to the following excerpt of
applicant’s press release:
OpenPad launches a network for designers and
developers interested in developing sites using
OpenPad. OpenPad users can register their name
and portfolio information to receive project
leads, or to seek additional assistance with the
development of a web site using the OpenPad
service. When a client interested in using our
services contacts us, we first consult with them
to understand their needs. Then, we use this
information to select the appropriate team from
our network of designers, writers and developers.
Additionally, OpenPad users wishing to register
for a new electronic database, available for
customers to browse online, please contact us.

Ex. 28.

Opposer asserts that:
This is exactly what the OpenAd concept, and the
services Opposer provides under that mark on the
OpenAd web site [sic]. Ex. 39 and Ex. 40. Web
site design for others, in fact, is a significant
aspect of the OpenAd services and web site. See
Ex. 40 (“OpenAd idea” may consist of, inter alia,
“Web Design”); and Ex. 41 through 44 (examples of
prominent web site design projects created through
OpenAd). See also Ex. 29 through 38 (regarding
Opposer’s sponsorship of the OpenAd Web Design
Opposition No. 91174999
11
competition in the Golden Drum awards). The
OpenAd web site also includes an electronic
gallery of ideas for browsing online. See Ex. 39
and 40.

Br. p. 12.

Applicant argues that:
Applicant simply does not engage in advertising
services of any kind...Nor does Applicant provide
a website at which users [can] buy and sell goods
or provide consumer product information or
business management and consultation...That an
OpenAd idea “may consist of a web design” is not
only tentative, but demonstrates that the form of
the idea submission may be in web site form, but
not that the OpenAd website provides the tools to
create the submission.

Br. pp. 12-13.

Applicant further argues that:
Although users of Applicant’s software and
services may ultimately host audio or video
material, which may or may not be streamed, this
is an incidental use that is user-defined. This
incidental use does not make the parties’
respective services similar or even related.

Br. p. 14.

Opposer’s “design for others in the field of print and
multimedia advertising” and applicant’s services of
“creating customized websites for others” are related to the
extent that opposer’s advertising services would include
creating customized websites for others inasmuch as a
company’s website design is an important component of its
overall advertising and marketing strategy.
Further, as applicant recognizes, users of its software
and web design services “may host audio or visual material
Opposition No. 91174999
12
which may or may not be streamed.” In fact, the
relationship is closer. “Creative” users [those who create
content/advertising] of opposer’s services may view
applicant’s goods and services as an extension of opposer’s
services, the tool and place where they may design and
create the content to be submitted to opposer’s website.
For example, a web designer and/or manager uses applicant’s
software from applicant’s website to design a website and
further uses applicant’s website to “collaborate with others
to design” (Ex. 28 printout of applicant’s website) a
website and then may submit this idea to opposer’s website
for sale. Thus, applicant’s goods and services assist the
customer in designing content to be on opposer’s website.
“Client” users [those seeking advertising for their
products] of opposer’s services may view applicant’s website
as another option for assisting their marketing and
advertising needs. Thus, the record supports a finding that
there is, at a minimum, a viable relationship between the
parties’ goods and services such that overlapping consumers
are likely to be confused.
With regard to the channels of trade and class of
purchasers, inasmuch as there are no restrictions in the
registrations and the application, we must presume
that applicant’s goods and services would be sold in all
appropriate channels of trade, including those in which
Opposition No. 91174999
13
opposer’s services are sold and to the same relevant
purchasers. See Hewlett-Packard Co. v. Packard Press Inc.,
281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1987).
As to the level of care in the purchasing decision,
there is very little in the record to understand the level
of care that would be exercised other than a few references
in the articles about opposer which indicate that membership
fees for clients run from $3000 to $100,000 but creatives
may submit their work for free. Certainly the level of care
in purchasing any of the goods and services offered by
opposer and applicant would rise above general consumer
items. In particular, opposer’s potential customers would
exercise care in using its services. Ultimately, however,
there is not sufficient evidence for us to making a finding
one way or the other on this factor.
Considering the respective marks in their entireties
and the goods and services, we conclude that the evidence of
record as it pertains to the relevant du Pont factors, in
particular considering the strong similarity of the marks,
supports a finding of likelihood of confusion between
opposer’s OPENAD mark and applicant’s OPENPAD mark. To the
extent we have any doubt, we must resolve that doubt in
favor of opposer, the prior registrant. See Hewlett-Packard
Opposition No. 91174999
14
Co. v. Packard Press, Inc., 281 USPQ2d 1001, 1003 (Fed. Cir.
2002); Hard Rock Cafe International (USA) Inc. v. Thomas D.
Elsea, 56 USPQ2d 1504, 1514 (TTAB 2000) and W. R. Grace &
Co. v. Herbert J. Meyer Industries, Inc., 190 USPQ 308, 311
(TTAB 1976).
Decision: The opposition is sustained.