G-Net Media, LLC

Trademark Trial and Appeal Board

Apr 29, 2004

No. 76301509 (T.T.A.B. Apr. 29, 2004)

Mailed: File entries:
April 29, 2004 7 in 76301508
9 in 76301509
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re G-Net Media, LLC
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Serial Nos. 76301508 and 76301509
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Edward A. Sokolski, Esq. for G-Net Media, LLC.
David H. Stine, Trademark Examining Attorney, Law Office
114 (Margaret Le, Managing Attorney).
_______
Before Seeherman, Hanak and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
G-Net Media, LLC has applied to register the mark G-
NET and the stylized mark for services
ultimately identified as "cable and satellite television
programming services in the field of TV video games and
interactive television; and providing online video games
and information related to video games via a website on a
global computer network," in Class 41. The applications
This Opinion is Not
Citable as Precedent
of the TTAB
Serial Nos. 76301508 & 76301509
2
are based on applicant's stated bona fide intention to use
the marks in commerce for the identified services.
The examining attorney has refused registration under
Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d). The
examining attorney concluded that when applicant's marks
are used for the identified services, there will be a
likelihood of confusion among consumers, or that consumers
will be mistaken or deceived as to the source of the
services, in view of the prior registration of GNET
GWINNETT NEWS & ENTERTAINMENT TELEVISION for "cable
television broadcasting services" in Class 38. The
registration includes a disclaimer of all terms except
GNET.
When the examining attorney made the refusal of
registration final in each case, applicant appealed.1
Applicant and the examining attorney filed briefs, but
applicant did not request an oral hearing. We affirm the
refusal of registration in each case.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
1 The examining attorney also made final a requirement that
applicant amend its recitation of services. In each brief, the
applicant essentially adopted the examining attorney's suggestion
and the examining attorney has not argued in his brief that this
recitation is unacceptable. Accordingly, we consider the
examining attorney to have accepted the amendment and we have
changed Office records to reflect the amended recitations.
Serial Nos. 76301508 & 76301509
3
relevant to the factors bearing on the likelihood of
confusion issue. See In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003), and In re E.I.
du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). In the analysis of likelihood of confusion
presented by this case, key considerations are the
similarities of the marks and the related nature of the
services. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by Section 2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods [or services] and differences
in the marks”).
Turning first to the marks, the examining attorney
contends, in regard to the cited registration, that the
disclaimed matter GWINNETT NEWS & ENTERTAINMENT TELEVISION
consists of a geographically descriptive designation
(GWINNETT)2 and a generic designation for registrant's
services (NEWS & ENTERTAINMENT TELEVISION); that these
2 We take judicial notice of the following: "GWINNETT COUNTY 435
sq mi/1127 sq km, pop. 352,910, in N Georgia. Lawrenceville is
its seat. …At the NE edge of the Atlanta metropolitan area, the
county contains suburbs and exurbs, mostly in its SW, and poultry
and dairy farms in the E and N." The Cambridge Gazetteer of the
United States and Canada 264 (1995). We also note that the cited
registration issued to Rockdale Citizen Publishing Company of
Lawrenceville, Georgia.
Serial Nos. 76301508 & 76301509
4
elements have little, if any, source designation capacity;
and that they must, therefore, be considered subordinate to
GNET, which is arbitrary and occupies the dominant, initial
location in registrant's overall mark. Under relevant
precedent, the examining attorney argues, it is appropriate
to accord less significance to the disclaimed matter and
give greater weight to the mark's dominant feature, when
determining likelihood of confusion. The argument is a
sound exposition of the law. In re National Data Corp.,
732 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). See
also, Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1845 (Fed. Cir. 2000), and Giant Food, Inc. v.
Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390,
395 (Fed. Cir. 1983).
Applicant, in essence, argues that the disclaimed
phrase remains a significant element of the mark in the
cited registration; that GNET merely "represents the first
letter in each of the [disclaimed] terms," and that the
average person would more readily remember the phrase and
consider GNET only as the embodiment of that phrase.
Applicant's briefs, p. 2. In addition, applicant argues
"that GNET is not a highly distinctive mark but is in use
now and has been in use in the past for at least ten
different product lines and services." Id. As support for
Serial Nos. 76301508 & 76301509
5
this statement, applicant cites to a list of federal and
state registrations and applications, for marks listed in a
TRADEMARKSCAN database search report as GNET, G-NET or
G/NET, for various goods or services. Applicant therefore
concludes that each GNET, G-NET or G/NET mark "can only be
deemed to provide identity for a very specific line of
services." Applicant's briefs, p. 4.
In his brief, the examining attorney argues that the
third party registrations were not properly made of record
and are not, therefore, entitled to consideration (and, he
notes, were not considered). We agree that the authorities
on which the examining attorney relies hold that third
party registrations cannot be made of record by
introduction of a search report from a private database and
that registrations, contrary to applicant's argument, are
not evidence of use of the marks in the marketplace or that
the public is familiar with them and therefore able to
distinguish among otherwise similar marks. Accordingly,
applicant's TRADEMARKSCAN search report has not been
considered.3
3 We note, too, that applicant's search report lists only eight
federal filings among the 10 results obtained by its search, and
that four of those eight are listed as "abandoned," "cancelled,"
or only "pending." Moreover, we note that none of the four live
federal registrations deals with television programming services
of any kind, nor do the dead registrations or pending
applications.
Serial Nos. 76301508 & 76301509
6
We agree with the examining attorney that GNET would
be perceived as the dominant and source indicating portion
of the registered mark. We disagree with applicant's
conclusion that consumers of registrant's services would be
more likely to use a long, descriptive phrase to call for
or refer to registrant's services, when GNET would be the
more distinctive and convenient to use term. While we do
not discount the disclaimed matter, we think it entirely
appropriate to give more weight to the GNET portion of the
mark in the comparison of applicant's marks and the
registered mark. Applicant's typed mark and this dominant
element of the registered mark are, but for applicant's use
of a hyphen, identical in sight and sound. Applicant's
stylized mark and the dominant element of the registered
mark also would be pronounced the same and might even be
presented in similar typefaces, because the registered mark
is registered in typed form and we must consider that it
can be displayed in any reasonable form, including a form
the same as or similar to the presentation of applicant's
stylized mark. See INB National Bank v. Metrohost Inc., 22
USPQ2d 1585, 1588 (TTAB 1992), citing Phillips Petroleum
Co. v. C. J. Webb, Inc., 442 F.2d 1376, 170 USPQ 35, 36
(CCPA 1971).
Serial Nos. 76301508 & 76301509
7
Applicant asserts that the marks will be perceived as
having differences in connotation. Primarily, applicant
relies on its asserted use of its marks with its company
name. The company name is not, however, part of the marks
applicant seeks to register and cannot be relied on to
establish the absence of a likelihood of confusion. INB
National Bank, supra, 22 USPQ2d at 1588 ("The fact that [a
party] in practice may use its registered mark 'with an
associated house mark is not controlling.'"), citing
Frances Denney v. Elizabeth Arden Sales Corp., 263 F.2d
347, 120 USPQ 480, 481 (CCPA 1959). In any event, we
believe any differences in connotation will be outweighed
by the virtually identical sight and sound of applicant's
marks and registrant's term GNET.
Turning to the respective services, there clearly is a
relationship between applicant's "cable… television
programming services in the field of TV video games and
interactive television" and registrant's "cable television
broadcasting services." Registrant's recitation of
services is not limited and must be read to include
broadcasting of any of the types of programming identified
in applicant's recitation. See Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990) (“The authority is legion that
Serial Nos. 76301508 & 76301509
8
the question of registrability of an applicant’s mark must
be decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed”). Moreover,
because the registration is geographically unrestricted, we
must assume that the mark is or can be used anywhere in the
United States. Consumers of registrant's cable
broadcasting services, were they subsequently to encounter
applicant's programming, would likely be confused about
whether the services had a common source or common
sponsorship.
Applicant argues that there is no evidence of actual
confusion. However, applicant's applications are based on
its intention to use its marks in commerce and there is
nothing in either application record to indicate that
either mark is now in use or that there have been any
opportunities for actual confusion to occur. Accordingly,
the absence of actual confusion is not a factor in these
cases.
Finally, we note that we resolve any doubt about
likelihood of confusion in favor of registrant and against
applicant, which could have selected marks further afield
Serial Nos. 76301508 & 76301509
9
from that of the registrant. See, e.g., Kimberly-Clark
Corp. v. H. Douglas Enterprises, Ltd., 774 F.2d 1144, 227
USPQ 541 (Fed. Cir. 1985).
Decision: The refusals of registration under Section
2(d) of the Trademark Act are affirmed.