Kuvata, Inc.

Trademark Trial and Appeal Board

Apr 13, 2009

No. 78980002 (T.T.A.B. Apr. 13, 2009)

Mailed:
April 13, 2009
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Kuvata, Inc.
________

Serial No. 78980002
_______

Jeffrey P. Thennisch of Dobrusin & Thennisch PC for Kuvata,
Inc.

Steven W. Jackson, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).
_______

Before Quinn, Bucher and Rogers, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Kuvata, Inc. seeks registration on the Principal
Register of the mark MEDIACAST (in standard character
format) for goods identified in the application, as amended,
as follows:
“computer programs for delivering and
displaying audiovisual content for others,
database management, operating systems,
user interfaces, electronic mail, network
browsing, and presentations, namely, video
on demand, audiovisual content on demand,
music on demand, and text and graphics on
demand in the fields of business,
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78980002
- 2 -
scientific, technical, commercial,
educational, and personal computing, and
instructional manuals distributed
therewith” in International Class 9.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation based upon Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d). The Trademark
Examining Attorney has found that applicant’s mark, when
used in connection with the identified goods, so resembles
the mark MediaCast (in standard character format) for
“electronic, electric, and digital transmission of voice,
data, images, signals, and messages”2 in International
Class 38, as to be likely to cause confusion, to cause
mistake or to deceive.
The Trademark Examining Attorney and applicant have
fully briefed the case.
We affirm the refusal to register.
In urging registrability, applicant argues that
evidence drawn from registrant’s website demonstrates that

1 Application Serial No. 78611807 was filed on April 19, 2005
based upon applicant’s claims of first use anywhere and first
use in commerce at least as early as May 13, 2004. The original
combined class application was divided on March 17, 2008 keeping
only the Class 9 goods in this “child application,” Serial No.
78980002.

2 Registration No. 3200346 issued to The MediaTile Company
on January 23, 2007.
Serial No. 78980002
- 3 -
registrant is involved in providing a digital signage
network for its customers, something altogether different
from applicant’s computer programs. Additionally,
applicant argues there are other trademark owners with
composite marks having the words “Media” and “Cast” in that
order, indicating that the cited mark co-exists in a
crowded field.
By contrast, the Trademark Examining Attorney contends
that applicant has failed to demonstrate that the
registered mark is weak for the recited services; that
telecommunications services of the type recited by
registrant and computer programs of the type identified by
applicant are marketed under the same trademark by third
parties; that the respective goods and services, as
described, are legally related, and hence, must be presumed
to flow through overlapping channels of trade to the same
classes of consumers.
Likelihood of Confusion
We turn then to a consideration of the issue of
likelihood of confusion. Our determination of likelihood
of confusion is based upon our analysis of all of the
probative facts in evidence that are relevant to the
Serial No. 78980002
- 4 -
factors bearing on this issue. See In re E. I. du Pont
de Nemours & 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); and In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997). In any likelihood of confusion analysis, however,
two key, although not exclusive, considerations are the
similarities between the marks and the relationship between
the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976).
The marks
We turn first to the du Pont factor focusing on the
similarities or dissimilarities in the appearance, sound,
connotation and commercial impression of the respective
marks. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005). The involved marks are legally
identical, and applicant does not argue otherwise. This
factor weighs heavily in favor of a finding of likelihood
of confusion.
Serial No. 78980002
- 5 -
The number and nature of similar marks on similar
goods/services

Applicant’s arguments related to the cited mark are
focused on its contention that registrant’s mark should be
accorded a narrow scope of protection. However, applicant
has failed to provide any probative evidence in support of
this position. Applicant argues that prospective
purchasers will “encounter the terms MEDIA and CAST on many
similar products” (brief at 10), citing to only three,
earlier-pending applications. However, an application
shows only that someone filed a trademark application. Two
of these three applications – involving marks having quite
different connotations and commercial impressions from both
registrant’s and applicant’s marks – have since been
abandoned. The last of these applications (SN 77001237)
appears to be suspended pending the outcome of this very
proceeding.
Accordingly, we must agree with the Trademark
Examining Attorney that as applied to registrant’s recited
services, the mark MediaCast must be deemed to be
arbitrary, or at worst, suggestive. On this record, under
Section 7 of the Trademark Act, we must accord registrant’s
mark the scope of protection appropriate for any mark
Serial No. 78980002
- 6 -
registered on the Principal Register. Hence, this du Pont
factor also favors the position of the Trademark Examining
Attorney herein.
Relationship of the Goods and Services
We begin our discussion of this du Pont factor
keeping in mind that whenever the marks are legally
identical, the relationship between the involved goods and
services need not be as close to support a holding of
likelihood of confusion as might apply where differences
exist between the marks. In re Opus One Inc., 60 USPQ2d
1812, 1815 (TTAB 2001); In re Melville Corp., 18 USPQ2d
1386, 1387 (TTAB 1991); In re Concordia International
Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983); and Amcor,
Inc. v. Amcor Indus., Inc., 210 USPQ 70, 78 (TTAB 1981).
Nonetheless, applicant is correct in arguing that
there is certainly no per se rule that all computer
programs and telecommunications services are related. On
the other hand, it is well settled that goods and services
need not be identical or even competitive in order to
support a finding of likelihood of confusion; it is
sufficient that the goods and services be related in some
manner or that the circumstances surrounding their
marketing are such that they would likely be encountered by
Serial No. 78980002
- 7 -
the same persons under circumstances that could give rise
to the mistaken belief that they emanate from or are
associated with the same source. See In re Peebles Inc.,
23 USPQ2d 1795, 1796 (TTAB 1992) and Monsanto Co. v.
Enviro-Chem Corp., 199 USPQ 590, 596 (TTAB 1978).
Applicant’s goods, as seen above, include “computer
programs for delivering … electronic mail, network
browsing, and presentations, namely, video on demand,
audiovisual content on demand, music on demand, and text
and graphics on demand ….” Registrant’s services are
recited as “electronic, electric, and digital transmission
of voice, data, images, signals, and messages.”
The cited registration is not limited as to the
content of the electronic, electric and digital
transmission services, but lists a variety of forms of such
transmissions, such as voice, data, images, signals and
messages. Because registrant’s services are broadly
described, we find no limitation as to the nature or type
of transmission services, and no restrictions as to
channels of trade or classes of purchasers. See In re
Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992). The services
could well include the delivery of email, video on demand,
audiovisual content on demand, music on demand, text and
Serial No. 78980002
- 8 -
graphics on demand, etc.; and these activities are the
focus of applicant’s identified goods. Thus, applicant’s
identified goods and registrant’s recited services must be
deemed to be legally related because they are
complementary. The Trademark Examining Attorney has also
introduced evidence from the Internet that registrant, as
part of its service offerings, also provides for its
customers computerized components that would be classified
in International Class 9.
However, applicant argues that in reality, its goods
are quite different from, and hence, unrelated to,
registrant’s services. Applicant posits that information
drawn from registrant’s own website provides evidence that
registrant is a vendor involved in providing for merchants
and manufacturers a digital signage network or a
“narrowcast network.” Clearly, this is a much narrower
scope of services than that recited in the registration.
As narrowed by applicant, registrant has a targeted and
much more restricted audience than the presumptive
population of potential purchasers for applicant’s goods.
However, applicant also points out that its goods are
enterprise solutions, that they are expensive, and are
targeted to sophisticated persons in business enterprises.
Serial No. 78980002
- 9 -
It is well settled that the issue of likelihood of
confusion between an applied-for mark and a registered mark
must be determined on the basis of the goods and services
as they are identified in the involved application and
cited registration, not on the basis of whatever the
extrinsic evidence may show. See Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1690 n.4 (Fed. Cir. 1993); Canadian Imperial Bank v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir.
1992); Paula Payne Products Company v. Johnson Publishing
Company, 177 USPQ 76 (CCPA 1973); and In re William Hodges
& Co., Inc., 190 USPQ 47 (TTAB 1976). In this regard, it
would be improper to permit applicant to restrict the scope
of registrant’s registration based upon extrinsic evidence
that applicant produced from registrant’s website. See In
re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986).
In the present case, without resort to extrinsic
evidence, we must presume that registrant’s services
include the delivery of email and all kinds of content on
demand for ordinary online computer users. Additionally,
applicant’s goods, as identified, clearly are not limited
to LAN-based or enterprise-wide applications, and must be
Serial No. 78980002
- 10 -
presumed to include programs available to any potential
user of services such as email, video on demand and music
on demand, etc.
The related nature of the goods and services and the
presumptive similarity in consumers for the goods and
services would be sufficient for us to find the involved
goods and services related. However, in addition, the
Trademark Examining Attorney has placed into the record a
representative sampling of use-based, third-party
registrations showing the same mark registered for both
computer programs for electronic messaging in class 9 and
electronic, electric and digital transmission services in
class 38. While third-party registrations are not evidence
of commercial use of the marks shown therein, or if in use,
that the public is familiar with them, this is a common
method of presenting probative evidence that suggests the
listed goods and services may be viewed by consumers as
emanating from a single source. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993) and In re Mucky
Duck Mustard Co., Inc., 6 USPQ2d 1467 n.6 (TTAB 1988):
WEBPINE for “computer programs for electronic
communication and messaging” in Int. Class
9;
“online communications services, namely,
providing electronic transmission of data;
Serial No. 78980002
- 11 -
e-mail services provided over global
computer networks” in International Class
38;3
VOXIVA for, inter alia, “computer software for
enabling electronic data exchange,
electronic messaging, electronic voice
messaging, and electronic transactions
between others via telephones, wireless
communications devices, and the internet” in
International Class 9;
“communications and telecommunications
services, namely, providing electronic data
exchange, electronic messaging, electronic
voice messaging, and electronic transactions
between others via telephones, wireless
communications devices, and the internet;
electronic transmission of messages and
data; electronic, electric, and digital
transmission of voice, data, images,
signals, and messages” in International
Class 38;4
RIVETED for “computer programs, namely computer
programs for calendaring, sharing of
calendar information, instant text and voice
messaging, file sharing and web browsing” in
Int. Class 9;
“electronic transmission of messages and
data in the nature of community calendar
information; instant text and voice
messaging services” in International Class
38;5

3 Registration No. 2687452 issued on February 11, 2003.

4 Registration No. 2702467 issued on April 1, 2003; Section 8
affidavit (six-year) accepted and Section 15 affidavit
acknowledged.

5 Registration No. 2805814 issued on January 13, 2004.

Serial No. 78980002
- 12 -

for, inter alia, “computer programs, namely
prerecorded computer programs for data
collection and distribution in the field of
real estate, sales, appraisals, and
services; custom designed computer programs
for web pages in the field of internet
displays” in International Class 9;
“electronic transmission of data images and
documents via computer terminals; electronic
mail services providing online electronic
bulletin boards among computer users
concerning real estate sales, listings, tax
information, and tax listings” in
International Class 38;6
SDFI for “computer software for organizing and
viewing digital images and photographs” in
International Class 9;
“electronic, electric, and digital
transmission of voice, data, images,
signals, and messages” in International
Class 38;7
DICOM GRID for “apparatus for acquisition, digital
storage, transmission or reproduction of
still images, moving images, sound or text
related to medical imaging of humans or
animals, namely, computer networks comprised
of computer hardware, software and firmware”
in International Class 9; and
“electronic services allowing at least one
person to communicate with another by means
of voice, still images, moving images or
text, namely computer aided transmission of
information, images and videos; electronic
delivery of images, video and photographs
via a global computer network; electronic,
electric and digital transmission of voice,
data, images, video signals and messages;
transmission of information, images and
video relating to pharmaceuticals, medicine

6 Registration No. 2947133 issued on May 10, 2005.

7 Registration No. 3193711 issued on January 2, 2007.

Serial No. 78980002
- 13 -
and hygiene; wireless electronic
transmission of voice signals, data,
facsimiles, images, video and information;
online document delivery via a global
computer network” in International Class
38.8

We note that applicant relies extensively on the
result and analysis in Information Resources Inc. v.
X*Press Information Services, 6 USPQ2d 1034 (TTAB 1988),
arguing that the Information Resources case is akin to the
present case. However, in Information Resources, opposer’s
computer software involved specialized programs for
information analysis, while the applicant was offering a
news service through a cable TV system. The Board also
found that there was evidence in the record of widespread
use of the term “Express” in opposer’s field, and that the
applicant’s X*PRESS mark creates a distinctly different
commercial impression from opposer’s EXPRESS mark when each
was applied to the respective goods and services.
Channels of trade and conditions under which and buyers to
whom sales are made

We turn to two related du Pont factors that focus
on the similarity or dissimilarity of established,

8 Registration No. 3254335 issued on June 19, 2007. No claim
is made to the term “Dicom” apart from the mark as shown.

Serial No. 78980002
- 14 -
likely-to-continue trade channels, and the conditions
under which and buyers to whom sales are made. In
reaching our decision, we have considered applicant’s
contention that the purchasers of all of the involved
goods and services are sophisticated, and that the
purchases are made only after careful thought.
Specifically, applicant argues that registrant’s
narrowcast network services are directed to a narrow
grouping of sophisticated individuals, and that its
enterprise computerized systems are marketed to
sophisticated information technology specialists or well-
informed business persons.
On the other hand, as noted above, neither
registrant’s services nor applicant’s goods are limited
by classes of purchasers. Neither is explicitly
restricted to niche channels of trade. Thus, we must
presume that registrant’s services and applicant’s goods
will be available through all normal trade channels to
all potential customers, including individual, online
computer users and small-business persons, who would not
necessarily be as sophisticated or thoughtful in
purchasing such goods or services. In re Elbaum,
211 USPQ 639, 640 (TTAB 1981); and In re Optica Int’l,
Serial No. 78980002
- 15 -
196 USPQ 775, 778 (TTAB 1977). These factors too favor
a finding of likelihood of confusion.
Finally, even if prospective consumers of
applicant’s goods and registrant’s services should be
deemed to be sophisticated, we find that the legal
identity between the marks and closely-related goods and
services clearly outweigh any purchaser sophistication.
See In re Decombe, 9 USPQ2d 1812 (TTAB 1988); and In re
Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983).
Conclusion: Likelihood of Confusion
In conclusion, the du Pont factors favoring a finding
of likelihood of confusion include the fact that the marks
are legally identical, the goods and services are related,
and we must presume that they will move through some of the
same channels of trade to the same classes of ordinary
consumers.
Decision: The refusal to register this mark based
upon Section 2(d) of the Lanham Act is hereby affirmed.