Optibase, Inc.

Trademark Trial and Appeal Board

Sep 26, 2000

No. 75253228 (T.T.A.B. Sep. 26, 2000)

Paper No. 12
GFR
9/26/00
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Optibase, Inc.
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Serial No. 75/253,228
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Thomas I. Rozsa of Rozsa & Chen for Optibase, Inc.
David H. Stine, Trademark Examining Attorney, Law Office
114 (Conrad Wong, Acting Managing Attorney).
_______
Before Seeherman, Hanak and Rogers, Administrative
Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Optibase, Inc. has filed an application to register
MPEG MOVIEMAKER, with MPEG disclaimed, as a trademark in
International Class 9 for goods identified as "computer
hardware and software for MPEG encoding of video and
audio."1
The Trademark Examining Attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant's mark, if used in
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/253.228
2
connection with the identified goods, will be likely to
cause confusion or mistake or to deceive consumers, in view
of the prior registration of the mark MOVIE MAKER for
"computer programs."2
When the refusal was made final, applicant appealed.
Both applicant and the Examining Attorney have filed
briefs, but an oral hearing was not requested. We affirm
the refusal.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See 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,
two key considerations are the similarities of the marks
and the legally identical nature of some of the goods.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
We begin with the goods and note that our analysis of
the similarity or relatedness of the goods must be based on
the identifications in the involved application and

1 Serial No. 75/253,228, filed March 7, 1997, based on
applicant's allegation of a bona fide intention to use the mark
in commerce.
2 Registration No. 1,348,959, issued July 16, 1985. Section 8
and 15 Affidavits accepted and acknowledged November 29, 1991.
Ser. No. 75/253.228
3
registration. See Octocom Systems Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990), and Canadian Imperial Bank of Commerce,
National Association v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813, 1815-16 (Fed. Cir. 1987). Registrant's goods
are broadly identified simply as "computer programs"
without restriction as to type or use. Accordingly, we
must consider the goods to include applicant's identified
software, i.e., "software for MPEG encoding of video and
audio." Moreover, in the absence of any restrictions on
channels of trade or classes of consumers, we must presume
that the respective goods move in all normal channels of
trade and to all usual classes of consumers therefor. See
CBS Inc. v. Morrow, 218 USPQ 198, 199 (Fed. Cir. 1983). In
short, for our analysis, some of the goods are identical
and their channels of trade and classes of consumers are
presumptively the same. Indeed, applicant makes no
arguments to the contrary.
Turning to the marks, applicant argues that the
Examining Attorney has violated the "anti-dissection" rule
and has failed to properly consider that MPEG is a part of
applicant's mark, while it is not present in the mark in
the cited registration.
Ser. No. 75/253.228
4
We do not find the Examining Attorney to have acted
improperly in according greater weight to the MOVIEMAKER
element of applicant's mark. As noted herein, applicant
has disclaimed rights in MPEG3; disclaimed or descriptive
terms typically are given less weight when comparing marks.
Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ
693 (CCPA 1976). While we must consider the marks in their
entireties, it is well settled that one feature of a mark
may be more significant than another, and it is not
improper to give more weight to this dominant feature in
determining the commercial impression created by the mark.
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985).
Applicant also relies on a prior decision of this
Board that held there is no absolute rule that an applicant
cannot register a trademark which incorporates the entirety
of a previously registered mark,4 and on a number of
decisions wherein an applicant was able to register a mark

3 While the record does not reveal the significance of MPEG, we
note the following:
MPEG \M'peg, M`P-E-G'\ n. 1. Acronym for Moving Pictures
Experts Group. A set of standards for audio and video
compression established by the Joint ISO/IEC Technical
Committee on Information Technology. … 2. A video/audio
file in the MPEG format. Such files generally have the
extension .mpg.
Microsoft Press Computer Dictionary 317 (3rd Ed. 1997).
4 In re Merchandising Motivation, Inc., 184 USPQ 364 (TTAB 1974).
Ser. No. 75/253.228
5
which incorporated the entirety of a previously registered
mark. We find all of those cases to be distinguishable,
however, either because the appropriated term is
descriptive in the resulting composite (e.g., "Menswear"
merely descriptive of applicant's services in composite
mark MMI MENSWEAR5) or the commercial impressions of the
marks differ (e.g., TIC TAC v. TIC TAC TOE6).
In this case, the appropriated term is the arbitrary
or suggestive word MOVIEMAKER7, and the additional element
MPEG in applicant's mark does not change the commercial
impression, which remains that of the term MOVIEMAKER.
Applicant's adoption of MPEG as part of its mark would be
viewed by consumers solely as a description of the type of
computer software, namely, as indicating the particular
type of encoding of video and audio that can be done with
applicant's goods.
Finally, we note applicant's reliance on two cases
wherein identical marks were registered by different

5 See Merchandising Motivation, supra.
6 See In re P. Ferrero & C. S.p.A., 178 USPQ 167 (CCPA 1973).
7 There is nothing in the record to indicate the nature of
registrant's computer programs, so we cannot reach any conclusion
regarding whether the registered mark is arbitrary or suggestive.
In view of the more definitely identified goods of applicant,
MOVIEMAKER is suggestive as part of applicant's mark.
Ser. No. 75/253.228
6
parties for different goods.8 These cases, however, are not
relevant, as applicant's goods and those in the cited
registration are, in part, legally identical.
Under the circumstances of this case, we find that
consumers familiar with registrant's mark used on its
identified goods, if confronted with applicant's mark used
on applicant's goods in the marketplace, will likely be
confused as to source or sponsorship.
Decision: The refusal of registration is affirmed.
E. J. Seeherman
E. W. Hanak
G. F. Rogers
Administrative Trademark
Judges, Trademark Trial
and Appeal Board

8 In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984) (PLAYERS
allowed to be registered by different parties for shoes and men's
underwear because goods "distinctly different" and "not
complementary or companion items"); and Faultless Starch Co. v.
Sales Producers Associates, Inc., 530 F.2d 1400, 189 USPQ 141
(CCPA 1976) (court affirmed Board's decision that no likelihood
of confusion existed despite use of FAULTLESS by different
parties for canned foods and laundry starch).