Pixel Instruments Corp.v.Sweven Corp.

Trademark Trial and Appeal Board

Feb 26, 2003

No. 91097136 (T.T.A.B. Feb. 26, 2003)

Mailed: February 26, 2003
Paper No. 48
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Pixel Instruments Corporation
v.
Sweven Corporation
_____
Opposition No. 97,136
to application Serial No. 74/460,274
filed on November 18, 1993
_____
Charles R. Rust and Kenneth L. Mitchell of Woodling, Krost
and Rust for Pixel Instruments Corporation.
Laura G. Miller and Brian J. Urban of Woodcock Washburn
Kurtz Mackiewicz & Norris for Sweven Corporation.
______
Before Seeherman, Hairston and Rogers, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Pixel Instruments Corporation has opposed the
application of Sweven Corporation to register the mark PIXEL
DUST PRODUCTIONS and design reproduced below,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition No. 97,136
2
for “computer consulting services, featuring design and
graphic creation services” in class 42.1 Opposer has
alleged, in its amended opposition, that applicant’s mark so
resembles opposer’s previously used trade name and trademark
PIXEL for electronic signal processors and engineering
consulting services, all of which relate to image processing
functions, that if used in connection with applicant’s
identified services, it is likely to cause confusion.
Opposer pleaded ownership of Registration No. 1,409,040
issued September 9, 1986 (affidavits under Sections 8 & 15
1 Serial No. 74/460,274, filed on November 18, 1993, claiming a
bona fide intention to use the mark in commerce. The word
“PRODUCTIONS” is disclaimed apart from the mark as shown. We
note that applicant filed an amendment to allege use
contemporaneously with its application, but the required fee did
not accompany the amendment, and the amendment was never
acknowledged or approved by the Examining Attorney. Thus, the
application published for opposition as an intent-to-use
application. If applicant prevails herein, the application will
be remanded to the Examining Attorney for consideration of the
amendment to allege use. Applicant may elect to have the
amendment to allege use considered or it may withdraw the
amendment to allege use in favor of filing a proper statement of
use. In either case, applicant will be required to submit the
prescribed fee.
Opposition No. 97,136
3
accepted and acknowledged, respectively) for the mark PIXEL
for “engineering consulting services” in class 42; and
Registration No. 1,554,423 issued September 5, 1989
(affidavits under Sections 8 & 15 accepted and acknowledged,
respectively) for the mark PIXEL for “electronic signal
processors” in class 9. Further, opposer alleged that
applicant lacked the requisite bona fide intention to use
the applied-for mark in commerce as of the application
filing date.
Applicant, in its amended answer, denied the salient
allegations of the opposition.
The record consists of the pleadings; the file of the
opposed application; the trial testimony of opposer’s
witness Carl J. Cooper, with related exhibits; and the trial
testimony of applicant’s witness John H. Heitmann, with
related exhibits. Opposer filed a notice of reliance on the
discovery depositions of John Heitmann, Thomas Dolby and
Michael Scotko, with related exhibits. In addition,
applicant submitted, under notice of reliance, opposer’s
responses to applicant’s discovery requests.2
2 Applicant also submitted, under notice of reliance, its own
discovery responses. However, a response to a discovery request
may be submitted and made part of the record by only the
inquiring party. See Trademark Rule 2.120(j)(5). Thus,
applicant’s discovery responses do not form part of the record in
this case.
Opposition No. 97,136
4
Both parties filed briefs on the case, but no oral
hearing was requested.
Before turning to the record and the merits of the
case, we must discuss two preliminary matters. First, we
note that in a decision issued December 30, 1999, the Board
denied opposer’s motion for summary judgment on the issue of
applicant’s bona fide intent and granted summary judgment in
applicant’s favor, finding that the evidence of record
established applicant’s bona fide intent as a matter of law.
Opposer, in its brief on the case, has requested
reconsideration of this decision.
Trademark Rule 2.127(a) provides that “[a]ny request
for reconsideration or modification of an order or decision
issued on a motion must be filed within one month from the
date thereof.” In view thereof, opposer’s request for
reconsideration is clearly untimely, and is accordingly
denied. However, an appeal of the Board’s summary judgment
ruling is proper upon issuance of this final decision on the
case.
Second, we note that on May 1, 1996 applicant filed a
motion to amend its recitation of services from “computer
consulting services, featuring design and graphic creation
services” to “designing and producing artistic digital
format graphics and creating multimedia content and
consulting services therefor, not including engineering
Opposition No. 97,136
5
services or engineering consulting services.” Opposer
objected to the amendment, essentially arguing there was no
basis for such an amendment because the record in the case
had not been fully developed. The Board, in an order issued
August 29, 1996, deferred decision on applicant’s motion to
amend pending the final decision in this case.
After reviewing the evidence presented at trial in this
case, we find that applicant’s proposed amendment to its
recitation of services is acceptable. That is, the evidence
shows that this recitation accurately describes applicant’s
services and the proposed amendment does not broaden, but
instead, restricts the original recitation of services. In
view thereof, applicant’s amendment to the recitation of
services is hereby entered in applicant’s application.
Under the circumstances, we will consider the issue of
likelihood of confusion vis-à-vis opposer’s electronic
signal processors and engineering consulting services and
applicant’s services of designing and producing artistic
digital format graphics and creating multimedia content and
consulting services therefor, not including engineering
services or engineering consulting services.
We turn then to the record and merits of the case.
According to opposer’s president, J. Carl Cooper, opposer
began doing business as Pixel Instruments in 1981. Mr.
Cooper testified that opposer sells “audio and video-signal
Opposition No. 97,136
6
processing products . . . that are capable of manipulating,
processing and generating images in conjunction with
hardware and software, the hardware including computers.”
(Cooper dep. p. 14). Further, Mr. Cooper testified that
opposer “provide[s] what are generically called ‘engineering
services’ relating to technical services, and that includes
the full spectrum of things that an engineer might do or
technical person might do in terms of designing equipment,
operating equipment, [and] producing various products with
technical equipment.” (Cooper dep. pp 14-15). According to
Mr. Cooper, opposer’s products are used in a variety of
industries, including the broadcast and digital TV
industries and digital publishing. As an example of one
application for its products, Mr. Cooper testified as
follows:
. . . the housing industry will shoot a
videotape of a house that’s for sale, bring
it back, process that raw tape, and then come
up with a presentation to be put out either
on videotape or over the web showing the
house to prospective buyers.
So the people that are involved in
that type of manipulation of images are
the types of people that are interested
in our products.
(Cooper dep. p. 99).
In 2001 opposer billed approximately $400,000 for its
engineering consulting services and sold approximately
$400,000 worth of electronic signal processors. Opposer’s
promotional efforts have included trade journals
Opposition No. 97,136
7
advertisements and trade shows. Opposer has used the PIXEL
trade name and mark in connection with its electronic signal
processors and engineering consulting services continuously
since 1981.
Applicant took the testimony of John Heitmann, one of
its founders and shareholders. According to Mr. Heitmann,
applicant began doing business in 1990 designing multimedia
presentations for use on laptop computers and in kiosks.
Applicant currently performs “graphic design and website
development [and] multimedia presentation development.”
(Heitmann dep. p. 6). Applicant uses “off-the-shelf”
software in providing its services. Applicant’s clients
come from a variety of industries and most are seeking to
market their products and/or services to customers via the
Internet. Mr. Heitmann testified that applicant has created
multimedia presentations for home builders, in particular,
and applicant’s mark is a creation of combining the word
“pixel” and construction “dust.”
Thomas Dolby, applicant’ president, described one of
applicant’s design projects as follows:
It was a project for a builder and we had
to create digital images of the homes,
rendered images of the homes … [and]
rather than the builder building the home
and have you touring it, you would do it
electronically and you would tour the home
with your fingertip using a touch-screen
display and graphics that were created by
Pixel Dust.
(Dolby discovery dep. p. 7).
Opposition No. 97,136
8
Priority of use is not in issue inasmuch as opposer
introduced copies of its pleaded registrations for the PIXEL
mark through the testimony of its witness Mr. Cooper and he
testified that the registrations are subsisting and owned by
opposer. See King Candy Co. v. Eunice Kings’s Kitchen,
Inc., 496 F.2d 1400, 182 108 (CCPA 1974). Further, the
record shows that opposer has used the PIXEL mark and trade
name in connection with its electronic signal processors and
engineering consulting services since prior to applicant’s
first use of the applied-for mark and the filing date of
applicant’s application.
This brings us to the issue of likelihood of confusion.
Our determination of this issue is based on an analysis of
all of the probative facts in evidence that are relevant to
the likelihood of confusion factors set forth in In re E. I.
duPont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In considering the evidence of record on these
factors, we keep in mind that “[t]he fundamental inquiry
mandated by §2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and the differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
In an opposition involving the issue of likelihood of
confusion, it is incumbent upon the opposer to establish a
Opposition No. 97,136
9
relationship between the goods and/or services of the
parties and/or that the conditions surrounding the marketing
of the goods and/or services are such that they would be
likely to be encountered by the same persons under
conditions and circumstances that could give rise, because
of the similarity of the marks used in connection therewith,
to a belief that they originate with or are in some way
associated with the same producer.
Considering first the relationship between opposer’s
electronic signal processors and applicant’s design
services, opposer contends that they are related because its
electronic signal processors “provide a ‘frame grabber’
operation for capturing and manipulating images just like
the ‘frame grabber’ used by [applicant]” in rendering its
services. (Brief, p. 14). Further, opposer maintains that
applicant’s services include taking analog images and
converting them to digital images and that opposer’s
electronic signal processors perform just this function.
However, opposer has presented no evidence that any
companies market and sell electronic signal processors and
design services under the same or similar marks. It is not
enough, for purposes of likelihood of confusion, that
opposer’s electronic signal processors perform image
functions and that applicant, in rendering its design
Opposition No. 97,136
10
services, uses equipment that performs image processing
functions.
Further, while we recognize that opposer’s electronic
signal processors and applicant’s design services, not being
restricted in any way in the involved identifications, may
be marketed to some of the same classes of purchasers, this
does not establish that the goods and services are related.
See e.g. Electronic Research Associates, Inc. v. Chart-Pak,
Incorporated, 158 USPQ 357 (TTAB 357) (TTAB 1968) [The fact
that different products may be sold to same purchaser is
considered on question of likelihood of confusion but this
single factor cannot be conclusive on such issue since
purchaser is also a prospective purchaser for widely
divergent goods]. A publishing firm may indeed purchase
opposer’s electronic signal processors for use in its
business and hire applicant to design its web page.
However, the record is devoid of any probative evidence to
show why purchasers would be likely to assume that these
distinctly different goods and services emanate from the
same source. The obvious differences between opposer’s
electronic signal processors, which are highly technical in
nature, and applicant’s design services are so great that
purchasers are not likely to assume a common source for
these goods and services. In short, opposer has failed to
meet its burden of proving a relationship between its
Opposition No. 97,136
11
electronic signal processors and applicant’s design
services. Likelihood of confusion must be established on
sound, viable, grounds rather than on supposition and
surmise. As the Court stated in Witco Chemical Co. v.
Whitfield Chemical Co., 418 F.2d 1403, 1405, 164 USPQ 43,
44-45 (CCPA 1969):
We are not concerned with mere theoretical
possibilities of confusion, deception, or
mistake or with de minimis situations, but
with the practicalities of the commercial
world with which trademark laws deal.
With respect to opposer’s engineering consulting
services and applicant’s design services, inasmuch as
applicant has amended its recitation of services to
specifically exclude engineering services and engineering
consulting services, there is no overlap between the
parties’ respective services. Moreover, opposer has not
established on this record that the parties’ respective
services are otherwise related.
Further, we find that the respective marks and trade
name are not similar in sound, appearance, connotation and
overall commercial impression. Although opposer’s mark and
trade name consists solely of PIXEL and applicant’s mark
begins with PIXEL, this word is highly suggestive of
opposer’s electronic signal processors and applicant’s
design services. We judicially notice that “pixel” is
defined in Webster’s Universal Encyclopedic Dictionary
Opposition No. 97,136
12
(2002) as “any of the small discrete elements that together
constitute an image (as on a television screen).” Thus, its
inclusion in opposer’s mark and trade name and in
applicant’s mark is not a basis for finding the marks and
trade name in their entireties to be similar. Rather, when
we consider the marks and trade name in their entireties,
applicant’s mark PIXEL DUST PRODUCTIONS and design is
different in appearance, sound, connotation and overall
commercial impression from opposer’s mark and trade name
PIXEL. The marks and trade name look and sound different to
the extent that applicant’s mark includes the words “DUST
PRODUCTIONS” and a prominent design, while opposer’s mark
does not.
In terms of connotation, opposer’s PIXEL mark and trade
name as applied to its electronic signal processors, in
particular, would be understood to mean, or to refer to, the
image processing function of such goods. On the other hand,
applicant’s PIXEL DUST PRODUCTIONS and design mark, as
applied to its design services, brings to mind “pixie dust”
and suggests that the images applicant creates are somewhat
magical. This connotation is reinforced by the prominent
design in applicant’s mark consisting of the dust like
appearance of scattered pixels.
In sum, opposer’s PIXEL mark and trade name and
applicant’s PIXEL DUST PRODUCTIONS and design mark are
Opposition No. 97,136
13
different in sound, appearance and connotation and create
different commercial impressions. In reaching this
conclusion, we have considered the highly suggestive nature
of the word “pixel” as applied to opposer’ goods, in
particular, and applicant’s services. Further, this record
does not establish that opposer’s electronic signal
processors and engineering consulting services are related
to applicant’s services of designing and producing artistic
digital format graphics and creating multimedia content and
consulting therefor, not including engineering services or
engineering consulting services. Thus, we hold that
confusion is not likely in this case.
Decision: The opposition is dismissed and the
application will be remanded to the Examining Attorney for
consideration of applicant’s amendment to allege use.