Red Hat, Inc.v.CMC Magnetics Corp. Ltd.

Trademark Trial and Appeal Board

Oct 31, 2000

No. 91113557 (T.T.A.B. Oct. 31, 2000)

Baxley
10/31/00
Opposition No. 113,557
Red Hat, Inc.
(by name change from Red
Hat Software, Inc.)1
v.
CMC Magnetics Corp. Ltd.
Before Hohein, Chapman and Rogers,
Administrative Trademark Judges.
By the Board:
CMC Magnetics Corp. Ltd. ("applicant") seeks to
register the mark MR. DATA and design, as reproduced
below in reduced form,

1 Inasmuch as the name change document in connection with
opposer's pleaded registrations is recorded with the Assignment
Branch of the PTO at reel 1934, frame 0491, the Board has
amended the caption of this proceeding. TBMP Section 512.02.
UNITED STATES DEPARTMENT OF COMMERCE
Patent and Trademark Office
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 113,357
2
for "electronic equipment and its components and magnetic
storage media, namely, fax machines; televisions,
television receivers; audio cassette recorders and
players; video cassette recorders; cameras, digital
cameras; camcorders; stereo equipment, namely, stereo
speakers; radios; video tapes; blank magnetic tapes;
blank magnetic discs; blank floppy discs; blank compact
discs, blank CD-ROMs and blank CD-Rs (recordable compact
discs); blank digital video discs (DVDs); blank DVD-ROMs,
blank DVD-Rs and blank DVD-RAMs."2
Registration has been opposed by Red Hat, Inc.
("opposer") on the grounds that (1) the involved mark, if
applied to applicant's goods, would so resemble the
following marks, which have been previously used and
registered by opposer, as to be likely to cause
confusion, mistake or deception: RED HAT for "computer
software, namely, computer programs for operating
systems, system administration, computer communications
administration, and instructional materials provided
therewith as a unit" in International Class 93 and

2 Application Serial No. 75/287,519, filed on May 6, 1997, based
on a bona fide intention to use the mark in commerce under
Trademark Act Section 1(b), 15 U.S.C. Section 1051(b).
3 Registration No. 2,142,662, issued March 10, 1998 and reciting
July 29, 1994 as the date of first use and first use in commerce
Opposition No. 113,357
3
"providing consultation in the field of computer
software" in International Class 42; and the design mark
shown below,
for "computer software, namely, computer programs for
operating systems, system administration, and computer
communications administration, and instructional
materials provided therewith as a unit" in International
Class 9 and "technical support services in the field of
computer software" in International Class 42;4 and (2) the
involved mark, if applied to applicant's goods, would
dilute opposer's pleaded marks.
Applicant, in its answer, has denied the salient
allegations of the notice of opposition.

in International Class 9 and November 2, 1994 as the date of
first use and first use in commerce in Class 42.
4 Registration No. 2,161,889, issued June 2, 1998 and reciting
October 4, 1996 as the date of first use and first use of the
mark in commerce in both International Classes 9 and 42. The
mark is lined for the color red, and color is claimed as a
feature of the mark.
Opposition No. 113,357
4
This case now comes up for consideration of
applicant's motion (filed October 14, 1999) for summary
judgment on the grounds that there is neither likelihood
of confusion nor dilution, and opposer's cross-motion
(filed November 18, 1999) for summary judgment on the
same grounds. Both motions are fully briefed.5
In support of its motion, applicant argues that
because of the dissimilarities of the parties' marks,
there is no genuine issue of material fact regarding both
likelihood of confusion between applicant's involved mark
and opposer’s pleaded marks and dilution of opposer’s
pleaded marks by applicant’s involved mark.6
As evidentiary support for its motion, applicant has
submitted: (i) an enlarged copy of the mark in the
involved application as published in the Official Gazette
on November 3, 1998; (ii) photocopies of opposer's
pleaded registrations; (iii) photocopies of packaging
depicting opposer's marks; (iv) copies of opposer's
responses to applicant's interrogatories; (v) copies of

5 We have considered opposer's reply brief because it clarifies
the issues before us. See Trademark Rule 2.127(a).
6 Although applicant did not submit its motion for summary
judgment as a separate paper, the Board deems applicant's
memorandum of law (filed October 14, 1999) as incorporating a
proper motion for summary judgment. See Trademark Rule
2.127(a). In view thereof, opposer's challenge to the Board's
Opposition No. 113,357
5
documents produced by opposer in response to applicant's
requests for document production; and (vi) a declaration
from its counsel, Roy S. Gordet, introducing applicant’s
exhibits.
Turning to opposer's motion for summary judgment,
and in regard to the likelihood of confusion claim,
opposer argues that a side-by-side comparison of the
marks is inapproprate and that, instead, the Board should
evaluate how a consumer, who has previously seen or heard
about opposer's goods, would remember opposer's mark and
be affected by that memory when later confronted with
applicant's mark alone. Opposer further argues that
applicant's addition of the wording MR. DATA is
insufficient to distinguish the marks in issue because
purchasers could mistakenly believe that the wording
constitutes a separate mark and that the design component
of the applicant's involved mark designates opposer's
goods. Opposer finally argues that all of the factors
set forth in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973), favor opposer.
Regarding the dilution claim, opposer contends that
its pleaded registered marks are famous and have been in
use since before the filing date of the involved

jurisidiction over applicant's motion is not well taken and will
Opposition No. 113,357
6
application; and that, inasmuch as there is no evidence
that any other hat designs are used to identify the
products of third parties in the field of computer
hardware, software and accessories, applicant's mark
“will dilute” opposer's pleaded marks.
As support for its position, opposer submitted: (i)
the declaration of its chief counsel, David Shumannfang,
in which he primarily avers that opposer’s pleaded marks
are famous and introduces news clippings as evidence of
their fame; (ii) the declaration of its chief marketing
officer, Thomas Butta, avering that the design portion is
dominant in creating the commercial impression of
applicant's mark; (iii) samples of news clippings
featuring opposer's pleaded marks; (iv) photocopies of
computer catalogs; (v) a specimen of applicant's mark in
use in foreign commerce;7 and (vi) samples of packaging in
which opposer's goods are used.

receive no further consideration.
7 In its brief in opposition to opposer's cross-motion for
summary judgment, applicant has objected to opposer's
introduction into evidence of the specimen on the grounds that
it is irrelevant because the Board must consider marks as they
are applied for, not as they are used, and because a party's
foreign use of an involved mark is irrelevant to the issues in a
Board proceeding. See Wells Fargo Bank v. Stagecoach
Properties, Inc., 685 F.2d 302, 216 USPQ 480, 484 (9th Cir.
1982); Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 1
USPQ2d 1813, 1815 (Fed. Cir. 1987); Double J of Broward Inc. v.
Skalony Sportswear GmbH, 21 USPQ2d 1609 (TTAB 1991); and Johnson
& Johnson v. Salve S.A., 183 USPQ 375 (TTAB 1974). However,
Opposition No. 113,357
7
In response to opposer's cross-motion, applicant
maintains that the marks are dissimilar and that opposer
has ignored relevant case law in its arguments.
Applicant further contends that its involved mark is not
a design of a hat, but rather is composed of an abstract
design that defies verbal description, and does not
include a claim to the color red.
The purpose of summary judgment is to avoid an
unnecessary trial where additional evidence would not
reasonably be expected to change the outcome. See
Pure Gold, Inc. v. Syntex (U.S.A.) Inc., 730 F.2d 624,
222 USPQ 741 (Fed. Cir. 1984). See also TBMP section
528.01 and cases cited therein.
Generally, summary judgment is appropriate in cases
where the moving party establishes that there are no
genuine issues of material fact which require resolution
at trial and that it is entitled to judgment as a matter
of law. Fed. R. Civ. P. 56(c). An issue is material
when its resolution would affect the outcome of the
proceeding under governing law. See Anderson v. Liberty

since applicant's mark is not limited to a particular color, the
Board finds that, to the extent that the specimen shows an
intended use of the involved mark in the color red, the specimen
is relevant and, therefore, will be considered.
Opposition No. 113,357
8
Lobby, Inc., 477 U.S. 242, 106 S. Ct. 2505 (1986); and
Octocom Systems
Inc. v. Houston Computers Services, Inc., 918 F.2d 937,
16 USPQ2d 1783, 1786 (Fed. Cir. 1990). A fact is
genuinely in dispute if the evidence of record is such
that a reasonable factfinder could return a verdict in
favor of the nonmoving party. Id. However, a dispute
over a fact which would not alter the Board's decision on
the legal issue will not prevent entry of summary
judgment. See, e.g., Kellogg Co. v. Pack'Em Enterprises
Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991).
Based on the record now before us and for the
reasons discussed below, we conclude that summary
judgment is appropriate in this case because applicant
has established that there are no genuine issues of
material fact remaining for trial and that it is entitled
to a judgment dismissing opposer’s likelihood of
confusion and dilution claims as a matter of law.
Initially, we note that for purposes of applicant's
motion for summary judgment, applicant appears to concede
that opposer's pleaded registrations are valid and
subsisting and that priority, therefore, is not in issue.
See King Candy Co. v. Eunice King's Kitchen, Inc., 182
USPQ 108, 110 (TTAB 1974). We note, however, that,
Opposition No. 113,357
9
inasmuch as the parties' marks are so dissimilar, there
is no likelihood of confusion. Specifically, after a
careful review of the record in this case, we find the
circumstances here are similar to those in Kellogg Co. v.
Pack'Em Enterprises Inc., 14 USPQ2d 1545 (TTAB 1990),
aff'd, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991), in
that the single du Pont factor of the similarity or
dissimilarity of the marks in their entireties outweighs
all other relevant factors and is dispositive of the
issue of likelihood of confusion.
In considering the similarities and dissimilarities
of the parties' marks, we evaluate, among other things,
the visual appearance and sound of the parties' marks.
None of opposer's marks contain the terms "Mr." (or its
full-length form, "mister"), or "data", or their phonetic
equivalents. Moreover, in comparing the design elements
of the parties' marks, we find that the differences
outweigh the similarities. The graphic elements in the
designs of the parties' marks present different types of
hats in very different stylizations. A common reference
to hats in the relevant marks is not enough to render
those marks similar in their entireties.
Opposer's marks not only differ greatly in
appearance and sound from applicant's composite mark, but
Opposition No. 113,357
10
also convey a much different overall commercial
impression, even when applicant's mark is presented in
the color red. It is our view that the wording MR. DATA
in conjunction with a depiction of a stovepipe hat with
an orbiting planet and moon brim suggests an
intergalactic connotation.8 This is to be distinguished
from the connotation of opposer's word mark, which
literally connotes a red hat, and its design mark, which
denotes a shadowy and decidely earthbound figure wearing
a red fedora hat.
We are not persuaded by opposer's contention that
the design portion of applicant's mark is dominant in
creating the commercial impression thereof. When a mark
consists of a word portion and a design portion, the word
portion is more likely to be impressed upon a purchaser's
memory and to be used in calling for the goods or
services. In re Appetito Provisions Co., 3 USPQ2d 1553
(TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729
(TTAB 1976).
Furthermore, we are not persuaded by opposer's
contention that applicant's mark and opposer's pleaded

8 Inasmuch as the letter M in applicant's involved mark nearly
touches the orbit in the design portion thereof, opposer's
contention that purchasers will view that mark as two separate
marks is unpersuasive.
Opposition No. 113,357
11
marks are legal equivalents under In re Duofold, Inc.,
184 USPQ 638 (TTAB 1974). Rather, we find that, even if
presented in the color red, applicant's involved mark,
when viewed in its entirety, is so highly stylized that
it would not readily evoke a connection with RED HAT and
thus would not result in a likelihood of confusion. See
In re Serac, Inc., 218 USPQ 340 (TTAB 1983).
In addition, while opposer correctly contends that
the test of likelihood of confusion is not whether the
marks can be distinguished when subjected to a
side-by-side comparison, for the foregoing reasons, we
conclude that the parties' marks do not convey the same
overall commercial impression, inasmuch as they do not
look alike, do not sound alike, and do not convey similar
meanings. In short, the marks are so dissimilar that
there is no likelihood of confusion between them. See,
e.g., G.H. Mumm & Cie v. Desnoes & Geddes Ltd., 917 F.2d
1292, 16 USPQ2d 1635, 1638 (Fed. Cir. 1990).
As such, there is no genuine issue as to any fact
that would be material to the question of likelihood of
confusion, and applicant is entitled to judgment on this
issue as a matter of law.
Considering next the issue of dilution under
Trademark Act Section 43(c), 15 U.S.C. Section 1125(c),
Opposition No. 113,357
12
to cause dilution of the distinctive quality of a senior
mark, the marks in issue must be of such similarity that,
in the minds of consumers, the junior mark will conjure
an association with the senior. Nabisco, Inc. v. PF
Brands, Inc., 51 USPQ2d 1882, 1889 (2d Cir. 1999);
Luigino's, Inc. v. Stouffer Corp., 170 F.3d 827, 50
USPQ2d 1047 (8th Cir. 1999); Mead Data Central v. Toyota
Motor Sales, Inc., 10 USPQ2d 1961, 1964 (2d Cir. 1989).
The United States Court of Appeals for the Sixth Circuit
has stated that the extent of similarity necessary to
show dilution is greater than that which is required to
show likelihood of confusion. Jet, Inc. v. Sewage
Aeration Sys., 165 F.3d 419, 49 USPQ2d 1355 (6th Cir.
1999).
We find that the commercial impressions of the marks
in issue are so dissimilar that, in the minds of
consumers, applicant's mark will not conjure an
association with opposer's marks. Furthermore, inasmuch
as the marks in issue are not similar enough to satisfy
even the likelihood of confusion test, opposer's claim of
dilution must fail as well. As such, we find that there
is no genuine issue of material fact with regard to
opposer’s claim of dilution, and applicant is entitled to
judgment on this issue as a matter of law.
Opposition No. 113,357
13
In view thereof, applicant's motion for summary
judgment is granted, and opposer’s cross-motion for
summary judgment is denied.9 See Fed. R. Civ. P. 56(c).
Accordingly, the opposition is hereby dismissed with
prejudice.
G. D. Hohein
B. A. Chapman
G. F. Rogers
Administrative Trademark
Judges, Trademark Trial
and Appeal Board

9 Applicant's motion (filed October 14, 1999) to extend
discovery is moot.