Orion Electric Co., Ltd.v.Orion Electric Co., Ltd.

Trademark Trial and Appeal Board

Mar 19, 2004

No. 91121807 (T.T.A.B. Mar. 19, 2004)

Mailed: March 19, 2004
Paper No. 50
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
Orion Electric Co., Ltd.
v.
Orion Electric Co., Ltd.
_______
Opposition No. 91121807
to Application No. 75643483
filed on February 18, 1999
_______
Kaushal R. Odedra of Wenderoth, Lind and Ponack for Orion
Electric Co. Ltd., opposer.
John C. Gorman of Gorman & Miller for Orion Electric Co.
Ltd., applicant.
_______
Before Simms, Walters and Rogers, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Orion Electric Co., Ltd. (opposer), a Japanese company,
filed its opposition to the application of Orion Electric
Co., Ltd. (applicant), an unrelated Korean company, to
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Opposition No. 91121807
2
register the mark ORION for “display monitors, moniputers
and related accessories,” in International Class 9.1
As grounds for opposition, opposer asserts that
applicant’s mark, when applied to applicant’s goods so
resembles opposer’s previously used and registered mark
ORION for “video tape recorders and players, and television
sets”2 as to be likely to cause confusion, under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d). In
particular, opposer alleges that the marks are identical;
that applicant’s goods, display monitors and moniputers, and
opposer’s television sets are all capable of displaying
images from computers and television programming, as well as
Internet content; and that the goods are sold to the same
purchasers through the same channels of trade.
As a second ground for opposition, opposer alleges that
the opposed application is based solely on use in commerce,
under Section 1(a) of the Trademark Act, 15 U.S.C. §
1051(a); that, at the time of filing, applicant was not
using its mark on all of the identified goods; and that,
therefore, the application is void as filed.

1 Application Serial No. 75643483, filed February 18, 1999, based upon
use of the mark in commerce, alleging dates of first use and first use
in commerce as of October 1998.
2 Registration No. 1,727,083, issued October 27, 1992, in International
Class 9. [Sections 8 and 15 affidavits accepted and acknowledged,
respectively. Renewed for a period of ten years from October 27, 2002.]
Opposition No. 91121807
3
Applicant, in its answer, denied the salient
allegations of the claim, although applicant admitted that
opposer is the holder of its claimed registration, and that
the parties’ marks are “identical in English spelling.”
Additionally, applicant stated its belief that “television
sets are not used to display images from computers”; and
that “television sets typically are not used to display
images from the worldwide web.” Applicant has asserted as
affirmative defenses unclean hands, laches, waiver,
acquiescence and/or estoppel3; and that applicant is the
owner of U.S. Trademark Registration No. 1,114,405 and “the
present application covers usage that is consistent with or
a logical expansion of applicant’s existing mark.”4
The Record
The record consists of the pleadings; the file of the
involved application; a certified status and title copy of
Registration No. 1,727,083; various specified responses of
applicant to opposer’s interrogatories and requests for
admissions, and of opposer to applicant’s interrogatories
and requests for admissions, copies of third-party

3 These defenses were not tried by the parties or argued in their
briefs. Therefore, these defenses are considered waived and require no
discussion.
4 To the extent that this is an assertion of a “Morehouse” defense, the
facts and type of proceeding herein are not appropriate for such a
defense. Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881,
160 U.S.P.Q. 715 (C.C.P.A. 1969). Therefore, any such “Morehouse”
defense fails. We have considered the statement in applicant’s
pleading as merely an affirmative statement.
Opposition No. 91121807
4
registrations, copies of print advertisements and magazines,
results of searches of the Internet, and the result of a
search of the State of California Department of Corporations
via the Internet, all made of record by opposer’s and
applicant’s notices of reliance5; the testimony depositions
by opposer, with accompanying exhibits, of Neil Sinclair,
director of marketing of opposer’s affiliate, of Kay Tate,
customer service representative and receptionist of
opposer’s affiliate, and of Rena Meritt, national service
manager of opposer’s affiliate; and the testimony
depositions by applicant, with accompanying exhibits, of
I.S. Kim, applicant’s general manager, and of Duk Jung
(“John”) Kim, president of applicant’s affiliate.6 Both
parties filed briefs on the case and an oral hearing was
held, although only opposer appeared at the oral hearing.
Preliminary Matters
First, we consider the following claims asserted by
opposer in its amended notice of opposition:
16. On information recently discovered from
Applicant’s recent discovery responses, as of
the date Applicant filed its U.S. Trademark
Application Serial No. 75/463,483 based solely

5 Information downloaded from the Internet may not be made of record by
notice of reliance. However, because there were no objections to this
evidence, we have treated it as stipulated into the record. We add that
our decision would remain the same even if this evidence had not been
considered.
6 Applicant submitted only partial transcripts of the depositions of its
witnesses. However, opposer submitted copies of applicant’s witnesses’
transcripts in their entireties, as is required, “to avoid delays.”
[Opposer’s brief, p. 8.] Thus, we have considered this testimony.
Opposition No. 91121807
5
on use in commerce under Section 1(a) of the
trademark act, Applicant was not using the
ORION mark on all of the goods identified in
the application, thus making the application
Serial No. 75/643,483 void as filed.
17. On information recently discovered from
Applicant’s recent discovery responses, as of
the date Applicant filed its U.S. Trademark
Application Serial No. 75/463,483 based solely
on use in commerce under Section 1(a) of the
trademark act, Applicant was not using the
ORION mark on the goods “moniputers and related
accessories” identified in the application,
thus making the application Serial No.
75/643,483 void as filed.
Applicant answered each of these paragraphs with a denial.
In its brief, while not using the term “fraud” in its
narrative, opposer recited the fraud “test” for listing in a
use-based application goods upon which the mark has not been
used, i.e., “applicant knew or should have known, applicant
was not using the mark … on all of the goods identified …”
(Brief, p. 27), and opposer cited only cases involving fraud
in support of its position that the application is void. In
its brief, applicant addressed opposer’s claim in a section
with the following heading:
Applicant did not commit fraud in or with respect
to its application. Opposer has failed to meet
the heavy burden of proof necessary to show fraud
in applicant’s application.
The cases cited by applicant in its brief also pertain to
fraud and applicant argued against a finding of fraud.
In view of these facts, we find that, the parties have
tried the issue of fraud. Fed. R. Civ. P. 15(b). Not only
did opposer question applicant’s witnesses about its use of
Opposition No. 91121807
6
the mark on the goods listed in the identification, but,
applicant, in its brief, essentially concedes that fraud is
an issue in this case.
We turn next to address, preliminarily, the
identification of goods. The identification of goods in the
application as originally filed was as follows:
display monitors and parts and accessories
thereof; vacuum tubes, electronic tubes,
fluorescent discharge tubes, deflection yokes,
rectifier tubes, infrared lamps for laboratory
use, electronic signboards, diodes, semi-conductor
devices, integrated circuits, video phones,
telephones, electroluminescent displays,
cathodoluminescent field emitter displays, light
emitting diodes, ionized gas discharge plasma
displays, vacuum fluorescent displays, flyback
transformers, electric capacitors, and
oscillographs.
During examination, the identification of goods was amended
to read as follows, and this is the identification of goods
for which the mark was published on November 12, 2000:
Display monitors, moniputers, and related
accessories.
The notice of opposition was filed on January 11, 2001, and
the Board mailed notice and trial dates to the parties on
January 26, 2001. Applicant filed its answer on March 12,
2001. Subsequently, on April 21, 2001, the Examining
Attorney entered, by Examiner’s Amendment, a further
amendment to the identification of goods to read as follows:
Display monitors, moniputers, and computer
peripherals.
Opposition No. 91121807
7
Clearly, this was an improper action because the Examining
Attorney no longer has jurisdiction over an application once
an opposition has been filed. Trademark Rule 2.133(a), 15
U.S.C. § 2.133(a). See, Trademark Trial and Appeal Board
Manual of Procedure (TBMP) (2nd ed. June 2003), §§ 514,
514.01 and 514.03. If an amendment is filed in an
application that is the subject of an opposition, the Board
has jurisdiction over the application and will determine the
propriety of the amendment. Once an opposition has
commenced, the application that is the subject of the
opposition may not be amended in substance, except with the
consent of the other party or parties and the approval of
the Board, or except upon motion granted by the Board.
(id.) Generally, such motion must be filed prior to trial.
We consider the Examiner’s Amendment to be void
because, at the time of the Examiner’s Amendment, the
Examining Attorney did not have jurisdiction over the
application and an amendment to the identification of goods
is an amendment of substance. Applicant did not file a
motion with the Board to amend its identification of goods;
however, both parties discussed the amendment to the goods,
distinguishing them from the goods as published, in their
briefs. Therefore, we have deemed the Examiner’s Amendment
to be applicant’s motion to amend its identification of
Opposition No. 91121807
8
goods without consent and we will consider it within the
context of this final decision.
Finally, we consider applicant’s contention in its
brief that opposer’s evidence of actual confusion, in the
form of e-mails and telephone calls reported by opposer’s
testimony witnesses, constitutes hearsay. The case law
clearly establishes that statements by opposer’s testimony
witnesses regarding third-party communications to them, in
the form of e-mail or telephone calls, are evidence that the
communications were made to them. The statements are not
offered for the truth thereof. See, Corporate Fitness
Programs, Inc. v. Weider Health and Fitness, Inc., 2 USPQ2d
1682 (TTAB 1987). Therefore, applicant’s objections are
overruled and these statements have been considered.
Factual Findings
The record establishes all of the following facts in
this case.
Opposer is a Japanese company that conducts all
marketing and sales in the United States exclusively through
Orion America, Inc. dba Orion Sales, Inc. (encompassed by
the term “opposer”). Opposer manufactures televisions
(TVs), video cassette recorders (VCRs) and combination
TV/VCRs identified by the trademark ORION, which appears on
the products, packaging and accompanying instruction
manuals. Opposer began selling its ORION TVs and VCRs in
Opposition No. 91121807
9
the U.S. in 1993. Opposer sells the vast majority of its
products in the U.S. through Wal-Mart, a well known mass
merchandiser; although it sells some products via the
Internet at its web address, www.orionsalesinc.com. Opposer
has VCRs and TVs that retail for approximately $60 and $80,
respectively, and its most expensive ORION product is its
combination TV/VCR/DVD, which retails for approximately
$300. Wal-Mart promotes opposer’s ORION products through
inclusion in its promotional mailings and TV advertising,
and, within the stores, with stand-alone displays and point
of purchase display cards. Opposer does not manufacture or
sell computer display monitors.
Applicant is a Korean company that manufactures cathode
ray tubes and computer display monitors. Applicant admits
that, regardless of its identification of goods, it has used
the ORION mark in the U.S. only on computer display
monitors. When asked about the additional goods listed on
applicant’s trademark application, Mr. I.S. Kim, applicant’s
general manager, stated the following7:
Answer: Well, these other items that were listed,
we were in consideration of the possibility of
using these products for registration purposes.
But our main concern and major product is the
computer monitor. And there are many components
and the brand being shown outside is not that
important.

7 Other than argument in applicant’s brief, there is no other “reason”
given for inclusion of the goods other than computer monitors in the
identification of goods.
Opposition No. 91121807
10
Question: To rephrase what you just stated. Your
main product on this list is display monitors, and
that’s what you were and have been using with the
Orion brand. The other items listed, including
video phones and telephones, have never been used
or sold or promoted in the United States with the
Orion brand; is that correct?
Answer: Yes. Also, we have no plans to
manufacture them either.
Applicant sells its computer display monitors in the
U.S. through its affiliate, Orion Display, Inc. (encompassed
by the term “applicant”). Applicant has sold its ORION
display monitors in the U.S. since 1998. Applicant sells
its ORION display monitors to distributors and dealers, who
resell them to consumers. Applicant also sells both ORION
and unbranded display monitors to value added resellers
(VARs), who bundle them with computer hardware and software
for sale primarily to corporations and schools. While Mr.
John Kim, president of applicant’s U.S. affiliate, indicated
that applicant also sells display monitors to original
equipment manufacturers (OEMs), he stated that these are
primarily unbranded units. Nonetheless, the same
instruction and warranty manuals accompany both the ORION
and unbranded display monitors, and include the ORION
trademark thereon.
Both opposer and applicant have attended at least some
of the same trade shows, e.g., the Comdex 2000 show.
Applicant was aware of opposer’s ORION products and its
sales in the U.S. at the time it chose its ORION trademark.
Opposition No. 91121807
11
Both TVs and computer display monitors contain CRTs
(unless a different technology is used), although a display
monitor CRT has a higher resolution than a TV CRT, and a TV
CRT has a bigger dot pitch than a computer display monitor
CRT. Generally, a TV has a tuner, which enables the TV to
show TV programming. A TV attached to a VCR or DVD player
can show movies. Similarly, a computer display monitor
attached to a computer hard drive with a graphics card and a
DVD player can show movies. Additionally, with a TV tuner
plugged into a computer, one can watch TV programming on a
computer display monitor; with WebTV, one can interact with
the Internet on a TV, as one would on a display monitor
attached to a computer with Internet access; and LCD display
monitors can be used to watch TV, with a TV tuner.
As evidenced by opposer’s Exhibit No. 24, Best Buy and
Circuit City, electronics retailers, sell TVs, VCRs and
computer display monitors. And as both parties’ witnesses
have stated, a number of companies manufacture and sell TVs,
VCRs, DVDs and computer display monitors under the same
trademarks, for example, Sony, Toshiba, Samsung and
Phillips, as well as LG and Daewoo. Additionally, there are
several third-party trademark registrations wherein the same
mark is registered for computer monitors, TVs and VCRs,
Opposition No. 91121807
12
and/or TV monitors.8 The December 14, 2001 magazine GQ
contains an advertisement for a 15.1 inch Zenith LCD High
definition TV that can be used as a computer monitor by
merely flipping a switch. Applicant’s witness, Mr. I.S.
Kim, admitted that applicant manufactures LCD monitors that,
with the addition of a TV tuner, can be used to watch TV
programming. It is not clear whether applicant’s LCD
monitor is sold under the ORION brand or in the U.S.
There are numerous use-based third-party registrations
for the mark ORION for a wide variety of products (none
identical to those involved herein) in International Class
9.9 The record also includes excerpts from Internet web
sites apparently sponsored by some of these third-party
registrants. There are numerous Internet listings for
entities that include the term ORION in their name, although
the nature of these entities, the trademarks they may use,
or their continuing existence cannot be determined from the
record.
There have been numerous instances of actual confusion
wherein consumers owning a computer display monitor

8 Registration No. 1,622,127 for SONY for, inter alia, TVs, video tape
recorders and computer monitors; Registration No. 2,286,001 for NEXTV
and design for “monitors, namely, digital television monitors, computer
monitors, and videophone monitors; and Registration Nos. 2,399,786 and
1,551,738 for ZENITH for, inter alia, TV monitors, and VCRs and computer
display screens, respectively.
9 Applicant’s submission by notice of reliance included many
applications which are evidence only that the applications have been
filed and, thus, are of little or no probative value.
Opposition No. 91121807
13
manufactured by applicant have telephoned or e-mailed
opposer for warranty or other customer service assistance.
Analysis
1. Whether Application is Void Ab Initio.
Opposer contends that applicant, at the time it filed the
application and amended its identification of goods during
examination, was using its mark only on computer monitors;
and states the following (Brief, p. 26-27):
The opposed application is invalid because
Applicant falsely signed and filed, on February
18, 1999, the original application oath for its
application, based solely under Section 1(a) of
the Lanham Act, when Applicant knew, or should
have known, Applicant was not using the mark
within the meaning of the Trademark Act, on all of
the goods identified in the application in U.S.
interstate commerce.
Applicant contends that it did not commit fraud with
respect to the goods recited in its application. Applicant
argues that the identification of goods in the application
as originally filed was a “misstatement” that was corrected
by amendment prior to publication; that the retention of
“moniputers” in the identification of goods as published
“was an inadvertent, unintentional error as to timing,”
stating that moniputers bearing the mark were first
“introduced” in the U.S. in 2000; and that applicant’s
personnel do not speak English as their native language and
the inclusion of moniputers “was the result of a
Opposition No. 91121807
14
misunderstanding in communications, not intentional fraud.”
(Brief, p. 27.)
In order to prevail on a claim of fraud for misstating
in an application that the mark is in use on certain goods,
opposer must plead and prove that respondent knowingly made
"false, material representations of fact in connection with
[its] application." Torres v. Cantine Torresella S.r.L., 808
F. 2d 46, 1 USPQ2d 1483, 1484 (Fed. Cir. 1986). To
constitute fraud on the U.S. Patent and Trademark Office, a
statement must be (1) false, (2) made knowingly, and (3) a
material representation. The charge of fraud upon the Office
must be established by clear and convincing evidence. See,
Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955
(TTAB 1986).
Clearly, statements regarding the use of the mark on
goods are material to issuance of the registration. See,
First International Services Corp. v. Chuckles Inc., 5
USPQ2d 1628 (TTAB 1988) (fraud found in applicant's filing
of application with verified statement that the mark was in
use on a range of personal care products when applicant knew
it was in use only on shampoo and hair setting lotion). See
also, General Car and Truck Leasing Systems Inc. v. General
Rent-A-Car Inc. 17 USPQ2d 1398 (D.C. S.Fla. 1990), aff’g
General Rent-A-Car Inc. v. General Leaseways, Inc., Canc.
No. 14,870 (TTAB May 2, 1998); Joseph Avakoff v. Southern
Opposition No. 91121807
15
Pacific Co. & Southern Pacific Transportation Co., 765 F.2d
1097, 226 USPQ 435 (Fed. Cir. 1985); and McCarthy on
Trademarks and Unfair Competition, 4th ed. 2003, J. Thomas
McCarthy, §31.73 and cases cited therein.
The recent case of Medinol Ltd. V. Neuro Vasx, Inc., 67
USPQ2d 1205 (TTAB 2003) (fraud found in statement of use
where no use of mark on one of two listed goods) is
analogous to this case. In that case, a trademark
application was filed, the mark was published, a statement
of use filed, and registration issued for goods identified
as “medical devices, namely, neurological stents and
catheters”; however, applicant admitted that the mark was
not used on stents, and offered, in an unconsented motion,
to delete “stents” from its identification of goods. The
Board stated the following (at 1208):
The fraud alleged by petitioner is that respondent
knowingly made a material representation to the
USPTO in order to obtain registration of its
trademark for the identified goods. There is no
question that the statement of use would not have
been accepted nor would registration have issued
but for respondent’s misrepresentation, since the
USPTO will not issue a registration covering goods
upon which the mark has not been used. (cites
omitted.)
…
Most importantly, however, deletion of the goods
upon which the mark has not yet been used does not
remedy an alleged fraud upon the Office. If fraud
can be shown in the procurement of a registration,
the entire resulting registration is void.
General Car and Truck Leasing Systems, Inc. v.
General Rent-A-Car Inc., [supra]. Allowing
respondent’s amendment would be beside the point;
even if “stents” were deleted from the
Opposition No. 91121807
16
registration, the question remains whether or not
respondent committed fraud upon the Office in the
procurement of its registration.
Applicant in the case before us argues that its error
was inadvertent, due to language difficulties and
miscommunication. Respondent in Medinol Ltd. V. Neuro Vasx,
Inc., supra, similarly indicated its lack of intent to
commit fraud; and the Board stated the following (at 1209):
The appropriate inquiry is therefore not into the
registrant’s subjective intent, but rather into
the objective manifestations of that intent.
“We recognize that it is difficult, if not
impossible, to prove what occurs in a person’s
mind, and that intent must often be inferred from
the circumstances and related statement made by
that person.” First International Services Corp.
v. Chuckles Inc., [supra at 1636]. See, Torres,
[supra] at 1484-85; General Car and Truck, [supra]
at 1400; … Western Farmers Ass’n v. Loblaw Inc.,
180 USPQ 345, 347 (TTAB 1973).
In Medinol, the Board concluded that the facts warranted a
finding of fraud (at 1209-1210):
The undisputed facts in this case clearly
establish that respondent knew or should have
known at the time it submitted its statement of
use that the mark was not in use on all of the
goods. Neither the identification of goods nor
the statement of use itself were lengthy, highly
technical, or otherwise confusing, and the
President/CEO who signed the document was clearly
in a position to know (or to inquire) as to the
truth of the statements therein.
In the case before us, applicant admits that it has
used the ORION mark only on computer display monitors; that
the additional goods were included in the application,
according to Mr. I.S. Kim, because applicant considered the
Opposition No. 91121807
17
possibility of using the mark in connection therewith; but
that applicant has no intention of manufacturing and selling
such goods under the ORION mark in the U.S. These facts
clearly establish that applicant knew or should have known
at the time it submitted its application, and later when it
amended its identification of goods by deleting numerous
items, that the mark was not in use on all of the goods
listed upon publication,10 and, thus, that its sworn
statement in the application was materially incorrect. We
note that, by specifically adding “moniputers” to the
identification of goods as part of the amendment deleting
other goods, applicant must be presumed to have known what
it was doing. This is not a case where applicant realized
its mistake and deleted a number of items upon which the
mark had not been used, while inadvertently failing to also
delete “moniputers.”
We conclude that applicant’s material
misrepresentations made in its application in connection
with the goods upon which its mark is used were fraudulent.
Therefore, the application, in its entirety, is void ab
initio.

10 Citing Universal Overall Co. v. Stonecutter Mills Corp., 379 F.2d
983, 154 USPQ 104 (CCPA 1967), applicant correctly notes that “a
misstatement in an application as to which goods a mark has been used
does not rise to the level of fraud where an applicant amends the
application prior to publication. (Brief p. 26.) In determining the
question of fraud in the case before us, we have not considered the
goods deleted by applicant prior to publication. Our only reference is
the goods identified in the application as published.
Opposition No. 91121807
18
3. Applicant’s Unconsented Motion to Amend
Identification of Goods.
Applicant stated that it “is willing to amend its
application to delete ‘moniputers’ from the description of
goods [and that] [a]pplicant has notified the U.S. Patent
and Trademark Office of its desire to so amend the
description of good[s].” (Brief, p. 28.) The record
contains no such notification. In view of the above finding
of fraud, we find applicant’s motion without consent (i.e.,
the aforementioned Examiner’s Amendment) to amend the
identification of goods to “display monitors, moniputers,
and computer peripherals,” is moot.
However, had we considered the substance of applicant’s
motion to amend the identification of goods to include
moniputers and computer peripherals, we would deny the
motion because applicant has not used the mark in connection
with such goods as of the application filing date.
Nonetheless, should applicant ultimately prevail on
appeal on the issue of fraud, the identification of goods as
published must be restricted to “display monitors,” thereby
deleting “moniputers and related accessories,” because
applicant may not register its mark under Section 1(a) of
the Trademark Act for goods upon which it has not used the
mark.
Opposition No. 91121807
19
3. Likelihood of Confusion.
Although our determination that the errors in the
identification of goods constitute fraud is sufficient to
sustain the opposition, in the interest of rendering a
complete decision, we turn to the issue of likelihood of
confusion pleaded by opposer.
Inasmuch as a certified copy of opposer’s registration
is of record, there is no issue with respect to opposer’s
priority. King Candy Co., Inc. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Our determination of likelihood of confusion under
Section 2(d) must be 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. In re E.I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also, In re Majestic Distilling Company, Inc.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
considering the evidence of record on these factors, we keep
in mind that “[t]he fundamental inquiry mandated by Section
2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.” Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re
Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein.
Opposition No. 91121807
20
Opposer contends that its mark is a very strong mark
with significant good will in the consumer visual
electronics industry; that the parties’ marks are identical;
that “both parties’ goods are consumer visual electronics
products housed in cube shaped cabinets with identical ORION
marks affixed in identical locations” (Brief, p. 16); that
applicant’s goods are highly related to those of opposer,
“share identical uses and functions” to those of opposer
(Brief p. 18), and are within opposer’s logical zone of
expansion; and that the goods travel through the identical
trade channels to the same class of purchasers.
Additionally, opposer alleges considerable actual confusion
in the form of misdirected e-mails and telephone calls to
opposer regarding applicant’s computer monitors.
Applicant concedes that the parties’ marks are
identical in spelling, sound and connotation, but contends
that the visual appearance differs due to the stylized
manner in which applicant uses its mark. Further, applicant
argues that it owns prior Registration No. 1,114,405 for the
identical mark and the USPTO allowed the registration of
opposer’s pleaded mark; that, regardless of applicant’s
prior registration, opposer chose to use and register the
identical mark; and that, in view of applicant’s prior
registration, the identity of the parties’ marks in this
case should not weigh in opposer’s favor.
Opposition No. 91121807
21
Regarding the goods, applicant disagrees that the goods
are related or share identical uses or functions. Applicant
states the following (Brief, p. 10):
A monitor is a peripheral device intended to be
connected to a computer. A television is a stand
alone product primarily intended to broadcast
television programming. Computers run software
and are primarily used for word processing and
computing. Monitors do not have remote control
features, lack channels, and do not receive cable
signals. The cathode ray tubes used in monitors
and television sets are not compatible. Nor are
televisions used to run software, do word
processing, or perform computations.
Applicant disputes opposer’s statement that both products
may be used for surfing the Internet and watching
television, stating that each must first be connected to
another device to perform both functions; and, further, both
uses are not the primary purpose of either product.
Applicant states that “the primary function of a monitor is
to enable one to use a computer … [whereas] the primary
function of a television set is to enable one to watch
television by receiving broadcasts or cable television or to
watch videotapes or DVD’s through an attached player.”
(Brief, p. 12.) Applicant disagrees that business expansion
from producing televisions to computer monitors is natural
or likely to cause confusion; and questions the likelihood
of opposer actually expanding its business in such a
direction.
Opposition No. 91121807
22
Applicant contends that the trade channels for the
respective goods are different and that the goods are
expensive and, thus, purchased with care by knowledgeable
consumers. Applicant contends that ORION is a weak mark,
that there is extensive third-party use, and that opposer
has not established that its mark is well known. Finally,
applicant argues that opposer’s evidence of actual confusion
is weak anecdotal evidence that constitutes hearsay, and the
parties’ marks and goods have coexisted in the U.S. market
for four years with no actual confusion.
Considering, first, the marks of the parties, there is
no question that the marks herein are identical, which
applicant admitted in its answer. The marks, both of which
are in typed form, are identical in appearance, sound,
connotation and commercial impression.11 We are not
persuaded otherwise by applicant’s allegation that it
possesses a registration for the mark ORION. We note that
the registration is for different goods, namely, “cathode
ray tubes (black and white and color) and parts and
accessories thereof, electron guns (black and white and
color) and parts and accessories thereof, photo tubes and
electric discharge tubes,” none of which are finished
products as are computer display monitors, TVs and VCRs;

11 Applicant’s allegation regarding the manner in which its mark appears
on its products is not persuasive. We must consider the fact that the
application contains a typed drawing and, thus, encompasses any number
of design possibilities.
Opposition No. 91121807
23
and, further, we must decide this case based on the facts in
the record before us.
Applicant contends that ORION is a weak mark and
submitted in support thereof several lists of businesses
from various sources that include ORION in their names; a
number of third-party use-based registrations for marks that
include ORION for a wide variety of International Class 9
goods; and excerpts from Internet websites allegedly owned
by a few of the third-party registrants. This evidence is
of limited value because it does not establish third-party
use of ORION as a trade name or trademark in connection with
goods related to those involved in this case.
Similarly, opposer’s evidence that its mark is well
known is of limited value. Opposer primarily sells its
products through Wal-Mart, a mass merchandiser who
presumably sells a large number of many products. It is
unclear from the record whether opposer’s sales volume is
due to brand recognition or positioning of sales at Wal-Mart
stores. Therefore, we find that, while ORION is arbitrary
in connection with the parties’ goods, it is not necessarily
a strong or well known mark.
It is well established that when the marks at issue are
the same or nearly so, the goods in question do not have to
be identical to find that confusion is likely. As we stated
in In re Concordia International Forwarding Corp., 222 USPQ
Opposition No. 91121807
24
352, 356 (TTAB 1983), “… the greater the degree of
similarity in the marks, the lesser the degree of similarity
that is required of the products or services on which they
are being used in order to support a holding of likelihood
of confusion.” It is sufficient that the goods are related
in some manner and that their character or the circumstances
surrounding their marketing are such that they are likely to
be encountered by the same people in situations that would
give rise to the mistaken belief that the producer was the
same. In re International Telephone and Telegraph Corp.,
197 USPQ 910 (TTAB 1978).
With respect to the goods of the parties, applicant
correctly points out that TVs and computer display monitors
are not the same and no one is likely to mistake a computer
display monitor for a TV or vice versa. A TV by definition
includes a tuner, either externally or internally, so that
it can show television programming. A computer display
monitor has no built in hard drive, tuner, or other device;
rather, the monitor is attached to a computer so that
information from the computer can be visually displayed via
the monitor. However, the evidence establishes that there
is some crossover in the use of these goods and that the
technological trends appear to be moving to more, rather
than less, crossover use. For example, the record
establishes that computers now often include DVD players,
Opposition No. 91121807
25
allowing users to watch movies via their computer as
displayed on the monitor. Both DVD players and VCRs can be
attached to TVs for viewing movies on a TV screen.
Similarly, the evidence establishes that both TVs and
computers, with monitors, can be used to access the Internet
and send and receive e-mail. Additionally, the evidence
establishes that both TVs and computer display monitors are
often produced using LCD technology and, thus, these
products may be interchangeable. Significantly, the record
clearly establishes that a number of large electronics
manufacturers make, and identify by the same trademark, TVs,
VCRs and computer display monitors. Thus, we conclude that
the goods of the parties are closely related.
Further, both opposer’s and applicant’s identifications
of goods are broadly worded, without any limitations as to
channels of trade or classes of purchasers. We must presume
that the goods of the applicant and opposer are sold in all
of the normal channels of trade to all of the usual
purchasers for goods and services of the type identified.
See, Canadian Imperial Bank v. Wells Fargo, 811 F.2d 1490, 1
USPQ2d 1813 (Fed. Cir. 1987). In other words, we conclude
that the channels of trade and class of purchasers of the
parties’ goods are the same. We acknowledge that applicant
manufactures computer display monitors and does not sell
them directly to the ultimate consumer. However, whether
Opposition No. 91121807
26
bundled with other computer products or sold separately,
applicant’s goods identified by the ORION mark do make their
way through retail sales to the ultimate consumer, who is
the same general purchaser of TVs and VCRs.12
Opposer has submitted significant and specific
evidence, previously outlined, that purchasers of
applicant’s computer display monitors have been confused as
to the source of those goods and numerous individuals have
contacted opposer’s consumer services representatives
seeking warranty or other assistance.13 As stated herein,
we do not find this evidence to be hearsay; rather it is
strong evidence that actual confusion exists in the
marketplace.
Therefore, in view of the fact that the marks herein
are identical, the channels of trade and purchasers are
overlapping, if not the same, and actual confusion has
occurred, we conclude that the contemporaneous use of the
marks on the closely related goods involved in this case is
likely to cause confusion as to the source or sponsorship of

12 We are not persuaded that the consumers of the goods involved herein
are all sophisticated and knowledgeable purchasers of computer monitors,
TVs and VCRs. Applicant has given us no evidence establishing this fact
and, similarly, the evidence indicates that these products can range in
price, with a relatively inexpensive low end. We must assume from the
evidence that the purchasers of the parties’ respective goods include
all consumers of such products.
13 Applicant’s witnesses questioned whether the inquiries pertained to
their computer monitors, noting that some of the product identification
numbers were for applicant’s unbranded, rather than its ORION, monitors.
We find these statements disingenuous because applicant’s witnesses
admitted that the same instruction and warranty manuals, containing the
ORION mark, accompany both branded and unbranded monitors.
Opposition No. 91121807
27
such goods. We are not persuaded otherwise by applicant’s
evidence that ORION is a weak mark. Not only are none of
the other marks or businesses that are actually identified
as being in use or registered for products as closely
related to opposer’s products as are applicant’s goods, but
even weak marks are entitled to protection.
Decision: The opposition is sustained on both the
grounds of fraud and likelihood of confusion.