Ovation LLCv.Ovation, Inc.

Trademark Trial and Appeal Board

Aug 14, 2013

No. 92053911 (T.T.A.B. Aug. 14, 2013)

Baxley Mailed: August 14, 2013

Cancellation No. 92053911

Ovation LLC

v.

Ovation, Inc.

Before Bucher, Mermelstein, and Gorowitz,
Administrative Trademark Judges.

By the Board:

Ovation, Inc. (“respondent”) is the record owner of three registrations
which consist in whole or in part of the word OVATION. Respondent’s three
involved registrations are the following:
Registration No. 3670163, issued August 18, 2009, based on an
application that was filed on December 12, 2007, for the mark
OVATION in standard character form, for “[b]usiness meeting
planning, arranging and conducting business conferences and
providing facilities for business meetings, providing on-line
registrations services for business meetings and for live
corporate business events” in International Class 35,
“[w]ebcasting of live events and audio, data, graphics, video and
multimedia data in connection therewith, video conferencing
services, electronic transmission of music, audio, data, graphics
and video, satellite broadcasting of live television special events”
in International Class 38, “[a]rranging and conducting
educational conferences, special event planning consultation
services” in International Class 41, and “[d]esign, development
and maintenance of websites and web-based applications for
others, design and development of multimedia products for use
in corporate events, meetings and conferences, lighting design,
graphics design, industrial design, visual design services in the
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Cancellation No. 92053911

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nature of designing visual elements for online, broadcast, print,
outdoor and other communication media, and set design services
for corporate events” in International Class 42. In such
registration, respondent alleges October 9, 2008, as the date of
first use anywhere and date of first use in commerce.

Registration Nos. 3755678 and 3755679, both issued March 2,
2010, for the mark OVATION and design in the following form,
. Registration No. 3755678 is for “[w]ebcasting of live
events and audio, data, graphics, video and multimedia data in
connection therewith, video conferencing services, electronic
transmission of music, audio, data, graphics and video, satellite
broadcasting of live television special events” in International
Class 38. Registration No. 3755679 is for “[d]esign, development
and maintenance of websites and web-based applications for
others, design and development of multimedia products for use
in corporate events, meetings and conferences, lighting design,
graphics design, industrial design, visual design services in the
nature of designing visual elements for online, broadcast, print,
outdoor and other communication media, and set design services
for corporate events” in International Class 42. Both
registrations matured from applications that were filed on
October 9, 2008, based on an assertion of a bona fide intent to
use the mark under Trademark Act Section 1(b).

On April 19, 2011, Ovation, LLC (“petitioner”), commenced the above-
captioned proceeding by filing three separate petitions to cancel respondent’s
registrations.1 As a ground for cancellation, petitioner alleges likelihood of
confusion with its previously-used word mark OVATION for “television
broadcasting services, the development and production of television programs

1 The petitions were filed as one; however, separate pleadings were filed. The Board
prefers that each inter partes proceeding have only one operative set of pleadings,
e.g., a complaint and an answer. See generally TBMP Sections 309 and 507.02 (3d
ed. rev. 2 2013). Compare TBMP Section 511 (“Each proceeding retains its separate
character and requires the filing of separate pleadings and entry of a separate
judgment.”). Petitioner should have filed either (1) one petition to cancel in which it
sought cancellation of all three registrations (the preferable solution), or (2) three
separate petitions in separate proceeding files. If petitioner elected to file three
separate petitions, it could have requested consolidation of those proceedings. See
TBMP Section 511.
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and motion picture films to be broadcast over a variety of platforms,
television programming, a website, and other services” and the mark
OVATION TV and design in the following form, , for “[c]able television
broadcasting services” and “[d]evelopment and production of television
programs to be broadcast over television, iptv, Internet, cable and satellite;
production of motion picture films to be broadcast over television, cable and
satellite; cable television programming.”2
Respondent, in its answers, denied the salient allegations of the petitions
to cancel and set forth affirmative defenses.
This case now comes up for consideration of the following motions: (1)
petitioner’s motion (filed December 10, 2012) for summary judgment; and (2)
respondent’s motion (filed December 14, 2012) to extend time to respond to
the motion for summary judgment.
Respondent’s motion to extend time to respond to the motion for
summary judgment is granted as conceded. See Trademark Rule 2.127(a).
The brief in response to the motion for summary judgment that respondent
filed on January 30, 2013, is accepted as timely filed.
We now turn to the motion for summary judgment. Contrary to
respondent’s assertion, petitioner is not seeking summary judgment on the

2 Petitioner also pleads dilution in each of the petitions to cancel, but those claims
are insufficiently pleaded. In particular, petitioner alleges prior use and fame of its
OVATION marks, but does not expressly allege that those marks became famous
prior to any date upon which respondent can rely in support of the involved
registrations. See Trek Bicycle Corp. v. StyleTrek Ltd., 64 USPQ2d 1540 (TTAB
2001).
Cancellation No. 92053911

4
ground that respondent’s registrations are overly broad. Rather, petitioner is
seeking entry of summary judgment on its pleaded Section 2(d) claim based
on the broad recitation of services in respondent’s involved registrations. It is
not petitioner’s contention that respondent’s registrations are broader than
they should be; rather, petitioner contends that the breadth of respondent’s
registrations brings them into conflict with petitioner’s prior rights.
A motion for summary judgment is an appropriate method of disposing of
cases in which there are no genuine disputes as to any material facts, thus
leaving the case to be resolved as a matter of law. See Fed. R. Civ. P. 56(c).
The party moving for summary judgment has the initial burden of
demonstrating that there is no genuine dispute as to any material fact
remaining for trial and that it is entitled to judgment as a matter of law. See
Celotex Corp. v. Catrett, 477 U.S. 317 (1987); Sweats Fashions Inc. v. Pannill
Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987). The
nonmoving party must be given the benefit of all reasonable doubt as to
whether genuine disputes of material fact exist, and the evidentiary record on
summary judgment, and all inferences to be drawn from the undisputed
facts, must be viewed in the light most favorable to the nonmoving party. See
Opryland USA, Inc. v. Great American Music Show, Inc., 970 F. 2d 847, 23
USPQ2d 1471 (Fed. Cir. 1992).
When the moving party’s motion is supported by evidence sufficient to
indicate that there is no genuine dispute of material fact, and that the
Cancellation No. 92053911

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moving party is entitled to judgment, the burden shifts to the nonmoving
party to demonstrate the existence of specific genuinely-disputed facts that
must be resolved at trial. The nonmoving party may not rest on the mere
allegations of its pleadings and assertions of counsel, but must designate
specific portions of the record or produce additional evidence showing the
existence of a genuine dispute of material fact for trial. In general, to
establish the existence of disputed facts requiring trial, the nonmoving party
“must point to an evidentiary conflict created on the record at least by a
counterstatement of facts set forth in detail in an affidavit by a
knowledgeable affiant.” Octocom Systems Inc. v. Houston Computers Services
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1786 (Fed. Cir. 1990).
As a party moving for summary judgment in its favor on its Section 2(d)
claim, petitioner must establish that there is no genuine dispute that (1) it
has standing to maintain this proceeding; (2) that it has prior proprietary
rights in its pleaded mark; and (3) that contemporaneous use of the parties’
respective marks on their respective goods and/or services would be likely to
cause confusion, mistake or to deceive consumers. See Hornblower & Weeks,
Inc. v. Hornblower & Weeks, Inc., 60 USPQ2d 1733, 1735 (TTAB 2001). If the
nonmoving party then fails to raise a genuine dispute as to any material fact
regarding any essential element of the movant’s case with respect to which it
would have the burden of proof at trial, judgment as a matter of law may be
Cancellation No. 92053911

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entered in favor of the moving party. See Fed. R. Civ. P. 56(c); Celotex Corp. v.
Catrett, 477 U.S. at 322-23.
With regard to whether petitioner has standing to maintain this
proceeding, we find that there is no genuine dispute that petitioner has
standing based at least on (1) petitioner’s evidence of common law use of the
OVATION word mark in connection with a broadcast television network
featuring fine arts (see declaration of petitioner’s chief operating officer Chad
Gutstein and exhibits D1-14) and (2) petitioner’s submission of copies of
USPTO Office Actions in which its pleaded application Serial Nos. 77894130,
77943004 and 77943009 were refused registration under Trademark Act
Section 2(d), 15 U.S.C. § 1052(d), based on respondent’s involved
registrations (see declaration of petitioner’s attorney Wendy M. Mantell,
exhibit C4-5). See ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036, 1041
(TTAB 2012); Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1022
(TTAB 2009). No genuine dispute as to any material fact exists on this issue.
We turn next to the issue of whether there is a genuine dispute of
material fact regarding petitioner’s asserted priority of use. To establish
priority on a likelihood of confusion ground brought under Trademark Act
Section 2(d), a party must prove that, vis-a-vis the other party, it owns either
a registration or “a mark or trade name previously used in the United States
... and not abandoned....” Trademark Act Section 2, 15 U.S.C. § 1052. A
plaintiff may establish its own prior proprietary rights in a mark through
Cancellation No. 92053911

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actual use or through use analogous to trademark use, such as use in
advertising brochures, trade publications, catalogues, newspaper
advertisements and Internet websites which creates a public awareness of
the designation as a trademark identifying the party as a source. See
Trademark Act Sections 2(d) and 45, 15 U.S.C. §§ 1052(d) and 1127; T.A.B.
Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879 (Fed. Cir. 1996),
vacating PacTel Teletrac v. T.A.B. Systems, 32 USPQ2d 1668 (TTAB 1994).
Petitioner has established that there is no genuine dispute that it used
the OVATION word mark in connection with its broadcast television network
featuring fine arts and Internet website promoting that network and
featuring streaming videos and other electronic transmissions of music,
audio, data and graphics long prior to December 12, 2007, the earliest date
upon which respondent can rely in support of any of its pleaded
registrations.3 With regard to the parties’ respective uses of their marks,
petitioner has established, through the declaration of Mr. Gutstein and
exhibits thereto; that it was founded in 1992; that it first rendered television
broadcasting services featuring fine arts under the OVATION word mark
since at least as early as October 1996 and was “re-launch[ed]” in 2006 after
a change of ownership; that it has rendered webcasting services featuring

3 Respondent does not attempt to establish any use of its marks prior to December
12, 2007.
Cancellation No. 92053911

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fine arts under the OVATION word mark since May 2000; and that it has
been subject of a dedicated channel on YouTube.com since October 23, 2007.4
Although the record also shows petitioner using other marks, such as
OVATION – THE ARTS NETWORK and OVATION TV, the record clearly
indicates that petitioner and media outlets regularly use OVATION standing
alone to refer to petitioner. Thus, contrary to respondent’s assertions,
petitioner is not relying, and need not rely, upon tacking of its prior use of the
marks OVATION THE ARTS NETWORK and OVATION TV to establish
priority herein. The record clearly indicates prior use of the OVATION word
mark in promotional materials for petitioner’s broadcast television network
that precedes the filing dates of the intent-to-use applications for
respondent’s registrations. Even if we assume that petitioner uses other
marks, such as OVATION THE ARTS NETWORK and OVATION TV, more

4 Through Mr. Gutstein’s declaration, petitioner introduces excerpts from
petitioner’s website ovationtv.com obtained from the Wayback Machine of
Archive.org, which show prior use of the OVATION word mark.
For example, a February 13, 1997, excerpt includes the headline “What is
OVATION?,” followed by text that commences with “OVATION is the only television
network devoted exclusively to the arts....” (Exhibit D3).
A June 26, 1998, excerpt which states that “OVATION is developing an online
feature on the 100 Best Museums in the World.” The bottom of the excerpt includes
a directive to “Check here if you do NOT want to receive periodic email from
OVATION regarding this website or network information.” (Exhibit D6).
A May 27, 2000, excerpt directs customers to “Click here to search for Arthur C.
Clarke: The Man Who Saw the Future on Ovation’s schedules” (emphasis in
original) and provides links to “OVATION Info,” “OVATION Shop”, and “Get
OVATION NOW!” (Exhibit D4).
An August 15, 2002, excerpt directs customers to “Search for Big Bangs on
Ovation’s TV schedule” (emphasis in original) (Exhibit D4).
A May 15, 2006, excerpt directs customers to “Click here to search for Wallace and
Gromit Go To Hollywood! on OVATION’s schedule.” (Exhibit D4).
A December 10, 2006, excerpt directs customers to “Click here to search for Stuart
Sutcliffe – The Lost Beatle on OVATION’s schedule.” (Exhibit D4).
Cancellation No. 92053911

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prominently, such use of other marks does not create a genuine dispute as to
petitioner’s priority.
Turning to the likelihood of confusion issue, two key factors are the
degree of similarity of the parties’ marks and the degree of similarity of their
respective goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). As to the word marks at issue, the
parties’ standard-character OVATION marks are identical, and petitioner’s
OVATION word mark is identical to the word component of the OVATION
and design mark in respondent’s involved Registration Nos. 3755678 and
3755679. Although petitioner uses a building block design in the mark in
involved Registration Nos. 3755678 and 3755679, we find it does not
significantly change the sight, sound, connotation or commercial impression
of the mark as a whole, and that design element in the mark is insufficient to
create a genuine dispute of material fact as to the similarities of the marks.
See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012), citing CBS v. Morrow, 708 F.2d. 1579; 218 USPQ 198 (Fed. Cir. 1983)
(“the verbal portion of the mark is the one most likely to indicate the origin of
the goods to which it is affixed”).
With regard to the similarity of the services at issue, respondent argues
at length that the parties’ core businesses are different in that petitioner is a
television network, whereas it is involved in business conference and event
planning consulting. However, the question of likelihood of confusion must be
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determined based on an analysis of the services recited in respondent's
registrations vis-à-vis the services shown to be in use by petitioner, rather
than what respondent’s goods are asserted or shown to be in current use. See,
e.g., Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987). The services in
International Class 38 recited in respondent’s involved Registration Nos.
3670163 and 3755678, i.e., “[w]ebcasting of live events and audio, data,
graphics, video and multimedia data in connection therewith, ... electronic
transmission of music, audio, data, graphics and video, satellite broadcasting
of live television special events” overlap petitioner’s services. In particular,
the evidence of record shows that petitioner’s services include a television
network which broadcasts profiles, interviews, documentaries, and
prerecorded live performances in connection with classical music, jazz, blues,
dance, painting, drama, literature, architecture and the like and a website
through which petitioner streams video previews promoting those broadcasts.
Respondent’s services in International Class 38 are presumed to include
webcasting and satellite broadcasting of all types of “live” television special
events, including musical and dance performances, and are presumed to
move in all normal channels of trade for services of these types, including
DIRECTV and Dish Network, and would be purchased by the same class of
customers. See id.
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Based on the foregoing, we find that petitioner has met its burden by
supporting its motion with the Gutstein and Mantell declarations and
evidence introduced thereby which establishes its right to judgment on its
pleaded Section 2(d) claim with regard to Registration No. 3670163 in
International Class 38 only and Registration No. 3755678. Accordingly, the
burden shifts to respondent to proffer countering evidence which establishes
that there is a genuine factual dispute for trial. However, the evidence that
respondent submitted in response to petitioner’s motion is insufficient to
show that there is a genuine dispute of material fact for trial.
Respondent argues that petitioner does not render many of the services
recited in respondent’s involved registrations. However, likelihood of
confusion must be found with regard to an entire international class if there
is likely to be confusion with respect to any item within the identification of
goods in that class. See Tuxedo Monopoly, Inc. v. General Mills Fun Group,
648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
Further, contrary to respondent’s assertion, the fact that petitioner
pleaded use of the OVATION word mark since 1995, but asserts use of the
mark since 1992 in the motion for summary judgment, does not create an
unpleaded issue upon which petitioner is seeking entry of summary
judgment.5 That is, petitioner is seeking entry of summary judgment on its
Section 2(d) claim based on use of the OVATION mark that precedes by more

5 Moreover, we note that the record herein indicates that petitioner did not actually
render the broadcasting services in question until 1996.
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than a decade any use upon which respondent can rely in support of its
involved registrations. To prevail thereon, petitioner need only establish
likelihood of confusion with its “mark or trade name previously used in the
United States ... and not abandoned.” Use must be established by competent
evidence. Cf. Trademark Rule 2.122(b)(2) (dates of use in an application or
registration are not evidence of use). Because petitioner is relying upon
common-law rights in the OVATION mark, a determination of when
petitioner first used that mark is based on the evidence of record.
Respondent contends that petitioner is prohibited from complaining
about respondent’s mark because petitioner’s rebranding efforts have brought
petitioner’s pleaded marks closer to respondent’s involved marks. However,
there is no genuine dispute that petitioner adopted the OVATION word mark
more than a decade prior to any date upon which respondent can rely in
support of any of its registrations.
Moreover, respondent argues that respondent’s chairman and CEO had
never heard of petitioner prior to respondent’s adoption of the involved marks
and that respondent conducted trademark searches prior to filing its
applications for the involved marks. However, good faith adoption of a mark
is not a defense to a claim of likelihood of confusion. See Eveready Battery Co.
v. Green Planet Inc., 91 USPQ2d 1511, 1516 (TTAB 2009).
Respondent further contends that there has been no actual confusion
between the parties’ marks. However, it is unnecessary to show actual
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confusion to establish likelihood of confusion. Herbko Int’l, Inc. v. Kappa
Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002);
TMEP Section 1207.01(d)(ii) (April 2013).
Respondent contends in addition that petitioner’s customers are
sophisticated and educated, and that respondent’s customers are
“procurement officers,” who are also sophisiticated. However, even if we
assume that the parties’ customers are sophisticated, sophisticated
purchasers are not immune from source confusion, especially in cases, such
as the instant one involving highly similar marks and overlapping services.
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846
(Fed. Cir. 2000).
Respondent also argues that petitioner’s pleaded marks are not famous.
However, even if we assume that petitioner’s pleaded marks are not famous,
the Board has entered summary judgment for a plaintiff on a Section 2(d)
claim where there is no genuine dispute as to the plaintiff’s prior common law
use of a highly similar mark on overlapping services. See Fram Trak
Industries Inc. v. WireTracks LLC, 77 USPQ2d 2000 (TTAB 2006).
Respondent also contends that, notwithstanding petitioner’s alleged prior
use, petitioner did not seek to register its pleaded marks until it filed its
pleaded applications in 2009. Although the USPTO encourages parties to
register their marks, petitioner can rely on its common-law rights in support
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of its Section 2(d) claim. See Trademark Act Section 2(d); King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
In summary, considering the identical and extremely similar marks and
the parties’ legally overlapping services in International Class 38, we find
that there is no genuine dispute that confusion is likely to result with regard
to the OVATION word mark in Registration No. 3670163 in International
Class 38 only and the OVATION and design mark in Registration No.
3755678. In view thereof, petitioner’s motion for summary judgment is
granted in part. The petition to cancel is granted with regard to petitioner’s
standing and priority and on petitioner’s Section 2(d) claim with regard to
Registration No. 3670163 in International Class 38 only and Registration No.
3755678. Registration No. 3670163 will be cancelled in International Class 38
only and Registration No. 3755678 will be cancelled in its entirety in due
course.
With regard to Registration No. 3755679 and the remaining classes in
Registration No. 3670163, we find that disposition of this proceeding by
summary judgment is inappropriate.6 At a minimum, we find that there is a

6 Petitioner alleges prior use of its pleaded OVATION mark in connection with
design, development and maintenance of websites and web-based applications
services, design and development of multimedia products, lighting design, graphics
design, industrial design, visual design services in the nature of designing visual
elements for online, broadcast, print, and other communication media, and set
design services. However, this prior use is not clearly pleaded in the petition to
cancel and thus may not be relied upon in support of the motion for summary
judgment. See TBMP Sections 314 and 528.07. In any event, a service must be (1) a
real activity; (2) performed to the order of, or for the benefit of, someone other than
petitioner; and (3) the activity performed must be qualitatively different from
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genuine dispute as to whether the services at issue are related in a manner
that would give rise to source confusion.7 Accordingly, the motion for
summary judgment is otherwise denied.
This proceeding will go forward on the issue on likelihood of confusion
factors other than similarity of the marks with regard to Registration No.
3670163 in International Classes 35, 41, and 42 and Registration No.
3755679.8 See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). In view of the foregoing, we treat petitioner’s
standing and its priority as established.
Proceedings herein are resumed.9 Remaining dates are reset as follows.
Plaintiff’s Pretrial Disclosures Due 09/3/2013
Plaintiff’s 30-day Trial Period Ends 10/18/2013
Defendant’s Pretrial Disclosures Due 11/2/2013
Defendant’s 30-day Trial Period Ends 12/17/2013
Plaintiff’s Rebuttal Disclosures Due 1/1/2014
Plaintiff’s 15-day Rebuttal Period Ends 01/31/2014

In each instance, a copy of the transcript of testimony, together with
copies of documentary exhibits, must be served on the adverse party within

anything necessarily done in connection with the performance of petitioner’s other
services. See In re Husqvarna AG, 91 USPQ2d 1436 (TTAB 2009).
7 The parties should not presume that these are the only issues remaining for trial.
8 All evidence submitted in support of the motion for summary judgment is of record
for purposes of that motion only. All trial evidence must be properly made of record
during the appropriate testimony period. See TBMP Section 528.05(a).
9 The parties are reminded that our decision granting partial summary judgment is
interlocutory in nature and may not be appealed until a final decision is rendered in
the proceeding. See Copeland's Enterprises Inc. v. CNV Inc., 887 F.2d 1065, 12
USPQ2d 1562 (Fed. Cir. 1989).
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thirty days after completion of the taking of testimony. Trademark Rule
2.125.
Briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b).
An oral hearing will be set only upon request filed as provided by Trademark
Rule 2.129.
If either of the parties or their attorneys should have a change of address,
the Board should be so informed promptly.