Sharp Kabushiki Kaishav.ThinkSharp, Inc.

Trademark Trial and Appeal Board

Mar 31, 2004

No. 91118745 (T.T.A.B. Mar. 31, 2004)

Mailed: March 31, 2004
Paper No. 30
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Sharp Kabushiki Kaisha, a/t/a Sharp Corporation
v.
ThinkSharp, Inc.
_____
Opposition No. 91118745
to application Serial No. 75652878
filed on February 26, 1999
_____
Robert W. Adams and Duane M. Byers of Nixon & Vanderhye P.C.
for Sharp Kabushiki Kaisha a/t/a Sharp Corporation.
Sherry H. Flax of Saul Ewing LLP for ThinkSharp, Inc.
______
Before Seeherman, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by ThinkSharp, Inc. to
register the mark THINKSHARP (in typed form) for “computer
software for use as education programs in the fields of
problem solving and critical thinking, pre-recorded
videocassette tapes featuring education programs in the
field of problem solving and critical thinking; and CD-ROMS
containing education programs” in class 16; and “educational
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition No. 91118745
2
services, namely providing information, conducting
educational seminars and distributing education materials
via classroom instruction, the global computer information
network and satellite transmission, in the fields of problem
solving and critical thinking” in class 41.1
Registration has been opposed by Sharp Kabushiki
Kaisha, a/t/a Sharp Corporation (Sharp). Sharp alleges that
it is the owner of the previously used and registered mark
SHARP, and a family of SHARP marks; that it has continuously
used its marks in connection with “an extremely wide variety
of electrical and/or electronic products in the computer
field and in connection with related educational services”;
that by virtue of its extensive use and advertisement of its
mark SHARP and its family of SHARP marks, these marks have
become famous; and that applicant’s mark, when used on or in
connection with applicant’s goods and services, so resembles
1 Serial No. 75652878, filed February 26, 1999, alleging first
use anywhere and first use in commerce as early as December 1998.
Opposition No. 91118745
3
opposer’s previously used and registered mark SHARP and
SHARP family of marks, as to be likely to cause confusion.2
Opposer pled ownership of eighteen registrations, the
most pertinent of which is Registration No. 1,405,542 for
the mark SHARP for “electrical and electronic goods, namely,
copiers; printers; computers; cash registers; calculators;
radios; television sets; solar cells; video cassette
recorders; video cassette players; video cameras; combined
television, radio and/or stereo sound players and recorders;
closed circuit television recorders and players; audio sound
amplifiers; tuners; tape and cassette decks; disc players;
turntables and speakers; audio cassette tape recorders;
combined radio and audio cassette tape recorders and
players; car radios, tuners, amplifiers, speakers and audio
cassette decks; vacuum cleaners for domestic and commercial
use, and electronic translators, and parts therefor.” (This
registration issued August 19, 1986; Section 8 affidavit
accepted; Section 15 affidavit acknowledged.)
2 The notice of opposition also includes an allegation that “the
registration of the mark THINKSHARP by applicant is likely to
injure and/or dilute the strength of opposer’s aforesaid
trademarks and its related goodwill.” (Par. 8). Such an
allegation is insufficient to state a claim of dilution under the
Federal Trademark Dilution Act, 15 U.S.C. §1125(c), because
opposer failed to plead that its marks became famous in
connection with its goods and services prior to applicant’s use
of its mark. Toro Co. v. ToroHead, Inc., 61 USPQ2d 1164 (TTAB
2001). Except for a concluding sentence in its brief on the
case, opposer did not argue or discuss dilution. Thus, to the
extent that it could even be considered a valid claim, which it
is not, we deem it waived.
Opposition No. 91118745
4
Applicant, in its answer, denied the salient
allegations in the notice of opposition.
The record consists of the pleadings; the file of the
opposed application; and opposer’s notice of reliance on
photocopies of its pleaded registrations3, the file contents
of Opposition No. 91123480 which involved the parties, and
applicant’s responses to opposer’s requests for admissions,
submitted during opposer’s testimony-in-chief. In addition,
applicant submitted under notice of reliance, excerpts from
the testimony deposition (with exhibits) of its president
Michael Navin; third-party registrations of marks which
include the word “SHARP”; opposer’s responses to applicant’s
interrogatories; applicant’s responses to opposer’s
3 Trademark Rule 2.122(d)(2) permits a party to make a
registration it owns of record “by appropriate identification and
introduction during the taking of testimony or by filing a notice
of reliance, which shall be accompanied by a copy (original or
photocopy) of the registration prepared and issued by the [USPTO]
showing both the current status and title to the registration.”
The documents are not status and title copies required by
Trademark Rule 2.122(d). Although we note opposer’s statement
that it placed an order with the USPTO for such copies, the
Board’s rules of practice no longer allow a party to make a
registration of record in this manner. However, we have
considered the testimony of opposer’s witness and determined that
the pleaded registrations are owned by opposer and are valid and
subsisting.
Opposition No. 91118745
5
interrogatories, documents produced by opposer; and
documents produced by applicant.4 Finally, opposer
submitted the rebuttal testimony deposition (with exhibits)
of its vice president and general counsel Donald P. Mossman;
and a rebuttal notice of reliance on documents from
Opposition No. 91123480 and excerpts from the testimony
deposition of applicant’s witness Mr. Navin.5 The parties
have briefed the case, but did not request an oral hearing.
Before turning to the record herein, we note that
opposer, for the first time in its brief on the case, argues
that registration of applicant’s application is
4 We note that applicant’s notice of reliance was technically
untimely. Further, certain of the materials accompanying
applicant’s notice of reliance are not proper subject matter
therefor. Also, applicant should have filed the entire testimony
deposition of its witness, Mr. Navin. See Trademark Rule
2.123(h). In any event, in its brief on the case opposer lists
in its description of the record, “documents and information
submitted by applicant with its notice of reliance.” Thus, we
consider opposer to have stipulated applicant’s notice of
reliance into the record.
5 Opposer’s request for an extension of its rebuttal testimony
period is granted and its rebuttal testimony deposition and
rebuttal notice of reliance are considered timely filed. We note
that much of the testimony of opposer’s witness, Mr. Mossman, was
more appropriate for its testimony-in-chief. Although
applicant’s counsel objected during the deposition to certain
aspects of the testimony on the ground that it was not in the
nature of rebuttal testimony, applicant did not renew the
objection in its brief. Thus, we consider applicant’s objection
to be waived.
Finally, with respect to the excerpts of the Navin deposition
submitted under opposer’s rebuttal notice of reliance, because
applicant failed to submit the entire deposition, we will treat
these excerpts of record although trial testimony is generally
not proper subject matter for a notice of reliance.
Opposition No. 91118745
6
barred by res judicata (claim preclusion) in view of
Opposition No. 91123480 which also involved the parties to
the present proceeding. Opposition No. 91123480 involved
applicant’s application Serial No. 75721542 to register the
mark THINKSHARP and design for goods and services which are
identical to those in the application involved herein.
Default judgment was entered against applicant for failure
to file an answer therein. It is opposer’s position that
the judgment in Opposition No. 91123480 operates as res
judicata herein because the marks are virtually identical
and the goods and services are the same.
Under the doctrine of res judicata or claim preclusion,
the entry of a final judgment on the merits of a claim in a
proceeding serves to preclude the relitigation of the same
claim in a subsequent proceeding between the parties or
their privies, even in those cases where the prior judgment
was the result of default. One of the purposes of res
judicata is to promote judicial economy by preventing
repetitive litigation. Clearly, this purpose was not served
here because at the time opposer first raised this argument,
i.e., in its brief on the case, the trial had been
completed. In view thereof, and inasmuch as opposer failed
to put applicant on notice that it intended to rely on the
asserted res judicata effect of the prior proceeding,
Opposition No. 91118745
7
opposer is considered to have waived any right to assert res
judicata.
We turn then to the record of this case. Donald
Mossman, opposer’s vice president and general counsel,
testified that opposer sells between 30 and 40 different
product lines in the United States, including a full range
of video and audio equipment, under the mark SHARP. Among
the products opposer sells are computers, monitors,
multifunction printer/copiers, duplicating equipment,
projectors, PDA’s, microwaves, televisions, and electrical
components for use in finished products. According to Mr.
Mossman, opposer has also used the SHARP mark on computer
software which is used in connection with training dealers
and service technicians. This particular software is not
for consumer use. Mr. Mossman testified that opposer has
also used the marks SHARPVISION, BE SHARP, and FROM SHARP
MINDS COME SHARP PRODUCTS, but the latter slogan is no
longer actively used.6 Opposer sells it products to
individual consumers and businesses.
According to Mr. Mossman, studies have shown that
opposer’s SHARP mark has a high level of consumer
recognition and Forbes magazine has ranked opposer 17th in
6 Although the record shows that opposer owns a registration for
the mark SHARPVISION, there is no evidence that the marks BE
SHARP and FROM SHARP MINDS COME SHARP PRODUCTS are registered.
Opposition No. 91118745
8
brand recognition in the broad field of electronics and
electrical equipment based on worldwide sales.
Over the past seven years, opposer’s U.S. sales have
amounted to approximately $3 billion annually and its
advertising expenditures have been approximately $60,000,000
annually.
Further, opposer actively polices its SHARP mark by
filing oppositions and other legal proceedings.
Applicant’s president, Michael Navin, testified that as
of March 2003, applicant had used its THINKSHARP mark for
approximately four years. According to Mr. Navin
applicant’s products and educational services are designed
to develop individuals who are problem solvers and critical
thinkers. Applicant’s goods and services are sold to
teachers and administrators, from the middle school level
through college. Applicant offers a limited number of
courses to corporations. Applicant sells its goods and
services through independent sales representatives and by
mailings to individuals in the education field. Applicant
promotes its goods and services at trade shows. According
to Mr. Navin, applicant first marketed its goods and
services under the mark “ThinkSmart”, but as the result of a
legal challenge,” applicant changed its mark to THINKSHARP.
There is no dispute as to opposer’s priority in view of
the testimony of opposer’s vice president and general
Opposition No. 91118745
9
counsel, Mr. Mossman, that the pleaded registrations are
owned by opposer and are valid and subsisting. King Candy
Co. v. Eunice King’s Kitchen, Inc. 496 F.2d 1400, 182 USPQ
108 (CCPA 1974).
We turn first to opposer’s contention that it owns a
family of marks characterized by the term SHARP. The
“family” of marks doctrine has applicability in those
situations where the plaintiff had established a family of
marks characterized by a particular feature, so that the
defendant’s subsequent use of its mark containing the
feature will cause the relevant purchasing public to assume
that defendant’s mark is yet another member of the
plaintiff’s family. See Blansett Pharmaceutical Co. Inc. v.
Camrick Laboratories Inc., 25 USPQ2d 1473 (TTAB 1992);
Econo-Travel Motor Hotel Corp. v. Econ-O-Tel of America,
Inc., 199 USPQ 307 (TTAB 1978); and Porta-Tool, Inc. v. DND
Corp., 196 USPQ 643 (TTAB 1977).
It is well settled that merely adopting, using and
registering a group of marks having a feature in common for
similar goods or related goods or services is insufficient
to establish, as against a defendant, a claim of ownership
of a family of marks characterized by the feature. Rather,
it must be demonstrated that prior to defendant’s first use
of its challenged mark, the various marks said to constitute
the family, or at least a good number of them, were used and
Opposition No. 91118745
10
promoted together in such a manner as to create among
purchasers an association of common ownership based upon the
family characteristic. See J & J Snack Foods Corp. v.
McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir.
1991); Hester Industries Inc. v. Tyson Foods Inc., 2 USPQ2d
1646 (TTAB 1987); and Cambridge Filter Corp. v. Sensodyne
Corp., 189 USPQ 99 (TTAB 1975).
In the present case, opposer’s claim that it owns a
family of SHARP marks has not been proved. The evidence
introduced by opposer consists of copies of its
registrations for the marks SHARP, SHARP CORPORATION and
SHARPVISION; printouts from the Sharp USA website;
photographs of individual SHARP products, and a large number
of promotional materials for individual SHARP products.
Several of the promotional materials bear the mark SHARP
along with the phrase FROM SHARP MINDS COME SHARP PRODUCTS.
There is insufficient evidence relating to opposer’s use and
advertising of its marks together such that we can conclude
that the relevant purchasing public has come to identify
SHARP as the “surname” of a family of marks. The mere fact
that opposer uses marks that consist of or include SHARP
does not in itself prove that a family of marks exists.
Thus, at least on the record before us, opposer has failed
to establish purchaser recognition of a family of marks
owned by it.
Opposition No. 91118745
11
This brings us to the issue of likelihood of confusion.
The most pertinent of opposer’s marks is the mark SHARP, the
strongest of opposer’s marks by reason of opposer’s
extensive use and promotion thereof, and the mark to which
most of opposer’s evidentiary record is devoted. Although
opposer’s registrations for the mark SHARP cover a wide
range of electrical and electronic products, in its brief on
the case opposer focused its arguments on the relationship
between its computers, videocassette players, and CD-ROM
players and the goods and services in applicant’s
application. Thus, we focus our likelihood of confusion
determination on whether applicant’s use of the mark
THINKSHARP for the goods and services identified in
applicant’s application is likely to cause confusion with
opposer’s mark SHARP for computers, videocassette players,
and CD-ROM players.
Our likelihood of confusion determination 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).
At the outset, we acknowledge that the substantial
sales and advertising by opposer of its SHARP brand
products, and the many years opposer has continuously used
such marks for a variety of electrical and electronic
Opposition No. 91118745
12
products, establish the fame of the mark.7 The fame of
opposer’s mark entitles it to a broad scope of protection
against competing marks. See Nina Ricci S.A.R.L. v. E.T.F.
Enterprises, 889 F.2d 1070, 1074, 12 USPQ2d 1901, 1904 (Fed.
Cir. 1989). Thus, this duPont factor favors opposer.
Nonetheless, based upon careful consideration of the
record and arguments before us, we find that the marks SHARP
and THINKSHARP, when considered in their entireties, are not
similar in appearance, pronunciation, connotation or
commercial impression and that opposer’s goods are not
commercially related to the goods and services set forth in
applicant’s application such that the use of these marks in
connection with the respective goods and services would be
likely to cause confusion.
We consider first the marks in terms of appearance and
sound. We find that applicant’s mark THINKSHARP and
opposer’s mark SHARP obviously are similar to the extent
that they both consist of or include the word SHARP.
However, the marks look and sound dissimilar to the extent
that applicant’s mark includes the word THINK while
opposer’s mark does not. In terms of connotation, we find
that the word SHARP in opposer’s mark, as applied to
opposer’s goods, would be understood to mean, or refer to
7 Also, we note that applicant admits in response to opposer’s
Request For Admission No. 37 that “opposer is a well known
Opposition No. 91118745
13
opposer itself. We base this conclusion on the fact that
opposer’s trade name is Sharp Corporation.
We find that the word SHARP, as used in applicant’s
mark and as applied to applicant’s goods and services would
be understood to have the meaning set forth in The American
Heritage Dictionary of the English Language (4th ed. 2000)
as entry number 1, i.e., “intellectually penetrating,
astute.”8 Considering applicant’s mark THINKSHARP in its
entirety as applied to applicant’s goods and services, we
find that the mark connotes sharp or clear thinking. We
disagree with opposer’s conclusory argument that the mark
connotes “think of Sharp,” i.e., opposer.
We find that the differences in the marks’ connotation
clearly and significantly weighs against a finding that the
marks are confusingly similar. See, e.g., Champagne Louis
Roederer S.A. v. Delicato Vineyards, 148 F.3d 1373, 47
USPQ2d 1459 (Fed. Cir. 1998)[CRYSTAL CREEK for wine has
different connotation from CRISTAL for champagne; marks
found to be dissimilar]. Having considered the marks in
their entireties in terms of appearance, sound and
connotation, we find that they are dissimilar in their
company in the United States to consumers of electronic
products.”
8 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 584, 596 (TTAB 1982), aff’d, 703 F.2d 1372,
217 USPQ 505 (Fed. Cir. 1983).
Opposition No. 91118745
14
overall commercial impressions. The mere presence of the
word SHARP in both marks is not sufficient to render the
marks similar, especially in view of the fact that the word
presents a different meaning and commercial impression in
each mark, as applied to the respective goods and services.
In view of the foregoing, this duPont factor favors
applicant.
We turn next to a consideration of the parties’ goods
and services. Opposer argues that they are related because
they travel in the same channels of trade to the same class
of purchasers; and that applicant’s computer software,
videocassettes and CD-ROMS may be used in opposer’s
computers, videocassette players, and CD-ROM players.
Inasmuch as applicant’s application contains no
limitations with respect to channels of trade and classes of
purchasers for the goods therein, we must presume that
applicant’s goods are sold in all the normal channels of
trade to all of the usual purchasers. Thus, for purposes of
our likelihood of confusion analysis, we must assume that
both parties’ goods (i.e., opposer’s computers,
videocassette players, and CD ROM players and applicant’s
educational computer software, videocassette tapes, and CD-
ROMS) are sold in mass merchandisers and electronic stores,
and through the Internet to ordinary consumers.
Nonetheless, this record does not contain evidence or
Opposition No. 91118745
15
testimony upon which we could base the conclusion that
consumers would assume that computers, videocassette players
and CD-ROM players, on the one hand, and educational
computer software, videocassettes featuring educational
programs, and CD-ROMS containing educational programs, on
the other hand, are offered by the same entity. Simply
because applicant’s goods may be used in opposer’s goods is
not a sufficient basis to find that the goods are related.
Opposer’s goods are hardware, while applicant’s goods are
bought for the content contained in the physical object.
There is no evidence that these kinds of goods commonly
emanate from the same sources.
Similarly, opposer has failed to establish on this
record any relationship between its computers, videocassette
players and CD-ROM players, and applicant’s educational
services in the field of problem solving and critical
thinking. We note that because applicant’s application
contains specific limitations as to channels of trade with
respect to the services therein, i.e., classroom
instruction, the global computer network, and satellite
transmission), the only overlapping trade channel for
opposer’s goods and applicant’s services is the Internet.
However, inasmuch as thousands of goods and services are
offered through the Internet, the mere fact that both
opposer’s goods and applicant’s services are offered through
Opposition No. 91118745
16
the Internet to ordinary consumers is certainly not a basis
to find that they are related within the meaning of the
Trademark Act. Simply put, opposer had the burden of
proving that its goods and the goods and services set forth
in applicant’s application are related, but opposer has not
met this burden. This duPont factor favors applicant.
We should point out that applicant’s argument
concerning the existence of third-party registrations of
SHARP marks is not a reason we are ruling in applicant’s
favor. Applicant has submitted copies of third-party
registrations of marks which include the word SHARP for
goods and services in the computer and/or electronics field.
Third-party registrations may, in appropriate circumstances,
show the meaning of a mark or a portion of a mark in the
same way that dictionaries are employed. See Tektronix,
Inc. v. Daktronics, Inc. , 187 USPQ 588, 592 (TTAB 1975),
aff’d, 534 F.2d 915, 189 USPQ 693 (CCPA 1976). However, the
third-party registrations submitted by applicant are not
particularly probative of the meaning of opposer’s SHARP
mark because, as we have indicated, opposer’s mark would be
understood to mean or refer to opposer. Thus, we do not
view the third-party registrations as indicating that
opposer’s SHARP mark has a suggestive connotation or is
otherwise weak. Moreover, any asserted weakness in
Opposition No. 91118745
17
opposer’s mark is overcome because opposer’s SHARP mark is
famous.
Although we have given opposer’s mark the significant
weight that must be accorded to famous marks, in view of the
cumulative differences in the marks SHARP and THINKSHARP and
the parties’ respective goods and services, confusion is not
likely.
Decision: The opposition is dismissed.