Sprint Communica tions L.P.v.X*Press Information Services, Ltd.

Trademark Trial and Appeal Board

Aug 4, 1998

No. 91097710 (T.T.A.B. Aug. 4, 1998)

Paper No. 14
RFC
THIS DISPOSTIONIS NOT CITABLE
AS PRECEDENT OF THE TTAB AUG 4, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Sprint Communications Company L.P.
v.
X∗Press Information Services, Ltd.
_____
Opposition No. 97,710
to application Serial No. 74/450,288
filed on October 25, 1993
_____
Robert D. Hovey of Hovey, Williams, Timmons & Collins for
Sprint Communications Company L.P.
Scott M. Burt of Jones, Day, Reavis & Pogue for X-PRESS
Information Services, Ltd.
______
Before Cissel, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
The above-referenced application seeks registration on
the Principal Register of the mark “MPEG CHANNEL” for
“hardware and software for use in transmitting, compressing,
decompressing, and storing audio, video, and animation in
digital form for communications systems,” in Class 9, and
for “communication services, namely transmitting of full
motion video, audio and animation that has compressed or
Opposition No. 97710
2
decompressed under MPEG (moving pictures experts group)
standards for use related to cable transmission systems,” in
Class 38. The basis for filing the application was
applicant’s assertion that it possessed a bona fide
intention to use the mark in commerce in connection with
these goods and services. At the suggestion of the
Examining Attorney, applicant disclaimed exclusive rights to
“MPEG” apart from the mark as shown.
Following publication of the mark in the Official
Gazette, a timely notice of opposition was filed by Sprint
Communications Company L.P., hereinafter referred to as
“Sprint.” As grounds for opposition, Sprint asserted that
it had prior use of the mark “SPRINT MEETING CHANNEL” in
connection with videoconferencing services and products;
that it owned an application to register its mark (which
subsequently matured into Reg. No. 1,918,365, issued on the
Principal Register on September 12, 1995, for
“videoconferencing services”); and that applicant’s mark, if
used in connection with the goods and services set forth in
the application, would so resemble opposer’s mark that
confusion would be likely.
A trial was conducted in accordance with the Trademark
Rules of Practice. Opposer took the testimony of Patrice
Dougherty, its “Senior Intellectual Property Analyst,” and
made of record her testimony and the exhibits introduced in
Opposition No. 97710
3
connection with it. Applicant did not attend her
deposition, nor did applicant take any testimony or
introduce any evidence of its own. Both parties filed
briefs, but no oral hearing before the Board was requested.
In view of the fact that the application is based on
applicant’s stated intention to use the mark it seeks to
register, priority is not an issue in this proceeding. The
sole issue is whether confusion would be likely if applicant
were to use its mark in connection with the goods and
services set forth in the application in view of opposer’s
prior use of its “SPRINT MEETING CHANNEL” mark in connection
with Sprint’s videoconferencing services.
We note that in its brief, opposer argues priority and
likelihood of confusion with regard to the mark “MEETING
CHANNEL,” without the “SPRINT” prefix, but this ground for
opposition was not pleaded. The testimony and exhibits do
indicate that Sprint’s predecessor in interest, U.S.
Telecom, used the words “MEETING CHANNEL” in connection with
the promotion of its videoconferencing services several
years before Sprint bought Telecom out and began using
“SPRINT MEETING CHANNEL” as its own mark for these services
in 1990, but the issue of likelihood of confusion with the
mark “MEETING CHANNEL,” without the word “SPRINT” preceding
it, was not pleaded, not tried, and not proved. In any
event, the testimony shows that the mark “MEETING CHANNEL”
Opposition No. 97710
4
is not being used by opposer, so whatever rights opposer’s
predecessor may have established in that mark must be
considered to have been abandoned in favor of the new mark,
“SPRINT MEETING CHANNEL.”
Based on careful consideration of the rather limited
record before us in this case, we find that opposer has not
met its burden of establishing that confusion would be
likely if applicant were to use “MPEG CHANNEL” in connection
with the goods and services set forth in the application.
While our analysis of the issue of likelihood of
confusion typically involves several of the factors
identified by the predecessor to our primary reviewing court
in E.I. Dupont de Nemours & Co., 476 F.2d 1565, 177 USPQ 563
(CCPA 1973), in the case at hand, we have no evidence or
testimony on many of the thirteen factors, and applicant has
made concessions as to several others, such as the
relatedness of the goods and services of the parties.
Applicant’s position can be summarized as arguing that these
two marks are just too dissimilar to be likely to cause
confusion, even if the goods and services are closely
related. We agree.
Although applicant does not cite it, this case is very
similar to the situation found in Kellogg Co. v. Pack ‘Em
Enterprises, Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir.
1991). In that case, the Court held that even where the
Opposition No. 97710
5
goods are closely related, if the marks are not similar,
confusion will not be likely. The marks in that case were
“FROOT LOOPS,” on one hand, and “FROOTEE ICE” and design, on
the other. Both marks were used on food products. Since
that decision, we have repeatedly held that where the marks
are not similar, that fact can be dispositive, even if all
the other factors which are considered in the traditional
likelihood of confusion analysis cut in favor of finding
confusion to be likely.
In the instant case, the situation is the same. The
fact that opposer’s mark is not similar to applicant’s mark
mandates a finding that confusion is not likely.
Opposer argues that the dominant portions of the marks
are the same term, the one word common to both marks,
“CHANNEL.” Opposer reaches this conclusion by noting that
the descriptive designation “MPEG” has been disclaimed in
the opposed application, and by reasoning that when this
Board reversed the requirement of the Examining Attorney
that Sprint had to disclaim the words “MEETING CHANNEL” in
its application to register “SPRINT MEETING CHANNEL,” the
word “CHANNEL” was specifically held not to be merely
descriptive of videoconferencing services.
We are not persuaded by opposer’s arguments in this
regard. “CHANNEL” is not the dominant portion of either of
the two marks at issue here. Notwithstanding opposer’s
Opposition No. 97710
6
arguments to the contrary, even though “MPEG” has a
descriptive meaning in connection with applicant’s goods and
services, and “CHANNEL” has what this Board held to be a
suggestive connotation in connection with videoconferencing
services, these facts do not logically lead to the
conclusion that the term “CHANNEL” dominates either mark.
To the contrary, opposer’s well known mark “SPRINT” is the
dominant portion of opposer’s pleaded mark. The suggestive
component “MEETING CHANNEL” has much less significance than
the distinctive mark “SPRINT.” As to applicant’s mark “MPEG
CHANNEL,” even if we assume that prospective purchasers are
aware that “MPEG” stands for the Moving Pictures Expert
Group, it has not been demonstrated that either component of
the combination of this term with “CHANNEL” would have more
source-indicating significance than the other. “CHANNEL” is
not the dominant portion of either applicant’s mark or
opposer’s mark, and opposer’s entire argument that confusion
is likely between the two marks is based on this erroneous
conclusion.
Simply put, we have no reason to think that these two
marks would be confused. They neither look alike, sound
alike, nor have similar meanings. The only thing they have
in common is the suggestive word “CHANNEL,” which is not the
dominant portion of either mark.
Opposition No. 97710
7
Because the marks in their entireties are not similar,
confusion is not likely. Accordingly, the opposition is
dismissed, and applicant will be issued a registration in
due course.
R. F. Cissel
P. T. Hairston
C. E. Walters
Administrative Trademark Judges,
Trademark Trial & Appeal Board