Tera Media Corp.

Trademark Trial and Appeal Board

Sep 16, 2004

No. 75617075 (T.T.A.B. Sep. 16, 2004)

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Tera Media Corporation
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Serial No. 75617075
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Ashlyn J. Lembree of Wiggin & Nourie for Tera Media
Corporation.
Tracy Cross, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
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Before Hanak, Quinn and Bucher, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Tera Media Corporation (applicant) seeks to register
TERA MEDIA CORPORATION and design in the form shown below
for “blank recordable, removable optical and magnetic
storage media.” The application was filed on January 4,
1999 with a claimed first use date of July 15, 1998. At
the request of the Examining Attorney, applicant disclaimed
the exclusive right to use MEDIA CORPORATION apart from the
mark in its entirety.
THIS OPINION IS NOTCITABLE
AS PRECEDENT OF
THE TTAB
Mailed: 9/16/2004
Ser. No. 75617075
2
Citing Section 2(d) of the Trademark Act, the
Examining Attorney has refused registration on the basis
that applicant’s mark, as applied to applicant’s goods, is
likely to cause confusion with the mark TERAMEDIA
previously registered in typed drawing form for “computer
hardware and software for multimedia communications and
networks, namely, computers, monitors, projectors,
keyboards, fingerprint scanners, cameras, microphones,
switches, transmitters, servers, terminals, utility
concentrators, power supplies, encoders and software
therefor; and instruction manuals sold therewith.”
Registration No. 2,402,640. In addition, the Examining
Attorney refused registration on the basis that applicant’s
mark, as applied to applicant’s goods, is likely to cause
confusion with a second TERAMEDIA registration owned by the
same entity. Registration No. 2,386,989. This second
registration is a service mark registration that involves
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the installation and maintenance of hardware and software
for multimedia communications (the goods set forth in the
cited trademark registration), as well as
“telecommunications services, namely, electronic
transmission of video and data.” However, in our
likelihood of confusion analysis, we will focus on
applicant’s trademark application and the cited trademark
registration, as the applicant and the Examining Attorney
have done. If there is no confusion between the trademark
application and the trademark registration, there likewise
would be no confusion between the trademark application and
the service mark registration. By way of analogy, if there
is no confusion between an application whose goods are
“automobiles” and a trademark registration whose goods are
“commercial busses,” then there would be, obviously, no
likelihood of confusion between the application whose goods
are “automobiles” and a service mark registration whose
services are “the servicing and maintenance of commercial
busses.”
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request a
hearing.
Ser. No. 75617075
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In any likelihood of confusion analysis two key,
although not exclusive, considerations are the similarities
of the marks and the similarities of the goods or services.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The 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.”).
Considering first the marks, we find that while they
are not identical, there are clear similarities. Marks are
compared in terms of visual appearance, pronunciation and
meaning. In terms of visual appearance, the marks are only
somewhat similar. The registered marks consists of the one
word TERAMEDIA, whereas applicant’s mark not only breaks
this one word into two words (TERA MEDIA), but more
importantly includes a prominent design feature as well as
the word CORPORATION which, while depicted in smaller
lettering than TERA MEDIA, is nevertheless depicted in a
manner that it is readily visible. In terms of
pronunciation, the marks are quite similar. Whether
TERAMEDIA is depicted as one word or two, its pronunciation
is the same. Of course, it need hardly be said that the
design in applicant’s mark would not be pronounced.
Finally, given the non-source identifying nature of the
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word CORPORATION in applicant’s mark, consumers may not
even vocalize this word. Even if they did, the two marks
would still be quite similar in terms of pronunciation.
Finally, in terms of meaning or connotation, both marks
begin with the arbitrary term TERA. Given the arbitrary
nature of TERA as applied to applicant’s goods and
registrant’s goods and services, we find that this factor
causes both marks to be essentially arbitrary in nature.
Turning to a consideration of applicant’s goods and
registrant’s goods, we note at the outset that both
applicant and the Examining Attorney have referred to
registrant’s goods (blank recordable, removable optical and
magnetic storage media) as blank recordable CDs and DVDs.
This is perfectly permissible because the use of the term
blank recordable CDs and DVDs in no way narrows or limits
applicant’s formal recitation of goods. Instead, it merely
clarifies applicant’s formal recitation of goods. In re
Trackmobile, Inc., 15 USPQ2d 1152, 1154 (TTAB 1990).
Obviously, it is the burden of the Examining Attorney
to show that there is a relationship between registrant’s
goods and applicant’s goods in order to prove that there
exists a likelihood of confusion. To cut to the quick, the
Examining Attorney has simply failed to offer any evidence
showing how applicant’s blank recordable CDs and DVDs are
Ser. No. 75617075
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in any way related to registrant’s goods, much less
registrant’s services. In her brief at unnumbered page 8,
the Examining Attorney simply makes the following
speculations: “Hence, the consuming public may mistakenly
believe that the applicant’s goods are to be used in
conjunction with the registrant’s goods and/or services.
The applicant’s discs may appear to be accessories for the
registrant’s line of goods and services.” (emphasis added).
This Board deals in facts and not speculations. The
Examining Attorney has simply failed to prove any
relationship between applicant’s goods and registrant’s
goods and services, and accordingly we find that there is
no likelihood of confusion. To be clear, at unnumbered
page 9 of her brief, the Examining Attorney makes the
following statement: “Also, note that online retailers
such as chumbo.com provide both storage media and software
packages from various companies. See evidence made
previously of record.” The Examining Attorney attached to
her brief three pages of a print-out from chumbo.com’s
website. This was properly made of record during the
examination process. However, after a careful review of
these three pages, we simply do not see how they support
the Examining Attorney’s contention. Moreover, even if
they did, the fact that one major online retailer may
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offer, to use the Examining Attorney’s words, “both storage
media and software packages from various companies,” does
not in any way prove that applicant’s goods and
registrant’s goods are related. Large online retailers --
like large discount stores, department stores and home
improvement centers -- carry a very large array of vastly
different goods. This sole evidence in no way proves that
applicant’s goods and registrant’s goods are related.
Decision: The refusal to register is reversed.