Tribune Broadcasting Company

Trademark Trial and Appeal Board

Mar 8, 2013

No. 85168362 (T.T.A.B. Mar. 8, 2013)

Mailed: March 8, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Tribune Broadcasting Company
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Serial No. 85168362
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Michael P. Hendershot and Salvador K. Karotti for Tribune Broadcasting Company.
Michele-Lynn Swain, Trademark Examining Attorney, Law Office 116 (Michael W.
Baird, Managing Attorney).
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Before Cataldo, Wolfson and Lykos, Administrative Trademark Judges.
Opinion by Lykos, Administrative Trademark Judge:

On November 3, 2010, Tribune Broadcasting Company (“applicant”) filed an
application to register the mark EYE OPENER in standard character format for
“television broadcasting in the field of news and current events” in International
Class 36.1
The Trademark Examining Attorney refused registration of applicant’s mark
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground
that applicant’s mark so resembles the registered mark IOPENER also in standard
character format for “electronic data transfer, namely, services to disseminate real-
This Opinion is Not a
Precedent of the TTAB
Serial No. 85168362
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time sports and motor sports data via computer” in International Class 38,2 that
when used on or in connection with applicant’s identified services, it is likely to
cause confusion or mistake or to deceive.
Upon final refusal of registration, applicant filed a request for reconsideration
and timely appeal. Both applicant and the examining attorney filed briefs. For the
reasons explained below, we affirm the refusal to register.
We base our determination under Section 2(d) on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”).
See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
First, we consider the services. At the outset, we note that the services in
question are not identical. However, it is not necessary that the services be identical
or even competitive in nature in order to support a finding of likelihood of confusion,
it being sufficient that the services are related in some manner and/or that the
circumstances surrounding their marketing are such that they would be likely to be

1 Application Serial No. 85168362, filed pursuant to Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b).
2 Registration No. 3811042, registered on June 29, 2010, based on Section 66A of the
Trademark Act. The registration also includes goods and services in International Classes
9, 25 and 42; however, the examining attorney only cited the services listed in International
Class 38 as a bar to registration.
Serial No. 85168362
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encountered by the same persons under circumstances that would give rise, because
of the marks employed thereon, to the mistaken belief that they originate from or
are in some way associated with the same producer. In re Home Builders Assn. of
Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990).
Applicant argues that the respective services are unrelated because they are
rendered differently in distinct mediums (broadcast television versus electronic data
transfer over the computer) and also because the subject matter of the services do
not overlap (“news and current events” versus “real-time sports and motor sports”).
The examining attorney maintains that the services are “closely related” because
both involve the transmission of data. In support thereof, the examining attorney
has submitted excerpts from Internet websites to show that the same entities
provide both television broadcasting and electronic data transfer services. See for
example the following:
ESPN.COM – excerpts showing that the same entity, Entertainment
and Sports Programming Network, provides online sports information,
such as sports scores, as well as television broadcasting of sports
highlights and games. (October 7, 2011 Office Action).

FOXSPORTS.COM – excerpts showing that Fox Broadcasting Company
offers both online motors sports updates and schedules and television
broadcasting programming for motor sports events. (October 7, 2011
Office Action).

ABC.COM – excerpts showing that the American Broadcasting
Company provides both online sports information and programming as
well as a television broadcasting services. (October 7, 2011 Office
Action).

In addition to the above, the examining attorney has made of record use-based
third-party registrations showing the same mark registered for television
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broadcasting services and electronic transmission or transfer of data. See for
example the following:
Registration No. 3821425 for the mark TIVO for “Television broadcasting
services; Transmission of network and satellite television programming;
Digital and electronic transmission of voice, data, sound, music, graphics,
images, audio, video, information, and messages;”

Registration No. 3958562 for the mark NTN24 for “Telecommunication
services, namely, video and data transmission services via telecommunications
networks, wireless communications networks, the Internet, satellite; television
broadcasting services; broadcasting of television programs, news programs,
television news;”

Registration No. 2461485 for the mark CHARTER CABLE TV for “Cable
television broadcasting and transmission services; cable television
broadcasting featuring music; and telecommunications services, namely, the
electronic transmission of data, music and images;”

Registration No. 4021477 for the mark DIRECTVCINEMA for “Satellite
television broadcasting; Satellite transmission services; Broadcasting programs
via a global computer network; Video-on-demand transmission services; Pay-
per-view television transmission services; Electronic transmission of data via
global computer networks, wireless networks and electronic communication
networks;” and

Registration No. 3911959 for the mark NAT GEO WILD for “cable television
broadcasting; direct broadcast satellite television; television broadcasting;
video broadcasting; transmission of streamed sound and audio-visual
recordings via the Internet, cable networks, wireless networks or satellite
networks; broadcasting and transmission of television programs via computer
or communications networks; video-on-demand transmission services;
electronic transmission via computer of sound, images, data and television
programs.”

We find that based on the evidence of record, the examining attorney has
established that applicant’s and registrant’s services are related and may emanate
from the same source. See In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1203
(TTAB 2009); In re Albert Trostel & Soebns Co., 29 USPQ2d 1783, 1785-86 (TTAB
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1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
Indeed, we agree with the examining attorney’s observation “that in this media-
driven age, it is commonplace for television companies to offer electronic data
transmission services in connection with their television broadcasting services and
that these services are marketed together in the same trade channels, namely,
online, in an effort to reach the broadest audience possible.” Furthermore, with
regard to the content of applicant’s and registrant’s services, applicant’s broad
recitation of “news and current events” may encompass registrant’s more narrow
content of “sports and motor sports news and current events.”
Applicant is critical of the evidence of third-party registrations covering “data
transmission services,” arguing that they are not probative because they are
distinct from registrant’s “electronic data transfer” services. Applicant contends
that the terms “transfer” and “transmit” do not have the same meaning. Applicant’s
argument is unpersuasive. While the wording is not precisely the same, it is clear
that both involve the distribution or movement of data and are essentially the same
type of service or, at worst, closely related services.
As to the Internet evidence, applicant maintains that this is not probative
because it at most suggests that consumers may believe that a consumer-facing
website and television broadcasting services emanate from the same source only in
instances where the website is an adjunct to a specific, identically branded
television station, the website contains programming information for the television
station, and both the website and television station are focused on the same subject
Serial No. 85168362
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matter. But this is exactly why the evidence is probative and does show that
applicant’s and registrant’s services may emanate from the same source. In other
words, the Internet evidence of record suggests that the same entities are providing
television broadcasting and online sports information services. Furthermore, the
limitations applicant reads into the services provided by these entities are not
inherent in their identification on their websites. As explained above, the respective
services need not be identical or even competitive in order to be sufficiently related
for this du Pont factor to favor a finding of likelihood of confusion. The issue is not
whether purchasers would be able to distinguish the specific services themselves,
but rather whether they would be likely to assume that there is some source,
sponsorship or other affiliation between the services. As a result, we find this
evidence probative of the examining attorney’s position that registrant’s and
applicant’s types of services may emanate from a common source. Thus, this factor
favors finding a likelihood of confusion.
We consider next the du Pont likelihood of confusion factor regarding the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. See Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005). The focus is on the recollection of the average purchaser, who normally
retains a general rather than a specific impression of trademarks. In re Jack B.
Binion, 93 USPQ2d 1531 (TTAB 2009); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975). Where the services of the applicant and cited registrant
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are similar and/or closely related as they are in this case, the degree of similarity
between the marks required to support a finding of likelihood of confusion is not as
great as would be required with distinct services. See In re J.M. Originals Inc., 6
USPQ2d 1393, 1394 (TTAB 1987). See also Shen Mfg. Co. v. Ritz Hotel Ltd., 393
F.3d 1238, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004).
It is well settled that similarity in sound alone may be sufficient to support a
finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d
1534, 1535 (TTAB 1988). See also In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d
1581, 1586 (TTAB 2007). As applicant concedes, the marks are phonetic
equivalents. However, applicant argues that the visual differences in the beginning
of each mark -- “I” versus “EYE” -- result not only in a different appearance but also
a different meaning. More specifically, applicant contends that the prefix “i” is
commonly understood by consumers as an abbreviation for “Internet” and when
used in connection with registrant’s services, conveys to consumers that registrant’s
“electronic data transfer” services are computer or Internet based. Applicant’s Brief,
p. 3, citing TMEP § 1209.03(d) and In re Zanova, Inc., 59 USPQ2d 1300 (TTAB
2000) (ITOOL merely descriptive of computer software for use in creating web
pages, and custom design of websites for others). By contrast, applicant maintains
that its placement of the word “eye” prior to the word “opener” “evokes the image of
a body part and the well-worn saying ‘that was a real eye-opener.’” Applicant’s
Brief, p. 3. Applicant submits that these distinctions result in marks with entirely
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different commercial impressions. Applicant also relies on prior case law where no
confusion was found with identical marks.
In response thereto, the examining attorney contends that applicant has
submitted no evidence regarding consumer perception of the term “i” as the
equivalent of “Internet.” The examining attorney further asserts that the side-by-
side differences in the marks’ appearances are insufficient to overcome the
similarity in sound and that contrary to the applicant’s position, they do convey the
same commercial impression.
Even assuming that the letter “i” has significance as an abbreviation for the
“Internet,” we find applicant’s arguments unpersuasive. As noted above, it is
undisputed that the marks are phonetic equivalents and will be pronounced by
prospective consumers in the same manner. Despite the difference in the spelling of
the initial portion of each mark, given that both marks share the same second
component (the word “opener”) they are similar in overall appearance. In addition,
both marks present a similar meaning and concept when considered in relation to
the services. Both call to the mind of a prospective consumer the commonly used
phrase “eye opener.” When considered within the context of applicant’s “television
broadcasting in the field of news and current events,” applicant’s mark EYE
OPENER suggests a new or fresh perspective in the reporting of the news and
current events. The registered mark IOPENER, by commencing with the letter “I,”
could very easily be perceived as a word play on the phrase “eye opener,” with the
suggestion that registrant provides novel information about sports and motor
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sports, as applicant argues, via the Internet. Thus, registrant’s mark conveys not
only the nature of the information transmitted (that it is surprising or unique) but
also the mechanism (that registrant is an Internet content provider). As a result,
the overall commercial impression of the marks is similar.3
The line of cases upon which applicant relies is distinguishable. In each of
those cases, the marks as applied to the goods had distinct meanings and resulted
in separate and distinct commercial impressions when applied to the involved
goods. See In re Sears, Roebuck and Co., 2 USPQ2d 1312 (TTAB 1987)
(CROSSOVER for brassieres creates a different commercial impression from
CROSSOVER for ladies’ sportswear); In re British Bulldog, Ltd., 224 USPQ 854
(TTAB 1984) (PLAYERS for shoes engenders a different commercial impression
from PLAYERS for underwear); In re Sidle Lingerie Co., Inc., 197 USPQ 629, 630
(TTAB 1977) (BOTTOMS UP when used in connection with men's suits, coats and
trousers creates a different commercial impression from BOTTOMS UP for women's
underwear).
In view of the foregoing, we find that applicant's mark is similar to the
registered mark in terms of appearance, sound, meaning and commercial
impression. Even assuming in arguendo, that the marks have different
connotations, the identical sound of the marks and similarity in appearance

3 As often stated, the test, under the first du Pont factor, is not whether the marks can be
distinguished when subjected to a side-by-side comparison, but rather whether the marks
are sufficiently similar in terms of their overall commercial impression that confusion as to
the source of the goods or services offered under the respective marks is likely to result. See
Palm Bay Imports, Inc. v. Veuve Clicquot, supra.

Serial No. 85168362
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outweigh any differences in meaning or connotation, especially when they are
applied to such closely related services. Thus, this first du Pont factor also weighs in
favor of finding a likelihood of confusion.
To the extent that there are any other relevant du Pont factors, we treat them
as neutral.
After considering all of the evidence of record and argument pertaining to the
du Pont likelihood of confusion factors, we conclude that there is a likelihood of
confusion between applicant’s mark and the registered mark when used in
connection with their identified services. As discussed, the involved services are
related in that they are of a type which may emanate from a common source, and
prospective consumers upon encountering these services offered under highly
similar marks would be likely to assume the services come from the same source.
To the extent that there is any doubt on this issue, it is well established that
we must resolve that doubt in favor of the prior registrant. In re Martin's Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984). See also
In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).
DECISION: The refusal to register is affirmed.