Viacom Int’l. Inc.v.Komm, Merritt and Niemann

Trademark Trial and Appeal Board

Feb 5, 1998

No. 91098994 (T.T.A.B. Feb. 5, 1998)

Paper No. 31
ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB FEB 3, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Viacom International, Inc.
v.
Kermit Komm, George Merritt and Darrell Niemann
_____
Opposition No. 98,994
to application Serial No. 74/468,945
filed on December 13, 1993
_____
Anthony Keats of Baker & Hostetler for Viacom International,
Inc.
Kermit Komm, pro se.
______
Before Sams, Seeherman and Quinn, Administrative Trademark
Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Viacom International Inc. has opposed the application
of Kermit Komm, George Merritt and Darrel Niemann to
register the mark MY-T-MOUSE THE SOFTWARE THAT MAKES YOUR
MOUSE A MOUSE THAT TYPES! and design, as shown below,
(hereafter referred to as “MY-T-MOUSE and design”) for
“computer software which enables the user to type by making
Opposition No. 98,994
2
selections from an on-screen keyboard with a mouse.” 1 The
words THE SOFTWARE THAT MAKES YOUR MOUSE A MOUSE THAT TYPES
have been disclaimed.
As grounds for opposition, opposer has alleged that
since 1942 it and its predecessors have used the trademark
MIGHTY MOUSE in association with a film series of animated
cartoons for motion pictures and television; that these
cartoons feature the character of a mouse known as MIGHTY
MOUSE; that opposer is the owner of a number of
registrations for the mark MIGHTY MOUSE and MIGHTY MOUSE and
design for goods in Classes 5, 9, 14, 16, 25, 28 and 30 2;
that opposer has for many years been engaged in the business
of licensing the use of the MIGHTY MOUSE mark and the MIGHTY
MOUSE design on a wide variety of goods; that it engaged in
active negotiations for the licensing of these marks for use
in connection with the sale of computer products and
accessories; and that applicants’ applied-for mark MY-T-
MOUSE and design, as used for applicants’ identified goods,

1 Application Serial No. 74/468,945, filed December 13, 1993 and
asserting first use and first use in commerce on October 11,
1993.
2 Certain classes have been cancelled from some of these
registrations, as will be discussed infra.
Opposition No. 98,994
3
is likely, in view of the fame of the MIGHTY MOUSE cartoons
and the MIGHTY MOUSE mark, to cause confusion or mistake or
to deceive.3
Applicants have denied the essential allegations of the
notice of opposition.4
The record includes the pleadings; the file of the
opposed application; and the testimony, with exhibits, of
opposer’s witnesses Debra Petrasek, Tom Finn, Kermit Matthew
Komm and Irwin Handelman, and of applicants’ witness Kermit
Matthew Komm. In addition, opposer has made of record by
notice of reliance copies of its pleaded registrations for
the word mark MIGHTY MOUSE for “film series of animated
cartoons for motion pictures and television; comic magazines
and coloring books; toy puzzles” 5 and for “watches; tee

3 Opposer also pleaded in its notice of opposition that
applicants’ mark would falsely suggest a connection with opposer.
However, this issue was not briefed by opposer, and we therefore
deem this Section 2(a) claim to have been waived.
4 Applicants’ response to the notice of opposition was not, as
pointed out in the Board’s action of January 19, 1996, couched in
the normal language for an answer. The Board advised the parties
that it would construe the response as an admission of the
allegations of paragraphs 1-9 of the notice, and a denial of the
allegations of paragraphs 10 and 11. Subsequently, on May 28,
1996, applicants, who were acting pro se, advised the Board that
it had come to their attention that the word “admission” has
certain legal implications, and sought leave to amend their
answer. The Board indicated that it would construe this
communication as a motion to amend the answer, and gave opposer
time in which to file any objections to that motion. Opposer not
having responded, and it being obvious from opposer’s brief that
it was not relying on the “admissions” of the earlier response,
the Board hereby accepts applicants’ amended answer.
5 Registration No. 1,104,244, issued October 17, 1978; Section 8
affidavit accepted; Section 15 affidavit received.
Opposition No. 98,994
4
shirts, sweatshirts” 6; and for the design mark shown below
for “film series of animated cartoons for motion pictures
and television; sunglasses; watches; tee shirts,
sweatshirts.” 7
The parties have fully briefed the case; 8 an oral
hearing was not requested.

6 Registration No. 1,527,745, issued March 7, 1989; Section 8
affidavit accepted; Section 15 affidavit received. This
registration was originally issued for goods in Classes 5, 14, 25
and 30; however, because no Section 8 affidavit was received for
the goods in Classes 5 and 30, the registration was cancelled as
to these classes.
7 Registration No. 1,533,890, issued April 11, 1989; Section 8
affidavit accepted; Section 15 affidavit received. The
registration was originally issued for goods in Classes 5, 9, 14,
16, 25, 28 and 30; however, as a result of opposer’s failing to
file a Section 8 affidavit for the goods in Classes 5, 16, 28 and
30, those classes were cancelled from the registration.
8 In its brief opposer raised a question as to whether
applicants have abandoned their rights in the mark because “there
is nothing in the record to indicate that all three individual
applicants control IMG’s use of the mark.” p. 8. This issue was
neither pleaded nor tried. (In fact, opposer’s brief identifies
the only issue before us as being that of likelihood of
confusion.) Thus, we have not considered the issue of
abandonment.
We also note that with their brief applicants have submitted
the diskette for the MY-T-MOUSE software product. This
submission has not been considered in that it was not properly
made of record during the testimony period.
Opposition No. 98,994
5
In 1944 opposer’s predecessor-in-interest, Terrytoons,
gave the name MIGHTY MOUSE to a cartoon character it had
created. This character was featured in a series of short
animated film cartoons which were shown in theaters as part
of movie presentations. In the early 1950s the rights in
the MIGHTY MOUSE character were sold to CBS TV. Viacom
Internatonal was spun off from CBS in 1971, and the rights
in the Terrytoon properties went to Viacom.
CBS TV began airing the MIGHTY MOUSE cartoons in 1955
as a half-hour Saturday morning cartoon series. The initial
MIGHTY MOUSE cartoon series ran on CBS for 12 years, with
new cartoons being produced through 1961. This series was
very successful, and achieved a 45.8 audience share, which
means that 45.8% of the people watching television at the
time the program aired were watching the MIGHTY MOUSE show.
After the CBS series ended, the MIGHTY MOUSE cartoons were
syndicated to individual television stations from the mid-
60s until the early 1990s. The USA Network then obtained
the rights to syndicate the series on its own cable network.
In 1979 new MIGHTY MOUSE cartoons were created for
broadcast on network television, and 16 half-hour programs
were aired on CBS TV under the title “The New Adventures of
Mighty Mouse and Heckle & Jeckle.” A third series, “Mighty
Mouse: The New Adventures,” was created in 1987 and
broadcast on CBS to good critical reviews. This program was
Opposition No. 98,994
6
broadcast on CBS until 1988. The cartoons have also been
licensed for broadcast in many countries around the world.
According to Deborah Petrasek, opposer’s vice president
of domestic licensing, the words MIGHTY MOUSE and the mouse
design have been licensed through the years for a variety of
products, including toys, hats, apparel, novelty items and
party goods. 9 Opposer made of record a jigsaw puzzle and
coloring book, both bearing a 1977 copyright date, and a
package of vitamins bearing a 1986 copyright date.
In 1994, Tom Finn, the director of business development
for Viacom Consumer Products, was asked by senior management
to put together a strategic plan in order to determine what
rights in MIGHTY MOUSE were available to be exploited. In
general, opposer exploits its properties by licensing the
rights to third parties who then use the marks on
merchandise. The merchandising, in addition to generating
revenue, promotes the property and its visibility.
Mr. Finn testified that opposer has “looked at actually
doing computer accessories, in terms of keyboards and screen
savers and screen covers featuring the [MIGHTY MOUSE]
characters.” p. 26.
In addition, Ms. Petrasek testified that opposer had,
as of the time of her testimony in June, 1996, entered into

9 Opposer did not provide any information as to the amount of
sales, or the length of time during which these products were
sold.
Opposition No. 98,994
7
an agreement to license the MIGHTY MOUSE trademark for an
interactive coloring disk. The product on which the mark is
to be used is essentially software for what appears to be an
electronic coloring book. She also testified that opposer
was in the process of speaking to other potential licensees
with respect to interactive-type products and computer
peripherals.
Applicants use their MY-T-MOUSE and design mark for a
software program operating in the Microsoft Windows
environment. This software enables a user to operate the
computer entirely from the mouse by creating a “keyboard”
which floats on the computer screen so that users can point
to letters or numbers with a mouse and click the character
into the document on which they are working. The primary
consumers for the product are physically disabled people who
cannot use a regular keyboard. The software is also useful
for those who wish to insert a limited number of characters
into a document and do not want the distraction of looking
from the monitor to the keyboard and back. Moreover,
because different keyboard configurations may be
superimposed with this software, it is useful for those
working with a foreign alphabet, or for children and adults
who are not familiar with the normal keyboard layout, and
prefer the letters displayed in alphabetical order.

Opposition No. 98,994
8
Applicants were the programmers who developed the software
for their predecessor-in-interest, Irwin Handelman; when Mr.
Handelman decided to close his business he assigned all
rights in the mark and the program to the current applicants
in May 1995.
Irwin Handelman, his son Marc, and Kermit Komm, one of
the current applicants, were involved in choosing the
trademark. The primary words MY-T-MOUSE were meant to be an
abbreviation for “My Typing Mouse,” while the mouse design
was based on the letter “T”. The software program was in
development for approximately two years, and a version was
introduced in the fall of 1993 at the COMDEX computer show,
where copies of it were distributed to the public. Since
then, applicants have developed a line of software products
using the phrase “My-T”, e.g., MY-T-PEN, MY-T-TOUCH and MY-
T-CALCULATOR. The MY-T-MOUSE program has been promoted
through press releases, direct mail, promotional literature,
trade shows, and in periodicals such as “Windows Magazine”
and “Assistive Technology”, a newspaper directed to the
physically challenged. It was also featured in an article
published in “Info World,” and on a PBS television program
called “Computer Chronicles,” which shows new computer
products. The program is available through such stores as
Egghead, Micro Center and Software City. Sales of the MY-T-
MOUSE software product have thus far been relatively small,
Opposition No. 98,994
9
Mr. Handelman testifying that sales amounted to
approximately $30,000 and 5,000 units, and Mr. Komm
testifying to sales in 1995 of approximately $1600.
Applicants are currently expanding their sales to various
European countries. The suggested retail prices for the
various programs range from $30 to $50.
Inasmuch as opposer has made its pleaded registrations
of record, priority is not an issue with respect to the
animated cartoons, comic magazines, coloring books, toy
puzzles, watches, tee shirts, sweatshirts and sunglasses
identified in those registrations. King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974). Moreover, the record shows that opposer began using
the mark MIGHTY MOUSE for vitamins prior to applicants’
adoption of their mark.
This brings us to the issue of likelihood of confusion.
After considering all the factors involved in a
determination of likelihood of confusion, as set out in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973), which are of record in this case, we find
that opposer has not proved that confusion is likely to
occur from applicant’s use of its applied-for mark for its
identified goods.
Turning first to a consideration of the goods, we find
that the goods for which opposer has priority as a result of
Opposition No. 98,994
10
its registrations or its evidence of prior use—-goods such
as animated cartoons, clothing, toys, coloring and comic
books, vitamins and sunglasses—-are very different from the
“computer software which enables the user to type by making
selections from an on-screen keyboard with a mouse”
identified in applicants’ application.
Nor has opposer shown that such software is within the
natural scope of expansion for the use of opposer’s mark.
Opposer has presented very limited testimony in that regard.
Specifically, Ms. Petrasek has stated that opposer has
executed a deal to license its MIGHTY MOUSE mark for an
interactive coloring disk 10 and “is in the process of also
speaking to several other potential licensees for other
interactive type products, including interactive adventures
with one particular software manufacturer, interactive comic
books with another....” She also made the rather vague
statement that opposer is “in conversations with
manufacturers of some peripherals items, such as actually a
mouse that – an actual mouse that you use in your computer,
but it would be molded in the shape of Mighty Mouse.”
Petrasek, p. 21.

10 There is no evidence that this product had been produced as of
the time the testimony was taken. On the contrary, Ms. Petrasek
identified as an exhibit a “Gumby and Friends” coloring disk
which she stated was an example of the way opposer intended to
use the MIGHTY MOUSE trademark.
Opposition No. 98,994
11
Ms. Petrasek also made some very general comments that
its other merchandising marks, especially Star Trek, have
been licensed in the “interactive electronics area.” These
comments, in their entirety, follow:
We’ve done a variety of software products and gaming
products, hardware accessories, computer accessories,
including molded keyboards, mice, disc caddies--that’s
on the hardware side—and also in the electronics area,
like molded telephones, et cetera, and then on the
software side not only for Star Trek but for properties
like Top Gun, Mission Impossible, Addams Family. We’ve
done several different kind of products in the
interactive and electronics area.
Petrasek, p. 25.
Opposer did not give any details about these products,
nor did it make of record any exhibits showing the manner in
which the marks are used on the goods. Aside from the
coloring disk, opposer did not indicate specifically what
the software is used for.
Opposer has failed to prove that applicants’
specialized software is the type of product for which a
merchandising mark such as opposer’s would be used. Opposer
licenses its MIGHTY MOUSE marks, and its other merchandising
marks, for a variety of products where the product is bought
because of the mark. Thus, a consumer may purchase a tee
shirt because it bears the name and picture of MIGHTY MOUSE,
or a coloring book because it has pictures of the cartoon
character. The merchandising, as Mr. Finn testified,
promotes the trademark and its visibility.
Opposition No. 98,994
12
Applicants’ software, on the other hand, is for a very
specialized purpose, i.e., to create a floating keyboard on
the computer screen so that users can “type” by clicking
with the mouse rather than by typing on a keyboard. The
users of this software are also “specialized,” in that they
are all people who do not want to use a traditional typing
keyboard. They include the handicapped, those who want to
use a foreign alphabet or foreign alphabet keyboard
arrangement, and those who do not want to shift their view
between the screen and the keyboard. Applicants’ software
program is very different from the interactive coloring
books and interactive games, or the screen savers and mouse
pads on which opposer intends to expand the use of its mark.
The mere fact that computer accessories and computer
toys and games involve the use of computers or software, and
that applicants’ goods are also computer software, does not,
in and of itself, demonstrate that the computer software on
which applicants use their mark is within the natural scope
of expansion of the use of opposer’s mark. As we have said
in the context of determining whether products are related,
“Given the ubiquitous use of computers in all aspects of
business in the United States today, this Board and its
reviewing Court have rejected the view that a relationship
exists between goods and services simply because each
involves the use of computers.” Electronic Data Systems
Opposition No. 98,994
13
Corp. v. EDSA Micro Corp., 23 USPQ2d 1460, 1463 (TTAB 1992).
See also Octocom Systems, Inc. v. Houston Computers Services
Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990);
Information Resources Inc. v. X*Press Information Services,
6 USPQ2d 1034 (TTAB 1988).
Opposer has not presented evidence showing that
software of the type sold by applicants is the kind of
product on which a character or merchandising mark would be
used. Thus, there is no basis to conclude that consumers
would assume that applicants’ goods were licensed or
approved by opposer.
This determination is further buttressed by the
differences in the marks. While we agree with opposer that
MY-T-MOUSE is the dominant part of applicants’ mark, and may
be pronounced in the same way as MIGHTY MOUSE, there are
significant differences in the appearances of the marks,
specifically the spellings of MIGHTY and MY-T, and the
appearances of the “realistic” cartoon action hero mouse and
the abstract mouse face formed from the letter “T”. Because
merchandising marks are exploited for their connection to
the exploited property, consumers would not expect that
applicants’ goods bearing the mark MY-T-MOUSE with an
abstract mouse design emanate from or are sponsored by
opposer.
Opposition No. 98,994
14
Moreover, the marks have different connotations, in
that applicants’ mark is actually used in connection with
the computer peripheral known as a “mouse,” and this meaning
is further emphasized by the informational language in the
mark, THE SOFTWARE THAT MAKES YOUR MOUSE A MOUSE THAT TYPES.
Thus, it is the connotation of the computer accessory,
rather than of the cartoon animal associated with opposer’s
mark, that consumers will perceive.
With respect to the aural similarity of the marks, we
are not persuaded by applicants’ argument that consumers
will necessarily pronounce their mark with the accent on the
“T”, and thereby differentiate the mark from opposer’s.
However, consumers will see applicants’ mark when they
purchase the goods, and will therefore readily note that the
MY-T-MOUSE and design mark is very different from MIGHTY
MOUSE. Thus, although in some cases phonetic similarity
alone may be a sufficient basis for finding marks to be
confusingly similar, in this case we do not think that it
is.
It must be remembered that applicants’ software program
has a relatively sophisticated purpose. It is not likely to
be casually purchased, and therefore purchasers will readily
note the differences between applicants’ mark and the mark
MIGHTY MOUSE. We would also point out that, to the extent
Opposition No. 98,994
15
that children would use this product, they are not likely to
be the purchasers for it.
We have taken into consideration opposer’s argument
regarding the fame of its mark. Fame, of course, is a
significant factor in the determination of likelihood of
confusion, and can play a dominant role in cases featuring a
famous or strong mark . Kenner Parker Toys Inc. v. Rose Art
Industries Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir.
1992). However, MIGHTY MOUSE is not a famous mark in the
legal sense that other marks have been found to be famous.
The evidence shows that MIGHTY MOUSE achieved its fame as a
cartoon character of the 1940s, ’50s and early ’60s.
Opposer has provided little evidence of the extent of the
use of the mark in the United States since that time. For
example, although there was testimony that the mark was used
on toy puzzles and vitamins, there was no evidence as to the
amount of sales of these products. Ms. Petrasek gave only
the copyright date shown on the labels of the packaging.
Nor did opposer provide evidence of how often, or where, the
MIGHTY MOUSE cartoon programs were shown when they were in
syndication. As opposer itself has recognized, MIGHTY MOUSE
is one of its nostalgic television properties, and its
appeal is to adults because it is they who remember the
first television series.
Opposition No. 98,994
16
We recognize that applicants, in their brief, made the
statement that “opposer has provided proof of their famous
mark.” p. 6. However, Mr. Komm, who is acting on behalf of
himself and the other two applicants, is not an attorney,
and we cannot view this statement as an admission of fame in
the legal sense. We also note that in the paragraph
preceding this statement applicants referred to the mark as
“an animated cartoon character used in entertainment.”
We acknowledge that applicants’ mark MY-T-MOUSE and
design might bring to mind the cartoon MIGHTY MOUSE.
However, this does not necessarily mean that consumers will
be confused into believing that the two marks indicate the
same source of origin. See Jacobs v. International
Multifoods Corp., 668 F.2d 1234, 212 USPQ 641, 642 (CCPA
1982) (the fact that one mark may bring another to mind does
not in itself establish likelihood of confusion as to
source). See also, Original Appalachian Artworks Inc. v.
Streeter, 3 USPQ2d 1717 (TTAB 1987) As the Court stated in
University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., Inc., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983):
likely *** to cause confusion means more than the
likelihood that the public will recall a famous mark on
seeing the same mark used by another. It must also be
established that there is a reasonable basis for the
public to attribute the particular product or service
of another to the source of the goods or services
associated with the famous mark. To hold otherwise
would result in recognizing a right in gross, which is
Opposition No. 98,994
17
contrary to principles of trademark law and to concept
embodied in 15 USC ' 1052(d).
Thus, even in the case of a famous mark (and, as we have
stated, on this record MIGHTY MOUSE does not rise to the
level of a famous mark), the mere fact that the junior
user’s mark may remind the public of the famous mark does
not mean that the use of the junior mark is likely to cause
confusion. For the reasons given above, we find that
consumers will distinguish between the parties’ marks, and
are not likely to believe that applicants’ identified
software, sold under the MY-T-MOUSE and design mark,
emanates from or is sponsored by the same source as the
MIGHTY MOUSE cartoon character.
In reaching this conclusion, we recognize that
applicants’ predecessor was aware of opposer’s MIGHTY MOUSE
character when he adopted his mark. Mr. Handelman clearly
remembered the MIGHTY MOUSE cartoons which were shown as
movie shorts during the 1940s. However, it is equally clear
that, in adopting the mark, he did not intend to associate
his product with opposer, or trade on opposer’s good will.
Mr. Handelman said he had neither heard of nor seen Mighty
Mouse for 35 or 40 years, that he knew of the cartoon
character when he was a child but that it had then
disappeared. At most, we can only conclude that he was
aware of the mark MIGHTY MOUSE, but he believed that it had
not been used for over 30 years.
Opposition No. 98,994
18
Decision: The opposition is dismissed.
J. D. Sams
E. J. Seeherman
T. J. Quinn
Administrative Trademark Judges
Trademark Trial and Appeal Board