CBS Broadcasting Inc.v.New Line Media Solutions, Inc.

Trademark Trial and Appeal BoardNov 27, 2012

No. 91190366 (T.T.A.B. Nov. 27, 2012)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: November 27, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ______ CBS Broadcasting Inc. v. New Line Media Solutions, Inc. _____ Opposition No. 91190366 to Application Serial Nos. 77345379 and 77346843 _____ Christopher P. Beall of Levine Sullivan Koch & Schulz, LLP, and Rebecca Borden of CBS Broadcasting Inc., for CBS Broadcasting Inc. Andrew S. Goldwyn of Andrew S. Goldwyn, P.A. for New Line Media Solutions, Inc. ______ Before Rogers, Chief Administrative Trademark Judge, and Adlin and Hightower, Administrative Trademark Judges. Opinion by Adlin, Administrative Trademark Judge: Applicant New Line Media Solutions, Inc. (“New Line” or “applicant”) seeks registration of the mark EYE ON AMERICA, in standard characters and in the form shown below Opposition No. 91190366 2 for “Production and distribution of radio and television commercials; Providing advertising, marketing and promotional services, namely development of advertising campaigns for television and radio” in International Class 35 and for “Production of radio or television programs; Educational and entertainment services, namely, a continuing news program about current topics, trends and issues accessible by radio, television, satellite, audio, video and computer networks” in International Class 41.1 Opposer CBS Broadcasting Inc. (“CBS” or “opposer”) opposes registration of New Line’s marks under Sections 2(d) and 43(c) of the Trademark Act, 15 U.S.C. §§ 1052(d) and 1125(c), on the grounds that applicant’s marks so resemble CBS’s previously-used mark EYE ON AMERICA for television news programming and production services that use of applicant’s marks for the identified services would be likely to cause confusion with, and dilute, opposer’s mark.2 In its answer, applicant “admits that Opposer used the ‘Eye on America,’ as did other third parties, prior to Applicant’s use of such name,” but applicant otherwise denies the salient allegations in the notice of opposition. Answer ¶ 10. 1 Application Serial Nos. 77345379 and 77346843, filed December 6 and 7, 2007, respectively, alleging a bona fide intent to use the marks in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). Applicant’s identifications of its services vary slightly, but not substantively, between the two applications. 2 Opposer also pleads ownership of Application Serial No. 77363584, and in its answer, applicant admits that opposer filed the application. However, opposer failed to introduce any evidence regarding this application, it is therefore not of record and it has been given no consideration. Opposition No. 91190366 3 The evidence of record consists of the pleadings herein and the files of the opposed applications. In addition, CBS submitted a notice of reliance, making of record its First Set of Requests for Admission (“NOR”) and noting that “[a]pplicant has failed to respond to the Requests for Admission contained herein.” Because New Line did not respond to the requests and does not deny that it failed to respond to the requests for admission, the requests are deemed admitted. Fed. R. Civ. P. 36(a)(3); see Giersch v. Scripps Networks, Inc., 85 USPQ2d 1306, 1307 (TTAB 2007) (“Under Fed. R. Civ. P. 36, a requested admission is deemed admitted unless a written answer or objection is provided to the requesting party within thirty days after service of the request, or within such time as the parties agree to in writing.”); Fram Trak Indus. Inc. v. WireTracks L.L.C., 77 USPQ2d 2000, 2005 (TTAB 2006) (“Respondent failed to respond to petitioner’s requests for admission and failed to file a motion to amend or withdraw those admissions. Accordingly, those requests for admission are deemed admitted and conclusively established.”); Pinocchio’s Pizza, Inc. v. Sandra Inc., 11 USPQ2d 1227, 1228 n.5 (TTAB 1989) (“Since no responses were made to the requests for admission, they are deemed admitted.”); see also 37 C.F.R. § 2.120(j)(3)(i) (stating that effective admissions may be placed into record via a notice of reliance). In fact, New Line did not take any testimony, submit any evidence or file a brief. STANDING A party has standing to oppose an application if it establishes a “real interest” in the case, thus showing that it is not a “mere intermeddler.” See Ritchie Opposition No. 91190366 4 v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1024-27 (Fed. Cir. 1999) (stating that the party must have a legitimate personal interest); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 187-89 (CCPA 1982). Standing is a question of law. See Coach Servs., Inc. v. Triumph Learning L.L.C., 668 F.3d 1356, 101 USPQ2d 1713, 1727 (Fed. Cir. 2012). In this case, New Line admits that CBS used EYE ON AMERICA prior to New Line using its involved marks. Answer ¶ 10. In addition, New Line admits, in its deemed admissions, that CBS’s “trademark rights are senior in time” to applicant’s filing dates, that CBS’s mark is “inherently distinctive,” that the parties’ marks are similar in sight, sound, connotation and commercial impression and “virtually identical,” and that the parties’ services and channels of trade are “similar.” NOR Requests for Admission Nos. 4, 6-11, 14, 15. Accordingly, we find that CBS has established its standing by establishing its prior use of EYE ON AMERICA and that it offers services similar to those identified in the involved applications. Books on Tape, Inc. v. Booktape Corp., 836 F.2d 519, 5 USPQ2d 1301, 1302 (Fed. Cir. 1987) (competitor has standing to challenge registration); Kistner Concrete Products, Inc. v. Contech Arch Technologies, Inc., 97 USPQ2d 1912, 1918 (TTAB 2011) (same); Giersch, 90 USPQ2d at 1022 (TTAB 2009) (“Petitioner has established his common-law rights in the mark DESIGNED2SELL, and has thereby established his standing to bring this proceeding.”); Syngenta Crop Protection, Inc. v. Bio-Chek, LLC, 90 USPQ2d 1112, 1118 (TTAB 2009) (evidence that opposer uses Opposition No. 91190366 5 its mark “is sufficient to support opposer’s allegations of a reasonable belief that it would be damaged …” where opposer alleged likelihood of confusion). PRIORITY CBS has also established its priority through New Line’s admissions in its answer and its deemed admissions. Indeed, as stated, New Line admits that CBS used EYE ON AMERICA prior to New Line using its involved marks, and that CBS’s “trademark rights are senior in time” to applicant’s filing dates. Answer ¶ 10; NOR Request for Admission No. 4. See, Herbko International Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002). We further find that the mark EYE ON AMERICA is inherently distinctive for television news programming and production services. See Otto Roth & Co., Inc. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 44 (CCPA 1981) (discussing requirements of inherent distinctiveness). Nothing about EYE ON AMERICA “forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use” of television news programming and production services. Coach Services Inc. v. Triumph Learning LLC, 96 USPQ2d 1600, 1616 (TTAB 2010), aff’d in relevant part, 668 F.3d 1356, 101 USPQ2d 1713 (Fed. Cir. 2012). And New Line has introduced no evidence to indicate that EYE ON AMERICA is not inherently distinctive for opposer’s services. See, e.g., Giersch, 90 USPQ2d at 1023 (“Respondent has not raised an issue as to the distinctiveness of petitioner's mark or otherwise put petitioner on notice of this defense, and therefore we find that the mark is distinctive.”) (citing Wet Seal Inc v. FD Mgmt., Inc., 82 Opposition No. 91190366 6 USPQ2d 1629, 1634 (TTAB 2007) (absent argument or evidence from applicant, opposer's mark deemed distinctive)); Chicago Corp. v. N. Am. Chicago Corp., 20 USPQ2d 1715, 1717 n. 5 (TTAB 1991)(rejecting applicant's argument that opposer failed to prove that its mark was distinctive where applicant failed to plead the issue or introduce evidence of non-distinctiveness). In view of the evidence of record, CBS has established its priority. LIKELIHOOD OF CONFUSION We base our likelihood of confusion determination under Section 2(d) on an analysis of the probative facts in evidence which are relevant to the factors set forth in In re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563, 566 (CCPA 1973) (establishing likelihood of confusion factors). In this case, New Line has effectively admitted to many of the factors in the likelihood of confusion test. When addressing the similarity or dissimilarity of marks, the Board compares the marks in their entireties in terms of appearance, sound, connotation, and commercial impression. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). New Line has effectively admitted that the parties’ marks are similar under these factors, specifically through its deemed admissions that the parties’ marks are similar in “sight,” “sound,” “connotation,” and “commercial impressio[n],” and that they are “virtually identical.” NOR Requests for Admission Nos. 6-10. Additionally, it is obvious, and we find, that applicant’s standard character mark is identical to opposer’s pleaded mark, and the dominant, literal portion of applicant’s design Opposition No. 91190366 7 mark is also identical to opposer’s pleaded mark. Ceccato v. Manifattura Lane Gaetano Marzotto & Figli S.p.A., 32 USPQ2d 1192, 1197 (TTAB 1994) (“In this case, we think that it is appropriate to give greater weight to the word portio[n] of the mark, because it is by the words that purchasers will refer to the goods, and the words, rather than the design feature or the stylized lettering, will therefore have a greater impression on them.”); see also, Jansen Enterprises, Inc. v. Rind and Stone, 85 USPQ2d 1104, 1109 (TTAB 2007). In fact, applicant’s design does not change the sound, connotation, or commercial impression of its mark, and applicant’s design is insufficient to distinguish the parties’ marks. With respect to the similarities of the parties’ services and channels of trade, we make our determination based on the services as they are recited in the involved applications. See Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); Octocom Systems, Inc. v. Houston Computers Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Here, New Line seeks registration for “Educational and entertainment services, namely, a continuing news program …” and for “Production of radio and television programs.” Therefore, the parties’ services are legally identical. Moreover, applicant seeks unrestricted registrations, without any limitation as to channels of trade. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in-part related nature of the parties’ goods, and the lack of any restrictions in the identifications thereof as to trade channels and purchasers, these clothing items could be offered and sold to the Opposition No. 91190366 8 same classes of purchasers through the same channels of trade”). And applicant has effectively admitted that the parties’ services and channels of trade are similar. NOR Request for Admission Nos. 14-16. Therefore, we find that the parties’ services and channels of trade are legally identical, or at the very least highly similar. Our findings that the parties’ marks, services and channels of trade are identical or at least substantially similar support a finding that there is a likelihood of confusion between them. See, Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733, 1735 (TTAB 2001) (“Use of identical marks for virtually identical services would create a likelihood of confusion.”). It is also worth noting, however, that New Line admitted to the fame of opposer’s mark through its admissions that “Opposer’s use of the mark ‘EYE ON AMERICA’ is well-known in the relevant marketplace,” and “Opposer’s mark ‘EYE ON AMERICA’ is famous in the general consuming public.” NOR Request for Admission Nos. 12, 13. It is well- settled that where fame exists, it “plays a ‘dominant role in the process of balancing the DuPont factors,’ … and ‘[f]amous marks thus enjoy a wide latitude of legal protection.’” Bose Corp. v. QSC Audio Products, Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002) (quoting Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000)).3 3 While applicant is also deemed to have admitted certain facts related to its intent in adopting its marks, under the circumstances presented here, relying on these deemed admissions to find that applicant acted with improper intent is unnecessary. Opposition No. 91190366 9 After a careful review of all evidence of record, and based on a preponderance of the evidence, we conclude that there is a likelihood of confusion between New Line’s two EYE ON AMERICA marks and CBS’s EYE ON AMERICA mark, such that registration of applicant’s marks must be and hereby is refused under Section 2(d) of the Lanham Act. As noted, New Line has not submitted any evidence, taken any testimony, or presented any legal argument to rebut opposer’s showing.4 Given our finding with respect to opposer’s Section 2(d) claim, it is unnecessary to address CBS’s claim under Section 43(c). Decision: The opposition is sustained. 4 While we appreciate opposer’s stated intention to not unnecessarily create an extensive record or “trouble the Board” with unnecessary argument, opposer should be aware that it took a significant risk in relying only on applicant’s deemed admissions. Indeed, the requests could have been drafted more clearly and specifically and the record could have been supplemented with a limited amount of additional evidence without it becoming burdensome.