DivX, LLCv.Chance-I USA Corp.

Trademark Trial and Appeal Board

Aug 1, 2012

No. 91178576 (T.T.A.B. Aug. 1, 2012)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: August 1, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

DivX, LLC.
v.
Chance-i USA Corp.
_____

Opposition No. 91178576
to application Serial No. 786138041
_____

Charles R. Halloran of Kauth, Pomeroy, Peck & Bailey LLP for
DivX, Inc.

John K. Park of Park Law Firm for Chance-i USA Corp.
______

Before Quinn, Cataldo and Kuczma,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Chance-i USA Corp., applied to register on
the Principal Register the mark displayed below

1 This proceeding was consolidated with Opposition Nos. 91172434
and 91179492, involving the same parties and related questions of
law and fact. However, subsequently the Board entered judgment
Opposition No. 91178576
2
based upon an allegation of a bona fide intent to use the
mark in commerce in connection with “online ordering
services featuring computer surveillance equipment” in
International Class 35.2
Registration has been opposed by DivX, Inc.
(“opposer”). In its notice of opposition, opposer asserts
that it is the owner of the following marks, previously used
and registered on the Principal Register:
DIVX (typed or standard characters3)
for “on-line downloadable computer software for broadband
video transfer” in International Class 9, and “licensing of
computer software” in International Class 354 and a second,
subsequently cancelled registration for the same goods and
services.5 In addition to its standing, opposer asserts as
a ground for opposition a claim of priority and likelihood
of confusion under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d).

by default against applicant under Fed. R. Civ. P. 55 and
Trademark Rule 2.106(a) in the other two proceedings.
2 Application Serial No. 78613804 was filed on April 21, 2005.
3 Trademark Rule 2.52(a) was amended in 2003 to refer to “typed
drawings” as “standard character” drawings. See Trademark Rule
2.52(a); 37 C.F.R. 2.52(a).
4 Registration No. 2671143 issued on January 7, 2003 with a claim
of acquired distinctiveness under Section 2(f) of the Trademark
Act. Section 8 affidavit accepted; Section 15 affidavit
acknowledged.
5 Registration No. 2712951 issued on May 6, 2003 with a claim of
acquired distinctiveness under Section 2(f) of the Trademark Act.
Cancelled under Section 8 of the Trademark Act on December 12,
2009.
Opposition No. 91178576
3
In its answer, applicant admits opposer’s allegation
regarding the mark and goods at issue in its involved
application. Applicant otherwise denies the allegations in
the notice of opposition.
Description of the Record
The record in this case consists of the pleadings and
the file of the involved application. During its assigned
testimony period, opposer filed a notice of reliance upon
status and title copies of its pleaded Registration No.
2671143, as well as the following unpleaded registrations:
Registration No. 3356851 for the mark DIVX CERTIFIED
(typed or standard characters) for “computer hardware and
software for the receipt and display of broadcast video,
audio, and digital data signals” in International Class 9;6
and Registration No. 3982259 for the mark DIVX (standard
characters) for
Communication services, namely, broadcasting of
video and audio programming over
telecommunications networks, wireless
communication networks, the Internet, information
services networks and data networks; Communication
services, namely, transmission of voice, audio,
visual images and data by telecommunications
networks, wireless communication networks, the
Internet, information services networks and data
networks; Computer services, namely, providing on-
line facilities for communication, content sharing
and real-time interaction with other computer
users concerning topics of general interest;
Internet protocol television (IPTV) transmission

6 Issued December 18, 2007 with a claim of acquired
distinctiveness under Section 2(f) of the Trademark Act in part
as to DIVX. CERTIFIED is disclaimed.
Opposition No. 91178576
4
services; Streaming of audio, visual and
audiovisual material via a global computer network
and the internet; Transmission and distribution of
data or audio visual images via a global computer
network or the internet; and video and video
streaming via a global computer network and the
internet

in International Class 38;7 and a printout from the United
States Patent and Trademark Office’s Assignment database
showing assignment of its registrations from DivX, Inc. to
DivX, LLC.
Evidentiary Matter
With regard to the unpleaded registrations, opposer did
not move to amend its notice of opposition to add an
allegation of ownership thereof.8 Thus, it does not appear
that applicant was given fair notice of opposer's reliance
on these two additional registrations. On the other hand,
applicant has not objected to opposer’s reliance upon these
subsequently-issued registrations. Indeed, applicant did
not take testimony or offer any other evidence during its
assigned testimony period or file a brief on the case. In
view thereof, we will exercise our discretion to consider
opposer’s unpleaded registrations.
Opposer’s Standing
Because opposer has properly made three of its live
registrations of record, we find that opposer has

7 Issued June 21, 2011.
8 Both registrations issued after the filing of the opposition.

Opposition No. 91178576
5
established its standing to oppose registration of
applicant’s mark. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982).
We turn then to opposer’s claim of priority and
likelihood of confusion.
Priority of Use
Because opposer’s registrations are of record, Section
2(d) priority is not an issue in this case as to the marks
and goods and services covered thereby. See King Candy Co.
v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
Likelihood of Confusion
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue, even those not specifically discussed in
this decision. See In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Opposition No. 91178576
6

Family of Marks Not Proven
As a preliminary matter, we note that on page 11 of its
brief, opposer makes a passing reference to “the DIVX family
of marks” in its discussion of the fame of its DIVX mark.
However, opposer did not plead a family of marks. More
importantly, although opposer submitted three of its
registrations, there is no evidence of use of these DIVX and
DIVX-formative marks to support a finding that “the pattern
of usage of the common element is sufficient to be
indicative of the origin of the family.” The Black & Decker
Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1490 (TTAB
2007) citing J & J Snack Foods Corp. v. McDonald’s Corp.,
932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991).
Accordingly, to the extent that opposer’s reference to
a “family” of marks in its brief is intended to give rise to
a claim that opposer possesses a family of DIVX marks, such
claim fails for lack of proof.
Fame of Opposer’s Mark
We next turn our attention to opposer’s contention that
its DIVX mark is famous. Under the fifth du Pont factor, we
are required to consider evidence of the fame of opposer’s
mark and to give great weight to such evidence if it exists.
See Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63
Opposition No. 91178576
7
USPQ2d 1303 (Fed. Cir. 2002); Recot Inc. v. Becton, 214 F.3d
1322, 54 USPQ2d 1894 (Fed. Cir. 2000); and Kenner Parker
Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22
USPQ2d 1453 (Fed. Cir. 1992).
In this case, however, opposer’s showing of fame
consists of unsupported statements in its brief regarding
its use of the DIVX marks for over 12 years; its ownership
of 13 current registrations for DIVX marks; three pending
applications for such marks; and its asserted use of the
DIVX mark on a wide variety of goods and services.
Such unsupported statements fall far short of the
showing required of a party asserting fame of its mark for
purposes of a determination of likelihood of confusion. For
example, mere length of time that a mark is in use does not
by itself establish consumer awareness of the mark, such
that the mark can be found to be famous. See General Mills
Inc. v. Health Valley Foods, 24 USPQ2d 1270, 1277 (TTAB
1992). As we have stated in previous decisions, in view of
the extreme deference that is accorded to a famous mark in
terms of the wide latitude of legal protection it receives,
and the dominant role fame plays in the likelihood of
confusion analysis, it is the duty of a plaintiff asserting
that its mark is famous to clearly prove it. Blue Man
Productions Inc. v. Tarmann, 75 USPQ2d 1811 (TTAB 2005). We
Opposition No. 91178576
8
find that opposer has failed to make any showing of the fame
of its marks on this record.
Further, inasmuch as there is no evidence of record
regarding the strength or weakness of opposer’s marks, we
accord them an ordinary scope of protection in our
likelihood of confusion analysis.
The Marks
Now we turn to our comparison of opposer’s DIVX mark
with applicant’s mark, displayed below.9

The word portion of applicant’s mark, namely DIVIS, is
highly similar in appearance to opposer’s DIVX mark inasmuch
as both share the letters “DIV” as the first three letters
thereof. In addition, while it is settled that there is no
correct way to pronounce a trademark, we find on this record
that DIVX would be pronounced in a manner similar to that of
DIVIS. We note in that regard that there is no evidence of
the meaning of either term, notwithstanding that two of
opposer’s registrations of record are registered with a
claim of acquired distinctiveness under Section 2(f) of the

9 We observe that opposer does not argue in its brief that its
DIVX CERTIFIED mark is similar to applicant’s mark. Accordingly,
we will confine our discussion of the similarity of the parties’
marks to opposer’s DIVX mark.
Opposition No. 91178576
9
Trademark Act. As a result, on this record we are
constrained to find that to the extent either mark has any
meaning or connotation, such meaning or connotation is
unknown to us.
With regard to the design in applicant’s mark, the
abstract geometric design does not have any apparent
significance and otherwise frames the top of the wording in
applicant’s mark and draws attention thereto. The word
portion of applicant’s mark clearly is the dominant portion
thereof. It is a well-established principle that, in
articulating reasons for reaching a conclusion on the issue
of likelihood of confusion, there is nothing improper in
stating that, for rational reasons, more or less weight has
been given to a particular feature of a mark, provided the
ultimate conclusion rests on a consideration of the marks in
their entireties. See In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In this case, the
design does not significantly add to the overall commercial
impression of applicant’s mark. In addition, when a mark
contains both a word and a design, then the word is normally
accorded greater weight inasmuch it would be used by
purchasers to request the goods or services. In re Appetito
Provisions Co., 3 USPQ2d 1553 (TTAB 1987). For these
reasons, we consider DIVIS to be the dominant feature of
applicant’s mark.
Opposition No. 91178576
10
Thus, as discussed above, the dominant portion of
applicant’s mark is more similar to opposer’s DIVX mark than
dissimilar. We therefore find that, taken as a whole, the
similarities in the parties’ marks in appearance, sound, and
commercial impression outweigh the dissimilarities.
The Goods and Services
We now turn to a consideration of the similarity
between opposer’s goods and services as identified in its
registrations and applicant’s identified services. It is
settled that the issue of likelihood of confusion must be
determined in light of the goods or services as identified
in the involved application and registrations and, in the
absence of any specific limitations therein, on the
presumption that all normal and usual channels of trade and
methods of distribution are or may be utilized for such
goods or services. See Octocom Systems Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed.
Cir. 1990); Canadian Imperial Bank of Commerce, N. A. v.
Wells Fargo Bank, 811 F.2d 490, 1 USPQ2d 1813, 1815 (Fed.
Cir. 1987); and CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ
198 (Fed. Cir. 1983).
In this case, opposer argues that all of its goods
include “software for broadband video transfer, and hardware
and software for the receipt and display of broadcast video,
Opposition No. 91178576
11
audio and digital data signals;”10 its services include
“licensing of computer software”11 and “video and audio
communication.”12 Opposer further argues that applicant’s
online ordering services are related inasmuch as they
concern “computer surveillance equipment, which is a subset
of audio and video equipment.”13 However, opposer provides
no evidence to support this contention, nor does opposer
provide any evidence to establish a relationship between its
goods and services and the services recited in the involved
application. As noted above, we look to the identification
of goods and services in the involved application and
asserted registrations. Applicant’s services are recited as
“online ordering services featuring computer surveillance
equipment.” Opposer does not provide online ordering
services. Nor does opposer provide computer surveillance
equipment. Nor are the identifications of opposer’s goods
and services so broad that they clearly encompass
applicant’s services. Thus, on the face of the respective
identifications of goods and services, applicant’s services
are not related to opposer’s goods and services. Opposer’s
mere assertion that the computer surveillance equipment
available through applicant’s online ordering services is
related to its audio and video software, hardware and

10 Brief, p. 11.
11 Id.
12 Id.
Opposition No. 91178576
12
services is not sufficient to establish such a
relationship.14
The mere fact that applicant’s services and many of
opposer’s goods and services appear to be computer-based
does not mean that they are related. As the Board stated in
Reynolds & Reynolds Co. v. I.E. Systems, Inc., 5 USPQ2d
1749, 1751 (TTAB 1987), “in order to support a holding of
likelihood of confusion, there must be some similarity
between the goods and services at issue herein beyond the
fact that each involves the use of computers. In view of
the fact that computers are useful and/or used in almost
every facet of the world of business, commerce, medicine,
law, etc., it is obvious that distinctions must be made.”
In the present case, there is no evidence to support
opposer’s conclusory statement that the goods and services
are related. The terminology of the identifications of
goods and services, standing alone in the present case, is
an insufficient basis upon which to conclude that the goods
and services are related for purposes of our analysis.
On this very sparse record, the connection between
applicant’s services and opposer’s goods and services is so

13 Id.
14 While as noted above, opposer does not argue that its DIVX
CERTIFIED mark is similar to applicant’s mark, we find that our
analysis of the relatedness of the parties’ goods and services
remains unchanged whether or not we consider the “computer
hardware and software for the receipt and display of broadcast
video, audio, and digital data signals” identified therein.
Opposition No. 91178576
13
tenuous that purchasers would not view the goods and
services as having a common source. Based only on the face
of the respective identifications and mere conclusory
statement of opposer, we see the likelihood of confusion
claim asserted by opposer as amounting to only a
speculative, theoretical possibility. Language by our
primary reviewing court is helpful in resolving the
likelihood of confusion issue in this case:
We are not concerned with mere
theoretical possibilities of confusion,
deception, or mistake or with de minimis
situations but with the practicalities
of the commercial world, with which the
trademark laws deal.

Electronic Design & Sales Inc. v. Electronic Data Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992),
citing Witco Chemical Co. v. Whitfield Chemical Co., Inc.,
418 F.2d 1403, 1405, 164 USPQ 43, 44-45 (CCPA 1969), aff'g
153 USPQ 412 (TTAB 1967).
In short, opposer, who bears the burden of establishing
a likelihood of confusion by a preponderance of the
evidence, has failed to introduce evidence that its goods
and services under its marks are related to applicant’s
services under its involved mark.
Channels of Trade
As is readily apparent, applicant’s identification of
services contains no limitations as to its channels of trade

Opposition No. 91178576
14
or the purchasers to whom its services are marketed.
Similarly, opposer’s identification of goods and services
contain no such limitations. As a result, and in accordance
with our established case law, we must presume that
applicant’s services as well as opposer’s goods and services
move in all channels of trade that are normal therefor and
are available to all the usual purchasers thereof.
However, and as discussed above, opposer has failed to
introduce any evidence to support a finding that its goods
and services are related to applicant’s services in its
involved application. As such, we cannot presume that the
channels of trade for its goods and services are the same as
or overlapping with those in which applicant’s services may
be encountered. Cf. 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 same classes of purchasers through
the same channels of trade.”)
Use on a Wide Variety of Goods and Services
Opposer asserts in its brief that “as can be seen in
the three cited registrations, the DIVX mark is used on a
wide variety of goods and services related to audio and
Opposition No. 91178576
15
video hardware and software and communications.”15 However,
opposer submits no evidence beyond the copies of three of
its registrations. As opposer acknowledges, these three
registrations recite goods and services “related to audio
and video hardware and software and communications.”16 As
such, there is no evidence of record to support its
contention that opposer uses the DIVX mark on such a wide
variety of goods and services that we may find in its favor
with regard to the ninth du Pont factor.
Summary
Primarily in view of the lack of an established
relationship between applicant’s services and opposer’s
goods and services, we find that opposer has failed to
demonstrate a likelihood that the purchasing public would be
confused by applicant’s registration of its mark for its
identified services.
Decision: The opposition on the ground of priority and
likelihood of confusion is dismissed.

15 Brief, p. 12.
16 Id.