IMP InterMedia-Post Inc.

Trademark Trial and Appeal Board

Mar 8, 2002

No. 75723416 (T.T.A.B. Mar. 8, 2002)

3/8/02

Hearing: Paper No. 14
January 29, 2001 HRW

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re IMP InterMediaPost Inc.
________

Serial No. 75/723,416
_______

P. Jay Hines of Oblon, Spivak, McClelland, Maier &
Neustadt, P.C. for IMP InterMediaPost Inc.

Cynthia Esparza Crockett, Trademark Examining Attorney, Law
Office 111 (Craig Taylor, Managing Attorney).
_______

Before Cissel, Hohein and Wendel, Administrative Trademark
Judges.

Opinion by Wendel, Administrative Trademark Judge:

IMP InterMediaPost Inc. has filed an application to
register the mark IMP INTERMEDIAPOST INTERNATIONAL
MULTIMEDIA & POST PRODUCTION, in the format shown below,
for “video editing, audio post production and multimedia
production services for the entertainment and advertising
industries in connection with the production of motion
pictures, videos, commercials, infomercials and online
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/723,416
2
advertising.”1 A disclaimer has been made of the words
“INTERNATIONAL MULTIMEDIA & POST PRODUCTION.”

Registration has been finally refused under Section
2(d) of the Trademark Act on the ground of likelihood of
confusion with the mark INTERMEDIA, which has been
registered by Intermedia, Inc. for the goods and services
set forth in the following registrations:
Registration No.
1,849,8132 Prerecorded video cassette tapes,
interactive laser discs, computer
software programs, CD-ROMs and
multimedia containing both live
and animated action in the fields
of drama, comedy, music, sports,
documentaries, political and
social issues, self help and
instruction in a variety of
disciplines.

1 Serial No. 75/723,416, filed June 7, 1999, based on an
allegation of a bona fide intention to use the mark in commerce.
An amendment to allege use was filed October 1, 1999, claiming a
date of first use anywhere and a date of first use in commerce of
June 2, 1999.
2 Issued August 16, 1994, setting forth a date of first use
anywhere and a date of first use in commerce of January 1, 1986,
Section 8 & 15 affidavits accepted and acknowledged,
respectively.
Ser No. 75/723,416
3

1,926,9043 Production services, namely
producing prerecorded video
cassette tapes, interactive laser
discs, computer software programs,
CD-ROMs, and multimedia,
containing both live and animated
action, in the fields of drama,
comedy, music, sports,
documentary, political and social
issues, self-help, and instruction
in a variety of disciplines, and
instructional manuals sold as a
unit.
2,325,0504 Wholesale distributorship services
and mail order catalog services
featuring prerecorded video
cassette tapes, computer software
programs, CD-ROMs and multimedia
containing both live and animated
action in the fields of drama,
comedy, documentary, political and
social issues, self-help and
instruction in a variety of
disciplines.
The refusal has been appealed. Both applicant and the
Examining Attorney have filed briefs and both participated
in the oral hearing.

3 Issued October 17, 1995, setting forth a date of first use
anywhere of November 15, 1980 and a date of first use in commerce
of February 1, 1983, Section 8 & 15 affidavits accepted and
acknowledged, respectively.
4 Issued March 7, 2000, setting forth a date of first use
anywhere of November 15, 1980 and a date of first use in commerce
of February 1, 1983.
Ser No. 75/723,416
4
We make our determination of likelihood of confusion
on the basis of the du Pont5 factors that are relevant in
view of the evidence of record. Two key considerations in
any analysis are the similarity or dissimilarity of the
respective marks and the similarity or dissimilarity of the
goods or services with which the marks are being used. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976); In re Azteca Restaurant
Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999).
Looking first to the respective goods and services,
the Examining Attorney notes that registrant’s goods and
services encompass production services, namely, producing
prerecorded video cassette tapes, interactive laser discs,
computer software programs, CD-ROMs and multimedia, as well
as the goods that are produced therefrom and the wholesale
distributorship of these goods. The Examining Attorney
then goes on to argue that the services of applicant and
registrant are very similar; that both produce videos;
that the production services of registrant are not limited
in any way to “pre” or “post”; and that applicant’s
services in fact fall within the broad recitation of
registrant’s services.

5 In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Ser No. 75/723,416
5
Applicant argues that the goods and services specified
in the registrations do not encompass post-production
services, such as are performed by applicant. Applicant
describes its services as the refining and finalizing of
motion pictures, commercials and the like for the
entertainment and advertising industries. Applicant
further argues that there is little chance for overlap in
the marketplace in that applicant provides technical
services to motion picture and advertising professionals,
whereas registrant sells finished video tapes and other
forms of media to schools, clinics and government agencies.
Applicant has made of record specimens from registrant’s
registration files, as well as other materials which it
asserts confirm the educational focus of registrant’s video
tapes and that registrant sells to schools, clinics and
government agencies.
The issue of likelihood of confusion must be
determined on the basis of the services as identified in
the application and the goods and services specified in the
cited registrations. Canadian Imperial Bank of Commerce v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987). In the present case, registrant’s production
services are broadly identified as “producing” video tapes
and other media forms in various subject fields. From its
Ser No. 75/723,416
6
other registrations it is obvious that registrant also
sells the finished products and performs distributorship
and mail order services in connection with those products.
From not only the production of goods such as video tapes,
but also the ultimate sale of the same, it would appear
that any post-production processes, such as “video editing”
or “audio post production,” would inherently be a part of
registrant’s production services. Thus, registrant’s
production services, as identified, encompass the specific
post production services performed by applicant, despite
applicant’s arguments to the contrary.
Moreover, where there are no restrictions in the
registrations as to channels of trade, we must assume that
the registrant’s goods travel in and its services are
offered through all the normal channels of trade for goods
and services of that nature. See Kangol Ltd. v. KangaROOS
U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992).
While applicant may have introduced evidence as to the
specific markets in which registrant presently sells its
video tapes and for which its tapes are produced, the
registrations are not so limited. No distinction can be
made on the basis of the present markets for registrant’s
goods or services, regardless of the specific limitations
with respect to applicant’s channels of trade. There is a
Ser No. 75/723,416
7
definite overlap of the specific channels of trade for the
production services of the application with those
encompassed by the goods and services of the cited
registrations.
Thus, we turn to consideration of the similarity or
dissimilarity of the respective marks being used with the
goods and services at issue. In making our analysis of the
marks, we are guided by the general principle that the
greater the similarity of the goods and/or services, the
lesser the degree of similarity of the marks which is
necessary to support a conclusion that confusion is likely.
See Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
In particular, our focus here is based on the fact that
applicant’s specific services are encompassed by the more
broadly identified services of registrant.
The Examining Attorney argues that the dominant
portion of applicant’s mark is the word portion
INTERMEDIAPOST or, at other points, she refers simply to
the term INTERMEDIA, and that, as such, applicant has
merely appropriated registrant’s mark INTERMEDIA and added
the descriptive term POST.
Applicant, on the other hand, argues that the
Examining Attorney has improperly dissected applicant’s
Ser No. 75/723,416
8
mark. Applicant asserts that it is the letters IMP and the
term MEDIA that are emphasized in its mark; that the coined
term INTERMEDIAPOST is derived from the wording directly
below it; and that the overall commercial impression of the
mark is much more that the mere letter string INTERMEDIA.
Applicant contends that the various components of its mark
are tied together by the use of lower case script and the
running together of the letters IMP and that consequently
INTERMEDIA is part of a unitary phrase and does not create
the separable impression of that term standing alone.
In making our likelihood of confusion determination,
we are also guided by the principle that although the marks
must be considered in their entireties, there is nothing
improper, under appropriate circumstances, in giving more
or less weight to a particular portion of a mark. See In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.
Cir. 1985). Moreover, although descriptive or disclaimed
matter cannot be ignored in comparing the marks, it is also
a fact that consumers are more likely to rely on the non-
descriptive portion of a mark as an indication of source.
See Hilson Research Inc. v. Society for Human Resource
Management, 27 USPQ2d 1423 (TTAB 1993). In addition, it is
the word portion of a mark, rather than the design
features, unless particularly distinctive, that is more
Ser No. 75/723,416
9
likely to be remembered and relied upon by purchasers in
referring to the services, and thus it is the word portion
that will be accorded more weight in determining the
similarity or dissimilarity of the involved marks. See
Ceccato v. Manifattura Lane Gaetano Marzotto & Figli
S.p.A., 32 USPQ2d 1192 (TTAB 1994).
Applying these principles, we find the dominant
portion of applicant’s mark to be the term INTERMEDIAPOST.
Clearly the matter below that term is purely descriptive in
content, and has been acknowledged as such by applicant’s
disclaimer thereof. Furthermore, the design portion, which
consists of the letters IMP, cannot be accorded as much
weight as the word portion INTERMEDIAPOST, inasmuch as it
would be the word portion that purchasers would rely upon
in referring to applicant’s services. If given any
particular attention, the main function of the letters IMP
would be to reinforce the word portion and the general
impression created by the term INTERMEDIAPOST.
Thus, while admittedly there are differences in the
appearance and sound of applicant’s and registrant’s marks
as a whole, we find the overall commercial impressions very
similar. The dominant portion of applicant’s mark, the
term INTERMEDIAPOST, is highly similar to the whole of
registrant’s mark INTERMEDIA. See Hewlett-Packard Co. v.
Ser No. 75/723,416
10
Packard Press, Inc., No. 01-1276, slip op. at 7 (Fed. Cir.
March 1, 2002) (even though defendant’s mark PACKARD
TECHNOLOGIES does not incorporate every feature of
plaintiff’s HEWLETT PACKARD marks, similar overall
commercial impression is created.)
Furthermore, it is well settled that a subsequent user
may not appropriate the mark of another and by adding
subordinate or descriptive matter thereto avoid a
likelihood of confusion. See Henry I. Siegel Co., Inc. v.
A & F Originals, Inc., 225 USPQ 626 (TTAB 1985); Alberto-
Culver Co. v. Helene Curtis Industries, Inc., 167 USPQ 365
(TTAB 1970). Here the term POST would most likely be
viewed as descriptive of the post production feature of
applicant’s services. This descriptive significance is
emphasized by the term POST PRODUCTION which appears
directly below INTERMEDIAPOST. Thus, the INTERMEDIA
portion of the term INTERMEDIAPOST would have the greater
trademark significance and would be likely to lead to
confusion with registrant’s mark INTERMEDIA.
There are two exceptions to this general rule: (1)
when the common portion is weak or descriptive or (2) when
the marks in their entireties convey significantly
different commercial impressions. See In re Denise, 225
USPQ 624 (TTAB 1985); 3 J.T. McCarthy, McCarthy on
Ser No. 75/723,416
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Trademarks and Unfair Competition, §23:50 (4th ed. 2001).
We find neither one applicable here.
Although applicant argues that registrant’s mark
INTERMEDIA is weak and not entitled to a broad scope of
protection, we find that the evidence made of record by
applicant does not establish such weakness. Applicant has
submitted copies of six third-party registrations owned by
five entities for marks including the term INTERMEDIA6 for
various services including telecommunications services,
cable transmission services, educational services in the
field of communications and arranging trade shows with
respect to various media technology products and services.
None of those services involve any phase of the production
of various media goods as do applicant’s and registrant’s
services. Such registrations are not for similar marks
for similar goods or services, so as to have an impact on
the strength of registrant’s INTERMEDIA mark.
In like manner, we find the evidence submitted by
applicant of five trade names containing the term
INTERMEDIA for Internet services to be irrelevant to the
strength of registrant’s mark for its production services
and other closely related goods and services. Thus, we

6 We do not consider the mark INTERNETWORK MEDIA to be an
INTERMEDIA mark.
Ser No. 75/723,416
12
find the common portion of applicant’s and registrant’s
marks, the term INTERMEDIA, not to be weak or descriptive
so as to bring the first exception into play. Nor do we
find that the overall commercial impressions created by the
terms INTERMEDIA and INTERMEDIAPOST are so distinctly
different as would obviate any likelihood of confusion.
Thus, the second exception is equally inapplicable.
Applicant has also raised the issue of the
sophistication of the purchasers of the respective services
and goods. Applicant argues that the typical buyer of
registrant’s video tapes is a school, clinic or government
agency seeking a tape that is ready for viewing, whereas
the typical buyer of applicant’s services is a professional
in the advertising or entertainment industry seeking
assistance in the fine tuning and finalizing of motion
pictures, videos, commercials or advertising.
As previously pointed out, however, no distinction can
be drawn on the basis of the present markets for
registrant’s goods or services because the registrations
are unrestricted as to channels of trade. Registrant’s
production services and the resultant furnishing of
finished video tapes could be offered to the same
purchasers as those for applicant’s post production
services, which also result in finished video tapes. While
Ser No. 75/723,416
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these purchasers may be professionals in their particular
fields, they are not immune to source confusion. This is
especially true when the marks are very similar in
commercial impression, as is the case here, and there is a
definite overlap in the goods and services being offered
thereunder. See Aries Systems Corp. v. World Book Inc., 23
USPQ2d 1742 (TTAB 1992).
Finally, applicant argues that there has been
concurrent use of the respective marks for over two years
without any evidence of actual confusion. We can give
little weight to this fact, however, under the present
circumstances. In the first place, registrant has not had
the opportunity to be heard from on this point. See In re
National Novice Hockey League, Inc., 222 USPQ 638 (TTAB
1984). Second, we have no information as to the extent of
use of the respective marks or, in other words, whether
there has been any real opportunity for confusion. See
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB
1992). In any event, the relevant test is likelihood of
confusion, not actual confusion. See Weiss Associates Inc.
v. HRL Associates Inc., 14 USPQ2d 1849 (Fed. Cir. 1990).
Accordingly, weighing all of the relevant du Pont
factors, we find confusion likely. To the extent that
there may be any remaining doubt, we follow the well-
Ser No. 75/723,416
14
established principle that any doubt regarding likelihood
of confusion must be resolved in favor of the registrant.
See In re Hyper Shoppes (Ohio) Inc., 837 F.2d 463, 6 USPQ2d
1025 (Fed. Cir. 1988).
Decision: The refusal to register under Section 2(d)
is affirmed.