ISCAN Inc.v.DVDO, Inc.

Trademark Trial and Appeal Board

Jul 22, 2003

No. 91118770re (T.T.A.B. Jul. 22, 2003)

Paper No. 21
Bottorff
Mailed:
July 22, 2003
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
ISCAN Incorporated
v.
DVDO, Inc.
_____
Opposition No. 118,770
to application Serial No. 75/682,560
filed on April 14, 1999
_____
Request for Reconsideration
______
Before Quinn, Bottorff and Drost, Administrative Trademark
Judges.
Opinion by Bottorff, Administrative Trademark Judge:
This case now comes up1 on opposer’s request for
reconsideration of the Board’s September 19, 2002 decision
dismissing opposer’s Section 2(d) ground of opposition to
registration of applicant’s mark “iSCAN” for “video
processing equipment, namely, video line doublers.”2
1 The Board regrets the delay in addressing this matter.
2 Opposer’s Section 2(d) claim was based on its ownership of a
registration of the mark ISCAN for “electronic tracking units
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 118,770
2
Applicant did not file a response to the request for
reconsideration. After careful consideration of opposer’s
arguments, the Board adheres to its decision dismissing the
opposition, but clarifies its previous opinion as follows.
Opposer argues that we erred in approving applicant’s
request to amend the identification of goods in the
application to delete all of the “video processing
equipment” goods except for “video line doublers.” Opposer
contends that the amendment is not proper under Trademark
Rule 2.133 because applicant never filed a motion to amend
the application, and because opposer never consented to such
amendment. However, we remain of the opinion that the
amendment was properly allowed. As noted in our opinion,
although opposer did not expressly consent to the amendment,
opposer’s trial evidence was largely, if not exclusively,
devoted to the issue of the relatedness of opposer’s goods
and applicant’s video line doublers (as opposed to the other
goods identified in the application as published). The
Board was justified in finding (and applicant would be
justified in assuming) that opposer had implicitly consented
to the amendment. Cf. Fed. R. Civ. P. 15(b).
featuring cameras, micro-processors, monitors and digital
hardware units,” and on its prior use of the same mark on what
were identified in the notice of opposition as “eye movement
monitoring systems.”
Opposition No. 118,770
3
Moreover, even if the amendment were deemed to be
unconsented, approval of the amendment was still proper.
Applicant timely asserted, as an affirmative defense in its
answer to the notice of opposition, its entitlement to
registration at least as to the restricted identification of
goods. This is an acceptable method of raising the issue.
See, e.g., Personnel Data Systems Inc. v. Parameter Driven
Software Inc., 20 USPQ2d 1863 (TTAB 1991); Flow Technology
Inc. v. Picciano, 18 USPQ2d 1970 (TTAB 1991); Space Base
Inc. v. Stadis Corp., 17 USPQ2d 1216 (TTAB 1990); TBMP
§514.03 (2d ed. 6/03);3 and Louise E. Rooney, TIPS FROM THE
TTAB: Rule 2.133 Today, 81 Trademark Reporter 408 (1991).
Opposer apparently was not served with the answer, but it
had obtained a copy of the answer prior to trial and was
aware of the assertion of the affirmative defense. Opposer
cannot claim to have been surprised; indeed, as noted above,
most if not all of opposer’s evidence at trial and the
arguments in its brief pertained specifically to the issue
of the registrability of applicant’s mark for video line
doublers, per se.
For the reasons discussed below and at length in our
original opinion, we find that record establishes that
applicant is at least entitled to registration of its mark
3 The Trademark Board Manual of Procedure (Second edition) is
available online at
http://www.uspto.gov/web/offices/dcom/ttab/tbmp/
Opposition No. 118,770
4
for video line doublers. Accordingly, we find that
amendment of the application to delete all of the goods
except “video line doublers” is proper.
In its request for reconsideration, opposer also
contends that we erred in deeming applicant’s mark to be the
stylized mark depicted on page 1 of our opinion, because the
mark was published for opposition as a typed mark. Opposer
has submitted a copy of the Official Gazette page on which
the mark was published, and it in fact appears to depict the
mark in typed form. We are at a loss to understand why the
mark was published in the Official Gazette as a typed mark;
as discussed in footnote 1 of our opinion, prior to
publication the application was amended to cancel the
original typed drawing and replace it with the special form
drawing, and the Office’s official automated record for this
application depicts the mark in special form.
However, any “error” which resulted from our
consideration of applicant’s stylized mark (which, after
all, is the mark applicant seeks to register) as opposed to
a typed mark is inconsequential because our ultimate
conclusion as to likelihood of confusion is the same in
either case. In our decision, we specifically found that
applicant’s mark and opposer’s mark are similar
notwithstanding the stylization of applicant’s mark, and
Opposition No. 118,770
5
that the first du Pont4 likelihood of confusion factor
weighs in opposer’s favor. We continue to deem the marks
highly similar, especially given the fact that opposer’s
registered mark is depicted in typed form, and opposer
therefore could display its mark in a manner similar to
applicant’s stylized mark. See Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847-48 (Fed. Cir.
2000); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937,
939 (Fed. Cir. 1983). Nonetheless, for the reasons
discussed below and in our original decision, we remain of
the opinion that even though the marks are highly similar,
opposer has failed to prove its likelihood of confusion
claim because it has failed to establish the requisite
commercial relationship between its goods and applicant’s
goods.
We turn now to opposer’s arguments on reconsideration
regarding the merits of our likelihood of confusion
determination. At pages 7-8 of its decision, the Board took
judicial notice of an entry from The Dictionary of New Media
(1999) which, in relevant part, defined “line doubling” as
“a technique useful in home theatre applications for
improving the apparent resolution of the broadcast image.”
The Board continued: “Based on this definition, we find
4 In re E.I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Opposition No. 118,770
6
that the ‘video line doublers’ identified in applicant’s
application are consumer electronics items designed for use
as components in ‘home theatre applications.’ There is no
evidence in the record which shows, or from which it might
reasonably be inferred, that ‘video line doublers’ are
marketed or used in fields outside the consumer
electronics/home theater field.”
Opposer argues that because the “video line doublers”
identified in applicant’s application are not restricted as
to fields of use or channels of trade, it was improper for
the Board to base its finding as to the nature of
applicant’s goods on judicial notice taken solely from a
specialized dictionary like The Dictionary of New Media.
Opposer further argues that the Board erred in finding,
based on the dictionary definition, that “video line
doublers” are used exclusively in consumer electronic/home
theater applications; opposer notes that the dictionary
entry says only that line doubling is “useful” in such
applications. Opposer has submitted, with its request for
reconsideration, new evidence purporting to show that video
line doublers are used in applications other than consumer
electronics/home theater applications, and argues:
Since the media dictionary definition does not
establish that video line doubling is exclusive
to home theater applications, Rule 2.01(e) [sic
– 201(e)] of the Federal Rules of Evidence
commands that the Board consider the additional
Opposition No. 118,770
7
evidence presented herein in determining the
propriety of its judicial notice, and the tenor
of the matter noticed.
(Request for Reconsideration at 3.)
We are not persuaded of any error in our decision.
First, our opinion did not state, nor did we find, that
the dictionary evidence of which we took judicial
notice establishes that video line doublers necessarily
are used exclusively in consumer electronics/home
theater applications. We found only that the
dictionary evidence shows that video line doublers in
fact are used in consumer electronics/home theater
applications (a fact which is established by
applicant’s own use as depicted in its application
specimens, and which is true regardless of whether we
take judicial notice of the dictionary definition), and
that the record is devoid of any evidence which shows,
or from which it might be inferred, that any other
applications or trade channels for video line doublers
exist (a fact which likewise remains true regardless of
whether or not we take judicial notice of the
dictionary definition). See opinion at pp. 7-8, 15-16
and 20. To the extent, if any, that our opinion might
be construed as including a finding that the dictionary
definition of which we took judicial notice establishes
that video line doublers necessarily are used
Opposition No. 118,770
8
exclusively in consumer electronics/home theater
applications, we hereby clarify that we made no such
finding.
Rather, our decision was based on the legal presumption
that applicant’s video line doublers are used in all of the
fields and applications which are normal for such goods, and
that they are sold in all normal trade channels and to all
normal classes of purchasers for such goods. See, e.g., In
re Elbaum, 211 USPQ 639 (TTAB 1981). We remain of the
opinion, however, that opposer failed to present any
evidence at trial as to what such “normal” applications,
trade channels and classes of purchasers for video line
doublers might be, and that opposer therefore provided us
with no evidentiary basis for finding that opposer’s and
applicant’s goods are sufficiently related in the
marketplace that purchasers are likely to assume the
existence of a source connection between the products. As
discussed at length in our opinion, opposer’s evidence
concerning the relationship between the parties’ goods
consists of testimony showing that the goods share the same
“flow diagram” and “core technology,” a fact which might be
of interest to engineers but which does not prove that
confusion among purchasers in the marketplace is likely.
Opposer’s goods comprise equipment and systems used in and
for what appear to be highly specialized eye-tracking and
Opposition No. 118,770
9
target-tracking applications. There is no evidence that
video line doublers are competitive with, used together
with, complementary to, or otherwise related to opposer’s
goods. There is no evidence that these goods would be
purchased by the same purchasers, that they are sold in the
same trade channels, or that they are types of goods which
typically are manufactured or marketed by a single source
under a single mark or similar marks.
From all that appears on this record, the only “normal”
application or trade channel for video line doublers is in
the consumer electronics/home theater field, as depicted in
applicant’s specimens (and as corroborated by the dictionary
evidence of which we took judicial notice). Opposer has not
argued that we erred in finding no marketplace relationship
between video line doublers, as consumer electronics
products, and opposer’s goods; rather, opposer’s argument on
reconsideration is that we should not have limited our
analysis to the consumer products field but should consider
other applications for video line doublers. But even if we
assume that other applications, trade channels and classes
of purchasers for video line doublers, i.e., those outside
the consumer electronics/home theater field, potentially
might exist, we cannot make any assumptions as to what they
are. It was incumbent on opposer to present evidence at
trial as to what such applications, trade channels and
Opposition No. 118,770
10
classes of purchasers are and why their existence supports a
finding that applicant’s goods are related to opposer’s
goods in the marketplace. The record is devoid of such
evidence, and we therefore stand by our decision that
opposer has failed to prove its likelihood of confusion
claim.
Finally, we are not persuaded by opposer’s contention
that Federal Rule of Evidence 201(e)5 “commands” us to
consider the new evidence submitted by opposer. Opposer may
not use Federal Rule of Evidence 201(e) as a means of
reopening its testimony period or introducing additional
evidence in support of its likelihood of confusion claim,
i.e., evidence regarding the nature of applicant’s goods and
their trade channels and classes of purchasers. Such
evidence forms part of opposer’s case-in-chief which should
have been submitted, in proper form, during opposer’s
testimony period.
Decision on reconsideration: Our previous opinion is
clarified to the extent discussed above. Otherwise, our
opinion and decision stand. The opposition is dismissed,
5 Federal Rule of Evidence 201(e) provides:
Opportunity to be heard. A party is entitled upon
timely request to an opportunity to be heard as to
the propriety of taking judicial notice and the
tenor of the matter noticed. In the absence of
Opposition No. 118,770
11
and applicant’s application, as amended, shall proceed to
registration in due course.6
prior notification, the request may be made after
judicial notice has been taken.
6 The time for filing an appeal of the Board’s decision in this
case expires two months from the mailing date of this decision
denying opposer’s request for reconsideration. See TBMP §§902.02
and 903.04 (2d ed.).