M2 Software, Inc.v.M2 Communi-cations, Inc.

Trademark Trial and Appeal Board

Jul 21, 2005

No. 91158118 (T.T.A.B. Jul. 21, 2005)

Mailed:
21 July 2005
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

M2 Software, Inc.
v.
M2 Communications, Inc.
_____

Opposition No. 91158118
to application Serial No. 76352778
_____

M2 Software, Inc., pro se.

Jacquelyn Inserra of Budd Larner, P.C. for M2
Communications, Inc.
______

Before Quinn, Drost, and Zervas, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On December 26, 2001, M2 Communications, Inc.
(applicant) applied to register on the Principal Register
the mark M2 COMMUNICATIONS (standard character form) for
goods identified as follows:
Interactive multimedia CD-ROMs containing educational
information in the fields of pharmaceutical and medical
product information, therapies and strategies, and
medical, pharmaceutical, and healthcare issues in Class
9.

Preparing promotional and merchandising material for
others and dissemination of advertising matter in the
field of pharmaceutical and medical products,
therapies, and strategies; business consulting services
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Opposition No. 91158118
2
in the field of promoting pharmaceutical and medical
products, therapies, and strategies in Class 35.

Educational services in the nature of development,
production, and dissemination of educational materials
of others in the field of pharmaceuticals, medical and
health care products in Class 41.1

The application also contains a disclaimer of the term
“Communications.”
On September 10, 2003, M2 Software, Inc. (opposer)
filed a notice of opposition to the registration of
applicant’s mark. Opposer alleges that applicant’s mark is
confusingly similar to opposer’s registered trademark “M2”
in standard character form for “computer software featuring
business management applications for the film and music
industries; and interactive multimedia applications for
entertainment, education and information, in the nature of
artists' performances and biographical information from the
film and music industries; and instructions and information
for playing musical instruments” in Class 9.2 15 U.S.C.
§ 1052(d). More broadly, the notice of opposition (p. 2)
referred to “an inevitable likelihood of confusion [with]
Opposer’s senior M2® trademark, service mark, trade name,
and corporate name.”

1 Serial No. 76352778 contains an allegation of a date of first
use and first use in commerce of September 1997.
2 Registration No. 1,931,182 issued October 31, 1995. The
registration alleges a date of first use of October 23, 1991, and
a date of first use in commerce of January 10, 1992.
Opposition No. 91158118
3
Applicant denied the salient allegations of opposer’s
notice of opposition.
The Record
The record consists of the pleadings; the file of the
involved application; the discovery deposition of Roy
Wilschutt, an officer of applicant, with exhibits; the
discovery deposition of David Escamilla, opposer’s
president, with exhibits; the affidavit of Roy Wilschut; and
the declaration of Jacquelyn Inserra, applicant’s attorney,
submitting additional documents.3
Preliminary Matters
In a decision dated May 20, 2005, the board noted that
although the parties filed motions for summary judgment, the
parties’ briefs were improper, and even if the briefs were
proper, there would be at least one genuine issue of
material fact that would prevent granting summary judgment.
The parties were advised (p. 4) that “they may forego trial
and stipulate that their cross-motions for summary judgment
and evidence be treated as the final record and briefs
therein.” The parties so stipulated (Response filed June
15, 2005). Therefore, we will consider Opposer’s Motion for
Summary Judgment (Opposer’s Motion) and Reply in Support of
Motion for Summary Judgment (Opposer’s Reply) as well as

3 Inasmuch as most of the evidence has been marked
“confidential,” we have limited our references to such evidence.
Opposition No. 91158118
4
Applicant’s Opposition to Motion for Summary Judgment and
Cross Motion for Summary Judgment (Applicant’s Motion) and
Reply Memorandum of Law in Further Support of Its Cross-
Motion for Summary Judgment (Applicant’s Reply) as the
briefs in this case.
In addition, opposer has paid only a single opposition
fee so that it is assumed that opposer is opposing, and the
parties concentrated their arguments on, the goods in Class
9. Therefore, regardless of the outcome of proceedings,
applicant will be entitled to a registration for the
services in Classes 35 and 41.
Finally, opposer, as plaintiff in the opposition
proceeding, bears the burden of proving, by a preponderance
of the evidence, its asserted grounds of priority and
likelihood of confusion. See Cerveceria Centroamericana,
S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d
1307, 1309 (Fed. Cir. 1989); Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir. 2000).
Because of opposer’s proof of ownership and use of its
registered mark, we find that opposer has established its
standing to oppose. See, e.g., Lipton Industries, Inc. v.
Ralston Purina Company, 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982). Also, priority is not an issue here, at least
to the extent that it owns a registration for the mark M2.
Opposition No. 91158118
5
See King Candy Co. v. Eunice King’s Kitchen, 496 F.2d 1400,
182 USPQ 108, 110 (CCPA 1974).
However, we must also consider opposer’s priority
regarding its “service mark, trade name, and corporate name”
(Notice of Opposition, p. 2). The opposed application has a
filing date of December 26, 2001 and applicant can rely on
its filing date as its priority date. See Intersat Corp. v.
International Telecommunications Satellite Organization, 226
USPQ 154, 156 n. 5 (TTAB 1985) (“The earliest date of first
use upon which Intelsat can rely in the absence of testimony
or evidence is the filing date of its application”). It is
difficult for applicant to establish an earlier date of
first use of the mark in commerce. The testimony of its
witness on this subject was indefinite. See Wilschut at 57
(“A. I have got an opinion of counsel on – at the time when
I wanted to adopt M2 Communications. Q. Was that in 1997?
A. No. Q. Was that in 1998? A. I don’t recall); 63 (Q.
Late in the year 1997 when you first used the mark, on what
product or services was it used? A. Mostly used on
letterhead… Q. When was it, actually, first used on a
product? A. I do not recall the exact date. It might have
been late 1997 or beginning of 1998”). Therefore, applicant
has not shown it has a priority date prior to 1998.
Opposer, on the other hand, has submitted evidence that
it has conducted business using the term M2, produced CD-
Opposition No. 91158118
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ROMs, and licensed a database prior to 1998. See Escamilla
declaration ¶¶ 4 and 5 and Exhibits 3 and 4. Therefore, we
conclude that opposer has priority regarding its
trade/corporate name and service mark used in the music
industry.
Likelihood of Confusion
We now consider the central issue that the parties have
discussed, i.e., likelihood of confusion. We consider the
factors set out by the Court of Appeals for the Federal
Circuit and its predecessor, the Court of Custom and Patent
Appeals, in In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003) and In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA
1973), in likelihood of confusion cases.
The first factor we consider is the similarities and
dissimilarities of applicant’s and opposer’s marks.
Applicant’s mark is for the words M2 COMMUNICATIONS in
standard character form. Opposer’s registration is for the
term M2, also in standard character form. Applicant has
disclaimed the term “Communications.” We start by rejecting
opposer’s argument (Reply at 2) that “the astounding
absolute identity of the marks should be in the forefront in
any analysis.” While a disclaimed matter is often “less
significant in creating the mark’s commercial impression,”
In re Code Consultants Inc., 60 USPQ2d 1699, 1702 (TTAB
Opposition No. 91158118
7
2001), it nonetheless cannot be ignored. In re Hearst
Corp., 982 F.2d 493, 25 USPQ2d 1238, 1239 (Fed. Cir. 1992)
(“[W]e believe that the Board erred in its diminution of
the contribution of the word ‘girl.’ When GIRL is given
fair weight, along with VARGA, confusion with VARGAS becomes
less likely”). Here, the marks are not identical.
We now examine the similarities and dissimilarities of
the marks in their appearance, sound, meaning, 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). Both marks are
identical to the extent that they contain the same term
“M2.” Because of this overlap, the marks would have
significant similarities in appearance. In addition, the M2
portion, whether pronounced as M “two” or M “squared,” would
be identical, and thus the marks M2 and M2 COMMUNICATIONS
are very similar in sound. Also, there is no indication
that the term M2 would have any different meaning in the
marks. Furthermore, even when we consider the disclaimed
term “Communications,” it does not create any significant
differences in the meaning or commercial impression of the
marks. Thus, the parties’ marks are very similar.
The next factor that we consider is the similarities
and dissimilarities of the parties’ goods. It is important
to note that here we must compare the goods as they are
Opposition No. 91158118
8
described in the application and the registration in
determining whether there is a likelihood of confusion.
Octocom Systems, Inc. v. Houston Computers Services Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The
authority is legion that the question of registrability of
an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the
sales of goods are directed”). See also Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
respective descriptions of goods”).
Applicant’s goods are interactive multimedia CD-ROMs
containing educational information in the fields of
pharmaceutical and medical product information, therapies
and strategies, and medical, pharmaceutical, and healthcare
issues. Applicant’s CD-ROMs contain educational information
concerning medical, pharmaceutical, and healthcare
information. Consistent with this identification of goods,
applicant’s witness submitted that “[r]oughly 95% of M2
Communications’ clients are pharmaceutical companies, while
the remaining clients are comprised of biotechnology
Opposition No. 91158118
9
companies and medical associations.” Wilschut affidavit,
¶ 3. While we do not read limitations into identification
of goods, when, as here, the identification of goods is
limited to a particular field, our likelihood of confusion
analysis dictates that the goods are considered as they are
identified and limited in the application.
Opposer’s goods are identified as “computer software
featuring business management applications for the film and
music industries; and interactive multimedia applications
for entertainment, education and information, in the nature
of artists' performances and biographical information from
the film and music industries; and instructions and
information for playing musical instruments.” Opposer’s
software and multimedia applications are limited to the film
and music industries.
We cannot agree with opposer that the “parties’ goods
and services are virtually identical.” Opposer’s Motion at
19. Opposer’s software is limited to the film and music
industries and applicant’s goods are limited to the medical,
pharmaceutical, and healthcare information. Therefore, the
question is whether the goods of the parties are related and
not identical. The board has addressed the question of
whether computer products in general are related.
Opposer argues that the parties' products are related
because each party provides software programs which
process data. We decline to interpret the concept of
related goods so broadly. All computer software
Opposition No. 91158118
10
programs process data, but it does not necessarily
follow that all computer programs 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. See,
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). In particular,
the fact that both parties provide computer programs
does not establish a relationship between the goods or
services, such that consumers would believe that all
computer software programs emanate from the same source
simply because they are sold under similar marks.

Electronic Data Systems Corp. v. EDSA Micro Corp., 23 USPQ2d
1460, 1463 (TTAB 1992).
Therefore, the mere fact that both applicant’s and
opposer’s goods can be described as interactive or that the
products may be made in similar ways does not establish that
the goods are related. “In view of the fact that computers
are useful and/or are used in almost every facet of the
world of business, commerce, medicine, law, etc., it is
obvious that distinctions must be made.” Reynolds &
Reynolds Co. v. I.E. Systems Inc., 5 USPQ2d 1749, 1752 (TTAB
1987)
We note that this is not a case where the registered
mark is for a broad class of goods and applicant’s goods are
a subset of that broad class of goods. See In re Linkvest
S.A., 24 USPQ2d 1716, 1716 (TTAB 1992) (“Registrant's goods
are broadly identified as computer programs recorded on
magnetic disks, without any limitation as to the kind of
Opposition No. 91158118
11
programs or the field of use. Therefore, we must assume
that registrant's goods encompass all such computer programs
including those which are for data integration and
transfer”). See also Paula Payne Products, 177 USPQ at 77
(The registered mark for hair spray would not exclude
applicant’s hair brightener spray). Here, it is clear that
applicant’s CD-ROMs in the field of health, pharmaceutical,
and medicine are not included within opposer’s
identification of goods for software in the film and music
industry.
We add that even if the products were not in distinctly
different fields that fact would not automatically mean that
the goods or services are related. Electronic Design &
Sales Inc. v. Electronic Data Systems Corp., 954 F.2d 713,
21 USPQ2d 1388, 1391 (Fed. Cir. 1992) (“[A]lthough the two
parties conduct business not only in the same fields but
also with some of the same companies, the mere purchase of
the goods and services of both parties by the same
institution does not, by itself, establish similarity of
trade channels or overlap of customers”). See also Astra
Pharmaceutical Products, Inc. v. Beckman Instruments, Inc.,
718 F.2d 1201, 220 USPQ 786, 792 (1st Cir. 1983)
(Pharmaceutical products sold to hospital pharmacies
dissimilar to laboratory instrumentation sold to hospital
laboratories). In another case, the Third Circuit held that
Opposition No. 91158118
12
there was no likelihood of confusion when the marks
CHECKPOINT and CHECK POINT were used in the security
industry. Checkpoint Systems, Inc. v. Check Point Software
Technologies Inc., 269 F.2d 270, 60 USPQ2d 1609, 1620 (3rd
Cir. 2001) (“While Checkpoint Systems's access control,
closed circuit television and radio frequency products may
employ similar technology, their purpose is physical article
surveillance or personal access. On the other hand, Check
Point Software's firewall technology is not intended to
prevent theft of merchandise or limit physical access. Its
purpose is to prevent third parties from accessing
information from unsecure computer lines. Because the
products serve different functions, and there is only
‘minimal overlap’ in the product technology, it is unlikely
consumers would be confused by the similar marks”).
Furthermore, while opposer has argued that its
registration “does not exclude development of the very same
identified interactive multimedia applications to the
‘expansion’ marketing channel on which Applicant has based
its new business” (Reply at 6 (emphasis omitted)), it has
not established that CD-ROMs with information in the
medical/healthcare/pharmaceutical field are within the
natural zone of expansion for a producer of computer
products for the music and film fields. Clearly, they are
not within the scope of its identified goods in the
Opposition No. 91158118
13
registration. Our case law has held that 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.” Viacom
International Inc. v. Komm, 46 USPQ2d 1233, 1238 (TTAB
1998). Opposer admits that it provides “products and
services since its 1991 inception, all with the common
characteristic of being (i) technology-oriented, and (ii) in
the music industry.” Opposer’s Motion at 5. Opposer has
not shown that it operates in applicant’s
medical/healthcare/pharmaceutical field. Based on the
record, we cannot conclude that applicant’s field is within
opposer’s natural scope of expansion.
We add that our conclusion would not change even if
there were incidental musical arrangements on applicant’s
CD-ROMs. The presence of music on a medical CD-ROM would
not make these otherwise dissimilar goods related. Quite
simply, a CD-ROM containing a legal lecture with a few bars
from a popular sound would not change the nature of the CD-
ROM. Similarly, a medical CD-ROM that includes a discussion
of elbow surgery and its results on a baseball player would
not, by itself, make the CD-ROM related to CD-ROMs about
Opposition No. 91158118
14
sports. The channels of trade and purchasers for these CD-
ROMs would not change. They remain CD-ROMs concerning legal
or medical practices. Therefore, we conclude that
applicant’s and opposer’s computer products that exist in
separate fields are not related beyond the fact that they
would both be created in similar ways and used on the same
device, a computer. Reynolds & Reynolds Co., 5 USPQ2d at
1752 (Evidence showed that opposer had a “division which
deals in computers and computer related products. But it is
clear that the ACCU marks are confined to their use to the
products and services of the Tax Systems Division.”
Applicant’s communications software is “sufficiently
different”).
While we have concentrated on the goods in opposer’s
registration, we have not overlooked opposer’s
corporate/trade name and its service marks and its goods to
the extent that they are not included within the scope of
the identification of goods in its registration. Opposer
refers to these other products as its music industry
database application, its record label services provided to
other labels, and its music content on CDs, CD-ROMs, and the
Internet. Opposer’s Motion at 5-6. However, as opposer’s
self-identified descriptions indicate, these products and
services would all be in the music industry. This is
consistent with its admission that it has “provided a broad
Opposition No. 91158118
15
line of products and services … in the music industry.”
Opposer’s Motion at 5. These common law uses do not change
our basic analysis regarding the parties’ intellectual
property. Applicant and opposer operate in distinctly
different fields and even considering these additional
rights we do not see that there is a significantly different
relationship between the parties.
Other factors that we consider in our likelihood of
confusion analysis concern the prospective purchasers of the
parties’ goods or services and their channels of trade. It
is difficult to see that there is any overlap between
applicant’s CD-ROMs in the medical/pharmaceutical/healthcare
fields and opposer’s “computer software featuring business
management applications for the film and music industries;
and interactive multimedia applications for entertainment,
education and information, in the nature of artists'
performances and biographical information from the film and
music industries; and instructions and information for
playing musical instruments.” Even when we consider that
opposer’s goods include music CD-ROMs for groups such as
Buckethead, the potential overlap would be de minimis.
Certainly, applicant’s medical-related CD-ROMs and opposer’s
software for business management applications in the film
and music industries are distinct without any known overlap
of purchasers or channels of trade. Regarding opposer’s
Opposition No. 91158118
16
other products, there is no indication that they would be
sold in the same channels of trade as opposer’s interactive
medical-related CD-ROMS. While it is possible that a
purchaser of CD-ROMs containing educational information in
the fields of pharmaceutical and medical product
information, therapies and strategies may also be interested
in a Buckethead CD or another product of opposer, this would
involve pure speculation and it would not indicate that
confusion is likely.
[W]e acknowledge that opposer is correct that some
overlap of the parties' customers could occur,
especially where physicians and other medical
professionals are also the parents of students.
However, even assuming for purposes of summary judgment
that many of the 569,160 physicians in the United
States utilize their subscriptions to opposer's
"Knowledge Finder" product in their homes and would
also purchase a subscription to applicant's
"INFORMATION FINDER" product for use at home by their
children in connection with their schoolwork, we are
constrained to agree with applicant that the prospects
for any kind of confusion as to the source or
sponsorship of the parties' goods is de minimis.

Aries Systems Corp. v. World Book Inc., 26 USPQ2d 1926, 1933
(TTAB 1993). See also Electronic Design & Sales, 21 USPQ2d
at 1392-93 (“[O]pposer urges that persons who use opposer's
data processing and telecommunications services at work and
who buy batteries at retail stores would be confused as to
source .... [T]he potential for confusion appears a mere
possibility not a probability”).
Regarding the other factors, they do not sufficiently
effect the outcome in this case. There is little evidence
Opposition No. 91158118
17
to indicate that opposer’s mark has achieved any significant
level of fame. While there is no evidence of actual
confusion, this fact does not indicate that there is no
likelihood of confusion. The absence of actual confusion
does not mean there is no likelihood of confusion. Giant
Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 218
USPQ 390, 396 (Fed. Cir. 1983); J & J Snack Foods Corp. v.
McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1892 (Fed.
Cir. 1991). In this case, the lack of actual confusion may
be due to the size of the companies and the fact that
applicant does not advertise (Wilschut dep. at 78).
Therefore, this factor is neutral.
While applicant argues that there are other third-party
marks for M2, this evidence primarily is based on federal
registrations and Google lists. Federal registrations are
not evidence of use of the marks. In re Mucky Duck Mustard
Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). The Google
extracts do not provide much information on which to
conclude that a substantial number of companies are actually
using the M2 term. “Evidence of actual use of a phrase by a
website has far greater probative value than the summary
results of a search for key words, which may indicate only
that the words in a phrase appear separately in the website
literature.” In re Fitch IBCA Inc., 64 USPQ2d 1058, 1060
Opposition No. 91158118
18
(TTAB 2002). We cannot conclude based on this evidence that
opposer’s mark is weak.
Opposer also refers to applicant’s intent (Motion at
22-24) and suggests that applicant’s intent should be a
factor that should be held against applicant. The record
does not establish that applicant had a bad intent when it
adopted its mark. Applicant’s witness indicated that it
adopted the mark because it means “medical marketing.”
Wilschut dep. at 157. Furthermore, the witness denied that
he had any knowledge of M2 Software at the time he designed
applicant’s trademark. Wilschut at 53. Therefore, we
conclude that, based on the record, applicant’s intent is
not a factor that favors opposer.
When we consider all the evidence of record, we
conclude that, while the marks are M2 and M2 COMMUNICATIONS
are similar, the goods are not related and the channels of
trade and purchasers are different. Therefore, we conclude
that confusion in this case is not likely.
Decision: The opposition is dismissed.