Telefonos de Mexico, S.A.B. de C.V.v.Andres Gutierrez Estrada

Trademark Trial and Appeal Board

Jun 30, 2010

No. 91183509 (T.T.A.B. Jun. 30, 2010)

Mailed:
June 30, 2010
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Telefonos de Mexico, S.A.B. de C.V.
v.
Andres Gutierrez Estrada
_____

Opposition No. 91183487
to Application Serial No. 77270292
filed on 9/2/2007

and

Opposition No. 91183509
to Application Serial No. 77270301
filed on 9/2/2007
_____

Julie B. Seyler of Abelman Frayne & Schwab for Telefonos de
Mexico, S.A.B. de C.V.

Andres Gutierrez Estrada Pro Se.
______

Before Hairston, Walsh and Ritchie, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

In these consolidated opposition proceedings, Telefonos
de Mexico, S.A.B. de C.V. (opposer) has opposed two
applications filed by Andres Gutierrez Estrada (Applicant),
an individual resident of Mexico, to register the mark
AUDITORIO TELMEX on the Principal Register. Both
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Opposition Nos. 91183487 & 91183509
2
applications include a translation of AUDITORIO as
“AUDITORIUM” and a disclaimer of AUDITORIO. Applicant bases
both applications on his statement of his bona fide
intention to use the mark in commerce under Trademark Act
Section 1(b), 15 U.S.C. § 1051(b). Applicant filed both
opposed applications on September 2, 2007.
In the first opposed application (Serial No. 77270292),
Applicant states his bona fide intention to use the
AUDITORIO TELMEX mark in connection with “arena services,
namely, providing facilities for sports, concerts,
conventions and exhibitions” in International Class 43.
In the second opposed application (Serial No.
77270301), Applicant states his bona fide intention to use
the AUDITORIO TELMEX mark in connection with “entertainment
in the nature of ballet performances; entertainment in the
nature of visual and audio performances, namely, musical
band, rock group, gymnastic, dance, and ballet performances;
entertainment, namely, live performances by a musical band;
entertainment, namely, live performances by musical bands;
entertainment, namely, live performances by rock groups;
live performances featuring prerecorded vocal and
instrumental performances viewed on a big screen;
performance hall rental services; planning arrangement of
showing movies, shows, plays or musical performances;
presentation of live show performances; presentation of
Opposition Nos. 91183487 & 91183509
3
musical performance; booking of seats for shows and booking
of theatre tickets; rental of portable theatre seating;
entertainment in the nature of visual and audio
performances, and musical, variety, news and comedy shows;
providing facilities for movies, shows, plays, music or
educational training; entertainment in the nature of dance
performances” in International Class 41.
Thus, the only difference between the two opposed
applications and the two proceedings is the class of
services at issue. Where appropriate, we will address each
class specifically.
Grounds
As grounds for both oppositions, opposer alleges
priority and likelihood of confusion under Trademark Act
Section 2(d), 15 U.S.C. § 1052(d), based on its common law
use of its TELMEX mark in the United States in connection
with certain telecommunications and other services discussed
below.
In the notices of opposition, opposer also refers to
certain applications it has filed in the United States to
register the TELMEX mark and variations on that mark.
However, opposer’s applications have not matured to
registration. Therefore, opposer’s applications cannot
serve as the basis for establishing priority in these
proceedings.
Opposition Nos. 91183487 & 91183509
4
Although opposer also attempted to assert dilution as
an additional ground in its notices of opposition, opposer
did not maintain that ground in its brief. Therefore, we
regard the dilution ground as abandoned, and we have not
considered it.
In its brief opposer appears to assert the
international fame and renown of its mark as a distinct
ground for the oppositions. However, opposer asserted no
such ground in either of its notices of opposition.
Accordingly, we have given no consideration to this ground
which opposer did not plead.
Applicant has denied the essential allegations in the
notices of opposition.
Opposer has submitted evidence and a brief. Applicant
submitted neither evidence nor a brief.
We sustain the oppositions as to both applications.
The Record
By rule the record first consists of the application
files related to both opposed applications and the
pleadings. Trademark Rule 2.122, 37 C.F.R. § 2.122. In
addition, opposer has submitted the testimony of Peter
Rivera, with exhibits, and notices of reliance on: certain
admissions and responses to interrogatories from Applicant;
USPTO records regarding certain registrations and
applications; and certain printed publications.
Opposition Nos. 91183487 & 91183509
5
Opposer submitted limited portions of the testimony of
Mr. Rivera under a claim of confidentiality. We will refer
to the confidential material only to the extent to which
opposer referred to that material in its brief, which
opposer submitted without any claim of confidentiality.
Standing
Because opposer has pleaded and established use of its
TELMEX mark in the United States in connection with
telephone calling card services, as discussed below, prior
to the filing date of both opposed applications, September
2, 2007, opposer has established its standing as to both
classes of services and both proceedings. See generally
Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823
F.2d 490, 2 USPQ2d 2021, 2023 (Fed. Cir. 1987).
Priority
Again, because opposer has pleaded and established use
of its TELMEX mark in the United States in connection with
telephone calling card services prior to the filing date of
both opposed applications, September 2, 2007, opposer has
established its priority as to both classes of services and
both proceedings. Miller Brewing Co. v. Anheuser-Busch
Inc., 27 USPQ2d 1711, 1714 (TTAB 1993).
Opposition Nos. 91183487 & 91183509
6

Findings of Fact
Opposer
Peter Rivera provided testimony regarding opposer and
its activities. Mr. Rivera is the regional sales director
for the northeastern United States for Telmex USA, LLC, a
wholly owned subsidiary and related company of opposer.
Telmex USA is the company through which opposer operates and
uses the TELMEX mark in the United States. Rivera at 4-5.
Telmex USA’s use of the TELMEX mark in the United States
inures to the benefit of its parent, opposer. Trademark Act
Section 5, 15 U.S.C. § 1055.
Opposer is a major telecommunication company based in
Mexico. Rivera at 8. Opposer began rendering its services
in Mexico in 1947 and soon after became government owned.
Id. Up until the 1990s, when it was privatized, opposer was
virtually the only provider of telephone service in Mexico
and opposer has maintained its market dominance since it was
privatized. Id.
Opposer has used the TELMEX mark in connection with its
telecommunications services in Mexico since 1947. Opposer
has used and is using the TELMEX mark throughout all of
Mexico, on billboards, in the streets, on pay phones, on
repair vans, in printed media, on the Internet and
otherwise. Id. at 44. In view of opposer’s widespread and
Opposition Nos. 91183487 & 91183509
7
extensive use of the TELMEX mark in Mexico for six decades,
it is unlikely that any resident of Mexico could escape from
noticing and knowing about the TELMEX mark.
Opposer also provides telecommunications services in
several countries in Central and South America. Id. at 42-
43.
Opposer sponsors a large arena under the AUDITORIO
TELMEX mark in Guadalajara, Mexico. Events, such as the
2008 Latin American MTV Music Awards have been televised
from this arena; the MTV telecast was available worldwide,
including in the Unites States, over the Internet. Id. at
64. AUDITORIO TELMEX is ranked as one of the top five
entertainment concert arenas in the world. Id. Major
artists, including The Doors, Placido Domingo, Bob Dylan,
Rod Stewart, Ricky Martin and others have performed at the
arena. The arena is located adjacent to the Universidad de
Guadalajara (the University of Guadalajara). Id. The
TELMEX mark is displayed throughout the arena, and the
AUDITORIO TELMEX mark is used prominently and consistently
in the advertising and promotion of events which take place
in the arena.
Opposer began selling telephone calling cards under the
TELMEX mark in the United States in 2000 and currently sells
approximately 6,000,000 per year in the United States. Id.
at 26. Opposer sells the cards in various denominations;
Opposition Nos. 91183487 & 91183509
8
the cards enable the holder to place calls to Mexico. Id.
at 13. Opposer sells the cards throughout the United States
through various retail outlets. Id. at 14-15. The cards
themselves display artwork and promotions for sports and
entertainment events opposer sponsors, such as auto racing,
tennis and soccer. Id. at 15-16. The calling cards
themselves and items related to sponsored events, such as
model race cars and soccer jerseys, all bearing the TELMEX
mark, are offered for sale on eBay. Id. at 18.
Opposer has used its TELMEX mark in connection with the
sponsorship of specific race cars in the Rolex Grand Am
Sports Car Racing Series, and the series culminates with a
race in the United States in Daytona, Florida. Id. at 24.
Although opposer provided evidence that it began its racing
team in 2002, opposer did not provide testimony or other
evidence to establish that it used its TELMEX mark in
connection with the sponsorship of racing events in the
United States prior to September 2, 2007. Id. at 24-25, and
Exh. 7.
Opposer also provides voice, data, video and Internet
services in the United States under the TELMEX mark through
its U.S. subsidiary, but opposer did not provide testimony
or other evidence to establish that it began to offer those
services in the United States under the TELMEX mark before
September 2, 2007. Id. at 9.
Opposition Nos. 91183487 & 91183509
9

Applicant
Applicant, an individual, has resided in Zapopan,
Jalisco, Mexico since 1980. Applicant’s Responses to
Opposer’s Second Set of Interrogatories. Zapopan is roughly
10 miles from the AUDITORIO TELMEX arena in Guadalajara and
the University of Guadalajara. Applicant’s Notice of
Reliance, filed September 16, 2009, including a Reference
Map.
Although Applicant did not submit any evidence or a
brief, opposer filed notices of reliance on Applicant’s
responses to opposer’s requests for admissions and opposer’s
interrogatories. Applicant’s responses display a pattern of
evasion. To be blunt, the responses are disingenuous and
lacking in credibility.
In spite of the fact that Applicant has lived in Mexico
for nearly 30 years, at least, and opposer’s use of the
TELMEX mark throughout Mexico has been ubiquitous for that
entire period, Applicant essentially denies any prior
knowledge of opposer’s use of TELMEX.
In spite of the fact that Applicant lives within 10
miles of the AUDITORIO TELMEX arena and the fact that the
arena is one of the top arenas in the world, Applicant
essentially denies any prior knowledge of opposer’s use of
the AUDITORIO TELMEX mark in connection with that arena.
Opposition Nos. 91183487 & 91183509
10
Finally, in spite of all of these facts, when asked why
he chose the AUDITORIO TELMEX mark for use in connection
with the arena and entertainment services, Applicant stated,
“Because AUDITORIO TELMEX sounds good for the services upon
which it will be used. Is (sic) an easy listening phrase.”
Applicant’s Responses to Opposer’s First Set of
Interrogatories.
For the record, we will review here some of Applicant’s
other responses which lead us to conclude that Applicant has
been evasive and disingenuous in the prosecution of his
applications and in these proceedings.
In an interrogatory opposer asked Applicant to “State
when and how Applicant first learned of Opposer’s MARKS.”
Applicant stated, “When the Opposer filed its notice of
opposition (April 9, 2008).” Applicant’s Responses to
Opposer’s First Set of Interrogatories.
In responding to requests for admissions Applicant
denies that “… Applicant had actual knowledge of Opposer’s
use of TELMEX prior to the adoption of the trademark
AUDITORIO TELMEX.” Applicant’s Responses to Opposer’s First
Request for Admissions.
Likewise, when asked in an interrogatory to, “State
whether Applicant has actual knowledge of Opposer’s use of
the trademark TELMEX.” Applicant stated, “The Applicant has
actual knowledge of Opposer’s use of the trademark TELMEX
Opposition Nos. 91183487 & 91183509
11
based on Opposer’s notice of opposition.” Applicant’s
Responses to Opposer’s First Set of Interrogatories.
Also, when Applicant was asked to admit “… that Opposer
has long prior rights to the trademark TELMEX,” Applicant
responded as follows: “The Applicant has made reasonable
inquiry and the information known or readily obtainable by
it is insufficient to enable the Applicant to admit or deny
this request.” Applicant’s Responses to Opposer’s First
Request for Admissions. Applicant employs this same
response repeatedly rather than providing a forthright
response to other requests.
Furthermore, Applicant states that he became aware of
the University of Guadalajara in 1995, but that he did not
become aware of AUDITORIO TELMEX until, “… the Opposer sent
his first request for admissions to Applicant.” Applicant’s
Responses to Opposer’s Second Request for Admissions.
Opposer sent its first request for admissions to Applicant
on July 21, 2008; the request included voluminous
attachments showing that the AUDITORIO TELMEX arena had been
open prior to that date and that numerous noteworthy artists
had performed at the arena, for example, Liza Minnelli, The
Moscow Classical Ballet, Hilary Duff, Kenny G, Ricky Martin,
and Placido Domingo. Opposer’s First Request for
Admissions.
Opposition Nos. 91183487 & 91183509
12
In responding to another requested admission, namely
that “… Applicant had actual knowledge of Opposer’s use of
AUDITORIO TELMEX prior to the adoption of the AUDITORIO
TELMEX mark…” Applicant stated, “Objection: The Opposer’s
Notice of Opposition talked about the existence of
Application No. 78/166543 ONLY for TELMEX. The Opposer’s
Notice of Opposition talked about the existence of
Application No. 78/763577 ONLY for TELMEX MEXICO EN LINEA.
The opposer claimed its rights solely for those marks.”
Responses to Opposer’s First Request for Admissions. Here
too Applicant offers this same response to opposer’s
numerous subsequent requests that Applicant admit that the
various documents attached to the requests related to events
taking place at the AUDITORIO TELMEX arena and that
Applicant admit that those documents showed use of the
AUDITORIO TELMEX mark. Id.
Finally, in its second set of interrogatories opposer
asked: “State whether Applicant has ever used phone service
in Mexico, including home phone, public phone, or cell phone
use, and the beginning and ending dates of such use.” In
response, Applicant stated, “Cell phone only, since June 15,
2005.” Applicant’s Responses to Opposer’s Second Set of
Interrogatories. And, when asked whether he had ever used a
phone booth, pay phone, or other public phone, Applicant
stated that he had not. Id.
Opposition Nos. 91183487 & 91183509
13
If there is a plausible explanation for these
implausible responses, Applicant could have provided the
explanation by submitting evidence at trial, but Applicant
did not do so.
Likelihood of Confusion
In likelihood of confusion cases, we must consider the
facts in view of the relevant factors set out in In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973). See also In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003) and Recot,
Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed.
Cir. 2000). In a particular case, one factor may play a
dominant role. In re E. I. du Pont de Nemours & Co., 177
USPQ at 567.
The Marks
To determine whether the marks are confusingly similar,
we must consider the appearance, sound, connotation and
commercial impression of each mark. Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
While we must consider the marks in their entireties,
it is entirely appropriate to accord greater importance to
the more distinctive elements in the marks. As the Court of
Appeals for the Federal Circuit observed, “… in articulating
reasons for reaching a conclusion on the issue of confusion,
Opposition Nos. 91183487 & 91183509
14
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
consideration of the marks in their entireties. Indeed,
this type of analysis appears to be unavoidable.” In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
For purposes of this comparison, we compare Applicant’s
AUDITORIO TELMEX mark with opposer’s TELMEX mark, the mark
as to which opposer has shown both use and priority in the
United States. Opposer argues that these two marks are
similar and we agree.
Applicant has disclaimed AUDITORIO which is at least
highly descriptive of his services. Thus, opposer’s TELMEX
mark is identical to the dominant and only distinctive
element in Applicant’s mark, TELMEX, a coined term.
The respective marks are similar in appearance and
sound. Under the circumstances, the presence of the
descriptive term, AUDITORIO, does little, if anything, to
diminish the similarities.
More importantly, the common element, TELMEX, is
dominant in projecting both the connotation and commercial
impression of both marks. Again, as we discuss further
immediately below, TELMEX, is a coined term which is
inherently distinctive, and to the extent that it projects
Opposition Nos. 91183487 & 91183509
15
either a connotation or commercial impression, the
connotation and commercial impression is identical in both
respective marks.
Accordingly, we conclude that the Applicant’s AUDITORIO
TELMEX mark and opposer’s TELMEX mark are highly similar
overall.
Fame/Strength of Opposer’s Mark
Opposer asserts that its TELMEX mark is famous, at
least in Mexico and internationally, and apparently also in
the United States. Above, we rejected opposer’s argument
that the asserted international fame or renown of the TELMEX
mark might serve as an additional ground for the oppositions
because opposer had failed to plead such a claim in its
notices of opposition.
Nonetheless, the fame/renown of opposer’s TELMEX and
AUDITORIO TELMEX marks in Mexico, in particular, are
relevant to the issue of bad faith in the likelihood-of-
confusion analysis, and we will discuss the fame/renown of
the marks in that context below.
As to the fame of the TELMEX mark in the United States,
if opposer were able to show that its TELMEX mark is famous
in the United States, fame might play a dominant role in the
likelihood-of-confusion analysis because famous marks enjoy
a broad scope of protection. Bose Corp. v. QSC Audio
Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed.
Opposition Nos. 91183487 & 91183509
16
Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker Toys, Inc.
v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453,
1456 (Fed. Cir. 1992).
However, opposer’s evidence is insufficient to
establish that the TELMEX mark is famous in the United
States. We have information regarding the sales of
opposer’s calling cards in the United States, though we have
no information regarding its U.S. competitors in the calling
card business in the United States to place that evidence in
context. Even without that information, the numbers alone
suggest that opposer does not have significant market share.
Furthermore, opposer’s other evidence is not sufficient to
show fame for the TELMEX mark in the United States.
Under one notice of reliance opposer provided five
articles which appeared in U.S. publications which mention
the AUDITORIO TELMEX arena. These articles do not address
the TELMEX mark, and in any event, they are insufficient in
quality and quantity to establish the fame of either the
TELMEX or AUDITORIO TELMEX marks in the United States.
Under another notice of reliance opposer also provided 39
articles form various U.S. newspapers and similar sources
where TELMEX is mentioned. For the most part, the mentions
of TELMEX are in the context of business or financial
reporting, the exploits of Carlos Slim Helu, the former
Opposition Nos. 91183487 & 91183509
17
chairman of Telmex, and reports of results of the Copa
Telmex tennis tournament in Argentina. We find these
articles too, whether taken alone or along with other
evidence, insufficient to show that the TELMEX mark is
famous in the United States.
However, we hasten to add that the record does
establish that TELMEX is a strong, inherently distinctive
mark. As we noted, TELMEX is a coined term. Even Applicant
effectively conceded that TELMEX is strong in his response
to opposer’s interrogatory asking whether Applicant had
knowledge that any other person (other than opposer or
Applicant) has the right to use TELMEX. Applicant said
“No.” Applicant Reponses to Opposer’s First Set of
Interrogatories.
Thus, we have no evidence that anyone other than
opposer has ever used TELMEX for any purpose and we conclude
that TELMEX is a strong, inherently distinctive mark in the
United States.
The Services
The services of Applicant and opposer need not be
identical to find a likelihood of confusion under Section
2(d). They need only be related in such a way that the
circumstances surrounding their marketing would result in
relevant purchasers mistakenly believing that the goods
originate from or are associated with the same source. On-
Opposition Nos. 91183487 & 91183509
18
Line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56
USPQ2d 1471 (Fed. Cir. 2000).
Furthermore, in comparing the services we must consider
the services as identified in the application. See 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.”).
For purposes of this comparison, we consider that
opposer’s services are limited to telephone calling card
services, the only services as to which opposer established
priority in the United States. As to Applicant, we consider
the services identified in each of the opposed applications,
that is, “arena services, namely, providing facilities for
sports, concerts, conventions and exhibitions” in
International Class 43, and “entertainment in the nature of
ballet performances; entertainment in the nature of visual
and audio performances, namely, musical band, rock group,
gymnastic, dance, and ballet performances; entertainment,
namely, live performances by a musical band; entertainment,
Opposition Nos. 91183487 & 91183509
19
namely, live performances by musical bands; entertainment,
namely, live performances by rock groups; live performances
featuring prerecorded vocal and instrumental performances
viewed on a big screen; performance hall rental services;
planning arrangement of showing movies, shows, plays or
musical performances; presentation of live show
performances; presentation of musical performance; booking
of seats for shows and booking of theatre tickets; rental of
portable theatre seating; entertainment in the nature of
visual and audio performances, and musical, variety, news
and comedy shows; providing facilities for movies, shows,
plays, music or educational training; entertainment in the
nature of dance performances” in International Class 41.
Opposer submitted nineteen third-party registrations
which cover both opposer’s and Applicant’s services to show
that the respective services are related. However, none of
those registrations are based on use in commerce; all issued
under Trademark Act Section 66, 15 U.S.C. § 1141, as
extensions of protection to the United States based on an
international registration. Accordingly, they lack
probative value, and we have not considered them. In re 1st
USA Realty Professionals Inc., 84 USPQ2d 1581, 1583 (TTAB
2007) (“To the extent that the registrations are based on
Section 44 or Section 66 of the Trademark Act, applicant's
objection is well-taken. Because these registrations are
Opposition Nos. 91183487 & 91183509
20
not based on use in commerce they have no probative value in
showing the relatedness of the services….”).
However, as we stated, opposer has provided evidence
that its telephone calling cards display promotions for
events and activities opposer sponsors, including sporting
and other entertainment events. Consequently, these
promotions create an association between opposer’s
telecommunications services and entertainment services.
Opposer also provided evidence that it offers a wide
range of telecommunications services, beyond telephone
calling card services, in the United States, including
voice, data, video and Internet services, all under the
TELMEX mark. This evidence shows an association of the
TELMEX with a broad range of telecommunications services,
including Internet services.
In addition, opposer provided evidence that events,
such as the 2008 Latin American MTV Music Awards, have been
televised from opposer’s AUDITORIO TELMEX arena into the
United States over the Internet. Consequently, this
evidence points to an association between arena services and
entertainment services, on the one hand, and the
telecommunications services associated with the TELMEX mark,
on the other hand.
In the broader context, this evidence shows that
relevant consumers when confronted with the use of the same
Opposition Nos. 91183487 & 91183509
21
or similar marks in conjunction with both types of services,
arena and entertainment services and telecommunications
services would be likely to believe that the services are
associated with the same source.
We note that the Board has previously stated, “It is
common knowledge, and a fact of which we can take judicial
notice, that the licensing of commercial trademarks on
‘collateral’ products [services] has become a part of
everyday life. See Turner Entertainment Co. v. Nelson, 38
USPQ2d 1942, 1945-1946 (TTAB 1996) and cases cited therein.”
DC Comics v. Pan American Grain Mfg. Co., 77 USPQ2d 1220,
1225 (TTAB 2005).
Finally, we conclude that this evidence is sufficient
to show that both arena and entertainment services are
related to telephone calling card services. In the absence
of further evidence, we decline to go any further than
concluding that the respective services are sufficiently
related. That is, in the absence of further evidence that
other providers of telecommunications services, including
telephone calling card services, sponsor or otherwise
associate the marks used in connection with
telecommunications services also with arena and
entertainment services, we decline to go further.
Opposition Nos. 91183487 & 91183509
22

Bad Faith
The Board has recognized that we may consider bad faith
in the likelihood-of-confusion analysis under the thirteenth
du Pont factor. L.C. Licensing Inc. v. Berman, 86 USPQ2d
1883, 1890 (TTAB 2008). In this case, though we would find
a likelihood of confusion even without consideration of bad
faith, we find a significant degree of bad faith in
Applicant’s adoption of the AUDITORIO TELMEX mark. If this
were a close case, the bad faith which is present here would
be more than sufficient to tip the balance and dictate a
finding of likelihood of confusion. Roger & Gallet S.A. v.
Venice Trading Co. Inc., 1 USPQ2d 1829, 1832 (TTAB 1987)
(“Where there is evidence of an applicant's intent to adopt
a mark that suggests to purchasers a successful mark already
in use by another, the Board may, and ought to, take into
account that intent when resolving the issue of likelihood
of confusion when that issue is not free from doubt. See
Monsanto Co. v. CIBA-GEIGY Corp., 191 USPQ 173 (TTAB 1976)
(and cases cited there).”).
As we noted above, opposer has used the TELMEX mark for
over sixty years in Mexico in connection with its
telecommunications services; that use has been pervasive
throughout Mexico. The TELMEX mark is inherently
distinctive, and apparently unique.
Opposition Nos. 91183487 & 91183509
23
Applicant has resided in Mexico for nearly thirty
years, at least. In fact, since 1980 Applicant has lived
within 10 miles of the location of the AUDITORIO TELMEX
arena, which opposer sponsors – an arena where many high-
profile entertainment events take place. These facts lead
to the inescapable conclusion that Applicant filed his
applications with the full knowledge of opposer’s TELMEX and
AUDITORIO TELMEX marks. Applicant’s claims to the contrary
are not credible in the least. Roger & Gallet S.A. v.
Venice Trading Co. Inc., 1 USPQ2d at 1832.
Furthermore, Applicant’s evasive and disingenuous
responses to opposer’s discovery requests, detailed above,
provide evidence of Applicant’s continuing bad faith
subsequent to his adoption of the mark. It shows not only
bad faith but a general lack of respect for the application
and opposition process.
Accordingly, we have no hesitation in concluding that
Applicant acted in bad faith in the adoption of the
AUDITORIO TELMEX mark and throughout the prosecution of his
applications and these proceedings. Gillette Canada Inc. v.
Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992) (“We note, in
this regard, that a party which knowingly adopts a mark
similar to one used by another for the same or closely
related goods or services does so at its peril and any doubt
on the question of likelihood of confusion must be resolved
Opposition Nos. 91183487 & 91183509
24
against the junior user. See, e.g., First International
Services Corp. v. Chuckles Inc., 5 USPQ2d 1628, 1633 (TTAB
1988) and Roger & Gallet S.A. v. Venice Trading Co. Inc., 1
USPQ2d 1829, 1832 (TTAB 1987).”).
Conclusion
Finally, after considering all competent evidence
bearing on the du Pont factors in this case, we conclude
that there is a likelihood of confusion between opposer’s
TELMEX mark when used in connection with telephone calling
card services and Applicant’s AUDITORIO TELMEX mark when
used in connection with both the arena services Applicant
identifies in his International Class 43 application and the
entertainment services Applicant identifies in his
International Class 41 application. In concluding so we
note, in particular, that the marks are highly similar, that
opposer’s mark is inherently distinctive, that the services
of the parties are related, and that Applicant has acted in
bad faith.
Decision: We sustain the oppositions as to both
applications.