Viacom International Inc.

Trademark Trial and Appeal Board

Mar 20, 2006

No. 78216470 (T.T.A.B. Mar. 20, 2006)

Mailed: March 20, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Viacom International Inc.
________

Serial No. 78216470
_______

Kiersten M. Skog of MTV Networks, a division of Viacom
International Inc., for Viacom International Inc.

Catherine Pace Cain, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
_______

Before Quinn, Hohein and Holtzman, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Viacom International Inc. filed an application to register
the mark IT'S WHAT'S INSIDE THAT COUNTS for the following goods.1
Video game machines for use with television, audio
output game machines for use with television, video
game cartridges, video games recorded on CD-ROM for use
in freestanding video game machines; and computer
products, namely, game cartridges for computer video
games and video output game machines for use with
television and instructional materials sold as a unit,
computer game cassettes, computer game tapes and

1 Application Serial No. 78216470, filed February 19, 2003, based on
applicant's assertion of a bona fide intention to use the mark in
commerce.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 78216470
2
manuals sold as a unit; theatrical and musical sound
recordings; theatrical and musical video recordings,
laser discs and digital video discs, namely, digital
versatile discs and DVD; sunglasses (in International
Class 9).

The trademark examining attorney ultimately issued a final
refusal to register the mark under Section 2(d) of the Trademark
Act on the ground that applicant's mark, when applied to
applicant's goods, so resembles the registered mark WHAT'S INSIDE
COUNTS for the following services as to be likely to cause
confusion:2
Multimedia entertainment software production services;
audio and video recording and production (in
International Class 41); and
Computer services, namely, designing and implementing
network web pages for others, design of computer
software and multimedia games (in International Class
42).

Applicant, in response, filed a request for reconsideration,
seeking to overcome the final refusal by adding the following
language (highlighted below) to the identification of goods:
Video game machines for use with television, audio
output game machines for use with television, video
game cartridges, video games recorded on CD-ROM for use
in freestanding video game machines; and computer
products, namely, game cartridges for computer video
games and video output game machines for use with
television and instructional materials sold as a unit,
computer game cassettes, computer game tapes and
manuals sold as a unit; theatrical and musical sound
recordings; theatrical and musical video recordings,

2 Registration No. 2490027, issued July 11, 1995; Sections 8 and 15
affidavits accepted and acknowledged, respectively.
Ser No. 78216470
3
laser discs and digital video discs, namely, digital
versatile discs and DVD; sunglasses, all of which are
to be marketed in connection with the EVERGIRL line of
products which is directed to children, pre[-]teens
and teens and emphasizes the concept of self[-]
empowerment and a positive self[-]image.

The examining attorney rejected the amendment, citing TMEP
§1402.09 ("Use of Marks Inappropriate in Identifications"),
reasoning as follows:
The applicant currently has 12 pending applications for
the mark EVERGIRL, 11 of which have been approved for
publication. Several of the pending applications may
register before the final disposition of this
application. Registered marks are not to be used in
the application to describe applicant's goods.

The examining attorney required that applicant delete the mark
"EVERGIRL" from the amendment, and proceeded to maintain the
final refusal on the basis of the original identification of
goods.
The amendment submitted by applicant for the first time in
its request for reconsideration raised a new issue that should
not have been made final by the examining attorney until
applicant was given an opportunity to respond to the rejection.
See TMEP §715.03(b). That said, however, we find that a remand
of the application at this point for further examination
concerning the propriety of the amendment would serve no useful
purpose. The examining attorney's ground for rejecting the
amendment based on TMEP §1402.09 is improper on its face. While
Ser No. 78216470
4
that section of the TMEP provides that the use of a registered
mark of another entity is not appropriate, it clearly permits an
applicant to use its own registered mark in an identification of
goods in its own application. That is what applicant has done
here.
Under the circumstances, the amended identification of goods
is acceptable, and because applicant has briefed the issue of
likelihood of confusion on the basis of the identification of
goods as amended, the appeal will go forward and we will decide
the issue based on the goods as so amended.
Our determination under Section 2(d) is based on an analysis
of all of the probative facts in evidence that are relevant to
the factors bearing on the likelihood of confusion issue,
including the similarities or dissimilarities between the marks
and the similarities or dissimilarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
Turning first to the marks, applicant argues that although
the marks share some common words, the overall pronunciation,
meaning and commercial impression of the marks are dissimilar.
Applicant contends that its mark suggests "the philosophy behind
the EVERGIRL brand, namely, a message of empowerment, a positive
self-image and acceptance" whereas registrant's mark, according
Ser No. 78216470
5
to applicant, "is clearly intended to suggest that the software
in a computer is of particular importance."
It is well settled that marks must be compared in their
entireties and not dissected into component parts and each part
compared with other parts. Genesco Inc. v. Martz, 66
USPQ2d 1260 (TTAB 2003). In the normal marketing environment,
purchasers would not usually have an opportunity to examine marks
in such detail. Furthermore, the average purchaser is not
infallible in his recollection of trademarks and often retains
only a general overall impression of marks that he may previously
have seen in the marketplace. In re Mucky Duck Mustard Co., 6
USPQ2d 1467 (TTAB 1988). Thus, it is the overall impression of
the marks derived from viewing the marks in their entireties that
is controlling. See Dan Robbins & Associates, Inc. v. Questor
Corporation, 599 F.2d 1009, 202 USPQ 100 (CCPA 1979). See also
E.I. Du Pont de Nemours & Co. v. Yoshida Int'l, Inc., 393 F.Supp.
502, 185 USPQ 597, 603 (EDNY 1975) (overly analytical approach
with close attention to specific differences is less important
than the overall impression of general similarity.)
When applicant's mark IT'S WHAT'S INSIDE THAT COUNTS and
registrant's mark WHAT'S INSIDE COUNTS are considered in their
entireties and as they would be encountered in the marketplace,
we find that the marks are substantially similar in sound,
Ser No. 78216470
6
appearance, meaning and commercial impression, and that the
overall similarities in the marks far outweigh their differences.
Applicant's slogan, IT'S WHAT'S INSIDE THAT COUNTS,
incorporates registrant's slogan, WHAT'S INSIDE COUNTS, in its
entirety. The slight differences in sound and appearance between
the two slogans, due to the presence of the terms "IT'S" and
"THAT" in applicant's mark, are so insignificant that they are
not likely to be noted or remembered by purchasers when seeing or
hearing these slogans at separate times. Applicant's mark is, in
effect, just a slightly longer version of the same slogan used by
registrant.
Moreover, in relation to the respective goods and services,
the meaning and commercial impression conveyed by the two slogans
are substantially the same. Applicant contends that its mark
IT'S WHAT INSIDE THAT COUNTS" imparts a message "of empowerment
and a positive self-image" when viewed in connection with its
products, while registrant's mark WHAT'S INSIDE COUNTS refers to
the importance of "what's inside" the computer, meaning the
quality of the software used in a computer. However, we believe
that purchasers are more likely, or at least just as likely, to
view WHAT'S INSIDE COUNTS as suggesting the content of the
audio/video recordings registrant produces and the video games it
designs, and that purchasers would therefore perceive the meaning
of the two slogans as being the same.
Ser No. 78216470
7
Applicant argues that it is not appropriate to assume that
registrant "has strong rights in the mark" because registrant's
mark is not famous, and further that "it is not even clear that
the mark has developed secondary meaning among the consumer[s] of
the services." While we have no evidence that registrant's mark
is strong in terms of market power, the mark by its nature is
relatively strong, being at most only somewhat suggestive of
registrant's services. There is nothing in the record to
diminish this inherent strength of registrant's mark or, in any
event, to indicate that the mark should be entitled to less than
a normal scope of protection.
We turn then to the question of whether the respective goods
and services are sufficiently related and/or the circumstances
surrounding the marketing of the goods and service are such that
purchasers encountering them would, in view of the similarity of
the marks, mistakenly believe that the goods and services emanate
from the same source. See Monsanto Co. v. Enviro-Chem Corp., 199
USPQ 590 (TTAB 1978) and In re International Telephone &
Telegraph Corp., 197 USPQ 910 (TTAB 1978).
Applicant argues that the respective goods and services are
not related and that they will be sold in different channels of
trade, to different purchasers. Applicant contends that, unlike
registrant's services which are marketed and sold to adults in
the business-to-business context, applicant's goods will be sold
Ser No. 78216470
8
to children, pre-teens and teens in retail outlets that carry
toys, games and accessories. In addition, applicant maintains
that purchasers of registrant's services are more likely to spend
time investigating and researching before purchasing the services
than the ordinary consumers who will be purchasing applicant's
products.3
Applicant's goods include video game cartridges, video games
recorded on CD-ROM, theatrical and musical sound and video
recordings, and digital laser discs and DVDs. Registrant's
services involve the types of goods identified in the
application. Registrant designs multimedia games (e.g., video
games) and produces audio and video recordings. We find that
these are complementary, inherently related goods and services.
See, e.g., In re Hyper Shoppes (Ohio) Inc., 837 F. 2d 463, 6
USPQ2d 1025 (Fed. Cir. 1988) (finding that confusion may result
if the same or similar marks are used for goods, on the one hand,
and for services involving those goods, on the other).
In addition, the examining attorney has submitted a number
of use-based, third-party registrations showing that, in each
instance, a single entity has adopted the same mark for goods of
the type listed in the application and for services such as those

3 Applicant, for the first time on appeal, submitted a printout from
the website for its EVERGIRL products at www.evergirl.com. The
examining attorney objected to this evidence as untimely under
Trademark Rule 2.142(d) and the objection is well taken. Accordingly,
Ser No. 78216470
9
identified in the cited registration. For example, Registration
No. 2235685 lists prerecorded audio cassettes and discs featuring
music, as well as audio and audio-visual production services for
television, film, cable television, radio, theme parks,
restaurants, and theaters; Registration No. 2374577 lists
prerecorded video recordings, as well as production of video
recordings and multimedia entertainment software, "all featuring
... cartoon animation for entertainment, education, training and
motivation in a wide variety of fields"; Registration No. 2684345
lists computer game cartridges and discs, as well as design of
computer games, video games and computer game cartridges;
Registration No. 2753196 lists musical sound and video
recordings, as well as audio recording and production;
Registration No. 2716535 lists musical sound recordings,
prerecorded video tapes, compact discs, DVDs, video game discs
and cartridges, as well as audio recording and production,
digital video disc and video tape production "all on the subject
of inspiring and facilitating personal discovery and personal
growth"; and Registration No. 2902320 lists compact discs and
DVDs featuring music and theatrical productions, as well as
theatrical productions, and production of audio, video and audio-
video recordings.

this evidence will not be considered. Even if the evidence were
considered, however, it would not affect the outcome of this case.
Ser No. 78216470
10
Although third-party registrations are not evidence that the
marks shown therein are in commercial use or that the public is
familiar with them, they nevertheless have some probative value
to the extent that they serve to suggest that the goods listed
therein may emanate from a single source.4 See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); and In re Mucky
Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).
Applicant's identification specifies that its goods "are to
be marketed in connection with the EVERGIRL line of products
which is directed to children, pre-teens and teens and emphasizes
the concept of self-empowerment and a positive self-image."
While this language may limit the content of applicant's games
and recordings and perhaps the way those goods are promoted, it
does not serve to limit the nature of the goods themselves.
Further, absent any limitation in registrant's identification of
services, it must be presumed that the music and video recordings
produced by registrant and the multimedia games registrant
designs could include any type of content, including children's
music and video recordings and video games with child-oriented
themes and self-empowerment messages; and that such recordings
and games could be used for all purposes, including motivational

4 Contrary to applicant's contention, the examining attorney did not
conclude from this evidence that those entities which offer software
design services will also produce software, only that the evidence
tends to show that if purchasers encounter both types of goods and
Ser No. 78216470
11
and educational purposes. We also note that a few of the third-
party registrations mentioned above specify that goods and
services of the type provided by applicant and registrant are
used for a variety of purposes and have a variety of content.
We also find that there is at least an overlap in the
purchasers for applicant's audio/video products and registrant's
design and production services involving those products. We can
presume from the description of registrant's services, and it can
also be seen from several of the third-party registrations noted
above, that the type of services offered by registrant would be
directed to commercial purchasers such as television and movie
studios, theme parks, restaurants, theaters, and educational
institutions. Applicant's goods could likewise be offered to
those industries. While the language in applicant's
identification may indicate, as we noted earlier, the content of
applicant's recordings and video games, or that those goods are
promoted emphasizing a self-empowerment message, the language
does not serve to restrict the potential purchasers for
applicant's goods or to limit the universe of purchasers to the
general public.
We recognize that the overlapping purchasers for these goods
and services are presumed to have some degree of specialized

services under similar marks, they would believe the same entity is
providing both.
Ser No. 78216470
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knowledge and therefore would be more sophisticated than ordinary
consumers. However, even sophisticated purchasers are
susceptible to source confusion, particularly under circumstances
where, as here, the goods and services are closely related and
are sold under very similar marks. See In re Research Trading
Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), citing
Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d
1403, 168 USPQ 110, 112 (CCPA 1970) ("Human memories even of
discriminating purchasers ... are not infallible."). See also
Wincharger Corp. v. Rinco, Inc., 297 F.2d 261, 132 USPQ 289 (CCPA
1962); and In re Pellerin Milnor Corp., 221 USPQ 588 (TTAB 1983).
Accordingly, we find that purchasers familiar with
registrant's audio/video production and video game design
services sold under its mark WHAT'S INSIDE COUNTS, are likely to
believe, upon subsequently encountering the substantially similar
mark IT'S WHAT'S INSIDE THAT COUNTS on audio/video recordings and
video games of the kind provided by applicant, that they were
products designed by or produced by registrant, or that there is
otherwise some connection between the sources of the respective
services and goods.
Decision: The refusal to register under Section 2(d) of the
Trademark Act is affirmed.