Virgin Enterprises Limitedv.Enrique Rodriguez

Trademark Trial and Appeal Board

Dec 5, 2005

No. 91125729 (T.T.A.B. Dec. 5, 2005)

Goodman Mailed: December 5, 2005

Opposition No. 91125729

VIRGIN ENTERPRISES LIMITED

v.

ENRIQUE RODRIGUEZ

Before Hairston, Holtzman and Walsh, Administrative
Trademark Judges.

By the Board:

Applicant has filed an application to register the mark
VIRGINVISIONS for “computer screen savers recorded on
various data storage media, sold as a unit with a mailer
usable as a postcard” in International Class 9.1 As grounds
for opposition, opposer alleges that applicant’s mark, when
used in connection with the recited goods, so resembles
opposer’s previously used and registered VIRGIN marks as to
be likely to cause confusion, or mistake, or to deceive.
Opposer has also alleged dilution with its previously
registered marks.
Opposer has pleaded ownership of fifteen VIRGIN marks
in both standard character form and in stylized form as well

1 Application Serial No. 76113129, filed August 22, 2000,
claiming a date of first use in commerce of May 23, 2000.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS DECISION IS
NOT CITABLE AS
PRECEDENT
OF THE TTAB
2
as VIRGIN-formative marks. The pleaded registrations
include the following: the mark VIRGIN, Registration No.
14696182 for “pre-recorded audio and/or video tapes,
cassettes and cartridges; pre-recorded audio and video
discs, phonograph recordspre-recorded audio and/or video
tapes, cassettes and cartridges” in International Class 9
and the mark , Registration No. 15178013,
for “pre-recorded audio and video discs, phonograph records;
photographic and cinematographic films” in International
Class 9.
Opposer also has pleaded ownership of applications
including the following mark for goods in
Classes 9, 32 and 33. The Class 9 goods are as follows:
“sound records of music in the form of discs and tapes and
cassettes; pre-recorded audio or video tapes, cassettes and
cartridges featuring music; pre-recorded audio and video

2 Issued January 19, 1995. Section 8 and 15 accepted December
22, 1987.
3 Issued December 27, 1988. Section 8 and 15 accepted October 12,
1994.
3
discs, phonograph records featuring music; data processors
and displays; graphical interface to aid the delivery of
interactive products and services by cable or wireless
transmission; parts for the aforesaid goods; computer game
software; computer software for educational computer games,
for calculators, for global computer network access and for
music products; computer hardware” in International Class
9.4
In its answer, respondent denies the salient
allegations in the notice of opposition and has asserted
affirmative defenses.
This case now comes up on opposer’s motion for summary
judgment, filed, November 15, 2004, and applicant’s cross-
motion for summary judgment, filed February 10, 2005. The
motions are fully briefed.
Preliminarily, we note that applicant has moved to
strike opposer’s declarations provided in support of its
motion for summary judgment as being non-compliant with Fed.
R. Civ. P. 56 and facially defective. In response, opposer
argues that its declarations are entirely admissible because
they comply with Trademark Rule 2.20 and 28 USC § 1746.
Applicant’s motion to strike is denied. Trademark Rule
2.20 provides for the use of declarations in lieu of

4 Application Serial No. 74581589, filed October 3, 1994.
Registration issued April 22, 2003 as Reg. No. 2709578. Claiming
dates of first use in commerce of 1987 for the Class 9 goods.
4
affidavits. See also TMEP Section 804.01. Since opposer’s
declarations comply with Rule 2.20, the declarations are
acceptable as are the exhibits introduced with the
declarations.
We turn next to opposer’s request that the Board not
consider applicant’s exhibits 2-6 and 11-13 which were
submitted in support of applicant’s cross-motion for summary
judgment because the exhibits are either unauthenticated
and/or inadmissible hearsay.
Opposer's request that the Board not consider
applicant’s exhibits on the ground of hearsay is denied
because, upon reviewing the evidence, the Board can decide
whether to discount the probative value of any hearsay
evidence. Opposer's request that the Board not consider
applicant’s exhibits which are Internet printouts because
they are unauthenticated and not accompanied by a
declaration also is denied. The Internet printouts were
referenced in and accompanied by Enrique Rodriguez’s
declaration; therefore, in view of the declaration, the
printouts are authenticated. Raccioppi v. Apogee Inc., 47
USPQ2d 1368, 1371 (TTAB 1998) (declaration stating that
printouts were accessed on Internet by declarant sufficient
for authentication).
We now turn to the cross motions for summary judgment.
5
In support of its motion for summary judgment, opposer
argues that it has priority because it owns incontestable
registrations of VIRGIN and VIRGIN-formative marks applied
to a broad range of goods and services5, including various
computer-related goods and services.
With regard to likelihood of confusion, opposer
maintains that the parties’ marks are similar because “the
distinctive portion” of applicant’s mark is VIRGIN (VISIONS
being descriptive) which is identical to opposer’s VIRGIN
marks in “sight, sound and meaning”; that applicant’s goods
are closely related to the goods identified in opposer’s
pleaded registrations and are substantially identical to
goods distributed by opposer in the United States, namely,
computer screen savers and postcards; that the parties’
goods are targeted to the same consumers and through the
same channels of trade; and that because opposer’s VIRGIN
marks are inherently distinctive, strong, and famous,
confusion is likely.
As evidentiary support, opposer has submitted
declarations and accompanying exhibits as well as status and
title copies of pleaded registrations. Opposer’s attorney,

5 Opposer has identified 33 VIRGIN or VIRGIN-formative marks in
its motion for summary judgment and included status and title
copies of the registrations for these marks. Some of the
registrations are unpleaded. Therefore, those that have not been
pleaded have been given no consideration. TBMP §528.07(a) (2d
ed. rev. 2004).

6
Ms. Carrie Kingsley, avers that she viewed opposer’s website
www.virgin.net and downloaded a VIRGIN branded screensaver
to a personal computer. Christoper Rossi, head of opposer’s
U.S Sales and Marketing avers that licensees of opposer have
provided air travel, air freight, courier, cargo and related
services under opposer’s VIRGIN and VIRGIN ATLANTIC marks
since 1984; that passengers of opposer’s Virgin airline
flights receive VIRGIN branded in-flight items such as
headsets and may purchase duty-free VIRGIN VODKA, cosmetics,
clothing, toys, airplanes, pens, cakes and other VIRGIN
branded merchandise during the flight; and that Virgin
Atlantic spends $11 million each year to advertise and
promote its VIRGIN ATLANTIC and VIRGIN branded services in
the United States. Exhibits include photographs of VIRGIN
branded items that are provided in-flight or are available
for purchase through Virgin Atlantic’s duty free retail
catalog.
Mark James, Intellectual Property Manager for opposer,
avers that since 1970 opposer and its predecessors have used
the VIRGIN mark in association with diverse and numerous
goods and services including computer media and accessory
products, computer software, compact discs, computer games,
audio and video discs, retail store services, travel related
services and transportation and airline services; that
opposer is the owner of thirty-three United States trademark
7
registrations and ten incontestable United States
registrations for VIRGIN and VIRGIN-formative marks; that
opposer licenses its VIRGIN mark for a wide variety of goods
and services including computer media and accessory
products, computer software, and retail store services
featuring, among other things, computer games, audio discs
and video discs; that the website www.virgin.com offers
screensavers that prominently feature the VIRGIN mark that
may be downloaded by Internet users in the United States;
and that certain licensee’s of opposer distribute
screensavers bearing the VIRGIN mark and VIRGIN-branded
video discs that are playable on personal computers.
Exhibits include a copy of a webpage from www.virgin.com
which offers screensavers available for download.
Robert Stohrer, Vice President of Brand and
Communications for Virgin Mobile USA, LLC, avers that Virgin
Mobile subscribers may download screensavers that users may
access on their phones; that scenes of beaches are among the
screensavers offered to Virgin Mobile subscribers; that
Virgin Mobile phone and accessories are sold at more than
40,000 retail locations in the United States; and that
Virgin Mobile advertises its VIRGIN and VIRGIN MOBILE goods
and services on postcards and holiday cards that are
distributed to the public and may later be used by the
public as actual postcards or holiday cards. Exhibits to
8
Mr. Stohrer’s declaration include: Web pages for Virgin
Mobile phones which provide for downloadable screensavers
including those of beaches and palm trees.
Marc Block, Director of Marketing for Virgin
Entertainment Group, licensee of opposer, avers that Virgin
and Virgin Megastores chains have operated in the United
States since at least 1992; that the Virgin stores
distribute a wide variety of goods including “computer
software, CDs, DVDs, magazines, games, books and clothing
and an array of VIRGIN branded goods”; and that the Virgin
Megastore’s packaging prominently displays the VIRGIN mark.
Exhibits include copies of VIRGIN branded items for sale at
Virgin Megastores.
Lori Levin-Hyams, Vice President of Corporate Affairs
for parent company of opposer, avers that the VIRGIN brand
has been the subject of many books; and that Virgin Group
businesses have received national media coverage in the
United States.
In opposing the motion and in support of its cross
motion, applicant maintains that opposer cannot rely on some
of the registrations identified in its motion for summary
judgment because the underlying applications were filed
after applicant filed its application and/or belong to
another party; that opposer lacks standing to challenge
applicant’s application because opposer has not established
9
any factual support for its reliance on the entities who are
nonparties to the opposition who use VIRGIN marks on various
goods and services; and that opposer also lacks standing
because it no longer owns and has abandoned the rights to
the name Virgin Vision and therefore it cannot challenge
applicant’s use of VIRGINVISIONS.6
With regard to the similarity of the marks, applicant
argues that opposer’s assertion that the marks are
substantially identical is incorrect; that opposer has
dissected applicant’s mark rather than considering it as a
whole; and that the marks are different in sound, meaning,
appearance, and commercial impression due to the addition of
the term VISIONS.
With regard to the similarity of the goods, applicant
argues that there is no similarity between the parties’
goods because opposer has no Class 9 goods which are similar
or compete with screensaver postcards; that opposer has no
evidence of use of its VIRGIN marks on postcards; and that
the fact that opposer offers free downloadable screensavers
advertising its VIRGIN mark or offers screensavers for
mobile telephones is irrelevant and does not support a

6 Accompanying Mark James declaration was an exhibit from
opposer’s website describing opposer’s past and present
operations. One of the pages from the printout noted that Virgin
Vision (later changed to Virgin Communications) was formed in
1983 to distribute films and video in the television broadcasting
sector and that in 1989 Virgin Vision was sold to Management
Company Entertainment Group in 1989.
10
finding of confusion since applicant’s goods are purchased,
not downloadable, and must be mailed.
With regard to the channels of trade, applicant argues
that there are no similar trade channels for the parties’
goods since applicant’s goods are not sold through stores,
affiliate websites and Target, Best Buy and Walmart.
With regard to fame, applicant argues that opposer’s
sales data of fame is irrelevant since there is no evidence
that would support a finding of fame in the screensaver
postcard market that would entitle opposer to assert sales,
advertising or length of use figures. Applicant also argues
that opposer’s VIRGIN marks are not strong marks due to
third party use of the VIRGIN mark on goods and services
similar to opposer; that opposer’s products are purchased by
careful, sophisticated purchasers; and that there has been
no actual confusion between the parties’ marks.7
Applicant has submitted the following evidence in
support of its position: Declarations of Kathleen Whisler,
Maria van Heurck, Candela Sanchez and the declaration of
Enrique Rodriguez, with accompanying exhibits. Kathleen
Whisler, employee of Scenic Publishers and Distributors,

7 Applicant has also argued that opposer is estopped from
asserting a challenge to the registration of VIRGINVISIONS due to
the assignment of the VIRGIN VISIONS mark. However, this is an
unpleaded affirmative defense that will be given no
consideration. TBMP § 528.07(b).

11
avers that no client who purchased applicant’s product has
indicated they thought they were purchasing a product
connected to opposer; that applicant’s product is unique;
and that the majority of applicant’s goods have been sold in
the United States Virgin Islands and the British Virgin
Islands.
Maria van Heurck and Candela Sanchez, purchasers of
applicant’s goods, aver that when they purchased applicant’s
product they never thought that the product was connected to
opposer and that friends and family who received the product
never indicated that they thought the product was connected
to opposer.
Applicant, Enrique Rodriguez, avers, among other
things, that applicant’s product is sold in tourist
destinations that correspond with the images contained on
the screensaver; that the product is not a downloadable
screensaver but a postcard that contains a CD inside of it;
that no one who has purchased applicant’s products to date
indicated that they considered the product to be connected
with opposer’s mark; and that none of applicant’s products
are sold in opposer’s retail stores or on opposer’s
website.8

8 Applicant’s declaration asks that the Board issue a cease and
desist order against opposer to terminate its use of the domain
name Virgin Vision. However, the Board is an administrative
tribunal empowered only to determine the right to register or
maintain a registration; it is not authorized to determine the
12
In reply on its motion and in response to applicant’s
cross-motion, opposer argues that it has priority and
standing because opposer’s licensee’s use of VIRGIN marks
inures to the benefit of opposer; that opposer’s evidence of
ownership of ten incontestable U.S. registrations consisting
solely or primarily of the word VIRGIN is undisputed; that
with regard to the du Pont factors, none of the evidence
submitted by applicant raises a genuine issue as to the
strength and fame of opposer’s mark and therefore opposer’s
evidence of the strength and fame of its VIRGIN marks are
undisputed9; that with regard to the similarity of the
marks, applicant has offered no evidence about the
dissimilarity of the marks to raise a genuine issue and
opposer has established that the marks are confusingly
similar; that with regard to similarity of the goods,
applicant’s assertion that the goods are different does not
raise a genuine issue and opposer’s evidence establishes
that opposer’s Class 9 entertainment, video and computer-
related goods and/or Class 42 retail store services are

right to use. Moreover, the Board cannot enjoin a party from
using a mark nor can it award monetary damages. See TBMP §
102.01. See generally Person’s Co. v. Christman, 900 F.2d
1565, 14 USPQ2d 1477, 1481 (Fed. Cir. 1990). (Board's function
is to determine whether there is a right to secure or to maintain
a registration).
9 Opposer advises that nine of the ten third party users
applicant has identified as using the mark VIRGIN are authorized
licensees of opposer. Opposer also argues that applicant has not
submitted evidence of the consuming public’s awareness or extent
of third-party uses rendering the probative value of the
materials minimal.
13
closely related to applicant’s goods and that opposer’s
licensees distribute substantially identical goods in the
form of VIRGIN branded screensavers and VIRGIN branded
postcards; that applicant’s evidence of restricted channels
of trade should not be considered since the channels of
trade of applicant’s VIRGINVISIONS application are
unrestricted; and that the absence of actual confusion does
not prevent entry of summary judgment in favor of opposer.
With its opposition to applicant’s motion for summary
judgment, opposer submitted the declaration of Mark James,
Intellectual Property Manager for opposer, who avers that
opposer uses its mark through a number of controlled
licensees; and that between July 31, 1989 and July 31, 1992
entities named Virgin Vision Limited, Virgin Vision Inc.,
Management Company Entertainment Group, and MCEG Virgin
Vision Limited were controlled licensees of opposer
authorized to use the VIRGIN VISION mark in association with
film and video distribution services.
A party is entitled to summary judgment when it has
demonstrated that there are no genuine issues as to any
material fact and that it is entitled to judgment as a
matter of law. Fed. R. Civ. P. 56(c). Each party, in
regard to its own motion for summary judgment, bears the
burden of showing the absence of any genuine issue of
material fact, and that it is entitled to judgment as a
14
matter of law. See Fed. R. Civ. P. 56(c) and Celotex Corp.
v. Catrett, 477 U.S. 317 (1986). In assessing each motion,
the evidence must be viewed in a light favorable to the non-
movant, and all justifiable inferences are to be drawn in
the non-movant's favor. See Lloyd’s Food Products Inc. v.
Eli’s Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993);
Opryland USA Inc. v. Great American Music Show Inc., 970
F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
We find the absence of a genuine issue of material fact
as to opposer's standing and priority inasmuch as opposer
has submitted status and title copies of its pleaded
registrations. Applicant's arguments to the contrary
notwithstanding, applicant has not counterclaimed to cancel
any of the registrations relied upon by opposer; therefore,
priority is not an issue as to any of the registered marks.
See King Candy Co. v. Eunice King’s Kitchen, 496 F.2d 1400,
182 USPQ 108, 110 (CCPA 1974).
In addition, the undisputed evidence of record clearly
establishes opposer’s use and/or licensed use of its VIRGIN
(both standard character form and stylized) and VIRGIN-
formative marks prior to the filing date of the involved
application. Applicant’s argument that opposer lacks a
direct commercial interest because its licensees sell the
goods and services under the VIRGIN marks and because these
entities are not party-opposers is unavailing. A licensee’s
15
use inures to the benefit of opposer. Compuclean Marketing
and Design v. Berkshire Products Inc., 1 USPQ2d 1323, 1325
(TTAB 1986) (owner and licensor of a mark establishes the
commercial nexus for standing in a Board proceeding).
Turning to the issue of likelihood of confusion, we
are guided by the factors set forth in the case of In re E.
I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973). Our determination of likelihood of
confusion is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the
issue of likelihood of confusion, which would include the
similarity of the marks and the similarity of the goods.10
We turn first to the similarity of the marks.
Opposer’s VIRGIN (both standard character form and stylized)
and VIRGIN-formative11 marks are arbitrary and inherently
distinctive. The parties’ marks are similar in sound,
appearance and commercial impression in that both parties’
marks include the identical term VIRGIN.
We are not persuaded by applicant’s argument that the
marks are different by the addition of the word VISIONS to
applicant’s mark. Adding additional matter to a registered,

10 Our primary reviewing Court has held that only those du Pont
factors shown to be material or relevant in the particular case
and which have evidence submitted thereon are to be considered.
11 With regard to opposer’s VIRGIN-formative marks, those marks
are dominated by the term VIRGIN since they generally include a
descriptive term.

16
arbitrary mark does not mean that there is no likelihood of
confusion. See Wella Corp. v. California Concept Corp., 558
F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (“When one
incorporates the entire arbitrary mark of another into a
composite mark, inclusion in the composite mark of a
significant, nonsuggestive element will not necessarily
preclude a likelihood of confusion.”)
Moreover, VIRGIN is a conspicuous part of both
opposer’s and applicant's marks as the first word. Aluminum
Air Seal Mfg. Co. v. Trim-Set Corp., 208 F.2d 374, 100 USPQ
52, 54 (CCPA 1953). ("Both petitioner's mark and
respondent's mark have 'Trim' as the first word which would
be spoken in calling for the goods and as the first part of
the mark "Trim' obviously forms a conspicuous part thereof
and whether arbitrary, suggestive or descriptive cannot be
ignored.") (quoting Examiner-in-Chief's decision with
approval). See also Presto Products Inc. v. Nice-Pak
Products Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) ("Although
there are differences in appearance between the marks, there
are also similarities between them in that both start with
the term 'KID'”).
Thus, we have given greater weight to the word VIRGIN
in applicant's mark, because it is often the first part of a
mark that is most likely to be impressed upon the mind of a
purchaser and remembered, and we find that would be the case
17
here. This is particularly true when considering the
recollection of the average purchaser, who normally retains
a general, rather than a specific, impression of the many
trademarks encountered. That is, the purchaser's fallibility
of memory over a period of time must also be kept in mind.
See Spoon’s Restaurants Inc. v. Morrison Inc., 23 USPQ2d
1735, 1749 (TTAB 1991), aff'd unpub'd (Fed. Cir., June 5,
1992).
Accordingly, in considering the marks in their
entireties, we find that there is no genuine issue of
material fact that applicant's VIRGINVISIONS mark is similar
to opposer’s VIRGIN (both standard character form and
stylized) and VIRGIN-formative marks in sound, appearance
and meaning, and that the parties’ marks create similar
overall commercial impressions. Therefore, this factor
favors opposer.
We turn next to the similarity or dissimilarity of
opposer’s and applicant's goods.
Applicant has argued that there is no similarity
between the parties’ Class 9 goods. However, we find that
there is no genuine issue of material fact that opposer
provides similar and/or related Class 9 goods.
Opposer’s Class 9 registrations for VIRGIN (both
standard character form or stylized) include the goods “pre
recorded audio and video discs.” This wording is broad
18
enough to encompass computer screensavers provided on
various storage media. At the very least, opposer’s
prerecorded audio and video discs are closely related to
applicant’s computer screensavers provided on various
storage media. Therefore, we find that opposer’s Class 9
goods encompass or are at the very least related to
applicant’s computer screen savers.
Accordingly, we find that there is no genuine issue
that the parties’ goods are otherwise closely related items.
Thus, this du Pont factor weighs in favor of opposer.
With respect to the channels of trade, we note that
neither opposer’s Class 9 registrations nor the involved
application contains any restrictions as to trade channels.
Therefore, applicant’s assertions that “there are no similar
trade channels” because applicant’s product is not sold at
“Mega-stores”, “affiliate websites and Target, Best-Buy and
Walmart,” are not well taken. We must presume that
applicant’s goods are marketed in all the normal channels of
trade for the identified goods and to all the classes of
purchasers targeted by opposer. See Kangol Ltd. v.
KangaROOS U.S.A., 974 F.2d 161, 23 USPQ2d 1945, 1946 (Fed.
Cir. 1992). Therefore, we find that this factor also weighs
in opposer’s favor.
We also find that there is no genuine issue that
opposer’s mark is a strong mark in the marketplace. The
19
fame or strength of a mark is determined by a variety of
factors, including the length of time the mark has been in
use, the volume of sales under the mark and the extent of
advertising or promotion of the goods with which the mark is
used. Giant Food, Inc. v. Nation’s Foodservice, Inc., 710
F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). Therefore,
applicant’s argument that opposer cannot assert its sales,
advertising or length of use figures regarding other goods
and services under the VIRGIN (both standard character form
and stylized) and VIRGIN-formative marks is unavailing since
use of a mark on a wide variety of products is reflective of
and emphasizes the mark's strength. Kenner Parker Toys Inc.
v. Rose Art Industries Inc., 936 F.2d 350, 22 USPQ2d 1453,
1458 (Fed. Cir. 1992).
Opposer has used its VIRGIN marks continuously and
without interruption since 1970 in connection with a wide
variety of goods and services. Opposer and its licensees
promote VIRGIN branded goods and services in television
advertisements, radio advertisements, on the Internet, in
magazines and periodicals, in direct mailings, on billboards
and through its retail partners. (Declarations of Rossi,
Block, and Stohrer). The annual advertising budgets for its
licensees providing VIRGIN branded goods and services run to
millions of dollars including $3,000,000 (retail),
$11,000,000 (airline), $35,000,000 (wireless). (Declarations
20
of Block, Rossi and Stohrer). Sales of its licensed Virgin
goods and/or services include $235,000,000 in U.S. sales in
2003 for Virgin branded retail stores and $285,000,000 in
U.S. revenue from Virgin Atlantic Airways flights from May
2003 through February 2004. (Declarations of Block and
Rossi). Thus, the record shows that opposer's promotional
efforts have resulted in widespread awareness and
recognition of opposer’s VIRGIN marks. Similarly, opposer's
aggressive trademark enforcement activities reinforce the
strength of opposer's VIRGIN marks.
Therefore, we find that there is no genuine issue that
opposer's VIRGIN (both standard character form and stylized)
and VIRGIN-formative marks are well-known, strong marks and
are entitled to a broad scope of protection.
With regard to the sophistication of the purchasers, we
find that, applicant’s arguments notwithstanding, there is
no genuine issue that opposer's goods and services, as well
as applicant's goods, would be purchased by ordinary
consumers, and there is no evidence that the normal
purchasers of the parties' goods and services are especially
sophisticated or careful in making their purchasing
decisions.
We have considered all of applicant's arguments to the
contrary (including arguments not specifically addressed in
this opinion), but are not persuaded.
21
Accordingly, we find no genuine issue of material fact
regarding opposer’s standing, priority, or likelihood of
confusion between the parties’ marks.
In view thereof, opposer’s motion for summary judgment
is granted, the opposition is sustained, and registration to
applicant is refused.12

12 Having determined that opposer is entitled to prevail on the
ground of likelihood of confusion, we need not reach the issue of
dilution.