Vtech Holdings Limitedv.Varian Semi-conductor Equipment Associates, Inc.

Trademark Trial and Appeal Board

Sep 21, 2007

No. 91156936 (T.T.A.B. Sep. 21, 2007)

Hearing: Mailed:
March 22, 2007 Sept. 21, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

VTech Holdings Limited
v.
Varian Semiconductor Equipment Associates, Inc.
_____

Opposition No. 91156936
to application Serial No. 76429802
filed on July 12, 2002
_____

Richard Eugene Dick of Greenberg Traurig, P.C. for VTech
Holdings Limited.

Michael Bevilacqua of Wilmer Cutler Pickering Hale & Dorr
LLP for Varian Semiconductor Equipment Associates, Inc.

______

Before Grendel, Rogers and Taylor, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

INTRODUCTION
Varian Semiconductor Equipment Associates, Inc.
(applicant) seeks registration on the Principal Register of
the mark VTECH (in standard character form) for services
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91156936
2
recited in the application as “conducting seminars in the
field of semiconductor manufacturing,” in Class 41.1
VTech Holdings Limited (opposer) has opposed
registration of applicant’s mark on the ground that the
mark, as applied to applicant’s services, so resembles
opposer’s previously-used and registered mark VTECH as to be
likely to cause confusion, to cause mistake, or to deceive.
Trademark Act Section 2(d), 15 U.S.C. §1052(d).2 Applicant
answered the notice of opposition by denying the salient
allegations thereof.
The case has been argued by both sides in their briefs,
and an oral hearing was held at which opposer’s counsel, but
not applicant’s, appeared and presented additional
arguments.
After careful consideration of the evidence of record
and all the parties’ arguments, and because we conclude that
opposer has failed to establish the existence of a

1 Serial No. 76429802, filed on July 12, 2002. The application
is based on applicant’s asserted bona fide intention to use the
mark in commerce. Trademark Act Section 1(b), 15 U.S.C.
§1051(b).

2 In the notice of opposition, opposer also alleged dilution as a
ground of opposition. However, opposer presented no evidence or
argument in support of this ground. In view of opposer’s failure
of proof on this pleaded ground of opposition, we dismiss the
opposition with prejudice as to such ground.
Opposition No. 91156936
3
likelihood of confusion, we dismiss the opposition.

EVIDENTIARY AND PLEADING ISSUES
Initially, certain evidentiary and pleading issues
require discussion.

Opposer’s Registrations At Issue.
In the notice of opposition filed on April 21, 2003,
opposer, in support of its Section 2(d) claim, alleged
ownership of a single registration, i.e., Reg. No. 2029481,
of the mark VTECH (in stylized lettering) for various goods
in Class 9. That registration was cancelled under Trademark
Act Section 8 on October 18, 2003. At trial, under its
notice of reliance, opposer did not submit a copy of the
pleaded (cancelled) registration, but submitted photocopies
of six other registrations, i.e., Reg. Nos., 2782574,
2743825, 2753372, 2743258, 1761498 and 1667461.
These six additional registrations were not pleaded in
the notice of opposition. However, applicant has not
objected to them on that ground, and in its brief has
treated them as being of record. In view thereof, we deem
the pleadings to be amended to include opposer’s claim of
ownership of the six additional registrations. We likewise
deem applicant’s answer to be amended to deny opposer’s
Opposition No. 91156936
4
claim of ownership of the additional registrations. See
Fed. R. Civ. P. 15(b).
The copies of the six registrations which opposer
submitted with its notice of reliance are not status and
title copies, and opposer presented no testimony or other
evidence otherwise establishing the status and title of the
registrations. In its brief on the case, opposer cited to
all seven of the registrations, including the cancelled ‘481
registration. In its brief, applicant stated that opposer
“owns” the seven registrations, but noted specifically that
the originally-pleaded ‘481 registration had been cancelled.
Applicant has treated the six existing registrations as
being properly of record. In these circumstances, and
despite opposer’s failure to comply with the requirements
for the submission of registrations as set forth in
Trademark Rule 2.122(d)(2), 37 C.F.R. §2.122(d)(2), we deem
applicant to have waived any objection and to have conceded
the status and title of the six additional registrations.3

Opposer’s Notice of Reliance.
On June, 30, 2005, the last day of its testimony period
as reset, opposer submitted thousands of pages of documents
by a notice of reliance under Trademark Rule 2.122(e), 37

3 The concession as to ownership is explicit. The concession as
to status is implicit in applicant’s differentiation of the one
cancelled registration from the others.
Opposition No. 91156936
5
C.F.R. §2.122(e).4 Opposer submitted no testimony or other
evidence at trial.
Broadly categorized, the documents submitted under the
notice of reliance include: (1) opposer’s own catalogs and
other promotional materials relating to its goods, as well
as third-party retailer catalogs in which opposer’s goods
appear; (2) opposer’s corporate annual and interim reports
for various years; (3) photographs of awards purportedly
received by opposer; (4) documents provided by applicant to
opposer during discovery; (5) several articles about and
mentions of opposer and its business in newspapers,
magazines and trade publications; (6) opposer’s pleaded
registrations; (7) file wrappers of opposer’s pleaded
registrations; and (8) documents from other TTAB proceedings
brought by opposer against third parties.
Prior to the commencement of its own testimony period,
applicant filed a motion to strike much of the material

4 We note generally that, in the context of this relatively
straightforward Section 2(d) case, opposer’s filing of thousands
of pages of documents clearly was excessive and unnecessary.
This is especially so with respect to the nearly one thousand
pages of opposer’s marketing materials, the nearly one thousand
pages of opposer’s corporate annual reports, and the nearly eight
hundred pages of the file wrappers of opposer’s pleaded
registrations.
Particularly in a time when such materials are easily stored as
image-based documents in electronic form and printed out at the
touch of a button, counsel may find it relatively easy to print
and submit numerous documents. Counsel, however, should exercise
discretion and restraint and submit at trial, for later
discussion in briefing the case, only representative documents
that are truly relevant and admissible, not all documents that
can be accessed and easily printed.
Opposition No. 91156936
6
submitted with opposer’s notice of reliance, on various
grounds. In response, opposer filed an amended notice of
reliance in which it withdrew certain of the documents
applicant had objected to. Applicant, in its reply brief in
support of the motion to strike, continued its objections to
certain documents submitted by opposer and not withdrawn.
Additionally, applicant expressly objected to opposer’s
notice of reliance in its entirety on the ground that “many
of the documents attempted to be placed in the record by the
Opposer are not the proper subject of a Notice of Reliance.
For whatever reason, Opposer has not taken any testimony in
this proceeding, and these documents are not self-
authenticating. Applicant will not raise that particular
objection with respect to each document and reserves the
right to raise that issue in its brief.” (Reply brief on
motion to strike, at 2.)
In an order issued October 6, 2005, the Board granted
applicant’s motion to strike as to certain of the specific
objections raised by applicant, and deferred ruling on
applicant’s remaining specific objections until final
hearing. The Board did not address applicant’s general
objection which was based on the impropriety of opposer’s
submission of many of the documents via notice of reliance.
In its appeal brief on the case, applicant maintained
all of its objections to opposer’s notice of reliance as set
Opposition No. 91156936
7
forth in its reply brief on the motion to strike. In
addition to maintaining its specific objections to specific
documents as to which the Board had deferred a ruling,
applicant maintained its more general objection that
“documents other than the Opposer’s registrations cannot be
used to prove the truth of the matter contained therein,
when submitted by Notice of Reliance without further
testimony, and should be stricken.” (Applicant’s brief, at
1.)
The reference in this statement to documents which
“cannot be used to prove the truth of the matter contained
therein” appears to confusingly commingle elements of a
hearsay objection with the “improper subject of notice of
reliance” objection. Notwithstanding this “hearsay”
language, and in view of applicant’s express contention that
the documents should be stricken because they are “submitted
by Notice of Reliance without further testimony,” we find
that applicant has sufficiently and properly maintained its
general objection to opposer’s notice of reliance evidence
on the ground that it is not the type of evidence which may
be submitted via notice of reliance. Nor do we deem
applicant’s maintenance, in the alternative, of its more
specific objections to certain documents, to be a waiver of
its general objection as to all of the documents on the
Opposition No. 91156936
8
ground that they are not properly the subject of a notice of
reliance.
We turn now to the merits of that objection, and
consider its application to the various categories of
documents opposer submitted via notice of reliance.5 As to
those documents which we find to be not properly of record
because they cannot be submitted via notice of reliance, we
need not and do not reach applicant’s alternative, more
specific objections (on the ground of hearsay, for example).
As to any of the documents which we find to be of a type
properly made of record by notice of reliance and as to
which applicant has made alternative, more specific
objections, we shall address those specific documents and
objections infra as necessary, in conjunction with our
discussion of any such evidence that bears on the underlying
merits of the case.

5 We need not and do not consider those documents which the Board
has already stricken by its October 6, 2005 order, or those
documents which opposer has specifically withdrawn in its
response to the original motion to strike or in its appeal brief.
However, among the documents withdrawn by opposer in its appeal
brief are several articles from Business Week magazine (OPP 6405-
6433). In its reply brief, opposer has attempted to retract its
withdrawal of these documents, contending that the withdrawal was
inadvertent and noting that these documents were specifically
cited to and relied on by opposer in the body of its main brief.
We shall deem these documents to be of record and shall consider
them for whatever probative value they deserve.

Opposition No. 91156936
9
The issue under Trademark Rule 2.122(e)6 is whether the
various documents submitted by opposer are “printed
publications” or “official records” which, because they are
self-authenticating, may be submitted by notice of reliance.
Documents which are not self-authenticating printed
publications or official records may not be made of record
by notice of reliance. We rule as follows:

(1) Opposer’s catalogs and promotional
materials, and third-party retailer catalogs and
advertisements in which opposer’s goods appear, are
not self-authenticating printed publications or
official records and may not be made of record by
notice of reliance. See, e.g., Hard Rock Café
Licensing Corp. v. Elsea, 48 USPQ2d 1400 (TTAB
1998); Glamorene Products Corp. v. Earl Grissmer
Co., 203 USPQ 1090 (TTAB 1979); Hunt-Wesson Foods,
Inc. v. Riceland Foods, Inc., 201 USPQ 881 (TTAB
1979); Andrea Radio Corp. v. Premium Import Co., 191
USPQ 232 (TTAB 1976); and Minnesota Mining &

6 Trademark Rule 2.122(e) provides as follows:

Printed publications and official records. Printed
publications, such as books and periodicals, available to
the general public in libraries or of general circulation
among members of the public or that segment of the public
which is relevant under an issue in a proceeding, and
official records, if the publication or official record is
competent evidence and relevant to an issue, may be
introduced in evidence by filing a notice of reliance on
the material being offered. The notice shall specify the
printed publication (including information sufficient to
identify the source and the date of the publication) or
the official record and the pages to be read; indicate
generally the relevance of the material being offered; and
be accompanied by the official record or a copy thereof
whose authenticity is established under the Federal Rules
of Evidence, or by the printed publication or a copy of
the relevant portion thereof. A copy of an official
record of the Patent and Trademark Office need not be
certified to be offered in evidence. The notice of
reliance shall be filed during the testimony period of the
party that files the notice.

Opposition No. 91156936
10
Manufacturing Co. v. Stryker Corp., 179 USPQ 433
(TTAB 1973). We sustain applicant’s objection to
all such documents and shall give them no
consideration.7

(2) Opposer’s corporate annual reports,
newsletters and other house publications are not
self-authenticating printed publications or official
records and may not be made of record by notice of
reliance. See, e.g., Midwest Plastic Fabricators
Inc. v. Underwriters Laboratories Inc., 12 USPQ2d
(TTAB 1989), aff’d, 906 F.2d 1568, 15 USPQ2d 1359
(Fed. Cir. 1990); Jeanne-Marc, Inc. v. Cluett,
Peabody & Co., 221 USPQ 58 (TTAB 1984); Logicon,
Inc. v. Logisticon, Inc., 205 USPQ 767 (TTAB 1980);
Andrea Radio Corp. v. Premium Import Co., supra;
Minnesota Mining & Manufacturing Co. v. Stryker
Corp., supra; and Litton Industries, Inc. v.
Litronix, Inc., 188 USPQ 407 (TTAB 1975). We
sustain applicant’s objection to all such documents
and shall give them no consideration.8

(3) The photographs of awards purportedly
awarded to opposer are not self-authenticating
printed publications or official records and may not
be made of record by notice of reliance. We sustain
applicant’s objection to all such documents and
shall give them no consideration.9

(4) The documents applicant produced to opposer
during discovery in response to opposer’s requests
for documents under Fed. R. Civ. P. 34 are not self-
authenticating printed publications or official
records and may not be made of record by notice of
reliance. Trademark Rule 2.120(j)(3)(ii), 37 C.F.R.
§2.120(j)(3)(ii). We sustain applicant’s objection

7 These documents include those numbered as OPP 100-1154, 3913-
3933, 6104-1411, 6132-6146, 6401.1-6401.2, 6523, and 6565-6575,
as well as any others which fall into this category of stricken
documents.

8 These documents include those numbered as OPP 3000-3961 and OPP
6100-6131, as well as any others which fall into this category of
stricken documents.

9 These documents include those numbered as OPP 1155-1158, as
well as any others which fall into this category of stricken
documents.

Opposition No. 91156936
11
to all such documents and shall give them no
consideration.10

(5) The copies of articles from newspapers,
magazines and trade publications submitted by
opposer are deemed to be printed publications and
thus are admissible via notice of reliance.11 We
shall consider these articles for whatever they may
show on their face, but not for the truth of the
matters asserted therein. See, e.g., Logicon, Inc.
v. Logisticon, Inc., supra; Otis Elevator Co. v.
Echlin Manufacturing Co., 187 USPQ 310 (TTAB 1975);
and Exxon Corp. v. Fill-R-Up Systems, Inc., 182 USPQ
443 (TTAB 1974).

(6) The copies of opposer’s pleaded
registrations are official records properly made of
record via notice of reliance, and shall be
considered. (See discussion regarding these
registrations, supra.)12

(7) The file wrappers and assignment records of
opposer’s pleaded registrations, to the extent that
they are comprised of copies of documents obtained
from the Office’s official records and are not
merely copies of documents from opposer’s own files
(see Hard Rock Café International (USA) Inc. v.
Elsea, 56 USPQ2d 1504 (TTAB 2000); Osage Oil &
Transportation, Inc. v. Standard Oil Co., 226 USPQ
905 (TTAB 1985)), are admissible via notice of
reliance and shall be considered.13

(8) The documents from previous TTAB
proceedings involving opposer, to the extent that

10 These documents include those numbered as VN 00001-00081, as
well as any others which fall into this category of stricken
documents.

11 These documents include those numbered as OPP 1162-1184 (The
Toy Book); OPP 1185-1187 (Chicago Sun-Times); OPP 6405-6433
(BusinessWeek); and OPP 6214-6339 and OPP 6434-6503 (various
electronics industry publications, including Electronic
Business). In its appeal brief, opposer withdrew reliance on
other articles (including online versions of some of the print
articles noted above) submitted as OPP 6145-6213.

12 These documents are numbered OPP 2788-2799.

13 These documents are numbered OPP 2000-2787.

Opposition No. 91156936
12
they are comprised of copies of documents obtained
from the Office’s official records and are not
merely copies of documents from opposer’s own files
(see Hard Rock Café International (USA) Inc. v.
Elsea, supra; Osage Oil & Transportation, Inc. v.
Standard Oil Co. supra), are admissible via notice
of reliance and shall be considered.14

With respect to the documents as to which we have
sustained applicant’s objection (categories (1)-(4) above),
we note that even if we had considered these documents, they
would not have changed our decision on opposer’s Section
2(d) claim.

THE MERITS
Opposer’s Registrations Summarized.
We turn now to the merits of the case. As discussed
above, we deem opposer’s six registrations to be properly of
record and find that the evidence of record is sufficient to
establish that the registrations are in force and are owned
by opposer. These registrations are summarized as follows:
- Registration No. 2782574, which is of the mark VTECH
(in stylized form) for a variety of Class 9 goods broadly
categorized as telecommunications products such as
telephones and answering machines; computers, computer
peripherals and computer software products (including
software for children’s educational toys and learning aids);

14 These documents are numbered OPP 5000-5188.

Opposition No. 91156936
13
and consumer electronics products such as digital cameras,
personal digital assistants, and products used for recording
and reproducing images and sounds;15
- Registration No. 2743258, which is of the mark VTECH
(in a different stylized form) for substantially the same
goods as those identified in the ‘574 registration outlined
above;
- Registration No. 1667461, which is of the mark VTECH
(in standard character form) for Class 9 goods identified as
“computers; calculators; computer programs for disk

15 In its entirety, the identification of goods in this ‘574
registration reads as follows:

telecommunications apparatus and instruments, namely
telephones, videophones; telephone answering machines;
computing apparatus and instruments, namely, computers,
computer monitors, and computer keyboards; computer
programs recorded on magnetic or optical media for use
in educating children, for use in transmitting and
receiving text, sound and images via a global computer
network, and for use in operating systems, education,
computer games, and handheld personal organizers;
computer peripherals, namely, printers, disk drives,
memory modules and interface modules; video cards, audio
cards, mouse trackballs and joysticks; computer game
software; video game machines and toys adapted for use
with television receivers, namely, instructional and
teaching apparatus in the form of computer controlled
educational and instructional toys and activity centers
for children, namely electronic educational game
machines for children; electronic computer learning aids
comprising electronic sound producing computers;
apparatus for recording, transmission or reproduction of
sound or images, namely, digital cameras, digital video
recorders, personal digital assistants, personal digital
assistant computers, sound amplifiers, audio players and
recorders, compact disc players and recorders, digital
video line players and recorders, radios, televisions,
audio receivers, video cameras, photographic cameras,
video monitors; apparatus for receiving video signals
transmitted from satellites; antennas and decoders;
parts and fittings for all the aforesaid goods.
Opposition No. 91156936
14
operating systems; voice synthesis cartridges; mouse input
devices; touch tablet input devices; and voltage adaptors”;
- Registration No. 1761498, which is of the mark VTECH
(in standard character form) for Class 28 goods identified
as “electronic learning aids; namely, electronic educational
games for the teaching of children; hand-held electronic
games; electronic sound-making activity toys and games;
electronic table-top games; and electronic playsets; dolls,
toy vehicles; electronic musical toys; toy microphones”;
- Registration No. 2743825, which is of the mark VTECH
(in stylized form) for Class 28 goods identified as “toys
and games, namely, children’s multiple activity toys;
electronic educational game machines for children; musical
toys; electronic table top games; hand-held unit for playing
electronic toys and games; construction toys; stuffed toys,
crib toys; bath toys; dolls and doll accessories; play mats;
water toys, namely, toys that float, squirt or carry water;”
and
- Registration No. 2753372, which is of the mark VTECH
(in a different stylized form) for Class 28 goods which are
essentially the same as those identified in the ‘825
registration outlined above.

Opposition No. 91156936
15
Standing.
Because applicant has conceded the ownership and status
of opposer’s registrations, we find that opposer has
established its standing to oppose registration of
applicant’s mark. See Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982); see
also Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842 (Fed. Cir. 2000).

Section 2(d) Priority.
Because opposer’s pleaded registrations are of record,
Section 2(d) priority is not an issue in this case as to the
marks and goods covered by said registrations. See King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974). Opposer has argued, and we will
assume that opposer has proven, that it also has prior
common law rights in its VTECH mark

in association with its contract manufacturing
services which involve the manufacture of products
for OEM (Original Equipment Manufacturers)
customers. Opposer’s design and engineering
services are typically provided as part of
Opposer’s contract manufacturing business.
Products produced [by] the VTECH contract
manufacturing division include phones, multi-media
communication products, television set top boxes,
audio equipment, switching mode power supplies,
home appliances and wireless products.

(Opposer’s main brief at 2-3.)
Opposition No. 91156936
16

Likelihood of Confusion.
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue (the du Pont factors). See In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005); In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
We find that applicant’s mark VTECH is identical to
opposer’s VTECH mark in terms of appearance, sound,
connotation and overall commercial impression. The first du
Pont factor weighs in favor of a finding of likelihood of
confusion.
Under the second du Pont factor, we consider the
similarity or dissimilarity of the parties’ respective goods
and/or services. It is settled that it is not necessary
that the goods and/or services be identical or even
competitive in order to support a finding of likelihood of
confusion. That is, the issue is not whether consumers
would confuse the goods and/or services themselves, but
Opposition No. 91156936
17
rather whether they would be confused as to the source of
the goods and/or services. See In re Rexel Inc., 223 USPQ
830 (TTAB 1984). It is sufficient that the goods and/or
services be related in some manner, or that the
circumstances surrounding their use be such that they would
be likely to be encountered by the same persons in
situations that would give rise, because of the marks used
thereon, to a mistaken belief that they originate from or
are in some way associated with the same source or that
there is an association or connection between the sources of
the respective goods and/or services. See In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991); and In re International Telephone & Telegraph Corp.,
197 USPQ 910 (TTAB 1978). Finally, in cases such as this
where the applicant’s mark is identical to the opposer’s
mark, there need be only a viable relationship between the
respective goods and/or services in order to find that a
likelihood of confusion exists. See In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re Opus
One Inc., 60 USPQ2d 1812 (TTAB 2001); and In re Concordia
International Forwarding Corp., 222 USPQ 355 (TTAB 1983).
We find that even under the less rigorous “viable
relationship” standard applied in cases where the parties’
marks are identical, in this case applicant’s services are
Opposition No. 91156936
18
dissimilar and unrelated to opposer’s goods and services,
for purposes of the second du Pont factor.
We first consider applicant’s services as compared to
opposer’s goods. Applicant’s services are recited in the
application as “conducting seminars in the field of
semiconductor manufacturing.” Opposer’s goods, as
identified in opposer’s registrations, are consumer
electronics products and devices, including telephone
products, computer hardware and software products, and
children’s electronic educational products. We find that
opposer’s consumer electronics products and devices, on
their face, are dissimilar to applicant’s “conducting
seminars in the field of semiconductor manufacturing.”
Opposer argues, however, that opposer’s goods and
applicant’s services are related because they both involve
semiconductors. Opposer contends that most if not all of
its electronics products use, incorporate or are controlled
by semiconductors, a contention that we will assume is true
for purposes of this decision. However, we cannot agree
with opposer’s further contention that because its
electronics products and devices use or incorporate
semiconductors, opposer itself is “in the semiconductor
industry” (reply brief at 12). Nor can we agree with
opposer’s contention that because the products and devices
identified in opposer’s registrations incorporate
Opposition No. 91156936
19
semiconductors, “each of the Registrations inherently
incorporates semiconductors in their respective
identification of goods” (main brief at 5), or that the
registrations therefore “include semiconductors within their
scope of protection” (main brief at 7). Nothing in the
record establishes or even suggests that opposer is in the
business of manufacturing or marketing semiconductors per
se, or that relevant consumers would be likely to assume
such a fact merely because opposer’s products and devices
(like the products of many if not all other electronics
products companies) incorporate or utilize semiconductors.
In short, opposer’s goods are consumer electronics
products, and applicant’s services are conducting seminars
in the field of semiconductor manufacturing. The mere fact
that opposer’s goods incorporate semiconductors does not
suffice to make opposer’s goods similar or related to
applicant’s services, for purposes of the second du Pont
factor.
We turn next to opposer’s contention that its services,
i.e., its contract manufacturing services (and associated
design and engineering services) rendered to OEM customers,
are similar and related to applicant’s semiconductor
manufacturing seminar services, for purposes of the second
du Pont factor. In its brief, opposer asserts that its
services involve the manufacture or production by opposer,
Opposition No. 91156936
20
at the request of its OEM customers, of electronics products
opposer identifies as “phones, multi-media communication
products, television set top boxes, audio equipment,
switching mode power supplies, home appliances and wireless
products.” (Main brief at 2-3.)
Again, opposer is not in the semiconductor industry; it
neither manufactures nor markets semiconductors, per se.
The record does not support a finding that any relevant
purchaser would be likely to assume that opposer’s contract
manufacturing services are related to applicant’s
semiconductor manufacturing seminars merely because the
products opposer manufactures for its OEM customers include
or incorporate semiconductors. This sole point of
commonality between the respective services is far too
tenuous to establish that the services are similar or
related for purposes of the second du Pont factor.
Additionally, we find opposer’s “natural expansion”
argument to be unpersuasive. Opposer contends that relevant
purchasers would assume, upon encountering applicant’s
semiconductor manufacturing seminar services, that opposer,
in the natural course of the expansion of its business, has
entered the semiconductor manufacturing seminar business.
Opposer points out that applicant itself has expanded or
intends to expand from its primary business of manufacturing
semiconductors into the new and related business of
Opposition No. 91156936
21
conducting seminars in the field of semiconductor
manufacturing. The obvious flaw in opposer’s argument is
that unlike applicant, opposer is not in the business of
manufacturing semiconductors. Opposer is in the business of
manufacturing and marketing consumer electronics products.
The mere fact that opposer’s products incorporate
semiconductors is not likely to lead anyone to believe that
opposer has expanded from the consumer electronics
manufacturing business into the semiconductor manufacturing
seminar business. Moreover, opposer has presented no
evidence that any other consumer electronics products
manufacturer has expanded into the business of conducting
seminars in the field of semiconductor manufacturing, much
less evidence showing that such expansions are so common
that relevant purchasers would naturally expect or assume
that opposer has made such an expansion.
In short, we find that opposer’s goods and services are
dissimilar and unrelated to the services recited in
applicant’s application. The second du Pont factor weighs
against a finding of likelihood of confusion.
Under the third du Pont factor, we consider the
similarity or dissimilarity of the trade channels for the
parties’ respective goods and services, and, relatedly, the
similarity or dissimilarity of the classes of purchasers of
the respective goods and services.
Opposition No. 91156936
22
As opposer itself contends, applicant’s seminar
services are marketed to semiconductor manufacturers and are
rendered at semiconductor industry trade shows. Opposer’s
consumer electronics goods are marketed to ordinary
consumers in ordinary retail trade channels, and its
contract manufacturing services are marketed to OEM
manufacturers in trade channels which are normal for such
services. There is no evidence to support a finding that
there is any overlap in the trade channels in which
applicant’s and opposer’s respective goods and services are
marketed, or that the classes of purchasers for the
respective goods overlap.
Opposer argues that “Applicant’s services are directed
to the very class of consumers (semiconductor manufacturers)
who sell semiconductors to Opposer. Such companies are
likely to deal with both Opposer and Applicant and,
therefore, are highly susceptible to confusion.” (Opposer’s
brief at 13.) Similarly, opposer argues that applicant’s
services are marketed to semiconductor manufacturers, the
same manufacturers who “manufacture and solicit the sale of
microprocessors to Opposer. Thus, such companies are likely
to deal with both Opposer and Applicant.” (Opposer’s brief
at 15.)
This argument is wholly unpersuasive. On its face, it
acknowledges that semiconductor manufacturers, the
Opposition No. 91156936
23
purchasers of applicant’s seminar services, are opposer’s
vendors or suppliers, not opposer’s customers or potential
customers. Opposer does not market its goods and services
to the semiconductor manufacturers who are the purchasers of
applicant’s services, but rather to ordinary consumers and
to OEM manufacturers. In direct contrast, applicant does
not market its services to the ordinary consumers and OEM
manufacturers who are the purchasers of opposer’s goods and
services, but rather to semiconductor manufacturers. Simply
put, the parties market their respective goods and services
to different purchasers, in different marketing channels.
The fact that a semiconductor manufacturer is likely to
“deal with” both opposer (as a semiconductor vendor) and
applicant (as a seminar customer) is far too tenuous to
support a finding, under the third du Pont factor, that the
parties’ respective goods and services are likely to be
encountered by the same purchasers in circumstances that
would give rise to a likelihood of confusion. We find that
the third du Pont factor weighs against a finding of
likelihood of confusion.
The fourth du Pont factor requires us to consider the
conditions of purchase, including the sophistication of
purchasers. We find that the semiconductor manufacturers to
whom applicant markets and renders its seminar services are
sophisticated and knowledgable purchasers, a fact which
Opposition No. 91156936
24
diminishes any likelihood of confusion. Opposer concedes
that semiconductor manufacturers are knowledgable and
sophisticated, but then goes on to contend that this
knowledge and sophistication on the part of applicant’s
purchasers actually weighs in favor of a finding of
likelihood of confusion. Opposer argues that applicant’s
purchasers are in fact so knowledgable about the electronics
industry that they are likely to know that opposer markets
its electronics goods and services under the VTECH mark.
This argument, though somewhat novel, is unpersuasive. Even
assuming that semiconductor manufacturers are aware of
opposer and its VTECH products and services, such awareness
does not mean that they are likely to assume that opposer is
the source of or affiliated with applicant’s completely
unrelated and dissimilar semiconductor manufacturing seminar
services. We find that the fourth du Pont factor weighs
against a finding of likelihood of confusion.
The fifth du Pont factor requires consideration of the
fame of opposer’s mark. We find that the evidence of record
fails to establish that opposer’s mark is famous. There is
no competent evidence showing opposer’s revenues or
promotional expenditures in connection with its mark. The
fact that opposer has been the subject of a few articles in
the press over the years does not suffice to establish that
opposer’s mark is famous. Opposer argues that it has
Opposition No. 91156936
25
consistently policed its mark in litigation before the
Board, and that such policing is evidence of the fame of its
mark. We disagree. Opposer’s apparently vigorous policing
of its mark in other proceedings before the Board might be
proof of opposer’s litigiousness, or of the unwillingness of
the defendants in those cases to undergo the expense of
defending opposer’s actions, but we cannot conclude that it
is evidence of the fame of opposer’s mark. We find that the
fifth du Pont factor is neutral in this case.
To the extent that there is any evidence at all in the
record pertaining to the remaining du Pont factors, we find
those factors to be neutral in this case, not weighing
significantly in either party’s favor in our likelihood of
confusion analysis.
Upon balancing all of the du Pont factors for which
there is evidence in the record, we conclude without any
doubts that there is no likelihood of confusion. The
parties’ marks are identical, which means that there need be
only a viable relationship between the parties’ respective
goods and/or services to support a finding of likelihood of
confusion. However, we find that the evidence of record
fails to establish that even such a viable relationship
exists.
Essentially, opposer’s argument boils down to the fact
that the parties’ respective goods and services both involve
Opposition No. 91156936
26
semiconductors in some manner. Even assuming that is true,
the fact that opposer’s electronics products incorporate
semiconductors does not suffice to make opposer’s products,
or opposer’s contract manufacturing of such products,
similar or related to applicant’s seminar services in the
field of semiconductor manufacturing. Likewise, the
parties’ customers and trade channels are completely
dissimilar. The fact that semiconductor manufacturers (the
relevant class of purchasers in this case, according to
opposer) are at the same time both customers of applicant’s
semiconductor seminar services and suppliers or vendors of
semiconductors to opposer does not suffice to establish a
finding of likelihood of confusion. On this record, opposer
does not manufacture or market semiconductors, much less
conduct seminars about semiconductor manufacturing. Nor
does opposer market any goods or services to semiconductor
manufacturers. There is no basis in the record for
concluding that semiconductor manufacturers, or anyone else,
are likely to mistakenly assume that a source or other
connection exists between opposer and applicant merely
because both parties’ goods and/or services might be said to
have something to do with a product as ubiquitous as
semiconductors.
“We are not concerned with mere theoretical
possibilities of confusion, deception, or mistake or with de
Opposition No. 91156936
27
minimis situations but with the practicalities of the
commercial world, with which the trademark laws deal.”
Electronic Design & Sales Inc. v. Electronic Data Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992).
In this case, we find that the likelihood of confusion
alleged by opposer is so tenuous and hypothetical that it
cannot suffice to preclude registration of applicant’s mark.

Decision: The opposition is dismissed.