Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA788389
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`Filing date:
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`12/09/2016
`
`Proceeding
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`Party
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`Correspondence
`Address
`
`Submission
`
`Filer's Name
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`Filer's e-mail
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`Signature
`
`Date
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`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91228211
`
`Plaintiff
`MasterCard International Incorporated
`
`ROBERT M WASNOFSKI JR
`DORSEY & WHITNEY LLP
`51 WEST 52ND STREET
`NEW YORK, NY 10019-6119
`UNITED STATES
`ny.trademark@dorsey.com, wasnofski.robert@dorsey.com, os-
`owski.kaydi@dorsey.com
`Opposition/Response to Motion
`
`Robert M. Wasnofski, Jr.
`
`ny.trademark@dorsey.com, wasnofski.robert@dorsey.com, os-
`owski.kaydi@dorsey.com
`
`/rmw/
`
`12/09/2016
`
`Beartooth Opposition and Motion for Summary Judgment Brief.pdf(1879994
`bytes )
`Declaration of Colm J Dobbyn in Support of Motion Final.pdf(1163141 bytes )
`Exhibit A - FINAL2.pdf(4320159 bytes )
`Exhibit B - FINAL.pdf(719191 bytes )
`EXHIBIT C 2.pdf(2172352 bytes )
`MasterCard - Beartooth - Wasnofski Declaration FINAL.pdf(159744 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Mark:
`
`Applicant:
`Serial No.:
`
`Filed:
`Published in
`
`@
`
`Beartooth Radio, Inc.
`86/685,965
`
`July 7, 2015
`
`the Official Gazette: February 2, 2016
`
`Mark:
`Applicant:
`Serial No.:
`
`Filed:
`Published in
`
`R
`B
`Beartooth Radio, Inc.
`86/685,961
`
`H
`
`July 7, 2015
`
`the Official Gazette: February 2, 2016
`
`MASTERCARD INTERNATIONAL
`
`INCORPORATED,
`
`Opposer,
`
`Opposition No. 9122821 1
`
`V.
`
`BEARTOOTH RADIO, INC.
`
`Applicant.
`
`x
`
`OPPOSER’S OPPOSITION TO APPLICANT’S MOTION FOR SUMMARY
`
`AND OPPOSER’S CROSS-MOTION FOR SUMMARY JUDGMENT
`
`I.
`
`Introduction
`
`Opposer, Mastercard International Incorporated (“Opposer”), filed the instant opposition
`
`against the subject applications for the above-referenced marks in the name of Applicant,
`
`Beartooth Radio, Inc. (“Applicant”), on the grounds that the marks are likely to cause confusion
`
`

`

`with, and likely to dilute, Opposer’s famous “Interlocking Circles” device and variants thereof,
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`which have been used throughout the United States since the 1960’s.
`
`Shortly after the start of the discovery period and before seeking any discovery from
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`Opposer or responding to written discovery requests served by Opposer weeks earlier, Applicant
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`filed a motion for summary judgment on both of Opposer’s claims. In support of its motion,
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`Applicant submitted fewer than three pages of arguments and failed to provide any relevant
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`evidence in support of its motion.
`
`Opposer respectfully submits that Applicant failed to carry its burden of establishing the
`
`absence of any genuine issues of material fact that would preclude the Board from ruling in
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`Applicant’s favor on Opposer’s likelihood of confusion and likelihood of dilution claims.
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`Moreover, given the evidence of record, Opposer respectfully submits that there are no genuine
`
`issues of material fact to prevent the Board from concluding that Applicant’s marks are likely to
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`cause confusion with, and likely to dilute the distinctive quality of, Opposer’s famous
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`“Interlocking Circles” device. Opposer therefore requests that the Board grant Opposer’s cross
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`motion for summary judgment.
`
`II.
`
`Procedural History
`
`Opposer filed the notice of opposition herein on May 31, 2016. On September 6, 2016
`
`the parties held the required discovery conference, and on September 9, 2016 Opposer served its
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`initial disclosures, first set of interrogatories and first set of document requests. On October 7,
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`2016, days before its responses to Opposer’s discovery requests were due, and without first
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`seeking any discovery from Opposer whatsoever, Applicant filed its motion for summary
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`judgment. Declaration of Robert M. Wasnofski, Jr. fl 2.
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`

`

`III.
`
`Argument
`
`A.
`
`Legal Standard for Summary Judgment.
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`The party moving for summary judgment has the initial burden of demonstrating that
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`there is no genuine issue of material fact remaining for trial and that it is entitled to judgment as
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`a matter of law. See Fram Trak Industries Inc. v. WireTracks LLC, 77 U.S.P.Q.2d 2000, 2004
`
`(TTAB 2006) (citing Celotex Corp. v. Catrett, 477 US. 317 (1987); Sweats Fashions Inc. v.
`
`Pannill Knitting Co. Inc. , 833 F.2d 1560, 4 U.S.P.Q.2d 1793 (Fed. Cir. 1987)). A factual
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`dispute is genuine if, on the evidence of record, a reasonable fact finder could resolve the matter
`
`in favor of the non-moving party. See Opryland USA Inc. v. GreatAmerican Music Show Inc.,
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`970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992). The evidentiary record and all
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`justifiable inferences that may be drawn from the undisputed facts must be viewed in the light
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`most favorable to the nonmoving party. Id.
`
`B.
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`Likelihood of Confusion.
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`To prevail at summary judgment on a claim of likelihood of confusion, Opposer must
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`show there is no genuine issue of material fact that (i) Opposer has prior valid trademark rights,
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`and (ii) Applicant’s marks so resemble Opposer’s prior valid trademarks as to be likely, when
`
`used on or in connection with the goods or services covered by Applicant’s applications, to cause
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`confusion, or to cause mistake, or to deceive. 15 U.S.C. Sec. 1052(d). Applicant failed to put
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`forth any relevant evidence or argument to challenge Mastercard’s claim of likelihood of
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`confusion.
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`There can be no genuine issue of material fact regarding Mastercard’s priority in its
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`“Interlocking Circles” device. Mastercard owns many registrations and pending applications
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`covering its “Interlocking Circles” device, which have a priority date earlier than the filing date
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`

`

`of the two opposed applications. Declaration of Colm J. Dobbyn 11 17, Ex. C (“Dobbyn Decl.”).1
`
`See Brown Shoe Co. v. Robbins, 90 USPQ2d 1752, 1754 (TTAB 2009) (priority established by
`
`making pleaded registrations of record); Spirits International B. V. v. S. S. Tarts Zeytin Ve
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`Zeytinyagi Tarim Satis Kooperatifleri Birligi, 99 USPQ2d 1545, 1549 (TTAB 2011) (opposer
`
`may rely on its earlier-filed intent—to-use application filing date as a constructive use date for
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`purposes of priority). Moreover, Applicant did not put forth any arguments or evidence in
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`support of its motion challenging Mastercard’s priority.
`
`In determining whether there are any genuine disputes of material fact relating to the
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`issue of likelihood of confusion, the Board is guided by the factors set forth in In re E.I du Pont
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`de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Various factors may play a
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`dominant role, depending on the case. Id. As discussed further below, the following factors
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`weigh heavily in favor of a finding of likelihood of confusion: (1) the fame/strength of
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`Mastercard’s “Interlocking Circles” device; (2) the similarity in the parties’ respective goods and
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`services; (3) the similarity in the parties’ channels of trade and classes of purchasers; and (4) the
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`similarity of the parties’ respective marks. Shen Manufacturing Co. v. Ritz Hotel Ltd, 393 F.3d
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`1238, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004) ("Neither we nor the board, however, need
`
`consider every duPont factor"). Applicant loosely touched upon these factors, but misstated the
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`facts of record and sought to rely on irrelevant evidence.
`
`(1) Mastercard’s “Interlocking Circles” Device is Famous
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`It is well established that a mark’s strength is one of the most important factors to
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`consider in any likelihood of confusion discussion. Palm Bay Imports Inc. v. Veuve Clicquot
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`Ponsara’in Maison Fondee En I 772, 396 F.3d 1369, 73 USPQ2D 1689 (Fed. Cir. 2005). Indeed,
`
`I Opposer’s standing is established with respect to its likelihood of confusion and dilution claims by its ownership of
`U.S. trademark registrations and prior pending applications for its “Interlocking Circles” device. See,
`e. g., Cunningham v. Laser Golf Corp, 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000).
`
`4
`
`

`

`“[flamous marks are accorded more protection precisely because they are more likely to be
`
`remembered and associated in the public mind than a weaker mark. ” Kenner Parker Toys Inc. v.
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`Rose Arts Industries, Inc, 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992). A famous mark is
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`one “with extensive public recognition and renown.” Id; see also Palm Bay Imports, 73
`
`USPQ2d at 1694.
`
`Mastercard’s “Interlocking Circles” device is one of the most famous marks in the world.
`
`Since 1966, Mastercard or its predecessor has been in the payment card business and has used a
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`prominent two circle design, namely, the “Interlocking Circles” device, to identify its various
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`products and services. Dobbyn Decl. 112. Since that time, the “Interlocking Circles” device has
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`been used in connection with, inter alia, hardware, software and services used to enable
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`communication and the transmission of data, financial and otherwise. Id at 11 3.
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`Over the years, the “Interlocking Circles” device has been revised from time to time to
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`reflect a more contemporary look.
`
`Id. at 1111 2, 4-8. The “Interlocking Circles” device was last
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`Mastercard .
`
`modernized and revised in 2016 from
`
`I
`
`to: mafiercard’
`
`Id. at 11 8. Over the years,
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`including prior to July, 2015, Mastercard has made frequent use of variants of its “Interlocking
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`Circles” device, including those shown here:
`
`Id. at 11 9.
`
`(ED
`
`It would be an understatement to say that use of the “Interlocking Circles” device has
`
`been widespread. Billions upon billions of payment cards bearing Mastercard’s “Interlocking
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`Circles” device have been issued. Id. at 11 9. As of the start of 2015 , there were over 1.4 billion
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`MASTERCARD payment cards in circulation worldwide; more than 350,000,000 of which were
`
`in circulation in the United States. Id. at 11 10.
`
`

`

`Moreover, each retail establishment (including “brick and mortar” and online merchants),
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`ATM and cash advance location which accepts Mastercard’s payment cards has long been
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`required to post the MASTERCARD and “Interlocking Circles” device marks at the point of
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`sale. Id at 11 11. As of the start of 2015, Opposer’s MASTERCARD payment cards were
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`accepted at approximately 39 million locations, including ATMs, merchants and cash advance
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`locations. Id.
`
`As of 2015, and for years prior, trillions of dollars’ worth of purchases or cash advances
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`have been transacted annually using a payment card at the point of sale bearing Mastercard’s
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`famous “Interlocking Circles” device. During 2014, over $4 trillion of purchases and cash
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`advances were transacted. Id. at 11 12.
`
`Since Mastercard began using the “Interlocking Circles” device, it has expended
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`substantial amounts of time, money and effort to ensure that the public associates the
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`“Interlocking Circles” device exclusively with Mastercard. Id. at 11 13. Many tens of billions of
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`pieces of advertising, promotional literature and other collateral materials have issued bearing
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`the famous “Interlocking Circles” device. Id. at 11 9. Indeed, Mastercard has aggressively
`
`advertised, marketed and promoted the “Interlocking Circles” device and variants thereof in
`
`connection with its products and services through television, traditional print publications, direct
`
`mailings, collateral materials, on the internet, through social media, at popular sporting and
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`entertainment venues and events, and in other ways customary in the trade. For the years 2010
`
`to 2015, for example, Mastercard spent on average more than $800,000,000 per year on such
`
`efforts, totaling nearly $5 billion during those six years alone. And in years prior spent
`
`comparably significant sums. Id. at 11 13. Mastercard’s “Interlocking Circles” device has also
`
`

`

`been the subject of significant unsolicited media attention over the last nearly half century. Id. at
`
`11 15.
`
`Mastercard has also expended great effort and expense seeking trademark registrations
`
`for its “Interlocking Circles” device, and it owns many registrations and prior pending
`
`applications covering said device and variants thereof. Id. at fl 17, Exhibit C.
`
`Mastercard’s “Interlocking Circles” device has been recognized by Interbrand as one of
`
`the strongest brands in the world. In Interbrand’s “Best Global Brands” report for 2015,
`
`Mastercard was ranked in the top 100 brands in the world, coming in at number 76. Id. at 11 14,
`
`Exhibit B.
`
`Moreover, in a recent survey conducted shortly before its adoption of the current
`
`“Interlocking Circles” device (pictured below), 81% of survey participants spontaneously
`
`associated the unbranded “Interlocking Circles” device with Mastercard. Id. at 11 16.
`
`Based on the foregoing, there can be no genuine dispute that the “Interlocking Circles”
`
`device has become famous. See Schering—Plough HealthCare Products Inc. v. Ing—Jing Huang,
`
`84 USPQ2d 1323, 1326 (TTAB 2007) (mark found to be famous based on billions of dollars in
`
`total sales and hundreds of millions of dollars in advertising over eight year period); New York
`
`Yankees Partnership V. IET Products and Services, Inc., 114 USPQ2d 1497 (TTAB 2015). This
`
`factor weighs heavily in favor of a finding of likelihood of confusion.
`
`(a) The Third-Party Registrations Submitted by Applicant are Irrelevant.
`
`Applicant submitted a schedule of registered marks which allegedly include interlocking
`
`or overlapping circle designs in regards to various goods and services, suggesting that
`
`Mastercard’s mark is weak and entitled to a limited scope of protection. However, Applicant did
`
`not submit evidence that any of the third-party marks are in use. For the reasons set forth below,
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`

`

`the third-party registrations do not limit the scope of protection of Mastercard’s “Interlocking
`
`Circles” device in any way, nor support Applicant’s position that its marks are not confusingly
`
`similar to or dilutive of Mastercard’s famous “Interlocking Circles” device.
`
`As an initial matter, the existence of third-party registrations generally cannot justify the
`
`registration of another mark that is so similar to a previously registered mark as to create a
`
`likelihood of confusion, or to cause mistake, or to deceive. E. g., In re Max Capital Grp. Ltd, 93
`
`USPQ2d 1243, 1248 (TTAB 2010); In re Toshiba Med. Sys. Corp, 91 USPQ2d 1266, 1272
`
`(TTAB 2009).
`
`Moreover, third—party registrations do not prove that the marks covered thereby are in use
`
`or that the public is familiar with them. Therefore, the marks cited by Applicant are irrelevant to
`
`the issue of likelihood of confusion. Indeed, the Federal Circuit has made it clear that:
`
`The probative value of third—party trademarks depends entirely upon their usage. E. g.,
`Scarves by Vera, Inc. v. TOdo Imports, Ltd, 544 F.2d 1167, 1173 (2d Cir. 1976) (“The
`significance of third—party trademarks depends wholly upon their usage. Defendant
`introduced no evidence that these trademarks were actually used by third parties, that
`they were well promoted or that they were recognized by consumers”)... As this court
`has previously recognized where the “record includes no evidence about the extent of
`[third-party] uses
`[t]he probative value of this evidence is thus minimal.” Han Beauty,
`Inc. v. Alberto-Culver C0., 236 F.3d 1333, 1338 (Fed. Cir. 2001) (emphasis added).
`
`Palm Bay Imports Inc, 396 F.3d 1369, 1373-74,73 USPQ2d 1689, 1693.
`
`The cases sighted in Applicant’s motion in regards to the strength of Mastercard’s mark
`
`are misplaced. As expressly noted in Applicant’s motion (p. 2), both cases involved “extensive”
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`evidence of third-party “fl”. Since Applicant presented no evidence whatsoever of third-party
`
`use, the third-party registrations should not be given any weight.
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`Furthermore, even if the cited registrations are considered, they involve different
`
`goods/services or cover marks that are readily distinguishable from Mastercard’s famous
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`“Interlocking Circles” device, such that they are not relevant. Moreover, five (5) of the cited
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`

`

`registrations are based on international filings (66a or 446) rather than use.2 Twelve (12) of the
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`registrations expressly exclude goods or services closely related to those provided by
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`Mastercard.3 And two (2) of the registrations were cancelled as of the time Applicant filed its
`
`motion.4 Indeed, the cited-registrations should be ignored as irrelevant.
`
`(2) The Goods and Services are Legally Identical
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`Applicant’s goods and services are legally identical, at least in part, to goods and services
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`covered by Mastercard’s registrations and prior-pending applications. Moreover, any goods or
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`services which are not legally identical are nevertheless closely related, such that this factor
`
`heavily favors a finding of likelihood of confusion.
`
`It has long been settled that the nature and scope of a party’s goods or services must be
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`determined on the basis of the goods or services recited in the application or registration. See,
`
`e.g., Coach Servs., Inc. V. Triumph Learning LLC, 668 F.3d 1356, 1370, 101 USPQ2d 1713,
`
`1722 (Fed. Cir. 2012); Hewlett-Packard Co. v. Packard Press Inc, 281 F.3d 1261, 1267, 62
`
`USPQ2d 1001, 1004 (Fed. Cir. 2002). Where a registration or prior-pending application
`
`describes goods or services broadly, it is presumed that the registration encompasses all goods or
`
`services of the type described, that they move in all normal channels of trade, and that they are
`
`available to all classes of purchasers. See, e. g, In re Thor Tech, Inc, 90 USPQ2d 1634, 1638
`
`(TTAB 2009) ("We have no authority to read any restrictions or limitations into the registrant’s
`
`description of goods"). In such cases, an applicant does not avoid likelihood of confusion
`
`merely by more narrowly identifying its related goods. See, e. g., In re Linkvest S.A., 24 USPQ2d
`
`1716 (TTAB 1992) (where registrant’s goods are broadly identified as "computer programs
`
`2 See Reg. Nos. 4,619,047; 4,065,507; 4,081,952; 4,385,880; and 4,170,076.
`3 See Reg. Nos. 4,815,533; 4,619,047; 3,394,842; 4,655,507; 4,081,952; 4,376,589; 4,477,124; 4,336,903;
`4,000,879; 4,000,878; 4,095,252; and 4,374,307
`4 See Reg. Nos. 3,749,960 and 3,044,294.
`
`

`

`recorded on magnetic disks," without any limitation as to the kind of programs or the field of
`
`use, it must be assumed that registrant’s goods encompass all such computer programs, including
`
`computer programs of the type offered by applicant, that they travel in the same channels of
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`trade normal for such goods, and that they are available to all classes of prospective purchasers
`
`of those goods); In re Uncle Sam Chem. Co., 229 USPQ 233 (TTAB 1986). Similarly, there may
`
`be a likelihood of confusion where an applicant identifies its goods or services so broadly that
`
`the identification encompasses the goods or services identified in the registration or prior
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`pending application of a similar mark. See, e. g., In re Fiesta Palms LLC, 85 USPQ2d 1360
`
`(TTAB 2007). Conveniently, Applicant’s motion fails to address this long standing principal.
`
`As acknowledged by Applicant in its motion (p. 2-3), its goods and services consist of
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`“apparatus and software to enable communication” and “services for enabling and managing
`
`peer-to-peer and machine-to-machine communications.” Specifically, Applicant’s Class 9 goods
`
`broadly include, inter alia, the following:
`
`’1
`
`(K
`
`software for enabling private peer-
`“Apparatus for transmission ofcommunication;
`to-peer and machine-to-machine communications; ” “electronic communications systems
`comprised ofcomputer hardware and software for the transmission ofdata between two
`points; ” “wireless communication devices for voice, data, image and geo-location
`transmission; ” and “mobile radios”.
`
`Applicant’s Class 42 services broadly include, inter alia,:
`
`featuring software for enabling and
`“... application services provider (ASP) services
`managing simultaneous, multiple modes ofcommunication via computer networks,
`communication networks and the global information network;
`application services
`provider (ASP) services
`featuring software for enabling private peer-to-peer and
`machine-to-machine communications
`”
`
`Significantly, Applicant’s applications do not contain any restrictions as to channels of trade or
`
`customers.
`
`10
`
`

`

`Not surprisingly, Mastercard has many registrations and prior-pending applications for its
`
`famous “Interlocking Circles” device covering hardware, software and services used to enable
`
`communication and the transmission of data, as the heart of Mastercard’s business — since the
`
`1960’s - has involved the transmission of payment data via communication and computer
`
`networks. Dobbyn Decl. 1H] 3, 17, Ex. C. Without limitation, Mastercard’s prior filings for the
`
`“Interlocking Circles” device cover the following:
`
`
`Goods/Services
`App.No./
`
`Reg. No.
`
`RN:
`
`(Int'l Class: 09)
`2038134
`electronic data carriers in the form of magnetically encoded cards
`
`RN:
`
`(Int'l Class: 09)
`2168736
`electronic data carriers in the form of magnetically encoded cards
`
`SN:
`
`86091063
`
`(Int'l Class: 09)
`computer hardware and software for facilitating and administering...
`electronic processing and transmission of bill payment data...; computer
`software and hardware for the identification and authentication of near field
`
`
`(pdas)
`
`
`communication (nfc) devices and radio frequency identification (rfid) devices;
`computer software for the registration, transmission and reproduction of data
`including sound and images; computer hardware and software for facilitating
`payment transactions by electronic means over wireless networks, global
`computer networks and/or mobile telecommunications devices;
`software
`for secure data storage and retrieval and transmission of confidential customer
`information used by individuals, banking and financial institutions;
`downloadable computer programs and application software for mobile phones
`and other digital devices in the nature of tablet computers, digital readers and
`personal digital assistants that allow users to access coupons, vouchers, voucher
`codes, rebates, price-comparison information, product reviews, links to the retail
`websites of others, and discount information; electronic processing and
`transmission of bill payment data, cash disbursement, transaction authentication,
`routing, authorization and settlement services, fraud detection and control; point of
`sale transaction terminals and computer software for transmitting, displaying
`and storing transactions, identifications and financial information for use in the
`financial services, banking and telecommunications sectors; computer peripheral
`devices and electronic goods, namely, mobile telephones, mobile telephone
`handsets, tablet computers, digital readers and personal digital assistants
`
`RN:
`(lnt'l Class: 09)
`
`11
`
`

`

`
`
`Goods/Services
`App.No./
`
`Reg. No.
`__
`
`3835171
`
`SN:
`
`79064053
`
`blank magnetic data carriers; computer software for the development,
`maintenance and use of local and wide area computer networks, for facilitating
`payment transactions by electronic means and for secure data storage and retrieval
`and transmission of confidential customer information used by individuals,
`banking and financial institutions; electronic apparatus for recording,
`transmitting and reproducing data comprising sound and images; computer
`hardware and software for facilitating electronic payment transactions;
`computer software designed for use in the telecommunications, banking, finance
`and insurance industry; telecommunications equipment, namely, radio frequency
`identification devices, namely, transponders; point of sale transaction terminals
`and software for transmitting, displaying and storing transactions, identifications
`and financial information for use in the financial services, banking and
`telecommunications sectors; electronic data transmission using a global data
`processing network via the internet; telecommunication services for
`transmitting data from a data bank stored on computers or on the internet; data
`transmission using electronic image processing by means of a telephone link;
`providing access, for multiple users, to databases for a wide range of information in
`the financial services sector
`
`(Int’l Class: 42)
`computer services, namely, application service provider, namely, providing on-
`line electronic databases via a global computer network concerning secure
`communications, data encryption and decryption, local area network security and
`
`financial information data decryption
`
`SN:
`
`86090957
`
`(Int'l Class: 42)
`design, development, maintenance and update of computer hardware and
`application software for mobile digital devices; application software provider
`(asp) featuring software for receiving, transmitting and displaying vouchers,
`coupons, voucher codes, special offers, reviews, product information, price
`comparison information, links to websites, and receiving and transmitting data for
`the purchase of goods and services; application service provider featuring
`software for providing consumers with information regarding discounts, vouchers
`and special offers for the goods and services of others; application service
`provider services featuring social networking software; providing information
`relating to the design and development of computer hardware and computer
`
`
`
`software provided on—line from a global computer network or the internet SN:
`86090967
`
`(Int’l Class: 38)
`telecommunications services, namely, electronic transmission of data for payment
`services provided through wireless devices; electronic data transmission in the
`nature of machine readable code that is displayed on a mobile device display
`screen and transmitted over a global remote data processing network, via the
`internet; telecommunications services for the transmission, provision or display of
`information from a computer—stored data bank or via the internet in the field of
`
`12
`
`

`

`
`
`Goods/Services
`App.No./
`
`
`Reg. No.
`
`
`
`financial services; transmission of data through the use of electronic image
`
`
`processing by mobile telephone link
`
`— l
`SN:
`
`85886244
`
`(Int'l Class: 42)
`design, development, maintenance and update of computer hardware and
`application software for mobile digital devices; design, development, maintenance
`and update of downloadable computer programs and application software for
`mobile phones and other digital devices that allows users to access coupons,
`vouchers, voucher codes, rebates, price-comparison information, product reviews,
`links to the retail websites of others, and discount information; application
`software provider (asp) featuring software for receiving, transmitting and
`displaying vouchers, coupons, voucher codes, special offers, reviews, product
`information, price comparison information, links to websites, and receiving and
`transmitting data for the purchase of goods and services; application service
`provider featuring software for providing consumers with information regarding
`discounts, vouchers and special offers for the goods and services of others;
`application service provider services featuring social networking software;
`providing information relating to the design and development of computer
`hardware and computer software provided on-line from a global computer network
`or the internet;
`
`
`
` (Int'l Class: 38)
`
`SN:
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`85886253
`
`telecommunications services, namely, electronic transmission of data for payment
`services provided through wireless devices; electronic data transmission in the
`nature of machine readable code that is displayed on a mobile device display screen
`and transmitted over a global remote data processing network, via the internet;
`telecommunications services for the transmission, provision or display of
`information from a computer-stored data bank or via the internet in the field of
`financial services; transmission of data through the use of electronic image
`processing by mobile telephone link
`
`Without question, the goods and services covered by the parties’ respective trademark
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`filings are identical, at least in part, and otherwise closely related. Should the Board conclude
`
`that any of Applicant’s goods/services are not identical to Mastercard’s goods/services, it should
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`nevertheless find them to be at least closely related. Moreover, it is not necessary for an opposer
`
`to prove likelihood of confusion with respect to all goods/services set forth in the application.
`
`Fort James Operating C0. V. Royal Paper Converting Inc, 83 USPQ2d 1624, 1626 (TTAB
`
`2007).
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`The evidence of record clearly supports a finding that the parties’ goods and services are
`
`legally identical, at least in part, or otherwise closely related. Therefore, this factor also weighs
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`heavily in favor of a finding of likelihood of confusion.
`
`(3) The Channels of Trade and Classes of Customers Are the Same
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`Since the goods and services covered by Applicant’s applications and Mastercard’s prior
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`filings are legally identical at least in part, or at a minimum closely related, and the Applicant
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`applications and Mastercard’s prior filings contain no limitations as to consumers or trade
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`channels, it must be presumed that the channels of trade and classes of purchasers for the
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`identified goods/services are the same. "Absent restrictions in the application and registration,
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`goods and services are presumed to travel in the same channels of trade to the same class of
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`purchasers". Hewlett-Packard Co., 62 USPQ2d 1001, 1005 ; see also Genesco Inc. v. Martz, 66
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`USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in-part related nature of the
`
`parties’ goods, and the lack of any restrictions in the identifications thereof as to trade channels
`
`and purchasers, these clothing items could be offered and sold to the same classes of purchasers
`
`through the same channels of trade”); In re Smith and Mehafley, 31 USPQ2d 1531, 1532 (TTAB
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`1994) (“Because the goods are legally identical, they must be presumed to travel in the same
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`channels of trade, and be sold to the same class of purchasers”); Octocom Systems, Inc. v.
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`Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“[t]he
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`authority is legion that the question of registrability of an applicant’s mark must be decided on
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`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.” [citations omitted]).
`
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`Notwithstanding Applicant’s unsubstantiated conclusion to the contrary, the evidence of
`
`record clearly supports a finding that the channels of trade and class of customers for the
`
`identified goods and services are the same. Accordingly, this factor also weighs heavily in favor
`
`of a finding of likelihood of confusion.
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`(4) The Marks are Similar Especially in Light of the Fame of Mastercard’s Mark and
`the Legally Identical Goods/Services at Issue
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`The degree of similarity of the marks must also be considered. In considering this factor,
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`the Board should keep in mind that the more similar the goods at issue, the less similar the marks
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`need to be for the Board to find a likelihood of confusion. Century 21 Real Estate Corp. v.
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`Century Life ofAmerica, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992). This is especially
`
`true in the case of a famous mark, which enjoys a “wide bert ” of protection. See Kenner Parker
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`Toys Inc., 22 USPQ2d 1453, 1456.
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`The test is not whether the marks can be distinguished when subjected to a side-by-side
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`comparison, but rather whether the marks are sufficiently similar in terms of their overall
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`commercial impression so that confusion as to the source of the goods offered under the
`
`respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics
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`Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v.
`
`Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), afl’d unpublished, No. 92-1086 (Fed. Cir.
`
`June 5, 1992). The proper focus is on the recollection of the average customer, who retains a
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`general rather than specific impression of the marks. Winnebago Industries, Inc. v. Oliver &
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`Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190
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`USPQ 106, 108 (TTAB 1975).
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`The marks at issue are substantially similar. Indeed, like Opposer’s famous mark,
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`Applicant’s marks consist of a prominent interlocking circles device. Tellingly, Applicant
`
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`described the subject marks in Appln. Ser. Nos. 86685965 and 86685961 as consisting of “white
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`interlocking circles inside a black circle” and “the word "BEARTOOTH" with the letter "0's"
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`shown as interlocking circles,” respectively. Apparently recognizing that such argument could
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`not withstand scrutiny, other than simply alleging the marks have different stylizations,
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`Applicant does not attempt to provide a detai