Wednesday, October 17, 2007

TTAB Dismisses "VTECH" 2(d) Opposition for Failure to Show Relatedness of Semiconductor Seminars and Electronic Devices

In a proceeding that was not a model of procedural propriety, the Board dismissed a Section 2(d) opposition to registration of the mark VTECH for "conducting seminars in the field of semiconductor manufacturing," finding the mark not likely to cause confusion with the identical mark registered for telecommunications products, computers, electronic learning aids, toys, and games, and previously used for contract manufacturing services. Opposer failed to establish a viable relationship between its goods/services and Applicant's services, leading the Board to conclude that "the likelihood of confusion alleged by opposer is so tenuous and hypothetical that it cannot suffice to preclude registration of applicant's mark." VTech Holdings Ltd. v. Varian Semiconductor Eqpt. Assoc., Inc., Opposition No. 91156936 (September 21, 2007) [not precedential].

Applicant Varian got off on the wrong foot when it failed to object to Opposer's submission of photocopies of its six registrations, rather than status-and-title copies. [TTABlog note: under the rule now in effect, status-and-title copies are not required; printouts from the TARR and assignment databases are sufficient. See Rule 2.122(d)(1)]. Varian did, however, successfully challenge a passel of documents that Opposer improperly attempted to submit by way of Notice of Reliance: including Opposer's own catalogs, its annual reports and newsletters, photographs of awards, and documents produced by Varian during discovery. None of those documents are self-authenticating.

Turning to the merits of the controversy, the Board found that "even under the less rigorous 'viable relationship' standard applied in cases where the parties' marks are identical," Varian's services are "dissimilar and unrelated to" Opposer's goods and services. Opposer feebly argued that its goods and Varian's services "are related because they both involve semiconductors." Not sufficient, said the Board.

Likewise as to Opposer's manufacturing services, which are directed to electronic products, the Board observed that Opposer is not in the semiconductor industry and neither manufactures nor markets semiconductors. Again, the mere fact that Opposer manufactures products that include semiconductors does not establish that its services are related to those of Varian.

Opposer tried a "natural expansion" argument, insisting that purchasers would assume that it had entered into the semiconductor manufacturing seminar business, but that argument also flopped. Opposer failed to present any evidence that any other consumer electronics product manufacturer has expanded into the semiconductor seminar field. [TTABlog note: compare this "natural expansion" ruling to last year's questionable Board decision in Bose Corp. v. ONG Corp., Opposition No. 91162058 (September 29, 2006) [not precedential]. (TTABlogged here).]

The Board also found the relevant purchasers to be sophisticated and knowledgable, and the respective channels of trade and classes of purchasers to be different. Opposer's fame argument failed for lack of supporting evidence, even of Opposer's revenues and promotional expenditures.

In short, the Board dismissed the opposition, pointing out that "[e]ssentially, opposer's argument boils down to the fact that the parties' respective goods and services both involve semiconductors in some manner.

"There is no basis in the record for concluding that semiconductor manufacturers, or anyone else, are likely to mistakenly assume that a source or 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."

Text Copyright John L. Welch 2007.


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