Monday, September 10, 2007

Precedential No. 54: TTAB Finds "VTUNES.NET" Confusingly Similar to Famous "ITUNES" Mark, Enters Judgment Summarily

The fame of the ITUNES and ITUNES MUSIC STORE marks carried Opposer Apple to an easy victory in its opposition to registration of the mark VTUNES.NET for "digital music video internet downloads for entertainment purposes." The Board found no genuine issue of material fact that would preclude the granting of summary judgment to Apple on its Section 2(d) claim. Apple Computer v., Inc., Opposition No. 91168875 (August 28, 2007) [precedential].

Applicant conceded that VTUNES is the dominant part of its mark, that "v" stands for "video," that ".net" is a generic TLD, that the parties goods/services are competitive and similar in that they both offer music video downloads, that both parties use the Internet to market their services, and that Opposer's marks are famous.

The core issue, then, was the similarity or dissimilarity of the marks. The Board perceptively noted that the dominant portions, VTUNES and ITUNES, differ by only a single letter, which is "insufficient" to distinguish them. Moreover, despite the addition of ".net" to Applicant's mark, "the similarities between the parties' marks are greater than the differences."

Applicant argued that there was no actual confusion, and that its adopted its mark in good faith, but the Board pointed out that actual confusion is not a prerequisite for finding likelihood of confusion, and good faith does not mean that confusion is less likely.

The Board therefore sustained the opposition.

TTABlog comment: File this, along with Friday's SEATOX case, under "Fame is the Name of the Game."

Text Copyright John L. Welch 2007.


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