`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91-125729
`
`)
`)
`
`) )
`
`) )
`
`) )
`
`VIRGIN ENTERPRISES LIMITED,
`,
`
`Opposer,
`
`v.
`
`ENRIQUE RODRIGUEZ,
`
`)
`Applicant.
`_______:_________)
`
`APPLICANT’S RESPONSE TO MOTION FOR SUMMARY JUDGMENT
`
`COMES NOW the Applicant, Enrique Rodriguez (hereinafter “Applicant” or
`
`Rodriguez”), pro se, and hereby responds to Opposer’s Motion for Summary Judgment.
`
`Applicant moves the Board to deny Opposer’s Motion, and in support of its argument
`
`states the following:
`
`STATEMENT OF FACTS
`
`Applicant, on August 22, 2000, filed an application in the United States Patent
`
`and Trademark Office to register the mark VIRGINVISIONS for use with “computer
`
`screen savers recorded on various data storage media, sold as a unit with a mailer usable
`
`as
`
`a
`
`postcard.” The
`
`trade
`
`name
`
`application
`
`submitted
`
`by
`
`the Applicant,
`
`VIRGINVISIONS, pertains to a product created by the Applicant, specifically a
`
`screensaver postcard. See Affidavit of Enrique Rodriguez and his Application attached
`
`hereto as Exhibit 1. The product and the concept are unique and the Applicant coined the
`
`name VIRGINVISIONS, the product concept, created the product and commenced to
`
`market and sell it in May, 2000. E, The product is sold in tourist destinations that
`
`correspond with the images contained on the screensaver and is marketed to tourist as an
`
`
`
`01-21-2005
`
`U.S. Patents. TMOfc/TM Mail F1CDIDt. #74
`
`
`
`Applicant’s Opposition to the Motion for Summary Judgment
`Page 2
`
`alternative to purchasing a postcard with a single image that corresponds with an image
`
`in the geographic area that the tourist is visiting.
`
`I_d_. The product is addressed by the
`
`purchaser and mailed to his/her friend or family or kept by the purchaser as a keepsake of
`
`their vacation. Li. If the product is mailed the recipient of the screensaver postcard then
`
`has the option of loading the CD into their computer and photographic images of the
`
`geographic location visited by the purchaser will come up on their computer screen as
`
`would a normal screensaver. 1g, The product is not a downloadable screensaver, which
`
`can be downloaded off the Internet. Li. Rather, the product is a postcard that contains a
`
`CD inside of it. Li.
`
`STANDARD OF REVIEW
`
`Entry of summary judgment is proper if the pleadings, depositions, answers to
`
`interrogatories, and admissions on file, together with the affidavits, if any, show that
`
`there is no genuine issue as to any material fact and that the moving party is entitled to a
`
`judgment as a matter of law. Fed. R. Civ. P. 56(c). See Celotex Corp. v. Catrett, 477 U.S.
`
`317 (1986). Summary judgment is precluded if a disputed fact exists which might affect
`
`the outcome of the suit under the controlling substantive law. Anderson v. Liberty
`
`Lobby, Inc., 477 U.S. 242, 248 (1986). A dispute regarding a material fact is genuine “if
`
`the evidence is such that a reasonable jury could return a verdict for the nonmoving
`
`party.” Li. The standard for summary judgment will be the same for cases where the
`
`judge sits as the finder of fact. Healy V. New York Life Ins. Co., 860 F.2d 1209, 1219
`
`n.3 (3d Cir. 1988).
`
`The moving party has the initial burden of demonstrating that no genuine issue of
`
`material fact exists. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986), Copelands’
`
`
`
`Applicant’s Opposition to the Motion for Summary Judgment
`Page 3
`
`Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991). Once
`
`the moving party has satisfied this requirement, the burden shifts to the nonmoving party
`
`to present evidence that there is a genuine issue for trial.
`
`ld_. At 324; Fed. R. Civ. P.
`
`56(e). Any inference to be drawn from facts contained in depositions and exhibits must
`
`
`be viewed in the light most favorable to the non-moving party. United States v. Diebold
`
`Inc., 369 U.S. 654, 655 (1962).
`
`In deciding a motion for summary judgment, the judge’s
`
`function is not to weigh the evidence and determine the truth of the matter, but rather to
`
`determine if there is a genuine issue for trial. Anderson, at 249.
`
`APPLICATION OF THE LAW TO THE FACTS
`
`To this day, Opposer does not sell or market a screensaver postcard, and has not
`
`alleged that it sells or markets a screensaver postcard. Nor could Opposer have been first
`
`in use as to this product or the trade name VIRGINVISIONS since Applicant created the
`
`product as well as the name. The fact that Opposer alleges, without any factual proof,
`
`that it has postcards is irrelevant and does not support a finding that VIRGINVISIONS is
`
`substantially similar to Opposer’s mark or the alleged postcards that Opposer sells under
`
`its mark VIRGIN.‘ Nothing attached as an exhibit by Opposer evidences any postcards
`
`sold under the Virgin mark. Therefore, there is no basis to conclude that App1icant’s
`
`screensaver postcard is in anyway similar to the postcards allegedly sold by Opposer.
`
`The fact that Opposer offers free downloadable screensavers that merely advertise its
`
`' Opposer has filed its Motion for Summary Judgment pursuant to Fed. R. Civ. P. 56 and 37 C.F.R.
`§2.1127(e). Pursuant to Fed. R. Civ. P. 56(e) a motion for summary judgment must be supported by
`affidavits in the form specified under the rule. Accordingly, Applicant respectfully requests that all of the
`Declarations attached and cited in support of the Motion for Summary Judgment be stricken for failing to
`comply with Fed. R. Civ. P. 56. It is unclear why Opposer submitted Declarations, however, even the
`declarations do not comply with the U.S. Trade Mark Law Rules of Practice and Federal Statutes §2.20 —
`Declarations in lieu of oaths. Applicant is not asserting that the U.S. Trade Mark Law Rules of Practice
`and Federal Statutes §2.20 overrides or supersedes Fed. R. Civ. P. 56(e), to the contrary, applicant is
`merely pointing out that the Declarations are also facially defective.
`
`
`
`Applicant’s Opposition to the Motion for Summary Judgment
`Page 4
`
`mark and its products does not support a finding that VIRGINVISIONS is substantially
`
`similar to Opposer’s mark or the screensavers that Opposer gives away.2 In addition, the
`
`fact that Virgin Mobile USA, LLC offers screensavers on its mobile telephone is not only
`
`irrelevant but it does not support a finding that VIRGINVISIONS is substantially similar
`
`to Opposer’s mark or the screensavers downloadable for use on Virgin Mobile USA,
`
`LLC telephones.
`
`The sales information submitted by Opposer in support and data regarding
`
`advertising expenditures are irrelevant as to whether there is a likelihood of confusion
`
`with respect to the use of the trade name VIRGINVISIONS. The infonnation is also
`
`irrelevant as to Opposer’s “fame” in the marketplace.
`
`In order for the information to
`
`have any bearing in this case at all it would have to be presented in connection with
`
`Opposer’s market share in the industry as a whole. See Bose Corporation v. QSC Audio
`
`
`Products Inc., 293 F.3d 1367; 63 U.S.P.Q. 2d 1303 (Fed. Cir. 2002). For example,
`
`assuming that Opposer can rely on the data regarding revenue of other entities, Virgin
`
`Mega Stores’ sales of $235 million in 2003 is still irrelevant unless it is compared to the
`
`revenues of comparable retail outlets, Opposer has failed to do so.
`
`I_d. When Virgin
`
`Mega Stores’ revenue is compared to Target, K-Mart, Best Buy, and Wal-Mart,
`
`its
`
`revenue is minimal compared to the industry as a whole.3 As a result, Opposer does not
`
`have a basis to claim fame in the retail store market. Virgin Atlantic Airways, Ltd.’s
`
`2,175,000 passengers from May 2003 through February 2004 is irrelevant unless it is
`
`2 Opposer has not provided any information regarding when its screensavers were first in use or how many,
`if any, of its screensaver were even downloaded. Applicant suspects that there are not likely to be any
`consumers who want Virgin’s advertisements for its products on their computer screens as a screen saver.
`3 Attached as Exhibit 2 is data for Target for the first three quarters of 2003. In the third quarter alone,
`Target’s revenue was 10.9 billion as compared to Virgin Mega Stores’ $235 million in sales for the entire
`year of 2003. Nor is it clear as to whether the sales figure submitted by Opposer are for all Virgin Mega
`Stores throughout the world or those in the United States.
`
`
`
`Applicant’s Opposition to the Motion for Summary Judgment
`Page 5
`
`compared to the revenues of the rest of the airline industry, Opposer has failed to do so.
`
`Q. When Virgin Atlantic Airways, Ltd.’s passengers are compared to American Airlines,
`
`Delta, US Airway and the rest of the airline industry, its numbers are insignificant when
`
`compared to the industry as a whole.4 As a result, Opposer does not have a basis to claim
`
`fame in the airline marketplace. Opposer asserts that Virgin Mobile USA, LLC has
`
`approximately 2.1 million consumers in the wireless communication industry.
`
`It
`
`is
`
`unclear what relevance this information has for Opposer, however, the information is
`
`irrelevant unless it is compared to the revenues of the rest of the wireless communication
`
`industry and Opposer has failed to do so.
`
`Ld_. When Virgin Mobile USA, LLC’s
`
`subscribers are compared to Verizon, Sprint and Cingular as well as the rest of the
`
`wireless communication industry, its numbers are insignificant when compared to the
`
`industry as a whole.5 As a result, Opposer does not have a basis to claim fame in the
`
`wireless communication industry. That Opposer or entities that have been permitted to
`
`use Opposer’s trade name have decided to dabble in a vast variety of markets/industries
`
`does not mean that
`
`the law is designed to extend it equally expansive protection,
`
`particularly, where its market presence is so insignificant.6 Although Opposer would like
`
`4 Attached as Exhibit 3 is data for American Airlines and American Eagle Airlines for the month of
`December and year to date. In December 2004 alone American Airlines passengers boarded was
`9,310,224 compared to Virgin Atlantic Airways, Ltd.’s passenger count for 10 months of 2,175,000. Nor
`does the data provided by Opposer specify the number of American passengers or the place of purchase for
`those airline tickets. It is entirely possible that all or most of the passengers are British, in which case
`Virgin Atlantic Airways, Ltd. would have little or no presence in the American market for consumers of
`airline travel. However, the unavoidable conclusion is that Virgin Atlantic Airways, Ltd. does not hold a
`market presence in the United States market for consumers of airline travel.
`5 Attached as Exhibit 4 is the Industry Overview put out by Verizon, which indicates that more than 160
`million Americans have wireless phones and that pursuant to its Case Study in 2003 Verizon Wireless
`Subscribers totaled 37.5 million. Accordingly, the unavoidable conclusion is that Virgin Mobile USA,
`LLC does not hold a market presence in the United States market for the wireless industry with its meager
`1% share of the market.
`
`6 Attached as Exhibit 5 is data in which Virgin Vodka is conspicuously absent from an international vodka
`taste test as well as Exhibit 6 regarding brand presence in the marketplace and again Opposer is not
`recognized.
`
`
`
`Applicant’s Opposition to the Motion for Summary Judgment
`Page 6
`
`to receive instant recognition comparable to the recognition earned by such trade names
`
`as Coca-Cola, Bose, Huggies, Frito-Lay and Planters to name a few, Opposer has not
`
`earned that distinction in every market that it has decided to dabble in, during its limited
`
`presence in those marketplaces.
`
`In addition, there is no relationship between Virgin Mega Stores, Virgin Atlantic
`
`Airways, Ltd., Virgin Mobile USA, LLC or any of the other Virgin related enterprises
`
`and the sale of screensaver postcards. Unlike the holding in Bose Corporation v. QSC
`
`
`Audio Products Inc., 293 F.3d 1367, 63 U.S.P.Q.2d (Fed. Cir. 2002), Opposer is not
`
`comparing the sale of its screensaver postcard or any specific product
`
`to that of
`
`Applicants. The data provided in the Bose case was specific to the sale of its Acoustic
`
`Wave mark for use on its loudspeaker system. Opposer has a vast array of products
`
`including record labels, cars, planes, trans, telephones, beverages, clothes etc. but none of
`
`those products compete with Applicants screensaver postcard.
`
`The Court in l_39g held that:
`
`Raw numbers of product sales and advertising expenses may have sufficed in the
`past to prove fame of a mark, but raw numbers alone in today's world may be
`misleading. For example, a 30-second spot commercial shown during a Super
`Bowl football game may cost a vast sum, but the expenditure may have little if
`any impact on how the public reacts to the commercial message. At the other
`extreme, handbills passed at little cost to millions of consumers (for example, to
`New Yorkers exiting subway stations) may amount to the kind of advertising that
`is probative of consumer recognition of a mark. Consequently, some context in
`which to place raw statistics is reasonable. The Board suggested that one form of
`such context would be the substantiality of the sales or advertising figures for
`comparable types of products. A tiny percentage of the market share for the
`product or a small share of advertising revenues for the product market could
`undermine the weight given to the figures for assessment of fame. Large market
`shares of product sales or large percentages of advertising expenditures in a
`product line would buttress claims to fame. Another context, not applied in this
`case by the Board,
`is the critical assessment or the general reputation of the
`marked product. In the latter category, consider the ROLLS—ROYCE mark for
`automobiles. We may safely assume that the annual sales figure for ROLLS-
`
`
`
`Applicant’s Opposition to the Motion for Summary Judgment
`Page 7
`
`ROYCE automobiles (although each item is very expensive) is inconsequential
`even in the submarket of luxury automobiles, and likewise the advertising
`revenues for the mark. In one context, the statistics argue against fame for the
`ROLLS-ROYCE mark, but in the context of general reputation, the mark warrants
`fame in the public's eye.
`
`Opposer has not provided sufficient data to allow the Board to determine the actual
`
`impact of its alleged advertising on the consumer and consumer awareness. Nor does its
`
`sales data provide sufficient reliable information regarding market share in the industry.
`
`In addition, Applicant asserts that all of the information submitted by Opposer
`
`regarding entities that sell products/services under the Virgin mark are irrelevant since
`
`none of those entities are parties in this Opposition.
`
`In all the cases cited by Opposer the
`
`company asserting a trade name infringement not only owned the trade name but also
`
`owned the products sold in conjunction with that trade name and therefore, had a basis to
`
`assert a direct commercial interest. See International Order, 727 F.2d at 1092, 220
`
`U.S.P.Q. at 1020 cited in Cunningham v. Laser Golf Comp., 222 F3d 943 (Fed. Cir.
`
`2000). Opposer is attempting to use the sales information and marketing data from
`
`parties not a part of this Opposition. Opposer asserts that these entities are part of the
`
`“Virgin Group” without any legal or factual support for this conclusion.
`
`There is no
`
`legal precedent for what Opposer is attempting to do. Opposer has failed to join these
`
`parties to this action and therefore, they have no standing in this case. Furthermore,
`
`Opposer should be precluded from utilizing data that does not specifically pertain to
`
`Virgin Enterprise Limited’s use of the mark to support its motion for summary judgment
`
`because based on Opposer’s submissions, it does not have a direct commercial interest in
`
`the revenues of those entitles/products/services.
`
`
`
`Applicant’s Opposition to the Motion for Summary Judgment
`Page 8
`
`When Opposer first registered its mark in 1988 it was registered for prerecorded
`
`audio and or video tapes, cassettes and cartridges; prerecorded audio and video discs,
`
`phonograph records and films. See Exhibit 7. The use of the mark Virgin in this industry
`
`can easily be described as generic. However, over the years, Virgin has expanded it
`
`product base exponentially. The question that Patent and Trademarks must ask is
`
`whether there is a limit to what market areas Opposer can expand into while still
`
`maintaining the mark as a generic mark? If Apple Computer wanted to expand into the
`
`apple orchard industry or apple juice market, Patent and Trademarks would have to reject
`
`their application.
`
`See In Re Abcor Dev. Corp, 588 F.2d 811, 200 U.S.P.Q. 215
`
`(C.C.P.A. 1978). Applicant asserts that to allow Opposer to prevail would prevent him
`
`from using VIRGINVISIONS as a mark and will diminish the access of others to the full
`
`range of discourse relating to those goods. See e.g. Virgin Enterprises v. Nawab, 335
`
`F3d 141 (2nd Cir. 2003). The paramount objective of trademark law is to avoid confusion
`
`in the marketplace. There is no basis for a conclusion that there would be a likelihood of
`
`confusion in the marketplace, since there are no Virgin products in the marketplace that
`
`are in anyway remotely similar to Applicant’s screensaver postcard. Since there is no
`
`proximity of the products in the marketplace there is no basis to continue with the
`
`DuPont analysis. When two users of a mark operate in completely different areas of
`
`commerce, consumers are less likely to assume that their similarly branded products
`
`come from the same source. Li.
`
`In point of fact, no one who purchased Applicants
`
`products has, to date, indicated that it ever considered the product to be in any way
`
`connected with Opposer’s mark. See Affidavit of Enrique Rodriguez, Affidavit of Maria
`
`Van Heurck, Kathleen Whisler and Candela Sanchez.
`
`
`
`App1icant’s Opposition to the Motion for Summary Judgment
`Page 9
`
`The purpose of the statute is to prevent deception and unfair competition,
`
`to
`
`protect the mark’s owner and the goodwill of his business while at the same time
`
`protecting consumer’s ability to distinguish among competing producers.
`
`See Two
`
`
`Pesos Inv. V. Taco Cabana Inc., 505 U.S. 763 (1992).
`
`In the case at bar, there is no
`
`deception or unfair competition because Opposer does not have a product in the market
`
`that competes with Applicant’s product. There are no consumers that need to be
`
`protected against competing producers because the parties to this action are not
`
`in
`
`competition. Accordingly, the purpose of the statue is not invoked and there is no basis
`
`to reject Applicant’s application for registration of the mark “VIRGINVISIONS”.
`
`By way of analogy, in Nina Ricci V. ETF Enterprises, Inc., 889 F.2d 1070, 12
`
`U.S.P.Q.2d 1901 (Fed. Cir. 1989) the Court confirmed that there was “no likelihood of
`
`confusion with respect to shoes and belts — products on which Plaintiff’ s mark had not
`
`been used.” This finding was made in conjunction with a finding that Nina Ricci
`
`satisfied the DuPont test as to fame of its mark. E, Opposer has never used its mark in
`
`the screensaver postcard market. Furthermore, given Opposer’s market philosophy there
`
`would be no basis for Opposer to enter the screensaver postcard market. Exhibit 8 sets
`
`forth Opposer’s philosophy:
`
`We look for opportunities where we can offer something better,
`fresher and more valuable, and we seize them. We often move into areas
`where the consumer has traditionally received a poor deal, and where the
`competition is complacent. And with our growing e-commerce activities,
`we also look to deliver “old” products and cervices in new ways. We are
`pro-active and quick to act, often leaving bigger and more cumbersome
`organizations in our wake. When we start a new venture, we base it on
`hard research and analysis. Typically, we review the industry and put
`ourselves in the customer’s shoes to see what could make it better. We
`
`is this an opportunity for restructuring a
`ask fundamental questions:
`market and creating competitive advantage? What are the competitors
`doing? Is the customer confused or badly served? Is this an opportunity
`
`
`
`Applicant’s Opposition to the Motion for Summary Judgment
`Page 10
`
`for building the Virgin brand? Can we add value? Will it interact with
`our other businesses? Is there an appropriate trade-off between risk and
`reward?
`
`The Applicant’s newly created product is not the type that Opposer would even
`
`consider branching into.
`
`Opposer’s assertion that Applicant’s mark is substantially identical to Opposer’s
`
`marks is incorrect and not supported by the facts. Regardless of how may times Opposer
`
`tries to assert that VIRGINVISIONS is substantially identical to its mark VIRGIN,
`
`Opposer fails to produce any evidence to support this assertion.
`
`In fact, there is no
`
`similarity between VIRGINVISIONS’ mark or the products that incorporate the mark
`
`and Virgin’s mark. That Opposer alleges that it has computer screen savers or that it
`
`claims without proof that it sells postcards is frankly insufficient to create a substantially
`
`identical mark.
`
`VIRGINVISIONS’ mark pertains
`
`to
`
`a product
`
`created by
`
`VIRGINVISIONS, which in its most simplistic definition is a screensaver postcard.
`
`Opposer has no such product because Applicant was the originator of the product and the
`
`product concept. That some entity allegedly related to Opposer sells CD’s containing
`
`music or other types of recorded data does not in any way compare its products or the
`
`mark to a screensaver postcard. That some entity allegedly related to Opposer sells or
`
`produces downloadable screensavers in no way compares to the sale of a screensaver
`
`postcard.
`
`There has not been nor is there a likelihood that Applicant’s use of the mark
`
`VIRGINVISIONS has or will cause confusion, mistake or result in consumers being
`
`deceived.
`
`To date no one purchasing Applicant’s screensaver postcard has ever
`
`complained or asserted that he/she thought they were purchasing a product manufactured
`
`
`
`Applicant’s Opposition to the Motion for Summary Judgment
`Page 11
`
`by or on behalf of Virgin Enterprise Limited. See Affidavit of Enrique Rodriguez.
`
`In
`
`addition, to date, no one has accessed VIRGINVISIONS’ website under the belief that
`
`they were accessing a Virgin Enterprise Limited website. E. All contacts to the
`
`VIRGINVISIONS website have been for the sole purpose of obtaining technical support
`
`regarding the use of the screensaver postcard purchased by Applicant’s customers or to
`
`request
`
`that additional screensaver postcards be mailed to them. See Exhibit 9.
`
`Applicant’s product cannot be downloaded from the Internet as Opposer is attempting to
`
`assert.
`
`See Affidavit of Enrique Rodriguez. Although Opposer’s screensavers are
`
`downloadable
`
`from the
`
`Internet7
`
`the product
`
`sold by Applicant under
`
`the
`
`VIRGINVISIONS mark are not downloadable and must be mailed to the consumer or
`
`purchased in a retail outlet. E. None of Applicant’s products are sold in any of
`
`Opposer’s retail
`
`stores or on Opposer’s websites.
`
`E.
`
`Furthermore, Opposer’s
`
`screensavers are not sold but rather are downloadable directly from Opposer’s website.
`
`Opposer lacks standing to challenge Applicants application for the trade name
`
`VIRGINVISIONS because Opposer no longer owns and abandoned the rights to the
`
`8
`name Virgin Vision. Based upon Opposer’s own admissions, it sold the name Virgin
`
`Vision as well as the business associated with that name to Management Company
`
`7 See Memorandum in Support of Opposer’s Motion for Summary Judgment at 2.
`8 Although this case does not stem from a petition to cancel a registration on the grounds of abandonment,
`there are some analogies that can be drawn to the holding in Lipton Industries, Inc. v. Ralston Purina Co.,
`670 F.2d 1024, 213 USPQ 185 (CCPA 1982). Even though Opposer never registered the name Virgin
`Vision, it did, at one time operate a business under that name. See Exhibit 10 (this document was
`submitted by Opposer in support of its motion for summary judgment, therefore it constitutes an admission
`by Opposer). The fact that in 1989 Opposer sold the business and ceased to use the name Virgin Vision for
`over two years constitutes abandonment. See Exhibit 10 and 11. Given Opposer’s abandonment of the
`unregistered name Virgin Vision, Opposer has no standing to object to Applicant’s registration of the mark
`VIRGINVISIONS. In light of the fact that Opposer never registered the name Virgin Vision, it is not
`subject to as much protection as Lipton Industries was in the above-referenced case. Nonetheless, Opposer
`cannot abandon, sell and/or transfer its rights to the name Virgin Vision and still come to this Board
`asserting that it has a legitimate personal interest in the name. Applicant asserts that in spite of Opposer’s
`complaint, the evidence clearly establishes that the allegations contained in the complaint are a sham and
`Opposer does not have standing to challenge Applicant’s registration of the mark VIRGINVISIONS.
`
`
`
`Applicant’s Opposition to the Motion for Summary Judgment
`Page 12
`
`Entertainment Group (MCEG) in 1989.
`
`See Exhibits 10 and 11. Opposer carmot
`
`challenge the use of the name VIRGINVISIONS when it already sold the rights to use the
`
`name Virgin Vision to someone else. The fact that Opposer permitted MCEG to use the
`
`name supports the conclusion that Opposer must be estopped from challenging the use of
`
`the trade name or assert that the name Virgin Vision and/or VIRGINVISIONS is an
`
`infringement on its name Virgin. There can be no likelihood of C01’1filSlO1’l with respect to
`
`the mark VIRGINVISIONS when Opposer sold, abandoned and/or transferred its claims
`
`to the name Virgin Vision and allowed MCEG to operate simultaneously with Opposer
`
`without any confusion in the marketplace.
`
`In addition, there are several businesses/entities/products on the market that use
`
`the name Virgin in conjunction with their product/service.
`
`See Exhibit 12.
`
`The
`
`existence of others in the market place that use a component part of their name that
`
`includes Opposer’s name is further support for the conclusion that there is no likelihood
`
`of confusion under Section 2(d).
`
`Upon close analysis of Opposer’s assertion that 33 of its U.S. registrations for
`
`Virgin include incontestable registrations, many of which cover goods and services in
`
`Class 9, there are actually only three registrations of the seven set forth on pages 2 and 3
`
`of Opposer’s Memorandum in Support of its Motion for Summary Judgment, which
`
`include Class 9 and none of them pertain to screensaver postcards. Of those three
`
`registrations two were filed afier Applicant’s application for the mark VIRGINVISIONS
`
`was filed on August 22, 2000.
`
`In fact, the first Registration listed by Opposer, 1,469,619
`
`allegedly for Class 9, was cancelled according to the Certifying Officer. See Opposer’s
`
`Exhibit 1. Accordingly, Registration No. 1,469,619 is not an incontestable Registration
`
`
`
`Applicant’s Opposition to the Motion for Summary Judgment
`Page 13
`
`under Class 9 as asserted by Opposer and it is disingenuous for Opposer to attempt to
`
`mislead the Board by submitting evidence regarding a registration under Class 9, which it
`
`knows was cancelled. Also, based on the registration itself Registration No. l,469.618 is
`
`registered not to the Opposer, but rather to Virgin Holdings Limited, who is not a party to
`
`this action.
`
`See page 2 of Exhibit
`
`1 attached to Opposer’s Motion for Summary
`
`Judgment. Unlike Exhibit 2, which shows that there was a name change from Virgin
`
`Holding Limited to Virgin Enterprises Limited, no such notation exists on Registration
`
`No. l,469.6l8. Accordingly, Opposer has no legal basis to rely on this registration, since
`
`it does not belong to it. Opposer’s Exhibit 8 refers to a Class 9 Registration, which was
`
`filed more than two and a half years after Applicant filed his Application. Opposer’s
`
`Exhibit ll refers to a Class 9 Registration, which was filed over two years after Applicant
`
`filed his Application. Opposer’s Exhibit 25 refers to a Class 9 Registration, which was
`
`filed over two years after Applicant filed his Application. Opposer’s Exhibit 28 refers to
`
`a Class 9 Registration, which was filed more than three years after Applicant filed his
`
`Application. Opposer’s Exhibit 29 refers to a Class 9 Registration, which was filed over
`
`three years after Applicant filed his Application. Opposer’s Exhibit 32 refers to a Class 9
`
`Registration, which was filed almost four years after Applicant filed his Application. The
`
`goods and services corresponding to the registrations referred to by Opposer in Exhibits
`
`8, ll, 25, 28, 29 and 32 are very different from Applicant’s goods, namely screensaver
`
`postcards.
`
`Under In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563
`
`(C.C.P.A. 1973) “the question of confusion is related not to the nature of the mark but to
`
`its effect ‘when applied to the goods of the applicant.” “The only relevant application is
`
`
`
`Applicant’s Opposition to the Motion for Summary Judgment
`Page 14
`
`made in the marketplace.” “The words ‘when applied’ do not refer to a mental exercise,
`
`but to all of the known circumstances surrounding use of the mark.” 1g. at 1360-1361.
`
`The Board must consider the following factors when determining the likelihood of
`
`confusion under Sec. 2(d):
`
`(l) The similarity or dissimilarity of the marks in their entireties as to
`
`appearance, sound, connotation and commercial impression. Opposer’s
`
`assertion that Applicant’s mark is substantially identical to Opposer’s marks is
`
`incorrect and not supported by the facts. Regardless of how may times
`
`Opposer tries to assert that VIRGINVISIONS is substantially identical to its
`
`mark VIRGIN, Opposer fails to produce any evidence to support this
`
`assertion. In fact, Applicant’s mark is different from Opposer’s mark in
`
`several important ways. The marks are different in appearance, sound as a
`
`result of the alliteration created by Applicant’s mark containing four syllables,
`
`the first and third beginning with VI — and the second and forth ending in —N.
`
`The marks are also different in meaning as Applicant’s mark contains the
`
`word VISION. As a result, the two marks have very different overall
`
`commercial impressions. Given Opposer’s sale of Virgin Vision in 1989,
`
`there is no basis for Opposer to claim similarity of the mark. The purchaser of
`
`Virgin Vision operated Virgin Vision USA and Virgin Vision Ltd.9 and
`
`regardless of whether these businesses are still in operation, Opposer has
`
`never purchased back its rights to use the name Virgin Vision. For Opposer to
`
`assert that Virgin and VirginVisions are substantially similar knowing that
`
`9 See Exhibit 11.
`
`
`
`Applicant’s Opposition to the Motion for Summary Judgment
`Page 15
`
`they have no rights to the name Virgin Vision is highly suspect and should not
`
`be countenanced by this Board. Furthermore, there is no legal basis for
`
`Opposer to dissect Applicants trade name, as it has attempted to argue. See
`
`San Fernando Electric V. JFD Electronics, 565 F.2d 683, 685 (C.C.P.A. 1977).
`
`Each syllable of the mark generates an impact but the only impact to be
`
`considered is that of the whole. Li. There is no similarity of the marks as a
`
`whole and therefore Opposer cannot prevail under (1) of the Quficmt Test.
`
`Opposer and its other entities use the mark VIRGIN in a variety of industries.
`
`However, none of these uses also include the word VISIONS. Opposer is in
`
`essence trying to prevent any use of the word VIRGIN, even in combination
`
`with other words, in any industry. The paramount objective of trademark law
`
`is to avoid confusion in the marketplace and not to preclude the Applicant or
`
`any of the other entities in Exhibit 12 from marketing their products.
`
`(2) The similarity or dissimilarity and nature ofthe goods or services as
`
`described in an application or registration or in connection with which a
`
`prior mark is in use. The only relevant registrations belonging to Opposer are
`
`those active registrations, which are owned by Opposer, under Class 9. Since
`
`Opposer has produced no evidence of the use of its mark on postcards there is
`
`no basis, at this time, for Applicant to defend against something that does not
`
`exist. Accordingly, Applicant will focus on those registrations under Class 9
`
`that could possible be alleged to constitute similar goods or services to
`
`App1icant’s screensaver postcard. Reg. No. 1,517,801 is described on the
`
`registration as “for pre-recorded audio and/or video tapes, cassettes and
`
`
`
`Applicant’s Opposition to the Motion for Summary Judgment
`Page 16
`
`cartridges; pre-recorded audio and video discs, phonograph records,
`
`photographic and cinematogr