Pacific Telesis Group v. INTERN. TELESIS COMM., CV 88-01596-RMT.

• Decision Date: 11 July 1991
• Docket Number: No. CV 88-01596-RMT.,CV 88-01596-RMT.
• Citation: 795 F. Supp. 979
• Court: U.S. District Court — Central District of California
• Parties: PACIFIC TELESIS GROUP, a Nevada corporation, Plaintiff, v. INTERNATIONAL TELESIS COMMUNICATIONS, a California corporation, Defendant.

795 F. Supp. 979

PACIFIC TELESIS GROUP, a Nevada corporation, Plaintiff, v. INTERNATIONAL TELESIS COMMUNICATIONS, a California corporation, Defendant.

No. CV 88-01596-RMT.

United States District Court, C.D. California.

July 11, 1991.

Paul B. Van Buren, San Francisco, Cal., Andrew J. Belansky, Pasadena, Cal., Bart Kimball, Los Angeles, Cal., for plaintiff.

Graham and James, Los Angeles, Cal., for defendant.

FINDINGS OF FACT AND CONCLUSIONS OF LAW

TAKASUGI, District Judge.

Introduction

This is an action for service work infringement and unfair competition/false designation of origin under federal law and service work infringement, trade name infringement and unfair competition under California state law.

FINDINGS OF FACT

1. The parties are Pacific Telesis Group ("plaintiff"), a Nevada corporation, and International Telesis Communications, a California corporation.

2. On September 1, 1984, United States service work Registration No. 1,294,986 was issued to plaintiff for the mark TELESIS for "communication services — namely telephone services" in Class 38. This registration was based on an application filed August 3, 1983, by Pacific Telephone & Telegraph. The registration was issued to plaintiff by virtue of an assignment of the application to it by Pacific Bell (formerly Pacific Telephone & Telegraph).

3. California service work Registration No. 17,227, having a registration date of August 9, 1983, was issued to the Pacific Telephone & Telegraph Company for the mark TELESIS for "communication services, namely telephone services." On February 24, 1984, the registration was assigned by Pacific Bell (formerly The Pacific Telephone & Telegraph Company) to plaintiff. The federal and state applications referred to the August 5, 1983, mailer as the date of first use.

4. Defendant International Telesis Communications ("defendant") was incorporated in the state of California on October 29, 1985. It uses the trade name and service mark INTERNATIONAL TELESIS GROUP.

5. California service mark Registration No. 29014, having a registration date of December 4, 1986, was issued to defendant for the mark INTERNATIONAL TELESIS GROUP for voice and data telecommunications consulting services.

6. The divestiture of AT & T of its operating telephone companies, effective January 1, 1983, was pursuant to a decree approved by the United States District Court for the District of Columbia, referred to as the MFJ, Modification of Final Judgment, entered in settlement of certain antitrust litigation brought against AT & T by the United States Justice Department.

7. In anticipation of this divestiture of AT & T, plaintiff, as one of seven independent regional holding companies, was formed in October, 1983.

8. At the beginning of 1983, the AT & T Bell Operating Company, providing basic telephone services, as well as other telecommunication services in California and Nevada, was Pacific Telephone & Telegraph Company.

9. In anticipation of the forthcoming AT & T divestiture, the executives of Pacific Telephone selected the name Pacific Telesis Group for the regional holding company under which several subsidiaries were to be designated.

10. On August 5, 1983, Pacific Telephone distributed a mailer to customers in California and Nevada which referred to Telesis custom calling services. These services included call forwarding, call waiting and three-way calling.

11. On August 8, 1983, following the mailer of August 5, 1983, simultaneous press conferences were held in San Francisco, California, and Reno, Nevada, where announcements were made of the selection of Pacific Telesis Group as the name of the holding company. Brochures and press releases were also distributed describing how plaintiff would, through its subsidiaries, continue the telecommunications services then provided by Pacific Telephone and would also meet the technological growth in telecommunications that would take place in the future.

12. The AT & T divestiture, the creation of plaintiff as a regional holding company, and the telecommunication services offered by its subsidiaries were widely reported by the media from August 1983 and thereafter. In addition to plaintiff's advertising, its subsidiaries had separate advertising companies to further promote the services and products of that subsidiary. In virtually all of such advertising, plaintiff was listed as the holding company of that subsidiary.

13. The evidence established that from September 1985 on, Pacific Telesis and Telesis were strongly associated in the public mind as sources of telephones, communications and telecommunications. This association has continued throughout the years since.

14. David Zweiban, now president of defendant corporation, made several previous declarations, in writing, under penalty of perjury that the first use of the name International Telesis Group in connection with telecommunications consulting services in the United States was in 1985.

15. Mr. Zweiban was fully aware of plaintiff's adoption of TELESIS prior to any use by him of TELESIS in any combination with International.

16. The areas of telecommunications technology in which defendant offers consulting services are described in its first advertising offering telecommunications services in December, 1985, as:

telecommunications planning for new facilities; building cabling and riser system design; PABX selection and implementation; integrated voice, data, cabling systems; private satellite, microwave, and fiber-optic networks; electronic mail and documentary delivery systems.

17. The services offered by plaintiff's subsidiaries substantially overlap the areas of communication technology in which defendant offers its consulting services. The activities of plaintiff's subsidiaries include telecommunications planning for new facilities; building cabling and riser systems design; business telephone system (including Centrex and PBX) selection and implementation; integrated voice, data, networks using microwave, copper cable and fiber-optic technologies; and electronic mail and documentary delivery systems.

18. In connection with these telecommunications activities, plaintiff's subsidiaries necessarily must understand the customer's needs and provide consulting services by making recommendations as to what is the most economical and effective way to meet those needs.

19. Plaintiff's and defendant's services overlap as to intra-LATA services.

20. Likelihood of Confusion Factors.

a. Strength of the mark/name. Plaintiff has established the strength of TELESIS by its presumptively valid federal registration, the substantial public exposure of TELESIS through media reports and advertising, and the substantial level of awareness of TELESIS as a source of telephones, communications and telecommunications. TELESIS is the dominant component of plaintiff's service marks and trade name. TELESIS does not describe any characteristics, functions, uses or qualities of telecommunications services. As applied to such services, it is

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