M2 Software, Inc. v. M2 Communications, Inc.

• Decision Date: 07 June 2006
• Docket Number: No. 05-1599.,05-1599.
• Citation: 450 F.3d 1378
• Parties: M2 SOFTWARE, INC., Appellant, v. M2 COMMUNICATIONS, INC., Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

450 F.3d 1378

M2 SOFTWARE, INC., Appellant, v. M2 COMMUNICATIONS, INC., Appellee.

No. 05-1599.

United States Court of Appeals, Federal Circuit.

June 7, 2006.

Mark L. Pettinari, Law Offices of Mark L. Pettinari, of San Francisco, California, for appellant.

Jacquelyn Inserra, Budd Larner P.C., of Short Hills, New Jersey, for appellee. With her on the brief was Ronald James Campione.

Before MAYER, BRYSON, and PROST, Circuit Judges.

MAYER, Circuit Judge.

M2 Software, Inc. ("M2 Software") appeals the decision of the United States Patent and Trademark Office ("PTO") Trademark Trial and Appeal Board, dismissing its opposition to M2 Communications, Inc.'s ("M2 Communications") registration of M2 COMMUNICATIONS for interactive multimedia CD-ROMs containing information on the fields of health pharmacy, and medicine. M2 Software, Inc. v. M2 Commc'ns, Inc., Opposition No. 91/158, 118, 2005 WL 1822550 (TTAB July 21, 2005) ("Board Opinion"). Because the board did not err in finding no likelihood of confusion, we affirm.

Background

M2 Communications provides educational and promotional goods and services for companies within the pharmaceutical and medical industries. Its products fit within three broad categories: "live media," e.g., assistance with symposia presentations; "traditional media," e.g., educational videos for patients and printed newsletters; and "new media," e.g., interactive CD-ROMs with symposia proceedings, patient educational materials on DVD-ROMs, and website development. Approximately ninety-five percent of its clients are pharmaceutical companies, and the remaining clients are biotechnology companies and medical associations. Board Opinion at 8-9.

The board found that M2 Communications used its mark in commerce no earlier than 1998, and neither party challenges that determination. On December 26, 2001, M2 Communications applied to register the mark M2 COMMUNICATIONS (standard character form) for goods identified as:

Interactive multimedia CD-ROMs containing educational information in the fields of pharmaceutical and medical product information, therapies and strategies, and medical, pharmaceutical, and healthcare issues in Class 9.

Serial No. 76352778 (emphasis added).^* Given the restriction emphasized above, the board found that M2 Communications' mark is limited to use on goods in the pharmaceutical and medical fields. Board Opinion at 11. On September 10, 2003, M2 Software filed an opposition to the application.

M2 Software provides goods and services exclusively to the music and entertainment industries. See id. at 13-14. In so far as the record establishes, all of its clients are in those fields, and it does not market or sell any of its products to consumers in the pharmaceutical or medical fields. Accordingly, the board concluded that any overlap between the parties' prospective purchasers or channels of trade is de minimis. Id. at 15. It further found that M2 Software first used its mark in commerce prior to 1998, thereby establishing priority both as to the trademark in question and for the purposes of establishing rights derived from its trade name and service marks. Id. at 6, 14-15.

M2 Software holds the registration for the mark "M2" (standard character form) for goods described as:

computer software featuring business management applications for the film and music industries; and interactive multimedia applications for entertainment, education and information, in the nature of artists' performances and biographical information from the film and music industries; and instructions and information for playing musical instruments.

U.S. Registration No. 1,931,182 (emphasis added). Based on the restriction in M2 Software's registration (limiting the use of its marks to goods in the film and music industries), and the restriction in M2 Communications' application (limiting use of its mark to goods in the pharmaceutical and medical industries), the board found that M2 Communications' goods were not explicitly encompassed by the scope of goods identified in M2 Software's registration. Board Opinion at 11. Moreover, it found that the parties' goods were not related. Id. at 18. It reasoned that while both parties sell goods in the same media format, i.e., interactive CD-ROMs, that fact alone renders them neither identical nor related. See id. at 9-12. Instead, paramount to this case is the industry-specific focus of the parties' claimed goods. Both the registration and the application identify subsets of CD-ROMs, defined by industry, not CD-ROMs generally. The board concluded that because the claimed industries are distinct and separate, the software prepared for them, notwithstanding similarities in media platform, are different goods. Id.

With respect to the similarity of the marks, the board found them to be "very similar." Id. at 7. M2 Communications disclaimed the term "COMMUNICATIONS," and the board, following our precedent, compared the marks as a whole, including the disclaimed term, to determine the level of similarity between them. On that basis, while recognizing the limited import of "communications" in altering the appearance, sound, meaning, and commercial impression of the challenged mark, the board declined to find the marks identical. Given that finding, because of the unrelated nature of the parties' goods, no demonstrated overlap of purchasers or channels of trade, and an absence of other factors suggesting a likelihood of confusion, the board found that confusion is not likely, and dismissed M2 Software's opposition. Id. at 18. M2 Software appeals, and we have jurisdiction under 28 U.S.C. § 1295(a)(4)(B).

Discussion

Under the Lanham Act, 15 U.S.C. § 1052(d), the PTO may refuse to register a trademark that is so similar to a registered mark "as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive." Likelihood of confusion is a question of law, based on findings of relevant underlying facts, namely findings under the DuPont factors.^** See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 1371 (Fed.Cir. 2005). "We review the board's legal conclusions de novo, and its findings of fact for substantial evidence." Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1240 (Fed.Cir.2004) (citations omitted). Neither we nor the board, however, are required to consider every DuPont factor. Id. at 1241. Rather, we need to consider only the factors that are relevant and of record. See id. Moreover, any one factor may control a particular case. In re Dixie Rests., Inc., 105 F.3d 1405, 1407 (Fed.Cir. 1997) (citing DuPont, 476 F.2d at 1361-62).

Bearing these principles in mind, we turn to M2 Software's challenge. It contests the board's ultimate conclusion that confusion is not likely, and its findings as related to five DuPont factors: (1) the similarity of the goods in question; (2) intersecting channels of trade and purchasers; (3) the similarity of the marks; (4) the strength of its mark; and (5) M2 Communications' intent in registering its mark. We address each of the challenged determinations in turn, find them to be appropriately supported, and conclude that the board correctly determined that there is no likelihood of confusion.

The board placed the greatest weight on its findings that the goods in question were not related and that the channels of trade and purchasers are different. Because of the dominant role these factors play in this case, we find no error in the weight the board accorded them.

Beginning with the relatedness of the goods, the board's determination that the parties' goods were not related is supported by substantial evidence. When reviewing its conclusion, we consider the applicant's goods as set forth in its application, and the opposer's goods as set forth in its registration. See Bose Corp. v. QSC Audio Prods., 293 F.3d 1367, 1376 (Fed.Cir.2002) (citing DuPont, 476 F.2d at 1361). The board found, and M2 Software does not challenge, that M2 Communications' goods are limited to interactive multimedia CD-ROMs in the fields of pharmacy and medicine. Any incidental music or entertainment features contained in M2 Communications' goods do not bring them within the music or entertainment fields, or alter the fact that they are produced for, and are, therefore, products within the pharmaceutical and medical fields.

By comparison, M2 Software's registration, in relevant part, describes its goods as "computer software featuring business management applications for the film and music industries; and interactive multimedia applications for entertainment, education and information, in the nature of artists' performances and biographical information from the film and music industries." U.S. Registration No. 1,931,182 (emphasis added). Accordingly, the board correctly found the scope of M2 Software's registration to be limited to the film and music industries. M2 Software argues, however, that because its registration relates to "interactive multimedia applications for entertainment, education and information," the board erred in declining to read the scope of its registration more broadly, as encompassing interactive multimedia software in any field. We disagree. Such a reading would require us to improperly ignore scope limiting language within the clause it cites, i.e., language plainly limiting its registration to goods in the music and entertainment fields. Therefore, the board properly found that M2 Communications' goods do not come within the actual scope of M2 Software's registration. This finding, however, does not end the inquiry because the goods might, nevertheless, be related based on other considerations.

M2 Software argues that the goods in question are related based on the mere fact that they both take the form of interactive multimedia CD-ROMs. While this argument has some merit, we reject it. As stated above, the application and registration make...