Estrada v. Telefonos De Mexico, S.A.B. De C.V. , 447 F. App'x 197 ( 2011 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
(Opposition Nos. 91183487 and 91183509)
ANDRES GUTIERREZ ESTRADA,
Appellant,
v.
TELEFONOS DE MEXICO, S.A.B. DE C.V.,
Appellee.
__________________________
2010-1558
__________________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board.
____________________________
Decided: November 10, 2011
____________________________
ANDRES GUTIERREZ ESTRADA, of Zapopan, Jalisco,
Mexico, pro se.
JULIE B. SEYLER, Abelman Frayne & Schwab, of New
York, New York, for appellee. With her on the brief was
LAWRENCE E. ABELMAN.
__________________________
ESTRADA v. TELEFONOS DE MEXICO 2
Before LOURIE, LINN, and PROST, Circuit Judges.
LOURIE, Circuit Judge.
Andres Gutierrez Estrada appeals from the final deci-
sion of the United States Patent and Trademark Office
(“PTO”) Trademark Trial and Appeal Board (“Board”),
which sustained the oppositions of Telefonos De Mexico,
S.A.B. de C.V. (“Telefonos”) to Estrada’s applications to
register the mark AUDITORIO TELMEX. Because the
Board did not err in determining that a likelihood of
confusion existed between Estrada’s AUDITORIO
TELMEX mark and Telefonos’ TELMEX mark with
respect to the particular services at issue, we affirm.
BACKGROUND
On September 2, 2007, Estrada filed two applications
at the PTO to register the mark AUDITORIO TELMEX
on the Principal Register. Telefonos de Mexico, S.A.B. de
C.V. v. Estrada, Opposition Nos. 91183487 & 91183509,
2010 WL 2783897, at *1 (T.T.A.B. June 30, 2010) (“Board
Op.”). Both applications were based on a statement of
Estrada’s bona fide intention to use the mark in com-
merce. See 15 U.S.C. § 1051(b). In the first application,
Serial No. 77270292, Estrada stated his intention to use
the mark in connection with “arena services, namely,
providing facilities for sports, concerts, conventions and
exhibitions” in International Class 43. Board Op., at *1.
In the second opposed application, Serial No. 77270301,
Estrada stated his intention to use the mark in connec-
tion with a number of services related to entertainment
and live performances in International Class 41. 1
1 Specifically, Estrada stated his intention to use
the mark in connection with the following services:
3 ESTRADA v. TELEFONOS DE MEXICO
Telefonos opposed both applications on the grounds of
priority and likelihood of confusion based on its common
law use of its TELMEX mark in the United States in
connection with telecommunications and other services
discussed infra. In support of its opposition before the
Board, Telefonos submitted a brief and evidence, includ-
ing testimony and accompanying exhibits from Peter
Rivera, a regional sales director for Telmex USA, LLC, a
wholly owned subsidiary and related company of Tele-
fonos. In contrast, Estrada submitted neither a brief nor
supporting evidence before the Board.
Based on Mr. Rivera’s testimony, the Board found
that Telefonos is a major telecommunication company
based in Mexico that has used the TELMEX mark in
Mexico since 1947. Based on Telefonos’ “widespread and
entertainment in the nature of ballet perform-
ances; entertainment in the nature of visual and
audio performances, namely, musical band, rock
group, gymnastic, dance, and ballet performances;
entertainment, namely, live performances by a
musical band; entertainment, namely, live per-
formances by musical bands; entertainment,
namely, live performances by rock groups; live
performances featuring prerecorded vocal and in-
strumental performances viewed on a big screen;
performance hall rental services; planning ar-
rangement of showing movies, shows, plays or
musical performances; presentation of live show
performances; presentation of musical perform-
ance; booking of seats for shows and booking of
theatre tickets; rental of portable theatre seating;
entertainment in the nature of visual and audio
performances, and musical, variety, news and
comedy shows; providing facilities for movies,
shows, plays, music or educational training; en-
tertainment in the nature of dance performances.
Board Op., at *1.
ESTRADA v. TELEFONOS DE MEXICO 4
extensive use of the TELMEX mark in Mexico for six
decades,” the Board found it unlikely that any resident of
Mexico would not know of the TELMEX mark. Id. at *3.
The Board found that Telefonos sponsors a large concert
arena in Guadalajara, Mexico, under the mark
AUDITORIO TELMEX. Ranked as one of the top five
entertainment concert arenas in the world, it has served
as a performance venue for noteworthy artists such as
Plàcido Domingo, Bob Dylan, and Ricky Martin. The
arena was also used to host the 2008 Latin American
MTV Music Awards, which was telecast worldwide,
including in the United States, over the Internet.
As the Board found, Telefonos began selling telephone
calling cards in the United States in 2000 and currently
sells about six million such cards per year. The calling
cards, which enable the holder to place calls from the
United States to Mexico, display the TELMEX mark
together with artwork and promotions for Telefonos-
sponsored sports and entertainment events, including
auto racing, tennis, and soccer. The cards are available
for sale at retail outlets throughout the United States.
They are also available for sale on the Internet along with
other items related to the sponsored events, such as
model race cars and soccer jerseys—all of which bear the
TELMEX mark. In addition, Telefonos provides voice,
data, video and Internet services in the United States
under the TELMEX mark, although Telefonos did not
provide evidence to establish that it began to offer those
services prior to Estrada’s filing date.
Estrada has resided in Zapopan, Jalisco, Mexico, since
1980. Although he did not submit any evidence or a brief
before the Board, Estrada filed responses to Telefonos’
requests for admissions and interrogatories. The Board
found that these responses “display[ed] a pattern of
5 ESTRADA v. TELEFONOS DE MEXICO
evasion” and were “disingenuous and lacking in credibil-
ity.” Id. at *4. For example, even though Estrada lived in
Mexico for nearly thirty years and Telefonos’ use of its
TELMEX mark has been ubiquitous in Mexico for that
entire period, Estrada essentially denied any knowledge
of Telefonos’ prior use of TELMEX. Moreover, despite
having lived within ten miles of the world-class
AUDITORIO TELMEX arena since 1980, Estrada essen-
tially denied any prior knowledge of the use of Telefonos’
mark in connection with the arena. In spite of these facts,
when asked why he chose the AUDITORIO TELMEX
mark for use in connection with arena and entertainment
services, he responded, “Because AUDITORIO TELMEX
sounds good for the services upon which it will be used. Is
[sic] an easy listening phrase.” Id. On the basis of those
responses and numerous others, id. at *4-5, the Board
concluded that Estrada had been “evasive and disingenu-
ous” during the prosecution of his applications and the
opposition proceedings, id. at *4.
On June 30, 2010, the Board issued a non-
precedential opinion sustaining the oppositions as to both
of Estrada’s applications. The Board first determined
that Telefonos established priority as to both classes of
services based on its use of its TELMEX mark in the
United States prior to the filing date of Estrada’s applica-
tions. The Board then analyzed the likelihood of confu-
sion between Telefonos’ TELMEX mark and Estrada’s
AUDITORIO TELMEX marks by applying the framework
set forth in In re E.I. DuPont DeNemours & Co., 476 F.2d
1357, 1361 (CCPA 1973). As discussed further infra, the
Board weighed the DuPont factors and found that the
marks were highly similar, that Telefonos’ mark is inher-
ently distinctive, that the services of the parties are
related, and that Estrada acted in bad faith. The Board
thus concluded that there existed a likelihood of confusion
ESTRADA v. TELEFONOS DE MEXICO 6
between Telefonos’ TELMEX mark when used in connec-
tion with telephone calling card services and Estrada’s
AUDITORIO TELMEX mark when used in connection
with both the arena services and the entertainment
services identified in Estrada’s applications.
We have jurisdiction over Estrada’s appeal under 15
U.S.C. § 1071(a) and 28 U.S.C. § 1295(a)(4)(B).
DISCUSSION
The Board’s determination whether a likelihood of
confusion exists under § 2(d) of the Lanham Act, 15
U.S.C. § 1052(d), is a question of law based on underlying
findings of fact. Citigroup Inc. v. Capital City Bank Grp.
Inc., 637 F.3d 1344, 1349 (Fed. Cir. 2011). We review the
Board’s ultimate legal conclusion de novo, and we review
the underlying factual findings under the substantial
evidence standard. In re Majestic Distilling Co., 315 F.3d
1311, 1314 (Fed. Cir. 2003); see also Giant Food, Inc. v.
Nation’s Foodservice, Inc., 710 F.2d 1565, 1569 (Fed. Cir.
1983). When reviewing for substantial evidence, we take
the entire record into account and ask whether a reason-
able person might find that the evidentiary record sup-
ports the Board’s conclusion. On-Line Careline, Inc. v.
America Online, Inc., 229 F.3d 1080, 1085-86 (Fed. Cir.
2000). The possibility that inconsistent conclusions may
be drawn from the same record does not render a finding
unsupported by substantial evidence. Id. at 1086; see also
In re Gartside, 203 F.3d 1305, 1312 (Fed. Cir. 2000).
Under § 2(d) of the Lanham Act, registration of a
mark must be refused if it “so resembles . . . a mark or
trade name previously used in the United States by
another and not abandoned, as to be likely, when used on
or in connection with the goods of the applicant, to cause
7 ESTRADA v. TELEFONOS DE MEXICO
confusion, or to cause mistake, or to deceive.” 15 U.S.C.
§ 1052(d) (2006). The existence of a likelihood of confu-
sion between two marks under § 2(d) is determined on a
case-by-case basis, aided by the application of the DuPont
factors. On-Line Careline, 229 F.3d at 1084; see also
DuPont, 476 F.2d at 1361. Not all of the DuPont factors
are relevant or of similar weight in every case, however,
and any one factor may control a particular case. Majes-
tic Distilling, 315 F.3d at 1315.
On appeal, Estrada asserts numerous errors in the
Board’s factual findings underlying its conclusion that a
likelihood of confusion exists. Telefonos, in response,
argues that the Board’s factual findings are supported by
substantial evidence and that the Board correctly sus-
tained Telefonos’ oppositions. As we shall explain, we
conclude that the Board’s factual determinations are
supported by substantial evidence and that the Board
correctly sustained Telefonos’ oppositions based on the
existence of a likelihood of confusion.
Before reaching the merits of this appeal, we address
Estrada’s argument, raised for the first time on appeal,
that Telefonos failed to prove its standing and interest
before the Board. Estrada contends that Telefonos lacks
standing because the now-pending trademark application
for TELMEX was filed at the PTO by Telefonos de Mexico,
S.A. de C.V, a different entity from the opposer in the
present appeal, Telefonos de Mexico, S.A.B. de C.V.
Without deciding the relationship between these entities,
we note that the Board held that Telefonos established
standing based on its common law use of TELMEX in the
United States, not based on any registered or applied-for
mark. Board Op., at *2. Accordingly, even if the regis-
trant of the TELMEX mark were unrelated to Telefonos,
ESTRADA v. TELEFONOS DE MEXICO 8
as Estrada contends, that would not affect Telefonos’
standing as opposer.
Turning to the merits, we first consider the matter of
priority. The Board found that Telefonos established its
priority in both opposition proceedings by pleading and
establishing use of its distinctive TELMEX mark in the
United States in connection with telephone calling card
services prior to the September 2, 2007, filing date of
Estrada’s applications. Id. at *2. Substantial evidence
supports this finding. Mr. Rivera testified that Telmex
USA was formed in 1997. Appellee App., Exh. DD, at 7.
He further testified that Telmex USA began selling
calling cards in the United States in approximately 2000
and sells about six million such cards annually through-
out the United States. Id. at 26. Mr. Rivera’s oral testi-
mony amounts to substantial evidence in support of the
Board’s priority determination. See Powermatics, Inc. v.
Globe Roofing Prods. Co., 341 F.2d 127, 129 (CCPA 1965)
(“[O]ral testimony, if sufficiently probative, is normally
satisfactory to establish priority of use in a trademark
proceeding.”).
We next review the Board’s conclusion that a likeli-
hood of confusion exists between Telefonos’ TELMEX
mark when used in connection with telephone calling card
services and Estrada’s AUDITORIO TELMEX mark when
used in connection with the arena and entertainment
services identified in his applications. We address in turn
each of the DuPont factors considered by the Board.
The Board first evaluated the similarity of the marks
in their entireties. Board Op., at *6-7. The Board noted
that Estrada’s applications disclaimed the AUDITORIO
portion of his mark, which is at least highly descriptive of
his services. The Board found that Telefonos’ TELMEX
9 ESTRADA v. TELEFONOS DE MEXICO
mark is identical to the dominant and only distinctive
element in Estrada’s mark and that the two marks are
highly similar overall. This finding is both supported by
the record and consistent with our case law. Although
marks must be compared in their entireties, “there is
nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature
of a mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties.” In re Nat’l
Data Corp., 753 F.2d 1056, 1058 (Fed. Cir. 1985).
The Board then considered the fame or strength of
Telefonos’ mark. Board Op., at *7-8. The Board found
that although Telefonos’ evidence was insufficient to
prove that its TELMEX mark is famous in the United
States, the record nonetheless established that TELMEX
is a strong, inherently distinctive mark in the United
States. The Board noted that it had no evidence that
anyone other than Telefonos has ever used TELEMEX for
any purpose. In support of this finding, the Board noted
that Estrada, in response to Telefonos’ interrogatories,
conceded that he was unaware that anyone other than
himself or Telefonos has the right to use TELMEX.
Appellee App., Exh. E, Interrog. No. 16. Moreover, the
unchallenged finding by the Board that TELMEX is a
coined term, and is therefore inherently distinctive,
further establishes the mark’s strength. See In re Chip-
pendales USA, Inc., 622 F.3d 1346, 1350 n.2 (Fed. Cir.
2010). Substantial evidence thus supports the Board’s
finding that TELMEX is a strong, inherently distinctive
mark in the United States.
The next DuPont factor considered by the Board was
the similarity or dissimilarity of the services. Board Op.,
at *8-9. As noted supra, the Board found that Telefonos’
calling cards display promotions for events and activities
ESTRADA v. TELEFONOS DE MEXICO 10
sponsored by Telefonos, including sporting and other
entertainment events. The Board found that these pro-
motions create an association between Telefonos’ tele-
communications services and entertainment services.
The Board further found that Telefonos offers a variety of
telecommunications services in the United States includ-
ing voice, data, video, and Internet services, thus proving
an association of the TELMEX mark with a broad range
of telecommunication services, including Internet ser-
vices. Moreover, the Board noted that events such as the
2008 Latin American MTV Music Awards have been
televised from Telefonos’ AUDITORIO TELMEX arena
over the Internet into the United States, which supports
an association between Telefonos’ telecommunications
services and Estrada’s arena services and entertainment
services. Based on these findings, the Board concluded
that relevant consumers, when confronted with similar
marks in conjunction with both types of services, would
likely believe that the services are associated with a
common source.
Estrada contends on appeal that entertainment ser-
vices and arena services are not related to telecommuni-
cations services, and that Telefonos failed to establish
that the promotions displayed on its calling cards would
create an association between these services. We disagree
with Estrada and conclude that substantial evidence
supports the Board’s findings. In Recot, Inc. v. Becton, we
explained that, “even if the goods in question are different
from, and thus not related to, one another in kind, the
same goods can be related in the mind of the consuming
public as to the origin of the goods.” 214 F.3d 1322, 1329
(Fed. Cir. 2000); see also On-Line Careline, 229 F.3d at
1086 (applying Recot in analyzing the similarity of ser-
vices). The Board considered the evidence submitted by
Telefonos, including the testimony of Mr. Rivera and the
11 ESTRADA v. TELEFONOS DE MEXICO
images of calling cards bearing Telefonos’ TELMEX mark
and depicting sporting and other entertainment events
sponsored by Telefonos. Board Op., at *9; Appellee App.,
Exhs. 3-4. Although telecommunications services are
different in kind from arena and entertainment services,
the Board properly relied on substantial evidence in the
record to find that the services, when used in connection
with the marks at issue, would likely be related in the
mind of the consuming public.
Estrada assails the Board’s factual finding on numer-
ous other bases. For example, Estrada contends that the
Board, in analyzing the similarity of the services, violated
the principle of territoriality by considering the fame of
Telefonos’ TELMEX mark in Mexico. Contrary to
Estrada’s contention, however, the Board explicitly stated
that the fame of Telefonos’ TELMEX mark in Mexico was
relevant only to its finding of bad faith. Board Op., at *7.
And, as noted infra, the Board’s finding of bad faith was
unnecessary to its conclusion that a likelihood of confu-
sion existed. Estrada’s contention thus lacks merit.
Estrada moreover contends that the Board erred by
considering certain of Telefonos’ evidence that was dated
after the filing date of Estrada’s applications. Our prece-
dent is clear, however, that “evidence bearing on the issue
of likelihood of confusion is admissible for the period
extending through the latest date permitted by the proce-
dural rules of the [PTO] for taking testimony and present-
ing evidence.” R.J. Reynolds Tobacco Co. v. Am. Brands,
Inc., 493 F.2d 1235, 1238 (CCPA 1974). Additionally,
Estrada asserts on appeal that Mr. Rivera’s testimony
lacks probative value because he is insufficiently familiar
with Mexico. Before the Board, however, Estrada pro-
vided no evidence to rebut Mr. Rivera’s testimony, and in
any event, as noted, the Board considered evidence re-
garding the fame of Telefonos’ TELMEX mark in Mexico
ESTRADA v. TELEFONOS DE MEXICO 12
only on the question of bad faith. None of Estrada’s
arguments alters our conclusion that the Board’s finding
is supported by substantial evidence.
Finally, the Board considered the matter of bad faith.
Board Op., at *9-10. The thirteenth DuPont factor per-
mits the Board to weigh “[a]ny other established fact
probative of the effect of use.” DuPont, 476 F.2d at 1361.
An applicant’s bad faith is potentially relevant in the
likelihood-of-confusion analysis. See L.C. Licensing Inc. v.
Berman, 86 U.S.P.Q. 2d (BNA) 1883, 1890 (T.T.A.B.
2008); see also Paddington Corp. v. Attiki Imps. & Dis-
tribs., Inc., 996 F.2d 577, 587 (2d Cir. 1993) (“Where a
second-comer acts in bad faith and intentionally copies a
trademark or trade dress, a presumption arises that the
copier has succeeded in causing confusion.”). As noted
supra, the Board found that Estrada had been “evasive
and disingenuous” by essentially denying any prior
knowledge of Telefonos’ TELMEX mark. The Board
concluded that Estrada exhibited “not only bad faith but a
general lack of respect for the application and opposition
process.” Board Op., at *10. The Board noted that al-
though it would have found a likelihood of confusion on
the present facts even without a finding of bad faith, were
this a close case Estrada’s bad faith would have tipped the
balance to a finding of a likelihood of confusion. We
conclude that substantial evidence supports the Board’s
finding of Estrada’s bad faith. As the Board noted, if
Estrada had an explanation for his implausible responses,
he could have provided that explanation by submitting
evidence at trial.
Taken together, the Board’s factual findings—all of
which point to the existence of a likelihood of confusion—
are supported by substantial evidence in the record. We
therefore disagree with Estrada and conclude that the
13 ESTRADA v. TELEFONOS DE MEXICO
Board did not err in finding that a likelihood of confusion
exists between Telefonos’ TELMEX mark used in connec-
tion with calling card services and Estrada’s AUDITORIO
TELMEX mark used in connection with the arena ser-
vices and entertainment services identified in his applica-
tions.
CONCLUSION
We have considered all of Estrada’s remaining argu-
ments and find them unpersuasive. Accordingly, we
affirm the determination of the Board.
AFFIRMED