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“M2” and “M2 Communications” Marks for CD-ROMs Are Not Likely to Be Confused Where Those CD-ROMs Are Produced for Distinct Industries

June 07, 2006

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Last Month at the Federal Circuit - July 2006

Judges: Mayer (author), Bryson, Prost

In M2 Software, Inc. v. M2 Communications, Inc., No. 05-1599 (Fed. Cir. June 7, 2006), the Federal Circuit affirmed the decision of the Trademark Trial and Appeal Board (“TTAB”), dismissing M2 Software, Inc.’s (“M2 Software”) opposition to M2 Communications, Inc.’s (“M2 Communications”) registration of the mark M2 COMMUNICATIONS for interactive CD-ROMs containing information in the fields of health, pharmacy, and medicine.

M2 Communications filed an application to register the mark M2 COMMUNICATIONS for “[i]nteractive multimedia CD-ROMs containing educationalinformation in the fields of pharmaceutical and medical product information, therapies and strategies, and medical, pharmaceutical, and healthcare issues . . . .” M2 Software opposed M2 Communications’s application. M2 Software used the M2 mark before M2 Communications, and owns Registration No. 1,931,182 for the mark M2 for “[c]omputer 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.”

Based on the restriction in M2 Software’s registration (limiting use of its marks to goods in the film and music industries), and the restriction in M2 Communications’s application (limiting use of the mark to goods in the pharmaceutical and medical industries), the TTAB found that M2 Communications’s goods were not encompassed by M2 Software’s registration and the parties’ goods were unrelated. The TTAB reasoned that while both parties sell goods in the same media format (i.e., interactive CD-ROMs), that fact alone does not render them either identical or related. Rather, because the claimed industries are distinct and the registration and application identify subsets of CD-ROMs (not CD-ROMs generally), the parties’ products are different goods.

In concluding that no likelihood of confusion existed, the TTAB also relied on the findings that while “very similar,” the parties’ marks were not identical due to the additional term “COMMUNICATIONS” and that there was no overlap in the parties’ purchasers or channels of trade. M2 Software appealed.

On appeal, the Federal Circuit dismissed M2 Software’s argument that because its registration covers “interactive multimedia applications for entertainment, education and information,” the scope of the registration encompasses interactive multimedia software in any field. The Court found that such a reading would require it to improperly ignore language plainly limiting its registration to goods in the music and entertainment fields. The Court also found that it was proper for the TTAB to ground its decision on the relatedness in the fields for which the goods are created, rather than the media format in which they are delivered. Given the pervasiveness of software and software-related goods in society, the Court reasoned that it would be inappropriate to presume relatedness on the mere basis of goods being delivered in the same media format, especially where the goods described are defined narrowly, along distinct industry lines.

The Federal Circuit also agreed with the TTAB’s analysis on the remaining likelihood of confusion factors. The Court found that there was no overlap in the parties’ trade channels or purchasers as neither party submitted evidence of inherent overlap of customers or trade channels between the pharmaceutical and medical industries, on the one hand, and the music and entertainment industries, on the other. In concluding that these factors weighed heavily against M2 Software, the Court noted the difficulty of establishing a likelihood of confusion absent overlap as to either factor.

The Court likewise approved the TTAB’s finding that the marks were not identical and that the heightened protection given the M2 mark on account of its fanciful nature did not affect the finding of likelihood of confusion. Finally, the Court agreed that the intent factor did not weigh in M2 Software’s favor as M2 Communications adopted the M2 mark because it was a shorthand for “medical marketing,” and it was unaware of M2 Software’s mark at the time of adoption.

Therefore, because the unrelated nature of the parties’ goods, distinct trade channels, and purchasers outweighed the factors favoring M2 Software (i.e., the similarity of the marks and the fanciful nature of the M2 mark), the Federal Circuit affirmed the TTAB’s decision finding no likelihood of confusion.