BOSE CORP. v. TOFASCO OF AMERICA, INC., 91176670 (TTAB 10-12-2010)
Opposition No. 91176670 against Serial No. 76628472United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Hearing: October 12, 2010Mailed: February 11, 2011Page 1
THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B.
Amy L. Brosius, Charles Hieken and Tashia A. Bunch of Fish Richardson P.C. for Bose Corporation.
Gary J. Gorham and Jon M. Leader of Leader Gorham L.L.P. for Tofasco of America, Inc.
Before Bucher, Cataldo and Wellington, Administrative Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Tofasco of America, Inc. sought registration on the Principal Register of the mark Life Styling (instandard character format) for goods identified in the application, as amended, as follows:
“portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing audio, video, multimedia, text, and data files; accessories for portable and handheld digital electronic devices, namely headphones, carrying cases, digital transmitters, infrared remote controls, interconnect cables, power adapters, rechargeable batteries, power cords,Page 2
gaming joysticks and mounting frames” in International Class 9.[fn1]
Registration has been opposed by Bose Corporation. As its grounds for opposition, opposer asserts that applicant’s mark when used in connection with its goods so resembles opposer’s previously used and registered mark LIFESTYLE (instandard character format), for “loudspeaker systems”[fn2] and for “music systems consisting of a loudspeaker system and power amplifier and at least one of a CD player and radio tuner,”[fn3] both sets of goods also in International Class 9, as to be likely to cause confusion, to cause mistake or to deceive under Section 2(d) of the Lanham Act. Opposer has also demonstrated its common law usage of theLIFESTYLE mark for home theatre systems and home entertainment systems since the 1990’s.
Applicant, in its answer, has denied the essential allegations in the opposition.Page 3
The Record
In addition to the pleadings, the file of opposed application Serial No. 76628472 is part of the record without any action by the parties. Trademark Rule 2.122(b), 37 C.F.R. ? 2.122(b). Additionally, on January 24, 2008, opposer filed a Notice of Reliance on applicant’s responses to opposer’s first set of interrogatories, as well as status and title copies of its claimed LIFESTYLE registrations; and later, opposer introduced into evidence the trial testimony taken on June 29, 2009, of William Allen, a program manager in opposer’s marketing operations since 1989, having attached thirty-nine exhibits.
Attorneys for applicant did not attend the deposition of Mr. Allen. Applicant took no testimony in the proceeding and did not file a Notice of Reliance. Applicant has briefed the issues on final decision but chose to waive its right to attend the oral hearing held before this panel of the Board on October 12, 2010.
Preliminary Matters
On September 1, 2009, applicant filed a motion to amend its identification of goods to exclude explicitly from the above amended identification of goods “? home loudspeaker systems, home theatre systems and home music systems ? .”Page 4
The Trademark Rules permit an applicant involved in aninter partes proceeding to amend an application to restrict the identification of goods in the application upon motion to the Trademark Trial and Appeal Board.[fn4] According to the Trademark Trial and Appeal Board Manual of Procedure (TBMP):
When a motion to amend an application or registration in substance is made without the consent of the other party or parties, it ordinarily should be made prior to trial, in order to give the other party or parties fair notice thereof; an unconsented motion to amend which is not made prior to trial, and which, if granted, would affect the issues involved in the proceeding, normally will be denied by the Board unless the matter is tried by express or implied consent of the parties pursuant to Fed.R.Civ.P. 15(b).[fn5]
Applicant neither sought nor received the consent of opposer for this proposed amendment. Opposer does not consent to the motion, and in fact, opposes the motion to amend.
Applicant points to a case where the Board permitted such an amendment even when the opposer objected to the amendment.[fn6] However, as noted by opposer herein, in GiantPage 5Food, the applicant filed its motion before trial. Here, applicant delayed filing its motion until after opposer had completed taking testimony and after opposer had served applicant with copies of its witness’ transcript and exhibits, in a trial where applicant took no testimony.[fn7]
Finally, even if the tardy, unconsented motion were to be granted, this issue goes to a determinative du Pont
factor, raising questions never tried by express or implied consent of the parties, and we are not convinced on this record that the proposed amendment would avoid a likelihood of confusion. Hence, applicant’s motion to amend is denied.
A second issue before us is whether to accord any weight to the alleged existence of hundreds of third-party registrations that are not in evidence and that applicant relied upon for the first time in its brief. Because applicant took no testimony in this proceeding and did notPage 5
file a notice of reliance, these alleged registrations are clearly not in evidence. See Edison BrothersStores, Inc. v. Brutting E.B. Sport-International GmbH, 230 USPQ 530, 532 (TTAB 1986) [reference to third-party registrations in a brief]; and other cases cited in “Third-Party Registrations,” TBMP ? 704.03(b)(1)(B) (2d ed. rev. 2004).
Factual Findings
The bulk of opposer’s case is based upon the testimony of William Allen, an engineer who has been employed at Bose as a program manager in the marketing operations since the development of the LIFESTYLE product in 1989.[fn8] The LIFESTYLE product began as a self-contained music and loudspeaker system that delivered sound from CDs, tape recorders, or from the radio. From the inception, this system was operated by a radio frequency remote control.[fn9] Over the past twenty years, theLIFESTYLE product line has evolved and expanded to incorporate additional features, such as DVD players, digital music storage capability, and having a greater ability to interface with, and control, other external devices such as set-top boxes, DVD players and TVs. The LIFESTYLE home entertainment system has evolved into fairly sophisticatedPage 7
combinations of electronic devices that record and transmit both audio and video.[fn10]
Mr. Allen testified that the LIFESTYLE products have over the years generated a significant volume of press attention, both in the U.S. and internationally.[fn11] He identified a number of design awards given to theLIFESTYLE products as well as numerous press releases announcing the launch of many of the series of system releases over the years.[fn12]
While some of the early systems had the LIFESTYLE mark printed prominently on the brushed aluminum top surface of the product, later systems display LIFESTYLE on the system’s remote control or the LCD screen connected thereto whenever the product is turned on. The product packaging and inserted documentation carry the LIFESTYLE designation as well. Extensive documentation on each of opposer’s many LIFESTYLE products has been made of record herein.Page 8
Between fiscal year 1991 and 2009, in the United States alone, opposer rang-up in excess of $2.5 billion in gross retail sales of products bearing the LIFESTYLE mark. From fiscal year 1993 to 2009, opposer spent more than $67 million promoting its LIFESTYLE products in the United States.[fn13] Opposer’s LIFESTYLE products are sold by retail establishments such as Best Buy, Magnolia Hi-Fi, HH Gregg and Good Guys, as well as through Bose retail stores and the Bose.com Internet website.[fn14] Standing and priority
As a preliminary matter, we find that opposer has established its standing by alleging and submitting status and title copies of its claimed registrations. Because opposer has made of record copies of its valid and subsisting registrations, the issue of priority does not arise. See King CandyCompany v. Eunice King’s Kitchen, Inc.,496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Moreover, applicant has not contested opposer’s claims of priority based upon its registrations or its claims of prior common law rights.Page 9
Likelihood of Confusion
We turn then to the issue of likelihood of confusion. Our determination of likelihood of confusion must be based upon our analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. See In re E. I. duPont de Nemours Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the relatedness of the goods. See Federated Foods,Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
The salient question to be determined is not whether the involved goods of the parties are likely to be confused, but rather whether there is a likelihood that the relevant purchasing public will be misled to believe that the goods offered under the involved marks originate from a common source. See J.C. Hall Company v. Hallmark Cards,Incorporated, 340 F.2d 960, 144 USPQ 435 (CCPA 1965); andThe State Historical Society of Wisconsin v. RinglingBros.-Barnum Bailey Combined Shows, Inc., 190 USPQ 25 (TTAB 1976).Page 10
Renown of opposer’s mark
While opposer has not provided us with information about its national market share relative to its primary competitors of consumer electronics in the nature of music systems, loudspeaker systems, home entertainment systems and home theatre systems, we do know that over a period of nineteen years, opposer has enjoyed more than $2.5 billion in gross retail sales of products bearing the LIFESTYLE mark, while spending more than $67 million promoting itsLIFESTYLE products over a period of seventeen of those years. The LIFESTYLE products have been advertised in many national publications for twenty years, though direct mail and on opposer’s website. Opposer has generated a significant amount of unsolicited press coverage of the LIFESTYLE
product throughout the years, and has been recognized with various national awards for the design and innovation of its music and entertainment systems. This degree of renown compares favorably with reported decisions finding marks to be famous in the past.[fn15] For our purposes, we find that theLIFESTYLEPage 11
brand is at the very least extremely well-known in this field, and hence deserves a wide scope of protection.
The Marks
We turn next to the du Pont factor focusing on the similarities or dissimilarities in the appearance, sound, connotation and commercial impression of the respective marks.Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin MaisonFondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
Applicant argues that its “verbification” of opposer’s mark (i.e., from “Lifestyle” to “Life Styling”) results not only in a mark with a dissimilar appearance, but one with a distinct connotation from the word “lifestyle.”
Applicant, in its brief, faults opposer for failing to provide us with “any independent evidence of similarity inPage 12
the marks’ meanings, sound, appearance and consumer impression for our consideration.” However, we do not need an expert witness to apply this element of the du Pont
factors to the marks in a specific case before us.
Although applicant correctly asserts that the test for likelihood of confusion is not whether the respective marks can be distinguished when subjected to a side-by-side comparison in the marketplace, it then says:
[Applicant’s] Life Styling mark is visually distinct from [opposer’s] LIFESTYLE mark. First, when displayed side-by-side, as these marks may be encountered in the marketplace, [opposer’s] mark is one word, while [applicant’s] mark is two distinct words. Both marks contain the word “life” but vary as to the use of the word “style.” The second word in [applicant’s] mark is a verbification of “style” in the form of “styling.” [emphasis supplied]
Of course, the correct focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v.Scott Paper Co., 190 USPQ 106 (TTAB 1975). While we agree with applicant that the marks at issue must be considered in their entireties, one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the impression created by a mark. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). As toPage 13
appearance, sound, meaning and commercial impression, it is significant that the first two syllables are essentially identical. Moreover, in this case, there is no indication that opposer’s LIFESTYLE mark is anything other than a somewhat suggestive term in relation to opposer’s goods.
Nonetheless, applicant’s mark, Life Styling, possesses the same first two syllables as opposer’s well known mark. While applicant has added an “ing” suffix, we find this to be subordinate matter that does very little to distinguish the marks. In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984). In fact, with a particular focus on the connotations of the respective marks, should consumers even notice the different ending, applicant’s “verbification” of opposer’s mark could exacerbate the likelihood of confusion ? attributing the minor change to a brand extension by opposer from the stationary items for which it is well-known into the ever-changing world of miniaturization and portability.
While applicant tries repeatedly to limit the source-identifying significance of the cited mark, we disagree. There is no evidence in the record supporting a claim that opposer’s LIFESTYLE mark is weak or should be accorded a narrowed scope of protection.
Accordingly, as to this critical du Pont factor, we find in favor of opposer.Page 14
The Goods
It is not necessary that the respective goods be identical or even competitive in order to establish likelihood of confusion. Rather, it is sufficient that the goods are related in some manner, or that the circumstances surrounding their marketing are such, that they would be likely to be encountered by the same persons in situations that would give rise, because of the marks used thereon, to a mistaken belief that they originate from or are in some way associated with the same source or that there is an association or connection between the sources of the respective goods. See In re Martin’s FamousPastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); and In re International Telephone TelegraphCorp., 197 USPQ2d 910 (TTAB 1978).
The record shows that the music and entertainment products that opposer markets under the LIFESTYLE label include electronic devices capable of storing, transmitting and playing audio files, and that such electronic devices are connected to other external sources that can store and play both audio and video files. We note that substantially all of opposer’s high-end products have remote controls as an integral feature of their capabilities. Moreover, thePage 15
popularity of opposer’s systems is grounded in their ability to interface effortlessly with a wide variety of electronic devices, including portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating and playing audio files, including, for example, MP3 portable devices. Yet the stated portability of applicant’s devices is the clearest characteristic distinguishing its goods from those of opposer. Hence, when one looks at applicant’s identification of goods, it is clear on the face of the application that applicant’s portable electronic products are closely related to the opposer’s LIFESTYLE products.
In view of the foregoing, and based on the evidence of record and identifications of goods, we find that the parties’ goods are related, and resolve this factor too in opposer’s favor.
Trade Channels and the conditions under which andbuyers to whom sales are made
As to these two related du Pont factors, neither the involved application nor opposer’s registrations contain any limitation on channels of trade or on classes of purchasers. Accordingly, in the absence of limitations on the respective trade channels and classes of purchasers in the application and registrations, we find that likelihood of confusion herein must be evaluated relative to all channels of tradePage 16
and all classes of purchasers for the identified goods.Kangol Ltd. v. KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); Canadian Imperial Bank v.Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); and CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983). Hence, these factors too favor opposer.
Conclusion
We conclude, based upon a preponderance of the evidence, and particularly in view of the similarities between the marks, the strength of opposer’s mark, and the relatedness of the respective goods as identified in the identifications of goods, that there is a likelihood of confusion when LIFESTYLE
is used on opposer’s loudspeaker systems, home entertainment systems and home theatre systems, and contemporaneously, applicant uses Life Styling on its portable and handheld digital electronic devices. In addition to opposer’s two decades of priority, it has spent millions of dollars in advertising its most successful LIFESTYLE electronic products and sold billions of dollars of theseLIFESTYLE electronic products over the years.
Decision: The opposition is sustained based upon the ground of likelihood of confusion under Section 2(d) of the Lanham Act, and registration to applicant is hereby refused.
[fn1] Application Serial No. 76628472 was filed on January 21, 2005, based upon applicant’s allegation of a bona fideintention to use the mark in commerce. [fn2] Registration No. 1622251 issued on November 13, 1990; second renewal. [fn3] Registration No. 2108847 issued on October 28, 1997; renewed. [fn4] AMENDMENT OF APPLICATION OR REGISTRATION DURING PROCEEDINGS.
(a) An application subject to an opposition may not be amended in substance nor may a registration subject to a cancellation be amended or disclaimed in part, except with the consent of the other party or parties and the approval of the Trademark Trial and Appeal Board, or upon motion granted by the Board.
37 C.F.R. ? 2.133(a).
[fn5] TBMP ? 514.03 (2d ed. rev. 2004). [fn6] Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955, 963 (TTAB 1996). [fn7] See ProQuest Information and Learning Co. v.Island, 83 USPQ2d 1351, 1353-54 (TTAB 2007) [Board denied applicant’s requests in his brief to narrow his identification of goods to avoid any likelihood of confusion]; PersonnelData Systems, Inc. v. Parameter Driven Software, Inc., 20 USPQ2d 1863 (TTAB 1991) [Board denied as untimely, respondent’s motion to amend the identification of goods in its registration which request was filed with respondent’s brief on the case];International Harvester Company v. International Telephoneand Telegraph Corporation, 208 USPQ 940, 941 (TTAB 1980) [amendment to identification may be permitted if made before trial, if it serves to limit the scope of goods, and if applicant consents to judgment with respect to the broader identification of goods]; and Gulf States Paper Corporationv. E-Z Por Corporation, 157 USPQ 450 (TTAB 1968) [Board denied Applicant’s motion to amend the identification of goods filed after opposer had put on his case, noting that the timing would prejudice opposer]. [fn8] William Allen deposition of June 29, 2009, at 7-9. [fn9] Id. at 10. [fn10] Id. at 10-14. [fn11] Mr. Allen identified press mentions in publications such as Business Week, Cigar Aficionado, Food Wine andMetro New York, and paid advertisements in publications such as Scientific American. William Allen deposition of June 29, 2009, at 48-53, 60-68; Exhibits ## 32, 34-39. [fn12] William Allen deposition of June 29, 2009, at 24, 26, 32, 44-45; Exhibits ## 10, 12, 13, 17, 30-31. [fn13] William Allen deposition of June 29, 2009, at 67. [fn14] Id. at 55?57. [fn15] Bose Corp, 63 USPQ2d at 1305- 06 [WAVEand ACOUSTIC WAVE for audio products: over $50 million in sales, over $5 million annually in advertising over seventeen years]; Nina Ricci, S.A.R.L. v. E.T.F. Enters.,Inc., 12 USPQ2d 1901, 1902 (Fed. Cir. 1989) [NINARICCI for perfume, clothing and accessories: $200 million in sales, over $37 million in advertising over twenty-seven years]; Kimberly-Clark Corp. v. H. Douglas Enterprises,Ltd., 227 USPQ 541, 542 (Fed. Cir. 1985) [HUGGIES
for diapers: over $300 million in sales over nine years, $15 million in advertising in one year]; Specialty Brands Inc.v. Coffee Bean Distribs., Inc., 223 USPQ 1281, 1284 (Fed. Cir. 1984) [SPICE ISLANDS for teas, spices and seasonings: $25 million annually in sales for spices, $12 million between 1959 and 1981 for tea, “several million” in advertising, in use for forty years]; Giant Food, Inc. v.Nation’s Foodservice, Inc., 218 USPQ 390, 392-93 (Fed. Cir. 1983) [GIANT FOOD for supermarket services and food
products: sales over $1 billion in one year, “considerable amounts of money” in advertising, forty-five years use]; and Planters Nut Chocolate Co. v. Crown Nut Co., 134 USPQ 504, 506 (CCPA 1962) (The caricature design of “Mr. Peanut” used in connection with nuts and nut products: $350 million in sales, $10 million in advertising over ten years).