Bose Corporationv.Hexawave, Inc.

Trademark Trial and Appeal Board

Nov 6, 2007

No. 91157315 (T.T.A.B. Nov. 6, 2007)

Oral Hearing: Mailed:
March 15, 2007 November 6, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Bose Corporation
v.
Hexawave, Inc.
_____

Opposition No. 91157315

_____

Charles Hieken and Amy L. Brosius of Fish & Richardson P.C.
for Bose Corporation.

Morton J. Rosenberg of Rosenberg, Klein & Lee for Hexawave
Inc.
______

Before Hohein, Drost and Kuhlke, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Hexawave Inc. (applicant) has filed an application to
register the mark HEXAWAVE (in standard character form) on
the Principal Register for “compound semi-conductor devices
consisting of an integrated circuit; microwave monolithic
integrated circuit; modules, namely power modules for
wireless communication; transistor; tuner; mixer; amplifier;
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91157315
2
downconverter; transceiver; transmitter; receiver;
detectors, namely radio frequency detectors; radio frequency
switch; antenna” in International Class 9.1
Bose Corporation (opposer) has opposed registration of
the above mark based on the claims of likelihood of
confusion, under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), with its previously used and registered
marks ACOUSTIC WAVE and WAVE, and fraud based on allegations
that applicant has not used the mark in connection with all
of the goods listed in the application. In the notice of
opposition, opposer alleges that it is the owner of the
following registrations:
Registration No. 1338571 for the mark ACOUSTIC
WAVE for “loudspeaker systems”;2

Registration No. 1764183 for the mark ACOUSTIC
WAVE for “loudspeaker systems and music systems
consisting of a loudspeaker system and amplifier
and at least one of a radio tuner, compact disc
player and audio tape cassette player”;3 and

Registration No. 1633789 for the mark WAVE for
“radios, clock radios, audio tape recorders and
players, portable radio and cassette recorder

1 Serial No. 76304063, filed on August 24, 2001, alleging dates
of first use and first use in commerce of May 2, 2000 under
Section 1(a) of the Trademark Act, 15 U.S.C. §1051(a).

2 Issued on the Supplemental Register on May 28, 1995 with
claimed dates of first use and first use in commerce of February
1, 1984; renewed.

3 Issued on April 13, 1993, on the Principal Register, with
claimed dates of first use and first use in commerce of February
1, 1984; renewed.

Opposition No. 91157315
3
combinations, compact stereo systems and portable
compact disc players.”4

Applicant, in its answer, has denied the salient
allegations in the opposition. In addition, applicant
asserts a counterclaim which seeks to cancel pleaded
Registration No. 1633789 on the ground of fraud. In
particular, applicant alleges that opposer committed fraud
when it filed its renewal under Sections 8 and 9 of the
Trademark Act claiming use on audio tape recorders and
players when it knew it no longer manufactured or sold those
goods.
Opposer in its answer to the counterclaim has denied
the salient allegations thereof.
The record includes the pleadings; the opposed
application and registration subject to the counterclaim;
applicant’s responses to opposer’s interrogatories and
document requests made of record under opposer’s notice of
reliance; opposer’s responses to applicant’s interrogatories
and document requests made of record under applicant’s
notice of reliance; and the testimony of John F. Mar,
opposer’s product manager, Mark E. Sullivan, opposer’s
general counsel and assistant secretary (Sullivan I taken by
opposer on January 26, 2006 and Sullivan II taken by

4 Issued February 5, 1991, on the Principal Register, with
claimed dates of first use and first use in commerce on September
25, 1989; renewed.
Opposition No. 91157315
4
applicant on March 29, 2006), and Carol Fritz, a legal
assistant employed by opposer.5
Both parties have filed briefs and an oral hearing was
held on March 15, 2007.6
COUNTERCLAIM ON THE GROUND OF FRAUD
We first address applicant’s counterclaim to cancel
opposer’s pleaded Registration No. 1633789 on the ground of
fraud.
Standing
Applicant has standing based on opposer’s assertion of
this registration against applicant in its opposition to the
application. Ohio State University v. Ohio University, 51
USPQ2d 1289, 1293 (TTAB 1999) (“[A]pplicant’s standing to
assert the counterclaim arises from applicant’s position as
a defendant in the opposition and cancellation initiated by
opposer”).

5 Though some discovery submissions (e.g., documents obtained
from another party under Fed. R. Civ. P. 34, see Trademark Rule
2.120(j)(3)(ii)) are not proper subject matter for introduction
by notice of reliance, because neither party made objection to
such submissions we have treated the material as having been
stipulated into the record, and accorded the submissions whatever
probative value they warrant. Jeanne-Marc, Inc. v. Cluett,
Peabody & Co., Inc., 221 USPQ 58 (TTAB 1984).

6 On September 24, 2007, the Board granted opposer’s consented
motion to suspend proceedings until October 24, 2007 to allow
time for settlement. On October 23, 2007, opposer filed a paper
informing the Board that no progress towards settlement had been
made and no further suspension was sought.
Opposition No. 91157315
5
Fraud
In order for applicant to prevail on a claim of fraud,
applicant must prove that opposer knowingly made “false,
material representations of fact in connection
with” opposer’s Section 8/9 renewal, filed January 8, 2001.
Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d
1483, 1484 (Fed. Cir. 1986) (“Fraud in obtaining renewal of
a registration amounts to fraud in obtaining a registration
within the meaning of Section 14(c) of the Lanham Act”).
See also Hachette Filipacchi Presse v. Elle Belle, LLC, ___
USPQ2d ___ (Canc. No. 92042991 TTAB April 9, 2007)
(statements regarding the use of the mark on goods and
services are material to issuance and maintenance of a
registration covering such goods and services). That is, to
constitute fraud on the United States Patent and Trademark
Office (USPTO), a statement must be (1) false, (2) made
knowingly, and (3) a material representation. Moreover, the
charge of fraud upon the USPTO must be established by clear
and convincing evidence. See Giant Food, Inc. v. Standard
Terry Mills, Inc., 229 USPQ 955 (TTAB 1986). See also Smith
International Inc. v. Olin Corp., 209 USPQ 1033, 1044 (TTAB
1981) (“It thus appears that the very nature of the charge
of fraud requires that it be proven ‘to the hilt’ with clear
and convincing evidence. There is no room for speculation,
inference or surmise and, obviously, any doubt must be
Opposition No. 91157315
6
resolved against the charging party”). Fraud will not lie
if it is proven that the statement, though false, was made
with a reasonable and honest belief that it was true. See
Woodstock’s Enterprises Inc. (California) v. Woodstock’s
Enterprises Inc. (Oregon), 43 USPQ2d 1440, 1444 (TTAB 1997)
(defendant “held, at the time she signed the application
oath, an honest, good faith belief that her corporation ...
as the senior user of the registered mark, was the owner of
the mark”). “[P]roof of specific intent to commit fraud is
not required, rather, fraud occurs when an applicant or
registrant makes a false material representation that the
applicant or registrant knew or should have known was
false.” General Car and Truck Leasing Systems, Inc. v.
General Rent-A-Car Inc., 17 USPQ2d 1398, 1400 (S.D. Fla.
1990). See also Torres, supra, and Medinol Ltd. v. Neuro
Vasx Inc., 67 USPQ2d 1205 (TTAB 2003).
The material facts are largely undisputed. Rather, the
controversy in this case centers on the legal implications
that arise from those facts. Applicant contends and opposer
acknowledges that it stopped manufacturing and selling audio
tape recorders and players sometime in 1996 and that it had
completely phased out sales of this product by early 1997.
Based on these facts, applicant concludes that when
opposer filed its Section 8/9 renewal on January 6, 2001,
which included those goods in the statement of continuing
Opposition No. 91157315
7
use, it knowingly made a material, false statement to the
USPTO that consequently constitutes fraud.
Opposer disputes the contention that the statement was
false, arguing that it has continued to use its mark on the
goods because owners of audio tape recorders and players
continue to send their previously purchased goods to opposer
for repair services and upon completion of the repair
services opposer “transports” them back to the owner.
Mr. Sullivan, opposer’s general counsel and associate
secretary, signed the Section 8/9 renewal. He is
responsible for “all legal issues in the company,
intellectual property issues, contract issues, litigation
issues in Europe, Asia, the United States.” Sullivan I Dep.
p. 16. He stays current on the company’s primary business.
Id. at 20. It is clear from the record that Mr. Sullivan
knew that opposer had not manufactured or sold audio tape
recorders and players under the WAVE mark since 1997. Id.
at 9. See also Mar Dep. p. 54. In the following testimony,
Mr. Sullivan describes his asserted basis for including
these goods in the renewal:
Q. Okay. Was that statement true at the time you
signed this document?

A. Yes.

Q. Why was that true?

A. It’s my understanding that at that time this
product was being repaired. And in the process of
Opposition No. 91157315
8
repairs, the product was being transported back to
customers.

Id at 12.

The following testimony describes the logistics of the
“transportation”:
A. As I mentioned, the product comes back to the
company, and I already described how it comes back
here. It’s repaired by our parts group, and then
it’s shipped back to the consumer.

Q. Who pays for the shipping?

A. It depends. If it’s under warranty, we pay
for shipping. If it’s not under warranty, the
customer pays for the shipping.

Id. at 27-28.
Mr. Sullivan further testified that opposer does not
re-label or make any alteration to the product, apart from
the technical repair. Id. at 30.
It is not clear whether he consulted with his outside
trademark counsel as to whether the repair services and
subsequent shipments would constitute use in connection with
the goods. Sullivan II Dep. pp. 8-10. He does not recall
the basis for his understanding that “transporting” goods in
connection with repair services constitutes use in
connection with goods. See Id. at pp. 6-8. However, he
testified that he is aware of his duty to update the
description of goods to accurately reflect use of the mark.
Opposition No. 91157315
9
Sullivan I Dep. p. 33.7 As to whether Mr. Sullivan made
inquiries into opposer’s use of the mark prior to signing
the Section 8/9 renewal, there are inconsistencies between
Mr. Sullivan’s testimony and the testimony of his paralegal,
Ms. Fritz. Mr. Sullivan testified that he inquired of the
paralegal how the mark was being used, however, the
paralegal testified that no such inquiry was made. Compare
Sullivan I Dep. p. 23 with Fritz Dep. pp. 10-12, 17-18.
Opposer offers no case law to support its theory that
“transporting” a product back to an owner of that product in
connection with repair services constitutes use of a
trademark on a good so as to imbue the transporter with
trademark rights as to those goods as contemplated by
Section 45 of the Trademark Act, nor are we aware of any.
Trademark Act Section 45, 15 U.S.C. Section 1127, provides
in relevant part as follows:
The term “use in commerce” means the bona fide use
of a mark in the ordinary course of trade, and not
made merely to reserve a right in a mark. For
purposes of this Act, a mark shall be deemed to be
in use in commerce- (1) on goods when- (A) it is
placed in any manner on the goods or their
containers or the displays associated therewith or
on the tags or labels affixed thereto, or if the
nature of the goods makes such placement

7 We note that in 1996 when opposer filed its Section 8
declaration of continuing use to maintain the registration, the
declaration signed by Mr. Sullivan did not include the following
goods that were in the original registration: television
receivers, video cassette recorders, video cassette players, and
camcorders. See Sullivan I Dep. Exh. No. 67. Mr. Sullivan
testified that opposer never manufactured these goods. Sullivan
I Dep. p. 34.
Opposition No. 91157315
10
impracticable, then on documents associated with
the goods or their sale, and (B) the goods are
sold or transported in commerce, and (2) on
services when it is used or displayed in the sale
or advertising of services and the services are
rendered in commerce, or the services are rendered
in more than one State or in the United States and
a foreign country and the person rendering the
services is engaged in commerce in connection with
the services.

The term “trademark” includes any word, name,
symbol, or device, or any combination thereof-
(1) used by a person ... to identify and
distinguish his or her goods, including a unique
product, from those manufactured or sold by others
and to indicate the source of the goods, even if
that source is unknown.

Applicant argues that the assertion that “goods
belonging necessarily to others (the customers who purchased
them earlier and are now submitting them for repair)” is
“fallacious” inasmuch as “[o]ne could hardly be said to be
making use of one’s mark on or in connection with certain
goods when they are not one’s own goods.” Br. p. 38.
Further, applicant contends that “[a]s a rather fundamental
matter, then, before one can make ‘use in commerce’ of a
mark for certain goods, the goods must actually be ‘his or
her goods.’” Br. p. 39 citing Section 45. Applicant relies
on Standard Pressed Steel Co. v. Midwest Chrome Process Co.,
183 USPQ 758 (TTAB 1974), in support of its argument that
this activity cannot be considered use in connection with
goods. In Standard Pressed Steel, the Board stated:
But, the question here is what business was
fostered by the shipments of these fasteners. It
is readily apparent that applicant was not at that
Opposition No. 91157315
11
time and is not now commercially engaged either in
the manufacture and/or sale of fasteners as such;
that applicant’s primary business is the job
plating of fasteners and other metal parts
produced and/or owned by others; that applicant
has used and advertised the mark “UNBAR” solely to
identify a proprietary plating process; and that
the fasteners involved in these shipments were
plated with the “UNBAR” process and used to
demonstrate and solicit sales for the “UNBAR”
process rather than to promote the sale of
fasteners. Thus, under this set of circumstances,
it must be concluded that the initial shipment in
commerce on which the subject application is
predicated constitutes an insufficient basis or
foundation for the registration of “UNBAR” as a
trademark for fasteners.

There is no question but that a party need not be
a manufacturer of goods to own a trademark. In
fact, any person in the normal channels of
distribution including a manufacturer, a contract
purchaser who has goods manufactured for him, and
a retailer or merchant as well as any non-profit
organization or institution can be the owner of a
trademark “in commerce” if he applies or has
someone in his behalf apply his own trademark to
goods to which he has acquired ownership and title
and sells or merely transports such goods in
commerce as his own product with the mark, as
applied thereto, serving to identify the
particular product as emanating from the shipper
or seller in his own capacity. The essence is
title and ownership which bestows upon the person
possessing such attributes the unhampered right or
freedom to dispose of his products in any manner
appropriate and consonant with law. In the
present instance, applicant is primarily engaged
in performing plating services on screws or
fasteners and other metal objects owned by screw
manufacturers or by automobile producers who have
purchased the screws. While applicant adds value
to the screws by performing its “UNBAR” services
on them, the screws always remain the property of
the screw manufacturers or their customers with
applicant’s dominion over the goods being that of
a bailee confined to the specific task requested
by its customers with title never passing to
applicant ... The mark “UNBAR,” as used by
applicant on the containers in which the plated
Opposition No. 91157315
12
screws are shipped and on the shipping documents
accompanying the containers, serves merely to
advise the recipients of the goods, whether they
be screw manufacturers or their customers, members
of the automotive industry, that these screws have
been treated with the “UNBAR” plating service.
This use is not trademark use and hence does not
create trademark rights in “UNBAR” for fasteners.

Standard Pressed Steel, at 765.

Applicant argues that opposer’s “legal theory (of
trademark use) could only be postulated upon carefully
parsing language from a relatively obscure part of the
Lanham Act – the definitions. As highly suspect as it is,
the proffered theory is hardly self-evident enough in nature
to jump out at even a seasoned trademark attorney, much less
a general counsel like Mr. Sullivan .... When questioned
more closely about the genesis of this novel theory,
however, Mr. Sullivan could shed very little light .... ”
Br. p. 41.
Opposer attempts to distinguish the Standard Pressed
Steel case, noting that in this case “Bose is the original
manufacturer and source of the audio tape recorder and
player goods. Bose itself placed the WAVE mark on the
products, and the WAVE mark remains on the products
throughout the repair process and during the time the goods
are transported back to customers, thus constituting use in
commerce of the WAVE mark in connection with ‘audio tape
recorders and players’ in 2001 when Mr. Sullivan signed the
Sec. 8/9.” Reply Br. p. 10. We find this to be a
Opposition No. 91157315
13
distinction without a difference. As stated in Standard
Pressed Steel, the “essence is title and ownership which
bestows upon the person possessing such attributes the
unhampered right or freedom to dispose of his products.”
Standard Pressed Steel, supra at 765. Further, as noted by
the Ninth Circuit in the context of an infringement case, “a
mere repair of a trademarked good, followed by return of the
good to the same owner who requested the repair or rebuild,
does not constitute a ‘use in commerce’ of the trademark
under the Lanham Act unless the repair constituted a
complete rebuild of the product.” Karl Storz Endoscopy-
America v. Surgical Technologies Inc., 285 F.3d 848, 62
USPQ2d 1273, 1277 (9th Cir. 2002).
We acknowledge that sales of goods are not necessary to
establish trademark ownership and that transportation of
goods can be enough to establish use. Examples of
sufficient use based only on a transportation of goods
without a sale have included shipments of samples and
prototypes, International Mobile Machines Corp. v.
International Tel. & Tel. Corp., 800 F.2d 1118, 231 USPQ 142
(Fed. Cir. 1986), shipments for a sales presentation that
resulted in an order, Sunbeam Corp. v. Merit Enterprises,
Inc., 451 F. Supp. 571, 203 USPQ 494 (S.D.N.Y. 1978),
distribution of free samples, La Maur, Inc. v. International
Pharmaceutical Corp., 199 USPQ 612 (TTAB 1978), and
Opposition No. 91157315
14
shipments of drugs for use in clinical testing, Schering
Corp. v. Alza Corp., 207 USPQ 504, 506 n. 4 (TTAB 1980).8
However, in all of these examples, the entity transporting
the goods owned the goods at the time of transportation.
Similarly, in the case cited by opposer, the party asserting
trademark rights owned the goods that were transported. See
General Healthcare Ltd. v. Qashat, 364 F.3d 332, 70 USPQ2d
1566, 1568 (1st Cir. 2004).
Put simply, the scenario presented by opposer does not
constitute use sufficient to maintain a registration for
goods. Thus, the only question is whether it was reasonable
for opposer to believe that it did.
The Board has considered the question of “reasonable
belief” in other cases. In Maids to Order of Ohio Inc. v.
Maid-to-Order Inc., 78 USPQ2d 1899 (TTAB 2006), the Board
determined that limited use of a mark across state lines in
connection with services provided a reasonable basis for a
belief that the mark was used in interstate commerce to
support a declaration under Trademark Act Section 8, and an
application for renewal. However, in Hachette Filipacchi
Presse v. Elle Belle, LLC, supra, the fact that applicant
did not understand that “use” meant use as to all goods and

8 While we realize that these cases are all prior to the revised
definition of use in commerce which took effect in November 1988
as part of the Trademark Law Revision Act to require bona fide
rather than token use, for the present purposes such makes no
difference.
Opposition No. 91157315
15
English was not applicant’s first language did not
constitute a reasonable belief sufficient to support a use
statement. In Sinclair Oil Corp. v. Sumatra Kendrick, ___
USPQ2d ___ (Opp. No. 91152940 TTAB June 6, 2007), the Board
found that it was not reasonable to believe a one time
giveaway and a registration of a fictitious name in 1996 was
sufficient use to support an application filed on February
20, 2001. In Hurley International LLC v. Volta, 82 USPQ2d
1339 (TTAB 2007), the Board found that it was not reasonable
to believe that use in Australia was sufficient to satisfy
the use requirement of Section 1(a) of the Trademark Act and
noted that applicants are under an obligation to investigate
thoroughly the validity of such a belief before signing
their application.
Under the circumstances of the case before us, we find
that it was not reasonable for opposer’s general counsel to
believe that repair services constituted use of the
trademark in connection with the “sale or transportation” of
“his or her” goods. Opposer knew it no longer manufactured
or sold those goods. Opposer asserts that it relies on the
definition of “use in commerce,” which includes
transportation of goods, to support its proffered basis of
use, but could not point to case law that supports an
interpretation that transportation, without ownership of the
goods and application of the mark to the goods at some point
Opposition No. 91157315
16
in the distant past, in connection with repair services
constitutes use in connection with a good. Nor is it clear
from the record that opposer inquired as to its use on the
goods prior to signing the Section 8/9 renewal or
investigated whether such a belief regarding the repair
services was warranted. See Standard Knitting Ltd. v.
Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d 1917 (TTAB 2006)
and Hachette Filipacchi, supra. Based on the plain meaning
of the words in the statute that define “use in commerce”
(“a mark ... is placed in any manner on the goods ... and
... the goods are sold or transported”) and “trademark”
(“used by a person ... to identify and distinguish his or
her goods”), we do not find it reasonable to believe that an
application of a mark at some point in the past to goods
which have been sold, still serves to constitute use when
those goods, now owned by another, are subsequently shipped
again in connection with a repair service.
Thus, inasmuch as opposer was not using the mark in
connection with audio tape recorders and players, the
statement in the Section 8/9 renewal was false. Further,
opposer knew it had not manufactured or sold audio tape
recorders and players for at least three years prior to
filing the Section 8/9 renewal and opposer’s asserted belief
that the return of a repaired audio tape recorder and player
to its owner after rendering repair services was sufficient
Opposition No. 91157315
17
to support use in connection with goods to maintain a
registration for such goods was not reasonable. Finally, a
use statement in a Section 8/9 renewal is a material
representation; without use on all of the goods, the
affidavit of continued use would not have been accepted.
Therefore, we find that opposer committed fraud on the USPTO
in maintaining Registration No. 1633789.9 Accordingly, the
registration will be cancelled in its entirety inasmuch as
fraud cannot be cured by the deletion of goods from the
registration. Medinol, supra.
If opposer should ultimately prevail in any appeal of
this decision, we find in the alternative that the
registration would in any event require restriction. Based
on the record, it is clear that audio tape recorders and
players, at a minimum, must be deleted from the
registration.
OPPOSITION ON GROUNDS OF LIKELIHOOD OF CONFUSION AND FRAUD

Inasmuch as the counterclaim based on fraud only
relates to the maintenance of Registration No. 1633789,

9 “It is important to note that the United States Patent and
Trademark Office relies on the thoroughness, accuracy and honesty
of each applicant. In general, the Office does not inquire as to
the use of the mark on each good listed in a single class and
only requires specimens of use as to one of the listed goods,
relying on applicant’s declaration with regard to use on the
other listed goods. TMEP Sections 806.01(a) and 904.01(a) (4th
ed. 2005). Allowing registrants to be careless in their
statements of use would result in registrations improperly
accorded legal presumptions in connection with goods on which the
mark is not used.” Standard Knitting, supra at 1928 n. 14 (TTAB
2006).
Opposition No. 91157315
18
opposer is still entitled to rely on Registration Nos.
1338571 and 1764183 and its common law rights in the WAVE
mark in asserting its claims of likelihood of confusion and
fraud in the opposition. See Standard Knitting, supra.
Standing/Priority
Because opposer has made of record its pleaded
Registration Nos. 1338571 and 1764183, opposer has
established its standing to oppose registration of
applicant’s mark, and its priority is not in issue. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842
(Fed. Cir. 2000) and King Candy Co., Inc. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). In
addition, opposer has submitted testimony with accompanying
evidence that establishes opposer’s prior use of the mark
WAVE in connection with radios and music systems.
Fraud
Opposer asserts the claim of fraud based on the
allegation that applicant was not using its mark in
connection with certain goods (“tuner; mixer; amplifier;
downconverter; transceiver; transmitter; receiver;
detectors, namely radio frequency detectors; radio frequency
switch; antenna”) listed in the application when it signed
the declaration attesting to such use. In support of this
allegation opposer relies on applicant’s supplemental
response to Interrogatory No. 5 and response to Document
Opposition No. 91157315
19
Request No. 17. These responses, formulaic objections
omitted, are set forth below:
Interrogatory No. 5 – Identify and provide a
detailed description of every product
manufactured, licensed for manufacture, or sold by
or on behalf of Applicant since the inception of
Applicant’s business that bears Applicant’s mark,
and/or that Applicant, or a person on behalf of
Applicant, intends to manufacture, license for
manufacture, or sell that bears Applicant’s mark.

Objection – (omitted).

Supplemental Answer – Subject to and without
waiving the foregoing objections, and in
accordance with the provisions of the Stipulated
Protective Order in this Opposition, at least the
following products are or are intended to be
marketed by or on behalf of Applicant: (filed
under seal)10

Document Request No. 17 – All documents or things
that establish Applicant’s continuous use of
Applicant’s Mark on or in connection with
Applicant’s Goods since the dates of first use and
the first use in interstate, or other commerce
regulable by Congress, of Applicant’s Mark.

Objections: (omitted).

Response: Subject to and without waiving its
previously stated objections, Applicant will
produce documents and things located upon
conducting a reasonable search, to the extent that
they exist.

In view of these responses, opposer argues that “it is
clear that by Applicant’s own admission it was not using the
Mark on all of the goods identified in the application.”
Br. p. 19. Further, opposer argues that the responses to

10 Inasmuch as this exhibit was filed under seal we do not
reproduce the remainder of applicant’s response.

Opposition No. 91157315
20
document request No. 17 “are consistent with Applicant’s
interrogatory responses, and they do not evidence any use of
the mark on the majority of the goods covered by the
application.” Br. p. 20.
Applicant argues that its responses to other
interrogatories “clearly and explicitly affirm the
identification of goods included in the original statement.”
App. Resp. Br. p. 29.
As noted above, a claim of fraud must be proven to the
hilt and cannot be sustained on speculation. Smith
International Inc., supra. Opposer mistakenly characterizes
applicant’s response to an interrogatory as an admission.
In addition, any omission of these particular goods from
applicant’s response to Interrogatory No. 5 is hardly
conclusive evidence of nonuse, particularly given the
objection made concurrently with the response, and the
qualifying language “at least.” If opposer were
dissatisfied with the response and believed the
interrogatory to be appropriate and not unduly burdensome,
opposer could have moved to compel a complete response
absent objection.11 See British Seagull Ltd. v. Brunswick
Corp., 28 USPQ2d 1197, 1201 (TTAB 1993), aff’d, Brunswick

11 We note, however, that applicant’s responses and boilerplate
objections cannot be characterized as a paragon for discovery
responses within the spirit of the duty to cooperate. See
generally TBMP § 408 (2d ed. rev. 2004).

Opposition No. 91157315
21
Corp. v. British Seagull Ltd., 35 F.3d 1527, 32 USPQ2d 1120
(Fed. Cir. 1994); Time Warner Entertainment, Co. v. Jones,
65 USPQ2d 1650, 1656 (TTAB 2002). Rather than availing
itself of this procedural tool, opposer opted to present a
case of fraud based on this response. In addition, the
fraud claim was added to the complaint after discovery
closed and opposer never sought further discovery related to
this claim.
Based on this record, opposer has not proven a prima
facie case of fraud. Although the record may not be crystal
clear as to applicant’s use on each of the goods listed in
the application, it is opposer’s burden to prove by clear
and convincing evidence its allegation of fraud. As noted
above, there is no room for speculation and any doubt must
be resolved against the charging party. Smith International
Inc., supra. In view thereof, opposer’s claim of fraud is
dismissed.
Likelihood of Confusion
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the probative facts
in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). See also, In re Majestic Distilling Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
Opposition No. 91157315
22
In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
Opposer focuses its arguments on the fame of its marks,
the similarity of the marks at issue, and, in the absence of
restrictions in the identification of the respective goods,
the relatedness of such goods and the overlap in their
channels of trade and class of purchasers.
Fame
A key factor is the fame of the prior mark. Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005).
We begin our analysis with this factor, because fame “plays
a ‘dominant’ role in the process of balancing the du Pont
factors.” Recot Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d
1894, 1897 (Fed. Cir. 2000).
In support of its assertion of fame for its ACOUSTIC
WAVE and WAVE marks, opposer states:
[T]he Federal Circuit has determined Bose’s WAVE
and ACOUSTIC WAVE marks to be famous. The Federal
Circuit considered evidence of considerable sales,
advertising presence, and promotional expenditures
of the Bose WAVE and ACOUSTIC WAVE products, and
concluded: ‘When the full record is considered,
Opposition No. 91157315
23
only one conclusion can be reached regarding the
fame of the Bose product marks; they are famous
and thus entitled to broad protection.’ [Bose
Corp. v. QSC Audio Products, Inc., 293 F.3d 1367,
63 USPQ2d 1303, 1305 (Fed. Cir. 2002)] The same
and more substantial and compelling evidence of
the fame of the WAVE and ACOUSTIC WAVE marks which
the Federal Circuit considered in determining the
fame of the WAVE and ACOUSTIC WAVE marks in the
Bose v. QSC case has been put in the record in
this case.

Br. p. 9.

Based on this record and in view of the Federal
Circuit’s decision based on similar facts, we find that the
evidence demonstrates that the ACOUSTIC WAVE and WAVE marks
are famous for radios, loudspeakers and music systems that
include amplifiers and tuners.
Goods/Trade Channels
We turn now to consider whether the goods at issue are
related and their channels of trade overlap in such a manner
as to cause a likelihood of confusion. The respective goods
need not be identical or directly competitive in order for
there to be a likelihood of confusion. Rather, they need
only be related in some manner or the conditions surrounding
their marketing be such that they could be encountered by
the same purchasers under circumstances that could give rise
to the mistaken belief that the goods come from a common
source. In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d
1565, 223 USPQ 1289 (Fed. Cir. 1984). Further, it is well
settled that likelihood of confusion is determined on the
Opposition No. 91157315
24
basis of the goods as they are identified in the application
and in the pleaded registrations. Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir.
2002). However, in regard to opposer’s WAVE mark, because
we have determined that the registration must be cancelled,
we base our determination here on the evidence showing
actual use of that mark.
Applicant’s goods are identified as follows: compound
semiconductor devices consisting of integrated circuits;
microwave monolithic integrated circuits; modules, namely,
power modules for wireless communication; transistors;
tuners; mixers; amplifiers; down converters; transceivers;
transmitters; receivers; detectors, namely, radio frequency
detectors; radio frequency switches and antennas. Opposer’s
registration for the mark ACOUSTIC WAVE identifies its goods
as follows: loudspeaker systems; loudspeaker systems and
music systems consisting of a loudspeaker system and
amplifier and at least one of a radio tuner, compact disc
player and audio tape cassette player. In addition, opposer
has at a minimum established use of the mark WAVE on radios,
clock radios and portable compact disc players.
Although applicant states in its brief that its
“products are internal electronic compounds usable only by
highly trained technical personnel with the needs and
resources to manufacture goods incorporating them” (br. p.
Opposition No. 91157315
25
12), applicant’s tuners and amplifiers are not limited in
any manner in the identification of its goods. Inasmuch as
applicant’s identification of goods is not limited or
restricted, it is presumed that the application encompasses
all goods of the type described, including those enumerated
in opposer’s registrations and marketed by opposer. Thus,
applicant’s identification “amplifier” must be read to
include all types of amplifiers, including, as applicant
describes opposer’s amplifiers, “audio equipment typified by
the sizable speaker-like devices.” In addition, applicant’s
broad identification of “tuner” includes radio tuners. Both
amplifiers and tuners are integral parts of opposer’s
loudspeaker and music systems. Thus, as identified,
applicant’s goods are related to opposer’s goods.
Applicant’s arguments regarding the highly specialized
nature of its goods cannot rewrite the broad manner in which
such goods are set forth in the identification. Although
applicant’s identification includes goods that may more
accurately reflect the asserted true nature of applicant’s
goods (e.g., compound semiconductor devices consisting of
integrated circuits), at a minimum, “tuner” and “amplifier”
stand separately and encompass a broad spectrum of goods.
Further, in view of our findings with respect to applicant’s
tuners and amplifiers and opposer’s loudspeaker and music
systems that include amplifiers and tuners, we need not
Opposition No. 91157315
26
discuss applicant’s remaining goods in International Class
9. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648
F.2d 1335, 209 USPQ 986 (CCPA 1981).
Inasmuch as there is no limitation in the
identifications of goods in the application and opposer’s
ACOUSTIC WAVE registrations, we presume an overlap in trade
channels and that the goods would be offered to all normal
and usual classes of purchasers. See Hewlett-Packard Co. v.
Packard Press Inc., supra; and Octocom Systems Inc. v.
Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783
(Fed. Cir. 1990). Again, applicant’s arguments as to the
actual channels of trade of its goods cannot limit the broad
identification of its goods in the application.12 The
ordinary channels of trade and class of purchasers would
include retail stores, including those specializing in audio
and electronic equipment, and both professional and general
consumers. Further, with regard to opposer’s WAVE mark,
opposer has established that it sells goods under that mark
to the general public in retail stores and over the
internet, and widely advertises in print media, the

12 We further note that applicant’s arguments characterizing
opposer’s marks as “non-distinctive” such that the “latitude of
protection” should be tempered so as not to overreach “across the
unrelated goods and across the unrelated channels of trade,” are
not persuasive given the relatedness of applicant’s goods and
overlap in channels of trade as defined by its own broad
identification of goods in the application.
Opposition No. 91157315
27
internet, and has advertised through television and radio.
See, e.g., Mar Dep. pp. 31-32.
In view of the above, the du Pont factors of the
relatedness of the goods, channels of trade and class of
purchasers weigh in favor of a finding of likelihood of
confusion.
Similarity of the Marks
We turn next to the du Pont factor of whether
applicant’s mark and opposer's marks are similar or
dissimilar when compared in their entireties in terms of
appearance, sound, connotation and commercial impression.
We make this determination in accordance with the following
principles. The test, under this du Pont factor, is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impressions that confusion as to the source of the goods
offered under the respective marks is likely to result.
We find this case to present very similar circumstances
to those found in Bose Corporation v. QSC, where the Federal
Circuit stated:
“[the presence of the] root element WAVE ...
introduces a strong similarity in all three marks.
Whatever additional distinction may be introduced
by the element of POWER in the QSC POWERWAVE mark
is severely limited by the fact that the mark is
applied to acoustic equipment, namely amplifiers.
For this reason, the overall commercial impression
engendered by the use of the POWERWAVE mark also
Opposition No. 91157315
28
carries a strong connotation of sound waves,
corresponding to the Board’s findings with respect
to ACOUSTIC WAVE and WAVE. Any examination of the
record before the Board reveals that the ‘wave’
portion of the Bose marks refers to sound and the
unique way in which it is manipulated in the Bose
products to produce the end product, sound.
‘Wave’ thus has meaning, and in this instance the
newcomer, QSC, seeks to nestle close to the fame-
benefited Bose marks.

Bose Corporation v. QSC Audio Products, Inc., 293 F.3d 1367,
63 USPQ2d 1303, 1311 (Fed. Cir. 2002).
Here, applicant’s mark HEXAWAVE incorporates the
entirety of opposer’s WAVE mark and a substantial portion of
the ACOUSTIC WAVE mark. In both comparisons, the presence
of the term WAVE creates a similar commercial impression and
evokes a similar connotation, at a minimum, when used in
connection with the amplifiers. As noted above, applicant’s
identification of goods is not limited by any specific use
or trade channels and includes opposer’s type of amplifiers.
Thus, the addition of the prefix HEXA, rather than serving
to distinguish the marks, could be viewed as denoting a
variant of opposer’s famous WAVE and ACOUSTIC WAVE marks.
In view thereof, we find that the similarity of the marks
weighs in favor of a finding of likelihood of confusion.
In making our determination, we have considered
applicant’s argument that the term WAVE is “weak” and that
“different variations of ‘WAVE’ thereby used have surely
accustomed the consuming public to notice and differentiate
between such variations.” App. Br. p. 16. Applicant
Opposition No. 91157315
29
references third-party registrations that form part of the
prosecution history of its applications; however, third-
party registrations are not evidence of use.13 AMF Inc. v.
American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268
(CCPA 1973). They may, however, serve as an indication that
the term may have a particular meaning in the field. Id.
Applicant also points to a dictionary definition that
defines WAVE as “a disturbance or oscillation propagated
from point to point in a medium or in space and described,
in general, by mathematical specification of its amplitude,
velocity, frequency and phase.” Webster’s II New College
Dictionary (2001). To the extent opposer’s marks may be
suggestive of its goods, it has already been established
that its marks are famous and, thus, any perceived weakness
due to suggestiveness is outweighed by the fame of the
marks. Moreover, as noted above, to the extent WAVE has a
meaning in relation to the overlapping goods, use of the
identical term in the respective marks creates a similar
overall commercial impression.

13 Applicant also references third-party registrations attached to
applicant’s answer. With the exception of a status and title
copy of a plaintiff’s pleaded registration, exhibits attached to
pleadings and not properly introduced during trial are not
evidence on behalf of that party. Trademark Rules 2.122(c) and
2.122(d). See also W.R. Grace & Co. v. Herbert J. Meyer
Industries Inc., 190 USPQ 308, 309 n.5 (TTAB 1976); and TBMP
Sections 704.03 and 704.05(a) (2d ed. rev. 2004).
Opposition No. 91157315
30
Actual Confusion
Applicant argues that opposer indicated in response to
an interrogatory that it is not aware of any instances of
actual confusion, and submits this supports a finding of no
likelihood of confusion. However, there is no evidence in
the record to establish that the parties’ products have been
offered in overlapping channels of trade such that any
meaningful inference could be drawn from a lack of actual
confusion.14 Under such circumstances, this factor carries
little weight in our determination of likelihood of
confusion. See, e.g., Gillette Canada Inc. v. Ranir Corp.,
23 USPQ2d 1768, 1774 (TTAB 1992); and Chemetron Corp. v.
Morris Coupling & Clamp Co., 203 USPQ 537, 541 (TTAB 1979).
Specifically, there must be evidence showing that there has
been an opportunity for incidents of actual confusion to
occur. See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000). Moreover, it is
well established that actual confusion is not necessary for
a finding of likelihood of confusion. Herbko International
Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375,
1380 (Fed. Cir. 2002).

14 This analysis of actual confusion that necessarily looks to
what occurs in the marketplace is distinguished from our
determinations on the relatedness of the goods and channels of
trade which are limited to the identifications of the goods as
listed in the application and registrations.
Opposition No. 91157315
31
Based on the evidence of record pertaining to the
relevant du Pont likelihood of confusion factors, we
conclude that a likelihood of confusion exists.
Decision: The counterclaim to cancel Registration No.
1633789 is granted and such registration will be canceled in
due course; the opposition to registration of application
Serial No. 76304063 is sustained based only on the claim of
priority and likelihood of confusion under Section 2(d) and
registration to applicant is refused.