ChristopherJ. Vitito

Trademark Trial and Appeal Board

May 30, 2006

No. 76561548 (T.T.A.B. May. 30, 2006)

Mailed:
May 30, 2006
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Christopher J. Vitito
________

Serial No. 76561548
_______

Howard N. Flaxman of Welsh & Flaxman LLC for Christopher J.
Vitito.

Elizabeth J. Winter, Trademark Examining Attorney, Law
Office 113 (Odette Bonnet, Managing Attorney).
_______

Before Holtzman, Rogers and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

On November 20, 2003, Christopher J. Vitito
(applicant), applied to register the mark INVISION in
standard-character form for goods now identified as
“electronic audio and video equipment systems for vehicles,
which consist of audio speakers, audio receivers, video
monitors, video tape recorders, video tape players and
video disk players” in International Class 9. Applicant
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76561548
2
claims both first use and first use in commerce on
September 18, 2003.
The examining attorney refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), in
view of Reg. No. 2721987, which issued on June 3, 2003, for
the mark INV2ISION in standard-character form for the
following goods:
computer notebooks, mobile phones, personal digital
assistants, electronic dictionaries, video display
monitors and manual control panels comprising high
resolution display monitors or flat panel displays,
circuit cards, wire and harness cable assemblies,
power switches, and power supplies, that process
acoustic, video and audio data, hi-fi speaker system
comprised of audio speakers, subwoofers, tweeters,
amplifiers, preamplifiers, speaker enclosures, and
components thereof, PA speaker system comprised of
amplifiers, microphones and audio speakers, car audio
system comprised of audio speakers, radios, audio
cassette players and compact disc players, antennas,
video and audio modules, audio airplane speaker system
comprised of loudspeakers and components, in
International Class 9.

The registration claims both first use and first use in
commerce in November 2000.
The examining attorney issued a final refusal and
applicant appealed. Both applicant and the examining
attorney have filed briefs. Applicant did not request an
oral hearing. We affirm.
Ser No. 76561548
3
APPLICANT’S EVIDENCE
Before turning to the refusal we must address the
evidence applicant provided with his brief. Applicant did
not submit any evidence before he filed his appeal, but
with his brief he provided copies of literature concerning
his own products and copies of web pages allegedly related
to the goods of the owner of the cited registration. And
for the first time in his brief applicant also referred to
a number of third-party registrations, but applicant did
not provide any records related to those registrations.
The examining attorney has objected to all of the evidence
as untimely and otherwise improper.
First with regard to timeliness, all of the evidence
applicant submitted or referenced in his brief is untimely.
Trademark Rule 2.142(d) requires that the record in the
application be complete prior to the filing of the appeal
subject to certain exceptions not relevant here. The rule
warns that, “The Trademark Trial and Appeal Board will
ordinarily not consider additional evidence filed with the
Board by the appellant or the examiner after the appeal is
filed.” Accordingly, we will not consider any of
applicant’s evidence because it was submitted after the
filing of the appeal.
Ser No. 76561548
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Furthermore, even if applicant had filed the evidence
at the proper time, we would not consider either the web
pages allegedly related to the registrant or the third-
party-registration information.
First, with regard to the web pages which applicant
alleges relate to the registrant and its products, we must
consider the goods as identified in a cited registration
and cannot consider extrinsic evidence regarding a
registrant’s actual use of its mark. In re Bercut-
Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986)(extrinsic
evidence and argument suggesting trade-channel restrictions
not specified in application rejected).
Next, as to the information regarding the third-party
registrations, as the examining attorney correctly points
out, the Board does not take judicial notice of
registration records. Furthermore, the Board will only
consider registrations when they are submitted in proper
form, that is, copies of actual registrations or copies of
registration records directly from the Patent and Trademark
Office’s electronic data bases. In re JT Tobacconists, 59
USPQ2d 1080, 1081 n2 (TTAB 2001). See generally TBMP
§ 710.03 (2d ed. rev. 2004). In this case applicant has
only provided limited information regarding the
registrations, registration numbers, marks and goods, and
Ser No. 76561548
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no records. Therefore, even if this information had been
provided before the appeal was filed, we would not consider
it because it is not in an acceptable form.
LIKELIHOOD OF CONFUSION
Turning to the refusal, Section 2(d) of the Act
precludes registration of an applicant’s mark “which so
resembles a mark registered in the Patent and Trademark
Office . . . as to be likely, when used on or in
connection with the goods of the applicant, to cause
confusion . . .” 15 U.S.C. § 1052(d). To determine
whether there is a likelihood of confusion, we must
consider all evidence of record bearing on the factors
delineated in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1977). Here, as is
often the case, the crucial factors are the similarity of
the marks and the similarity of the goods of the applicant
and registrant. Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In
addition to those factors, we will also address applicant’s
and the examining attorney’s arguments relating to other
factors.
Comparison of the Marks
In comparing the marks we must consider the sound,
appearance, connotation and commercial impression of both
Ser No. 76561548
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marks. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005). Applicant’s mark is INVISION; the cited
mark is INV2ISION. Both marks are in standard-character
form.
Applicant argues that, “When one considers the highly
distinctive lettering, numbering and wording of the ‘987
registration when compared to the single word mark of the
present application, it is readily apparent the first prong
of the test is not met. That is, they do not sound alike,
look the same or have the same meaning.” The examining
attorney argues that, “Applicant’s mark is virtually
identical to registrant’s mark.”
Sound - Applicant posits that the registered mark
“should be pronounced ‘Inv-Squared-Ision,’ ultimately
sounding nothing like ‘invision.’” Applicant bases this
suggestion on his review of a display of the registered
mark on web pages, allegedly related to the registrant,
which he provided with his brief. Those pages show a mark
displayed as “InV2ision.” He also refers to some
accompanying text to bolster his pronunciation theory.
Applicant also allows that other pronunciations are
possible, including “Inv-Two-Ision” or “In–V-Two-Ision” or
“I-N-T–Two-Ision.” Applicant concludes by arguing that,
Ser No. 76561548
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“None of these potential pronunciations even remotely sound
like Applicant’s mark INVISION. In fact, they sound more
like ‘intuition’ which is not close to ‘invision.’”
With regard to sound the examining attorney argues,
“Basically, the marks can easily be pronounced the same,
with the potential and actual purchasers of the goods
ignoring the numeral ‘2’.” The examining attorney argues
that people are more likely to do as she suggests rather
than adopt any of the pronunciations suggested by
applicant.
We begin with the simple axiom that there is no
“correct” pronunciation of a trademark, as the examining
attorney argues. In re Great Lakes Canning, Inc., 227 USPQ
483, 484 (TTAB 1985). We also reject applicant’s arguments
urging the “squared” pronunciation of the registered mark
based on the web pages he provided with his brief. The
evidence is both untimely and otherwise unacceptable, as we
noted above. Here applicant attempts to use the evidence
to show how the registrant purportedly displays the mark.
Even if the evidence were properly of record, we could not
use it for this purpose. The mark is registered in
standard-character form. As such we must assume that it
could be displayed in any manner within reason, and not
restrict our consideration to the version applicant
Ser No. 76561548
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suggests. In re Melville Corp., 18 USPQ2d 1386, 1387-1388
(TTAB 1991).
Overall, we find applicant’s suggestions as to how the
registered mark might be pronounced less plausible than the
examining attorney’s position that people would simply
disregard the intervening numeral and pronounce only the
letters which form a common word, INVISION. Cf. In re Who?
Vision Systems Inc., 57 USPQ2d 1211, 1217 (TTAB 2000). We
find it more plausible that the mark would be pronounced
“invision” even if it were displayed as “InV2ision.” The
suggestion that people will adopt the awkward
pronunciations inserting either a “squared” or “two” in the
middle of a recognized word because of the numeral is not
credible. Accordingly, we conclude that applicant’s mark
and the registered mark are similar in sound in that they
could, and most likely would, be pronounced the same.
Appearance – As to appearance, applicant argues that,
“The ‘2’, or any number in the middle of a word, is highly
unusual and quite distinctive in appearance.” On the other
hand, the examining attorney argues that, “The appearance
of the mark is virtually identical in that the marks are
comprised of the same letters and the ‘2’ in the middle of
registrant’s mark can be easily overlooked. The difference
in the marks is insubstantial.”
Ser No. 76561548
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The fact that the letters in both marks are the same
and that they spell the same word is inescapable. The
insertion of a single numeral in the middle, while unusual,
in no way overrides the similarity in appearance of the
letters. Anyone familiar with English will have no
difficulty in “finding the word” in the mark. Therefore,
we conclude that the marks are highly similar in
appearance.
Connotation and Commercial Impression – The dominant
connotation and commercial impression projected by both
marks, when viewed in their entireties, is of the word
“invision.” The word is not only easily recognizable but
dominant in the registered mark in spite of the presence of
the “2.” We also find applicant’s argument that the
registered mark would be viewed as a mathematical formula
unpersuasive. Accordingly, we conclude that applicant’s
mark and the registered mark are highly similar in both
connotation and commercial impression.
Finally, we conclude that the marks, when viewed in
their entireties, are highly similar due to the
similarities in sound, appearance, connotation and
commercial impression.
Comparison of the Goods and Channels of Trade
With respect to the goods, applicant argues:
Ser No. 76561548
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While Applicant’s mark INVISION is specifically for
use in conjunction with vehicle audio and video
systems . . . . the ‘987 registration is directed at a
“laundry list” of electronic components. In fact, the
‘987 registration nowhere mentions utilization in
conjunction with an (sic) vehicle audio and video
system, but rather lists a variety of individual
components which may or may not be used together in
the creation of an integrated system.

The rest of applicant’s arguments as to the goods focuses
on the materials he submitted with his brief, materials we
have excluded from consideration. Specifically, applicant
alleges that certain web pages he provided are from a site
associated with the registrant and that they show that
registrant uses its mark only in conjunction with a limited
group of the goods identified in the registration. As we
indicated above, we have not considered this evidence both
because it is untimely and because applicant attempts to
use this extrinsic evidence improperly to limit the scope
of the goods identified in the cited registration. In re
Bercut-Vandervoort & Co., 229 USPQ at 764.
As to the channels of trade, applicant contends that
its products are “directed primarily at automotive dealers
and vehicle customizing shops, whereas Registrant is likely
focused on high end customers buying through audiophile
type retail stores.” On this basis applicant asserts that
there is “virtually no overlap” in trade channels.
Ser No. 76561548
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On the other hand, the examining attorney argues that
we must consider the goods of applicant and registrant “as
they are identified in the involved application and
registration,” and that “the goods of the parties are
virtually identical inasmuch both goods function as
entertainment systems for cars and both comprise one or
more of the same audio devices.” The examining attorney
likewise argues that neither the application nor the cited
registration include any restrictions as to trade channels,
and therefore, we must assume that the goods travel in all
normal trade channels for such products.
As the examining attorney correctly points out, in
considering the goods, and the channels of trade, we must
consider the goods as identified in the application and
registration and, in the absence of any restrictions,
assume that the goods include all goods identified and that
those goods travel in all trade channels appropriate for
such goods. CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ
198, 199 (Fed. Cir. 1983); In re Melville Corp., 18 USPQ2d
at 1388.
Applicant identifies his goods as “electronic audio
and video equipment systems for vehicles, which consist of
audio speakers, audio receivers, video monitors, video tape
recorders, video tape players and video disk players.”
Ser No. 76561548
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Among other things, the goods in the cited registration
include “car audio system comprised of audio speakers,
radios, audio cassette players and compact disc players,
antennas, video and audio modules.”
A simple comparison of the goods of applicant and
registrant demonstrates that the goods of the applicant and
registrant are either virtually identical and overlapping
or otherwise closely related. Applicant’s goods are
“electronic audio and video equipment systems for
vehicles,” and registrant’s goods include a “car audio
system.” As to the components, both identifications
include “audio speakers”; the application identifies “audio
receivers” and the registration identifies “radios” and
“audio and video modules.” (Emphasis provided.) The
application identifies several video components, and the
registration again identifies “audio and video modules.”
(Emphasis provided.)
We reject applicant’s strained reading of the
respective identifications of goods, in particular,
applicant’s assertion that his products are sold as a
“system” and registrant’s goods are not. While the
applicant’s goods may be sold only as a multi-component
system, registrant’s goods, as identified, could also be
sold as a system.
Ser No. 76561548
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Even if we accepted applicant’s contention that the
registrant’s goods would not be sold as a system,
registrant’s goods could also fulfill the same function as
specific components within applicant’s system, and
therefore, may be interchangeable with specific goods
identified in the application. Thus, a consumer familiar
with the registrant’s use of its mark on its audio
speakers, for example, seeing applicant’s mark on
applicant’s audio and video system, is likely to believe
that registrant is now selling a full system which includes
the speakers. Applicant would have us ignore the forest
and only see the trees. After all, both applicant and
registrant identify goods which function as entertainment
sources in vehicles, as the examining attorney argues.
Accordingly, we conclude that the goods of the
applicant and registrant are virtually identical and
otherwise closely related. We also conclude, on the same
basis, that the goods of applicant and registrant could
travel in the same trade channels and reach the same
purchasers. There are no restrictions as to trade channels
in either the application or registration. Therefore, the
fact that the goods are virtually identical and otherwise
closely related dictates the conclusion that the channels
of trade for the products are also the same, or at least
Ser No. 76561548
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overlapping, and that the goods of applicant and registrant
could reach the same purchasers.
Sophistication of Purchasers/Cost of the Goods
Applicant also asserts that, “the customers for
electronic goods are generally sophisticated when spending
discretionary income” and that the goods of both applicant
and registrant involve “spending a substantial sum of
money.” Applicant has not provided any evidence to support
the proposition that the purchasers of the goods identified
in either the application or the registration are
sophisticated. Accordingly, we have no reason to assume
that the potential purchasers could not include any
purchaser of or owner of a vehicle, a rather large segment
of the population including persons of varying levels of
sophistication. Furthermore, even sophisticated
purchasers, such as those identified by applicant, are not
immune from trademark confusion. In re Pellerin Milnor
Corp., 221 USPQ 558, 560 (TTAB 1983).
Likewise, neither the application nor the registration
is restricted to more expensive products. Although the
goods identified in the application and the registration
are not truly inexpensive impulse items, even complete
audio and video systems for vehicles may vary significantly
in cost. In view of the fact that purchasers for these
Ser No. 76561548
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products could include consumers of varying levels of
sophistication, we are not persuaded that high cost would
preclude confusion.
Accordingly, we conclude that the sophistication of
relevant purchasers and the cost of the goods in this case
do not preclude confusion.
Similar Marks in Use on Similar Goods
As we indicated above, applicant refers to certain
information regarding third-party registrations for the
first time in his brief. Applicant argues that, “. . .
this term [invision] is present in an exceptional number of
registered marks. It is well established the frequency
with which a term is used in other trademark registrations
is relevant to the distinctiveness inquiry.” As explained
above, we have excluded the third-party-registration
information from consideration both because it was untimely
and because it is not in proper form.
Nonetheless, even if we had considered the evidence it
would not persuade us that the registered mark is weak, and
therefore, only entitled to a limited scope of protection
as applicant argues. Registration alone does not establish
that a term is weak. The probative value of third-party
trademarks depends entirely upon their usage. Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
Ser No. 76561548
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1772, 73 USPQ2d at 1693. Applicant has not provided any
evidence that the third-party marks it references are in
use. Furthermore, seven of the nine registrations
applicant references appear to cover specialized computer
programs or computer hardware unrelated to the goods at
issue here. Neither of the other two referenced
registrations cover vehicle entertainment systems or their
components. This evidence would be utterly insufficient to
show that INVISION is a weak mark as applied to vehicle
entertainment systems or their component parts.
Actual Confusion
Applicant also argues that “no actual confusion has
been established” without saying anything further. There
is no evidence that there has been an opportunity for
confusion to occur in this case. Furthermore, particularly
in an ex parte proceeding, “uncorroborated statements of no
known instances of actual confusion are of little
evidentiary value.” In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003). See also
In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984).
Therefore, we find applicant’s argument regarding actual
confusion unpersuasive.
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CONCLUSION
In sum, after considering all evidence of record
bearing on the du Pont factors, we conclude that there is a
likelihood of confusion in this case. We conclude so
principally because the marks of applicant and registrant
are highly similar and because the goods of applicant and
registrant are overlapping or closely related.
Decision: The refusal to register applicant’s mark
under Section 2(d) of the Act is affirmed.