Ava Enterprises, Inc.v.Audio Boss USA, Inc.

Trademark Trial and Appeal Board

Jan 12, 2006

No. 91125266 (T.T.A.B. Jan. 12, 2006)

Mailed: January 12, 2006
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Ava Enterprises, Inc.
v.
Audio Boss USA, Inc.
_____

Opposition No. 91125266
to application Serial No. 76107708
filed on August 11, 2000
_____

Seth E. Freilich of Pillsbury Winthrop, LLP for Ava
Enterprises, Inc.

Albert Bordas of Sanchelima & Associates, P.A. for Audio
Boss, Inc.
______

Before Hairston, Walsh and Zervas, Administrative Trademark
Judges.

Opinion by Hairston, Administrative Trademark Judge:

Ava Enterprises, Inc. (a California corporation) has
opposed the application of Audio Boss USA, Inc. (A Florida
corporation) to register the mark shown below,

THIS OPINION IS CITABLE AS
PRECEDENT OF THE TTAB
Opposition No. 91125266
2

for “car power amplifiers, car speakers, car stereos, and
home theater speakers.”1 The application includes a
statement that “The mark consists of the wording AUDIO BSS
USA” and a disclaimer of AUDIO and USA apart from the mark
as shown.
As grounds for opposition, opposer has alleged that
applicant’s mark, when applied to the identified goods, so
resembles opposer’s previously used and registered mark
shown below,

for “automobile audio components; namely AM/FM stereo
receivers, cassette tape decks, compact disc players, power
amplifiers, equalizers, electronic cross overs and
speakers,”2 as to be likely to cause confusion under Section
2(d) of the Trademark Act.
Applicant, in its answer, denied the salient
allegations of the notice of opposition. Briefs have been
filed, but no oral hearing was requested.

1 Application Serial No. 76107708, filed August 11, 2000, based
upon an allegation of a bona fide intention to use the mark in
commerce in connection with the identified goods.
2 Registration No. 1,730,794 issued November 10, 1992; renewed.
The registration includes a disclaimer of AUDIO SYSTEMS apart
from the mark as shown.
Opposition No. 91125266
3
THE RECORD
The record consists of the pleadings; the file of the
involved application; the testimony depositions (with
exhibits) of opposer’s president Soheil Rabbani,
market researcher Howard Marylander, and applicant’s
president Bassem Nassar. Also, opposer submitted a notice
of reliance on a status and title copy of opposer’s pleaded
registration, applicant’s responses to opposer’s
interrogatories and requests for admissions, and portions of
the discovery deposition of Bassem Nassar.
THE PARTIES
The record shows that opposer, Ava Enterprises, Inc.,
commenced business operations in 1989 and has continuously
used the mark BOSS AUDIO SYSTEMS and design in connection
with automobile audio products since that time. Opposer
distributes automobile audio products in the United States
and abroad. Opposer’s products are sold at retailers who
deal in automobile audio products and the ultimate customers
of opposer’s products are primarily males age 16-24.
Opposer spends over one million dollars annually
advertising and promoting its automobile audio products.
Opposer advertises its products in the consumer magazine
“Car Audio and Electronics” and the trade magazine
“Installation News.” Also, opposer advertises by way of car
promotions, point-of-purchase material, and distribution of
Opposition No. 91125266
4
an annual product catalog. Opposer promotes its products at
trade shows and attends many such shows each year.
In terms of opposer’s sales, they have increased each
year since 1989, and now total over $50 million annually.
Applicant, Audio Boss USA, Inc.,3 is in the business of
importing and exporting car and home audio equipment.
According to applicant’s president, Mr. Nassar, as of the
date of his testimony (June 2004), applicant had been
engaged in this business for approximately 15 years. As to
how the mark was selected, Mr. Nassar testified that he
began with the phrase “Best Sound System” which he
considered too long;” shortened this to “BSS;” and added
“AUDIO” and “USA.” He testified that the circular design
around the letter “B” in “BSS” is simply an arbitrary
design. Applicant intends to sell its products under the
involved mark to wholesalers in the United States and to
export the products abroad.
PRIORITY
Priority is not in issue because opposer’s pleaded
registration for BOSS AUDIO SYSTEMS and design has been made
of record. King Candy Co., Inc. v. Eunice King’s Kitchen,

3 Although applicant states in its brief that it has changed its
name to Audio BSS USA, Inc., no evidence of a change of name was
provided and there is no record of a name change recorded with
the Assignment Branch of the USPTO. Thus, applicant’s name will
remain Audio Boss USA, Inc. See TBMP § 502.01 (2d ed. rev.
2004).
Opposition No. 91125266
5
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Moreover,
the record shows that opposer has used its mark on
automobile audio products since prior to the August 11, 2000
filing date of applicant’s intent-to-use application.
LIKELIHOOD OF CONFUSION

Our determination of the issue of likelihood of
confusion 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. duPont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also, In re Majestic Distilling
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
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).
The Goods
Turning first to the respective goods of the parties,
we note that applicant does not dispute that the car power
amplifiers, speakers and stereos identified in its
application are legally identical and otherwise closely
related to the automobile AM/FM stereo receivers, cassette
tape decks, compact disc players, power amplifiers,
Opposition No. 91125266
6
equalizers, electronic cross overs and speakers identified
in opposer’s registration. Such goods would be sold in the
same channels of trade, e.g., mass merchandisers, electronic
stores, and stores which specialize in the sales and
installation of automobile sound systems, to the same
consumers. Further, these types of goods would be purchased
by ordinary consumers who would not necessarily be expected
to exercise a high degree of care in purchasing these
products. Although applicant contends that the purchasers
of automobile audio equipment are sophisticated, applicant
offered no evidence from which we may conclude that
purchasers of such equipment are necessarily sophisticated.
The Marks
Turning next to a consideration of the marks, we begin
our analysis of whether confusion is likely by keeping in
mind two propositions set forth by our primary reviewing
court, the Court of Appeals for the Federal Circuit. First,
“when marks would appear on virtually identical goods or
services, the degree of similarity necessary to support a
conclusion of likely confusion declines.” Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992). Second, in articulating
reasons for reaching a conclusion on the issue of likelihood
of confusion, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
Opposition No. 91125266
7
particular feature of a mark provided the ultimate
conclusion rests on consideration of the marks in their
entireties.” In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985).
Furthermore, the test 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 commercial impression that confusion as to
the source of the goods and/or services offered under the
respective marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks.
See Spoons Restaurants Inc. v. Morrison Inc., 23 USOQ2d 1735
(TTAB 1991), affirmed in unpublished opinion, Appeal No. 92-
1086 (Fed. Cir. June 5, 1992).
As to opposer’s mark, opposer has disclaimed exclusive
rights to use the words AUDIO SYSTEMS. These words are
clearly descriptive/generic of opposer’s automobile audio
components. Thus, it is the word BOSS that is the dominant
portion of opposer’s mark. Moreover, the word BOSS in
opposer’s mark is much more prominently displayed, thereby
reinforcing the dominance of this portion of the mark.
As to applicant’s mark, the letter designation BSS is
the dominant portion of the mark. Applicant has disclaimed
exclusive rights to use the terms AUDIO and USA. The word
Opposition No. 91125266
8
AUDIO is clearly descriptive/generic for applicant’s car
power amplifiers, car speakers, car stereos, and home
theater speakers, and USA is clearly a geographically
descriptive term.
In terms of sound, we find that opposer’s mark BOSS
AUDIO SYSTEMS and design and applicant’s mark AUDIO BSS USA
and design are somewhat different particularly because the
dominant portions BOSS and BSS do not sound alike. Also,
in terms of connotation, the respective marks are dissimilar
in that opposer’s mark BOSS AUDIO SYSTEMS and design
suggests automobile audio equipment that is “top-of-the
line,”4 whereas applicant’s mark AUDIO BSS USA and design
has no particular meaning. Thus, in terms of sound and
connotation/meaning, we find that the marks are more
dissimilar than similar.
However, in terms of appearance and commercial
impression, we find that the marks are highly similar. Both
marks include the word AUDIO and the dominant portions of
the respective marks, BOSS and BSS, differ by only a single
letter. Moreover, BOSS and BSS are depicted in virtually
the same distinctive font. In particular, the “B’s” looks
like the number “3”, and the top curve of the “S’s” is not
shown. Also, although applicant’s president testified that

4 In this regard, we judicially notice that The American Heritage
Dictionary of the English Language (4th ed. 2000) at 214 defines
“boss” as, inter alia, “Slang – First-rate, topnotch.”
Opposition No. 91125266
9
the circular design encompassing the “B” in BSS is
arbitrary, it is not unlike the letter “O.” In order for a
likelihood of confusion to exist, two marks need not be
similar in sound, appearance, connotation, and commercial
impression. Rather, similarity in either respect alone may
be sufficient to support a finding of likelihood of
confusion. Krim-Co Corp. v. Coca-Cola Co., 390 F.2d 728,
156 USPQ 523 (CCPA 1968). We find, therefore, that when the
marks are considered in their entireties, they are similar
in appearance and commercial impression. The term USA in
applicant’s mark and SYSTEMS in opposer’s mark are not
sufficient to distinguish the marks in terms of appearance
and commercial impression.
Fame of The Prior Mark
With respect to the duPont factor of the fame of the
prior mark in terms of sales, advertising and length of use,
opposer contends in its brief that its mark should be
considered a strong and famous mark in the field and
therefore entitled to a broad scope of protection. While
the evidence of record is insufficient to establish that
opposer’s BOSS AUDIO SYSTEMS and design mark is famous, we
nevertheless concur with opposer that its sales and
advertising figures, its promotional materials and its many
years of continuous use establish that it is a strong mark
in the field.
Opposition No. 91125266
10
Opposer’s Survey
In support of its claim of likelihood of confusion,
opposer introduced the results of a survey conducted under
the supervision of Howard Marylander, an independent market
researcher. The survey was designed “to determine whether
there was a likelihood of confusion between the stylized
appearance of a federally registered trademark, ‘Boss Audio
Systems’ used on automobile audio components, namely AM/FM
stereo receivers cassette tape decks, compact disk players,
power amplifiers, equalizers, electronic cross overs, and
speakers and a proposed stylized appearance of a mark,
‘Audio Boss USA,’ for use on car power amplifiers, car
speakers, car stereos, and home theater
speakers.” (Survey Results, p. 3).5 The survey was
conducted in eight shopping malls located in geographically
dispersed cities in the United States. A total of 200
respondents, all male and between the ages of 16 and 29
participated in the survey. After some preliminary
questions, the respondents were told that they were going to
view the names of brands of car and truck audio equipment
and electronics. The respondents were told to look at the

5 We note that throughout the survey results and Mr. Marylander’s
testimony, applicant’s mark is characterized as AUDIO BOSS USA,
rather than AUDIO BSS USA. Mr. Marylander testified that the
“[interviewers] never pronounced the names. So whether the name
was called Audio Boss USA or Audio BSS USA was not relevant for
the survey. We based the findings entirely on the stylized
appearance.” (Marylander deposition, p. 37).
Opposition No. 91125266
11
brand names as if they were shopping for audio equipment and
electronics or looking at an advertisement. The respondents
were shown two cards, one at a time. A test group of 100
respondents were shown a card with opposer’s mark BOSS AUDIO
SYSTEMS and design and it was removed from view. These same
respondents were shown a card with applicant’s mark AUDIO
BSS USA and design and it was removed from view. The order
of showing the cards was reversed so that approximately half
of the respondents saw the card with opposer’s mark first
and approximately half saw the card with applicant’s mark
first. A control group of 100 respondents were shown a card
with opposer’s mark and it was removed from view. These
same respondents were shown a card with the mark KENWOOD6
and it was removed from view. Again, the order of showing
the cards was reversed so that approximately half of the
respondents saw the card with opposer’s mark first and
approximately half saw the card with the mark KENWOOD first.
After the two cards had been taken away, the respondents in
both the test group and the control group were asked the
following question:
Do you think that the brand name you saw first and
the brand name you saw second come from the same
company, different companies, or are you not sure?

6 According to Mr. Marylander, this mark was chosen because
KENWOOD is an existing brand in the mobile audio equipment and
electronics field.
Opposition No. 91125266
12
The respondents who answered “[t]hey come from different
companies” or “[d]on’t know/not sure” were then asked:
Which of these statements best describes your
opinion about the company that makes the brand of
audio equipment and electronics that you saw first
and the company that makes the brand of audio
equipment and electronics that you saw second?

-The companies are connected or associated
-The companies are not connected or associated
-You are not sure

To probe for clarity, all respondents were asked “Why do you
feel that way.”
A review of the survey results shows that 45% of the
respondents who saw opposer’s and applicant’s marks thought
that they come from the same company compared to only 5% in
the control group who were exposed to opposer’s mark and the
KENWOOD mark. Further, a total of 57% of the respondents
exposed to opposer’s and applicant’s marks thought they come
from the same company or that the companies that make the
brands are connected or associated, compared to only 12% in
the control group that were exposed to opposer’s mark and
the KENWOOD mark. In addition, among those respondents who
thought that opposer’s and applicant’s marks come from the
same company or from companies that are connected or
associated, the large majority (82%) attributed it to the
similarity in appearance of the marks. Specifically, 30%
said the “B’s/S’s are the same”, 23% said, “both say
Boss/Boss Audio”, 11% said the “marks have same logos”, 9%
Opposition No. 91125266
13
said the “designs look similar”, and 9% said, “font style is
similar”. This is in sharp contrast to the reasons given by
the small percentage of respondents who thought opposer’s
mark and the KENWOOD mark come from the same company or from
companies that are connected or associated. For example,
25% said, “both marks are for car entertainment/audio,” 25%
said “everything is associated/connected today,” 33% said,
“companies have the same products,” and 8% said they “had
heard the marks are from the same company.”
Applicant has raised no objections to the survey
procedures, and while we recognize that no survey is
perfect, we find that the 57% result here is strongly
probative of a likelihood of confusion. See J & J Snack
Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d
1889 (Fed. Cir. 1991) [A consumer survey in which 30% of the
respondents were confused supports a finding of likely
confusion]. See also 3 J. T. McCarthy, Trademarks and
Unfair Competition §32.54 (4th ed. 205), listing decisions
where percentages much lower than 57% supported a finding of
likelihood of confusion. Also, in the survey before us, it
is particularly telling that the majority of the reasons
given for confusion related to the similarity in the
appearance of opposer’s and applicant’s marks. While the
Opposition No. 91125266
14
survey is not necessary to reach a conclusion that there is
a likelihood of confusion, it is strong confirmation of this
conclusion.7
Applicant’s Intent
Finally, opposer argues in its brief that applicant
adopted its mark in an attempt to trade off opposer’s good
will. Opposer maintains that it filed an infringement
action in Paraguay against a company named PAC Trading, of
which applicant’s president Mr. Nassar is an officer. PAC
Trading was using the identical mark sought to be registered
herein, namely, AUDIO BSS USA and design. Opposer and PAC
Trading entered into an agreement whereby PAC Trading agreed
to cease use of the mark in Paraguay. As a result of the
proceedings in Paraguay, it is opposer’s contention that
applicant was fully aware of the confusing similarity of the
respective marks.
Applicant, on the other hand, argues that it adopted
its mark in good faith, and that what transpired in the
proceedings in Paraguay is irrelevant to applicant’s right
to register the involved mark in the United States.

7 As noted, applicant did not contest the probative value of the
survey. Nonetheless, we observe that the KENWOOD mark used in
the control group is clearly very different from opposer’s BOSS
AUDIO SYSTEMS and design mark. Perhaps a mark somewhat more
similar to opposer’s mark could have been used in the control
group. However, this had no effect on the 57% result in the test
group and the specific reasons given by the respondents in the
test group for finding that opposer’s and applicant’s mark are
similar.
Opposition No. 91125266
15
While there is no question that Mr. Nassar knew of
opposer’s mark, mere knowledge thereof does not establish
that applicant adopted its mark in bad faith.8 In saying
this, however, applicant’s adoption of a mark which includes
a unique font essentially identical to that used by opposer
certainly raises an eyebrow.
In any event, a newcomer has both the opportunity and
the obligation to avoid confusion. Consequently, a party
which knowingly adopts a mark similar to one used by another
for the same or closely related goods does so at its own
peril; all doubt on the issue of likelihood of confusion
must be resolved against the newcomer. See TBC Corp. v.
Holsa Inc., 126 F.3d 1470, 44 USPQ2d 1315 (Fed. Cir. 1997);
and In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d
1025 (Fed. Cir. 1988.
Thus, when all the relevant duPont factors are
considered, including the identity of the goods, trade
channels and purchasers, lack of sophistication of the
purchasers, and the marks’ similarity in appearance and

8 Opposer did not establish by a preponderance of the evidence
that applicant’s intent involved bad faith. Accompanying Mr.
Nassar’s deposition is a copy of the agreement between opposer
and PAC Trading in Spanish, but no translation has been provided.
Thus, we are unable to determine if Mr. Nassar (and by extension
applicant) expressly agreed therein that the involved marks are
confusingly similar.
Opposition No. 91125266
16
commercial impressions, we conclude that confusion is
likely. The results of the survey corroborate that
conclusion.
Decision: The opposition is sustained.