ElectroBrand, Inc.

Trademark Trial and Appeal Board

Oct 15, 2008

No. 77038241 (T.T.A.B. Oct. 15, 2008)

Mailed:
10/15/2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Electro-Brand, Inc.
________

Serial No. 77038241

_______

Robert S. Beiser, of Vedder Price P.C., for Electro-Brand,
Inc.

Stephen Aquila, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
_______

Before Walters, Zervas, and Ritchie de Larena,
Administrative Trademark Judges.

Opinion by Ritchie de Larena, Administrative Trademark
Judge:
Electro-Brand, Inc. filed an application to register
the mark “ENCORE” in standard character format for
“television sets, videocassette recorders, DVD players and
recorders, CD players, MP3 players and combinations
thereof,” in International Class 9.1 The trademark
examining attorney refused registration of the marks under
Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§1052(d), on the ground that applicant’s mark so resembles

1 Application Serial No. 77038241, filed November 7, 2006,
pursuant to Section 1(b) of the Trademark Act, 15 USC §1051(b),
claiming a bona fide intent to use in commerce.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 77038241

2
the mark shown below, registered for “electronics, namely
DVD players, blank CD-ROMS for data, music and video
recording, wireless modems, LAN (local area network)
computer cards for connecting portable computer devices to
computer networks, video graphics accelerator cards, sound
cards, and computer monitors,” in International Class 9,2
that when used in connection with applicant’s identified
goods, they will be likely to cause confusion:

Upon final refusal of registration, applicant filed a
timely appeal. Both applicant and the examining attorney

2 Registration No. 3127857, issued August 8, 2006, claiming first
use and first use in commerce on September 1, 2004, and
disclaiming the exclusive right to use “electronics” apart from
the mark as shown.
Serial No. 77038241

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filed briefs. For the reasons discussed herein, the Board
affirms the final refusal to register.
We base our determination under Section 2(d) on an
analysis of all of the probative evidence of record bearing
on a likelihood of confusion. In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA
1973). See also, In re Majestic Distilling Company, Inc.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In
any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods or services. See
Federated Foods, Inc. v. Fort Howard Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks”). We consider each of the
factors as to which applicant or the examining attorney
presented arguments or evidence.

The Marks
Both applicant’s and registrant’s marks contain the
word “ENCORE.” The word “ENCORE,” defined as “used to
demand an additional performance,”3 is arbitrary as applied

3 American Heritage Dictionary of the English Language (4th ed.
2000). The Board may take judicial notice of dictionary
definitions not included in the record. See University of Notre
Dame du Lac v. J.C. Gourmet Food Imports Co., Inc. 213 USPQ 594,
596 (TTAB 1982), aff’d 703 F.2d 1372, 217 USPQ 505(Fed. Cir.
1983).
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to consumer electronics. Registrant has disclaimed the
only other word in its mark, “ELECTRONICS.” Disclaimed or
descriptive matter is generally considered less dominant
for purposes of finding a likelihood of confusion. In re
National Data Corp., 753 F.2d 1956, 224 USPQ 749, 752 (Fed.
Cir. 1985) (“The precedential decisions which have stated
that a descriptive component of a mark may be given little
weight in reaching a conclusion on likelihood of confusion
reflect the reality of the market place.”).
Registrant’s mark does contain color and a design
element, which it has described as follows:

The color(s) red, black and white are claimed as
a feature of the mark. The color(s) red appears
in the background behind the letter "e," the
color white appears in the letter "e" and in the
background of the entire mark, and the color
black appears in the words "encore electronics.”

However, where a mark consists of words as well as a
design, the words are generally dominant because the words
will be used to call for or refer to the services. CBS
Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir.
1983); In re Dakin’s Miniatures Inc., 59 UPSQ2d 1593, 1596
(TTAB 2001); In re Appetito Provisions Co., Inc., 3 USPQ2d
1553, 1554 (TTAB 1987). This is true of applicant’s mark,
whose “e” design merely highlights the first letter of both
words in its mark.
In comparing the marks, we are mindful that the test
is not whether the marks can be distinguished when
Serial No. 77038241

5
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in terms of their
overall commercial impression so that confusion as to the
source of the goods offered under the respective marks is
likely to result. San Fernando Electric Mfg. Co. v. JFD
Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3
(CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23
USPQ2d 1735, 1741 (TTAB 1991), aff'd unpublished, No. 92-
1086 (Fed. Cir. June 5, 1992). The proper focus is on the
recollection of the average customer, who retains a general
rather than specific impression of the marks. Winnebago
Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335,
344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106, 108 (TTAB 1975).
Applicant argues that it has priority of use of the
mark “ENCORE” over registrant. However, applicant may not
launch what is essentially a collateral attack on the
validity of the cited registration via this ex parte
appeal. Applicant submitted portions of the application
file for the cited registration and notes that applicant’s
prior registration for the mark “ENCORE”4 for other
electronic goods was initially cited as a bar to
registration by the examining attorney during the

4 Registration No. 1079745 for “portable and home radios, clock
radios, radio, phonograph and tape player combos, auto, home and
portable cassette and 8-track recorders and players, walkie-
talkies and CB transceivers” in International Class 9, issued
December 20, 1977 and claiming first use and first use in
commerce on March 1, 1963.
Serial No. 77038241

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application pendency of the cited registration. In a
section of its brief entitled “What is Good for the Goose
is Good for the Gander,” applicant argues that since the
cited registration issued despite the existence of
applicant’s prior registration, so should applicant be
allowed to register its “ENCORE” mark for the goods covered
in this application.
The examining attorney objected to this evidence as
being submitted for the first time in applicant’s brief, in
violation of Trademark Rule 2.142(d), 37 CFR Rule 2.142(d).
Since applicant actually submitted the evidence in response
to an office action, the objection is overruled and we
consider the evidence for whatever probative value it may
have. The evidence shows that, to overcome the Section
2(d) refusal, registrant argued that the design element in
its mark is dominant. While registrant may indeed consider
the design elements of its mark to be dominant, the
evidence submitted by applicant does not show the examining
attorney’s reasons for allowing the cited registration to
issue. Furthermore, not only are we not privy to all of
the facts involved therein, but we are not bound by either
applicant’s position or the examining attorney’s decision
in that case. In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001).
Finally, applicant argues that there are third-party
registered marks containing the word “ENCORE,” and that
therefore the cited registration is weak. We do not find
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applicant’s evidence to be probative of the weakness of the
registered marks however. Two of the marks are for clearly
unrelated goods and the other two are applicant’s own
registrations. Furthermore, even a weak mark is entitled
to protection against registration of confusingly similar
marks. See Giant Food Inc. v. Roos and Mastacco, Inc., 218
USPQ 521 (TTAB 1982). The marks are substantially similar,
sound the same, and are likely to give a similar commercial
impression. In view of the foregoing, we find that the
first du Pont factor weighs heavily in favor of finding a
likelihood of consumer confusion.

The Goods and Channels of Trade

Preliminarily, we note that the more similar the marks
at issue, the less similar the goods need to be for the
Board to find a likelihood of confusion. In re Opus One
Inc., 60 USPQ2d 1812, 1815 (TTAB 2001). It is only
necessary that there be a viable relationship between the
goods to support a finding of likelihood of confusion. In
re Concordia Int’l Forwarding Corp., 222 USPQ 355, 356
(TTAB 1983).
Moreover, goods or services need not be identical or
even competitive in order to support a finding of
likelihood of confusion. Rather, it is enough that goods
or services are related in some manner or that some
circumstances surrounding their marketing are such that
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they would be likely to be seen by the same persons under
circumstances which could give rise, because of the marks
used or intended to be used therewith, to a mistaken belief
that they originate from or are in some way associated with
the same producer or that there is an association between
the producers of each parties’ goods or services. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
The goods in the present application overlap with
those in the cited registration, with both including “DVD
players.” So the goods are in part identical. The
examining attorney also submitted evidence of third-party
registrations wherein the same mark is registered for the
goods identified in both the application and the cited
registration. These third-party registrations serve to
suggest that these goods are of a type which may emanate
from a single source. See In re Albert Trostel & Sons Co.,
29 USPQ2d 1783 (TTAB 1993). Therefore, we find that the
remaining goods listed in the application and registration
are related.
Applicant argues that it targets sophisticated
consumers. Applicant does not offer any evidence in
support of this point, however, and, since the
identifications of goods do not contain any limitations,
these identical and related goods are likely to travel
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through the same trade channels and be purchased by the
same classes of purchasers. Moreover, the goods are
primarily electronics that are purchased by the general
consumer. To the extent that the general consumer
encompasses persons who are particularly knowledgeable
about these electronics items, even a sophisticated
consumer is not immune from source confusion. See Squirtco
v. Tomy Corporation, 697 F.2d 1038, 216 USPQ 937 (Fed. Cir.
1983). Since the marks are substantially similar and the
goods are in part identical, even a careful, sophisticated
consumer is not likely to note minor trademark differences.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 948-949 (Fed.
Cir. 2000). Accordingly, we find that the second, third
and fourth du Pont factors weigh in favor of finding a
likelihood of consumer confusion.
Balancing the Factors
Considering all of the evidence of record as it
pertains to the du Pont factors, we conclude that the marks
are substantially similar; the goods are identical in part
and otherwise related; and they are likely to be sold
through the same channels of trade to the same classes of
purchasers. Accordingly, we find a likelihood of confusion
between applicant’s mark and the mark in the cited
registration for the identified goods.
Decision: The refusal to register is affirmed.