Fulltone Musical Products Inc.

Trademark Trial and Appeal Board

Sep 16, 2008

No. 77052356 (T.T.A.B. Sep. 16, 2008)

Mailed: September 16, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Fulltone Musical Products Inc.
________

Serial Nos. 77052352 and 770523561
_______

Todd Braverman of Bryan Cave LLP for Fulltone Musical
Products Inc.

Sara Thomas, Trademark Examining Attorney, Law Office 110
(Chris A. F. Pedersen, Managing Attorney).
_______

Before Walters, Kuhlke and Walsh, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Fulltone Musical Products Inc. seeks registration on
the Principal Register of the marks GT-350 and GT-500 (both
in standard character format) for goods identified as
“electronic effects pedals and stomp boxes for use with

1 Inasmuch as the issues raised by the two appeals are similar,
the Board is addressing them in a single opinion. Citations to
the briefs refer to the briefs filed in application Serial No.
77052352, unless otherwise noted; however, we have, of course,
considered all arguments and evidence filed in each case.
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial Nos. 77052352 and 77052356
2
musical instruments and parts therefor and instructional
manuals, sold as a unit,” in International Class 9.2
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s marks, when used with its identified goods, so
resemble the following registered marks, owned by the same
registrant, as to be likely to cause confusion, mistake or
deception:

for “microphones; amplifiers, preamplifiers,
electronic sound compressors, audio signal
processors, speakers, electrical power supplies,
and electrical cables and electrical connectors;
electronic equipment or components for audio
signal instrumentation measuring or testing,
namely microphones, amplifiers, preamplifiers,
electronic sound compressors, audio signal
processors, speakers, electrical power supplies,
electrical cables and electrical connectors;
excluding telephones and industrial telephone
communications systems,” in International Class
9, Registration No. 2753346, issued August 19,
2003;

“ELECTRONICS” disclaimed for “microphones;
amplifiers, preamplifiers, electronic sound
compressors, audio signal processors, speakers,
electrical power supplies, and electrical cables
and electrical connectors; electronic equipment

2 Application Serial Nos. 77052352 and 77052356, filed November
28, 2006, alleging a bona fide intention to use the marks in
commerce under Section 1(b) of the Trademark Act, 15 U.S.C.
§1051(b).

Serial Nos. 77052352 and 77052356
3
or components for audio signal instrumentation
measuring or testing, namely microphones,
amplifiers, preamplifiers, electronic sound
compressors, audio signal processors, speakers,
electrical power supplies, electrical cables and
electrical connectors; excluding telephones and
industrial telephone communications systems,” in
International Class 9, Registration No. 2727477,
issued June 17, 2003, Section 8 and 15 affidavit
accepted and acknowledged;

for “microphones,” in International Class 9,
Registration No. 3075054, issued June 4, 2008.

When the refusals were made final, applicant appealed
and filed two successive requests for reconsideration in
each application. The examining attorney denied the
requests and the appeals were resumed and fully briefed.
We affirm the refusals to register in each application.
As a preliminary matter, the examining attorney’s
objection to evidence submitted by the applicant for the
first time with its brief, is sustained inasmuch as this
evidence is untimely. Trademark Rule 2.142(d) (“The record
in the application should be complete prior to the filing
of an appeal.”) To have the evidence considered, applicant
should have filed, by separate paper, a request for remand.
Id.
Although applicant, in its reply brief, requests that
the Board take judicial notice of this matter, the
Serial Nos. 77052352 and 77052356
4
submissions, applicant’s other registrations and assertions
regarding third-party manufacturers of guitar pedals and
price ranges for guitar pedals, do not constitute matter of
which the Board may take judicial notice. Cf., In re
Carolina Apparel, 48 USPQ2d 1542, n.2 (TTAB 1998) (may not
take judicial notice of third-party registrations); Beech
Aircraft Corp. v. Lightning Aircraft Co., 1 USPQ2d 1290
(TTAB 1986) (may not take judicial notice of files of
applications not the subject of the proceeding).
In support of its request, applicant mistakenly relies
on those portions of the Trademark Rules and the Trademark
Trial and Appeal Board Manual of Procedure (TBMP) that
pertain to inter partes proceedings. See Trademark Rule
2.122(d)(2) and TBMP Section 704.03.(b)(1)(B) (2d ed. rev.
2004). These references pertain to the manner in which
evidence may be presented at trial in an inter partes
proceeding. To the extent there is any analogy, the trial
phase would be the prosecution phase of ex parte
examination. Just as evidence may not be submitted during
the briefing stage of inter partes cases, evidence may not
be submitted, absent a request for remand, during the
appeal and briefing stage of an ex parte case. In view
thereof, applicant’s request that we take judicial notice
of this matter is denied. We hasten to add that even were
Serial Nos. 77052352 and 77052356
5
we to consider this evidence it would not change our
decision.
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. du Pont de Nemours & 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). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
We turn first to a consideration of the goods
identified in the applications and the cited registrations.
It is well settled that goods need not be similar or
competitive in nature to support a finding of likelihood of
confusion. The question is not whether purchasers can
differentiate the goods themselves, but rather whether
purchasers are likely to confuse the source of the goods.
See Helene Curtis Industries Inc. v. Suave Shoe Corp., 13
USPQ2d 1618 (TTAB 1989). Further, we must consider the
cited registrant’s goods as they are described in the
registration and we cannot read limitations into those
Serial Nos. 77052352 and 77052356
6
goods. See Hewlett-Packard Co. v. Packard Press Inc., 281
F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1987). If the cited
registration describes goods broadly, and there is no
limitation as to the nature, type, channels of trade or
class of purchasers, it is presumed that the registration
encompasses all goods of the type described, that they move
in all channels of trade normal for these goods, and that
they are available to all classes of purchasers for the
described goods. See In re Linkvest S.A., 24 USPQ2d 1716
(TTAB 1992).
In support of her contention that the goods are
related, the examining attorney submitted several third-
party use-based registrations to show that numerous
entities have adopted a single mark for electronic effect
pedals, amplifiers and microphones. See, e.g., Reg. No.
2601489 (microphones, amplifiers, and electronic effects
pedals for use with amplifiers); Reg. No. 2582827 (sound
amplifiers and electronic effects pedals); Reg. No. 2431788
(microphones, electronic effects pedals for use with sound
amplifiers); Reg. No. 2752033 (guitar amplifiers,
electronic effects pedals for use with sound amplifiers,
microphones); Reg. No. 3036482 (amplifiers, electronic
Serial Nos. 77052352 and 77052356
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effects pedals for use with sound amplifiers); Reg. No.
3017601 (amplifiers, electronic effect pedals for use with
sound amplifiers); Reg. No. 3045746 (musical instrument
amplifiers, electronic effect pedals for use with sound
amplifiers); and Reg. No. 3068220 (electronic effects
pedals for use with musical instruments, sound amplifiers
for use with musical instruments). We find these
registrations persuasive evidence as to the factor of the
relatedness of the goods. See In re Albert Trostel & Sons
CO., 29 USPQ2d 1783 (TTAB 1993).
Applicant’s argument that registrant does not
manufacture or sell guitar effect pedals is not persuasive.
As noted above, the goods need not be identical. Rather,
the record must show that the goods are related in a manner
which would cause confusion as to source. The fact that
this particular registrant does not sell guitar effect
pedals does not obviate the finding based on the third-
party registrations that the relevant public may be
accustomed to seeing these goods marketed by the same
source.
As to channels of trade, there are no specific
limitations in either the registrations or the subject
applications, thus, we must presume that applicant’s and
registrant’s goods will be sold in some of the same
Serial Nos. 77052352 and 77052356
8
channels of trade and will be bought by the some of the
same classes of purchasers. See Canadian Imperial Bank v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987). Moreover, the examining attorney submitted
printouts of web pages retrieved from the Internet which
show effect pedals, amplifiers and microphones being
offered for sale on the same website specializing in
musical instruments and accessories. See, e.g.,
www.bananas.com and www.musiciansfriend.com.
In view of the above, the du Pont factors of the
relatedness of the goods and the channels of trade favor a
finding of likelihood of confusion.
We turn now to the first du Pont factor, i.e., whether
applicant’s marks GT-350 and GT-500 and registrant’s GT and
design and GT ELECTRONICS marks are similar or dissimilar
when compared in their entireties in terms of appearance,
sound, connotation and commercial impression. The analysis
is not whether the marks can be distinguished when compared
side-by-side. Rather, we must determine whether the marks
are sufficiently similar that there is a likelihood of
confusion as to source and, in making this determination,
we must consider the recollection of the average purchaser
who normally retains a general, rather than specific,
Serial Nos. 77052352 and 77052356
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impression of trademarks. Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975).
The sound and appearance of the marks is very similar
in that applicant’s marks begin with the dominant portion
of registrant’s marks, the letter combination GT. We do
not find the stylization and design elements in
registrant’s two stylized marks to be sufficient to
distinguish them from applicant’s mark. In re Appetito
Provisions Co. Inc., 3 USPQ2d 1553 (TTAB 1987). In
particular, the design element in each mark consists merely
of a circle that serves as a carrier or background element
for the letters presented in a stylized manner where the G
and T simply share the same cross bar. Similarly, the
disclaimed merely descriptive term ELECTRONICS in
registrant’s standard character mark is of no source-
indicating significance in relation to the identified
electronic goods. Moreover, the numbering in applicant’s
marks does not serve to sufficiently distinguish the marks.
Applicant’s marks begin with the letters GT, the literal
and more memorable portion of registrant’s marks, and “it
is often the first part of a mark which is most likely to
be impressed upon the mind of a purchaser and remembered.”
Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d
1895, 1897 (TTAB 1988).
Serial Nos. 77052352 and 77052356
10
Applicant centers its argument against likelihood of
confusion on the element of connotation and its assertion
that the letters GT in the relevant field are weak, which
allows for minimal differences to distinguish the marks.
With regard to connotation, applicant argues that its
marks:
...recall the famous Ford Mustang model hotrod
racing cars from the 1960’s. The Applicant, in
adopting the designation GT-350 wanted to create
the commercial impression of a “hot-rod guitar
pedal.” The term “GT” is well-known as an
abbreviation for Grand Touring...GT-350 refers to
a specific hot-rod Grand Touring car from the
1960’s...Just as “hot-rodding” is common place
for cars, there is a large market for “hot-
rodding” or customizing a guitar by changing
electronics to get a hotter guitar signal, adding
custom paint and changing guitar hardware.

Br. pp. 14-15.

In support of its position regarding connotation and
consumer perception, applicant submitted an excerpt from
one advertisement for a Gibson guitar which clearly evokes
sports cars in relation to a guitar and guitar accessories.
In support of its contention that GT-350 and GT-500 refer
to specific cars, applicant submitted an article retrieved
from Wikipedia attached to its July 6, 2007 response
discussing cars. An excerpt is reproduced below:
The first 252 GT-350s for 1966 were “carry-over”
cars... Shelby struck a deal with the Hertz
Corporation to produce a special line of GT350s
for rent which were subsequently sold to the
Serial Nos. 77052352 and 77052356
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public after their rental-car lives were
finished. These ‘GT350H cars are quite rare and
sought-after today, with some examples selling
for more than $120,000...The Guns N’ Roses video
“Don’t Cry” features a Shelby GT-350H with
guitarist Slash at the wheel... This year also
saw the introduction of the GT500 alongside the
continued GT350. The new GT500 featured a 428-in
(7L) big block V8. This is also one of the most
famous Shelby Mustangs. A modified GT500 clone,
known as “Eleanor” was featured alongside
Nicholas Cage in the 2000 remake of Gone in 60
Seconds. ... The 4.6 liter .319 hp Ford Shelby
GT slots between the 300 hp Mustang GT and the
500 hp Ford Shelby GT500. It is essentially a
retail sale version of the Hertz rental-only Ford
Shelby GT-H... Like the GT-H the Shelby GT is
modified at Shelby Automotive’s factory in Las
Vegas.

It is notable that the article also refers to a GT car
without any numbering. Therefore, applicant’s connotation
argument could also apply to registrant’s marks. In any
event, applicant’s evidence is not sufficient to find that
the designations GT350 and GT500 are so identified with
specific sports cars that when used on an electronic
effects pedal they would connote only these cars in the
minds of all potential purchasers. Moreover, the fact that
one guitar manufacturer issued one advertisement equating
“hot rodding” cars with “hot rodding” guitars, is not
enough evidence for us to conclude that all potential
purchasers make a connection between effects pedals and
sports cars.
Serial Nos. 77052352 and 77052356
12
With regard to the weakness of the letters GT in the
relevant field, applicant argues that:
Applicant attaches as Exhibit D extensive third
party use of the term “GT” in connection with
guitars, guitar pedals, guitar tuners and related
musical instrument products, all previously made
of record. Evidence of extensive third party use
of a term is relevant to show that a mark is
relatively weak and entitled to only a narrow
scope of protection. Exhibit D demonstrates the
extensive number of guitar and musical instrument
products that incorporate the GT prefix with
additional distinctive matter, including such
terms that the Examining Attorney mistakenly
believes are mere “model designations” and do not
distinguish the marks. As evidenced by the vast
number of marks using GT, it is obvious that
these GT uses can peacefully co-exist without
creating a likelihood of confusion in the
relevant market.

Br. p. 12.
Applicant’s evidence consists substantially of pages
from eBay where various guitar products are being offered
for sale and GT is either on the article for sale or used
somewhere on the page in connection with the listing.
These excerpts are not particularly useful for determining
whether the relevant public has been so exposed to a term
that it should be accorded minimal protection. The other
examples are simply pictures of products which also provide
no information as to the extent to which the public has
been exposed to these terms. Moreover, the evidence
Serial Nos. 77052352 and 77052356
13
represents approximately 39 third parties and a variety of
goods that span guitars and guitar accessories.
This evidence is far short of the “more than 575 entities
whose names contain the term BROADWAY and which offer
restaurant services and/or related services or goods.” In
re Broadway Chicken Inc., 38 USPQ2d 1559, 1562 (TTAB 1996).
In addition, applicant submitted excerpts from acronym
and abbreviation dictionaries that show GT as an
abbreviation for a variety of guitar-related terms, guitar,
guitar tuner, guitar technique, guitar technology, and car-
related terms, grand turismo and grand touring. We do not
find these excerpts particularly persuasive inasmuch as
they point to various possible meanings rather than one
particular meaning in relation to these goods. We add that
applicant’s identification of goods is not limited to
guitar products and the entries are meaningless in relation
to other “musical instruments.”
Finally, applicant argues that consumers will only
associate registrant’s marks with registrant’s former
corporate name Groove Tubes. Whether or not that occurs is
not before us. We must make our determination based on the
marks in the registrations and the wording Groove Tubes is
not included; therefore, we must presume these marks are
used without the presence of that wording. This is so
Serial Nos. 77052352 and 77052356
14
because the issue before the Board in this proceeding is
registrability and not use. It is therefore irrelevant
whether registrant uses its trade name in conjunction with
its registered marks on its products. Moreover, where
marks are otherwise virtually the same, the addition of a
house mark is more likely to add to the likelihood of
confusion than to distinguish the marks. Key West
Fragrance & Cosmetic Factory, Inc. v. Mennen Co., 216 USPQ
168 (TTAB 1982). We add that the derivations of letter
marks and acronyms are generally of no particular
significance. See Aerojet-General Corp. v. Computer
Learning and Systems Corp., 170 USPQ 358, 362 (TTAB 1971).
See also Edison Brothers Stores, Inc. v. Brutting E. B.
Sport-International GmbH, 230 USPQ530, 533 (TTAB 1986).
Trademarks may be confusingly similar in appearance
despite the addition, deletion or substitution of numbers.
Cf. Weiss Associates Inc. v. HRL Associates, Inc., 902 F.2d
1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (TMM held confusingly
similar to TMS, both for software); Canadian Imperial Bank
of Commerce, N.A. v. Wells Fargo Bank, 81 F.2d 1490, 1
USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH held confusingly
similar to COMMUNICASH, both for banking services). We are
not persuaded, as applicant argues, that “the evidence
clearly demonstrates that musical instruments consumers
Serial Nos. 77052352 and 77052356
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view the marks taken as a whole and understand that GT-OD
is different than GT-8 and GT-2 and GT-350 such that
consumers would not view GT-350 as merely an extension of
Registrant’s products.” Br. p. 17. The evidence of record
simply does not establish that all potential purchasers
would not view the numbering attached to the end of
applicant’s GT marks as an extension of registrant’s GT
marks or some type of numbering system denoting different
styles of features of the products.
Thus, based on the record applicant submitted and
within the context of the goods, the connotation of the
letters GT in the marks would be the same, regardless of
whether it is a reference to guitar goods or to well-known
muscle cars, or whether it is completely arbitrary.
Overall we find that applicant’s marks GT-350 and GT-
500 and registrant’s GT marks have very similar commercial
impressions. Therefore, the factor of the similarity of
the marks weighs in favor of likelihood of confusion.
To the extent that we may have any doubt, this record
is not sufficient to overcome the examining attorney’s
prima facie case, in particular in view of the close
relationship of the goods and similarity of the marks, and
we resolve doubt in favor of the registrant. Hewlett-
Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265 62
Serial Nos. 77052352 and 77052356
16
USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes
(Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).
In conclusion, we find that because the marks are
similar, the goods are related, and the channels of trade
overlap, confusion is likely between applicant’s marks and
the marks in the cited registrations.
Decision: The refusal to register under Section
2(d) of the Trademark Act is affirmed in both
applications.