Mailed: March 22, 2005
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
Killer Music, Inc. and BMG Songs, Inc., dba Killer Tracks1
v.
killersound, Inc.
________
Opposition No. 91152646
to application Serial No. 75702568
filed on May 11, 1999
_______
Mary L. Kevlin of Cowan, Liebowitz & Latman, P.C. for Killer
Music, Inc. and BMG Songs, Inc.
Ian K. Boyd of Harvey Siskind Jacobs LLP for killersound,
Inc.
_______
Before Chapman, Bucher and Holtzman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Applicant, killersound, Inc. (a California
corporation), filed an application to register on the
Principal Register the mark shown below
1 The notice of opposition includes two named opposers and
opposers’ cover letter refers to an enclosed check and a deposit
account for any insufficient or additional fees. The Board
instituted the opposition with only “Killer Music, Inc.” as the
opposer. That is hereby corrected and both opposers are listed
in the caption of this proceeding. (The additional fee for the
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition No. 91152646
2
for services identified as “music composition for others” in
International Class 41. The application is based on
applicant’s assertion of a bona fide intention to use the
mark in commerce.
The application has been opposed by Killer Music, Inc.
(a California corporation) (hereinafter “Killer Music”) and
BMG Songs, Inc. (a California corporation) (hereinafter
“BMG”) on the basis that for many years both opposers have
marketed “musical and video recordings, providing music for
television, films, videos and multi-media works, music
publishing and musical information services, under the marks
KILLER MUSIC and/or KILLER TRACKS” (paragraph 1); that
Killer Music owns (i) Registration No. 1466219 issued
November 24, 1987 for the mark shown below
(“music” disclaimed) for “prerecorded audio and video tapes”
in International Class 9, and (ii) application Serial No.
76053099 filed May 22, 2000 for the mark KILLER TRACKS
second opposer has been charged to opposers’ law firm’s deposit
account.)
Opposition No. 91152646
3
(“tracks” disclaimed) for “musical sound recordings” in
International Class 9 and “providing music for use in
production of television shows, television advertisements,
motion pictures, video recordings, in-house productions, and
multi media applications; music publishing services;
providing information about and performances of musical
artists by means of a global computer information network”
in International Class 41; that BMG is the exclusive
licensee of the KILLER TRACKS mark; that since long prior to
applicant’s application filing date, opposers have
extensively advertised and promoted the sale of their goods
-- musical sound recordings, and their provision of services
-- production music services, music publishing services and
music information services under the “KILLER Marks”; that
opposers have built up highly valuable goodwill for their
“KILLER Marks”; and that applicant’s mark, when used in
connection with its “music composition for others” services,
so resembles opposers’ previously used and registered marks,
as to be likely to cause confusion, mistake, or deception.
In its answer applicant denies the salient allegations
of the notice of opposition and asserts the affirmative
defenses of laches, waiver, estoppel and acquiescence
(paragraphs 3-6).2
2 In its brief (p. 3), applicant stated that the issue before the
Board is whether there is a likelihood of confusion when the
involved marks are used on or in connection with the involved
Opposition No. 91152646
4
The record consists of the pleadings; the file of
applicant’s application; opposers’ testimony, with exhibits,
of Gary Gross, president of opposer BMG; and opposers’
notices of reliance on the following items: (1) a status
and title copy of opposers’ pleaded Registration No.
1466219, and a certified copy of opposers’ pleaded
application Serial No. 76053099, (2) applicant’s amended
responses to opposers’ first set of interrogatory Nos. 2, 6,
7, 11, 14 and 16 and the documents identified therein,3 (3)
applicant’s responses to opposers’ requests for admission
Nos. 6-9 and the documents identified therein, and (4)
copies of numerous publications under Trademark Rule
2.122(e). Applicant submitted the testimony, with exhibits,
goods and services. Applicant made no reference in its brief to
any of its pleaded affirmative defenses, except on page 7,
applicant argued that opposers sent a cease and desist letter to
applicant on May 22, 2000; that applicant responded in a letter
dated June 1, 2000; and that, thereafter opposers did not contact
applicant for two years when they filed the opposition in July
2002. (See Gelat dep., pp. 93-95, Exh. No. 17.) To whatever
extent applicant intends thereby to assert its affirmative
defenses, we find that the evidence of record is insufficient to
establish any of applicant’s pleaded affirmative defenses --
laches, waiver, estoppel and acquiescence. With specific regard
to the defense of laches, see National Cable Television
Association, Inc. v. American Cinema Editors, Inc., 937 F.2d
1572, 19 USPQ2d 1424 (Fed. Cir. 1991).
We note that applicant’s “affirmative defenses” also include an
assertion that opposers’ pleading fails to state a claim
(paragraph 1). Applicant did not pursue this defense either
before trial by motion to dismiss or after trial in its brief.
Applicant has waived this defense. (Moreover, the notice of
opposition states a claim.) Applicant also pleads certain
“defenses” which relate more to a further denial of opposers’
assertion of a likelihood of confusion (paragraphs 2, 7 and 8).
These are not “affirmative defenses” and will not be treated as
such.
Opposition No. 91152646
5
of Frank Gelat, applicant’s president and creative director;
and a notice of reliance under Trademark Rule 2.122(e) on
printouts from the USPTO’s Trademark Electronic Search
System (TESS) of five third-party registrations and one
third-party application.
Both parties filed briefs on the case. Neither party
requested an oral hearing.
Gary Gross, BMG’s president, explains that opposers are
in the business of producing and licensing music and other
audio components for customers. This is known as the
“production music” business. It involves analyzing the
market needs for various types of music/sounds used in
various types of productions (e.g., television programming
and advertising, films, commercials, company training
videos), and then producing the music or sounds needed and
licensing them to customers for their needs. In addition to
production music, opposers also engage in music publishing,
which means they own the copyrights for certain music and
act as publisher for those compositions.
Opposers organize the music into several libraries or
brands (e.g., KILLER TRACKS, KILLER CLASSICAL, KILLER
LATINO, KILLER PROMOS, KILLER FX, KILLER ANIMATION) and
within each of the libraries, there are sub categories by
genre (e.g., classical, rock, jazz, hip-hop, trip-hop).
3 Applicant’s answers to opposers’ interrogatory Nos. 6 and 7
Opposition No. 91152646
6
Opposers distribute the music (or other sounds) to customers
primarily via CD but also do so through the Internet. (Gross
dep., p. 6.)
Customers can either order from opposers’ preexisting
catalog of music or opposers will create custom music for
customers. Rearrangements of the music/sounds by the
customers is not allowed without prior permission, but
customers can remix the musical instruments in the
compositions. (Gross dep., p. 89.) Opposers’ customers
include “almost every major film studio,” “almost every
major television broadcaster,” “advertising agencies” and a
wide range of companies from Fortune 500 corporations to
“mom-and-pop companies.” (Gross dep., pp. 10-11.)
Customers pay for opposers’ goods and services based on
the manner in which they use the music. For example, using
the production music in a national television show costs one
rate, while using it on a local radio program is another
rate.
The mark, KILLER TRACKS, is not only the dba name of
opposer BMG, it is the name of a major library of opposers’
production music, and has been in use for opposers’
production music since 1990. As of 2003, opposer BMG owns
both the KILLER MUSIC and design and KILLER TRACKS marks,
when BMG purchased the assets of opposer Killer Music, Inc.,
were filed under seal as confidential.
Opposition No. 91152646
7
including the trademarks, the musical compositions, the
archives, etc. (Gross dep., pp. 41-43.)
Opposers’ sales of their goods and services offered
under the KILLER TRACKS mark from 1997 – 2003 totaled about
$52.5 million, with advertising/promotional expenses during
that time of $300,000 - $350,000 annually. Opposers’ marks,
KILLER TRACKS and KILLER MUSIC and design, used in
connection with production music services, music
entertainment services, music publishing services, music
library services and music products, have been the subject
of many articles in the relevant publicly circulated media
since the late 1980s.
Opposers advertise in trade publications (e.g., “Post
Magazine,” “TV and Radio Reports,” “Hollywood Reporter”) and
through direct mail, on the Internet, and by exhibiting at
trade shows. Opposers generally request or require that
they be given a music title credit in the movies and
television shows which utilize their goods or services.
Opposers are not aware of any instances of actual
confusion.
Applicant, killersound, Inc., was founded in April
1999, following a positive response to the music composed by
one of applicant’s founders in connection with a colleague’s
website. Applicant employs two people, Mr. Frank Gelat and
Mr. Brett Yokum. Applicant offers a variety of about 500
Opposition No. 91152646
8
“SoundSets” (i.e., actual compositions) which contain both a
pre-made short (about 10-15 seconds long) and a long
(generally 40-45 seconds) version; and the “SoundSet” can
also be the components or elements or instrument parts
whereby the customer can rearrange, remix or recompose the
music to fit whatever production they are doing. (For
example, a customer might change the pitch or the tempo of
the various components or match another piece of music they
are doing in their production.) Applicant also offers music
loops and sound loops (usually 3 to 20 seconds long), sound
effects and sound logos or signatures. Applicant’s online
music libraries are subdivided by genre (e.g., classical,
jazz, mood, pop, rock, techno). Applicant also creates
custom-made products for customers.
Applicant’s customers include advertising agencies,
corporations, multimedia artists, freelance designers and
video designers.
The customers may download samples of a composition for
a free trial. When purchasing applicant’s services, the
cost averages around $375 per license, except the average
cost for a custom composition is $1500 to $2000.4
Applicant markets and delivers its product through its
4 These cost figures were filed during trial under seal as
confidential. However, applicant included the numbers in its
brief (pp. 5 and 12), and its brief was not filed (in relevant
part) under seal as confidential. Thus, applicant waived the
confidentiality of this information.
Opposition No. 91152646
9
website. That is, once the customer goes through the
purchasing transaction, then the customer downloads the
product to their desktop. Although applicant has on very
rare occasions (about four or five times) provided a
Opposition No. 91152646
10
customer with a CD. The general length of time between
customer inquiry and customer purchase is a week or week and
a half, except for custom orders which would be one to two
months, all with much contact with the client. Applicant
requires that the customer sign a license agreement, and pay
a one-time flat fee, without reporting usage to applicant.
Applicant offers some of its services (excluding its
SoundSets) through third-parties, specifically,
soundeffects.com, buycreative.com, bigshotmedia.com and
mediabakery.com. Also, applicant offers its services
bundled in third-party software programs (e.g., Macromedia
Flash software and Adobe Live Motion).
Applicant’s gross revenues were also filed as
confidential and cannot be stated here. Suffice it to say,
its accumulated gross revenues for the years 2000 – 2003 do
not reach into the millions of dollars; and its advertising
expenses are a very small percentage of its revenues.
Mr. Frank Gelat created the word mark “killer sound”
inspired by the positive feedback from his first project of
music for a colleague’s website. The logo portion of the
mark was created by his co-founder, Brett Yokum. Frank
Gelat did not know Mr. Yokum’s inspiration for that design.
Applicant’s website receives about 20,000 hits per
month. Applicant attends trade shows (e.g., FlashForward,
MacWorld), mails out brochure advertisements to customers
Opposition No. 91152646
11
and potential customers, and has appeared on third-party
websites (e.g., the “Hot News” section of Apple’s website).
When Mr. Gelat was asked if applicant had experienced
any actual confusion, he testified that he knew of only one
instance which occurred in September or October 2003.5
Specifically, Mr. Gelat testified that an existing customer
of applicant who had licensed a product from applicant, e-
mailed a request to try several products, which applicant
determined were products from opposers’ KILLER TRACKS site.
He also testified that he knew of three instances when
consumers called applicant inquiring whether applicant was
related to or affiliated with opposers. All occurred in the
same time frame, September/October 2003. One call was from
a distributor of music libraries wondering if applicant was
affiliated with KILLER TRACKS and wanting to do business
with applicant; the other two callers wanted general
information about the products and services. None of
applicant’s business partners or resellers have ever
reported any instance of actual confusion to applicant.
Priority
Opposers made of record a status and title copy of
pleaded Registration No. 1466219 for the mark KILLER MUSIC
5 According to applicant’s answer to opposers’ interrogatory No.
11, the incident occurred in October 2003.
Opposition No. 91152646
12
and design for “prerecorded audio and video tapes.”6 With
regard to the second pleaded mark KILLER TRACKS, after
trial, but before the briefing of this case, the pleaded
application Serial No. 76053099 issued on August 31, 2004 as
Registration No. 2878147. Opposers specifically referred to
this second registration in their brief on the case (e.g.,
brief, pp. 3 and 4). Applicant acknowledged that opposers’
pleaded application had registered, referring to it as the
“then-pending application for KILLER TRACKS mark” (brief, p.
2). Further, applicant made no objection to opposers’
reference to the subsequent registration of the pleaded
application for the mark KILLER TRACKS. Moreover, there is
clear testimony that BMG purchased the KILLER MUSIC and
design mark and the KILLER TRACKS mark in 2003, thus making
title to the second (recently issued) registration clear.
(Gross, dep., p. 41.)
Based on the above, we conclude that opposers’
Registration No. 2878147 (issuing from pleaded application
Serial No. 76053099) for “musical sound recordings” and
“providing music for use in production of television shows,
television advertisements, motion pictures, video
recordings, in-house productions, and multi media
applications; music publishing services; providing
6 Registration No. 1466219 issued November 24, 1987; Section 8
affidavit accepted. The word “music” is disclaimed. The claimed
Opposition No. 91152646
13
information about and performances of musical artists by
means of a global computer information network”7 is properly
of record.
In view of opposer BMG’s ownership of valid and
subsisting registrations for its KILLER MUSIC and design and
KILLER TRACKS marks, the issue of priority does not arise in
this opposition proceeding. See King Candy Co. v. Eunice
King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA
1974); Massey Junior College, Inc. v. Fashion Institute of
Technology, 492 F.2d 1399, 181 USPQ 272, at footnote 6 (CCPA
1972); and Carl Karcher Enterprises, Inc. v. Stars
Restaurants Corp., 35 USPQ2d 1125, 1128 (TTAB 1995).
Moreover, opposers’ have established use of the marks KILLER
MUSIC and design and KILLER TRACKS prior to the filing date
of applicant’s intent-to-use based application, May 11,
1999. The record shows that applicant commenced use of its
mark for “custom audio services” in April 1999. (See, e.g.,
applicant’s answer to opposers’ interrogatory No. 2.)
Opposers’ proven first use of their two pleaded marks is
prior to applicant’s proven first use date.
dates of first use anywhere and first use in commerce are March
1984 and June 1984, respectively.
7 Registration No. 2878147 issued August 31, 2004. The word
“tracks” is disclaimed. The claimed dates of first use anywhere
and first use in commerce are February 1990 for the goods and
November 1995 for the services.
Opposition No. 91152646
14
Likelihood of Confusion
We turn now to consideration of the issue of likelihood
of confusion. Our determination of likelihood of confusion
is based on an analysis of all of the facts in evidence that
are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont 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, however, two key considerations are the
similarities of the marks and the similarities of the goods
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper 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 services] and differences in the marks.”).
See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997). Based on the record before us
in this case, we find that confusion is likely.
Turning first to a consideration of the parties’
respective goods and services, in Board proceedings “the
question of likelihood of confusion must be determined based
on an analysis of the mark as applied to the goods and/or
services recited in applicant’s application vis-a-vis the
goods and/or services recited in opposer’s registration,
Opposition No. 91152646
15
rather than what the evidence shows the goods and/or
services to be.” Canadian Imperial Bank v. Wells Fargo
Bank, 811 F.2d 490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987).
That is, the issue of likelihood of confusion must be
determined in light of the goods or services as identified
in the opposed application and the pleaded registration(s)
and, in the absence of any specific limitations therein, on
the basis of all normal and usual channels of trade and
methods of distribution for such goods or services. See
Octocom Systems Inc. v. Houston Computers Services Inc., 918
F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990); and CBS Inc. v.
Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983).
Applicant identified its services as “music composition
for others.” Clearly, this identification is not restricted
as to the nature of the music composition, the purchasers,
the channels of trade, or in any other way. Opposer BMG’s
registration identifies the services as “providing music for
use in production of television shows, television
advertisements, motion pictures, video recordings, in-house
productions, and multi media applications; music publishing
services; providing information about and performances of
musical artists by means of a global computer information
network.” While there is some language regarding the nature
of the services, this identification is not limited as to
purchasers, and/or channels of trade. In fact, it
Opposition No. 91152646
16
encompasses consumers ranging from large corporations to an
individual making a movie who seeks production music
therefor.
Applicant argues that its services of musical
composition are web-based, sold royalty-free on a per-
project basis (without usage restrictions), and allowing the
customer to rearrange and remix the musical product; whereas
with opposers’ services the music product purchased is
generally packed and shipped in CD form, priced according to
type of usage, and customers are prevented from modifying
the music. Applicant concludes “there are clear
distinctions in [the parties’] products and services,
including structure, composition, and delivery.” (Brief, p.
12.)
However, in this Board proceeding involving only the
question of registrability, applicant has applied for “music
composition for others.” Thus, applicant’s arguments
relating to these differences are not relevant. In any
event, we note that the argument is unpersuasive because
opposers offer their various music services (production,
publishing, etc.) primarily via CD, but they also offer
their services on the Internet, and applicant offers its
music composition services primarily via the Internet, but
it also offers its services via CD -- even if only rarely.
Opposition No. 91152646
17
We find that the parties’ respective identified
services are similar in nature. Further, we find that
applicant’s identified services are closely related to the
opposers’ identified goods in the registrations,
specifically, “prerecorded audio and video tapes” and
“musical sound recordings.”
Inasmuch as there are no limitations on trade channels
or purchasers in the identifications of services in
applicant’s application or the goods and services in opposer
BMG’s registrations, the parties’ respective goods and
services must be considered to move in the same channels of
trade, and would be offered to similar classes of
purchasers. See Octocom Systems v. Houston Computer
Services, supra; and The Chicago Corp. v. North American
Chicago Corp., 20 USPQ2d 1715 (TTAB 1991). We find that the
parties’ goods and services move in the same or at least
overlapping channels of trade to the same or at least
overlapping classes of customers.
Applicant argues that applicant’s and opposers’
involved services are offered to sophisticated customers who
purchase not on impulse but with care and through an
extended sales cycle, involving extensive interaction and
discussions with the customers, and primarily for commercial
use. (Applicant’s brief, pp. 14-15.)
Opposition No. 91152646
18
Purchasers, either corporate/commercial or individual,
of applicant’s music composition services and of opposers’
production music services may make such purchasing decisions
with at least some degree of care. However, even if
purchased with care, and through in-person discussions by
sophisticated purchasers, these purchasers are not immune
from confusion as to the source of services, particularly
when they are sold under similar marks. See Wincharger
Corporation v. Rinco, Inc., 297 F.2d 261, 132 USPQ 289 (CCPA
1962); and In re Decombe, 9 USPQ2d 1812 (TTAB 1988).
Moreover, there is no limitation in either applicant’s
identification of services or in those of opposers’
registrations as to purchases being made by a particular
class of purchasers and/or that the services are intended
primarily for commercial use. Thus, there could be a mix of
potential customers for both applicant’s and opposers’
services, including sophisticated consumers in the
television and movie industries and on the Internet and
individuals who choose to obtain music or sounds for their
personal use, such as home movies or websites. That is, one
segment of potential purchasers of these services is the
general public. Where both professionals and members of the
general public are relevant consumers, the standard is equal
to that of the least sophisticated consumer. See e.g., In
Opposition No. 91152646
19
re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992); and In re
Artic Electronics Co., Ltd., 220 USPQ 836 (TTAB 1983).
We turn next to consideration of the similarities or
dissimilarities of the marks, and our initial determination
relates to opposers’ assertion of a “family” of KILLER
marks. (See, e.g., opposers’ brief, p. 5).8 The “family”
of marks doctrine has applicability in those situations
where, prior to a defendant’s first use of its challenged
mark containing a particular feature, the plaintiff had
established a family of marks characterized by that feature,
so that the defendant’s subsequent use of its mark
containing the feature for goods or services which are
similar or related to plaintiff’s will cause the relevant
purchasing public to assume that defendant’s mark is yet
another member of plaintiff’s family. See Blansett
Pharmacal Co. Inc. v. Carmrick Laboratories Inc., 25 USPQ2d
1473, 1477 (TTAB 1992); and Econo-Travel Motor Hotel Corp.
v. Econ-O-Tel of America, Inc., 199 USPQ 307, 311-312 (TTAB
1978).
8 Opposers did not plead a “family” of KILLER marks, mentioning
only the two individual KILLER MUSIC and design and KILLER TRACKS
marks, and referring throughout the pleading only to those two
marks as opposers’ “KILLER Marks.” Applicant made no objection
on the basis that the issue was not pleaded. It is clear from
the record that opposers’ asserted “family” of KILLER marks was
tried by the parties. Accordingly, opposers’ notice of
opposition is hereby deemed amended to conform to the evidence in
accordance with Fed. R. Civ. P. 15(b) to include a claim of a
“family” of several KILLER marks.
Opposition No. 91152646
20
It is well settled that merely adopting, using and
registering a group of marks having a feature in common for
similar or related goods or services is insufficient to
establish, as against a defendant, a claim of ownership of a
family of marks characterized by the feature. Rather, it
must be demonstrated that prior to defendant’s first use of
its challenged mark, the various marks said to constitute
the plaintiff’s family, or at least a good number of them,
were used and promoted together in such a manner as to
create among purchasers an association of common ownership
based upon the family characteristic. See J & J Snack Foods
Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889
(Fed. Cir. 1991); Witco Chemical Co. v. Whitfield Chemical
Co., 418 F.2d 403, 164 USPQ 43 (CCPA 1969); Hester
Industries Inc. v. Tyson Foods Inc., 2 USPQ2d 1646 (TTAB
1987); and Dan River, Inc. v. Apparel Unlimited, Inc., 226
USPQ 186 (TTAB 1985).
The problem with opposers’ claim of a “family” of
KILLER marks is that there is insufficient evidence showing
use of these marks together as a “family” of marks prior to
applicant’s use of its KILLER SOUND and design mark in April
1999. The record shows that opposers have used the marks
KILLER MUSIC since 1990, KILLER TRACKS since 1989, and
KILLER LATINO since 1997. However, the dates of first use
of several of opposers’ other asserted “KILLER” marks are
Opposition No. 91152646
21
subsequent to applicant’s proven first use of its mark.
For example, KILLER EDGE was first used in 1999, KILLER
PROMOS in 2000, KILLER ANIMATION in 2000, KILLER SCORES
around 2001, KILLER FX in 2001 or early 2002 and KILLER
SONIFER in 2002. (Gross dep., pp. 25, and 67-69.) While
there is some evidence of opposers’ use of two or more
“KILLER” marks together, it is insufficient to establish a
“family” of KILLER marks recognized by the purchasing public
as all indicating source in opposers. In addition, as
explained above, much of opposers’ evidence of use of a
“family” of KILLER marks involves use subsequent to
applicant’s first use of its mark. Thus, we find that
opposers have not established a “family” of KILLER marks.
Although opposers have otherwise relied on two
registered marks, in considering the
similarities/dissimilarities between applicant’s mark KILLER
SOUND and design and opposers’ KILLER MUSIC (and design) and
KILLER TRACKS (in typed form) marks, we will focus on
opposers’ KILLER TRACKS mark.
Our primary reviewing Court has held that in
articulating reasons for reaching a conclusion on the
question of likelihood of confusion, there is nothing
improper in stating that, for rational reasons, more or less
weight has been given to a particular feature or portion of
a mark. That is, one feature of a mark may have more
Opposition No. 91152646
22
significance than another. See Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Sweats
Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4
USPQ2d 1793, 1798 (Fed. Cir. 1987); and In re National Data
Corporation, 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir.
1985).
In this case, the word portion of applicant’s mark is
KILLER SOUND, and opposers’ mark is KILLER TRACKS. Thus,
these marks share the dominant term KILLER. Importantly,
both applicant’s mark and opposers’ mark begin with the same
first word, and it is often the first word that is most
memorable to consumers. See Presto Products, Inc. v. Nice-
Pak Products, Inc., 9 USPQ2d 1895 (TTAB 1981).
We acknowledge that the term “killer” may have a very
broad, general suggestive connotation in that it has a
dictionary meaning. Specifically, we take judicial notice
of the following dictionary definitions of “killer”:9
(i) “adjective: … 2. Slang Having
impressive or effective power or
impact; formidable: had a killer
smile; made killer profits” The
American Heritage Dictionary
(Fourth Edition 2000); and
(ii) “adjective. 1. strikingly
impressive or effective
”
9 See The University of Notre Dame du Lac v. J.C. Gourmet Food
Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983). See also, TBMP §704.12 (2d
ed. rev. 2004).
Opposition No. 91152646
23
Merriam-Webster’s Online
Dictionary.
This general connotation would be applicable to both
applicant’s and opposer BMG’s marks. Thus, applicant’s mark
connotes that its services (music composition) will result
in the customer obtaining very impressive or “killer” sound.
Likewise, with regard to opposers’ mark, it connotes very
Opposition No. 91152646
24
impressive or “killer” soundtracks. The second word in the
respective marks, “sound” and “tracks” have a similar
meaning in the context of the involved goods and services.
That is, the underscore of sound or music for a film, a
television show or a website, is generally known as a
“soundtrack.” We take judicial notice of the following
definition of the term “track” from The Random House
Dictionary (1987): “…14. Recording. a. a band of recorded
sound laid along the length of a magnetic tape. … d. a
discrete, separate recording that is combined with other
parts of a musical recording to produce the final aural
version: a special rhythm track added to the basic track. …
18. soundtrack.” Applicant’s argument regarding the many
meanings of the terms “sound” and “track” are not persuasive
because we must consider the connotations of words and
perceptions thereof by purchasers in the context of the
involved goods and services. These marks, KILLER SOUND and
KILLER TRACKS, connote very similar meanings.
Clearly, we recognize that applicant’s mark includes a
black and white circular or spiral design around the words
“killer·sound,” while opposers’ KILLER TRACKS mark is in
typed form only. The design feature of applicant’s mark is
not sufficient to obviate a finding of likelihood of
confusion. The proper test in determining likelihood of
confusion is not on a side-by-side comparison of the marks,
Opposition No. 91152646
25
but rather must be on the recollection of the average
purchaser, who normally retains a general rather than
specific impression of the many trademarks encountered; that
is, a purchaser’s fallibility of memory over a period of
time must also be kept in mind. See Grandpa Pidgeon’s of
Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573
(CCPA 1973); and Spoons Restaurants Inc. v. Morrision, Inc.,
23 USPQ2d 1735 (TTAB 1991), aff’d unpub’d (Fed. Cir., June
5, 1992). Importantly, when spoken, the design feature of
applicant’s mark is not necessarily seen by the purchasers.
Even when seen by purchasers and potential purchasers, they
may mistakenly believe that applicant’s mark is another
revised version of opposers’ KILLER MUSIC and design and
KILLER TRACKS marks, with both parties’ marks serving to
indicate origin in the same source.
Although the parties’ marks are certainly not
identical, when considered in their entireties, we find that
applicant’s mark and opposers’ registered KILLER TRACKS mark
are somewhat similar in appearance, and that they are
particularly similar in sound, connotation and commercial
impression. See In re Azteca Restaurant Enterprises Inc.,
50 USPQ2d 1209 (TTAB 1999). Their contemporaneous use, on
and in connection with the related goods and similar
services, would be likely to cause confusion as to the
Opposition No. 91152646
26
source or sponsorship of such goods and services. See
Cunningham v. Laser Golf Corp., supra.
Another du Pont factor we consider in this case is the
fame of opposers’ mark KILLER TRACKS. “Fame of an opposer’s
mark or marks, if it exists, plays a ‘dominant role in the
process of balancing the DuPont factors.’” Bose Corp. v.
QSC Audio Products, Inc., 293 F.3d 1367, 63 USPQ2d 1303
(Fed. Cir. 2002), quoting Recot Inc. v. M.C. Becton, 214
F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000). See also,
Kenner Parker Toys Inc. v. Rose Art Industries Inc., 963
F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992).
Opposers have used this mark for over ten years. They
have experienced “steady growth” (Gross dep., p 34),
generating over $52.5 million in sales for the goods and
services sold under the KILLER TRACKS mark in the last ten
years. Advertising for these goods and services under the
KILLER TRACKS mark amounted to over $300,000 - $350,000 per
year during that time frame. The record shows that opposers
have received extensive media coverage, including stories
about opposers and their mark KILLER TRACKS, reviews which
include the music credit to KILLER TRACKS, etc. This
coverage includes extensive coverage in the media production
trade and industries, which are one type of relevant
consumers of the goods and services involved herein, as well
Opposition No. 91152646
27
as in general consumer media. (Opposers’ Notice of Reliance
under Trademark Rule 2.122(e), exhibit A.)
Based on this record, we conclude that opposers have
demonstrated the mark KILLER TRACKS is famous, and is thus
entitled to a broad scope of protection. See Bose
Corporation v. QSC Audio Products, Inc., 293, F.3d 1367, 63
USPQ2d 1303 (Fed. Cir. 2002).10
The fame of opposer BMG’s KILLER TRACKS mark plays a
dominant role in the du Pont factor analysis. Indeed, the
fame of this mark increases the likelihood that consumers
will believe that applicant’s services emanate from or are
sponsored by or are associated with opposers.
Applicant argues, under its heading “The Number Of
Similar Marks In Use With Similar Goods,” that the existence
of third-party registrations which include the word “KILLER”
in the mark and which are for similar or related goods and
services supports a finding of lack of confusion. (Brief,
pp. 15-16.) In support thereof, applicant submitted its
notice of reliance under Trademark Rule 2.122(e) on five
third-party registrations and one third-party application.
10 Applicant argued that there is no direct evidence of consumer
recognition and commented that opposer “failed to submit customer
testimony or a single consumer survey to demonstrate the
purported strength of their marks.” (Brief, p. 9.) This
argument is unpersuasive as neither customer testimony nor
consumer surveys are necessary to establish fame or the strength
of the mark. See Bose v. QSC, supra; and Hilson Research v.
Society for Human Resource Management, 27 USPQ2d 1423, 1435-1436
(TTAB 1993).
Opposition No. 91152646
28
The third-party application carries no weight as it is
evidence only that the application was filed on a particular
date. The five third-party registrations submitted by
applicant are likewise totally devoid of evidentiary value
with regard to this du Pont factor because third-party
registrations do not establish that the marks shown therein
are in use, or that the public is familiar with them. See
Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22
USPQ2d 1542, 1545 (Fed. Cir. 1992); and Helene Curtis
Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB
1989). There is no evidence before us of any use by any
third-party of any mark including the word “KILLER” for the
same or related goods or services.
Regarding the du Pont factor of “the nature and extent
of any actual confusion,” the only evidence thereon is from
applicant, whose witness testified about one instance of
actual confusion and three inquiries regarding whether there
was an affiliation between applicant and opposers. (Gelat
dep., pp. 101-106.) Opposers’ witness testified that he was
not directly aware of any instance of actual confusion.
(Gross dep., pp. 93-94.)
Applicant argues in its brief that there is an absence
of any “credible instance of actual confusion”; and that the
few instances about which applicant’s witness testified are
de minimis, particularly in light of applicant’s 20,000 hits
Opposition No. 91152646
29
per month on its website and its 75-100 telephone and e-mail
inquiries each month.
We agree with applicant that there is not evidence of
significant numbers of customers or potential customers
actually confused regarding the involved marks for the
involved goods and services. However, in light of the co-
existence of the parties’ respective marks for only about
five years, we find that this factor is neutral. Moreover,
the test is not actual confusion, but likelihood of
confusion. See Gillette Canada Inc. v. Ranir Corp., 23
USPQ2d 1768, 1774 (TTAB 1992). Even if this factor were
found to favor applicant, it is outweighed by the other du
Pont factors in this case which favor opposers.11
On balance, and considering all of the evidence on the
relevant du Pont factors, and giving each such factor its
appropriate weight in the circumstances of this case, we
find that there is a likelihood that the purchasing public
would be confused when applicant uses KILLER SOUND and
design as a mark for its services.
While we have no doubt in this case, if there were any
doubt on the question of likelihood of confusion, it must be
resolved against applicant who is the newcomer, as the
newcomer has the opportunity of avoiding confusion, and is
obligated to do so. See TBC Corp. v. Holsa Inc., 126 F.3d
Opposition No. 91152646
30
1470, 44 USPQ2d 1315 (Fed. Cir. 1997); and In re Hyper
Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir.
1988).
Decision: The opposition is sustained.
11 We specifically note that we do not find that the evidence
establishes that potential confusion would be de minimis.
