Monster Cable Products, Inc.

Trademark Trial and Appeal Board

Jun 1, 2009

No. 77215696 (T.T.A.B. Jun. 1, 2009)

Mailed:
June 1, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Monster Cable Products, Inc.
________

Serial No. 77215696
_______

William R. Samuels of LaRiviere, Grubman & Payne, LLP, for
Monster Cable Products, Inc.

Justine D. Parker, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Taylor, Bergsman, and Ritchie, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Monster Cable Products, Inc. (“applicant”) filed an
intent-to-use application to register the mark ADVANCED, in
standard character form, for goods ultimately identified as
“electrical and electromagnetic signal transmitting,
amplifying, receiving, and converting devices for use in
connection with consumer electronics, namely, cables,
wires, and connectors for use with electrical, electronic,
and computer devices,” in International Class 9.
The Trademark Examining Attorney refused to register
applicant’s mark under Section 2(d) of the Trademark Act of
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77215696
2
1946, 15 U.S.C. §1052(d), on the ground that applicant’s
mark is likely to cause confusion with the marks ADVANCED,
in standard character form, for “electrical equipment;
namely, electrical connectors, sockets, socket terminal
carriers, adapters,” in International Class 91 (the “239
Registration”) and ADVANCED INTERCONNECTIONS, also in
standard character format, for “electrical equipment;
namely, electrical connectors, sockets, contacts, and
socket terminal carriers,” in International Class 9 (the
“748 Registration”).2 Both of the cited registrations are
owned by the same registrant.
Our determination under Section 2(d) is based on an
analysis of all of the probative 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, 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

1 Registration No. 1771239, issued May 18, 1993, based on first
use and first use in commerce on November 17, 1982. Sections 8
and 15 affidavits accepted and acknowledged. Renewed.
2 Registration No. 1532748, issued April 4, 1989, based on first
use and first use in commerce on February 12, 1982, and
disclaiming the exclusive right to use “INTERCONNECTIONS” apart
from the mark as shown. Sections 8 and 15 affidavits accepted
and acknowledged. Renewed.
Serial No. 77215696
3
similarities between the marks and the similarities between
the goods 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 differences in the
marks”).
The Marks

We turn first to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
De Nemours & Co., 177 USPQ at 567. In a particular case,
any one of these means of comparison may be critical in
finding the marks to be similar. In re White Swan Ltd., 9
USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6
USPQ2d 1041, 1042 (TTAB 1988).
Applicant’s mark is identical to the mark in the 239
Registration, as both consist solely of the word ADVANCED,
in standard character format. Accordingly, applicant’s
mark has the same appearance, sound, connotation and
commercial impression as the mark in the 239 Registration.
The mark in the 748 Registration also contains the
word ADVANCED, followed only by one other word,
Serial No. 77215696
4
INTERCONNECTIONS, which has been disclaimed. Disclaimed or
descriptive matter is generally viewed as a less dominant
or significant feature of a mark. In re National Data
Corp., 224 USPQ 749, 750 (Fed. Cir. 1985) (“Regarding
descriptive terms, this court has noted that the
‘descriptive component of a mark may be given little weight
in reaching a conclusion on the likelihood of confusion’”).
We take judicial notice of the dictionary definition of
“interconnections” as “two or more things [that] connect
with or [are] related to each other.”3 Since the disclaimed
term “INTERCONNECTIONS” merely describes the nature of the
goods identified by the 748 Registration (i.e., connectors
and other goods that “connect” equipment), we find that it
does not significantly change the connotation or commercial
impression.
The dominance of the word “ADVANCED” in applicant’s
mark is further demonstrated by its location as the first
word of the mark. Presto Products Inc. v. Nice-Pak
Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)(“it is
often the first part of a mark which is most likely to be
impressed upon the mind of a purchaser and remembered”).

3 Cambridge Advanced Learner’s Dictionary (2009). The Board may
take judicial notice of dictionary definitions. University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594,
596 (TTAB 1982), aff’d 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
Serial No. 77215696
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See also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin,
396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005)(“Veuve” is the most prominent part of the mark VEUVE
CLICQUOT because “veuve” is the first word in the mark and
the first word to appear on the label); Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the
marks, consumers must first notice the identical lead
word).
Accordingly, this du Pont factor heavily favors
finding a likelihood of confusion between applicant’s mark
and both of the cited registrations.
The Goods and Channels of Trade

Having found that applicant’s mark is legally
identical to registrant’s 239 mark, and substantially
similar to registrant’s 748 mark, we turn to the similarity
or dissimilarity and nature of applicant’s identified goods
to those in the cited registrations. It is not necessary
that these goods be identical or even competitive to
support a finding of likelihood of confusion. Rather, it
is sufficient that the goods are related in some manner, or
that the circumstances surrounding their marketing are
such, that they would be encountered by the same persons in
situations that would give rise, because of the marks, to a
Serial No. 77215696
6
mistaken belief that they originate from the same source or
that there is an association or connection between the
sources of the goods. See In re Opus One, Inc., 60 USPQ2d
1812, 1815 (TTAB 2001); In re Melville Corp., 18 USPQ2d
1386, 1387 (TTAB 1991).
Moreover, the greater the degree of similarity between
the applicant’s mark and the registered mark, the lesser
the degree of similarity between the applicant’s goods and
registrant’s goods that is required to support a finding of
likelihood of confusion. In re Opus One, Inc., 60 USPQ2d
at 1815; In re Concordia International Forwarding Corp.,
222 USPQ 355, 356 (TTAB 1983). Where, as in this case, the
applicant’s mark is virtually identical to the registrant’s
mark, there need only be a viable relationship between the
goods to find that there is a likelihood of confusion. See
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689
(Fed. Cir. 1993) (“even when the goods or services are not
competitive or intrinsically related, the use of identical
marks can lead to the assumption that there is a common
source”); In re Concordia International Forwarding Corp.,
222 USPQ2d at 356.
To properly analyze the relationship of the goods, we
must first discuss what they are. Applicant’s goods
include “connectors for use with electrical, electronic,
Serial No. 77215696
7
and computer devices.” Registrant’s goods (in both of the
cited registrations) include “electrical connectors.”
Accordingly, we deem these goods to be legally equivalent.
Applicant argues that registrant’s identification of
“electrical connectors” should be interpreted narrowly
within the context of the identification of goods as a
whole, the meaning in the industry, and the use by
registrant, as evidenced by the latter’s website.
However, our determination of a likelihood of confusion is
based of the goods as they are identified in the
application and registration at issue. In re Elbaum, 211
USPQ 639, 640 (TTAB 1981); In re William Hodges & Co.,
Inc., 190 USPQ 47, 48 (TTAB 1976). See also Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority
is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the
sales of goods are directed”).
Indeed, while it is clear from the record that there
are different types of “connectors,” which serve different
Serial No. 77215696
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purposes, we note that registrant’s “electrical connectors”
are not limited in the identifications by size, type, or
other restriction. As the Court of Customs and Patent
Appeals, the predecessor of our primary reviewing court,
explained in Tuxedo Monopoly, Inc. v. General Mills Fun
Group, Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981):
Here, appellant seeks to register the
word MONOPOLY as its mark without any
restrictions reflecting the facts in
its actual use which it argues on this
appeal prevent likelihood of confusion.
We cannot take such facts into
consideration unless set forth in its
application.

Likewise, in this case, we must also analyze the similarity
or dissimilarity and nature of the goods based on the
description of the goods set forth in the application and
the registration at issue. In other words, we may not
limit or restrict the electrical connectors listed in the
cited registrations.
In a recent precedential decision where the applicant
made a similar argument, the Board reiterated that we must
construe a registrant’s goods as set forth in its
identification. In re Thor Tech., Serial No. 78634024, __
USPQ2d __ (TTAB 2009) (registrant’s identified “trailers”
must be construed to encompass the subsets of “travel
Serial No. 77215696
9
trailers” and “fifth wheel trailers”). As the Board
pointed out to the applicant in In re Thor Tech:
Applicant was not without a remedy. Section 18
of the Trademark Act of 1946 gives the Board the
equitable power to cancel registrations in whole
or in part, “restrict the goods or services
identified in an application or registration,” or
to “otherwise restrict or rectify . . . the
registration of a registered mark.” 15 U.S.C.
§1068; Trademark Rule 2.133(b). See also TBMP
§309.03(d)(2d ed. rev. 2004) and cases cited
therein. [also citing Eurostar Inc. v. “Euro-
Star” Reitmoden GmbH & Co., 34 USPQ2d 1266, 1271
(TTAB 1994)].

Id. at note 11.

The Board went on to say:
“In this regard, it is acceptable and appropriate for an
applicant to use a broad description of goods.
Applicants frequently use broad terms
to identify the goods or services in an
application. . . . The requirement for
use or a bona fide intent to use is not
necessarily violated by broad
identifying terms. When a mark is used
on a number of items that make up a
homogeneous group, a term that
identifies the group as a whole would
be understood as encompassing products
of the same general type that are
commercially related.
As long as a broad term identifies the
goods or services that are intended to
be covered with reasonable certainty,
it will be reasonable, from a
commercial viewpoint, to consider that
the mark has been used for all the
related goods or services that fall in
the designated group.
Serial No. 77215696
10
TMEP §1402.03 (5th ed. 2007).
. . . We have no authority to read any restrictions or
limitations into the registrant’s description of goods.”
Id.
Regarding the relatedness of the other goods (i.e.,
applicant’s cables and wires compared with registrant’s
sockets, contacts, adapters, and socket terminal carriers),
the examining attorney submitted well over a dozen third-
party registrations based on use in commerce identifying
goods identified by applicant on the one hand, and by the
cited registrations on the other.4 Third-party
registrations which individually cover a number of
different items which are based on use in commerce may have
some probative value to the extent that they serve to
suggest that the listed goods are of a type which may
emanate from the same source. In re Albert Trostel & Sons
Co., 29 USPQ2d at 1785-1786; In re Mucky Duck Mustard Co.
Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). For example,
Registration No. 78412838 includes “electrical cables” as
identified by applicant, as well as “electric sockets” as

4 The examining attorney also submitted several third-party
websites to the same effect. In any event, we note that the fact
that the description of goods in the application and cited
registrations include other products that are not identical does
not obviate the relatedness of the identical goods. See Tuxedo
Monopoly, Inc., 209 USPQ at 988.
Serial No. 77215696
11
identified by the cited registrations, along with
“electrical connectors,” as identified by both;
Registration No. 3361928 includes “electrical wires and
cables” as identified by applicant, as well as “electrical
sockets” as identified by the cited registrations, along
with “electrical connectors” as identified by both;
Registration No. 2814780 includes “electrical cables” as
identified by applicant, as well as “electrical contacts”
as identified by the 748 Registration, along with
“connections for electrical lines and switch boxes” as
identified by both; and Registration No. 2885982 includes
“electrical cables” as identified by applicant, as well as
“electric socket” as identified by the cited registrations,
along with “electrical connectors” as identified by both.
In view of the foregoing, we find that applicant’s goods
are in part identical and otherwise related to the goods in
the cited registrations.
Because there are no limitations as to channels of
trade or classes of purchasers in the registrations, it is
presumed that the registrant’s goods move in all channels
of trade normal for those products, and that they are
available to all classes of purchasers for the listed
goods. See In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB
1992); see also Hewlett-Packard Co. v. Packard Press, Inc.,
Serial No. 77215696
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281 F.2d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)
(“[A]bsent restrictions in the application and
registration, goods and services are presumed to travel in
the same channels of trade to the same class of
purchasers”) and Genesco Inc. v. Martz, 66 USPQ2d 1260,
1268 (TTAB 2003) (“Given the in-part identical and in-part
related nature of the parties’ goods, and the lack of any
restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be
offered and sold to the same classes of purchasers through
the same channels of trade”).
As a result, these du Pont factors weigh in favor of
finding a likelihood of confusion.
Balancing the factors.
In view of the fact that applicant’s mark is identical
to the 239 Registration and highly similar to the 748
Registration; that the goods are in-part identical and
otherwise related; and that we must presume that the goods
move in the same channels of trade and are available to the
same classes of consumers, we find that applicant’s
registration of the mark ADVANCED for “electrical and
electromagnetic signal transmitting, amplifying, receiving,
and converting devices for use in connection with consumer
Serial No. 77215696
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electronics, namely, cables, wires, and connectors for use
with electrical, electronic, and computer devices,” is
likely to cause confusion with the mark ADVANCED for
“electrical equipment; namely, electrical connectors,
sockets, socket terminal carriers, adapters,” and ADVANCED
INTERCONNECTIONS for “electrical equipment; namely,
electrical connectors, sockets, contacts, and socket
terminal carriers.”
Decision: The refusal to register is affirmed.