Monster Cable Products, Inc.v.Advanced Electronics, Inc.

Trademark Trial and Appeal Board

Feb 21, 2007

No. 92042407 (T.T.A.B. Feb. 21, 2007)

Mailed: February 21, 2007
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Monster Cable Products, Inc.
v.
Advanced Electronics, Inc.
_____

Cancellation No. 92042407
_____

Robert W. Payne and Brent A. Capehart of LaRiviere, Grubman &
Payne, LLP for Monster Cable Products, Inc.

H. William Larson of Larson & Larson for Advanced Electronics,
Inc.
_____

Before Hohein, Bucher and Rogers, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Monster Cable Products, Inc. has petitioned to cancel
the registration owned by Advanced Electronics, Inc. of the mark
"CLEAN POWER" and design, as reproduced below,

for "voltage surge protectors" in International Class 9.1

1 Reg. No. 2,428,527, issued on February 13, 2001 from an application
filed on March 27, 2000 on the basis of an alleged bona fide use of
the mark in commerce, which sets forth a date of first use anywhere
and in commerce of the mark of February 29, 2000.

THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Canc. No. 92042407
2
As its sole pleaded ground for cancellation, petitioner
has alleged that it "has prior rights to the trademark CLEAN
POWER, as it first adopted and used said mark at least as early
as December 30, 1998, and caused said mark to be placed in
commerce at least as early as December 30, 1998 in connection
with energy conditioning devices, namely surge protectors, RF
filters, and EMI filters and other related goods"; and that
respondent's mark, because it "is confusingly similar" to
petitioner's mark, "is likely to cause confusion, deception and
mistake."
Respondent, in its answer, has denied the allegations
of the petition to cancel.
The record consists of the pleadings; the file of the
involved registration; the testimony and exhibits thereto,
submitted by petitioner as its case-in-chief, of Vern Smith;2 and
the testimony and exhibits thereto, filed by respondent as its
case-in-chief, of Farrell Ray.3 Although petitioner, as its
rebuttal, also offered the testimony of Yvonne Yim,4 along with
an exhibit thereto, respondent's objection to such evidence on
the ground of improper rebuttal, which it raised at the
deposition and reiterated in its brief,5 is sustained and such

2 Mr. Smith is petitioner's "director of business development." (Smith
dep. at 5 and 29.)

3 Mr. Ray is respondent's president. (Ray dep. at 4.)

4 Ms. Yim is petitioner's "manager of finance and planning." (Yim dep.
at 4, 5 and 18.)

5 Specifically, following her direct examination by petitioner's
counsel, respondent's attorney interposed the following objection,
among others (which need not be considered), to the deposition:
Canc. No. 92042407
3
evidence will therefore not be given further consideration. Both

.... Registrant objects to the testimony of this
deposition because the testimony is improper rebuttal
testimony.

The testimony Petitioner offers in this deposition is
the subject of evidence which should have been introduced
during the ... main testimony period. This testimony and
the document offered [as an exhibit thereto] is therefore
improper as Petitioner's rebuttal deposition and, therefore,
the Registrant objects.

(Yim dep. at 11-12.) As respondent accurately observes in its brief:

.... Ms. Yim's testimony concerns Petitioner's
alleged prior use of its Clean Power mark. However, it is
incumbent upon Petitioner, during its case in chief, to
introduce all its evidence of prior use. Since Ms. Yim's
testimony concerns only Petitioner's alleged prior use of
the mark, and is [thus] improper rebuttal testimony, the
testimony and evidence attached thereto must be stricken
from the record and given no consideration. ....

Petitioner, in its reply brief, correctly notes in this regard
that "[t]he issue of priority is central in this case" and that
"[r]egistrant has known from the beginning of this matter that dates
of use would be crucial." The same is likewise true for petitioner,
yet the evidence it offered as rebuttal fails to serve the proper
purpose of denying, explaining or discrediting facts adduced by
respondent through the deposition of Mr. Ray. Instead, petitioner's
evidence in rebuttal plainly relates to facts which appropriately
might have been introduced during petitioner's case-in-chief and thus
constitutes improper rebuttal. See, e.g., Carefirst of Maryland Inc.
v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492, 1498 (TTAB
2005); Hard Rock Café Int'l (USA) Inc. v. Elsea, 56 USPQ2d 1504, 1508-
09 (TTAB 2000) [evidence of plaintiff's sales and advertising is
improper rebuttal]; Osage Oil & Transportation, Inc. v. Standard Oil
Co., 226 USPQ 905, 907 n.10 (TTAB 1985); Rowell Laboratories, Inc. v.
Canada Packers Inc., 215 USPQ 523, 525 n.2 (TTAB 1982) ["material
intended to buttress petitioner's case-in-chief ... constituted
improper rebuttal"]; American Meat Institute v. Horace W. Longacre,
Inc., 211 USPQ 712, 719 (TTAB 1981) ["[i]t is the general rule that a
party plaintiff may in his case on rebuttal introduce facts and
witnesses appropriate to deny, explain, or otherwise discredit the
facts and witnesses adduced by the opponent, but not any facts or
witnesses which might appropriately have been introduced during its
case-in-chief to sustain its pleading" and thus "a plaintiff may not
utilize its rebuttal period to prove its case-in-chief or to shore up
its principal case in light of a defendant's evidence"]; and VIP
Foods, Inc. v. V.I.P. Food Products, 200 USPQ 105, 108 n.1 (TTAB 1978)
["[t]o the extent that petitioner, by this testimony, attempted to
establish a date of first use for its 'VIP' mark, which is matter for
its testimony-in-chief ..., it is improper rebuttal and will not be
considered in determining petitioner's record"].

Canc. No. 92042407
4
parties filed a main brief and petitioner submitted a reply
brief.
Before turning, however, to the pleaded ground of
priority of use and likelihood of confusion, there are two
matters which need to be resolved. First, in its main brief,
petitioner raises the evidentiary objection that evidence
pertaining to respondent's actual use of the registered mark is
not relevant and hence should not be considered. Specifically,
petitioner asserts that:
Pursuant to Fed. R. Evid. 402,
Petitioner objects to testimony from
Registrant's President, Mr. Farrell Ray,
regarding Registrant's actual use of its
CLEAN POWER & Design mark on the grounds that
such testimony is irrelevant to this
proceeding. (Ray Dep. pp. 5-7, 9-11, and 13-
16, Exhs. 1-4, 7-10) This Board has
previously and consistently stated that the
only proper evidence for a determination of
the likelihood of confusion in a cancellation
proceeding are the goods as described in the
subject registration, and not the goods as
used actually by the Registrant. See Hurst
Performance, Inc. v. Hendrickson
Manufacturing Company, 199 USPQ 48, 56 (TTAB
1978)("it is goods as described in the
application rather than what the evidence
shows the goods to be that must be considered
in resolving the question of likelihood of
confusion") .... Accordingly, ...
[Petitioner] objects to all testimony and
related Exhibits regarding Registrant's
actual goods; nature, type or channels of
trade; [and] class of purchaser as being
irrelevant.

Although, curiously, respondent has offered no reply in its brief
to such objection, we do not deem the objection to be conceded,
given petitioner's misapprehension of the law. Instead, because
the objection is without merit, it is overruled. Respondent, in
this regard, is clearly permitted to present testimony and other
Canc. No. 92042407
5
evidence bearing upon the issue of likelihood of confusion,
including that which it believes shows that there is no
likelihood of confusion from the use of its mark in connection
with its actual goods, which the record shows (as noted later in
this opinion) are voltage surge protectors for industrial and
other commercial applications. While, to be sure, the issue of
likelihood of confusion is determined based upon the goods as
identified in respondent's involved registration,6 and thus
includes any goods properly within the scope of the term "voltage
surge protectors," such as those which, like the products in
connection with which petitioner uses its "CLEAN POWER" mark, are
for use with home audio and video equipment as well as with
personal computers, respondent is not limited to presenting
evidence with respect to those items nor, because it apparently
does not use its mark in connection therewith, could it even be
expected to offer such evidence.

6 Specifically, it is well settled that the registrability of a mark
must be evaluated on the basis of the identification of the
defendant's goods as set forth in its subject application and/or
registration for its mark, regardless of what the record may reveal as
to the particular nature of the goods, their actual channels of trade,
or the classes of purchasers to which they are in fact directed and
sold. See, e.g., Octocom Systems Inc. v. Houston Computer Services
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); and
Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813, 1815-16 (Fed. Cir. 1987). It is also well
established that, absent any specific limitations or restrictions in
the identification of goods as listed in a defendant's subject
application and/or registration, the issue of likelihood of confusion
must be determined in light of a consideration of all normal and usual
channels of trade and methods of distribution for such goods. See,
e.g., CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir.
1983); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed.
Cir. 1983); and Paula Payne Products Co. v. Johnson Publishing Co.,
Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).

Canc. No. 92042407
6
Respondent, in short, is not restricted to offering
evidence as to products within the scope of the identification of
goods in its involved registration which are identical or
arguably related to any goods of petitioner's which may be
encompassed thereby. Instead, respondent may properly introduce
as relevant evidence bearing on the issue of likelihood of
confusion testimony and exhibits concerning its actual goods and
may permissibly try to prove, for instance, that any other goods
assertedly within the scope of the identification of its goods
are unrelated or represent, at best, only a theoretical or de
minimus possibility of a likelihood of confusion, for which
cancellation of its involved registration is not warranted as a
practical matter.7
A second matter for preliminary consideration is the
motion in petitioner's brief for leave to amend the pleadings to
include, as an additional ground for cancellation, the claim that
respondent's involved registration is void ab initio for failure
of respondent to have used its subject mark in commerce as of the
filing date of the underlying application. Specifically, and
notwithstanding its above-noted evidentiary objection, petitioner
asserts as the evidentiary basis for its motion that "during his
testimony deposition, Mr. Farrell Ray, President of the

7 As our principal reviewing court has repeatedly cautioned, "[w]e are
not concerned with mere theoretical possibilities of confusion,
deception, or mistake or with de minimis situations but with the
practicalities of the commercial world, with which the trademark laws
deal." Electronic Design & Sales Inc. v. Electronic Data Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992), quoting
from Witco Chemical Co. v. Whitfield Chemical Co., 418 F.2d 1403,
1405, 164 USPQ 43, 44-45 (CCPA 1969), aff'g, 153 USPQ 412 (TTAB 1967).

Canc. No. 92042407
7
Registrant, testified that the goods bearing the CLEAN POWER &
Design mark were not sold until after the filing of th[e]
application" which matured into the involved registration.
Noting, furthermore, that as defined in Section 45 of
the Trademark Act, the term "'[u]se in commerce' involves two
essential elements," namely, "(1) placing the mark on the goods
and (2) selling or transporting the goods in commerce,"8 and that
"[w]hen an application for registration of a mark is filed in
which there is no bona fide use of that mark [in commerce] until
after the applicant's filing date, any subsequent registration is
void ab initio, citing Giant Food, Inc. v. Standard Terry Mills,
Inc., 231 USPQ 626, 630 (TTAB 1986); Miles Laboratories, Inc. v.
International Diagnostic Technology, Inc., 220 USPQ 438, 442
(TTAB 1983); and PRF Corp. v. Acme Quilting Co., Inc., 218 USPQ
276, 278 (TTAB 1982), petitioner states that in accordance with
Fed. R. Civ. P. 15(b):
Petitioner moves to amend its pleadings
to conform to the testimony presented during
the testimony period of this proceeding,
i.e[.], to allege that Registration No.

8 In particular, Section 45 of the Trademark Act provides in relevant
part that:

The term "use in commerce" means the bona fide use of
a mark in the ordinary course of trade, and not made merely
to reserve a right in a mark. For purposes of this Act, a
mark shall be deemed to be in use in commerce--

(1) on the goods when--

(A) it is placed in any manner on the goods or their
containers or the displays associated therewith or on the
tags or labels affixed thereto, or if the nature of the
goods makes such placement impracticable, then on documents
associated with the goods or their sale, and

(B) the goods are sold or transported in commerce ....

Canc. No. 92042407
8
2,428,527 ... is void ab initio. .... Jeong
v. Minn. Mut. Life Ins. Co., 46 Fed. Appx.
448, 450 (9th Cir. 2002) (An amendment of
pleadings to conform to proof at trial is
proper under Rule 15(b) unless it results in
prejudice to one of the parties. Rule 15
reflects the liberal policy of favoring
amendments of pleadings at any time. The
party opposing amendment bears the burden of
showing prejudice.) Registrant is not
prejudiced by this amendment due to the
Registrant having the knowledge of its date
of first bona fide use of its mark.

Moreover, Registrant's own evidence
presented during their testimony period
cannot be used to support the position that
bona fide use occurred on or prior to the
filing of the '029 Application. No evidence
was presented to demonstrate sales occurred
prior to the [March 27, 2000] filing of the
application. The only sales information
presented was a sales summary list for the
period after the filing of the application,
i.e[.] beginning May 26, 2000 through October
13, 2003 (Ray Dep., Exh. 5). Additionally,
no invoices, sales receipts, or the like were
presented in support of the allegation of a
bona fide use by the Registrant at the time
of the filing of the application. Thus,
Registrant has not produced any evidence to
adequately [sic] demonstrate it had use in
commerce of its CLEAN POWER & Design mark on
or prior to the filing of the '029
Application. Accordingly, the resulting
registration is void ab initio.

Respondent, in its brief, opposes the motion to amend,
arguing that the evidentiary record does not support a finding
that its involved registration is void ab initio, and thus that
deeming the pleadings to be amended to conform to the evidence
would be futile, and that in any event it would be prejudiced by
such an amendment at this stage of the proceeding, inasmuch as it
has no opportunity to offer further evidence bearing on the
additional claim sought to be raised by petitioner. In
particular, respondent asserts that:
Canc. No. 92042407
9
Registrant's registration is not void Ab
Initio. The ... testimony of Mr. Farrell Ray
does not establish that sales were made after
the application was filed. Mr. Ray testified
that product bearing the Clean Power mark was
sold "in early 2000." Ray deposition, pg.
18, line 1. Mr. Ray testified that he first
affixed the label to the product in "late
99." Id. at pg. 17, line 18. Mr. Ray's
testimony is not conclusive that sales of
[products bearing] the Clean Power trademark
were made after the filing date of the
application. There exists no document which
substantiates that sales were not made prior
to the filing date of the application. Mr.
Ray's inconclusive testimony does not
establish that the registration is void Ab
Initio. Notwithstanding that the record is
not conclusive with respect to the Ray
testimony, the Board should deny Petitioner's
request to amend its pleadings because it
would be prejudicial to the Registrant. ....
Petitioner should have moved the Board to
amend its pleadings prior to the time for
filing of trial briefs. .... However, by
waiting until the filing of its trial brief,
Petitioner springs a trap door upon
Registrant by arguing a ... [claim] not
previously raised, and in doing so has denied
the Registrant any opportunity to develop
evidence in rebuttal. As such, Petitioner's
motion to amend its pleading is untimely
since it is prejudicial to the rights of
Registrant. Therefore, Petitioner's motion
to amend should be denied.

Fed. R. Civ. P. 15(b), as made applicable by Trademark
Rule 2.116(a), provides in pertinent part that:
Amendments to Conform to the Evidence.
When issues not raised by the pleadings are
tried by express or implied consent of the
parties, they shall be treated in all
respects as if they had been raised in the
pleadings. Such amendment of the pleadings
as may be necessary to cause them to conform
to the evidence and to raise these issues may
be made upon motion of any party at any time
.... If evidence is objected to at the trial
on the ground that it is not within the
issues made by the pleadings, the court may
allow the pleadings to be amended and shall
do so freely when the presentation of the
Canc. No. 92042407
10
merits of the action will be subserved
thereby and the objecting party fails to
satisfy the court that the admission of such
evidence would prejudice the party in
maintaining the party's action or defense
upon the merits. ....

With respect thereto, TBMP §507.03(b) (2d ed. rev. 2004) provides
in relevant portion that (footnotes omitted):
When issues not raised by the pleadings
are tried by the express or implied consent
of the parties, ... the Board will treat them
in all respects as if they had been raised in
the pleadings. Any amendment of the
pleadings necessary to cause them to conform
to the evidence and to raise the unpleaded
issues may be made upon motion of any party
at any time ..., but failure to so amend will
not affect the result of the trial of these
issues.

Implied consent to the trial of an
unpleaded issue can be found only where the
nonoffering party (1) raised no objection to
the introduction of evidence on the issue,
and (2) was fairly apprised that the evidence
was being offered in support of the issue.

While respondent's attorney raised no objection to the
questions asked of its witness by petitioner's counsel during a
brief period of cross examination, it is clear from the
transcript of the deposition that that the record not only fails
to establish nonuse by respondent of its "CLEAN POWER" and design
mark in commerce by the filing date of the application which
matured into its involved registration, but respondent was not
fairly apprised that the testimony of Mr. Ray would be offered by
petitioner in support of a claim that such registration was void
ab initio. In particular, the record reveals that, on direct
examination, Mr. Ray testified that "in February of 2000, we
submitted pictures of actual product" with attached labels
Canc. No. 92042407
11
bearing its "CLEAN POWER" and design mark "to the trademark board
and asked that it be trademarked" (Ray dep. at 8.) and confirmed,
when asked if respondent has continuously used such mark since
"early 2000" as alleged in its application for registration
thereof, which was filed on March 27, 2000, by replying: "That's
correct." (Id. at 16.) On cross examination, Mr. Ray further
admitted with respect thereto only that, while the date when
labels bearing its mark were first affixed to its goods "would
have been late '99, around December" (id. at 17), it "didn't sell
any of the product [with such labels attached] until after I sent
... pictures of those labeled products to the trademark board."
(Id.) He added, however, that the date thereof "would have been
in early 2000, right after the trademark." (Id. at 18.)
Although the apparent discrepancy between the date of
February of 2000, when Mr. Ray claims to have submitted with
respondent's trademark application pictures of its use of its
"CLEAN POWER" and design mark on labels affixed to its goods, and
the March 27, 2000 filing date of the application which matured
into respondent's involved registration is not explained, it
cannot be said that Mr. Ray's testimony, which confirmed that
respondent has continuously used its mark since "early 2000" even
though sales of its goods under such mark did not occur until
"February of 2000," serves to establish that respondent failed to
use its mark in commerce as of March 27, 2000. The record not
only fails to establish petitioner's contention that respondent
had no sales under its mark for its goods as of the March 27,
2000 filing date, but there is no evidence with respect to
Canc. No. 92042407
12
whether, even if there were no actual sales of respondent's goods
until the filing of the underlying application for registration,
the goods nevertheless were transported in commerce under the
mark as of a time at least as early as March 27, 2000. In short,
deeming the pleadings to be amended to include a claim that the
involved registration is void ab initio not only appears to be
futile, because of the lack of support therefor in the record,
but it is also plain that respondent was not fairly apprised that
the evidence was being offered by petitioner to support such a
claim, given the exceedingly limited scope of cross-examination
of Mr. Ray by petitioner. Simply put, mere inquiry by petitioner
into when respondent allegedly first used its involved mark, but
without further questioning concerning Mr. Ray's reply concerning
no sales thereunder until February of 2000, is not sufficient to
put respondent fairly on notice that petitioner was seeking to
try an additional claim that, due to alleged nonuse by respondent
of its involved mark as of the filing date of its application for
registration thereof, the resulting registration was void ab
initio. Respondent clearly would be prejudiced at this late
stage of the proceeding by deeming the pleadings to be amended to
include such a claim since it would have been deprived of the
opportunity, on redirect examination, to clarify the nature of
its first sales of products under its "CLEAN POWER" and design
mark or, absent sales thereof as of the March 27, 2000 filing
date, could otherwise have offered testimony and any supporting
exhibits as to when such goods were first transported in
Canc. No. 92042407
13
commerce. Opposer's motion to amend the pleadings pursuant to
Fed. R. Civ. P. 15(b) is accordingly denied.
Turning now to the merits of the pleaded claim of
priority of use and likelihood of confusion, the record indicates
that petitioner's "'Clean Power' product was developed in the
mid-90s" and is used in connection with what its witness, Mr.
Vern Smith, vaguely described as "a suite of products that
supplies surge protection and power conditioning." (Smith dep.
at 6.) He noted, however, that in particular, "'Clean Power' was
the term ... used for the power conditioning aspect of the
product." (Id.) When asked to provide some explanation of the
differences between surge protection and power conditioning in
petitioner's various "suite of products", he indicated that:
The two basic functions of the product
are, one, for the AC power that comes into a
building that it carries certain noise that
comes from other facilities, or can get on
from the power station, and what the "Clean
Power" does is it filters out--it attenuates
specific frequencies that will harm
electronic components.

The surge protection aspect of the
product is separate in that there are swells
and spikes that come in from outside a
building--as well as they're generated inside
a building--which can damage components, and
that surge protection is meant to reduce the
spikes and swells that could go through the
surge protection, or to disconnect the surge
protection so that it does not create a fire
hazard.

(Id. at 6-7.) Mr. Smith testified that, as of the May 31, 2005
date of his deposition, petitioner's "suite of products"
consisted of "approximately 90-some models," the first six of
which began "shipping in '98." (Id. at 7.)
Canc. No. 92042407
14
Petitioner's combination surge protection and power
conditioning products are each in essence "a general purpose,
multi-outlet device" which is designed "so that you can plug in
more components than you have wall outlets" and are sold to the
ultimate consumers thereof "through retail outlets" rather than
directly by petitioner itself. (Id. at 8.) That is, petitioner
sells its products to various distributors and retailers who, in
turn, respectively sell such goods for resale by retailers or to
the consuming public. Retail outlets for petitioner's goods
include "RadioShack, Best Buy, Circuit City, [and] regional
chains" such as "Sound Advice" and "Tweeter." (Id. at 9.) As
indicated previously, sales of its products "are primarily
focused on home theater or computer business applications" rather
than industrial uses. (Id. at 10.)
In selling its products to its distributors and
retailers, petitioner utilizes various price lists and theme
books which contain illustrations and list features of its goods
in addition to their wholesale prices. Such sales materials are
used by distributors and retailers to place orders for
petitioner's products. Examples thereof, which constitute
petitioner's exhibits 4 through 8,9 consist of:

9 As respondent accurately points out in its brief:

It appears that the pages attached to Exhibits 4--8
are incorrectly filed with each preceding exhibit. So the
pages from each catalogue do not comport with the dates of
the cover sheets. This is important particularly with
respect to Exhibit 6 which is supposed to be pages of a 1998
catalogue and is instead from 2000, and Exhibit 7 which has
pages from a 2005 webpage.

Canc. No. 92042407
15
(i) Petitioner's "New Product Theme
Book," which Mr. Smith testified is shown "to
our retailers in advance of product shipping"
and "contains new product that will be coming
out in the next year," that is, goods which
petitioner "will begin to ship in the next 12
months." (Id. at 11.) Such book, which is
subtitled "Pre-release Road Show '97" and is
specifically dated "November 1997" even
though the relevant pages thereof actually
show a date of "December 1997," contains
among other new (with "Information Subject to
Change") "Monster Power" products two "High
Performance Home Theatre PowerCenterâ„¢"models
and five "Reference PowerCenterâ„¢" models
which in each instance include, "For Hookup
of Electronic Components to AC Power
Providing Monster Clean Powerâ„¢ and Surge
Protection for AC Power Lines," features
variously described as a "Monster Clean
Powerâ„¢ filter to provide noise free power to
your sensitive electronic components" or as
"Monster Clean Powerâ„¢," with the latter
further described, inter alia, as "Two
separate filters to provide noise free power
to your sensitive electronic components" or
as "Three separate filters with high
separation to provide noise free power ...."
(Petitioner's Exh. 4.) While the particular
models described therein, according to Mr.
Smith, are all "surge protection products,"
he added that most of the description of
those goods "have the[ir] number one feature
[referred to] as 'Clean Power.'" (Smith dep.
at 13.)

However, notwithstanding petitioner's carelessness, and inasmuch as
each document speaks for itself, the discussion in this opinion has
treated the pages made of record through the testimony of Mr. Smith
according to the exhibits to which they actually and obviously should
pertain. That is, the seven pages which precede the page marked as
Exh. 4 (and which follow the single-page copy of the invoice which is
petitioner's Exh. 3) have been treated as part of Exh. 4; the six
pages which precede the page marked as Exh. 5 have been regarded as
part of such exhibit rather than as pertaining to Exh. 4; the three
pages which precede the page marked as Exh. 6 have been recognized as
part of such exhibit rather than as a portion of Exh. 5; the eight
pages which precede the page marked as Exh. 7 have been deemed as
applying to such exhibit rather than as a part of Exh. 6; and the
three printouts of webpages which preceded the page marked as Exh. 8
have been treated as constituting part of such exhibit instead of a
portion of Exh. 7.

Canc. No. 92042407
16
(ii) Petitioner's "Home Audio/Video
Market Area Price Book," which Mr. Smith
referred to as "a price sheet given to
retailers that lists the products that are
available for them to purchase." (Id. at
11.) Such book, which carries the specific
date of "July 1998," lists in particular,
under the category of "AC Power
Distribution," various "Monster Power®"
"PowerCenterâ„¢" models which are "New for
1998!" and include, "For Hookup of Electronic
Components to AC Power Providing Monster
Clean Powerâ„¢ and Surge Protection for AC
Power Lines," such features as, inter alia, a
"Monster Clean Powerâ„¢ Stage 1 filter to
provide noise free power to your sensitive
electronic components," "Monster Clean Powerâ„¢
Stage 3 Application specific filters, for
High and Low power components" or "Monster
Clean Powerâ„¢ Stage 2 Application specific
filters, for High and Low power components."
(Petitioner's Exh. 5.);

(iii) Petitioner's "Hardware Home Center
Retail Only Market Area Price Book," which
Mr. Smith described as "another price sheet
listing products that are available to
purchase," but which is "slightly different
in that it was focused towards hardware home
center retailers as opposed to audio/video
retailers." (Smith dep. at 12.) Such book,
which bears only the date of "1998," sets
forth in pertinent part, under the category
of "AC Power Distribution," two "Monster
Power®" "Home Theatre Reference PowerCenter™"
products which are "New for 1998!" and are
listed as having, "For Hookup of Electronic
Components to AC Power Providing Monster
Clean Powerâ„¢ and Surge Protection for AC
Power Lines," various features which include
a "Monster Clean Powerâ„¢ Stage 1 filter to
provide noise free power to your sensitive
electronic components." (Petitioner's Exh.
6.); and

(iv) Petitioner's "Consumer Electronic
Retailers Market Area Price Book," which Mr.
Smith testified is for use by "consumer
electronics retailers." (Smith dep. at 12.)
Like its other price sheets, such book, which
sets forth only the date of "2000," similarly
lists in relevant portion, under the category
of "AC Power Distribution," several "Monster
Canc. No. 92042407
17
Power®" "PowerCenter™" products including a
"High Performance Computer PowerCenterâ„¢"
which features, "For High Performance Hookup
of Computer Hardware to AC Power Providing
Clean Power for AC Power Line and Internet
and/or Fax Connections," a "Monster Clean
Powerâ„¢ Stage 1 [filter] for entry-level
computers [which] provides noise free power
to computer/peripherals," three "Home Theatre
PowerCenterâ„¢" items which respectively
feature, "For Hookup of Electronic Components
to AC Power Providing Monster Clean Powerâ„¢
and Protection for AC Power Lines," a
"Monster Clean Powerâ„¢ Stage 1 filter to
provide noise free power to your sensitive
electronic components" and, "For High
Performance Hookup of Home Theatre and
Satellite Systems to AC Power Featuring
Monster Clean Powerâ„¢ Filter Circuitry for the
Cleanest Possible AC Power" and "For Hookup
of Electronic Components to AC Power
Providing Monster Clean Powerâ„¢ and Surge
Protection for AC Power Lines," a "Monster
Clean Powerâ„¢ Stage 1 [filter which] ...
eliminates harmful AC power interference" and
a "Monster Clean Powerâ„¢ Stage 1 filter to
provide noise free power to your sensitive
electronic components." (Petitioner's Exh.
7.) Other products listed therein include
five "Monster Power®" "Reference PowerCenter™
... Surge Protection, Clean Powerâ„¢, Color-
Coded Outlets" and a "Home Theatre
PowerCenterâ„¢," each of which are likewise
"For Hookup of Electronic Components to AC
Power Providing Monster Clean Powerâ„¢ and
Surge Protection for AC Power Lines" or the
like and feature one or more types of various
"Monster Clean Powerâ„¢" filters. (Id.) Mr.
Smith acknowledged with respect to Exh. 7
that, as is readily apparent, a "majority of
the products do have 'Clean Power' as the
first listed feature" of petitioner's power
conditioning and surge protection goods.
(Smith dep. at 15.)

Petitioner also advertises its products on the
Internet. An excerpt from its website, which according to Mr.
Smith was printed on May 31, 2005, typically displays pictures of
and provides details about a variety of its goods including a
Canc. No. 92042407
18
two-outlet "Audio Video PowerCenterâ„¢ ... with Clean Powerâ„¢ Stage
1" filter "for noise free power to both outlets" and five models
of a "Home Theatre PowerCenterâ„¢," each of which features a "Clean
Powerâ„¢ Stage 1" filter to provide noise-free AC power to
electronic components. (Petitioner's Exh. 8).
As to actual use of its "CLEAN POWER" mark on its
products, petitioner introduced several examples of what Mr.
Smith referred to as "paper insert cards that go into a vacuum
formed PVC" plastic bubble package which encases and displays the
goods at the consumer retailing level. (Smith dep. at 17.) Such
cards provide information to prospective customers about
petitioner's products, including their features. For example,
two of such cards, each of which bears a copyright notice date of
"2001," are for models of petitioner's "MONSTER POWER®" "Home
Theatre PowerCenterâ„¢ and tout such products as having, among
other features, "Monster Clean Powerâ„¢ Filtering." (Petitioner's
Exhs. 10 and 11.) Consumers are advised by information on the
packaging that to "Maximize AV Performance with Monster Clean
Power," "Monster's Clean Powerâ„¢ Circuitry uses special filters to
dramatically reduce electronic noise on your AC power line to
give you the best possible sound and picture from your
components"; that "Monster Clean Powerâ„¢ Removes 'Dirty' AC Power
for Better Picture & Sound"; and that while the "Monster Clean
Power Stage 1 v.2.0 Circuitry" is "Not Shown" by the product
illustration, the "Clean Power circuitry filters 'dirty' AC power
for better sound and picture." (Id.) Mr. Smith testified that,
Canc. No. 92042407
19
by his recollection of the graphics style used thereon, the
insert card which is petitioner's Exhibit 10 "would have been
used first around the year 2000" and that, likewise, the first
use of the insert card which is petitioner's Exhibit 11 would
have been "around the same time period." (Smith dep. at 41.)
Similarly, for its "Monster Power Center" model "HTS800
Plus" product, the insert card, which bears a copyright notice
date of "2000," informs consumers that petitioner's "Monster®
Clean Powerâ„¢ Circuitry" "Removes 'Pollution' From Your AC Power
for Better Sound and Picture"; that such circuitry is likewise
"...engineered to remove pollution from AC power to give you...
Better Sound & Picture"; that as "Designed by world renown[ed] AC
power expert Richard Marsh, Monster's Clean Power Stage 1 uses
special filters to dramatically reduce electronic noise on your
AC power line to give you the best possible sound and picture
from your components"; that "Stage 1 Clean Power Circuitry
filters out noise interference on the AC power line so you can
enjoy more natural sound and the best possible picture from your
home theatre components"; and that, as indicated alongside a
picture of the product, "Clean Power Circuitry filters electronic
noise for better sound and picture (not shown)." (Petitioner's
Exh. 12.) The first use of such insert card, Mr. Smith noted,
"would have been around '97, '98, the first generation of the
product, I believe," because he "saw thousands of these
product[s] on a production line and in retailers with this ...
same type of graphic card." (Smith dep. at 42.) According to
Mr. Smith, "[a]ll through 1998, when the products were being
Canc. No. 92042407
20
produced," he "had the occasion to visit the production lines
and/or our retailers who were carrying the product" and, in
particular, his belief is that he "saw this document at the Good
Guys ... audio/video chain in California." (Id.)
Moreover, for its "Monster Power Centerâ„¢" model "PC800
HP" "Computer System Surge Protection" product "With Clean Power
Stage 1 and Color-Coded Outlets Labeled for Computer and
Peripherals," the insert card, which bears a copyright notice
date of "1999," advises potential customers and purchasers that
petitioner's "Monster® Clean Power™ ... Protection" is
"...engineered to remove AC Power pollution and absorb harmful
power surges to give you... Superior Computer Performance and
Full Capacity Surge Protection"; that as "Designed by world
renown[ed] AC power expert Richard Marsh, Monster's Clean Power
Stage 1 Circuitry uses optimized filters to dramatically reduce
electronic noise on your AC power line"; that "Stage 1 Clean
Power Circuitryâ„¢ Filters out noise interference on the AC power
line that can corrupt files, cause data loss, and system
crashes"; and that "Monster® Clean Power™ filtering stops
performance damaging AC Power Pollution." (Petitioner's Exh.
13.)
In addition, with respect to its "MONSTER POWER HOME
THEATRE POWERBAR 2100" product, petitioner introduced a
photograph of such product in its clear plastic bubble packaging
and showing, on the packaging insert card, the words "MONSTER
CLEAN POWER" listed as a product feature underneath a reference
to "SATELLITE, CABLE TV & HDTV PROTECTION FROM SURGE."
Canc. No. 92042407
21
(Petitioner's Exh. 14.) While such exhibit does not show the
mark "CLEAN POWER" on the product itself, Mr. Smith testified
with respect thereto that, like its other products:
The product[s] themselves have the term
"Clean Power on every product. It would be
in the form of a silk screen or an adhesive
backed epoxy label. They would be the two
most common ways ....

(Smith dep. at 28.) However, notwithstanding Mr. Smith's further
indication that such use has been made by petitioner since the
introduction of its "CLEAN POWER" products in the 1990's, no
evidence thereof was provided and, hence, whether such mark also
actually identifies the products per se instead of, as otherwise
demonstrated by the record, solely a feature thereof cannot be
determined.
As to the earliest sales of its products with the
"CLEAN POWER" feature, Mr. Smith testified that in 1998
petitioner sold a total of "20,805" units of its "Power Center"
goods with such a feature. (Id. at 16.) Specifically, as
confirmed by a printout of a sales report from its business
records, petitioner sold "10,640" units of its "HT800
POWERCENTER" model and "10,165" units of its "HTS800 POWERCENTER"
model in 1998, for a total of 20,805 units.10 (Petitioner's Exh.
9.)
During his deposition sales invoices were also
introduced which Mr. Smith claimed were related to instances (i)

10 While the dollar amounts of such sales are also listed, they have
not been set forth in deference to the parties' confidentiality
agreement. Suffice it to say, however, that those amounts are not
insubstantial.

Canc. No. 92042407
22
"where Monster shipped product to retailer, Good Guys," of "26
pieces" of "our HTS 5000 Power Center"; (ii) "where Monster
shipped [goods] to retailer, Ultimate Electronics, [of] multiple
'Clean Power Monster Power' units"; and (iii) where "Monster
[was] selling and shipping to [retailer,] Circuit City, Monster
Power Centers." (Id. at 9.) In particular, however, the invoice
to Good Guys is dated "Jan. 05, 2000" and is for an order dated
"Dec. 06, 1999" for "24" units of petitioner's "POWERCNTR
HTS5000" model, with a shipping date of "Dec. 16, 1999."
(Petitioner's Exh. 1.) Likewise, the invoice to Ultimate
Electronics is dated "Dec. 28, 1999" and is for an order dated
"Dec. 21, 1999" for both "300" units of petitioner's "AUDIO/VID
POWERCENTER AV800" model and "60" units of its "POWERCNTER
HTS2000" model, with a shipping date of "Dec. 22, 1999."
(Petitioner's Exh. 2.) Similarly, the invoice to Circuit City is
dated "Jan. 04, 2000" and is for, inter alia, an order dated
"Dec. 29, 1999" for both "18" units of petitioner's "POWERCENTER
HT700" model and "42" units of its "POWERCENTER HTS700" model,
with a shipping date of "Jan. 04, 2000." (Petitioner's Exh. 3.)
According to Mr. Smith, such invoices were not the first three
invoices for sales of products which used the "CLEAN POWER" mark
but rather "are just representative samples." (Smith dep. at
44.)
When asked if "any of the Power Center product[s]
utilizing the 'Clean Power' mark [have] been presented at any
trade shows," Mr. Smith replied in the affirmative, stating that
"[t]hey would have presented at almost all the trade shows
Canc. No. 92042407
23
Monster goes to since 1997, including the consumer electronics
show in January in Las Vegas every year," with the number thereof
totaling "40 plus shows." (Smith dep. at 26.) He indicated on
cross-examination, however, that at the Las Vegas Consumer
Electronics Show in January 1998, petitioner was not allowed to
sell its products directly to customers but, instead, was only
permitted to show the goods as a form of advertising. He also
noted, nonetheless, that at such show "[t]here would be meetings
between manufacturers and retailers negotiating the terms where
they will purchase the product[s]." (Id. at 43.) Furthermore,
and in fact, petitioner distributed price books at such trade
show, including those for its "'Clean Power' products". (Id.)
Respondent, on the other hand, "is a small family owned
business" which its witness, Mr. Ray, and his wife started in
February of 1989 to "sell industrial-type surge protection
systems." (Ray dep. at 5.) Respondent, in particular, uses the
mark "CLEAN POWER" and design for "industrial-grade surge
protection, such as a panel grade surge protector," which is a
product "that's usually installed by a licensed electrician."
(Id. at 5-6.) Respondent does not sell any of its goods in
retail stores. Instead, its products are sold "through direct
[sales] reps and distributors." (Id. at 6.) None of
respondent's goods are used in any type of radio frequency
filters nor are its goods used for any kind of conditioning of
electric currents, including power supplies for stereo
components. (Id. at 7.)
Canc. No. 92042407
24
The "CLEAN POWER" and design mark used by respondent
"has a lightning bolt between 'Clean' and 'Power'" and, according
to Mr. Ray, such mark is always used that way on its goods. (Id.
at 6-7.) Mr. Ray also claims that respondent first thought of
using such a mark in July or August of 1999 when it "began to
research the name Clean Power to make sure that ... it was not
being used ... or had not been trademarked by someone else."
(Id. at 8.) Although asserting that he "spent countless hours on
the Internet researching the name Clean Power," Mr. Ray maintains
that, while he "found some uses of the name in, like, hydropower
and ... water power," he found none "in surge protection" and
uncovered no use thereof by petitioner. (Id.) In addition, he
indicated that in October of 1999, "one of the first things we
did was set up a web page with Advanced Electronics Clean Power,
ae-cleanpower.com, and then we proceeded to get it built with the
name." (Id.) Moreover, as noted previously, he testified that
as part of the filing of respondent's application for
registration "in February of 2000, we submitted pictures of
actual product" with attached labels bearing its "CLEAN POWER"
and design mark "to the trademark board and asked that it be
trademarked." (Id.) No opposition was filed against such
application and it ultimately matured into the subject
registration.
Respondent, according to Mr. Ray, has not experienced
any incidents of actual confusion as the result of its use of its
"CLEAN POWER" and design mark and petitioner's use of its "CLEAN
POWER" mark. Mr. Ray insists, as previously mentioned, that as
Canc. No. 92042407
25
shown by an actual product label which was introduced as
respondent's Exhibit 1, respondent has continuously used its mark
since "early 2000," as alleged in the application for
registration thereof which was filed on March 27, 2000. Although
further admitting with respect thereto that, while the date when
labels bearing its mark were first affixed to its goods "would
have been late '99, around December" (id. at 17), it "didn't sell
any of the product [with such labels attached] until after I sent
... pictures of those labeled products to the trademark board"
(id.), he added, as also noted earlier, that the date thereof
"would have been in early 2000, right after the trademark"
application was submitted. (Id. at 18.) Total sales of
respondent's voltage surge protectors, during the period from May
26, 2000 through October 13, 2003, were shown to be in excess of
$2.3 million. (Respondent's Exh. 5.)
Respondent uses the mark "CLEAN POWER" in advertising,
sales presentations and product specification sheets. A sales
brochure, for example, for its "Clean Power® product line" of
"industrial grade surge protection devices" recites that such
goods are "Available in all domestic and international voltage
configurations, from 120 volts to 4160 volts," and includes
products for "High Performance Data Line Protections" and
"Telephone Line Protection" as well as "High Performance Power
Protection." (Respondent's Exh. 8.) A slide for a sales
presentation of the "Surge Protection Systems" which it markets
under its "CLEAN POWER" and design mark states that respondent
provides "custom tailoring [of] Clean Power® surge protection
Canc. No. 92042407
26
systems" for its customers and that it has "a broad customer base
that includes commercial, large industry (manufacturing),
government, schools, hospitals and medical industry, small
business, office buildings and homes." (Respondent's Exh. 9.)
Another such slide highlights that "Lightning Can Sometimes
Cripple Sensitive Equipment" and that "It Has Been Proven That
Lightning Can Damage Computers and Electronic Equipment From As
Far Away As Five (5) Miles." (Id.) A product specification
sheet bearing a date of "02/04/04" indicates, for instance, that
a model in respondent's "Clean Power® Series" of "suppression
devices" is "designed to protect Ether-LAN Systems, current loop
circuits, signal lines and/or low speed data lines feeding
transducers, leak detectors, flow meters, ... home
EntertainmentTV/VCR/VTRs, CATV/MATV, Video Cameras and Monitors,
Video Security Systems & Switchers, CCD Cameras, CCTV Monitors,
Coaxial T1 Lines, antenna coax and HAM radio receivers, as well
as numerous other similar coaxial type applications."
(Respondent's Exh. 10.)
Respondent, Mr. Ray insists, does not sell, under its
"CLEAN POWER" and design mark, any voltage surge protection
products for "residential" use directly to consumers. (Ray dep.
at 18.) In particular, he noted, none of its "CLEAN POWER"
products are sold for resale to consumers through retailers such
as "Best Buy," "Costco" and "Wal-Mart." (Id. at 19.) Instead,
he pointed out, respondent has a "different line of product
[which] we sell to residential" customers that uses the mark
"Surge Buffer." (Id. at 18.)
Canc. No. 92042407
27
The issues remaining to be decided in this proceeding
are which party has priority of use of its mark and, if priority
lies with petitioner, whether there is a likelihood of confusion
from contemporaneous use of the parties' marks in connection with
their respective goods. Turning first to the determination of
the former, petitioner argues in its main brief that the
"earliest date upon which the Registrant could possibly rely ...
for purposes of priority is the March 27, 2000 filing date" of
the application which matured into the involved registration.
Respondent, it appears, concurs with such statement, contending
in its brief that "[i]n order to establish priority, Petitioner
must establish a date of first use prior to Registrant's filing
date of March 27, 2000," citing Section 7(c) of the Trademark Act
as interpreted by the Board in Zirco Corp. v. American Telephone
& Telegraph Co., 21 USPQ2d 1542, 1543-44 (TTAB 1991).11
Nonetheless, as asserted by petitioner in its main brief, neither
the testimony nor exhibits offered by respondent "demonstrate a
date of use ... prior to the filing [date]" of respondent's
underlying application. Respondent, we note, does not contend
otherwise in its brief. Furthermore, in view of the unexplained

11 Specifically, the Board in such case stated, in relevant part, that:

Section 7(c) was added to the Lanham Act by the
Trademark Law Revision Act of 1988 in order to provide
constructive use, dating from the filing date of an
application for registration on the principal register, for
a mark registered on that register. As a review of the
legislative history shows, the provision is intended to fix
a registrant's nationwide priority rights in its mark from
the filing date of its application whether the application
is based on use or intent-to-use. This right of priority is
to have legal effect comparable to the earliest use of a
mark at common law. Senate Judiciary Committee Report on
S.1883, Senate Report No. 100-515 (September 15, 1988).
Canc. No. 92042407
28
discrepancy between Mr. Ray's assertion of use by respondent of
its mark, in connection with sales of its goods, as of February
of 2000, when Mr. Ray claims to have submitted with respondent's
trademark application pictures of respondent's use of its "CLEAN
POWER" and design mark on labels affixed to its goods, and the
actual filing date of such application of March 27, 2000, when
coupled with the vagueness of Mr. Ray's testimony that respondent
has continuously used its mark since "early 2000," we find that
respondent has not shown by clear evidence a date of first use of
its mark which is earlier than the March 27, 2000 filing date of
its underlying application.
Accordingly, inasmuch as the earliest date upon which
respondent can rely herein is March 27, 2000, it is incumbent
upon petitioner, in order to establish priority of use, to
demonstrate equal or superior rights in the mark "CLEAN POWER"
for its goods. Petitioner may do so by proving that on or before
March 27, 2000, it had made either technical trademark use of its
mark in connection with an ongoing commercial trade in its goods
or use of such mark which is analogous to trademark use. See,
e.g., Shalom Children's Wear Inc. v. In-Wear A/S, 26 USQP2d 1516,
1519 (TTAB 1993). However, contrary to the assertion by
respondent in its brief that "[p]etitioner's evidence is
insufficient to establish a use in interstate commerce prior to
that of Registrant" (emphasis added), it is pointed out that in
order for petitioner to prevail herein, it need only prove a date
of its actual or analogous trademark use of the term "CLEAN
POWER" anywhere, irrespective of whether such use constitutes
Canc. No. 92042407
29
interstate, foreign or even wholly intrastate commerce,12 which is
on or before March 27, 2000. Here, as explained below, we find
that petitioner has established use of its "CLEAN POWER" mark for
certain goods which is prior to such date and therefore has
priority.
Petitioner argues in its main brief that, inter alia:
Petitioner ... has introduced more than
adequate evidence to support a priority date
earlier than the March 27, 2000 filing date
of the subject Registration. In his
deposition, Petitioner's Director of Business
Development, Mr. Vern Smith, testified and
introduced various documents to support a
priority date of as early as 1998. Mr. Smith
testified that the Petitioner's products
bearing the CLEAN POWER mark were introduced
to retailers in 1997 and first started being
shipped in 1998. .... In support of these
statements , Mr. Smith introduced various
catalogs that depicted Petitioner's products
for sale. .... These catalogs included a
1997 ... Price Book, a [1998] Home
Audio/Video Market Area Price Book, and a
1998 Hardware Home Center Market Area Price
Book. .... These catalogs were provided to
Petitioner's customers, i.e. retailers who
then sold the products to the general public.
These catalogs included photographs of the
products, descriptions of the features and
benefits of those products, costs, and
Petitioner's contact information. ....
Petitioner's use of the term CLEAN POWER in
these catalogs constitutes trademark use in
the nature of a display associated with the
goods. See Land's [sic] End, Inc. v.
Manbeck, [797] F.Supp. 511, 24 USPQ2d 1314
(E.D. Va. 1992).

12 Proof of prior and continuous use in intrastate commerce is
sufficient to preclude registration. See, e.g., National Cable
Television Ass'n v. American Cinema Editors, Inc., 937 F.2d 1572, 19
USPQ2d 1424, 1429 n.4 (Fed. Cir. 1991) ("Section 14 [of the Trademark
Act] requires only prior use; 'in commerce' is noticeably absent").
However, like "use in commerce" which is regulable by Congress, use of
a mark which is wholly intrastate must still be bona fide use in the
ordinary course of trade, and not use which is made merely to reserve
a right in a mark.

Canc. No. 92042407
30

....

Additionally, Mr. Smith presented
evidence in the form of invoices having dates
of order and shipping in December,
1999/January, 2000 of models from
Petitioner's suite of CLEAN POWER products.
....

Respondent, on the other hand, contends in its brief
that the "[invoices] to the Smith deposition do not show actual
use of the Clean Power mark by Petitioner" since such mark does
not appear thereon.13 Instead, respondent observes, "the invoices
show sales of Petitioner's Power Center product[s]." Moreover,
as to the theme books or price lists which petitioner
characterizes in its main brief as its "catalogs," respondent
maintains that:
Petitioner is wrong to assert that its
catalogues constitute actual use. They do
not constitute actual use because they are
not distributed to the consumer. Rather the
catalogues are confidential and distributed
only to Petitioner's dealers. This fact is
true for all of Petitioner's catalogue
evidence. The Land's [sic] End case is
distinguished from the facts at hand because
in the Land's [sic] End case the consumer
received the catalogue. The consumer does
not receive Petitioner's catalogue because
the catalogue reveals the sale price the
retailer pays Petitioner.

Furthermore, while not specifically mentioned by
petitioner in its main brief, respondent insists with respect to

13 While invoices may, of course, be used to confirm a date of actual
first use of a mark, use of the mark on the invoices themselves does
not constitute actual or technical use of the mark as a trademark for
purposes of establishing priority. See, e.g., TMEP Section 904.05
(4th ed. 2005) ["material used by the applicant to conduct its
internal business is unacceptable as a specimen of use on goods.
These materials include all papers whose sole function is to carry out
the applicant's business dealings, such as invoices"].
Canc. No. 92042407
31
petitioner's Exhibits 9 through 14, which respectively constitute
a printout of a sales report from petitioner's business records,
various packaging insert cards and a photograph of a packaged
product, that none of such exhibits demonstrates priority of use
by petitioner. According to respondent, "[t]he Clean Power mark
is not found on Exhibits 9, 10 or 11," which instead reveal use
of the "POWER CENTER" mark to identify and distinguish
petitioner's goods; "Exhibit [12] is inconclusive with respect to
a priority date" because the "copyright date [thereon] reveals
the year 2000"; "Exhibit 13, although showing a copyright date of
1999, does not prove prior use"; "Exhibit 14 likewise does not
prove that the Clean Power mark was used by Petitioner prior to
Registrant"; and thus "Exhibits 13 and 14 are inconclusive [as]
to a sales date prior to that of Registrant." Specifically, as
to the latter two exhibits, respondent urges that:
Exhibits 13 and 14 ..., which purportedly
show use of the mark on packaging, do not
show the product model numbers set forth in
Exhibits 1, 2, 3 or 9. There is no clear
evidence to be gleaned from Exhibits 1, 2, 3,
9, 13 or 14 to show that Petitioner actually
used the Clean Power mark prior to
Registrant.

The Federal Circuit has stated that
"whether a particular piece of evidence by
itself establishes prior use is not
necessarily dispositive as to whether a party
has established prior use by a preponderance
... one should look at the evidence as a
whole, as if each piece of evidence were part
of a puzzle which, when fitted together,
establishes prior use[.]" West Florida
Seafood[] Inc. v. Jet Restaurants[] Inc., 31
F.3d 1122, ... [31 USPQ2d 1660, 1663] (Fed.
Cir. 1994). The puzzle cannot be fitted

Canc. No. 92042407
32
together with the Petitioner's evidence.
.... Petitioner's evidence is speculation,
surmise or conjecture. Petitioner's evidence
does not provide all the pieces of the
puzzle; it is insufficient.

In addition, respondent maintains that the record shows
in any event that:
The evidence does not support
Petitioner's argument ... that a suite of
products were developed under the Clean Power
mark. Rather, Petitioner developed a suit
[sic] of products under its Power Center
mark. Petitioner's Clean Power mark is used
merely descriptively to identify the function
of one aspect of the product, namely, to
describe the Power Center's ability to filter
noise from AC. See [for example]
Petitioner's Exhibit[] 12 ..., wherein the
product packaging holds out that "Clean Power
Circuitry filters out noise interference on
the AC power line so you can enjoy more
natural sound and the best possible picture
from your home components." There is no
evidence in the record that Petitioner's
Clean Power mark is used in association with
surge protection. In fact, it is not.
Although the Petitioner's Power Center
product may provide surge protection, the
Clean Power aspect of the Power Center
product relates only to AC noise filtration.
This is clearly evident from Petitioner's
descriptive use of the mark in its
confidential dealer catalogues. See for
example Petitioner's Exhibits ... [4]--7. In
all cases, Petitioner uses the Clean Power
mark to describe AC filtration only. On the
other hand, Respondent uses its Clean Power
mark for its surge protection product.

As set forth in Herbko International Inc. v. Kappa
Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002):
To establish priority, the petitioner
must show proprietary rights in the mark that
produce a likelihood of confusion. Otto Roth
& Co. v. Universal Foods Corp., 640 F.2d
1317, 1320, 209 USPQ 40, 43 (CCPA 1981).
These proprietary rights may arise from a
prior registration, prior trademark or
Canc. No. 92042407
33
service mark use, prior use as a trade name,
prior use analogous to trademark or service
mark use, or any other use sufficient to
establish proprietary rights. Id.; see,
e.g., Nat'l Cable Television [Ass'n v.
American Cinema Editors, Inc.], 937 F.2d
[1572, 19 USPQ2d 1424, 1428-29 (Fed. Cir.
1991)] ... (canceling [registration of a]
mark based on petitioner's prior use of trade
name); Knickerbocker Toy Co. v. Faultless
Starch Co., 467 F.2d 501, 508-09, 175 USPQ
417, 422 (CCPA 1972) (permitting reliance on
copyrighted appearance of stuffed rag doll in
opposition and cancellation proceedings).

In the present case, given the lack of a registration
for its pleaded "CLEAN POWER" mark, petitioner must establish, as
indicated earlier, that on or before March 27, 2000, it had made
either technical trademark use of its mark in connection with an
ongoing commercial trade in its goods or use of such mark which
is analogous to trademark use. However, we need not decide
whether, as argued by petitioner in its main brief, its price
lists and theme books constitute displays associated with its
goods for purposes of establishing technical trademark use of its
"CLEAN POWER" mark in connection with "surge protectors" as
alleged in the petition to cancel. This is because even if it
were decided that such is the case, respondent is correct that
the exhibits testified to by Mr. Smith are directed solely to
retailers--rather than the ultimate consumers--of petitioner's
goods14 and invariably show that, as actually used, the mark

14 Any sales resulting from the use thereof obviously would be made to
buyers who purchase petitioner's products as inventory or goods in
trade for retailers of those goods and not to ordinary consumers. A
likelihood of confusion, however, must be shown to exist not in a
purchasing institution but in a shared customer or purchaser. See,
e.g., Electronic Design & Sales Inc. v. Electronic Data Systems Corp.,
supra, in which our principal reviewing court pointed out that:

Canc. No. 92042407
34
"CLEAN POWER" is used in conjunction with an AC power line noise
filtration circuitry or filter feature of petitioner's surge
protection products and not as a mark for surge protectors or
other surge protection products themselves.15
Nonetheless, the record otherwise sufficiently contains
clear evidence of actual trademark use of the mark "CLEAN POWER"
in conjunction with an AC power line noise filtration circuitry
or filter feature of petitioner's surge protection products which
is prior to March 27, 2000. Specifically, based on consideration
of the totality of the evidence, we find that petitioner's
Exhibit 13 to the testimony of Mr. Smith suffices to establish
that, at least with respect to its "Monster Power Centerâ„¢" model
"PC800 HP" "Computer System Surge Protection" product "With Clean
Power Stage 1 and Color-Coded Outlets Labeled for Computer and
Peripherals," the mark "CLEAN POWER" was in use in connection
with "Clean Power Circuitry" sold as a AC power line noise filter
feature of the computer system surge protection system by no
later than sometime in 1999, which is the copyright notice date
appearing on the package insert card. As for the particular
manner of such use of the mark, Mr. Smith accurately observed in

Although two parties conduct business not only in the same
fields but also with some of the same companies, the mere
purchase of the goods ... of both parties by the same
institution does not, by itself, establish similarity of
trade channels or overlap of customers.

15 Likewise, none of the exhibits introduced by petitioner evidence use
of its "CLEAN POWER" mark, as alleged in the petition to cancel, in
connection with "energy conditioning devices, namely ... RF filters,
and EMI filters and other related goods" per se. Rather, the mark is
only used to identify and distinguish AC power line noise filters or
filter circuitry sold as a feature of petitioner's surge protectors or
other surge protection products.
Canc. No. 92042407
35
his testimony that, "for the model PC 800, [it] has 'Clean Power'
prominently on the front of the insert" and not buried solely
within the text describing various product features.16 (Smith
dep. at 21.) Accordingly, petitioner has priority of use, at
least with respect to use of its "CLEAN POWER" mark for an AC
power line noise filter or filter circuitry sold as a feature or
component of computer system surge protectors.
This brings us to consideration of the remaining issue
of likelihood of confusion. A determination thereof is based on
an analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion as set forth in In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563, 568 (CCPA 1973). However, as
indicated in Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976), in any likelihood of
confusion analysis, two key considerations are the similarity or
dissimilarity in the goods at issue and the similarity or
dissimilarity of the respective marks in their entireties.17

16 It is pointed out that the oral testimony, even of a single witness,
can suffice to prove priority if "sufficiently probative," i.e., the
testimony as to first use is not characterized by contradictions,
inconsistencies or uncertainties. Powermatics, Inc. v. Global Roofing
Products Co., Inc., 341 F.2d 127, 144 USPQ 430, 432 (CCPA 1965). We
find no such deficiencies with respect to Mr. Smith's testimony with
respect to petitioner's first use of its "CLEAN POWER" mark as shown
on its Exhibit 13. Moreover, while highly suggestive, respondent has
failed to prove that such mark, as it asserted in its brief, is merely
descriptive of petitioner's products.

17 The court, in particular, pointed out that: "The fundamental
inquiry ... goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in the marks."
192 USPQ at 29.

Canc. No. 92042407
36
Focusing first on whether the goods at issue are
commercially or otherwise related, respondent in its brief argues
that the voltage surge protectors which it sells for industrial
and other commercial applications under its "CLEAN POWER" and
design mark "are not sold to residential customers and cannot be
considered 'consumer goods.'" By contrast, respondent notes,
petitioner "sells a consumer product, namely home/office noise
filtration under the Clean Power mark." Consequently, respondent
maintains that the respective goods are not sold within the same
channels of trade and hence would "not appear side by side at the
point of purchase." Respondent, noting further that, unlike
petitioner's goods, "[e]lectricians are needed to install
Registrant's surge protectors," also stresses that (underlining
in original):
More importantly, Petitioner's Clean
Power mark is used for the AC noise
filtration functionality of its Power Center
product. There is no evidence of record
which shows that Petitioner uses the Clean
Power mark for surge protection. It should
be noted that Petitioner's Clean Power
functionality conditions an AC signal leaving
the Power Center product. On the other hand,
Registrant's Clean Power product protects
against incoming power surges. There is a
distinct difference since Petitioner's
product conditions an outgoing signal and
Registrant's product protects against an
incoming signal. The two respective products
do not perform the same function and are not
used by the same consumer. Accordingly,
because the goods of Registrant and
Petitioner are different and are not marketed
in the same channels of trade, confusion with
respect to the source [thereof] is unlikely.

Petitioner, on the other hand, correctly points out in
its main brief that:
Canc. No. 92042407
37
The goods recited in the subject registration
are "voltage surge protectors," without any
limitations as to the nature and character of
the particular voltage surge protectors
marketed and sold by Registrant. It must be
assumed for purposes herein that the goods
associated with the ... registration
encompass all types of voltage surge
protectors for all types of electrical
systems including commercial, retail and all
other non-industrial surge protection, and
including those surge protector devices sold
by Petitioner. See ... Canadian Imperial
Bank of Commerce v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987)
....

See also, Octocom Systems Inc. v. Houston Computer Services Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); CBS Inc. v.
Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983);
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed.
Cir. 1983); Paula Payne Products Co. v. Johnson Publishing Co.,
Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973); and Commerce
Drug Co., Inc. v. Kirkman Laboratories, Inc., 461 F.2d 833, 174
USPQ 265, 267 (CCPA 1972).
Petitioner, furthermore, properly observes that in
light of the broad manner in which respondent's goods are
identified in the involved registration, it is the case that for
purposes of analysis:
Just as the nature of the goods associated
with Registrant's registration are to be
presumed to include all types of voltage
surge protectors, the channels of trade and
potential customers associated therewith are
presumed to be all appropriate trade channels
for the sale of surge protectors to all
potential purchasers of surge protectors.
This is due to the registration having no
limitations regarding channels of trade or
classes of purchasers. See Cunningham v.
Laser Golf Corp., [222 F.3d 943,] 55 USPQ2d
1842, 184[6] (Fed. Cir. 2000) (The Federal
Canc. No. 92042407
38
Circuit, in affirming the Board's decision to
cancel a mark, stated that [as to the actual
differences between the goods at issue the
Board "did not ignore these differences but,
rather, properly discounted them" when "the
Board held that] [']because neither []
petitioner nor registrant has limited the
products identified in the respective
registrations to any particular channels of
trade or classes of purchasers, we must deem
the goods [to] travel in all appropriate
trade channels to all potential purchasers of
such goods.[']"). ....

....

As set out above, Registrant's
registration does not include any limitations
as to channels of trade or potential
customers. It does not restrict the channels
of trade to industrial or commercial related
channels. It does not restrict the potential
customers to industrial figures, such as
building contractors or manufactures [sic].
Accordingly, for purposes of this
cancellation proceeding, the Board can only
conclude that the goods associated with the
Registrant's registration travel in all
channels where surge protectors may be sold,
which include the same [retail] channels as
the goods associated with Petitioner's CLEAN
POWER mark and that the potential purchasers
include all potential purchasers of surge
protectors, which include purchasers of goods
having Petitioner's CLEAN POWER mark
associated therewith. Accordingly, this
factor weighs in favor of a likelihood of
confusion.

In addition, petitioner urges that its goods and those
of respondent are related because the former include the same
function or purpose as that served by the latter. Specifically,
petitioner asserts that:
Petitioner's CLEAN POWER mark is used in
conjunction with a suite of products for
surge protection and power conditioning. The
suite of products used in conjunction with
Petitioner's CLEAN POWER mark are of a
general purpose, multi-outlet nature, which
expands the number of electrical outlets to
Canc. No. 92042407
39
allow a user to plug in more components that
the number of wall outlets. .... These
products protect against electrical surges
and spikes as well as to reduce and filter
the amount of noise contained within the
incoming AC power. ....

While, to be sure, petitioner's computer system surge protectors,
like other goods in its "suite of products," utilize its "CLEAN
POWER" mark in connection with an AC power line noise filter or
filter circuitry which is sold as a feature or component of such
goods, it is still the case that the products which petitioner
offers to consumers are surge protectors, which are encompassed
by the "voltage surge protectors" set forth in respondent's
registration. The fact, moreover, that petitioner's computer
system surge protectors additionally have a filter or circuitry
that provides AC power line noise suppression of the electric
power leaving the surge protectors does not mean that such
feature is unrelated to respondent's voltage surge protectors.
Instead, petitioner's computer system surge protectors, like
respondent's goods, also protect against incoming power surges.
In short, consumers in the market for protection for their
computer systems from incoming power surges have the choice of
purchasing either petitioner's computer system surge protectors
or those of respondent, with the only difference being that
petitioner's surge protectors for computer systems offer the
additional feature of providing AC power line noise suppression.
We find, therefore, that the AC power line noise filter or filter
circuitry sold as a feature or component of petitioner's computer
system surge protectors is closely related to respondent's
voltage surge protectors. If such feature and voltage surge
Canc. No. 92042407
40
protectors where to be marketed under the same or similar marks,
confusion as to the source or sponsorship thereof would be likely
to occur.
Turning, then, to the respective marks, respondent
contends in its brief that "the 'same overall [commercial]
impression' is not created by the two marks" (italics in
original) because its mark, unlike petitioner's "CLEAN POWER"
mark "has a prominent zig-zag lightning bolt inserted between the
words 'Clean' and 'Power'." Respondent maintains that, as a
result, "the 'overall [commercial] impression' of Registrant's
mark and Petitioner's mark is decidedly distinct, rather than
similar." In essence, respondent contends that the dominant and
distinguishing portion of its mark is the "lightning bolt" design
therein.
We agree with petitioner, however, that the marks at
issue, when considered in their entireties, are not only
substantially identical in appearance, but are identical in
sound, connotation and commercial impression. As petitioner
properly points out in its main brief:
[I]t is well settled that one feature of a
mark may be more significant than another and
it is not improper to give more weight to
this dominant feature in determining the
commercial impression created by the mark.
See In re National Data Corp., 753 F.2d 1056,
224 USPQ749 (Fed. Cir. 1985).

In Registrant's mark CLEAN POWER and
design, the dominant feature of the mark is
the term CLEAN POWER. The lightning bolt
design element adds little impact to the
commercial impression of the mark and is ...
subordinate matter. Also, it is the term
CLEAN POWER that persons will use when
referring to Registrant's goods. ....
Canc. No. 92042407
41

See, e.g., In re Appetito Provisions Co. Inc., 3 USPQ2d 1553,
1554 (TTAB 1987).
Here, it is obvious that the marks at issue sound the
same and, while both are indeed highly suggestive of a purpose or
function of the goods or product feature in connection with which
each mark is respectively used, both marks nevertheless have the
same connotation of power which is conditioned to be free or
"clean" of noise or voltage surge. Likewise, the marks engender
the same overall commercial impression, inasmuch as petitioner's
"CLEAN POWER" mark is identical to the dominant portion of
respondent's "CLEAN POWER" and design mark, with the "lightning
bolt" design of the latter serving merely to underscore the fact
that respondent's goods protect against undesirable voltage
surge. In view thereof, and given, furthermore, the substantial
overall identity in appearance of the respective marks, with
petitioner using its "CLEAN POWER" mark on the packaging for its
computer system surge protectors in the identical manner (i.e.,
"Clean Power") in which the same words appear in respondent's
"CLEAN POWER" and design mark as used on the labels for its
voltage surge protectors, contemporaneous use of such
substantially identical marks would be likely to cause confusion.
Respondent, nonetheless, insists that confusion is not
likely based upon two additional du Pont factors, namely, the
asserted "careful, sophisticated purchasing" involved in the sale
of its goods versus the "impulse" purchases made by consumers of
petitioner's goods, and the lack of any incidents of actual
Canc. No. 92042407
42
confusion between the parties' use of their respective "CLEAN
POWER" marks. As set forth in its brief, respondent argues that:
[P]urchasers of Registrant's goods are
looking, and paying, for industrial grade
surge protection. On the other hand,
Petitioner's customers are looking for AC
noise filtration devices for home stereos
[and computer systems]. Petitioner's
customers are regarded as impulse purchasers
while Registrant's purchasers are
sophisticated.

Another important factor which is
conspicuous in its absence is the non-
existence of any actual confusion. .... No
evidence has been offered of any confusion
related to the source of Registrant's and
Petitioner's goods. Therefore it must be
concluded that no actual confusion [and hence
no likelihood of confusion] exists.

Petitioner, on the other hand, points out in its reply
brief simply that:
In making arguments involving the DuPont
[sic] factors, Respondent repeatedly makes
reference to alleged actual use of its CLEAN
POWER products, and not to the goods listed
in the ... [involved] Registration. This is
improper.

Petitioner is correct, however, that because, as noted
previously, the involved registration broadly identifies
respondent's goods as "voltage surge protectors," respondent's
goods are deemed to include not only those used in industrial
applications but also computer system surge protectors of the
kind with which petitioner uses its mark in connection with a
feature of such products. The latter goods, the record shows,
are primarily sold to ordinary consumers who, while not
necessarily prone to impulse or spur-of-the-moment purchasing of
such items, nonetheless would not be likely to exercise the same
Canc. No. 92042407
43
elevated degree of care and discrimination in buying home
computer system surge protectors with an AC power noise reduction
filter as would be required for purchasing voltage surge
protectors for industrial or other commercial applications.
Thus, the degree of purchaser sophistication is not a meaningful
factor which would serve to preclude a likelihood of confusion.
Similarly, as to the factor of the nature and extent of
any actual confusion, while respondent's president testified that
respondent has not experienced any instances of actual confusion
between use of its mark and the use by petitioner of petitioner's
mark, such is not a meaningful factor because respondent has only
used its mark in connection with voltage surge protectors for
industrial or other commercial applications rather than those for
consumer use. For an asserted lack of any incidents of actual
confusion to be a meaningful factor, the record must demonstrate
instead that there has been appreciable and continuous use by
respondent of its mark in the same market(s) as those served by
petitioner under its mark. See, e.g., Gillette Canada Inc. v.
Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). Specifically,
there must be evidence showing that there has been an opportunity
for instances of actual confusion to occur and here the record is
devoid of any such proof. See, e.g., Cunningham v. Laser Golf
Corp., supra at 55 USPQ2d 1847 (Fed. Cir. 2000).
We accordingly conclude, in light of the above, that
contemporaneous use by respondent of its "CLEAN POWER" and design
mark in connection with voltage surge protectors is likely to
cause confusion with the prior use by petitioner of its "CLEAN
Canc. No. 92042407
44
POWER" mark for an AC power line noise filter or filter circuitry
sold as a feature or component of computer system surge
protectors.
Decision: The petition to cancel is granted and Reg.
No. 2,428,527 will be canceled in due course.