Nokia Corporation

Trademark Trial and Appeal Board

May 13, 2009

No. 77260616 (T.T.A.B. May. 13, 2009)

Mailed: 5/13/09

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Nokia Corporation
________

Serial No. 77260616
_______

Karen Segall of Foley & Lardner for Nokia Corporation.

Laurie R. Kaufman, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______

Before Quinn, Kuhlke and Wellington, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Nokia Corporation filed, on August 21, 2007, an
intent-to-use application to register the mark MIRAGE
(standard character form) for, as amended, “mobile
telephones; alarm clocks, calculators, digital cameras,
electronic address books and calendars, FM radio tuners,
foreign currency converters, global positioning systems,
music and video players, and sound and video recorders sold
as a component part of mobile telephones” in International
Class 9.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser. No. 77260616
2
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark, when applied
to applicant’s goods, so resembles the previously
registered mark MIRAGE (typed form) for “telephone
headsets”1 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.2
Applicant and the examining attorney filed briefs.
Applicant argues that its goods are mobile phones to
be sold exclusively via Verizon Wireless. Applicant points
out that the cited registration issued almost twenty years
ago
when mobile phones were in their
infancy and certainly were not commonly
used by the public, as they are today.
And, of course, headsets at that time
would not have been used for mobile
phones, as headset technology only
recently was introduced for mobile
phones. Thus, the very age of the
registration itself supports
Applicant’s position that the cited
registration covers headsets intended
for regular landline phones....the
identification in the cited
registration reads “telephone
headsets.” A “telephone” as described
in the registration does not

1 Registration No. 1552678, issued August 22, 1989; Section 8
affidavit accepted, Section 15 affidavit acknowledged.
2 The Section 2(d) final refusal also was based on Registration
No. 2219227 of the mark MIRAGE for “cases for carrying
telephones, and cases for carrying pagers.” Applicant filed a
consent agreement with this registrant and, upon reconsideration,
the examining attorney withdrew the refusal.
Ser. No. 77260616
3
immediately call to mind a mobile phone
or cell phone, but rather a traditional
landline phone. Given the time frame
during which the cited registration
issued, it thus makes perfect sense
that the registrant’s headsets are for
use with traditional, landline phones.
(Brief, p. 6)(emphasis in original).

In this connection, applicant submitted pages from
registrant’s website showing the actual nature of
registrant’s headsets, that is, “for use with traditional
telephones, rather than for mobile phones.” (Brief, p. 7).
In particular, applicant asserts that registrant’s goods,
having a “Quick Disconnect” feature, are intended for call
centers and offices. Applicant goes on to criticize the
examining attorney’s third-party registration and Internet
evidence, contending that the evidence fails to show a
relationship between mobile phones and headsets for
traditional telephones. Applicant lastly argues that the
cited mark is weak, stating that the Board need look no
further than the fact that eight registrations of MIRAGE
marks were initially cited as Section 2(d) bars to the
registration of applicant’s mark.
The examining attorney maintains that the marks are
identical and that the goods are related, especially given
that the identification of goods set forth in the cited
registration, “telephone headsets,” is broad enough to
Ser. No. 77260616
4
include all types of such goods, including headsets for use
with mobile telephones. To show a relationship between the
goods, the examining attorney submitted third-party
registrations and excerpts of websites. In support of the
refusal the examining attorney also introduced dictionary
definitions of the words “mirage” and “headset.”
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Turning first to a consideration of the marks, we must
compare the marks in their entireties as to appearance,
sound, connotation and commercial impression to determine
the similarity or dissimilarity between them. Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The
marks are identical in every respect, and applicant does
Ser. No. 77260616
5
not argue to the contrary. The identity between the marks
weighs heavily in favor of finding a likelihood of
confusion.
Applicant’s argument that the cited mark is weak,
based on the existence of the eight third-party
registrations originally cited as Section 2(d) bars in this
application, is not persuasive. The word “mirage” is
defined as “an optical phenomenon that creates the illusion
of water, often with inverted reflections of distant
objects, and results from distortion of light by alternate
layers of hot and cool air.” The American Heritage
Dictionary of the English Language (4th ed. 2000). Thus,
the word appears to be arbitrary when used in connection
with phones and related goods. Moreover, six of the
registrations cover goods significantly different from
telephones (but were cited as Section 2(d) bars in view of
applicant’s original, very broad identification of goods).
In any event, third-party registrations are not evidence of
use of the marks shown therein. AMF Inc. v. American
Leisure Products, Inc., 474 F.2d 1407, 177 USPQ 268 (CCPA
1973). Thus, they are not proof that consumers are
familiar with such marks. Smith Bros. Mfg. Co. v. Stone
Mfg. Co., 476 F.2d 1004, 177 USPQ 462 (CCPA 1973).
Ser. No. 77260616
6
Given that the marks are identical, applicant and the
examining attorney have focused their attention on the du
Pont factor of the similarity/dissimilarity between
applicant’s and registrant’s goods. In comparing the
goods, we initially note that where identical marks are
involved, as is the case here, the degree of similarity
between the parties’ goods that is required to support a
finding of likelihood of confusion declines. In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688-1689 (Fed.
Cir. 1993); Time Warner Entertainment Co. v. Jones, 65
USPQ2d 1650 (TTAB 2002); and In re Opus One Inc., 60 USPQ2d
1812 (TTAB 2001). It is only necessary that there be a
viable relationship between the two to support a finding of
likelihood of confusion. In re Concordia International
Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983). The
issue, of course, is not whether purchasers would confuse
the goods, but rather whether there is a likelihood of
confusion as to the source of the goods. In re Rexel Inc.,
223 USPQ 830 (TTAB 1984).
With respect to the goods, it is well settled that the
question of likelihood of confusion must be determined
based on an analysis of the goods recited in applicant’s
application vis-à-vis the goods identified in the cited
registration. In re Shell Oil Co., 992 F.2d 1204, 26
Ser. No. 77260616
7
USPQ2d 1687, 1690 n. 4 (Fed. Cir. 1993); and Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1783 (Fed. Cir. 1992). Where the goods in the application
at issue and/or in the cited registration are broadly
identified as to their nature and type (as in the case of
the cited registration), such that there is an absence of
any restrictions as to the channels of trade and no
limitation as to the classes of purchasers, it is presumed
that in scope the identification of goods encompasses not
only all the goods of the nature and type described
therein, but that the identified goods are offered in all
channels of trade which would be normal therefor, and that
they would be purchased by all potential buyers thereof.
In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
The term “headset” is defined as “an attachment for
holding an earphone and transmitter at one’s head; a pair
of headphones.” www.merriam-webster.com. Registrant’s
identification of goods, “telephone headsets,” does not
include any limitation as to the type of telephone for
which the headsets are designed. Thus, we presume that the
headsets are used for both landline and mobile telephones.
Given that there also are no restrictions relating to trade
channels and purchasers, we presume that the goods travel
in the same or similar trade channels (e.g., Best Buy,
Ser. No. 77260616
8
wireless phone retail outlets and mobile telephone
manufacturers’ websites), and the goods are purchased by
the same classes of purchasers, including ordinary
consumers who would exercise nothing more than ordinary
care in making their purchase.
The evidence includes nine use-based third-party
registrations in support of the examining attorney’s
attempt to show a relationship between “telephone headsets”
and “mobile phones.”3 The identifications in the
registrations include both mobile phones and headsets; in
four of the registrations, the identification of the
headsets specifically refers to “mobile telephone” headsets
(even though, as pointed out by applicant, the broader
terminology “telephone headsets” would be accepted by the
Office).
Third-party registrations that individually cover
different items and that are based on use in commerce serve
to suggest that the listed goods and/or services are of a
type that may emanate from a single source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); and
In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB

3 We agree with applicant (Brief, p. 8, n.3) that an additional
registration should be disregarded because it does not show both
types of goods. Inasmuch as Reg. No. 3183515 lists only
telephone headsets, we do not find this registration to be
probative of the examining attorney’s argument.
Ser. No. 77260616
9
1988). Thus, we find that the nine registrations show that
mobile telephones and telephone headsets, whether
specifically for mobile telephones or not, are the types of
goods that may emanate from a single source under the same
mark.
Also of record are excerpts of third-party websites
showing that the same manufacturer (Motorola and Samsung)
sells both mobile telephones and headsets therefor.
Applicant itself sells headsets for its mobile telephones.
We find that the evidence establishes a viable
relationship between mobile phones and telephone headsets
(whether for landline phones or mobile phones) so that,
when sold under the identical arbitrary mark, confusion in
the marketplace is likely to occur.
The main point in applicant’s attempt to distinguish
the goods is that registrant’s headsets are for landline
telephones, and not for mobile telephones, that is, the
type of telephones sold by applicant. In making this
argument applicant relies upon excerpts from registrant’s
website showing use of the headset in connection with
landline telephones, coupled with the fact that, according
to applicant, mobile telephones were not common at the time
of issuance of the cited registration.
Ser. No. 77260616
10
The problem with this type of argument is that, as
indicated earlier, the comparison of the goods in our
likelihood of analysis must be based on the goods as
identified in the registration, and not on evidence that
illustrates the goods for which registrant may actually use
its mark. Further, applicant’s statement that mobile
phones were not in common use twenty years ago is not
supported by any evidence of record; in any event, such
statement does not negate the existence of mobile
telephones at that time. As indicated above, inasmuch as
the identification does not limit registrant’s headsets to
a particular type of telephone, we must presume, contrary
to applicant’s argument and evidence related thereto, that
the headsets are for all types of phones, including mobile
telephones. Thus, applicant’s attempt to impermissibly
limit registrant’s recited goods by extrinsic evidence is
unavailing. In re Bercut-Vandervoort & Co., 229 USPQ 763,
764 (TTAB 1986).
We conclude that consumers familiar with registrant’s
telephone headsets sold under the mark MIRAGE would be
likely to believe, upon encountering applicant’s identical
mark MIRAGE for mobile telephones, that the goods
originated from or were associated with or sponsored by the
same source.
Ser. No. 77260616
11
To the extent that any of the points made by applicant
raise a doubt about likelihood of confusion, that doubt is
required to be resolved in favor of the prior registrant.
In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565,
223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.