RKS Guitars, LLC

Trademark Trial and Appeal Board

Sep 15, 2008

No. 78941662 (T.T.A.B. Sep. 15, 2008)

Mailed: September 15, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re RKS Guitars, LLC
________

Serial No. 78941662
_______

Daniel P. Dooley of Fellers, Snider, Blankenship, Bailey &
Tippens for RKS Guitars LLC.

Lindsey H. Rubin1, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).
_______

Before Bucher, Drost and Taylor, Administrative Trademark
Judges.

Opinion by Taylor, Administrative Trademark Judge:

RKS Guitars, LLC has filed an application to register on
the Principal Register the mark GIG-STAND (in stylized form),
shown below,

for “electric and electric bass guitar stands” in Class 15.2

1 The application was assigned to the current examining attorney
for writing of the brief.

2 Application Serial No. 78941662, filed July 31, 2006, and
alleging June 7, 2006 as the date of first use of the mark
anywhere and in commerce.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78941662
2
The examining attorney refused registration on the
ground that applicant’s mark, when used in connection with
applicant’s goods, so resembles the previously registered
mark GIG STAND (in typed format) for “music stands”3 in
International Class 20 as to be likely to cause confusion, to
cause mistake, or to deceive under Section 2(d) of the
Trademark Act.
When the refusal was made final, applicant appealed and
requested reconsideration of the final refusal. On February
14, 2008, the examining attorney denied the request for
reconsideration and, on March 4, 2008, this appeal was
resumed. Briefs were filed by both applicant and the
examining attorney. For the reasons discussed below, we
affirm the refusal to register.
Before turning to the merits of this case, we must
address an evidentiary matter. In its response to the first
Office Action (p. 4), applicant made reference to a number of
third-party registrations in an effort to contradict the
examining attorney’s argument regarding the similarity of the
marks. Applicant was advised by the examining attorney in
the Final Office Action (p. 3) that to make these
registrations of record, applicant must submit soft copies or

3 Registration No. 1703313, renewed. The term “STAND” has been
disclaimed.
Ser No. 78941662
3
their electronic equivalent. Applicant did not do so. The
examining attorney now objects to their admission and asks
the Board “not to take these third party registrations into
account”. (Br., unnumbered p. 2). As pointed out by the
examining attorney in the Final Office Action, the Board does
not take judicial notice of third-party registrations or
marks. See In re Duofold, Inc., 184 USPQ 638, 640 (TTAB
1974). See also Black & Decker Corp. v. Emerson Electric
Co., 84 USPQ2d 1482, 1485, n.4 (TTAB 2007). Accordingly,
applicant’s representations about these registrations which
are not properly of record and its claims about what they
show or do not show, will not be considered.
Turning now to the merits of this appeal, our
determination of the issue of likelihood of confusion is
based on an analysis of all 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 Company, Inc.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any
likelihood of confusion analysis, two key considerations are
the similarities between the marks and the similarities
between the goods and/or services. See Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
Ser No. 78941662
4
1976). See also, In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Considering first the similarity of the marks, as
applicant correctly points out, we must determine whether
applicant’s mark and registrant’s mark, when compared in
their entireties, are similar or dissimilar in terms of
sound, appearance, connotation and commercial impression.
Applicant’s mark is GIG-STAND (stylized) and the registered
mark is GIG STAND. The examining attorney maintains that the
marks are virtually identical, both sharing the terms “GIG”
and “STAND,” placed in the same order and spelled in the same
way. (Br., unnumbered p. 4). Neither the addition of the
hyphen nor the stylized presentation of applicant’s mark, the
examining attorney contends, will avoid a likelihood of
confusion with the cited mark. Applicant conversely
maintains that when its mark is considered as a whole, its
“design element,” [stylized lower case lettering] more than
adequately distinguishes its mark apart from the cited mark.
In addition, applicant, citing Pignons S.A. de Mecanique de
Precision et al. v. Polaroid Corporation et al., 657 F.2d
482, 212 USPQ 246, (1st Cir. 1981), argues that use of its
mark with its corporate name (RKS Guitars, LLC), and its logo
(RKS in stylized lettering), mitigates a likelihood of
confusion in the marketplace.
Ser No. 78941662
5
Contrary to applicant’s contention, because the cited
mark is registered in typed format, registrant’s rights
therein are not limited to the depiction thereof in any
special form. See Phillips Petroleum Co. v. C. J. Webb, Inc.
442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971). As the Phillips
Petroleum case makes clear, when a word mark is registered in
typed form, the Board must consider all reasonable modes of
display that could be represented, including the same
stylized lettering as that in which applicant’s mark
appears.4 The stylized lettering of applicant’s mark
consequently does not serve to distinguish applicant’s mark
from the cited mark. Nor do we find the hyphen in
applicant’s mark sufficient to distinguish the two marks. It
merely serves as a break between the terms “GIG” and “STAND”
just as the space between the terms “GIG” and “STAND”
separates those terms in the cited mark. See Goodyear Tire &
Rubber Co. v. Dayco Corp., 201 USPQ 485, 488 n.4 (TTAB
1978)(“[T]he mark ‘FAST-FINDER’ with a hyphen (which mark is
in legal contemplation substantially identical to the mark
‘Fast-Finder’ without a hyphen….”)). See also Harvey

4 As regards applicant’s claim that such use would constitute
“trademark or copyright infringement,” the Board has no
jurisdiction to determine issues of trademark or copyright
infringement. In any case, we reiterate that under prevailing
Trademark law, we must assume that a mark in typed or standard
character form may be displayed in all reasonable manners.
Phillips Petroleum Co. v. C. J. Webb, Inc., supra.
Ser No. 78941662
6
Hubbell, Inc. v. Red Rope Industries, Inc., 191 USPQ 119, 123
(TTAB 1976)(“[T]he marks ‘DATALOK’ and ‘DATA LOK’, although
used by the parties in different graphic presentations,
create the same general commercial impression and are, for
all purposes herein, legally identical”). Simply put, the
hyphen in applicant’s mark is of such minor significance that
it is unlikely that it will be remembered when the marks are
viewed apart from each other at different times. We thus
find that applicant’s mark is virtually identical to the
cited mark in terms of appearance, sound, connotation and
commercial impression.
Further, we find unavailing applicant’s argument that
use of its corporate name and logo with its involved GIG-
STAND (stylized) mark mitigates a finding of likelihood of
confusion. The issue of likelihood of confusion must be
decided based upon a comparison of applicant’s mark as set
forth in the application and the cited registration, and not
upon a comparison of applicant’s mark as it may appear on
applicant’s product labels. That is, the Board is not
permitted to consider the trade dress of the products or any
additional wording that may appear on the products, other
than to the extent that these elements may show possible bad
faith adoption on the part of the applicant. Ultracashmere
House Ltd. v. Spring Mills Inc., 828 F.2d 1580, 4 USPQ2d
Ser No. 78941662
7
1252, 1254 (Fed. Cir. 1987). This is so because the issue
before the Board in this proceeding is registrability and not
use.5 It is therefore irrelevant whether applicant uses its
trade name and logo in conjunction with its applied-for mark
on its products. Moreover, where marks are otherwise
virtually the same, the addition of a house mark is more
likely to add to the likelihood of confusion than to
distinguish the marks. Key West Fragrance & Cosmetic
Factory, Inc. v. Mennen Co., 216 USPQ 168 (TTAB 1982). See
also In re Dennison Mfg. Co., 229 USPQ 141,144 (TTAB 1986),
citing Menendez v. Holt, 128 U.S. 514, 521 (1888) (“It is a
general rule that the addition of extra matter such as a
house mark or trade name to one of two otherwise confusingly
similar marks will not serve to avoid a likelihood of
confusion between them.”). In short, because the marks are
virtually identical, the du Pont factor of similarity of the
marks favors a finding of likelihood of confusion.
We next consider whether applicant’s electric and
electric bass guitar stands and registrant’s music stands are
related. Here, we keep in mind that the greater the degree
of similarity between the marks, the lesser the degree of
relatedness between applicant’s and registrant’s goods is

5 For this reason, the Pignons decision is readily
distinguishable.
Ser No. 78941662
8
required to support a finding of likelihood of confusion. In
re Opus One, Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); and In
re Concordia International Forwarding Corp., 222 USPQ 355,
356 (TTAB 1983). If the marks are the same, or almost the
same, as in this case, it is only necessary that there be a
viable relationship between the goods and services to support
a finding of likelihood of confusion. In re Engine Supply,
Inc., 225 USPQ 216, 217; and In re Concordia International
Forwarding Corp., supra. Moreover, it is not necessary that
the goods or services of applicant and the registrant be
similar or competitive to support a holding of likelihood of
confusion. It is sufficient if the respective goods and
services are related in some manner and/or that the
conditions surrounding their marketing are such that they
would be encountered by the same persons under circumstances
that could, because of the similarity of the marks used in
connection therewith, give rise to the mistaken belief that
they originate from or are associated with a single source.
In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB
1993); In re International Telephone and Telegraph Corp., 197
USPQ 910, 911 (TTAB 1978).
In urging that the refusal be reversed, applicant
contends that its goods differ in functionality from
registrant’s goods; its goods are used to hold guitars
Ser No. 78941662
9
whereas the registrant’s goods are used to hold sheet music.
In addition, while recognizing that both applicant’s and
registrant’s goods might be sold in the same stores,
applicant’s contends that the respective goods serve
different markets. Applicant particularly argues that its
goods are used by and specifically marketed to rock bands,
who use the stand when the guitar is not in use, while
registrant’s goods are used by orchestras and solo performers
during active performances or practice sessions. These
differences, applicant maintains, preclude any likelihood of
confusion of source.
The examining attorney, on the other hand, maintains
that applicant’s goods and registrant’s goods are highly
related and complementary, both being used by musicians for
holding music and instruments, at same time and during
performances. In addition, the examining attorney, citing In
re Melville Corp., 18 USPQ2d 1836 (TTAB 1991), contends that
in the absence of limitations to the channels of trade or
classes of purchasers in applicant’s identification, “it is
assumed that any guitar player, not just those in rock bands,
have access to the Applicant’s goods in the marketplace.”
(Br., at unnumbered p. 8).
In support of this position, the examining attorney made
of record copies of web pages from Internet retailers of
Ser No. 78941662
10
musical instruments, supplies and accessories, namely,
www.bizrate.com, www.theguitarcenter.com and
www.musiciansfriend.com. The web pages show that guitar
stands and other instrument stands are offered by the same
source under the same mark. The web pages also demonstrate,
in particular, that guitar stands and music stands emanate
from the same source. At www.guitarcenter.com (emphasis
added), purchasers can purchase (1) Hercules Music Stands
(Model Nos. BS415B, BS100B, KB50 and BS405B) and Hercules
Single Guitar Stands with Folding Yoke and Hercules Guitar
Stands (Model Nos. GS423B, GS422B and GS402B; (2) Proline
Music Stands and Proline Guitar Stands; and (3) On-Stage
Conductor Stand Without Holes and On-Stage Universal A-frame
Guitar Stands. At www.musiciansfriend.com, purchasers can
purchase both stands for music and guitars from Musician’s
Friend. These web pages suggest that consumers are familiar
with music stands and guitar and other musical instrument
stands emanating from the same source.
Applicant, however, “disagrees” with the examining
attorney’s assessment that “Musician’s Friend” is a brand
used on both guitar stands and music stands. In support of
this contention, applicant has made of record copies of
Registration Nos. 1812560 (MUSICIAN’S FRIEND for “mail order
catalog services in the field of musical instruments and
Ser No. 78941662
11
supplies”), 2238700 (MUSICIAN’S FRIEND and design for “mail
order catalog services in the field of musical instruments
and supplies, and retail outlets featuring musical
instruments and supplies”), 2412387 (MUSICIAN’S FRIEND for
“online retail services featuring musical instruments and
supplies”), and 2492090 (MUSICIAN’S FRIEND.COM and design for
“on-line retail services featuring musical instruments and
musical accessories”), all owned by Musician’s Friend Inc.
and none listing either guitar stands and music stands in
their identifications. While we agree that these
registrations do not cover either guitar stands or music
stands, the evidence of record, specifically the web pages
from www.musiciansfriend.com clearly show that MUSICIAN’S
FRIEND is the source of both music stands, i.e., Musician’s
Friend Heavy-Duty Folding Music Stand and Musician’s Friend
Folding Music Stand, and guitar stands, i.e., Musician’s
Friend Tubular Guitar Stand and Musician’s Friend A-Frame
Electric Guitar Stand. Accordingly applicant’s objection is
unfounded.
Quite simply, the evidence of record convinces us that
applicant’s guitar stands and registrant’s music stands are
related and complementary goods. Further, and contrary to
applicant’s contention, in the absence of any limitations in
the identification of goods in the application and the cited
Ser No. 78941662
12
registration as to channels of trade or classes of
purchasers, we must presume that both applicant’s and
registrant’s goods will be offered in the normal channels of
trade for such goods, such as music stores and the Internet,
and will be offered to all normal purchasers of such goods
such as musicians, including electric and electric bass
guitar players. See In re Elbaum, 211 USPQ 639, 640 (TTAB
1981).
One final argument made by applicant must be
addressed. Applicant argues that its guitar stand is an
innovative and creative product and, because of the unique
function and design, consumers will have to inquire as to
the nature of its product before deciding to purchase it.
During this inquiry, consumers will discover that applicant
is the source of the goods and accordingly, the review
process precludes any confusion as to the source of the
goods. We find this argument unpersuasive. For purposes
of our Section 2(d) analysis, we must compare the goods as
identified in applicant’s application and the cited
registration. Canadian Imperial Bank v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); and The
Chicago Corp. v. North American Chicago Corp., 20 USPQ2d
1715 (TTAB 1991). There is nothing in applicant’s
identification, i.e., electric and electric bass guitar
Ser No. 78941662
13
stands, that warrants further inquiry as to their nature.
Thus, based upon a comparison of the goods as they appear
in applicant’s application and the cited registration, and
the evidence of record, as stated above, we find
applicant’s electric and electric bass guitar stands
related and complementary to registrant’s music stands.
The du Pont factors of the similarity of the goods,
channels of trade and classes of purchasers thus favor a
finding of likelihood of confusion as to the cited
registration.
We therefore conclude that prospective purchasers
familiar with the registered mark GIG STAND for music
stands would be likely to believe, upon encountering
applicant’s virtually identical mark GIG-STAND (stylized)
for electric and electric bass guitar stands, that such
goods emanate from, are sponsored by or affiliated with the
same source.

Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.