Wenger Corporation

Trademark Trial and Appeal Board

Feb 2, 2022

87630172 (T.T.A.B. Feb. 2, 2022)

This Opinion is Not a Precedent of the TTAB Mailed: February 2, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Wenger Corporation _____ Serial No. 87630172 _____ Tye Biasco of Patterson Thuente Pedersen, P.A., for Wenger Corporation. Lourdes Ayala, Trademark Examining Attorney, Law Office 106, Mary Sparrow, Managing Attorney. _____ Before Cataldo, Kuczma, and Lynch, Administrative Trademark Judges. Opinion by Lynch, Administrative Trademark Judge: I. Background Wenger Corporation (“Applicant”) seeks registration on the Principal Register of the mark VIRTUOSO in standard characters for: Room acoustics enhancement system, namely, a system comprised of signal processors and electric control panels for enhancing the reverberation of a room, auditorium, Serial No. 87630172 - 2 - performing art center, or theater, all exclusive of microphones and speakers, in International Class 9.1 The Examining Attorney refused registration under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a likelihood of confusion with the registered mark VIRTUOSOS in standard characters for various goods and services that include “apparatus for recording, transmission or reproduction of sound or images” and “microphones” in International Class 9,2 the goods the Examining Attorney deemed most relevant. After the Examining Attorney made the refusal final, Applicant requested reconsideration and appealed. The Examining Attorney denied reconsideration, and the appeal proceeded. Applicant and the Examining Attorney filed briefs. II. Likelihood of Confusion Our determination under Section 2(d) involves an analysis of all the probative evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be considered, referred to as “DuPont factors”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). The Board considers only those DuPont factors for which there is evidence and argument. In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). “Not all DuPont factors are relevant in each case, and the weight afforded to each factor depends on the 1 Application Serial No. 87630172 was filed October 2, 2017, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). 2 Registration No. 5671856 issued February 12, 2019. Serial No. 87630172 - 3 - circumstances.” Stratus Networks, Inc. v. UBTA-UBET Communs. Inc., 955 F.3d 994, 2020 USPQ2d 10341 *3 (Fed. Cir. 2020). Two key considerations are the similarities between the marks and the relatedness of the goods. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). Applicant has limited its arguments against likely confusion in this case to differences in the goods and trade channels and the alleged sophistication of its consumers. A. Similarity of the Marks We compare the marks “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imps. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1691 (quoting DuPont, 177 USPQ at 567). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018), aff’d mem., 777 Fed. Appx. 516 (Fed. Cir. 2019) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). We assess not whether the marks can be distinguished in a side-by-side comparison, but rather whether their overall commercial impressions are so similar that confusion as to the source of the goods offered under the respective marks is likely to result. Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d Serial No. 87630172 - 4 - 1713, 1721 (Fed. Cir. 2012); see also Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012). We compare Applicant’s mark, VIRTUOSO, to the cited mark, VIRTUOSOS, and find them nearly identical in appearance, sound, and commercial impression. Applicant’s mark consists of the singular version of the plural word that comprises the cited mark. See Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB 1985) (“the word portion of applicant’s mark ‘SEYCOS,’ is virtually the phonetic equivalent of opposer’s ‘SEIKO’ mark and is, in fact, the phonetic equivalent of the plural of opposer’s mark”); see also In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1637 (Fed. Cir. 2016) (“While each trademark must always be evaluated individually, pluralization commonly does not alter the meaning of a mark.”). For consumers who perceive Applicant’s mark as a singular form of VIRTUOSOS, the distinction is not sufficient to prevent likely confusion. See Wilson v. Delaunay, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957); In re Pix of America, Inc., 225 USPQ 691, 692 (TTAB 1985); In re Sarjanian, 136 USPQ 307, 308 (TTAB 1962). Similarly, for consumers who might perceive the VIRTUOSOS mark as a possessive form of Applicant’s VIRTUOSO mark, that too does not suffice to distinguish the marks. See In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009); In re Curtice-Burns, Inc., 231 USPQ 990, 992 (TTAB 1986); Winn’s Stores, Inc. v. Hi-Lo, Inc., 203 USPQ 140, 143 (TTAB 1979). Serial No. 87630172 - 5 - The singular/plural distinction is insignificant in the comparison in this case, as VIRTUOSO and VIRTUOSOS look and sound almost the same, and have nearly the same connotation and commercial impression. See Wilson v. Delaunay, 114 USPQ at 341 (“there is no material difference, in a trademark sense, between the singular and plural forms of the word ‘Zombie’ and they will therefore be regarded here as the same mark”); Swiss Grill Ltd. v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (singular and plural of SWISS GRILL deemed “virtually identical”); Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (SHAPE and SHAPES deemed essentially the same mark). This finding is bolstered by the principle that “marks must be considered in light of the fallibility of memory and not on the basis of side-by-side comparison.” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014). “[T]he average customer, who retains a general rather than specific impression of the marks,” In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018), might not notice the minimal difference of a single “S” at the end of the word, and likely would recollect VIRTUOSO and VIRTUOSOS as the same mark. Given their overall resemblance in appearance, sound, connotation and commercial impression, we find Applicant’s mark and the cited mark highly similar. Thus, the first DuPont factor weighs heavily in favor of a likelihood of confusion. B. The Goods The second DuPont factor addresses the relatedness of the goods. Under the second factor, “likelihood of confusion can be found ‘if the respective goods are related Serial No. 87630172 - 6 - in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.’” Coach Servs., 101 USPQ2d at 1722 (internal citations omitted). In analyzing the relatedness of the goods at issue, we look to the identifications in the application and cited registration. See Detroit Ath., 128 USPQ2d at 1051; Stone Lion Capital Partners v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The cited registration identifies, in relevant part, apparatus for transmission or reproduction of sound, while the subject application identifies a room acoustics enhancement system comprised of signal processors and electric control panels for enhancing the reverberation of a room, auditorium, performing art center, or theater, all exclusive of microphones and speakers. The Examining Attorney contends that Registrant’s goods are broad enough to encompass Applicant’s, and at the very least, they are highly related and complementary. We agree that Applicant’s identified acoustics-enhancement system is a type of apparatus for transmitting and/or reproducing sound, and therefore is included within the goods in the cited registration. “Acoustics” refer to “a science that deals with the production, control, transmission, reception, and effects of sound” as well as to “the qualities that determine the ability of an enclosure (such as an auditorium) to reflect sound waves in such a way as to produce distinct hearing.”3 3 Merriam-webster.com, accessed January 31, 2022 (emphasis added). The Board may take judicial notice of dictionary definitions, including online dictionaries. In re Cordua Rests. LP, Serial No. 87630172 - 7 - “Reverberation” refers to “[t]he act of reverberating[;] the condition of being reverberated,” and “reverberate” is defined as “[t]o resound in a succession of echoes; reecho” and “[t]o be repeatedly reflected, as sound waves….”4 Thus, because Applicant’s identified acoustic-enhancement devices (apparatus) are directed to reverberation, which necessarily involves the transmission and reproduction of sound, Applicant’s goods fall within the scope of the cited registration. On the face of the identifications, the goods overlap, obviating the need for evidence of relatedness, but the Examining Attorney nonetheless submitted some. For example, a Wikipedia entry on “Acoustic Enhancement” describes the three types of acoustic enhancement systems, all of which include microphones as a component.5 While Applicant amended its identification to exclude microphones, the Wikipedia entry indicates that microphones typically are part of acoustic enhancement systems such as those identified in the subject application. Another Wikipedia entry on the VRAS, or Variable Room Acoustics System, corroborates this by describing this type of acoustic enhancement system as employing “multiple microphones distributed around the room.”6 In addition, the website of ACS Acoustic Control Systems promotes its acoustic system integration, noting that its systems use one or a 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). We exercise our discretion to do so here. 4 American Heritage Dictionary, ahdictionary.com, accessed January 31, 2022 (emphasis added). 5 TSDR October 25, 2020 Office Action at 2-3 (Wikipedia.com). 6 TSDR October 25, 2020 Office Action at 5 (Wikipedia.com). Serial No. 87630172 - 8 - combination of software processing modules along with microphones.7 Thus, acoustic enhancement systems such as those that Applicant has identified include microphones such as those identified in the cited registration, and consumers are accustomed to encountering them from a single source, indicating that the goods are related. Barbara’s Bakery, Inc. v. Landesman, 82 USPQ2d 1283, 1286-87 (TTAB 2007) (goods deemed related based on common practice in the industry to include one type of good with the other); see also Octocom Sys., 16 USPQ2d at 1787 (applicant’s OCTOCOM for modems is likely to cause confusion with opposer’s OCTACOMM for computer programs because the products are used in conjunction with each other). We reject Applicant’s argument that while the goods at issue “may be commercially related,” its exclusion of microphones and speakers renders the goods sufficiently distinct to avoid likely confusion. However, for the reasons explained above, certain of the broadly identified goods in the cited registration encompass Applicant’s goods, and others are related. Given this, Applicant’s exclusionary language in its identification is unavailing. Applicant also points to some of the other listed goods in the cited registration, such as CDs and DVDs, and argues that they are distinguishable from Applicant’s goods. However, there is no need to establish relatedness with every good identified in the cited registration, so this argument is unpersuasive. “Likelihood of confusion must be found as to the entire class [of goods identified] … if there is likely to be confusion with respect to any [good or] service that comes within the recitation of 7 TSDR October 25, 2020 Office Action at 8 (acs.eu/acs). Serial No. 87630172 - 9 - [goods or] services in that class.” Primrose Retirement Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1033 (TTAB 2016) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)). Because Applicant’s and Registrant’s goods overlap, they are legally identical, and the record further shows their relatedness. This factor weighs heavily in favor of likely confusion. C. Trade Channels and Classes of Consumers The third DuPont factor addresses the trade channels in which the good travel, and the classes of consumers of such goods. Where, as here, the goods overlap and are legally identical, we therefore presume that they travel through some of the same channels of trade to the same classes of purchasers, considerations under the third DuPont factor. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this legal presumption in determining likelihood of confusion); see also American Lebanese Syrian Assoc. Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011) (where the services were legally identical, “the marketing channels of trade and targeted classes of consumers and donors are the same”); L. & J.G. Stickley, Inc. v. Cosser, 81 USPQ2d 1956, 1971 (TTAB 2007) (“Because the goods of both parties are at least overlapping, we must presume that the purchasers and channels of trade would at least overlap.”). Applicant suggests that its systems “are marketed exclusively to large performance venues, such as auditoriums, performing art centers, and theaters as Serial No. 87630172 - 10 - well as large music schools,” thereby distinguishing its trade channels.8 Applicant’s characterization neglects to mention that its identification includes systems for “rooms,” not merely for large performance venues. To the extent Applicant asks that we narrow the trade channels based on its assertions about the actual marketplace, we cannot do so. We must rely on the identification of goods. Octocom Sys., 16 USPQ2d at 1787; see also In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1165 (TTAB 2013) (“An applicant may not restrict the scope of the goods covered in the cited registration by argument or extrinsic evidence”) (quoting In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008)). Regardless, Applicant also does not indicate how or why the trade channels and purchasers of its acoustic systems for any relevant locations would not also be trade channels and purchasers of “apparatus for recording, transmission or reproduction of sound or images” and “microphones,” as identified in the cited registration. The goods travel in overlapping trade channels to some of the same classes of consumers. Thus, the third DuPont factor weighs heavily in favor of likely confusion. D. Conditions Under Which and Buyers to Whom Sales Are Made The fourth DuPont factor involves “[t]he conditions under which and buyers to whom sales are made, i.e., impulse vs. careful, sophisticated purchasing.” DuPont, 177 USPQ at 567. Although Applicant points to no evidence under this factor, it argues that its customers are knowledgeable and its goods cost “several thousands of 8 6 TTABVUE 7 (Applicant’s Brief). Serial No. 87630172 - 11 - dollars” and “require careful consideration of various factors such as product quality, technical specifications, design features, etc.”9 Without supporting evidence, we decline to assign particular price points or technical specifications to the goods. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) (“Attorney argument is no substitute for evidence.”) (quoting Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005)). Also, “Board precedent requires the decision to be based ‘on the least sophisticated potential purchasers.’” See Stone Lion Capital Partners, 110 USPQ2d at 1163. Applicant’s goods include acoustic enhancement systems for “rooms,” not just performance venues, leaving open the possibility that customers could include individual homeowners interested in high quality audio for music or for home theaters, for example. While such consumers buying systems for rooms would not necessarily be sophisticated and knowledgeable, we can infer from the nature of the goods as identified that they are not ordinary consumer goods. Purchasers generally would exercise at least a slightly elevated degree of care in purchasing. See Elec. Design & Sales Inc. v. Elec. Data Sys. Corp., 954 F.2d 713, 21 USPQ2d 1388, 1392 (Fed. Cir. 1992). On the other hand, as Applicant concedes, purchasers of the goods in the cited registration include ordinary members of the public, exercising an ordinary degree of care.10 9 6 TTABVUE 8-9 (Applicant’s Brief). 10 6 TTABVUE 9 (Applicant’s Brief). Serial No. 87630172 - 12 - III. Conclusion Balancing the DuPont Factors The near identity of the marks for overlapping and related goods that move in some of the same channels of trade to the same classes of customers renders confusion likely, even if customers exercise slightly greater care than usual. Here, given that the marks are VIRTUOSO and VIRTUOSOS, a singular and plural version of the same word, to be used in connection with some of the same goods, even purchasers who exercise care are likely to experience source confusion. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (citing Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human memories even of discriminating purchasers ... are not infallible.”)). Decision: The refusal to register Applicant’s mark is affirmed.