throbber
THIS OPINION IS NOT CITABLE
` AS PRECEDENT OF
`
`THE T.T.A.B.
`
`Mailed: August 3, 2006
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________
`
`Trademark Trial and Appeal Board
`________
`
`In re Panasonic Corporation of North America
`________
`
`Serial No. 78445277
`_______
`
`Morton Amster of Amster, Rothstein & Ebenstein LLP for
`Panasonic Corporation of North America.
`
`Joanna M. Dukovcic, Trademark Examining Attorney,
`Law Office 101 (Ronald R. Sussman, Managing Attorney).
`_______
`
`Before Rogers, Kuhlke and Cataldo, Administrative Trademark
`Judges.
`
`Opinion by Cataldo, Administrative Trademark Judge:
`
`
`An application was filed by Panasonic Corporation of
`
`North America to register the mark shown below on the
`
`Principal Register for “car audio speakers.”1
`
`
`1 Application Serial No. 78445277, filed July 2, 2004 by
`Matsushita Electric Corporation of America, based on applicant’s
`allegation of a bona fide intent to use the mark in commerce.
`Applicant recorded its subsequent name change to Panasonic
`Corporation of North America with the Assignment Branch of this
`Office on January 26, 2005 at Reel 3016/Frame 0418.
`
`

`
`Ser No. 78445277
`
`
`
`
`
`The trademark examining attorney refused registration
`
`under Section 2(d) of the Trademark Act on the ground that
`
`applicant’s mark, as intended to be used in connection with
`
`applicant’s goods, so resembles the mark HIFI.COM,
`
`previously registered in standard character form on the
`
`Supplemental Register for “retail store and mail order
`
`services featuring audio electronic components”2 as to
`
`result in confusion as to the source of those goods and
`
`services.
`
`
`
`When the refusal was made final, applicant appealed.
`
`Applicant and the examining attorney have filed briefs. An
`
`oral hearing was not requested.
`
`
`
`Applicant argues that the separation of the two word
`
`elements in its mark by the Greek PHI symbol “decreases the
`
`significance of these elements as the recognized term ‘HI
`
`PHI’”; that the letter “H” as it appears in applicant’s
`
`mark “could easily be viewed as an arbitrary design” due to
`
`the stylized depiction thereof; that applicant’s mark does
`
`
`2 Registration No. 2483911, issued August 28, 2001. We note that
`at the time of issuance of the cited registration, a mark
`appearing in standard character form was identified by the term
`“typed drawing.”
`
`
`2
`
`

`
`Ser No. 78445277
`
`not contain the “.COM” element of registrant’s mark; and
`
`that, as a result, its “highly stylized” mark, “with its
`
`dominant PHI symbol in the center and its very unusual
`
`lettering,” differs in appearance from the mark in the
`
`cited registration. (Applicant’s brief, page 4) Applicant
`
`further argues that its mark is pronounced “HI PHI PHI” and
`
`thus is different in sound from registrant’s mark.
`
`Applicant argues in addition that its mark “focuses on
`
`tradition, and the grandeur of ancient Greece” and thus
`
`“conveys to consumers that Applicant’s car audio speakers
`
`have a classic, timeless quality;” (Applicant’s brief, page
`
`5) that, in contrast, the mark in the cited registration
`
`“clearly focuses on the late 20th/early 21st century, and
`
`advises consumers that the services covered by the Mark are
`
`provided through the Internet;” (Id.) and that, as a
`
`result, applicant’s mark has a different commercial
`
`impression from that of the mark in the cited registration.
`
`Applicant asserts that because its mark is intended to be
`
`used on goods and the cited mark is used on services,
`
`confusion is not likely as to the source thereof; that
`
`because the cited mark is registered on the Supplemental
`
`Register, it is weak and entitled only to a narrow scope of
`
`protection; that in addition, there exists a number of
`
`third party registrations containing the term “HI FI” for
`
`3
`
`

`
`Ser No. 78445277
`
`consumer electronic products; and that due to the
`
`sophistication of the relevant consumers, confusion is
`
`unlikely as to the source of applicant’s goods and
`
`registrant’s services.
`
`
`
`The examining attorney maintains that the dominant
`
`portion of applicant’s mark is the wording “HI PHI”; that
`
`the dominant portion of registrant’s mark is the wording
`
`“HIFI”; that the wording “.COM” in registrant’s mark has no
`
`source identifying function; that, as a result, the
`
`dominant portions of the involved marks are phonetic
`
`equivalents that sound alike and “cast the same commercial
`
`impression.” (Examining attorney’s brief, page 4) The
`
`examining attorney further maintains that because the cited
`
`mark is registered in standard character form, it may be
`
`displayed in identical stylized lettering to that of
`
`applicant’s mark. The examining attorney maintains in
`
`addition that the marks in the third party registrations
`
`relied upon by applicant contain additional, non-generic,
`
`wording that distinguishes those marks from each other; but
`
`that “there is no such additional auditory, non-generic
`
`component that would distinguish the marks at issue in this
`
`case” from each other. (Examining attorney’s brief, page
`
`5) The examining attorney argues that consumers are
`
`accustomed to encountering Greek characters in a variety of
`
`4
`
`

`
`Ser No. 78445277
`
`ways; that applicant has introduced no evidence to support
`
`its contention that the Greek lettering in its mark
`
`suggests any connotation with ancient Greece; and that, as
`
`a result, the lettering fails to distinguish applicant’s
`
`mark from that in the cited registration. The examining
`
`attorney also argues that even if the mark in the cited
`
`registration is found to be weak, it is still entitled to
`
`protection against registration by a subsequent user of the
`
`same or similar mark for closely related goods or services.
`
`The examining attorney further argues that applicant’s “car
`
`audio speakers” are a component of electronic audio
`
`systems; that applicant’s goods thus may be made available
`
`through registrant’s services; that neither the involved
`
`application nor the cited registration is limited as to
`
`channels of trade; that, as a result, the goods and
`
`services recited therein are presumed to move in normal
`
`channels of trade, and are available to all potential
`
`customers; and that even if consumers of applicant’s goods
`
`and registrant’s services are sophisticated, they are not
`
`immune from confusion as to the source thereof.
`
`Applicant contends in reply that the mark in the cited
`
`registration is registered on the Supplemental Register and
`
`thus is deemed merely descriptive; that the examining
`
`attorney did not require a disclaimer of any portion of
`
`5
`
`

`
`Ser No. 78445277
`
`applicant’s mark, nor registration on the Supplemental
`
`Register; that, as a result, the examining attorney “has
`
`implicitly recognized the different impressions” created by
`
`the marks. (Applicant’s reply brief, page 3) Applicant
`
`further contends that the mark in the cited registration is
`
`no longer in use.3
`
`Before turning to the substantive ground for refusal,
`
`we note that applicant has submitted several exhibits with
`
`its reply brief. These exhibits consist of printouts from
`
`applicant’s Internet website as well as third-party
`
`Internet websites; a copy of a December 22, 2003 article
`
`from Twice magazine; a printed comparison of applicant’s
`
`mark and the mark in the cited registration; and a printout
`
`from a third-party Internet website corresponding to the
`
`domain name hifi.com. We find that these exhibits are
`
`
`3 With its reply brief, applicant submitted an exhibit in support
`of its assertion that the cited mark is no longer in use. First,
`and as explained in greater detail infra, such evidence is
`untimely. Furthermore, Section 7(b) of the Trademark Act
`provides that a certificate of registration on the Principal
`Register shall be prima facie evidence of the validity of the
`registration, of the registrant’s ownership of the mark and of
`the registrant’s exclusive right to use the mark in commerce in
`connection with the goods or services specified in the
`certificate. During ex parte prosecution, an applicant will not
`be heard on matters that constitute a collateral attack on the
`cited registration, as is the case herein. See In re Dixie
`Restaurants, 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); and
`In re Peebles Inc., 23 USPQ2d 1795, 1797 n. 5 (TTAB 1992). Thus,
`we have given no consideration to applicant’s remarks in this
`regard.
`
`
`
`6
`
`

`
`Ser No. 78445277
`
`manifestly untimely, and they have not been considered.
`
`See Trademark Rule 2.142(d) (the record in the application
`
`should be complete prior to the filing of an appeal). We
`
`note, however, that had we considered these exhibits in our
`
`determination of the issue on appeal, the result would be
`
`the same.
`
`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). See
`
`also In re Dixie Restaurants Inc., supra.
`
`First, we turn to the second du Pont factor, i.e., the
`
`similarity or dissimilarity between the parties’ recited
`
`goods and services. In making our determination, we look
`
`to the goods and services as identified in the involved
`
`application and cited registration. See Octocom Systems,
`
`Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
`
`7
`
`

`
`Ser No. 78445277
`
`USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is
`
`legion that the question of registrability of an
`
`applicant’s mark must be decided on the basis of the
`
`identification of goods set forth in the application
`
`regardless of what the record may reveal as to the
`
`particular nature of an applicant’s goods, the particular
`
`channels of trade or the class of purchasers to which the
`
`sales of goods are directed.”) See also Paula Payne
`
`Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
`
`76, 77 (CCPA 1973) (“Trademark cases involving the issue of
`
`likelihood of confusion must be decided on the basis of the
`
`respective descriptions of goods.”)
`
`In this case, applicant’s goods, identified as “car
`
`audio speakers,” would appear on their face to be related
`
`to registrant’s “retail store and mail order services
`
`featuring audio electronic components.” The examining
`
`attorney has made of record with her final Office action a
`
`dictionary entry in which “component” is defined, inter
`
`alia, as “a constituent part: INGREDIENT”4 in support of
`
`her argument that “car audio speakers” are an “audio
`
`electronic component.” In addition, the examining attorney
`
`has submitted with her first and final Office actions
`
`
`4 Merriam-Webster Online Dictionary, available at http://www.m-
`w.com.
`
`8
`
`

`
`Ser No. 78445277
`
`articles retrieved from Internet web pages indicating that
`
`audio speakers for cars are made available by means of
`
`electronic retail services. As such, the record in this
`
`case tends to support a finding that applicant’s goods are
`
`related to registrant’s services. See discussion in In re
`
`Gerhard Horn Investments Ltd., 217 USPQ 1181, 1182 (TTAB
`
`1983). However, although we must presume that applicant's
`
`goods may be sold in retail stores featuring audio
`
`electronic components or by a mail order service featuring
`
`such goods, we do not presume that registrant would
`
`purchase and sell applicant's goods and thereby create
`
`confusion (assuming that the marks are similar enough that
`
`such an arrangement would result in consumer confusion).
`
`In short, while the goods and services are related, we
`
`disagree with the examining attorney's contention that
`
`confusion might result from registrant's sale of
`
`applicant's goods. Nor do we find it reasonable to
`
`conclude that consumers familiar with registrant's services
`
`would, upon subsequently being confronted with applicant's
`
`goods for sale, assume that registrant had expanded its
`
`business to include the manufacture and sale of its own
`
`brand audio components. First, there is no evidence of
`
`record to support such as a natural expansion of
`
`registrant's business. Second, if registrant were to begin
`
`9
`
`

`
`Ser No. 78445277
`
`to manufacture its own brands of components, it seems
`
`logical that it would sell them in their own stores or
`
`through their own mail order service, not through others.
`
`This is not a case like Gerhard Horn, supra, in which a
`
`likelihood of confusion was found because the identical and
`
`arbitrary mark was used for "retail women's clothing store
`
`services" and "woven and knit fabrics of cotton, acrylic
`
`and polyester," so that consumers would assume some
`
`connection "coming upon applicant's services and
`
`registrant's goods, even in separate retail locations or
`
`through differing channels of trade." Gerhard Horn, 217
`
`USPQ at 1182.
`
`We turn now to the first du Pont factor, i.e., whether
`
`applicant’s mark and the mark in the cited registration are
`
`similar or dissimilar when compared in their entireties in
`
`terms of appearance, sound and connotation. The test,
`
`under this du Pont factor, is not whether the marks can be
`
`distinguished when subjected to a side-by-side comparison,
`
`but rather whether the marks are sufficiently similar in
`
`terms of their overall commercial impression that confusion
`
`as to the source of the goods and services offered under
`
`the respective marks is likely to result. The focus is on
`
`the recollection of the average purchaser, who normally
`
`retains a general rather than a specific impression of
`
`10
`
`

`
`Ser No. 78445277
`
`trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
`
`USPQ 106 (TTAB 1975). Furthermore, although the marks at
`
`issue must be considered in their entireties, it 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 USPQ 749 (Fed. Cir. 1985).
`
`In this case, we note that applicant’s mark is similar
`
`to the cited mark in appearance to the extent that both
`
`begin with the identical wording “HI” and respectively
`
`contain the related wording “FI” and “PHI.” However, the
`
`marks are dissimilar in appearance in that applicant’s mark
`
`prominently contains the Greek “phi” symbol in its center,
`
`separating the wording “HI” and PHI.” A potential consumer
`
`viewing applicant’s mark will be drawn first to the “phi”
`
`symbol, displayed in large size and bold presentation,
`
`prior to noticing the wording. Even consumers unfamiliar
`
`with the Greek alphabet and thus unaware of the meaning of
`
`the “phi” symbol would be drawn to what they would perceive
`
`as a prominent design element in the center of the mark.
`
`As such, the Greek “phi” symbol is the dominant portion of
`
`applicant’s mark, and its presence therein renders
`
`applicant’s mark notably dissimilar from that of registrant
`
`11
`
`

`
`Ser No. 78445277
`
`in appearance. The marks are further dissimilar in
`
`appearance in that the mark in the cited registration
`
`contains the wording “.COM,” which is absent from
`
`applicant’s mark.
`
`With regard to sound, we note that applicant’s mark is
`
`similar to the mark in the cited registration in that
`
`“HIFI” is essentially identical in pronunciation to “HI
`
`PHI.” Moreover, we find no support for applicant’s
`
`contention that its mark would be pronounced “HI PHI PHI,”
`
`but consider it rather more likely that consumers would
`
`pronounce the wording “HI PHI” and not pronounce the Greek
`
`letter in the center of the mark. However, the marks are
`
`dissimilar in sound due to the presence of “.COM” in
`
`registrant’s mark. Thus, regardless of whether applicant’s
`
`mark is pronounced “HI PHI” or “HI PHI PHI,” it differs in
`
`sound from registrant’s mark, which is pronounced “HI FI
`
`DOT COM.” In the examining attorney’s analysis,
`
`registrant’s mark has been treated as if the “.COM” portion
`
`would be ignored, treatment we find inappropriate. Even
`
`disclaimed or descriptive matter in a mark must be
`
`considered in assessing similarity of the marks.
`
`With regard to the overall impression conveyed by the
`
`marks, we note that the meaning or connotation of a mark
`
`must be determined in relation to the recited goods or
`
`12
`
`

`
`Ser No. 78445277
`
`services. See In re Sears, Roebuck and Co., 2 USPQ2d 1312
`
`(TTAB 1987); and In re British Bulldog, Ltd., 224 USPQ 854
`
`(TTAB 1984). In this case, applicant’s mark is similar to
`
`that of registrant in that both convey the notion of high
`
`fidelity audio equipment. However, the marks are
`
`dissimilar in that the top level domain locator “.COM” in
`
`registrant’s mark strongly conveys the availability of
`
`registrant’s services via the Internet. Furthermore, the
`
`presence of the “phi” symbol in applicant’s mark conveys to
`
`those who recognize it some Greek connotation, whether that
`
`is a timeless quality as argued by applicant or a
`
`mathematical significance, as suggested by the examining
`
`attorney.
`
`In addition, applicant relies upon several third-party
`
`registrations to demonstrate that the term “HI-FI” or
`
`“HIFI” for audio-related goods or services is very weak,
`
`and thus afforded a narrow scope of protection. Third-
`
`party registrations can be used as a form of a dictionary
`
`definition to illustrate how a term is perceived in the
`
`trade or industry. See In re J.M. Originals Inc., 6 USPQ2d
`
`1393, 1394 (TTAB 1987). “Such third party registrations
`
`show the sense in which the word is used in ordinary
`
`parlance and may show that a particular term has
`
`descriptive significance as applied to certain goods or
`
`13
`
`

`
`Ser No. 78445277
`
`services.” See Institut National Des Appellations
`
`D’Origine v. Vintners International Co., 958 F.2d 1574, 22
`
`USPQ2d 1190, 1196 (Fed. Cir. 1992). As shown by
`
`applicant’s evidence, the term “HIFI” or “HI-FI” has been
`
`regarded as merely descriptive in a number of third-party
`
`marks, the registrations of which largely include
`
`disclaimers of the term “HIFI” or “HI-FI” or appear on the
`
`Supplemental Register. See General Mills Inc. v. Health
`
`Valley Foods, 24 USPQ2d 1270, 1277 (TTAB 1972). Here, we
`
`find the evidence persuasive to show that “HIFI” or “HI-FI”
`
`is a weak term as applied to audio components and services
`
`related thereto. See Registration No. 2,389,806 for the
`
`mark MAGNOLIA HI-FI (HI-FI disclaimed) for “retail store
`
`services featuring consumer electronics;” (2) Registration
`
`No. 2,564,235 for the mark HIFI WORKS (HIFI disclaimed) for
`
`“in wall audio speakers and in ceiling audio speakers;” (3)
`
`Registration No. 2,191,623 for the mark HIFI FILTRATION
`
`BASS REFLEX SPEAKER (Supplemental Register; HIFI and BASS
`
`REFLEX SPEAKER disclaimed) for “audio apparatus, namely,
`
`combined radio receiver, cassette deck, compact disc
`
`player, mini disc player-recorder, amplifier and speaker
`
`system; and mini disc players/recorders;” (4) Registration
`
`No. 1,339,790 for the mark BETA HI-FI (Supplemental
`
`Register; HI-FI disclaimed) “for stereo video tape cassette
`
`14
`
`

`
`Ser No. 78445277
`
`recorders;” and (5) Registration No. 2,471,323 for the mark
`
`HERHIFI.COM for “retail store, on-line retail store and
`
`mail-order services, all featuring audio electronic and
`
`video equipment and accessories, satellite television
`
`receiving equipment and accessories, cameras, telephones
`
`and electronic clocks.”
`
`Based upon the foregoing, we find that the
`
`dissimilarities between applicant’s mark and the mark in
`
`the cited registration outweigh the similarities,
`
`particularly given the weakness of the common element. See
`
`King Candy Co. v. Eunice King’s Kitchen, Inc., 182 USPQ
`
`108, 110 (CCPA 1974). See also Colgate-Palmolive Co. v.
`
`Carter-Wallace, Inc., 432 F.2d 1400, 167 USPQ 529 (CCPA
`
`1970); and Sure-fit Products Co. v. Saltzson Drapery Co.,
`
`254 F.2d 158, 117 USPQ 295 (CCPA 1958). Thus, the first du
`
`Pont factor regarding the similarity of the marks favors
`
`applicant.
`
`Thus, we find that despite the facial relatedness of
`
`the goods and services, opportunities for confusion in the
`
`marketplace may actually be more limited than a first
`
`glance at the respective identifications might suggest, and
`
`the marks are sufficiently dissimilar, particularly in view
`
`of the very weak nature of the common elements HIFI and HI
`
`15
`
`

`
`Ser No. 78445277
`
`PHI, that confusion is not likely between applicant’s mark
`
`and the mark in the cited registration.
`
`Decision: The refusal to register is reversed.
`
`16

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket