TTAB
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`55210/489
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`Ifi THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
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`Applicant:
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`Panasonic Corporation of North America, formerly known as Matsushita
`Electric Corporation of America1
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`“Express Mail” mailing label No.: EV 721350227 US
`Date of Deposit: December 23, 2005
`I hereby certify that this paper or fee is being
`deposited with the United States Postal Service
`“Express Mail" service under 37 CFR 1.10 on the date
`indicated above and is addressed to the Commissioner
`for Trademarks, P.0. Box 1451, Alexandria, VA 22313-
`1451Na
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`Senal NO’ '
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`Filed:
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`July 2, 2004
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`Mark:
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`HI PHI 8: Design
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`Examining
`Attorney 2
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`.John Dwyer
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`Law Office:
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`116
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`Attn: TTAB
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`Commissioner for Trademarks
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`P.O. Box 1451
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`Alexandria, VA 22313-1451
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`BRIEF FOR APPELLANT
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`Panasonic Corporation of North America (“Applicant”) submits this Brief
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`on Appeal, pursuant to 37 C.F.R. § 2.142, appealing from the Office Action dated June
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`10, 2005 finally refusing registration of Applicant’s mark HI PHI & Design (“Applicant’s
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`Mark”)
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`fo:r use in connection with car audio speakers under Section 2(d) of the
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`Trademark. Act. Applicant’s Notice of Appeal, along with a check in the sum of $100.00,
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`was submitted on October 27, 2005, within the time limit set by 37 C.F.R. § 2.142.
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`1 Applicant changed its name from Matsushita Electric Corporation of America to Panasonic Corporation of
`North America effective January 1, 2005. The Name Change was recorded on January 26, 2005 at
`Reel/Frame 30 1 6/0418.
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`3301401
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`llllllllllllllllllllllllllllllllllllllllllllllllll
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`12-22-2005
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`u.s. Patent 5 TMOfcITM Mail Rap! 01- #35
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`The Examining Attorney refused registration of Applicant’s Mark under
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`Section 2(d) of the Trademark Act on the grounds that it is likely to be confused with
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`Registration No. 2,483,911 for the mark HIFI.COM covering retail store and mail order
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`services featuring audio electronic components (the “Cited Mark”).
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`Applicant maintains that confusion is not likely due to differences in the
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`sight, sound and meaning of the respective marks, and differences between the goods
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`and services covered by the marks, taking into consideration consumer sophistication.
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`This Brief is submitted in triplicate. Applicant hereby waives oral
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`argument.
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`ARGUMENT
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`1.
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`Applicants Mark Is Not Confusingly Similar To the Cited Mark
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`The longstanding two-part test to determine whether there is a likelihood
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`of confusion between marks was set forth many years ago in In re Dupont de Nemours &
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`Co., Inc., 476 F.2d 1357 (C.C.P.A. 1977). The test first looks at the marks themselves for
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`similarities in appearance, sound, connotation and commercial impression, and second,
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`requires that the Examining Attorney compare the goods or services to determine if they
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`are related. or if the activities surrounding their marketing are such that confusion is
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`likely.
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`In determining whether a mark is likely to be confused with another, the
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`marks must be considered in their entireties and not judged by their individual
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`components. Rodeo Collection v. West Seventh, 812 F.2d 1215, 1218 (9th Cir. 1987); In
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`re Bed & Breakfast Registry, 791 F.2d 157 (Fed. Cir. 1986); Sears Mortgage Corp. v.
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`Northeast Savings F.A., 24 U.S.P.Q.2d 1227 (T.T.A.B. 1992); Franklin Mint Corp. v.
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`Master Mfg. Co., 667 F.2d 1005, 1007 (C.C.P.A. 1981).
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`Use of identical, even dominant words in common does not automatically
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`mean that two marks are confusingly similar. See General Mills, Inc. v. Kellogg Co., 824
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`F.2d 622, 627 (8th Cir. 1987), citing Freedom Sav. & Loan Ass’n v. Way, 757 F.2d 1176,
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`1183 (1st Cir. 1985). In the words of the prominent trademark scholar J. McCarthy:
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`under the overall impression analysis, there is no rule that
`confusion is automatically likely if a junior user has a mark
`which contains in part the whole of another’s mark.
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`J. McCarthy, Trademarks and Unfair Competition § 23:41 at 91 (4th Ed). For example,
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`the Court of Customs and Patent Appeals reversed the Trademark Trial and Appeal
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`Board’s refusal to register applicant’s mark TIC TAC based upon a prior registration for
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`TIC TAC TOE. The Court held that “the Board has made too much of the indisputable
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`fact that TIC TAC is two thirds of TIC TAC TOE.” In re Ferrero, 479 F.2d 1395, 1397
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`(C.C.P.A. 1973).
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`Due to the differences in the sight, sound and commercial
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`impression
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`between Applicant’s Mark and the Cited Mark, as well as the differences between the
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`respective good and services, it is submitted that confusion as to the source of origin is
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`not likely.
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`(1)
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`Applicant’s Mark is Not Similar In Appearance to the Cited Mark
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`Applicant’s highly stylized Mark, with its dominant PHI symbol
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`in the
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`center and its very unusual lettering, is vastly difference in appearance from the single
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`word, HIFLCOM, of the Cited Mark. Upon encountering Applicant’s Mark, the consumer
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`is clearly drawn, like a bulls eye, to the Greek symbol, which resembles an oval circle
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`330140.]
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`with a capita.l I in the middle. Smith v. Ames Dept. Stores, Inc., 988 F. Supp. 827, 840
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`(D.N.J. 1997) (“the large design is unquestionably the dominant portion of [p1aintiff]’s
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`logo.’’).
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`The fact that this symbol separates the two word elements, HI and PHI,
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`further decreases the significance of these elements as the recognized term “HI PHI.”
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`Contributing to this effect is the fact that each of the two “H”s in Applicant’s Mark could
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`easily be viewed as an arbitrary design, as opposed to the letter “H,” due to the relative
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`distance between the vertical lines of the letter and the relative shortness of each such
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`line, as well as the extension of the horizontal line beyond the point of intersection with
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`the two Vertical lines. See King of the Mountain Sports, Inc. v. Chrysler Corp., 185 F.3d
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`1084, 1090
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`(10th Cir. 1999)
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`(marks not similar in part because plaintiffs mark
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`appeared in distinctive gothic lettering).
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`The Marks are further distinguished since Applicant’s Mark does not
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`contain the .COM element which appears in the Cited Mark, and uses a “PH”, instead of
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`an “F.”
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`Accordingly, when the Marks are viewed in their entireties, it is clear that
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`they are distinguishable.
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`(2)
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`Applicant’s Mark is Not Similar in Sound to the Cited Mark
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`Applicant’s Mark is phonetically distinguishable from the Cited Mark.
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`Applicant’s Mark contains the Greek symbol, PHI, and therefore, is pronounced HI PHI
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`PHI, as opposed to simply HI PHI. The Marks are further distinguishable because the
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`Cited Mark contains the additional elements DOT COM, which immediately advises
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`consumers of the Internet nature of the services provided under the Mark. See Bell Lab.
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`Inc. v. Colonial Prods. Inc., 644 F. Supp. 542 (S.D. Fla. 1986) (FINAL FLIP does not sound
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`like FINAL, for similar pest control products); Echo Drain v. Newsted, 307 F. Supp.2d
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`1116,
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`1126 (C.D. Cal. 2003) (no likelihood of confusion between “Echo Drain” and
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`“Echobrain,”
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`in part “[b]ecause ‘brain’ and ‘drain’ are different words and are
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`phonetically different, [and therefore] the two marks also sound different”).
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`(3)
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`The Connotation and Commercial Impression of the Marks are
`Different
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`Confusion will not be found if the commercial impressions created by the
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`parties’ respective marks are different. See Champagne Louis Roederer, S.A. v. Delicato
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`Vineyards, 148 F.3d 1373, 1375 (Fed. Cir. 1998)
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`(while “CRISTAL” for champagne
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`suggested the clarity of the wine within the bottle, “CRYSTAL CREEK” for wine
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`suggested "‘a very clear (and hence probably remote from civilization) creek or stream”);
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`Taj Mahal Enterprises, Ltd. v. Trump, 745 F. Supp. 240, 248 (D. N.J. 1990)
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`(in the
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`context of a restaurant, TAJ MAHAL “may simply be indicative of Indian cuisine and a
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`general Indian motif” whereas, as applied to a casino hotel, “TAJ MAHAL may indicate
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`grandeur, opulence and extravagance”; no confusion found).
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`In the instant case, the connotation and commercial impression established
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`by Applican.t’s Mark is not similar to the commercial impression created by the Cited
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`Mark.
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`Applicant’s Mark focuses on tradition, and the grandeur of ancient Greece.
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`Specifically, Applicant’s use of the Greek symbol “PHI” as the dominant portion of its
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`Mark conveys to consumers that Applicant’s car audio speakers have a classic, timeless
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`quality. This is reinforced by the abundance of vertical lines in the word portions of
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`Applicant’s Mark, which resemble the pillars which are seen in Classic Greek
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`architecture, as well as the use of the word element PHI (meaning the Greek letter).
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`The commercial impression of the Cited Mark could not be more different.
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`Rather than focusing on tradition and the ancient classics, use of the “.com” element
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`clearly focuses on the late 20th/early 21st century, and advises consumers that the
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`services covered by the Mark are provided through the Internet.
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`Based on the foregoing, it is clear that Applicant’s Mark has a different
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`commercial impression than the Cited Mark, and therefore, there is no likelihood of
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`confusion.
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`(-4)
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`There Is No Likelihood of Confusion Between The Goods Covered By
`Applicant’s Mark and The Services Provided Under the Cited Mark
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`Several cases have found confusion unlikely between a service mark on the
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`one hand and a trademark on the other. See Lloyd's Food Products, Inc. v. Eli's, Inc., 987
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`F.2d 766, 769 (Fed, Cir. 1993) (mere fact that similar, or even identical marks are used
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`in connection with food products on the one hand, and restaurant services on the other,
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`is not enough to find that confusion is likely); Zazu Designs v. L’Oreal S.A., 24 U.S.P.Q.2d
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`1828 (7th Cir. 1988) (no likelihood of confusion between hair salon services and hair
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`care products); In re Hair Masters Services Inc., 17 U.S.P.Q.2d 1335 (Fed. Cir. 1990) (no
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`likelihood of confusion between hair cutting, styling and nail care services on the one
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`hand, and hair tonic on the other).
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`Based on the foregoing, because Applicant’s Mark is used in connection
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`with products - namely, car audio speakers - while the Cited Mark is used in connection
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`with retail store and mail order services, confusion is not likely.
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`(5)
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`Since The Term “HI-Fl “ Is Descriptive and Is Used In Many Third
`Party Registrations In Connection With Consumer Electronics, The
`Likelihood Of Confusion Is Greatly Reduced
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`The Trademark Trial and Appeal Board and the courts have recognized
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`that merely descriptive and weak designations may be entitled to a narrower scope of
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`protection than an entirely arbitrary or coined word. T.M.E.P. Sec. 1207.01(b) (ix).
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`Registration on the Supplemental Register establishes that, “at least at the time of
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`registration, the registered mark possessed a merely descriptive,” and therefore, that the
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`mark is weak. Id. (citations omitted).
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`in the instant case,
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`the Cited Mark is registered on the Supplemental
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`Register, and therefore,
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`is presumed to be merely descriptive and entitled to only a
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`narrow scope of protection. This is underscored by the fact that there are a number of
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`third party registrations which contain the HI FI element and are used in connection
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`with consumer electronics products? See American Hospital Supply Corp. v. Air Products
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`and Chemicals,
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`Inc., 194 U.S.P.Q. 340 (T.T.A.B. 1977)
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`(explaining that third-party
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`registrations may be used to show that “the term or feature common to the marks has a
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`normally understood meaning or suggestiveness in the trade and that, accordingly,
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`2 The Registrations are: (1) Registration No. 2,389,806 of September 26, 2000 for the mark MAGNOLIA
`HI-FI for retail store services featuring consumer electronics;(2) Registration No. 2,564,235 of April 23,
`2002 for the mark HIFI WORKS for in wall audio speakers and in ceiling audio speakers; (3) Registration
`No. 2,191,623 of September 22, 1998 for the mark HIFI FILTRATION BASS REFLEX SPEAKER 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 of June 4,
`1985 for the mark BETA HI—FI for stereo video tape cassette recorders; and (5) Registration No. 2,471,323
`of July 24, 2001 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. Copies of print-outs of these Registrations
`taken from the electronic search records of the United States Patent and Trademark Office are attached as
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`Exhibit A to Applicant’s Response of May 26, 2005.
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`consumers have learned to distinguish various marks which incorporate the common
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`term.”).
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`Based on the foregoing, Applicant’s Mark, which is dominated by the Greek
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`symbol PHI and contains distinctive type face and unconventional spelling, is not likely
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`to cause confusion with the weak, merely descriptive Cited Mark.
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`(6)
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`Confusion Is Unlikely Since Consumers Are Sophisticated
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`Confusion is not likely where the purchasers of the goods/services at issue
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`are sophisticated. Courts have specifically found consumers of electronic products to be
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`sophisticated. M & G Electronics Sales Corp. v. Sony Kabushiki Kaisha, 250 F. Supp.2d
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`91, 104 (E.D.N.Y. 2003) (purchasers of electronic products are sophisticated); Pignons
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`S.A. de Mecanique de Precision V. Polaroid Corp., 657 F.2d 482, 489 (1st Cir. 1981)
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`(purchasers of cameras are sophisticated); Touch Tel Corp. v. Airtouch Communications,
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`TTAB LEXIS 313 (T.T.A.B. July 9, 1999) (consumers of cell phones sophisticated).
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`Accordingly, consumer
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`sophistication weighs against a finding that
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`confusion is likely.
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`CONCLUSION
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`For the foregoing reasons, Applicant requests that the Board overrule the
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`refusal to register Applicant’s Mark based on a likelihood of confusion with the Cited
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`Mark.
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`Respectfully submitted,
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`AMSTER, ROTHSTEIN and EBENSTEIN LLP
`Attorneys for Applicant
`90 Park Avenue
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`New York, New York 10016
`(212)336-8000 (telephone)
`(212) 336-8001 (fax)
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`Dated: New York, New York
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`By:
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`:7’ 2
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`December 23, 2005
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`Morton Amster
`Holly Pekowsky
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`330l40.1