TRADEMARK APPLICATION NO. 78445277 - HI PHI & DESIGN - 55210/489
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`Page 1 of 8
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`
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`To:
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`PANASONIC CORPORATION OF NORTH AMERICA
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`(ptodocket@are1aw.com)
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`Subject:
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`TRADEMARK APPLICATION NO. 78445277 - HI PHI & DESIGN -
`55210/489
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`Sent:
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`2/13/06 4:28:49 PM
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`Sent As:
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`ECOM101@USPTO.GOV
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`Attachments:
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`SERIAL NO:
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`78/445277
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`APPLICANT:
`AIVIERICA
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`PANASONIC CORPORATION OF NORTH
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`CORRESPONDENT ADDRESS:
`MORTON AMSTER, ESQ.
`AMSTER, ROTHSTEIN & EBENSTEIN LLP
`90 PARK AVE
`NEW YORK NY 10016-1301
`
`BEFORE THE
`TRADEMARK TRIAL
`AND APPEAL BOARD
`ON APPEAL
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`MARK:
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`HI PHI & DESIGN
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`CORRESPONDENTS REFERENCE/DOCKET NO: 55210/439
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`CORRESPONDENT EMAIL ADDRESS:
`ptodocket@are1aW.com
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`Please provide in all correspondcnocr
`1. Filing date, serial number, mark and
`applicant's name.
`2. Date ofthis Office Action.
`3. Examining A1tomey's name and
`Law Offioc number.
`4. Your telephone number and e-mail
`address.
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Applicant:
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`Panasonic Corporation of North‘
`America
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`Trademark:
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`HI PHI & DESIGN
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`Serial No:
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`78445277
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`Attomeyz
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`Morton Amster, Esq.
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`Address:
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`Amster, Rothstein, & Ebenstein
`LLP
`90 Park Ave.
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`:
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`:
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`:
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`:
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`2
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`BEFORE THE
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`TRADEMARK TRIAL
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`AND
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`APPEAL BOARD
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`ON APPEAL
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`file://\\ticrs-ais-01\ticrsexport\HtmlToTifiInput\OOA000l2006_02_2 1_1 1_31_11_TTABO... 2/21/2006
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`TRADEMARK APPLICATION NO. 78445277 - HI PHI & DESIGN - 55210/489
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`Page 2 of 8
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`New York, NY 10016-1301
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`EXAMINING ATTORNEY‘S APPEAL BRIEF
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`Applicant has appealed the Trademark Examining Attorney’s final refusal to register the mark HI
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`PHI and design for the goods of car audio speakers on the ground that the mark is confusingly similar to
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`U.S. Registration No. 2483911 for the mark HIFI.COM in standard character fonn to store and mail
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`order services featuring audio electronic components.
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`FACTS
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`On July 2, 2004, applicant Panasonic Corporation ofNorth America applied for a federal trademark
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`registration for HI PHI and design for car audio speakers. In an Office Action mailed February 8, 2005,
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`the examining attorney refused registration of the mark under Trademark Act Section 2(d) on the ground
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`that the mark is confusingly similar to U.S. Registration No. 2483911 for the mark HIFI.COM in
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`standard character fonn to store and mail order services featuring audio electronic components. There
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`were no other issues or requirements in the case. The applicant responded on May 27, 2005, with
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`arguments in favor of registration. After considering the applicant’s arguments carefully, the examiner
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`issued a Final Office Action on June 10, 2005, refusing the mark under Section 2(d). The applicant filed
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`a timely notice of appeal of the Final Refusal.
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`ISSUE
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`The sole issue on appeal is whether the applicant’s mark, when used on or in connection with the
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`identified goods, so resembles the mark in Registration No. 2483911, as to be likely to cause confusion,
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`to cause mistake or to deceive. Trademark Act Section 2(d).
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`ARGUMENT
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`The examining attorney must analyze each case in two steps to determine whether there is a
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`likelihood of confusion. First, the examining attorney must look at the marks themselves for similarities
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`ir1 appearance, sound, connotation and commercial impression. In re E. I. DuPont de Nemours & Co.,
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`476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Second, the examining attorney must compare the goods
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`or services to determine if they are related or if the activities surrounding their marketing are such that
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`TRADEMARK APPLICATION NO. 78445277 - HI PHI & DESIGN — 55210/489
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`Page 3 of 8
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`confusion as to origin is likely. In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re
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`International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products C0,, v.
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`Scott Paper Co., 200 USPQ 738 (TTAB 1978).
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`Any doubt regarding a likelihood of confusion should be resolved in favor of the prior registrant. In
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`re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988)‘, TMEP §§l207.01(d)(i).
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`I. SIMILARITY OF THE IVIARKS
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`Applicant’s mark, HI PHI and design, and the registered mark, HIFI.COM, are confusingly
`similar because they sound highly similar and contain common elements that cast the same
`commercial impression.
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`In determining likelihood of confusion, the examining attorney must compare the marks for
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`similarity in appearance, sound, connotation and commercial impression. In re E. I. DuPont de
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`Nemours & C0,, 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). The marks are compared for similarities
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`in sound, appearance, meaning or connotation. In re E .I. du Pont de Nemours & Co., 476 F.2d 1357,
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`177 USPQ 563 (C.C.P.A. 1973). Similarity in any one of these elements may be sufficient to find a
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`likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1536 (TTAB 1988); In re Lamson Oil
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`Co., 6 USPQ2d 1041, 1043 (TTAB 1987); In re Mack, 197 USPQ 755 (TTAB 1977); TMEP §1207.01
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`(b)-
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`When a mark consists of a word portion and a design portion, the word portion is more likely to be
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`impressed upon a purchaser’s memory and to be used in calling for the goods or services. Therefore, the
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`word portion is nomially accorded greater weight in determining likelihood of confusion. In re Dakin ’s
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`Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553
`(TTAB 1987); Amoco OilAC0. V. Amerco, Inc., 192 USPQ 729
`1976); TMEP §l207.0I(c)(ii).
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`Similarity in sound is one factor in determining whether there is a likelihood of confusion between
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`marks. There is no "correct" pronunciation of a trademark because it is impossible to predict how the
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`public will pronounce a particular mark. Therefore, "correct" pronunciation carmot be relied on to avoid
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`a likelihood of confusion. See, e. g., Kabushiki Kaisha Hattori Tokeiten v. Scuotto , 228 USPQ 461
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`(TTAB 1985) (SEYCOS and design for watches held likely to be confused with SEIKO for watches and
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`TRADEMARK APPLICATION NO. 78445277 - HI PHI & DESIGN - 55210/489
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`Page 4 of 8
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`clocks); In re Great Lakes Canning, Inc. , 227 USPQ 483 (TTAB 1985) (CAYNA (stylized) for soft
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`drinks held likely to be confused with CANA for, inter alia , canned and frozen fruit and vegetable
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`juices); In re Energy Telecommunications & Electrical Association , 222 USPQ 350 (TTAB 1983)
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`(ENTELEC and design for association services in the telecommunication and energy industries held
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`likely to be confused with INTELECT for conducting expositions for the electrical industry); In re
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`Cresco It/Ifg. Co. , 138 USPQ 401 (TTAB 1963) (CRESCO and design for leather jackets held likely to
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`be confused with KRESSCO for hosiery); TMEP § 1207.01(b)(iv). Similarity in sound alone may be
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`sufficient to support a finding of likelihood of confilsion. RE/AIAX ofAmerica, Inc. v. Realty Mart, Inc.,
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`207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In
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`re Cresc0Mfg. Ca, 138 USPQ 401 (TTAB 1963); TMEP §1207.0l(b)(iv).
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`While the two marks in the present case are not identical, enough similarity exists between the
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`applicant’s proposed mark of H1 PHI and design, and the registered mark, HIFI.COM, to cause
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`confusion. The terms “HIFI” and “HI PHI” are dominant in both marks, are phonetic equivalents, and
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`cause the marks to sound alike and cast the same commercial impression.
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`Top-level domains (TLDs), such as “.COM”, are generic locators for Internet website addresses and
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`have no meaningful source identifying significance. See CCBN. com Inc v. C-call.c0m Inc., 73
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`F.Supp.2d 106, 53 USPQ2d 1132, 1136 (D. Mass. 1999) (“[the] “.com”
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`suffix is not arelevant part
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`of the mark, because “com” is a generic locator for domain names of web sites dedicated to commercial
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`use”); Broolqfield Communications, Inc., v. West CoastEntertain. Corp., 174 F.3d 1036, 50 USPQ2d
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`1545 (9th Cir. 1999) (MOVIEBUFRCOM found to be essentially identical to MOVIEBUFF); Hard
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`Rock Café Int ’l v. Morton, 1999 WL 717995 (S.D.N.Y 1999). Thus the TLD appearing in the
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`registrant’s mark would be less significant in creating a commercial impression in the minds of
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`consumers, and should be given little weight in comparing the respective marks. Thus, in this case, the
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`presence of “COM” in the registrant’s mark does little to impress any source significance on the
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`consumer. Rather, by sound and impression, the consumer is highly likely to confuse HIFI.COM as
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`simply a website for H1 PHI.
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`The similarity in sound between the registrant’s and applicant’s proposed marks is buttressed by
`other existing registrations. In the context ofthe other marks including the wording “HIFI,”[l1 the
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`TRADEMARK APPLICATION NO. 78445277 - HI PHI & DESIGN - 55210/489
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`Page 5 of 8
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`registered marks cited by the applicant use non-generic wording in combination with the wording HI FI.
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`This additional, non-generic wording makes an auditory impression on the consumer, which is sufficient
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`to distinguish these existing marks from each other. However, there is no such additional auditory, non-
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`generic component that would distinguish the marks at issue in this case.
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`Applicant argues that the use of the wording PHI, design, and text stylization creates a different
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`impression that distinguishes the applicant’s proposed mark from the registrant’s mark. However,
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`applicant ignores the fact that the registrant’s standard character mark can be written in the same
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`stylization as that used by the applicant. Registration of a mark in typed or standard character form
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`means that the mark may be displayed in any lettering style. 37 C.F.R. §2.52(a). The rights associated
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`with a mark in typed or standard character form reside in the wording itself, and registrant is free to
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`adopt any style of lettering, including lettering identical to that used by applicant. Therefore, applicant’s
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`presentation of its mark in special form will not avoid likelihood of confusion with a mark that is
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`registered in typed or standard character form because the marks presumably could be used in the same
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`manner of display. See In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In re Pollio Dairy Prods.
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`Corp., 8 USPQ2d 2012 (TTAB 1988); Sunnen Prods. Co. v. Sunex Int ’l Inc., 1 USPQ2d 1744, 1747
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`(TTAB 1987); In re Hester Indus., Inc., 231 USPQ 881, 882, n.6 (TTAB 1986); United Rum Merchants,
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`Ltd. V. Fregal, Inc., 216 USPQ 217 (TTAB 1982); Frances Denney, Inc. v. Vive Parfums, Ltd., 190
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`USPQ 302 (TTAB 1976); See also TMEP §1207.01(c)(iii).
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`Applicant additionally argues that the proposed mark creates an impression that the goods, car audio
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`speakers, have a classic, timeless quality, in the tradition and grandeur of ancient Greece, which would
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`distinguish the applicant’s and registrant’s marks. This impression invoking ancient Greece in
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`connection with car audio speakers is pure conjecture. Rather, consumers are used to seeing Greek
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`letters used in a wide variety of ways, including as mathematical symbols and fraternity letters.
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`[ENG
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`evidence has been presented showing why consumers would perceive this “ancient Greece” impression
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`from the applicant’s proposed mark. Based on the evidence of record, consumers would be highly
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`unlikely to perceive a connection with ancient Greece. Thus, there is no impression created that
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`distinguishes the applicant’s proposed mark from the registrant’s mark.
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`Applicant finally argues that the registrant’s mark is weak. Even if applicant has shown that the cited
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`TRADEMARK APPLICATION NO. 78445277 - HI PHI & DESIGN - 55210/489
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`Page 6 of 8
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`mark is “weak,” such marks are still entitled to protection against registration by a subsequent user of
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`the same or similar mark for the same or closely related goods or services. See Hollister Incorporated v.
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`[dent/l Pet, Inc., 193 USPQ 439 (TTAB 1976) and cases cited therein.
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`Therefore the marks, HIFI.COM, and HI PHI and design will create the same commercial
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`impression in the eyes of consumers, who are likely to confuse the marks as originating from the same
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`source.
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`I].
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`SLMILARITY OF THE GOODS AND SERVICES
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`The applicant’s goods are highly likely to be sold through the registrant’s retail store and mail
`order services, which would confuse consumers about their source.
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`The second step in determining whether there is a likelihood of confusion is to compare the goods or
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`services to determine if they are related or if the activities surrounding their marketing are such that
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`confusion as to origin is likely. In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re
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`International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v.
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`Scott Paper Co., 200 USPQ 738 (TTAB 1978).
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`Consumers are likely to be confused by the use of similar marks on or in connection with goods and
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`with services featuring or related to those goods. See In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6
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`USPQ2d 1025 (Fed. Cir. 1988) (BIGG’S for retail grocery and general merchandise store services held
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`confusingly similar to BIGGS for fiirniture); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985)
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`(CAREER IMAGE (stylized) for retail women’s clothing store services and clothing held likely to be
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`confused with CREST CAREER IMAGES (stylized) for uniforms); In re United Service Distributors,
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`Inc., 229 USPQ 237 (TTAB 1986) (design for distributorship services in the field of health and beauty
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`aids held likely to be confused with design for skin cream); In re Phillips-Van Heusen Corp, 228 USPQ
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`949 (TTAB 1986) (21 CLUB for various items of men’s, boys’, girls’ and women’s clothing held likely
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`to be confused with THE “21” CLUB (stylized) for restaurant services and towels); Steelcase Inc. v.
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`Steelcare Inc., 219 USPQ 433 (TTAB 1983) (STEELCARE INC. for refinishing of furniture, office
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`fumiture, and machinery held likely to be confused with STEELCASE for office fumiture and
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`accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (use of similar
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`marks for trucking services and on motor trucks and busses is likely to cause confusion).
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`TRADEMARK APPLICATION NO. 78445277 - HI PHI & DESIGN - 55210/489
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`Page 7 of 8
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`A determination of whether there is a likelihood of confiasion is made solely on the basis of the goods
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`and/or services identified in the application and registration, without limitations or restrictions that are
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`not reflected therein. In re Dakin ’s Miniarures Inc., 59 USPQ2d 1593, 1595 (TTAB 1999). Ifthe cited
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`registration describes the goods and/or services broadly and there are no limitations as to their nature,
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`type, channels of trade or classes of purchasers, then it is presumed that the registration encompasses all
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`goods and/or services of the type described, that they move in all normal channels of trade, and that they
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`are available to all potential customers. In re Linkvest SA, 24 USPQ2d 1716 (TTAB 1992); In re
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`Elbaum, 211 USPQ 639 ('I'I‘AB 1981); TMEP §1207.01(a)(iii).
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`In this case, the goods and services are highly related because the applicant’s goods would be sold
`through the registrant’s retail store and mail order services featuring audio electronic components, and
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`the goods and services would be encountered by the same consumers in the same channels of trade.
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`Dictionary evidence was provided in the Final Office Action of June 10, 2005, showing that a
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`component is simply part of something. The registrant’s identification of audio electronic components
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`necessarily includes car audio speakers because the speakers would just be a component of a car audio
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`system. Evidence in the nature of websites describing car audio systems including car audio speakers
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`was also provided in the Final Office Action of June 10, 2005. The applicant’s goods, car audio
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`speakers, area component of car audio systems. The registrant’s services necessarily include the sale of
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`car audio components, and the registrant could sell the applicant’s goods. Thus, the goods and services
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`in this case are highly related, and highly likely to be encountered together in the marketplace.
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`Applicant argues that the consumers are sophisticated, and would not confuse the source ofthe goods
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`and the services. However, even if the purchasers in this case were considered “sophisticated,” the fact
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`that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that
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`they are sophisticated or knowledgeable in the field oftrademarks or immune from source confusion.
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`See In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Pellerin Itlilnor Corp., 221 USPQ 558 (TTAB
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`1983); TMEP‘ §1207.0l(d)(vii).
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`Therefore, because the goods and services in this case are highly related and have the same charmels
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`of trade, consumers are highly likely to be confused about the source of the goods and the services.
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`TRADEMARK APPLICATION NO. 78445277 - HI PHI & DESIGN — 55210/489
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`Page 8 of 8
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`CONCLUSION
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`The refusal for likelihood of confusion with the mark in U.S. Registration Number 2483911 should
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`be upheld. The dominant portions of the marks in this case are highly similar in sound and commercial
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`impression. The goods and services are highly related, and highly likely to cause confusion because
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`consumers would encounter them used together in the market place. On balance, because the marks are
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`highly similar in sound and impression, and the goods and services are highly related, confusion is
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`likely. Thus, the Examining Attomey’s refusal to register the applicant’s proposed mark should be
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`upheld.
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`Respectfully submitted,
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`/Joanna M. Dukovcicl
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`Trademark Examining Attorney
`Law Office 101
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`Phone: (571) 272-9707
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`Ronald R. Sussman
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`Managing Attorney
`Law Office — 101
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`Phone: (571) 272-9696
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`Lu See applicant’s Response to First Office Action, dated May 27, 2005, pp. 8-9.
`21 See dictionary definitions for various Greek letters, including PHI, and third-party registrations showing Greek letters
`used to indicate a source of fraternity and professional organizations, presented in the Final Office Action dated June 10,
`2005.
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