Bose Corp.v.GoldWave Inc.

Trademark Trial and Appeal Board

Feb 25, 2008

No. 91165449 (T.T.A.B. Feb. 25, 2008)

Oral Hearing: Decision Mailed:
October 24, 2007 February 25, 2008
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Bose Corp.
v.
GoldWave Inc.
_____

Opposition No. 91165449 to application Serial No. 78413775
filed on May 5, 2004
_____

Amy L. Brosius, Charles Hieken and Cynthia Johnson Walden of Fish
& Richardson P.C. for Bose Corp.

Marsha G. Gentner of Jacobson Holman PLLC for GoldWave Inc.
______

Before Hohein, Taylor and Mermelstein, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

GoldWave Inc. has filed an application to register the
mark "GoldWave" in standard character form on the Principal
Register for "computer software for audio editing" in
International Class 9.1
Bose Corp. has opposed registration on the ground that
it is the owner of valid and subsisting registrations for the

1 Ser. No. 781413775, filed on May 5, 2004, which is based on an
allegation of a date of first use anywhere and in commerce of May 1,
1993.

THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Opposition No. 91165449
2
following marks and goods which it "uses and/or has used, since
long prior to May 1, 1993":
(i) the mark "WAVE," which is registered
for "radios, clock radios, audio tape
recorders and players, portable radio and
cassette recorder combinations, compact
stereo systems and portable compact disc
players" in International Class 9;2

(ii) the mark "ACOUSTIC WAVE," which is
registered for "loudspeaker systems" in
International Class 93 and "loudspeaker
systems and music systems consisting of a
loudspeaker system and amplifier and at least
one of a radio tuner, compact disc player and
audio tape player" in International Class 9;4

(iii) the mark "WAVESYNC," which is
registered for "radio controllers, namely,
controllers for remotely establishing
predetermined settings in radios in rooms
having occupants frequently changed, such as
hotel rooms, sold through channels including
those selling to renters of such rooms, such
as hotels for the purpose of clearing
settings in radios set by occupants who have
vacated the rooms" in International Class 9;5
and

2 Reg. No. 1,633,789, issued on the Principal Register on February 5,
1991, which sets forth a date of first use anywhere and in commerce of
September 25, 1989; renewed. However, in accordance with TBMP
§704.03(b)(1)(A) (2d ed. rev. 2004), it is noted that on January 3,
2008, opposer filed a request pursuant to Section 7(e) of the
Trademark Act to amend the registration to restrict the goods
identified therein to: "radios, clock radios, compact stereo systems
and portable compact disc players."

3 Reg. No. 1,338,571, issued on the Supplemental Register, on May 28,
1985, which sets forth a date of first use anywhere and in commerce of
February 1, 1984; renewed.

4 Reg. No. 1,764,183, issued on the Principal Register, under the
provisions of Section 2(f) of the Trademark Act, on April 13, 1993,
which sets forth a date of first use anywhere and in commerce of
February 1, 1984; renewed.

5 Reg. No. 2,493,186, issued on the Principal Register on September 25,
2001, which sets forth a date of first use anywhere and in commerce of
September 1999; affidavit §8 filed.

Opposition No. 91165449
3
(iv) the mark "WAVE/PC," which is
registered for a "sound reproducing system
comprised of a radio, electronic interface
for coupling the radio to a computer, and
computer software for controlling the signal
transmission between the radio and the
computer" in International Class 9;6

and that applicant's "GOLDWAVE mark, as applied to '[c]omputer
software for audio editing[,]' so resembles the previously used
and registered WAVE, ACOUSTIC WAVE, WAVESYNC and WAVE/PC marks of
Opposer, as used in connection with Opposer's goods, as to be
likely to cause confusion or cause mistake, or to deceive."
Applicant, in its answer, has admitted that, as shown
by the certified copies thereof which accompany the opposition,
opposer is the owner of its pleaded registrations and that such
registrations are valid and subsisting. Applicant has denied,
however, the remaining salient allegations of the opposition.7
The record consists of the pleadings, including the
above-noted certified copies of opposer's pleaded registrations;
the file of the involved application; the testimony with exhibits
of opposer's Category Business Manager for its "WAVE" product
line, Mr. Santiago Carvajal; and the testimony with exhibits of
applicant's president, Mr. Christopher Craig. While only opposer

6 Reg. No. 2,552,385, issued on the Principal Register on March 26,
2002, which sets forth a date of first use anywhere and in commerce of
November 9, 2000.

7 While, under the rubric of "AFFIRMATIVE DEFENSES," applicant has also
pleaded that the opposition "fails to state a claim upon which relief
can be granted" and "is barred by the doctrines of laches, waiver
and/or estoppel," no further consideration will be given to such
allegations inasmuch as they are not only insufficiently pleaded but,
in any event, are lacking in any evidentiary support in the record.

Opposition No. 91165449
4
filed a brief, both parties were represented by counsel at the
oral hearing.
With the exception of its "WAVE/PC" mark, priority of
use is not in issue in this proceeding since, as shown by the
certified copies of opposer's pleaded registrations on the
Principal Register for its other three marks and as admitted by
applicant in its answer, such registrations are subsisting and
owned by opposer. See King Candy Co. v. Eunice King's Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). Opposer's
ownership thereof, moreover, serves to establish its standing to
bring this proceeding. Id.
However, as to opposer's "WAVE/PC" mark, while its
pleaded registration on the Principal Register for such mark,
based upon the certified copy thereof and as admitted by
applicant in its answer, is likewise shown to be subsisting and
owned by opposer, the prima facie presumptions otherwise afforded
the registration8 have been rebutted inasmuch as the following
testimony of opposer's witness on cross-examination conclusively
establishes, as of the August 18, 2006 date of his deposition, a
prima facie case of opposer's abandonment9 of the "WAVE/PC" mark:

8 Under Section 7(b) of the Trademark Act, "[a] certificate of
registration of a mark upon the principal register ... shall be prima
facie evidence of the validity of the registered mark and of the
registration of the mark, of the registrant’s ownership of the mark,
and of the registrant’s exclusive right to use the registered mark in
commerce on or in connection with the goods or services specified in
the certificate, subject to any conditions or limitations stated in
the certificate."

9 Section 45 of the Trademark Act defines "abandonment of mark" in
relevant part as follows (emphasis added):

A mark shall be deemed to be "abandoned" if ... the
following occurs:
Opposition No. 91165449
5
Q. Now, Mr. Carvajal, are the Wave/PC
devices sold in the U.S.?

A. Currently?

Q. Yes.

A. No. We don't sell that product at
this time.

Q. Again, you said it is not sold any
longer at this time?

A. That is correct.

Q. Since when was it no longer sold in
the U.S. marketplace?

A. We discontinued the product in
2002.

Q. And when was the Wave/PC product
last manufactured for market consumption by
Bose Corporation?

A. Also 2002.

(Carvajal Dep. at 60-61.) In view thereof, we have given no
evidentiary value to opposer's pleaded registration for its
"WAVE/PC" mark and have given no further consideration to such
mark with respect to the claim of priority of use and likelihood
of confusion. See, e.g., Reed Tool Co. v. Litton Industrial
Products, Inc., 225 USPQ 880, 881 (TTAB 1985) ["[s]ince opposer's
testimony reveals that opposer is no longer making or selling
these products, ... the prima facie presumption of use of the
mark on these goods listed in opposer's registration is

(1) When its use has been discontinued with intent not to
resume such use. Intent not to resume may be inferred from
circumstances. Nonuse for 3 consecutive years shall be
prima facie evidence of abandonment. "Use" of a mark means
the bona fide use of such mark made in the ordinary course
of trade, and not made merely to reserve a right in a mark.

Opposition No. 91165449
6
considered rebutted and no evidentiary value is accorded to that
registration with respect to those goods"]; Airport Canteen
Services, Inc. v. Farmer's Daughter, Inc., 184 USPQ 622, 626
(TTAB 1974) [while a party may not challenge the validity of an
adverse party's registration absent a petition to cancel such
registration, "Board can, when there is conclusive evidence that
the registered mark has not been used at time the application was
filed or for a number of years thereafter on or in connection
with the goods ... recited in the registration, refuse to accord
any evidentiary value to the registration in determining the
question of likelihood of confusion or even the question of prior
rights"]; and Gates Rubber Co. v. Western Coupling Corp., 179
USPQ 186, 190 (TTAB 1973) [section 7(b) presumptions "are prima
facie presumptions and are therefore rebuttable" and thus "it has
been held that while a party may not challenge the validity of a
registration in the absence of a petition to cancel, he may
introduce evidence or rely on evidence adduced by the registrant
to rebut the presumption of broad use of the registered mark and
thereby to restrict use of the mark to those goods in connection
with which it has actually been used," but "the evidence to be
effective must be conclusive in character"]. In any event, it is
additionally noted that opposer in its brief does not even
mention its "WAVE/PC" mark in connection with its claim of
priority of use and likelihood of confusion and, thus, plainly
appears to be no longer relying thereon.
Moreover, with respect to its "WAVESYNC" mark, opposer
not only likewise makes no mention thereof in its brief, but it
Opposition No. 91165449
7
did not present any testimony at trial concerning the products
associated with such mark so as even to attempt to establish any
relatedness, in a commercial sense, between those goods and
applicant's goods. Specifically, it is clear in this regard
that, on their face, opposer's "radio controllers, namely,
controllers for remotely establishing predetermined settings in
radios in rooms having occupants frequently changed, such as
hotel rooms, sold through channels including those selling to
renters of such rooms, such as hotels for the purpose of clearing
settings in radios set by occupants who have vacated the rooms"
are distinctively different from and unrelated to applicant's
"computer software for audio editing." In view thereof, we find
that there is no likelihood of confusion from contemporaneous use
by the parties of their respective "WAVESYNC" and "GoldWave"
marks, thereby leaving consideration of opposer's "ACOUSTIC WAVE"
and "WAVE" marks and the goods associated therewith as the focus
of whether there is a likelihood of confusion with applicant's
"GoldWave" mark for its goods.
According to the record, Mr. Carvajal is the "Category
Business Manager" for opposer's "Wave" line of products, which
consists of the following three major products: The "Acoustic
Wave Music System," the "Wave Music System" and the "Wave Radio."
(Carvajal dep. at 7-8.) The "Acoustic Wave Music System," which
opposer markets under the mark "ACOUSTIC WAVE," was first
marketed in 1984 and "is basically a self-contained music system"
which currently "has a CD player," "an AM/FM tuner" and "a
connection for external components." (Id. at 9.) Such product
Opposition No. 91165449
8
is described in a press release issued by opposer for the latest
version thereof as "an elegant, all-in-one stereo system that
produces deep, rich base from a very small enclosure, thanks to
patented, award-winning waveguide speaker technology" that "is
based on controlled interaction of acoustical waves with a moving
surface." (Carvajal dep. Exh. 3.) Consisting of a unit
"[m]easuring about 10 inches high (18" wide and 6" deep)," such
press release further states that the latest version of "the
Acoustic Wave music system includes a full-featured CD player,
AM/FM stereo tuner with 10 presets, and all the speaker,
amplification and equalization technology to fill a room with
sound" and "options [which] include a pedestal with inputs for
VCR, cassette deck or other music source and [a] microphone for
use as a portable public address system." (Id.) The original
version of the "ACOUSTIC WAVE" product, Mr. Carvajal testified,
"had a tape deck on top" because, back then, "there were no CDs."
(Id. at 15.) He also noted that it was an update thereof known
as the "Series II [which] had a CD player on top" and that the
current version known as the "Series III ... added a remote
control." (Id.)
According to Mr. Carvajal, the consumers for opposer's
"ACOUSTIC WAVE" product are "anyone who loves music." (Id. at
13.) He also maintains, in his testimony about such product,
that "[p]eople refer to it as the Wave machine, the Wave,
Acoustic Wave," although "Wave is what people know the most about
the product" due to "the Acoustic Wave Guide Technology ...
[that] makes the product possible." (Id. at 10.) While the
Opposition No. 91165449
9
exact sales figures for the "ACOUSTIC WAVE" product have been
designated as confidential, suffice it to say that since 1984
opposer has sold over half a million units thereof, reflecting a
sales volume of over half a billion dollars.10 Opposer sells its
"ACOUSTIC WAVE" music system primarily through such consumer
sales channels as its own website and catalog, its toll-free
telephone number, and its factory direct retail stores, of which
it has over 100 such outlets. It also sells the product through
other catalog retailers, such as consumer audio and video
equipment dealers like Crutchfield and in-flight airline gift
catalogs like SkyMall. Still other sales are made through
premium incentive channels in which opposer "sell[s] to large
companies who use these products as ... [sales incentives for]
their employees." (Id. at 14.)
Opposer uses print advertising, such as in magazines
and newspapers, as its "biggest area" of product promotion. (Id.
at 16.) In this regard, opposer favors publications "like U.S.A.
Today, Parade where the readership is very, very large." (Id. at
17.) Opposer also utilizes "some broadcast advertising," such as
radio ads, as well as direct mail and what it calls "single sheet
inserts," which constitute "advertising that gets delivered to
you in your mail."11 (Id.) Opposer additionally advertises on

10 It is noted, however, that instead of submitting a redacted copy of
its brief in order to protect the confidentiality of its sales figures
as so designated in the deposition transcript, opposer's brief sets
forth such amounts, along with the amounts designated in the
deposition transcript as its confidential advertising and promotional
expenditures, in full. See TBMP §801.03 (2d ed. rev. 2004).

11 According to Mr. Carvajal, direct mail differs from single sheet
inserts in that "[d]irect mail is where you have a package that you
Opposition No. 91165449
10
its own website and "on what we call an affiliate website" such
as Amazon.com. (Id.) Other advertising includes its own full
line product catalog and third-party catalogs like the previously
mentioned Crutchfield and SkyMall, along with exhibiting at trade
shows such as the Consumer Electronics Show in Las Vegas.
Promotion of opposer's products also occurs through technical
reviews thereof published in a variety of consumer periodicals.
In his testimony, Mr. Carvajal also noted that opposer,
as an accessory item, at one time offered "the multi-media
pedestal[,] which was a product that let the Acoustic Wave Music
System be connected to multiple devices." (Id. at 23.) Among
other things, he testified in this regard that:
We ... know that the most popular thing
that people connect to our Acoustic Wave
Music System is the television. So that
[way] people that want to get better sound
from their television, they connect it to
their Acoustic Wave, and some people connect
MP3 players. And we know people that even
connect computers to the Acoustic Wave Music
System to get better sound from the computer.

(Id.) The multi-media pedestal, he further noted, became "very,
very popular for us" following its introduction "probably in late
'90s, 1999 or something like that." (Id.) Opposer had such
accessory "in the market for a few years until we introduced the
CD changer" model of its "ACOUSTIC WAVE" product, which replaced
the functionality that had been offered by the multi-media
pedestal. (Id.)

send to a targeted person that we have in our database" while
"[s]ingle sheet inserts go to large lists that we buy or we obtain
[in] different ways." (Carvajal dep. at 17.)

Opposition No. 91165449
11
With respect to opposer's "WAVE" radio products, Mr.
Carvajal testified that the original "WAVE" radio was introduced
in 1993. In 1999, opposer introduced the "Wave Radio CD," which
like its original "WAVE" radio, is "basically a much smaller
version of the Acoustic Wave Music System that was designed more
for smaller rooms ... like bedrooms ... [and] kitchens where you
maybe have trouble fitting the large product." (Id. at 29.)
Stated in round numbers (due to their nominally confidential
nature),12 opposer has sold since the introduction thereof several
million units of its "WAVE" radio products, including the "Wave
Radio CD" model, representing a sales volume of over a billion
and a half dollars. Like the initial "ACOUSTIC WAVE" music
system, the original "WAVE" radio allowed a compact disc player
or, as also in the case of the later CD model, a cassette
recorder, to be connected thereto as an alternative source of
music and both models likewise permitted a television set to be
plugged in so as to improve the quality of the TV sound.
Opposer targets essentially the same kind of consumers
for its "WAVE" radios as it does with respect to its "ACOUSTIC
WAVE" music system products, with the difference being the price
of the goods. According to Mr. Carvajal, "[t]he Acoustic Wave
Music System sells for [$]1079, and the Wave Radio/CD sells for
[$]499" or "about half the price" of the former. (Id. at 32.)
He also testified that, in selling its "WAVE" radios, opposer
"use[s] the exact same channels of trade as [for] the Acoustic
Wave Music System," namely, "our website, our phones through the

12 See footnote 10.
Opposition No. 91165449
12
800 number, our factory direct retail stores and catalogs, [and]
our premium incentive channel." (Id. at 32-33.) Moreover, he
added that "because the volume of sales of this product is so
much higher because of the price point [differential], we do
considerably more advertising on the Wave Radio and Wave CD than
we do on the Acoustic Wave Music System." (Id. at 38.) The
various kinds of advertising, however, are basically the same,
with advertising of opposer's "WAVE" radios taking place through
press reviews and radio programs, broadcast advertising, catalog
advertising, advertisements in newspapers and national magazines
such as Parade and Sports Illustrated, other print advertising
and direct mail advertising. In fact, it appears that both
opposer's "ACOUSTIC WAVE" music systems and its "WAVE" radios are
frequently advertised together. Again, while stated in round
figures (due to their nominally confidential nature),13 opposer
has expended over several hundred million dollars combined in
advertising both its "ACOUSTIC WAVE" music systems and its "WAVE"
radios.
Although the "Wave Radio CD" "quickly ... became the
most popular product" for opposer following its introduction in
1999, opposer upgraded such product in 2004 by replacing it with
its "WAVE" music system. (Id. at 42.) Among other things,
opposer "added MP3 CD playback so that customers could burn MP3
CDs and play them through the Wave Music System." (Id.) Its
website, in advertising such product feature, specifically
invites customers to "[l]isten to CDs created on your computer

13 Ibid.
Opposition No. 91165449
13
and take full advantage of the new digital MP3 format to enjoy
hours of uninterrupted Wave® music system quality sound."
(Carvajal dep. Exh. 20.) In addition, according to Mr. Carvajal:
The Wave Music System went to an entirely new
platform which is all digital. Everything is
done in the digital domain. So the
equalization, the sound processing,
everything is ... done in its software
instructions as opposed to physical
components.

(Carvajal dep. at 44.) He noted, moreover, that "the development
of the Wave Music System also developed a new platform for the
Wave Radio." (Id.) Known as "the Wave Radio II," such product
"had the better sound and all the new features" of the Wave Music
System, with "the only difference ... [being] that the Wave Radio
[II] does not play CDs." (Id. at 45.) For instance, like the
"WAVE" music system, opposer's website advertises among other
things that "[a]n auxiliary jack lets you use your Wave® radio II
for lifelike sound with your iPod or MP3 player, computer, TV or
DVD player." (Carvajal dep. Exh. 16.)
Other than applicant, which he claimed to have learned
about from opposer's counsel on the day before his testimony, Mr.
Carvajal stated on cross-examination that he was not aware of any
companies that use the word "wave" in identifying their products.
While applicant's witness, Mr. Christopher Craig, testified to a
few third-party uses of terms containing the word "wave," as well
as to technical definitions of such word, the extent of the use
of the former was not indicated and none of those uses pertains
to audio products such as loudspeakers and radios. At best, as
to descriptive uses, the record discloses that in the computer
Opposition No. 91165449
14
software field certain sound files having the extension ".wav"
are known as "wave files."
With respect to applicant, the record shows that it is
a Canadian corporation incorporated in Newfoundland and Labrador
on January 5, 2001. Applicant is in the audio editing software
business and its president, director and principal shareholder is
Mr. Christopher Craig, who founded applicant and also develops
all the software which applicant sells under the mark "GoldWave."
Prior to applicant's incorporation, its predecessor in title to
the mark "GoldWave" was Mr. Craig, who owned such mark from its
first use on May 1, 1993 until applicant's incorporation in early
2001. In promoting its mark, applicant does not use television,
radio or magazine ads; instead, it advertises the goods which it
sells thereunder solely on the Internet, including principally
its website. Mr. Craig testified that he selected the mark
"GoldWave" because the word "wave" refers to the development in
the mid 1980s or thereabouts of a standard by Microsoft and IBM
for storing audio in files on a computer, which "became known as
the RIFF wave standard," and the term "gold" "often represents
quality." (Craig dep. at 5.)
Applicant's "GoldWave" software is "a digital audio
editor" (id. at 5), which according to Mr. Craig:
It can manipulate audio. It's similar to a
word processor, in some respects, where you
can copy and paste words around. With this
program you can copy and paste sections of
audio sound. You can add special effects
like echo and reverb and noise reduction,
similar things like that. But the program
can do much more than that. It can convert
audio, it can restore it, it can record it,
Opposition No. 91165449
15
analyse [sic] it and do all the things that a
typical audio editor wouldn't be able to do.

(Id. at 5-6.) Similarly, the "GoldWave Digital Audio Editor," as
stated in the printout from applicant's "main web site," which
site also "provides a bunch of links for product purchasing or to
download the trial version or customer support" and "mentions
that the product has been in use for over 10 years with
widespread usage" (id. at 19), is touted as follows (emphasis in
original):
GoldWave is a top rated, professional digital
audio editor. It contains so many great
features, you will be amazed by all the
things it can do:

• Play, edit, mix and analyze audio
• Record audio from cassettes, vinyl
records, radio, etc. through your
computer's line in
....
• Record and edit audio for podcasting
• Apply special effects, such as fade,
equalizer, doppler, mechanize, echo,
reverse, flanger, and more
• Digitally remaster and restore old
recordings with noise reduction and
pop/click filters
• Make perfect digital copies of audio
CD tracks ... and save them in wav,
wma, mp3 or ogg files
• Edit music for dance programs, figure
skating, gymnastics
....
• Convert files to/from different
formats, such as wav, wma, mp3, ogg,
aiff, au, vox and even raw binary
data
....

GoldWave is the most advanced and complete
audio editor available in its price range.
It includes all of the common audio editing
commands and effects, plus powerful built-in
tools such as a batch processor/converter, a
CD reader, and audio restoration filters that
Opposition No. 91165449
16
cost extra in other similar programs.
Comprehensive, easy to use, and efficiently
engineered, GoldWave offers the best value in
audio editing software. With over 10 years
of development and widespread usage, it has
an excellent and unmatched track record.

Try the fully functional evaluation version
... of GoldWave.

(Craig dep. Exh. A-13.)
Applicant, in addition to the "GoldWave Digital Audio
Editor," also presently sells the "GoldWave Voice plug-in,"
although details of the latter product were not provided. (Craig
dep. at 9.) Applicant sells its "GoldWave" products "pretty much
exclusively through the internet," that is, on-line, and by mail
order directly from applicant; it does not sell its software in
computer stores, department stores or mass merchandisers like
Wal-Mart, on television shopping channels, or at trade shows.
(Id. at 10.) As to the cost per unit of its "GoldWave" software,
Mr. Craig testified that "[e]ach license costs $45 U.S." (Id. at
26.) Such software, however, appears to be marketed as a form of
shareware in that a download for trial evaluation is free while a
license is offered for other usages. Although confidential, in
terms of units thereof, the average number of downloads of
"GoldWave" software on a monthly basis is in the neighborhood of
roughly six figures; however, there is no indication as to the
level of actual sales in general or sales in the United States in
particular. Finally, Mr. Craig also noted that applicant does
not sell loudspeakers, radios or CD systems, and stated that he
has never been contacted by anyone searching for opposer's
products.
Opposition No. 91165449
17
Upon consideration of the pertinent factors set forth
in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973), for determining whether there is a
likelihood of confusion herein, we find that confusion is likely
inasmuch as each of such factors either favors opposer or is
neutral; none favors applicant. In particular, starting with the
du Pont factor of the fame of the prior marks, the evidence of
record establishes that both opposer's "ACOUSTIC WAVE" mark and
its "WAVE" mark are famous for their respectively associated
audio products. While as shown, for instance, by opposer's
registrations for its "ACOUSTIC WAVE" mark on the Supplemental
Register and on the Principal Register under the provisions of
Section 2(f) of the Trademark Act, as well as the fact that
certain sound files having the extension ".wav" are known as
"wave files," the terms "acoustic wave" for loudspeakers and
"wave" for, inter alia, radios, compact stereo systems and
portable compact disc players initially had only a merely
descriptive significance in relation to the respective goods,
such terms have through longstanding extensive use and widespread
promotion thereof not only acquired distinctiveness, but the
marks "ACOUSTIC WAVE" and "WAVE" have become famous in the
marketplace for audio equipment.
As stated by our principal reviewing court in Bose
Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303,
1305-06 (Fed. Cir. 2002):
Direct evidence of fame, for example
from widespread consumer polls, rarely
appears in contests over likelihood of
confusion. Instead, our cases teach that the
Opposition No. 91165449
18
fame of a mark may be measured indirectly,
among other things, by the volume of sales
and advertising expenditures of the goods
traveling under the mark, and by the length
of time those indicia of commercial awareness
have been evident. ....

....

In this case, Bose sought to prove the
fame of its marks by reference to the volume
of sales and advertising expenses of the
products it sells and has sold under the
ACOUSTIC WAVE and WAVE marks. It also sought
to anchor the significance of those
commercial indicia of fame with the record
evidence of many widely-distributed critical
assessments of the marked products that
greeted their arrival in the marketplace and
continued thereafter.

Based upon its review of such evidence, the court found that:
In this case, the sales and advertising
numbers for ACOUSTIC WAVE and WAVE have to be
seen both in the context of how the products
are presented in the advertising and sales
material (here with sufficient independence
from the famous [BOSE] house mark) and in the
context of the continuous and extensive
critical consideration the marked products
have enjoyed. The record, described above,
gives evidence that the consuming public has
been exposed frequently and nationwide to
extensive descriptions of the two products.
In these contexts, the sales and advertising
numbers, our historic indicia of fame, are
bolstered by overwhelming evidence of
confirmatory context ....

When the full record is considered, only
one conclusion can be reached regarding the
fame of the Bose product marks: they are
famous and thus entitled to broad protection.

Likewise, and inasmuch as the record recounted herein contains
even more evidence of the extensive public recognition and renown
of opposer's "ACOUSTIC WAVE" and "WAVE" marks than that described
in detail in QSC Audio Products, supra at 63 USPQ2d 1306-07, we
Opposition No. 91165449
19
are inexorably lead to the same conclusion, specifically, that
such marks are indeed famous.
Furthermore, as noted by our principal reviewing court
in Kenner Parker Toys Inc. v. Rose Art Industries Inc., 963 F.2d
350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992), cert. denied, 506
U.S. 862, 113 S.Ct. 181 (1992), "the fifth duPont factor, fame of
the prior mark, plays a dominant role in cases featuring a famous
or strong mark. Famous or strong marks enjoy a wide latitude of
legal protection." The Federal Circuit reiterated these
principles in Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d
1894, 1897 (Fed. Cir. 2000), stating that "the fifth DuPont
factor, fame of the prior mark, when present, plays a 'dominant'
role in the process of balancing the DuPont factors," citing,
inter alia, Kenner Parker Toys, supra at 22 USPQ2d 1456, and
reaffirmed that "[f]amous marks thus enjoy a wide latitude of
legal protection." This factor, therefore, weighs heavily in
favor of opposer.
Turning next to consideration of the similarity or
dissimilarity of the respective marks in their entireties as to
appearance, sound, connotation and commercial impression, we find
that this du Pont factor also favors opposer. Here, due to the
shared presence of the word "wave," applicant's "GoldWave" mark
incorporates the entirety of opposer's famous "WAVE" mark and a
significant portion of its famous "ACOUSTIC WAVE" mark (which
according to the record consumers sometimes shorten to just
"WAVE"), thereby creating a substantial similarity between the
respective marks, especially in view of the suggestiveness
Opposition No. 91165449
20
inherent in the terms "gold" and "acoustic." As analogously
stated by our principal reviewing court in QSC Audio Products,
supra at 63 USPQ2d 1311, in finding the mark "POWERWAVE" for
amplifiers and power amplifiers confusingly similar to the mark
"WAVE" for, inter alia, "radios, clock radios, compact stereo
systems and portable compact disc players" and the mark "ACOUSTIC
WAVE" for loudspeaker systems and music systems consisting of a
loudspeaker system, an amplifier and a radio tuner and/or compact
disc player:
The presence of the root element WAVE
... introduces a strong similarity in all
three marks. Whatever additional distinction
may be introduced by the element of POWER in
the ... POWERWAVE mark is severely limited by
the fact that the mark is applied to acoustic
equipment, namely amplifiers. For this
reason, the overall commercial impression
engendered by the use of the POWERWAVE mark
also carries a strong connotation of sound
waves, corresponding to the Board's findings
with respect to ACOUSTIC WAVE and WAVE. Any
examination of the record before the Board
reveals that the "wave" portion of the Bose
marks refers to sound and the unique way in
which it is manipulated in the Bose products
to produce the end product, sound. "Wave"
thus has meaning, and in this instance the
newcomer, QSC, seeks to nestle close to the
fame-benefited Bose marks.

....

On the record before us, we conclude
that a proper evaluation of the similarities
of the QSC and Bose marks in their entireties
weighs in favor of a finding of a likelihood
of confusion.

The same is likewise true in this case. While the term
"gold" adds a laudatory element to applicant's "GoldWave" mark
which is absent from opposer's "WAVE" and "ACOUSTIC WAVE" marks,
such a difference is nonetheless severely limited by the fact
Opposition No. 91165449
21
that applicant's mark is applied to "computer software for audio
editing," a product which the record shows can edit, among other
things, wave files or sound recordings for transfer to and
playback from CDs or compact discs. In view thereof, the overall
commercial impression engendered by use of the "GoldWave" mark
also carries a strong connotation of sound waves, corresponding
to the sound waves suggested by the term "wave" in connection
with the sound reproduction products marketed under opposer's
"ACOUSTIC WAVE" and "WAVE" marks, including the unique way in
which such products manipulate sound waves to produce the end
result of high fidelity sound. The word "wave" thus has meaning,
in terms of its audio or sound significance, in relation to both
applicant's product as well as opposer's goods. In consequence
thereof, the marks at issue herein are so substantially similar
in overall sound, appearance, connotation and commercial
impression that, if used in connection with the same or related
goods, confusion as to the source or sponsorship of such products
would be likely to occur. The factor of the similarity between
the parties' marks accordingly favors opposer.
With respect to the du Pont factor of the similarity or
dissimilarity and nature of the goods as described in the opposed
application or in connection with which a prior mark is in use,
it is well settled that the goods at issue in a proceeding such
as this need not be identical or directly competitive in order
for there to be a likelihood of confusion. It is sufficient,
instead, that the goods at issue are related in some manner
and/or that the circumstances surrounding their marketing are
Opposition No. 91165449
22
such that they would be likely to be encountered by the same
persons under situations that would give rise, because of the
marks employed in connection therewith, to the mistaken belief
that they originate from or are in some way associated with the
same producer or provider. See, e.g., In re Martin's Famous
Pastry Shoppe, Inc., 748 F.2d 156, 223 USPQ 1289, 1290 (Fed. Cir.
1984); Dan Robbins & Associates, Inc. v. Questor Corp., 599 F.2d
1009, 202 USPQ 100, 104 (CCPA 1979) ["marks need not be used on
directly competing goods, any relation likely to lead purchasers
into assuming a common source being sufficient"]; Monsanto Co. v.
Enviro-Chem Corp., 199 USPQ 590, 595-96 (TTAB 1978); In re
International Telephone & Telegraph Corp., 197 USPQ 910, 911
(TTAB 1978).
In this case, while opposer's goods are audio products
used for reproducing sound and applicant's product is computer
software for audio editing, the respective goods are nevertheless
related in that the record confirms that they are complementary
products used in connection with listening to sound, such as
music. The record makes clear that both opposer's "ACOUSTIC
WAVE" music system and its "WAVE" radio are marketed in versions
which can play CDs or compact discs. Although applicant's
product does not play compact discs or reproduce sound for
listening, its computer software for audio editing allows for
music or other sound files, including wave files or MP3 format
files, to be collected, manipulated further (if desired) for
audio effects and, through the use of a CD burner, copied to a
compact disc, which can then be played in opposer's goods in
Opposition No. 91165449
23
order for the listener to enjoy the assertedly better sound
reproduction quality provided by such goods. Moreover, through
the use of a pedestal accessory or an auxiliary jack, opposer's
"ACOUSTIC WAVE" music systems and its "WAVE" radios and music
systems allow a computer to be connected thereto for more
lifelike sound from the audio files created and/or stored on a
computer through, for instance, the use of applicant's audio
editing software, which among other things allows audio from
cassettes, vinyl records and the radio to be converted to files
playable directly from the computer. Plainly, in view thereof,
applicant's product and opposer's goods are similar in that they
are related, complementary products. The du Pont factor of the
similarity or dissimilarity and nature of the goods therefore
favors opposer.
Furthermore, the associated du Pont factor of the
similarity or dissimilarity of established, likely-to-continue
trade channels also favors opposer. In particular, with respect
to the Internet, opposer advertises and offers its "ACOUSTIC
WAVE" and "WAVE audio products at its website, while applicant
likewise does the same with respect to its "GoldWave" computer
software for audio editing, which is available for trial use or
purchase from its website as well as certain third-party
websites.
Of the relevant du Pont factors which remain, such are
at best neutral and none favors applicant. In particular, as to
the number and nature of similar marks in use on similar goods,
opposer's witness testified that he was not aware of any
Opposition No. 91165449
24
companies (other than applicant) that use the word "wave" in
identifying their products, while applicant's witness testified
to only a few third-party uses of terms containing the word
"wave." However, as previously noted, the extent of such use was
not indicated and none of the third-party uses identified
pertains to audio products such as loudspeakers, radios or the
like.
Furthermore, as to the du Pont factor of the length of
time during and conditions under which there has been
contemporaneous use without evidence of actual confusion,
applicant stressed at oral hearing that the record shows that
there have been no reported incidents of actual confusion during
a period of approximately 14 years of contemporaneous use by the
parties of the marks at issue. While it is the case that the
absence of any instances of actual confusion over a significant
period of time may be indicative of no likelihood of confusion,
such an absence is meaningful only where the record demonstrates
appreciable and continuous use by the defendant of its mark in
the same market(s) as those served by the plaintiff under its
mark. See, e.g., Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d
1768, 1774 (TTAB 1992); and Chemetron Corp. v. Morris Coupling &
Clamp Co., 203 USPQ 537, 541 (TTAB 1979). Moreover, and in
particular, there must be evidence showing that there has been an
opportunity for incidents of actual confusion to occur. See,
e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1847 (Fed. Cir. 2000).
Opposition No. 91165449
25
Here, however, the evidence relating to use establishes
that, in the case of applicant's "GoldWave" computer software for
audio editing, such product is available as a trial version which
potential buyers of a license to use the full-featured version
can download and use for free. Thus, although the average number
of units of "GoldWave" software downloaded on a monthly basis,
which as noted previously is in the neighborhood of around six
figures according to the most recent confidential information
furnished by Mr. Craig, would seem to be substantial, there is no
indication as to the percentage of free downloads or level of
licensed sales in the United States. Moreover, even assuming
that most of the downloads of applicant's software are by trial
users thereof in the United States and thus involve no licensing
fee, if those trial users of the free version of applicant's
"GoldWave" audio editing computer software were, for instance, to
become dissatisfied with the fact or otherwise learn that opposer
was not the source of applicant's product as they had assumed
when deciding to try such product or while using it, it seems
that they would be unlikely to complain, either to applicant or
opposer, inasmuch as the cost of their use thereof was nothing.
The absence, therefore, of any reported incidents of actual
confusion is of little probative value in this case and does not
serve as a mitigating factor which favors applicant. See, e.g.,
Beer Nuts, Inc. v. Clover Club Foods Co., 805 F.2d 920, 231 USPQ
913, 918 (10th Cir. 1986) [evidence of absence of incidents of
actual confusion "does not necessarily support a finding of no
likelihood of confusion, especially when the products involved
Opposition No. 91165449
26
are inexpensive" because "[p]urchasers are unlikely to bother to
inform the trademark owner when they are confused about an
inexpensive product" (italics in original)]; Union Carbide Corp.
v. Ever-Ready Inc., 531 F.2d 366, 188 USPQ 623, 639 (7th Cir.
1976) ["when products ... are low value items ... purchasers are
unlikely to complain when dissatisfied"]; and In re Azteca
Restaurant Enterprises Inc., 50 USPQ2d 1209, 1212 (TTAB 1999)
["given the relatively inexpensive nature of the menu items at
applicant's restaurants, and the obviously inexpensive nature of
registrant's [Mexican] food products, we wonder if purchasers
would even be aware of their confusion, and if they were, whether
they would take the trouble to inform either of the trademark
owners"].
In view of the above, we conclude that contemporaneous
use by applicant of the mark "GoldWave" in connection with its
"computer software for audio editing" is likely to cause
confusion with opposer's use of the substantially similar marks
"ACOUSTIC WAVE" for "loudspeaker systems and music systems
consisting of a loudspeaker system and amplifier and at least one
of a radio tuner, compact disc player and audio tape player" and
"WAVE" for, inter alia, "radios, clock radios, ... compact stereo
systems and portable compact disc players."
Decision: The opposition is sustained and registration
to applicant is refused.