Bose Corp.v.Motorola, Inc.

Trademark Trial and Appeal Board

Mar 4, 1999

No. 91102162 (T.T.A.B. Mar. 4, 1999)

Hearing: Paper No. 23
May 26, 1998 PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MARCH 3, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Bose Corporation
v.
Motorola, Inc.
_____
Opposition No. 102,162
to application Serial No. 74/663,244
filed on April 19, 1995
_____
Charles Hieken of Fish & Richardson for Bose Corporation.
David Hillard and John Murphy of Pattishall, McAuliffe,
Newbury, Hilliard & Geraldson for Motorola, Inc.
______
Before Cissel, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by Motorola, Inc.
(Motorola) to register the mark LIFESTYLE for “radio
telephones, cordless telephones, cellular telephones, radio
transceivers and accessories, namely microphones, speakers,
Opposition No. 102,162
2
control units, cases, batteries, battery chargers and
handsets.”1
Registration has been opposed by the Bose Corporation
(Bose) on the ground that since at least as early as
September 12, 1989 it has used the mark LIFESTYLE in
connection with loudspeakers and/or music systems; that it
is the owner of a registration for the mark LIFESTYLE for
“loudspeaker systems2;” and that Motorola’s mark, if used in
connection with the identified goods, would so resemble
Bose’s mark as to be likely to cause confusion.
Motorola, in its answer, denied the salient allegations
of the likelihood of confusion claim. In a counterclaim,
Motorola alleges that Bose has not used the LIFESTYLE mark
in connection with every type of speaker imaginable, but
rather only in connection with loudspeaker systems for high
fidelity music reproduction; that Motorola is damaged by
Bose’s registration because it may allow Bose to prevent
Motorola from obtaining a registration for its mark; and
that Bose’s registration should be partially restricted to
limit the goods therein to “loudspeaker systems for high
fidelity music reproduction.” Further, Motorola indicates
that, if necessary to avoid a likelihood of confusion, it is

1 Application Serial No. 74/663,244 filed April 19, 1995,
alleging a bona fide intention to use the mark in commerce.
2 Registration No. 1,622,251 issued November 13, 1990; Sections
8 & 15 affidavit filed.
Opposition No. 102,162
3
willing to accept a limitation of the goods in its
application to delete “microphones” and “speakers.”
Before reciting the record herein, it is necessary to
rule on two evidentiary matters. First, Bose, in its brief
on the case, argues that Motorola’s notice of reliance
should be stricken because it was untimely submitted.
Motorola filed its notice of reliance on April 21, 1997,
over a month before the opening of its testimony period. In
response to this argument, Motorola states that the error in
filing the notice early was made in good faith and points
out that no objection to the notice was raised by Bose
earlier. It appears that the error in filing the notice
early was made in good faith. More importantly, Bose, by
waiting to raise this matter in its brief on the case, has
waived its objection to the premature filing of the notice,
which could have been corrected upon seasonable objection.
See Of Counsel Inc. v. Strictly of Counsel Chartered, 21
USPQ2d 1555 (TTAB 1991).
Second, Motorola objects to the admission of testimony
and documents introduced into the record during the
deposition of Bose’s witness, William Allen. The testimony
and documents contain information regarding the volume of
sales, advertising expenses and promotional efforts in
connection with opposer’s goods. Motorola objects on the
ground that this information fell within the scope of
Opposition No. 102,162
4
several of Motorola’s discovery requests to which Bose
objected on the ground that the information was privileged.
However, if Motorola was dissatisfied with Bose’s responses,
it was incumbent upon Motorola to contact Bose in an attempt
to resolve the matter (preferably with a stipulated
protective order), failing which Motorola should have filed
a motion to compel discovery. See Trademark Rule 2.120(e)
and Comserv Corporation v. Comserv, 179 USPQ 124, 125 (TTAB
19730. We should point out that at the testimony deposition
the information concerning Bose’s sales, advertising and
promotion was introduced subject to a protective order.
Thus, this is not a situation where a party, in an attempt
to avoid discovery, refuses to answer interrogatories and/or
produce documents on the ground of confidentiality and then
turns around and provides the information openly during a
testimony deposition. In view of the foregoing, the
evidence has been considered.
The record consists of the pleadings; the file of the
involved application; the deposition (with exhibits) of
Bose’s witness, William Allen; Bose’s notice of reliance on
Motorola’s responses to certain of Bose’s discovery requests
and a status and title copy of Bose’s pleaded registration3;
and Motorola’s notice of reliance on four of its

3 While Bose also submitted Motorola’s answer to an allegation
in the notice of opposition, this is unnecessary inasmuch as the
pleadings automatically form part of the record herein.
Opposition No. 102,162
5
registrations of marks which include the term “LIFESTYLE.”
Motorola took no testimony and offered no other evidence.
Both parties filed briefs on the case and an oral
hearing was held before the Board.
According to Bose’s witness, Mr. Allen, the LIFESTYLE
mark was first used by Bose on loudspeaker systems and music
systems around 1990. Bose currently uses the LIFESTYLE mark
to identify powered speaker systems, music systems, music
centers, home theater systems, and parts and accessories for
these products. Mr. Allen identified photographs of
shipping cartons Bose’s products are sold in to retailers
such as Circuit City, Best Buy and Sears. Mr. Allen
identified photographs of shipping cartons and over twenty
reviews of Bose’s LIFESTYLE loudspeaker systems and music
systems which appeared in newspaper and trade magazines
between May and October 1990. Accordingly to Mr. Allen,
Bose has spent several million dollars advertising its
LIFESTYLE products and its total sales have been
approximately $75,000,000. Mr. Allen testified that Bose
also sells sound systems to automobile manufacturers such as
Acura, Cadillac, Mercedes, Honda, and Nissan for use in
their automobiles, although not under the LIFESTYLE mark.
Mr. Allen testified that cellular phone systems in
automobiles are used with Bose sound systems. In
particular, he testified as follows:
Opposition No. 102,162
6
Q: Are Bose sound systems used with cellular
phone systems in automobiles?
A: Yes.
Q: Have you actually used a cellular phone in
connection with a Bose sound system?
A: Yes, I have.
Q: Could you describe that experience,
please?
A: Well, I turned on the radio. We were
listening to a local radio station. Then
I pressed the buttons on the telephone
console to dial my wife which interrupted
the radio broadcast, and instead of
hearing a voice on the radio, I then heard
my wife’s voice over the same Bose sound
system.
In addition, Mr. Allen testified that Bose is considering
using the LIFESTYLE mark in connection with automotive sound
systems and elsewhere. However, he offered no specific
information with respect to Bose’s plans in this regard.
As indicated above, the only evidence submitted by
Motorola are copies of its four registrations for marks
which include the term LIFESTYLE: Registration No.
1,709,830 for the mark LIFESTYLE PAGER (stylized) for
portable radio communications receiver (PAGER is
disclaimed); Registration No. 1,983,703 for the mark
LIFESTYLE for computer peripheral equipment, namely modems;
Registration No. 1,991,041 for the mark LIFESTYLE SERIES for
computer peripheral equipment, namely modems; and
Registration No. 1,992,920 for the mark LIFESTYLE PLUS for
Opposition No. 102,162
7
portable radio communications receivers and software for
programming radio communication receivers.
Inasmuch as a status and title copy of Bose’s
registration is of record, there is no issue with respect to
Bose’s priority. King Candy Co., Inc. v. Eunice King’s
Kitchen, Inc., 182 USPQ 108 (CCPA 1974). In any event,
Bose’s testimony establishes its prior use of the mark
LIFESTYLE in connection with loudspeaker systems and music
systems.
We turn then to the issue of likelihood of confusion.
Bose argues that its goods, i.e., loudspeaker systems and
music systems, on the one hand, and the goods identified in
Motorola’s application, i.e., radio telephones, cordless
telephones, cellular telephones, radio transceivers and
accessories, namely microphones, speakers, control units,
cases, batteries, battery chargers and handsets, on the
other hand, are related. In particular, Bose points out
that these kinds of goods may be sold in the same retail
stores to the same class of purchasers. Further, Bose
argues that Motorola’s counterclaim is impermissible
inasmuch as Bose’s registration is incontestable; and that
the restriction which Motorola seeks will not eliminate the
likelihood of confusion.
Motorola, on the other hand, argues that “loudspeaker
systems” is an overly broad identification of goods because
Opposition No. 102,162
8
Bose has not used the LIFESTYLE mark in connection with
every type of speaker imaginable, but only in connection
with loudspeakers for high fidelity music reproduction; that
loudspeakers for high fidelity reproduction and Motorola’s
products are not related; and therefore there would be no
likelihood of confusion if Bose’s registration is
restricted. Further, Motorola maintains that its
counterclaim is permissible because it is tied to the ground
of abandonment, that is, Bose has not used the mark in
connection with loudspeakers other than those for high
fidelity music reproduction. Finally, Motorola argues that
Bose cannot be damaged in the instant case because it has
not objected to Motorola’s other registrations which include
the term LIFESTYLE.
We turn first to the issue of likelihood of confusion
vis-à-vis Bose’s loudspeaker systems and music systems and
the goods in Motorola’s application, i.e., telephones, radio
transceivers, and accessories therefor. At the outset, we
note that the marks of the parties are identical. The Board
has stated in the past that “[i]f the marks are the same or
almost so, it is only necessary that there be a viable
relationship between the goods or services in order to
support a holding of likelihood of confusion.” In re
Concordia International Forwarding Corp., 222 USPQ 355, 356
(TTAB 1983). In the present case, there are of course,
Opposition No. 102,162
9
specific differences between, on the one hand, Bose’s
loudspeaker systems and music systems, and on the other
hand, Motorola’s radio telephones, cordless telephones,
cellular telephones, radio transceivers and accessories,
namely microphones, speakers, control units, cases,
batteries, battery chargers and handsets. However, these
goods are all electronic products for sound reproduction or
communication. Moreover, these goods may be sold in the
same retail outlets to the same purchasers, i.e., ordinary
consumers. Under the circumstances, we find that the goods
are sufficiently related that, if sold under identical
marks, confusion would be likely to occur among purchasers.
See: In re Dynaco, Inc., 189 USPQ 104, 105 (TTAB 1975) [“It
has frequently been held that products which can be
characterized as electronic equipment may reasonably be
expected to have been produced, offered, and or sold by the
same electronic manufacturer.”]; In re Instruteck
Corporation, 184 USPQ 618 (TTAB 1974) [Confusion is likely
if similar marks are applied to phonographs and tape
recorders and to citizens band transceivers]; and In re
Columbia Broadcasting System, Inc., 171 USPQ 311 (TTAB 1971)
[Confusion is likely if identical mark is applied to radios
and transceivers and to amplifier loudspeakers systems.]
We should add that Motorola, in its brief as defendant in
the opposition, does not dispute that confusion is likely
Opposition No. 102,162
10
from contemporaneous use of the mark LIFESTYLE in connection
with the goods identified in its application and Bose’s
loudspeaker systems and music systems.
We turn next to Motorola’s attempt to restrict Bose’s
registration to loudspeaker systems for high fidelity music
reproduction. As stated in Milliken & Co. v. Image
Industries Inc., 39 USPQ2d 1192, 1194 (TTAB 1996):
. . . the Board no longer requires that a
petition for partial cancellation be tied
to a ground for cancellation, but does
require that a party seeking to restrict
an opponent’s broadly worded identification
of goods, in a case involving likelihood of
of confusion, plead and prove (1) that entry
of the proposed restriction will avoid a
likelihood of confusion and (2) that the
opponent is not using the mark on the goods
or services that will be effectively
excluded by the proposed restriction.
(citations omitted)
In this case, we agree with Bose that Motorola’s
proposed restriction would not serve to avoid a likelihood
of confusion. Loudspeakers for high fidelity music
reproduction are still electronic products and the proposed
restriction does not delineate any different users or
channels of trade. For the same reasons, Motorola’s
proposed restriction to delete speakers and microphones from
its own identification of goods would not serve to avoid a
likelihood of confusion. Thus, each of the proposed
restrictions is denied.
Opposition No. 102,162
11
In sum, we conclude that consumers familiar with Bose’s
loudspeaker systems and music systems sold under the
LIFESTYLE mark would be likely to believe, upon encountering
Motorola’s identical mark LIFESTYLE for telephones, radio
transceivers, and accessories therefor, that the respective
products originated with or were somehow associated with or
sponsored by the same entity.
Several additional matters require comment. First, to
the extent that Motorola intended to rely on the Morehouse
defense (Morehouse Manufacturing Corporation v. J.
Strickland and Company, 407 F.2d 881, 160 USPQ 715 (CCPA
1969), we note that a subsisting registration may not be
relied on by a defendant as a basis for contesting an attack
upon another registration or application unless the mark and
the goods or services shown in the subsisting registration
are the same as or substantially identical to the mark and
goods or services set forth in the defendant’s challenged
application or registration. It is clear that Motorola’s
four prior registrations do not involve the same or
substantially identical goods as its involved application,
so the asserted defense is inapplicable.
Another matter relates to Motorola’s mention of the
absence of any instances of actual confusion. Of course,
this is an intent-to-use application and there is no
indication that the mark is in use, much less evidence of
Opposition No. 102,162
12
the extent of use (e.g. sales and/or advertising figures)
for the particular goods identified in the application.
Thus, we do not know whether or not there has been any
meaningful opportunity for confusion to occur in the
marketplace.
Finally, to the extent that we have any doubt in this
proceeding, we must resolve it in favor of the registrant
and against applicant. Giant Food, Inc. v. Nation’s
Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed.
Cir. 1983).
Decision: The opposition is sustained and registration
to applicant is refused. The counterclaim for partial
cancellation is dismissed.
R. F. Cissel
P. T. Hairston
C. E. Walters
Administrative Trademark
Judges, Trademark Trial and
Appeal Board
Opposition No. 102,162
13