Encased Products

Trademark Trial and Appeal Board

Jun 8, 2016

No. 86546430 (T.T.A.B. Jun. 8, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: June 8, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Encased Products
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Serial No. 86546430
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Luke Brean of Breanlaw LLC,
for Encased Products.
Marilyn D. Izzi, Trademark Examining Attorney, Law Office 112,
Renee Servance, Acting Managing Attorney.
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Before Wellington, Shaw, and Lynch,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Encased Products (“Applicant”), a New York corporation, seeks registration on the
Principal Register of the mark FITBUDS (in standard characters) for “earphone
accessories, namely, earphone cushions, earphone pads, cord management systems,
earphone cases, and earphone extension cords; earphones; headphones; portable
media players” in International Class 9.1

1 Application Serial No. 86546430 was filed on February 26, 2015, under Section 1(b) of the
Trademark Act, based on an intent to use the proposed mark in commerce.
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The Trademark Examining Attorney refused registration of Applicant’s mark,
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark, when used in connection with the identified goods, so resembles
the registered standard character mark BUDFITS (Reg. No. 3900564) for “earphones
and headphones” in International Class 9,2 that it is likely to cause confusion.
When the refusal was made final, Applicant appealed. The Examining Attorney
and Applicant have filed briefs. For the following reasons, we affirm the refusal.
Likelihood of Confusion
Our likelihood of confusion determination is based on facts as they relate to the
relevant factors set out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In considering the evidence of record on these
factors, we keep in mind that “[t]he fundamental inquiry mandated by Section 2(d)
goes to the cumulative effect of differences in the essential characteristics of the goods
and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In re Davia, 110 USPQ2d 1810,
1812 (TTAB 2014).
Similarity of the Goods/ Channels of Trade/ Consumers
With regard to the goods, channels of trade and classes of consumers, it is well-
established that we must make our determination based on the goods as they are
identified in the cited registrations and involved application. See In re Dixie

2 Issued on January 4, 2011.
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Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also
Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261,
62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems, Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Here, the goods are identical in part because “earphones” and “headphones” are
listed in the registration and the application. The remaining goods in the application,
“earphone cushions, earphone pads, cord management systems, earphone cases, and
earphone extension cords,” are obviously closely related as they are expressly
described as “earphone accessories.” With respect to Applicant’s “portable media
players,” these too are closely-related to Registrant’s earphones and headphones since
they are used together. Moreover, if likelihood of confusion exists with respect to any
of Applicant’s identified goods in a particular class, the refusal of registration must
be affirmed as to all goods in that class. See Tuxedo Monopoly, Inc. v. General Mills
Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
In sum, Applicant’s “earphones” and “headphones” are identical to Registrant’s
goods and the remaining goods identified in the application are closely related.
Indeed, Applicant does not dispute the identity of the goods.
In circumstances such as these, where an applicant’s goods are identical to those
of a registrant and there are no limitations set forth in the identifications, we must
presume that the channels of trade and classes of purchasers for these identical goods
are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
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2012) (even though there was no evidence regarding channels of trade and classes of
consumers, the Board was entitled to rely on this legal presumption in determining
likelihood of confusion); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721,
723 (CCPA 1968) (where there are legally identical goods, the channels of trade and
classes of purchasers are considered to be the same). Given the ubiquity of
headphones and earphones being used with mobile phones and portable music
devices, the general public would be one class of consumers.
Similarity of the Marks
We now consider whether Applicant’s mark, FITBUDS, is similar to the registered
mark, BUDFITS, and compare them “in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005) (quoting du Pont, 177 USPQ at 567). In making our determination we focus on
the recollection of the average purchaser, who normally retains a general rather than
specific impression of the trademarks. In re Cynosure, Inc., 90 USPQ2d 1644, 1645
(TTAB 2009); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
See also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin, 73 USPQ2d at 1695
(“[G]eneral consumers, not just connoisseurs, occasionally purchase champagne or
sparkling wines on celebratory occasions, with little care or prior knowledge”).
We also keep in mind that “[w]hen marks would appear on virtually identical
goods or services, the degree of similarity [of the marks] necessary to support a
conclusion of likely confusion declines.” See Century 21 Real Estate Corp. v. Century
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Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992), cert. denied, 506
U.S. 1034 (1994). See also ECI Division of E-Systems, Inc. v. Environmental
Communications Inc., 207 USPQ 443, 449 (TTAB 1980).
Here, the obvious similarity is that both marks are composed of the terms BUD
and FIT, and both marks ending with the letter S. The sole difference is the terms
are reversed in order. Where the primary difference between marks is the
transposition of the elements that compose the marks, and where this transposition
does not change the overall commercial impression, the Board has often found a
likelihood of confusion. See, e.g., In re Wine Soc'y of Am. Inc., 12 USPQ2d 1139, 1142
(TTAB 1989) (holding THE WINE SOCIETY OF AMERICA and design for wine club
membership services including the supplying of printed materials, and AMERICAN
WINE SOCIETY 1967 and design for newsletters, bulletins, and journals, likely to
cause confusion); In re Nationwide Indus., Inc., 6 USPQ2d 1882, 1884 (TTAB 1988)
(holding RUST BUSTER (with “RUST” disclaimed) for rust-penetrating spray
lubricant, and BUST RUST for penetrating oil, likely to cause confusion); In re Gen.
Tire & Rubber Co., 213 USPQ 870, 871 (TTAB 1982) (holding SPRINT STEEL
RADIAL (with “STEEL” and “RADIAL” disclaimed) for pneumatic tires, and RADIAL
SPRINT (with “RADIAL” disclaimed) for radial tires, likely to cause confusion).
However, if the transposed mark creates a distinctly different commercial
impression, then confusion is not likely. See, e.g., In re Best Prods. Co., 231 USPQ
988, 989-90 (TTAB 1986) (holding BEST JEWELRY and design (with “JEWELRY”
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disclaimed) for retail jewelry store services, and JEWELERS' BEST for bracelets, not
likely to cause confusion).
As to the meaning and commercial impressions of the marks, neither Applicant
nor the Examining Attorney introduced definitions for the component terms.
However, both assert that “bud” may be understood, in the context of headphones and
earphones, as an abbreviated reference to earbud-style earphones or headphones.3
Applicant further asserts that “bud” also may be understood in both marks as
meaning “friend” or “buddy.” With regard to the term “fit,” both Applicant and the
Examining attorney acknowledge that it may be understood as suggestive of physical
activities or exercise and being in shape.4 However, Applicant argues that, as found
in Registrant’s mark, “fits” would not be understood as a fitness reference and instead
“gives the impression of a superior product that fits snugly and comfortably on the
user’s head or in the user’s ear.”5
Thus, despite their almost identical components, Applicant argues the overall
commercial impressions of the two marks differs based on the reversed placement of
the component terms. Specifically, Applicant asserts that the “overall impression of
Applicant’s mark [FITBUDS] is … of a product that can be a partner in achieving
physical fitness,” whereas Registrant’s mark, BUDFITS, “immediately emphasizes

3 See 4 TTABVUE 8 Applicant’s brief at p. 7 (“buds” is a “shortened term for ear bud
headphones”) and 6 TTABVUE 7, Examining Attorney’s brief at unnumbered p. 6 (“BUD
can be viewed as a shortening of ‘earbuds,’ a common term for earphones”).
4 Id., Applicant’s brief (“may be used during exercise or while getting fit”) and Examining
Attorney’s brief (“FIT can be viewed as referring to physical fitness”).
5 4 TTABVUE 8.
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BUD, connoting friendship or familiarity” and FITS “will likely be read by consumers
as a conjugation of the verb ‘to fit’ … giv[ing] the impression of a superior product
that fits snugly and comfortably on the user’s head or in the user’s ear.”6
The Examining Attorney counters that a physical fitness connotation is not
unique to Applicant’s mark. She asserts that “Registrant markets its goods for use
during physical fitness activities … [and] both marks create the idea of earbuds used
during physical fitness activities.”7 In support, she submitted the following printout
from Registrant’s website:8

6 Id.
7 6 TTABVUE 7.
8 Submitted with Office action issued on July 9, 2015.
Serial No. 86546430
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In this case, and regardless of the reversed order of the same component terms,
we find that the two marks, FITBUDS and BUDFITS, convey the same or very
similar meanings in the context of the earphones or headphones. Both marks will
likely be perceived by consumers as suggestive of earbud-style headphones that “fit”
well to ears. The ability of the earphones or headphones to fit properly is certainly a
concern for consumers since, as Applicant explained, “ear bud style headphones are
often ill-fitting or loose.”9 Consumers, upon viewing either mark on or in connection
with earphones or headphones, would welcome the suggestion that the goods fit well
and will not fall off or out of the user’s ear.
Applicant’s argument that the nearly identical constituent words would be
perceived so differently in the two marks is unconvincing. While we agree with the
possibility that consumers will perceive Applicant’s mark, FITBUDS, as suggestive
of earbud-style headphones intended for fitness activities, that same meaning may
be found in Registrant’s mark, BUDFITS. Because of the identity of the goods, which
would include earbud-style headphones that are designed and advertised for wearing
during sports activities, consumers may be susceptible to the presence of a fitness

9 4 TTABVUE 8.
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connotation in both marks. Indeed, as shown above, Registrant touts its goods as
being suitable for fitness activities on its website, e.g., “let your music rock you
through extreme sports and intense workouts” (highlighted in blue lettering) and “I
have given them a good workout by using them while running, working out, …”
(customer testimonial). Thus, to the extent Applicant’s mark has a double entendre,
the cited mark shares the same two alternative meanings.
As to sound and appearance, we further find the marks more similar than not due
to the fact that it will be the two same, short words being spoken and viewed, albeit
in reverse order.
In sum, viewed in their entireties, the marks remain very similar in terms of
commercial impression, connotations, appearance and sound. Applicant’s mere
transposition of the same two component terms in Registrant’s mark does very little
to distinguish the two marks.
Conclusion
Based on the similarity of the marks, as well as the in-part identity of the goods,
and their travel in the same trade channels to the same class of purchasers, we find
confusion likely.
Decision: The refusal to register under Section 2(d) is affirmed. The application
will be abandoned in due course.