ESI Audiotechnik GmbHv.Chang Soo Lim

Trademark Trial and Appeal Board

May 12, 2017

No. 91221155 (T.T.A.B. May. 12, 2017)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: May 12, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

ESI Audiotechnik GmbH
v.
Chang Soo Lim
_____

Opposition No. 91221155
_____

John Alumit of Alumit IP
for ESI Audiotechnik GmbH.

R. Glenn Schroeder of Schroeder Law PC
for Chang Soo Lim.
_____

Before Quinn, Kuczma, and Pologeorgis,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Chang Soo Lim (“Applicant”) filed an application to register the mark ESIO (in
standard characters) for the following goods and services:
Apparatus for recording, transmission or reproduction of
sound and/or images and/or electronic data, namely, audio
interfaces for computers, powered audio speakers,
microphones, headphones, sound mixers, MP3 players, and
DJ and MIDI controllers in the nature of electronic
controllers for musical instrument digital interface (in
International Class 9);

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Electronic musical instruments (in International Class 15);
and

Retail store services, online retail store services and
wholesale store services featuring apparatus for recording,
transmission or reproduction of sound and/or images
and/or electronic data, namely, audio interfaces for
computers, powered audio speakers, microphones,
headphones, sound mixers, MP3 players, DJ and MIDI
controllers in the nature of electronic controllers for
musical instrument digital interface, and electronic
musical instruments (in International Class 35).1

ESI Audiotechnik GmbH (“Opposer”) opposed registration 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 Applicant’s goods and services, so resembles Opposer’s
previously used and registered mark shown below for the identified goods as to be
likely to cause confusion.

Digital audio peripherals and interfaces, namely, digital
audio converters, sound mixers, pre amplifiers and audio
signal processors; loud speakers (in International Class 9);2
and

Musical instruments (in International Class 15).3

1 Application Serial No. 86216581, filed March 10, 2014, under Section 44(e), 15 U.S.C. §
1126(e), based upon Community Trademark Registration No. 012165262 issued on February
5, 2014. The application indicates that the wording “ESIO” has no meaning in a foreign
language.
2 Registration No. 4135416, issued May 1, 2012. The registration includes the following
statements: “The mark consists of the literal element ‘ESI’ represented in stylized font
wherein it forms a design superimposed upon a carrier background. Color is not claimed as
a feature of the mark. The wording ‘ESI’ has no meaning in a foreign language.”
3 Registration No. 4030584, issued September 27, 2011. The registration includes the
following statements: “The mark consists of the literal element ‘ESI’ represented in stylized
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As an additional ground for opposition, Opposer alleged that Applicant, a former
business partner of Opposer, knew about Opposer’s rights in the pleaded mark and,
therefore, Applicant committed fraud on the USPTO when he filed the present
application, claiming rights in the mark.4
Applicant, in his answer, admitted that he had a former business relationship
with Opposer, but denied the salient allegations of likelihood of confusion and fraud.
In addition, Applicant asserted a counterclaim to cancel both of Opposer’s pleaded
registrations on the ground that Opposer is not, and has never been, the owner of the
registered mark. In its answer to the counterclaim, Opposer denied the ownership
allegations and alleged that Applicant has either assigned rights to Opposer or
“abandoned” rights in the applied-for mark, and also raised affirmative defenses.
EVIDENTIARY OBJECTIONS
Applicant objected to several of Opposer’s submissions. Because none of the
objected-to evidence is outcome determinative of the merits of this proceeding, we will
treat the objections in relatively summary fashion.

font wherein it forms a design superimposed upon a carrier background. Color is not claimed
as a feature of the mark. The wording ‘ESI’ has no meaning in a foreign language.”
4 Opposer’s brief on the case is completely silent on the fraud claim. If an opposer fails to
reference a pleaded claim in its brief, the Board will deem the claim to have been waived.
Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107 USPQ2d 1750, 1753 (TTAB 2013)
(opposer’s pleaded descriptiveness and geographical descriptiveness claims not argued in
brief deemed waived), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.); Joel Gott Wines LLC v.
Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1426 n.3 (TTAB 2013) (opposer’s pleaded
descriptiveness claim not argued in brief deemed waived); TBMP § 801.01 (Jan. 2017).
Accordingly, Opposer’s fraud claim has not been considered.

Opposition No. 91221155

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Applicant first objects to Exhibits C-M listed in Opposer’s Notice of Reliance filed
April 24, 2016. 12 TTABVUE. Applicant maintains that these documents are not
capable of being made of record by way of a notice of reliance, and that they could
have been properly introduced pursuant to the stipulation that “exhibits that would
normally be introduced during a deposition may be introduced as attachments to the
testimony affidavit.”
The exhibits comprise Opposer’s brochures, business cards, and trade show
materials. Contrary to Opposer’s urging that the items constitute “printed
publications,” none of these exhibits are acceptable subject matter for a notice of
reliance. Accordingly, these exhibits are stricken. See, e.g., Stuart Spector Designs,
Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, 1552 (TTAB 2009); Life
Zone Inc. v. Middleman Grp. Inc., 87 USPQ2d 1953, 1956-59 (TTAB 2008); Glamorene
Prods. Corp. v. Earl Grissmer Co., 203 USPQ 1090, 1092 n.5 (TTAB 1979). See also
TBMP § 704.08(a).
Applicant next objects to certain documents, namely Exhibits P-T in the notice of
reliance filed May 2, 2016. 14 TTABVUE. Applicant contends that Exhibits P and Q
are insufficient to make Opposer’s pleaded registrations of record, and that the
remaining exhibits are not official records under Trademark Rule 2.122(e).
Opposer’s pleaded registrations are automatically of record without any action by
Opposer inasmuch as they are the subjects of Applicant’s counterclaim. Trademark
Rule 2.122(b)(1). Reference may be made to the files by any party for any relevant
and competent purpose (e.g., Opposer’s standing and priority). TBMP § 704.03(a).
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Further, the other materials constitute official records. Accordingly, Applicant’s
objection is overruled, and these exhibits are of record.
Applicant’s third objection is directed at Exhibits I-II and IV-X that accompany
the affidavit testimony of Claus Riethmueller. Applicant asserts that Opposer failed
to produce these documents during discovery even though Applicant’s discovery
requests asked for their production. Applicant also points out that Exhibits IV and V
are not accompanied by certified translations.
Opposer, in response, points out that the exhibits were in Applicant’s possession,
and therefore it was not obligated to produce these documents, nor was it required,
in advance of trial, to disclose them. Applicant counters by claiming that after
execution of the parties’ agreement in 2010, Opposer took possession of Applicant’s
computers and hard drives containing Applicant’s historical documents and, thus, he
does not have access to them. 5 In view of the basis for Applicant’s objection to Exhibits
I, II, VI, VII, VIII, IX, and X, the objections are sustained.
Applicant’s final objection relates to paragraph 7 of the Lee affidavit. 17
TTABVUE 4. Applicant contends that the statements made therein are nothing more
than speculation and, thus, are inadmissible. Rather than admissibility, Applicant’s

5 Request for Production No. 27: “All documents that tend to support or refute any allegation
made in Opposer’s Notice of Opposition”; No. 28: “All documents identified (or asked to be
identified) in response to Applicant’s Interrogatories to Opposer”; No. 29: “All documents
referred to in Opposer’s Rule 26(a)(1) Initial Disclosures”; and No. 30: “All documents that
Opposer intends to use, refer to, or rely upon at any deposition, trial, or hearing in this
matter.” 25 TTABVUE 40-41. As alluded to by Opposer, these requests appear to be
overbroad. Moreover, Applicant did not provide Opposer’s specific responses to these
discovery requests and, thus, it is unclear what was or was not provided. Nevertheless, given
Opposer’s response to the objection, it would appear that Opposer did not provide the
objected-to exhibits during discovery.
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objection goes to the probative value of the testimony. Accordingly, the objection is
overruled to the extent that this testimony is part of the record. In reviewing the
objected-to testimony, we have accorded it whatever probative value it merits,
keeping in mind Applicant’s objection.
To reiterate, none of the objected-to evidence is outcome determinative. Even if
all of the objected-to exhibits were stricken from the record, we would reach the same
result on the merits of this case.6
Taking the above rulings into consideration, the record consists of the pleadings;
the files of the opposed application and the registrations sought to be cancelled in the
counterclaim; trial testimony by affidavit, with related exhibits, taken by each party;
and portions of websites, and official records introduced by way of Opposer’s notices
of reliance.7 The parties filed briefs on the case.8

6 Under any circumstances, however, Opposer’s pleaded registrations, being the subjects of
Applicant’s counterclaim, clearly are of record under Trademark Rule 2.122(b)(1).
7 The parties filed a stipulation regarding testimony and documentary evidence. 9 TTABVUE.
In pertinent part, the parties agreed that testimony could be introduced by affidavit, and that
all documents exchanged during discovery are authentic for the purpose of admission during
the parties’ respective testimony periods. Trademark Rule 2.123(b). Normally documents
produced in response to document production requests may not be made of record by notice
of reliance, see Trademark Rule 2.120(j)(3)(ii), but in this case the documents are of record
pursuant to the parties’ stipulation. See TBMP § 704.11.
8 Citations in this opinion will be to the TTABVUE docket entry number and the electronic
page number where the document or testimony appears. Because the Board primarily uses
TTABVUE in reviewing evidence, the Board prefers that citations to non-confidential parts
of the record include the TTABVUE docket entry number and the TTABVUE page number.
For material or testimony that has been designated confidential and which does not appear
in TTABVUE, the TTABVUE docket entry number where such material or testimony is
located should be included in any citation. See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473,
1476 n.6 (TTAB 2014).
Opposition No. 91221155

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COUNTERCLAIM
Standing
Opposer asserted its pleaded mark and registrations against Applicant as
defendant in this opposition proceeding. Accordingly, Applicant’s standing to bring
the counterclaim is established. Orange Bang, Inc. v. Olé Mexican Foods, Inc., 116
USPQ2d 1102, 1110 (TTAB 2015).
Ownership
As grounds for the counterclaim, Applicant asserts that he and not Opposer is the
rightful owner of the mark shown in Registration Nos. 4030584 and 4135416.
Claus Riethmueller is the Managing Director of Opposer, and formerly was
Director of RIDI GmbH (“RIDI”), before it merged with Opposer. 13 TTABVUE 2.
Applicant, Chang Soo Lim, is the founder and CEO of Ego Systems, Inc. (“Ego”).9 15
TTABVUE 3.10
Opposer has been in the business of developing, manufacturing, and selling
digital audio peripherals and interfaces, loudspeakers, and musical instruments
since 2007. Mr. Riethmueller testified that Opposer first began doing business as a
distributor for one of Applicant’s companies, Ego, through Opposer’s predecessor

9 Ego Systems, Inc. (Korea) manufactured the equipment in Korea, and a related company,
Ego Systems, Inc. (USA), was incorporated to assist in distribution. Mr. Lim maintains that
he individually owned the ESI trademarks. 15 TTABVUE 3-4.
10 Some testimony and exhibits were designated as “confidential.” We agree that certain
statements and accompanying documents are proprietary and should remain confidential.
While we have been sensitive to this information, we have referred to certain testimony and
evidence that clearly is not proprietary in nature.
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company, RIDI.11 By way of an agreement dated January 15, 2004, Ego granted RIDI
“the exclusive rights to purchase, market and distribute [Ego] product to [the] Federal
Republic of Germany.” 13 TTABVUE 52-53. The agreement also provided that “RIDI
may use [Ego] brand and product names such as ‘ESI,’ [Ego] logos (such as ‘ESI’) and
trademarks for promotion. RIDI may use the name ‘ESI’ and ‘ESI Deutschland’ for
promotion of [Ego] products in contacts with end users and media representatives.”
Two years later Ego and RIDI executed the “Sales Rights and Brand Ownership
Agreement” dated March 16, 2006. 13 TTABVUE 55. The one-page agreement
includes the following relevant provision:
Brand Ownership
[Ego] hereby transfers to RIDI the ownership of the “ESI”
brand name, trademark and logo under the conditions of
this agreement.

The agreement includes additional provisions related to RIDI’s responsibilities, such
as “purchas[ing] all or majority of [Ego] stock as of the contract date” and to “pay a
research and development fee monthly to [Ego] depending on the sales amount of
‘ESI’ brand products.” Ego’s responsibilities under the agreement include
“continu[ing] to develop new audio interface technologies for usage in existing and
future ‘ESI’ brand products,” and that “[Ego] transfers the rights to sell ‘ESI’ brand
products to RIDI.” The agreement goes on to provide that its terms “shall override

11 RIDI multimedia GmbH and Opposer merged on August 29, 2013. 13 TTABVUE 4.
According to Mr. Riethmueller, Opposer “was not involved in distribution” and “no formal
distribution agreement was ever established” between Opposer and Applicant. 13 TTABVUE
4.
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and supersede any conflicting terms in any other document between the parties.” The
agreement was signed by Messrs. Lim and Riethmueller.
Mr. Riethmueller goes on to state the following:
[Applicant] never made mention, nor presented any
communication, whether formal or informal, stating that
the specific terms of the March 16, 2006 contract were not
satisfied and that the intellectual property was not
transferred. At all times, [Applicant] and I went about our
business as if the trademark “ESI” had been transferred to
[Opposer]. It was not until June 21, 2011 did [Ego] formally
allege in [an] email to our customers that [Ego] had always
been the owner of the ESI trademark. 20 TTABVUE 2-3.

RIDI did not owe a substantial sum of money to [Ego] as of
2008. The account payables of RIDI to [Ego] as of December
31, 2008 was 0. 20 TTABVUE 3.

[Opposer] was formed to manufacture and sell ESI
products worldwide, using [Ego] as a development partner,
based on the March 16, 2006 contract. [Opposer] was
specifically set up as a manufacturer and seller because
RIDI had been known to be only a distributor within the
industry and the March 16, 2006 shifted RIDI’s activities
from that of a distributor to a manufacturer and seller.
This role was then given to [Opposer]. 20 TTABVUE 4.

To further show that [Opposer’s] role was that of a
manufacturer, and not a distributor … [i]t is important to
understand that a manufacturer, not a distributor, would
pay for tooling cost to be able to manufacture new products
under development, and that only a manufacturer would
pay certification costs to certify compliance of new products
with the law. 20 TTABVUE 5.

Four years later Opposer and Ego entered into a “Purchase Agreement for
Technology and Assets” dated January 27, 2010. 13 TTABVUE 57-60. The agreement
“covers the technology (all design data and sources to be able to manufacture and sell)
for all products marketed under ‘ESI’ trade mark and brand name, the rights to use
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the ‘ESI’ brand name and trade mark for marketing and sales and the products,
equipment and assets used to perform maintenance in research and development for
the products using this technology.” Under heading number 3 “details of the trade
marks covered by this agreement,” the parties agreed, in relevant part, to the
following: “[Opposer] will world wide exclusively use the ‘ESI’ trade mark for
marketing, sales and development … [Ego] can no longer use the ‘ESI’ trade mark for
marketing, sales and development” and “[Ego] will transfer the ownership of the
internet domain names esi-pro.com, esi-pro.co.kr and esi-audio.co.kr to [Opposer].”
The agreement further provides that its terms “shall override and supersede any
conflicting terms in any other document between the parties.” The assets conveyed
under the agreement included “banner and ESI logo signs.” The agreement was
signed by Messrs. Lim and Riethmueller.
Further with respect to the pleaded trademark Mr. Riethmueller testified:
[I]t is true that the January 27, 2010 agreement does not
transfer the ESI trademarks as part of the agreement, but
this is not because [Ego] was still owed a large sum of
money by [Opposer]. The January 27, 2010 [agreement] did
not transfer the ESI trademark because the ESI trademark
had already been transferred in the March 16, 2006
agreement between [Ego] and [Opposer’s] predecessor
company RIDI. The January 27, 2010 agreement
specifically covers only the technology for all products
marketed under the “ESI” trademark and “re-affirms”
[Opposer’s] rights (as successor to RIDI) to worldwide
exclusive use of the “ESI” trademarks….Moreover,
[Opposer] had allowed [Ego] to use the “ESI” trademark
after the March 16, 2006 agreement. The January 27, 2010
agreement clarifies that such use of the “ESI” trademark
by [Ego] would no longer be allowed. 20 TTABVUE 6.

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Mr. Lim offered his affidavit testimony. 15, 21 TTABVUE. Mr. Lim maintains
that throughout their business relationship, Opposer has been a distributor, not a
manufacturer. 21 TTABVUE 4. Thus, Mr. Lim contends that Opposer was not the
rightful owner of the ESI marks when the underlying applications were filed to
register the marks. 21 TTABVUE 5. Mr. Lim maintains that Opposer did not fulfill
the terms of any agreement to transfer rights in the ESI mark. Id. More specifically,
Mr. Lim states that although certain technology and assets were transferred in the
2010 agreement, the ESI trademarks were not transferred because Applicant’s
company Ego “was still owed a large sum of money by [Opposer].” Rather, Opposer
“was granted the exclusive worldwide right to use the ESI trademarks.” 15
TTABVUE 5. Applicant’s position essentially is that although the 2006 agreement
contemplated a transfer of trademark rights in ESI, RIDI never fulfilled its
contractual obligations and, thus, there was no effective transfer.
In September 2011, Applicant attempted to rescind the 2010 agreement by
alleging that Opposer failed to make timely payments to Applicant as provided in the
agreement. Applicant’s company sued Opposer in Korea, and the Seoul Central
District Court (13th Civil Court) issued a judgment on July 2, 2015 wherein it
dismissed Ego’s claim of its purported ownership of the mark ESI; that is, Opposer
had not breached the 2010 agreement, and Applicant had no basis for repudiating the
2010 agreement.12 15 TTABVUE 6.

12 Decisions from foreign courts have little relevance in Board proceedings. It is well settled
that trademark rights are territorial in nature and that the protection of a trademark in a
certain country depends exclusively on the law of that country. See Boston Chicken Inc. v.
Boston Pizza Intl Inc., 53 USPQ2d 1053, 1055 (TTAB 1999); Miles Laboratories, Inc. v.
Opposition No. 91221155

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Mr. Lim maintains that ownership of the ESI trademarks “has remained with me
or my companies” and that Opposer “is not, and has never, been the owner. The ESI
trademarks have been and are individually owned by myself, with the exception of a
period of time beginning in or about 2005 through 2007 during which I formed a joint
venture under the name ESI Professional Co., Ltd.” 15 TTABVUE 6-7.
Also of record is the affidavit testimony for Opposer of Ilju Lee, a former officer
(vice president and later CEO) of Ego. 17 TTABVUE. He states that according to the
2010 agreement, Ego “did not have the right of the use of the ESI trademark which
was previously allowed by [Opposer], but still had the right of use of all the
transferred technology for any business and products, as long as it did not use the
‘ESI’ brand….” 17 TTABVUE 4. Jung Hoon Kang, a former president of Ego, testified
for Applicant. 23 TTABVUE 2. Mr. Kang’s “understanding was that [Ego] was the
developer and manufacturer of the products” and that Opposer served “as the main
distribution arm for ESI-branded products.” 23 TTABVUE 2.
“The owner of a trademark used in commerce may request registration of its
trademark ... .” Section 1 of the Trademark Act, 15 U.S.C. § 1051. See In re Wella
A.G., 787 F.2d 1549, 229 USPQ 274, 277 (Fed. Cir. 1986) (C.J. Nies concurring)

International Diagnostic Technology, Inc., 220 USPQ 438, 445 (TTAB 1983), aff’d, 746 F.2d
798, 223 USPQ 977 (Fed. Cir. 1984). The Board has consistently held that information and
decisions relative to trademark disputes in foreign jurisdictions are not controlling on a
determination of a party’s right to register in the United States. See Societe Civile des
Domaines Dourthe Freres V. S.A. Consortium Vinicole de Bordeaux et de la Gironde, 6
USPQ2d 1205, 1207 n.6 (TTAB 1988); Faberge, Inc. v. Dr. Bador GmbH & Co., 219 USPQ
848, 850 (TTAB 1983); Beck & Co. v. Package Distributors of America, Inc., 198 USPQ 573,
575 n.4 (TTAB 1978); Hiram Walker & Sons, Inc. v. Canadian Distilleries Ltd., 176 USPQ
156, 158 (TTAB 1972).
Opposition No. 91221155

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(“Under section 1 of the Lanham Act, only the owner of a mark is entitled to apply for
registration.”) (emphasis in original); Great Seats Ltd. v. Great Seats Inc., 84 USPQ2d
1235, 1239 (TTAB 2007).
The Board stated in Lutz Superdyne, Inc. v. Arthur Brown & Bro., Inc., 221 USPQ
354, 362 (TTAB 1984):
[I]t has been held that the question of ownership of a mark
as between the manufacture[r] of the product to which the
mark is applied and the exclusive distributor of the product
is a matter of agreement between them, and that in the
absence of an agreement, there is a legal presumption that
the manufacturer is the owner of the mark. See: Far-Best
Corporation v. Die Casting “1D” Corporation, 165 USPQ
277 (TTAB 1970), and Audioson Vertreibs-GmbH v.
Kirksaeter Audiosonics, Inc., 196 USPQ 453 (TTAB 1977).

See Global Maschinen GmbH Banking Systems, Inc., 227 USPQ 862 (TTAB 1985).
In the present case, Applicant argues at length that he owns the mark because
he was the manufacturer of the goods, and Opposer was a distributor. Regardless of
the accuracy of Applicant’s claim that it is the manufacturer and, therefore, the owner
of the mark, the argument is superseded by the presence of agreements between the
parties regarding the mark ESI at issue. The fact that Opposer was at one time a
distributor does not mean that it was always a distributor or that it subsequently
could not own the mark ESI as provided by the parties’ agreements. Cf. UVeritech,
Inc. v. Amax Lighting, Inc., 115 USPQ2d 1242 (TTAB 2015) (no agreement in place).
As indicated in the 2006 agreement regarding “Brand Ownership,” Applicant
transferred “the ownership of the “ESI” brand name, trademark and logo” to Opposer.
The 2010 agreement reaffirmed Opposer’s ownership of the marks: “[Opposer] will
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world wide exclusively use the ‘ESI’ trade mark for marketing, sales and development
… [Applicant] can no longer use the ‘ESI’ trade mark for marketing, sales and
development.” Further, there is insufficient evidence of record to demonstrate that
the agreements somehow were abrogated because of any action on the part of
Opposer.
In view of the clear provisions of the agreements, and in the absence of any
compelling objective testimony or evidence that Opposer breached the agreements,
Opposer owns the ESI mark and the registrations therefor.
Accordingly, the counterclaim to cancel is dismissed.

OPPOSITION
Standing
Opposer established its standing to oppose registration of the applied-for mark by
virtue of its registration of the mark ESI and design for the identified goods. Thus,
Opposer has shown that it is not a mere intermeddler. See Empresa Cubana Del
Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014),
cert. denied, 135 S. Ct. 1401 (2015); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d
1023, 1025-26 (Fed. Cir. 1999); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185 (CCPA 1982).
Priority
As a result of Opposer’s ownership of valid and subsisting registrations on the
Principal Register for its ESI mark, priority is not at issue with respect to the goods
Opposition No. 91221155

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identified in Opposer’s pleaded registrations vis-à-vis Applicant’s goods and services
recited in its application. King Candy, Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).
Likelihood of Confusion
Opposer argues that the marks are similar, and that the goods are identical in
part, and that the goods and services otherwise are related. Opposer also points to
two instances of purported actual confusion.
Applicant contends that the marks are dissimilar and discounts the actual
confusion evidence. Applicant does not dispute the similarity between the goods and
services.
Our determination under Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on likelihood of confusion. In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Opposer
must establish that there is a likelihood of confusion by a preponderance of the
evidence. In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods and services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976). Varying weights may be assigned to each du Pont factor depending on
the evidence presented. Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344,
98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687-88 (Fed. Cir. 1993). The relevant du Pont factors in the proceeding now
before us are discussed below.
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As noted above, Applicant does not dispute the similarity between the goods and
services. With respect to the du Pont factors regarding the similarity of the goods and
services, we must look to the goods as identified in Opposer’s registrations and the
goods and services listed in the application. See Stone Lion Capital Partners, LP v.
Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014), quoting
Octocom Sys., Inc. v. Houston Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990); Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490,
1 USPQ2d 1813 (Fed. Cir. 1987); see also Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion must
be found as to the entire class if there is likely to be confusion with respect to any
good or service that comes within the identification of goods or services in that
particular class).
Opposer’s goods are identified as “digital audio peripherals and interfaces,
namely, digital audio converters, sound mixers, pre amplifiers and audio signal
processors; loud speakers” and “musical instruments.” Applicant’s goods are
identified as “apparatus for recording, transmission or reproduction of sound and/or
images and/or electronic data, namely, audio interfaces for computers, powered audio
speakers, microphones, headphones, sound mixers, MP3 players, and DJ and MIDI
controllers in the nature of electronic controllers for musical instrument digital
interface” and “electronic musical instruments.” Applicant’s services are recited as
“retail store services, online retail store services and wholesale store services
featuring [Applicant’s goods].”
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Insofar as the goods are concerned, they overlap in part. Opposer’s “musical
instruments” are the same as or encompass Applicant’s “electronic musical
instruments” in Class 15. Further, Opposer’s “digital audio peripherals and
interfaces, namely, digital audio converters, sound mixers, pre amplifiers and audio
signal processors; and loud speakers” are the same as or encompass Applicant’s
“audio interfaces for computers, powered audio speakers and sound mixers” in Class
9.
Given the identity of the goods, at least in part, and the lack of restrictions on
trade channels and classes of consumers in the identifications of goods, we presume
that these goods travel through the same channels of trade, and to the same classes
of customers. Citigroup Inc. v. Capital City Bank Group Inc., 98 USPQ2d at 1261,
citing Hewlett Packard Co. v. Packard Press, Inc., 281 F.2d 1261, 62 USPQ2d 1001,
1005 (Fed. Cir. 2002). See In re Yawata Iron & Steel Co., Ltd., 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); American Lebanese
Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d
1022, 1028 (TTAB 2011); In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 (TTAB
1994); see also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
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).
Opposition No. 91221155

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With respect to Opposer’s goods and Applicant’s services in Class 35, Applicant’s
“retail store services, online retail store services and wholesale store services” feature
the very types of goods identified in Opposer’s registrations. It is well recognized that
confusion may be likely to occur from the use of the same or similar marks for goods,
on the one hand, and for services involving those goods, on the other. See, e.g., In re
Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (holding
BIGG’S (stylized) for retail grocery and general merchandise store services and
BIGGS and design for furniture likely to cause confusion); In re H.J. Seiler Co., 289
F.2d 674, 129 USPQ 347 (CCPA 1961) (holding SEILER’S for catering services and
SEILER’S for smoked and cured meats likely to cause confusion); In re United Serv.
Distribs., Inc., 229 USPQ 237 (TTAB 1986) (holding mark consisting of a design
featuring silhouettes of a man and woman used in connection with distributorship
services in the field of health and beauty aids and mark consisting of a design
featuring silhouettes of a man and woman used in connection with skin cream likely
to cause confusion); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986)
(holding 21 CLUB for various items of clothing and THE “21” CLUB (stylized) for
restaurant services likely to cause confusion); In re U.S. Shoe Corp., 229 USPQ 707
(TTAB 1985) (holding CAREER IMAGE (stylized) for retail women’s clothing store
services and CREST CAREER IMAGES (stylized) for uniforms likely to cause
confusion); Corinthian Broad. Corp. v. Nippon Elec. Co., Ltd., 219 USPQ 733 (TTAB
1983) (holding TVS for transmitters and receivers of still television pictures and TVS
for television broadcasting services likely to cause confusion); Steelcase Inc. v.
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Steelcare Inc., 219 USPQ 433 (TTAB 1983) (holding STEELCARE INC. and design
for refinishing of furniture, office furniture, and machinery and STEELCASE for
office furniture and accessories, likely to cause confusion). When the goods and
services in question are well known or otherwise generally recognized as having a
common source of origin, as in the present case (e.g., retail store services featuring
audio speakers and musical instruments, and the goods themselves), the burden of
establishing relatedness is easier to satisfy. In re St. Helena Hosp., 774 F.3d 747, 113
USPQ2d 1082, 1087 (Fed. Cir. 2014). Here, for example, we find relatedness based on
the fact that Applicant’s services clearly feature the very goods identified in Opposer’s
registrations. See In re Coors Brewing Co., 343 F.3d 1340, 1347, 68 USPQ2d 1059,
1064 (Fed. Cir. 2003) (“brewpubs” and “beer”); Hewlett-Packard Co. v. Packard Press,
Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002) (“electronic
transmission of data and documents via computer terminals” and “facsimile
machines, computers, and computer software”).
Opposer’s goods and Applicant’s services, as identified, are not restricted to any
specific trade channels and so it must be assumed that they travel in the trade
channels normal for such goods and services. In re Diet Ctr., Inc., 4 USPQ2d 1975,
1976 (TTAB 1987). Here, given the relatedness of the goods and services, the normal
trade channels are likely to be the same or similar (e.g., retail stores and online retail
websites), and would be offered to the same classes of purchasers, including ordinary
consumers.
Opposition No. 91221155

20

The du Pont factors regarding the similarity in the goods and/or services, trade
channels and purchasers weigh in favor of a finding of likelihood of confusion.
The legal identity (in part) of Opposer’s and Applicant’s goods and their
overlapping channels of trade not only weigh heavily in favor of a finding of likelihood
of confusion, but also reduce the degree of similarity between the marks necessary to
find a likelihood of confusion. In re Viterra, 101 USPQ2d at 1908; In re Mighty Leaf
Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); In re Max Capital Group
Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010).
Turning now to the marks, we must compare Opposer’s stylized mark ESI to
Applicant’s mark ESIO (in standard character form) as to appearance, sound,
connotation and commercial impression. Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1691 (Fed. Cir. 2005), quoting In
re E. I. du Pont de Nemours & Co., 177 USPQ at 567. “The proper test is not a side-
by-side comparison of the marks, but instead ‘whether the marks are sufficiently
similar in terms of their commercial impression’ such that persons who encounter the
marks would be likely to assume a connection between the parties.” Coach Servs. Inc.
v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(citation omitted).
The letters ESI and ESIO comprising the marks are similar in appearance,
differing by only one letter, namely, the final letter “O” in Applicant’s mark. As for
the stylization of the letters in Opposer’s mark, we note that Applicant’s mark is in
standard characters, so we must assume that it could be displayed in any size, color,
Opposition No. 91221155

21

or font, including a size, color, and font identical or similar to those in Opposer’s mark.
In re Viterra Inc., 101 USPQ2d at 1909; Citigroup Inc. v. Capital City Bank Group
Inc., 98 USPQ2d at 1258-59. Indeed, an example of Applicant’s mark as actually used
( ) reveals a stylization somewhat similar to Opposer’s registered mark
.
Given that the marks ESI and ESIO differ by only one letter at the end of
Applicant’s mark, consumers are likely to pronounce them in a similar fashion. Based
on the record, the marks have no meanings, and consumers are likely to perceive
them simply as similar letter combinations. Any perceived difference in meaning is
easily outweighed by the other similarities.
In sum, given the similarities in appearance and sound, the marks engender
overall commercial impressions that are substantially similar. Weiss Assocs. Inc. v.
HRL Assocs. Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1841 (Fed. Cir. 1990) (TMS and
TMM only differ by the last letter and are confusingly similar; “It is more difficult to
remember a series of arbitrarily arranged letters than it is to remember figures.”). In
past cases, the Board has found that marks differing by only a single letter are
confusingly similar. See Apple Computer v. TVNET.net Inc., 90 USPQ2d 1393, 1396
(TTAB 2007) (VTUNES.NET vs. ITUNES); Interlego AG v. Abrams/Gentile
Entertainment Inc., 63 USPQ2d 1862, 1863 (TTAB 2002) (“Obviously, the marks
LEGO and MEGO are extremely similar in that they differ simply by one letter.”); In
re Total Quality Group Inc., 51 USPQ2d 1474, 1476 (TTAB 1999) (“Applicant’s mark
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STRATEGYN and registrant’s mark STRATEGEN are phonetic equivalents and
differ by only one letter.”).
The similarity in the marks weighs in Opposer’s favor.
The parties have raised one other du Pont factor, namely, Opposer’s contention
that there has been actual confusion between the marks. According to Mr.
Riethmueller, Opposer “has received numerous inquiries in which customers are
confused as to the source of goods bearing the ESI and ESIO marks.” 13 TTABVUE
5. Opposer highlighted two purported instances of actual confusion between the
parties’ marks. One email is from a music producer and sound designer, and another
email is from a customer. 13 TTABVUE 5-6. In the first one, the author inquired “Is
ESIO be [sic] a part of ESI or its chinese [sic] fake?” 13 TTABVUE 64. The second
email inquired as to product compatibility issues. 13 TTABVUE 66-74.
The emails offered in support of actual confusion are hearsay. Even ignoring that
this evidence consists of hearsay, it is entitled to little weight. Without direct
testimony from these individuals, there is insufficient information to ascertain what
they were thinking, or what caused the purported confusion. See Georgia-Pacific
Corp. v. Great Plains Bag Co., 614 F.2d 757, 204 USPQ 697, 701 (CCPA 1980) (court
held statements offered to prove the state of mind of a third party concerning
confusion between two marks is hearsay, observing: “Actual confusion is entitled to
great weight but only if properly proven … Such is not the case here.”); see also
Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1334 (TTAB 1992)
(inquiries as to corporate affiliations is not evidence of confusion because, without
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more, they “indicate that these persons were aware that [the companies at issue] were
two different entities”); Elec. Water Conditioners, Inc. v. Turbomag Corp., 221 USPQ
162, 164 (TTAB 1984) (“That questions have been raised as to the relationship
between firms is not evidence of actual confusion of their trademarks.”) (citation
omitted). Simply put, the testimony relating to these incidents lacks sufficient detail
to demonstrate actual confusion.
We conclude that purchasers familiar with Opposer’s “digital audio peripherals
and interfaces, namely, digital audio converters, sound mixers, pre amplifiers and
audio signal processors; loud speakers” and “musical instruments” sold under the
mark ESI and design would be likely to believe, upon encountering Applicant’s
“apparatus for recording, transmission or reproduction of sound and/or images and/or
electronic data, namely, audio interfaces for computers, powered audio speakers,
microphones, headphones, sound mixers, MP3 players, and DJ and MIDI controllers
in the nature of electronic controllers for musical instrument digital interface” and
“electronic musical instruments,” and “retail store services, online retail store
services and wholesale store services featuring [Applicant’s goods]” offered under the
mark ESIO that the goods and services originated with or are somehow associated
with or sponsored by the same entity.
DECISION:
The counterclaim is dismissed. The opposition is sustained, and registration to
Applicant is refused.