Euphonic Audio, Inc.

Trademark Trial and Appeal Board

Mar 23, 2004

No. 78059702 (T.T.A.B. Mar. 23, 2004)

Mailed: March 23, 2004
Paper No. 13
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Euphonic Audio, Inc.
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Serial No. 78059702
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Ronald S. Bienstock of Bienstock & Michael, P.C., for
Euphonic Audio, Inc.
William T. Verhosek, Trademark Examining Attorney, Law
Office 114 (K. Margaret Le, Managing Attorney).
_______
Before Cissel, Chapman and Drost, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On April 21, 2003, applicant, a New Jersey
corporation, filed the above-referenced application to
register the mark “EUPHONIC AUDIO” on the Principal
Register for “musical instrument amplifiers and components
therefore [sic], namely, audio speakers, speaker cabinets,
speaker enclosures, sound amplifiers, pre-amplifiers, sound
processors and modifiers, namely[,] delay, reverb and
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78059702
2
distortion effects boxes, both foot operated and speaker
head mounted units,” in Class 9. The basis for filing the
application was applicant’s claim that it had used the mark
in commerce in connection with the specified goods since
November of 1995. Applicant claimed ownership of three
prior United States trademark registrations for unrelated
trademarks, disclaimed the exclusive right to use the word
“audio” apart from the mark as shown and claimed that the
mark has become distinctive within the meaning of Section
2(f) of the Lanham Act.
The first Trademark Examining Attorney1 refused
registration under Section 2(d) the Lanham Act, 15 U.S.C.
Section 1052(d), on the ground that the mark applicant
seeks to register so resembles the mark “EUPHONIX,” which
is registered2 for “professional recording studio electronic
equipment and machine interface programs, namely computer-
assisted audio mixing systems comprising a mix controller
and an audio mainframe, consisting of audio processing
modules, controller modules, bar graph meters, audio
attenuators, pre-amplifiers, equalizers, auxiliary sends,
1 The Examining Attorney noted above took over the prosecution of
this application after the first Office Action.
2 Reg. No. 1,576,206, issued on the Principal Register to
Euphonix, Inc. on January 9, 1990; a Section 8 affidavit was
acceptred, and the registration was subsequently renewed.
Ser No. 78059702
3
faders, bus amplifiers, monitor outputs, headphone
amplifiers, test-tone oscillators, talk-back microphones
and read-only memories (ROMs),” in Class 9, that confusion
is likely. He reasoned that the marks “are essentially
phonetic equivalents,” and that the goods “are virtually
identical because they are all musical instrument[s] and
components.”
Applicant responded to the refusal to register with
argument that confusion is not likely because the marks
convey distinct commercial impressions and the goods are
not commercially related. While applicant conceded that
the goods in the application and the cited registration
“involve creating music by using electronic equipment in
its most broadest [sic] sense, Registrant’s goods contain
distinctions as compared to Applicant’s goods which further
eliminates [sic] a likelihood of consumer confusion between
Registrant’s mark and Applicant’s mark.” Applicant went on
to distinguish between its products, which it argued allow
professional bass guitarists to amplify, distort and add
effects to their instruments’ sounds during live musical
performances, and the goods listed in the cited
registration, which applicant characterized as
“professional recording studio electronic equipment and
Ser No. 78059702
4
machine interface programs,” the same terms used in the
registration itself.
Submitted in support of applicant’s arguments were
exhibits which applicant argued establish that registrant’s
professional recording equipment and machine interface
programs do not move in the same channels of trade as
applicant’s musical instrument amplification equipment
does. Applicant contended that the goods of the registrant
are sold in the United States exclusively by direct sales,
as opposed to the ordinary musical instrument retail sales
channels utilized by applicant. Applicant’s exhibits
consist of advertisements for both applicant’s products and
the products of the owner of the cited registration, but
they do not establish that the purchasers of the goods
listed in the application and the cited registration,
respectively, are necessarily different.
The second Examining Attorney was not persuaded by
applicant’s arguments or evidence. In the second Office
Action, he made the refusal to register based on Section
2(d) of the Act final.
Submitted with that Office Action as additional
support for the refusal to register were copies of third-
party registrations and advertisements and promotional
materials the Examining Attorney had retrieved from
Ser No. 78059702
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Internet sources. The Examining Attorney argued that this
evidence establishes that other entities use their marks
respective in connection with the marketing of both goods
like those specified in the application as well as goods
like the products identified in the cited registration.
Yamaha, for example, promotes its Digital Audio Workstation
mixer as a “professional-quality recording studio that you
can use just about anywhere.” This Internet advertisement
appears to be directed both to musicians and to audio
production professionals, given that loudspeakers and
reverb units are touted on the same website. On the same
web page, Yamaha promotes its powered monitor loudspeakers,
amplifiers and commercial audio rack-mounted mixers, which
are touted as “ideal for small-to-mid-sized installations,
studios, smaller PA systems, broadcast facilities and for
touring applications…” Presumably, “touring applications”
indicates use by musicians performing on tour. In another
promotional piece, Sony Corporation is shown to market
professional recording and editing machines as well as
speakers, signal processors and amplifiers. Additionally,
a company called Struder advertises studio monitor
speakers, amplifiers, mixing consoles and digital mixing
consoles for use in broadcasting applications and as well
as in live performances. The third-party registrations
Ser No. 78059702
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submitted show that amplifiers, speakers and audio mixer
consoles are listed as the goods for which the various
registered marks are registered.
Applicant timely filed a Notice of Appeal. Both
applicant and the Examining Attorney filed briefs on
appeal, but applicant did not request an oral hearing
before the Board.
Based on consideration of the record and the written
arguments before us in this appeal, we hold that the
Examining Attorney has met his burden of establishing that
confusion within the meaning of Section 2(d) of the Act is
likely.
In the case of E.I. duPont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973), the predecessor to our
primary reviewing court set out the factors to be
considered in determining whether confusion is likely.
Chief among these factors are the similarity the marks as
to appearance, pronunciation, meaning and commercial
impression, and the similarity of the goods set forth in
the application and registration, respectively.
In the case at hand, the record shows that the goods
set forth in the application are commercially related to
the goods listed in the cited registration. The mark
applicant seeks to register creates a commercial impression
Ser No. 78059702
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quite similar to the one engendered by the cited registered
mark. Under these circumstances, confusion is plainly
likely.
Turning first to the marks, we note that greater
weight may be given to the dominant feature of the mark in
determining whether confusion is likely. Tektronix, Inc.
v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA
1976). The descriptive, and hence disclaimed, term “AUDIO”
in the mark applicant seeks to register has no significant
source-identifying function in relation to the audio
products identified in the application. The dominant
portion of that mark is plainly the term “EUPHONIC,” which
is very similar to the registered mark, “EUPHONIX.”
“EUPHONIX” is the phonetic equivalent of the plural of
“EUPHONIC.” The addition of another word to a registered
mark is generally insufficient to overcome the likelihood
of confusion. See, for example, In re United States Shoe
Corp., 229 USPQ 707 (TTAB 1985). This is especially so
when the term which is added to the registered mark is
merely descriptive of the goods with which it is used.
Clearly, these two marks are similar enough that their use
in connection with related goods is likely to cause
confusion.
Ser No. 78059702
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We thus turn to examination of the relationship
between the goods specified in the application and those
set forth in the cited registration. As the Examining
Attorney points out, in order for confusion to be likely,
they need only be related in some manner, or the conditions
surrounding their marketing need to be such that they could
be encountered by the same purchaser under circumstances
that could give rise to the mistaken belief that the goods
come from a common source. In re International Telephone &
Telegraph Corp., 197 USPQ 910 (TTAB 1978).
While we cannot agree that the Examining Attorney’s
broad generalization that “both goods are musical equipment
and components” (brief, p. 5) is sufficient to establish
that confusion is likely in the instant case. Applicant’s
goods are electronic components which amplify music, while
the goods set forth in the registration are recording
studio electronic equipment and machine interface programs.
These products are not necessarily restricted to the field
of music, but they are all related to the electronic
production or reproduction of sound. The evidence of
record nonetheless supports the conclusion that the goods
set forth in the registration and those specified in the
application are commercially related, in that third parties
have used their respective marks on both types of products
Ser No. 78059702
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and have registered their marks both for the kinds of
products applicant sells and for the types of goods for
which the registrant has registered its mark. As noted
above, the materials submitted by the Examining Attorney
show that anyone visiting any of the quoted Internet sites,
which of course includes both musicians and audio
engineers, has a basis upon which to understand that
amplifiers, speakers and sound processing equipment emanate
from the same sources which provide electronic recording
equipment. Even if the goods listed in the cited
registration were only directed to audio engineers, their
use of the products bearing the mark would likely be
noticed by the musicians who are being recorded. Moreover,
in that the application does not limit or restrict the
intended users or purchasers of applicant’s amplifiers,
speakers, sound processors or modifiers, the language used
in the application to identify the goods must be
interpreted to encompass all such products, including
amplifiers, speakers, sound processors and modifiers used
by audio recording engineers in connection with their
recording studio activities. Thus, the classes of
purchasers to whom these goods are marketed overlap.
Based on the evidence of record, we conclude that
either musicians or audio engineers who are familiar with
Ser No. 78059702
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the professional recording equipment sold under the mark
“EUPHONIX” are likely, when presented with the mark
“EUPHONICS AUDIO” on speakers, amplifiers, reverb and
distortion pedals, to assume that a single source is
responsible for both.
Decision: The refusal to register under Section
2(d) of the Act is affirmed.