Gibson Guitar Corp.

Trademark Trial and Appeal Board

Jun 14, 2012

No. 85127067 (T.T.A.B. Jun. 14, 2012)

Mailed:
June 14, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Gibson Guitar Corp.
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Serial No. 85127067
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Andrea E. Bates of Bates & Bates LLC, for Gibson Guitar Corp.

Alex Seong Keam, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Quinn, Holtzman, and Ritchie, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Gibson Guitar Corp. (“applicant”) filed an application to
register the mark FIREBIRD X, in standard character form, for
goods identified as “guitars,” in International Class 15.1 The
Trademark Examining Attorney refused registration of applicant’s

1 Serial No. 85127067, filed September 10, 2010, pursuant to Section
1(b) of the Trademark Act, 15 U.S.C. §1051(b), claiming a bona fide
intent to use the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 85127067
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mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§1052(d), on the ground that applicant’s mark so resembles the
registered mark FIREBIRD, in typed drawing form, for “electric
audio equipment, namely, musical instrument sound processors
comprising one or more of the following components, namely,
amplifiers, equalizers, and speakers,” in International Class 9,2
that when used on or in connection with applicant’s identified
goods, it is likely to cause confusion or mistake or to deceive.
Upon final refusal of registration, applicant filed a
timely appeal. Both applicant and the examining attorney filed
briefs, and applicant filed a reply brief. For the reasons
discussed herein, the Board affirms the refusal to register.
We base our determination under Section 2(d) on an analysis
of all of the probative evidence of record bearing on a
likelihood of confusion. 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 Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between
the marks and the similarities between the goods or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry

2 Registration No. 2757284, issued August 26, 2003. Sections 8 and 15
affidavits accepted and acknowledged.
Serial No. 85127067
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mandated by §2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in
the marks”). We discuss each of the du Pont factors as to which
applicant or the examining attorney submitted argument or
evidence.
The Marks
We consider and compare the appearance, sound, connotation
and commercial impression of the marks in their entireties. In
re E. I. du Pont De Nemours & Co., 177 USPQ at 567. The mark in
the cited registration consists entirely of the word FIREBIRD.
This appears to be arbitrary for the goods identified therein.
Applicant’s mark incorporates in full the term FIREBIRD,
and merely adds the additional term X. Applicant argues that
the additional X, as a Roman numeral, will indicate to consumers
that its guitars are the tenth in a line of guitars. It is the
general rule that adding a term to an arbitrary mark does not
make it less confusing. See In re Chatam Int’l Inc., 380 F.3d
1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (GASPAR’S ALE and JOSE
GASPAR GOLD); Cola-Cola Bottling Co. v. Joseph E. Seagrams &
Sons, Inc., 526 F.2d 556 188 USPQ 105 (CCPA 1975) (BENGAL and
BENGAL LANCER); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376
F.2d 324, 153 USPQ 406 (CCPA 1967) (THE LILLY and LILLI ANN); In
re U.S. Shoe Corp., 229 USPQ 707(TTAB 1985) (“CAREER IMAGE” AND
“CREST CAREER IMAGES”); In re Riddle, 225 USPQ 630 (TTAB 1985)
Serial No. 85127067
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(“ACCUTUNE” and “RICHARD PETTY’S ACCU TUNE”). We find it most
likely that consumers will expect FIREBIRD X to indicate a
“tenth” addition to applicant’s product line sold under
applicant’s already registered mark.3
In the July 15, 2011 response to office action, applicant
stated that: “A Google search of the term ‘firebird’ results in
over 9,870,000 results. The term is related to cars,
restaurants, computer databases, music, computer search engines,
etc. (See Exhibit ‘W’).” To the extent applicant is arguing
that the term “FIREBIRD” is actually highly suggestive of the
goods at issue, applicant’s Ex. W presented only three pages of
Google results in support of this argument, and they are too
truncated to be understandable.
We find that, viewing the marks in their entireties, the
marks are highly similar in sight, sound, connotation and
commercial impression. Accordingly, we find this du Pont factor
to weigh strongly in favor of finding a likelihood of consumer
confusion.

3 That applicant may also be using the FIREBIRD mark itself for other
goods is not, and cannot be part of our analysis in this ex parte
proceeding.
Serial No. 85127067
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The Goods and Channels of Trade

In determinining the similarity or dissimilarity of the
goods, we note that the more similar the marks at issue, the
less similar the goods or services need to be for the Board to
find a likelihood of confusion. In re Opus One Inc., 60 USPQ2d
1812, 1815 (TTAB 2001). Where the marks are the same, or nearly
so, it is only necessary that there be a viable relationship
between the goods or services to support a finding of likelihood
of confusion. In re Concordia Int’l Forwarding Corp., 222 USPQ
355, 356 (TTAB 1983). Goods or services need not be identical
or even competitive in order to support a finding of likelihood
of confusion. Rather, it is enough that the goods or services
are related in some manner or that some circumstances
surrounding their marketing are such that they would be likely
to be seen by the same persons under circumstances which could
give rise, because of the marks used or intended to be used
therewith, to a mistaken belief that they originate from or are
in some way associated with the same producer or that there is
an association between the producers of each parties’ goods or
services. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
Applicant’s identified goods are “guitars,” while the cited
registration includes “electric audio equipment, namely, musical
instrument sound processors comprising one or more of the
following components, namely, amplifiers, equalizers, and
Serial No. 85127067
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speakers.” The examining attorney has submitted dozens of
copies of use-based, third-party registrations covering goods of
the type in both the application and the cited registration,
including some that were filed by applicant’s own attorney.
Examples are Registration No. 0887812 (“guitars” and
“amplifiers,” “speakers”); Registration No. 3549266 (“guitars”
and “amplifiers”); Registration No. 3721006 (“guitars” and
“amplifiers”); Registration No. 3668886 (“guitars” and “audio
amplifiers”, “audio speakers”); Registration No. 3865402
(“guitars” and “amplifiers”); Registration No. 2849699
(“guitars” and “amplifiers”); Registration No. 2931726
(“guitars” and “amplifiers”); Registration No. 3134906
(“guitars” and “amplifiers”); Registration No. 3492741
(“guitars” and “amplifiers”); and Registration No. 1957393
(“electric guitars,” “acoustic guitars” and “amplifiers for
electric guitars). Copies of use-based, third-party
registrations may serve to suggest that the goods are of a type
which may emanate from a single source. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993).
Additionally, there is nothing in the recital of goods in
either the cited registration or the application that limits
either registrant’s or applicant’s channels of trade. In the
absence of specific limitations in the registration, we must
presume that registrant’s goods will travel in all normal and
Serial No. 85127067
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usual channels of trade and methods of distribution. Squirtco
v. Tomy Corporation, 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir.
1983). See In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB
1992) (because there are no limitations as to channels of trade
or classes of purchasers in either the application or the cited
registration, it is presumed that the registration and the
application move in all channels of trade normal for those
services, and that the services are available to all classes of
purchasers for the listed services). Since there are no
limitations on the channels of trade in applicant’s
identification of goods either, we must make the same
presumption with regard to applicant’s goods. In other words,
there is nothing that prevents registrant’s amplifiers and
speakers from being sold in the same channels of trade and to
the same classes of consumers that purchase applicant’s guitars,
once they are available for purchase (and vice versa). To
further demonstrate that these goods are likely to be sold
together, the examining attorney submitted web evidence of
businesses that sell both types of goods.
The Guitar Center – Buy New & Used Guitars and
Amplifiers at The Guitar Center. Attached to the
February 3, 2001 Office Action, p42. www.hotfrog.com.

Peavey Electronics Corp.: Manufacturer of acoustic,
bass and electric guitars, guitar and bass amps,
drums, as well as M/D/keyboard. Attached to the
February 3, 2001 Office Action, p53.
www.business.com.
Serial No. 85127067
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Samson Technologies Corp.: Syosset, New York based
manufacturer of wireless products, amplifiers,
equalizers, racklight/power distribution systems,
microphones, Brownsville Guitars and Armoured Cables.
Attached to the February 3, 2001 Office Action, p54.
www.business.com.

Musician’s Tech Central: Alvarez handmade guitars;
Auerswald Instruments Basses and guitars; Carvin
Guitars and equipment; Blues Pearl Amplifiers.
Attached to the February 3, 2001 Office Action, p P57-
63. www.musicianstechcentral.com.

American Musical Supply:– selling guitars and amps
featured on same page. Attached to July 28, 2011
Office Action, P14. www.americanmusical.com.

Serial No. 85127067
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Accordingly, we find that the goods are related and
complementary, and the channels of trade would be the same or
similar, and these du Pont factors also weigh in favor of
finding a likelihood of consumer confusion.
Consumer Sophistication
Applicant urges us to consider consumer sophistication. In
this regard, applicant has submitted evidence of the high prices
of its own guitars. We note that we are bound by the
description of goods in the application and the cited
registration. Octocom Systems, Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990) (“[t]he authority is legion that the question of
registrability of an applicant’s mark must be decided on the
basis of the identification of goods set forth in the
application regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the sales
of goods are directed.” [citations omitted]). Thus, we cannot
resort to such extrinsic evidence to restrict the prices of
applicant’s or registrant’s goods. See In re Bercut-Vandervoort
& Co., 229 USPQ 763, 764 (TTAB 1986) (evidence that relevant
goods are expensive wines sold to discriminating purchasers must
be disregarded given the absence of any such restrictions in the
application or registration). We must presume that both
Serial No. 85127067
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applicant’s guitars and registrant’s amplifiers, equalizers, and
speakers, would be sold at all the usual prices for such goods,
which may include relatively inexpensive products sold to
average consumers.
Furthermore, we note that with highly similar marks
identifying related goods, even a careful, sophisticated
consumer of these goods is not likely to note the differences in
the marks. Cunningham v. Laser Golf Corp., 222 F.3d 943, 948-
949 (Fed. Cir. 2000). Furthermore, careful purchasers who do
notice the difference in the marks will not ascribe it to
differences in the source of the goods, but will see the marks
as variations of each other, pointing to a single source.
Accordingly, this du Pont factor is neutral.
The Strength or Fame of the Cited Mark
Applicant argues that the mark in the cited registration is
not famous, while its own line of marks “has achieved a
significant level of fame.” (appl’s brief at 8). This brings
up a situation of reverse confusion, which is no less a problem.
We still must resolve doubt for the senior user of the mark,
which in an ex parte proceeding is presumed to be the one who
registered first (particularly as, we note, applicant has filed
an intent-to-use application). In re Hyper Shoppes (Ohio),
Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); In re
Serial No. 85127067
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Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ
1289, 1290 (Fed. Cir. 1984).
Accordingly, this du Pont factor is neutral.
Conclusion
In summary, we have carefully considered all of the
evidence and arguments of record relevant to the pertinent du
Pont likelihood of confusion factors. We conclude that with
highly similar marks with similar connotations used on similar
and complementary goods, travelling through the same or similar
channels of trade, even if we consider some amount of
sophistication of the consumers, there is a likelihood of
confusion between applicant’s mark FIREBIRD X for “guitars” and
the registered mark FIREBIRD for “electric audio equipment,
namely, musical instrument sound processors comprising one or
more of the following components, namely, amplifiers,
equalizers, and speakers.”
Decision: The refusal to register is affirmed.