Hayashi

Trademark Trial and Appeal Board

Feb 27, 2001

No. 75444349 (T.T.A.B. Feb. 27, 2001)

2/27/01 Paper No. 9
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Hayashi
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Serial No. 75/444,349
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I. Morley Drucker and John M. Kim of Fulwider Patton Lee &
Utecht, LLP for Japan Music Agency Co., Ltd.
Raul F. Cordova, Trademark Examining Attorney, Law Office 114
(Margaret Le, Managing Attorney).
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Before Seeherman, Hohein and Rogers, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Yoshiki Hayashi, the assignee and president of the
original applicant, Japan Music Agency Co., Ltd., is currently
the owner of an application to register the mark "EXTASY RECORDS
INTERNATIONAL" for "a series of sound recordings, namely,
phonograph records, prerecorded compact discs, and videos
featuring music and entertainment."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to the goods listed in the
1 Ser. No. 75/444,349, filed on March 4, 1998, which alleges a bona
fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/444,349
2
application, so resembles the mark "EAR X-TACY," which is
registered in the format shown below
for "prerecorded cassette tapes, video tapes, compact discs,
laser discs and records featuring music and entertainment and
blank cassette tapes and blank video tapes and compact disc and
cassette tape storage cases,"2 as to be likely to cause
confusion, mistake or deception.3
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
The determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
2 Reg. No. 1,717,667, issued on September 22, 1992, which sets forth
dates of first use of August 1985; combined affidavit §§8 and 15
accepted. The word "EAR" is disclaimed.
3 While, in his initial Office Action, the Examining Attorney also
imposed a requirement for a disclaimer, pursuant to Section 6(a) of
the Trademark Act, 15 U.S.C. §1056(a), of the words "RECORDS
INTERNATIONAL," neither applicant nor the Examining Attorney made any
further reference thereto until the Examining Attorney's appeal brief,
in which it is stated in a footnote that "[a] disclaimer requirement
was also issued and met by the applicant." It is noted, however, that
the application does not contain a disclaimer of such words and we
consider the requirement therefor to have been waived. Nevertheless,
it obviously is still the case that the absence of a disclaimer would
not preclude others engaged in the production and/or marketing of
sound recordings from using the words "records" and/or "international"
descriptively in connection with such goods.
Ser. No. 75/444,349
3
192 USPQ 24, 29 (CCPA 1976), "in any likelihood of confusion
analysis[,] two key considerations are the similarity of the
goods and the similarity of the marks."4 Here, inasmuch as
applicant's goods are identical in part to registrant's goods and
are otherwise closely related thereto,5 the focus of our inquiry
is on the similarities and dissimilarities in the respective
marks when considered in their entireties. Moreover, as pointed
out in Century 21 Real Estate Corp. v. Century Life of America,
970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert.
denied, 506 U.S. 1034 (1994), "[w]hen marks would appear on
virtually identical goods ... , the degree of similarity [of the
marks] necessary to support a conclusion of likely confusion
declines."
4 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in the marks."
5 Applicant, referring to a "Dunn [sic]and Bradstreet Identifier
Report" which it has made of record, argues that registrant's mark
"is, in fact, used as the name of a retail store located in
Louisville, Kentucky which sells compact discs, audio tapes, and the
like" and that it "thus appears" that registrant's mark "is a mark
applied to CDs, etc., not as a producer of such goods, but as a
retailer of such goods." Applicant's attempt, however, to
characterize registrant's mark as a service mark for the retail sale
of sound recordings rather than as a trademark for such goods
("i.e.[,] as a record label for prerecorded records, tapes, CDs,
etc.") is unavailing inasmuch as it is well settled that the issue of
likelihood of confusion must be decided on the basis of the goods
and/or services as respectively identified in the application and
cited registration, regardless of what extrinsic evidence may reveal
or suggest concerning the particular nature of the goods and/or
services, their actual channels of trade, or the class of purchasers
to which they are in fact directed and sold. See, e.g., Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990) and Canadian Imperial Bank of
Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813,
1815-16 (Fed. Cir. 1987). Therefore, notwithstanding that registrant
may indeed be a retailer of sound recordings, instead of a producer
Ser. No. 75/444,349
4
Turning, therefore, to consideration of the respective
marks, applicant argues among other things that, when considered
in their entireties, the marks are dissimilar in appearance,
sound and commercial impression. In particular, applicant
observes that the marks "are not identical in spelling and
appearance" and that "the shared term between the marks is only
phonetically similar ('X-tacy' and 'Extasy')." Consequently,
applicant asserts that, "[a]lthough the examining attorney
discounts the addition of the words 'Records' and 'International'
in Applicant's mark as descriptive, these are two additional
words which comprise seven syllables and serve to further
differentiate Applicant's mark from the cited mark ...."
Applicant also contends that "[i]t is appropriate to
compare the typefaces of the two marks," claiming that "the cited
mark is displayed in a distinctive, stylized, format and thus
presents an entirely different look than the three[-]word mark of
applicant." Specifically, applicant points out that:
[T]he cited mark contains a large stylized
"X" as the prefix of "X-tacy", which sets it
apart from the "Extasy" contained within
Applicant's mark. When considering this,
along with the distinctive, stylized script
of the cited mark in assessing likelihood of
confusion, it is an inevitable conclusion
that the two marks are not confusingly
similar.
Furthermore, applicant maintains that due to the
differences in spelling of the phonetically similar terms "X-
TASY" and "EXTACY," the respective marks overall "are visually
thereof, its registration must be treated as covering a trademark for
such goods.
Ser. No. 75/444,349
5
quite different." Applicant therefore "submits that the phonetic
similarity of one word in the respective multi-word composite
marks will not lead to a likelihood of confusion, if the marks
are assessed in their totality, especially given that
wholesalers, retailers and consumers of sound recordings purchase
recordings from catalogue sheets, advertisements, and promotional
material and/or listening to the recordings, and thus see the
marks in print rather than making the purchase via phone."
Lastly, applicant urges that the marks at issue
"present different overall commercial impressions" due to their
"vastly different meanings." Applicant, in this regard, insists
that there is no likelihood of confusion because:
The cited mark, "Ear-X-Tacy" [sic] (stylized)
is suggestive of something delightful to the
ear and conveys a commercial impression of a
delightful listening experience. (The
dictionary definition of "ecstasy" is
"rapturous delight"). The applicant's mark,
EXTASY RECORDS INTERNATIONAL," emphasizes the
international recording aspect of the mark,
and the commercial impression conveyed is one
of a conglomerate record label that
represents numerous international recording
artists.
The Examining Attorney, on the other hand, argues that
when used in connection with identical goods, "[t]here is a
likelihood of confusion between the applicant's and registrant's
marks because the prominent portion of each [of] the marks are
[sic] phonetically identical" and visually quite similar.
Specifically, and citing a definition from The American Heritage
Dictionary of the English Language (3rd ed. 1992) which lists the
word "ecstasy" as meaning, inter alia, "1. Intense joy or
Ser. No. 75/444,349
6
delight,"6 the Examining Attorney maintains that the prominent
terms of the marks are "EXTASY" and "X-TACY," given the
descriptiveness of the words "RECORDS INTERNATIONAL" in
applicant's mark and the disclaimer of the word "EAR in
registrant's mark. According to the Examining Attorney, the
terms "EXTASY" and "X-TACY" in the respective marks are
"phonetically identical and graphically very similar" because
(footnote omitted):
These two terms are misspellings of "ecstasy"
and constitute arbitrary terms as used in
relation to the goods. The meaning of each
particular term in both instances is the same
and this meaning is maintained after the
addition of the descriptive and disclaimed
terminology. Both marks identify their music
product as providing "intense joy or
delight." Each mark must be compared in
[its] ... entirety to the other to sense the
overall commercial impression of them, but
[descriptive and] disclaimed terms help
diagnosed [sic] what are the prominent
portions of the marks. In re [El] Torito
Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988).
We agree with the Examining Attorney that confusion is
likely from the contemporaneous use of the respective marks in
connection with such identical sound recordings as phonograph
records, compact discs and video tapes. While both applicant and
the Examining Attorney are indeed correct that the marks at issue
must be compared in their entireties, it is nevertheless the
6 While the reference to such definition for the first time in the
Examining Attorney's brief is untimely under Trademark Rule 2.142(d),
we have nonetheless considered the evidence inasmuch as it is settled
that the Board may properly take judicial notice of dictionary
definitions. See, e.g., Hancock v. American Steel & Wire Co. of New
Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953) and University of
Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ
594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
Ser. No. 75/444,349
7
case, as our principal reviewing court has indicated, that in
articulating reasons for reaching a conclusion on the issue of
likelihood of confusion, "there is nothing improper in stating
that, for rational reasons, more or less weight has been given to
a particular feature of a mark, provided [that] the ultimate
conclusion rests on consideration of the marks in their
entireties." In re National Data Corp., 753 F.3d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985). For instance, according to the court,
"that a particular feature is descriptive ... with respect to the
involved goods or services is one commonly accepted rationale for
giving less weight to a portion of a mark ...." Id.
Here, because of the obvious descriptiveness of the
words "RECORDS INTERNATIONAL" in applicant's "EXTASY RECORDS
INTERNATIONAL" mark and the descriptiveness, as evidenced by the
disclaimer thereof, of the word "EAR" in registrant's "EAR X-TACY
mark, we concur with the Examining Attorney that, when considered
in their entireties, the dominant and source-distinguishing
portions of the respective marks are the terms "EXTASY" and "X-
TACY," both of which are mere misspellings and hence are phonetic
equivalents of the word "ECSTASY." As a result, and because the
descriptive matter in applicant's and registrant's marks does not
meaningfully change the readily perceived significance of either
the terms "EXTASY" or "X-TACY" therein, the respective marks
overall are substantially similar in connotation.
Nevertheless, we acknowledge that the marks at issue
have differences in appearance. Although applicant is simply
incorrect in asserting that the respective marks differ in their
Ser. No. 75/444,349
8
typefaces, since a typed drawing of a mark, which is the format
selected by applicant, encompasses any reasonable manner of
graphical display of a mark, including in this instance the same
stylized font utilized by registrant for its mark,7 it is still
the case that, when viewed in their entireties, applicant's
three-word mark looks different from registrant's two-word mark,
particularly since the term "EXTASY" forms the first word of
applicant's mark while the term "X-TACY" is the last word in
registrant's mark. In addition, such terms are not only spelled
differently, but registrant's mark contains a hyphen, which is
absent from applicant's mark.
The differences in appearance, however, are considered
to be outweighed by the substantial similarities, as discussed
previously, in sound and connotation of the respective marks,
especially since, contrary to applicant's assertions, marks
identifying and distinguishing sound recordings are frequently
advertised aurally, such as on the radio, rather than just in
print media. It is therefore the case, particularly insofar as
ordinary consumers are concerned, that they would be exposed to
applicant's and registrant's marks by ear as well as by eye.
Consequently, and since the respective marks, when considered in
7 In legal contemplation, a typed drawing of a mark does not limit the
depiction thereof to any special form. See Phillips Petroleum Co. v.
C. J. Webb, Inc. 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971). Instead,
"[a]s the Phillips Petroleum case makes clear, when [an] applicant
seeks a typed or block letter registration of its word mark, then the
Board must consider all reasonable manners in which ... [the mark]
could be depicted". INB National Bank v. Metrohost Inc., 22 USPQ2d
1585, 1588 (TTAB 1992). Here, we see no reason why applicant could
not choose to present its entire mark in the same font as is used in
the display of registrant's mark.
Ser. No. 75/444,349
9
their entireties, convey substantially the same commercial
impression of an intensely delightful or joyous listening
experience, confusion as to the source or sponsorship of
applicant's and registrant's sound recordings is likely to occur.
Finally, to the extent that the differences in appearance between
applicant's "EXTASY RECORDS INTERNATIONAL" mark and registrant's
"EAR X-TACY" mark may nonetheless serve to raise any doubt as to
our conclusion in this regard, we resolve such doubt, as we must,
in favor of the registrant. See, e.g., In re Hyper Shoppes
(Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988)
and In re Pneumatiques, Caoutchouc Manufacture et Plastiques
Kleber-Columbes, 487 F.2d 918, 179 USPQ 729 (CCPA 1973).
Decision: The refusal under Section 2(d) is affirmed.