JBL Inc.v.Sound Effects Communications Corp.

Trademark Trial and Appeal Board

Jun 16, 1998

No. 91095479 (T.T.A.B. Jun. 16, 1998)

Hearing: Paper No. 39
July 8, 1997 ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 16,98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
JBL Incorporated
v.
Sound Effects Communications Corp.
_____
Opposition No. 95,479
to application Serial No. 74/468,464
filed on December 10, 1993
_____
Theodore R. Scott of Jones, Day, Reavis & Pogue for JBL
Incorporated
Bennett David Krasner for Sound Effects Communications Corp.
______
Before Cissel, Seeherman and Hanak, Administrative Trademark
Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Sound Effects Communications Corp. has applied to
register SOUND EFFECTS for “automotive, commercial and
residential sound equipment, namely, speakers and
Opposition No. 95,479
2
antennas.”1 This application was filed on December 10,
1993, and claimed first use of the mark on the goods and
first use in interstate commerce on March 1, 1982.
As grounds for opposition, opposer has alleged that it
manufactures and sells automotive, commercial and
residential audio systems; that beginning in June 1993
opposer started using the descriptive term “SoundEffects” in
connection with a home theater speaker system which it was
preparing to market under the mark JBL; that other
manufacturers of audio systems and equipment have used the
descriptive words “sound effects” in advertising their
products which create sound effects; and that no single
vendor of audio systems or components which create or
produce sound effects is entitled to obtain a registration
purporting to give it the exclusive right to use the words
“sound effects” in connection with such products. In
effect, opposer has asserted that the registration of SOUND
EFFECTS would be contrary to the provisions of Section
2(e)(1) of the Trademark Act, in that this term is merely
descriptive of applicant’s goods.

1 The application originally also included, in the
identification of goods, “radios, stereos, amplifiers, tape
decks, video and compact disc players, and mobile telephones.”
The circumstances under which the identification was restricted
will be discussed infra.
Opposition No. 95,479
3
In its answer applicant has denied the salient
allegations of the notice of opposition.
The record includes the pleadings; the file of the
opposed application; and the testimony, with exhibits, of
Mark R. Friedman, Michael Glickman, Felix Romano, Cindy
Stuart, Eli David Harary, Tom C. Shields, Frank Meredith and
Gina Harman.2 Opposer has also submitted, under a notice of
reliance, its requests for admission which, because
applicant never responded to them, opposer asserts should be
deemed admitted; and an Office action, with attachments,
which the Office issued in connection with opposer’s
application Serial No. 74/427,179.3
The case has been fully briefed, and the parties were
represented at an oral hearing before the Board.

2 The parties stipulated that discovery depositions could be
submitted as testimony depositions, and both parties have done
so.
3 During its testimony period applicant submitted a “notice of
reliance” in which it stated that it “gives notice of its
reliance on the following documents.” However, applicant did not
submit any documents with the notice of reliance, as required by
Trademark Rules 2.120(j)(3)(i) and 2.122(e). Accordingly, the
file of opposer’s application Serial No. 74/427,179 and opposer’s
responses to applicant’s interrogatories and “notice to produce,”
which were listed in the notice of reliance, were never properly
made of record. (Further, if the notice to produce refers to a
request for the production of documents, it should be noted that
documents produced in response to such a request may not be made
of record pursuant to a notice of reliance.) However, the
various depositions which were referred to in the notice of
reliance, and which were submitted several months later on
February 5, 1997, are of record because the parties stipulated
that the discovery depositions could be treated as testimony
depositions, and the rules require only that testimony
depositions be filed “promptly” with the Trademark Trial and
Appeal Board. Trademark Rule 2.125(c).
Opposition No. 95,479
4
Before turning to a discussion of the issues in this
case, it is first necessary to determine just what those
issues are. As indicated above, opposer brought this
proceeding on the ground that applicant’s mark is merely
descriptive of its goods. However, in its brief on the
case, opposer asserted that applicant had admitted (by its
failure to respond to opposer’s request for admission) that
it had not used the mark on six of the eight types of goods
identified in the application. As a result, opposer claimed
that the application should be rejected as “a blatant effort
to perpetrate a fraud on the Patent & Trademark Office.”
Brief, p. 4.
Subsequent to the filing of opposer’s brief, applicant
filed a motion to amend its application to delete the six
categories of goods referred to by opposer in its brief.
Applicant stated in that motion that applicant had
“communicated orally on several occasions that it would move
to amend its application to restrict the identification of
goods,” and that
during the course of the first deposition Applicant
realized that it was in error to apply for a trademark
in the goods identified as “Automotive, commercial and
residential sound equipment, namely, stereos,
amplifiers, tape decks, video and compact disc players
and mobile telephones”. Unfortunately, due to an
oversight, the amendment is request[ed] at this time.

Opposition No. 95,479
5
Opposer consented to the amendment, but argued that
applicant’s motion constituted an admission that applicant’s
president made a false oath when he swore that applicant had
used the mark on all the identified goods since 1982, and
constituted a confession that applicant attempted to
perpetrate a fraud on the Patent and Trademark Office when
it sought to obtain a registration of the mark for six
categories of goods on which the mark had never been used.
Opposer did acknowledge that applicant’s attorney had
stated, “on a number of occasions,” that applicant would
amend its application to restrict the identification, but
that applicant had not done so as of the time opposer had
filed its brief.
The Board, in a decision dated January 6, 1997, allowed
the amendment to the identification because opposer had
consented thereto (and because the amendment limited the
original identification). The Board also denied what it
characterized as opposer’s motion for judgment because
opposer had neither pleaded fraud as a ground for opposition
nor moved to amend the pleading to include a claim of fraud.
At the oral hearing opposer acknowledged that fraud was
not an issue in this proceeding. Therefore, we confirm that
we have not considered this ground.4

4 We would also point out that the issue of fraud was not tried,
and therefore that this case is not amenable to a finding that
the pleadings should be deemed amended pursuant to Fed. R. Civ.
Opposition No. 95,479
6
The second unpleaded issue discussed by opposer in its
brief is that applicant never produced any credible evidence
that it has made trademark use of its mark on the goods,
i.e., speakers and antennas. Opposer asserts that applicant
never proved that it had made use of SOUND EFFECTS as a
trademark for its goods, as opposed to a service mark for
its store services. Opposer states that an applicant must
submit with its application specimens of the mark as used;
that applicant has failed to file specimens which show use
of the mark on the goods; and that “applicant’s failure to
file such specimens, showing the manner in which SOUND
EFFECTS has allegedly been used by it on speakers or
antennas, cannot be cured by the uncorroborated testimony of
its president that SOUND EFFECTS has been used as a mark on
those goods.” Reply brief, pp. 3-4.
We should point out that, unless an applicant’s use of
its mark has been put in issue, an applicant does not have
to affirmatively prove, during an opposition proceeding,
that it has used its mark on the goods identified in the
application. Moreover, the question of the acceptability of
the specimens submitted with an application (as opposed to

P. 15(b). Applicant’s repeated statements to opposer, from the
time of the discovery phase of this proceeding, that it would
make the necessary amendment to the identification, showed that
it was unaware that fraud was an issue in the proceeding, or that
it was required to defend against such a ground.
Opposition No. 95,479
7
whether applicant used its mark in commerce) is not a proper
ground for opposition. See Century 21 Real Estate Corp. v.
Century Life of America, 10 USPQ2d 2034 (TTAB 1989),
reversed on other grounds, 970 F.2d 874, 23 USPQ2d 1698
(Fed. Cir. 1992). Thus, before we can consider whether
applicant has made proper use of its mark on its goods, we
must determine whether this unpleaded issue was tried, such
that the pleadings should be deemed amended pursuant to Fed.
R. Civ. P. 15(b).
After reviewing the record, we find that this issue was
not tried by consent of the parties. The depositions taken
by opposer, although the parties stipulated they could be
used as testimony, were discovery depositions which are, by
their very nature, far-reaching. The fact that opposer
asked about the types of labels used by applicant did not
give applicant notice that the question of whether applicant
had used SOUND EFFECTS as a trademark for speakers and
antennas was in issue. The statements made in applicant’s
brief show that, if it had been aware that there was a need
to do so, it would have provided photographs showing the use
of its mark on its goods. In general, the Board disfavors
the practice of parties’ waiting until their final briefs to
assert unpleaded grounds. In this particular case, we find
no excuse for opposer, which had obtained during discovery
the information upon which it based the two unpleaded
Opposition No. 95,479
8
grounds raised in its brief, not to have moved to amend its
pleadings prior to the trial stage of this proceeding if it
wished to assert these grounds.
This brings us to a consideration of the single ground
pleaded in the notice of opposition: Is SOUND EFFECTS
merely descriptive of “automotive, commercial and
residential sound equipment, namely, speakers and antennas”?
Opposer’s evidence and argument on this point has been, to
say the least, minimal. The only evidence opposer has
submitted on this point is an Office action which opposer
received when opposer itself attempted to register
SOUNDEFFECTS as a trademark for loudspeakers and loudspeaker
systems. Opposer had at one point taken the position that
SOUNDEFFECTS was an acceptable trademark, using a “TM”
symbol with the term on its own promotional materials and
packaging, and had filed an application for this mark in the
Patent and Trademark Office in 1993. In the first Office
action the Trademark Examining Attorney refused registration
on the ground that the mark was merely descriptive of
opposer’s goods, and attached to that action excerpts taken
from the NEXIS database. Opposer decided not to contest
that refusal, and the application was abandoned. It is
these NEXIS excerpts which we must now consider in
determining whether opposer has proved that applicant’s mark
SOUND EFFECTS is merely descriptive.
Opposition No. 95,479
9
We have carefully reviewed the NEXIS materials.
Although several of the excerpts seem to be irrelevant (for,
example, some were included in the Office action merely
because the excerpt contained both the word “speaker” and
“sound effects”5), the NEXIS evidence does include the
following:
Home theaters call for speakers that are equally suited
to movie dialogue, sound effects and orchestral music.
This apparent conflict is elegantly resolved in such
models as the KEF Reference Series and the Infinity
“Kappa” line.
“The New York Times,” April 4, 1993
Headline: How to Get Great Sound Out of Small Speakers
... It contains a very high excursion, 10-inch driver,
allowing it to reproduce explosive sound effects with
ease.
“The San Francisco Chronicle,” February 21, 1990
These surround-sound speakers aim to recreate the sound
effects you hear at the movies—effects that put you in
the midst of the action.
“Consumer Reports,” March 1992
... sound requires at least four separate speakers, two
in front of the viewer and two in back. The rear
speakers serve primarily to render sound effects and
create a sense of aural ambiance for the scene being
watched.
“The New York Times,” October 13, 1991
... with the appropriate decoding equipment it is
possible to direct dialogue, sound effects and
background music to various speakers in front, in back
and at the sides of the viewing room. The subjective
result is virtually equivalent to a theater
presentation.

5 For example, an excerpt from the February 12, 1990 “Automotive
Times” states, “Closed captions translate spoken dialogue into
printed words on the screen, identify speakers and indicate other
information such as sound effects and mood music.”
Opposition No. 95,479
10
“The New York Times,” December 31, 1989
A mark is merely descriptive, and thus unregistrable
under Section 2(e)(1) of the Trademark Act, if, as used in
connection with the identified goods, it immediately conveys
information about an ingredient, quality, characteristic,
feature, etc. thereof, or if it directly conveys information
regarding the nature, function, purpose, or use of the
goods. See In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215 (CCPA 1978).
The NEXIS excerpts quoted above show that SOUND
EFFECTS, as applied to speakers, directly conveys
information about a characteristic of those speakers,
namely, that they are capable of and/or are suitable for
reproducing sound effects. Thus, we find that SOUND EFFECTS
is merely descriptive of, at least, residential and
commercial speakers.
Applicant has argued that most of the NEXIS articles
refer to “Surround Sound and Loudspeakers for Home
Entertainment Systems”, such as those on which opposer
intended to use its mark, and not to speakers such as those
sold by applicant. Brief, p. 7. However, applicant’s
identification is for “automotive, commercial and
residential sound equipment, namely, speakers and antennas.”
As identified, applicant’s goods must be deemed to include
both commercial and residential sound equipment used for
Opposition No. 95,479
11
“Surround Sound” and/or having speakers good at reproducing
sound effects.
We have also taken note of applicant’s argument that
opposer has taken the position that applicant’s mark is
merely descriptive as a strategy:
It is apparent that, but for Applicant’s application,
and prior use, Opposer thought itself entitled to the
mark and found it “distinctive”. Once Opposer
determined that Applicant’s use predated its own,
Opposer decided it was strategically better to abandon
its own application and file this Opposition. Opposer
decided to acquiesce to the trademark Examiner’s
decision in response to Opposer’s application to
register the mark notwithstanding that the examiner’s
decision clearly stated, “Although the examining
attorney has refused registration, the applicant may
respond to the refusal to register by submitting
evidence and arguments in support of registration.” It
is clear Opposer’s motive, it’s in Opposer’s best
interest to have the mark “SOUND EFFECTS” determined
descriptive verse [sic] distinctive because of the
pending infringement suit.
Applicant’s brief, p. 6.
We note that opposer abandoned its application after
applicant had filed the present application, and that
applicant’s application claims a date of first use
significantly earlier than the filing date of opposer’s
intent-to-use application. We also note that in much of its
advertising material, opposer uses the term SoundEffects in
the manner of a trademark. Indeed, if the only evidence on
the issue of descriptiveness were opposer’s assertedly
descriptive use, the outcome in this case might well have
been different. However, here the evidence, in the form of
the NEXIS excerpts, shows that the term is merely
Opposition No. 95,479
12
descriptive of sound equipment, namely speakers. Thus,
whether or not opposer has taken the position that SOUND
EFFECTS is merely descriptive of applicant’s goods as a
strategic move (and we make no finding on this point), our
finding herein is based on the evidence of descriptiveness
as shown by the entire record. Cf., Levi Strauss & Co. v.
R. Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993), req.
for recon. denied, 36 USPQ2d 1328 (TTAB 1994).
Finally, in response to another of applicant’s
arguments, we would point out that the issue is not whether
“the consuming public refers to ‘SOUND EFFECTS’ as a
distinctive mark” based on opposer’s use. We are not
concerned here with whether SOUND EFFECTS may have acquired
distinctiveness as opposer’s trademark, just whether
applicant’s mark is merely descriptive of its goods.6
In conclusion, because applicant’s mark is found to be
merely descriptive of one of the items listed in the
identification of goods, registration must be refused.

6 Similarly, the issue of whether applicant’s mark has acquired
distinctiveness as a result of its use is not before us either.
Opposition No. 95,479
13
Decision: The opposition is sustained on the ground of
mere descriptiveness.
R. F. Cissel
E. J. Seeherman
E. W. Hanak
Administrative Trademark Judges
Trademark Trial and Appeal Board