Maxnomic GmbH

Trademark Trial and Appeal Board

Mar 18, 2019

79209337 (T.T.A.B. Mar. 18, 2019)

Mailed: March 18, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Maxnomic GmbH
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Serial No. 79209337
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Theodore R. Remaklus of Wood Herron & Evans LLP,
for Maxnomic GmbH.
Courtney M. Caliendo, Trademark Examining Attorney, Law Office 121,
Richard White, Acting Managing Attorney.
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Before Shaw, Adlin, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Applicant Maxnomic GmbH filed a request for extension of protection of an
international registration for the mark SEATQUAKE, in standard characters, for the
following goods:1
Electrical and electronic equipment, namely, amplifiers
and loudspeakers; electric cables; apparatus and
instruments for regulating and controlling electricity and
vibration dampeners and amplifiers for electronic audio
equipment; structure-borne sound apparatus, in particular

1 Application Serial No. 79209337 was filed February 8, 2017, pursuant to Section 66(a) of
the Trademark Act, 15 U.S.C. § 1141f(a), based on International Registration No. 1348491.
This Opinion Is Not a
Precedent of the TTAB
Serial No. 79209337
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sound attenuators, sound transducers, structure-borne
sound subwoofers; vibration sensors; electric vibrating
gyroscopes; sound reproduction apparatus; stands
specially adapted for electrical cables, in International
Class 9.
The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so
resembles the mark , registered on the Principal Register for
“audio amplifiers, audio signal processors, loudspeakers and pre-recorded compact
discs featuring music” in International Class 9,2 as to be likely to cause confusion, to
cause mistake, or to deceive.
After the Examining Attorney made the refusal final, Applicant appealed to this
Board and requested reconsideration. After reconsideration was denied, the appeal
resumed. We affirm the refusal to register.
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of 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 Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, 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

2 Registration No. 2708226, issued April 22, 2003; renewed.
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1098, 192 USPQ 24, 29 (CCPA 1976) (“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.”). A likelihood of confusion must be found as to the
entire class if confusion is likely for any item within the identification for that class.
Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 209 USPQ 986,
988 (CCPA 1981); In re C.H. Hanson Co., 116 USPQ2d 1351, 1355 (TTAB 2015).
A. Similarity of the Goods, Customers, and Channels of Trade
We begin with the second and third du Pont likelihood of confusion factors, the
similarity of the goods and channels of trade. Applicant’s goods include “electrical and
electronic equipment, namely, amplifiers and loudspeakers,” while Registrant’s goods
include “audio amplifiers” and “loudspeakers.” These goods are legally identical. See,
e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018); In re Hughes
Furn. Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015).
There are no limitations as to channels of trade or classes of purchasers in either
the application or cited registration. Therefore, we must presume that Applicant’s
and Registrant’s amplifiers and loudspeakers travel in the same channels of trade
and are offered to the same classes of purchasers. See, e.g., In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Fat Boys Water Sports LLC, 118
USPQ2d 1511, 1518-19 (TTAB 2016).
Applicant does not contend that its goods are unrelated Registrant’s, but does
dispute the Examining Attorney’s assertion that the goods are used for “exactly the
same purpose.” Reply Brief at 1-2, 11 TTABVUE 2-3; see also Examiner’s Brief, 10
TTABVUE 9 (stating that Registrant and Applicant “are in fact using the goods
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exactly for the same purpose of gaming and music amplification”). Because we base
our decision on the identification of goods in the application and cited registration,
which are identical in part, the specific purpose of the goods is immaterial here:
The 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.
Octocom Sys., Inc. v. Hous. Comps. Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990); see also Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom). The second
and third du Pont factors weigh heavily in favor of a finding that confusion is likely.
B. Strength of the Cited Mark
Applicant’s website states that its system “adds noticeable shaking bass power to
your chair as an addition to your existing sound system or headset.”3 Applicant
argues that the shared term QUAKE thus is highly suggestive of this shaking feature
of both its own goods and Registrant’s,4 and that the cited mark therefore is
inherently weak and entitled to only a limited scope of protection. See Appeal Brief
at 6-7, 11-12, 8 TTABVUE 10-11, 15-16. The Examining Attorney agrees that QUAKE

3 E.g., May 17, 2018 Denial of Request for Reconsideration, 6 TTABVUE 12.
4 The Examining Attorney submitted evidence that Registrant offers a tactile transducer or
“shaker,” which is “essentially a subwoofer but instead of emitting sound, it emits vibration.
It is specifically designed to clamp onto any office chair base with its sturdy, vice-like arm
[sic].” May 17, 2018 Denial of Request for Reconsideration, 6 TTABVUE 24. As Applicant
correctly points out, however, the evidence does not show the cited mark. Reply Brief at 1, 11
TTABVUE 2.
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is suggestive, but “not ‘highly’ suggestive due to the lack of common usage of the term
because there is no evidence of such common usage or dilution.” Examiner’s Brief, 10
TTABVUE 16.
Applicant introduced a third-party registration for the mark AQUAQUAKE (in
standard characters) for goods including “wireless marine communication equipment,
namely, radio frequency amplifiers” in International Class 9.5 Although relevant, one
third-party registration is insufficient to establish that the term “quake” is either
conceptually weak or diluted, especially without evidence that the mark is in actual
use on a commercial scale or that the public has become familiar with it. See In re
Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016). We therefore accord the cited
mark the normal scope of protection due inherently distinctive marks.
C. Similarity of the Marks
Finally, we address the first du Pont factor, “‘[t]he similarity or dissimilarity of
the marks in their entireties as to appearance, sound, connotation and commercial
impression.’” In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1048
(Fed. Cir. 2018) (quoting du Pont, 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

5 Registration No. 3991748, November 2, 2017 Response to Office Action, TSDR 20-21.
Applicant also submitted an application and a cancelled registration for third-party marks
ending in QUAKE for similar goods. Id. at TSDR 9-10, 16-19. These are not probative.
Cancelled registrations are not evidence of any presently existing rights in the mark shown
or that it was ever used, and an application is evidence only that it was filed. See, e.g., Action
Temp. Servs. Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989);
In re Binion, 93 USPQ2d 1531, 1535 n.3 (TTAB 2009).
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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)
(quotation omitted).
The similarity of the marks is determined based on the marks in their entireties,
so we do not dissect the marks into their various components. Hanson, 116 USPQ2d
at 1353. On the other hand, there is nothing improper in stating that, for rational
reasons, we have given more or less weight to a particular feature of a mark, provided
the ultimate conclusion rests on consideration of the marks in their entireties. In re
Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Here, because
the goods are legally identical in part, the degree of similarity between the marks
necessary to support a determination that confusion is likely declines. Viterra, 101
USPQ2d at 1908; In re RiseSmart Inc., 104 USPQ2d 1931, 1935 (TTAB 2012).
Applicant’s mark, SEATQUAKE, incorporates the single term in the cited mark,
. While there is no rule that likelihood of confusion automatically
applies where one mark encompasses another, in this case, the fact that Applicant’s
mark subsumes the only word in Registrant’s mark increases the similarity between
the two. See, e.g., Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 194 USPQ 419,
422 (CCPA 1977) (CALIFORNIA CONCEPT substantially similar to CONCEPT);
In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (VANTAGE
TITAN confusingly similar to TITAN); In re Riddle, 225 USPQ 630, 632 (TTAB 1985)
(RICHARD PETTY’S ACCUTUNE and design confusingly similar to ACCU-TUNE).
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Registrant’s mark is stylized in a form evoking an earthquake. This stylization
reinforces the significance of QUAKE, which is common to both marks, enhancing the
similarity in meaning between the two. Cf., e.g., In re Duofold Inc., 184 USPQ 638,
640 (1974) (explaining that the doctrine of legal equivalents is “bottomed on the sound
basis that the pictorial representation and its literal equivalent conjure up the same
mental image or suggestion”). Because Applicant’s mark is in standard characters,
moreover, it is not limited to any particular font style, size, or color. Trademark Rule
2.52(a), 37 C.F.R. § 2.52(a); see also In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d
1257, 1260 (Fed. Cir. 2010). Applicant thus could display its mark in a stylized form
similar to Registrant’s mark. See Viterra, 101 USPQ2d at 1910-11.
Applicant’s mark contains an additional term, SEAT, which does distinguish the
marks somewhat in appearance, sound, and meaning. Because of the shared term
QUAKE, however, Applicant’s and Registrant’s marks, considered in their entireties,
convey similar overall commercial impressions. Moreover, the term SEAT in
Applicant’s mark merely modifies QUAKE, which decreases the degree to which it
distinguishes the marks. Consumers familiar with Registrant’s mark who encounter
Applicant’s mark are likely to perceive it as a variation of Registrant’s mark
specifically pertaining to seating.
Bearing in mind that less similarity is necessary because the identified goods are
identical in part, we find the marks, considered in their entireties, sufficiently similar
that persons who encounter them would be likely to assume a connection between
Applicant and Registrant.
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Conclusion
We have considered all the evidence of record and Applicant’s arguments as they
pertain to the relevant du Pont likelihood of confusion factors. To the extent that any
other factors for which no evidence was presented by Applicant or the Examining
Attorney may nonetheless be applicable, we treat them as neutral.
According the registered mark a normal scope of protection, we have found that
the first three du Pont factors weigh in favor of a finding that confusion is likely, with
none weighing against. We conclude that Applicant’s mark is likely to cause confusion
with the mark in cited Registration No. 2708226 when used in association with the
goods identified in the application.
Decision: The refusal to register Applicant’s mark is affirmed.