Media Device Limited

Trademark Trial and Appeal Board

May 10, 2019

79212632 (T.T.A.B. May. 10, 2019)

This Opinion is Not a
Precedent of the TTAB

Hearing: March 26, 2019 Mailed: May 10, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Media Device Limited
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Serial No. 79212632
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Rebeccah Gan of Wenderoth LLP for Media Device Limited.

Dezmona F. Mizelle-Howard, Trademark Examining Attorney, Law Office 110,
Chris A.F. Pedersen, Managing Attorney.
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Before Cataldo, Shaw and Dunn,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
Applicant, Media Device Limited, seeks registration on the Principal Register of
the standard character mark EARSHOT, identifying “wired and wireless headphones
and earphones” in International Class 9.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
on the ground of likelihood of confusion under Section 2(d) of the Trademark Act, 15

1 Application Serial No. 79212632 was filed on May 15, 2017, seeking an extension of
protection under Section 66(a) of the Trademark Act, 15 U.S.C. § 1141(f), based upon
Applicant’s ownership of International Registration No. 1356254, issued on May 15, 2017.
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U.S.C. §1052(d), in view of the registered mark issued on the
Principal Register, identifying
Computer software for coordinating real-time communication and
feedback between businesses and individuals; Computer software
providing social media tools through which users can share, interact and
follow real-time feedback relating to businesses, individuals and places;
Computer software for finding and sharing a user’s location and
displaying a user’s real-time communication relating to the user’s
location

in International Class 9.2
The refusal has been fully briefed, including a reply brief from Applicant. In
addition, Applicant and the Examining Attorney presented arguments at an oral
hearing conducted on March 26, 2019 by the above-named panel of this tribunal.
Based upon the record and the arguments made, we affirm the likelihood of
confusion refusal.
Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (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. See Federated

2 Reg. No. 4565398 issued on July 8, 2014 with the following description and color claim: “The
mark consists of the word ‘earshot’ with the inside of the ‘o’ being a comment bubble.” “Color
is not claimed as a feature of the mark.”
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Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See
also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Similarity or Dissimilarity of the Marks
We compare the marks in their entireties and, in so doing, look to their appearance,
sound, connotation and commercial impression. Palm Bay Imps., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005). “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 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). Although we place the marks
alongside each other in the following paragraph for purposes of this decision,
consumers may not encounter the marks in such a manner.
Applicant’s mark is EARSHOT in standard characters and the registered mark is
. The marks are identical in sound and highly similar in
appearance. The fact that the registered mark is displayed in a slightly stylized form
with a comment bubble comprising the interior of the letter “O” and possibly the letter
“E” is of little consequence here inasmuch as Applicant’s mark is in standard
character form and therefore we must consider all reasonable presentations of that
mark including in the same stylization found in the registered mark. See Phillips
Petroleum v. C.J. Webb, 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971); see also
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847-48 (Fed. Cir.
Serial No. 79212632
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2000). To the extent viewers of the registered mark will perceive the comment bubble
forming the interior of one or more letters of the mark as a distinct design element,
it is settled that where a mark consists of both a word and a design, the word is
normally accorded greater weight, in part because consumers are likely to remember
and use the word(s) to request the goods. In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1911 (Fed. Cir. 2012) (“[T]he verbal portion of a word and design mark
likely will be the dominant portion”); In re Appetito Provisions Co. Inc., 3 USPQ2d
1553, 1554 (TTAB 1987) (holding that “if one of the marks comprises both a word and
a design, then the word is normally accorded greater weight because it would be used
by purchasers to request the goods or services” and “because applicant’s mark shares
with registrant’s mark that element responsible for creating its overall commercial
impression, the marks are confusingly similar”). This is particularly so in this case
due to the subtlety of the design and its overall lack of prominence within the larger
context of the mark.
With regard to meaning, “earshot” is defined as “the range or distance within which
a sound, voice, etc., can be heard.”3 There is neither record evidence nor argument
that the term “earshot” would have a different meaning as applied to Applicant’s
headphones and earphones on the one hand and the computer software identified in

3 We note with some puzzlement that no definition of the term comprising both marks was
made of record. We therefore exercise our discretion to take judicial notice of this definition
from Dictionary.com, based upon Random House Unabridged Dictionary (2019). The Board
may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet
Food Imps. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983), including online dictionaries that exist in printed format or have regular fixed editions.
In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014). Definition from
dictionary.com, based upon The Random House Unabridged Dictionary (2019).
Serial No. 79212632
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the registered mark on the other. As a result, we find the marks are identical in
meaning or connotation.
In sum, we view the marks in their entireties and find them to be identical in sound
and meaning, highly similar in appearance and, overall, to convey very similar
commercial impressions. Thus, this du Pont factor weighs in favor of finding a
likelihood of confusion.
Similarity of the Goods and Trade Channels
With regard to the du Pont factor addressing the relatedness of the goods, we must
make our determinations based on the goods as they are identified in the application
and cited registration. See In re Dixie Rests. Inc., 41 USPQ2d at 1534. See also Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1161 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001, 1004-05 (Fed. Cir. 2002); Octocom Sys., Inc. v. Houston Comput. Servs.
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). A proper comparison of
the goods considers whether “the consuming public may perceive [the respective
goods of the parties] as related enough to cause confusion about the source or origin
of the goods.” Hewlett Packard, 62 USPQ2d at 1004. Therefore, to support a finding
of likelihood of confusion, it is not necessary that the goods be identical or even
competitive. It is sufficient that the goods are related in some manner, or that the
circumstances surrounding their marketing are such that they would be encountered
by the same persons in situations that would give rise, because of the marks, to a
mistaken belief that they originate from the same source or that there is an
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association or connection between the sources of the goods. In re Thor Tech Inc., 90
USPQ2d 1634, 1635 (TTAB 2009).
Again, Applicant’s goods are “wired and wireless headphones and earphones” and
the goods in the cited registration are
Computer software for coordinating real-time communication and
feedback between businesses and individuals; Computer software
providing social media tools through which users can share, interact and
follow real-time feedback relating to businesses, individuals and places;
Computer software for finding and sharing a user’s location and
displaying a user’s real-time communication relating to the user’s
location.

In support of the refusal of registration, the Examining Attorney introduced into
the record with her November 16, 2017 denial of Applicant’s Request for
Reconsideration4 copies of nineteen use-based, third-party registrations for marks
identifying, inter alia, goods of a type identified in the involved application and the
cited registration, namely, earphone or headphones and various types of computer
software. The following examples are illustrative:
• Reg. No. 5367713 for goods including “computer software for multimedia
format conversion” and “headphones;”

• Reg. No. 5349040 for goods including “global positioning system (GPS)
consisting of…computer software” and “earphones and headphones;”

• Reg. No. 5419665 for goods including “computer software for communicating
with users of hand-held computers” and “earphones and headphones;”

• Reg. No. 5414587 for goods including “computer software to enhance the
audio-visual capabilities of multimedia applications, namely, for the
integration of text, audio, graphics, still images and moving pictures” and
“headphones;” and

4 At .pdf 9-49.
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• Reg. No. 5406505 for goods including “computer software for wireless content
delivery; software to control and improve audio equipment sound quality” and
“earphones.”

Use-based, third-party registrations may serve to suggest that the goods are of a kind
that emanate from a single source. See In re Infinity Broad. Corp., 60 USPQ2d 1214,
1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86
(TTAB 1993); Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
Moreover, it is not necessary that the goods be competitive to support a finding of
likelihood of confusion. In re Thor Tech Inc., 90 USPQ2d at 1635. It does not matter
for the purposes of our determination that the goods perform different functions and
would not be used in place of each other. Evidence of record establishes that the goods
are related inasmuch as they are subject to registration by the same entities under
the same marks. As a result, consumers are likely to believe that they originate from
the same source and that there is an association or connection between the sources
of the goods, even if consumers may not confuse the goods themselves. Id.; Hewlett
Packard, 62 USPQ2d at 1004.
Applicant argues:
Applicant makes and sells specialized action headphones, designed to be
worn by enthusiasts of action sports like snowboarding, skateboarding,
and dirt biking. In marked contrast, Registrant makes software for
tracking consumer responses on social media.5

However, it is well-settled that we must determine the relatedness of the goods at
issue based upon the identification of goods in the involved application and cited

5 4 TTABVUE 11. (Applicant’s brief)
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registration. See, e.g., In re Dixie Rests. Inc., 41 USPQ2d at 1534; Stone Lion Capital
Partners, LP v. Lion Capital LLP, 110 USPQ2d at 1161. The involved application
recites “wired and wireless headphones and earphones” without limitation as to their
purpose or use and must, therefore, be broadly construed to include earphones and
headphones of all types.
Applicant further argues
Finally, that makers of computer gaming software also make
headphones specially designed for use during computer game playing,
or that makers of GPS systems with integrated computer software also
make headphones for wearing in connection with said systems, is not
probative of whether makers of computer software for business to track
consumer habits generally make headphones.6

The identifications of goods in the third-party registrations excerpted above do not
specify or limit the uses to which the broadly identified earphones and headphones
may be put. Thus, we have no basis to limit the goods in the third-party registrations
made of record by the Examining Attorney to earphones or headphones specifically
for use with the identified computer software applications recited therein. Applicant’s
argument, that the third party registrations are not probative, implicitly because the
software “for business to track consumer habits” in the cited registration has a less
obvious nexus to headphones than a third party registration for software for a GPS
system or computer gaming, is not persuasive. The cited registration specifies that
the software utilizes “real-time communication and feedback”, and so the software in
the cited registration does include a nexus to headphones.

6 4 TTABVUE 12.
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In addition, the identifications of goods in both the cited registration and involved
application do not recite any limitations as to the channels of trade in which the goods
are offered. In the absence of trade channel limitations on the goods under the
registered and applied-for marks, we must presume that these goods are offered in
all customary trade channels. See Citigroup Inc. v. Capital City Bank Grp. Inc., 98
USPQ2d at 1261; In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
We find that the du Pont factors of the relatedness of the goods, channels of trade
and consumers weigh in favor of likelihood of confusion.
Summary and Conclusion
In its brief, Applicant primarily discussed the du Pont factor addressing the
relatedness of the goods, while the Examining Attorney additionally discussed the
similarity of the marks. Inasmuch as we have no evidence of record addressing the
additional du Pont factors, they appear to be neutral. Because the marks are identical
in sound and meaning, and highly similar in appearance and overall commercial
impression, the goods are related, and are presumed to be offered in all customary
trade channels therefor, we find that Applicant’s mark, if used in association with the
goods identified in the applications, are likely to cause confusion with the registered
mark in connection with the goods recited in the registration.
Decision: The likelihood of confusion refusal to register Applicant’s mark is
affirmed.