Mixed in Key LLC

Trademark Trial and Appeal Board

Aug 27, 2019

87789666 (T.T.A.B. Aug. 27, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 27, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Mixed in Key LLC
_____

Serial No. 87789666
_____

Susan Latham of Trailblazer,
for Mixed in Key LLC.
Ahsen Khan, Trademark Examining Attorney, Law Office 113,
Myriah Habeeb, Managing Attorney.
_____

Before Zervas, Dunn and Hudis,
Administrative Trademark Judges.

Opinion by Hudis, Administrative Trademark Judge:
Mixed in Key LLC (“Applicant”) seeks registration on the Principal Register of the
following design:

(“Applicant’s Applied-For Design”) for “computer software for music analysis and
processing; computer software for manipulating, mixing, and performing music and
Serial No. 87789666
- 2 -
sounds” in International Class 9, and for “providing advice and information in the
field of DJ’ing methodology and the analysis, selection and arrangement of music and
sound recordings” in International Class 41.1
The following is a description of Applicant’s Applied-For Design as recited in the
Application:
The color(s) white, black, greenish-aqua, bright green, bright yellowish
green, yellowish orange, orange, pinkish orange, bright pink, pinkish
purple, violet, bluish purple, bluish aqua and aqua is/are claimed as a
feature of the mark. The mark consists of [t]hree concentric circles. The
outer and middle circles are shaded with various colors, and the inner circle
is white. The outer circle is sub-divided into twelve adjacent boxes of the
same size, which are consecutively numbered from 1B, 2B, 3B, 4B, 5B, 6B,
7B, 8B, 9B, 10B, 11B and 12B, with each alpha-numeric value in black. The
middle circle contains 12 smaller but equally divided boxes, which are
consecutively numbered 1A, 2A, 3A, 4A, 5A, 6A, 7A, 8A, 9A, 10A, 11A and
12A, with each alpha-numeric value in black. There are 24 boxes total. The
overall design looks like a small clock positioned inside a larger clock, both
sharing the same center. The position of each smaller box in the middle
circle lines up with the larger box in the outer circle. Color is a feature of
the mark. Starting from top and slightly to the right of center and moving
in a clockwise direction on the outer-circle, the color of the first box 1B is
greenish-aqua; the color of the second box 2B is bright green; the color of
the third box 3B is a bright yellowish green; the color of the fourth box 4B
is a yellowish orange; the color of the fifth box 5B is orange; the color of the
sixth box 6B is pinkish orange; the color of the seventh box 7B is bright
pink; the color of the eighth box 8B is pinkish purple; the color of the ninth
box 9B is violet; the color of the tenth box 10B is bluish purple; the color of
the eleventh box 11B is bluish aqua and the color of the twelfth outer box
12B is aqua. The colors of the boxes in the middle circle 1A-12A are lighter
versions of the colors of the corresponding boxes in the outer-circle 1B-12B.
The Trademark Examining Attorney refused registration under Trademark Act
Sections 1, 2, 3, and 45, 15 U.S.C §§ 1051-1053, 1127, on the ground that Applicant’s

1 Application Serial No. 87789666, filed on February 8, 2018 under Trademark Act Section
1(a), 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and first use in
commerce since June 5, 2007 for the Class 9 goods, and since April 21, 2002 for the Class 41
services.
Serial No. 87789666
- 3 -
Applied-For Design, as applied to the goods and services identified in the Application,
does not function as a trademark or service mark to identify and distinguish
Applicant’s goods or services from those of others and to indicate their source.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. Both Applicant and the Examining
Attorney filed briefs. We affirm the refusal to register.
I. Evidentiary Record
With the Application, Applicant submitted the following specimens of use:
Class 9 Specimen (1):

Description in Application: Screen shot of the computer software bearing the mark.
Description in Applicant’s Brief: Internet Advertisement announcing a new version
of the software which features an image of the software in operation.
Class 9 Specimen (2):

Serial No. 87789666
- 4 -
Description in Application: Screen shot of the computer software bearing the mark.
Description in Applicant’s Brief: Internet advertisement for the software, which
features a video presentation of the software in operation.
Class 9 Specimen (3):

Description in Application: Screen shot of the computer software bearing the mark.
Description in Applicant’s Brief: Image of the software while in operation.
Class 41 Specimen:

Description in Application: Screen shot of the computer software bearing the mark.
Description in Applicant’s Brief: Portion of the website homepage, at
mixedinkey.com, where the services are advertised.

Serial No. 87789666
- 5 -
The Class 9 specimens show Applicant’s Applied-For Design on screenshots of
Applicant’s software in operation, in the upper left corner immediately below the
word mark MIXED IN KEY. On the bottom two-thirds of each software screenshot
are columns titled: “Cover Art,” “Artist,” “Name,” “Key Result,” “Tempo,” “Energy,”
and “Cue Points.” The information provided in the rows of each column is derived
from the metadata of the digital file for each musical composition (“song”) processed
and analyzed through an electronic algorithm within Applicant’s software.2
The Class 41 specimen shows text juxtaposed next to Applicant’s Applied-For
Design states: “Become a Master of Harmonic Mixing” and “We’ll teach you all the
cool tricks used by pro DJs. Explore this website to learn DJ techniques like Energy
Boost mixing and Power Block mixing. The How-To Guide covers a bunch of DJ
techniques that were secret before we published them.”3
With the first Office Action, the Examining Attorney submitted the following
evidence in support of the refusal:
1. An “Official Harmonic Mixing Guide” from Applicant’s website at
MIXEDINKEY.COM;4

2 Application and Class 9 specimens (with their descriptions) filed on February 8, 2018 at
TSDR 2 and 8-9. Applicant’s Brief, specimen descriptions and discussion of how Applicant’s
software functions. 11 TTABVUE 5-7, 18-20. Page references herein to the application record
refer to the online database of the USPTO’s Trademark Status & Document Retrieval
(“TSDR”) system. All citations to documents contained in the TSDR database are to the
downloadable .pdf versions of the documents. References to the briefs on appeal refer to the
Board’s TTABVUE docket system. Coming before the designation TTABVUE is the docket
entry number; and coming after this designation are the page references, if applicable.
3 Application and Class 41 specimen (with its description) filed on February 8, 2018 at TSDR
2 and 10. Applicant’s Brief, specimen description 11 TTABVUE 7.
4 Office Action of March 8, 2018 at TSDR 6-11.
Serial No. 87789666
- 6 -
2. A column entitled “The Circle of Fifths Explained” from the website
LEDGERNOTE.COM;5 and
3. An article entitled “The Ultimate Guide to the Circle of Fifths” from the
website MUSICAL-U.COM.6
With its Response to the first Office Action, Applicant submitted the following
evidence to traverse the refusal:
1. The Declaration of Yakov Vorobyev, the founding Member of Applicant who
signed the Application,7 including the following exhibits:
a. Screenshots from homepage of Applicant’s mixedinkey.com website and an
introductory video for the Mixed In Key Software;8 and
b. Full screenshot of the homepage of Applicant's mixedinkey.com website.9
With the Final Office Action, the Examining Attorney submitted the following
evidence in support of the refusal:
1. An “Official Harmonic Mixing Guide” from Applicant’s website at
MIXEDINKEY.COM;10
2. An article entitled “Scales and Key Signatures” from the website METHOD-
BEHIND-THE-MUSIC.COM;11
3. An article entitled “Advanced Key Mixing Techniques for DJs” from the
website DJTECHTOOLS.COM;12
4. A product offering on the AMAZON.COM website for “Circle of Fifths Chart
Treble Clef (Notebook Size) (English, Spanish, French, Italian and German
Edition);13
5. An article entitled “How to Master the Circle of Fifths and Key Signatures”
from the website INSTRUCTABLES.COM;14
6. An article entitled “Relationships Between Keys – The Circle of Fifths” from
the website MUSICCRASHCOURSES.COM;15
With its Request for Reconsideration, Applicant submitted the following evidence
to traverse the refusal:
1. A second, and largely duplicative, Declaration of Mr. Vorobyev,16 with
additional exhibits including the following:
a. Screenshots from homepage of Applicant’s mixedinkey.com website and
an introductory video for the Mixed In Key Software;17
Serial No. 87789666
- 7 -
b. Full screenshot of the homepage of Applicant's mixedinkey.com
website;18
c. A product offering on the AMAZON.COM website for “Circle of Fifths Chart
Treble Clef (Notebook Size) (English, Spanish, French, Italian and
German Edition);19 and
d. An article entitled “Advanced Key Mixing Techniques for DJs” from the
website DJTECHTOOLS.COM.20
With the Denial of Applicant’s Request for Reconsideration, the Examining
Attorney submitted the following evidence in support of the refusal:
1. A “How-To Guide (to Harmonic Mixing)” from the website HARMONIC-
MIXING.COM (which, from its content, which appears to be affiliated with
Applicant);21

5 Id. at TSDR 12-27.
6 Id. at TSDR 28-48.
7 Response to Office Action of June 28, 2018 at TSDR 18-21.
8 Id. at TSDR 23-25.
9 Id. at TSDR 27-31.
10 Office Action of July 23, 2018 at TSDR 6-11. This appears to be an updated or revised
version of Applicant’s online Official Harmonic Mixing Guide Office provided with the first
Office Action of March 8, 2018 at TSDR 6-11.
11 Office Action of July 23, 2018 at TSDR 12-19.
12 Id. at TSDR 20-33.
13 Id. at TSDR 34-38.
14 Id. at TSDR 39-49.
15 Id. at TSDR 50-52.
16 Request for Reconsideration of October 19, 2018 at TSDR 15-18 – a duplicate of Applicant’s
Response to Office Action of June 28, 2018 at TSDR 18-21.
17 Id. at TSDR 20-22 – a duplicate of Applicant’s Response to Office Action of June 28, 2018
at TSDR 23-25.
18 Id. at TSDR 24-28 – a duplicate Applicant’s Response to Office Action of June 28, 2018 at
TSDR 27-31.
19 Id. at TSDR 30 – a duplicate of the Office Action of July 23, 2018 at TSDR 34.
20 Id. at TSDR 32-35 – a duplicate of the Office Action of July 23, 2018 at TSDR 20-33.
21 Denial of Request for Reconsideration of December 3, 2018 at TSDR 4-5.
Serial No. 87789666
- 8 -
2. An article entitled “What is the difference between the Circle of Fifths and the
Camelot Wheel?” from the website MUSIC.STACKEXCHANGE.COM;22
3. An article entitled “Using the Camelot Wheel for Harmonic Compatibility”
from the website LOOPMASTERS.COM;23
4. An article entitled “Advanced Key Mixing Techniques for DJs” from the
website DJTECHTOOLS.COM;24
5. An article entitled “How to Mix Harmonically” from the website
DJINGTIPS.COM;25
6. A blog posting entitled “Harmonic Mixing w/ DJ Endo Pt. 1: What Is Harmonic
Mixing?” from the website DUBSPOT.COM;26 and
7. An article entitled “Harmonic Mixing Tips for DJs and Musicians” from the
website Ask.Audio.27
II. Background: The Circle of Fifths, The Mixed in Key Software, The
Camelot Wheel, and Applicant’s Applied-For Design
A. The Circle of Fifths and Music Theory
The following facts regarding the Circle of Fifths and music theory, which come
from industry publications made of record by the Examining Attorney, are
undisputed by Applicant.

22 Id. at TSDR 6-10.
23 Id. at TSDR 11-13.
24 Id. at TSDR 14-28 – a duplicate of the Office Action of July 23, 2018 at TSDR 20-33.
25 Id. at TSDR 29-34.
26 Id. at TSDR 35-40.
27 Id. at TSDR 41-48.
Serial No. 87789666
- 9 -
The Circle of Fifths was invented by Nikolai Diletskii in his late 1670’s treatise on
musical composition called the Grammatika. In 1728, Johann David Heinichen
improved upon the design to develop the modern version used today.28 The Circle of
Fifths is comprised of numerous building blocks derived from music theory. The first
of these building blocks is the key signature. A key is a set of seven notes
collectively called a scale. The scale is built by a specific relationship between the
notes. These relationships are different depending on whether one plays a musical
instrument in a major or minor scale, for instance.29 When the musician plays the
eighth note of a scale, she is back to the start of the scale on the first note which is
called the tonic, but now one octave higher. If the musician plays the tonic and the
first octave above it, the listener hears the same tone twice with one higher in
frequency in unison, and they sound pleasing together to the listener’s ears. This is
called consonance. It is called dissonance when the two tones seem to clash.30

28 “The Circle of Fifths Explained,” Office Action of March 8, 2018 at TSDR 14.
29 Id. at TSDR 16.
30 Id.
Serial No. 87789666
- 10 -
Chords are built with a grouping of notes played together that are all consonant
and pleasing. The basic form of a chord is the root of the chord, plus the third above
it, and then the fifth above the root as well.31 Within chords, there are three types of
fifths based on the number of semitones above the root the fifth lies: (a) Perfect
Fifths (7 semitones), (b) Diminished Fifths (6 semitones), and (c) Augmented Fifths
(8 semitones). In the Circle of Fifths, one is only concerned with perfect fifths going
clockwise around the circle. Moving counter-clockwise one finds the perfect fourth
from the root.32 There are major chords and minor chords, which are denoted with
capital letters and lower-case letters, respectively.33 Every major key has a relative
minor key. What this means is that both keys use the exact same notes, including
any accidentals (sharps or flats). The difference is they have a different tonic and
the distance relationship between the notes is changed slightly.34 The naming
convention for major keys will usually use a flat accidental, such as Eb (to be read as
“E-flat”), except for F# (“F-sharp”). Minor keys largely use sharp accidentals to name
the keys except for Bb (“B-flat”). This has to do with the count of semitones when
constructing the chords.35

31 Id.
32 Id. at TSDR 17.
33 Id. at TSDR 18.
34 Id. at TSDR 19.
35 Id. at TSDR 20.
Serial No. 87789666
- 11 -
The Circle of Fifths helps with the task of memorizing which of these major or
minor keys has what number of flats or sharps and on which notes. If the musician
knows the melody of a song and needs to figure out the chords on a piano or a guitar
so a group of friends can sing along, she can transpose a song quickly if needed, all
in her head. For example, if a song is a bit out of range for a vocalist, all that the
musician needs to do is find the tonic of the key she wants to use, and she can find
the chords right off of the Circle.36 Whether the musician needs a chord progression,
to transpose a song, to help transcribing music, or remember which keys have which
accidentals, the Circle of Fifths is the catch-all tool for these tasks.37
Although the basic format is the same, over time the Circle of Fifths has been
represented in varied configurations, several examples of which were made of record
by the Examining Attorney:38

36 Id. at TSDR 21-22; see also Office Action of July 23, 2018 TSDR at 14: “Transposition: Scale
patterns can be duplicated at any pitch. Rewriting the same scale pattern at a different pitch
is called transposition. … All the notes of a piece can be modified in this way, by finding a
note’s counterpart in the modified scale.
37 Id. at TSDR 26 see also Office Action of July 23, 2018 TSDR at 40-41: “The Circle of Fifths
in music is like the King Road Atlas for understanding how to ‘read’ (like a book) music and
being able to identify our Key names and signatures. … [It] is a lovely visual tool that teaches
you exactly what is in each key of our music that we play! … It lists all of the major keys,
minor keys, and how many sharps and flats you have in each key.”
38 The Circle of Fifths images are from the Office Action of March 8, 2018 at TSDR 25, 39 and
38, Office Action of July 23, 2018 and TSDR 15, 40-41 and 50, and the Denial of Request for
Reconsideration of December 3, 2018 TSDR at 6.
Serial No. 87789666
- 12 -

As shown in the examples of the Circle of Fifths above, color is sometimes used to
graphically differentiate the major key and minor key segments within the Circle.
B. Applicant’s Applied-For Design and the MIXED IN KEY Software
Applicant submitted Mr. Vorobyev’s First and Second Declarations to explain the
MIXED IN KEY software and the presence of Applicant’s Applied-For Design therein.
MIXED IN KEY is software that processes and analyzes music with respect to
musical key, energy, and cue points so that DJs may manipulate, mix and perform
music and sounds in an optimal manner. At the heart of the MIXED IN KEY software
is a sophisticated electronic algorithm that is used in the scanning of a user's music
files and detecting of, among other things, their musical key so that each file can be
Serial No. 87789666
- 13 -
assigned a value in two different formats: (i) musical key (e.g., C Minor); and (ii) the
Camelot System’s notation (e.g., 12B)39 – which we explain further below.
The Camelot Wheel
The following discussion on Applicant’s harmonic-mixing.com website regarding
Harmonic Mixing of musical tracks enabled by the so-called “Camelot Wheel” is
instructive:
Harmonic Mixing is an advanced technique used by top DJs ... By mixing
tracks that are in the same or related keys, harmonic mixing enables
long blends and mash-ups. The goal is to eliminate key clashes.
Harmonic mixing consists of two elements: knowing the key of every
song that you play and knowing which keys are compatible. To get
started, find the keys of your songs. ... To save time, you can use
professional DJ software such as Mixed In Key. Mixed In Key scans your
MP3 and WAV files, and shows you the key of every song.
To help DJs learn harmonic mixing, Mark Davis created the Camelot
[W]heel, a visual representation of which keys are compatible with
each other.

On the Camelot wheel, each key is assigned a keycode number from one to
twelve, like hours around a clock.
Many professional DJs move around the Camelot [W]heel with every mix.
To select a compatible song, choose a keycode within one “hour” [clockwise
or counterclockwise] of your current keycode. … This mix will be smooth
every time.

39 Vorobyev Decls. submitted with Response to Office Action of June 28, 2018 TSDR at 19, ¶¶
8-9 and with Request for Reconsideration of October 19, 2018 at 16, ¶¶ 8-9. From Mr.
Vorobyev’s Declarations and Applicant’s specimens of use made of record, it is apparent to us
that the MIXED IN KEY software discussed in his Declaration is the same as the “computer
software for music analysis and processing; computer software for manipulating, mixing, and
performing music and sounds” identified in Class 9 in the subject Application.
Serial No. 87789666
- 14 -
You can also mix between inner and outer wheels if you stay in the same
“hour” … and notice the change in melody as you go from Minor to Major.
Harmonic mixing is a simple technique, but it opens up a world of
creativity. You will play creative DJ sets and discover interesting song
combinations. It’s easy to get started with any music genre.40 (Emphasis
added).
With this explanation in mind, below are side-by-side renditions of the Circle of
Fifths, the Camelot Wheel, and Applicant’s Applied-For Design:
Circle of Fifths Camelot Wheel Applicant’s
Applied-For Design

In its brief, Applicant contends that the Camelot Wheel is not Applicant’s
Applied-For Design sought for registration, but rather is Applicant’s “much more
elaborate chart, which has both traditional musical notes in plain text surrounding
the chart and traditional musical keys in each cell of the chart along with
[Applicant’s] … own notations.” (Emphasis original).41 Thus, Applicant concedes that
Applicant’s Applied-For Design is a stripped down version of Applicant’s Camelot

40 Denial of Request for Reconsideration of December 3, 2018 TSDR at 4-5; see also
Applicant’s website provided with the Office Action of March 8, 2018 TSDR at 7-8: “When
Mixed in Key scans your files, it shows you results using the Camelot Wheel notation.… We’ll
teach you how to use those results. … On this wheel, musical keys can be seen as “hours”
on a clock. For example, 4 o’clock corresponds to 4B or 4A. The letter B represents Major
keys, and letter A represents Minor keys. Mixed in Key detects these Camelot values for
every MP3 and WAV file, and you’ll see them in your favorite DJ software.” (Emphasis
added).
41 11 TTABVUE 11.
Serial No. 87789666
- 15 -
Wheel. This concession, we find, is consistent with the understanding of the DJ
mixing industry (for example, in a STACKEXCHANGE article):
What is the difference between the Circle of Fifths and the Camelot Wheel?:
I understand the Camelot Wheel is used by DJs to mix songs of different
keys together by using adjacent and relative major/minor keys. Can’t this
same information be deduced from the Circle 3 of Fifths? I don’t understand
the need for a separate tool for this.
Answer: They represent the same exact system it’s just presented in
a different way. The only differences are it uses colors instead of a
key signature to show relationship between keys, spun to have E
major/C# minor on top, and labeled with letters and numbers which is
presumably to abstract from the concept of a circle related by movements
of 4ths and 5ths and think of it more like a clock. A DJ doesn’t need to
know how many sharps or flats a key has, just know the
relationship to other key which seems to be the reason for the
changes you see. (Emphasis added).42
Similarly (in a LOOPMASTERS article):
Here is a great tool for you to use if you’re unsure of what keys are
complimentary with each other. This simple chart is referred to as the
“Camelot Wheel”. The Camelot Wheel is very simple to use. You can step
from one key into the next either clockwise or anti clockwise, and between
inner and outer circles. The only stipulation is that you can only move one
step in any direction to stay in complimentary key with your current
selection. This is a simple and great method if you are no[t] too
familiar with music theory or don’t know what keys will work
together in your productions. (Emphasis added).43
Specifically relating to the usefulness of the Circle of Fifths as represented by the
Camelot Wheel within the MIXED IN KEY software (in a DJTECHTOOLS article):
There is one simple way to mix from major to minor harmonically: match
the number, and change the letter from A to B or vice versa. Check out the
[C]amelot [S]ystem created by Mixed in Key below which makes it
easy to visualize. In this case D minor (7A) contains the same notes as F
major (7B) so the two can be mixed together … Key matched mixing,

42 Denial of Request for Reconsideration of December 3, 2018 TSDR at 6-8.
43 Denial of Request for Reconsideration of December 3, 2018 TSDR at 11.
Serial No. 87789666
- 16 -
including major/minor or minor/major flips, present an exciting way to truly
“mix” music.44

Again (in a DUBSPOT article):

In order to mix harmonically, DJs must know the musical keys of
all of the records they play. Once they know the key of all their tracks,
they can then sort their music collection by key and play tracks that are in
the same or complementing keys so that the songs they play will appear to
“sing” together. Mixing harmonically allows DJs to have full control
over the energy of the room because they can pick keys that boost
and lower the energy of the crowd. Not only will harmonic mixing help
you choose records that are musically compatible quicker and make your
DJ sets flow better, but it will also sonically improve your sound since you
are playing tracks that complement each other. When you mix
harmonically, your vocals, melodies, and basslines will be in key, and will
blend musically, making your tracks appear to “sing” with one another.
One thing you might be saying to yourself at this point is “this is all great,
but I don’t know anything about music theory.” Well, fear not. Today there
is technology that will actually go through your entire music collection and
write the musical keys into the metadata of your songs, so you can then
view the different keys in … whatever your DJ program of choice is.
The most popular harmonic mixing software is called “Mixed in
Key.” This software allows you to analyze all your music folders
and label your songs tags …
Once you’re done scanning all of your music, there is a simple
chart you can follow called the “Camelot Wheel” that will tell you
which keys are compatible. The Camelot Wheel lists musical keys that
are displayed as “hours” on a clock. … To follow the chart, you can mix
between songs by subtracting one “hour” (-1) adding one “'hour” (+1) or
staying in the same “hour.” …
Music theory wise, the Camelot [W]heel represents the “Circle of
Fifths.” The Circle of Fifths shows the relationships among the twelve
tones of the chromatic scale, their corresponding key signatures, and their
associated relative minor and major keys. … For DJs, it is just a handy
chart that will guide you to choose what tracks will go well
together better.45 (Emphasis added).

44 Denial of Request for Reconsideration of December 3, 2018 TSDR at 15.
45 Denial of Request for Reconsideration of December 3, 2018 TSDR at 35-37.
Serial No. 87789666
- 17 -
C. Applicant’s Applied-For Design and Applicant’s Services
As noted, Applicant’s Class 41 specimen shows text juxtaposed to Applicant’s
Applied-For Design that states: “Become a Master of Harmonic Mixing” and “We’ll
teach you all the cool tricks used by pro DJs. Explore this website to learn DJ
techniques like Energy Boost mixing and Power Block mixing. The How-To Guide
covers a bunch of DJ techniques that were secret before we published them.”
Concerning Applicant’s Class 41 services, Mr. Vorobyev, in his Declaration, states:
(1) Applicant’s Applied-For Design is featured prominently on the portion of the
homepage of Applicant’s website where Applicant’s advice and information services
are advertised, (2) Applicant’s Applied-For Design is not utilized and does not appear
upon the interior webpages where Applicant’ advice and information services are
actually rendered, (3) Applicant did not submit the interior webpage cited by the
Examining Attorney, http://mixedinkey.com/harmonic-mixing-guide/, as a specimen
in support of the Application, (4) this interior webpage relied upon by the Examining
Attorney is only one of many pages wherein Applicant renders its advice and
information services, and those other webpages do not utilize Applicant’s Applied-For
Design in the rendering of the services, and consequently (5) Applicant’s Applied-For
Design is not used in the rendering of Applicant’s advice and information services.46
Notwithstanding Mr. Vorobyev’s protestations, in addition to Harmonic Mixing,
we find that one of the other DJ techniques which Applicant advertises on its website

46 Vorobyev Decl. submitted with Response to Office Action of June 28, 2018 TSDR at 20-21,
¶¶ 18-21.
Serial No. 87789666
- 18 -
homepage in connection with its “advice and information services” is Energy Boost
Mixing. We already discussed above how Applicant’s Applied-For Design is used in
connection with Harmonic Mixing.
As noted by another industry publication made of record by the Examining
Attorney (DJING TIPS):
There’s yet another secret weapon in the arsenal of harmonic
mixing, however, and that’s energy boost mixing. In this approach, you
forget about compatible keys and pick the next song so its key is one or
two semitones above the current one. For example, if the currently
playing track is Martin Solveig - Rejection (Ian Carey Mix), which is in
Eb m [E-flat minor], then the next one should be in either Em [E-minor] or
Fm [F-minor). A key change like this is very dramatic and gives an energy
lift to the dancefloor.
In Camelot numbers, energy boost mixing translates into adding 7 or 2
to your current Camelot number to go 1 or 2 semitones higher, respectively.
In the example above, E-flat minor is 2A, which means that the next track
has to be either 9A or 4A.
As opposed to “classic” harmonic mixing, energy boost mixing isn’t so
favorable for long blends because the records’ keys are incompatible. Use
the EQs [“equalizers” that boost or reduce certain frequencies in an audio
signal] to cut out conflicting melody elements and avoid key clashes during
energy boost transitions.47

47 Denial of Request for Reconsideration of December 3, 2018 TSDR at 31.
Serial No. 87789666
- 19 -
D. Applicant’s Arguments
Applicant contends that its design functions as a mark, relying on Mr. Vorobyev
declaration who asserts that: (1) the circular design reflected in Applicant’s Applied-
For Design is not used in the operation of the software, as it is incapable of detecting
musical keys, energy, and/or cue points in music, (2) the colors reflected in Applicant’s
Applied-For Design have no bearing upon the operation of or results achieved by the
MIXED IN KEY software, (3) the alpha-numeric designations within Applicant’s
Applied-For Design are not the traditional music keys (e.g., B-major, C-minor, etc.),
(4) there are no energy notations or cue points reflected within Applicant’s Applied-
For Design, and (5) the results of the MIXED IN KEY software’s scanning of a user’s
musical files are not displayed in the form of, or within, Applicant’s Applied-For
Design; instead, the results of the MIXED IN KEY software's scanning of a user’s
musical files are displayed in a row and column format, with columns entitled:
“Tempo, “Key Result,” “Energy,” and “Cue Point.”48

48 Id. TSDR at 19-20, ¶¶ 10-15.
Serial No. 87789666
- 20 -
Regarding the proposed mark’s placement, Mr. Vorobyev observes that: (1)
Applicant’s Applied-For Design is prominently featured at the top of the screen
during use of the MIXED IN KEY software, (2) Applicant’s Applied-For Design enjoys
that prominent position so that it may be directly associated with Applicant’s
software, (3) images of that screen, prominently featuring the Applicant’s Applied-
For Design, also dominate the advertising for the MIXED IN KEY software, including
but not limited to on Applicant’s website and YouTube, and (4) enhancing its
prominent position on the screen, the size of Applicant’s Applied-For Design appears
much larger than any other text, icon or menu item on the MIXED IN KEY screen.49
In addition, Applicant asserts that a term or design, including in this case
Applicant’s Applied-For Design, may be found to be both a symbol, process,
technology or costume, on the one hand, and a trademark, service mark or trade dress
on the other hand,50 citing, for example, In re Osmotica Holdings Corp., 95 USPQ2d
1666, 1668 (TTAB 2010); In re Moody’s Inv’r Serv., Inc., 13 USPQ2d 2043, 2049
(TTAB 1989); In Re Red Robin Enter., Inc., 222 USPQ 911, 912 (TTAB 1984);
Liqwacon Corp. v. Browning-Ferris Indus., Inc., 203 USPQ 305, 318 (TTAB 1979);
and In re Produits Chimiques Ugine Kuhlmann SA, 190 USPQ 305, 306 (TTAB 1976).
We agree that a term or design may be both a symbol, process, technology or costume,
on the one hand, and a trademark, service mark or trade dress on the other hand. We
also note, however, that careful attention must be paid to the specimens of record in

49 Id. TSDR at 20, ¶¶ 16-17.
50 11 TTABVUE 12-16.
Serial No. 87789666
- 21 -
each case and the manner in which the proposed mark appears in the specimens of
record to determine whether the proposed mark indeed functions as a mark. Because
none of the marks in the cited cases are similar to the proposed mark before us, we
find the cited cases unhelpful in resolving this appeal.
In Osmotica Holdings, the Board affirmed the refusal to register the applicant’s
proposed OSMODEX mark, stating “[a]lthough the [specimens of use] … both include
[Applicant’s mark] and purportedly make reference to applicant’s consulting services,
we conclude that the mark would be perceived by the relevant public as identifying
only applicant's drug delivery technology, and not as identifying consulting services.”
95 USPQ2d at 1669. In Moody’s Investors Service, the Board again affirmed the
refusal to register, stating “applicant's various rating symbols, including the
designation ‘Aaa’, are used in the specimens of record to identify and distinguish not
applicant’s rating services, but rather the ratings themselves, and that they would be
so perceived by the public …, not service marks.” 13 USPQ2d at 2049.
In Red Robin, the Board reversed the refusal to register a bird (costume) for
entertainment services in the nature of in-person performances. The Board was
concerned:
whether the costume, so employed, would be perceived as a service mark
(and not merely as a comic character), especially in light of the scanty
details as to use revealed by the record, we believe this was a legitimate
and important issue for the Examining Attorney to raise. However, we
conclude that this problem is obviated by applicant’s evidence of its
ownership of a preexisting registration of the identical mark for restaurant
services, … thereby demonstrating, on the facts of this case, that the mark’s
distinctive features would be perceived as more than a mere ornamental
design.
Serial No. 87789666
- 22 -
Red Robin, 222 USPQ at 914. Here, however, there is no prior registration of
Applicant’s Applied-For Design for other goods or services on which Applicant can
rely to demonstrate that the design functions as a trademark or service mark.
In Produits Chimiques, the Board affirmed the refusal to register the applicant’s
proposed CELUKA service mark, stating:
The material relied on by applicant in support of its assertion that [its
mark] is, in fact, used to identify services as distinguished from a process
consists of two different brochures. … The [mark] … is used therein merely
to refer to … process[es], … materials, … plastics, … technique, … profiles,
… polystyrene, … extrusion line, … moldings, … licenses, … products …,
and the like. As used, [the applicant’s mark] does not function as a
service mark to identify the services claimed. That is, on the record
presented, it is not being used as a mark in the sale or advertising of
services rendered by applicant. (Emphasis added).
Produits Chimiques, 190 USPQ at 308.
In Liqwacon, the opposer alleged prior common law rights to applicant’s
LIQWACON mark for substantially identical services. The Board found the applicant
had priority, rejecting the opposer’s argument that the applicant was referring to its
mark as a “process” on certain specimens. However, the Board found that on other
specimens, applicant made service mark use of the mark. . 203 USPQ at 318. Here,
on the other hand, we consider the same set of specimens having only a single
rendering of use of the proposed mark for each of the Class 9 goods and Class 41
services.
Applicant argues that its Applied-For Design functions as a trademark for its
software and as a service mark for its advice and information services because of the
way the mark appears during the functioning of the software and the advertising of
Serial No. 87789666
- 23 -
its services on the homepage of Applicant’s website – appearing prominently in vivid
colors, set-off and apart from the surrounding text and other graphical matter.51
E. The Examining Attorney’s Arguments
The Examining Attorney, in his brief, posits that:
[A]pplicant’s musical chart [Applicant’s Applied-For Design] has not been
perceived as functioning as a source indicator by parties that have used its
goods/services. Instead, the chart has been perceived as a tool used to
understand how applicant’s software works or how its services are
rendered. This reinforces the argument that applicant’s circular chart
does not create a commercial impression consistent with its use as a source
identifier for its goods/services. … Applicant’s argument that certain
symbols can function as a trademark or service mark while simultaneously
functioning as “a symbol, process, technology or costume” is legally correct.
... However, the mark at issue in the present case does not meet these
standards because, as illustrated by the evidence discussed above, the
musical chart adopted by applicant does not create a commercial
impression consistent with its use as a trademark or service mark. Instead,
its use in operating applicant’s software and its close resemblance to other
commonly used musical charts indicates that it is unlikely to be perceived
as a trademark or service mark by consumers.52 (Emphasis added).
The Examining Attorney cites Moody’s Inv’r Serv., 13 USPQ2d at 2048-49 (already
discussed above) and In re Keep a Breast Found., 123 USPQ2d 1869, 1879-80 (TTAB
2017) in support of the refusal to register. In Keep a Breast Found., the Board
affirmed to the refusal to register the applicant’s mark, a three-dimensional
cylindrical cast of female breasts and torso for association and educational services,
because the specimens made of record by the applicant did not show use of the
applied-for mark in connection with any of the services specified in the application.
Id., 123 USPQ2d at 1870 and 1885. The Board stated: “the … specimens … all fail to

51 11 TTABVUE 15-18 and 20-21.
52 13 TTABVUE 10.
Serial No. 87789666
- 24 -
associate the proposed mark with any of the recited services, thus making it unlikely
that the relevant consumers will perceive the casts as indicating source.” Id., 123
USPQ2d at 1880.
The Examining Attorney, in his brief, further states:
The values in the chart [Applicant’s Applied-For Design] represent musical
keys and their relationship to each other as depicted in the chart [that] is
meant to show which tracks would blend well together. … Despite
applicant’s arguments to the contrary, the prominent placement of the
chart on applicant’s software is not likely to lead applicant’s consumers
[DJs] to believe the chart is a source indicator for applicant’s goods/services.
Instead, its prominent placement is a direct result of the need to
quickly refer to the chart when mixing tracks in order to
understand the relationship between the various tracks as
depicted in the chart. Consumers are therefore likely to perceive the
chart as a tool used to understand how to operate the software or use the
services, not as a source indicator for applicant’s software ….53 (Emphasis
added).
Based on the evidence of record, we are constrained to agree with the Examining
Attorney.

53 13 TTABVUE 7.
Serial No. 87789666
- 25 -
III. Applicable Law
It has often been said that: “[b]efore there can be registration, there must be a
trademark.” In re Aerospace Optics Inc., 78 USPQ2d 1861, 1862 (TTAB 2006) (quoting
In re Bose Corp., 546 F.2d 893, 192 USPQ 213, 215 (CCPA 1978)).54 The starting point
for our analysis is Section 45 of the Trademark Act, where “trademark” is defined in
relevant part as “any word, name, symbol, or device, or any combination thereof used
by a person . . . to identify and distinguish his or her goods . . . from those
manufactured or sold by others and to indicate the source of the goods, even if that
source is unknown.” As the Board stated in American Velcro, Inc. v. Charles Mayer
Studios, Inc., 177 USPQ 149, 154 (TTAB 1973):
It is settled that not every designation that is placed or used on or in
connection with a product necessarily functions or is recognized as a
trademark for said product; not every designation adopted with the
intention that it performs a trademark function and even labeled as a
trademark necessarily accomplishes that purpose; and there are certain
designations that are inherently incapable of functioning as trademarks to
identify and distinguish the source of the products in connection with which
they are used.
Similarly, a service mark is “a mark used in the sale or advertising of services to
identify the services of one person and distinguish them from the services of others.”
Trademark Act Section 45, 15 U.S.C. § 1127. The fundamental function of a service
mark is to identify the source of services in commerce and to distinguish them from
the services of others. Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. § §1051, 1052,

54 See also In re Int’l Spike, Inc., 196 USPQ 447, 449 (TTAB 1977) (The law pronounced in
the Bose case is just as applicable to pictures and illustrations as it is to words. The
Trademark Act is for the registration, not the creation, of trademarks).
Serial No. 87789666
- 26 -
1053 and 1127. From this premise it directly follows that subject matter presented
for registration as a service mark must function as such; that is, if potential
purchasers do not perceive a proposed mark as identifying a single source of origin
(whether or not the identity of that source is known), the mark may not be registered.
A. The Critical Question, Whether Applicant’s Applied-For Design
would be Perceived as an Indicator of Source for Applicant’s
Goods or Services
The key question here is whether Applicant’s Applied-For Design would be
perceived as a source indicator for Applicant’s goods or services. See In re Brass-Craft
Mfg. Co., 49 USPQ2d 1849, 1852 (TTAB 1998), aff’d mem., 217 F.3d 855 (Fed. Cir.
1999); In re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1459 (TTAB 1998). “The
critical inquiry in determining whether a designation functions as a mark is how the
designation would be perceived by the relevant public. To make this determination
we look to the specimens and other evidence of record showing how the designation
is actually used in the marketplace.” In re Eagle Crest Inc., 96 USPQ2d 1227, 1229
(TTAB 2010).55
The TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1202.04 (Oct. 2018)
instructs that:
Matter is merely informational and does not function as a mark when,
based on its nature and the context of its use by the applicant
and/or others in the marketplace, consumers would perceive it as

55 As noted above, Applicant and the Examining Attorney argue by analogy to marks and
specimens in other Board cases as to whether Applicant’s specimens of record show use of
Applicant’s Applied-For Design as a trademark for Applicant’s software or as a service mark
for Applicant’s advice and information services. However, the registrability of each mark
must be decided on a case-by-case basis. In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001) (“The Board must decide each case on its own merits.”) (citing In
re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417, 424 (Fed. Cir. 1985)).
Serial No. 87789666
- 27 -
merely conveying general information about the goods or services or an
informational message, and not as a means to identify and distinguish the
applicant’s goods/services from those of others. (Emphasis added).

Evidence of the public’s understanding of a term includes materials showing
Applicant’s manner of use and the manner of use by third parties (e.g., Applicant’s
specimens of use, website pages, Internet excerpts where sufficient text surrounding
the designation is provided to enable the context to be understood, and promotional
and advertising materials). See In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828
F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987) (any competent source suffices to
show the relevant public’s understanding of a contested term, including purchaser
testimony, trade publications, and other publications).
Applicant’s intent that Applicant’s Applied-For Design function as a trademark or
service mark does not make it so. In re Vertex Group LLC, 89 USPQ2d 1694, 1701
(TTAB 2009) (“[M]ere intent that a word, name, symbol or device function as a
trademark or service mark is not enough in and of itself.”). Moreover, the mere fact
that Applicant’s Applied-For Design appears on its specimens and in its advertising,
even separate and apart from other indicia which appear on them, does not make it
a trademark or service mark. See D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d
1710, 1716 (TTAB 2016).
B. Our Review of the Specimens and Other Evidence Made of Record
The Board has stated that a trademark “must be used in a manner calculated to
project to purchasers or potential purchasers a single source or origin for the goods”
and this is determined “by examining the specimens of use along with any other
relevant material submitted by applicant during prosecution of the application”,
Serial No. 87789666
- 28 -
Aerospace Optics, 78 USPQ2d at 1862 (citing In re Safariland Hunting Corp., 24
USPQ2d 1380 (TTAB 1992)). Similarly, “a service mark must be ‘used in such a
manner that it would be readily perceived as identifying’ the services, which is
‘determined by examining the specimens of record in the application’” Keep a Breast
Found., 123 USPQ2d at 1876 (citing Moody’s Inv’r Serv., 13 USPQ2d at 2047),
including any other relevant material the applicant makes of record.
As confirmed by industry publications that the Examining Attorney made of
record, we find that Applicant’s Applied-For Design is a stripped down version of the
Camelot Wheel, which in turn is a reinterpretation of the Circle of Fifths, used by
DJs (i) as a graphic tool56 necessary to the functioning of Applicant’s MIXED IN KEY
software to quickly discern the harmonic compatibility of music tracks (a/k/a
“Harmonic Mixing”), and (ii) in connection with Energy Boost Mixing, the very advice
and information service advertised in connection with Applicant’s Applied-For Design
on the homepage of its website.
We conclude that the design does not serve as an indicator of source for the goods
set forth in the application. Our conclusion is supported by Mr. Vorobyev’s statements
regarding how the MIXED IN KEY software operates and in the DJ industry articles
provided by the Examining Attorney. Without a DJ’s reference to Applicant’s Applied-
For Design, the music track “Key Result” data column provided during the operation

56 We find that the “graphic tool” elements of Applicant’s Applied-For Design include the
circle, the internal segments visually differentiated by color, and the use of an alpha-numeric
in each segment representing the equivalents of the major and minor keys of the Circle of
Fifths.
Serial No. 87789666
- 29 -
of Applicant’s software would be meaningless to a DJ using the software for Harmonic
Mixing or Energy Boost Mixing – unless the DJ was to memorize the alpha-numeric
designations and their relationships within Applicant’s Applied-For Design.
Turning to Applicant’s advice and information services in the field of DJ’ing
methodology and the analysis, selection and arrangement of music and sound
recordings include the techniques of Harmonic and Energy Boost Mixing. As
promoted by Applicant, a DJ would most easily employ these techniques using
Applicant’s Applied-For Design as a graphic tool. Applicant’s mere prominent
inclusion of Applicant’s Applied-For Design next to a brief explanation of Applicant’s
advice and information services, without more, does not turn a graphical tool for DJ
techniques into a mark indicating the source of Applicant’s services. We conclude that
the proposed mark does function as a mark for the services recited in the application.
IV. Decision
The refusal to register Applicant’s Mark under Trademark Act Sections 1, 2, 3,
and 45 on the ground that it does not function as a trademark or service mark for
Applicant’s Class 9 goods or Class 41 services is affirmed.