NBC Fourth Realty Corp.

Trademark Trial and Appeal Board

Jul 11, 1997

OPP (T.T.A.B. Jul. 11, 1997)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 11, 97
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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NBC Fourth Realty Corp.
v.
Peavey Electronics Corporation
______
Opposition No. 96,414
to application Serial No. 74/499,536
filed on March 14, 1994
______
Thomas V. Smurzynski of Lahive & Cockfield for NBC Fourth
Realty Corp.
W. Whitaker Rayner of Watkins Ludlam & Stennis, P.A. for
Peavey Electronics Corporation
______
Before Sams, Simms and Seeherman, Administrative Trademark
Judges.
Opinion by Seeherman, Administrative Trademark Judge:
NBC Fourth Realty Corp. has opposed the application of
Peavey Electronics Corporation to register the mark T-MAX
for "musical instrument amplifiers."1

1 Application Serial No. 74/499,536, filed March 14, 1994, and
asserting first use and first use in commerce on or before
January 20, 1994.
Opposition No. 96,414
2
As grounds for opposition, opposer has alleged that it
owns three federal registrations for the mark T.J. MAXX for
"retail department store services"2; that it has used the
mark T.J. MAXX in connection with such services since at
least as early as March, 1977; that applicant's musical
instrument amplifiers are intended to be offered through the
same channels of commerce and to the same class of
purchasers as opposer's services; and that applicant's mark
so resembles opposer's marks as to be likely, when applied
to applicant's goods, to cause confusion, or to cause
mistake, or to deceive.
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; the deposition testimony, with
exhibits, of opposer's witness Karen Coppola; and the
deposition testimony, with exhibits, of applicant's witness
Hartley D. Peavey. Opposer has also submitted under notice
of reliance its three registrations pleaded in the notice of
opposition. Two of the registrations are for marks in
stylized form, which are reproduced below:

2 Registration No. 1,199,126 for T.J. MAXX (stylized, with
design), issued June 22, 1982, and asserting first use and first
use in commerce on March 27, 1977; Registration No. 1,495,462
for T.J. MAXX (stylized), issued July 5, 1988, and asserting
first use and first use in commerce on February 17, 1985; and
Registration No. 1,637,243 for T.J. MAXX, issued March 5, 1991,
and asserting first use and first use in commerce in March,
1977.
Opposition No. 96,414
3
Registration No. 1,199,126

Registration No. 1,495,462

Registration No. 1,637,243 T.J. MAXX
Applicant has submitted under notice of reliance its federal
registration3 for the mark MAX; the responses of opposer to
interrogatory Nos. 3, 5, 6, 7, 8, 10, and 14 of applicant's
first set of interrogatories; opposer's responses to
applicant's first set of requests for admission; and certain
documents from another proceeding before the Board,
consisting of a brief and opposer's predecessor's responses
to interrogatories.4

3 Registration No. 1,454,016, issued August 25, 1987, for bass
guitar amplifiers, asserting first use in January, 1983 and
first use in commerce in October, 1983.
4 The submission of the documents from a prior proceeding was
the subject of a Board order of September 16, 1996.
Opposition No. 96,414
4
The parties have fully briefed the case. An oral
hearing was not requested.
Applicant describes itself as one of the larger
manufacturers of professional musical equipment in the
United States. The record shows that applicant manufactures
drums, guitars, musical instrument amplifiers, public
address systems, microphones, and other goods for use by
professional musicians. Applicant has 31 facilities and
markets its goods in the United States and 103 foreign
countries. The product on which applicant uses the mark T-
MAX is a bass amplifier featuring a combination of
transistors and vacuum tubes. It is a high-performance
component for use by professional musicians. It is marketed
separately and, in order to be used, must be combined with a
musical instrument and one or more loudspeakers.
Applicant's suggested list price for the goods is between
$900 and $1,000, although the record shows that the goods
have also been offered for $729.99. Applicant markets its
amplifiers through specialty music retailers and through
distributors specializing in musical products.
Opposer's licensee5 uses the its pleaded marks in
connection with retail department store services; opposer
and its predecessors have used the mark T.J. MAXX in
connection with such services since 1977. Opposer now

5 The term "opposer" will be used herein to refer to both
opposer and its licensee.
Opposition No. 96,414
5
operates a chain of 590 off-price department stores located
throughout the United States and characterizes itself as the
nation's largest off-price family apparel retailer.6 The
average selling area of such stores is approximately 25,000
square feet. Most of the goods sold in opposer's stores are
offered at prices less than $100, and opposer has not
offered any items at prices higher than $500. Opposer's
annual sales under the marks in the fiscal year ending
January, 1995 approached $3 billion. Opposer advertises its
services in media of general circulation, including
television, radio, newspapers and magazines such as People,
Glamour, Mademoiselle, Elle, New Woman, and Woman's Day; its
anticipated marketing expenditures for 1996 were
approximately $42 million.
Priority of use is not in issue, as opposer's three
registrations are of record. King Candy Co. v. Eunice
King's Kitchen, 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Moreover, the evidence shows that opposer began using its
marks prior to applicant's claimed date of first use of
January 20, 1994.
With respect to the issue of likelihood of confusion,
opposer argues that musical instrument amplifiers are a
common electronic product that can be found in department
stores, and that the public that frequents opposer's stores

6 Opposer defines an "off-price" store as "a store that sells
department store items at 20 to 60 percent less than regular
department store prices."
Opposition No. 96,414
6
would not be surprised to find musical instrument amplifiers
offered there. We are not persuaded by this argument.
Opposer itself has never carried musical instruments or
amplifiers for musical instruments. In fact, the goods
offered in opposer's stores7 are substantially different in
nature from applicant's goods. Opposer's goods are
primarily for adornment of the person or for use in the
home.8 Applicant's goods are for use only with musical
instruments and are for professonal, avvocational or
recreational use, most likely outside the home. Applicant's
goods are also expensive relative to opposer's goods.9
Opposer urges the Board to interpret the meaning of
"retail department store services" to encompass more and

7 A list of approximately 125 kinds of goods, described by
opposer's vice president of marketing as an accurate
representative sampling of products sold in opposer's stores,
includes goods that may be categorized as clothing, clothing
accessories, jewelry, leather goods, luggage, carrying bags,
stationery, footwear, eye wear, cosmetics, body and bath
accessories, gifts, hair wear, golf novelties, car accessories,
games, books, linens, bedding, table accessories, kitchen
accessories, glassware, dinnerware, tableware, lamps, clocks,
cookware, decor items, paper goods, and furniture. (See
deposition of Karen Coppola, p. 41 and Exhibit 37 thereto.) The
record indicates that applicant has carried small kitchen
appliances, such as blenders and automatic coffee makers. We
also note opposer's statement that it carries "consumer
electronics," such as watches, electric clocks and computer
software, and "big ticket" appliances, such as microwave ovens.
8 We acknowledge opposer's statement that it is an
"opportunistic" retailer, in that it varies the types of goods
carried in its stores in accordance with the supplies discovered
by its buyers in the larger marketplace. However, we cannot
assume that opposer would carry a type of merchandise that is
entirely different in nature from its usual goods.
9 We recognize that applicant's identification of goods could
encompass less costly amplifiers; however, opposer has submitted
no evidence regarding what a less expensive amplifier would
cost.
Opposition No. 96,414
7
different types of merchandise than those carried by
opposer. It is, of course, well established that, in a
proceeding such as this one, the question of likelihood of
confusion must be determined on the basis of a comparison of
the goods and services set forth in the application and the
registrations at issue, rather than on the basis of evidence
adduced as to the nature and character of the parties' goods
and services. Octocom Systems Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1990); see also Canadian Imperial Bank of Commerce v. Wells
Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987). However, on the evidence before us, we cannot
conclude that musical instrument amplifiers are a type of
item that the relevant customers would expect to find in
retail department stores. In particular, opposer has not
submitted any evidence to show that other department stores
might carry musical instrument amplifiers. To the contrary,
applicant's witness has testified that its goods are not
sold in department stores; that he knows of no such
amplifiers being sold through department stores; and that it
is typical of applicant's industry to sell such goods only
through specialized musical outlets. Inasmuch as musical
instrument amplifiers are not offered through department
stores but through other channels of trade, we find that
opposer has not demonstrated any degree of relatedness
between the services identified in its registrations and the
goods identified in the applicant's application.
Opposition No. 96,414
8
Turning to the marks themselves, we note that the marks
are intended to create different impressions: the record
shows that T.J. MAXX was devised to suggest the name of a
fictional person; we are not persuaded by opposer's
suggestion that the raised periods in its stylized marks
are likely to be mistaken for hyphens, thereby defeating the
impression of a person's name. By contrast, applicant has
testified that the letter "T" in its mark is intended to
suggest the word "tube,"10 and that the relevant customers
would recognize this suggestion. Although the marks share
some similarities in spelling and pronunciation, and both
parties' marks suggest the concept of "maximum," we find
that overall the marks look and sound different and create
different commercial impressions.
We are also not persuaded by opposer's argument that
the very great level of public recognition that its mark has
achieved should affect the breadth of protection afforded to
it in this case. The record indicates that any fame that
attaches to opposer's mark relates to the off-price
retailing of clothing and fashion accessories. It has not
been shown that prospective purchasers of musical instrument
amplifiers would believe that such goods originate with
opposer.
Applicant's goods are not likely to be purchased on
impulse: they are expensive and their purchase implies a

10 The T-MAX amplifier differs from applicant's MAX amplifier in
that it incorporates vacuum tube technology.
Opposition No. 96,414
9
related investment in other costly equipment, namely a
musical instrument and loudspeakers. Applicant's goods,
being electronic devices whose purpose is the production of
sound, cannot be judged by visual inspection and are likely
to provoke a more careful examination prior to purchase.
Upon consideration of the other relevant factors of
which we have evidence, in accordance with the guidance of
In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973), there is little reason to believe that
confusion as to the source of the parties' goods and
services would arise.
The two parties' customers differ substantially.
Opposer claims the general public as its market, but more
specifically describes its target customers as women between
the ages of 25 and 50, being fashion conscious and very
value driven.11 By contrast, applicant describes its target
customers as professional musicians, representing between
one and one-half to two percent of the population, who would
be likely to seek the advice of knowledgeable sales
personnel12 and even to test the goods before buying them.
The parties' advertising channels and marketing methods
also differ. Opposer advertises its stores in media of

11 Opposer's 1994 annual report, p. 34, included as Exhibit 2 to
deposition of Karen Coppola.
12 Applicant testified that it offers training to some of its
dealers with respect to the proper utilization of the goods.
Opposition No. 96,414
10
general circulation, such as television, radio, local
newspapers, and periodicals such as People, Glamour,
Mademoiselle, Elle, New Woman, and Woman's Day. Its
advertisements typically refer to many items of merchandise
of a wide variety. By contrast, the record shows that
applicant's goods are advertised through press releases
directed to media specializing in the music industry; print
advertisements featuring a single item; an advertising
catalogue simulating a magazine, called Peavey Monitor,
which includes articles regarding musical equipment and
which features only musical sound equipment; brochures
featuring only musical sound equipment; and press notices
appearing in musical specialty publications.
Our analysis indicates that the parties' marks are
distinguishable; that applicant's goods are not offered
through department store trade channels; and that the
parties' respective goods and services are marketed to
largely different classes of customers under circumstances
that are unlikely to bring the subject marks into conflict.
Accordingly, we cannot find that confusion, mistake or
deception is likely to arise from the use of applicant's
mark on its goods.
Decision: The opposition is dismissed.
J.D. Sams
Opposition No. 96,414
11
R. L. Simms
E. J. Seeherman
Administrative Trademark Judges,
Trademark Trial and Appeal Board