Peavey Electronics Corp.v.Gemini Sound Products Corp.

Trademark Trial and Appeal Board

Aug 7, 1998

No. 92021786 (T.T.A.B. Aug. 7, 1998)

Hearing: Paper No. 22
October 10, 1997 HANAK/MD
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT OF
THE TTAB AUG 7, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Peavey Electronics Corporation
v.
Gemini Sound Products Corp.
_____
Cancellation No. 21,786
_____
Donald N. Huff of Watson, Cole, Grindle & Watson for Peavey
Electronics Corporation.
Ezra Sutton for Gemini Sound Products Corp.
_____
Before Cissel, Hanak and Seeherman, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
On May 5, 1993 Peavey Electronics Corporation
(petitioner) filed a petition to cancel Registration No.
1,764,327 owned by Gemini Sound Products Corporation
(respondent or registrant). This registration, which issued
on April 13, 1993, is for the mark PVX in typed capital
letters for “audio equalizers, amplifiers and pre-
amplifiers.” The application which matured into this
Cancellation No. 21,786
2
registration was filed on August 31, 1992 with a claimed
first use date of February 1991.
In its petition for cancellation, petitioner alleged
that long prior to February 1991, petitioner both used and
registered PEAVEY for a wide variety of musical electronic
apparatus specifically including equalizers and amplifiers.
Moreover, petitioner further claimed that long prior to
February 1991, it used and registered the mark PV for
microphones. Finally, petitioner alleged that respondent’s
use of the mark PVX is likely to cause confusion, deception
and mistake vis-a-vis petitioner’s marks PEAVEY and PV. In
particular, petitioner alleged that with regard to its mark
PV and respondent’s mark PVX, “the suffix designation X as
used in the musical electronics trade, and other marketing
arenas, often connotes a shortened form of the word EXTRA.
As such, the use of the letter X in conjunction with the
letters PV does not render the registrant’s mark [PVX]
distinctive of registrant’s goods over petitioner’s prior
usage of the letters PV and the phonetic pronunciation of
petitioner’s trade name and PEAVEY mark.” (Petition
paragraph 5).
Respondent filed an answer which denied the pertinent
allegations of the petition for cancellation.
Petitioner filed a brief. Respondent failed to file a
brief in a timely fashion. Instead, it filed a motion to
Cancellation No. 21,786
3
reopen respondent’s time for filing its main brief. As
explained in this Board’s order of April 2, 1997,
respondent’s motion was denied. The Board stated that “no
brief from respondent will be accepted.” However, in its
order of April 2, 1997 this Board allowed both parties 30
days in which to file requests for oral argument. Neither
party did so.
By means of a notice of reliance, petitioner has made
of record, among other things, certified status and title
copies of its registrations of PEAVEY and PV; registrant’s
responses to requests for admission nos. 1-11; registrant’s
answers to petitioner’s interrogatories nos. 1-22; the
deposition of registrant’s president (Isaac Cabasso); and
articles appearing in various magazines. In addition, with
this same notice of reliance petitioner submitted a copy of
registrant’s memorandum in opposition to petitioner’s motion
for summary judgment and a copy of Mr. Cabasso’s affidavit
in support of said memorandum. In so doing, petitioner
cited Trademark Rule 2.120(j). Quite frankly, we are
perplexed as to why petitioner would wish to make of record
respondent’s memorandum and the affidavit of respondent’s
president. Obviously, both of these items make arguments
which are favorable to respondent, and not petitioner.
Moreover, Trademark Rule 2.120(j) deals with discovery
depositions, answers to interrogatories and requests for
Cancellation No. 21,786
4
admission. This rule does not discuss briefs in support of
or against summary judgment and accompanying affidavits or
declarations.
Nevertheless, in fairness to respondent, we will
consider respondent’s brief in opposition to petitioner’s
motion for summary judgment and the affidavit of
respondent’s president in reaching our final decision. With
regard to the affidavit of respondent’s president, we note
that Trademark Rule 2.123(b) provides that “by agreement of
the parties, the testimony of any witness or witnesses of
any party, may be submitted in the form of an affidavit.”
Because petitioner submitted the affidavit of respondent’s
president and because respondent did not object to this
submission (or the submission of respondent’s brief), then
essentially there has been an implicit agreement between the
parties to have the affidavit of respondent’s president
treated as testimony. In this regard, we note that
respondent submitted no evidence. It may well be that
respondent did so because previously petitioner had
submitted with its notice of reliance the affidavit of
respondent’s president. Because of this, respondent may
then have elected not to take the testimony of its president
because respondent may have been of the belief that said
testimony would merely duplicate the affidavit which
petitioner had previously submitted.
Cancellation No. 21,786
5
One final comment concerning the evidentiary record is
needed. At page 5 of its brief petitioner contends that the
evidentiary record includes the “exhibits filed with
petitioner’s motion for summary judgment [and the]
declaration of Hartley D. Peavey [petitioner’s chairman] in
support of petitioner’s motion for summary judgment.” It is
clear that “evidence submitted in connection with a motion
for summary judgment is of record only for the purposes of
that motion. If the case goes to trial, the summary
judgment evidence does not form part of the evidentiary
record to be considered at final hearing.” Trademark Trial
and Appeal Board Manual of Procedure, Section 528.05(a) at
page 500-88 (1st ed. 1995). The only exception to this rule
is if the evidence was “properly introduced … during the
appropriate trial period.” Id. Petitioner did not qualify
for this latter exception. Hence, the declaration of
Hartley D. Peavey and the exhibits to petitioner’s motion
for summary judgment are not part of the evidentiary record
and will not be considered by this Board.
We will now turn to the substance of this case, namely,
the issues of priority of use and likelihood of confusion.
Considering, first priority of use, petitioner owns
registrations for PEAVEY and PV, and respondent owns a
registration (obviously) for PVX. Under such circumstances
where both parties own registrations, it is the Board’s
Cancellation No. 21,786
6
practice “to hold that [as a practical matter] a petitioner
… must, in the first instance, establish prior rights in the
same or similar mark and the respondent in turn can defeat
petitioner’s claim of damage by establishing that, as
between the parties, it possesses [prior] superior rights in
the mark sought to be canceled.” United States Mineral
Products v. GAF Corp., 197 USPQ 301, 305 (TTAB 1977).
Registrant has established through the affidavit Mr. Cabasso
that it commenced use of its mark PVX in February 1991.
(Cabasso affidavit paragraph 4). Mr. Cabasso acknowledged
that “prior to [February 1991], petitioner has used the mark
PV only on microphones.” (Cabasso affidavit paragraph 4).
Moreover, we note that the filing date of the application
which matured into petitioner’s Registration No. 1,435,371
for PV for “microphones” is August 25, 1986. Thus, as
between petitioner’s mark PV for microphones and
respondent’s mark PVX for audio equalizers, amplifiers and
pre-amplifiers, priority of use rests in favor of
petitioner.
As for petitioner’s mark PEAVEY, respondent has
acknowledged that at the time it first commenced use of PVX,
respondent was aware of petitioner’s use of the trademark
PEAVEY on audio electronic products, specifically including
amplifiers, pre-amplifiers and equalizers. (Respondent’s
responses to requests for admission 1 & 3). Indeed, when
Cancellation No. 21,786
7
asked by petitioner when “registrant first became aware of
petitioner’s use of the mark PEAVEY in association with the
marketing and sale of amplifiers,” respondent answered
“approximately 1974.” Respondent further noted that it was
Mr. Cabasso who became aware of such use as a result of
advertising and trade shows. (Respondent’s answer to
interrogatory No. 14). Thus, respondent has admitted that
petitioner first used PEAVEY on the identical products for
which respondent has registered PVX, namely, amplifiers,
pre-amplifiers and equalizers. Indeed, with regard to
amplifiers, respondent has acknowledged that petitioner used
its mark PEAVEY approximately 17 years before respondent
first used its mark PVX (i.e. 1974 to 1991). Moreover,
petitioner has made of record certified status and title
copies of its Registration No. 1,532,800 for the mark PEAVEY
depicted in typed drawing form for various goods including
equalizers and amplifiers. The application which matured
into this registration was filed on June 9, 1988. Thus,
petitioner has established its prior rights to its mark
PEAVEY in typed drawing form.
Finally, petitioner has also made of record certified
status and title copies of various of its registrations for
PEAVEY in the highly stylized forms show below. These
registrations cover goods (equalizers and amplifiers) which
are identical to certain of the goods for which respondent
Cancellation No. 21,786
8
has registered PVX. However, as depicted in the highly
stylized forms shown below, we find that petitioner’s mark
PEAVEY is so dissimilar from respondent’s mark PVX such that
there is no likelihood of confusion. Accordingly, we will
not bother to recite the details of petitioner’s
registrations of PEAVEY in the highly stylized forms shown
below.
We will now begin our likelihood of confusion analysis.
In comparing petitioner’s mark PEAVEY (typed drawing form)
and respondent’s mark PVX (typed drawing form), we note that
petitioner has established prior rights in PEAVEY (typed
drawing form) for products which are identical to two of the
three products for which respondent has registered PVX
(typed drawing form), namely, amplifiers and equalizers. Of
course, it is important to remember that “when marks would
appear on virtually identical goods or services, the degree
of similarity [of the marks] necessary to support a
Cancellation No. 21,786
9
conclusion of likely confusion declines.” Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992). In terms of
pronunciation, the first two letters of respondent’s three
letter mark (PV) are either identical to or extremely
similar to petitioner’s mark PEAVEY. However, when
respondent’s mark PVX is considered in its entirety, as it
must be, then the pronunciation of said mark is, at most,
only somewhat similar to the pronunciation of petitioner’s
mark PEAVEY. Moreover, in terms of visual appearance, the
marks PEAVEY and PVX are dissimilar. Likewise, in terms of
connotation, the marks are also dissimilar. Petitioner has
accurately characterized respondent’s mark PVX as an
“arbitrary arrangement of letters.” (Petitioner’s brief
page 21). On the other hand, petitioner’s mark PEAVEY is
clearly a surname and would be perceived as such. Thus, in
terms of connotation, an arbitrary arrangement of letters
(PVX) is clearly dissimilar from a surname (PEAVEY).
Hence, we find that there is no likelihood of confusion
resulting from the contemporaneous use on identical products
of the marks PEAVEY and PVX. This would be true even when
respondent depicts its mark PVX in manner such that the PV
portion appears as a unit somewhat separated from the X
portion, as will be discussed in greater length below.
Cancellation No. 21,786
10
We turn now to consideration of whether the
contemporaneous use of PVX for equalizers, amplifiers and
pre-amplifiers and PV for microphones is likely to cause
confusion. Considering first the goods, while they are not
competitive, they are complementary. All are audio
products. In addition, by definition, microphones “are used
in … sound amplification.” Webster’s New World Dictionary
(2d ed. 1970).
We note that in paragraph 5 of his affidavit, Mr.
Cabasso states as follows: “Registrant’s PVX amplifiers and
pre-amplifiers are not sold to the same class of purchasers
as are petitioner’s PV microphones, and they do not move in
the same channels of trade as petitioner’s PV microphones.”
Whether or not respondent’s particular amplifiers and
petitioner’s particular microphones are sold to the same
class of purchasers or move in the same channels of trade is
not the relevant inquiry. Rather, the relevant inquiry is
whether either equalizers, amplifiers and pre-amplifiers in
general and microphones in general are sold to the same
class of purchasers and move in the same trade channels. It
must be remembered that in a proceeding such as this, “the
question of likelihood of confusion must determined based on
an analysis of the mark as applied to the goods and/or
services recited in [respondent’s registration] vis-a-vis
the goods and/or services recited in [petitioner’s
Cancellation No. 21,786
11
registration], rather than what the evidence shows the
[actual] goods and/or services to be.” Canadian Imperial
Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815
(Fed. Cir. 1987). Respondent’s registration for PVX
encompasses all types of equalizers, amplifiers and pre-
amplifiers. Likewise, petitioner’s registration of PV
encompasses all types of microphones. As noted, by
definition, at least certain types of amplifiers and certain
types of microphones are complementary.
Having determined that petitioner’s goods (microphones)
and at least certain of registrant’s goods (amplifiers) are
related, we turn to a consideration of the marks.
Obviously, respondent’s mark PVX encompasses petitioner’s
mark PV in its entirety, and simply adds the letter X at the
end. Thus, in terms of visual appearance and pronunciation,
the marks PV and PVX are similar. Moreover, in their
entireties, both PV and PVX are lacking in connotation.
Both are arbitrary combinations of letters. When asked how
respondent came up with its mark PVX, Mr. Cabasso testified
that: “We’re [just] picking out letters.” (Cabasso dep.
12). It is been held that it is more difficult to
distinguish “arbitrarily arranged letters,” and that this is
true even when the purchasers are “professional persons” and
the “products sell in the range of thousands of dollars.”
Weiss Associates v. HRL Associates, 902 F.2d 1546, 14 USPQ2d
Cancellation No. 21,786
12
1840, 1841 (Fed. Cir. 1990). Of course, in this case,
microphones and amplifiers are purchased by ordinary
individuals as well as professionals, and many microphones
and amplifiers sell for sums far less than “thousands of
dollars.” See respondent’s answer to interrogatory No. 17.
In Weiss, the Court found that there was a likelihood of
confusion resulting from the contemporaneous use of TMS and
TMM despite the fact that the purchasers were professional
and discriminating, and despite the fact that the products
involved cost thousands of dollars. While in Weiss it was
found that the goods were “directly competitive,” and while
here the goods are merely complementary, by the same token,
as previously noted, in the present case the goods
(microphones and amplifiers) can be sold to ordinary
consumers for sums far less than thousands of dollars.
Moreover, one other critical factor must be kept in
mind. Both petitioner’s registration of PV and respondent’s
registration PVX are in typed capital letters. This means
that both registrations are “not limited to the mark[s]
depicted in any special form.” Phillips Petroleum v. C.J.
Webb, 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971).
Accordingly, in our likelihood of confusion analysis, we
“must consider all reasonable manners in which those
[letters] could be depicted.” INB National Bank v.
Metrohost, 22 USPQ2d 1585, 1588 (TTAB 1992).
Cancellation No. 21,786
13
In paragraph 13 of his affidavit, Mr. Cabasso states
that in practice, “the X portion of registrant’s mark PVX is
highlighted and emphasized in use.” While this is true, by
the same token, the highlighting of the letter X in
respondent’s mark PVX causes the letters PV to stand out as
a separate unit apart from the mark PVX in its entirety.
Reproduced below is a portion of the specimen of use which
respondent submitted with its application and which shows
the PV portion of respondent’s mark PVX standing somewhat
apart.
However, more importantly, inasmuch as respondent’s
registration of PVX is in typed capital letters and thus is
not limited to any special form of presentation of the mark,
respondent is free to depict its mark PVX in a manner where
the letters PV are depicted in larger form and the letter X
is depicted in smaller form. When so depicted, respondent’s
mark PVX would be very similar to petitioner’s mark PV such
Cancellation No. 21,786
14
that their use on complementary audio products purchased by
ordinary consumers would result in a likelihood of
confusion.
Decision: The petition for cancellation is sustained
solely on the basis that the contemporaneous use of
petitioner’s mark PV for microphones and respondent’s mark
PVX for, at least, amplifiers is likely to cause confusion.
R. F. Cissel
E. J. Seeherman
E. W. Hanak
Administrative
Trademark Judges,
Trademark Trial and
Appeal Board