RGB Systems, Incorporatedv.UG Electronics Limited

Trademark Trial and Appeal Board

Feb 27, 2015

No. 92057163 (T.T.A.B. Feb. 27, 2015)

Mailed: February 27, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

RGB Systems, Incorporated
v.
UG Electronics Limited
_____

Cancellation No. 92057163
_____

John C. Holman and Robert S. Pierce of Jacobson Holman Hershkovitz PLLC,
for RGB Systems, Incorporated.

Wendy K. Marsh of Nyemaster Goode, P.C.
for UG Electronics Limited.
______

Before Seeherman, Bucher and Wellington,
Administrative Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

RGB Systems, Incorporated (hereafter “Petitioner”) has petitioned to
cancel Registration No. 4309701 for XTRONS, in the stylized form shown
below,

owned by UB Electronics Limited (hereafter “Respondent”) for the following
goods, all in Class 9:
This Opinion is Not a
Precedent of the TTAB
Cancellation No. 91208694
2
Audio and video recorders; telephone apparatus; telephone
answering machines; automatic telephone exchanges; headsets
for mobile telephones; cash registers; calculators; radio and
television aerials; audio-receivers and video-receivers; digital
media receivers; antennas for radio; television antennas;
television sets; VCD machines; DVD machines; CD players;
cassette players; amplifiers; audio speakers; film and digital
cameras; video cameras; cellular phones; mobile phones.1

Petitioner seeks to cancel the registration on the ground of likelihood of
confusion, alleging, inter alia, that starting in June 1984, prior to the filing
date of the application underlying the registration sought to be cancelled, and
prior to the date of first use in commerce of the mark, Petitioner and its
subsidiaries and licensees have engaged in the distribution and sale of audio
visual equipment in commerce in the United States under the mark
EXTRON; and that Petitioner is the owner of Registration No. 3076105 for
EXTRON for various audio visual equipment.
In its answer Respondent admitted that Petitioner is the listed owner of
Registration No. 3076105 for EXTRON, and that a copy of this registration
was attached as an exhibit to the petition for cancellation. Respondent
otherwise denied the salient allegations of the petition.2
We grant the petition to cancel.

1 Issued March 26, 2013.
2 In its brief Respondent states that “at no time during the nearly two year time
period between Registrant’s filing of the initial XTRONS application and the filing
date of the Petition to Cancel did Petitioner notify Registrant of its objection to
Registrant’s use and/or registration of the XTRONS mark.” 12 TTABVUE 9. To the
extent that Respondent is suggesting that it has a defense of laches, Respondent
never asserted such a defense in its answer, and it therefore may not raise it for the
first time in its final brief. We also note that Petitioner filed its petition to cancel
within two months of the issuance of Respondent’s registration.
Cancellation No. 91208694
3
By operation of the trademark rules, the record includes the pleadings
and the file of the registration sought to be cancelled. Petitioner made its
pleaded registration for EXTRON in standard characters of record by
submitting a copy of the registration taken from the Patent and Trademark
Office’s TSDR (Trademark Status & Document Retrieval) database. The
registration, which issued on April 4, 2006, is for the following goods, in
Class 9:
Audio visual equipment, namely, computer interfaces, video and
audio distribution amplifiers, video and audio switchers, video
and audio matrix switchers, transmitters and receivers for
sending video, audio, and control signals over unshielded
twisted pair cables, video and audio test signal generators, audio
amplifiers, audio summing amplifiers, microphone to line level
preamplifiers, microphone mixers, volume and tone controllers,
digital visual interface or DVI transmitters and receivers, high
resolution coaxial cables, audio cables, video cables, control
signal cables, unshielded twisted pair cables, audio adapters,
video adapters, control signal adapters, video connectors, audio
connectors, and control signal connectors; signal converters and
processors, namely, computer to video scan converters, video and
RGB scalers, video decoders, video transcoders, control signal
converters, video tuners, multi-window video processors, video
standards converters, video sync converters, video sync
stabilizers, analog video to digital video converters, digital video
to analog video converters, and balanced to unbalanced audio
converters; electronic and digital control panels; ethernet control
interfaces; software for video and audio testing and evaluation;
software for controlling and monitoring audio visual equipment;
software for configuring control panels; software for configuring
audio visual equipment; audio visual equipment accessories,
namely, audio visual connector plates, audio visual cable
holders, audio connector plates, video connector plates,
telephone and data connector plates, control signal connector
plates, electric power connector plates; mounting devices for
audio visual hardware.3

3 Section 8 affidavit accepted; Section 15 affidavit acknowledged.
Cancellation No. 91208694
4
Other than Petitioner’s submitting its pleaded registration with its petition,
both parties submitted their evidence solely under notices of reliance.
Petitioner made of record Respondent’s responses to Petitioner’s requests for
admission Nos. 2-9; Respondent’s responses to interrogatories Nos. 2, 3, 7, 10,
11, 22 and 23; a status and title copy of Petitioner’s pleaded EXTRON
registration and the registration file;4 the file of Petitioner’s applications for
EXTRON, Serial Nos. 86023662 and 86023716; and Internet materials from
its own website and those of Wikipedia, ProSound and Ebay. Respondent has
submitted its own responses to Petitioner’s request for admission No. 10 and
Petitioner’s interrogatory Nos. 4-6 and 24-27;5 third-party trademark
registrations for the marks TEXTRON, XETRON, FLEXTRON, XTRON,
VOXTRON and NEXTRON; and Internet materials, consisting of pages taken
from Petitioner’s website, www.extron.com, from Respondent’s website,
www.xtrons.com, from Ebay, http://stores.ebay.com, and Respondent’s
Facebook page, www.facebook.com.

4 As noted, the registration itself was already of record by Petitioner’s submission of
the TSDR electronic database copy with its petition to cancel, showing status and
title. See Trademark Rule 2.122(d)(1).
5 A responding party cannot make its own responses to requests for admission or
interrogatories of record by notice of reliance unless they should in fairness be
considered so as to make not misleading what was offered by the inquiring party.
See Trademark Rule 2.120 (j)(3)(ii)(5). Respondent did not assert that this was the
reason for submitting its own responses. However, because Petitioner did not object
to these responses, and has treated them of record (see trial brief, 11 TTABVUE 9),
we deem them to have been stipulated into the record. We also note that the
response to the request for admission has no evidentiary value because it was
denied.
Cancellation No. 91208694
5
The proceeding has been fully briefed. We point out that many of the
statements made in the Statement of Facts in both parties’ briefs are not
supported by the record. Materials taken from the Internet cannot be used to
prove the truth of the statements made in those materials. See Safer Inc. v.
OMS Investments Inc., 94 USPQ2d 1031, 1040 (TTAB 2010) (materials taken
from the Internet and submitted under a notice of reliance “are admissible
only to show what has been printed, not the truth of what has been printed”).
Standing
Standing is a threshold requirement for any proceeding. Here, Petitioner
has made of record both its registration for EXTRON as well as evidence
showing that Petitioner’s pending applications, Serial Nos. 86023662 and
86023716, both for EXTRON, have been refused registration on the basis of
likelihood of confusion with Respondent’s registration. Therefore, Petitioner
has shown that it has a real interest in the proceeding, and has demonstrated
its standing. See Herbko Int’l Inc. v. Kappa Books Inc., 308 F.3d 1156, 64
USPQ2d 1375, 1377 (Fed. Cir. 2002); Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).6

6 In its brief Respondent asserts that there are two issues presented in this
proceeding: whether Petitioner has established that there is a likelihood of confusion
between Petitioner’s mark EXTRON and Respondent’s mark XTRONS, and whether
“Petitioner has met its burden of proving its EXTRON mark is a strong mark that
will be harmed by [Respondent’s] XTRONS registration.” 12 TTABVUE 6. To the
extent that Respondent is suggesting, by its reference to “harm,” that Petitioner does
not have standing, we confirm that Petitioner has demonstrated its standing.
Cancellation No. 91208694
6
Priority
Because both Petitioner and Respondent own registrations, priority is in
issue. Brewski Beer Co. v. Brewski Brothers Inc., 47 USPQ2d 1281, 1284
(TTAB 1998). Cf. King Candy Company v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108 (CCPA 1974) (in an opposition where the opposer
owns a registration, and of course the applicant only has an application,
priority is not in issue). Although neither party has submitted probative
evidence of when each began using its mark for its goods, each may rely on
the filing date of the application underlying its registration. The filing date of
the application underlying Petitioner’s pleaded registration is December 17,
2004; the filing date of the application underlying Respondent’s registration
is June 3, 2011. Therefore, Petitioner has established that it has priority.
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., Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
We begin with a consideration of the first du Pont factor, the similarity or
dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. In conjunction with our analysis of
this factor, we consider the strength of Petitioner’s mark, since Respondent
Cancellation No. 91208694
7
relies on seven registrations (two owned by the same entity) all having the
letter string TRON, to show that Petitioner’s mark is entitled to a limited
scope of protection. First, we point out that third-party registrations are not
evidence of the use of the marks. See Palm Bay Imports v. Veuve Cliquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1693
(Fed. Cir. 2005) (the probative value of third-party trademarks depends
entirely upon their usage); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915,
189 USPQ 693, 694 (CCPA 1976) (third-party registrations are entitled to
little weight on the question of likelihood of confusion where there is no
evidence of actual use). However, third-party registrations may be used to
show the meaning of a mark in the same way that dictionaries are used. In re
Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1261 (Fed. Cir. 2010);
Tektronix Inc. v. Daktronics, Inc., 189 USPQ2d at 694.
Respondent asserts in its brief that “TRON” is “a term uniformly defined
by Webster’s and other dictionaries as a suffix for a tool or electronic device.”
12 TTABVUE 17. However, Respondent did not submit any dictionary
definitions to support this assertion nor, indeed, did it submit such a
dictionary definition with its brief and request that we judicially notice it. We
have consulted Dictionary.com Unabridged, which is based on the Random
House Dictionary (2015), and the definition for the suffix “-tron” is:
a combining form extracted from electron, used with nouns or
combining forms, principally in the name of electron tubes
(ignitron; klystron; magnetron) and of devices for accelerating
subatomic particles (cosmotron; cyclotron); also, more generally,
Cancellation No. 91208694
8
in the names of any kind of chamber or apparatus used in
experiments (biotron).7

In other words, this dictionary definition does not bear out Respondent’s
claim regarding the suffix “tron.” Certainly there is no evidence to show, as
Respondent asserts, that it is a generic portion of the parties’ marks.
Nor are the third-party registrations probative evidence that TRON has a
significance for Petitioner’s or Respondent’s goods, in that the goods in these
third-party registrations are not all similar. For example, Registration No.
1090737 for TEXTRON is for, inter alia, digital frequency synthesizers;
oscillators, crystals and filters, precision fluid system components and
assemblies, inertial instruments, aerospace antennas, electromagnetic
defense units, electro optics and high energy laser beam systems.
Registration No. 2483516 for XTRON is for computer equipment, e.g.,
integrated circuits, computer chips, computer disc drives and computer
hardware memory cards, and Registration No. 1850217 for is
for computer equipment, namely connectors, sockets and cable assemblies.
Registration No. 1230953 for the mark shown at right
registered in connection with photographic projectors
and photographic film handling apparatus. There are

7 The Board may take judicial notice of online dictionary definitions based on printed
dictionaries, including the Random House Dictionary. In re Premiere Distillery LLC,
103 USPQ2d 1483, 1484 (TTAB 2012).
Cancellation No. 91208694
9
three third-party registrations that are for arguably similar goods to
Petitioner’s and Respondents. Two are owned by the same entity and are for
VOXTRON in standard characters, No. 4304243, and No.
4303206, for, inter alia, apparatus for recording or reproduction of sound,
images and data, computer software for sound and data exchange
applications in the field of interactions via phone, email, fax, web chats.
Registration No. 3782096 for FLEXTRON is for antennas. However, these
registrations for VOXTRON and FLEXTRON are not sufficient to show that
TRON has a significance for Petitioner’s and Respondent’s goods.
Even if we were to treat TRON as having a significance, the similarity of
the marks EXTRON and XTRONS (stylized) is not based on the presence of
TRON alone, but on the similarities of the marks in their entireties. The
marks differ only in that Petitioner’s mark begins with the letter “E” and
Respondent’s mark ends with the letter “S.” The slight stylization of
Respondent’s mark is not sufficient to distinguish it from Petitioner’s mark,
since Petitioner’s mark is registered in standard characters, and therefore
the registration is not limited to any particular font, size, style or color. In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012). Thus,
Petitioner is entitled to use its mark in the same stylized format that
Respondent uses. As for the “S” at the end of Respondent’s mark, the
presence or absence of the “S” is not sufficient to distinguish the marks. See
Wilson v. Delaunay, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957), finding
Cancellation No. 91208694
10
ZOMBIE and ZOMBIES “substantially the same mark.” As for the
beginnings of the marks, in this particular case we find that the presence of
absence of the initial letter “E” is not sufficient to distinguish the marks
either. Respondent has admitted that “EX” is an alternate spelling for “X”
and both can be pronounced the same. Response to request for admission No.
9. As a result, the marks are virtually identical in pronunciation. Similarity
in sound alone may be sufficient for a finding of likelihood of confusion. In re
1st USA Realty Professionals Inc., 84 USPQ2d 1581, 1586 (TTAB 2007). As for
meaning, although neither mark has been shown to have a meaning, because
EX and X are alternate spellings, the marks convey a similar, even if unclear,
meaning, and they also convey a similar commercial impression. Thus, any
differences in appearance due to the initial letter “E” in Petitioner’s mark are
outweighed by the similarities in pronunciation, connotation and commercial
impression.
We note that Respondent adopted its mark because “‘x’ is commonly used
in mathematics as a symbol for an independent variable or unknown value.
Registrant likewise wanted its ‘XTRONS’ brand to be independent and full of
possibilities.” Response to interrogatory No. 10. However, there is no
indication that consumers would be aware of Respondent’s thought process in
choosing its mark, and in fact Respondent has admitted that XTRONS has no
English meaning and has no meaning or significance in either Petitioner’s or
Respondent’s trade or industry. Responses to requests for admission 2 and 4.
Cancellation No. 91208694
11
The du Pont factor of the similarities of the marks favors Petitioner, and
factors 5 (the strength of the prior mark) and 6 (the number and nature of
similar marks in use on similar goods) are neutral.
The next factor we consider is the similarity or dissimilarity of the goods.
Petitioner asserts that the audio-receivers and video-receivers; digital media
receivers and amplifiers identified in Respondent’s registration overlap with
the following goods identified in Petitioner’s registration: video and audio
distribution amplifiers, transmitters and receivers for sending video, audio,
and control signals over unshielded twisted pair cable, audio amplifiers and
audio summing amplifiers. Petitioner also asserts that the goods “audio and
video recorders, radio and television aerials, antennas for radio, television
antennas, television sets, VCD machines, DVD machines, CD players,
cassette players, audio speakers; film and digital cameras, and video
cameras” are closely related to Petitioner’s goods because they are all
components of systems that reproduce, play and transmit audiovisual
signals. In support of this position, Petitioner points to the evidence
submitted by the Examining Attorney during the examination of
Respondent’s underlying application, when the Examining Attorney had cited
Petitioner’s registration in refusing registration of Respondent’s then-
application.8 For example, the Examining Attorney submitted evidence of
single sources that make speakers, amplifiers and audio receivers; and AV

8 Obviously, the Examining Attorney subsequently withdrew the refusal of
registration.
Cancellation No. 91208694
12
receivers, speakers, amplifiers and CD players; and of registrations
indicating that third parties have adopted a single mark for many of the
goods listed in both Petitioner’s and Respondent’s registrations.
Respondent does not really dispute Petitioner’s evidence or assertions.
Instead, it points to arguments made by Petitioner during the course of
prosecution of its underlying application, when it was attempting to overcome
a likelihood of confusion refusal with respect to one of the third-party
registrations listed above, No. 2483516, for the mark XTRON for “integrated
circuits, computer chips, computer memory modules and computer memory
devices, namely floppy discs for computers, computer discs drives, computer
hardware memory cards.” Petitioner, as applicant, then argued, inter alia,
that its goods allow audio visual equipment to communicate with each other
and with computers, and that this is a relatively narrow and specialized
market niche, with no evidence that the cited registrant’s goods overlap with
it. 9 TTAB 65. Applicant also stated that its goods “are not marketed to the
general public,” and that they “are not the typical stereo equipment or
computer sound systems marketed to the ordinary consumer in the usual
channels of commerce such as consumer electronic shops or department
stores.” 9 TTABVUE 67.
A party’s prior arguments may be considered as “illuminative of shade
and tone in the total picture,” but do not alter the Board’s obligation to reach
its own conclusion on the record. Stone Lion Capital Partners, LP v. Lion
Cancellation No. 91208694
13
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014),
quoting Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926,
198 USPQ 151, 154 (CCPA 1978). In this particular situation, we give
Petitioner’s earlier remarks virtually no probative value. They were made in
connection with goods that are very different from the goods in Respondent’s
registration, such that Petitioner’s comments regarding dissimilarities
between that third-party registrant’s goods and Petitioner’s goods are not
relevant to the similarities or dissimilarities between Petitioner’s identified
goods and Respondent’s identified goods.
The “amplifiers” identified in Respondent’s registration would encompass
the “video and audio distribution amplifiers,” “audio amplifiers” and “audio
summing amplifiers” identified in Petitioner’s registration. Further, the
“audio-receivers and video-receivers” identified in Respondent’s registration
would encompass the “… receivers for sending video, audio, … over
unshielded twisted pair cable.” As a result, the parties’ goods are, in part,
legally identical. In view of this, we need not discuss the evidence regarding
the relatedness of some of the additional goods of Petitioner and Respondent.
If there is likely to be confusion with respect to any item that comes within
the identification of goods, likelihood of confusion must be found. Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986,
988 (CCPA 1981). The du Pont factor of the similarity of the goods favors
Petitioner.
Cancellation No. 91208694
14
The goods that are legally identical must be deemed to be sold in the same
channels of trade. We are aware of Respondent’s arguments that the goods,
in fact, travel in different channels of trade. However, it is appropriate to
focus on the identifications set forth in the registrations “rather than on real-
world conditions.” Stone Lion Capital Partners, LP v. Lion Capital LLP, at
110 USPQ2d at 1162. The question of likelihood of confusion must be
determined based on an analysis of the mark as applied to the goods as
identified in each party’s registration, regardless of what the record may
reveal as to the particular nature of each party’s goods, the particular
channels of trade or the class of purchasers to which sales of the goods are
directed. See Octocom Sys., Inc. v. Houston Comp. Servs. Inc., 918 F.2d 937,
16 USPQ2d 1783, 1787 (Fed. Cir. 1990); Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed.
Cir. 1987). Neither Petitioner’s nor Respondent’s identifications limit the
channels of trade through which their goods are sold, and we must therefore
assume that they are sold through all channels of trade appropriate for the
goods. This du Pont factor also favors Petitioner.
The next factor we consider is the conditions under which and buyers to
whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing.
The amplifiers identified in Petitioner’s registration (and the goods which we
have found to be legally identical to Respondent’s goods) include “audio
amplifiers.” These are goods that can be purchased by the general public as
Cancellation No. 91208694
15
part of a stereo system,9 and therefore we do not view the purchasers as
particularly discriminating. There is no specific evidence as to the cost of
amplifiers, but on the assumption that they are expensive enough not to be
“impulse” purchases, we are not persuaded that consumers exercising
ordinary care would distinguish between the marks when, as previously
discussed, the marks are so similar. Therefore, we treat this du Pont factor as
neutral.
In saying this, we are aware that Petitioner, in arguing against the
citation of the third-party registration for XTRON during the examination of
its underlying application, argued that its consumers “are sophisticated
institutional purchasers employing sophisticated well-educated personnel,
specifically audio visual systems integrators.” 9 TTABVUE 66. However, we
cannot treat this statement as limiting Petitioner’s customers. First,
Petitioner’s registration includes “audio amplifiers” without any limitation,
and therefore gives Petitioner the right to use its mark with all kinds of
“audio amplifiers” that would be sold to all appropriate classes of consumers.
Second, Petitioner’s customer base may have expanded since it made this
statement in 2005. Cf. In re Majestic Distilling Co., 65 USPQ2d at 1205-06
(prior agreements with third parties that are several years old may not
reflect current views).

9 See definition of “amplifier” taken from merriam-webster.com: one that amplifies;
specifically: an electronic device (as in a stereo system) for amplifying voltage,
current, or power.
Cancellation No. 91208694
16
The final du Pont factor discussed by the parties is number 13, any other
established fact probative of the effect of use. Both parties point to actions of
examining attorneys in support of their positions. Petitioner contends that
the fact that its pending applications for EXTRON marks have been refused
on the basis of likelihood of confusion with Respondent’s mark shows that
confusion is likely, while Respondent contends that, because the Examining
Attorney examining its underlying application first cited Petitioner’s
registration, but then withdrew the refusal of registration based on that
registration, there has been a finding that confusion is not likely.
We are not persuaded by the actions of the Examining Attorneys during
examination of any of these applications. It hardly needs saying, but the
Board is not bound by the actions of examining attorneys. If that were the
case, there would be no point to having a cancellation proceeding based on a
plaintiff’s registration, since the examining attorney would presumably have
made a decision that there was no likelihood of confusion between the two
party’s marks. Further, examining attorneys do not normally consider the
same record that is present in an inter partes proceeding, and certainly they
have no opportunity to hear from the adverse party, or to consider any
evidence from that party. Accordingly, we treat this factor as neutral.
Respondent also claims that the extent of potential confusion du Pont
factor favors it. Respondent argues that “should any potential for confusion
be found, such confusion will be de minimis given the differences in
Cancellation No. 91208694
17
customers and channels of trade and the extensive third-party use of the
TRON component by others.” 12 TTABVUE 26. As previously discussed, the
goods are, in part, legally identical and these goods must therefore be deemed
to travel in the same channels of trade to the same classes of customers. We
have also explained that the third-party registrations do not constitute
evidence of third-party use. Therefore, the bases for Respondent’s assertion
that potential confusion is de minimis fails. We treat this factor as neutral.
These are the only du Pont factors discussed by the parties. To the extent
that any others are relevant, we treat them as neutral.
After reviewing all of the evidence of record, and considering the parties’
arguments, we find that Respondent’s use the mark XTRONS in stylized
form for the goods identified in Respondent’s registration is likely to cause
confusion with Petitioner’s mark EXTRON used with the goods identified in
Respondent’s registration.
Decision: The petition for cancellation is granted.