Sonex Research, Inc.

Trademark Trial and Appeal Board

Apr 6, 2012

No. 77979007 (T.T.A.B. Apr. 6, 2012)

Mailed:
April 6, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sonex Research, Inc.
________

Serial No. 77435929
Serial No. 77979007
_______

Thomas J. Moore of Bacon & Thomas PLLC for Sonex Research,
Inc.

Julie A. Watson, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Quinn, Bergsman and Kuczma,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Sonex Research, Inc. (“applicant”) filed an application
on the Principal Register for the mark SONEX, in standard
character form, for “internal combustion engines for manned
aerial vehicles and systems,” in Class 7, as amended (Serial
No. 77435929). Applicant also filed an application to
register the mark SONEX, in standard character form, for
“internal combustion engines for unmanned aerial vehicles,”
in Class 7, as amended (Serial No. 77979007).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77435929
Serial No. 77979007

2
The Trademark Examining Attorney refused to register
applicant’s mark under Section 2(d) of the Trademark Act of
1946, 15 U.S.C. §1052(d), on the ground that applicant’s
mark is likely to cause confusion with the previously
registered mark SONEX, in standard character form, for
“aircraft, and aircraft kits comprised of aircraft parts and
plans to build complete aircraft,” in Class 12.1 In
addition, in application Serial No. 77979007 for the mark
SONEX for “internal combustion engines for unmanned aerial
vehicles,” the examining attorney also refused registration
on the ground that the specimens of record do not show use
of the mark for the products identified in the application.
Because the two appeals involve common questions of
fact and law, we have consolidated the appeals.2
Likelihood Of Confusion
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the probative
facts in evidence that are relevant to the factors bearing
on the issue of likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA
1973). See also, In re Majestic Distilling Company, Inc.,

1 Registration No. 3257450, issued July 3, 2007.
2 Applicant’s counsel consented to the consolidation in a
telephone conference on April 4, 2012.

Serial No. 77435929
Serial No. 77979007

3
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In
any likelihood of confusion analysis, two key considerations
are the similarities between the marks and the similarities
between the goods. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by §2(d) goes to the cumulative
effect of differences in the essential characteristics of
the goods and differences in the marks”).
A. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

The marks are identical.
B. The similarity or dissimilarity and nature of the goods
described in the application and registration, the
channels of trade and classes of consumers.

We note at the outset that because the marks are
identical, the extent to which applicant’s identified goods
and registrant’s identified goods must be the same or
similar to support a finding of likelihood of confusion is
lessened. See In re Opus One Inc., 60 USPQ2d 1812, 1815
(TTAB 2001). Where the marks are the same, as in this case,
it is only necessary that there be a viable relationship
between the goods to support a finding of likelihood of
confusion. See In re Concordia International Forwarding
Corp., 222 USPQ 355, 356 (TTAB 1983).
Serial No. 77435929
Serial No. 77979007

4
Applicant is seeking to register SONEX for “internal
combustion engines for manned [and unmanned] aerial vehicles
and systems” and the cited registration is for “aircraft,
and aircraft kits comprised of aircraft parts and plans to
build complete aircraft.”
The USPTO looks to the ordinary meaning of words for
the purpose of determining the scope of the identification
of goods. TMEP §1402.03 (8th ed. 2011). The term “aerial
vehicles” encompasses “aircraft.” Thus, an “aircraft kit”
comprised of “aircraft parts” “to build a complete aircraft”
may include an internal combustion engine for manned and/or
unmanned aerial vehicles because an engine generally needed
to build a complete aircraft.
Applicant argues that “[i]t is well known and well
established that aircraft engines are manufactured by
different sources, as compared to the aircraft.”3 While
this may be true for aircraft and aircraft internal
combustion engines,4 we focus our analysis on aircraft kits
comprising parts to build a complete aircraft. An essential
part of an aircraft is the engine and a consumer
encountering both a SONEX aircraft kit and a SONEX internal

3 Applicant’s Brief, pp. 6-7.
4 We note that this is attorney argument and it is not supported
by any evidence in the record.

Serial No. 77435929
Serial No. 77979007

5
combustion engine for manned and unmanned aerial vehicles is
likely to believe that the two products emanate from the
same source because of the similarity of the marks.
Because there are no limitations as to channels of
trade or classes of purchasers in the description of goods
in either of the applications or the cited registration, it
is presumed that applicant’s internal combustion engines for
manned and unmanned aerial vehicles and registrant’s kits
for building complete aircraft move in all channels of trade
normal for those goods, and that they are available to all
classes of purchasers for those goods. See In re Linkvest
S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). There is no
evidence in the record regarding the channels of trade and
classes of consumers for internal combustion engines for
manned and unmanned aerial vehicles or for kits for building
complete aircraft. However, since an internal combustion
engine for manned and unmanned aerial vehicles may be a
component of a kit for building a complete aircraft, we may
logically assume that those products move in the same
channels of trade and are sold to the same classes of
consumers.
In view of the foregoing, we find that the goods are
related and there is a presumption that they move in the
Serial No. 77435929
Serial No. 77979007

6
same channels of trade and are sold to the same classes of
consumers.
C. The degree of care exercised by consumers.
Applicant, without any evidentiary support, argues that
because of the nature of the goods at issue, consumers will
exercise a high degree of care. We recognize that the
purchase of internal combustion engines for manned and
unmanned aerial vehicles and kits for building aircraft are
complex products and infrequent purchases for which the
purchaser will have a focused need and to which the
purchaser will direct his/her complete attention. However,
even these careful consumers are not immune to trademark
confusion. Thus, although this factor favors a finding of
no likelihood of confusion, given the fact that the marks
are identical and the goods are related, it is not
sufficient to outweigh the other factors.
D. Balancing the du Pont factors.

In view of the facts that the marks are identical, the
goods are related and we must presume that they move in the
same channels of trade and are sold to the same classes of
consumer, we find that applicant’s mark SONEX, for “internal
combustion engines for manned [and unmanned] aerial vehicles
and systems,” is likely to cause confusion with the
registered mark SONEX for “aircraft, and aircraft kits
Serial No. 77435929
Serial No. 77979007

7
comprised of aircraft parts and plans to build complete
aircraft.” In reaching the conclusion that applicant’s mark
is likely to cause confusion with the previously registered
identical mark, we are also mindful that the products at
issue are not impulse purchases. To the extent that this
factor raises doubt as to the likelihood of confusion, any
such doubt must be resolved in favor of the registered mark.
In re Hyper Shoppes, 837 F.2d 463, 6 USPQ2d 1025, 10025
(Fed. Cir. 1988); In re Martin’s Famous Pastry Shoppe, Inc.,
221 USPQ 364, 367 (TTAB 1984).
Whether The Specimens Are Acceptable?
As indicated above, in application Serial No. 77979007
for the mark SONEX for “internal combustion engines for
unmanned aerial vehicles,” the examining attorney refused
registration on the ground that the specimens of record do
not show use of the mark for the products indentified in the
application. Applicant submitted two specimens.
The most relevant part of the first specimen, filed
October 4, 2010, is set forth below.
Serial No. 77435929
Serial No. 77979007

8

Serial No. 77435929
Serial No. 77979007

9
The second specimen, filed May 9, 2011, is the invoice
set forth below.

The first specimen is a November 7, 2006 press release
issued through PRNewswire announcing that applicant has
“licensed a part of the patented Sonex Combustion System
(SCS) heavy fuel engine (HFE) technology to Insitu, Inc.”
The press release does not reference a SONEX brand internal
Serial No. 77435929
Serial No. 77979007

10
combustion engine. There are two deficiencies with the
press release: it is not affixed to the products and it
does not show the use of the mark SONEX.
A trademark specimen should be a label, tag, or
container for the goods, or a display associated with the
goods. Trademark Rule 2.56(b)(1), 37 CFR §2.56(b)(1).
Press releases do not fall within the spectrum of acceptable
specimens of use. See Dynacolor Corp. v. Beckman & Whitley,
Inc., 134 USPQ 410, 411 (TTAB 1962) (press release
announcing availability of the product does not constitute
public use of the mark). See also In re Bright of America,
Inc., 205 USPQ 65, 71 (TTAB 1979) (“it is apparent from the
language of Section 45 of the Statute and the interpretation
thereof by the Court in In re Chicago Rawhide Manufacturing
Co. [455 F.2d 563, 173 USPQ 8 (CCPA 1972)] that invoices,
announcements, order forms, bills of lading, instruction
sheets as well as other types of leaflets and brochures and
other printed advertising material used as such, including
catalogs, catalog sheets, circulars, publicity releases, and
the like do not constitute acceptable specimens of use of a
mark referred to therein as a trademark for goods.”).
(Emphasis added).
Likewise, invoices are not generally acceptable
specimens of use. In re Chicago Rawhide Manufacturing Co.,
Serial No. 77435929
Serial No. 77979007

11
173 USPQ at 9 (use of mark on invoice which accompanies
goods is not used on goods as required by the Act); The Jim
Dandy Co. v. Siler City Mills, Inc., 209 USPQ 764, 769 (TTAB
1981).
Applicant argues that it is impracticable for applicant
to place the mark on the goods because its customer “has
instructed Applicant that the trademark should not appear on
the goods” citing paragraph No. 5 of the Amendment to Allege
Use (“The customer for the goods sold under the trademark
has instructed Applicant that the trademark should not
appear on the goods.”).5 Trademark Rule 2.56(b)(1), 37 CFR
§2.56(b)(1) provides that “[t]he Office may accept another
document related to the goods or sale of the goods when it
is impracticable to place the mark on the goods, packaging
for the goods, or displays associated with the goods.” This
provision of the rules is intended to apply to situations
where “the nature of the goods makes use on these items
impracticable.” TMEP §904.03(k) (8th ed. 2011).
For example, in rare circumstances it
may be impracticable to place the mark
on the goods or packaging for the goods
if the goods are natural gas, grain
that is sold in bulk, or chemicals that
are transported only in tanker cars.

5 Applicant’s Brief, p. 9 (Serial No. 77979007). Applicant
speculates that its customer may not “want the source of the
engine to be traceable by users of the unmanned aerial vehicles.”
(Applicant’s Brief, p. 10).
Serial No. 77435929
Serial No. 77979007

12
In such instances, an acceptable
specimen might be an invoice, a bill of
lading, or a shipping document that
shows the mark for the goods. …

A mere assertion of impracticability
does not suffice to establish that
traditional trademark use is
impracticable. Rather, the record must
indicate that the goods are, in fact,
of such a nature.

TMEP §904.03(k).
The circumstances of this case are not analogous to the
situations described in the TMEP involving natural gas,
grain sold in bulk or chemicals transported in tanker cars.
While applicant’s customer may have instructed applicant
that the trademark should not appear on the goods, applicant
could have placed the mark on a hang-tag, a sticker or on
some other easily removable matter. For whatever reason,
applicant has chosen not to affix its mark on its internal
combustion engines in any form whatsoever. See In re
Settic, Inc., 80 USPQ2d 1185, 1189 (TTAB 2006) (Board held
that there were a variety of ways applicant could have used
its mark in the traditional manner without making it
available to the end user).
Assuming arguendo that the customer’s instructions not
to place the mark on a product makes the product one on
which it is impracticable to place the mark on the goods,
neither specimen submitted by applicant shows the mark SONEX
Serial No. 77435929
Serial No. 77979007

13
used to identify an internal combustion engine. The press
release references the Sonex Combustion System heavy fuel
engine technology, not a SONEX internal combustion engine.6
The description of the product on the invoice is a “Brison
SCS HFE.” “SCS” is the abbreviation for “Sonex Combustion
System” and “HFE” is the abbreviation for “heavy fuel
engine.”7 Thus, the invoice identifies the sale of a Brison
Sonex Combustion System heavy fuel engine. Accordingly,
even if the specimens could be considered displays used in
association with the goods, they would not be acceptable
because they do not display the mark sought to be
registered.
In view of the foregoing, we find that applicant has
failed to submit an acceptable specimen showing the use of
the mark SONEX used in connection with an internal
combustion engine for an unmanned aerial vehicle.
Decision: The refusals to register are affirmed.

6 Although applicant asserts that “[t]he specimen announces an
‘Exclusive License Agreement’ by which the goods will be produced
by Applicant located in Maryland, and shipped to Applicant’s
customer located in Bingen, Washington,” (Applicant’s Brief, p.
10), we cannot find any such corroboration for that contention in
the press release.
7 See applicant’s press release.