Soundscape, Inc.

Trademark Trial and Appeal Board

Oct 16, 2017

No. 76620682 (T.T.A.B. Oct. 16, 2017)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
October 16, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Soundscape, Inc.
_____

Serial No. 76620682
_____

Amber N. Davis and Kevin W. Wimberly of Beusse Wolter Sanks & Maire, PLLC for
Soundscape, Inc.

Janice L. McMorrow, Trademark Examining Attorney, Law Office 115 (Daniel
Brody, Managing Attorney).
_____

Before Wellington, Wolfson, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Soundscape, Inc. (“Applicant”) filed an application for registration on the Principal
Register of the mark SOUNDSCAPE in standard characters for the following goods:
Equipment for sound processing, reproduction,
transmission, and storage, namely, digital and analog
audio signal playback and recording devices and
associated storage media, namely, CD and DVD optical
discs and DAT tapes; sound recording and reproduction
machines and accessories and parts therefore, namely,
audio transformers, digital sound processors, and CD and
DVD optical discs and DAT tapes; wired and wireless
microphones; computer software for use in sound
processing, mixing, reproduction, and transmission;
loudspeakers; microphone mixers; amplifiers; signal
Serial No. 76620682

2

processors; audio pickups; integrated systems for use in
sound recording composed of microphones, recorders,
sound processors, and storage media such as CD and
DVD; headphones, earphones; personal stereos; car
stereos; stereo tuners; and radios, in International Class
9.1
The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as used
in connection with Applicant’s goods, so resembles the registered mark
SOUNDSCAPE as to be likely to cause confusion, or to cause mistake, or to deceive.
The cited mark is registered in typed form2 for:
Services Involving the Installation, Repair and
Maintenance of High Fidelity Equipment, Components
and Supplies, in International Class 37; and
Retail Store Services Specializing in High Fidelity
Equipment, Components and Supplies, in International
Class 42.3
The Examining Attorney also refused registration because Applicant had not
satisfied a requirement to submit an acceptably definite identification of goods.
When the refusals were made final, Applicant appealed to this Board. The case is
fully briefed.

1 Application Serial No. 76620682 was filed on November 15, 2004 under Trademark Act
Section 1(a), 15 U.S.C. § 1051(a), but was later amended to base the application on
Applicant’s bona fide intent to use the mark in commerce, under Section 1(b), 15 U.S.C.
§ 1051(b).
2 Prior to November 2, 2003, “standard character” drawings were known as “typed”
drawings. A typed mark is the legal equivalent of a standard character mark. TMEP
§ 807.03(i) (April 2017).
3 Reg. No. 1226934 issued on February 8, 1983; Section 15 affidavit acknowledged; renewed.
Serial No. 76620682

3

1. Refusal under Section 2(d).
Our determination 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 as set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, Applicant and the
Examining Attorney have also submitted evidence and arguments regarding trade
channels, relevant customers, the market interface of Applicant and Registrant,
long-term coexistence without confusion, and Applicant’s ownership of a prior
registration of the same mark.
(a) The marks.
We first consider the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression. See Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689 (Fed. Cir. 2005). The marks are identical. Therefore, this du Pont
factor weighs in favor of a finding of likelihood of confusion.
(b) The goods and services.
We next consider the similarity or dissimilarity of the goods and services at issue,
as identified in the application and the cited registration. Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-62 (Fed.
Cir. 2014); Octocom Sys. Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16
Serial No. 76620682

4

USPQ2d 1783, 1787 (Fed. Cir. 1990). Goods or services need not be identical or
competitive in order to support a finding of likelihood of confusion. “Likelihood of
confusion can be found if the respective products [or services] are related in some
manner and/or if the circumstances surrounding their marketing are such that they
could give rise to the mistaken belief that they emanate from the same source.”
Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713,
1722 (Fed. Cir. 2012) (internal quotation marks omitted). We bear in mind that
where identical marks are involved, as is the case here, the degree of relatedness
between the goods and services that is required to support a finding of likelihood of
confusion declines. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688-89
(Fed. Cir. 1993).
Applicant’s goods include various types of equipment for processing and
reproduction of sound, including “loudspeakers, … amplifiers, … headphones,
earphones; personal stereos; car stereos; stereo tuners; and radios.”4 Registrant’s
services include operating retail stores specializing in high fidelity equipment. The
Examining Attorney has submitted evidence that shows persuasively that “high
fidelity” equipment is, in essence, sound reproduction equipment like loudspeakers,

4 In focusing our analysis upon these goods of Applicant we note that we need not find
similarity as to each and every product listed in the application and registration. For
purposes of our analysis, it is sufficient that relatedness be established for any item
encompassed by the identification of goods in a particular class in the application. Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981).

Serial No. 76620682

5

stereo music systems, headphones, car stereos, and amplifiers.5 Thus, the cited
registration identifies retail stores of the type that would sell sound equipment of
the type identified in Applicant’s application. Likelihood of confusion may arise
where confusingly similar marks are used on goods, on the one hand, and in
connection with sales of such goods, on the other. See In re Hyper Shoppes (Ohio),
Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (“trademarks for goods find
their principal use in connection with selling the goods”); see also In re Wet Seal,
Inc. v. FD Management, Inc., 82 USPQ2d 1629, 1640 (TTAB 2006). The record
shows that makers of sound equipment may offer their goods at retail directly to the
public; or that their goods may be offered in the retail stores of others. The record
contains evidence of at least one retailer of sound equipment that offers its own
brand of equipment alongside the goods of others.6 Under such circumstances, the
use of identical marks on goods and on the retail service offering the goods may
confuse consumers as to whether, in any given case, the mark indicates the source
of the goods or the source of the retail service. As discussed infra, there are no
limitations on the trade channels for the respective goods and services; therefore,
we must anticipate the possibility that Applicant’s goods will be sold in retail stores
like Registrant’s.
Applicant argues that its goods are “for professional and commercial applications”
only.7 However, this restriction does not appear in the application’s identification of

5 Office Action of November 7, 2016 at 6-16.
6 Id. at 15-16.
7 Applicant’s brief at 7, 4 TTABVUE 8.
Serial No. 76620682

6

goods, and we must interpret the identification as encompassing all goods of the
type described. Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901,
177 USPQ 76, 77 (CCPA 1973); Octocom v. Houston Computers, 16 USPQ2d at
1787. To do otherwise “would be improper because the [goods] recited in the
application determine the scope of the post-grant benefit of registration.” Stone Lion
Capital v. Lion Capital, 110 USPQ2d at 1162. Therefore, Applicant’s goods would
include all types of loudspeakers, amplifiers, headphones, earphones, and personal
stereos that are offered to ordinary consumers in retail stores specializing in high
fidelity equipment, components and supplies.
For the reasons stated, we find that the du Pont factor of the similarity or
dissimilarity of the goods and services at issue favors a finding of likelihood of
confusion.
(c) Trade channels; customers.
Applicant argues that both Applicant and Registrant market their respective
goods and services “through different trade channels to knowledgeable purchasers,
thereby limiting the possibility of confusion among consumers.”8 Applicant argues
that “Registrant’s services are offered to a local market only through its single,
physical store,” which is located in Baltimore.9 We cannot read this limitation into
the cited registration, which is evidence of Registrant’s exclusive right to use its

8 Applicant’s brief at 9, 4 TTABVUE 10.
9 Id.; see also Second declaration of Martin Collins ¶ 6, Applicant’s response of April 11,
2006 at 9 (“Park Radio has a single physical retail showroom located in Baltimore,
Maryland, and conducts all of its sales through that retail location. … Park Radio does not
sell any products bearing the SOUNDSCAPE mark, nor does it sell products to the
commercial professional market.”)
Serial No. 76620682

7

mark in nationwide commerce. Trademark Act Section 7(b) and (c), 15 U.S.C. §
1057(b) and (c). Applicant also argues that “Applicant conducts its business almost
exclusively through telephone, catalog and internet marketing channels”10 and that,
unlike Registrant, “Applicant does not operate a retail showroom or brick and
mortar location …”11 However, there is no limitation in the application that would
restrict Applicant from offering its goods through a showroom, or placing its goods
with equipment retailers like Registrant. Applicant notes that it does not sell goods
under any brand other than SOUNDSCAPE, while Registrant sells a “number of
brands” in its stores, “none of which bear the SOUNDSCAPE brand.”12 Even if this
is true, there is no reason why consumers, seeing Applicant’s goods in normal retail
trade channels, would know that Applicant offers only a single brand (nor is it clear
why such knowledge would reduce the likelihood of confusion). Moreover, nothing in
the application limits Applicant’s goods to channels in which only a single brand is
offered.
Finally, Applicant contends that its own purchasers are sophisticated,13 and that
in Registrant’s stores customers typically “make in-person purchasing decisions
with the assistance and sophistication of the sales people …”14 As we have noted

10 Applicant’s brief at 9, 4 TTABVUE 10; Second Collins declaration ¶ 4, Applicant’s
response of April 11, 2006 at 8.
11 Applicant’s brief at 7-8, 4 TTABVUE 8-9.
12 Id. at 10, 4 TTABVUE 11.
13 Second Collins declaration ¶ 4, Applicant’s response of April 11, 2006 at 8 (“most of
Soundscape, Inc.’s customers are commercial enterprises, with little to no business coming
from consumer end-users.”).
14 Applicant’s brief at 10, 4 TTABVUE 11.
Serial No. 76620682

8

above, Applicant’s goods, as identified, are not limited to professional-grade
equipment, and many of Applicant’s goods are ordinary consumer items. Therefore,
customer sophistication cannot be presumed. Further, the contention that retail
store sales personnel necessarily provide sophisticated guidance to customers is not
supported by evidence.
Registrant’s service is, by its terms, a trade channel for Applicant’s goods; and
customers wishing to purchase sound equipment are also the customers who would
visit a retail store offering sound equipment. The du Pont factors of trade channels
and customers favor a finding of likelihood of confusion.
(d) Market interface of Applicant and Registrant.
Applicant contends that Registrant and Applicant have long been aware of each
other, that they have entered an oral coexistence agreement, and have coexisted for
many years without confusion. Applicant’s president stated:
Park Radio and Soundscape, Inc. have, for many years,
had an oral agreement consenting to each other’s use of
the SOUNDSCAPE mark. Soundscape, Inc.’s recently
filed application for SOUNDSCAPE (Serial No.
78/570431) is consistent with this agreement.15
A consent agreement may carry substantial weight in the Board’s analysis of
likelihood of confusion; and there is no reason why a consent may not be entered
orally. However, the terms and underlying rationale of the consent must persuade
the Board that, in fact, confusion is not likely. Where there is inadequate
information upon which to reach such a determination, the mere existence of a

15 Second Collins declaration ¶ 8, Response of April 11, 2006 at 9. (Serial No. 78/570431 is
associated with a third-party application for a mark other than SOUNDSCAPE.)
Serial No. 76620682

9

consent will not suffice. See Du Pont, 177 USPQ at 568. (“In considering
agreements, a naked ‘consent’ may carry little weight. Absent more, the consenter
may continue or expand his use. The consent may be based on ignorance or
misconception of the law.”) The Federal Circuit, interpreting Du Pont, stated:
[T]he DuPont case does not make it a “given” that
experienced businessmen, in all cases, make an
agreement countenancing each other's concurrent use of
the same or similar marks only in recognition of no
likelihood of confusion of the public. One must look at all
of the surrounding circumstances, as in DuPont, to
determine if the consent reflects the reality of no
likelihood of confusion in the marketplace …
As DuPont holds, a consent is simply evidence which
enters into the likelihood of confusion determination and
may or may not tip the scales in favor of registrability,
depending upon the entirety of the evidence …
In re Mastic Inc., 829 F.2d 1114, 4 USPQ2d 1292, 1294 (Fed. Cir. 1987); see also In
re Bay State Brewing Co., 117 USPQ2d 1958 (TTAB 2016).
In this case, Mr. Collins’ description of the asserted oral consent agreement
(quoted above) provides no information upon which we may make a determination
as to the likelihood of confusion. Applicant has not submitted any corroboration
from the other party to the agreement as to the agreement’s terms or even its
existence. We therefore give little weight to the asserted oral consent agreement.
Similarly, Applicant’s ex parte assertion that, despite long-term use of its mark, it
is not aware of any actual confusion16 is unsupported by any evidence of the manner

16 Second Collins declaration ¶ 9, Applicant’s response of April 11, 2006 at 9 (“Soundscape,
Inc. … has never heard any complaints from Park Radio. Also, I am not aware of a single
instance of actual confusion resulting from Soundscape, Inc.’s use of the SOUNDSCAPE
mark in connection with any of the goods claimed in the recently filed application.”)
Serial No. 76620682

10

and extent of use of the marks of Applicant and Registrant, and by any
corroboration from Registrant regarding the lack of confusion. Such an argument is
entitled to little probative value. See In re Majestic Distilling Co., Inc., 315 F.3d
1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003).
(e) Applicant’s prior registration.
Applicant has shown that it owns U.S. Reg. No. 2072948 for the mark
SOUNDSCAPE in typed form for “outdoor loudspeakers,” issued in 1997.17
Applicant compares the present case to In re Strategic Partners, Inc., 102 USPQ2d
1397 (TTAB 2012), arguing:
… Applicant owns a prior registration for the exact same
mark Applicant is applying for … The identification of
goods in Applicant’s [application]18 and Applicant’s
Registration are identical in relevant part, namely,
Applicant’s Registration is for “outdoor loudspeakers” in
Class 009 and Applicant’s [application] is for equipment
for sound processing, reproduction, transmission, and
storage, which is all related to the goods in the prior
registration in that the loudspeakers reproduce and
transmit the music. Applicant’s [application] represents a
logical expansion of Applicant’s existing registration, used
in the continuing development of a family of products all
bearing the SOUNDSCAPE mark. Finally, Applicant’s
Registration has co-existed on the USPTO database for a
total of twenty (20) years with Registrant’s Mark.19
The case now before us presents facts that are substantially different from those of
In re Strategic Partners. In that case, the applicant’s applied-for mark was

17 See Applicant’s response of April 11, 2007 at 13; see also Second Collins declaration ¶ 3,
id.
18 In the quoted passage, Applicant uses the expression “Applicant’s Mark” as an apparent
reference to its application. We have paraphrased this expression as “Applicant’s
[application]” to clarify the sense of the argument.
19 Applicant’s brief at 12, 4 TTABVUE 13.
Serial No. 76620682

11

substantially similar to its existing registered mark and both were for essentially
identical goods. Here, Applicant’s registered mark is identical to the mark in the
present application, but Applicant now seeks to register its mark for a range of
goods that is substantially broader than the “outdoor loudspeakers” identified in the
prior registration. Indeed, many of Applicant’s arguments that we have rejected in
the context of the present application (e.g., that the goods are for professional or
commercial use, would be sold to sophisticated purchasers or would travel through
limited trade channels) might have been valid in the context of “outdoor
loudspeakers,” but they are clearly not valid with respect to many of the goods now
at issue, such as headphones, earphones, personal stereos, and radios. In terms of
the scope of protection sought, we see little similarity between the application now
before us and Applicant’s prior registration. The attempt to analogize this case to In
re Strategic Partners is inapposite.
(f) Conclusion.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. The marks at
issue are identical and Applicant’s goods are commercially related to Registrant’s
services. Overall, we find that Applicant’s mark, as used on Applicant’s goods, so
resembles the cited registered mark as to be likely to cause confusion or to cause
mistake or to deceive.
Serial No. 76620682

12

2. Refusal on grounds of indefinite identification of goods.
In issuing a final refusal to register Applicant’s mark, the Examining Attorney
made final her requirement that Applicant’s identification of goods be made more
definite. Applicant did not address this requirement in its brief and, in its reply
brief, conceded that its failure to amend the identification of goods was inadvertent
and agreed to amend the identification of goods.20 Applicant has effectively
conceded that its current identification of goods is indefinite. See In re Harley, 119
USPQ2d 1755, 1758 (TTAB 2016) (Applicants’ failure to address refusals is a basis
for affirming the examining attorney’s refusal on all grounds); see also TBMP
§ 1203.02(g) (June 2017) (“If an applicant, in its appeal brief, does not assert an
argument made during prosecution, it may be deemed waived by the Board.”).
“It is within the discretion of the PTO to require that one’s goods be identified
with particularity.” In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541, 1544 (Fed.
Cir. 2007) (quoting In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89, 91 (CCPA
1980)). An applicant’s failure to comply with a requirement that the identification of
goods be made acceptably definite is a ground for refusing registration. Id.; see also
In re Faucher Industries Inc., 107 USPQ2d 1355 (TTAB 2013). Applicant’s offer to
amend its identification of goods now is unavailing. The Board cannot reopen the
application at this time for the purpose of entering such an amendment. 37 C.F.R.
§ 2.142(g) (“An application which has been considered and decided on appeal will
not be reopened except for the entry of a disclaimer … or upon order of the

20 Applicant’s reply brief at 5, 7 TTABVUE 6.
Serial No. 76620682

13

Director….”). Accordingly, we affirm the Examining Attorney’s refusal of
registration on the ground that the identification of goods is indefinite.
Decision: The refusal under Section 2(d) is affirmed. The refusal on the ground
of Applicant’s failure to appropriately amend the identification of goods is affirmed.