TreeFrog Developments, Inc.v.Sakar International, Inc.

Trademark Trial and Appeal Board

Sep 4, 2019

91232860 (T.T.A.B. Sep. 4, 2019)

Mailed: September 4, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

TreeFrog Developments, Inc.
v.
Sakar International, Inc.
_____

Opposition No. 91232860
_____

Heather J. Kliebenstein of Merchant & Gould P.C.
for TreeFrog Developments, Inc.

Theodore R. Remaklus of Wood, Herron & Evans, L.L.P.
for Sakar International, Inc.
_____

Before Kuhlke, Bergsman and Ritchie, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Sakar International, Inc. (Applicant) seeks registration on the Principal Register
of the mark LIFEJACKET, in standard characters, for “impact-resistant and
moisture-resistant plastic cases for insulating audio speakers,” in Class 9 (as
amended).1

1 Application Serial No. 86905410 filed February 11, 2016 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s claim of first use anywhere and in
commerce as of July 2013.
This Opinion Is Not a
Precedent of the TTAB
Opposition No. 91232860

- 2 -

TreeFrog Developments Inc. (Opposer) filed a Notice of Opposition against the
registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), on the ground that Applicant’s mark LIFEJACKET for “impact-resistant
and moisture-resistant plastic cases for insulating audio speakers” so resembles
Opposer’s previously registered marks, inter alia, LIFEJACKET, in standard
characters, for “waterproof protective cases for tablet computers,” in Class 9,2 and
LIFEPROOF, in standard characters, for “protective cases, carrying cases, casings,
and covers for portable electronic devices, namely, cell phones, portable media
players, electronic tablets, electronic book readers, and laptop computers; cases and
holsters specially adapted for holding or carrying mobile electronic devices, namely,
mobile phones, electronic tablets, electronic book readers; accessories specifically
adapted for mobile electronic devices, namely, belt clips, shoulder straps, or hand
straps sold as a unit with the bags, cases, and holsters,” in Class 9,3 and LIFEPROOF,
in standard characters, for “on-line retail store services featuring protective covers
and accessories for personal electronic devices, speakers and audio devices, in Class
35,4 as to be likely to cause confusion.

2 Registration No. 4354783 registered June 18, 2013; Sections 8 and 15 declarations accepted
and acknowledged.
3 Registration No. 4519288 registered April 22, 2014.
4 Registration No. 4360963 registered July 2, 2013; Sections 8 and 15 declarations accepted
and acknowledged.
Opposition No. 91232860

- 3 -

Opposer also alleged prior common law rights in LIFEJACKET at least as early
as 2012,5 for “protective covers and cases.”6
Finally, Opposer alleged that its LIFEJACKET and LIFEPROOF marks are
famous, that they were famous before any use by Applicant of its LIFEJACKET mark,
and that the use and registration of Applicant’s LIFEJACKET mark will dilute the
distinctiveness of its marks. Section 43(c) of the Trademark Act, 15 U.S.C. 1125(c).
However, Opposer did not argue the dilution claim in its brief and accordingly, it is
considered waived. See Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d
1424, 1426 n.3 (TTAB 2013) (claim not argued in brief is considered waived).
Applicant denied the salient allegations in Opposer’s Notice of Opposition and
asserted purported affirmative defenses which are not affirmative defenses but
amplifications of its defense as to why there is no likelihood of confusion.
On August 24, 2018, the parties filed an Acceleration Case Resolution
Stipulation.7 The parties stipulated that all the evidence introduced in the previously-
filed motion for summary judgment in this proceeding is admissible at trial subject
to objections on substantive grounds.
I. The record
The record includes the pleadings, and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of the subject application. The record also includes:
A. Opposer’s testimony and evidence

5 Notice of Opposition ¶¶5, 9 and 10 (1 TTABVUE 7-8).
6 Id. at ¶¶6 and 8 (1 TTABVUE 7-8).
7 28 TTABVUE.
Opposition No. 91232860

- 4 -

1. Copies of Opposer’s pleaded registrations attached to the Notice of
Opposition printed from the USPTO online Trademark Status and
Document Retrieval (TSDR) database showing the current status of and
title to the registrations;
2. Declaration of Jordan Vater, Opposer’s Communications Manager, with
attached exhibits;8
3. Declaration of Eric R. Chad, one of Opposer’s attorneys, with attached
exhibits,9 including but limited to,
a. Excerpts from the Jordan Vater discovery deposition (Opposer’s
30(b)(6) designee);10
b. Applicant’s responses to Opposer’s second set of interrogatories;11
c. Excerpts from the Ralph Sasson discovery deposition (Applicant’s
30(b)(6) designee);12
d. Applicant’s response to Opposer’s first set of interrogatories;13
e. Copies of third-party trademark registrations purportedly registered
for the goods of both parties;14
f. Excerpts from the USPTO TSDR database for third-party
registrations purportedly identifying both cases for mobile phones
and speakers;15
g. Excerpts from third-party websites purportedly showing the sale of
both speaker cases and mobile device cases under the same mark;16
h. Examples of third-party use of purportedly identical marks used in
connection with cases for mobile phones and speakers;17

8 32 TTABVUE 45-67. The portions of the Vater declaration designated as confidential are
posted at 29 TTABVUE.
9 32 TTABVUE 68 through 34 TTABVUE. The portions of the Chad declaration designated
confidential are posted at 29-31 TTABVUE.
10 32 TTABVUE 93-113. The portions of the Vater deposition testimony designated
confidential are posted at 29 TTABVUE 93-114.
11 32 TTABVUE 1043-1047.
12 32 TTABVUE 1071-1094. The portions of the Sasson deposition testimony designated
confidential is posted at 30 TTABVUE 3-26.
13 32 TTABVUE 1107-1118.
14 33 TTABVUE 52-77.
15 33 TTABVUE 79-344.
16 33 TTABVUE 406-444.
17 33 TTABVUE 446-556.
Opposition No. 91232860

- 5 -

i. Copies of dictionary definitions for the term “Lifejacket”;18
j. Opposer’s responses to Applicant’s first set of interrogatories;19

4. Rebuttal declaration of Jordan Vater, with attached exhibits;20 and
5. Rebuttal declaration of Eric R. Chad, with attached exhibits.21
B. Applicant’s testimony and evidence
Applicant introduced the declaration of its attorney Theodore R. Remaklus
through which Applicant introduced, inter alia, the following testimony and
evidence:22
1. Excerpts from the discovery deposition of Ralph Sasson, Applicant’s
Chief Operating Officer and Rule 30(b)(6) witness;23
2. Applicant’s responses to Opposer’s first set of interrogatories;24
3. Applicant’s responses to Opposer’s second set of interrogatories;25
4. Excerpts from the discovery deposition of Jordan Vater;26 and
5. Dictionary definition of the terms “life preserver” and “life jacket.”27

18 33 TTABVUE 561-564.
19 34 TTABVUE 50-64. The portions of Opposer’s responses to Applicant’s interrogatories
designated confidential are posted at 31 TTABVUE 280.
20 39 TTABVUE 28-35.
21 39 TTABVUE 36-406.
22 37 TTABVUE 33-35.
23 37 TTABVUE 37-67. The portions of the Sasson discovery deposition transcript designed
confidential are posted at 36 TTABVUE 37-67.
24 37 TTABVUE 69-80.
25 37 TTABVUE 82-86.
26 37 TTABVUE 154-162. Portions of the Vater deposition transcript designated confidential
are posted at 36 TTABVUE 157-165.
27 37 TTABVUE 208-211.
Opposition No. 91232860

- 6 -

C. Applicant’s objections
Applicant, in its brief, lodged objections to Exhibits 9-14 and 16 in the declaration
of Eric Chad.28 Also, Applicant filed a motion to strike Opposer’s rebuttal testimony
declarations of Eric Chad and Jordan Vater.29 There is no need to address the
objections because the subject testimony and associated evidence are not relevant to
our likelihood of confusion analysis.
II. Standing
Standing is a threshold issue in every inter partes case. See Empresa Cubana Del
Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014);
John W. Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB 2010). To
establish standing in an opposition or cancellation proceeding, a plaintiff must prove
that it has a “real interest” in the proceeding and a “reasonable” basis for its belief of
damage. See Empresa Cubana, 111 USPQ2d at 1062; Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185, 189 (TTAB 1982).
Opposer has established its standing by properly introducing into evidence its
pleaded registrations. See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1844 (Fed. Cir. 2000) (plaintiff’s two prior registrations suffice to
establish plaintiff’s direct commercial interest and its standing); N.Y. Yankees P’ship

28 Applicant’s Brief, p. 2 (37 TTABVUE 6).
29 40 TTABVUE.
Opposition No. 91232860

- 7 -

v. IET Prods. & Servs., Inc., 114 USPQ2d 1497, 1501 (TTAB 2015). Applicant, in its
brief, did not challenge Opposer’s standing.
III. Priority
Because Opposer’s pleaded registrations are of record, priority in the opposition
proceeding is not at issue with respect to the marks and good identified therein. Mini
Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1469 (TTAB 2016) (citing
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110
(CCPA 1974)).
Further, Jordan Vater, Opposer’s Communications Manager, testified that “[t]he
LIFEJACKET mark has been continuously used in commerce by Opposer and/or
DriPadz [Opposer’s predecessor-in-interest] on tablet and phone cases since March
31, 2012.”30 As corroborating evidence, Opposer introduced a copy of a news article
dated November 1, 2012 posted on the Cult of Mac website (cultofmac.com) entitled
“6 iPad Gadgets to Help You (And Your iPad) Get Through The Next Disaster.”31 The
relevant portion of the article is reproduced below:

30 Vater Decl. ¶3 (32 TTABVUE 45); see also Vater Discovery Dep., p. 57 (32 TTABVUE 108)
(“My knowledge is that [Opposer] was using [LIFEJACKET] in commerce, I mean nationwide
since 2012.”).
31 Chad Decl. ¶3 and Exhibit 2 (32 TTABVUE 68, 79-91).
Opposition No. 91232860

- 8 -

1. LifeProof’s Nüüd iPad case ($130) works like a magic
trick; rather than enclosing the entire iPad in a watertight
container, the Nüüd seals the iPads [sic] various holes with
gaskets, and clads the edges in a robust frame – but leaves
the screen bare (hence the name). The result is an iPad
that’s shock-resistant, dustproof, and waterproof to two
meters for about 30 minutes – but with a bare screen that
remains easy to work with. Get the $60 LifeJacket add-on
if things might get really sideways while you’re using it.32
Applicant selected and adopted its LIFEJACKET mark in March 2013,33 and
“began selling products under the mark in April of 2014.”34 Accordingly, Applicant
“does not dispute that, with respect to protective cases for cell phones, smart phones
and tablet computers, [Opposer] has priority with respect to its LIFEJACKET and
LIFEPROOF marks.”35 We find, therefore, that Opposer has established priority
based on its registered marks, and has also proven its common law priority for the

32 Id. at 32 TTABVUE 82-83
33 Applicant’s response to Opposer’s Interrogatory No. 14 (37 TTABVUE 83).
34 Applicant’s Brief, p. 20 (37 TTABVUE 24) (citing Remaklus Decl. Exhibit 4 (36 TTABVUE
88) (designated confidential)).
35 Applicant’s Brief, p. 12 (37 TTABVUE 16).
Opposition No. 91232860

- 9 -

mark LIFEJACKET used to identify protective cases for tablet computers and
smartphones.
IV. Likelihood of confusion
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 likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973) (“DuPont”) cited in B&B Hardware, Inc. v. Hargis Indus., Inc.,
135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each
DuPont factor that is relevant or for which there is evidence of record. See M2
Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir.
2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB
2015) (“While we have considered each factor for which we have evidence, we focus
our analysis on those factors we find to be relevant.”). “[E]ach case must be decided
on its own facts and the differences are often subtle ones.” Indus. Nucleonics Corp. v.
Hinde, 475 F.2d 1197, 177 USPQ 386, 387 (CCPA 1973) (internal citations removed).
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods or services. See In re
Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
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.”); see also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747
Opposition No. 91232860

- 10 -

(Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for
which there is record evidence but ‘may focus … on dispositive factors, such as
similarity of the marks and relatedness of the goods’”) (quoting Herbko Int’l, Inc. v.
Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
For the sake of economy, we focus our analysis to the issue of likelihood of
confusion between Applicant’s mark and the mark in Registration No. 4354783 for
the mark LIFEJACKET in standard characters, and the common law rights that
Opposer has established in that mark. Opposer’s LIFEJACKET mark is the most
similar to Applicant’s mark and is registered for goods that are most similar to
Applicant’s goods. If the refusal cannot be affirmed on the basis of this registered
mark, it could not be affirmed on the basis of Opposer’s other marks. See In re Max
Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
A. The strength of Opposer’s LIFEJACKET mark, including the number of
similar marks in use on similar goods.

In determining the strength of a mark, we consider both its inherent strength
based on the nature of the mark itself and its commercial strength, based on the
marketplace recognition value of the mark. See In re Chippendales USA, Inc., 622
F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured
both by its conceptual strength (distinctiveness) and its marketplace strength
(secondary meaning).”); Top Tobacco, L.P. v. N. Atl. Operating Co., Inc., 101 USPQ2d
1163, 1171-72 (TTAB 2011) (the strength of a mark is determined by assessing its
inherent strength and its commercial strength); Tea Bd. of India v. Republic of Tea
Inc., 80 USPQ2d 1881, 1899 (TTAB 2006); MCCARTHY ON TRADEMARKS AND UNFAIR
Opposition No. 91232860

- 11 -

COMPETITION § 11:83 (5th ed. 2019) (“The first enquiry focuses on the inherent
potential of the term at the time of its first use. The second evaluates the actual
customer recognition value of the mark at the time registration is sought or at the
time the mark is asserted in litigation to prevent another’s use.”). Market strength is
the extent to which the relevant public recognizes a mark as denoting a single source.
Tea Bd. of India v. Republic of Tea Inc., 80 USPQ2d at 1899. In other words, it is
similar to acquired distinctiveness. For purposes of analysis of likelihood of confusion,
a mark’s renown may “var[y] along a spectrum from very strong to very weak.” Joseph
Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733,
1734 (Fed. Cir. 2017) (internal quotations omitted). The proper standard is the mark’s
“renown within a specific product market,” id., and “is determined from the viewpoint
of consumers of like products,” id. at 1735, and not from the viewpoint of the general
public.
1. Inherent or conceptual strength.
To determine the conceptual strength of Opposer’s LIFEJACKET mark, we
evaluate its intrinsic nature, that is, where it lies along the generic-descriptive-
suggestive-arbitrary-fanciful continuum of words. Word marks that are arbitrary,
fanciful, or suggestive are “held to be inherently distinctive.” Wal-Mart Stores, Inc. v.
Samara Bros., Inc., 529 U.S. 205, 54 USPQ2d 1065, 1068 (2000). See also,
Chippendales, 96 USPQ2d at 1684 (“In general, trademarks are assessed according
to a scale formulated by Judge Friendly in Abercrombie & Fitch Co. v. Hunting World,
Inc., 537 F.2d 4, 189 USPQ 759 (2d Cir. 1976), which evaluates whether word marks
Opposition No. 91232860

- 12 -

are ‘arbitrary’ or ‘fanciful,’ ‘suggestive,’ ‘descriptive,’ or ‘generic.’”). We also look to
evidence pertaining to the number and nature of similar marks in use on similar
goods or services.
The term “life jacket” is defined as “a sleeveless jacket of buoyant or inflatable
construction, for supporting the wearer in deep water and preventing drowning.”36
Thus, Opposer’s LIFEJACKET mark is suggestive because it suggests that Opposer’s
“waterproof protective cases for tablet computers” and protective cases for cell phones
will protect the tablet computers and cell phones from water damage.
There is no evidence regarding any third-party use or registration of LIFE
JACKET.
2. Commercial strength.
The evidence regarding Opposer’s sales of LIFEJACKET protective covers is
designated confidential and, therefore, we refer to it only in general terms.37 The
sales figures presented are with regard to sales from Opposer to retailers. There is no
testimony or evidence regarding sales to the ultimate consumer. The sales in terms
of units and dollars are modest on their face albeit without any context. Opposer did
not present advertising figures for LIFEJACKET protective covers.38

36 Dictionary.com based on THE RANDOM HOUSE UNABRIDGED DICTIONARY (2019) accessed
August 29.2019; see also THE AMERICAN HERITAGE COLLEGE DICTIONARY (3rd ed. 1997) (37
TTABVUE 210) (“a life preserver in the form of a vest.”). The Board may take judicial notice
of dictionary definitions, including online dictionaries that exist in printed format. In re
Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d
1632 (Fed. Cir. 2016).
37 29 TTABVUE 77.
38 Vater Decl. ¶6 (29 TTABVUE 45).
Opposition No. 91232860

- 13 -

We find that Opposer’s LIFEJACKET mark is not a commercially strong mark.
Considering the record as a whole, including the evidence to inherent strength,
commercial strength and the number and nature of third-party marks in use in
connection with similar goods and services, we find that Opposer’s LIFEJACKET
mark is appropriately placed in the middle of the spectrum of “very strong to very
weak.” Phelps Vineyards, 122 USPQ2d at 1734.
B. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression.

The marks are identical in sight, sound, connotation, and commercial impression.
Applicant, in its brief, “admits that its LIFEJACKET mark is essentially the same as
[Opposer’s] LIFEJACKET mark.”39
C. The similarity or dissimilarity and nature of the goods.

Applicant is seeking to register LIFEJACKET for “impact-resistant and moisture-
resistant plastic cases for insulating audio speakers” and Opposer has registered
LIFEJACKET for “waterproof protective cases for tablet computers” and, as noted
above, Opposer also has common law rights in LIFEJACKET for protective cases for
mobile phones.
To show that the products are related, Opposer introduced numerous third-party
use-based registrations for marks registered for both types of products or similar
products. Third-party registrations based on use in commerce that individually cover
a number of different goods may have probative value to the extent that they serve

39 Applicant’s Brief, p. 19 (37 TTABVUE 23).
Opposition No. 91232860

- 14 -

to suggest that the listed goods are of a type that may emanate from the same source.
In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786 (TTAB 1993); In re
Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d mem.
864 F.2d 149 (Fed. Cir. 1988). The registrations, with relevant portions of the
identifications, are listed below.40
Mark Reg. No. Goods
7IPER 5264529 Cell phone cases and covers; protective carrying
cases for audio equipment in the nature of
speakers, headphones, and audio mixers;
protective cases for smartphones and tablet
computers
BMBEAR 5484148 Protective cases for audio equipment in the nature
of speakers, headphones, audio mixers; protective
covers and cases for cell phones, laptops and
portable media players
FLZOAVEUS 5545049 Carrying cases specially adapted for electronic
equipment, namely, computers, cell phones;
protective cases for audio equipment in the nature
of speakers, headphones, audio mixers
FUNTURBO 5555379 Cases for mobile phones; protective cases for audio
equipment in the nature of speakers; protective
cases for smartphones
GOESCARE 5280379 Protective cases for audio equipment in the nature
of speakers; protective cases for smartphones;
protective covers for tablet computers
L00KLY 5240975 Protective cases for audio equipment in the nature
of speakers, headphones, and audio mixers;
protective covers for smartphones, cellphones and
laptops
LUCKY NV 5237170 Speaker enclosures; carrying cases, holders,
protective cases and stands featuring, inter alia,
speakers; protective cases for speakers; protective
covers for smartphones and tablet computers
MASIKEN 5275158 Protective cases for speakers; cases for
smartphones and tablet computers

40 33 TTABVUE 52-77, 108, 112, 117, 122, 135, 141, 149, 162, 170, 173, 178, 185, 216, 235,
282.
Opposition No. 91232860

- 15 -

Mark Reg. No. Goods
MOBCARE 5286447 Protective cases for speakers, smartphones,
cellphones, laptops, and tablet computers
OMNINOVA 5016778 Cases for speakers; protective covers for tablet
computers
VECTRON 5177561 Cases for, inter alia, speakers; protective covers
for cellphones, laptops, smartphones, tablet
computers, and portable media players; protective
covers for portable music players
DYSE ONE 4153897 Audio speaker enclosures; carrying cases for cell
phones; cases for mobile phones
MIMEOCASE 4315740 Carrying cases for cell phones, mobile phones;
cases for music, audio and related electronic
equipment, inter alia, audio speakers
iHANGY 4229709 Protective covers and cases for portable media
players; cases for cell phones, mobile phones, and
mobile computers
MEGAGEAR 4291535 Cases for, inter alia, audio speakers in the nature
of music studio monitors; cases for cell phone,
mobile phones, audio speakers; protective covers
for cell phones, laptops and portable media players
GADGETS BOX 4348054 Cases for music, audio and related electronic
equipment, inter alia, cases for audio speakers;
carrying cases for cell phones
DA VINCI
CASE
4316451 Cases for music, audio and related electronic
equipment, inter alia, cases for audio speakers;
carrying cases for cell phones; protective covers for
cell phones, mobile phones, laptops, tablet
computers and music and media playing devices
CASE IT 4490276 Cases for music, audio and related electronic
equipment, inter alia, cases for audio speakers;
protective covers and carrying cases for cell
phones, laptops, tablet computers and portable
media players
AQUATALK 4482348 Cases for music, audio and related electronic
equipment, inter alia, cases for audio speakers;
cases for cell phones and mobile phones; protective
covers and carrying cases for cell phones, laptops,
tablet computers and portable media players
CASE123 4509095 Cases for music, audio and related electronic
equipment, inter alia, cases for audio speakers;
protective covers and carrying cases for cell
phones, laptops, tablet computers and portable
media players
Opposition No. 91232860

- 16 -

Mark Reg. No. Goods
MAD 4458912 Protective covers and carrying cases for cell
phones, laptops, tablet computers and portable
media players
ELEGANI 4635608 Cases for music, audio and related electronic
equipment, inter alia, cases for audio speakers;
Protective covers and carrying cases for cell
phones, laptops, tablet computers and portable
media players
HERSCHEL 4571536 Cases for music, audio and related electronic
equipment, inter alia, cases for audio speakers;
Protective covers and carrying cases for cell
phones, laptops, tablet computers and portable
media players
NAXA Audio speaker enclosures; cases for cell phones
and mobile phones; loudspeaker cabinets;
KENU 4911893 Cases for music, audio and related electronic
equipment, inter alia, cases for audio speakers;
cell phone cases; smartphone cases; tablet cases
ESSENTIAL 5014095 Protective covers and carrying cases for cell
phones, laptops, tablet computers and portable
media players

In addition, Opposer introduced evidence of third-party use of similar marks in
connection with covers or cases for speakers and tablet computers or cell phones.
Opposer made the third-party uses listed below of record:
• Anker tablet cases and Anker speaker carrying cases;41
• Fintie speaker cases and Fintie iPad cases;42
• Hermitshell speaker cases and Hermitshell iPhone and tablet computer cases;43
• EVA travel cases for speakers and EVA travel cases for tablet computers;44

41 33 TTABVUE 408 and 411.
42 33 TTABVUE 418 and 436.
43 33 TTABVUE 421 and 424.
44 33 TTABVUE 412, 425 and 426.
Opposition No. 91232860

- 17 -

• iHome protective carrying cases for speakers and iHome protective cases for
iPads and iPhones;45 and
• LTGEM cases for speakers and LTGEM cases for tablet computers.46
Opposer also introduced evidence showing that Applicant’s “impact-resistant and
moisture-resistant plastic cases for insulating audio speakers” and Opposer’s
protective covers and cases serve the same purpose. For example, Applicant
advertises that its LIFEJACKET products are waterproof, sand proof, shockproof,
and everything proof.47 Ralph Sasson testified that Applicant “sells its speakers as
the speaker that’s great for indoor and outdoor use, every use, everything-proof use,”
“rugged and normal activities.”48 Likewise, Jordan Vater testified that Opposer’s
“products have always been marketed around multiple proofs of protection.”49 In this
regard, Opposer’s “sell sheet” advertises that the “LifeJacket FOR LIFEPROOF
iPHONE 6 CASE” “keeps your iPhone 6 buoyant and afloat,” “delivers maximum
buoyancy and an extra level of extreme drop protection,” “scratch protection,” and
“enhanced grip for all conditions.”50

45 33 TTABVUE 440 and 443.
46 33 TTABVUE 432 and 433.
47 Chad Decl. Exhibits 23, 24, and 25 (32 TTABVUE 1049-1069).
48 Sasson Discovery Dep., p. 104 (32 TTABVUE 1090).
49 Vater Discovery Dep., p. 27 (29 TTABVUE 99). Opposer improperly designated this
testimony confidential. Opposer’s marketing is not confidential. It is not properly designated
confidential because marketing is an activity whose results are presented to the public.
Pursuant to Trademark Rule 2.116(g), 37 C.F.R. § 2.166(g), “[t]he Board may treat as not
confidential that material which cannot reasonably be considered confidential,
notwithstanding a designation as such by a party.”
50 Chad Decl. ¶5 and Exhibit 4 (32 TTABVUE 68 and 115),.
Opposition No. 91232860

- 18 -

Under certain circumstances, Applicant’s speakers protected by Applicant’s
LIFEJACKET “impact-resistant and moisture-resistant plastic cases for insulating
audio speakers” may be used in connection with a tablet computer or smart phone
covered with Opposer’s protective covers or cases. For example, Applicant’s
instruction manual shows how to connect a speaker with the LIFEJACKET “impact-
resistant and moisture-resistant plastic case” to a mobile device such as an iPhone or
tablet computer.51 The iPhone or tablet computer may have Opposer’s protective
covers. Applicant’s Instagram social media pages show a phone, in a case, next to a
speaker, also in a case:52

In response, Applicant argues that Opposer’s protective coverings for a cell phone
or tablet computer are “very different product[s] from one that is targeted to

51 Chad Decl. Exhibit 34 (33 TABVUE 3).
52 Chad Decl. Exhibits 35 and 36 (33 TTABVUE 5-7).
Opposition No. 91232860

- 19 -

consumers that are seeking a speaker that includes a replaceable protective case.”53
The problem with this argument is that Applicant’s description of goods is not for a
speaker that includes a replaceable protective case; it is for “impact-resistant and
moisture-resistant plastic cases for insulating audio speakers.” We must consider the
goods as they are described in the application and registration (and, in this case, as
established by common law use).
The authority is legion that the question of registrability of
an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the
sales of goods are directed.
Octocom Sys, Inc. v. Houston Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990); see also Stone Lion Capital Partners, LP v. Lion Capital LLP,
746 F.3d 1317, 1321, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); See also Paula Payne
Prods. v. Johnson Publ’g Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973)
(“Trademark cases involving the issue of likelihood of confusion must be decided on
the basis of the respective descriptions of goods”).
Applicant also contends that Opposer’s products are not merely protective covers
or cases for tablet computers or cell phones; rather, Opposer’s product is “a case
designed solely for use in placing over another existing LIFEPROOF branded case to
make the product float, the LIFEJACKET name would certainly not be one that a

53 Applicant’s Brief, p. 19 (37 TTABVUE 23).
Opposition No. 91232860

- 20 -

consumer would expect to be used with a speaker.”54 With respect to Opposer’s
pleaded LIFEJACKET registration for “waterproof protective cases for tablet
computers,” as noted above, we are bound by the description of goods. With respect
to Opposer’s common law use of LIFEJACKET in connection with covers and cases
for cell phones, we take into consideration that the product is an accessory cover for
providing additional protection.
Applicant argues that the third-party registrations introduced by Opposer (and
presumably the third-party use evidence) are not probative because 13 of the
registrations were filed on or after Applicant began using its LIFEJACKET mark.55
For purposes of likelihood of confusion, the Board generally accepts and considers
evidence related to likelihood of confusion for the period up to the time of trial. Inter
IKEA Sys. B.V. v. Akea, LLC, 110USPQ2d 1734, 1740 n.18 (TTAB 2014); Hornby v.
TJX Cos., Inc., 87 USPQ2d 1411, 1416 (TTAB 2008) (“[W]ith respect to petitioner’s
likelihood of confusion claim, our determination is based on the factual situation as
of the time of trial, not at the time the registration issued.”). This is distinct from the
issue of “natural expansion of goods” doctrine which takes place when the prior user
attempts to expand and threatens to disturb the junior user’s established goodwill.
See Key Chems., Inc. v. Keylite Chems. Corp., 464 F.2d 140, 175 USPQ 99, 101 (CCPA
1972) (“[A] trademark owner cannot by normal expansion of its business extend the
use of its trademark to goods not covered by its previous registration, where the

54 Applicant’s Brief, p. 20 (37 TTABVUE 24).
55 Applicant’s Brief, p. 20 (37 TTABVUE 24).
Opposition No. 91232860

- 21 -

result would be a likelihood of confusion caused by similarity of that mark to a mark
already registered by a prior user for the same or similar goods.”); Mason Eng’g &
Design Corp. v. Mateson Chem. Corp., 225 USPQ 956, 962 (TTAB 1985) (“[T]he prior
user of a mark on particular goods or services cannot extend its use of the mark to
distinctly different goods or services if the result could be a conflict with valuable
intervening rights established by another through extensive use and/or registration
of the same or similar mark for the same or closely related goods or services in the
new sphere of trade.”).56
We find that Applicant’s “impact-resistant and moisture-resistant plastic cases for
insulating audio speakers” are related to Opposer’s “waterproof protective cases for
tablet computers” and protective covers and cases for tablet computers and cell
phones.
D. Established, likely-to-continue channels of trade and classes of consumers.
Opposer’s LIFEJACKET cases are sold to consumers seeking protective
accessories for their phones through Opposer’s website and third-party retailers such
as Target, Best Buy, Walmart, and Amazon.57 They are also sold by service providers

56 In addition to relying on a case involving the plaintiff’s natural expansion of its goods and
services which is not at issue in this proceeding, the case Applicant relied on is non-
precedential. While a party may cite a non-precedential decision, it is not binding on the
Board and it is not encouraged. See In re Society of Health and Physical Educators, 127
USPQ2d 1584, 1587 n.7 (TTAB 2018) (“Board decisions which are not designated as
precedent are not binding on the Board, but may be cited and considered for whatever
persuasive value they may hold.”); In re Morrison & Foerster LLP, 110 USPQ2d 1423, 1427,
n.6 (TTAB 2014) (“Although parties may cite to non-precedential decisions, the Board does
not encourage the practice.”); In re the Procter & Gamble Co., 105 USPQ2d 1119, 1120-21
(TTAB 2012) (citation to non-precedential opinions permitted but not encouraged; non-
precedential decisions not binding on the Board).
57 Vater Decl. ¶4 (32 TTABVUE 46).
Opposition No. 91232860

- 22 -

such as AT&T, Verizon, T-Mobile, and Sprint.58 Opposer markets the LIFEJACKET
products as “rugged, protective products that will protect mobile devices during any
activity.”59 In this regard, Opposer’s “sell sheet” advertises that the “LifeJacket FOR
LIFEPROOF iPHONE 6 CASE” “keeps your iPhone 6 buoyant and afloat,” “delivers
maximum buoyancy and an extra level of extreme drop protection,” “scratch
protection,” and “enhanced grip for all conditions.”60 As discussed above, the news
article dated November 1, 2012 posted on the Cult of Mac website (cultofmac.com)
entitled “6 iPad Gadgets to Help You (And Your iPad) Get Through The Next
Disaster,” the author recommends that “the $60 LifeJacket add-on if things might get
really sideways” for extra shock-resistant, dustproof, and waterproof protection.61
Applicant also advertises that its LIFEJACKET products are waterproof, sand
proof, shockproof, and everything proof.62 Ralph Sasson testified that Applicant “sells
its speakers as the speaker that’s great for indoor and outdoor use, every use,
everything-proof use,” “rugged and normal activities.”63 Further, Applicant also sells
its LIFEJACKET products through its website and through third-party retailers,

58 Vater Discovery Dep., p. 90 (32 TTABVUE 112); Opposer’s response to Applicant’s
Interrogatory No. 1 (34 TTABVUE 53).
59 Vater Decl. ¶7 (32 TTABVUE 46); see also Vater Discovery Dep., p. 14 (32 TTABVUE 94)
(“Some of the features are additional protection for the device that it’s on. It can help a device
float.”) and p. 27 (29 TTABVUE 99) (Opposer’s “products have always been marketed around
multiple proofs of protection.”).
60 Chad Decl. ¶5 and Exhibit 4 (32 TTABVUE 68 and 115).
61 Chad Decl. ¶3 and Exhibit 2 (32 TTABVUE 68, 79-91); see also Chad Decl. Exhibit 7 (32
TTABVUE 124-125) (smartertravel.com review: the combination LIFEJACKET float and
LIFEPROOF case is water-, dirt-, snow-, and shock-proof).
62 Chad Decl. Exhibits 23, 24, and 25 (32 TTABVUE 1049-1069).
63 Sasson Discovery Dep., p. 104 (32 TTABVUE 1090).
Opposition No. 91232860

- 23 -

including Walmart, Target, Best Buy and Dick’s Sporting Goods.64 Applicant’s
LIFEJACKET products are sold at Target and Walmart in the electronics department
which also features phones and accessories for cell phones and tablet computers.65
Further, in an advertising circular, MEIJER advertises Applicant’s LIFEJACKET
products near Opposer’s LIFEPROOF protective covers as reproduced below:66

Applicant argues that the products of the parties are sold to different consumers.
Whereas [Applicant’s] LIFEJACKET branded products are
part of a line of products sold under the ALTEC LANSING
brand and targeted to audiophiles knowledgeable of the
ALTEC LANSING brand, Opposer’s LIFEJACKET
branded products are targeted to consumers seeking
protective cases for mobile phones and tablet computers,
and then only those that have already purchased a
[Opposer’s] LIFEPROOF branded case as the

64 Applicant’s response to Opposer’s Interrogatory No. 5 (32 TTABVUE 1111).
65 Sasson Discovery Dep., pp. 68-71 (32 TTABVUE 1078-1081); see also Applicant’s response
to Opposer’s interrogatory No. 6 (32 (TTABVUE 1111-12) (Applicant LIFEJACKET products
are sold through Applicant’s website and “through the audio departments in retailers,
including Walmart, Target, Best Buy and Dick’s Sporting Goods.”). The mere fact that major
retailers such as Walmart, Target and Amazon sell the products of both parties is not very
probative because such companies sell a wide variety of products. However, the fact that
Target and Walmart sell the products of both parties in the electronics section of their stores,
is probative that the products may be offered in the same channels of trade.
66 32 TTABVUE 1139.
Opposition No. 91232860

- 24 -

LIFEJACKET branded product only fits over such a case.
(Internal citations omitted).67
As pointed out in the previous section, we must consider the goods as they are
described in the application and Opposer’s pleaded registration regardless of what
the record may reveal. However, with respect to Opposer’s common law rights, we
note the exact nature of the LIFEJACKET product as an accessory cover for extra
protection.
In view of the facts that both products are for water proof protective cases and are
advertised as such, and that they are offered for sale in the same sections of at least
two of the big box retailers, we find that Applicant’s “impact-resistant and moisture-
resistant plastic cases for insulating audio speakers” and Opposer’s “waterproof
protective cases for tablet computers” are offered in some of the same channels of
trade to the same classes of consumers.
E. The conditions under which sales are made.
“Opposer’s LIFEJACKET phone cases retail for approximately $40.”68 However,
Applicant introduced Opposer’s Combined Declaration of Use and Incontestability for
Opposer’s LIFEJACKET registration, dated June 18, 2018, including the specimen of
use consisting of a “website where goods are available for purchase” offering the
LIFEJACKET case for $7.99.69 On the other hand, Applicant’s LIFEJACKET

67 Applicant’s Brief, p. 22 (37 TTABVUE 26).
68 Vater Decl. ¶4 (32 TTABVUE 46).
69 37 TTABVUE 213-218
Opposition No. 91232860

- 25 -

products sell for $69 to $299.70 However, Applicant’s LIFEJACKET “impact-resistant
and moisture-resistant plastic cases for insulating audio speakers” is not a stand-
alone product.
Applicant’s LIFEJACKET product is a removable case that goes around the
speaker and it only is sold with the speaker and is not sold separately.71
Q. So the cases - - the cases go around the speaker that
you put the cases on - - we ship it together, but the
cases actually go onto the speaker. They’re
removable from the speaker, silicone cases.
Q. And so can customers remove those cases?
A. Yes.
Q. Do customers remove those cases?
A. I don’t know.
Q. Are the cases ever sold by themselves?
A. I don’t know. We could - - I honestly don’t know. I
don’t know if I would call it a sale, but - - but cases
can be - - can be - - we don’t sell them to stores by
themselves, no, if that’s your question.72
There is no testimony or evidence regarding the role that the protective covering plays
in the purchasing decision of the speaker. Also, there is no testimony or evidence
regarding the degree consumer purchasing care that goes into the selection of
Applicant’s LIFEJACKET “impact-resistant and moisture-resistant plastic cases for

70 Applicant’s Response to Opposer’s Interrogatory No. 4 (37 TTABVUE 72).
71 Applicant’s Brief, p. 3 (37 TTABVUE 7).
72 Sasson Discovery Dep., p. 24 (32 TTABVUE 1074); see also Sasson Discovery Dep., p. 7 (37
TTABVUE 39) (“We make cases for speakers that we sell with the speakers.”).
Opposition No. 91232860

- 26 -

insulating audio speakers” because it is not sold separately, but as an integral part
of Applicant’s LIFEJACKET speakers.
Nevertheless, because Opposer’s LIFEJACKET protective cases are relatively
inexpensive, consumers would not exercise a high degree of care when making their
purchasing decision. In this regard, Jordan Vater testified as follows:
Q. Do you know what the basis for the company’s belief
that exercise of consumer care is minimal?
A. Well, LifeProof products73 are generally not that
highly priced to the point that someone would have
to spend a ton of time worrying about the purchase
that they were making. Yeah, the price point’s
reasonable, so it’s nothing that is going to take up a
lot of the consumer’s time.
Q. Is it based solely on the price point?
A. I believe price point is certainly a factor in that.
Q. Are there any other factors you can think of?
A. It’s not a - - an area where consumers typically spend
a lot of time thinking about or researching, so it’s a -
- still a lower level of emotion, I guess, involved in
the purchase?74
Because consumers and potential consumers for Opposer’s LIFEJACKET
products will not exercise a high degree of consumer care when making their
purchasing decision, when they encounter Applicant’s LIFEJACKET products, they
may mistakenly believe that Applicant’s LIFEJACKET “impact-resistant and
moisture-resistant plastic cases for insulating audio speakers” emanate from the

73 LIFEJACKET is a LIFEPROOF sub-brand.
74 Vater Discovery Dep., p 32 (32 TTABVUE 102).
Opposition No. 91232860

- 27 -

same source due to the identity of the marks. Our precedent requires that we base
our decision “on the least sophisticated potential purchasers” of the identified goods.
Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1163 (Fed. Cir. 2014) (citation omitted). The evidence of record is not sufficient
to establish that the goods at issue are sold to discriminating customers. Therefore,
the conditions under which sales are made weigh in favor of finding likelihood of
confusion.
F. Actual instances of confusion
Opposer contends that there has been at least one instance of actual confusion: a
review on the Best Buy website (bestbuy.com).75 “The record reveals that there has
been at least one instance of actual confusion in which a purchaser who reviewed one
of Applicant’s LIFEJACKET-branded speakers believed the speaker originated from
Opposer.” The consumer reviewed Applicant’s “Mini Life Jacket 3 Portable Wireless
and Bluetooth Speaker.”76
great lifeproof bluetooth speaker
February 19, 2017
This is a great lifeproof bluetooth speaker. easy to use.
sound is good. not able to adjust sound levels but great for
basic use.

75 32 TTABVUE 1149.
76 As noted above, we focus our analysis on a comparison of Opposer’s LIFEJACKET mark,
as registered and as established by common law rights, and not on Opposer’s other pleaded
marks. Nevertheless, we consider this purported instance of actual confusion for whatever
probative value it may have.
Opposition No. 91232860

- 28 -

Because Applicant advertises that its LIFEJACKET products are waterproof, sand
proof, shockproof, and everything proof,77 the reviewer’s use of “lifeproof” may refer
to the fact that the speaker can take everything that life throws at it. Without the
testimony of the reviewer to explain why he or she used the term “lifeproof,” we
cannot conclusively find that the preceding review is an actual instance of confusion.
Assuming arguendo that the review is an instance of actual confusion, it is one of
1017 reviews. In other words, that one review represents .1% of the reviews. “As a
general proposition, a showing of actual confusion among significant numbers of
consumers provides strong support for likelihood of confusion.” Nautilus Grp., Inc. v.
Icon Health & Fitness, Inc., 373 F.3d 1330, 71 USPQ2d 1173, 1179 (Fed. Cir. 2004)
(applying Ninth Circuit law to find that a relatively small number of instances of
actual confusion from four calls to plaintiff’s call center is too unreliable to establish
actual confusion). The one review is not significant in either quality or quantity.
Accordingly, Applicant argues that the parties have been simultaneously selling
their products for over 4½ years without any reported instances of actual confusion.78
The absence of any reported instances of confusion is meaningful only if the record
indicates appreciable and continuous use by Applicant of its mark for a significant
period of time in the same markets as those served by Opposer under its mark.
Citigroup Inc. v. Capital City Bank Grp., Inc., 94 USPQ2d 1645, 1660 (TTAB 2010),
aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Gillette Canada Inc. v. Ranir

77 Chad Decl. Exhibits 23, 24, and 25 (32 TTABVUE 1049-1069).
78 Applicant’s Brief, p. 11 and 13-15 (37 TTABVUE 15 and 17-19).
Opposition No. 91232860

- 29 -

Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). In other words, for the absence of actual
confusion to be probative, there must have been a reasonable opportunity for
confusion to have occurred. Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283,
1287 (TTAB 2007) (the probative value of the absence of actual confusion depends
upon there being a significant opportunity for actual confusion to have occurred); Red
Carpet Corp. v. Johnstown American Enterprises Inc., 7 USPQ2d 1404, 1406-1407
(TTAB 1988); Central Soya Co., Inc. v. North American Plant Breeders, 212 USPQ 37,
48 (TTAB 1981) (“the absence of actual confusion over a reasonable period of time
might well suggest that the likelihood of confusion is only a remote possibility with
little probability of occurring”).
The facts that the products as identified in Applicant’s description of goods and
Opposer’s description of goods are related and offered in the same channels of trade
to the same classes of consumers shows that that lack of any reported instances of
actual confusion is probative. On the other hand, the fact that Opposer’s products are
inexpensive and consumers and potential consumers do not exercise a high degree of
purchasing care, it is unlikely that consumers and potential consumers will report
any instances of confusion. Moreover, the record shows that Applicant does not sell
the “impact-resistant and moisture-resistant plastic cases for insulating audio
speakers” as a stand-alone product. As explained above Applicant’s LIFEJACKET
product is a removable case that goes around the speaker and it only is sold with the
speaker and is not sold separately.79 Thus, in the marketplace where we are

79 Applicant’s Brief, p. 3 (37 TTABVUE 7).
Opposition No. 91232860

- 30 -

analyzing whether there has been a reasonable opportunity for confusion to have
occurred, Applicant is not selling a protective case for its speaker; Applicant is selling
a speaker which features a protective case. Under these circumstances, we find that
the lack of any reported instances of actual confusion is a neutral DuPont factor.
G. Conclusion
After considering all of the evidence made of record pertaining to the issue of
likelihood of confusion, as well as all of the arguments related thereto, including any
evidence and arguments not specifically discussed in this opinion, we conclude that
confusion is likely between Applicant’s mark LIFEJACKET for “impact-resistant and
moisture-resistant plastic cases for insulating audio speakers” and Opposer’s mark
LIFEJACKET for “waterproof protective cases for tablet computers” and protective
cases for tablet computers and cell phones.
Decision: The opposition is sustained.