V-Moda

Trademark Trial and Appeal Board

Dec 28, 2010

No. 77766542 (T.T.A.B. Dec. 28, 2010)

Mailed: 12/28/10

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re V-Moda
________

Serial No. 77766542
_______

Edwin Tarver of Lauson & Tarver for V-Moda.

Saima Makhdoom, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Quinn, Cataldo and Ritchie, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

V-Moda filed, on June 23, 2009, an intent-to-use
application to register the mark CROSSFADE for “headphones,
earphones and personal audio headphones” in International
Class 9.
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, when applied
to applicant’s goods, so resembles the previously
registered mark XROSS FADE (“FADE” disclaimed) for “DJ-
styled music system comprised of dual docks for MP3
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Ser. No. 77766542
2
players, CD player, AM/FM radio tuner, cross fader, built-
in two channel mixer and USB port” in International Class 91
as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Applicant asserts that “cross-fading” is a well known
DJ (disc jockey) technique, accomplished by phasing out one
audio source while phasing in another; and it is a term of
art in the sound engineering industry. Because of this
meaning, applicant argues, the registered mark is
descriptive and/or weak. Applicant concedes that the marks
CROSSFADE and XCROSS FADE share certain common sounds and
letter patterns, but goes on to contend that the marks as a
whole differ in appearance, meaning and sound. According
to applicant, registrant’s mark employs a visually striking
“X” in place of the “C” normally used to spell “CROSS
FADE,” and the initial letter is the dominant portion of
registrant’s mark; and applicant’s mark is the word
“CROSSFADE” with a defined meaning, while registrant’s mark
XROSS FADE has no meaning. Applicant also argues that the
letter “X” in the English language is pronounced “Z” when
beginning a word, and while the examining attorney asserts
that the letter “X” represents a “cross” graphic,

1 Registration No. 3697886, issued October 20, 2009.
Ser. No. 77766542
3
suggesting that “XROSS” is pronounced “CROSS,” to do so
renders registrant’s mark descriptive since registrant’s
product is, in fact, a cross fader. With respect to the
goods, applicant contends that they are different, although
applicant concedes that the goods may be sold in “similar
establishments.” Applicant also contends that the
purchasers of the respective goods are different. In this
regard, applicant states that its headphones are fashion-
designed, with its purchasers being concerned with the
appearance and fashionable aspects of the headphones; and
that registrant’s purchasers look primarily to function
rather than appearance. According to applicant,
registrant’s goods are more expensive than applicant’s and,
therefore, purchasers of registrant’s goods exercise a high
degree of care.
The examining attorney maintains that the marks are
similar in appearance, sound and meaning, in spite of the
unique spelling of “XROSS” in registrant’s mark, because
consumers will perceive the novel spelling as being a mere
misspelling of the word “CROSS.” Thus, the examining
attorney argues, the marks look similar, and have a similar
meaning in that both refer to an audio engineering
technique used to concurrently fade musical sounds out and
in so that the music beats overlap. As to similarity in
Ser. No. 77766542
4
sound, the examining attorney contends that because
registrant’s mark is applied to a DJ music system featuring
a crossfader, it is reasonable to presume that consumers
will perceive and pronounce the mark XROSS FADE as CROSS
FADE. The examining attorney asserts that the goods are
complementary, and are sold in the same trade channels to
the same classes of consumers. In connection with the
similarity between the goods, the examining attorney
submitted Internet articles and excerpts of various
websites, including registrant’s website.
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). In any likelihood of confusion analysis,
however, 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 (CCPA 1976).
To better understand our analysis, both with respect
to the marks and the goods, we first consider the
significance of the term “cross fade” in the context of the
Ser. No. 77766542
5
music field. The record includes the following excerpts
retrieved from third-party websites:
Disc jockeys (DJs) also use crossfading
to transition from one song to the next
“without missing a beat.” By using
crossfades to mix music tracks the
music literally never stops. The
crossfade is the key to keeping a dance
club on its feet.

A successful audio crossfade must match
the beats per minute of both audio
tracks before fading up the new track
into the exiting track. If the beats
aren’t aligned, the new track muddies
the old one and dancers can’t keep pace
because there is no clear beat. DJs
commonly wear headphones on one ear and
use controls to speed up or slow the
incoming track before fading up the
volume into the existing track. Both
tracks play overlaid for a series of
beats as the new track increases in
volume and the old one decreases.
(www.wisegeek.com)

A crossfader on a DJ mixer essentially
functions like two faders connected
side-by-side, but in opposite
directions. It allows a DJ to fade one
source out while fading another source
in at the same time. This is extremely
useful when beatmatching two phonograph
records or compact discs.
(www.wikipedia.org)

Evolution of the DJ Crossfader.
The DJ mixer crossfader was originally
developed as a control for implementing
smooth fades from one program source to
another...In the end, the crossfader
has provided functionality far beyond
Ser. No. 77766542
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what was originally envisioned.
(www.rane.com)

We now turn to consider the goods. With respect to
this second du Pont factor, it is not necessary that the
respective goods be competitive, or even that they move in
the same channels of trade to support a holding of
likelihood of confusion. It is sufficient that the
respective goods are related in some manner, and/or that
the conditions and activities surrounding the marketing of
the goods are such that they would or could be encountered
by the same persons under circumstances that could, because
of the similarity of the marks, give rise to the mistaken
belief that they originated from the same producer. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991). The question
of likelihood of confusion is determined based on the
identification of goods in the application vis-à-vis the
goods as set forth in the cited registration. In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir.
1993); and In re Jump Designs, LLC, 80 USPQ2d 1370, 1374
(TTAB 2006). The issue is not whether consumers would
confuse the goods themselves, but rather whether they would
be confused as to the source of the goods.
Accordingly, we compare applicant’s “headphones,
earphones and personal audio headphones” to registrant’s
Ser. No. 77766542
7
“DJ-styled music system comprised of dual docks for MP3
players, CD player, AM/FM radio tuner, cross fader, built-
in two channel mixer and USB port.” Although the goods are
specifically different, they are obviously complementary.
The goods may be purchased together, and are used together
by disc jockeys, audiophiles and ordinary consumers who
listen to music; even applicant admits that its headphones
“may be used by DJs.” (Brief, p. 4).
An article highlights the complementary nature of
music systems and headphones:
Reviews of DJ Headphones

So now you have your turntables, your
mixer, your amp and speakers. But you
missed one small but crucial detail,
headphones.

Headphones have one important function.
They help the DJ mix the beats together
seamlessly.

A good pair of headphones are the tell
tale sign of a DJ who is up to par on
good DJ equipment.
(www.the-dj-equipment-guide.com)

As indicated earlier, “DJs commonly wear headphones on one
ear and use controls to speed up or slow the incoming track
before fading up the volume into the existing track.”
(www.wisegeek.com). Other articles show that headphones
may be used with stereos and MP3 players.
Ser. No. 77766542
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Insofar as the trade channels and classes of
purchasers are concerned, we note that there are no trade
channel limitations in either applicant’s or registrant’s
identification of goods. Accordingly, we must presume that
the goods, as identified, are marketed in all normal trade
channels for such goods and to all normal classes of
purchasers for such goods. In re Elbaum, 211 USPQ 639
(TTAB 1981). Thus, we presume that applicant’s and
registrant’s goods would be sold in the the same music and
electronics stores, and through the same websites. Indeed,
applicant concedes that the goods may be “sold in similar
establishments.” (Brief, p. 4). Lest there be any doubt
that music systems and headphones are sold in the same
trade channels, registrant’s website shows the sale of
“Studio Monitor Series DJ Headphones” for “DJ and remix
applications,” as well as a variety of other headphones.
(www.sonystyle.com). The same website also offers for sale
registrant’s goods (“Mini Hi-Fi System”) under the
registered mark. Likewise, Bose manufactures and sells
both music systems and headphones. (www.bose.com).
Further, given the absence of any limitations as to
purchasers, we presume that the goods are bought by the
same classes of consumers. These consumers would include
disc jockeys, and others interested in listening to music.
Ser. No. 77766542
9
Inasmuch as the identifications do not include any
limitations as to cost, we must also presume that the goods
may be relatively inexpensive items that would be subject
to impulse purchase generally made with nothing more than
ordinary care.
The above du Pont factors relating to the similarities
between the goods, trade channels, purchasers and
conditions of sale all weigh in favor of finding a
likelihood of confusion.
We next turn to compare the marks, XROSS FADE and
CROSSFADE. We must consider the marks in their entireties
as to appearance, sound, connotation and commercial
impression to determine the similarity or dissimilarity
between them. Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). The test, under the first du Pont
factor, is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in terms of their
overall commercial impression that confusion as to the
source of the goods offered under the respective marks is
likely to result. The focus is on the recollection of the
average purchaser, who normally retains a general rather
Ser. No. 77766542
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than a specific impression of trademarks. See Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
At the outset of considering registrant’s mark, we
take judicial notice of a dictionary definition of the
letter “X.”2 “X” means, in relevant part: “Symbol.
Cross.” Random House Dictionary (2010).
As to appearance, the marks differ in spelling by one
letter. As is obvious, registrant uses “XROSS” in its
mark, while applicant uses the word “CROSS.” However, as
the dictionary indicates, the letter “X” is used as a
symbol for “cross.” Further, the space in registrant’s
mark, XROSS FADE, does nothing to distinguish it from
applicant’s mark. Thus, although there is a difference in
spelling, the appearance of the marks is similar.
Turning next to sound, while there is no correct
pronunciation of a trademark, it is likely that consumers
will not pronounce the first letter of registrant’s mark as
the letter “X,” as in “ex ross fade,” or as the letter “Z,”
as in the beginning “Z” in “xylophone.” Rather, consumers
are likely to pronounce registrant’s mark as “CROSS FADE,”
especially in view of the nature of registrant’s goods.

2 Dictionary definitions are proper subject matter for judicial
notice. University of Notre Dame du Lac v. J.C. Gourmet Food
Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372,
217 USPQ 505 (Fed. Cir. 1983).
Ser. No. 77766542
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Thus, the marks sound identical.
Further, given this likely perception of registrant’s
mark among consumers, the marks are identical in meaning.
The identity between the marks in sound and meaning
outweighs any dissimilarity in appearance. Given the
similarities between the marks XROSS FADE and CROSSFADE,
and the goods sold thereunder, the marks are likely to
engender virtually identical overall commercial
impressions.
The similarity between the marks weighs in favor of
finding a likelihood of confusion.
We understand applicant’s argument that the cited mark
is weak due to the significance of the term “crossfade” in
the recorded music industry, especially as it pertains to a
feature of music systems used by disc jockeys. As
discussed above, we have considered this significance in
making our decision regarding likelihood of confusion. So
as to be clear, however, we have discounted applicant’s
specific argument (Brief, p. 2) that the registered mark is
merely descriptive of registrant’s goods. (“If XROSS FADE
is so similar enough to Appellant’s mark to present a
likelihood of confusion, it must therefore be similar
enough to ‘cross fade’ to render it descriptive.”). To the
extent that applicant’s allegation may be construed as a
Ser. No. 77766542
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collateral attack on registrant’s registration, it is
impermissible. Section 7(b) of the Trademark Act, 15
U.S.C. §1057(b), provides that a certificate of
registration on the Principal Register shall be prima facie
evidence of the validity of the registration, of the
registrant’s ownership of the mark and of the registrant’s
exclusive right to use the mark in connection with the
goods or services identified in the certificate. During ex
parte prosecution, including an ex parte appeal, an
applicant will not be heard on matters that constitute a
collateral attack on the cited registration (e.g.,
applicant’s claim that the cited mark is merely
descriptive). In re Dixie Restaurants, Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); and In re
Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992). See
TMEP §1207.01(d)(iv) (7th ed. 2010).
We conclude that consumers familiar with registrant’s
“DJ-styled music system comprised of dual docks for MP3
players, CD player, AM/FM radio tuner, cross fader, built-
in two channel mixer and USB port” sold under the mark
XROSS FADE would be likely to believe, upon encountering
applicant’s mark CROSSFADE for “headphones, earphones and
personal audio headphones,” that the goods originated from
or are associated with or sponsored by the same entity.
Ser. No. 77766542
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Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984).
Decision: The refusal to register is affirmed.