Victor B. Mason

Trademark Trial and Appeal Board

Sep 11, 2007

No. 78618286 (T.T.A.B. Sep. 11, 2007)

Mailed: 9/11/07

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Victor B. Mason
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Serial No. 78618286
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Daniel P. Dooley of Fellers, Snider, Blankenship, Bailey &
Tippens for Victor B. Mason.

David Elton, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
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Before Seeherman, Quinn and Wellington, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by Victor B. Mason to
register the mark SCORPION for “custom built, made-to-
order, amplifiers, namely, vacuum tube musical instrument
amplifiers” in International Class 9.1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, when applied to applicant’s goods, so

1 Application Serial No. 78618286, filed April 27, 2005, alleging
first use anywhere and first use in commerce on January 4, 2004.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 78618286
2
resembles the previously registered mark SCORPION for
“loudspeakers”2 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Applicant argues that inasmuch as he and registrant
both prominently use their corporate names in conjunction
with their trademarks, any likelihood of confusion is
mitigated. Further, applicant asserts that the goods are
distinctly different, the trade channels for the goods are
dissimilar, and the customers for his goods are careful in
making their purchase. In connection with his arguments,
Mr. Mason submitted his declaration.
The examining attorney maintains that the involved
marks are identical in every respect, and that the goods
sold thereunder are highly related, complementary goods.
In support of the refusal, the examining attorney
introduced several third-party registrations based on use
showing that the same entity has registered the same mark
for both loudspeakers and amplifiers. Also of record are
excerpts of websites of online retailers showing that they
sell both types of goods. Other Internet evidence shows
that applicant and registrant themselves manufacture and
sell both loudspeakers and amplifiers.

2 Registration No. 1349001, issued July 16, 1985; renewed.
Ser No. 78618286
3
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.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also: In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
The marks are identical in every respect, that is, in
sound, appearance, meaning and overall commercial
impression. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). Further, the marks appear to
be arbitrary as applied to the goods. The identity between
these arbitrary marks weighs heavily in favor of a finding
of likelihood of confusion.
The fact that the respective marks are used in
conjunction with applicant’s and registrant’s trade names
is irrelevant to our comparison of the marks. The trade
Ser No. 78618286
4
names do not appear as part of the marks, and it is
presumed that either applicant’s or registrant’s SCORPION
mark may be used at any time without the respective trade
name. See Sealy, Inc. v. Simmons Co., 265 F.2d 934, 121
USPQ 456, 459 (CCPA 1959); and ITT Canteen Corp. v. Haven
Homes Inc., 174 USPQ 539, 540 (TTAB 1972).
We next turn to a consideration of the goods. We
note, at the outset of considering this du Pont factor,
that the greater the degree of similarity between
applicant’s mark and the cited registered mark, the lesser
the degree of similarity between applicant’s goods and
registrant’s goods that is required to support a finding of
likelihood of confusion. In re Opus One Inc., 60 USPQ2d
1812, 1815 (TTAB 2001). If the marks are the same, as in
this case, it is only necessary that there be a viable
relationship between the goods in order to support a
finding of likelihood of confusion. In re Concordia
International Forwarding Corp., 222 USPQ 355, 356 (TTAB
1983).
As the examining attorney readily concedes, the
involved goods “differ.” Nevertheless, the examining
attorney’s evidence shows that amplifiers and loudspeakers
are related and complementary goods, and applicant has
Ser No. 78618286
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confirmed that “[l]oudspeakers require the use of
amplifiers.” (Response, April 27, 2006).
In connection with this du Pont factor, the examining
attorney introduced several use-based third-party
registrations showing that each entity adopted a single
mark for goods of the type involved herein, namely
amplifiers and loudspeakers. Third-party registrations
that individually cover different items and that are based
on use in commerce serve to suggest that the listed goods
and/or services are of a type that may emanate from a
single source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783 (TTAB 1993); and In re Mucky Duck Mustard Co.
Inc., 6 USPQ2d 1467 (TTAB 1988). The examining attorney
also submitted excerpts from various websites showing that
the same online retailers sell both amplifiers and
loudspeakers. Lest there be any doubt about the
relatedness of the goods, excerpts from applicant’s and
registrant’s websites show that each manufactures and sells
both amplifiers and loudspeakers. In point of fact, one of
registrant’s amplifiers appears to be of the specific type
made by applicant, that is, a vacuum tube amplifier. The
websites, including pictures thereon, establish that
amplifiers and loudspeakers are closely related,
complementary components that may be used in close
Ser No. 78618286
6
proximity to one another (with an amplifier sitting on top
of a loudspeaker or the two components integrated into a
combination amplifier/loudspeaker cabinet). The fact that
applicant’s amplifiers are custom built, made-to-order is
not enough to sufficiently distinguish the goods when sold
under identical, arbitrary marks.
Mr. Mason states in his declaration that 100% of sales
are “from customer orders placed directly with
[applicant].” Although there is no such specific
limitation in applicant’s identification of goods, it is
reasonable to find, based on the identification of goods
indicating that applicant’s amplifiers are custom built,
made-to-order, that the trade channels therefor may be
somewhat limited. Nevertheless, registrant’s loudspeakers
are not limited in any respect, so we presume that they are
available in all trade channels normal for such goods,
including those in which custom built, made-to-order
musical components move. In any event, the goods are
bought by the same classes of purchasers (e.g., musicians).
The similarities in the goods, the trade channels and
the classes of purchasers weigh in favor of a finding of a
likelihood of confusion.
Applicant contends that purchasers of the involved
goods are sophisticated. In this connection, Mr. Mason
Ser No. 78618286
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states that 98% of applicant’s sales are “from customers
that have researched the marketplace to locate the one-of-
a-kind custom built-to-order vacuum tube amplifiers offered
by [applicant].” We accept that, due to the nature of
applicant’s custom built, made-to-order equipment, his
customers will be knowledgeable and careful. We also
assume that, in general, loudspeakers and amplifiers will
be purchased with some degree of care. However, even
assuming that the purchase of applicant’s and registrant’s
goods would involve a deliberate decision, this does not
mean that the purchasers are immune from confusion as to
the origin of the respective goods, especially when, as we
view the present case, the identity of the marks and the
similarity between the goods outweigh any sophisticated
purchasing decision. See HRL Associates, Inc. v. Weiss
Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss
Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990) [similarities of goods and
marks outweigh sophisticated purchasers, careful purchasing
decision, and expensive goods]. See also In re Research
Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir.
1986), citing Carlisle Chemical Works, Inc. v. Hardman &
Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970)
[“Human memories even of discriminating purchasers...are
Ser No. 78618286
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not infallible.”]. Specifically, because the marks are
identical, even purchasers who examine the marks carefully
will not be able to distinguish between SCORPION and
SCORPION, and because the evidence shows that amplifiers
and loudspeakers are sold by the same companies under a
single mark, they are likely to believe that the goods
emanate from the same source.
We conclude that consumers familiar with registrant’s
loudspeakers sold under the mark SCORPION would be likely
to believe, upon encountering applicant’s mark SCORPION for
custom built, made-to-order vacuum tube musical instrument
amplifiers, that the goods originate from or are associated
with or sponsored by the same source.
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.