Victor B. Mason

Trademark Trial and Appeal Board

Sep 24, 2007

No. 78618173 (T.T.A.B. Sep. 24, 2007)

Mailed: September 24, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re Victor B. Mason
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Serial No. 78618173
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Daniel P. Dooley of Fellers, Snider, Blankenship, Bailey &
Tippens for Victor B. Mason.

John D. Dalier, Trademark Examining Attorney, Law Office 111
(Mary I. Sparrow, Managing Attorney).
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Before Grendel, Holtzman and Zervas, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

An application has been filed by Victor B. Mason (applicant)
to register the mark MOJAVE (standard character form) for goods
ultimately identified as "custom built, made-to-order,
amplifiers, namely, vacuum tube musical instrument amplifiers" in
Class 9.1

1 Serial No. 78618173, filed April 27, 2005, based on an allegation of
first use and first use in commerce on July 27, 2001. The original
identification of goods, "amplifiers, namely, musical instrument
amplifiers," was amended to its current form at applicant's request.
THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Serial No. 78618173
2
The trademark examining attorney has refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant's mark, when applied to applicant's goods, so resembles
the registered mark MOJAVE (typed form) for "guitars" in Class
15, as to be likely to cause confusion.2
When the refusal was made final, applicant appealed. Briefs
have been filed.
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 issue. In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, however, two key
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the
goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
Applicant's mark MOJAVE is identical to the mark in the
cited registration. The fact that the respective marks are
identical "weighs heavily against applicant." In re Martin's
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290
(Fed. Cir. 1984).
Applicant argues that the presence of applicant's and
registrant's corporate names on packaging for the respective

2 Registration No. 2663355; issued December 17, 2001.
Serial No. 78618173
3
goods serves to mitigate the likelihood of confusion. This
argument is not relevant because the corporate names are not part
of either mark. It is well established that, in proceedings
before the Board, the question of likelihood of confusion must be
decided on the basis of the mark "exactly as shown in the
application" regardless of how the mark is actually used. Jim
Beam Brands Co. v. Beamish & Crawford, Ltd., 937 F.2d 729, 19
USPQ2d 1352, 1356 (2d Cir. 1991) (distinguishing infringement
proceedings from Board proceedings). See also Kimberly-Clark
Corp. v. H. Douglas Enterprises, 774 F.2d 1144, 227 USPQ 541
(Fed. Cir. 1985).
We turn then to the goods. Applicant's goods are "custom
built, made-to-order, amplifiers, namely, vacuum tube musical
instrument amplifiers," and registrant's goods are "guitars." We
note that when marks are identical it is only necessary that
there be a viable relationship between the goods in order to
support a holding of likelihood of confusion. See In re Opus One
Inc., 60 USPQ2d 1812 (TTAB 2001); and In re Concordia
International Forwarding Corp., 222 USPQ 355 (TTAB 1983). Here,
however, there is more than a viable relationship between the
goods. Applicant's identification of goods expressly states that
his amplifiers are used for musical instruments, which of course
would include guitars. In addition, we take judicial notice of
the definition of "amplifier" as meaning "a device that makes
Serial No. 78618173
4
sounds louder, especially one increasing the sound level of
musical instruments." Microsoft Encarta College Dictionary
(2001); and "a device of this kind combined with a loudspeaker,
used to amplify electric guitars and other musical instruments"
The New Oxford American Dictionary (2nd ed.).3
Amplifiers are used to make musical instruments, including
guitars, more audible. Indeed, an electric guitar requires an
amplifier in order to produce sound at all.4 It is clear that
amplifiers and guitars are by their nature complementary,
inherently related goods.5 See Recot Inc. v. M.C. Becton, 214
F.3d 1332, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (although
products may be distinctly different in kind, "the same goods can
be related in the mind of the consuming public as to the origin
of the goods. It is this sense of relatedness that matters in
the likelihood of confusion analysis"). In addition, the

3 From the website credoreference.com. The Board may take judicial
notice of dictionary definitions, including online dictionaries which
exist in printed format. See In re CyberFinancial.Net Inc., 65 USPQ2d
1789, 1791 n.3 (TTAB 2002). See also University of Notre Dame du Lac
v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982),
aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).

4 We take judicial notice of the definition of "electric guitar" as "a
guitar designed to be played through an electrical amplifier. Chambers
21st Century Dictionary (Chambers Harrap Publishers Limited 2001) from
the website credoreference.com.

5 A "vacuum-tube amplifier" is simply an amplifier "in which one or
more vacuum tubes are used." We take judicial notice of this
definition appearing in the Academic Press Dictionary of Science and
Technology (1992) from credoreference.com. This is not a limitation on
the type of musical instruments with which the amplifier can be used,
nor does applicant argue that it is.
Serial No. 78618173
5
examining attorney has made of record at least two third-party
registrations (Registration No. 2988992 for the mark DINOSAURAL
(stylized) and Registration No. 3096515 for a design mark) for
marks covering both amplifiers and guitars.6 Third-party
registrations, although not evidence of use of the marks in
commerce, serve to suggest that the respective goods are of a
type which may emanate from the same 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).
Applicant does not dispute that the goods are related, but
instead contends that registrant no longer produces the goods.
However, this argument constitutes an impermissible collateral
attack on the validity of the registration and cannot be
considered. See Section 7(b) of the Trademark Act ("A
certificate of registration of a mark upon the principal register
... shall be prima facie evidence of the validity of the
registered mark and of the registration of the mark, of the
registrant’s ownership of the mark, and of the registrant’s
exclusive right to use the registered mark in commerce on or in
connection with the goods..."). See also In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).

6 The remaining third-party registrations submitted by the examining
attorney which are either not based on use in commerce or which do not
include both types of goods are not probative.
Serial No. 78618173
6
Applicant argues that the respective goods move in different
channels of trade in that registrant's guitars would be sold
through retail outlets, whereas applicant's custom-built products
are available only through custom orders placed directly with
applicant. However, where the products are closely related,
merely because the products in fact would not be sold together
would not necessarily prevent consumers, when encountering the
products in different outlets, from believing the products come
from the same source. See Freedom Savings and Loan Association
v. Fidelity Bankers Life Insurance Company, 224 USPQ 300, 304
(TTAB 1984) ("It is not necessary that goods be competitive or be
sold together or through the same outlets if they can be shown to
be related in some manner that would suggest to persons
encountering them, even at different locations, sources, or
offices a likelihood of common sponsorship"). The respective
goods in this case are closely related and the customers for
these closely related goods are the same. The individuals who
would be the customers for registrant's guitars would also be
prospective purchasers of applicant's amplifiers for the guitars.
Those consumers who had previously purchased registrant's MOJAVE
guitars, upon encountering applicant's amplifiers for guitars,
under the identical mark MOJAVE, regardless of where they
purchased the guitars, are likely to believe that the respective
Serial No. 78618173
7
goods come from or are in some way connected with the same
company.
It is reasonable to assume, as applicant points out, that
the purchasers of guitars and amplifiers for guitars would to
some extent be knowledgeable about such products and would
exercise some degree of care in their purchasing decisions.
However, even knowledgeable and careful purchasers of goods can
be confused as to source under circumstances where, as here,
identical marks are used on closely related goods. See 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 not
infallible.").
In view of the foregoing, and because identical marks are
used in connection with closely related goods, we find that
confusion is likely.
Decision: The refusal to register under Section 2(d) of the
Trademark Act is affirmed.