Virgin Enterprises Ltd.v.Kay Guitar Co.

Trademark Trial and Appeal Board

Nov 23, 2004

No. 91154392 (T.T.A.B. Nov. 23, 2004)

Mailed: 11/23/04
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Virgin Enterprises Limited
v.
Kay Guitar Company
_____
Opposition No. 91154392
to application Serial No. 78070813
filed on June 25, 2001
_____
James W. Dabney and Hayley W. Werner of Fried, Frank,
Harris, Shriver & Jacobson for Virgin Enterprises Limited.
Susan L. Ruzbasan, Esq. for Kay Guitar Company.
______
Before Quinn, Hohein and Chapman, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application was filed by Kay Guitar Company to
register the mark shown below
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91154392
2
for “musical instruments, namely, guitars.”1 The word
“guitars” is disclaimed apart from the mark.
Registration was opposed by Virgin Enterprises Limited
on the ground that applicant’s mark, if applied to
applicant’s goods, would so resemble opposer’s previously
used and registered VIRGIN marks for a wide variety of goods
and services, including some related to the music and
entertainment industries, as to be likely to cause confusion
under Section 2(d) of the Trademark Act. In addition,
opposer asserts that registration of applicant’s mark is
likely to dilute the distinctiveness of opposer’s famous
VIRGIN marks.
Applicant, in its answer, essentially denied the
salient allegations in the notice of opposition.2
The record consists of the pleadings; the file of the
involved application; trial testimony, with related
exhibits, taken by opposer; and applicant’s responses to
opposer’s discovery requests, status and title copies of
opposer’s registrations and certified copies of opposer’s
applications, copies of official records in the nature of
1 Application Serial No. 78070813, filed June 25, 2001, based on
an allegation of a bona fide intention to use the mark in
commerce.
2 The answer is accompanied by copies of third-party
registrations and other documents. Inasmuch as these exhibits
were not identified and introduced in evidence at trial, they are
not evidence on behalf of applicant. Trademark Rule 2.122(c);
TBMP § 317 (2d ed. rev. 2004). Even if considered, however, this
evidence would not change the result in this case.
Opposition No. 91154392
3
final orders in prior Board proceedings and in other
litigation involving opposer’s marks, and excerpts
from printed publications, all made of record by way of
opposer’s notice of reliance. Applicant neither took
testimony nor offered any other evidence. Only opposer
filed a brief at final hearing. An oral hearing was not
requested by either party.
Opposer and its related companies are engaged in a wide
and diverse range of business activities under a variety of
VIRGIN marks. Opposer’s business, founded by Sir Richard
Branson, started in the music industry as VIRGIN RECORDS,
later branching out into goods and services such as
commercial air transportation, telephone services, credit
card services, retail store services featuring recorded
music and music books, alcoholic beverages, and consumer
electronic products. The evidence demonstrates that music
has played a significant role in the advertising of
opposer’s myriad business ventures, including its VIRGIN
MEGASTORE retail stores, VIRGIN MOBILE wireless phone goods
and services, VIRGIN PULSE personal consumer electronic
products, RADIO FREE VIRGIN Internet music services, and
VIRGIN ATLANTIC airways (the self-proclaimed “rock and roll
airline”).
As discussed below, opposer has established its
ownership of registrations of various VIRGIN marks for a
Opposition No. 91154392
4
variety of goods and services, as well as prior use of
VIRGIN as a trade name. Opposer owns over thirty
registrations for VIRGIN, both in typed form and in the
stylized form shown below, as well as other VIRGIN-formative
marks.
In its brief, opposer highlighted its VIRGIN (typed and
stylized) registrations involving goods and services in the
music industry as follows: “pre-recorded audio and/or video
tapes, cassettes and cartridges; prerecorded audio and video
discs; phonograph records; photographic and cinematographic
films”;3 “printed sheet music; fictional and non-fictional
books, biography and autobiography books, periodicals,
namely, paperback books and magazines, all dealing with
music, films and entertainment”;4 “retail store services in
the fields of records, audio and video tapes, audio and
3 Registration No. 1469618, issued December 22, 1987, and
Registration No. 1517801, issued December 27, 1988, respectively;
affidavits under Sections 8 and 15 filed and acknowledged.
4 Registration No. 1591952, issued April 17, 1990, and
Registration No. 1597386, issued May 22, 1990, respectively; both
renewed.
Opposition No. 91154392
5
video recorders, computers and electronic apparatus, [and]
sheet music”;5 “retail department store services”;6 “sound
records of music in the form of discs and tapes and
cassettes; pre-recorded audio and video tapes, cassettes and
cartridges featuring music; pre-recorded audio and video
discs, phonograph records featuring music; [and] computer
software for music products”;7 and “providing networks for
the purpose of transmission and reception of electronic
mail, computer generated music, news and other data and
information; and broadcasting services by radio and over a
global computer network.”8 In our determination of
likelihood of confusion, we will focus our attention, as
opposer has, on these marks and goods and services sold
thereunder.
In view of opposer’s ownership of these valid and
subsisting registrations, priority is not an issue in this
proceeding. King Candy Co., Inc. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion issue.
5 Registration No. 1851817, issued August 30, 1994, and
Registration No. 1852776, issued September 6, 1994, respectively;
both renewed.
6 Registration No. 1863353, issued November 15, 1994; renewed.
7 Registration No. 2709578, issued April 22, 2003.
8 Registration No. 2625455, issued September 24, 2002.
Opposition No. 91154392
6
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 and/or
services. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976). These, and other du
Pont factors deemed pertinent in the proceeding now before
us, are discussed below.
Opposer’s VIRGIN mark and applicant’s mark are
virtually identical, differing only in the inclusion of the
generic term “GUITARS” in applicant’s mark.9 Applicant has
adopted the entirety of opposer’s arbitrary mark VIRGIN, and
merely added the generic term to it; the addition of the
9 In the notice of opposition, opposer referred to its “family”
of VIRGIN marks. As contemplated in case law, a family of marks
is a group of marks having a recognizable common characteristic,
wherein the marks are composed and used in such a way that the
public associates not only the individual marks, but the common
characteristic of the family, with the trademark owner. Simply
using a series of similar marks, or the mere fact of registration
of many marks with a common “surname,” does not of itself
establish the existence of a family. J & J Snack Foods Corp. v.
McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889(Fed. Cir. 1991);
Polaroid Corp. v. Richard Mfg. Co., 341 F.2d 150, 144 USPQ 419
(CCPA 1965); and American Standard, Inc. v. Scott & Fetzer Co.,
200 USPQ 457 (TTAB 1978). In the past the Board has stated, in
pertinent part, that a proponent of a family of marks must prove
that all or many of the marks in the alleged family were used and
promoted together in such a way as to create public perception of
the family “surname” as an indication of source. Champion
International Corp. v. Plexowood, Inc., 191 USPQ 160 (TTAB 1976).
In the present case, we find that opposer’s evidence falls short
of demonstrating that it owns a family of marks. To this end, in
analyzing likelihood of confusion, we have compared applicant’s
mark with each of opposer’s marks.
Opposition No. 91154392
7
term “GUITARS” is clearly insufficient to avoid a finding of
likelihood of confusion with opposer’s VIRGIN marks. See
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002); In re El Torito Restaurants
Inc., 9 USPQ2d 2002 (TTAB 1988); and In re Equitable
Bancorporation, 229 USPQ 709 (TTAB 1986). As to appearance,
the stylization of applicant’s mark does not distinguish it
from any of opposer’s VIRGIN marks (including opposer’s
stylized marks) in any meaningful way.10
We also find that applicant’s mark is similar to each
of opposer’s logo marks. Opposer’s marks are, in each
instance, dominated by the inherently distinctive term
VIRGIN which, as indicated above, is identical in sound,
appearance and meaning to the dominant portion of
applicant’s mark. Although we have considered the marks in
their entireties, “there is nothing improper in stating
that, for rational reasons, more or less weight has been
given to a particular feature of a mark, provided the
ultimate conclusion rests on consideration of the marks in
their entireties.” In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In opposer’s logo
10 Opposer’s registrations of VIRGIN in typed form afford opposer
a scope of protection that encompasses the same stylized manner
of display of the word VIRGIN in applicant’s mark. See Phillips
Petroleum v. C.J. Webb, 442 F.2d 1376, 170 USPQ 35, 36 (CCPA
1971) [registration of word mark in typed drawing form means that
rights in the word mark “are not limited to the mark depicted in
any special form”].
Opposition No. 91154392
8
marks, we have given less weight to the descriptive and/or
design portions thereof; for the same reason, we have given
less weight to the “GUITAR” portion (which is generic and
disclaimed) of applicant’s mark. We find that these
features do not eliminate the likelihood of confusion in
consumers’ perceptions of opposer’s marks and applicant’s
mark.
Each of opposer’s marks is similar in sound, appearance
and meaning to applicant’s mark. In sum, the parties’ marks
engender similar overall commercial impressions. The
similarity between the marks weighs in opposer’s favor.
With respect to the goods and/or services, it is well
established that the goods and/or services of the parties
need not be similar or 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 and/or services of the parties are related
in some manner, and/or that the conditions and activities
surrounding the marketing of the goods and/or services 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 originate from the same source. See Hilson
Research, Inc. v. Society for Human Resource Management, 27
USPQ2d 1423 (TTAB 1993); and In re International Telephone &
Opposition No. 91154392
9
Telephone Corp., 197 USPQ 910, 911 (TTAB 1978). The issue
is not whether purchasers would confuse the goods and/or
services, but rather whether there is a likelihood of
confusion as to the source of the goods and/or services. In
re Rexel Inc., 223 USPQ 830 (TTAB 1984).
The record is replete with examples of the close
connection between music and opposer’s goods and services.
Opposer’s retail store services under the VIRGIN MEGASTORE
mark involve the sale of pre-recorded audio discs and tapes.
The openings of these stores are marked by extensive
publicity, including appearances by major recording artists
in the music industry. In addition, opposer’s stores
sponsor live in-store performances by artists whose records
are being sold in the stores. These performances frequently
involve giveaways, including autographed guitars from the
bands. According to Andrea Moreno, one of opposer’s field
marketing managers, opposer’s stores attract a clientele of
guitar players by offering a section in the stores dedicated
to guitar books, including instructional books, history
books, and sheet music, as well as guitar magazines. In
connection with opposer’s assertion that opposer is
“constantly reinventing itself,” opposer points out that due
to a successful launch at its VIRGIN MEGASTORE store in
London, opposer is considering offering in the future
musical instruments and lessons at its United States stores.
Opposition No. 91154392
10
Opposer also offers, under the mark RADIO FREE VIRGIN,
music streaming services on the Internet. Further, opposer
sells a line of consumer electronic products, including CD
players, MP3 players and AM/FM tuners under the mark VIRGIN
PULSE. Opposer has published a series of books known as
VIRGIN ENCYCLOPEDIA which details the history of popular
music. Opposer’s air transportation services under the mark
VIRGIN ATLANTIC feature an in-flight entertainment system,
and airport lounges for its passengers feature sound-proof
sitting rooms with state-of-the-art music systems.
Opposer’s wireless telephone services are offered under the
mark VIRGIN MOBILE, and users are able to download musical
content from MTV and VH1 to their phones.
Opposer’s goods and services, as well as applicant’s
guitars, would be purchased by the same classes of
purchasers, namely, ordinary consumers. These consumers
include guitar players and musicians, and there is no
evidence that the normal purchasers of the parties’ goods
and services are especially sophisticated or careful in
making their purchasing decisions.
Our analysis of likelihood of confusion in the present
case is influenced by our finding that opposer’s VIRGIN mark
is a strong mark that is entitled to a relatively broad
Opposition No. 91154392
11
latitude of protection.11 VIRGIN is an arbitrary term as
used in connection with opposer’s goods and services. The
record establishes that opposer uses VIRGIN essentially as a
house mark on a wide range of goods and services. The
record is devoid of evidence of any use by third parties of
VIRGIN marks on or in connection with the goods and services
involved in this case or, indeed, in connection with any
goods or services at all. The record also shows, from the
many law suits brought by opposer, that opposer diligently
polices its rights in its VIRGIN marks.12 Most
significantly, we find that opposer’s VIRGIN marks are
especially strong in connection with music-related goods and
services. The evidence of record establishes that the
VIRGIN record label is a well known label, with a roster of
11 On this record, however, we cannot conclude that opposer’s
VIRGIN marks are famous. Although opposer submitted several
excerpts from printed publications and decisions rendered by
federal courts in other litigation, this evidence is insufficient
to prove “fame” herein. Critical direct evidence is lacking,
such as volume of sales under the marks, and the amount of
opposer’s advertising expenditures. See Hard Rock Café Licensing
Corp. v. Elsea, 48 USPQ2d 1400, 1409 (TTAB 1998). In this
connection, we note that more than one court has characterized
opposer’s VIRGIN mark as a famous mark. However, the courts’
findings and conclusions in the context of opposer’s lawsuits
against third parties are not evidence in this case of the facts
said to underlie such findings and conclusions, nor are they
entitled to any legally preclusive effect as against applicant,
who was not a party to that litigation. We hasten to add,
however, that our findings of fact are not inconsistent with the
decision in Virgin Enterprises Ltd. V. Nawab, 335 F.3d 141, 67
USPQ2d 1420 (2d Cir. 2003).
12 Opposer has received favorable judgments in no fewer than
twenty-five inter partes proceedings before the Board against
marks incorporating the term “VIRGIN.” In addition, opposer has
been successful in over thirty civil actions brought in federal
district courts.
Opposition No. 91154392
12
famous artists (such as The Rolling Stones, David Bowie and
Lenny Kravitz), and that opposer’s retail music stores,
along with opposer’s other business ventures, have enjoyed
substantial success.
We conclude that purchasers familiar with opposer’s
variety of goods and services related to the music industry
sold under its strong VIRGIN marks would be likely to
believe, upon encountering applicant’s VIRGIN GUITARS
(stylized) mark for guitars, that the goods and/or services
originated with or were somehow associated with or sponsored
by the same entity.
Lastly, to the extent that there may be any doubt on
our finding of likelihood of confusion, we resolve that
doubt, as we must, in favor of the prior user. See Giant
Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218
USPQ 390, 395 (Fed. Cir. 1983).
In view of our finding of likelihood of confusion, we
need not reach the merits of opposer’s dilution claim under
Section 43(a) of the Trademark Act.
Decision: The opposition is sustained on the ground of
likelihood of confusion, and registration to applicant is
refused.