Yamaha Corp.

Trademark Trial and Appeal Board

Sep 28, 2004

No. 76445495 (T.T.A.B. Sep. 28, 2004)

Mailed: September 28, 2004
csl
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Yamaha Corporation
________
Serial No. 76445495
______
Evan A. Raynes of Finnegan, Henderson, Farabow, Garrett &
Dunner, L.L.P. for Yamaha Corporation.
William T. Verhosek, Trademark Examining Attorney, Law
Office 114 (K. Margaret Le, Managing Attorney).
_______
Before Simms, Hanak and Hohein, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Yamaha Corporation (applicant), a Japanese
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register the mark FLYING
DRAGON for musical instruments, namely, drums and
percussion instruments, and foot pedals for drums and
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76445495
2
percussion instruments.1 The Examining Attorney has refused
registration under Section 2(d) of the Act, 15 USC
§1052(d), on the basis of two registrations held by the
same entity: Registration No. 1,975,653, issued May 28,
1996, Sections 8 and 15 declaration accepted and
acknowledged, respectively, for the mark DRAGON for pick-
ups for electric guitars; musical instruments, namely,
guitars; and Registration No. 2,422,033, issued January 16,
2001, for the mark DRAGON 2000 for guitars. Applicant and
the Examining Attorney have submitted briefs but no oral
hearing was requested.
It is the Examining Attorney’s position that
applicant’s mark FLYING DRAGON is very similar in overall
commercial impression to registrant’s marks DRAGON and
DRAGON 2000, and that these marks are all used on related
musical instruments such that confusion is likely. More
particularly, the Examining Attorney argues that the word
DRAGON is the dominant term in all three marks and creates
the commercial impression of a single source of ownership.
In this regard, the Examining Attorney contends that the
word “FLYING” in applicant’s mark is less significant in
creating a commercial impression because it is a

1 Serial No. 76445495, filed August 27, 2002, based upon
applicant’s allegation of a bona fide intention to use the mark
in commerce.
Serial No. 76445495
3
characteristic of dragons. The Examining Attorney has made
of record a dictionary definition of the word “dragon” as
“1. A mythical monster traditionally represented as a
gigantic reptile having a lion’s claws, the tail of
serpent, wings, and a scaly skin… 3. Any of various
lizards, such as the Komodo dragon or the flying lizard.”2
The Examining Attorney argues, therefore, that applicant’s
mark and registrant’s marks create similar commercial
impressions of a mythical creature because the term
“FLYING” describes an attribute of dragons. Further, it is
the Examining Attorney’s position that registrant’s marks
DRAGON and DRAGON 2000 are strong and arbitrary ones for
musical instruments and parts thereof.
With respect to the goods, relying upon numerous
third-party registrations, the Examining Attorney maintains
that applicant’s drums and percussion instruments and
registrant’s guitars are closely related musical
instruments, may be produced by the same entity and are
sold in the same channels of trade--music stores--to the
same class of purchasers, professional and amateur
musicians.

2 The American Heritage Dictionary of the English Language, Third
Edition (1992).
Serial No. 76445495
4
In this regard, the Examining Attorney has made of
record over 20 use-based registrations of marks registered
for both guitars and drums, as well as, in many cases,
other musical instruments. For example, the mark ARTSTAR
is registered for drums and guitars (Registration No.
2,498,381, issued October 16, 2001); the mark MAHALO is
registered for drums, guitars, guitar picks, percussion
instruments as well as other instruments (Registration No.
2,563,150, issued April 23, 2002); the mark LEGION is
registered for drums and guitars as well as other
instruments (Registration No. 2,606,059, issued August 6,
2002); ORBITONE and design is registered for drums,
percussion instruments, guitars and other instruments
(Registration No. 2,687,385, issued February 11, 2003); and
the mark SAMICK and design is registered for drums and
guitars and other musical instruments (Registration No.
1,686,332, issued May 12, 1992). Another registration of
record is for the mark YAMAHA for the following goods:
pianos, reed and pipe organs, electronic organs,
accordions, saxophones, clarinets, bugles, trumpets,
cornets, trombones, French horns, oboes, flutes, piccolos,
tubas, violins, harps, cellos, guitars, ukuleles,
mandolins, banjos, drums, cymbals, triangles, harmonicas,
xylophones, metronomes, and all parts and accessories
Serial No. 76445495
5
therefore (Registration No. 678,446, issued May 12, 1959,
twice renewed).
The Examining Attorney has also made of record
excerpts from the Nexis computer database indicating that
the same company may make, distribute or sell both drums
and guitars. For example, the following are illustrative:
Musicians will want to check out Guitar Center
Cincinnati, located on the mall’s east end.
The store sells electric and acoustic guitars,
keyboards and drums, amplifiers, instructional
materials, DJ equipment, lighting, live sound
and other accessories…
Dayton Daily News, June 7, 2003
…The investment was used to offer financing to
Charleston, S.C.-based MBT for its purchase of
Midwest Musical Instrument Inc., a Effingham,
Ill., distributor of guitars, drums and
electronic music equipment…
Daily Deal (New York, N.Y.) May 7, 2003
This year’s honorees will include entertainer
James Brown…, Savannah guitar and drum
manufacturers Fred and Dinah Gretsch…
The Atlanta Journal and Constitution, April 18,
2003
He opened about 50 stores from Florida to
California in five years, selling guitars,
drums, amps, electric keyboards and DJ
equipment…
Miami Herald, September 28, 2002
Applicant, on the other hand, maintains that confusion
is unlikely because of the differences in the marks, the
weakness of the term “DRAGON” in the music field, the
differences in channels of trade, the sophistication of the
Serial No. 76445495
6
consumers of the respective goods and the care they are
likely to exercise in making their purchasing decisions.
More specifically, applicant points to the fact that
applicant’s mark begins with the word “FLYING,” and that it
is often the first word in a mark that is most likely to be
impressed upon the mind of a purchaser. With respect to
the weakness of the registered marks, applicant has made of
record 15 third-party registrations and applications which
contain the word “DRAGON,” and numerous material from the
Internet concerning other uses of the word “DRAGON” as part
of various marks. The registered marks include DRAGONFLY
for electric guitars (Registration No. 2,353,915, issued
May 30, 2000); DRAGONWHISPERS for harps and accessories
therefor, namely, hardware, shells, sound boards, strings
and string sets, necks and columns (Registration No.
2,085,537, issued August 5, 1997); DRAGON for audio tape
recorders and for CD players (Registration No. 1,324,188,
issued March 12, 1985, and Registration No. 2,492,821,
issued September 25, 2001, both owned by the same entity);
RUSSIAN DRAGON for electronic device for monitoring how
closely a musician is playing along with the metronome
(Registration No. 2,620,829, issued September 17, 2002);
DRAGONFLOWER for sheet music and books, among other goods
and services (Registration No. 2,514,642, issued December
Serial No. 76445495
7
4, 2001); DRAGONS for CDs and audiotapes as well as
performances by a musical group (Registration No.
2,593,872, issued July 16, 2002); DRAGONHEART for audio and
videotape (Registration No. 2,461,931, issued June 19,
2001); DRAGONLORD for live performances by a musical group
(Registration No. 2,592,694, issued July 9, 2002); and
DRAGONEYESEVEN for live musical group performances
(Registration No. 2,603,547, issued August 6, 2002).
Applicant has also made of record information from the
Internet about the availability of a dulcimer offered under
the mark DRAGON, guitars offered under the mark DRAGONFLY,
and a publishing company under the name of “Dragon Music
Publishing.” Other Internet evidence shows a number of
bands with the word “Dragon” in their names, such as The
Dragon Band, The Round Rock Dragon Band, The Russian Dragon
Band, The Blue Dragon Band, The Marching Dragon Band, The
Celtic Dragon Pipe Band, The 2 Headed Dragon Band, The Holy
Dragons Band, Here Be Dragons Band, etc. It is applicant’s
position, therefore, that the term “DRAGON” is weak in the
music field and does not indicate a single source of
ownership, but many sources, and that purchasers have been
conditioned to expect that these various goods and services
come from different sources. Applicant also argues that
Serial No. 76445495
8
the Examining Attorney has “ignored” one portion of its
mark, the word “FLYING.”
Concerning the channels of trade, applicant has made
of record evidence showing that registrant has only
manufactured about 300 of the guitars in question, and that
only four were for sale when applicant filed its request
for reconsideration. According to applicant, consumers
could purchase both applicant’s and registrant’s goods at
only one store. Therefore, applicant maintains that there
is virtually no overlap in the channels of trade for
applicant’s and registrant’s goods. Also, registrant’s
goods, according to information from the Internet, may cost
between $11,000 and $40,000 due to their high quality and
limited numbers. Applicant’s goods on the other hand, cost
only up to $350. Because of the high cost of registrant’s
guitars, purchasers are likely to be very sophisticated and
extremely careful in purchasing them, according to
applicant. Accordingly, applicant contends that the
Examining Attorney has failed to consider the realities of
the marketplace and the actual channels of trade of the
respective goods. Applicant also argues that the third-
party registrations, introduced by the Examining Attorney,
showing that both drums and guitars may be offered under
the same mark by the same source are of limited probative
Serial No. 76445495
9
value in the face of applicant’s evidence showing differing
actual channels of trade.
With respect to the so-called weakness of the cited
registered marks, the Examining Attorney maintains that
only three registrations are in the same or similar field
of goods: DRAGONWHISPERS for harps and accessories
therefor, DRAGONFLY for electric guitars, and DRAGONFLOWER
for sheet music. The Examining Attorney maintains that
these marks have different connotations and create
different commercial impressions, and that a “dragonfly” is
an insect and not a mythical animal. As to the article
mentioning DRAGON dulcimers, it is the Examining Attorney’s
position that such an instrument (“[a]n instrument with
wire strings of graduated lengths stretched over a sound
box, played by striking with two padded hammers or by
plucking]”) is not normally offered or sold in the same
channels of trade as applicant’s and registrant’s musical
instruments. The Examining Attorney argues that while the
mark DRAGON “may be considered weak for a variety of
musical goods and services… registrant’s mark is not
precluded protection where the goods are considered to be
in the same field, namely musical instruments.” Examining
Attorney’s appeal brief, unnumbered pages 7-8.
Serial No. 76445495
10
Our determination of likelihood of confusion under
Section 2(d) of the Act 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. See
In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re E.I. du Pont de
Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
Two key considerations are the marks and the goods or
services. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)(“The fundamental
inquiry mandated by [Section] 2(d) goes to the cumulative
effect of differences in the essential characteristics of
the goods and differences in the marks.”).
Turning first to a consideration of the respective
goods, it is well settled that the registrability of
applicant’s mark must be determined on the basis of the
identification of goods as set forth in the involved
application and the identification of the goods in the
cited registrations. See Octocom Systems Inc. v. Houston
Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed.
Cir. 1990) and Canadian Imperial Bank of Commerce, N.A. v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987). Also, it is settled that, absent any specific
limitations in applicant’s or registrant’s identifications
Serial No. 76445495
11
of goods, the issue of likelihood of confusion must be
determined by looking at all the usual or normal channels
of trade for the respective goods. See CBS Inc. v. Morrow,
708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983); and Squirtco
v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir.
1983)(“There is no specific limitation and nothing in the
inherent nature of Squirtco’s mark or goods that restricts
the usage of SQUIRT for balloons to promotion of soft
drinks. The Board, thus, improperly read limitations into
the registration”). See also Schieffelin & Co. v. Molson
Companies Ltd., 9 USPQ2d 2069, 2073 (TTAB 1989)
(“[M]oreover, since there are no restrictions with respect
to channels of trade in either applicant's application or
opposer's registrations, we must assume that the respective
products travel in all normal channels of trade for those
alcoholic beverages”); and In re Elbaum, 211 USPQ 639, 640
(TTAB 1981).
Here, there are no restrictions in the identification
of goods in registrant’s registrations and it would be
improper to read limitations into that identification of
goods. The respective goods, as identified, are drums and
percussion instruments (which may include, aside from
drums, such instruments as chimes, cymbals, triangles,
gongs, xylophones, tambourines and castanets) and guitars.
Serial No. 76445495
12
These goods are, of course, different musical instruments.
However, as our primary reviewing Court stated in the case
of Hewlett-Packard Company v. Packard Press, Inc., 281 F.3d
1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002): “Even if the
goods and services in question are not identical, the
consuming public may perceive them as related enough to
cause confusion about the source or origin of the goods and
services.”
Applicant’s drums and percussion instruments and
registrant’s guitars are all musical instruments which are
likely to be sold in the same types of stores-—music
stores, or perhaps music departments of large department
stores. These goods are sold to members of the general
public and to professional musicians. And the evidence of
record suggests that these types of goods may emanate from
the same manufacturer. For example, the third-party
registrations suggest that the same source may offer drums
and guitars under the same mark. See In re Infinity
Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1218 (TTAB
2001); and In re Albert Trostel & Sons Co., 29 USPQ2d 1783
(TTAB 1993). Indeed, one of the numerous third-party
registrations of record shows that applicant itself has
registered the mark YAMAHA for a variety of musical
instruments including guitars and drums as well as other
Serial No. 76445495
13
percussion instruments. And the Nexis evidence further
indicates that there are common manufacturers of drums and
guitars.
It is true, as applicant argues, that these goods may
be somewhat expensive and may be purchased with some degree
of care. However, in view of the way in which we must
consider these goods (as identified, and not as the very
expensive guitars that registrant may actually sell), these
goods may include instruments of varying prices and
qualities, and are purchased by members of the general
public.
Turning next to the marks, although they must be
compared 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. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985)(“On the other hand, in articulating reasons for
reaching a conclusion on the issue of likelihood of
confusion, 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.”). We agree with the Examining Attorney that
each mark is dominated by the word “DRAGON.” Any
Serial No. 76445495
14
differences in sound, appearance and connotation of
applicant’s and registrant’s marks can be attributed to the
word “FLYING” in applicant’s mark. However, it is our
opinion that this difference is not sufficient to avoid the
likelihood of confusion.
Moreover, the third-party registrations do not show
any “weakness” of the mark DRAGON for musical instruments.
The third-party registrations referred to by applicant are
not evidence of use of those marks in the marketplace, and
they do not show that the public is familiar with those
marks. See AMF Inc. v. American Leisure Products, Inc.,
474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973)(“The existence
of [third party] registrations is not evidence of what
happens in the market place or that customers are familiar
with them...”). There is no evidence, for example,
relating to the nature and extent of the use of these
marks. Moreover, while third-party registrations may be
looked at in the same manner as a dictionary to determine a
term’s significance in a particular trade, it is not seen
how the registrations containing this word shed any light
on this significance. The mark DRAGON appears to be an
arbitrary mark for musical instruments.
Furthermore, these third-party registrations cover
marks with different meanings and commercial impressions
Serial No. 76445495
15
(DRAGONWHISPERS, DRAGONFLY, DRAGONLORD, DRAGONFLOWER,
DRAGONHEART) and/or are for different goods and services
(entertainment services in the nature of a musical group,
sheet music, audio and videotape, CD players and audio tape
players, etc.). The single use of DRAGON for dulcimers,
from the Internet, which may not be a widely available or
common musical instrument, does not detract from the
arbitrary nature of this mark for musical instruments, and
does not mean that the mark DRAGON is a weak one for
musical instruments.3 In sum, we do not believe that the
registered mark DRAGON has been shown to be weak.
Finally, any doubt with respect to the issue of
likelihood of confusion must be resolved in favor of the
prior user and registrant. See In re Hyper Shoppes (Ohio)
Inc., 837 F.2d 840, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988);
and In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d
1565, 223 USPQ 1289 (Fed. Cir. 1984). Applicant had an
almost unlimited number of marks to choose from but chose a
mark too similar to a registered mark for closely related
musical instruments.

3 The record also includes an Internet Web page showing the
availability of a DRAGON guitar strap. However, the Examining
Attorney states that it is not clear that this product is not one
of registrant’s products.
Serial No. 76445495
16
We conclude, therefore, that a purchaser familiar with
DRAGON and DRAGON 2000 guitars who then encounters FLYING
DRAGON drums and percussion instruments, perhaps in the
same store, is likely, we believe, to think that these
musical instruments all come from the same source. That is
to say, the average purchaser of a FLYING DRAGON drum or
percussion instrument is likely to believe that these goods
come from the same entity that made or sponsored the DRAGON
and DRAGON 2000 guitars.
Decision: The refusal of registration is affirmed.