Tuesday, May 08, 2007

TTAB Turns Deaf Ear to Bose Corp.'s Petition for Cancellation of "ELECTRONIC LIFESTYLES" Registrations

Although the TTAB found similarities in the marks and overlapping channels of trade, and despite the strength of Bose Corporation's registered mark LIFESTYLES for audio speakers and music systems, the differences in the involved goods and services led the Board to dismiss a petition for cancellation aimed at four registrations for the mark ELECTRONIC LIFESTYLES -- for publications, consulting services, educational services, and trade show services, all relating to electronics. Applicant CEDIA hit a grand slam by winning on four issues: abandonment, fraud, likelihood of confusion, and laches. Bose Corp. v. Custom Electronic Design & Installation Ass'n, Cancellation No. 92042327 (April 30, 2007) [not precedential].

Abandonment: Bose's abandonment claim was predicated on certain discovery responses of CEDIA, but the Board was unimpressed. It noted that "Petitioner mistakenly characterizes a response to an interrogatory as an admission," and it found CEDIA's document production adequate to show continuous use of the mark ELECTRONIC LIFESTYLES for all of the goods and services in the registrations.

Fraud: Bose's fraud claim likewise fell flat. Bose asserted, based on one interrogatory response, that CEDIA committed fraud when it filed its applications and one one of its Declarations of Use. The Board, however, found Bose's evidence "nowhere near sufficient to prove fraud." "Fraud must be proven to the hilt and reliance on this single interrogatory response, in particular given the objections and no follow up inquiry or motion to compel, is quite misplaced."

Likelihood of Confusion: Bose's Section 2(d) claims applied to only three of CEDIA's registrations, since the registration for publications was already five-years old. In a nutshell, the Board found that "petitioner's loudspeakers and music systems and respondent's trade show, educational, and technical advice services are too dissimilar for source confusion to result." Noting the sophistication of the consumers involved and the lack of actual confusion over eight years of contemporaneous use, it found Bose's "likelihood of confusion theory to be speculative and that the extent of potential confusion is de minimis at best."

Laches: For the sake of completeness, the Board considered CEDIA's affirmative defense of laches (applicable only to Bose's Section 2(d) claims). It calculated the length of the delay as approximately four years (from the date of the three service mark registrations to the filing of the petition for cancellation in 2003). Bose was "completely silent" as to the reasons for the delay, and therefore the Board found the delay to be "undue." Next, it ruled that CEDIA had been prejudiced by the delay because it "invested in and promoted its ELECTRONIC LIFESTYLES brand." Accordingly, laches was established. And in view of its finding of no likelihood of confusion, the Board unsurprisingly concluded that confusion was not "inevitable" and therefore that CEDIA's laches defense was valid.

Finally, the Board addressed CEDIA's affirmative defense that it is at least entitled to registration with the additional restriction that its goods and services "relate to or are in connection with" trade association activities for business specializing in designing and installing custom electronic systems. The Board stated in footnote 11: "If on appeal, the Board's decision is reversed as to the unrestricted identifications but affirmed as to the restricted identification, on remand the Board will amend the registrations to include the pleaded restriction."

Text Copyright John L. Welch 2007.


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