TTABlog Test: Are Phonograph Records and Audio Equipment Related Under Section 2(d)?
Swan Song, Inc. opposed an application to register the mark SWAN SONG AUDIO for "“Consumer electronic products, namely, audio amplifiers, audio speakers, audio receivers, electrical audio and speaker cables and connectors, audio decoders, video decoders, speakers, power conversion devices, power converters, and power inverter" [AUDIO disclaimed], on the ground of likelihood of confusion with the registered mark shown below, for "phonograph records." Opposer asserted that the goods are related because "[p]honograph records, to be played and heard, must be played on a device (turntable) which requires a receiver, speakers and/or an amplifier." How do you think this came out? Swan Song, Inc. v. Swan Song Audio LLC, Opposition No. 91240005 (February 26, 2020) [not precedential] (Opinion by Judge Cheryl S. Goodman).
The marks: Although opposer's mark may, to some, appear to be WAN ONG and Design, the Board saw it as SWAN SONG with each "S" being a stylized version of a swan. It found the dominant term in applicant's mark to be, not surprisingly, SWAN SONG. As to Opposer's mark, the Board observed once again that for a word-plus-design mark, the word portion is the part most likely to be impressed upon the minds of consumers. Moreover, each design portion "appears to suggest a swan" and the Board had "no doubt that consumers would recognize each design as a highly-stylized letter 'S.'" The Board concluded that the marks are similar in sound and appearance and convey similar meanings (i.e., the final performance or act) and similar commercial impressions.
The Goods: Opposer submitted Internet evidence showing that some on-line retail outlets offer phonograph records and audio equipment, but the evidence did not show that the goods were sold under the same mark. Opposer also submitted more than 60 third-party registrations that purportedly covered phonograph records and audio equipment. The Board found that only 14 of them had probative value, since the rest covered a wide variety of diverse and unrelated goods.
The Board concluded that the goods are related. "It is common knowledge that phonograph records are used with audio equipment." The registrations also show that the goods are "complementary and thus related as they are offered under the same mark."
The Internet evidence shows on its face that consumers may have been exposed to the goods being sold in the same retail location. Additionally, consumers familiar with Opposer’s mark for phonograph records could well believe that Applicant’s mark reflects a brand extension into audio equipment. [I think a survey could have shown otherwise - ed.].
Channels of Trade: Opposer's flimsy Internet evidence regarding retail sales was enough to convince the Board that the trade channels overlap.
Conclusion: The Board found confusion likely and it sustained the opposition.
Read comments and post your comment here.
TTABlog comment: How did you do? Do you think, in the real world, confusion is likely?
Text Copyright John L. Welch 2020.
posted by John L. Welch @ 2/28/2020
4 comments
4 Comments:
As someone who is a consumer of audio equipment and records, this is a poor decision. It seems that the "internet evidence" so heavily relied on by the Examining Attorneys these days has done away with the principle that just because goods are sold "under the same roof" doesn't mean that there is a likelihood of confusion, and the TTAB has bought in.
Also, I read 15 USC 1052 as having a presumption in favor of registration. Again, weak internet evidence applied by Examining Attorneys frequently, and unfairly, shifts this burden. I agree with the Editor that a survey would likely have produced a different outcome, but why should an applicant have to obtain an expensive survey to overcome a weak case by the Office?
Something must be done to fix the broken state of the registration system when it comes to "recordings". A trademark on a recording can mean several things to a consumer (performer, label..). In this case Swan Song Records is Led Zeppelin's recording company. There is no way that it can be shown that a recording company has ever made or will ever make audio equipment such as the goods in the application. The Board got it way wrong and should have looked more carefully at the 14 registrations to see what they were really reflective of.
Companies still sell phonograph records? Who knew.
Next case will ask whether quill and parchment is related to word processors. ;)
It’s worth noting that examining attorneys had nothing to do with this decision. None. This was an opposition. That means an examining attorney made a determination regarding likelihood of confusion and, ultimately, approved the application for publication.
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