Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 SAAB-SCANIA AKTIEBOLAG AND SAAB AUTOMOBILE AB JOINED AS PARTY PLAINTIFF
v.
SPARKOMATIC CORPORATION
March 17, 1993
Opposition No. 80,485 to application Serial No. 73/746,546 filed August 16, 1988
Graham, Campaign & McCarthy, P.C. for Saab-Scania Aktiebolag
J. Timothy Hobbs of the firm of Dykema Gossett for Sparkomatic Corporation
Before Rice, Cissel and Hanak
Members
Member
Sparkomatic Corporation filed an application on August 16, 1988 to register the mark "9000 SERIES" on the principal register for "automotive stereo speakers." [FN1] A timely notice of opposition was filed on May 15, 1989 by Saab-Scania Aktiebolag (hereinafter "Saab"), a joint stock company in Sweden, whose assignee, Saab Automobile AB, was joined by the March 19, 1991 order of the Board. (Both of these entities will be referred to hereinafter simply as "opposer.") As grounds for opposition opposer asserted prior use of the following trademarks for automobiles and automobile accessories: "9000"; "9000 Turbo"; "9000 S"; "9000 I"; "9000 CD"; "Saab 9000"; "900"; "900 Turbo"; "900 S"; "900 I"; and "Saab 900." Opposer asserted that it sells audio equipment, including radios and speakers, which is installed in the cars which bear the above marks; and that applicant's mark, as applied to applicant's goods, so resembles opposer's marks that confusion is likely.
Applicant's answer denied that confusion is likely and asserted as an affirmative defense that "opposer uses the numerals 9000 and 900 only as model designations and not as trademarks, and, consequently the said designations do not function as indicators of the source or origin of opposer's goods." (p. 2 of the answer).
A trial was conducted and on November 10, 1992 an oral hearing was held before the Board.
The record includes the application of Sparkomatic; the testimony, with exhibits, of Michael Kornowa, opposer's national merchandising manager; of Andrew Bergstein, applicant's marketing director; of Edward Proctor, an employee of the Ford Motor Company's Henry Truck Operations Division; and of Darrell Black, a paralegal at applicant's law firm; and copies of the following registrations of opposer:
Reg. No. Mark Issue Date
--------- ---------- ----------
1,607,411 9000 S 7/24/90
1,608,151 9000 TURBO 7/31/90
1,611,985 9000 CD 9/4/90
1,621,091 9000 11/6/90
the goods are identified in each registration as "automobiles and structural parts thereof." [FN2]
The issue before us is whether confusion is likely. In view of opposer's registrations, priority is not in issue with respect to the marks and goods shown therein. In any event, the evidence establishes opposer's use of its various "9000" marks before applicant's adoption of "9000 SERIES".
*2 Evaluation of the record in conjunction with the criteria set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA1973), leads us to conclude that applicant's mark, "9000 SERIES," as applied to applicant's automotive speakers, so resembles opposer's "9000" marks for automobiles that confusion is likely. The marks are quite similar and the products, as identified in the application and registration, respectively, are closely related.
The dominant portion of applicant's mark is opposer's mark in its entirety. It is well settled that "a subsequent user may not appropriate another's entire mark and avoid likelihood of confusion ... by merely adding descriptive or otherwise subordinate matter to it." R.J. Reynolds Tobacco Co. v. R. Seelig & Hille, 201 USPQ 856 (TTAB1978). In that case the additional matter was not descriptive or even suggestive of the goods, but rather was simply less significant. The marks were "WINSTON" for cigarettes and "SIR WINSTON" for tea.
The word "SERIES" in applicant's mark is highly suggestive, if not descriptive, of a line or group of products offered by applicant. One dictionary definition of the term is "a group of usu. three or more things ... standing or succeeding in order and having a like relationship to each other." [FN3] Thus, applicant's products which bear the "9000 SERIES" mark will be viewed as speakers in a line or series of such goods. As part of such a trademark, the word "SERIES" clearly does not have the significance as a source indicator that "9000" does.
Because the dominant element of applicant's mark is opposer's entire mark, "9000," and applicant's addition thereto of the word "SERIES" does little to distinguish the marks as to source, we find that the marks of the parties, when considered in their entireties, are so similar that their use on the same or related goods would be likely to cause confusion.
After the similarity of the marks, the next factor set forth in the du Pont case, supra, is the similarity and nature of the goods as they are described in the application and registrations, respectively. Along with this consideration, we must evaluate the similarity of the respective trade channels and the conditions under which, and the buyers to whom, sales are made.
Applicant devotes a substantial amount of testimony and argument to attempting to show differences in the trade channels, and between purchasers of applicant's speakers and of opposer's automobiles and automobile parts. The evidence establishes that applicant's automotive audio equipment is sold through auto parts stores and mass marketers. The record reveals no instances where applicant's goods have been sold to or through opposer's dealerships. Applicant argues that even though the same people who buy new cars from opposer may later be in the market for applicant's equipment, these customers will not expect that applicant's goods emanate from or are sponsored or endorsed by opposer because the products have traveled in different trade channels.
*3 Were the goods of the parties restricted or limited in the application and registrations, respectively, to reflect the current trade channel restrictions of the parties, applicant's argument might have some persuasive effect. The fact is, however, that neither the application nor opposer's registrations are restricted as to trade channels or prospective purchasers. In the absence of limitations in the application or the registrations, we must base our decision on the assumption that the products move through all the ordinary and usual channels of trade for such goods to all the usual customers for these products. See: Kangol Ltd. v. KangaROOS U.S.A. Inc., 23 USPQ2d 1945 (Fed.Cir.1992); Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1815 (Fed.Cir.1987); CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed.Cir.1983); Toys "R" Us, Inc. v. Lamps R Us, 219 USPQ 340 (TTAB1983) and cases cited therein; S. Lefkowitz and J. Rice, Adversary Proceedings Before the Trademark Trial and Appeal Board, 75 Trademark Rptr. 323, at 337 (1985). When we operate under these assumptions and disregard the evidence of the actual restrictions or limitations as to present trade channels and customers of the parties, we must conclude that stereo speakers for cars are closely related to cars and their structural parts. Mr. Kornowa's testimony reveals that auto dealerships sell replacement or enhancement components for the audio systems with which the cars they sell come equipped. [FN4]
The issue is not whether opposer has ever sold its cars or sound equipment for them in discount stores or through mass merchandising outlets, nor is it whether applicant's products have ever been sold or installed at opposer's dealerships. The issue is whether customers would have reason to believe that dealers or other independent automotive businesses supply, sell or install automotive speakers which originate from or are authorized or approved by the manufacturers of the automobiles.
The record establishes that purchasers of speakers for cars do have a reasonable basis to expect such goods to originate from a common source if the same or similar mark is used on both the automobiles and the speakers. This is so even if applicant's goods and opposer's products do not actually cross paths in the marketplace. Mr. Kornowa testified that he has personally observed in dealerships where opposer's cars are sold that the parts or accessory departments offer for sale audio equipment and other accessories which are not made by opposer or by the manufacturer of any other autos which are also sold by those particular dealers. (p. 61 of his testimony). His testimony is that independent wholesalers of non-OEM accessories such as speakers sell to parts department managers based upon the prices they can offer on such aftermarket products. (p. 94). This Board has repeatedly affirmed refusals to register similar marks for automobiles, on the one hand, and components or accessories, on the other. See: In re Jeep Corp., 222 USPQ 333 (TTAB1984); In re Mitsubishi Jidosha Kogyo Kabushi Kaisha, 19 USPQ2d 1633 (TTAB1991), and cases cited therein. Our decision in the case at hand is consistent with the reasoning in these decisions.
*4 Moreover, even if we were to consider the actual marketing environment for the cars and speakers of these parties, the testimony of Mr. Kornowa establishes that applicant's speakers could end up being sold at opposer's dealerships. The record shows that some of opposer's dealers sell replacement speakers not supplied by opposer; that these dealers purchase such goods from independent wholesalers; and that applicant sells its goods to such independent wholesalers. Although the record does not establish the actual occurrence of this convergence of the products' trade channels, it does demonstrate the likely way it could occur.
Further, even if automobile dealers did not sell replacement, non-OEM speakers through their dealerships, confusion is still likely. A car owner who is looking for replacement speakers at a mass merchandiser or an auto accessory or parts store, upon encountering speakers bearing a mark which is the same as or substantially similar to the trademark on his or her car, is likely to assume a common source or sponsorship, or at least endorsement of the accessory by the automaker.
The record establishes that opposer's "9000" marks are arbitrary trademarks in which opposer has established good will, such that opposer is entitled to protection against use of similar marks on related goods. Opposer sells cars under two series of trademarks. The Saab 9000 series is one group of products and the second group uses "900" and various combinations of "900" with other matter to identify particular automobiles. Opposer spends about forty million dollars a year advertising these cars, with sales in 1991 of about thirteen thousand autos. From 1984 through 1989, opposer had revenue of over $1.125 billion from the sale of roughly 45,000 cars in the United States. While the record does not provide any basis for reaching the conclusion that these totals are either large or small relative to those of other manufacturers, even if we assume the latter, opposer can still prevail in this action. Its cars do not have to be comparatively big sellers and its marks do not even have to be particularly well known to the general public. Even if public awareness of the "9000" series of marks is not especially great, the "9000" marks are certain to be known and recognized by purchasers of opposer's "9000" series cars, and these are the very people who are likely to be confused by applicant's "9000 SERIES" speakers when such people seek to replace the equipment with which their "9000" cars came equipped.
That each model in opposer's "9000" series of cars uses a variant of the "9000" mark as a model designation does not obviate the fact that these designations are also trademarks. Neither the mark "9000" nor any other mark used on one of opposer's "9000" series of cars suffers from any inherent deficiency as a trademark. "9000" is not merely descriptive or even suggestive of any aspect of opposer's autos, nor is it a laudatory term as applied to them. It is used in the manner of a mark as well, so applicant's charge that it is no more than a model designation is without a factual basis. Moreover, in the face of opposer's unchallenged subsisting registrations, without counterclaiming for cancellation of them, applicant cannot be heard to argue that opposer's marks are not proper subject matter for registration.
*5 Applicant argues that the use by others of similar marks on related products is evidence that confusion is unlikely. The record shows that Ford uses "9000" as a trademark for heavy duty trucks [FN5] and that Mallory, Inc. uses "COMP 9000" for distributors used as modifications for high performance domestic cars. These uses of these marks do not establish that opposer's mark is a weak one which cannot properly be asserted as a bar to registration of applicant's mark.
The use of "COMP 9000" for an electromechanical hop-up component like an aftermarket distributor suffers several disabilities in this regard. The addition of the word "COMP," which, as it is applied to these goods, is suggestive of "competition," results in a mark significantly different in sound and appearance, as well as in connotation, from "9000." As with the "9000" mark used on Ford's heavy duty trucks, "COMP 9000" is used in connection with products which are much farther removed from ordinary passenger cars than stereo speakers for automobiles are. Evidence that these two marks are used in connection with these two types of products does not establish that opposer's trademark use of "9000" on automobiles cannot be the proper basis for finding "9000 SERIES" unregistrable for stereo speakers for automobiles. These third-party marks do not establish that prospective purchasers of automobiles or automotive stereo speakers are so familiar with "9000" as a trademark or as a component of trademarks for these goods that such people will look to other elements of marks in order to distinguish them.
Both parties acknowledge that there has been no actual confusion, but we do not find this surprising in light of the differences in the actual trade channels used by the parties, as well as the relatively short period of contemporaneous use.
When all of the du Pont factors on which we have evidence in the case at hand are considered, we find ample basis for concluding that applicant's use of "9000 SERIES" on automotive stereo speakers is likely to cause confusion in light of opposer's series of previously used and registered "9000" marks for automobiles. Accordingly, the opposition is sustained and registration to applicant is refused.
J.E. Rice
R.F. Cissel
Members, Trademark Trial and Appeal Board
FN1. S.N. 73/746,546; use since October 21, 1988 was claimed.
FN2. Registrations of the "900" marks and the "9000 I" mark referred to in the pleadings were not made of record. Although the record contains evidence of opposer's use of its "900" marks, we have focused our attention primarily on the pleaded "9000" series of marks because they are the marks which most closely resemble the mark of applicant.
FN3. Webster's Third New International Dictionary (1976).
The evidence in the case before us also shows that opposer has used the word "SERIES" in connection with "9000," albeit such use is subsequent to applicant's use as part of its trademark. Opposer's Exhibit 10-B is a 1990 sales brochure for the "Saab 9000 SERIES." It repeatedly refers to the features and characteristics of opposer's "9000 Series" automobiles, which are identified as the "9000," the "9000 S," the "9000 CD," and the "9000 TURBO." This usage by opposer exemplifies the highly suggestive, if not descriptive, nature of the word "SERIES" as applied to a line of products.
FN4. p. 69: "You can buy after-market accessories in car dealerships including some of the dualled dealerships we have." Speakers are aftermarket accessories. Non-OEM accessories sold in opposer's dealerships include speakers and radio components. (p. 93).
FN5. Applicant objects to the testimony of opposer's witness Mr. Kornowa on this matter because of the leading nature of the questions he was asked. Opposer argues that leading questions are permissible in this instance because Mr. Kornowa had been shown to be qualified as an expert witness as to the matters about which he was testifying. Whether leading questions were permissible does not need to be resolved, however, because the issue to which this testimony relates, whether or not Ford's use of "9000" is trademark use or is use as only a grade designation, would be resolved in favor of the position of applicant (which contends that Ford's use of "9000" is trademark use) even if we considered all of Mr. Kornowa's testimony relating to this issue. Mr. Proctor's testimony and the exhibits to it make it clear that Mr. Kornowa's conclusion that Ford uses "9000" only as a grade designation is erroneous. Mr. Kornowa's testimony on the ultimate issue of whether confusion is likely is not determinative on that issue either. The Board must reach its own conclusions on the ultimate issues before it, based on the record in each case, rather than simply adopting the opinion of particular witnesses, even if such witnesses are experts. Tanners' Council of America, Inc. v. Scott Paper Co., 185 USPQ 130, (TTAB1975); The Mennen Co. v. Yamanouchi Pharmaceutical Co., Ltd. 203 USPQ 302 (TTAB1979). While Mr. Kornowa's speculation that applicant's mark on speakers might mislead people into thinking the speakers were an authorized accessory for Saab did not surprise us, it was not the basis for our reaching the same conclusion.
DISSENTING OPINION
*6 Opinion by E. W. Hanak
Member
I do not concur with the majority that there exists an "ample basis for concluding that applicant's use of 9000 SERIES on automotive stereo speakers is likely to cause confusion in light of opposer's series of previously used and registered 9000 marks for automobiles." The majority bases its conclusion, in part, on its determination that the uses by third parties of 9000 as a trademark for trucks and of COMP 9000 as a trademark for automotive parts "do not establish that opposer's [9000] mark is a weak one ..."
However, the majority fails to consider opposer's own evidence which demonstrates that purchasers and users of automobiles have been exposed to the same or very similar numerical designations utilized as trademarks for various makes of automobiles (not even to mention trucks and automotive parts). For example, opposer's evidence establishes the use on automobiles of 5000 by both Audi and Volkswagen; the use on automobiles of 6000 by Pontiac and 600 by Dodge; and the use on automobiles of 300 D and 300 E by Mercedes, 300 Series by BMW, and 300 ZX by Nissan. (Kornowa deposition 38-40, 80; opposer's exhibits 7, 17). Because consumers have been exposed to the use of the same or very similar numerical designations as trademarks on identical types of goods (i.e. automobiles), this indicates that these consumers would not be confused by the use of similar (but not identical) numerical designations for related but obviously different types of goods (i.e. automobiles and structural parts thereof versus automotive stereo speakers). [FN6]
FN6. Opposer claims that its 9000 marks are famous, and are thus entitled to a broader scope of protection. Indeed, opposer contends that "it would not be overreaching to assert that there is no more notorious 'number' trademark for automobiles in the United States today than [opposer's] 9000 family." (Opposer's brief p. 13). Opposer's claim of fame is in no way supported by the record. First, opposer has provided absolutely no information showing its sales of or advertising for its 9000 automobiles. The only sales and advertising figures provided by opposer encompass all SAAB models. (Kornowa deposition 51- 52, 73). Second, even considering opposer's sales and advertising figures for all SAAB automobiles, it is noted that opposer has failed to put these amounts into perspective by comparing them to sales and advertising figures for all cars sold in the United States. We are left to assume that sales of all SAAB automobiles (much less just SAAB 9000 automobiles) constitute but a tiny fraction of overall United States car sales. Third, in the vast majority of the advertising and promotional materials made of record by opposer, opposer's secondary 9000 marks are always accompanied by--and usually overshadowed by-- opposer's primary SAAB mark. Finally, it is possible, of course, for trademarks used on low volume products to become famous through, for example, long use and significant unsolicited publicity. See Rolls-Royce Motors Ltd. v. Custom Cloud Motors, Inc., 190 USPQ 80 (S.D.N.Y.1976) and Rolls-Royce Motors Ltd. v. A & A Fiberglass, Inc., 428 F.Supp. 689, 193 USPQ 35, 45 (N.D.Ga.1976). However, opposer has not presented any such evidence indicating that its 9000 marks have become famous, nor has opposer presented survey evidence showing fame. In short, opposer's 9000 marks are simply not entitled to "more protection against confusion" as are famous marks. Kenner Parker Toys Inc. v. Rose Art Industries Inc., 963 F.2d 1350, 22 USPQ2d 1453, 1456 (Fed.Cir.1992).