Bose Corp.v.Navitar, Inc.

Trademark Trial and Appeal Board

Mar 31, 1999

No. 91100151 (T.T.A.B. Mar. 31, 1999)

Hearing: Paper No. 26
May 20, 1998 RLS/cj
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MARCH 31,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Bose Corporation
v.
Navitar, Inc.
_____
Opposition No. 100,151
to application Serial No. 74/406,004
filed on June 28, 1993
_____
Charles Hieken of Fish & Richardson for Bose Corporation
Herbert Cohen of Wigman, Cohen, Leitner & Myers, P.C. for
Navitar, Inc.
______
Before Simms, Seeherman, and Walters, Administrative
Trademark Judges.
Opinion by Simms, Administrative Trademark Judge:
Bose Corporation (opposer), a Delaware corporation, has
opposed the application of Navitar, Inc. (applicant), a New
York corporation, to register the mark ROMMATE for “video
display apparatus for displaying information contained on
Opposition No. 100,151
2
photo CD and CD ROM.” 1 In the notice of opposition, opposer
alleges that applicant’s mark used in connection with its
goods so resembles opposer’s mark ROOMMATE, previously used
and registered by opposer for “loudspeaker systems,” 2 as to
be likely to cause confusion, to cause mistake or to
deceive. Opposer also alleges that applicant’s mark falsely
suggests a connection with opposer. 3 In its answer,
applicant has denied the essential allegations of the notice
of opposition.
The record of this case consists of testimony (and
exhibits) taken by each party, a status and title copy of
opposer’s pleaded registration, relied upon by notice of
reliance, as well as the application herein opposed. Briefs
were filed and an oral hearing was held.
Opposer’s Record
According to the testimony of Mr. Robert Gierschick,
opposer’s senior marketing planning manager, opposer’s
ROOMMATE speaker system, which may be used with portable CD
players or a personal stereo system, could be used with a
“video display apparatus,” which the witness stated could be
a television monitor. Sales of opposer’s ROOMMATE I

1 Application Serial No. 74/406,004, filed June 28, 1993, based
upon applicant’s allegation of a bona fide intention to use the
mark in commerce.
2 Registration No. 1,321,919, issued February 26, 1985, Section
8 filed, Section 15 acknowledged.
3 Although opposer alleged this ground for opposition under
Section 2(a) of the Act, 15 USC §1052(a), opposer has not argued
Opposition No. 100,151
3
speakers since 1984 have exceeded $10 million dollars, with
over 100,000 units being sold. Since 1989, opposer has sold
at least 75,000 VIDEO ROOMMATE speakers, totaling at least
$7 million dollars. Since 1991, opposer has sold at least
10,000 Bose ROOMMATE computer monitor speakers, with sales
exceeding $1 million. According to the witness, opposer’s
speakers are sold through the same channels as “video
display apparatus” used for displaying information on photo
CDs and CD-ROMs. According to Mr. Gierschick, there is an
overlap of purchasers of speakers and video display
apparatus.
Applicant’s Record
Applicant took the testimony of its president, Mr.
Julian Goldstein, and Mr. Denny Bell, the vice president of
sales of Professional Products Incorporated, a dealer for
applicant’s video products. Applicant, which began business
as a lens company, modifies Kodak photo CD players into
video or electronic slide projectors with random access
picture selection by adding various video features. Having
previously used the marks VIDEOMATE and MICROMATE for other
products, applicant first used the mark ROMMATE in January
1993 in connection with its video display apparatus at a
trade show. Applicant’s first order was received in
February 1994. According to Mr. Goldstein, applicant’s

this ground in its briefs. Accordingly, we will not further
consider it.
Opposition No. 100,151
4
goods are not available on the consumer market in retail
electronic stores, but rather applicant sells its goods to
audiovisual dealers who are not in the retail business. The
typical user of applicant’s equipment in the professional
market is the corporation for its corporate boardroom.
Q. How would you describe the purchaser
of the RomMate product?
A. They are very sophisticated,
knowledgeable customer [sic] who
does a lot of research. The typical
purchaser of a Navitar RomMate is a
large corporation that’s designing a
new fancy boardroom just like this
that has a video presentation system
in it and they want multiple inputs
into that video projector just in
case someone brings that media into
the room.
Some presenters like to present
with slides. Some presenters like
to present with the computer. Some
presenters like to present with flip
charts. Some presenters like to
present with documents. So in the
boardroom they will have a document
to video, a slide to video, a photo
CD to video, a microscope to video,
so just in case any presenter ever
came into that boardroom they would
have the capability displaying
his media on the video projector for
the group.
Goldstein dep., 10-11.
Mr. Goldstein also testified to the nature of the
purchasing process of applicant’s equipment.
A. Well again, typically from the time
we start talking to a customer
until the time we get the order,
it’s upwards of six months to a
year. We have to demonstrate the
product and they have to decide
Opposition No. 100,151
5
they want to buy the product. It
has to be approved by the budget
committee, then it has to go out
for bid, and then it has to get
installed. And from the time that
someone looks at it to the time
they actually install it could be
upwards of a year.
Goldstein’s dep., 15-16.
Mr. Bell, among other things, testified that the
respective marks have different meanings.
Q. What does the term RomMate mean to
you?
A. Well, Rom, anytime you hear the word
Rom it’s specifically talking about
a computer-based disk. CD Rom, Rom.
It’s always about computer type of
products. A photo CD Rom would be,
could also be a software product.
Any lot of software products are put
out on CD Roms. So anytime I hear
Rom, it references computer. You
know, I mean, it’s just an automatic
response.
Bell dep., 21-22.
Comparing the products of the parties, Mr. Bell, at
23, testified:
A. Well, essentially one [opposer’s] is
an audio product, a speaker,
consumer powered speaker system more
or less. And the RomMate is an
industrial video product. I mean in
a nutshell that’s the difference.
One’s used for one thing and one’s
used for another thing.
Mr. Bell did testify, however, that he sometimes installed a
professional line of speakers made by opposer in corporate
boardrooms. Bell dep., 24, 29. However, these
Opposition No. 100,151
6
installations involved ceiling speakers driven by high-end
audio amplifiers. Applicant’s witnesses testified that
there have been no instances of actual confusion involving
the marks of the parties.
Arguments of the Parties
Essentially, opposer argues that applicant’s mark
ROMMATE is sufficiently similar to opposer’s mark ROOMMATE
in sound and appearance that confusion is likely. With
respect to the goods, opposer argues that there is no
restriction in either its registration or in applicant’s
application as to trade channels or class of potential
purchasers and that opposer’s loudspeakers may be and are
sold through the same channels of trade to the same class of
purchasers as applicant’s photo CD players. Opposer also
argues that, to the extent there may be any doubts as to the
question of likelihood of confusion, those doubts should be
resolved against the newcomer.
Applicant, on the other hand, argues that the respective
marks are different in sound, appearance and meaning. With
respect to meaning or connotation, applicant argues that the
term “ROM” is an acronym for “read-only memory,” so that
applicant’s mark connotes CD-ROMs, which can be used to
store visual images. With respect to the goods, it is
applicant’s position that opposer’s loudspeakers are compact
powered speakers used to connect to televisions, home
Opposition No. 100,151
7
computers, CD players and personal stereo. Applicant’s
product, on the other hand, is not a consumer audio product
but rather a high-end audiovisual product, which is custom-
ordered by sophisticated purchasers, and is not an impulse-
purchase item. While applicant’s goods include an audio
capability, photo CDs have no sound and a customer,
therefore, has no use for the audio function, applicant
contends. Also, applicant argues that the fact that its
dealers may also sell some models of opposer’s speakers does
not lead to the conclusion that confusion is likely.
Further, applicant notes that, in view of the differences in
the goods, these goods travel in different channels of
trade, one to retail electronic stores to the general public
and the other to audiovisual dealers involved in high-end
custom audiovisual equipment selling to large corporations.
Applicant states that, despite almost five years of
contemporaneous use, there have been no instances of actual
confusion, and that the potential for confusion is
negligible.
Discussion and Opinion
First, it is clear that there is no issue with respect
to priority in this case. See King Candy Co. v. Eunice
King’s Kitchen, Inc., 182 USPQ 108 (CCPA 1974) and Flow
Technology Inc. v. Picciano, 18 USPQ2d 1970 (TTAB 1991).
Not only has opposer made of record its pleaded
Opposition No. 100,151
8
registration, but the testimony indicates that opposer has
used its mark since 1984.
Concerning the marks, while it is true that the two
marks are not identical, there are obvious similarities, the
marks only differing by one letter. The appearance of the
marks is very similar, and it is possible that many
purchasers, familiar with the ordinary word “roommate” will
see applicant’s mark as this word, rather than the fanciful
and unfamiliar “ROMMATE.”
With respect to the goods, we must consider the issue
of likelihood of confusion in the context of the
identifications in the respective application and
registration, and, in the absence of specific limitations,
on consideration of all of the normal and usual channels of
trade for the respective goods. Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813,
1816 (Fed. Cir. 1987) and CBS, Inc. v. Morrow, 708 F.2d
1579, 218 USPQ 198 (Fed. Cir. 1983). We believe that, as
described, applicant’s “video display apparatus for
displaying information contained on photo CD and CD ROM” is
not clearly a product that could only be sold in the
channels of trade urged by applicant. In cases where there
may be some ambiguity concerning the precise nature of the
goods identified, we may construe an applicant’s description
in a manner favorable to the opposer. Tuxedo Monopoly, Inc.
Opposition No. 100,151
9
v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986
(CCPA 1981) and CTS Corp. v. Cronstoms Manufacturing, Inc.,
515 F.2d 780, 185 USPQ 773 (CCPA 1975). Therefore, we see
no reason why applicant’s goods, which are after all
modified photo CD players, could not be sold in retail
electronic stores. Of course, these outlets would be the
same kind of stores in which opposer’s loudspeakers are
sold. Furthermore, even if we were to construe applicant’s
description as militating against the sale of such goods in
retail stores, there is no restriction in opposer’s
registration as to the type of speakers that they are or the
channels of trade or class of purchasers of those goods, and
they could be sold in the same channels of trade as
applicant’s equipment for the corporate boardroom. In this
regard, there is no dispute that boardrooms and other sites
which may use applicant’s equipment also use speaker
systems, albeit high-end audio systems. Accordingly,
opposer’s loudspeakers and applicant’s video display
apparatus could form parts of the same system. Finally, if
we had any doubt with respect to the question of likelihood
of confusion, that doubt, in accordance with precedent, must
be resolved in favor of the prior user and registrant.
Opposition No. 100,151
10
Decision: The opposition is sustained and registration
to applicant is refused.
R. L. Simms
E. J. Seeherman
C. E. Walters
Administrative Trademark
Judges, Trademark Trial
and Appeal Board