Bose Corporationv.Tofasco of America, Inc.

Trademark Trial and Appeal Board

Feb 11, 2011

No. 91176670 (T.T.A.B. Feb. 11, 2011)

Hearing: Mailed:
October 12, 2010 February 11, 2011
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Bose Corporation
v.
Tofasco of America, Inc.
________

Opposition No. 91176670
against Serial No. 76628472
_______

Amy L. Brosius, Charles Hieken and Tashia A. Bunch of Fish &
Richardson P.C. for Bose Corporation.

Gary J. Gorham and Jon M. Leader of Leader Gorham L.L.P. for
Tofasco of America, Inc.
_______

Before Bucher, Cataldo and Wellington, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Tofasco of America, Inc. sought registration on the
Principal Register of the mark Life Styling (in standard character
format) for goods identified in the application, as amended,
as follows:
“portable and handheld digital electronic
devices for recording, organizing,
transmitting, manipulating, and reviewing
audio, video, multimedia, text, and data
files; accessories for portable and handheld
digital electronic devices, namely headphones,
carrying cases, digital transmitters, infrared
remote controls, interconnect cables, power
adapters, rechargeable batteries, power cords,
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91176670
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gaming joysticks and mounting frames” in
International Class 9.1
Registration has been opposed by Bose Corporation. As
its grounds for opposition, opposer asserts that applicant’s
mark when used in connection with its goods so resembles
opposer’s previously used and registered mark LIFESTYLE (in
standard character format), for “loudspeaker systems”2 and
for “music systems consisting of a loudspeaker system and
power amplifier and at least one of a CD player and radio
tuner,”3 both sets of goods also in International Class 9, as
to be likely to cause confusion, to cause mistake or to
deceive under Section 2(d) of the Lanham Act. Opposer has
also demonstrated its common law usage of the LIFESTYLE
mark for home theatre systems and home entertainment systems
since the 1990’s.
Applicant, in its answer, has denied the essential
allegations in the opposition.

1 Application Serial No. 76628472 was filed on January 21, 2005,
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce.

2 Registration No. 1622251 issued on November 13, 1990; second
renewal.

3 Registration No. 2108847 issued on October 28, 1997; renewed.

Opposition No. 91176670
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The Record
In addition to the pleadings, the file of opposed
application Serial No. 76628472 is part of the record without
any action by the parties. Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b). Additionally, on January 24, 2008,
opposer filed a Notice of Reliance on applicant’s responses
to opposer’s first set of interrogatories, as well as status
and title copies of its claimed LIFESTYLE registrations;
and later, opposer introduced into evidence the trial
testimony taken on June 29, 2009, of William Allen, a program
manager in opposer’s marketing operations since 1989, having
attached thirty-nine exhibits.
Attorneys for applicant did not attend the deposition of
Mr. Allen. Applicant took no testimony in the proceeding
and did not file a Notice of Reliance. Applicant has
briefed the issues on final decision but chose to waive its
right to attend the oral hearing held before this panel of
the Board on October 12, 2010.
Preliminary Matters
On September 1, 2009, applicant filed a motion to amend
its identification of goods to exclude explicitly from the
above amended identification of goods “ … home loudspeaker
systems, home theatre systems and home music systems … .”
Opposition No. 91176670
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The Trademark Rules permit an applicant involved in an
inter partes proceeding to amend an application to restrict
the identification of goods in the application upon motion to
the Trademark Trial and Appeal Board.4 According to the
Trademark Trial and Appeal Board Manual of Procedure (TBMP):
When a motion to amend an application or registration in
substance is made without the consent of the other party
or parties, it ordinarily should be made prior to trial,
in order to give the other party or parties fair notice
thereof; an unconsented motion to amend which is not
made prior to trial, and which, if granted, would affect
the issues involved in the proceeding, normally will be
denied by the Board unless the matter is tried by
express or implied consent of the parties pursuant to
Fed. R. Civ. P. 15(b).5

Applicant neither sought nor received the consent of
opposer for this proposed amendment. Opposer does not
consent to the motion, and in fact, opposes the motion to
amend.
Applicant points to a case where the Board permitted
such an amendment even when the opposer objected to the
amendment.6 However, as noted by opposer herein, in Giant

4 AMENDMENT OF APPLICATION OR REGISTRATION DURING PROCEEDINGS.
(a) An application subject to an opposition may not
be amended in substance nor may a registration
subject to a cancellation be amended or disclaimed in
part, except with the consent of the other party or
parties and the approval of the Trademark Trial and
Appeal Board, or upon motion granted by the Board.
37 C.F.R. § 2.133(a).

5 TBMP § 514.03 (2d ed. rev. 2004).

6 Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ
955, 963 (TTAB 1996).
Opposition No. 91176670
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Food, the applicant filed its motion before trial. Here,
applicant delayed filing its motion until after opposer had
completed taking testimony and after opposer had served
applicant with copies of its witness’ transcript and
exhibits, in a trial where applicant took no testimony.7
Finally, even if the tardy, unconsented motion were to
be granted, this issue goes to a determinative du Pont
factor, raising questions never tried by express or implied
consent of the parties, and we are not convinced on this
record that the proposed amendment would avoid a likelihood
of confusion. Hence, applicant’s motion to amend is denied.
A second issue before us is whether to accord any weight
to the alleged existence of hundreds of third-party
registrations that are not in evidence and that applicant
relied upon for the first time in its brief. Because
applicant took no testimony in this proceeding and did not

7 See ProQuest Information and Learning Co. v. Island, 83 USPQ2d
1351, 1353-54 (TTAB 2007) [Board denied applicant’s requests in his
brief to narrow his identification of goods to avoid any likelihood
of confusion]; Personnel Data Systems, Inc. v. Parameter Driven
Software, Inc., 20 USPQ2d 1863 (TTAB 1991) [Board denied as
untimely, respondent’s motion to amend the identification of goods
in its registration which request was filed with respondent’s brief
on the case]; International Harvester Company v. International
Telephone and Telegraph Corporation, 208 USPQ 940, 941 (TTAB 1980)
[amendment to identification may be permitted if made before trial,
if it serves to limit the scope of goods, and if applicant consents
to judgment with respect to the broader identification of goods];
and Gulf States Paper Corporation v. E-Z Por Corporation, 157 USPQ
450 (TTAB 1968) [Board denied Applicant’s motion to amend the
identification of goods filed after opposer had put on his case,
noting that the timing would prejudice opposer].
Opposition No. 91176670
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file a notice of reliance, these alleged registrations are
clearly not in evidence. See Edison Brothers Stores, Inc. v.
Brutting E.B. Sport-International GmbH, 230 USPQ 530, 532
(TTAB 1986) [reference to third-party registrations in a
brief]; and other cases cited in “Third-Party Registrations,”
TBMP § 704.03(b)(1)(B) (2d ed. rev. 2004).
Factual Findings
The bulk of opposer’s case is based upon the testimony
of William Allen, an engineer who has been employed at Bose
as a program manager in the marketing operations since the
development of the LIFESTYLE product in 1989.8 The LIFESTYLE
product began as a self-contained music and loudspeaker
system that delivered sound from CDs, tape recorders, or from
the radio. From the inception, this system was operated by a
radio frequency remote control.9 Over the past twenty years,
the LIFESTYLE product line has evolved and expanded to
incorporate additional features, such as DVD players, digital
music storage capability, and having a greater ability to
interface with, and control, other external devices such as
set-top boxes, DVD players and TVs. The LIFESTYLE home
entertainment system has evolved into fairly sophisticated

8 William Allen deposition of June 29, 2009, at 7-9.

9 Id. at 10.

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combinations of electronic devices that record and transmit
both audio and video.10
Mr. Allen testified that the LIFESTYLE products have
over the years generated a significant volume of press
attention, both in the U.S. and internationally.11 He
identified a number of design awards given to the LIFESTYLE
products as well as numerous press releases announcing the
launch of many of the series of system releases over the
years.12
While some of the early systems had the LIFESTYLE mark
printed prominently on the brushed aluminum top surface of
the product, later systems display LIFESTYLE on the system’s
remote control or the LCD screen connected thereto whenever
the product is turned on. The product packaging and inserted
documentation carry the LIFESTYLE designation as well.
Extensive documentation on each of opposer’s many LIFESTYLE
products has been made of record herein.

10 Id. at 10-14.

11 Mr. Allen identified press mentions in publications such as
Business Week, Cigar Aficionado, Food & Wine and Metro New York,
and paid advertisements in publications such as Scientific
American. William Allen deposition of June 29, 2009, at 48-53,
60-68; Exhibits ## 32, 34-39.

12 William Allen deposition of June 29, 2009, at 24, 26, 32,
44-45; Exhibits ## 10, 12, 13, 17, 30-31.

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Between fiscal year 1991 and 2009, in the United States
alone, opposer rang-up in excess of $2.5 billion in gross
retail sales of products bearing the LIFESTYLE mark. From
fiscal year 1993 to 2009, opposer spent more than $67 million
promoting its LIFESTYLE products in the United States.13
Opposer’s LIFESTYLE products are sold by retail
establishments such as Best Buy, Magnolia Hi-Fi, HH Gregg and
Good Guys, as well as through Bose retail stores and the
Bose.com Internet website.14
Standing and priority
As a preliminary matter, we find that opposer has
established its standing by alleging and submitting status
and title copies of its claimed registrations. Because
opposer has made of record copies of its valid and subsisting
registrations, the issue of priority does not arise. See
King Candy Company v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974). Moreover, applicant has not
contested opposer’s claims of priority based upon its
registrations or its claims of prior common law rights.

13 William Allen deposition of June 29, 2009, at 67.

14 Id. at 55–57.

Opposition No. 91176670
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Likelihood of Confusion
We turn then to the issue of likelihood of confusion.
Our determination of likelihood of confusion must be based
upon our analysis of all of the probative facts in evidence
that are relevant to the factors bearing on the issue of
likelihood of confusion. See In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any
likelihood of confusion analysis, two key considerations are
the similarities between the marks and the relatedness of the
goods. See Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
The salient question to be determined is not whether the
involved goods of the parties are likely to be confused, but
rather whether there is a likelihood that the relevant
purchasing public will be misled to believe that the goods
offered under the involved marks originate from a common
source. See J.C. Hall Company v. Hallmark Cards,
Incorporated, 340 F.2d 960, 144 USPQ 435 (CCPA 1965); and The
State Historical Society of Wisconsin v. Ringling Bros.-
Barnum & Bailey Combined Shows, Inc., 190 USPQ 25 (TTAB
1976).
Opposition No. 91176670
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Renown of opposer’s mark
While opposer has not provided us with information about
its national market share relative to its primary competitors
of consumer electronics in the nature of music systems,
loudspeaker systems, home entertainment systems and home
theatre systems, we do know that over a period of nineteen
years, opposer has enjoyed more than $2.5 billion in gross
retail sales of products bearing the LIFESTYLE mark, while
spending more than $67 million promoting its LIFESTYLE
products over a period of seventeen of those years. The
LIFESTYLE products have been advertised in many national
publications for twenty years, though direct mail and on
opposer’s website. Opposer has generated a significant
amount of unsolicited press coverage of the LIFESTYLE product
throughout the years, and has been recognized with various
national awards for the design and innovation of its music
and entertainment systems. This degree of renown compares
favorably with reported decisions finding marks to be famous
in the past.15 For our purposes, we find that the LIFESTYLE

15 Bose Corp, 63 USPQ2d at 1305- 06 [WAVE and ACOUSTIC WAVE
for audio products: over $50 million in sales, over $5 million
annually in advertising over seventeen years]; Nina Ricci,
S.A.R.L. v. E.T.F. Enters., Inc., 12 USPQ2d 1901, 1902 (Fed. Cir.
1989) [NINA RICCI for perfume, clothing and accessories: $200
million in sales, over $37 million in advertising over twenty-
seven years]; Kimberly-Clark Corp. v. H. Douglas Enterprises,
Ltd., 227 USPQ 541, 542 (Fed. Cir. 1985) [HUGGIES for diapers:
Opposition No. 91176670
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brand is at the very least extremely well-known in this
field, and hence deserves a wide scope of protection.
The Marks
We turn next to the du Pont factor focusing on the
similarities or dissimilarities in the appearance, sound,
connotation and commercial impression of the respective
marks. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005).
Applicant argues that its “verbification” of opposer’s
mark (i.e., from “Lifestyle” to “Life Styling”) results not
only in a mark with a dissimilar appearance, but one with a
distinct connotation from the word “lifestyle.”
Applicant, in its brief, faults opposer for failing to
provide us with “any independent evidence of similarity in

over $300 million in sales over nine years, $15 million in
advertising in one year]; Specialty Brands Inc. v. Coffee Bean
Distribs., Inc., 223 USPQ 1281, 1284 (Fed. Cir. 1984) [SPICE
ISLANDS for teas, spices and seasonings: $25 million annually in
sales for spices, $12 million between 1959 and 1981 for tea,
“several million” in advertising, in use for forty years]; Giant
Food, Inc. v. Nation's Foodservice, Inc., 218 USPQ 390, 392-93
(Fed. Cir. 1983) [GIANT FOOD for supermarket services and food
products: sales over $1 billion in one year,
“considerable amounts of money” in advertising, forty-
five years use]; and Planters Nut & Chocolate Co. v.
Crown Nut Co., 134 USPQ 504, 506 (CCPA 1962) (The
caricature design of “Mr. Peanut” used in connection
with nuts and nut products: $350 million in sales,
$10 million in advertising over ten years).

Opposition No. 91176670
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the marks’ meanings, sound, appearance and consumer
impression for our consideration.” However, we do not need
an expert witness to apply this element of the du Pont
factors to the marks in a specific case before us.
Although applicant correctly asserts that the test for
likelihood of confusion is not whether the respective marks
can be distinguished when subjected to a side-by-side
comparison in the marketplace, it then says:
[Applicant’s] Life Styling mark is visually
distinct from [opposer’s] LIFESTYLE mark.
First, when displayed side-by-side, as these
marks may be encountered in the marketplace,
[opposer’s] mark is one word, while
[applicant’s] mark is two distinct words.
Both marks contain the word “life” but vary as
to the use of the word “style.” The second
word in [applicant’s] mark is a verbification
of “style” in the form of “styling.”
[emphasis supplied]

Of course, the correct focus is on the recollection of
the average purchaser, who normally retains a general rather
than a specific impression of trademarks. See Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). While we
agree with applicant that the marks at issue must be
considered in their entireties, one feature of a mark may be
more significant than another, and it is not improper to give
more weight to this dominant feature in determining the
impression created by a mark. See In re National Data Corp.,
753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). As to
Opposition No. 91176670
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appearance, sound, meaning and commercial impression, it is
significant that the first two syllables are essentially
identical. Moreover, in this case, there is no indication
that opposer’s LIFESTYLE mark is anything other than a
somewhat suggestive term in relation to opposer’s goods.
Nonetheless, applicant’s mark, Life Styling, possesses the
same first two syllables as opposer’s well known mark. While
applicant has added an “ing” suffix, we find this to be
subordinate matter that does very little to distinguish the
marks. In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984). In
fact, with a particular focus on the connotations of the
respective marks, should consumers even notice the different
ending, applicant’s “verbification” of opposer’s mark could
exacerbate the likelihood of confusion – attributing the
minor change to a brand extension by opposer from the
stationary items for which it is well-known into the ever-
changing world of miniaturization and portability.
While applicant tries repeatedly to limit the source-
identifying significance of the cited mark, we disagree.
There is no evidence in the record supporting a claim that
opposer’s LIFESTYLE mark is weak or should be accorded a
narrowed scope of protection.
Accordingly, as to this critical du Pont factor, we
find in favor of opposer.
Opposition No. 91176670
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The Goods
It is not necessary that the respective goods be
identical or even competitive in order to establish
likelihood of confusion. Rather, it is sufficient that the
goods are related in some manner, or that the circumstances
surrounding their marketing are such, that they would be
likely to be encountered by the same persons in situations
that would give rise, because of the marks used thereon, to a
mistaken belief that they originate from or are in some way
associated with the same source or that there is an
association or connection between the sources of the
respective goods. See In re Martin's Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991); and In re
International Telephone & Telegraph Corp., 197 USPQ2d 910
(TTAB 1978).
The record shows that the music and entertainment
products that opposer markets under the LIFESTYLE label
include electronic devices capable of storing, transmitting
and playing audio files, and that such electronic devices are
connected to other external sources that can store and play
both audio and video files. We note that substantially all
of opposer’s high-end products have remote controls as an
integral feature of their capabilities. Moreover, the
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popularity of opposer’s systems is grounded in their ability
to interface effortlessly with a wide variety of electronic
devices, including portable and handheld digital electronic
devices for recording, organizing, transmitting, manipulating
and playing audio files, including, for example, MP3 portable
devices. Yet the stated portability of applicant’s devices
is the clearest characteristic distinguishing its goods from
those of opposer. Hence, when one looks at applicant’s
identification of goods, it is clear on the face of the
application that applicant’s portable electronic products are
closely related to the opposer’s LIFESTYLE products.
In view of the foregoing, and based on the evidence of
record and identifications of goods, we find that the
parties’ goods are related, and resolve this factor too in
opposer’s favor.
Trade Channels and the conditions under which and buyers to whom
sales are made

As to these two related du Pont factors, neither the
involved application nor opposer’s registrations contain any
limitation on channels of trade or on classes of purchasers.
Accordingly, in the absence of limitations on the respective
trade channels and classes of purchasers in the application
and registrations, we find that likelihood of confusion
herein must be evaluated relative to all channels of trade
Opposition No. 91176670
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and all classes of purchasers for the identified goods.
Kangol Ltd. v. KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d
1945 (Fed. Cir. 1992); Canadian Imperial Bank v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); and CBS,
Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983).
Hence, these factors too favor opposer.
Conclusion
We conclude, based upon a preponderance of the evidence,
and particularly in view of the similarities between the
marks, the strength of opposer’s mark, and the relatedness of
the respective goods as identified in the identifications of
goods, that there is a likelihood of confusion when LIFESTYLE
is used on opposer’s loudspeaker systems, home entertainment
systems and home theatre systems, and contemporaneously,
applicant uses Life Styling on its portable and handheld digital
electronic devices. In addition to opposer’s two decades of
priority, it has spent millions of dollars in advertising its
most successful LIFESTYLE electronic products and sold
billions of dollars of these LIFESTYLE electronic products
over the years.
Decision: The opposition is sustained based upon the
ground of likelihood of confusion under Section 2(d) of the
Lanham Act, and registration to applicant is hereby refused.