H.K. Global Trading Ltd.

Trademark Trial and Appeal Board

Sep 6, 2006

No. 78494931 (T.T.A.B. Sep. 6, 2006)

Mailed:
September 6, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re H.K. Global Trading Ltd.
________

Serial No. 78494931
_______

Michael F. Sarney of Katten Muchin Rosenman LLP for H.K.
Global Trading Ltd.

Linda Lavache, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
_______

Before Seeherman, Quinn and Bucher, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

H.K. Global Trading Ltd. has appealed from the final
refusal of the trademark examining attorney to register GT
PRO BY GOTECH, in standard character form, as a trademark
for the following goods:
Car stereo radio audio cassette
players; car stereo radio compact disc
players; car DVD players; car audio
speakers; compact disc players;
portable compact disc players; audio
cassette recorders; portable audio
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 78494931
2
cassette recorders; portable compact
disc players with radio audio cassette
recorder; portable radio audio cassette
recorders; radios; portable radios;
loud-speakers; radios incorporating
clocks; amplifiers; television sets;
video cassette recorders (VCRs); DVD
players.1

Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. §1052(d), on the ground
that applicant’s mark so resembles the marks GT
ELECTRONICS, in typed form, with ELECTRONICS disclaimed,2
and GT design, as shown below,3

1 Application Serial No. 78494931, filed October 5, 2002, based
on Section 1(b) of the Trademark Act (intent-to-use). On
December 29, 2004, applicant filed an Amendment to Allege Use,
asserting first use and first use in commerce as of December 21,
2004. This was accepted by the Examining Attorney on May 10,
2005.
2 Registration No. 2727477, issued June 17 2003.
3 Registration No. 2753346, issued August 19, 2003.
Ser No. 78494931
3
previously registered by the same entity for the following
goods that, when used on applicant’s identified goods, it
is likely to cause confusion or mistake or to deceive:
Microphones; amplifiers, preamplifiers,
electronic sound compressors, audio
signal processors, speakers, electrical
power supplies, and electrical cables
and electrical connectors; electronic
equipment or components for audio
signal instrumentation measuring or
testing, namely, microphones,
amplifiers, preamplifiers, electronic
sound compressors, audio signal
processors, speakers, electrical power
supplies, electrical cables and
electrical connectors; excluding
telephones and industrial telephone
communications systems.

Applicant and the Examining Attorney have filed appeal
briefs. An oral hearing was not requested.
Before turning to the substantive ground for refusal,
we must address some preliminary matters. In its brief
applicant states that the examining attorney “improperly
introduced evidence in support of her decision in a final
Office action, thereby precluding Applicant from submitting
rebuttal evidence and arguments.” Brief, p. 3. Applicant
is incorrect. Examining attorneys may introduce evidence
with any Office action, whether it is an initial Office
action, a final Office action, or an action considering a
request for reconsideration. See, for example, TMEP
§714.04 (The examining attorney should place all evidence
Ser No. 78494931
4
in support of his or her refusal in the record at the time
the final action is issued). Applicants, of course, have
the opportunity to respond to a final Office action with
evidence or argument by filing a request for
reconsideration. See Trademark Rule. 2.64(b). The fact
that applicant chose not to file a request for
reconsideration does not make the examining attorney’s
evidence improper.
Applicant also asserts, in footnote 5 of its brief,
that “instead of refusing registration because there was an
overlap of two goods, from descriptions encompassing many
goods, the examining attorney should have given Applicant
the opportunity to delete those particular goods from the
recitation of goods, and thereby obviate the basis for the
examining attorney’s conclusion that the goods are
related.” Again, applicant’s position has no validity.
Applicant was apprised of the basis for the refusal of
registration in the first Office action, at which point
applicant knew what goods were listed in the cited
registrations. Applicant had the opportunity at that
point, in responding to the first Office action, or after
the final Office action, through a request for
reconsideration, to request an amendment to its
Ser No. 78494931
5
identification of goods to delete any goods that it thought
supported a finding of a likelihood of confusion.
Finally, with its brief applicant has submitted a
number of exhibits. The examining attorney has objected to
these exhibits because they were not properly made of
record during examination. Trademark Rule 2.142(d)
provides that “[t]he record in the application should be
complete prior to the filing of an appeal. The Trademark
Trial and Appeal Board will ordinarily not consider
additional evidence filed with the Board by the appellant
or by the examiner after the appeal is filed.” Because the
exhibits are manifestly untimely, we have not considered
them.
This brings us to the substantive basis for refusal of
the application, namely, the issue of likelihood of
confusion. Our determination of this issue is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors set forth in In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
See also, In re Majestic Distilling Co., Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood
of confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v.
Ser No. 78494931
6
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976). See also, In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Turning first to the factor of the similarity of the
goods, applicant’s goods include “loud-speakers” and
“amplifiers,” while the identifications in the cited
registrations include “speakers” and “amplifiers.” These
goods are legally identical. The applicant’s broader
identification of “speakers” would also encompass the “car
audio speakers” identified in applicant’s application.
Moreover, as the Examining Attorney has pointed out, many
of the remaining goods in applicant’s identification are
closely related to the registrant’s identified goods. For
example, speakers can be used in connection with
applicant’s identified “compact disc players, portable
compact disc players, portable compact disc players with
radio audio cassette recorder, video cassette recorders,
television sets and DVD players.”
Applicant argues that its goods and those of the
registrant are different because its goods are “consumer
products which are used by ordinary purchasers for playing
pre-recorded music,” while the registrant’s goods “are used
by professional musicians when giving live performances.”
Brief, p. 8. Applicant also contends that the terms
Ser No. 78494931
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“speakers” and “amplifiers” in the cited registrations
encompass different types of products used in different
fields, and therefore the other items in the
identifications must be considered in determining the
nature of these goods.
Applicant has not cited any cases in support of its
position and, indeed, the well-established case law stands
for the very opposite view. “It is well settled that the
issue of likelihood of confusion between applied-for and
registered marks must be determined on the basis of the
goods as they are identified in the involved application
and cited registration, rather than on what any evidence
may show as to the actual nature of the goods, their
channels of trade and/or classes of purchasers.” In re
Total Quality Group Inc., 51 USPQ 1474, 1476 (TTAB 1999).
See also, Canadian Imperial Bank of Commerce v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
“Thus, where the goods in a cited registration are broadly
described and there are no limitations in the
identification of goods as to their nature, type, channels
of trade or classes of purchasers, it is presumed that the
scope of the registration encompasses all goods of the
nature and type described, that the identified goods move
in all channels of trade that would be normal for such
Ser No. 78494931
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goods, and that the goods would be purchased by all
potential customers.” In re Elbaum, 211 USPQ 639, 640
(TTAB 1981).
Accordingly, we can give no weight to applicant’s
argument that the registrant’s speakers and amplifiers are
sold to and used by only professional musicians, and that
the goods are therefore different in nature from
applicant’s loud-speakers and amplifiers. These goods are
legally identical, and many of the remaining goods are
closely related. This factor, therefore, favors a finding
of likelihood of confusion. See Tuxedo Monopoly, Inc. v.
General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988
(CCPA 1981) (likelihood of confusion must be found if there
is likely to be confusion with respect to any item that
comes within the identification of goods in the
application).
Because there are no limitations in the channels of
trade in either the application or the cited registrations,
the goods, as noted above, must be deemed to be sold in all
appropriate channels of trade. Applicant’s argument that
the registrant’s goods are professional musical equipment
sold only to professional musicians can be given no effect.
Rather, because the goods are in part legally identical,
these legally identical goods must be deemed to be sold in
Ser No. 78494931
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the same channels of trade. Moreover, the Examining
Attorney has made of record excerpts from the Best Buy
website, showing that speakers, televisions, DVD players
and recorders, car audio and video products, and portable
audio products are advertised on the same page, and in the
same “box.” This evidence demonstrates that these goods,
at the very least, are sold in the same channels of trade.
The factor of the similarity of trade channels favors a
finding of likelihood of confusion.
As to the relevant class of purchasers of applicant’s
and the registrant’s goods, although applicant argues that
the purchasers are different, this argument is based on the
mistaken premise, discussed above, that it is permissible
to limit the purchasers of the goods identified in the
cited registrations to professional musicians. As we have
pointed out, legally identical goods must be presumed to be
sold to the same classes of purchasers. Moreover, the
evidence from the Best Buy website shows that this company
directs its advertising for various goods listed in
applicant’s application and its advertising for speakers
(identified in the cited registrations) to the same group
of purchasers, which may include ordinary purchasers.
This brings us to a consideration of the marks. When
marks would appear on virtually identical goods or
Ser No. 78494931
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services, as they do here, the degree of similarity
necessary to support a conclusion of likely confusion
declines. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992). Applicant’s mark is GT PRO BY GOTECH; the cited
marks are GT ELECTRONICS and GT and design. GT is the
dominant element in the registered marks. The word
ELECTRONICS, in GT ELECTRONICS, is descriptive of the goods
and has been disclaimed. Accordingly, it is the GT portion
of the mark to which consumers will look for its source-
indicating value. As for GT and design, although the
letters GT are stylized, they are clearly recognizable. To
the extent that the mark will be articulated, it will be as
“G-T.” As for applicant’s mark, the letters GT also play a
dominant role. The word PRO, as the Examining Attorney has
pointed out, is a laudatory term indicating that the goods
have a professional quality or are more advanced
technologically. In fact, to the extent that applicant is
correct, and the registrant’s goods would be used by
professional musicians, the word PRO in applicant’s mark
would indicate that at least some of its goods are also
designed for the same class of consumers. Thus, not only
does the word not distinguish applicant’s mark from the
Ser No. 78494931
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registered marks, but it may actually reinforce the idea
that there is a connection in source.
Applicant’s mark also includes the phrase BY GOTECH.
While GOTECH is an arbitrary term that might, in other
circumstances, serve as a distinguishing element, it does
not do so in this case for two reasons. As applicant’s
specimens, shown below, clearly demonstrate, BY GOTECH has
a very subordinate position in applicant’s mark.

It is shown in much smaller letters than GT PRO, and is
below and to the side of this term. As a result, GT PRO
clearly appears as the dominant portion of the mark.
Further, because of the use of “BY,” consumers will view
GOTECH in the mark as a house mark and, because of this,
and the subordinate manner in which BY GOTECH is displayed,
they are likely to refer to the product merely as GT PRO.
See Jayvee Brand, Inc. v. Doe Spun, Inc., 177 USPQ 713
(TTAB 1973), in which the Board found confusion likely
between CUDDLER BY DOE SPUN and KITTEN KUDLERS, both for
infants’ clothing, with the Board’s stating that in part
Ser No. 78494931
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because CUDDLER was displayed on the applicant’s labels
separate from and in larger letters than BY DOE SPUN,
purchasers might well rely upon CUDDLER alone in asking for
and identifying the applicant’s goods as to source.
Thus, the marks must be considered as similar in appearance
and pronunciation.
The second reason that the element BY GOTECH does not
serve to distinguish applicant’s mark from the registrant’s
marks is that the addition of a house mark to one of two
otherwise confusingly similar marks ordinarily does not
serve to avoid likelihood of confusion.4 See In re
Christian Dior, S.A., 225 USPQ 533 (TTAB 1985) (LE CACHET
DE DIOR for men’s dress shirts and CACHET for toilet soap
and cologne held likely to cause confusion); In re Cosvetic
Laboratories, Inc., 202 USPQ 842 (TTAB 1979) (HEAD START
COSVETIC and design for hair care products likely to cause
confusion with HEAD START for after-shave lotion); Key West
Fragrance & Cosmetic Factory, Inc. v. The Mennen Co., 216

4 Exceptions to this rule include cases where the product marks
are descriptive of the goods or where there are significant
differences between them, such that the inclusion of applicant's
trade name in the mark might help to differentiate between the
marks. However, neither of these situations exists in the
present case. On the contrary, there is no evidence of any
third-party use or registration of GT marks. Applicant’s
argument that GT is “weak” is unpersuasive; even if we accept
applicant’s assertion that GT is an acronym, this does not, in
and of itself, make it a weak term that is entitled to only a
limited scope of protection.
Ser No. 78494931
13
USPQ 168 (TTAB 1982) (MENNEN SKIN SAVER for hand and body
lotion likely to cause confusion with SKIN SAVERS for face
and throat lotion). In fact, in situations very similar to
the present case, Courts and this Board have found that the
addition of BY followed by a trade name exacerbates the
likelihood of confusion, rather than obviating it. See,
for example, Tefal, S.A., et al. v. Products International
Co., et al., 186 USPQ 545, 548 (DNJ 1975), aff’d 529 F.2d
495, 189 USPQ 385 (3d Cir. 1976) (TEPAL-WARE BY PICAM
likely to cause confusion with T-FAL; use of “By PICAM” on
the label of defendants product following the designation
"TEPAL-WARE" may actually enhance the likelihood of
confusion); In re Apparel Ventures, Inc., 229 USPQ 225
(TTAB 1986) (SPARKS BY SASSAFRAS likely to cause confusion
with SPARKS); In re Dennison Manufacturing Company, 220
USPQ 1015 (TTAB 1983) (inclusion of BY DENNISON in
applicant’s mark may increase the likelihood of confusion).
Thus, the fact that applicant owns a registration for
GOTECH does not entitle it to essentially appropriate the
registrant’s GT marks by simply adding this term to GT PRO,
a mark that is confusingly similar to those of the
registrant.
We have discussed the separate elements of the marks
in detail not because we have dissected them, but to
Ser No. 78494931
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explain why we consider the GT portion of applicant’s mark
and the registered marks to be dominant. It is a well-
established principle that, in articulating reasons for
reaching a conclusion on the issue of likelihood of
confusion, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate
conclusion rests on a consideration of the marks in their
entireties. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985).
We have also considered applicant’s argument that the
marks convey different connotations, but do not find it
persuasive. Applicant claims that in its mark, “the
connotation could be with relation to the GOTECH portion of
the mark,” while it asserts that GT in the registrant’s
marks is an acronym for its company name, Groove Tubes,
LLC. With regard to its own use of GT, even applicant does
not state unequivocally that consumers would view GT as an
acronym for GOTECH, and we fail to see why consumers would
make such a connection simply because these two letters
appear in the name GOTECH. Certainly applicant has not
submitted any evidence that shows that its company name has
been abbreviated in such a manner. As for the cited
registrations, simply because the name of the current owner
Ser No. 78494931
15
of those registrations has the initials GT does not mean
that consumers will view GT in those marks as referring to
registrant’s trade name.5 Thus, based on this record, we
think that consumers will view the letters GT in both
applicant’s and the registrant’s marks as merely the
letters “G” and “T,” and that, when the marks are
considered in their entireties, their connotations are the
same.
Applicant’s mark and those of the cited registrations
are, overall, similar in appearance, pronunciation,
connotation and overall commercial impression. The du Pont
factor of the similarity of the marks favors a finding of
likelihood of confusion.
Both applicant and the Examining Attorney have limited
their arguments to the du Pont factors of the similarity of
the marks and the similarity of the goods. Because of
this, we have generally confined our discussion to these
factors. We add only that, with respect to the factor of
the conditions of purchase, because both applicant’s and
the registrant’s identified goods include general consumer
items, we must assume that the consumers of these products

5 It is interesting to note that, although the registrations are
currently owned by Groove Tubes LLC, the applications which
matured into the registrations were filed by Alesis Studio
Electronics, Inc.

Ser No. 78494931
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do not have any particular expertise or sophistication.
Even if we accept that some of the goods are purchased with
some degree of care (and we recognize that loudspeakers can
fall into a very wide price range, such that they may be
bought without great deliberation), even careful consumers
are likely to believe, because of the similarity of the
marks and the identity and/or related nature of some of the
goods, that GT PRO BY GOTECH is a variation of the marks GT
ELECTRONICS and GT and design, with all three marks
indicating products emanating from a single source.
Further, with respect to the factor of the number of
similar marks in use on similar goods, we reiterate that
there is no evidence of third-party GT marks, and that the
registrant’s GT marks must be considered strong marks,
contrary to applicant’s argument that an acronym (or more
accurately, an initialism) is an inherently weak mark that
is entitled to only a limited scope of protection. To the
extent that any other factors are applicable, we must treat
them as neutral.
Decision: The refusal of registration is affirmed.