Motorola, Inc.v.Alliance Research Corp.

Trademark Trial and Appeal Board

Sep 8, 1999

No. 91101515 (T.T.A.B. Sep. 8, 1999)

Oral Hearing:
February 18, 1999
Paper No. 33
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT, 8, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
Motorola, Inc.
v.
Alliance Research Corporation
_______
Opposition No. 101,515
to Application No. 74/663,884
filed on April 20, 1995
_______
David C. Hilliard, John M. Murphy and Liisa M. Thomas of
Pattishall, McAuliffe, Newbury, Hilliard & Geraldson for
opposer.
Matthew F. Jodiewicz, Esq. for applicant.
_______
Before Walters, Chapman and Bucher, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Motorola, Inc. filed its opposition to the application
of Alliance Research Corporation to register the mark
VIBRARING for “cellular accessories, namely, cellular
telephone batteries containing circuitry that provides
Opposition No. 101,515
2
notice of an incoming call useful in cellular
communications systems,” in International Class 9.1
As grounds for opposition, opposer asserts that
applicant’s mark, when applied to applicant’s goods so
resembles opposer’s previously used and registered mark
VIBRACALL for “radio telephones, and accessories, namely,
batteries, and battery chargers”2 as to be likely to cause
confusion under Section 2(d) of the Trademark Act.
Applicant, in its answer, denied the salient
allegations of opposer’s claim and asserted, essentially as
affirmative defenses, laches, estoppel, acquiescence,
unclean hands and fraud. As applicant has presented no
evidence or testimony with respect to its asserted
affirmative defenses, we have given these defenses no
consideration.
The Record
The record consists of the pleadings; the file of the
involved application; a certified status and title copy of
Registration No. 1,984,583; the discovery depositions with

1 Application Serial No. 74/663,884, filed April 20, 1995, based upon an
allegation of a bona fide intention to use the mark in commerce in
connection with the identified goods. Applicant filed an amendment to
allege use of the mark in commerce, and specimens of use, on July 18,
1995, alleging dates of first use and first use in commerce as of June
27, 1995.
2 Registration No. 1,984,583, issued July 2, 1996, in International
Class 6, from an application filed on June 16, 1994.
Opposition No. 101,515
3
exhibits by opposer of Gershon N. Cooper, applicant’s
president, Andrew W. Hollman, applicant’s director of
product development, and John Hastings, applicant’s
director of sales, all made of record by opposer’s notice
of reliance; and the testimony deposition by opposer of Tom
J. Puchala, opposer’s senior marketing manager in its U.S.
group, with accompanying exhibits.
Opposer also filed, under notice of reliance, its
answers to certain of applicant’s interrogatories to
opposer. As a party may not introduce into evidence its
own answers to interrogatories, and applicant has not
treated this submission as being of record, we have not
considered this proffered evidence as part of the record.
See, Trademark Rule 2.120(j)(5), 37 CFR 2.120(j)(5).
Opposer filed a brief and was represented at an oral
hearing on this case. Applicant presented no evidence or
testimony, filed no brief and was not present at the oral
hearing.
The Parties
Opposer began manufacturing mobile telephones,
principally for industrial use, in 1956. It began trials
for cellular telephones in 1981 and offered its first
commercial cellular telephone in 1983. Today, opposer
manufactures cellular telephones and accessories, including
Opposition No. 101,515
4
cellular telephone batteries. Opposer sells its products
principally to carriers, i.e., companies offering cellular
telephone services, such as AmeriTech or Cellular One.3
These carriers offer opposer’s cellular telephones and
accessories for sale under opposer’s trademarks. Less than
ten percent of opposer’s sales are to retail marketers,
such as Best Buy or Circuit City, and to consumers
directly. Opposer manufacturers a number of models of
cellular telephones, each with different features and in
different price ranges. Within its MicroTAC series of
cellular telephones, opposer offers several phones with a
built-in feature that causes the phone to vibrate, rather
than ring, to signal an incoming call. This feature is
identified by the trademark VIBRACALL and has been used by
opposer on product packaging, instructional and promotional
literature, and by opposer, carriers and retailers in
advertisements to identify this feature in products sold
from early 1993 to the present.4 Opposer also manufacturers
various accessories, including batteries, for its cellular
telephones, including those phones offering the VIBRACALL

3 Opposer submitted confidential information regarding its U.S. carrier
market sales of cellular telephones containing the VIBRACALL feature.
Suffice it to say that, for the period 1993 through 1997, sales were
substantial and increased steadily over the period.
4 Promotion of phones featuring VIBRACALL began in 1992.
Opposition No. 101,515
5
feature. These accessories are available for purchase
separate and apart from the cellular telephones.
Opposer’s witness, Tom Puchala, testified that, at the
time opposer introduced its first cellular telephone with
the VIBRACALL feature, no other cellular telephone offered
this feature.
Applicant5 manufactures and sells accessories,
including batteries, for cellular telephones. In June,
1995, applicant began manufacturing and selling a cellular
telephone battery, identified by the trademark VIBRARING,
that includes a feature that causes a phone to which the
battery is attached to vibrate, rather than ring, to signal
an incoming call. Applicant makes a number of models of
this battery to be compatible with various manufacturers’
cellular telephones, for example, phones by Motorola,
Nokia, and Ericsson.6 Applicant sells its VIBRARING
products to carriers and retailers, with no direct sales to
consumers. Applicant acknowledged that it directly
competes with Motorola, opposer, in the cellular telephone
accessories market.

5 Applicant is also referred to as Ora Electronics in the record.
6 Applicant notes that it sells more Motorola-compatible batteries,
opining that this reflects Motorola’s larger penetration than its
competitors in the cellular market.
Opposition No. 101,515
6
Witnesses for both parties agreed that both applicant
and opposer feature their products in the same publications
and at the same trade shows, and that their products are
available through the same retailers, including Best Buy
and Circuit City. The evidence further establishes that
both cellular telephones and accessories for such phones
are advertised in the same advertisements; that applicant’s
product has been featured in the same advertisements as
Motorola’s cellular phones; and that a product’s vibrating
feature, whether it is a part of opposer’s telephone or of
applicant’s battery, is often referenced in such
advertising.
Analysis
Inasmuch as a certified copy of opposer’s
registration, which issued from its pleaded application, is
of record, there is no issue with respect to opposer’s
priority. King Candy Co., Inc. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Our determination of likelihood of confusion under
Section 2(d) must be based on an analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on the likelihood of confusion issue. In
re E.I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). Key considerations in this case are the
Opposition No. 101,515
7
similarities between the marks, the similarities between
the goods and services, the channels of trade, and the
class of purchasers. Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
With respect to the goods of the parties, applicant’s
identified goods are identical to the cellular telephone
batteries identified in opposer’s registration.
Additionally, since applicant’s batteries are for use only
with cellular telephones and, in fact, some of applicant’s
batteries are specifically intended for use with several
models of opposer’s cellular telephones, applicant’s goods
are closely related to, or complimentary of, opposer’s
cellular telephones.
The parties have essentially admitted that the
channels of trade and class of purchasers for their goods
are the same. Further, since both opposer’s and
applicant’s identifications of goods are broadly worded,
without any limitations as to channels of trade or classes
of purchasers, we presume that the goods of applicant and
opposer are sold in all of the normal channels of trade to
all of the usual purchasers for goods of the type
identified. See Canadian Imperial Bank v. Wells Fargo, 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
Opposition No. 101,515
8
We turn, next, to a determination of whether
applicant’s mark and the registered mark, when viewed in
their entireties, are similar in terms of appearance,
sound, connotation and commercial impression. The test is
not whether the marks can be distinguished when subjected
to a side-by-side comparison, but rather whether the marks
are sufficiently similar in terms of their overall
commercial impression that confusion as to the source of
the goods offered under the respective marks is likely to
result. The 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). Furthermore,
although we must base our determination on a comparison of
the marks in their entireties, we are guided, equally, by
the well-established principle that, in articulating
reasons for reaching a conclusion on the issue 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 consideration of the marks in their
entireties.” In re National Data Corp., 732 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985).
Opposition No. 101,515
9
In the case before us, applicant’s mark, VIBRARING,
and opposer’s mark, VIBRACALL, are both two-syllable words
beginning with the syllable VIBRA followed by the word,
respectively, RING and CALL. While there is no question
that VIBRA is suggestive of the vibrating feature of both
parties’ products, as applicant’s director of sales, John
Hastings, admitted, in the context of the parties’ goods
and marks the terms RING and CALL can be considered
synonymous. We find the parties’ marks to be substantially
similar in sound, appearance, connotation and overall
commercial impression.
Therefore, we conclude that, in view of the
substantial similarity in the commercial impressions of
applicant’s mark, VIBRARING, and opposer’s mark, VIBRACALL,
their contemporaneous use on the identical and closely
related goods involved in this case is likely to cause
confusion as to the source or sponsorship of such goods.
Opposition No. 101,515
10
Decision: The opposition is sustained.
C. E. Walters
B. A. Chapman
D. E. Bucher
Administrative Trademark Judges,
Trademark Trial and Appeal Board