Shenzhen Vsonic Electronics Co., Ltd.

Trademark Trial and Appeal Board

Aug 23, 2016

No. 79156102 (T.T.A.B. Aug. 23, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: August 23, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Shenzhen Vsonic Electronics Co., Ltd.
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Serial No. 79156102
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Xiaoqun Wu of Anova Law Group, PLLC for Shenzhen Vsonic Electronics Co., Ltd.1

William Rossman, Trademark Examining Attorney, Law Office 109,
Michael Kazazian, Managing Attorney.
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Before Seeherman, Quinn and Adlin,
Administrative Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:
Shenzhen Vsonic Electronics Co., Ltd. (“Applicant”) has appealed from the
Trademark Examining Attorney’s final refusal to register the mark VSONIC, stylized
as shown below, for “computer peripheral devices; tape recorders; cabinets for
loudspeakers; chargers for electric batteries; microphones; televisions and monitors;

1 Applicant has been represented by several different attorneys, with two different
attorneys prosecuting the application, although since April 15, 2015 attorneys from the
Anova Law Group were Applicant’s attorneys of record. Applicant’s current attorney was
appointed at the time of the filing of the notice of appeal.
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theft prevention installations, electric, namely home intrusion alarm system; radios;
cassette players; headphones” in Class 9:2

Registration has been refused on two bases. The first refusal is 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 mark Vsonic, in the stylized form shown below, registered for
“consumer electronic products, namely, digital electronics namely, DVD players and
hi-fi systems comprising stereo receivers, audio speakers and stereo amplifiers”3 that,
if used on Applicant’s identified goods, it is likely to cause confusion or mistake or to
deceive:
.
The second refusal is pursuant to Trademark Rule 2.37, 37 C.F.R. § 2.37, requiring a
description of the mark.
We affirm both refusals to register.
I. Preliminary Issues
In its appeal brief Applicant asserts that it offers $100 headphones on Amazon,
but the Examining Attorney objected to our considering this statement, since there

2 Application Serial No. 79156102, filed August 14, 2014 pursuant to Section 66(a) of the
Trademark Act.
3 Registration No. 3038894, issued January 1, 2010;
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is no evidence in the record to support it. Applicant attempted to remedy this by
submitting with its reply brief the declaration of its attorney, with Exhibit A, a page
taken from the Amazon website. This evidence is manifestly untimely, and will not
be considered. See Trademark Rule 2.142(d) (the record in the application should be
complete prior to the filing of an appeal).
Also in its reply brief Applicant requests, if the Section 2(d) refusal to register is
not reversed, that “in the alternative” the application be remanded so that Applicant
may “introduce evidence of targeted consumers and other evidence into the
prosecution record and seek to amend the description of goods associated with the
instant application to indicate unique characteristics and targeted consumer segment
of Applicant’s mark.” 7 TTABVUE 2. However, once an application has been
considered and decided on appeal it will not be reopened except for the entry of a
disclaimer or upon order of the Director. Thus, a remand by the Board is not possible
if the refusals are affirmed.
To the extent that Applicant seeks remand of the application prior to the issuance
of a decision in order to enter additional evidence into the record and propose an
amendment to the identification of goods, a request for remand must be supported by
a showing of good cause, and whether good cause will be found depends, in part, on
the stage of the appeal at the time the request is filed, and the reason given for the
delay. See TBMP §§ 1205.01, 1209.04 (April 2016). Here, the request for remand in
the reply brief was made at a very late stage indeed, and Applicant has given no
reason why it could not have submitted an amendment to the identification of goods
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or evidence as to consumers or “other evidence” during examination, rather than
waiting until briefing was completed to request a remand.4 Applicant has failed to
show good cause, and its request for remand in the alternative is therefore denied.
Also in its reply brief Applicant states that if the Board decides to remand the
application in accordance with Applicant’s alternative request, Applicant is willing to
amend its application to include a description of its mark. Again, Applicant has given
no reason why it waited so long in the appeal process to request remand. In fact, the
suggestion that the application be remanded so that Applicant can submit a
description of the mark seems to be contingent on the Board’s granting Applicant’s
alternative request for remand in order to submit additional evidence. The record
shows that Applicant did not even address the requirement for a description of the
mark in its response to the first Office action, or in its appeal brief, in which it stated
that likelihood of confusion was the only issue presented in the appeal. Because of
the delay in requesting remand, and the lack of any explanation for the delay,
Applicant has failed to show good cause for remanding the application. We
acknowledge that seeking remand to comply with a requirement of the Examining
Attorney will often be found to constitute good cause, but in this case Applicant is
offering a description that is different from the description suggested by the
Examining Attorney. As a result, consideration of the proposed description would
require further examination, and if the proposed description were found

4 Applicant did not submit any evidence with its response to the first Office action, nor did
it file a request for reconsideration, which would have given it an opportunity to submit
evidence after receiving the final Office action.
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unacceptable, that issue would require further briefing. Thus, when the situation is
considered in its totality, we find that Applicant has not shown good cause to remand
the application for consideration of a proposed description of the mark.
II. Likelihood of Confusion Refusal
Our determination of the issue of likelihood of confusion under Section 2(d) of the
Trademark Act 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, 567 (CCPA 1973). See also In re Majestic Distilling Co., Inc.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). See also In re Dixie Restaurants Inc.,
105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
We first consider the du Pont factor of the similarity or dissimilarity of the marks
in their entireties as to appearance, sound, connotation and commercial impression.
The marks are reproduced below.

The only literal element in both is VSONIC, and this identity makes the marks
identical in pronunciation and connotation. Further, the stylization of the marks is
not so distinctive or compelling that consumers would view them as identifying
different sources of the goods. Although there are lines or breaks (depending on one’s
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point of view) in the letters of Applicant’s mark, it is still clear what the letters are,
and as a result, the mark would still be understood and pronounced as VSONIC,
rather than an amorphous design of letters with parallel lines or breaks in them. As
a general rule, when a mark consists of both a word and a design, the word is normally
accorded greater weight because the word would be used by purchasers to request the
goods or services. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). That
principle applies in this case, where Applicant’s mark does not have a separate
design, but merely some stylization to the lettering. Consumers will refer to it as
VSONIC, not “the mark with the lines in the letters.”
Applicant asserts that the stylization of its mark serves to distinguish it from
Registrant’s “plain-typed or substantially plain-typed font,” brief, 4 TTABVUE 6,
arguing that the stylization “conveys a strong connotation of audio waves, which
relates to the audio equipment, such as earphones and headphones produced by
[Applicant].” Id. at 7. We recognize that Applicant considers that “the term VSONIC
appears to be written with a pattern that resembles audio waves floating horizontally
through the letters.” Reply brief, 7 TTABVUE 3. While that appearance may be
Applicant’s intention, we are not persuaded that many consumers will understand
the lines in the VSONIC to be audio waves, or, even if they did, whether that would
eliminate source confusion given Registrant’s highly similar mark.5

5 Applicant has raised the concern that its argument that the stylization connotes audio
waves will not be considered because that description is not in the record. That is not
correct. Whether or not the description is in the record, we must determine what
impression the mark is likely to convey to consumers based on the mark itself, not on any
description Applicant may provide, or any characterization that Applicant asserts in an
argument.
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There are clearly some differences in the stylization of Applicant’s mark and the
cited mark. The registered mark is shown in an upper and lower case “normal” font,
with almost imperceptible stylization in that the letters are not all on the same base
line, and the “N” is slightly larger. However, merely because Applicant’s mark has a
stylization does not mean that consumers will regard this stylization as indicating a
source different from the source of the registrant’s goods. The commercial impression
of the marks is the same, that of the term VSONIC. Although consumers may note
that the letters in Applicant’s mark are more stylized than the letters in the cited
VSONIC mark, they are likely to view the two marks as variations of each other, with
both indicating a single source. Accordingly, the similarities in pronunciation,
connotation and commercial impression outweigh any differences in appearance
caused by the stylization of the marks. This du Pont factor favors a finding of
likelihood of confusion.
The second du Pont factor is the similarity or dissimilarity and nature of the goods
or services as described in the application and registration. Applicant’s goods, as
identified in its application, are “computer peripheral devices; tape recorders;
cabinets for loudspeakers; chargers for electric batteries; microphones; televisions
and monitors; theft prevention installations, electric, namely home intrusion alarm
system; radios; cassette players; headphones”; the goods identified in the cited
registration are “consumer electronic products, namely, digital electronics namely,
DVD players and hi-fi systems comprising stereo receivers, audio speakers and stereo
amplifiers.”
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In response to the first Office action, in which the refusal based on likelihood of
confusion with Registrant’s VSONIC mark was first raised, Applicant deleted from
its application “loudspeakers,” the only goods that were identical to goods in the cited
registration. However, it is not necessary that the products of the parties be similar
or even competitive to support a finding of likelihood of confusion, it being sufficient
if the respective products are related in some manner and/or if the circumstances
surrounding their marketing are such that they could give rise to the mistaken belief
that they emanate from the same source. Coach Servs. Inc. v. Triumph Learning LLC,
668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012). Therefore, Applicant’s
arguments that the goods are not the same are unavailing.
The Examining Attorney has submitted a large number of third-party
registrations to demonstrate the relatedness of Applicant’s identified goods and the
goods in the cited registration. To some extent, this is because Applicant’s
identification includes so many items, and the Examining Attorney submitted
evidence to show the relatedness of many of them to Registrant’s goods. If Applicant’s
mark used for any of its goods is likely to cause confusion with the registrant’s mark
for any of its goods, the application must be refused registration. 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).
Accordingly, we highlight some of the many registrations covering the headphones in
Applicant’s application and the audio speakers in the cited registration. They include
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Registration Nos. 4605509, 4646875, 4636214, 4621134, 464496, 4645096, 4352813,
4612131, 4520607, 4326932 and 4694926. All of these registrations include, in their
identification of goods, headphones and audio speakers. Third-party registrations
that individually cover a number of different items and that are based on use in
commerce serve to suggest that the listed goods and/or services are of a type that may
emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785-86 (TTAB 1993).6
This evidence is sufficient for us to conclude that headphones and speakers are
related goods, and that, if they were sold under confusingly similar marks, consumers
would be likely to assume that they originate from a single source. We are not
persuaded by Applicant’s argument that its products “target the high end audio
equipment market, specializing in a small subset of goods, and marketing to
consumers who desire the highest quality.” Brief, 4 TTABVUE 8. Even if Applicant
had submitted evidence to support this statement, it would be unavailing because its
goods as identified in the application are not restricted to a particular subset of
consumers. The same is true of Registrant’s goods. The identification in the
registration does not restrict the sales to any particular classes of customers. Thus,
we must consider both Applicant’s and Registrant’s goods to sell at all price points for
such products. In this respect, the channels of trade du Pont factor favors a finding

6 We have given no consideration to the third-party registrations that were not based on use
in commerce.
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of likelihood of confusion, since all consumers who are interested in audio equipment
may encounter speakers and headphones.
With respect to the conditions of purchase du Pont factor, Applicant argues that
its products are “targeted exclusively to consumers who are knowledgeable about the
differences in high-end audio equipment and who are highly likely to be repeat
consumers in the market.” Id. at 7. Again, however, the identifications in the
application and cited registration are unrestricted as to price point or type of
customer. Therefore, we cannot accept Applicant’s assertion that speakers and
headphones are purchased with anything more than ordinary care. This du Pont
factor is neutral. We add that even careful purchasers would be likely to be confused
because of the strong similarity of the marks and the relatedness of the goods.
These are the only du Pont factors on which Applicant and the Examining
Attorney have submitted evidence or argument. To the extent that any other factors
are relevant, we treat them as neutral.
In view of the similarity of the marks and the relatedness of the goods, we find
that Applicant’s stylized VSONIC mark, if used for at least some of the goods
identified in its application,7 is likely to cause confusion with the mark and goods in
the cited registration.

7 Although we have concentrated our comments and recital of the evidence on the
relatedness of speakers and headphones in order not to overwhelm this opinion with a
recital of all the evidence submitted by the Examining Attorney, there are a substantial
number of third-party registrations that show relatedness of additional goods in Applicant’s
application and the goods in the cited registration.
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III. Description of Mark Requirement
The second basis for refusal is Applicant’s failure to comply with the requirement
for a description of its mark. Trademark Rule 2.37 requires that “A description of the
mark must be included if the mark is not in standard characters.” Applicant’s mark
is clearly not in standard characters, in fact, the stylization of its mark forms a major
part of Applicant’s argument against the likelihood of confusion refusal. As noted
above, Applicant simply ignored this requirement in its response to the first Office
action and in its appeal brief. It only addressed it in its reply brief, and then only to
offer that if the application were remanded, it “stands willing to amend its application
to further specify its distinct trademark design.” 7 TTABVUE 3.
Thus, Applicant has not argued in any way that the refusal based on this
requirement should not be affirmed. For example, Applicant has not provided any
explanation as to why it did not comply with the requirement to submit a description
of its mark, or why the provisions of Rule 2.37 should not apply to Applicant’s mark.
Accordingly, the refusal on the basis that Applicant failed to comply with the
requirement for a description of its mark is affirmed.
Decision: The refusal to register Applicant’s mark VSONIC in stylized form is
affirmed on the likelihood of confusion ground (Section 2(d)) and on the failure to
provide a description of the mark (Trademark Rule 2.37).