Silent Events, Inc.v.Quiet Events Inc. (oppositions) --- Quiet Events Inc. v. Silent Events, Inc. (cancellation)

Trademark Trial and Appeal Board

Jan 21, 2020

91238912 (T.T.A.B. Jan. 21, 2020)

Mailed: January 21, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Silent Events, Inc.
v.
Quiet Events, Inc.

Opposition No. 91234202 (Parent Case)1
Opposition No. 91238912
_____

Quiet Events, Inc.
v.
Silent Events, Inc.

Cancellation No. 92063149
_____

Patrick G. Walker of Farris Bobango PLC,
for Silent Events, Inc.

William R. Samuels of Scarinci Hollenbeck LLC,
for Quiet Events, Inc.
______

Before Bergsman, Lynch, and Pologeorgis,
Administrative Trademark Judges.

1 Opposition No. 91234202 was consolidated with Cancellation No. 92063149 by Board
order dated August 25, 2017. See 8 TTABVUE in Opposition No. 91234202. We sua
sponte consolidate Opposition No. 91238912 with the already-consolidated proceedings
because this latter opposition proceeding involves the identical parties and common or
overlapping questions of law and fact. Fed. R. Civ. P. 42(a); see also Regatta Sport Ltd.
v. Telux-Pioneer Inc., 20 USPQ2d 1154, 1156 (TTAB 1991). Unless otherwise specified,
all TTABVUE citations in this decision reference the docket in the parent case, i.e.,
Opposition No. 91234202.
THIS OPINION IS NOT
A PRECEDENT OF THE TTAB
Opposition Nos. 91234202 and 91238912
Cancellation No. 92063149

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Opinion by Pologeorgis, Administrative Trademark Judge:

Quiet Events, Inc. (“QEI”) has applied to register on the Principal Register
(1) the standard character mark QUIET EVENTS (“EVENTS” disclaimed) for
“arranging, organizing, conducting, and hosting social entertainment events”
in International Class 41;2 and (2) the composite mark QUIETEVENTS and
design, as displayed below, for “online retail store services and telephone
ordering services featuring headphones, belt clip transceivers, music players,
inventory management systems, mixers, microphones, generators, batteries,
LED lights, and stage lights” in International Class 35 and “rental of sound,
light, and audio equipment, specifically wireless headphones with belt clip
transceivers, music players, mixers, microphones, batteries, LED lights, and
stage lights” in International Class 41.3

Silent Events, Inc. (“SEI”) opposes registration of both of QEI’s marks on
the ground of likelihood of confusion under Section 2(d) of the Trademark Act,

2 Application Serial No. 87228747, filed on November 7, 2016, based on use in
commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming July
1, 2012 as both the date of first use and the date of first use in commerce. This
application is subject to Opposition No. 91234202.
3 Application Serial No. 87228788, filed on November 7, 2016, based on use in
commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming
March 22, 2012 as both the date of first use and the date of first use in commerce as to
both classes of services. The description of the mark reads as follows: “The mark
consists of a cartoon face with headphones and the words ‘quietevents’ on the right of
it.” Color is not claimed as a feature of the mark. This application is subject to
Opposition No. 91238912.
Opposition Nos. 91234202 and 91238912
Cancellation No. 92063149

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15 U.S.C. § 1052(d). In support of its Section 2(d) claim, SEI alleges, inter alia,
prior use and ownership of a registration on the Principal Register of the mark
SILENT EVENTS (“EVENTS” disclaimed) for “Entertainment services,
namely, arranging, organizing and conducting special events for social
entertainment purposes that feature live musical concerts supplied to an
audience by means of personal wireless headphones” in International Class 41.4
In its answers to the notices of opposition, QEI denied the salient
allegations asserted therein. QEI also asserted the following “affirmative
defenses”: (1) failure to state a claim upon which relief may be granted, (2)
laches based on a prior registration issued to QEI for the mark QUIET
EVENTS for “rental of headsets,”5 and (3) various defenses that go to the merits
of SEI’s likelihood of confusion claim. Insofar as QEI neither filed a formal
motion to dismiss for failure to state a claim during the interlocutory phase of
the opposition proceedings, nor argued this asserted affirmative defense in its
brief, it is hereby deemed waived. Alcatraz Media, Inc. v. Chesapeake Marine
Tours Inc., 107 USPQ2d 1750, 1753 n.6 (TTAB 2013), aff’d mem., 565 F. App’x
900 (Fed. Cir. 2014). Similarly, because QEI did not argue its laches affirmative
defense in its brief, it is also deemed waived. Swatch AG (Swatch SA) (Swatch
Ltd.) v. M.Z. Berger & Co., 108 USPQ2d 1463, 1465 n.3 (TTAB 2013) (opposer’s

4 Registration No. 4141745, registered on May 15, 2012; renewed. The mark subject to
this registration is in standard character form.
5 We construe this affirmative defense as one brought under the “prior registration” or
Morehouse defense. See Morehouse Mfg. Corp. v. Strickland & Co., 407 Fl.2d 881, 160
USPQ 715 (CCPA 1969).
Opposition Nos. 91234202 and 91238912
Cancellation No. 92063149

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pleaded claims not argued in its brief deemed waived), aff’d, 787 F.3d 1368, 114
USPQ2d 1892 (Fed. Cir. 2015). With regard to the remaining “affirmative
defenses,” we construe them as mere amplifications of the denials in QEI’s
answers. See Order of Songs of Italy in America v. Profumi Fratelli Nostra AG,
36 USPQ2d 1221, 1223 (TTAB 1995).
QEI filed a petition to cancel SEI’s registration for the mark SILENT
EVENTS on the ground that the mark is the generic name for the services
identified in the registration.6
In its answer to the petition to cancel, SEI denied the salient allegations
asserted therein, except that it admitted to the filing date and the filing basis
of the underlying application of its subject registration.7
I. The Record
The record includes the pleadings in all the consolidated proceedings and,
by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the application
files of QEI’s involved applications and the registration file of SEI’s subject
registration.
SEI has submitted the following evidence:
• SEI’s Notices of Reliance on (1) QEI’s responses to SEI’s
Second Set of lnterrogatories Nos. 3-4, 15, 16-18, and 20
and exhibits referenced in those responses;8 (2) QEI’s
responses to SEI’s Requests for Admission and

6 1 TTABVUE in Cancellation No. 92063149.
7 15 TTABVUE 2 (¶ 3) in Cancellation No. 92063149.
8 9 TTABVUE.
Opposition Nos. 91234202 and 91238912
Cancellation No. 92063149

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corresponding exhibits;9 (3) plain copies of SEI’s pleaded
Registration No. 4141745 and Registration No. 4451061 for
the mark QUIET EVENTS purportedly owned by QEI for
“rental of wireless headsets”;10 and (5) various materials
obtained from the Internet;11

• The testimony declaration of Mr. Ryan Dowd, SEI’s owner,
and accompanying Exhibits A-M;12 and

• A second testimony declaration of Mr. Dowd regarding the
trademark policing efforts of SEI and accompanying
exhibits.13

QEI has submitted the following evidence:
• The testimony declaration of William Petz, QEI’s owner and CEO,
and accompanying Exhibits A-O;14

9 10 TTABVUE.
10 11 TTABVUE. Plain copies of registration certificates are incompetent to show
current status and title information, as required by Trademark Rule 2.122(d)(1), 37
C.F.R. § 2.122(d)(1); see also United Global Media Group, Inc. v. Tseng, 112 USPQ2d
1039, 1041 (TTAB 2014). Notwithstanding and as noted above, SEI’s pleaded
Registration 4141745 is of record by operation of Trademark Rule 2.122(b). However,
the submission of the plain copy of Registration No. 4451061 for the mark QUIET
EVENTS purportedly owned by QEI for “rental of wireless headsets” under SEI’s
notice of reliance alone does not make that registration of record.
11 12 and 34 TTABVUE. The Board notes that SEI failed to indicate clearly the general
relevance of any of the Internet evidence submitted under its notice of reliance, as
required by Trademark Rule 2.122(g), 37 C.F.R. § 2.122(g). Merely stating that the
material is relevant to the issues in the proceeding is insufficient. See Barclays Capital
Inc. v. Tiger Lily Ventures Ltd., 124 USPQ2d 1160 1164 (TTAB 2017) (“To meet th[is]
requirement, the offering party should associate the materials with a specific factor
relevant to a specific and pleaded claim or defense, or a specific fact relevant to
determining a particular claim or defense.”); see also FUJIFILM SonoSite, Inc. v.
Sonoscape Co., 111 USPQ2d 1234, 1236-37 (TTAB 2014) (citations omitted). However,
since QEI did not object to SEI’s notice of reliance on this ground and because the
failure is a curable defect, such an objection is deemed waived. Cf. In re Mueller Sports
Med., Inc., 126 USPQ2d 1584, 1587 (TTAB 2018) (Board may consider the objection to
Internet evidence waived if examining attorney fails to object to the evidence in the
first Office action following the response and to advise the applicant of proper way to
make Internet evidence of record).
12 13 TTABUVE.
13 33 TTABVUE.
14 14 TTABVUE.
Opposition Nos. 91234202 and 91238912
Cancellation No. 92063149

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• Notices of Reliance on (1) various materials obtained from Internet
that purportedly demonstrate use of the designation SILENT and
SILENT EVENTS by third-parties in the promotion of services
identical or similar to those identified in SEI’S SILENT EVENTS
registration;15 (2) SEI’s responses to QEI’s requests for admission,16
(3) plain copies of five registrations purportedly owned by QEI,17 (4)
the file contents of QEI’s applications subject to the opposition
proceedings in this consolidated case,18 (5) a plain copy of the
registration certificate of SEI’s subject registration,19 and (6) a copy
of a patent for a headphone that has wireless broadcast system
capabilities purportedly owned by Ryan Dowd, SEI’s owner;20

• The expert report of Amanda Brown, PhD in support of QEI’s
defenses in the opposition proceedings;21

• The expert report of Professor Gregory R. Guy in support of QEI’s
defenses in the opposition proceedings;22

• Thirteen testimony affidavits and accompanying exhibits from
individuals/companies who provide services similar or identical to
SEI’s services and who purportedly use the term “silent” in their

15 15 and 36 TTABVUE. As with SEI’s submission of Internet materials, QEI failed to
sufficiently specify the relevancy of these materials to the elements of the claims at
issue. However, since SEI did not object to this evidence on such grounds, the objection
is deemed waived. See n. 11, supra.
16 16 TTABVUE 7-11.
17 16 TTABVUE 12-26. As noted, plain copies of registration certificates are
incompetent to show the status and title of said registrations, as required by
Trademark Rule 2.122(d)(1). Accordingly, the plain copies of the five registration
certificates submitted by QEI under its notice of reliance alone are not properly of
record. That being said, QEI’s CEO, Mr. Petz, testified that QEI is the owner of these
five registrations and that they are valid and subsisting. See Petz Decl. ¶¶ 6-10, 14
TTABVUE 3-4. Accordingly, the five registrations are properly of record pursuant to
Mr. Petz’s testimony.
18 16 TTABVUE 27-113. It was unnecessary for QEI to submit the file contents of its
involved applications since they are automatically of record under Trademark Rule
2.122(d)(1).
19 16 TTABVUE 114-116. Although not properly of record through the submission of a
plain copy of the registration for the reasons explained above, SEI’s subject registration
for the mark SILENT EVENTS is also automatically of record pursuant to Trademark
Rule 2.122(d)(1).
20 16 TTABVUE 117-127.
21 17 TTABVUE.
22 18 TTABVUE.
Opposition Nos. 91234202 and 91238912
Cancellation No. 92063149

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advertising, marketing and promotional materials, as well as the
phrase “silent event(s)” for describing events where music is played
on wireless headphones given to individuals who attend their
events;23 and

• An additional testimony declaration from Mr. Petz, QEI’s owner
and CEO, and accompanying exhibits regarding SEI’s policing
efforts of its SILENT EVENTS mark.24

As noted, both parties, by way of their respective notices of reliance,
submitted printouts from various websites downloaded from the Internet.
Although admissible for what they show on their face, see Trademark Rule
2.122(e)(2), 37 C.F.R. § 2.122(e)(2), this evidence also contains hearsay that may
not be relied upon for the truth of the matters asserted unless supported by
testimony or other evidence. Fed. R. Evid. 801(c); WeaponX Performance Prods.
Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1038 (TTAB 2018);
Safer, Inc. v. OMS Invs., Inc., 94 USPQ2d 1031, 1039-40 (TTAB 2010);
TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”)
§ 704.08(b) (2019) (“The probative value of Internet documents is limited. They
can be used to demonstrate what the documents show on their face. However,
documents obtained through the Internet may not be used to demonstrate the
truth of what has been printed.”).

23 19-31 TTABVUE.
24 37 TTABVUE.
Opposition Nos. 91234202 and 91238912
Cancellation No. 92063149

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II. Cancellation No. 92063149
We first address QEI’s claim of genericness asserted in Cancellation No.
92063149 in this consolidated case.25
A. Standing
Standing is a threshold issue that must be proven by the plaintiff in every
inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d
1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401
(2015). The U.S. Court of Appeals for the Federal Circuit has enunciated a
liberal threshold for determining standing, namely that a plaintiff must
demonstrate that it possesses a “real interest” in a proceeding beyond that of a
mere intermeddler, and “a reasonable basis for his belief of damage.” Empresa
Cubana Del Tabaco 111 USPQ2d at 1062 (citing Ritchie v. Simpson, 170 F.3d
1902, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999)). A “real interest” is a “direct
and personal stake” in the outcome of the proceeding. Ritchie v. Simpson, 50
USPQ2d at 1026.
QEI has submitted testimony demonstrating that it is “in the business of
providing entertainment services, namely, arranging, organizing and

25 QEI, as the applicant in Opposition No. 91234202, asserted a counterclaim for
cancellation of SEI’s pleaded Registration No. 4141745 on the same ground of
genericness as set forth in its petition to cancel. Because the petition for cancellation
was filed over one year before Opposition No. 91234202 was instituted, the Board, by
order dated June 5, 2017, stated that it would consider QEI’s claim for cancellation of
Registration No. 4141745 as it is set forth in QEI’s earlier-filed petition for cancellation
and that the redundant counterclaim in the opposition proceeding would be given no
consideration. See 8 TTABVUE.
Opposition Nos. 91234202 and 91238912
Cancellation No. 92063149

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conducting events that require attendees to wear special headphones provided
by [QEI].”26 SEI similarly provided testimony showing that it “is in the business
of providing entertainment services, namely, arranging, organizing and
conducting special events that feature live musical concerts supplied to an
audience by means of a personal wireless headphone.”27 In view of the foregoing,
QEI has established its standing as SEI’s competitor. Books on Tape, Inc. v.
Booktape Corp., 836 F.2d 519, 5 USPQ2d 1301, 1302 (Fed. Cir. 1987)
(competitor has standing to challenge registration on the ground that the term
sought to be registered is generic); Nobelle.com, LLC v. Qwest Commc’n Int’l,
Inc., 66 USPQ2d 1300, 1304 (TTAB 2003) (“To establish its standing to assert
a mere descriptiveness or genericness ground of opposition or cancellation, ‘a
plaintiff need only show that it is engaged in the manufacture or sale of the
same or related goods as those listed in the defendant’s involved application or
registration and that the product in question is one which could be produced in
the normal expansion of plaintiff’s business; that is, that plaintiff has a real
interest in the proceeding because it is one who has a present or prospective
right to use the term descriptively [or generically] in its business.’”) (quoting
Binney & Smith Inc. v. Magic Marker Indus., Inc., 222 USPQ 1003, 1010 (TTAB
1984)); Hartwell Co. v. Shane, 17 USPQ2d 1569, 1570 n.3 (TTAB 1990) (“a
person who is in a position to use a term descriptively has standing to petition

26 Petz Decl., ¶¶ 2-3, 14 TTABVUE 3.
27 Dowd Decl., ¶ 4, 13 TTABVUE 3.
Opposition Nos. 91234202 and 91238912
Cancellation No. 92063149

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to cancel a registration of the term on the ground that it has become the generic
name for the goods or services, or a portion thereof, for which it is registered.”).
Moreover, QEI’s standing to seek cancellation of SEI’s pleaded registration is
buttressed by its position as defendant in the opposition proceedings of this
consolidated case wherein SEI has pleaded the subject registration in support
of its asserted claims. See Ohio State Univ. v. Ohio Univ., 51 USPQ2d 1289,
1293 (TTAB 1999). Finally, we note that SEI does not contest QEI’s standing.
B. Genericness – Applicable Law
Section 14 of the Trademark Act provides:
A petition to cancel a registration of a mark... may... be filed...
(3) At any time if the registered mark becomes the generic name
for the goods or services, or a portion thereof, for which it is
registered. ... If the registered mark becomes the generic name for
less than all of the goods or services for which it is registered, a
petition to cancel the registration for only those goods or services
may be filed. A registered mark shall not be deemed to be the
generic name of goods or services solely because such mark is also
used as a name of or to identify a unique product or service. The
primary significance of the registered mark to the relevant public
rather than purchaser motivation shall be the test for
determining whether the registered mark has become the generic
name of goods or services on or in connection with which it has
been used.

15 U.S.C. § 1064(3).
A mark is a generic name if it refers to the class or category of goods or
services on or in connection with which it is used. In re Dial-A-Mattress
Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001) (citing H.
Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d
Opposition Nos. 91234202 and 91238912
Cancellation No. 92063149

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987, 228 USPQ 528 (Fed. Cir. 1986)) (“Marvin Ginn”). The test for determining
whether a mark is generic is its primary significance to the relevant public.
Trademark Act § 14(3). In other words, any term that the relevant public uses
or understands to refer to the genus of goods or services, or a key aspect or
subcategory of the genus, is generic. Royal Crown Co., Inc. v. Coca-Cola Co.,
892 F.3d 1358, 127 USPQ2d 1041, 1046-47 (Fed. Cir. 2018). “[A] term is generic
if the relevant public understands the term to refer to part of the claimed genus
of goods or services, even if the public does not understand the term to refer to
the broad genus as a whole.” In re American Fertility Society, 188 F.3d 1341, 51
USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19
USPQ2d 1551 (Fed. Cir. 1991); and Marvin Ginn, supra.
Making this determination “involves a two-step inquiry: First, what is the
genus of goods or services at issue? Second, is the term sought to be registered
... understood by the relevant public primarily to refer to that genus of goods or
services?” Marvin Ginn, 228 USPQ at 530. A party charging genericness must
prove its claim by a preponderance of the evidence. Princeton Vanguard LLC v.
Frito-Lay N. Am., Inc., 796 F.3d 960, 114 USPQ2d 1827, 1830 (Fed. Cir. 2015)
(“In an opposition or cancellation proceeding, the opposer or petitioner bears
the burden of proving genericness by a preponderance of the evidence.”) (citing
Magic Wand Inc., 19 USPQ2d at 1554); Alcatraz Media, Inc., 7 USPQ2d at
1761.

Opposition Nos. 91234202 and 91238912
Cancellation No. 92063149

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1. The Genus of Services
Our first task under Marvin Ginn is to determine, based on the evidence of
record, the genus of SEI’s services. We find that the identification of services in
SEI’s registration properly sets forth the genus of services. See Magic Wand
Inc., 19 USPQ2d at 1552 (“[A] proper genericness inquiry focuses on the
description of services set forth in the certificate of registration.”). Accordingly,
we find that the genus of services at issue is adequately defined as,
“Entertainment services, namely, arranging, organizing and conducting special
events for social entertainment purposes that feature live musical concerts
supplied to an audience by means of personal wireless headphones.”
2. The Relevant Public
The second part of the genericness test is whether the relevant public
understands the designation primarily to refer to that class of services. The
relevant public for a genericness determination is the purchasing or consuming
public for the identified services. Magic Wand Inc., 19 USPQ2d at 1553.
Because there are no restrictions or limitations to the channels of trade or
classes of consumers for the services identified in SEI’s subject registration, the
relevant consuming public comprises both the entities or persons who hire
companies that provide special events for social entertainment purposes that
feature live musical concerts supplied to an audience by means of personal
wireless headphones, as well as the attendees of such events.

Opposition Nos. 91234202 and 91238912
Cancellation No. 92063149

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3. Public Perception
With this in mind, we now consider whether the primary significance of the
designation SILENT EVENTS is understood by the relevant purchasing public
to refer to the class or category of services identified in SEI’s registration.
Evidence of the relevant public’s understanding of a term may be obtained from
any competent source, including consumer surveys, dictionary definitions,
newspapers and other publications. In re Reed Elsevier, 482 F.3d 1376, 82
USPQ2d 1378, 1380 (Fed. Cir. 2007). “[E]vidence of competitors’ use of
particular words as the name of their goods or services is, of course, persuasive
evidence that those words would be perceived by purchasers as a generic
designation for the goods and services.” Cont’l Airlines, Inc. v. United Air Lines,
Inc., 53 USPQ2d 1385, 1395 (TTAB 1999).
a. Dictionary Definitions
The record includes the dictionary definition of the term “silent” which is
defined as “free from sound or noise.”28 We take judicial notice of the definition
of the word “event” which is defined as “a social occasion or activity.”29

28 Petz Decl., Exh. O (www.www.merriam-webster.com); 14 TTABVUE 280.
29 www.merriam-webster.com (Merriam Webster Dictionary) (accessed September 29,
2019) The Board may take judicial notice of dictionary definitions, including
definitions in technical dictionaries, translation dictionaries and online dictionaries
which exist in printed format or that have regular fixed editions. In re White Jasmine
LLC, 106 USPQ2d 1385, 1392 n.23 (TTAB 2013) (Board may take judicial notice of
online dictionaries that exist in printed format or have regular fixed editions); In re
Jonathan Drew, Inc., 97 USPQ2d 1640, 1642 n.4 (TTAB 2011) (Board may take judicial
notice of dictionaries, including online dictionaries which exist in print format).
Opposition Nos. 91234202 and 91238912
Cancellation No. 92063149

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b. Third-Party Uses
As noted above, QEI submitted the unrebutted testimony affidavits of
thirteen persons/entities, each of whom testified that they provide services
which include organizing, conducting, and hosting social entertainment events,
including silent events, where people dance to music listened to on wireless
headphones.30 Each of the affiants also testified, inter alia, that (1) to the best
of their knowledge, the term “silent” is commonly used to describe such events
utilizing headphones, (2) they frequently use the term “silent” to describe their
services in their advertising, marketing and promotional communications, and
(3) they commonly use the phrase “silent event(s)” for describing the events
where music is played on wireless headphones given to individuals that attend
the event, which is therefore silent.31
Each of the affiants also submitted samples of their advertising and
promotional materials that employ the phrase “silent events” or the word
“silent” in combination with the terms “disco” or “party” in a purportedly
generic fashion when used in association with services identical or similar to
those identified in SEI’s registration. A non-exhaustive list of such use is
identified below:
• Exhibit A of the Testimony Declaration of Christopher S. Clinton,
Owner/Operator of Not So Loud Party, LLC32

30 19-31 TTABVUE.
31 Id.
32 19 TTABVUE 6-7.
Opposition Nos. 91234202 and 91238912
Cancellation No. 92063149

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Opposition Nos. 91234202 and 91238912
Cancellation No. 92063149

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• Exhibit B of the Testimony Declaration of Mr. Clinton33

• Exhibits A & B of the Testimony Declaration of George Gayl, CEO of
Silent Storm Sound System, LLC34

33 19 TTABVUE 7.
34 21 TTABVUE 6.
Opposition Nos. 91234202 and 91238912
Cancellation No. 92063149

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• Exhibit A of the Testimony Declaration of John Brown, owner of Austin
Silent Disco35

• Exhibits A & B of the Testimony Declaration of Jason Gabel, President
of Silent Party USA36

35 22 TTABVUE 6.
36 23 TTABVUE 6-8.
Opposition Nos. 91234202 and 91238912
Cancellation No. 92063149

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Opposition Nos. 91234202 and 91238912
Cancellation No. 92063149

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• Exhibit A of the Testimony Declaration of Ronnie Williams Jr. of
BackOut Experience

Opposition Nos. 91234202 and 91238912
Cancellation No. 92063149

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• Exhibits A, B and C of the Testimony Declaration of Castel Valere-
Couturier of Unique Entertainment dba Sound Off37

37 30 TTABVUE 6-9.
Opposition Nos. 91234202 and 91238912
Cancellation No. 92063149

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QEI also submitted excerpts from various company websites that provide
services identical or similar to those provided by SEI and where the phrase
“silent event(s)” is employed in a generic fashion. A representative sample is
provided below:
• (www.quietcoyoteevents.com)38

38 36 TTABVUE 12.
Opposition Nos. 91234202 and 91238912
Cancellation No. 92063149

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Opposition Nos. 91234202 and 91238912
Cancellation No. 92063149

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• (www.shutupanddance.com)39

• (www.silentdis.co)40

39 36 TTABVUE 14 and 16.
40 36 TTABVUE 18-19.
Opposition Nos. 91234202 and 91238912
Cancellation No. 92063149

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Opposition Nos. 91234202 and 91238912
Cancellation No. 92063149

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• (www.soundoffexperience.com)41

41 36 TTABVUE 20 and 22-23.
Opposition Nos. 91234202 and 91238912
Cancellation No. 92063149

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• (www.fallentreesilentdis.co)42

42 36 TTABVUE 27-28.
Opposition Nos. 91234202 and 91238912
Cancellation No. 92063149

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• (www.globalsources.com)43

43 36 TTABVUE 32.
Opposition Nos. 91234202 and 91238912
Cancellation No. 92063149

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• (www.issuu.com)44

• (www.quietriotconcepts)45

44 36 TTABVUE 38.
45 36 TTABVUE 39.
Opposition Nos. 91234202 and 91238912
Cancellation No. 92063149

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c. Newspapers and Publications
Additionally, QEI submitted a number of online newspaper articles and
publications that evidence that the term “silent events” is widely understood
and widely used by the relevant trade and public to identify special events for
social entertainment purposes that feature live musical concerts supplied to an
audience by means of personal wireless headphones as identified in SEI’s
registration. A non-exhaustive list of excerpts from such online publications is
provided below:
• “Urban Fetes brings the fun back to night life, according to
RollingOut.com. Pioneering the social movement of liberated, yet
contained noise, the company has curated more than parties. Urban
Fetes has also produced silent corporate socials, fitness classes, music
and entertainment listening events and more. The silent event
experience, where attendees get their own set of noise-canceling
headphones (color coded at times to represent a certain genre of music or
DJ) and can vibe out and not feel awkward or alone as they are
surrounded by new and old friends who are sharing the same experience
from a different viewpoint. Urban Fetes has curated silent events for
people such as Vic Mensa, Bobby Valentino, Rotimi, Nick Grant and a
list of other celebrities and entertainers.” (www.blavity.com);46

• “There are quite a few companies which now offer silent party events
with the biggest being Quiet Events. Silent discos might just become
mainstream and there may be designated venue just for silent events
now.” (www.zagline.com);47

• “Walker discovered the concept overseas and first executed it in the
States more than two years ago. Since then, the company has done more
than 400 Silent Events, which are not relegated to the club. ‘We produce
panels [and] we actually just did a church service with the silent
headphones,’ Walker said. “We’ve done bar mitzvahs. We’ve done

46 36 TTABVUE 44-45.
47 36 TTABVUE 47.
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weddings. … We are moving the culture with a new platform technology.”
(www.columbusalive.com);48

• “A throng of partygoers grooved out to soundtracks of their choosing
Thursday night at the annual HUBweek Live Silent Disco bash on City
Hall Plaza. Participants could choose one of three different channels,
their wireless headphones lighting up a different color depending on
which tracks they preferred. The Silent Disco events were set to
continue nightly through Saturday.” (www.bostonglobe.com);49

• “Here are a few search terms to find events in your area: Silent disco,
silent yoga, silent festival, silent bowling, silent concert, silent
Part/Events.”
(www.clickaway.com/blog)50
d. Consumer Inquiries
QEI submitted copies of emails from purported consumers or persons
interested in obtaining information about QEI’s “silent events” services or
“silent events” generally.51 Copies of these emails are reproduced below:

48 36 TTABVUE 49.
49 36 TTABVUE 50.
50 36 TTABVUE 48.
51 Petz Decl., Exh. K, 14 TTABVUE 157-162.
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C. SEI’s Arguments
SEI maintains that, since August of 2008, it has been in the business of
providing entertainment services in the nature of arranging, organizing and
conducting special events that feature live musical concerts supplied to the
audience by means of personal wireless headphones.52 SEI further maintains
that this type of event or activity was already known as a “silent disco,” and
SEI was the first company to bring silent discos across the United States.53 SEI
therefore argues that the generic name for its identified services is “silent
disco,” not its subject SILENT EVENTS mark.54
Further, SEI contends that the testimonial affidavits submitted by QEI in
support of its claim of genericness should be viewed as biased. Moreover, SEI

52 Affidavit of Ryan Dowd, ¶¶ 3-4, 33 TTABVUE 3.
53 SEI’s Brief as Defendant in Cancellation, p. 3, 40 TTABVUE 4.
54 Affidavit of Ryan Dowd, ¶ 22, 33 TTABVUE 3.
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maintains that four of the business representatives who submitted testimonial
affidavits on behalf of QEI, namely, Silent Events Entertainment, Hush
Concerts, Silent Storm Sound System, and Sound Off, were contacted by SEI
prior to the commencement of this consolidated proceeding and were informed
that their use of the term “Silent Events” infringed upon SEI’s intellectual
property rights and that each of these companies took the corrective actions
requested by SEI to avoid infringement.55 Additionally, SEI contacted several
other non-testifying business entities, i.e., Quiet Coyote Events, Fallen Tree
Productions, Shut Up and Dance, and INTL, LLC, requesting them to remove
all references made to “silent events” on their websites and marketing material,
which they agreed to do.56
As to the remaining affidavits submitted by QEI, SEI asserts that five of the
businesses, namely, Rhino Cube Media, Jump Off Events, Silent Disco Vibe,
Sounddown Party, and Party Headphones, claim to “frequently use the term
‘silent event(s)’ for describing the events where music is played on wireless
headphones given to individuals that attend the event” but do not use and could
not produce evidence of the term “Silent Events” being used anywhere on their
website or in advertising material. Instead of using “Silent Events” to identify
their services, they used the terms “silent disco” or “silent party.”57

55 Dowd Affidavit, ¶¶ 14-17 and accompanying Exh. B, 33 TTABVUE 4-5 and 9-25.
56 Id. at ¶¶ 18-21 and accompanying Exh. B, 33 TTABVUE 5 and 9-25.
57 SEI’s Brief as Defendant in Cancellation, p. 9, 40 TTABVUE 10.
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SEI also argues that QEI repeatedly and improperly examined the
constituent terms comprising SEI’s SILENT EVENTS mark, rather than
considering the mark as a whole.58 Specifically, SEI contends that QEI
incorrectly argues that since both “silent” and “events” when viewed
individually may be generic for SEI’s identified services, then the mark as a
whole is generic.59 SEI maintains that the question before the Board should not
be how the word “silent” or “events” individually is recognized by the relevant
consuming public, but rather what the entire mark SILENT EVENTS means
to the relevant consuming public.60 Notwithstanding the foregoing, SEI argues
that its SILENT EVENTS mark has “acquired secondary meaning to shield it
from becoming generic.”61
In view of the foregoing, SEI asserts that QEI has failed to carry its burden
to establish by a preponderance of the evidence that the designation SILENT
EVENTS is the generic name of SEI’s identified services.
D. Analysis
We are not persuaded by SEI’s arguments. The record reveals substantial
use of the designation “silent events” as the generic name of SEI’s identified
services. The record also demonstrates that the terms “silent disco,” “silent
party,” and “silent events” are used interchangeably to refer to the services

58 Id. at p. 10, 40 TTABVUE 11.
59 Id.
60 Id.
61 Id. at p. 11, 40 TTABVUE 12.
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identified in SEI’s registration. There can be more than one generic term for a
particular genus of goods or services. Any term that the relevant public
understands to refer to the genus is generic. See In re 1800Mattress.com IP
LLC, 586 F.3d 1359, 92 USPQ2d 1682, 1685 (Fed. Cir. 2009) (“We also disagree
with Dial-A-Mattress’s assertion that there can only be one generic term, which
is ‘online mattress stores.’ Instead, any term that the relevant public
understands to refer to the genus of ‘online retail store services in the field of
mattresses, beds, and bedding’ is generic.”).
Further, while SEI characterizes that the testimonial affidavits submitted
by QEI as biased, SEI did not cross-examine these witnesses nor did it provide
any factual basis for its contention that the testimony lacks credibility.
Accordingly, we find the witness testimony credible.
Moreover, although SEI has also introduced evidence that it has been active
in its attempts to police its SILENT EVENTS mark, it appears, based on the
record, that these efforts have been overwhelmed by the adoption by
competitors and by the public in general of this designation in a generic sense.
Further, the fact that a certain number of SEI’s competitors have acknowledged
SEI’s exclusive rights in the designation SILENT EVENTS does not convince
us that the term functions as a service mark for SEI’s identified services. In
this case, we find that evidence that competitors may have agreed to
discontinue use of the designation SILENT EVENTS upon threat of legal action
by SEI shows a desire by those competitors to avoid litigation, rather than
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demonstrating the distinctiveness of the wording. See In re Wella Corp., 565
F.2d 143, 196 USPQ 7, n.2 (CCPA 1977); In re Consolidated Cigar Corp., 13
USPQ2d 1481, 1483 (TTAB 1989). Cf. In re Cree, Inc., 818 F.3d 694, 118
USPQ2d 1253, 1259 (Fed. Cir. 2016) (because it is cheaper to take a license
than defend a patent infringement action, licenses are often entered into to
avoid litigation).
Notwithstanding, the record shows that some of the entities contacted by
SEI regarding their alleged infringing use of the designation SILENT EVENTS,
i.e., Quiet Coyote Events, Shut Up Just Dance, Silent Disco, Sound Off
Experience, and Fallen Tree Silent Disco, have continued to use the designation
SILENT EVENTS on their websites as the generic name of their services,
despite their assurances to discontinue such use. For example:62

62 Rebuttal Petz Testimony Declaration, Exh. A, 37 TTABVUE 7-41.
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Moreover, even if SEI were the first entity to use the designation SILENT
EVENTS in commerce in connection with its identified services, such first use
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does not substantiate the exclusion of others from using the designation if such
designation is the generic name of the services. “[T]he fact that [a party] may
be the first or only user of a generic designation . . . does not justify registration
if the only significance conveyed by the term is that of the category of goods [or
services].” In re Greenliant Sys. Ltd., 97 USPQ2d 1078, 1083 (TTAB 2010)
(citations omitted). The law does not permit “anyone to obtain a complete
monopoly on use of a descriptive term simply by grabbing it first.” KP
Permanent Make-Up, Inc. v. Lasting Impressions, Inc., 543 U.S. 111, 72
USPQ2d 1833, 1838 (2004) (citation omitted).
SEI had the obligation to educate the public to use some name other than
the term it wants to call its mark. See generally 2 J. Thomas McCarthy,
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 12.25 (5th ed. 2019
update) and cases cited therein. The obligation arises in part from the need of
prospective competitors to use a generic term when marketing their own
versions of services with the same attributes. As the Federal Circuit has
explained, “[t]o allow trademark protection for generic terms, i.e., names which
describe the genus of goods [or services] being sold [or rendered], even when
they have become identified with a first user, would grant the owner of the
mark a monopoly, since a competitor could not describe his goods [or services]
as what they are.” In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d
1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987).
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SEI is correct that when a mark consists of two or more words, as does SEI’s
mark, “the Board cannot simply cite definitions and generic uses of the
constituent terms of a mark … in lieu of conducting an inquiry into the meaning
of the disputed phrase as a whole to hold a mark … generic.” In re American
Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832, 1836 (Fed. Cir. 1999). “An
inquiry into the public’s understanding of a mark requires consideration of the
mark as a whole.” Princeton Vanguard, LLC, 114 USPQ2d at 1831.
Here, however, the evidence of record reflects widespread generic use of the
designation SILENT EVENTS as a whole. In addition, the third-party generic
use of SILENT EVENTS suggests that nothing about the combination of words
makes the whole somehow greater than the sum of its parts. See Princeton
Vanguard, LLC, 114 USPQ2d at 1831. SEI’s registration includes a disclaimer
of EVENTS, wording used in the recitation to refer to the nature of the
entertainment services. The record also shows consistent use of the term
“silent” in company names that provide services identical to those of SEI.
Example of such companies include: Austin Silent Disco, Go Silent DJ, Silent
Arena, Silent Disco Experience, Silent Disco USA, Silent Noise by Delano,
Silent Party LA, Silent Revolution, Silent Storm, Silent Party USA, Silent
Chicago, The Silent DJ, Silent Dance Society, Silent Disco 4 Kids, and
SilentPartySeattle.63 Additionally, the evidence of record shows use of the term
“silent” as a component of the terms “silent disco” and “silent party,” which, as

63 Petz Decl., Exhs. K and L, 14 TTABVUE 157-256.
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noted above, are terms used interchangeably with “silent events” to refer to
SEI’s identified services. This evidence accompanying the definitions of the
component terms of the designation SILENT EVENTS, namely, a social
occasion or activity free from sound or noise, merely reinforces the generic
nature of SEI’s SILENT EVENTS mark when viewed in its entirety.
D. Conclusion
We have considered all of the evidence and arguments submitted by the
parties on the issue of genericness. Based on the evidence of record we find that
potential purchasers would understand SILENT EVENTS to refer to the genus
or key aspect of SEI’s identified services, i.e., entertainment services, namely,
arranging, organizing and conducting special events for social entertainment
purposes that feature live musical concerts supplied to an audience by means
of personal wireless headphones.
We therefore conclude that QEI has demonstrated, by a preponderance of
the evidence, that SILENT EVENTS is the generic name of the services
identified in SEI’s registration within the meaning of Section 14(3) of the
Trademark Act. In view of our determination on the issue of genericness, we do
not reach SEI’s contention that its subject SILENT EVENTS mark has
acquired distinctiveness. In re Northland Aluminum Products, Inc., 777 F.2d
1556, 227 USPQ 961, 964 (Fed. Cir. 1985) (if a term is found to be generic, no
amount of evidence of acquired distinctiveness can change that result).

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III. Opposition Nos. 91234202 and 91238912
Because QEI has proved, by a preponderance of the evidence, that SEI’s
registered mark SILENT EVENTS is the generic name for the services
identified in SEI’s registration, SEI cannot possess any proprietary rights in
the designation “silent events” so as to form a basis for its Section 2(d) claim it
has asserted in the opposition proceedings of this consolidated case. See Avtex
Fibers Inc. v. Gentex Corp., 223 USPQ 625, 626 (TTAB 1984) (“Of course, a
generic term cannot serve as the basis for opposition under Section 2(d) because
no one can have a proprietary right in such term.”). In other words, SEI no
longer has a “real interest” or “direct personal stake,” i.e., standing, to pursue
its likelihood of confusion claim in the opposition proceedings. Accordingly, the
oppositions must fail.
Decision: The petition for cancellation on the ground that SEI’s registered
mark SILENT EVENTS is the generic name of the services for which it is
registered is granted. SEI’s Registration No. 4141745 will be cancelled in due
course. Opposition Nos. 91234202 and 91238912 are dismissed.