TTAB Likelihood of Confusion Case: KORD Confusing Similar to KORDZ

By Josh Gerben, Esq.

In re MS Electronics LLC, Serial No. 85755706 (December 5, 2014) [not precedential].

On December 5, 2014, the TTAB affirmed an examiner’s refusal of the mark KORD for “audio equipment, namely, speakers, woofers, sub-woofers, tweeters, mid-range driver in the nature of electrical transducers for speakers, amplifiers, wireless transmitters, wireless receivers, digital to analog converters, and cross-overs in the nature of electrical devices for dividing audio signals into separate frequency bands, and operating manuals and descriptive manuals issued in connection therewith” in International Class 9. The examiner refused the application based on section 2(d), finding a likelihood of confusion with the registered mark KORDZ for “Cable connectors; Home theater products, namely, LCD; Electronic interconnecters [sic] for audio and video signals” in International Class 9.

This decision was a straightforward one by the TTAB and involved a textbook likelihood of confusion analysis. The TTAB looked at the “cumulative effect of differences in the essential characteristics of the goods and differences in the marks” and found that the marks were confusingly similar for the goods. The Applicant, MS Electronics, argued that the letter Z at the end of its mark “dominated” the mark. The TTAB, however, disagreed and stated that just because cited mark uses the letter “z” rather than “s” to form the pluralization of its mark, that fact was insufficient to avoid a finding of similarity between the marks. The TTAB held that consumers would readily perceive the marks KORD and KORDZ as plays on the word “cord” and that the use of a plural form of the mark did not change the commercial impression.

The TTAB also held that third-party registrations were of little assistance to MS Electronics. In general, absent evidence of actual use, third-party registrations have little probative value to prove that a cited mark is weak because there is no evidence that the marks are in use on a commercial scale or that the public has become familiar with them. MS Electronics’ argument was further weakened by the fact that some of the third-party marks it cited were owned by the same company.

Next, MS Electronics tried to argue that its goods and services were not similar to those of the cited marks by arguing that, although the Registrant’s registration used broad language to describe its electrical connector goods, the Registrant only sold cables, splitters and extenders “designed to be used solely with HDMI and Ethernet cables.” The Board, however, held that the Applicant could not restrict the goods and services of the cited registration by using extrinsic evidence. Generally, if MS Electronics wanted to restrict the scope of the registrant’s goods on its registration, it would do so through a cancellation proceeding, not an ex parte appeal. Since the Registrant’s goods were not restricted to HDMI cables on its registration, the TTAB “assumed that the [parties’] goods [were] complementary to one another.

Similarly, the TTAB did not buy MS Electronic’s argument that, because the Registrant sold expensive high-performance HDMI cables, the consumers of the Registrant’s products were sophisticated and would be able to distinguish between the two marks. The TTAB again held that nowhere in the cited registration were the goods restricted to high-performance HDMI cables. Instead, the goods were broad enough to cover any kind of cable connectors for audio and video signals.

ONE. Generally, a mark that is a “plural” of an existing mark (or vice versa) will be confusingly similar for similar goods and services. Even if the plural word ends in a “Z” instead of an “S”.

TWO. Third-Party registrations do not, by themselves, show that a mark is weak. Evidence of actual use in the marketplace of these registrations can help to show that third-party usage has diminished the effectiveness of the mark.

THREE. A trademark owner is entitled to federal protection on the goods and services listed in its registration. If those goods and services are broad, then the mark gets broad federal protection. For example, if a fine dessert wine maker owns a trademark for “wine,” then it is entitled to protection on all types of wine, even cheap table wine. If an applicant feels that a Registrant’s goods and services are overly broad or misdescriptive of the goods and services it actually sells, then the only way to remedy this is either a cancellation proceeding or litigation before a federal court. Generally, an applicant is wasting their time making these arguments in an office action response or in an ex parte appeal.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.