293 F.3d 1367 (Fed. Cir. 2002), 01-1216, Bose Corp. v. QSC Audio Products, Inc.

Docket Nº:01-1216.
Citation:293 F.3d 1367
Party Name:BOSE CORPORATION, Appellant, v. QSC AUDIO PRODUCTS, INC., Appellee.
Case Date:June 14, 2002
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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Page 1367

293 F.3d 1367 (Fed. Cir. 2002)

BOSE CORPORATION, Appellant,

v.

QSC AUDIO PRODUCTS, INC., Appellee.

No. 01-1216.

United States Court of Appeals, Federal Circuit

June 14, 2002

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[Copyrighted Material Omitted]

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Charles Hieken, Fish & Richardson, of Boston, Massachusetts, argued for appellant. With him on the brief were Molly Mosley-Goren and Cynthia E. Johnson.

Barry J. Reingold, Perkins Coie LLP, of Seattle, Washington, argued for appellee. With him on the brief were Alice D. Leiner and Jessica L. Rossman.

Before CLEVENGER, Circuit Judge, ARCHER, Senior Circuit Judge, and DYK, Circuit Judge.

CLEVENGER, Circuit Judge.

Bose Corporation ("Bose") appeals from the decision of the Trademark Trial and Appeal Board ("Board") dismissing its opposition to the application of QSC Audio Products, Inc. ("QSC") to register the mark POWERWAVE for amplifiers and power amplifiers. The Board concluded that there is no likelihood of confusion between POWERWAVE and two of Bose's marks, ACOUSTIC WAVE and WAVE. Bose Corp., Opposition No. 109,664, 2000 WL 1759738 (TTAB Nov. 16, 2000). We have jurisdiction over Bose's appeal under 28 U.S.C. § 1295(a)(4). Because the Board erred in several respects in its analysis of the likelihood of confusion between the marks in suit, in particular failing to accord fame to the Bose marks, we reverse the Board's decision.

I

The Bose ACOUSTIC WAVE mark is registered and used for (a) "loudspeaker systems and music systems consisting of a loudspeaker system and amplifier and at least one of a radio tuner, compact disc player and audio tape cassette player" and (b) "loudspeaker systems." ACOUSTIC WAVE thus refers to a specific kind of loudspeaker system, one that includes one or more of a radio tuner, compact disc player, and audio tape cassette player. The mark also refers simply to "loudspeaker systems" without the narrowing reference to a radio tuner, disc player or tape cassette player.

The Bose WAVE mark is registered and used for goods including radios, clock radios, audio tape recorders and players, portable radio and cassette recorder combinations, compact stereo systems and portable compact disc players.

Bose also owns its house mark BOSE that frequently accompanies the ACOUSTIC WAVE and WAVE marks. For purposes of this litigation, QSC and the Board accept that the BOSE house mark enjoys extensive public recognition and renown and in trademark parlance is therefore "famous."

QSC applied to register the mark POWERWAVE for "[e]lectronic audio and video signal processing equipment, namely, amplifiers and power amplifiers." Bose opposed QSC's application on the ground that permitting QSC to apply the mark POWERWAVE to its amplifiers would lead to a likelihood of confusion as to the origin of the amplifiers, due to the class of Bose goods covered by its preexisting ACOUSTIC WAVE and WAVE marks. Where a likelihood of confusion exists as to the origin of goods traveling under a particular mark, that mark cannot be registered. See 15 U.S.C. § 1052(d) (2000)

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(granting authority to refuse registration to a trademark that so resembles a registered mark "as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive"); Lloyd's Food Prods., Inc. v. Eli's, Inc., 987 F.2d 766, 767, 25 USPQ2d 2027, 2028 (Fed.Cir. 1993).

II

In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), sets out numerous factors relevant to reaching a decision as to whether a likelihood of confusion exists with regard to competing marks. Id. at 1361, 476 F.2d 1357, 177 USPQ at 567. Each of the DuPont factors presents a question of fact, findings with regard to which we test for substantial evidence when called into question on appeal. See Recot Inc. v. Becton, 214 F.3d 1322, 1326-27, 54 USPQ2d 1894, 1896-97 (Fed.Cir. 2000) (citing Dickinson v. Zurko, 527 U.S. 150, 165, 119 S.Ct. 1816, 144 L.Ed.2d 143 (1999), In re Gartside, 203 F.3d 1305, 1315, 53 USPQ2d 1769, 1775 (Fed.Cir. 2000)). The ultimate question of whether a likelihood of confusion exists is, however, a question of law, an issue upon which we apply plenary review. Id. (citing Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 1569, 218 USPQ 390, 394 (Fed.Cir. 1983)). Our precedent establishes that the determination of a likelihood of confusion does not require examination and findings as to each and every DuPont factor. See Kenner Parker Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 352, 22 USPQ2d 1453, 1456 (Fed.Cir. 1992) (explaining that different DuPont factors may play dominant roles in determining likelihood of confusion depending on the evidence in each case). In practice, the scope of examination by the Board in any particular case will ordinarily be established by the record presented by the parties. Here, the ultimate legal question is framed by the inquiry into four of the DuPont factors: fame of the opposer's mark or marks; similarity or relatedness of the goods in question; commonality of the channels of trade through which the goods in question pass; and comparison for similarity of the marks themselves. The burden of proof rests with the opposer, Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357, 1359, 57 USPQ2d 1720, 1721 (Fed.Cir. 2001), and thus it fell to Bose to produce sufficient evidence to support the ultimate conclusion of likelihood of confusion.

The Board decided that Bose is not entitled to claim fame for its ACOUSTIC WAVE and WAVE marks, and that Bose had failed to produce sufficient evidence to demonstrate similarity or relatedness of the goods in question. Regarding the channels of trade, the Board found commonality, but concerning the marks themselves, the Board found distinct dissimilarity. On those findings of fact, the Board unsurprisingly concluded that Bose had failed to prove a likelihood of confusion, and therefore dismissed Bose's opposition. Bose timely appealed to this court.

III

Bose asserts that the Board erred in its findings on each of the four DuPont factors, save with regard to the channels of trade, and consequently that it merits an outright reversal of the Board's decision and a judgment that its opposition is sustained. QSC naturally disagrees with Bose, arguing on each point in support of the Board's decision, save with regard to the channels of trade, for the reasons stated by the Board.

We first examine the Board's decision with regard to the alleged fame of ACOUSTIC WAVE and WAVE, then turn to the issues of similarity or relatedness of the goods, channels of trade, and appearance of the competing marks.

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A

Fame of an opposer's mark or marks, if it exists, plays a "dominant role in the process of balancing the DuPont factors," Recot, 214 F.3d at 1327, 54 USPQ2d at 1894, and "[f]amous marks thus enjoy a wide latitude of legal protection." Id. This is true as famous marks are more likely to be remembered and associated in the public mind than a weaker mark, and are thus more attractive as targets for would-be copyists. Id. Indeed, "[a] strong mark . . . casts a long shadow which competitors must avoid." Kenner Parker Toys, 963 F.2d at 353, 22 USPQ2d at 1456. A famous mark is one "with extensive public recognition and renown." Id.

Direct evidence of fame, for example from widespread consumer polls, rarely appears in contests over likelihood of confusion. Instead, our cases teach that the fame of a mark may be measured indirectly, among other things, by the volume of sales and advertising expenditures of the goods traveling under the mark, and by the length of time those indicia of commercial awareness have been evident. See, e.g., Nina Ricci, S.A.R.L. v. E.T.F. Enters., Inc., 889 F.2d 1070, 1072, 12 USPQ2d 1901, 1902 (Fed.Cir. 1989) (NINA RICCI for perfume, clothing and accessories: $200 million in sales, over $37 million in advertising over 27 years); Kimberly-Clark Corp. v. H. Douglas Enter., Ltd., 774 F.2d 1144, 1146-47, 227 USPQ 541, 542 (Fed.Cir. 1985)...

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