Niche Audio, Inc. v. Munro Investment Group Pty Ltd.

• Decision Date: 29 September 2018
• Docket Number: Opposition 91228347,91228348
• Court: Trademark Trial and Appeal Board
• Parties: Niche Audio, Inc. v. Munro Investment Group Pty Ltd

Niche Audio, Inc. v. Munro Investment Group Pty Ltd

Opposition Nos. 91228347, 91228348

United States Patent and Trademark Office, Trademark Trial and Appeal Board

September 29, 2018

This Opinion is Not a Precedent of the TTAB

Robert Mallinckrodt of Thorpe North & Western, L.L.P., for Niche Audio, Inc.

John M. Griem Jr. of Carter Ledyard & Milburn LLP, for Munro Investment Group Pty Ltd.

Before Taylor, Heasley and Larkin, Administrative Trademark Judges.

OPINION

Heasley, Administrative Trademark Judge

Munro Investment Group Pty Ltd. ("Applicant") seeks registration on the Principal Register of the standard character mark MAJESTIC^[1] and the word and design mark (Image Omitted),^[2] both for the following identified goods:

Eco home, solar home, recreational vehicle home and marine electronic entertainment systems comprising video screens DVD players, speakers, subwoofers and tweeters, TV and AM/FM antennas, amplifiers, electric power supplies, electric battery chargers comprising power connections, battery and DC to AC power inverters sold as a unit therewith; music systems comprising video screens, DVD players, speakers, subwoofers and tweeters, TV and AM/FM antennas, amplifiers, electric power supplies, electric battery chargers comprising power connections, battery and DC to AC power inverters sold as a unit therewith that are specially adapted for marine use and use in eco homes, solar homes, and recreational vehicles loudspeaker systems; earphones, headphones, microphones power amplifiers, recorders, tuners, record players, tape recorders, transceivers, DVD players and recorders that are specially adapted for marine use and use in eco homes, solar homes, and recreational vehicles; compact disc players; LCD and plasma type monitors and televisions; apparatus for the recording and reproduction of audio and video that are specially adapted for marine use and use in eco homes, solar homes, and recreational vehicles; eco home, solar home, recreational vehicle home and marine theatre systems comprising video screens, DVD players, speakers, subwoofers and tweeters, TV and AM/FM antennas, amplifiers, electric power supplies, electric battery chargers comprising power connections, battery and DC to AC power inverters sold as a unit therewith; video disc players that are specially adapted for marine use and use in eco homes, solar homes, and recreational vehicles; video disc players that are specially adapted for marine use and use in eco homes, solar homes, and recreational vehicles; computer hardware and accessories that are specially adapted for marine use and use in eco homes, solar homes, and recreational vehicles, namely, keyboards, printers, monitors, sound systems comprising video screens, DVD players, speakers, subwoofers and tweeters, TV and AM/FM antennas, amplifiers, electric power supplies, electric battery chargers comprising power connections, battery and DC to AC power inverters sold as a unit therewith, and batteries in International Class 9.^[3]

Niche Audio, Inc. ("Opposer") opposes the applications under Section 2(d) of the Trademark Act, alleging that Applicant's marks, as used on its identified goods, so resemble Opposer's common law mark MAJESTIC, as used on car audio products, as to be likely to cause confusion or mistake, or to deceive. 15 U.S.C. §§ 1052(d), 1063.^[4]Applicant has denied the salient allegations of the Notices of Opposition.^[5] The two opposition proceedings have been consolidated, with Opposition No. 91228347 designated as the parent proceeding.^[6] The oppositions are fully briefed and counsel for the parties appeared at a hearing before the panel on June 12, 2018. We dismiss the oppositions.

I. Evidentiary Record

The record consists of:

• The pleadings;

• The files of the subject applications;^[7]

• Opposer's testimony declaration, with exhibits, of Virginia Leff, a former member of Micgin LLC, a California limited liability company;

• Opposer's testimony declaration, with exhibits, of Jennifer Hill, office manager for Opposer and for Rabadi & Sons, Inc.;

• Opposer's testimony declaration, with exhibits, of Hayil Rabadi, president of Opposer and of Rabadi & Sons, Inc.;

• Opposer's testimony declaration, with exhibits, of Robert Mallinckrodt, counsel for Opposer;

• Opposer's notice of reliance, covering copies of USPTO Trademark Electronic Search System ("TESS") records of seven third-party registrations, website screen shots from www.12VoltNews.com, a copy of the JVC 2017 Mobile Entertainment Catalog, screenshots from www.JVC.com, www.Kenwoodcom, www.Clarion.com, and the USPTO Trademark Status & Document Retrieval ("TSDR") record of Applicant's previous application Serial No. 78809282 for registration of MAJESTIC in stylized letters, filed in February 2006 and abandoned the following year, with copies of the two Office Actions refusing registration of that mark based on Opposer's then-subsisting Registration 2755519 for MAJESTIC in standard characters, which was cancelled on March 28, 2014;

• Applicant's testimony declaration of David Anderson, President of Majestic Global USA, distributor of Applicant's MAJESTIC branded products;

• Applicant's testimony declaration, with exhibits, of Rick French, a sales representative of GSW & Associates who has been selling a variety of products to the Marine Industry over 30 years, and since May 2009 has been representing and selling Applicant's MAJESTIC products;

• Applicant's testimony declaration, with exhibits, of Fidencio Platt, president of Dantronics, an importer and wholesaler of marine electronics, including Applicant's MAJESTIC brand marine electronics;

• Applicant's testimony declaration, with exhibits, of Tony Munro, founder and creator of the MAJESTIC range of products beginning in 2000 in Australia, and currently the Chief Executive Officer and Chief Electronics Engineer of MAJESTIC products for Majestic Global USA, which distributes Applicant's products in this country;

• Applicant's first notice of reliance, covering the exhibits attached to the Munro declaration, specifically, a screen shot from the Australian intellectual property website www.IPAustralia.gov.au, relating to Applicant's Australian registration of the MAJESTIC mark; screen shots from www.WebArchive.org showing MAJESTIC products offered for sale by Dantronics Inc. between February 11, 2003 and March 20, 2005; screen shots from www.WebArchive.org showing MAJESTIC products offered for sale by Majestic Global USA between June 23, 2005 and June 28, 2017; printed pages from www.CarBatteryWorld.com and similar sites explaining the differences between car batteries and marine and recreational vehicle batteries; printed pages from www.DSMT.com showing how waterproofing is measured for marine electronics, unlike car electronics; Copy of marketing materials from Applicant's two distributors in the United States, Dantronics Inc. and Majestic Global USA regarding MAJESTIC products sold in the United States since 2002; and

• Applicant's second notice of reliance, consisting of screen shots from the website www.Haw-Creek.com, screen shots from the website RVIA.org, the Recreational Vehicle Industry Association's website, screen shots from the websites of three marine product distributors, www.Defender.com, www.CWRElectronics.com, and www.Seawide.com, showing Applicant's MAJESTIC products being sold by these distributors; screen shots from the websites of six speaker and stereo manufacturers; evidence relating to Opposer's Internet website registration and activity; screen shot of Wells Audio website showing a home audio product offered under the designation MAJESTIC; the TSDR file for MAJESTIC mark Application Serial No. 78414302; and certain of Opposer's responses to Applicant's written discovery requests.^[8]

II. Standing

Standing is a threshold issue that must be proven by a plaintiff in every inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 U.S.P.Q.2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S.Ct. 1401 (2015); Ritchie v. Simpson, 170 F.3d 1092, 50 U.S.P.Q.2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). Any person who believes it is or will be damaged by registration of a mark has standing to file an opposition. Trademark Act Section 13, 15 U.S.C. § 1063. To establish standing in an opposition, a plaintiff must show both a real interest in the proceeding as well as a reasonable belief of damage. Empresa Cubana Del Tabaco v. Gen. Cigar, 111 U.S.P.Q.2d at 1062; Ritchie v. Simpson, 50 U.S.P.Q.2d at 1025. In this case, Opposer has presented evidence, including the declaration testimony of Ms. Leff and Mr. Rabadi, supporting Opposer's claim of common law rights in the mark MAJESTIC, which it alleges is confusingly similar to Applicant's marks, as used on goods similar to Applicant's. In view thereof, we find Opposer has established its personal interest in this proceeding and a reasonable belief of damage, and thus has proven its standing. Giersch v. Scripps Networks, Inc., 90 U.S.P.Q.2d 1020, 1022 (TTAB 2009) ("Petitioner has established his common-law rights in the mark …, and has thereby established his standing to bring this proceeding."); Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90 U.S.P.Q.2d 1112, 1118 (TTAB 2009) (in opposition proceeding under Section 2(d), testimony that opposer uses its mark "is sufficient to support opposer's allegations of a reasonable belief that it would be damaged by registration of applicant's mark.").

III. Priority

"In an opposition founded on section 2(d), the opposer must establish its own prior proprietary rights in the same or a confusingly similar designation in order to defeat the application." T.A.B. Sys. v....