IP Law Daily, TRADEMARK—TTAB: Registration refused for mark on basis of identical mark for Beats headphones, (Oct 24, 2022)

By Ursula Furi-Perry, J.D., MBA

Factors weighed heavily in finding a likelihood of confusion with previously registered marks; a certificate of registration constituted prima facie evidence of the validity of the registration.

Applicant sought to register a mark for various audio products, including headphones, which was identical to one previously registered for headphones and owned by the same entity. The TTAB found that factors weighed heavily in finding a likelihood of confusion and affirmed the refusal to register the mark. The Board rejected the applicant’s argument that the registrations were procured and maintained by another entity which was impersonating the registrant and therefore not entitled to trademark protection, holding that a certificate of registration on the Principal Register constitutes prima facie evidence of the validity of the registration. (In re Soho Beats, LLC, October 18, 2022, Zervas, A.).

Background. The applicant sought to register its mark, consisting of a lower-case letter ‘b’ that was inset in a circle, with the vertical line of the letter ‘b’ cutting to the edge of the circle, for “audio speakers; batteries and battery chargers; earphones; headphones; virtual reality headsets; game headphones” in International Class 9. The trademark examining attorney refused registration under Section 2(d) of the Trademark Act, on the ground that the applicant’s mark was likely to cause confusion with several different marks which were the subject of ten registrations owned by the same entity, including an identical mark previously registered for “headphones” in International Class 9. After a request for reconsideration was denied, the applicant appealed.

Analysis. The TTAB reviewed the DuPont factors in analyzing the probative evidence of record bearing on a likelihood of confusion. The Board also noted that it would focus on the registration identifying “headphones,” explaining that registration of the new application must be refused in a particular class if the applicant’s mark for any of its identified goods or services in that class is likely to cause confusion.

The Board found the goods of the application and the registration – both of them being headphones – to be identical. The Board also presumed that the trade channels and classes of consumers for those goods were the same, with the common consumers for the goods being members of the general public. Moreover, the Board noted that the mark proposed by the applicant and the one held by the registrant were identical. The DuPont factors weighed heavily in finding a likelihood of confusion.

The applicant did not address the DuPont factors, but rather argued that the registrant of the mark at issue has ceased to exist as an operating business, and that the registrations were procured and maintained by another entity which was impersonating the registrant. As products of “fraud by impersonation,” the applicant argued, they did not enjoy the protections provided by the Trademark Act; the applicant requested that the registrations belonging to Beats Electronics “be annulled and revoked” and its own mark be registered.

The Board rejected the applicant’s arguments, noting that that a certificate of registration on the Principal Register constitutes prima facie evidence of the validity of the registration. Because the applicant’s arguments collaterally attacked the validity of the cited registration, the TTAB did not consider them.

Board action. The refusal to register was affirmed by the Trademark Trial and Appeal Board.

The Case is Serial No. 88454219.

Attorneys: Laura Golden for the USPTO.

Companies: Soho Beats, LLC

Cases: Trademark USPTO