Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA423753
`ESTTA Tracking number:
`08/05/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91174249
`Plaintiff
`The Chamberlain Group Inc
`JOSEPH T NABOR
`FITCH EVEN TABIN & FLANNERY
`120 S LASALLE STREET, SUITE 1600
`CHICAGO, IL 60603
`UNITED STATES
`jtnabo@fitcheven.com, asimmons@fitcheven.com
`Rebuttal Brief
`Alisa C. Simmons
`trademark@fitcheven.com, asimmons@fitcheven.com
`/alisa simmons/
`08/05/2011
`REDACTED REPLY BRIEF.pdf ( 43 pages )(2104331 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`) Opposition No. 91174249 (Parent)
`
`) Serial No. 78/619,040
`
`) )
`
` Opposition No. 91175332
`) Serial No. 78/625,795
`
`) )
`
` Opposition No. 91185559
`
`) Serial No. 77/356,941
`)
`
`The Chamberlain Group, Inc.,
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`Opposer,
`
`v.
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`Lynx Industries, Inc.,
`
`Applicant.
`
`OPPOSER'S REPLY BRIEF ON CASE
`
`REDACTED
`
`

`
`Table of Contents
`
`i.
`
`II.
`
`A.
`
`B.
`e.
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`i.
`
`J.
`K.
`
`L.
`
`INTRODUCTION. ..... ..... ..... ...... ...., ....... .... ..... ....... .................................................. ........... ....... 3
`
`ARGUMENT...............................................................................................................................3
`Chamberlain's Evidence of the LiftMaster Mark's Fame and Strength Is Overwhelming
`and Suffcient to Prove Likelihood of Confusion and Dilution. ............................................. 3
`The Marks at Issue Are Identifed in the Relevant Registrations and Applications............ 6
`Applicant's LynxMaster Marks Are Confusingly Similar to the LiftMaster Mark.............. 7
`Applicant Concedes That the Parties' Garage Door Opener Goods Are Identical............. lO
`The Applicant's Garage Door Hardware Goods are Related to Chamberlain's Garage Door
`Opener Goods. ..........................................................:......................................................... lO
`
`The Parties' Goods Travel in the Same Channels of
`
`Trade................................................... 12
`Consumers Are Not Sophisticated Enough to Avoid Confusion. ........................................ 12
`Applicant Has Not Yet Used the LynxMaster Marks in Interstate Commerce.................. 13
`There is No Evidence That the UftMaster Mark Has Been Diluted by Third,Party Use.. l4
`Chamberlain Actively Polices Its LiftMaster Mark Against Infringement. ........................ 21
`The Market Interface Between Chamberlain and Applicant. .............................................. 22
`The LYNX MASTER Mark Wil Lessen the Capacity of the LiftMaster Mark to Identify
`Chamberlain's Goods. ........................................................................................................ 23
`
`III.
`
`CONCLUSION. ......... ....... ............. ............ ............................. ........................ .......................... 25
`
`1
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`

`
`Table of Authorities
`
`AMF Inc. v. American Leisure
`
`Eli Lilly &; Co. v. Natural
`
`Ilinois High
`
`School
`
`AmBrit, Inc. v. Kraft, Inc., 812 F2d 1531 (11th Cir. 1986), cert. denied, 481 U.S. 1041(1987) .................................... 23
`Prods., Inc., 474 F.2d 1403 (CCPA 1973) ........................................................ 16
`Artie Electronics Co., Ltd., 220 U.S.P.Q. 836 (TTA.B. 1983) ...................................................................... 11
`B. V.D Licensing Corp. v.Body Action Design, Inc., 6 USPQ2d 1719 (Fed. Cir. 1988) ............ ............... ........ ....... 5
`Block Drug Co. Inc. v. Den-Mat Inc., 17 u.S.P.Q.2d 1315 (TTA.B. 1980) ......................................................... 7
`Bose Corp.. v. ~SC Audio Products Inc., 63 USPQ2d 1303 (Fed. Cir. 2002) ................................................ 4, 5
`Burroughs Wellcome Co. v. Warner-Lambert Co., 203 USPQ 191 (TTAB 1979) ............................................... 22
`Closet Guy, Inc., Serial No. 77426306 (TTA.B. March 25,2010) ................................................................ 8
`Contour Chair-Lounge Co., Inc. v. The Englander Company, Inc., 139 U.S.P.Q. 285 (C.c.P.A. 1963)...... ......... ...... 6
`Cooper Industries, Inc. v. Repcopart USA, Inc., 218 U.S.P.Q. 81 (TTA.B. 1983) .......................................... 9, 12
`Decombe, 9 U.S.P.Q. 2d 1812 (TTA.B.1988) ........................................................................................... 12
`Answers, Inc., 86 F. Supp. 2d 834 (S.D. Ind. 2000), affd 233 F.3d 45656 USPQ2d
`1942 (7th Cif. 2000)...............'............................................................................................................. 24
`Ford Motor Co. v. Summit Motor Products, Inc., 18 U.S.P.Q. 2d 1417(3rd Cir. 1991)........................................ 12
`Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983) .................................................................~................. 16
`Association v. GTE Vantage, 99 F.3d 244 (7th Cir.1996) ................................................25
`Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910 (TT AB 2000) ............................................... 6
`Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 28 USPQ 461 (TT AB 1985) ........... .................. ........ .......... ...... 7
`Kimberly-Clark Corp. v. H Douglas Enter., Ltd., 774 F.2d 1144 (Fed. Cir.1985)............................................... 4
`Kysela Pere et Fils Ltd., 98 u.S.P.Q.2d 1261 (TTA.B. 2011) ........................................................................ 11
`McNeil Consumer Brands, Inc. v. US. Dentek Corp., 116 F. Supp. 2d 604 (ED. Pa. 2000) ................................. 25
`Inc., 178 USPQ 432 (TTAB 1973)..................................................................................7
`Nabisco v. PF Brands, Inc., 51 USPQ2d 1882 (2d Cir. 1999) ......................................................................... 24
`NASDA~ StockMarket Inc. v. Antartiea s.r., 69 USPQ2d 1718 (TTAB 2003) ............................................... 23
`National Data Corp., 224 U.S.P.Q 749 (Fed.Cir. 1985) .. ............... .................. ............... ............... .......... 8, 9
`Nina Ricci, S.AR.L. v. E.T.F. Enters., Inc. 889 F.2d 1070 (Fed. Cir. 1989)......................................................... 4
`Co. v. Crown Nut Co., 305 F.2d 916 (CCPA 1962)................................................... 4
`Safety-Kleen Corp. v. Dresser Industries, Inc., 518 F.2d 1399 (C.C.P.A. 1975) .................................................. 11
`Specialty Brands Inc. v. Coffee Bean Distribs., Inc., 748F.2d 669, (Fed. Cir.1984) .............................................4
`TBe Corp. v. Holsa Inc., 126 F.3d 1470 (Fed. Cir. 1997) ............................................................................... 23
`Wawa Dairy Farms v. Haaf, 40 USPQ2d 1629 aff'd 939 FJd 1032 (3d Cir. 1997) ....................................... 24
`
`Morrison
`
`Industries,
`
`Planters Nut &; Chocolate
`
`Other Authorities
`
`15 U.S.C. § 1125 ....................................................................................................................................... 23
`Gilson on Trademarks at § 5.10 ..................................................................................................................... 7
`McCarthy on Trademarks and Unfair Competition §23:18, at 23,132 (4th ed. 2010) ...................... 13, 23
`
`2
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`

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`i. INTRODUCTION
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`None of the purported evidence or arguments set forth in Applicant Lynx Industries Inc.'s trial brief
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`contradicts or alters the compelling evidence of a likelihood of confusion between the Lift
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`Master and
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`LynxMaster marks.! Only after The Chamberlain Group, Inc. ("Chamberlain") developed substantial goodwil
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`and market reputation in its LiftMaster brand for forty years, did Applicant select and apply for the confusingly
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`similar LynxMaster marks for goods in the '941 application that encompasses the very same goods offered to the
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`same consumers through the same channels of trade as Chamberlain and for related garage door hardware
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`goods in the '040 and '795 Applications. Applicant does not contest Chamberlain's standing to bring these
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`Oppositions nor Chamberlain's priority of use of the LiftMaster mark. (Applicant's Answers to Notice of
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`Opposition.) None of Applicant's arguments can undermine the persuasive evidence of identical and related
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`goods, identical channels of trade, obvious visual and aural similarities between the marks, the extensive use
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`and fame of the LiftMaster mark which is entitled to a broad scope of protection, and the predatory intent of
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`the Applicant.
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`II. ARGUMENT
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`A. Chamberlain's Evidence of the LiftMaster Mark's Fame and Strength Is Overwhelming
`and Suffcient to Prove Likelihood of Confusion and Dilution.
`
`Much of the evidence presented by Chamberlain has been uncontested by the Applicant. For example,
`
`Chamberlain earns
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`from nationwide sales of LiftMaster garage door openers.2 Anderson
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`Dep. at 214:18-215:9. The LiftMaster brand holds the largest market share for professionally installed garage
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`door openers3, currently holding _ of the market share for the United States, and has enjoyed such
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`leading market position for more than fifteen years. Anderson Dep. at 20;2;19; Exh.l., 183:11:-184:18, Exh.37.
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`Chamberlain has used its LiftMaster mark on garage door openers for more than forty years. Opp. Not. ReI. 1,
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`Exh.l- 3. Chamberlain advertises LitMaster brand garage door openers and related products nationally to end
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`consumers (Le., homeowners) via magazines (Good Housekeeping), television, radio, online banner ads, its
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`i Applicant in its main brief repeatedly makes statements of purported fact without providing citation support in the
`record.
`2 As an ilustration, in 2004 Chamberlain sold LiftMaster brand residential garage door openers. Opp. Not. Rd.
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`8 (Anderson Dep. Dec. 2005) at 122:21-23:3.
`3 Chamberlain calculates this market share based upon installation of LiftMaster garage door openers in a homeowner's
`garage and not based upon interim sales to dealers, installers and distributors. Anderson Dep. at 392:21- 393:6.
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`3
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`

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`LiftMaster.com website, to pre-sell these end consumers on the LiftMaster brand as much as possible before
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`they call or visit a dealer.4 See Chamberlain Brief at 22-28; Anderson Dep. 42:7-13. During the last fiteen years
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`alone, Chamberlain has invested
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`running these advertisements to the ultimate end consumer.
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`Anderson Dep. at 116:23-118:1; App. Not. Rel. 7 (Anderson Disc. Dep. March 2005) at 47:2-7. The LiftMaster
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`brand receives unsolicited media attention; examples include Jay Leno seeking a LiftMaster opener for his
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`garage, Ty Pennington (Extreme Makeover Edition show host) recommending a LiftMaster product in his At
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`Home consumer magazine, among others. See Chamberlain Brief at 26-27. Further, LiftMaster is the only brand
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`of garage door openers to receive the Good Housekeeping seal of approvaL Anderson Dep. 33:6-34:12,49:9-17,
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`Exh.2,4.
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`"(FJame of a mark may be measured indirectly, among other things, by the volume of sales and
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`advertising expenditures of the goods traveling under the mark, and by the length of time those indicia of
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`commercial awareness have been evident." Bose Corp. v. ~SC Audio Products, Inc., 293 F.3d 1367, 63 USPQ2d. 1303,
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`1305 (Fed. Cir. 2002). When the statistics of sales and advertising as indicia of fame are large, the Federal
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`Circuit has tended to accept them without any further supporting proof. Id. at 1306. Chamberlain's length of
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`use, sales amounts, and advertising efforts and investments are of a size comparable to sales and advertising
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`figures in other cases where fame has been found.s See, e.g., Nina Ricci, S.AR.L. v. E.T.F. Enters., Inc. 889 F.2d 1070,
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`12 USPQ2d 1901 (Fed. Cir. 1989) (NINA RICCI for perfume, clothing and accessories: $200 milion in sales, over
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`$37 millon in advertising over 27 years); Kimberly-Clark Corp. v. H Douglas Enter., Ltd., 774 F.2d 1144, 227 USPQ 541
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`(Fed. Cir. 1985) (HUGGIES for diapers: over $300 milion in sales over 9 years, $15 million in advertising in one
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`year); Specialty Brands Inc. v. Coffee Bean Distribs., Inc., 748F.2d 669,223 USPQ 1281 (Fed. Cir. 1984) (SPICE
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`ISLANDS for teas, spices and seasonings: $25 milion annually in sales for spices, $12 millon between 1959 and
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`1981 for tea, "several milion" in advertising, in use for 40 years); Planters Nut &: Chocolate Co. v. Crown Nut Co., 305
`
`F.2d 916, 134 USPQ504 (CCPA 1962) (MR. PEANUT DESIGN for nuts and nut products: $350 miion in sales,
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`4 With all of this national advertising to end consumers, Applicant's misrepresentation on page 33 of its brief that
`Chamberlain's advertising of its UftMaster mark is invisible to the end consumer is clearly false and its reliance on the
`Knaack Mfg. Co. v. Rally Accessories case is misguided, as Chamberlain advertises LiftMaster to end consumers and to trade
`professionals (See Chamberlain's brief, pp.l8- 27.)
`With yearliales of residential and commercial UftMaster 0¡erators in the United States
`, sales over the last forty-four years have likely . Anderson Dep. at 214:18- 215:9.
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`4
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`

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`$10 million in advertising over 10 years). Chamberlain also contends that such sales and advertising amounts
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`are particularly high since the goods at issue are not of the type that most consumers buy on a regular basis,
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`such as the perfume, clothing, diapers, tea, spices or nuts referenced above.
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`Applicant's only attack on the fame of this industry leading brand is to point to a summary of brand
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`awareness studies that Chamberlain has run to assess the effectiveness of certain television and radio
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`advertising campaigns and imply that in or less of people surveyed are aware of the
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`LiftMaster brand (Applicant Brief at 32-33). What Applicant fails to mention however, is that when the
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`respondents are specifically asked about the LíftMaster brand, the results . Anderson Dep.
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`at 371:19-379:20, Exh.48/66. In fact, as summarized at C05133 over the past ten years, the total awareness of the
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`LíftMaster brand in years 2004 and 2007, in 2010. Id.,
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`Exh. 48/66. By way of comparison, the unaided awareness numbers for the Craftsmen brand of garage door
`openers of Sears was in the recent study. Id. at C005136.
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`Sarah Anderson, who oversees all marketing communications for LiftMaster, explained that she feels good
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`about these numbers. Anderson Dep. at 375. Unlike packaged consumer goods such as TIDE laundry
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`detergent, garage door openers are products purchased infrequently, approximately every ten years or so, and
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`not every week or month lie packaged consumer goods might be. Id. Given the infrequent need to purchase
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`garage door openers, the unaided awareness numbers are not unusual or unacceptable. Anderson Dep. at 375,
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`379.
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`Applicant does not challenge the significant sales and marketing efforts undertaken by Chamberlain to
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`promote the LiftMaster mark (Applicant Brief at 33). This indirect evidence is sufficient to establish fame for
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`likelihood of confusion and dilution purposes. Moreover, as the fame of a mark increases, the degree of
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`similarity between the marks necessary to support a conclusion of likely confusion declines. Bose Co. v. ~SC
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`Audio Products Inc., 63 USPQ2d 1303, 1309 (Fed. Cir. 2002). Famous marks are more likely to be remembered and
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`associated in the public mind than a weaker mark, and consumers are less likely to perceive differences from a
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`famous mark. Id.; B. VD. Licensing Corp. v.Body Action Design, Inc., 6 USPQ2d 1719, 1722 (Fed. Cir. 1988). Accordingly,
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`the LiftMaster mark is entitled to a broad scope of protection that extends to Applicant's LynxMaster marks.
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`5
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`

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`B. The Marks at Issue Are Identifed in the Relevant Registrations and Applications.
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`The marks at issue are highly similar. Applicant attempts to divert attention from that similarity by
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`questioning the use of the LiftMaster mark. That Chamberlain has used the terms "Chamberlain" and/or
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`"Professional" in the past with its LiftMaster mark on products and/or packaging is of precious little relevance
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`to the Board's analysis in these proceedings. See Coopcr Industries, Inc. v. Repcopart USA, Inc., 218 U.S.P.Q. 81,85
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`(T.T.A.B. 1983) (appearance of house mark or other terms either occasionally or invariably with opposer's
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`registered METALMASTER mark is immaterial to the issue of likelihood of confusion); Intcrstate Brands Corp. v.
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`McKee Foods Corp., 53 USPQ2d 1910 (TTAB 2000) (inclusion of applicant's house marks, LITTLE DEBBIE and/or
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`the portrait of a little girl, on the packaging for its YO-YO'S snack cakes and the inclusion of opposer's house
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`mark HOSTESS on opposer's packaging does not have a bearing on likelihood of confusion analysis since the
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`marks at issue are YO-YO's and HOHOS). Chamberlain's asserted registrations are for the mark Lift
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`Master.
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`(Opp. Not. Rei. 1, Exh.l- 3). Applicant has not challenged the legitimacy of Chamberlain's incontestable
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`registrations to the LiftMaster mark. Id.; Contour Chair-Loungc Co., Inc. v. Thc Englandcr Company, Inc., 139 U.S.P.Q.
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`285,287 (C.C.PA 1963) (validity of opposer's registrations are not open to attack.) Applicant's assertion that
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`the presence of "Chamberlain" and/or "Professional" on products or packaging matters in the analysis of the
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`similarity of the marks is therefore misguided. Despite this precedent and Sarah Anderson providing testimony
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`in January 2010 that the LiftMaster mark was and is often used alone on products and advertising (Anderson
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`Dep. at 54-55), Applicant continues to claim incorrectly that Chamberlain's "CHAMBERLAIN" mark and the
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`word "Professional" should be part of the likelihood of confusion analysis.
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`Applicant further seeks to exaggerate this matter to suit its needs by suggesting the proceedings simply
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`concern use of the term "Master." Such is not the case. Applicant has applied to register the marks LynxMaster
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`and LynxMaster Cs Design, not the word "Master" alone. The Board must therefore compare the Applicant's
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`LynxMaster marks with the LiftMaster mark. Applicant also purports that the word "Master" is a laudatory
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`term that means "best" (Applicant Brief at 5) but provides no evidence to support that allegation. In
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`Opposition No. 91160673, the Board judicially noticed that the word "Master" connotes control and that in the
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`context of garage door openers the word "Master" is suggestive, and not laudatory as the Applicant desires.
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`Applicant states, "Public policy requires that such laudatory terms remain available for competitors to describe
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`6
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`their products," citing Gilson on Trademarks § 2.03. However, such a bald positional statement by the Applicant
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`is not accurate of the reference. Even so, Chamberlain's more than 40 years of exclusive use of the word
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`"Master" in its LiftMaster mark for garage door openers, its extensive advertising of this mark, and its volume of
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`sales of this brand demonstrate that LiftMaster is a strong mark. See Gilson on Trademarks at § 5.10 (Noting that
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`"even a descriptive term may be strong if it has been widely and exclusively used for a long time.")
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`c. Applicant's LynxMaster Marks Are Confusingly Similar to the LiftMaster Mark.
`b:
`h L. d f k' d ""~LynxMaster h k ld
`T e app ie or mar s at issue are LynxMaster an . "Wen mar s wou appear on
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`virtually identical goods or services, the degree of simiarity to support a conclusion of likely confusion
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`declines." Century 21 Real Estate Corp. v. Century Life of America, 23 USPQ 2d. 1698, 1701 (Fed. Civ. 1992). Evaluating
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`whether marks are confsingly similar, the entirety of the marks should be considered with respect to
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`appearance, sound, and connotation. Id. "Similarity in anyone of the elements of sound, appearance and
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`meaning may be suffcient to support a finding of likely confsion." Block Drug Co. Inc. v. Den-Mat Inc., 17
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`u.S.P.Q.2d 1315, 1317 (T.T.AB. 1980) .
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`Where a mark comprises a word portion and a design portion, it is the word features which are
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`controllng. Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461,462 (TTAB 1985) (finding the word
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`SEYCOS dominant and not the large crown design appearing with it). Thís is especially the case when the
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`parties' goods are of a type generally purchased by name, resulting in emphasis on the word portion rather than
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`the design. In re Morrison Industries, Inc., 178 USPQ 432,433 (TTAB 1973). Applicant admits that its products are
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`purchásed by name and by telephone (Applicant Brief at 24), and Mr. Ewasiuk, an independent installer of
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`garage doors and garage door openers, has testifed that he purchases garage door opener products and parts by
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`brand name and that his customers (homeowners) refer to garage door opener products by name. Ewasiuk
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`Dep. at 17:20-18:4, 33, 47:3-13, 55:16-56:3, 65:10-24, 79:19-20, 131:16-132:1. Applicant also does not dispute that
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`Chamberlain advertises its LiftMaster products to end consumers using radio and television (Applicant Brief at
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`18). The literal element LynxMaster should therefore be considered the dominant element of Applicant's
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`LynxMaster &; Design marks in the '795 and '941 applications. Further, when a design element, such as the
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`Applicant's cat head, merely reinforces the meaning of the word portion of a mark, it does not serve to
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`7
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`distinguish the applied for mark from a registrant's símilar mark. See non-precedential opinion in In re the Closet
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`Guy, Inc., Serial No. 77426306 (T.T.AB. March 25, 2010), wherein the Board found that the applicant's design of
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`a man building a closet, although visually prominent, merely reinforced the word portion of its mark.
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`Just as LiftMaster is a one-word mark, Applicant's LynxMaster mark is also a one-word mark, as
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`shown in all of its applications. Opp. Not. Rei. 11 at 99:2-5, 140:9-12; Schram I Dep. at 57:2-4. The overall
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`appearance and sound of marks, including similarities in capitalization of marks, should be considered. Recot,
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`Inc. v. M.e. Becton, 214 F.3d 1322,54 u.S.P.Q.2d 1894, 1899 (Fed. Cir. 2000) (noting appearance and overall sound
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`of FRITO LAY and FIDO LAY should have been considered, given the similar block capital lettering). The
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`stylization of the mark LynxMaster as shown in Applicant's '795 and '941 Applications ilustrates that
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`Applicant intends to utilize initial capitalization of the "L" and "M" letters in its LynxMaster mark, matching
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`how Chamberlain uses initial caps in its LiftMaster mark. Opp. Not. Rel. 11 (Schram Disc. Dep. Jan. 2010) at
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`128,129,140, Exh.l5-16; Anderson Dep. at 103:21-04:9, Exh.l2. Both of the marks LiftMaster and LynxMaster
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`begin with the letter "L," end with the term "Master," and consist of three syllables, resulting in a similar
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`appearance, sound and cadence. Notably, the spelling of these words differ by only three letters, of which the
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`"i" and "y" have simiar sounds and are simiarly positioned. In its decision in previous Opposition No. 91160673
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`between the parties, the Board found the marks LitMaster and Lynx Master to be "simiar in sound,
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`appearance and commercial impression," when considered in their entireties. Opp. Not. Rel. 2; Opp. Not. Rei. 4
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`at Response 2. Applicant's stylization of its mark comes even closer to the appearance of LiftMaster and
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`whether or not Applicant includes a cat head design does not detract from the Applicant's efforts to maximize
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`the similarity of the words.
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`Applicant contends that the word "Master" is laudatory and descriptive or diluted (contentions that
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`Applicant has failed to prove despite more than 8 pages on the issue in its brief) and it claims that the analysis
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`of the marks should therefore limit the focus on the LIFT and LYNX portions of the marks. Applicant relies on
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`the In re National Data Corporation case for the proposition that it is appropriate to dissect the marks and give
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`more or less weight to particular features of the marks. (App. Brief 36). The Federal Circuit actually stated in
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`National Data, "that likelihood of confusion cannot be predicated upon a dissection of a mark, that is, on only
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`part of a mark," In re National Data Corp., 224 U.S.P.Q 749,749-750 (Fed. Cir. 1985). Even if one were to give less
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`8
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`

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`weight to the common components of the mark, that assigning of less weight to a descriptive component "does
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`not mean that the public looks only at the differences or that the descriptive words play no role in creating
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`confusion." Id. at 752. The marks must be considered in their entireties, as the public views them. Id.
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`Considering the CASH MANAGEMENT ACCOUNT and THE CASH MANAGEMENT EXCHANGE marks in
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`their entireties, the Federal Circuit in National Data affrmed and agreed with the Board's finding confusion
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`because of the identical sound and appearance and general similarity in cadence. Id. Further, side-by-side
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`comparison is not the test for evaluating confsing simiarity, and the imperfections of human recall must be
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`acknowledged. Cooper Industries, 21S US.P.Q. at S5 (finding the sameness of the parties' METAL MASTER and
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`METALMASTER marks would appear striking to anyone exposed to them.)
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`As further evidence of Applicant's efforts to mimic the well-known LiftMaster mark, Applicant plans to
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`place the LynxMaster mark in all the same places where it currently uses the Lynx mark, which includes all the
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`same places where Chamberlain uses its LiftMaster mark. Opp. Not. ReI. 11 at 96:3-9, 98:15-99:1, 101:10-102:3,
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`103:H3, ExlA/5; Anderson Dep. I at 22:6-23:4, Exh. SA 1. This means that the one-word LynxMaster mark wil
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`appear on the housing for the power head of Applicant's garage door openers, on the remote controls and/or
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`control panels that operate its garage door openers, and on the packaging for its garage door hardware.
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`Applicant could also start placing the LynxMaster marks on its hardware at anytime even though it depends on
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`its current position that the mark is not used on hardware.
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`The ultimate consumers of the parties garage door openers wil be the ones exposed to the LiftMaster
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`or LynxMaster marks appearing on the power heads of the garage door openers hanging from the ceilings of
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`their garages or mounted in dealer's showrooms, on the remote controls for operating garage door openers
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`found in their cars, on the control panels mounted on the walls of their garages or those of dealer's showrooms,
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`and on the wireless keyless entry devices mounted on the door jambs outside their garages or in dealers'
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`showrooms. It wil be these marks that the ultimate consumers wil recall when going to purchase the parties'
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`products or contacting a professional installer for service, repair or replacement of their garage door openers.
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`As for Applicant's garage door hardware products, dealers and installers would see the LynxMaster marks on
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`the Applicant's packaging for these goods (Applicant Brief at 13), which viewing is legally significant, even if
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`that packaging is promptly discarded in favor of alternate storage. Cooper Industries, 218 US.P.Q. at 84. Given
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`the similarities in sound and appearance, consumers cannot be expected to recall the minute differences
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`between the parties' respective marks.
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`Customers in the trade, as well as homeowners know the LiftMaster name. Ewasiuk Dep. at 10:10-13,
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`86:10-17. Mr. Ewasiuk, an independent installer of garage doors and garage door openers for more than 35 years,
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`and who works with residential homeowner consumers every day, has testified that he believes that consumers
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`would confse the two names LiftMaster and LynMaster. Ewasiuk Dep. at 25:3-26:18, 29:17-30:6, Exh.4. He
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`also testified that neither the presence of Applicant's cat head logo, nor its NSW coiled spring logo would
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`matter and that even he, himself, would stil confuse LynxMaster with LiftMaster. Ewasiuk Dep. at at 100:21-
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`102:24, Exh.lI. When considered in their entireties, the visual and phonetic similarity between the LiftMaster
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`mark and the LynxMaster and LynxMaster &: Design marks is clear, and this DuPont factor should weigh in
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`favor of Chamberlain.
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`D. Applicant Concedes That the Parties' Garage Door Opener Goods Are Identical.
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`Chamberlain uses the LiftMaster mark for its line of professionally installed garage door openers,
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`remote access controls, universal receivers, remote and wireless controls for garage door openers, gate
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`operators, gate access controls and hardware, garage door monitors, parking laser assists, and remote light
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`controls and related goods (Chamberlain Brief at 5-6, lIt Applicant concedes that the parties' professionally
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`installed garage door openers, remote controls and garage door opener accessories are identical and competitive
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`goods (Applicant Brief at 16, 24,), and the evidence of record shows that the parties and their respective garage
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`door opener, remote controls, and garage door opener accessories are directly competitive (Chamberlain Brief at
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`6-8, 10-11, 35). Not only is it, therefore, appropriate for the Board to determne that the parties' garage door
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`openers and garage door opener accessories are identicaL, it is appropriate for the Board's determination on the
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`similarity of these goods to influence other considerations in the likelihood of confusion analysis concerning the
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`LynxMaster &: Design mark in the '941 Application for goods in Class 9.
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`E. The Applicant's Garage Door Hardware Goods are Related to Chamberlain's Garage Door
`Opener Goods.
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`Neither party disputes that garage door openers and garage door hardware are not the same goods. It
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`6 Chamberlain also has a line of garage door openers that it sells under the CHAMBERLAIN brand name to hardware and
`home improvement big box retailers, primarily for do-it-yourself installation (Chamberlain's brief, p. 6). Chamberlain
`features the color blue for its CHAMBERLAIN line of garage door openers sold at retaiL. Anderson Dep. at 341.
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`is not necessary for the goods to be the same for a likelihood of confusion to exist. Safety-Kleen Corp. v. Dresser
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`Industries, Inc., 518 F.2d 1399, 1404, 186 U.S.P.Q. 476,480 (C.c.P.A 1975). Instead, showing that the goods are so
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`related that individuals encountering them, in purchase or use, would be likely to assume a source connection is
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`suffcient. In re Artic Electronics Co., Ltd., 220 U.S.P.Q. 836, 838 (TTA.B. 1983); Recot Inc. v. M.e. Becton, 54
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`u.S.P.Q.2d 1894,1898 (Fed. Cir. 2000). These two products, garage door openers and garage door hardware, are
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`highly related for purposes of likelihood of confusion analysis since garage door hardware refers to the metal
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`components necessary to install a garage door in a garage. Schram 1. Dep. at 77:8-17; Ewasiuk Dep. at 28:4-23,
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`Exh.l. Good garage door hardware is essential for a garage door opener to be effective and raise and lower a
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`homeowner's garage door. Anderson Dep. at 230:13- 231:7. Applicant sells its garage door hardware and garage
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`door opener products to the same professional dealers, installers and distributors to whom Chamberlain sells
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`its LiftMaster garage door openers, remote controls, and accessories, among other garage safety and
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`convenience products. Considering the necessity of garage door hardware to enable the proper raising and
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`lowering of a garage door by a garage door opener and that professional dealers, installers and distributors use
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`both of these goods to install and/or repair garage door openers for homeowners, it is easy to conclude that they
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`are related goods for purposes of likelihood of confusion. The contention of the Applicant that garage door
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`openers and garage door hardware are not related goods is quite frankly preposterous.
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`Chamberlain also has previously cited to examples of third party registrations for GENIE and
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`HORMANN held by competitors of Chamberlain and Applicant to ilustrate that the same trademarks have
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`been registered for both garage door openers and garage door hardware (Chamberlain Brief at 38). Evidence of
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`third party registrations showing that the same trademarks often have been registered for a number of different
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`goods is sufficient to show relatedness of those goods. In re Kysela Perc et Fils Ltd., 98 u.S.P.Q.2d 1261, 1264-65
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`(TT.AB. 2011). Applicant did not challenge the sufficiency of this evidence in its brief and therefore concedes
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`these registrations ilustrate that garage door hardware goods are related to garage door openers. The second
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`DuPont factor therefore favors Chamberlain in the likelihood of confusion analysis for the '040 and '795
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`Applications for LynxMaster and LynxMaster &: Design.
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`F. The Pa