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`BULKY DOCUMENTS
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`(Exceeds 300 pages)
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`Proceeding/Serial No: 91174249
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`Filed:
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`04-05-2010
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`Title: ngoser’s Motion for Summggy
`Iudgment & suppofl'g Brief
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`Pan:
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`1
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`of
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`1
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`WRITER’S TELEPHONE:
`312.577.7000
`
`FITCHEVENTABINSLFLANNERY
`
`TTAB
`
`INTELLECTUAL PROPERTY LAW | EST. IN 1859
`I
`-
`
`(A‘fl/IFLI/(lllllz
`[AL
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`April 3, 2010
`
`WRITER’S E-MAIL
`ASIMMONS@FITCHEVEN . COM
`
`Via First Class Mail
`
`United States Patent 69: Trademark Office
`
`Trademark Trial and Appeal Board
`PO. BOX 1451
`
`Alexandria, VA 22313/1451
`
`Re:
`
`Transmittal of Opposer’s Motion for Summaryjudgment
`And Brief in Support Thereof
`The Chamberlain Group, I nc. v. Lynx Industries, Inc.
`Opposition Nos. 91174249 (Parent), 91175332 and 91185559
`Our File NO. 6341/89870
`
`Dear Commissioner:
`
`Enclosed please find Opposer’s Motion for Summary judgment and Brief in Support
`Thereof.
`
`In accordance with 37 CFR §1.8 & 2.197, the undersigned hereby certifies that this letter,
`along with the Notice described in the foregoing paragraph, are being deposited with the United
`States Postal Service with sufficient postage as first class mail in an envelope addressed to:
`United States Patent Es: Trademark Office, Trademark Trial and Appeal Board, PO. Box 1451,
`Alexandria, Virginia 223134451 on this 3rd day of April, 2010.
`
`April 3, 2010
`
`Respectfully submitted,
`
`(ZZMA Jan/inflow
`
`joseph T. Nabor
`Alisa C. Simmons
`
`FITCH, EVEN, TABIN 65: FLANNERY
`120 South LaSalle, Suite 1600
`Chicago, 11. 606033406
`Telephone: 312.577.7000 —
`04-05-2010
`
`120 South La Salle Street, Suite 1600, Chicago, illinois 60603-3406 (312) 577-7000 Fax (312) 577—7007 www.fitcheven.com
`
`Chicago
`
`San Diego Washington DC
`
`Los Angeles
`
`Boulder
`
`San Luis Obispo
`
`

`

`
`
`6341/8935
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Consolidated
`
`Opposition Nos.
`
`91174249 (Parent)
`91175332
`91185559
`
`Certificate of Mailing:
`
`I hereby certify that this paper is being deposited
`With the United States Postal Service as first class
`
`mail, postage prepaid, in an envelope addressed to:
`US. Patent and Trademark Office
`
`Trademark Trial and Appeal Board
`PO. Box 1451
`
`Alexandria, VA 223134451
`on this 3rd day of April, 2010.
`
`Attorney for Opposer
`
`) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) )
`
`The Chamberlain Group. Inc,
`
`Opposer,
`
`v.
`
`Lynx Industries, Inc.,
`
`Applicant.
`
`
`Serial No. 78619040
`
`Filed: April 28, 2005
`Published: August I, 2006
`
`Serial No. 78625795
`
`Filed: May 9, 2005
`Published: September 26, 2006
`
`Serial No. 77356941
`Filed: December 20, 2007
`
`Published: July 1, 2008
`
`OPPOSER’S MOTION FOR SUMMARYJUDGMENT
`AND SUPPORTING BRIEF
`
`REDACTED
`
`
`
`

`

`TABLE OF CONTENTS
`
`I.
`II.
`III.
`
`BEE
`THE STATUS OF THIS OPPOSITION ........................................................................................... .. 1
`FACTUAL BACKGROUND ........................................................................................................... .. 2
`SUMMARYJUDGMENT SUSTAINING THE OPPOSITION IS APPROPRIATE IN THIS CASE ........... .. 4
`The Summaryjudgment Standard ......................................................................................... .. 5
`
`E75
`
`Likelihood of Confusion Exists Between the Marks as a Matter of Law ............................ .. 6
`
`The Parties' Respective Goods Are Identical and/or Related and Are Likely to Be Viewed
`
`as Emanating from the Same Source ...................................................................................... .. 7
`
`The Marks at Issue Are Confusingly Similar ......................................................................... .. 8
`
`The LIFTMASTER Mark is Famous and Therefore Entitled to a Broad Scope of
`
`Protection............................................................................................................................... .. 1 I
`
`The Similarity of the Parties’ Respective Trade Channels Increase the Likelihood of
`
`Confusion Between Chamberlain and Lynx ....................................................................... .. 15
`
`“$.53
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`The Predatory Intent of Lynx Industries ............................................................................. ..18
`
`Public Protection Against Confusion Requires Refusal of Lynx’ Applications ............... ..20
`
`Any Doubts Regarding the Likelihood of Confusion Must Be Resolved Against the
`
`Applicant ................................................................................................................................ . . 2 1
`
`IV.
`
`CONCLUSION .......................................................................................................................... . . 21
`
`
`
`

`

`Wm'ms'lgluu“
`
`TABLE OF AUTHORITIES
`
`gage
`
`Cases
`
`Anderson v. Liberty Lobby, Inc, 477 US. 242, 247; 106 S.Ct. 2505, 250940 (1986) ...................................... .. 5, 6
`Block Drug Co. Inc. v. Den/Mat Inc, 17 U.S.P.Q.2d1315, 1317 (T.T.A.B. I980) .................................................... .. 9
`Carlisle Chanical Works, Inc. v. Harman 0 Holden, Ltd, 434 F. 2d1403, 168 U.S,P.Q. 110 (C. C.P,A. 1970) ........ ..21
`Century 21 Real Estate Corp. v. Century Life ofAmerica, 23 USPQ 2d. 1698, 1700 (Fed. Civ. 1992) ...................... .. 8
`Continental Can Co. USA, Inc. v. Monsanto, Co., 948 F.2d 1264, 1265 (Fed. dr. 1991) .......................................... .. 5
`In re E.I. DuPont DeNemours (’7 Co. , 476 F.2d1357, 1361, 177 USPQ 563, 567 (CCPA I973). ...................................... .. 6
`In re El Torito Restaurants Inc, 9 U.S.P.Q.Zd 2002, 2004 (T.T.A.B. 1988) ..................................................... .. 16
`First National Bank v. Cities Services Co., 391 US. 253, 290 (1968) .................................................................... .. 5
`Fleischmann Distilling Corp. v. Maier Brewing Company, 314 F.2d 149, 161 (9th Cir. 1963) ................................. .. 15
`].C. Hall Company v. Hallmark Cards, Incorporated, 340 F.2d 960, 963, 144 U.S,P.Q. 435, 438 (C.C.P.A. 1965).... 7
`Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461, 462 (TI'AB 1985) ............................................. .. 10
`Kenner Parker Toys, Inc. v. Rose Art Industries, Inc, 963 F.2d 350, 22 U.S.P.Q.2d1453, 1457 (Fed. Cir. 1992) .... .. 9
`Lever Bros. Co. v. Riodela Chemical Co, 41 F.2d 408, 410, 5 U.S.P.Q. 152, 154,155 (C.C.P.A. 1930) .... ..
`..18
`Little Caesar Enterprises, Inc, v. Pizza Caesar, Inc, 834 F.2d 568, 4 U.S.P.Q.2d 1942. 1945
`(6‘h Cir. 1987) ........................................................................................................................................ .. 19
`Majestic Distilling Co., Inc, 315 F.3d 1311, 65 USPQ 2d 1201 (Fed. Cir. 2003) .................................................. .. 6
`Mobil Oil Corp. v, Pegasus Petroleum Corp, 818 F.2d 254, 2 U.S.P.Q.2d1677, 1681 (2nd Cir. 1987) ................... .. 19
`Morrison Industries, Inc, 178 USPQ 432, 433 (TIAB 1973) ........................................................................... .. 10
`Pure Gold, Inc. v. Syntex (USA), Inc, 739 F.2d 624, 636 (Fed. Cir. 1984) ......................................................... .. 5
`Safety/Kleen Corp. v. Dresser Industries, Inc, 518 F.2d. 1399, 1404,186 U.S,P.Q. 476, 480 (C.C.P.A. 1975) ......... ..7
`Southern Belle Frozen Foods, Inc, 48 U.S.P.Q.2d 1849 (T.T.A.B. 1998) ........................................................... .. 15
`WE. Kautenberg Co. v. Elie" Products Company, 251 F.2d 628, 631, 116 U.S.P.Q. 417,419
`(C.C.P.A. 1958) ........................................................................................................................................ ..7
`Weiss Associates, Inc. V. HRE Associates, Inc, 902 F.2d 1546, 1547 (Fed. Cir. 1990) ......................................... .. 5
`
`Rules
`FED. R. CIV. P. 56 ......................................................................................................................................... ..1
`FED. R. CIV. P. 56(c) .................................................................................................................................... .. 5
`FED. R. CIV. P.56(e) ..................................................................................................................................... .. 5
`
`

`

`OPPOSER'S MOTION FOR SUMMARY IUDGMENT
`
`Opposer, The Chamberlain Group, Inc, (“Chamberlain”), moves for entry of Summary Judgment
`
`pursuant to FED. R. CIV. P.56 on its Consolidated Oppositions filed against Application Serial No.
`
`78619040 for the mark LYNXMASTER in Class 6, Application Serial No. 78625795 for the mark
`
`LYNXMASTER 653 Design in Class 6, and Application Serial No. 77356941 for the mark LYNXMASTER
`
`69: Design in Class 9. Chamberlain is entitled to Summary judgment because there is no issue of material
`
`fact, and the undisputed evidence establishes that there is a likelihood of confusion between the
`
`Opposer‘s use of
`
`its well known LIFTMASTER mark and Applicant's intended use of
`
`the
`
`LYNXMASTER word and Design marks. Therefore, Chamberlain respectfully requests the entry of
`
`Summary Judgment sustaining its Consolidated Oppositions on the basis of Section 2(d) of the Lanham
`
`Act.
`
`I.
`
`THE STATUS OF THIS OPPOSITION
`
`“The opposition is sustained on the grounds of likelihood of confusion,” opinion by
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`Administrative Law Judge Hairston in Opposition No. 91160673 to Application Serial No. 78281660 for
`
`the mark LYNX MASTER on December 14, 2007. Little has changed since then.
`
`Six days after the Board sustained Chamberlain’s Opposition No. 91160673 relating to another
`
`application of Lynx Industries for the mark LYNX MASTER for garage door opener products, Lynx
`
`Industries, Inc. (“Lynx”) filed intent/toruse Application Serial No. 77356941 for the mark LYNXMASTER
`
`69: Design for the same goods, namely electric door openers, electric garage door openers and remote
`
`controls for electric garage door openers in Class 9 (“the ‘941 Application"). Lynx also owns two other
`
`intent/to’use applications for the mark LYNXMASTER. These include: Application Serial No. 78619040
`
`for the mark LYNXMASTER in Class 6 for metal garage door hardware, such as hinges, rollers, brackets
`
`and hinges (“the ’040 Application") and Application Serial No. 78625795 for the mark LYNXMASTER Es:
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`Design in Class 6 for the same garage door hardware goods (“the ‘795 Application”). The Design portion
`
`of the ‘795 and ‘941 Applications consists of a cat or lynx head positioned to the left of the word mark
`
`LYNXMASTER. Lynx filed the ‘040 Application on April 28, 2005, and filed the ‘795 Application on May
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`

`

`9, 2005. Lynx has filed no allegations of use in connection with these Applications.
`
`Chamberlain filed timely oppositions against all three of Lynx’ Applications on November 29,
`
`2006,]anuary 26, 2007, and August 1, 2008, respectively, on the grounds that Lynx‘ marks are confusingly
`
`similar
`
`to Chamberlain's LIFTMASTER mark and will dilute Chamberlain’s goodwill
`
`in its
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`LIFTMASTER mark. Lynx answered each opposition generally denying the allegations, and on October
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`17, 2008, the Board consolidated Chamberlain‘s oppositions to Lynx‘ three Applications. Chamberlain’s
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`testimony period is presently set to open on Monday, April 5, 2010.
`
`II.
`
`FACTUAL BACKGROUND
`
`Lynx is a Canadian corporation in the business of manufacturing, distributing, and marketing
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`commercial and residential garage doors, garage door openers and garage door hardware (Schram
`
`Transcript pp. 14115, 17, 33, 49/50.)
`
`Chamberlain is a Connecticut corporation headquartered in Elmhurst, Illinois. Chamberlain is a
`
`leader in the garage door opener industry being the world's largest manufacturer of residential garage
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`door openers and commercial operators. Chamberlain also manufactures gate operators and various
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`accessories such as door control products and remote control products which bear Chamberlain
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`trademarks, including the LIFTMASTER mark. (Anderson Transcript, p. 31; Tone Transcript, p. 19.)
`
`Chamberlain is a global company with offices throughout the United States and oversees in Germany,
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`The United Kingdom, Mexico, Norway, The Netherlands, France, Poland, Italy, Singapore, and China.
`
`Chamberlain is a member of nearly every major association in the garage door industry.
`
`(Anderson
`
`Transcript, pp. 8488.)
`
`On June 21, 1967, Chamberlain filed an application with the Patent and Trademark Office (PTO)
`
`to register the mark LIFTMASTER. On January 14, 1969, this application resulted in the issuance of
`
`Registration No. 863,447 wherein the goods are specified as “residential electrical garage door
`
`controllers." This Registration is still valid and subsisting and is now incontestable. (Declaration of
`
`Mark Tone, 97). Since Chamberlain’s first use of the mark, which occurred at least as early as May 17,
`
`1967, the LIFTMASTER mark has been consistently used by Chamberlain both as its trademark and now
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`

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`also as the trade name by which it has come to be known among end users. Chamberlain also owns U.S.
`
`Registration No. 2,724,638 for the mark LIFTMASTER for “electric motors for doors, ages and shutters;
`
`tubular electric motors for doors, gates and shutters; remote control systems and components thereof,
`
`namely radio controls for garage and warehouse entrance doors or gates, automatic garage door openers,
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`lights motors, antennas, transmitters, receivers and controllers responding thereto and used in such
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`systems; electrical safety equipment; namely, an electric eye for sensing obstructions and controlling
`
`doors; electronic security devices, namely, electronic controls for granting access and egress through
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`doors or gates; radio receiver units, radio transmitter units, keypads and card readers; a centralized
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`automated system comprising a programmable controller, power line carrier modules, and one or more
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`control modules or control receptacles, for controlling audio equipment, lighting, and other appliances in
`
`a residence; Providing technical advices and information in the maintenance and repair in the field of
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`garage door opener installation, remote control systems, electrical safety equipment, electronic security
`
`systems and centralized automation systems.” This Registration is still valid and subsisting and is also
`
`now incontestable. (Tone Declaration 9 9). As one of the largest selling brands of garage door operators
`
`in the world, the LIFTMASTER mark and trade name have generated substantial goodwill associated
`
`with the mark.
`
`This substantial goodwill has resulted in the further evolution of other, related marks for
`
`additional goods and services. Chamberlain owns Registration No. 1,401,035 for the mark GARAGE
`
`MASTER on “electric garage door openers."
`
`(Tone Declaration 915). Chamberlain also owns U.S.
`
`Registration No. 1781236 for LIFT/MASTER for “electrical door openers and structural parts thereof."
`
`(Tone Declaration 98). Chamberlain also owns the mark ACCESSMASTFR (Registration No.
`
`2,034,080), which is used on “radio receiver units, radio transmitter units, keypads car readers, control
`
`panels, and for controlling electronic door and gate openers, and parts therefore."
`
`(Tone Declaration
`
`917.) Additionally, Chamberlain owns and uses the common law mark TASKMASTER in connection
`
`with software for operating and managing self’storage facilities.
`
`(Anderson Transcript p. 148.)
`
`In its
`
`Answers to the Notices of Opposition, Lynx Industries admits that Registration No. 863447 for
`
`é
`
`,5
`
`
`
`
`
`

`

`LIFTMASTER, Registration No. 1781236 for LIFT’MASTER and Registration No. 2,724,638 for
`
`LIETMASTER were issued by the US. Patent and Trademark Office and are currently owned by
`
`Chamberlain and that Registration Nos. 863447 and 1781236 are incontestable.
`
`In approximately May 2004, Chamberlain and Lynx were attendees at the International Door
`
`Association Trade Show in Las Vegas, Nevada. The Lynx trade show booth displayed approximately two
`
`or three residential garage door operators bearing the LYNX MASTER mark. (Answer to Opp. No.
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`91185559, ‘140; Schram Transcript pp. 145146, 148, 150.) Lynx also displayed a large poster approximately
`
`20 x 30 inches large depicting its residential garage door opener bearing the LYNX MASTER mark.
`
`(Answer to Interrogatory No. 7.) Additionally, Lynx distributed informational brochures “thanking”
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`customers for Visiting the Lynx booth, which brochures featured the LYNXMASTER mark in connection
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`with Lynx‘ residential garage door opener. (Schram Transcript p. 143.) Attached hereto as Exhibit A is a
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`photocopy of this brochure in which the mark is shown as one word.
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`Shortly after Chamberlain learned of Lynx’ intentions to use the LYNX MASTER mark, it
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`objected to Lynx and filed Opposition No. 91160673 against LynX’ prior Application Serial No. 78281660
`
`for LYNX MASTER for electric door openers and garage door openers, claiming that Lynx‘ use of the
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`LYNX MASTER trademark was likely to confuse consumers and diluted Chamberlain's LIETMASTER
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`mark. The Board agreed and sustained Chamberlain’s Opposition No. 91160673 based upon a likelihood
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`of confusion. (Tone Declaration 920). That decision was not appealed and is final.
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`In these new Consolidated Oppositions Chamberlain claims
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`that Lynx’ use of
`
`the
`
`LYNXMASTER word and design marks will cause a likelihood of confusion with Chamberlain’s
`
`LIFTMASTER mark and will dilute Chamberlain's goodwill built up in its LIFTMASTER mark as well
`
`as its other marks. Based upon the undisputed facts, there is a clear likelihood of consumer confusion.
`
`III.
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`SUMMARYJUDGMENT SUSTAINING THE OPPOSITION IS APPROPRIATE IN THIS CASE
`
`The Board should grant Chamberlain’s motion for summary judgment and sustain these
`
`Consolidated Oppositions because there is no issue of triable fact. In this case, the parties cannot
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`reasonably dispute the marks, goods, and channels of commerce. The appearance, sound, and
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`
`
`

`

`
`
`connotation of the marks and the goods and services and channels of trade are so similar between Lynx’
`
`and Chamberlain‘s marks that there is simply a clear likelihood of confusion between the marks as a
`
`matter of law.
`
`A.
`
`The Summaryjudgment Standard
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`Summary judgment is proper when there is no genuine issue of material fact, and the movant is
`
`entitled to judgment as a matter of law. FED. R. CIV. P. 56(c); Anderson v. Liberty Lobby, Inc, 477 US. 242,
`
`247; 106 S.Ct. 2505, 250910 (1986); Continental Can Co. USA, Inc. v. Monsanto, Co., 948 F.2d 1264, 1265 (Fed.
`
`Cir. 1991), A factual issue is “genuine” only if the evidence is such that a reasonable fact finder could
`
`return a verdict for the non/moving party under the applicable substantive evidentiary standard,
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`Anderson, supra, at 254. Accordingly, it is the obligation of the non—moving party to “set forth specific facts
`
`showing that there is a genuine issue for trial." FED. R. CIV. P. 56(e). The mere identification of a dispute
`
`of fact will not necessarily defeat a motion for summary judgment if the fact disputed is not essential to
`
`the determination sought by the Summary judgment motion; a factual dispute is material only if
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`resolution of the dispute would affect the decision on the legal issue. Pure Gold, Inc. v. Syntex (USA), Inc,
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`739 F.2d 624, 636 (Fed. Cir. 1984). Moreover, Summary Judgment should not be denied “merely to satisfy
`
`a litigant‘s speculative hope of finding some evidence that might tend to support a complaint.” Pure Gold,
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`739 F.2d at 627. (Citing First National Bank v. Cities Services Co., 391 US. 253, 290 (1968)).
`
`The Federal Circuit has held that likelihood of confusion is a question of law to be decided by the
`
`Board. Weiss Associates, Inc. V. HRE Associates, Inc., 902 F.2d 1546, 1547 (Fed. Cir. 1990). See also Pure Gold, Inc.
`
`v. Syntex (USA), Inc, 739 F.2d 624, 636 (Fed. Cir. 1984)(likelihood of confusion is an issue well/suited for
`
`summary judgment). Moreover, 37 CPR. § 2.116(a) makes FED. R. CIV. P. 56 applicable to all inter partes
`
`proceedings before the Board.
`
`Priority is not at issue in these Consolidated Oppositions. Lynx has admitted that it knew of
`
`Chamberlain’s use and federal registration of its LIFTMASTER mark prior to adopting either of its
`
`LYNXMASTER word and LYNXMASTER 65: Design marks and prior to filing the ‘040, ‘795, and ‘941
`
`

`

`Applications.
`
`(Responses 1316 of Lynx’ Responses to First Requests for Admission; Schram Transcript
`
`pp. 1415.) Each of the aforementioned Registrations of Chamberlain were issued prior to the filing dates
`
`of the ‘040, ‘795, and ‘941 Applications, and the earliest date of first use recited in Chamberlain‘s
`
`Registrations is at least as early as May 17, 1967, well before Lynx even began offering any product or
`
`service. Lynx has not challenged Chamberlain’s Registrations. Lynx has also made no use of the
`
`LYNXMASTER mark (Schram Transcript p. 98) and may rely upon only the filing dates of the ‘040, ‘795,
`
`and ‘941 Applications as the earliest dates concerning use or constructive use of the applied for marks.
`
`Therefore, the only issue for determination is the existence of a likelihood of confusion.
`
`B.
`
`Likelihood of Confusion Exists Between the Marks as a Matter of Law
`
`The standard for the likelihood of confusion in an opposition proceeding before the Board is well
`
`established as set forth in In re E. l. du Pont dc Ncmours (’7 Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P,A. 1973)
`
`and later affirmed in In re Majestic Distilling Co., Inc, 315 F.3d 1311, 65 USPQ 2d 1201 (Fed. Cir. 2003). In the
`
`Du Pont case, the Court identified the availability of 13 evidentiary factors that should be evaluated in
`
`determining whether a likelihood of confusion exists. The evidentiary elements listed in DuPont are not
`
`listed in order of merit. Moreover, the significance of each factor and its relevance to subsequent cases
`
`varies from case to case. DuPont, 476 F2d at 567. As such, discussed below are the factors most relevant to
`
`this case. An evaluation of the relevant DuPont factors shows as a matter of law that likelihood of
`
`confusion exists betWeen Chamberlain's LIFTMASTER mark and Lynx‘ LYNXMASTER word and
`
`design marks.
`
`In the present case, several factors identified in DuPont and other cases lead the Board to a legal
`
`conclusion that likelihood of confusion clearly exists. The factors most relevant to this proceeding are:
`
`(1) the similarity of the marks as to appearance, sound, connotation and commercial impression; (2) the
`
`similarity of the goods specified in the application with those of Chamberlain (3) the similarity of
`
`established, likelyrto’continue trade channels and (4) the fame of the LIFTMASTER mark in terms of
`
`sales, advertising and length of use, DuPont, 476 F.2d at 1361, 177 USPQ at 567. Among the other DuPont
`
`r
`
`

`

`—m~m.m«p.
`
`factors to consider are the nature and extent of any actual confusion and the length of time and
`
`conditions under which there has been any concurrent use without evidence of actual confusion. Id.
`
`Because Lynx has made no use of the LYNXMASTER word and design marks, these factors are not highly
`
`relevant to the present analysis. However, it bears mentioning that the Chamberlain conducted a survey
`
`in prior Opposition No. 91160673, the results of which the Board considered, which survey found that
`
`consumers were likely to be confused.
`
`C.
`
`The Parties' Respective Goods Are Identical and/or Related and Are Likely to Be
`Viewed as Emanating from the Same Source
`
`The similarity or dissimilarity of the parties’ respective goods is one of the primary factors in
`
`determining whether or not there is a likelihood of confusion. DuPont, 177 U.S.P.Q.2d at 567, See also ].C.
`
`Hall Company v. Hallmark Cards, Incorporated, 340 F.2d 960, 963, 144 U.S,P.Q. 435, 438 (C.C.P.A. 1965). It is
`
`not necessary for the goods of Chamberlain and Lynx to be identical for a likelihood of confusion to exist.
`
`Safety/Klan Corp. v. Dresser Industries, Inc, 518 F.2d. 1399, 1404, 186 U.S,P.Q. 476, 480 (C.C.P.A. 1975); WE.
`
`Kautenberg Co. v. Eke° Products Company, 251 F.2d 628, 631, 116 U.S.P.Q. 417,419 (C.C.P.A. 1958) (ECKO as
`
`applied to kitchen utensils held confusingly similar to WECKO as applied to mops and related
`
`products). As it happens though, the respective goods are more than just similar. Here, the identification
`
`of goods in the ‘941 Application of Lynx identifies goodsm to those set forth in Chamberlain’s
`
`Registration Nos. 863,447; 1,781,236; 2,034,080; 1,401,035; and 2,724,638. Chamberlain adopted and began
`
`using the LIFTMASTER mark on electrical garage door controllers in 1967 throughout the United States.
`
`Now, Lynx is seeking to register the mark LYNXMASTER for use in connection with “electric door
`
`openers; electric garage door openers; and remote controls for garage doors.” As such, there is entirely no
`
`contrast between Lynx's goods in the ‘941 Application and those of Chamberlain. During his 30(b)(6)
`
`deposition on behalf of Lynx, Mark Schram, Vice President of Lynx, testified that Chamberlain is a
`
`competitor for the goods specified in the ‘941 Application. (Schram Transcript, pp., 15, 23; Answer to
`Interrogatory No. 5.) These identified goods are essentially the very same goods specified in each of the
`
`Registrations owned by Chamberlain.
`
`

`

`In the ‘040 and ‘795 Applications, Lynx identifies garage door hardware products, which are
`
`products used on or for garage doors. Such products are obviously related to garage doors and are needed
`
`for the door to operate, namely open and close just the same as garage door openers. Mark Schram, Vice
`
`President of Lynx, testified that “garage door related products” include products that have to do with the
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`garage door and include remote controls, keypads, rails and hardware.
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`(Schram Transcript p. 152.)
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`Garage door openers, by definition, have to do with garage doors. Mr. Schram also testified that he
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`considers remote controls to be accessories related to garage door openers. (Schram Transcript p. 77.)
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`Thus, Chamberlain‘s garage door opener products and accessories branded under the LIFTMASTER
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`mark are at the very least directly and closely related to the goods identified by Lynx in the ‘040, ‘795 and
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`‘941 Applications.
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`Additionally, Chamberlain sells garage door hardware with its LIFTMASTER brand garage door
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`openers.
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`(Anderson Transcript p. 149150; Tone Transcript p. 21.) This garage door hardware includes
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`all the necessary hardware to mount the opener to a garage door, including items such as brackets,
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`angles, fasteners, bell wire, and the rail on which the trolley operates. (Anderson Transcript p. 149150.)
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`Attached as Exhibit B are pages from an owner’s manual for one of Chamberlain’s LIFTMASTER brand
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`garage door openers that includes pages illustrating the various hardware that comes with the opener.
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`At least some of these hardware items, brackets, fasteners, angles, and wire, appear in the identifications
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`of goods for the ‘040 and ‘795 Applications, and are therefore identical and/or related to Chamberlain’s
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`goods.
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`D.
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`The Marks at Issue Are Confusingly Similar
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`Not only are the goods at issue related or identical, but the marks at issue are also substantially
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`similar. “When marks would appear on virtually identical goods or services, the degree of similarity to
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`support a conclusion of likely confusion declines." Century 21 Real Estate Corp. v. Century Life of America, 23
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`USPQ 2d. 1698, 1700 (Fed. Civ. 1992). In evaluating whether marks are confusingly similar, the Board
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`looks at the entirety of the marks and compares the marks’ respective appearance, sound, connotation
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`and commercial impression. Id. “Similarity in any one of the elements of sound, appearance and meaning
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`may be sufficient to support a finding of likely confusion.“ Block Drug Co.Inc.v.Den/Mat1nc., I7 U.S.P.Q.2d
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`1315, 1317 (T.T.A.B. 1980).
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`Just as Chamberlain’s LIFTMASTER is a onerword mark, Lynx has indicated that
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`its
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`LYNXMASTER mark is also a one’word mark. (Schram Transcript p. 99.)
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`In this case, there is an
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`undeniable similarity between these marks. Both of these compound words begin with the letter “L,” end
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`with the term “Master,” and consist of three syllables, resulting in a similar appearance, sound and
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`cadence.
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`In its decision in previous Opposition No. 91160673 between the parties, the Board found the
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`marks LIFTMASTER and LYNX MASTER to be “similar in sound, appearance and commercial
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`impression,“ when considered in their entireties.
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`(Response 2 of Lynx‘ Responses to First Requests for
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`Admission.)
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`Similar sounds and pronunciations of trademarks are an important factor in determining a
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`likelihood of confusion. DuPont, 476 F.2d at 1361; Kenner Parker Toys, Inc. v. Rose Art Industries, Inc, 963 F.2d
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`350, 22 U.S.P.Q.2d 1453, 1457 (Fed. Cir. 1992). In Kenner Parker, the Federal Circuit found that the
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`identical pronunciation of single/syllable suffixes was a factor contributing to a likelihood of confusion
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`between the two marks “Play/Doh" and “Fundough.”
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`In the present case, the terms “Master” are
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`pronounced the same way for both marks.
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`Given the strong similarity in appearance, sound, connotation and commercial impression of
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`both marks when used on related or identical goods, there is a high likelihood of consumer confusion.
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`“Cases where a defendant uses an identical mark on competitive goods hardly ever find their way into the
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`appellate reports. Such cases are “open and shut‘ and do not involve protracted litigation to determine
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`liability for trademark infringement.” ]. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition
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`§23120, at 23/11 (4th ed. 2003). As the LIFTMASTER and LYNXMASTER marks are sufficiently similar
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`and used in connection with related or identical goods, consumer confusion is likely.
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`Lynx will likely argue that the cat head in its LYNXMASTER &5 Design mark in the ‘751 and ‘941
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`Applications somehow creates a commercial impression different from Chamberlain’s LIFTMASTER
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`mark. However, the Board has consistently been held that where a mark comprises a word portion and a
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`view-WVmp.
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`design portion it is the word features which are controlling. Kabushiki Kaisha Hattori Tokeitcn v. Scuotto, 228
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`USPQ 461, 462 (TTAB 1985). This is especially the case when the parties’ goods are of a type that are
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`generally purchased by name, resulting in emphasis on the word portion rather than the design.
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`In re
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`Morrison Industries, Inc, 178 USPQ 432, 433 (TTAB 1973). Here, the sales of both Lynx and Chamberlain
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`products are often conducting over the telephone, such as directing and connecting end consumers to
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`dealers. (See Schram Transcript pp. 8081; Anderson Transcript pp. 110111.) Chamberlain even hosts and
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`operates customer support and technical support phone lines and has a dedicated 877/LIFTMASTER
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`phone number to assist its customers and prospective customers.
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`(Anderson Transcript pp. 110111.)
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`During these phone conversations of Lynx or Chamberlain, the marks at issue would be spoken and
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`heard but not seen, and, as a result, the design element of Lynx’ mark would be irrelevant for purposes of
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`distinguishing the parties‘ marks.
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`In this case, the phonetic similarity between the LIFTMASTER and LYNXMASTER marks is
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`particularly troublesome. Not only does Chamberlain advertise its LIFTMASTER products in trade
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`journals, magazines, and other print media, but it also advertises its LIFTMASTER products on radio and
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`television commercials and commentaries. (Anderson Transcript, pp. 6468). In such advertisements
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`when a relatively short period of time is available to discuss a product and the product and associated
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`trade marks are not visually available to consumers, it is important that the mark used in connection
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`with the product is clearly heard by consumers. When 30 or 60 second commercial spots are used to
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`promote Chamberlain’s LIFTMASTER mark on goods identical to those of Lynx, consumers are likely to
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`be confused as to the trademark involved, and thus confused as to the source or origin of the goods.
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`Moreover, a consumer that mistakenly believes that the advertisements are promoting LYNXMASTER
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`products is likely to believe that
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`they originate with, are sponsored by, or are associated with
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`Chamberlain. The nearly indistinguishable sound of the LIFTMASTER and LYNXMASTER marks is
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`sufficient to cause likely confusion as to the source or origin of the goods at issue.
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`As for the commercial impression of the parties’ marks, when considered in relation to the
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`relevant products, Chamberlain’s mark is suggestive of its products and has achieved a certain level of
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`10
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`fame through its use. The Board in its decision in prior Opposition No. 91160673 took judicial notice of
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`the definition of the term “master.” Following this line of thinking, Lynx’ proposed LYNXMASTER mark
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`makes no sense in r