THIS OPINION IS NOT
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`A PRECEDENT OF THE TTAB
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`
`
`
`Mailed: January 21, 2020
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`______
`
`Silent Events, Inc.
`v.
`Quiet Events, Inc.
`
`Opposition No. 91234202 (Parent Case)1
`Opposition No. 91238912
`_____
`
`Quiet Events, Inc.
`v.
`Silent Events, Inc.
`
`Cancellation No. 92063149
`_____
`
`
`Patrick G. Walker of Farris Bobango PLC,
`for Silent Events, Inc.
`
`
`William R. Samuels of Scarinci Hollenbeck LLC,
` for Quiet Events, Inc.
`
`______
`
`Before Bergsman, Lynch, and Pologeorgis,
`Administrative Trademark Judges.
`
`
`
`1 Opposition No. 91234202 was consolidated with Cancellation No. 92063149 by Board
`order dated August 25, 2017. See 8 TTABVUE in Opposition No. 91234202. We sua
`sponte consolidate Opposition No. 91238912 with the already-consolidated proceedings
`because this latter opposition proceeding involves the identical parties and common or
`overlapping questions of law and fact. Fed. R. Civ. P. 42(a); see also Regatta Sport Ltd.
`v. Telux-Pioneer Inc., 20 USPQ2d 1154, 1156 (TTAB 1991). Unless otherwise specified,
`all TTABVUE citations in this decision reference the docket in the parent case, i.e.,
`Opposition No. 91234202.
`
`

`

`Opposition Nos. 91234202 and 91238912
`Cancellation No. 92063149
`
`
`Opinion by Pologeorgis, Administrative Trademark Judge:
`
`
`Quiet Events, Inc. (“QEI”) has applied to register on the Principal Register
`
`(1) the standard character mark QUIET EVENTS (“EVENTS” disclaimed) for
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`“arranging, organizing, conducting, and hosting social entertainment events”
`
`in International Class 41;2 and (2) the composite mark QUIETEVENTS and
`
`design, as displayed below, for “online retail store services and telephone
`
`ordering services featuring headphones, belt clip transceivers, music players,
`
`inventory management systems, mixers, microphones, generators, batteries,
`
`LED lights, and stage lights” in International Class 35 and “rental of sound,
`
`light, and audio equipment, specifically wireless headphones with belt clip
`
`transceivers, music players, mixers, microphones, batteries, LED lights, and
`
`stage lights” in International Class 41.3
`
`
`Silent Events, Inc. (“SEI”) opposes registration of both of QEI’s marks on
`
`the ground of likelihood of confusion under Section 2(d) of the Trademark Act,
`
`
`2 Application Serial No. 87228747, filed on November 7, 2016, based on use in
`commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming July
`1, 2012 as both the date of first use and the date of first use in commerce. This
`application is subject to Opposition No. 91234202.
`3 Application Serial No. 87228788, filed on November 7, 2016, based on use in
`commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming
`March 22, 2012 as both the date of first use and the date of first use in commerce as to
`both classes of services. The description of the mark reads as follows: “The mark
`consists of a cartoon face with headphones and the words ‘quietevents’ on the right of
`it.” Color is not claimed as a feature of the mark. This application is subject to
`Opposition No. 91238912.
`
`- 2 -
`
`

`

`Opposition Nos. 91234202 and 91238912
`Cancellation No. 92063149
`
`
`15 U.S.C. § 1052(d). In support of its Section 2(d) claim, SEI alleges, inter alia,
`
`prior use and ownership of a registration on the Principal Register of the mark
`
`SILENT EVENTS (“EVENTS” disclaimed) for “Entertainment services,
`
`namely, arranging, organizing and conducting special events for social
`
`entertainment purposes that feature live musical concerts supplied to an
`
`audience by means of personal wireless headphones” in International Class 41.4
`
`In its answers to the notices of opposition, QEI denied the salient
`
`allegations asserted therein. QEI also asserted the following “affirmative
`
`defenses”: (1) failure to state a claim upon which relief may be granted, (2)
`
`laches based on a prior registration issued to QEI for the mark QUIET
`
`EVENTS for “rental of headsets,”5 and (3) various defenses that go to the merits
`
`of SEI’s likelihood of confusion claim. Insofar as QEI neither filed a formal
`
`motion to dismiss for failure to state a claim during the interlocutory phase of
`
`the opposition proceedings, nor argued this asserted affirmative defense in its
`
`brief, it is hereby deemed waived. Alcatraz Media, Inc. v. Chesapeake Marine
`
`Tours Inc., 107 USPQ2d 1750, 1753 n.6 (TTAB 2013), aff’d mem., 565 F. App’x
`
`900 (Fed. Cir. 2014). Similarly, because QEI did not argue its laches affirmative
`
`defense in its brief, it is also deemed waived. Swatch AG (Swatch SA) (Swatch
`
`Ltd.) v. M.Z. Berger & Co., 108 USPQ2d 1463, 1465 n.3 (TTAB 2013) (opposer’s
`
`
`4 Registration No. 4141745, registered on May 15, 2012; renewed. The mark subject to
`this registration is in standard character form.
`5 We construe this affirmative defense as one brought under the “prior registration” or
`Morehouse defense. See Morehouse Mfg. Corp. v. Strickland & Co., 407 Fl.2d 881, 160
`USPQ 715 (CCPA 1969).
`
`- 3 -
`
`

`

`Opposition Nos. 91234202 and 91238912
`Cancellation No. 92063149
`
`
`pleaded claims not argued in its brief deemed waived), aff’d, 787 F.3d 1368, 114
`
`USPQ2d 1892 (Fed. Cir. 2015). With regard to the remaining “affirmative
`
`defenses,” we construe them as mere amplifications of the denials in QEI’s
`
`answers. See Order of Songs of Italy in America v. Profumi Fratelli Nostra AG,
`
`36 USPQ2d 1221, 1223 (TTAB 1995).
`
`QEI filed a petition to cancel SEI’s registration for the mark SILENT
`
`EVENTS on the ground that the mark is the generic name for the services
`
`identified in the registration.6
`
`In its answer to the petition to cancel, SEI denied the salient allegations
`
`asserted therein, except that it admitted to the filing date and the filing basis
`
`of the underlying application of its subject registration.7
`
`I.
`
`The Record
`
`The record includes the pleadings in all the consolidated proceedings and,
`
`by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the application
`
`files of QEI’s involved applications and the registration file of SEI’s subject
`
`registration.
`
`SEI has submitted the following evidence:
`
`• SEI’s Notices of Reliance on (1) QEI’s responses to SEI’s
`Second Set of lnterrogatories Nos. 3-4, 15, 16-18, and 20
`and exhibits referenced in those responses;8 (2) QEI’s
`responses
`to SEI’s Requests
`for Admission and
`
`
`6 1 TTABVUE in Cancellation No. 92063149.
`7 15 TTABVUE 2 (¶ 3) in Cancellation No. 92063149.
`8 9 TTABVUE.
`
`- 4 -
`
`

`

`Opposition Nos. 91234202 and 91238912
`Cancellation No. 92063149
`
`
`corresponding exhibits;9 (3) plain copies of SEI’s pleaded
`Registration No. 4141745 and Registration No. 4451061 for
`the mark QUIET EVENTS purportedly owned by QEI for
`“rental of wireless headsets”;10 and (5) various materials
`obtained from the Internet;11
`
`
`
`• The testimony declaration of Mr. Ryan Dowd, SEI’s owner,
`and accompanying Exhibits A-M;12 and
`
`• A second testimony declaration of Mr. Dowd regarding the
`trademark policing efforts of SEI and accompanying
`exhibits.13
`
`QEI has submitted the following evidence:
`
`• The testimony declaration of William Petz, QEI’s owner and CEO,
`and accompanying Exhibits A-O;14
`
`9 10 TTABVUE.
`10 11 TTABVUE. Plain copies of registration certificates are incompetent to show
`current status and title information, as required by Trademark Rule 2.122(d)(1), 37
`C.F.R. § 2.122(d)(1); see also United Global Media Group, Inc. v. Tseng, 112 USPQ2d
`1039, 1041 (TTAB 2014). Notwithstanding and as noted above, SEI’s pleaded
`Registration 4141745 is of record by operation of Trademark Rule 2.122(b). However,
`the submission of the plain copy of Registration No. 4451061 for the mark QUIET
`EVENTS purportedly owned by QEI for “rental of wireless headsets” under SEI’s
`notice of reliance alone does not make that registration of record.
`11 12 and 34 TTABVUE. The Board notes that SEI failed to indicate clearly the general
`relevance of any of the Internet evidence submitted under its notice of reliance, as
`required by Trademark Rule 2.122(g), 37 C.F.R. § 2.122(g). Merely stating that the
`material is relevant to the issues in the proceeding is insufficient. See Barclays Capital
`Inc. v. Tiger Lily Ventures Ltd., 124 USPQ2d 1160 1164 (TTAB 2017) (“To meet th[is]
`requirement, the offering party should associate the materials with a specific factor
`relevant to a specific and pleaded claim or defense, or a specific fact relevant to
`determining a particular claim or defense.”); see also FUJIFILM SonoSite, Inc. v.
`Sonoscape Co., 111 USPQ2d 1234, 1236-37 (TTAB 2014) (citations omitted). However,
`since QEI did not object to SEI’s notice of reliance on this ground and because the
`failure is a curable defect, such an objection is deemed waived. Cf. In re Mueller Sports
`Med., Inc., 126 USPQ2d 1584, 1587 (TTAB 2018) (Board may consider the objection to
`Internet evidence waived if examining attorney fails to object to the evidence in the
`first Office action following the response and to advise the applicant of proper way to
`make Internet evidence of record).
`12 13 TTABUVE.
`13 33 TTABVUE.
`14 14 TTABVUE.
`
`- 5 -
`
`

`

`Opposition Nos. 91234202 and 91238912
`Cancellation No. 92063149
`
`
`• Notices of Reliance on (1) various materials obtained from Internet
`that purportedly demonstrate use of the designation SILENT and
`SILENT EVENTS by third-parties in the promotion of services
`identical or similar to those identified in SEI’S SILENT EVENTS
`registration;15 (2) SEI’s responses to QEI’s requests for admission,16
`(3) plain copies of five registrations purportedly owned by QEI,17 (4)
`the file contents of QEI’s applications subject to the opposition
`proceedings in this consolidated case,18 (5) a plain copy of the
`registration certificate of SEI’s subject registration,19 and (6) a copy
`of a patent for a headphone that has wireless broadcast system
`capabilities purportedly owned by Ryan Dowd, SEI’s owner;20
`
`• The expert report of Amanda Brown, PhD in support of QEI’s
`defenses in the opposition proceedings;21
`
`• The expert report of Professor Gregory R. Guy in support of QEI’s
`defenses in the opposition proceedings;22
`
`• Thirteen testimony affidavits and accompanying exhibits from
`individuals/companies who provide services similar or identical to
`SEI’s services and who purportedly use the term “silent” in their
`
`15 15 and 36 TTABVUE. As with SEI’s submission of Internet materials, QEI failed to
`sufficiently specify the relevancy of these materials to the elements of the claims at
`issue. However, since SEI did not object to this evidence on such grounds, the objection
`is deemed waived. See n. 11, supra.
`16 16 TTABVUE 7-11.
`17 16 TTABVUE 12-26. As noted, plain copies of registration certificates are
`incompetent to show the status and title of said registrations, as required by
`Trademark Rule 2.122(d)(1). Accordingly, the plain copies of the five registration
`certificates submitted by QEI under its notice of reliance alone are not properly of
`record. That being said, QEI’s CEO, Mr. Petz, testified that QEI is the owner of these
`five registrations and that they are valid and subsisting. See Petz Decl. ¶¶ 6-10, 14
`TTABVUE 3-4. Accordingly, the five registrations are properly of record pursuant to
`Mr. Petz’s testimony.
`18 16 TTABVUE 27-113. It was unnecessary for QEI to submit the file contents of its
`involved applications since they are automatically of record under Trademark Rule
`2.122(d)(1).
`19 16 TTABVUE 114-116. Although not properly of record through the submission of a
`plain copy of the registration for the reasons explained above, SEI’s subject registration
`for the mark SILENT EVENTS is also automatically of record pursuant to Trademark
`Rule 2.122(d)(1).
`20 16 TTABVUE 117-127.
`21 17 TTABVUE.
`22 18 TTABVUE.
`
`- 6 -
`
`

`

`Opposition Nos. 91234202 and 91238912
`Cancellation No. 92063149
`
`
`advertising, marketing and promotional materials, as well as the
`phrase “silent event(s)” for describing events where music is played
`on wireless headphones given to individuals who attend their
`events;23 and
`
`• An additional testimony declaration from Mr. Petz, QEI’s owner
`and CEO, and accompanying exhibits regarding SEI’s policing
`efforts of its SILENT EVENTS mark.24
`
`
`As noted, both parties, by way of their respective notices of reliance,
`
`submitted printouts from various websites downloaded from the Internet.
`
`Although admissible for what they show on their face, see Trademark Rule
`
`2.122(e)(2), 37 C.F.R. § 2.122(e)(2), this evidence also contains hearsay that may
`
`not be relied upon for the truth of the matters asserted unless supported by
`
`testimony or other evidence. Fed. R. Evid. 801(c); WeaponX Performance Prods.
`
`Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1038 (TTAB 2018);
`
`Safer, Inc. v. OMS Invs., Inc., 94 USPQ2d 1031, 1039-40 (TTAB 2010);
`
`TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”)
`
`§ 704.08(b) (2019) (“The probative value of Internet documents is limited. They
`
`can be used to demonstrate what the documents show on their face. However,
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`documents obtained through the Internet may not be used to demonstrate the
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`truth of what has been printed.”).
`
`
`
`
`
`
`23 19-31 TTABVUE.
`24 37 TTABVUE.
`
`- 7 -
`
`

`

`Opposition Nos. 91234202 and 91238912
`Cancellation No. 92063149
`
`
`II.
`
`Cancellation No. 92063149
`
`We first address QEI’s claim of genericness asserted in Cancellation No.
`
`92063149 in this consolidated case.25
`
`A. Standing
`
`Standing is a threshold issue that must be proven by the plaintiff in every
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`inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d
`
`1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401
`
`(2015). The U.S. Court of Appeals for the Federal Circuit has enunciated a
`
`liberal threshold for determining standing, namely that a plaintiff must
`
`demonstrate that it possesses a “real interest” in a proceeding beyond that of a
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`mere intermeddler, and “a reasonable basis for his belief of damage.” Empresa
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`Cubana Del Tabaco 111 USPQ2d at 1062 (citing Ritchie v. Simpson, 170 F.3d
`
`1902, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999)). A “real interest” is a “direct
`
`and personal stake” in the outcome of the proceeding. Ritchie v. Simpson, 50
`
`USPQ2d at 1026.
`
`QEI has submitted testimony demonstrating that it is “in the business of
`
`providing entertainment services, namely, arranging, organizing and
`
`
`25 QEI, as the applicant in Opposition No. 91234202, asserted a counterclaim for
`cancellation of SEI’s pleaded Registration No. 4141745 on the same ground of
`genericness as set forth in its petition to cancel. Because the petition for cancellation
`was filed over one year before Opposition No. 91234202 was instituted, the Board, by
`order dated June 5, 2017, stated that it would consider QEI’s claim for cancellation of
`Registration No. 4141745 as it is set forth in QEI’s earlier-filed petition for cancellation
`and that the redundant counterclaim in the opposition proceeding would be given no
`consideration. See 8 TTABVUE.
`
`- 8 -
`
`

`

`Opposition Nos. 91234202 and 91238912
`Cancellation No. 92063149
`
`
`conducting events that require attendees to wear special headphones provided
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`by [QEI].”26 SEI similarly provided testimony showing that it “is in the business
`
`of providing entertainment services, namely, arranging, organizing and
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`conducting special events that feature live musical concerts supplied to an
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`audience by means of a personal wireless headphone.”27 In view of the foregoing,
`
`QEI has established its standing as SEI’s competitor. Books on Tape, Inc. v.
`
`Booktape Corp., 836 F.2d 519, 5 USPQ2d 1301, 1302 (Fed. Cir. 1987)
`
`(competitor has standing to challenge registration on the ground that the term
`
`sought to be registered is generic); Nobelle.com, LLC v. Qwest Commc’n Int’l,
`
`Inc., 66 USPQ2d 1300, 1304 (TTAB 2003) (“To establish its standing to assert
`
`a mere descriptiveness or genericness ground of opposition or cancellation, ‘a
`
`plaintiff need only show that it is engaged in the manufacture or sale of the
`
`same or related goods as those listed in the defendant’s involved application or
`
`registration and that the product in question is one which could be produced in
`
`the normal expansion of plaintiff’s business; that is, that plaintiff has a real
`
`interest in the proceeding because it is one who has a present or prospective
`
`right to use the term descriptively [or generically] in its business.’”) (quoting
`
`Binney & Smith Inc. v. Magic Marker Indus., Inc., 222 USPQ 1003, 1010 (TTAB
`
`1984)); Hartwell Co. v. Shane, 17 USPQ2d 1569, 1570 n.3 (TTAB 1990) (“a
`
`person who is in a position to use a term descriptively has standing to petition
`
`
`26 Petz Decl., ¶¶ 2-3, 14 TTABVUE 3.
`27 Dowd Decl., ¶ 4, 13 TTABVUE 3.
`
`- 9 -
`
`

`

`Opposition Nos. 91234202 and 91238912
`Cancellation No. 92063149
`
`
`to cancel a registration of the term on the ground that it has become the generic
`
`name for the goods or services, or a portion thereof, for which it is registered.”).
`
`Moreover, QEI’s standing to seek cancellation of SEI’s pleaded registration is
`
`buttressed by its position as defendant in the opposition proceedings of this
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`consolidated case wherein SEI has pleaded the subject registration in support
`
`of its asserted claims. See Ohio State Univ. v. Ohio Univ., 51 USPQ2d 1289,
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`1293 (TTAB 1999). Finally, we note that SEI does not contest QEI’s standing.
`
`B. Genericness – Applicable Law
`
`Section 14 of the Trademark Act provides:
`
`A petition to cancel a registration of a mark... may... be filed...
`
`(3) At any time if the registered mark becomes the generic name
`for the goods or services, or a portion thereof, for which it is
`registered. ... If the registered mark becomes the generic name for
`less than all of the goods or services for which it is registered, a
`petition to cancel the registration for only those goods or services
`may be filed. A registered mark shall not be deemed to be the
`generic name of goods or services solely because such mark is also
`used as a name of or to identify a unique product or service. The
`primary significance of the registered mark to the relevant public
`rather than purchaser motivation shall be the test for
`determining whether the registered mark has become the generic
`name of goods or services on or in connection with which it has
`been used.
`
`15 U.S.C. § 1064(3).
`
`A mark is a generic name if it refers to the class or category of goods or
`
`services on or in connection with which it is used. In re Dial-A-Mattress
`
`Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001) (citing H.
`
`Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d
`
`- 10 -
`
`

`

`Opposition Nos. 91234202 and 91238912
`Cancellation No. 92063149
`
`
`987, 228 USPQ 528 (Fed. Cir. 1986)) (“Marvin Ginn”). The test for determining
`
`whether a mark is generic is its primary significance to the relevant public.
`
`Trademark Act § 14(3). In other words, any term that the relevant public uses
`
`or understands to refer to the genus of goods or services, or a key aspect or
`
`subcategory of the genus, is generic. Royal Crown Co., Inc. v. Coca-Cola Co.,
`
`892 F.3d 1358, 127 USPQ2d 1041, 1046-47 (Fed. Cir. 2018). “[A] term is generic
`
`if the relevant public understands the term to refer to part of the claimed genus
`
`of goods or services, even if the public does not understand the term to refer to
`
`the broad genus as a whole.” In re American Fertility Society, 188 F.3d 1341, 51
`
`USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19
`
`USPQ2d 1551 (Fed. Cir. 1991); and Marvin Ginn, supra.
`
`Making this determination “involves a two-step inquiry: First, what is the
`
`genus of goods or services at issue? Second, is the term sought to be registered
`
`... understood by the relevant public primarily to refer to that genus of goods or
`
`services?” Marvin Ginn, 228 USPQ at 530. A party charging genericness must
`
`prove its claim by a preponderance of the evidence. Princeton Vanguard LLC v.
`
`Frito-Lay N. Am., Inc., 796 F.3d 960, 114 USPQ2d 1827, 1830 (Fed. Cir. 2015)
`
`(“In an opposition or cancellation proceeding, the opposer or petitioner bears
`
`the burden of proving genericness by a preponderance of the evidence.”) (citing
`
`Magic Wand Inc., 19 USPQ2d at 1554); Alcatraz Media, Inc., 7 USPQ2d at
`
`1761.
`
`
`
`- 11 -
`
`

`

`Opposition Nos. 91234202 and 91238912
`Cancellation No. 92063149
`
`
`1. The Genus of Services
`
`Our first task under Marvin Ginn is to determine, based on the evidence of
`
`record, the genus of SEI’s services. We find that the identification of services in
`
`SEI’s registration properly sets forth the genus of services. See Magic Wand
`
`Inc., 19 USPQ2d at 1552 (“[A] proper genericness inquiry focuses on the
`
`description of services set forth in the certificate of registration.”). Accordingly,
`
`we find that the genus of services at issue is adequately defined as,
`
`“Entertainment services, namely, arranging, organizing and conducting special
`
`events for social entertainment purposes that feature live musical concerts
`
`supplied to an audience by means of personal wireless headphones.”
`
`2. The Relevant Public
`
`The second part of the genericness test is whether the relevant public
`
`understands the designation primarily to refer to that class of services. The
`
`relevant public for a genericness determination is the purchasing or consuming
`
`public for the identified services. Magic Wand Inc., 19 USPQ2d at 1553.
`
`Because there are no restrictions or limitations to the channels of trade or
`
`classes of consumers for the services identified in SEI’s subject registration, the
`
`relevant consuming public comprises both the entities or persons who hire
`
`companies that provide special events for social entertainment purposes that
`
`feature live musical concerts supplied to an audience by means of personal
`
`wireless headphones, as well as the attendees of such events.
`
`
`
`- 12 -
`
`

`

`Opposition Nos. 91234202 and 91238912
`Cancellation No. 92063149
`
`
`3. Public Perception
`
`With this in mind, we now consider whether the primary significance of the
`
`designation SILENT EVENTS is understood by the relevant purchasing public
`
`to refer to the class or category of services identified in SEI’s registration.
`
`Evidence of the relevant public’s understanding of a term may be obtained from
`
`any competent source, including consumer surveys, dictionary definitions,
`
`newspapers and other publications. In re Reed Elsevier, 482 F.3d 1376, 82
`
`USPQ2d 1378, 1380 (Fed. Cir. 2007). “[E]vidence of competitors’ use of
`
`particular words as the name of their goods or services is, of course, persuasive
`
`evidence that those words would be perceived by purchasers as a generic
`
`designation for the goods and services.” Cont’l Airlines, Inc. v. United Air Lines,
`
`Inc., 53 USPQ2d 1385, 1395 (TTAB 1999).
`
`a. Dictionary Definitions
`
`The record includes the dictionary definition of the term “silent” which is
`
`defined as “free from sound or noise.”28 We take judicial notice of the definition
`
`of the word “event” which is defined as “a social occasion or activity.”29
`
`
`
`
`28 Petz Decl., Exh. O (www.www.merriam-webster.com); 14 TTABVUE 280.
`29 www.merriam-webster.com (Merriam Webster Dictionary) (accessed September 29,
`2019) The Board may take judicial notice of dictionary definitions, including
`definitions in technical dictionaries, translation dictionaries and online dictionaries
`which exist in printed format or that have regular fixed editions. In re White Jasmine
`LLC, 106 USPQ2d 1385, 1392 n.23 (TTAB 2013) (Board may take judicial notice of
`online dictionaries that exist in printed format or have regular fixed editions); In re
`Jonathan Drew, Inc., 97 USPQ2d 1640, 1642 n.4 (TTAB 2011) (Board may take judicial
`notice of dictionaries, including online dictionaries which exist in print format).
`- 13 -
`
`

`

`Opposition Nos. 91234202 and 91238912
`Cancellation No. 92063149
`
`
`b. Third-Party Uses
`
`As noted above, QEI submitted the unrebutted testimony affidavits of
`
`thirteen persons/entities, each of whom testified that they provide services
`
`which include organizing, conducting, and hosting social entertainment events,
`
`including silent events, where people dance to music listened to on wireless
`
`headphones.30 Each of the affiants also testified, inter alia, that (1) to the best
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`of their knowledge, the term “silent” is commonly used to describe such events
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`utilizing headphones, (2) they frequently use the term “silent” to describe their
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`services in their advertising, marketing and promotional communications, and
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`(3) they commonly use the phrase “silent event(s)” for describing the events
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`where music is played on wireless headphones given to individuals that attend
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`the event, which is therefore silent.31
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`Each of the affiants also submitted samples of their advertising and
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`promotional materials that employ the phrase “silent events” or the word
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`“silent” in combination with the terms “disco” or “party” in a purportedly
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`generic fashion when used in association with services identical or similar to
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`those identified in SEI’s registration. A non-exhaustive list of such use is
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`identified below:
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`• Exhibit A of the Testimony Declaration of Christopher S. Clinton,
`Owner/Operator of Not So Loud Party, LLC32
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`30 19-31 TTABVUE.
`31 Id.
`32 19 TTABVUE 6-7.
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`• Exhibit B of the Testimony Declaration of Mr. Clinton33
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` Exhibits A & B of the Testimony Declaration of George Gayl, CEO of
`Silent Storm Sound System, LLC34
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`33 19 TTABVUE 7.
`34 21 TTABVUE 6.
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`• Exhibit A of the Testimony Declaration of John Brown, owner of Austin
`Silent Disco35
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`• Exhibits A & B of the Testimony Declaration of Jason Gabel, President
`of Silent Party USA36
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`35 22 TTABVUE 6.
`36 23 TTABVUE 6-8.
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`• Exhibit A of the Testimony Declaration of Ronnie Williams Jr. of
`BackOut Experience
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`• Exhibits A, B and C of the Testimony Declaration of Castel Valere-
`Couturier of Unique Entertainment dba Sound Off37
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`37 30 TTABVUE 6-9.
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`QEI also submitted excerpts from various company websites that provide
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`services identical or similar to those provided by SEI and where the phrase
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`“silent event(s)” is employed in a generic fashion. A representative sample is
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`provided below:
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`•
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` (www.quietcoyoteevents.com)38
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`38 36 TTABVUE 12.
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` (www.shutupanddance.com)39
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`(www.silentdis.co)40
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`39 36 TTABVUE 14 and 16.
`40 36 TTABVUE 18-19.
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`(www.soundoffexperience.com)41
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`41 36 TTABVUE 20 and 22-23.
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`(www.fallentreesilentdis.co)42
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`42 36 TTABVUE 27-28.
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`(www.globalsources.com)43
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`43 36 TTABVUE 32.
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`(www.issuu.com)44
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`(www.quietriotconcepts)45
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`44 36 TTABVUE 38.
`45 36 TTABVUE 39.
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`c. Newspapers and Publications
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`Additionally, QEI submitted a number of online newspaper articles and
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`publications that evidence that the term “silent events” is widely understood
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`and widely used by the relevant trade and public to identify special events for
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`social entertainment purposes that feature live musical concerts supplied to an
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`audience by means of personal wireless headphones as identified in SEI’s
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`registration. A non-exhaustive list of excerpts from such online publications is
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`provided below:
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`• “Urban Fetes brings the fun back to night life, according to
`RollingOut.com. Pioneering the social movement of liberated, yet
`contained noise, the company has curated more than parties. Urban
`Fetes has also produced silent corporate socials, fitness classes, music
`and entertainment listening events and more. The silent event
`experience, where attendees get their own set of noise-canceling
`headphones (color coded at times to represent a certain genre of music or
`DJ) and can vibe out and not feel awkward or alone as they are
`surrounded by new and old friends who are sharing the same experience
`from a different viewpoint. Urban Fetes has curated silent events for
`people such as Vic Mensa, Bobby Valentino, Rotimi, Nick Grant and a
`list of other celebrities and entertainers.” (www.blavity.com);46
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`•
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` “There are quite a few companies which now offer silent party events
`with the biggest being Quiet Events. Silent discos might just become
`mainstream and there may be designated venue just for silent events
`now.” (www.zagline.com);47
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`• “Walker discovered the concept overseas and first executed it in the
`States more than two years ago. Since then, the company has done more
`than 400 Silent Events, which are not relegated to the club. ‘We produce
`panels [and] we actually just did a church service with the silent
`headphones,’ Walker said. “We’ve done bar mitzvahs. We’ve done
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`46 36 TTABVUE 44-45.
`47 36 TTABVUE 47.
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`weddings. … We are moving the culture with a new platform technology.”
`(www.columbusalive.com);48
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`• “A throng of partygoers grooved out to soundtracks of their choosing
`Thursday night at the annual HUBweek Live Silent Disco bash on City
`Hall Plaza. Participants could choose one of three different channels,
`their wireless headphones lighting up a different color depending on
`which tracks they preferred. The Silent Disco events were set to
`continue nightly through Saturday.” (www.bostonglobe.com);49
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`• “Here are a few search terms to find events in your area: Silent disco,
`silent yoga, silent festival, silent bowling, silent concert, silent
`Part/Events.”
`(www.clickaway.com/blog)50
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`d. Consumer Inquiries
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`QEI submitted copies of emails from purported consumers or persons
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`interested in obtaining information about QEI’s “silent events” services or
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`“silent events” generally.51 Copies of these emails are reproduced below:
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`48 36 TTABVUE 49.
`49 36 TTABVUE 50.
`50 36 TTABVUE 48.
`51 Petz Decl., Exh. K, 14 TTABVUE 157-162.
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`C. SEI’s Arguments