Attorney Docket: EI-31 (#90044)
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 76/550,722, filed October 14, 2003
`Published in the Official Gazette on page TM 133 on December 7, 2004
`Mark: CES AUDIO (& design) in International Class 9
`Applicant: CES Corporation
`
`Opposition No.
`
`)
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`) )
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`) )
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`Consumer Electronics Association,
`
`Opposer,
`
`vs.
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`CES Corporation,
`
`:,
`)
`APP1i°anl-
`__________________)-
`_
`
`—
`
`osmzaoos smsuu ooooooen 75550722
`
`01 FC:6402
`
`300,09 op
`
`Commissioner for Trademarks
`
`Trademark Trial and Appeal Board
`P.(). Box 1451
`
`Alexandria, Virginia 22313-1451
`
`NOTICE OF OPPOSITION
`
`Consumer Electronics Association, a corporation of the Commonwealth of
`
`Virginia, located and doing business at 2500 Wilson Boulevard, Arlington, Virginia
`
`22201-3834 (hereinafter referred to as "CEA" or "Opposer") believes that it will be
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`damaged by registration of the mark "CES AUDIO" (& design) shown in the above-
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`identified application and hereby opposes same.
`
`The grounds for opposition are as follows:
`
`1.
`
`Opposer herein, itself and through its Related Companies ("Related
`
`Companies" as used herein, means any corporation or other business entity, which is or
`
`WMWMWWWWWW
`
`06-09-2005
`U.S. Pamnt & TMOfc/TM Mail Rcpt Dt. #64
`
`

`
`was controlled by Opposer or its predecessors, or did control Opposer; "control," as used
`
`herein, means ownership of at least fifty percent (50%) interest of the voting stock or at
`
`least fifiy percent (50%) in the income of that corporation or other business entity), is
`
`now and has been for a number of years engaged in the arranging and conducting of
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`educational trade shows for large segments of the electronics industry, under the marks
`
`CES, CBS (and Design), CONSUMER ELECTRONICS SHOW, WINTER
`
`CONSUMER ELECTRONICS SHOW, INTERNATIONAL WINTER CONSUMER
`
`ELECTRONICS SHOW, SUMMER CONSUMER ELECTRONICS SHOW and
`
`INTERNATIONAL CONSUMER ELECTRONICS SHOW.
`
`2.
`
`Opposer has sponsored and managed educational trade shows for large
`
`segments of the electronics industry under the mark CES and other marks set forth in
`
`preceding paragraph 1, and has acquired and become the owner of CES as a mark for the
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`above-described services, and goods and services associated with the foregoing services.
`
`3.
`
`Opposer has become widely known nationally and internationally as a
`
`source of Opposer's services and goods having good quality and has acquired a favorable
`
`reputation throughout large segments of the electronics industry for its above-described
`
`services and goods sold under, and in association with, the mark CES. Conversely, the
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`term "CES AUDIO" (& design) is the subject of merely an intent-to-use application by
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`Applicant.
`
`4.
`
`Opposer is the owner of U.S. Service Mark Registration No. 1,296,762
`
`registered September 18, 1984, for the mark CES (& design) as used in association with
`
`sponsoring and managing an educational trade show for a segment of the electronics
`
`industry. The registration was based on application serial no. 73/441,336 filed in the U.S.
`
`

`
`
`
`Patent and Trademark Office on August 29, 1983, claiming first use in commerce on June
`
`25, 1967, which is a date prior to the date of filing of Applicant's application. Said
`
`service mark and registration therefor are valid and subsisting, and Opposer owns the
`
`CES mark, the registration, and the goodwill of the business associated with such mark.
`
`A copy of Opposer's Registration No. 1,296,762 and the recordation in the United States
`
`Patent and Trademark Office of the assignment of the mark to Opposer are attached
`
`hereto, and made part hereof as Opposer's Exhibit A.
`
`5.
`
`Opposer is also the owner of U.S. Service Mark Registration No.
`
`1,296,763 registered September 18, 1984, for the mark CES as used in association with
`
`sponsoring and managing educational trade shows for a segment of the electronics
`
`industry. The registration was based on application serial no. 73/441,411 filed in the U.S.
`
`Patent and Trademark Office on August 29, 1983, claiming first use in commerce on June
`
`25. 1967, which is a date prior to the date of filing of Applicant's application. Said
`
`service mark and registration therefor are valid and subsisting, and Opposer owns the
`
`CES mark, the registration, and the goodwill of the business associated with such mark.
`
`A copy of Opposer's Registration No. 1,296,763 and the recordation in the United States
`
`Patent and Trademark Office of the assignment of the mark to Opposer are attached
`
`hereto, and made a part hereof as Opposer's Exhibit B.
`
`6.
`
`Opposer is also the owner of U.S. Service Mark Registration No.
`
`2,920,458 registered January 25, 2005, for the mark CES as used in association with
`
`business services, namely, maintaining a database of certified telecommunications
`
`professionals, service providers, and installers and in association with educational
`
`services, namely, providing instruction in the fields of electronic home systems, heating
`
`

`
`systems, air conditioning systems, cable televisions, audio eguipment, computers, food
`
`heating and cooling appliances, food processing appliances, control systems for
`
`coordinating and controlling the operation of electronic systems in the home, lighting
`
`systems, security systems, communication systems, telephones, pagers, ,
`
`global network communication systems, environmental systems, systems for controlling
`
`heating, ventilation, and air conditioning systems, water management, electrical wiring of
`
`houses for proper electrical distribution, controlling security, and computer and television
`
`systems (emphasis added). The registration was based on application serial no.
`
`76/541,066 filed in the U.S. Patent and Trademark Office on August 29, 2003, claiming
`
`first use in commerce on March 1, 2002, which is a date prior to the date of filing of
`
`Applicant's application. Said service mark and registration therefor are valid and
`
`subsisting, and Opposer owns the CES mark, the registration, and the goodwill of the
`
`business associated with such mark. A copy of Opposer's Registration No. 2,920,458 is
`
`attached hereto, and made a part hereof as Opposer's Exhibit C.
`
`7.
`
`Notwithstanding Opposer's long prior rights in and to said mark, Applicant
`
`on October 14, 2003, filed an application for registration of the trademark "CES AUDIO"
`
`(& design) for goods in the electronics industry, that is, "Audio apparatus and equipment
`
`and parts for the goods, namely, loudspeakers, audio speakers, audio mixers, headphones,
`
`megaphones, microphones, amplifiers, electronic volume controls, stereo tuners, DVD
`
`and CD players and recorders and electronic audio speaker zone selectors" in
`
`International Class 9. Said application was given Serial No. 76/550,722 and the mark
`
`was published for opposition in the Official Gazette of December 7, 2004, at page TM
`
`133, International Class 9.
`
`

`
`8.
`
`The "CES AUDIO" (& design) mark proposed for registration is virtually
`
`identical in sound, appearance and meaning to Opposer's mark "CES".
`
`9.
`
`Since prior to October 14, 2003, Opposer, itself and through its Related
`
`Companies, provides a great many services, including forums and education programs,
`
`under the mark and name of "CES" in which makers, marketers, implementers,
`
`programmers, and engineers of computer and other electronic systems can demonstrate to
`
`and educate potential purchasers of their computer and electronic systems. Some of those
`
`participating in the services of Opposer and purchasers of computer and other electronic
`
`systems attending such forums and participating in such education programs are believed
`
`to be possible, actual or potential customers of Applicant's goods of Audio apparatus and
`
`equipment and parts for the goods, namely, loudspeakers, audio speakers, audio mixers,
`
`headphones, megaphones, microphones, amplifiers, electronic volume controls, stereo
`
`tuners, DVD and CD players and recorders and electronic audio speaker zone selectors.
`
`Customers of Opposer's services are likely to believe, to be confused or deceived into
`
`thinking that App1icant’s goods originate with, or in some way are associated with,
`
`connected with, sponsored, endorsed, or authorized by Opposer. By reason of the
`
`common identity and virtually identical appearance and sound of Applicant's alleged
`
`mark "CES AUDIO" (& design) and the similar professional contacts of the class of
`
`customers and channels of trade of Applicant, Applicant's alleged mark, when applied to
`
`its goods is likely to cause confusion or mistake, or to deceive, all to the injury or
`
`threatened injury to Opposer.
`
`10.
`
`Applicant's potential customers are likely to have attended or at least be
`
`familiar with CBS, the Consumer Electronics Association trade show, which is
`
`

`
`
`
`sponsored, produced and managed by Opposer. These potential customers of Applicant
`
`are reasonably likely to be confused into believing that Applicant’s goods are in some
`
`way sponsored by or provided by Opposer.
`
`11.
`
`Opposer, itself and through its Related Companies, has developed an
`
`exceedingly valuable amount of goodwill with respect to its mark "CES". By virtue of its
`
`efforts, and the expenditure of considerable sums on promotional activities and by virtue
`
`of the excellence of its services, Opposer has gained for its "CBS" mark a most valuable
`
`reputation.
`
`12.
`
`If Applicant is permitted to register "CES AUDIO" (& design) as
`
`specified in the application herein opposed, confusion in trade resulting in damage and
`
`injury to Opposer would be caused and would result by reason of the perception of a
`
`relationship between goods bearing the mark and name " CES AUDIO" (& design) of
`
`Applicant and Opposer's services bearing the "CES" mark and name. In this respect,
`
`consumers may have the impression that goods of Applicant having the " CES AUDIO"
`
`(& design) mark are being marketed, endorsed, approved or sponsored by Opposer.
`
`Persons familiar with the mark and name "CES" of Opposer would be likely to buy
`
`Applicant’s goods as goods marked, endorsed, approved or sponsored by Opposer. Any
`
`such confusion in the trade inevitably would result in dilution of the goodwill created by
`
`Opposer. Furthermore, any defect, objection or fault found with Applicant’s goods
`
`marketed under the " CES AUDIO" (& design) mark would unnecessarily reflect upon
`
`and seriously injure the reputation which Opposer has established with respect to its
`
`educational programs for a segment of the electronics industry associated with its "CES"
`
`mark and name.
`
`

`
`
`
`13.
`
`Based upon the foregoing,
`
`the registration of the mark depicted in
`
`application Serial No. 76/550,722 filed October 14, 2003, on the Principal Register of the
`
`United States Patent and Trademark Office would cause injury and damage to Opposer.
`
`WHEREFORE, Opposer requests that registration of Applicant's mark "CBS
`
`AUDIO" (& design) application Serial No. 76/550,722 be denied, and this opposition be
`
`sustained.
`
`Respectfillly submitted,
`
`D. Peter Hochberg, Esq.
`Reg. No. 24,603
`
`Dated: gfifi 31200:’
`
`/
`
`DPH/sm
`
`D. PETER HOCHBERG CO., L.P.A.
`The Baker Building, 6th Floor
`1940 East 6th Street
`
`Cleveland, Ohio 44114
`(216) 771-3800
`
`Attachment: Exhibits A, B, C; Credit Card Payment Form
`
`@Payment:
`
`(X)
`(X)
`
`Attached is a credit card payment form authorizing a charge of $300.00
`Charge Account No. 08-2441, and this is a request therefore to charge for any
`additional extension and/or fee required. This page is submitted in duplicate.
`
`CERTIFICATE OF MAILING
`
`I hereby certify that this document is being deposited with the United States Postal Service as First Class mail
`in an envelope addressed: Commissioner for Trademarks, Trademark Trial and Appeal Board, P.O. Box 1451,
`Alexandria, Virginia 22313-1451.
`
`gmDate
`
`Sean Mellino
`
`

`
`
`
`13.
`
`Based upon the foregoing,
`
`the registration of the mark depicted in
`
`application Serial No. 76/550,722 filed October 14, 2003, on the Principal Register of the
`
`United States Patent and Trademark Office would cause injury and damage to Opposer.
`
`WHEREFORE, Opposer requests that registration of Applicant's mark "CES
`
`AUDIO" (& design) application Serial No. 76/550,722 be denied, and this opposition be
`
`sustained.
`
`Respectfully submitted,
`
`D. Peter Hochberg, Esq.
`Reg. No. 24,603
`
`Dated: gfi Sgzoob
`
`/
`
`DPH/sm
`
`D. PETER I-IOCHBERG CO., L.P.A.
`The Baker Building, 6th Floor
`1940 East 6th Street
`
`Cleveland, Ohio 44114
`
`(216) 771-3800
`
`Attachment: Exhibits A, B, C; Credit Card Payment Form
`
`@ Payr_nent:
`
`(X)
`(X)
`
`Attached is a credit card payment form authorizing a charge of $300.00
`Charge Account No. 08-2441, and this is a request therefore to charge for any
`additional extension and/or fee required. This page is submitted in duplicate.
`
`CERTIFICATE OF MAILING
`
`I hereby certify that this document is being deposited with the United States Postal Service as First Class mail
`in an envelope addressed: Commissioner for Trademarks, Trademark Trial and Appeal Board, P.O. Box 1451,
`Alexandria, Virginia 22313-1451.
`
`Qgmgfi
`
`Date
`
`Sean Mellino
`
`

`
`_
`
`EXHIBIT
`‘ A I
`
`CLEVELAND. OHIO 44102-I755
`
`Int. CL: 35
`
`Prior US. Cl.: 101
`
` -United States Patent and 'I_‘rademark- Office
`
`~
`
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`
`_
`
`«
`
`SERVICE
`MARK
`Principal Register
`
`_
`
`Reg. No. 1,296,762
`Registered Sep. -18, 1984
`
`
`
`Eléctronic Industries Association (Illinois corporation) .
`2001 Eye St.,
`_ V11].
`-
`‘
`Washington, D.C. 20006
`
`‘
`
`For:-_ SPONSORING AND MANAGING AN"
`EDUCATIONAL TRADE SHOW FOR A SEG-
`MENT OF THE ELECTRONICS INDUST_RY,‘in -
`CLASS 35 (U.S. C1. 101). '
`'
`First use Jun. 25,. 1967; in commerce Jun. 25, 1967.
`The mark consists of a stylized representation“
`
`the 1etters"‘CES‘-’.
`
`Ser. No. 441,336, filed Aug. 29, 1983.
`
`Russ HERMAN, Examining Attorney
`
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`TEE EI;g'C_L_fiSEDl DOCUMENT EAS EEEN RECORDED BY ‘THE. ‘ASSIGNMENT DIVISION OF
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`A COMPLETE MICRQFILM COPY I8
`_vAILAsLE AT THE~AEEIGNMENT SEARCH ROOM ON THE.REEL’AND_FRAME NUMBER»
`-EEEEEENCED BELOW _
`~ ELEAsE”EEvIEw ALL INEOEMATION CONTAINED ON-THIS NOTICE, »THE
`-f~INEOEMATION CONTAINED ON THIS EECORDATION NOTICE EEELECTS THE DATA
`_IF YOU SHOULD
`.PRESENT IN THE PATENT AND TRADEMARK ASSIGNNENT SYSTEM,
`"FIND ANY EEEOES OR HATE QUESTIONS CONCERNING THIS NOTICE, TOD MAI
`IEONTAET TEE EMPLOYEE WHOSE NAME AEEEARE ON THIS NOTICE AT 7o;—3Da-9723:
`PLEASE SEND EEOUEST EOE CORRECTION TO: U.s: PATENT AND TRADEMARK QETTCE,
`.AS_S'.','GNMEI~TT DIVISION, BOX ASSIGIHVIENTS, CG-&, 1213 JEFFERSON DAVIS HWY,
`‘SUITE'320, WAsHINGTONILDsC~ 2923;,
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`EEQDRDATION DATE; 04/20/2000
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`REEL/ERAME: 002069/0161
`_NUMBER OF PAGES:
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`-ASSIGNS THE'“ENT:R,E INTISREST
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`ARLINGTON, I VIRGINIA ".22 2 O1
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`cITIzENsEID= VIRGINIA"
`ENTITI: NONEEOEIT CORPORATION
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`APPLICAIIQN NUMBER: 7§4Q8775
`REG;STRATION NUMBER:
`
`FILING DATE:
`ISSUE DATE:
`
`12/19/1997
`
`-
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`MARK: ATE: cEETIEIED'DTv_DIGITAL TELEVISION
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`A?PLICATIoN—NUMEER:'738o3393
`REGISIRATION NUMBER: 1629548
`MARK: CEBUE
`DRAWING TYPE: WORDS, LETTERS, OR NUMBERS IN TYPED FORM
`APPLICATION"NUMBER:'7344l336'
`FILING DATE: 08/29/1983
`KEQISTRATIQN NUMBER; 1296752
`ISSUE DATE: 09/18/1984
`
`FILING DATE: 05/30/1989
`-ISSUE BRIE; 12/25/I 9
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`FILING DATE: 08/29/1983
`,ISSUE DATE:-O9/18/I984
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`"‘MARK:‘CES
`DrL:».w‘I1\IG_rrY1v.E= wows, LETTERS} OR NEJMBERS IN TYPED‘ FORM
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`‘. APPLICATION NUMBER: 74393045
`FILING DATE: 05/II/1993
`‘RE3ISiRATIQN»NUMBER;1I52I3Is
`ISSUE DATE : ,o2,/15‘/1994'.
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`“ AP?LICiTION NUMBER; 733aé493
`‘REGISTRATION NUMBER:.l25635O
`” MARK: CQMPUTFA;M§TCH_
`DRAWING TXPE: WORDS;'LETTERS, QR NUMBERS'IN TTPED FORM
`."APPLICATION-NUMBER: 74655127
`FILING DATE: 06/09/1995
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`ISSUE DATE: 05/03/1999
`:gDGIsTRATIoN NUMBER: 22ss925-
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`REGISTRATIQN NUMBER: 19a3ssp'
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`
`FILING'DATE: 09/20/1952
`-ISSUE DATE: 11/01/1983
`
`FILING DATEQ os/09/1995.
`-ISSUE DATE: 03/13/1996
`
`:VAPDLIcATIoN NUMEEH: 73555203‘
`FILING DATE: 08/26/1985
`vUREGISTRATION:NUMBER; 1386780
`ISSUE DATE '03/18/1986
`.
`.« MARK; SERVICE ERUFIT PROFILES -
`I'DRAWING TYEE:.WOKDS, LETTERS, QR NUMBERS IN'TYPED FORM
`-LAPILICATION NUMBER: 73333995
`-REGISTRATION NUMBER: 1403378
`
`" DILING DATE; 10/26/1981
`ISSUE DATE: 07/29/1986
`
`INTL‘R..N.i.TIoNAL SUMMER 'c:>NsI~mER
`‘DRAWING TYPE: WORDS} LETTERS, OR NUIYIBERS IN TYPED FORM
`
`

`
`Int. Cl,‘ 33
`
`
`
`CLEVELAND. OHIO 4-111121759
`
`
`‘
`'
`‘
`
`Prior U.S. C1,: 101
`
`-
`_
`I .
`Reg. ‘No. 1,296,763
`_
`‘
`-
`
`United States Patent and Trademark Offlgen H Registered Sep. 18, 1934
`
`SER‘VI.._CE MARK
`Principal Rggister
`
`CES
`
`Elezztronic Iiidustries Association (‘Illinois corporation)
`200.‘ Eye St,, NW.
`*
`I
`Washington, D.C. 2OOQ6-
`
`.
`
`-
`
`.
`
`For: SPONSORING AND MANAGING AN
`EDUCATIONAL TRADE SHOW FOR‘ A SEG-
`MENT OF THE ELECTRONICS INDUSTRY,
`in
`. CLASS 35 (U.S‘._ C1. 101). W
`.,
`. First use; Jun. 25, 1967; in qommcrcc Jun. 25! 1967.
`
`sex.‘ N9, 44i_,411,_fi1ed Aug. 29, 1983.
`
`RUSS HERMAN, Examining Attcimcy
`
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`.,_,..,..,..,,.,....
`
`Int. C1s.: 35 and 41
`
`
`
`Prior U.S. CIs.: 100, 101, 102 and 107
`
`Reg. No. 2,920,458
`United States Patent and Trademark Office Registered Jan. 25,’ 2005
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`SERVICE MARK
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`PRINCIPAL REGISTER
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`FIRST USE 3-1-2002; IN COMMERCE 3-I-2002.
`
`OWNER OF U.S. REG. NO. 2,724,672.
`
`SER. NO. 76-541,066, FILED 8-29-2003.
`
`JOHN E. MICHOS, EXAMINING ATTORNEY
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