`
`
`
`
`
`This Opinion is Not a
`Precedent of the TTAB
`
`Mailed: February 28, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`_____
`
`Sony Group Corporation
`
`v.
`
`Neil A. Campbell
`_____
`
`Opposition No. 91245851
`
`On Request for Reconsideration
`_____
`
`Mark Sommers, Naresh Kilaru, Katie W. McKnight and Rosie Norwood-Kelly of
`Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. for Sony Group
`Corporation.
`
`
`Neil A. Campbell, pro se.
`
`_____
`
`
`Before Zervas, Lykos, and Larkin,
`Administrative Trademark Judges.
`
`
`Opinion by Larkin, Administrative Trademark Judge:
`
`On October 28, 2022, the panel issued a final decision (the “Final Decision”)
`
`sustaining the opposition of Sony Group Corporation (“Opposer”) to the application of
`
`Neil A. Campbell (“Applicant”), appearing pro se, for registration on the Principal
`
`Register of the standard-character mark SoniStream for goods identified as
`
`“Downloadable computer software for Internet and broadcast radio scheduling and
`
`

`

`Opposition No. 91245851
`
`audio playout” in International Class 9, on the ground that Applicant’s mark was
`
`likely to dilute Opposer’s famous SONY mark by blurring under Section 43(c) of the
`
`Trademark Act, 15 U.S.C. § 1125(c). 96 TTABVUE 1-56.
`
`We found that Opposer proved its entitlement to oppose registration of Applicant’s
`
`mark, id. at 22, and that on its dilution claim, Opposer proved, by a preponderance
`
`of the evidence, that (1) its SONY mark was famous and distinctive, id. at 28; (2)
`
`Applicant was constructively using his SoniStream mark in commerce, id. at 29; (3)
`
`Opposer’s SONY mark became famous long prior to Applicant’s first constructive use
`
`of his mark, id. at 30; and (4) Applicant’s SoniStream mark was likely to dilute
`
`Opposer’s famous SONY mark by blurring and to impair the distinctiveness of the
`
`mark. Id. at 55-56.
`
`Applicant timely filed a “Motion for Reconsideration of Final Decision,” 99
`
`TTABVUE, and Opposer filed a brief in opposition. 100 TTABVUE. We deny
`
`Applicant’s request for reconsideration.
`
`Applicant begins his request for reconsideration by arguing that “the Board’s
`
`ruling makes no reference to the fact I point out in my brief that the Sonicare and
`
`Sonifresh products are used by 30 million consumers in the US alone.” 99 TTABVUE
`
`2 (citing Applicant’s Third Notice of Reliance (62 TTABVUE)).1 Applicant then argues
`
`that
`
`(a) These products are spelled with the same “Soni-” prefix
`the Board says could be pronounced the same as “Sony”—
`
`
`1 The Final Decision noted that Sonicare is a brand of electric toothbrush, and that Sonifresh
`is a brand of replacement brush heads for the Sonicare toothbrush. 96 TTABVUE 43-44.
`
`
`
`- 2 -
`
`

`

`Opposition No. 91245851
`
`a finding which the Board uses as the basis of its ruling in
`favor of Sony’s dilution by blurring clam.
`
`(b) These products are used by over 30 million consumers
`in the US, and
`
`(c) There is no evidence they have caused any dilution of
`the Sony mark.
`
`Id. (emphasis supplied by Applicant).
`
`In view of these alleged facts, Applicant asks “the Board how it is possible that
`
`[sic] for a product Sonistream marketed to a niche market of radio broadcasters to
`
`dilute Sony’s mark when Sonicare and Sonifresh have not?” Id. He requests “the
`
`Board to reconsider its final ruling on dilution taking into account this argument here
`
`and evidence referenced in my trial brief.” Id.
`
`Opposer responds that Applicant’s request for reconsideration “with regard to only
`
`one of the six dilution factors based on a single piece of internet evidence does not
`
`demonstrate, let alone prove, how the Board’s ruling is in error. Instead, that motion
`
`merely reargues points raised in Applicant’s trial brief and, as such, must be denied.”
`
`100 TTABVUE 2.
`
`“‘Generally, the premise underlying a request for reconsideration . . . is that, based
`
`on the evidence of record and the prevailing authorities, the Board erred in reaching
`
`the decision it issued,’” and a request for reconsideration “‘normally should be limited
`
`to a demonstration that based on the evidence properly of record and the applicable
`
`law, the Board’s ruling is in error and requires appropriate change.’” In re Berkeley
`
`Lights, Inc., 2022 USPQ2d 1000, at *2 (TTAB 2022) (quoting TRADEMARK TRIAL AND
`
`
`
`- 3 -
`
`

`

`Opposition No. 91245851
`
`APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) Section 543 (June 2022)).
`
`Applicant’s request for reconsideration is not so limited and makes no such showing.
`
`Contrary to Applicant’s claim on his request, in our Final Decision we
`
`acknowledged and addressed Applicant’s argument regarding the impact of the use
`
`of the Sonicare and Sonifresh marks in our analysis of the degree of similarity of the
`
`SONY and SoniStream marks, the first of six factors to be considered under Section
`
`43(c)(2)(B)(i-vi) of the Trademark Act, 15 U.S.C. § 1125(c)(2)(B)(i-vi), in determining
`
`whether Applicant’s SoniStream mark is likely to dilute Opposer’s famous SONY
`
`mark by blurring. 96 TTABVUE 36. Specifically, we noted that Applicant argued that
`
`“SoniStream” and “Sony” in fact share only the combining
`form “SON-” which is used at the start of the names at least
`28 other products and/or brands—usually for products
`related to sound. . . . These brands include consumer
`brands such as Sonus, Sonist and Sonicare which is
`used by over 30 million consumers in the US alone .
`. . . The prefix “SON-” therefore couldn’t be argued to be
`associated with any particular brand. In addition,
`SoniStream is [a] 10 letter suggestive mark and SONY is a
`4 letter distinctive fanciful mark that can be instantly
`recognized and recalled by the general public.
`
`Id. (quoting 93 TTABVUE 20) (emphasis added).
`
`As noted above, Applicant argued in his brief, and argues again on his request for
`
`reconsideration, 99 TTABVUE 2, that 30 million consumers use the Sonicare electric
`
`toothbrush. In both places he relies on a graph, apparently developed by a company
`
`called Statista Research Corporation, which is attached to his Third Notice of
`
`Reliance and which states that it shows “the brands of power toothbrushes used most
`
`often in the United States in 2020.” 62 TTABVUE 68. We agree with Opposer, 100
`
`TTABVUE 8, that when the graph is offered to prove the number of users of the
`
`
`
`- 4 -
`
`

`

`Opposition No. 91245851
`
`Sonicare electric toothbrush in the United States in 2020, it is hearsay and does not
`
`establish that there were more than 30 million such users. See, e.g., Spiritline Cruises
`
`LLC v. Tour Mgmt. Servs., Inc., 2020 USPQ2d 48324, at *2 (TTAB 2020) (“we consider
`
`Internet printouts and other materials properly introduced under a notice of reliance
`
`without supporting testimony only for what they show on their face rather than for
`
`the truth of the matters asserted therein”). As discussed below, however, even if the
`
`Sonicare toothbrush is used by millions of consumers in the United States, we
`
`explained in our Final Decision that the pronunciation of the Sonicare mark is not
`
`probative of all possible pronunciations of Applicant’s SoniStream mark for different
`
`goods. 96 TTABVUE 43-46.
`
`With respect to the similarity of the marks in sound, which we noted had received
`
`“most of the parties’ attention” under the first factor in Section 43(c)(2)(B)(i-vi), 96
`
`TTABVUE 39, and which required us to “consider ‘all the reasonable possibilities’ for
`
`the pronunciation of SoniStream,” id. at 42 (citing Inter IKEA Sys. B.V. v. Akea, LLC,
`
`110 USPQ2d 1734, 1740 n.19 (TTAB 2014)), we discussed several videos that
`
`Applicant had introduced in which persons pronounced the Sonicare mark. Id. at 40-
`
`45. We noted that Applicant argued that he had provided
`
`the
`in which you can hear
`15 YouTube videos
`pronunciation by Americans of other marks begining [sic]
`with the SONI- prefix . . . . In all of these the “o” and “i” in
`the SONI- prefix are both pronounced short as they are in
`“sonic”—not l[ong] “o” and a long “e” as in SONY. The most
`significant of these similar marks which all share the
`SONI- prefix SoniStream uses are: Sonicare and
`Sonifresh—products which are used by 30 million
`consumers in the US. . . . Since I have produced evidence
`showing consumers consistently do not pronounce the
`
`
`
`- 5 -
`
`

`

`Opposition No. 91245851
`
`SONI- prefix like SONY, and Sony has presented no survey
`or even example evidence that consumers in the US do
`pronounce the SONI- prefix like SONY (e.g., showing
`americans [sic] pronouncing Sonicare “Sony Care”), the
`available evidence does not support Sony’s phonetically-
`based pronunciation predictions for SoniStream so they
`should be rejected as well . . . .
`
`Id. at 40 (citing 93 TTABVUE 9).
`
`We reviewed the videos and found that they “are not probative of all the
`
`reasonable possibilities for the pronunciation of the other marks, much less of all the
`
`reasonable possibilities for the pronunciation of SoniStream,” id. at 45, and that with
`
`respect to the videos in which persons pronounced “Sonicare,” “the word ‘sonic’ is
`
`actually present in the telescoped mark Sonicare, which combines ‘sonic’ and ‘care,’
`
`and which is promoted as involving ‘sonic technology,’” and a “telescoped mark like
`
`Sonicare is presumed to be read by consumers as the combination of the telescoped
`
`terms, and it is thus unlikely that a consumer would pronounce the Sonicare mark
`
`other than as ‘Sonic Care.’” Id. (citing In re Greenliant Sys., Ltd., 97 USPQ2d 1078,
`
`1083 (TTAB 2010)). We concluded that “[w]e cannot find, on the basis of the
`
`pronunciation of marks other than SoniStream by a handful of people, that consumers
`
`would invariably pronounce Applicant’s SoniStream mark as ‘Saw-nĕ-stream’ and not as
`
`‘SonyStream,’” and that “the latter pronunciation is not one of the reasonable possibilitie s
`
`for the pronunciation of Applicant’s mark.” Id. at 46.
`
`We concluded our analysis of the first factor in Section 43(c)(2)(B)(i-vi) by finding
`
`that
`
`
`
`that while
`[t]he record as a whole establishes
`“SonyStream”
`is
`certainly not
`the only possible
`pronunciation of “SoniStream,” and may not even be the
`
`- 6 -
`
`

`

`Opposition No. 91245851
`
`most likely one, it is at least among “all the reasonable
`possibilities” for its pronunciation, and we must consider it
`in our analysis of the similarity of the marks in sound. . . .
`The pronunciation of Applicant’s “SoniStream” mark as
`“SonyStream” would instantly “‘trigger consumers to
`conjure up” Opposer’s famous SONY mark.
`
`Id. at 50 (citation and quotation omitted).
`
`We combined our finding regarding the degree of similarity between the marks
`
`with our findings regarding the high degree of distinctiveness of Opposer’s SONY
`
`mark, id. at 52, Opposer’s substantially exclusive use of the mark, id. at 52-53, and
`
`the high degree of recognition of the mark, id. at 53, to find that Opposer’s famous
`
`SONY mark was likely to be diluted by Applicant’s SoniStream mark, id. at 55,2 and
`
`we further found that the distinctiveness of the SONY mark was likely to be impaired
`
`by the SoniStream mark. Id. at 55-56.
`
`Applicant asks rhetorically on his request for reconsideration “how it is possible
`
`that [sic] for a product Sonistream marketed to a niche market of radio broadcasters
`
`to dilute Sony’s mark when Sonicare and Sonifresh have not?” 99 TTABVUE 2. This
`
`is the wrong question on Opposer’s dilution claim. In our Final Decision, we answered
`
`the right question—whether Applicant’s SoniStream mark is likely to dilute by
`
`
`2 As noted above, part of Applicant’s argument that the Board’s Final Decision was wrong is
`that there is no evidence that the Sonicare and Sonifresh products “have caused any dilution
`of the Sony mark.” 99 TTABVUE 2. The relevant issue, of course, is not whether the Sonicare
`and Sonifresh marks “have caused any dilution of the Sony mark,” but rather whether the
`SoniStream mark is likely to do so. See Chanel, Inc. v. Makarczyk, 110 USPQ2d 2013, 2023
`n.12 (TTAB 2014) (noting that the Trademark Dilution Revision Act of 2006 amended Section
`43(c) of the Trademark Act to make clear that proof of actual dilution was not required to
`establish dilution by blurring and that a showing of likelihood of dilution was sufficient). We
`found in our Final Decision that Opposer had shown by a preponderance of the evidence that
`the SoniStream mark was likely to dilute the famous SONY mark. 96 TTABVUE 55.
`
`
`
`- 7 -
`
`

`

`Opposition No. 91245851
`
`blurring the distinctiveness of Opposer’s famous SONY mark—in the affirmative,
`
`and Applicant has made no showing that “based on the evidence properly of record
`
`and the applicable law, the Board’s ruling is in error and requires appropriate
`
`change.” Berkeley Lights, 2022 USPQ2d 1000, at *2 (quotation omitted).
`
`Applicant’s request for reconsideration is denied, and the Board’s October 28, 2022
`
`Final Decision stands.
`
`
`
`- 8 -
`
`