`
`
`
`
`
`This Opinion is Not a
`Precedent of the TTAB
`
`Mailed: October 28, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`_____
`
`Sony Group Corporation
`
`v.
`
`Neil A. Campbell
`_____
`
`Opposition No. 91245851
`_____
`
`Mark Sommers, Naresh Kilaru, 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:
`
`Neil A. Campbell (“Applicant”), appearing pro se, seeks registration on the
`
`Principal Register of the standard-character mark SoniStream1 for goods identified
`
`
`1 As discussed below, this is how Applicant’s standard-character mark is shown in the
`drawing in his application and discussed in his brief, and we will display the mark in this
`manner in our opinion. We note, however, that the appearance of the mark in this manner in
`the drawing “does not change the nature of the mark from standard character to special
`form.” New Era Cap Co. v. Pro Era, LLC, 2020 USPQ2d 10596, at *2 n.1 (TTAB 2020) (citing
`In re Calphalon Corp., 122 USPQ2d 1153, 1554 n.1 (TTAB 2017)). As discussed below, a
`standard-character mark is not limited to any particular font style, size, or color.
`
`

`

`Opposition No. 91245851
`
`as “Downloadable computer software for Internet and broadcast radio scheduling and
`
`audio playout” in International Class 9.2
`
`Sony Group Corporation (“Opposer”)3 opposes registration of Applicant’s mark on
`
`two grounds: (1) likelihood of confusion with Opposer’s previously used and registered
`
`SONY and SONY-formative marks under Section 2(d) of the Trademark Act, 15
`
`U.S.C. § 1052(d), and (2) likelihood of dilution by blurring of Opposer’s SONY and
`
`SONY-formative marks under Section 43(c) of the Trademark Act, 15 U.S.C.
`
`§ 1125(c).4 The case is fully briefed.5 We sustain the opposition on the basis of
`
`Opposer’s dilution claim and do not reach its likelihood of confusio n claim.
`
`
`2 Application Serial No. 87882260 was filed on April 18, 2018 under Section 1(b) of the
`Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention
`to use the mark in commerce.
`
`3 Opposer’s corporate name was Sony Corporation when this proceeding was commenced, 1
`TTABVUE 18, but Opposer changed its name to Sony Group Corporation during trial, 72
`TTABVUE 2, and the Board granted Opposer’s motion to substitute its updated name, and
`updated the case caption to identify Sony Group Corporation as the opposer. 73 TTABVUE
`2.
`
`4 In its Notice of Opposition, Opposer pleaded ownership of numerous SONY and SONY -
`formative marks. Not. of Opp. ¶¶ 10-11; Ex. A (1 TTABVUE 21-29, 33-153). We focus below
`on Opposer’s SONY word mark, registered in standard characters and in a stylized font, for
`a variety of goods and services.
`
`Applicant’s Answer to Notice of Opposition, 4 TTABVUE 1-10, denied the salient allegations
`of Opposer’s Notice of Opposition, id. at 1-4, and interposed various self-styled “Affirmative
`Defenses, Avoidances, and Arguments.” Id. at 5-7. Opposer moved to strike all 12 of the
`paragraphs in this portion of Applicant’s Answer. 5 TTABVUE 2-6. The Board struck
`paragraphs 1, 7, and 9-12, but allowed paragraphs 2-6 and 8 to stand, not as affirmative
`defenses per se, but rather as amplifications of Applicant’s denials of Opposer’s allegations.
`8 TTABVUE 4-5.
`
`5 Citations in this opinion to the briefs and other materials in the case docket refer to
`TTABVUE, the Board’s public online docketing system. See New Era, 2020 USPQ2d 10596,
`at *2 n.1. The number preceding TTABVUE corresponds to the docket entry number, and
`any numbers following TTABVUE refer to the page(s) of the docket entry where the cited
`materials appear. Opposer’s main brief appears at 91 TTABVUE and its reply brief appears
`at 94 TTABVUE. Applicant’s brief appears at 93 TTABVUE.
`
`
`
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`

`

`Opposition No. 91245851
`
`I. Opposer’s Motion to Strike Applicant’s Brief
`
`In its reply brief, Opposer objects to Applicant’s brief, and moves to strike it, on
`
`the grounds that it (1) was untimely filed, and (2) does not comply with the
`
`requirements of Trademark Rule 2.126, 37 C.F.R. § 2.126, because it is single-spaced,
`
`and does not include an index of cases or page numbers. 94 TTABVUE 24-26.
`
`With respect to untimeliness, Applicant’s brief was due on April 19, 2022, 80
`
`TTABVUE 18, and it was filed the next day, April 20, 2022. 91 TTABVUE 1. Given
`
`the de minimis delay in filing, and the fact that Opposer did not demonstrate any
`
`prejudice to itself in timely filing its reply brief addressing all of Applicant’s
`
`arguments, we decline to strike Applicant’s brief because it was filed a day late. See
`
`generally TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”)
`
`(June 2022) § 539 and cases cited therein.
`
`Applicant’s failure to comply with Trademark Rule 2.126(a)(1) is more troubling.
`
`“Strict compliance with the Trademark Rules of Practice, and where applicable the
`
`Federal Rules of Civil Procedure and the Federal Rules of Evidence, is required of all
`
`parties, whether or not they are represented by counsel,” Hole in 1 Drinks, Inc. v.
`
`Lajtay, 2020 USPQ2d 10020, at *1 (TTAB 2020), and, as Opposer notes, Applicant
`
`was repeatedly advised during this proceeding that his submissions must comply
`
`with the applicable rules. 8 TTABVUE 8 (“Submissions in Board proceedings . . . must
`
`be in compliance with Trademark Rules 2.126(a) and (b).”); 12 TTABVUE 2 (“Trial
`
`Briefs shall be submitted in accordance with Trademark Rules 2.128(a) and (b).”); 19
`
`TTABVUE 2 (“submissions must be compliant with Trademark Rules 2.119 and
`
`
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`

`

`Opposition No. 91245851
`
`2.126.”); 21 TTABVUE 1-2 (“Trial briefs shall be submitted in accordance with
`
`Trademark Rules 2.128(a) and (b).”); 29 TTABVUE 4 (“submissions must be
`
`compliant with Trademark Rules 2.119 and 2.126.”); 35 TTABVUE 6 (same); 73
`
`TTABVUE 9 (“Trial briefs shall be submitted in accordance with Trademark Rules
`
`2.128(a) and (b).”).
`
`Despite these admonitions, Applicant’s “brief is single -spaced and, thus, the brief
`
`is not in technical compliance with Trademark Rule 2.126(a)(1).” L’Oreal S.A. v.
`
`Marcon, 102 USPQ2d 1434, 1435 n.4 (TTAB 2012). Applicant’s singled-spaced brief
`
`is 26 pages in length and contains several pages with large blank portions, so it
`
`appears that “the brief, if double-spaced, would be within the [55-]page limitation as
`
`set forth in Trademark Rule 2.128(b),” and that Applicant’s non-compliance was not
`
`“meant to be a subterfuge to circumvent the rule regarding the length of the brief.”
`
`Id.; see also Hole in 1 Drinks, 2020 USPQ2d 10020, at *1-2 (declining to strike the
`
`defendant’s brief on the ground that
`
`it was single-spaced). Accordingly,
`
`notwithstanding Applicant’s seemingly cavalier attitude toward the rules, we will
`
`exercise our discretion to “consider [his] arguments in his brief, for whatever
`
`persuasive value they may have despite his failure to properly format the brief.” Id.,
`
`at *2.
`
`II. The Record
`
`The record is immense, amounting to more than 6,000 pages of testimony and
`
`documents. It consists of the pleadings, the file history of the opposed application, by
`
`
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`- 4 -
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`

`

`Opposition No. 91245851
`
`operation of Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1), and the following
`
`materials submitted by the parties:
`
`A. Opposer’s Evidence
`
`• Testimony Declaration of Takako Suzuki, Opposer’s General Manager,
`
`Trademark Department, Intellectual Property Division, and Exhibits 1-50
`
`thereto, 55 TTABVUE 2-1992; 56 TTABVUE 2-283; 57 TTABVUE 3-430;
`
`58 TTABVUE 2-210;
`
`• Testimony Declaration of Mingshu W. Zhang, offered as an expert witness,
`
`and Exhibit A thereto, 39 TTABVUE 2-13;
`
`• Testimony Declaration of Jasmine A. Prezeau, offered as an expert witness,
`
`and Exhibits A-Z thereto, 40 TTABVUE 2-85;
`
`• Testimony Declaration of Dr. Melissa Pittaoulis, offered as an expert
`
`witness, and Exhibits A-H thereto, 41 TTABVUE 2-214; and
`
`• Notices of Reliance Nos. 1-18 (15 filed during Opposer’s trial period and
`
`three filed during its rebuttal period), covering various materials including
`
`Opposer’s multiple registrations,6 printed publications, Internet materials,
`
`Applicant’s responses to Opposer’s requests for admission, and excerpts
`
`from Applicant’s discovery deposition. 36 TTABVUE 2-151 (No. 1); 37
`
`
`6 Pursuant to Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1), Opposer previously made
`its pleaded registrations of record by attaching USPTO electronic records showing their
`current title and status to its Notice of Opposition. 1 TTABVUE 33-153. Making registrations
`or other evidence of record once is enough. Made in Nature, LLC v. Pharmavite LLC, 2022
`USPQ2d 557, at *12-13 (TTAB 2022) (the Board views with disfavor the filing of duplicative
`evidence by different methods of introduction . . . .”).
`
`
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`

`Opposition No. 91245851
`
`TTABVUE 2-88 (No. 2); 38 TTABVUE 2-55 (No. 3); 42 TTABVUE 2-309
`
`(No. 4); 43 TTABVUE 2-218 (No. 5); 44 TTABVUE 2-355 (No. 7); 45
`
`TTABVUE 2-82 (No. 8); 46 TTABVUE 2-101 (No. 6); 47 TTABVUE 2-16
`
`(No. 9); 48 TTABVUE 2-220 (No. 10); 49 TTABVUE 2-89 (No. 11); 50
`
`TTABVUE 2-468 (No. 12); 51 TTABVUE 2-87 (No. 12); 52 TTABVUE 2-13
`
`(No. 13); 53 TTABVUE 2-37 (No. 14); 54 TTABVUE 2-20 (No. 15); 87
`
`TTABVUE 2-114 (No. 16); 88 TTABVUE 2-206 (No. 17); and 89 TTABVUE
`
`2-106 (No. 18).
`
`B. Applicant’s Evidence
`
`• Testimony Declaration of Neil A. Campbell, 68 TTABVUE 2;
`
`• Testimony Declaration of Jonathan E. Hochman, offered as an expert
`
`witness, and Exhibits A-C thereto, 76 TTABVUE 43-128;7
`
`• Testimony Declaration of Dr. Jacqueline A. Chorn, offered as an expert
`
`witness, and Appendix A thereto, 76 TTABVUE 11-42;8 and
`
`
`7 Prior to trial, Opposer moved to strike the original Hochman expert report, 67 TTABVUE
`2-87, on the ground that it had not been executed during Applicant’s trial period. 80
`TTABVUE 10. The Board granted that motion, id. at 12, but construed Applicant’s response
`as a request to reopen its trial period to allow the submission of an updated but identical
`Hochman report. The Board granted that construed request, and accepted the updated
`Hochman report. Id. at 15.
`
`8 As with the original Hochman expert report, the Board struck the original Chorn
`declarations, 66 TTABVUE 2-32, because they had not been executed during Applicant’s trial
`period, 80 TTABVUE 12, but accepted updated and identical Chorn declarations. Id. at 15.
`Dr. Chorn’s declarations critique Opposer’s likelihood of confusion survey, and are cited by
`Applicant only in support of his defense to Opposer’s likelihood of confusion claim, 93
`TTABVUE 18-19, which we do not reach.
`
`
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`

`Opposition No. 91245851
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`• Notices of Reliance Nos. 1-7 and 9,9 covering Internet materials and
`
`Applicant’s entire discovery deposition.10 60 TTABVUE 2-15 (No. 1); 61
`
`TTABVUE 2-37 (No. 2); 62 TTABVUE 2-69 (No. 3); 81 TTABVUE 1-4; 82
`
`TTABVUE 1-4, 83 TTABVUE 2-5, 85 TTABVUE 2-5, and 86 TTABVUE 2-
`
`
`9 The Board has not received a Notice of Reliance No. 8.
`
`10 Opposer submitted under its Notice of Reliance No. 14 numbered pages 5, 10, 20, 23-26,
`35-36, 42-43, 58-60, 66-69, 71-72, 77, 92-93, and 95-98 from the transcript of Applicant’s 113-
`page discovery deposition, with heavy redaction. 53 TTABVUE 10-36. Applicant submitted
`his entire unredacted transcript and Exhibit 5 thereto under his Notice of Reliance No. 7. 69
`TTABVUE 8-116. Trademark Rule 2.120(k)(4), 37 C.F.R. § 2.120(k)(4), provides that when
`one party has introduced “only part of a discovery deposition . . . an adverse party may
`introduce under a notice of reliance any other part of the deposition which should in fairness
`be considered so as to make not misleading what was offered by the submitting party.” Such
`a “notice of reliance filed by an adverse party must be supported by a written statement
`explaining why the adverse party needs to rely upon each additional part listed in the adverse
`party’s notice, failing which the Board, in its discretion, may refuse to consider the additional
`parts.” Id. Applicant’s Notice of Reliance No. 7 covering the entire transcript of his discovery
`deposition stated that he “will likely rely on this full transcript to show the Board my
`complete answers to Opposer’s questions in that deposition of which Opposer disclosed only
`in a highly redacted form to the Board from pages 5-7 and 97.” 69 TTABVUE 2. As discussed
`below, Opposer moved to strike an email submitted with Applicant’s Notice of Reliance No.
`7 that was not identified as an exhibit at Applicant’s discovery deposition, but did not object
`to the submission of the entire deposition transcript itself. 74 TTABVUE 4-5. Opposer also
`referred to the entire deposition in its description of the record in its main brief, 91 TTABVUE
`16, noting only that the Board had struck the objected-to email. Id. at n.2. Accordingly,
`Opposer has waived any objection to Applicant’s submission of the entire transcript of his
`discovery deposition on the ground that it exceeded the permissible scope of Applicant’s use
`of the deposition under Trademark Rule 2.120(k)(4). We find that the entire transcript of
`Applicant’s discovery deposition has been stipulated into the record by Opposer, and we have
`considered it in full as substantive evidence for whatever probative value it may have.
`
`
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`Opposition No. 91245851
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`6 (No. 4);11 64 TTABVUE 2-41 (No. 5); 84 TTABVUE 2-16 (No. 6);12 69
`
`TTABVUE 2-141 (No. 7);13 and 70 TTABVUE 2-20 (No. 9).
`
`III. The Parties and Their Marks and Businesses
`
`A. Opposer
`
`Opposer was founded in Japan in 1946. Suzuki Decl. ¶ 3 (55 TTABVUE 2).14 In
`
`1958, its company name changed from Tokyo Tsushin Kogyo K.K. to Sony
`
`
`11 Prior to trial, Opposer moved to strike Applicant’s Notice of Reliance No. 4, which contained
`links to YouTube videos, 63 TTABVUE 2-4, on the ground that providing links to Internet
`materials is insufficient to make those materials of record. 80 TTABVUE 4. The Board
`granted that motion, id. at 6, but allowed Applicant 20 days from the date of the order to
`properly submit the referenced YouTube videos under notice of reliance. Id. at 6. Applicant
`subsequently submitted the videos, 81 TTABVUE 1-4; 82 TTABVUE 1-4, 83 TTABVUE 2-5,
`85 TTABVUE 2-5; 86 TTABVUE 2-6, and we have considered them for whatever probative
`value they may have.
`
`12 Prior to trial, Opposer moved to strike Applicant’s Notice of Reliance No. 6, 65 TTABVUE
`2-7, on the ground that providing links to Internet materials is insufficient to make those
`materials of record. 80 TTABVUE 7. The Board granted that motion, id. at 8, but allowed
`Applicant 20 days from the date of the order to resubmit Notice of Reliance No. 6. Id. at 8-9.
`Applicant subsequently did so. 84 TTABVUE 2-16.
`
`13 Prior to trial, Opposer moved to strike an email attached to Applicant’s Notice of Reliance
`No. 7, 69 TTABVUE 142-43, that was not an exhibit to Applicant’s discovery deposition, on
`the ground that emails cannot be properly submitted under notice of reliance. 74 TTABVUE
`4-5. The Board granted that motion. 80 TTABVUE 10.
`
`14 “Rule 602 of the Federal Rules of Evidence provides that a ‘witness may testify to a matter
`only if evidence is introduced sufficient to support a finding that the witness has personal
`knowledge of the matter,’ and that ‘[e]vidence to prove personal knowledge may consist of the
`witness’s own testimony.’” Sabhnani v. Mirage Brands, LLC, 2021 USPQ2d 1241, at *11
`(TTAB 2021) (quoting Fed. R. Evid. 602). Mr. Suzuki testified that he is the General Manager,
`Trademark Department, Intellectual Property Division for Opposer, and has been employed
`by Opposer for more than 30 years, Suzuki Decl. ¶ 1 (55 TTABVUE 2), that “[t]he facts in
`this declaration are based on my personal knowledge and/or my review of records and
`archival materials that Sony maintains in the ordinary course of business,” Suzuki Decl. ¶ 1
`(55 TTABVUE 2), and that “[m]y time at Sony has exposed me to the history of the SONY
`brand and its continued promotion and recognition among consumers and industry
`professionals in the United States across numerous sectors, including consumer electronics,
`broadcast, and entertainment.” Suzuki Decl. ¶ 2 (55 TTABVUE 2). We find that this
`foundational testimony is sufficient to establish that Mr. Suzuki has personal knowledge of
`
`
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`

`Opposition No. 91245851
`
`Corporation,15 and in the more than 60 years since, “Sony” has been the company’s
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`public-facing name. Suzuki Decl. ¶ 5 (55 TTABVUE 3). In 1970, Opposer became the
`
`first Japanese company to have its shares listed on the New York Stock Exchange.
`
`Suzuki Decl. ¶ 6 (55 TTABVUE 3). Opposer has used the SONY mark continuously
`
`in the United States since at least as early as 1960. Suzuki Decl. ¶ 6 (55 TTABVUE
`
`3).16
`
`Opposer is one of the world’s largest diversified businesses with a long history in
`
`the consumer and professional electronics field, including audio, video, computer
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`game, and mobile phone products, electronic components, and medical -related
`
`equipment and professional solutions. Suzuki Decl. ¶ 3 (55 TTABVUE 2). Opposer is
`
`also a widely known and leading entertainment company in the motion picture,
`
`television, music, gaming and online entertainment spaces. Suzuki Decl. ¶ 3 (55
`
`TTABVUE 2).
`
`Opposer’s principal business operations include Sony Group Corporation, Sony
`
`Pictures Entertainment, Sony Interactive Entertainment (formerly Sony Computer
`
`Entertainment), Sony Music Entertainment, Sony Mobile Communications, and Sony
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`Financial Holdings. Suzuki Decl. ¶ 7 (55 TTABVUE 3). Opposer’s approximate
`
`United States revenues from SONY-branded products and services across all of its
`
`
`the history of Opposer’s use of its marks and the other matters in his declaration. Sabhnani,
`2021 USPQ2d 1241, at *12.
`
`15 As noted above, Opposer changed its corporate name to “Sony Group Corporation” after
`Mr. Suzuki executed his declaration in February 2021.
`
`16 Mr. Suzuki attached to his declaration a page from Opposer’s website at sony.net
`discussing Opposer’s history. Suzuki Decl. ¶ 6; Ex. 1 (55 TTABVUE 3, 33-52).
`
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`Opposition No. 91245851
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`business segments were $12 billion in fiscal year 2013, $14 billion in fiscal year 2014,
`
`$16 billion in fiscal year 2015, $16 billion in fiscal year 2016, $17 billion in fiscal year
`
`2017, $19 billion in fiscal year 2018, and $18 billion in fiscal year 2019. Suzuki Decl.
`
`¶ 7; Ex. 2 (55 TTABVUE 3-4, 53-1631).17
`
`Opposer has used its SONY mark in connection with a number of pioneering
`
`products, including the Betamax home video cassette recorder, which was the subject
`
`of a 1984 United States Supreme Court decision regarding copyright fair use, Sony
`
`Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 220 USPQ 665 (1984); the
`
`Walkman, the world’s first stereo cassette player, launched in 1979; the world’s first
`
`compact disc player, launched in 1982; the world’s first portable compact disc player,
`
`launched in 1984; the Handycam camcorder, launched in 1989; and the Playstation
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`video game console, launched in 1995. Suzuki Decl. ¶¶ 8-9 (55 TTABVUE 4, 1676-
`
`1762; 56 TTABVUE 56-67).
`
`Opposer’s SONY mark has also long been a prominent brand in connection with
`
`entertainment. Suzuki Decl. ¶ 10 (55 TTABVUE 4). It has been used by Opposer’s
`
`affiliates Sony Pictures Entertainment in connection with movies and television
`
`programs, Sony Pictures Television in connection with television programming, Sony
`
`Music Entertainment in connection with the Sony music label, and Sony Interactive
`
`Entertainment in connection with the PlayStation hardware, software, content, and
`
`network services. Suzuki Decl. ¶ 16 (55 TTABVUE 7-8).
`
`
`17 Exhibit 2 to Mr. Suzuki’s declaration contains a series of Opposer’s Annual Reports filed
`with the United States Securities and Exchange Commission for the relevant periods.
`
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`Opposition No. 91245851
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`The public has been exposed to Opposer’s SONY mark through television and film
`
`production and distribution since 1989, Suzuki Decl. ¶ 10 (55 TTABVUE 4), and the
`
`production or distribution of numerous hit feature motion pictures in the United
`
`States, including A FEW GOOD MEN (1992), JERRY MAGUIRE (1996), GODZILLA (1998,
`
`GLADIATOR (2000), THE DA VINCI CODE (2006), THE SOCIAL NETWORK (2010), THE
`
`SMURFS (2011), ONCE UPON A TIME IN HOLLYWOOD (2019), two Jumanji films, JUMANJI
`
`(1995) and JUMANJI: WELCOME TO THE JUNGLE (2017), four James Bond films, 007
`
`CASINO ROYALE (2006), 007 QUANTUM OF SOLACE (2008), 007 SKYFALL (2012), and
`
`SPECTRE (2015), and seven Spider-man films, SPIDER-MAN (2002), SPIDER-MAN 2
`
`(2004), SPIDER-MAN 3 (2007), THE AMAZING SPIDER-MAN (2012), THE AMAZING SPIDER -
`
`MAN 2 (2014), SPIDER-MAN: HOMECOMING (2017), and SPIDER-MAN: FAR FROM HOME
`
`(2019). These films have collectively grossed many billions of dollars in the United
`
`States. Suzuki Decl. ¶ 11 (55 TTABVUE 5-6).
`
`Opposer’s SONY mark has also been used in connection with the production,
`
`distribution, and sale of musical recordings by artists such as Mariah Carey, Pearl
`
`Jam, Bruce Springsteen, Celine Dion, Pink Floyd, Luther Vandross, Gloria Estefan,
`
`Michael Jackson, Sade, Beyonce, Adele, David Bowie, and Elvis Presley. Suzuki Decl.
`
`¶¶ 12-14; Exs. 6-9 (55 TTABVUE 6-7; 56 TTABVUE 58-146).
`
`The SONY mark has been extensively advertised and promoted in connection with
`
`various goods and services in the United States for over half a century, including
`
`through retail stores, national television commercials, advertisements in magazines,
`
`newspapers, billboards (including one in New York City’s Times Square spanning
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`Opposition No. 91245851
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`decades), the Sony.com website, digital media, social media, and global sporting
`
`events. Opposer has spent tens of millions of dollars annually advertising and
`
`promoting the SONY mark in the United States for decades. Suzuki Decl. ¶ 40; Ex.
`
`30 (55 TTABVUE 15; 56 TTABVUE 246-57). Mr. Suzuki’s declaration displays or
`
`attaches a number of historical advertisements displaying the SONY mark, several
`
`of which we reproduce below:
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`Suzuki Decl. ¶ 40; Ex. 30 (56 TTABVUE 248).
`
`
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`Opposition No. 91245851
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`Suzuki Decl. ¶ 40 (55 TTABVUE 16).
`
`
`
`Suzuki Decl. ¶ 40 (55 TTABVUE 17).
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`Opposition No. 91245851
`
`
`
`Suzuki Decl. ¶ 40 (55 TTABVUE 18).
`
`Opposer’s SONY mark also appears prominently on Opposer’s social media pages,
`
`including on Facebook (over 8.5 million followers), Twitter (4.7 million followers),
`
`YouTube (over 390,000 subscribers), Instagram (8.7 million followers), and LinkedIn
`
`(over 770,000 followers). The social media pages for Sony Pictures display the SONY
`
`mark at the top of the pages, including on Facebook (over 29 million followers),
`
`Twitter (2.7 million followers), YouTube (4.52 million subscribers), Instagram (2
`
`million followers), and LinkedIn (over 970,000 followers). The social media pages for
`
`Sony Music Entertainment display the SONY mark at the top of the pages, including
`
`on Facebook (1.8 million followers), Twitter (over 709,000 followers), YouTube (over
`
`39,000 subscribers), Instagram (707,000 followers), and LinkedIn (over 639,000
`
`followers). Suzuki Decl. ¶ 41; Ex. 31 (55 TTABVUE 18; 56 TTABVUE 258-63).
`
`Opposer has also promoted the SONY mark through multimedia marketing
`
`campaigns involving well-known athletes, entertainers, and other celebrities, Suzuki
`
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`Opposition No. 91245851
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`Decl. ¶ 43; Ex. 33 (55 TTABVUE 19-20; 56 TTABVUE 269-79), as well as through
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`product placement in numerous motion pictures and television programs. Suzuki
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`Decl. ¶ 46; Ex. 36 (55 TTABVUE 22-25; 58 TTABVUE 2-96).
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`Opposer has also extensively licensed the SONY mark for a variety of consumer
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`products and in 2018 the SONY mark was ranked as the 85th most licensed brand in
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`the world, generating $350 million worldwide from the retail sale of SONY -licensed
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`consumer products. Suzuki Decl. ¶ 47; Ex. 37 (55 TTABVUE 25; 58 TTABVUE 97-
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`104). Millions of consumers in the United States have been exposed to Opposer’s
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`SONY mark through athletic sponsorships, including the FIFA World Cup
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`competitions in 2010 and 2014, in which the mark appeared on field signage that was
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`visible to millions of viewers of the World Cup games and game highlights in the
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`United States. Suzuki Decl. ¶¶ 40, 49-52; Exs. 37-40 (55 TTABVUE 25-27; 58
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`TTABVUE 103-29).
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`Opposer and its SONY mark have received extensive unsolicited media coverage,
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`and the SONY mark has been consistently been ranked and recognized as among the
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`world’s leading brands. Opposer has been the subject of at least 15 books. Suzuki
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`Decl. ¶ 55; Ex. 43 (55 TTABVUE 28; 58 TTABVUE 137-43). Nearly 30 years ago, the
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`SONY mark was recognized in a 1994 article in THE PHILADELPHIA INQUIRER about
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`the resignation of Opposer’s founder and chairman Akio Morita as “one of the world’s
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`most famous brands,” and 10 years later the mark was called “an iconic blue-chip
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`brand across the world, a name that has come to stand for perpetual innovation in
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`Opposition No. 91245851
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`the hyper-competitive consumer electronics business” in a 2004 article in MEDIA.
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`Suzuki Decl. ¶ 58; Ex. 44 (55 TTABVUE 28; 58 TTABVUE 144-49).
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`In 1988, the LOS ANGELES TIMES reported that the SONY mark was the third most
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`powerful brand name in the world after Coca-Cola and IBM, and ahead of Porsche,
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`McDonald's, Disney, Honda, Toyota, Seiko, BMW, Volkswagen, Mercedes, Pepsi Cola,
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`Kleenex, Nestle, Rolex, Jaguar, Xerox, Lipton, Hilton, Polaroid, Canon, Levi's,
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`Yamaha and Nissan, in a survey conducted by Landor Imagepower. BUSINESS WIRE
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`reported in 2006 that in a 2005 survey of more than 17,500 consumers, the SONY
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`mark was ranked as the most popular consumer electronic brand in the world, ahead
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`of Apple, Canon, Casio, Dell, Hitachi, Hewlett-Packard, Microsoft, Nokia, Panasonic,
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`Philips, Pioneer, Sanyo, Sharp, and Toshiba. Suzuki Decl. ¶ 59; Ex. 45 (55 TTABVUE
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`28; 58 TTABVUE 150-53).
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`The SONY mark has been ranked consistently in the annual Interbrand list of
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`Best Global Brands as one of the world’s leading brands. The mark was ranked 58th
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`in 2016, 61st in 2017, 59th in 2018, 56th in 2019, and 51st in 2020. Suzuki Decl. ¶ 60;
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`Ex. 46 (55 TTABVUE 28-29; 58 TTABVUE 154-59). FORBES magazine has similarly
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`consistently ranked the SONY mark as among the world’s most valuable brands. The
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`mark was ranked 38th in 2013, 80th in 2014, 79th in 2015, 76th in 2016, 73rd in
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`2017, 63rd in 2018, 60th in 2019, and 47th in 2020. Suzuki Decl. ¶ 61; Ex. 47 (55
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`TTABVUE 29; 58 TTABVUE 160-81). The SONY mark has also received recognition
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`as the “house mark” for iconic consumer products such as the Sony Walkman and the
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`Opposition No. 91245851
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`Sony Playstation in media coverage of those products. Suzuki Decl. ¶¶ 63-65; Ex. 49
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`(55 TTABVUE 30; 58 TTABVUE 188-207).
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`Opposer owns more than 20 registrations of its SONY mark, alone or with other
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`elements, for various goods and services. 36 TTABVUE 15-151. These include
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`registrations of the SONY word mark in standard characters for television cameras,
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`id. at 15 (Registration No. 770275); data recorders, id. at 19 (Registration No.
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`785967); computers, word processors, floppy discs and typewriters for use with data
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`recording apparatus, id. at 22 (Registration No. 1207979); video tape recorders, video
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`disc players, video cameras, and recorded video tapes in addition to unrecorded video
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`tapes, id. at 26 (Registration No. 1258436); radios, televisions, tape recorders, and
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`numerous other electronics goods, id. at 30 (Registration No. 1622127); cellular
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`telephones and related goods, and smart watches, id. at 38 (Registration No.
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`3243454); numerous entertainment services, including providing downloadable
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`streaming, and wireless entertainment content in the nature of audiovisual works,
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`motion pictures, trailers, television programming, music, and games by means of an
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`interactive global computer and communications networks; providing online
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`entertainment, namely, production of sound and audiovisual recordings in the field
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`of music and musical based entertainment and production of sound and music video
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`recordings, id. at 43 (Registration No. 4938522); various broadcasting, podcasting,
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`and webcasting services, id. at 48 (Registration No. 4313348); and electrical sound
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`recording apparatus, including electric record players, electrically driven record
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`Opposition No. 91245851
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`changers, and automatic phonograph record changers. Id. at 108 (Registration No.
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`801885).
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`B. Applicant
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`Applicant has been involved with MusicONE, a music scheduler for radio stations,
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`for 25 years. Campbell Tr. 12:4-13 (69 TTABVUE 15). Music scheduling involves the
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`scheduling of the sequence of songs to be played in e ach hour throughout the
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`broadcast day of a radio station. Campbell Tr. 12:14-17 (69 TTABVUE 15).
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`Applicant testified that he has “no experience in trademarks really.” Campbell Tr.
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`26:22-23 (69 TTABVUE 29). He testified that he came up with the SoniStream mark
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`in 2010, Campbell Tr. 26:6-11 (69 TTABVUE 29), and that “I didn’t do any research
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`about it. I just was . . . sitting in a room and thought of it and was searching the
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`internet for domain names that were not taken.” Campbell Tr. 56:8-11 (69 TTABVUE
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`59). He testified that the mark “really came from ‘SonicStream’ and I took out the c
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`because SonicStream is -- is abrupt, it stops, and it’s also descriptive. So SoniStream
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`flows.” Campbell Tr. 28:5-8 (69 TTABVUE 31).
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`Applicant testified that there were three purposes of the software that he intends
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`to sell under the SoniStream mark, the “music and program scheduler, the traffic
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`scheduler and billing system, which is the second piece, and the playout system, I
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`wanted to build a product that would do three things and I wanted to come up with a
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`name that would describe that.” Campbell Tr. 28:15-20 69 TTABVUE 31). The “name
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`would not be ‘playout,’ would not be ‘scheduler.’ It would have to be something more
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`vague but suggestive of what it’s about. It’s about sound. That’s the ‘Soni’ part, and
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`Opposition No. 91245851
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`‘Stream,’ that's about broadcasting.” Campbell Tr. 28:20-24 (69 TTABVUE 31). He
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`testified that the “Soni” part of the mark “suggests sound, sonic ,” Campbell Tr. 29:2-
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`4 (69 TTABVUE 32), and that while he did no research to confirm that “Soni” would
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`be perceived as “sonic,” “it seemed patently obvious” to him. Campbell Tr. 30:9-14 (69
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`TTABVUE 33).
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`Applicant testified that the SoniStream mark fit the product that he intended to
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`develop because
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`it suggests sound and it suggests broadcasting, but it
`suggests it in a way that could include both internet and
`terrestrial broadcasting. That’s the stream part. And part
`of the product is also content distribution, which I had
`mentioned also in -- in the description of use to you. And in
`that sense I’m using “stream” in a more abstract sense of
`not, you know, point-to-point -- well, it is point-to-point, but
`not -- you know, none of this is on demand streaming. But
`there, I’m using stream
`in the sense of simply
`communication or transferring information. So it suggests
`both the -- the final program stream, be it through the air
`or through the internet, and also the -- excuse me, the
`content distribution between content providers and the
`broadcaster.
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`Campbell Tr. 31:16-32:6 (69 TTABVUE 34-35).
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`Applicant testified that he did not choose the mark “SonicStream”
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`[b]ecause it’s clunky. It’s not sexy. It . . . doesn’t flow
`verbally, “Sonic -- SonicStream.” It’s broken up and it’s also
`descriptive. . . . I didn't know back then, but intuitively I
`knew it then. Let me say that. I didn’t know at all about
`descriptive versus suggestive at all until recently.