Jeffrey S. Wax v. Amazon Technologies , 500 F. App'x 944 ( 2013 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
JEFFREY S. WAX,
Appellant,
v.
AMAZON TECHNOLOGIES, INC.,
Appellee.
______________________
2012-1494
(Opposition No. 91187118)
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board.
______________________
Decided: January 14, 2013
______________________
JEFFREY S. WAX, of Sacramento, California, pro se.
LINDA K. MCLEOD, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP, of Washington, DC, for appellee.
With her on the brief were STEPHANIE H. BALD and MOLLY
R. SILFEN.
______________________
2 JEFFREY S. WAX v. AMAZON TECHNOLOGIES
Before RADER, Chief Judge, LOURIE, and MOORE, Circuit
Judges.
PER CURIAM.
Jeffrey S. Wax appeals from the decision of the
Trademark Trial and Appeal Board (Board) sustaining
the opposition by Amazon Technologies, Inc. (ATI) to the
registration of the mark AMAZON VENTURES. See
Amazon Techs., Inc. v. Wax, Opposition No. 91187118
(T.T.A.B. Mar. 30, 2012) (Board Decision). Because the
Board did not err in denying registration to Mr. Wax, we
affirm.
BACKGROUND
Mr. Wax is a patent attorney who also helps
startups obtain venture capital funding. Board Decision
at 10–11. In 2000, he filed an intent-to-use application to
register AMAZON VENTURES, with VENTURES
disclaimed, for “investment management, raising venture
capital for others, . . . and capital investment
consultation.” Id. at 1. ATI, a well-known online retailer,
opposed the registration based on several registered
AMAZON.COM marks having filing dates prior to Mr.
Wax’s application. Id. at 6–10. In addition, ATI asserted
that it had common-law priority of use over Mr. Wax’s
mark. Id. at 11. The Board found that ATI established
priority on the basis of both its pleaded registrations and
on common-law use. Id. It also determined, based on the
DuPont factors, that there is a likelihood of confusion
between the AMAZON VENTURES and AMAZON.COM
marks. Id. at 12–26 (citing In re E.I. DuPont DeNemours
& Co., 476 F.2d 1357 (CCPA 1973)). Finally, the Board
overruled Mr. Wax’s evidentiary objections. Id. at 6. This
appeal followed. We have jurisdiction under 28 U.S.C. §
1295(a)(4)(B).
DISCUSSION
JEFFREY S. WAX v. AMAZON TECHNOLOGIES 3
“[T]he Patent and Trademark Office (‘PTO’) may
refuse to register a trademark if it is so similar to a
registered mark ‘as to be likely, when used on or in con-
nection with the goods of the applicant, to cause confu-
sion, or to cause mistake, or to deceive.’” Coach Servs.,
Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366 (Fed.
Cir. 2012) (citing 15 U.S.C. § 1502(d)). “Although we
review the Board’s findings as to the DuPont factors for
substantial evidence, we review its overall determination
of likelihood of confusion without deference.” Id. We
review the Board’s evidentiary rulings for abuse of discre-
tion. Id. at 1363.
A. Priority
The Board found that “priority is not an issue with
respect to the services covered by [ATI’s] pleaded
registrations.” Board Decision at 11. Mr. Wax contends,
however, that the Board erred in determining that ATI
had priority over the AMAZON VENTURES mark. He
argues that ATI cannot establish priority because, after
Mr. Wax’s filing, the PTO denied ATI’s application to
register an AMAZON.COM mark for “financial
management [and] financial planning” services.
We disagree. It is undisputed that ATI owns
several registered AMAZON.COM marks stemming from
applications that were filed before the priority date of
AMAZON VENTURES. Board Decision at 6–10. For
example, ATI owns an AMAZON.COM mark in graphical
form, Reg. No. 2789101, for, among other things,
“advertising services . . .; business management [and]
business administration.” Board Decision at 8. ATI also
owns an AMAZON.COM mark in typed form, Reg. No.
3411872, “for credit card services; and charge card
services.” Id. ATI’s failure to register AMAZON.COM for
financial services does not negate the priority of its marks
for advertising services, business management, credit
card services, and other services with respect to Mr.
4 JEFFREY S. WAX v. AMAZON TECHNOLOGIES
Wax’s application. Therefore, we conclude that the Board
did not err in its priority analysis. Because ATI has
established priority on the basis of its registered marks,
we need not reach ATI’s common-law claims.
B. Likelihood of Confusion
“We determine likelihood of confusion by focusing
on the question whether the purchasing public would
mistakenly assume” that Mr. Wax’s services “originate
from the same source as, or are associated with” ATI, the
owner of AMAZON.COM registrations. In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 1315–16 (Fed. Cir.
2003). The Board found that ATI’s marks are very strong
due to their commercial fame and to their inherent
distinctiveness in connection with ATI’s services, leading
to likely confusion with Mr. Wax’s mark. Board Decision
at 13–17, 19–20. The Board also determined that,
because “AMAZON is the dominant component for each,”
there is a high degree of similarity between
AMAZON.COM and AMAZON VENTURES that further
indicated a likelihood of confusion. Id. at 18. Moreover,
the Board found that the parties’ respective services and
channels of trade were sufficiently alike to support the
finding of likely confusion, particularly given the fame of
ATI’s marks and their high degree of similarity to
AMAZON VENTURES. Id. at 20–23. Weighing the
DuPont factors, the Board concluded that confusion was
likely and sustained the opposition. Id. at 24–26.
Mr. Wax challenges the Board’s findings of fame of
ATI’s marks, their similarity to AMAZON VENTURES,
and the similarity of the parties’ services and channels of
trade. Mr. Wax does not dispute the evidence of fame
provided by ATI, including ATI’s high-volume sales,
extensive advertising expenditures, and unsolicited
JEFFREY S. WAX v. AMAZON TECHNOLOGIES 5
attention that the media has accorded to ATI’s marks. 1
Board Decision at 14–16. He maintains, however, that
ATI has proven fame only for AMAZON.COM, not for
“Amazon.” Mr. Wax further argues that ATI’s consent
agreements with third parties to preserve the absence of
confusion with marks that include the word “Amazon,”
coupled with its refusal to consent to analogous marks
that contain both “Amazon” and “.com,” show that ATI
perceives the suffix “.com” to be an integral part of its
marks. Moreover, Mr. Wax faults the Board for dissecting
his own mark into the words “Amazon” and “Ventures”
and argues that AMAZON VENTURES, when considered
as a whole, is not sufficiently similar to AMAZON.COM to
lead to confusion. Finally, Mr. Wax argues that, because
ATI does not provide investment management or venture
capital funding services, and because consumers of such
services are sophisticated, confusion is unlikely.
We find no error in the Board’s analysis of the
DuPont factors. The record indicates that “Amazon” and
“Amazon.com” are used interchangeably to refer to ATI’s
services, which supports the Board’s finding that
“Amazon” is the dominant feature of the mark. J.A.
10772–883. Therefore, evidence of fame of
AMAZON.COM is probative of likely confusion between
ATI’s marks and other marks, like AMAZON
VENTURES, that include the word “Amazon.” The Board
was also correct in concluding that the two marks are
highly similar due to the presence of “Amazon” in both.
Mr. Wax fails to point to any error in the Board’s finding
that, in AMAZON VENTURES, “Ventures” is merely
1 Mr. Wax does argue that any evidence of fame
that post-dates the filing date of his own application is not
relevant. To the contrary, such evidence is probative of
fame for the purpose of establishing likelihood of confu-
sion. See Midwestern Pet Foods, Inc. v. Societe des Pro-
duits Nestle S.A., 685 F.3d 1046, 1052 (Fed. Cir. 2012).
6 JEFFREY S. WAX v. AMAZON TECHNOLOGIES
descriptive of the nature of his services. Board Decision
at 18.
Finally, Mr. Wax’s reliance on ATI’s consent
agreements to show that ATI views “.com” as an
important part of the mark is misplaced. The focus is on
how the buying public perceives AMAZON.COM. See In
re Majestic Distilling, 315 F.3d at 1315–16. Unlike In re
Four Seasons Hotels Ltd., 987 F.2d 1565 (Fed. Cir. 1993),
cited by Mr. Wax, there is no consent agreement among
the parties regarding confusion.
We also do not agree that differences between ATI’s
and Mr. Wax’s services and channels of trade weigh
against the finding of likely confusion. The party
opposing registration does not have to provide exactly the
same service as the applicant to establish likelihood of
confusion. See Recot, Inc. v. M.C. Becton, 214 F.3d 1322,
1327–28 (Fed. Cir. 2000). Indeed, the point of showing
that a mark is famous relieves the opposer from having to
prove that the services it provides are the same as the
applicant’s services. Id. Although fame does not give the
mark’s owner a right in gross, “[f]amous marks [do] enjoy
a wide latitude of protection.” Id. at 1327.
Moreover, ATI’s corporate investing activities
actually resemble the service of “raising venture capital
for others” that Mr. Wax markets under AMAZON
VENTURES. J.A. 836, 1471–80. Mr. Wax acknowledges
the phenomenon of corporate venture capitalism but
argues that ATI “would not invest in a competitor retailer
unless [its] intent was to gain a benefit for itself.”
Appellant’s Reply Br. 10 (emphasis added). While Mr.
Wax emphasizes that his own service entails raising
venture funds for others, he must also expect to receive a
benefit for himself in the form of remuneration for his
work. This similarity, particularly in view of the fame of
ATI’s marks and the closeness of AMAZON.COM and
AMAZON VENTURES, supports the Board’s finding of a
JEFFREY S. WAX v. AMAZON TECHNOLOGIES 7
likelihood of confusion. Even if Mr. Wax is correct in that
the level of sophistication of the relevant consumer
market is high, the Board did not err in concluding that
the DuPont factors as a whole strongly support ATI’s
position.
C. Evidentiary Objections
Mr. Wax argues that the Board erred by admitting
into evidence exhibits that ATI included with its reply
brief before the Board and by allowing ATI to submit
numerous late discovery responses. The Board explained,
however, that the exhibits that ATI included with its
reply brief were responsive to arguments raised by Mr.
Wax and that ATI submitted its “late” exhibits in order to
comply with its duty to supplement its discovery
responses and with the Board’s orders. See J.A. 10764–
65; 409–11. We perceive no error in the Board’s analysis.
Therefore, we conclude that the Board did not abuse its
discretion in its evidentiary rulings.
CONCLUSION
We have considered Mr. Wax’s remaining
arguments and conclude that they lack merit.
Accordingly, we affirm the Board’s decision.
AFFIRMED