Beats Files Opposition to Microsoft for Incorporating “BEATS” in Trademark Application

Beats Electronics filed an opposition against Microsoft on Monday before the Trademark Trial and Appeal Board, claiming that it will be damaged by Microsoft’s registration of FARMBEATS and MICROSOFT FARMBEATS because of the similarity to its BEATS marks.

Beats Electronics is the owner of a multitude of trademarks that utilize BEATS in connection with its audio and music-related products and services. Additionally, Beats Electronics has used marks that incorporate or consist of BEATS to promote and advertise its products and services. Beats Electronics stated that through these marks it “has created a family of marks such that consumers have become accustomed to seeing and therefore recognizing products and services with BEATS-based marks as originating from Beats.” Beats Electronics added that it has spent significant time and resources in relation to these marks and these marks are commonly identified and recognized. Beats Electronics claimed that its marks were famous prior to Microsoft’s application.

Beats Electronics proffered that it will be harmed if Microsoft’s marks are registered. The company claimed that Microsoft’s application relates to “apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; blank magnetic data carriers in the nature of recording discs…” The marks relate to agriculture and technology and were filed under International Class 09.

Beats alleged that the items in its marks and in Microsoft’s application in International Class 09 “are identical, similar, or complementary.” Specifically, the applications are for “‘apparatus for recording, transmission or reproduction of sound or images,’ which encompasses the ‘headphones’ and ‘earphones’ covered by many of Beats’ registrations…as well as the ‘audio speakers’ and ‘loud speakers’ covered by Beats’ registrations.” These are also allegedly related to “production, distribution, and presentation of radio programs and sound recordings in the fields of entertainment news, music…,” along with other elements covered in the trademark. Beats Electronics stated that consumers may see Microsoft’s mark and “are likely to mistakenly believe that Applicant’s Mark, and the goods provided in connection with it, originated from or are connected with, sponsored by, associated with, or licensed or approved by Beats.”

Beats Electronics stated that its marks and Microsoft’s mark “share the virtually and phonetically identical element ‘beats.’” Beats Electronics added that several of the BEATS marks “combine the term ‘beats’ preceded by additional terms – e.g., URBEATS and POWERBEATS.” As a result, Beats Electronics alleged that these marks appear to be similar to the marks Microsoft is attempting to trademark. Beats Electronics alleged that allowing Microsoft’s registration will cause confusion and likely dilute the BEATS marks.

Beats Electronics, represented by Neal, Gerber & Eisenberg , has sought for Microsoft’s registration to be refused and for the notice of opposition to be sustained.