Carl Walther GmbH and Umarex Sportwaffen GmbH & Co., KGv.Catharina Herriger

Trademark Trial and Appeal Board

Sep 1, 2017

No. 91215976 (T.T.A.B. Sep. 1, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: September 1, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____
Carl Walther GmbH and Umarex Sportwaffen GmbH & Co., KG
v.
Catharina Herriger
_____
Opposition No. 91215976
____

Steven R. Baird and Wesley D. Anderson of Winthrop & Weinstine PA
for Carl Walther GmbH and Umarex Sportwaffen GmbH & Co., KG.

Frank Michael Weyer of TECHCOASTLAW
for Catharina Herriger.
_____

Before Quinn, Shaw, and Goodman,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
Catharina Herriger (“Applicant”), an individual, filed an application to register
the marks WALTHER (in standard characters)1 and the design mark
2, both for “jewellery and watches” in International Class 14.

1 Application Serial No. 85965933 was filed on June 20, 2013, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
2 Application Serial No. 85965968 was filed on June 20, 2013, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Opposition No. 91215976
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Carl Walther GmbH (“Walther”) and Umarex Sportwaffen GmbH & Co., KG
(“Umarex”) (collectively “Opposers”) oppose registration of Applicant’s marks on the
grounds of likelihood of confusion under Trademark Act Section 2(d), 15 U.S.C.
§ 1052(d), dilution under Trademark Act Section 43, 15 U.S.C. § 1125(c), and lack of
bona fide intention to use the mark in commerce. Umarex has pleaded ownership of
the following previously used and registered marks: WALTHER in typed form for
“hunting and sport rifles, pistols, revolvers and shot guns”3 in International Class 13,
and for “toy weapons and toy replicas of weapons”4 in International Class 28; the
mark for “sport knives, knives for use in hunting and fishing,
pocket knives” in International Class 8, for “telescopes, telescopic gun and lens sights,
night glasses for use in hunting” in International Class 9, for “weapons of self defense,
namely, pistols”5 and “military rifles, hunting rifles, pistols, guns for shooting signals,
rockets and flares, adult air guns, adult pistols, and adult cap pistols, adult cap guns”6
in International Class 13, and for “toy weapons and toy replicas of weapons,”7 in
International Class 28; and the mark , owned by Walther, for

Trademark Act. The description of the mark states “The mark consists of [sic] Outline of a
ribbon.” Color is not claimed as a feature of the mark.
3 Reg. No. 1120867, issued June 26, 1979; second renewal.
4 Reg. No. 2909647 issued December 14, 2004; renewed.
5 Reg. No. 2714985 issued May 13, 2003; renewed.
6 Reg. No. 303701 issued June 6, 1933; fifth renewal.
7 Reg. No. 2912154 issued, December 21, 2004; renewed.
Opposition No. 91215976
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“toy weapons, namely, toy replicas of weapons,”8 in International Class 28. Opposers
also plead use of these marks in connection with a variety of related goods and
accessories and gift products bearing the marks.
While Applicant did not file an answer in response to the amended notice of
opposition,9 the history of the case shows Applicant filed an answer to the original
notice of opposition and denied the salient allegations, also showing her intent to
defend the opposition by litigating the claims in this case on summary judgment and
at trial.
In a Prior Board order (“Prior Order”), (11 TTABVUE), the Board granted partial
summary judgment in Opposers’ favor, establishing Opposers’ standing and priority,
and sustaining the opposition as to likelihood of confusion with regard to Applicant’s
WALTHER mark. The Board further advised that the proceeding would go forward
to trial on the pleaded grounds against Applicant’s mark only,
unless the Board was otherwise notified; Opposers did not file any papers asking the
Board to consider the remaining grounds in connection with Applicant’s WALTHER
mark.10 In view thereof, we direct our decision to Applicant’s design mark. The only
issues that remain for decision in connection with Applicant’s mark

8 Reg. No. 3038946 issued January 10, 2006.
9 The Board did not set Applicant’s time to file an answer to the amended notice of opposition
after granting Opposers’ motion to amend the notice of opposition. 11 TTABVUE.
10 In their brief on the case, Opposers acknowledge that the “trial shall concern Applicant’s
‘968 Application for the copy of the Walther Ribbon Design mark only.” 24 TTABVUE 7.
Opposition No. 91215976
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are whether there is a likelihood of confusion with Opposers’ marks and whether
Applicant lacks a bona fide intention to use the mark.11
I. The Record
The record includes the pleadings, and by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the application file of the opposed application. The parties
introduced the following testimony and evidence: the testimony deposition (with
exhibits) of Monika Braeutigam, executive assistant to the president, CEO and
managing partner of Umarex, and Opposers’ notices of reliance on status and title
copies of their pleaded registrations, selected responses by Applicant to Opposers’
First Set of Requests for Production of Documents and to Opposers’ First Set of
Requests for Admissions, third-party registrations, web pages from Opposers’
website, web pages from third-party websites, and eBay auction listing webpages.
Applicant submitted notices of reliance on printed publications, web pages from third-
party websites, eBay auction listing web pages, and third-party registrations.
A. Evidentiary Matters
Opposers object to Applicant’s reliance on Internet printouts in Applicant’s First
Notice of Reliance, Exhibits 7-23 and 26-29, and Second Notice of Reliance, Exhibits
34-35, to the extent Applicant seeks to prove the truth of the matters asserted therein,
because the printouts are not supported by testimony or any other evidence. In

11 In addition, in their brief on the case, Opposers have not addressed the dilution ground in
connection with Applicant’s design mark. We therefore deem the dilution ground waived as
to Applicant’s mark.
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response to the objection, Applicant indicates that she is not relying on the Internet
printouts to establish the truth of the matters asserted therein but for what they
show on their face. As there is no dispute with respect to whether these exhibits may
be used to prove the truth of the matters asserted therein, Applicant’s Internet
printouts will be considered only for what they show on their face. See Safer, Inc. v.
OMS Investments, Inc., 94 USPQ2d 1031, 1039 (TTAB 2007) (Internet printouts
admissible “for the limited purpose of demonstrating what the documents show on
their face.”).
Opposers object to Exhibits 3-5 from Applicant’s First Notice of Reliance because
the exhibits are in German and without English translations. The objection is
sustained. See Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1405
(TTAB 1998) (noting that a proffered excerpt from a newspaper or periodical is
lacking in foundation and, thus, is not admissible as evidence to the extent that it is
unintelligible because it is in a language other than English).12
Opposers object to Exhibits 1-2 and 7-14 from Applicant’ s First Notice of Reliance
and Exhibits 24-25 and 60-80 from Applicant’s Second Notice of Reliance as
irrelevant. The objection is sustained as to Exhibits 1-2, 7-14, and 24-25 (referencing
Neuengamme concentration camp and memorial, factory growth of the Walther Arms
company, and Walther Arms’ company history) but denied as to Exhibits 60-80, as
Opposers themselves have raised the issue by submitting evidence relating to the

12 Opposer also objected to Exhibits 3-5 from the First Notice of Reliance as irrelevant, but
that objection is rendered moot.
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commercial strength, consumer recognition, fame, and notoriety of Opposers’ pleaded
marks. (NOR, 18 TTABVUE 5, 193-395, Exhibits 23-26).
II. Standing and Priority
As set forth in the Prior Order, (11 TTABVUE) Opposers’ pleaded registrations,
Registration Nos. 303701, 1120867, 2714985, 2909647, 2912154, and 3038946 are of
record and establish Opposers’ standing. (11 TTABVUE 7). Cunningham v. Laser
Golf Corp., 222 F.3d 943, 945, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). Also as stated
in the Prior Order, because the status and title copies of the registrations are of
record, priority is not at issue in this proceeding. (11 TTABVUE 10). King Candy
Company v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA
1974).
III. Lack of Bona Fide Intent
We now turn to consideration of Applicant’s bona fide intention to use her
mark in commerce in connection with the identified goods when she filed her
trademark application.
Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), states that:
A person who has a bona fide intention, under
circumstances showing the good faith of such person, to use
a trademark in commerce may request registration of its
trademark on the principal register hereby established by
paying the prescribed fee and filing in the Patent and
Trademark Office an application and a verified statement,
in such form as may be prescribed by the Director.
A determination of whether an applicant has a bona fide intention to use the mark
in commerce is an objective determination based on all the circumstances. Lane Ltd.
Opposition No. 91215976
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v. Jackson International Trading Co., 33 USPQ2d 1351, 1355 (TTAB 1994);
Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1507
(TTAB 1993). One way an opposer can establish its prima facie case of no bona fide
intent is by proving that an applicant has no documentary evidence to support its
allegation in the application of bona fide intent to use the mark in commerce as of the
application filing date. Saul Zaentz Co. v. Bumb, 95 USPQ2d 1723, 1727 (TTAB
2010). If opposer satisfies its initial burden of showing the absence of documentary
evidence regarding an applicant’s bona fide intention to use the mark, the burden of
production shifts to applicant “to rebut the opposer’s prima facie case by offering
additional evidence concerning the factual circumstances bearing upon its intent to
use its mark in commerce.” Commodore Electronics., 26 USPQ2d at 1507 n.11. Unless
other facts are presented which adequately explain or outweigh an applicant’s failure
to provide such documentary evidence, “[t]he absence of any documentary evidence
on the part of an applicant regarding such intent constitutes objective proof sufficient
to prove that the applicant lacks a bona fide intention to use its mark in commerce.”
Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008);
see also Honda Motor Co. v. Winkelmann, 90 USPQ2d 1660, 1662 (TTAB 2009); L.C.
Licensing Inc. v. Berman, 86 USPQ2d 1883, 1891 (TTAB 2008).
In support of their claim that Applicant did not have a bona fide intent to use her
mark in commerce at the time Applicant filed her application, Opposers point to
various of Applicant’s discovery responses that demonstrate a lack of documentary
evidence to support such a claim of bona fide intent. Applicant identified the file
Opposition No. 91215976
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history of application Serial No. 85965968 as responsive to Opposers’ document
requests (Opposers’ First Set of Requests for Production Nos. 26, 27, 28, 29, 30, 32,
33, NOR, Exhibit 62, 19 TTABVUE 139, 144-145). Aside from the file history,
Applicant has represented in these responses that she has no documents relating to
business plans, marketing plans (including documents identifying target
purchasers), product development (including drawings or prototypes), sales or
marketing materials (including tags and labels), and no contracts or quotes from
vendors for manufacturing watches or quotes relating to manufacturing capabilities.
Applicant admits in her responses to Opposers’ First Set of Requests for Admission
(Nos. 66 and 67, NOR, Exhibit 62, 19 TTABVUE 150) that she does not own a facility
to manufacture watches or jewelry.
Taken as a whole, the record is devoid of any documentary evidence of business
plans, marketing or promotional activities, research and development, consumer
testing, financing efforts or any other documents to substantiate Applicant’s claim of
a bona fide intention to use the subject mark in commerce as of the application filing
date. The record reflects that aside from documents filed with the USPTO pertaining
to her intent-to-use trademark application, Applicant has no documents relating to
her intent to use the mark in commerce. We find that Opposers have met
their burden of demonstrating Applicant’s lack of a bona fide intent to use the mark
by making a prima facie showing that Applicant has no documentary evidence
regarding such intent.
Opposition No. 91215976
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As Opposers have made out their prima facie case on this claim, the burden then
shifts to Applicant to rebut that prima facie case by producing evidence that would
establish that she had the requisite bona fide intent to use the mark when she filed
her application. In her brief, Applicant points to the Board’s finding on summary
judgment that a genuine dispute remained regarding the ground of lack of a bona fide
intent to use the mark due to Applicant’s interrogatory response stating she was a
trained gemologist and had worked for several Swiss watch manufacturers.13
However, as Opposers have pointed out, evidence submitted on summary judgment
is not part of the trial record unless properly introduced in evidence during the
appropriate trial period. See Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28
USPQ2d 1464, 1465 n.2 (TTAB 1993).
Moreover, contrary to Applicant’s argument, the denial of summary judgment on
the lack of bona fide intent to use the mark claim was not a ruling on the merits of
the claim, and we are not foreclosed from determining the issue at trial.14 See, e.g.,

13 We note that on summary judgment, the Board found Opposers had made a prima facie
showing on the lack of bona fide intent ground, which Applicant rebutted by an interrogatory
response, sufficient to raise a genuine dispute. 11 TTABVUE 8-10. The Board stated that “an
applicant’s capacity to market and/or manufacture the identified goods weighs against a
finding that an applicant lacked a bona fide intent to use.” Id. at 8. Neither Applicant’s nor
Opposers’ trial evidence includes this interrogatory response. Nor does the trial record
include any of Applicant’s other evidence that she submitted on summary judgment, although
at trial, Applicant was not entitled to rely on certain documents relating to her trademark
search for which she claimed attorney-client privilege. Id. at 9.
14 The “denial of a motion for summary judgment because of unresolved issues of fact does
not settle or even tentatively decide anything about the merits of a claim. It is strictly a
pretrial order that decides only one thing—that the case should go to trial.” Switzerland
Cheese Ass’n, Inc. v. E. Horne’s Market, Inc., 385 U.S. 23, 25 (1966). To the extent Applicant
is arguing that the denial of Opposers’ motion for summary judgment on the lack of bona fide
intent to use the mark in commerce ground was a ruling on the merits regarding Applicant’s
bona fide intent, the Prior Order does not purport to decide the question. It merely denied
Opposition No. 91215976
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Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 90 USPQ2d 1301, 1305 (Fed. Cir.
2009) (determination by Board on particular issue in connection with summary
judgment denial does not foreclose different determination on same issue at trial
based upon entire record). At trial, Applicant presented no testimony. The only trial
evidence Applicant submitted under notice of reliance in relation to this claim was an
eBay auction listing, printouts of third-party websites relating to custom watches and
made-to-order jewelry, and a website document from the ABA International Law
Section.15
Applicant has not explained the significance of the eBay website listing (February
2016) of a “Walther Switzerland” ladies watch, (First NOR, Exhibit 18, 21 TTABVUE
102-103); however, she does point to Opposers’ eBay rebuttal evidence which includes
the same February 2016 eBay listing for a “Walther Switzerland” ladies watch offered
by “techcoast,” which Opposers submit is connected to Applicant’s counsel.16 (NOR,

the motion for summary judgment because, in the Board’s view, there were genuine disputes
of material fact as to Applicant’s bona fide intent. Such a denial merely postpones decision of
any question; it decides none. Glaros v. H. H. Robertson Co., 797 F.2d 1564, 230 USPQ 393
(Fed.Cir.1986) (“An order denying a motion for partial summary judgment is merely a judge’s
determination that genuine issues of material fact exist. It is not a judgment, and does not
foreclose trial on the issues on which summary judgment was sought.”). To give the denial
order any other effect would be entirely contrary to the purpose of the summary judgment
procedure.
15 Second NOR, Exhibits 26-29, 22 TTABVUE 26-39. The ABA document was printed in PDF
form. Second NOR, Exhibit 33, 22 TTABVUE 63-70. Applicant provided the URL and date
printed in the portion of her notice of reliance indicating relevance. Second NOR, 22
TTABVUE 3.
16 In her brief, Applicant does not dispute that “techcoast,” the name of the seller of the eBay
listing for the Walther Switzerland watch, is her attorney. 25 TTABVUE 15. Opposers also
submitted with this notice of reliance April 2016 eBay webpages which reflect the ending of
the auction for the Walther Switzerland watch offered by “techcoast.” NOR, Exhibits 3-4, 23
TTABVUE 13-18.
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Exhibit 2, 23 TTABVUE 9-12). Applicant argues that this evidence confirms
“Applicant[’]s ability to make and sell goods bearing the applied for marks” in view of
Applicant’s attorney, who has “no professional jewelry and watchmaking experience
… easily hav[ing] watches bearing the applied for marks made by OEM
manufacturers and offer[ing] them for sale.” (25 TTABVUE 15). However, these
exhibits provide no support for Applicant’s bona fide intent. These exhibits do not go
to the truth of the matter. On their face, these exhibits do not show use of Applicant’s
mark,17 and even if they did show Applicant’s mark, this evidence would not be
sufficiently contemporaneous with the application filing date to demonstrate
Applicant’s intent. See Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d at
1587. Moreover, the ability of another individual to manufacture a Walther
Switzerland ladies watch or to manufacture custom watches generally “given the
current state of the online marketplace” (25 TTABVUE 15) does not provide evidence
of Applicant’s intent to use the mark at the time of filing the application. Thus,
Applicant’s third-party website printouts, (Second NOR, Exhibits 26-29, 22
TTABVUE 26-39)18 that show on their face the offering by third parties of custom
watches, custom logo watches, custom imprint watches, and private label jeweler
services do not evidence Applicant’s bona fide intent.

17 The watch does not display the ribbon design of the involved application. Rather it
displays a ribbon design incorporating a Swiss flag overlaid in the center . NOR,
Exhibit 2, 23 TTABVUE 10.
18 Although these exhibits are not specifically referenced in her brief, Applicant did make
arguments regarding the ability of individuals not skilled or experienced in watchmaking or
jewelry being able to have these products made by OEM manufacturers.
Opposition No. 91215976
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Applicant also submitted under Notice of Reliance a document provided by the
ABA International Section of Law titled “Obtaining Evidence Abroad” which
references the procedures for obtaining discovery from residents of Switzerland
involved in litigation in the United States. Applicant has not explained this evidence
in her brief, but we surmise its purpose is to explain away Applicant’s failure to rebut
Opposer’s prima facie case. However, we know of no basis in law or logic for
permitting an applicant to hide behind the cloak of the Hague Convention or Swiss
law to excuse her failure to take testimony or provide documentary evidence so as to
rebut a finding of no documentary evidence in connection with a lack of bona fide
intent to use the mark claim. In sum, “the absence of documentation coupled with
Applicant’s failure to take testimony or offer any evidence supporting her bona fide
intent to use convince us that Applicant did not have a bona fide intent to use the
mark.” Research In Motion Limited v. NBOR Corporation, 92 USPQ2d 1926, 1931
(TTAB 2009).
The opposition is sustained on the ground of a lack of bona fide intention to use
the mark in commerce.
IV. Likelihood of confusion
We now turn to the likelihood of confusion ground. Our likelihood of confusion
determination under Section 2(d) is based on an analysis of all of the probative facts
in evidence that are relevant to the likelihood of confusion factors set forth in In re E.
I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See
also Palm Bay Imps. Inc., v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
Opposition No. 91215976
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F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). In considering the evidence of
record on these factors, we keep in mind that “[t]he fundamental inquiry mandated
by §2(d) goes to the cumulative effect of differences in the essential characteristics of
the goods and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We shall consider the applicable du Pont factors as to the following marks:
(Walther’s Registration No. 3038946) and (Umarex’s
Registration Nos. 2714985, 2912154, and 303701), which we find are the most
relevant since they bear the closest resemblance to Applicant’s mark. If we do not
find a likelihood of confusion with these registered marks and their associated goods,
then there would be no likelihood of confusion with the marks in the other pleaded
registrations. See Fiserv, Inc. v. Electronic Transaction Systems Corp., 113 USPQ2d
1913, 1917 (TTAB 2015); In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245
(TTAB 2010).
A. Fame of Opposers’ marks
The fifth du Pont factor requires us to consider the fame of Opposers’ marks.
Fame, if it exists, plays a dominant role in the likelihood of confusion analysis because
famous marks enjoy a broad scope of protection or exclusivity of use. A famous mark
“has extensive public recognition and renown.” Bose Corp. v. QSC Audio Prods., 293
F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002) (quoting Kenner Parker Toys, Inc.
v. Rose Art Indus., Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992)). The
fame of a mark is not “an all-or-nothing measure” when considered in the context of
Opposition No. 91215976
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likelihood of confusion. Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC,
857 F.3d 1323, 122 USPQ2d 1733, 1734-35 (Fed. Cir. 2017). Rather, likelihood of
confusion fame “varies along a spectrum from very strong to very weak.” Palm Bay
Imps. Inc., 73 USPQ2d at 1694 (quoting In re Coors Brewing Co., 343 F.3d 1340, 68
USPQ2d 1059, 1063 (Fed. Cir. 2003)).
Opposers assert in their brief that their marks are famous due to length of use
(over 100 years in the United States marketplace)19 and “commercial and cultural
notoriety,” pointing to appearances of the fictional “Walther PPK” firearm in the
James Bond book and movie franchise. As further evidence of fame, Opposer Umarex
points to its role as exhibitor at annual trade shows in the United States, particularly,
the SHOT Show in Las Vegas, the NASGW Show, and the NRA Show, as well as the
appearance of Walther firearms in three feature articles in gun magazines circulated
in the United States (October 2013 and December 2015), the award of “Gun of the
Year” from Guns & Ammo magazine in December 2015 for its PPKQ M2 45 automatic
firearm, and Opposer Umarex’s United States subsidiary,20 Walther Arms Inc.’s,
Facebook page, with 123,000 “likes.” (Braeutigam testimony, 20 TTABVUE; NOR,
Exhibits 23-26, 18 TTABVUE 198-395).

19 There is no testimony in the record regarding Opposers’ length of use of their marks in the
United States. In their brief, Opposers reference Walther Arms Inc.’s Facebook Pages,
submitted under their notice of reliance, and excerpts from the 2015 Walther Arms Inc.
Catalog, submitted under notice of reliance by Applicant, both of which we consider only for
what they show on their face. NOR, Exhibit 23, 18 TTABVUE 198-371; First NOR, Exhibit
6, 21 TTABVUE 24-27. As stated previously, the record also includes Umarex’s pleaded Reg.
No. 303701, issued June 6, 1933, for the mark.
20 Braeutigam testimony, 20 TTABVUE 46.
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We find Opposers’ evidence is insufficient to prove “fame” as contemplated by case
law. The testimony of executive assistant, Ms. Braeutigam, as to the fame of
Umarex’s marks lacks sufficient evidentiary support. There is no specific information
in the record about the extent of Umarex’s advertising, only general statements that
Umarex advertises the Walther brand at various trade shows in the United States.
There also is no information in the record regarding Umarex’s sales of goods in
connection with any of the WALTHER marks. The handful of magazine articles, two
in 2013, and one in 2015, regarding Walther products and the Gun of the Year award
in 2015 is insufficient to demonstrate widespread consumer recognition of these
marks. Additionally, the mere fact that Opposers have been using the WALTHER
trademarks for many years, without specific evidence of advertising, sales, promotion
or consumer recognition in connection with these marks, is insufficient for us to find
that the marks are famous. As to the number of “likes” on Walther Arms Inc.’s
Facebook page, such evidence falls short of demonstrating the extent to which these
“likes” translate into widespread recognition of the WALTHER marks among the
general public, and also lacks context. Lastly, to the extent that Opposers rely on the
“James Bond Wiki” and the third-party website evidence to establish the notoriety of
the WALTHER marks in connection with the James Bond book and movie franchise,
as stated previously, these Internet printouts cannot be used to establish the truth of
any matters asserted in these documents, and therefore, the probative value is
limited to what they show on their face. Suffice it to say, Opposers’ evidence falls far
short of establishing the fame or renown of their and marks.
Opposition No. 91215976
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Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB
2007). (“It is the duty of a party asserting that its mark is famous to clearly prove
it.”). Nevertheless, we find that the evidence is sufficient to show that Opposer’s mark
has achieved at least some degree of recognition and strength in the market
and that the mark is therefore entitled to a broader scope of protection than might be
accorded a less distinctive mark.
B. Similarity or dissimilarity of the goods
The Goods in Walther’s Registration No. 3038946 and Umarex’s
Registration No. 2912154

We keep in mind that the respective goods do not have to be identical or even
competitive in order to determine that there is a likelihood of confusion; rather, it is
sufficient that the respective goods are related in some manner, or the conditions
surrounding their marketing must be such that the goods will be encountered by the
same purchasers under circumstances that would give rise to the mistaken belief that
they originate from the same source. Coach Servs., Inc. v. Triumph Learning LLC,
668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012), quoting 7-Eleven Inc. v.
Wechler, USPQ 1715, 1724 (TTAB 2007); On-line Careline Inc. v. America Online Inc.,
229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000). We must compare the goods
identified in Applicant’s involved application to those identified in Opposers’ pleaded
registrations. See Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62
USPQ2d 1001, 1004 (Fed. Cir. 2002); Octocom Systems, Inc. v. Houston Computers
Opposition No. 91215976
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Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Elbaum,
211 USPQ 639, 640 (TTAB 1981).
As to the goods in Registration Nos. 3038946 and 2912154, we find that Opposers
have not established that Applicant’s “jewellery and watches” are related to Opposers’
“toy weapons” and/or “toy replicas of weapons.” To show relatedness, Opposers
provided separate webpages from mass-market retailer Walmart offering jewelry and
toy guns for purchase. (NOR Exhibits 39-40, 19 TTABVUE 61-71). However, “[i]t has
long been held that the mere fact that two different items can be found in a
supermarket, department store, drugstore or mass merchandiser store is not a
sufficient basis for a finding that the goods are related.”21 Morgan Creek Productions,
Inc. v. Foria International, Inc., 91 USPQ2d 1134 (TTAB 2009). Opposers also have
made of record two third-party use-based registrations, owned by the same
registrant, showing that a single mark has been registered for watches on the one
hand and toy guns on the other. (NOR Exhibit 7, 18 TTABVUE 76). We observe that
third-party registrations are of very limited probative value on the issue of likelihood
of confusion because although they may serve to suggest that the listed goods are of
a type that may emanate from a single source, they are “not evidence of what happens
in the market place or that customers are familiar with them.” In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co.
Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). See also In re the Dot Communications

21 Opposer’s testimonial witness, Ms. Braeutigam acknowledged that Walmart sells many
different goods. (“Walmart sells everything”). Braeutigam testimony, 20 TTABVUE 25, 77-
78.
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Network LLC, 101 USPQ2d 1062, 1067 (TTAB 2011) (third-party registrations are of
limited probative value especially if not supported by evidence of actual use). We find
this limited third-party registration evidence is not sufficient to demonstrate that
goods such as “jewellery and watches” and “toy weapons” and/or “toy replicas of
weapons” would emanate from a single source and be sold under a single mark.22 We
find that the goods in Registration Nos. 3038946 and 2912154 are dissimilar and not
related to Applicant’s goods.
The goods in Umarex’s Registration Nos. 2714985 and 303701
With regard to the relatedness of Applicant’s goods to Umarex’s goods in
Registration Nos. 2714985 and 303701 (i.e., firearms and knives), Opposers rely on
third-party gun manufacturer websites that show on their face the offering of
firearms and watches or firearms and jewelry for purchase (colt.com, ruger.com,
berettausa.com, smith-wesson.com, NOR, Exhibits 47, 48, 55-59, 19 TTABVUE 96-
101, 116-130),23 third-party websites that show on their face that outdoor or sporting

22 Although Opposers argue in their reply brief that “they have made and distributed” jewelry
that are “toy replicas of weapons” in connection with Registration No. 3038946, we are hard-
pressed to consider a lapel pin as falling under the category of a “toy replica.” Opposers’
witness testified that the lapel pin is “a reproduction in the form of a pin of the P99.”
Braeutigam testimony, 20 TTABVUE 68-69, Exhibit 10. The record shows that the pin was
imprinted with , rather than , as shown in Registration no. 3038946. Id.
Although Opposers argue that the ribbon design is a separable component on these goods
(watches, clocks and lapel pins) which contain an image of the P99 pistol on the face of the
good or the good is in the shape of the P99 pistol, 24 TTABVUE 22, we find that Opposers
failed to establish the ribbon component as an inherently distinct element separate and apart
from WALTHER in these particular uses.
23 The following are licensing partners of Opposer Umarex: Colt, Walther, Browning, Ruger,
Beretta, HK, Uzi, Smith & Wesson, RWS and Magnum Research. Braeutigam testimony, 20
TTABVUE 15-16. Umarex’s brand names include Hammerli, Legends, Legendary, Elite
Force and Combat Zones. Id.
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goods retailers24 offering pistols and rifles also offer watches and/or jewelry
(BassPro.com, Cabela’s.com, GanderMountain.com, SportsAuthority.com, NOR,
Exhibits 27-33, 18 TTABVUE 396-429; NOR, Exhibits 34-37, 41-43, 19 TTABVUE 1-
54, 72-86), and the testimony of Ms. Braeutigam who testified that jewelry and
watches are provided, for the most part, as promotional items by gun manufacturers
(20 TTABVUE 13, 16-19, 21, 35-36, 54).25 Opposers also rely on thirteen third-party
registrations, of which we find nine the most relevant (with three registrants owning
two registrations each)26, showing knives or firearms and watches and/or jewelry
registered under the same or related mark.27 (NOR, Exhibits 10-11, 13-17, 19-20, 18
TTABVUE 100-121, 130-167, 176-187). The diversity of goods listed in these third-
party registrations, in addition to firearms or knives and watches or jewelry, lessens

24 For example, Ms. Braeutigam testified that Cabela and BassPro’s focus is “outdoor world,
hunting and outdoor accessories” and sells “everything you can use when going outdoors.”
Braeutigam testimony, 20 TTABVUE 26. Ms. Braeutigam acknowledged that these retailers
sell a lot of products unrelated to Opposers’ goods. Id. at 77-78.
25 The various promotional items or items for purchase (from catalog pages for the years 2000
and 2015 for goods such as hats, shirts, jackets, pistol bags, and range bags) all show use of
the mark as do the knives and handguns. Braeutigam testimony, 20 TTABVUE 35-
45, Exhibits 11-25, 20 TTABVUE 118-137. The catalog pages from 2000 and 2015 do not
display jewelry or watches for purchase. Id., Exhibit 25, at 134-137.
26 Of these registrants, one is the tactical apparel and gear retailer 5.11, the other is the
clothing and outdoor retailer Orvis, both of which offer a wide variety of goods.
27 Opposers also rely on two eBay listings of lapel pins offered by third-party sellers
as evidence of their scope of use of the mark in connection with jewelry. However, there is no
indication in the record that there is any relationship between these third-party sellers and
Opposers. See Belmora LLC v. Bayer Consumer Care AG, 90 USPQ2d 1587, 1591 (TTAB
2009) (third party’s resale of goods does not by itself constitute “use” by petitioner, at least
not without some allegation that the third party was licensed or authorized by petitioner to
“use” petitioner’s alleged mark on petitioner’s behalf).
Opposition No. 91215976
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their probative value. In re Princeton Tectonics Inc., 95 USPQ2d 1509, 1511 (TTAB
2010).
Applicant argues that the parties’ goods are not related because there are “over
200 watch manufacturers”28 (Second NOR, Exhibit 31, 23 TTABVUE 50-58) and
“Opposers have not identified even a single watch or jewelry manufacturer that also
sells guns.” (25 TTABVUE 22). Applicant also argues that there are “at least 85 gun
manufacturers”29 and the overwhelming majority of gun manufacturers do not sell
jewelry. Id. (Second NOR Exhibit 32, 23 TTABVUE 59-62). As to Opposers’ evidence
regarding third-party retailers selling jewelry or watches and firearms, Applicant
argues this evidence does not support relatedness and asserts that Opposers’ witness
acknowledged as much.30 (Braeutigam testimony, 20 TTABVUE 77-78).
Even if a handful of gun manufacturers offer watches or jewelry, the evidence is
sufficient to show that consumers have been exposed to the concept that a single
entity can be the source of both firearms and watches and/or jewelry. While for the
reasons already stated, we do not find the third-party registration evidence or the
evidence of large outdoor retailers and sporting goods retailers offering jewelry,
watches and firearms particularly probative, we find that the Braeutigam testimony

28 As stated, this Wikipedia evidence can be considered only for what it shows on its face.
29 See n.22. Based on her evidence, Applicant calculates less than 6% of the gun
manufacturers offer watches and jewelry. 25 TTABVUE 22.
30 Opposers have argued that Applicant’s goods are within their natural zone of expansion.
However, the expansion of trade doctrine is usually considered in the context of priority
(which is not in question here). Gen. Mills Inc. v. Fage Dairy Processing Indus. SA, 100
USPQ2d 1584, 1598 (TTAB 2011). Moreover, this doctrine requires a specific analysis that
does not appreciably add to our understanding of the relatedness of the goods in this case.
Id.
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and gun manufacturer website evidence together is sufficient to establish that
Applicant’s “jewellery and watches” are related to Opposers’ pistols, guns and rifles.
C. Similarity or dissimilarity of the marks
We consider and compare the appearance, sound, connotation and commercial
impression of the marks in their entireties. Palm Bay Imps. Inc., 73 USPQ2d at 1692.
Walther’s Registration No. 3038946
Since both marks are design marks, not capable of being spoken, the question of
likelihood of confusion must be decided entirely on the basis of the visual similarity
between the respective marks. See In re ATV Network Limited, 552 F.2d 925, 193
USPQ 331, 332 (CCPA 1977). The similarity of design marks is determined by
considering the overall impression created by the marks as a whole rather than by
simply comparing individual features of the marks. Fort James Operating Co. v.
Royal Paper Converting Inc., 83 USPQ2d 1624, 1628 (TTAB 2007) (citing Hupp
Corporation v. AER Corporation, 157 USPQ 537 (TTAB 1968) and In re Joseph
Lieberman and Sons, Inc., 156 USPQ 700 (TTAB 1968)).
In this case, we find the marks are virtually identical, which weighs in favor of
finding a likelihood of confusion.
Umarex’s Registration Nos. 2714985, 2912154, and 303701
We now consider the similarity of Umarex’s marks with Applicant’s
mark. In reaching a conclusion on the issue of likelihood of confusion, there
is nothing improper in stating that, for rational reasons, more or less weight has been
given to a particular feature of a mark, provided the ultimate conclusion rests on a
Opposition No. 91215976
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consideration of the marks in their entireties. In re Nat’l Data Corp., 753 F2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985). See also Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014).
The marks are similar in appearance to the extent they contain an identical ribbon
design. But the marks also are dissimilar in appearance due to the addition of the
term WALTHER to Umarex’s marks. In terms of sound, the marks are dissimilar
because the wording WALTHER in the Umarex marks is verbalized while Applicant’s
mark cannot be verbalized as it is a design mark. Although Opposers contend that
the ribbon design is a significant visual feature of the marks, we find that,
in this instance, the commercial impact of the ribbon design in Umarex’s marks is
similar to a background “carrier” as the ribbon design acts as a “frame” for the word
portion of the mark.31 See In re Benetton Grp. S.p.A., 48 USPQ2d 1214, 1215-16
(TTAB 1998) (“In particular, common geometric shapes such as circles, squares,
rectangles, triangles and ovals, when used as backgrounds for the display of word
marks, are not regarded as trademarks for the goods to which they are applied absent
evidence of distinctiveness of the background design alone.”); Guess? Inc. v.
Nationwide Time Inc., 16 USPQ2d 1804, 1805 (TTAB 1990) (a common, geometric
shape, particularly one serving as a carrier or background design element are not

31 Opposers themselves characterize the ribbon as a “carrier” of the “verbal brand …
WALTHER.” 24 TTABVUE 24. We further note that the ribbon design is commonly used as
a background carrier as reflected by the plain copies of registrations with a ribbon design
element submitted by Applicant with her notice of reliance, although these registrations are
for unrelated goods or services and include additional word and design elements. Second
NOR, Exhibits 41-59, 22 TTABVUE 92-134.
Opposition No. 91215976
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usually considered distinctive). Even where design elements are not considered
background carriers, the literal portion of a mark, rather than any design element, is
generally regarded by consumers as the principal source-signifying portion of the
mark, because it is the wording that purchasers would use to refer to or request the
goods. See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New
Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1134-35 (Fed. Cir.
2015) (marks must be considered as a whole, and while paw print design portion of
opposer’s and applicant’s marks are substantially similar, verbal portion of opposer’s
mark cannot be disregarded as the verbal portion is the one most likely to indicate
origin; there was no evidence in the record to indicate that consumers recognize solely
the paw print portion of the registered mark as being associated with opposer’s
products so as to give it more weight in the analysis); In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012) (citations omitted). (“In the case
of a composite mark containing both words and a design, ‘the verbal portion of the
mark is the one most likely to indicate the origin of the goods to which it is affixed’…
the literal component of brand names … will be spoken when requested by
consumers.”); Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ
390, 395 (Fed. Cir. 1983) (finding GIANT to be the dominant portion of a mark
consisting of the words GIANT HAMBURGERS with a large background design, even
though the wording GIANT HAMBURGERS was disclaimed); In re Appetito
Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987) (if a mark comprises both a word
Opposition No. 91215976
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and a design, then the word is normally accorded greater weight because it would be
used by purchasers to request the goods or services).
In this case, it is the word WALTHER that has source-indicating significance, and
WALTHER is the part of Umarex’s marks that consumers will remember and by
which they will refer to or call for the goods. Because the term WALTHER is so
dominant visually in its placement, and it has no established meaning in the context
of the involved goods, it is the word WALTHER that will create the overall
commercial impression and connotation of the marks.32 Thus, we find that
consumers familiar with Umarex’s marks are more likely to recall, and to
use, the term WALTHER rather than the ribbon design element of the mark to refer
or request the goods. As a result, we find the marks also differ in connotation and
commercial impression. Although both marks contain a nearly identical ribbon
design, we find Applicant’s mark and Umarex’s marks to be more
dissimilar than similar in their overall commercial impression.
D. Trade Channels
Under the third du Pont factor, we consider evidence pertaining to the similarity
or dissimilarity of the trade channels in which and the purchasers to whom
Applicant’s and Opposers’ goods are or would be marketed. Because there are no
limitations or restrictions as to trade channels or classes of purchasers in the

32 Other than Walther’s Registration No. 3038946 for “toy weapons,” there is nothing in the
record which indicates that that the ribbon design alone has been used for source
identification by Opposers for its other products or has been associated by consumers with
Opposers’ other products.
Opposition No. 91215976
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respective identifications of goods in the application and registrations, we presume
that they are marketed in all normal trade channels and to all normal classes of
purchasers for such goods. Packard Press Inc. v. Hewlett- Packard Co., 227 F.3d 1352,
56 USPQ2d 1351, 1357 (Fed. Cir. 2000); Octocom Systems, 16 USPQ2d at 1788. We
further note that the submitted website printouts showing gun manufacturers that
offer firearms as well as watches or jewelry for purchase is evidence that the goods in
Applicant’s and Umarex’s Registration Nos. 2714985 and 303701 can be sold in the
same trade channels to the same classes of consumers, which include ordinary
consumers who are also among the purchasers for both Applicant’s and Opposers’
goods.
E. Number and nature of third-party marks
Applicant contends the weakness of the ribbon design in the pleaded registrations
limits them to a narrow scope of protection that does not encompass Applicant’s mark.
To support the alleged weakness of the pleaded marks, Applicant relies on nineteen
third-party registrations for various goods, none of which include the goods of
Applicant or Opposers. (Second NOR, 22 TTABVUE 4-8; 92-137). Additionally, these
third-party registrations include a ribbon design incorporated with additional
elements i.e., words and/or designs. These third-party registrations are not probative
to demonstrate weakness and shed little or no light on consumer perception of the
ribbon design in relation to Opposers’ goods. See e.g., In re Amtel, Inc., 189 USPQ 58,
60 (TTAB 1975) (citations omitted) (third-party registrations pertaining to unrelated
goods that move in different trade channels do not demonstrate weakness of
Opposition No. 91215976
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“Freeway” in automotive field); In re Vic Boff Health and Fitness Aids, Inc., 189 USPQ
357, 358 (TTAB 1975) (in connection with third-party registrations submitted to show
weakness of cited mark, the Board noted “[w]hile the words “Tru” and “Nature” (or
variations thereof) may each frequently appear as portions of other registered marks,
… this fact does not, per se, establish that TRU-NATURE, the cited mark, as a whole
is basically a “weak” mark in registrant’s field of trade). We find this du Pont factor
neutral.
F. Applicant’s intent in adopting her mark
Opposer argues that “Applicant was and remains keenly aware of the Ribbon
Design’s significance and distinctiveness to Opposers” and that this evidences her
bad faith adoption of the identical mark. However, it is settled that mere prior
knowledge of another’s mark does not establish bad faith adoption. See Sweats
Fashions Inc. v. Pannill Knitting Co., Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed.
Cir. 1987). We do not find this record supports, by a preponderance of the evidence, a
conclusion of bad faith adoption.33 We find the du Pont factor regarding bad faith
adoption is neutral.

33 Opposer relies on Applicant’s responses to requests for admission nos. 5 and 35, wherein
Applicant admitted to knowledge, respectively, of Opposers’ marks and Opposers’ use of the
marks in the United States. We note that Applicant’s interrogatory response no. 1 indicates
that the selection of the mark was made with the assistance of counsel. NOR, Exhibit 62, 19
TTABVUE 146, 147, 149.
Opposition No. 91215976
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G. Balancing the factors
We have carefully considered the testimony and other evidence pertaining to the
relevant du Pont factors, as well as all of the parties’ arguments with respect thereto,
including any evidence and arguments not specifically discussed in this opinion. To
the extent that any other du Pont factors for which no evidence was presented may
be applicable, we treat them as neutral.
Walther’s Registration No. 3038946
We conclude there is no likelihood of confusion as to Walther’s Registration No.
3038946. Although the similarity of the marks and the channels of trade favor
Opposer Walther, these factors are outweighed by the differences in the goods. See
e.g. Han Beauty Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557, 1560
(Fed. Cir. 2001) (“While it must consider each [du Pont] factor for which it has
evidence, the Board may focus its analysis on dispositive factors, such as similarity
of the marks and relatedness of the goods.”); The North Face Apparel Corp. v.
Sanyang Indus. Co., 116 USPQ2d 1217, 1233 (TTAB 2015) (“The difference in the
goods and services is dispositive on the issue of likelihood of confusion.”).
Umarex’s Registration No. 2912154
We conclude that there is no likelihood of confusion as to Umarex’s Registration
No. 2912154. Although the trade channels favor Umarex, we find this factor is
outweighed by dissimilarity of the marks and the dissimilarity of the goods.
Umarex’s Registration Nos. 2714985 and 303701
Opposition No. 91215976
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We conclude that there is no likelihood of confusion as to Umarex’s Registration
Nos. 2714985 and 303701. The marks are dissimilar when viewed in their entireties
and as applied to the respective goods. The goods themselves, although related, are
not closely related and are different in nature. Although the trade channels favor
Umarex, this factor is outweighed by the cumulative differences in the marks and
goods. See In re Mark Thomas, 79 USPQ2d 1021, 1028 (TTAB 2006) (finding no
likelihood of confusion due to cumulative differences in marks, although marks
similar in connotation, and due to differences in the goods, which although related,
were not closely related, but specifically different); In re Akzona Incorporated, 219
USPQ 94, 96 (TTAB 1983) (finding no likelihood of confusion because of dissimilar
marks and the goods, although commercially related, were different in nature).
Accordingly we find no likelihood of confusion with respect to Walther’s and
Umarex’s marks and Applicant’s mark.
Decision: The opposition is sustained on the likelihood of confusion ground as to
Applicant’s WALTHER mark (Board Order of June 22, 2015). The opposition is
sustained on the lack of bona fide intent to use the mark in commerce ground as to
Applicant’s mark and dismissed on the likelihood of confusion ground
as to Applicant’s mark.