Cold Steel, Inc.

Trademark Trial and Appeal Board

Jun 18, 1997

EX (T.T.A.B. Jun. 18, 1997)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB
Paper No. 10
EJS
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Cold Steel, Inc.
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Serial No. 74/672,475
_______
Marvin E. Jacobs of Koppel & Jacobs for Cold Steel, Inc.
Theresa K. Kaiser, Trademark Examining Attorney, Law Office
104 (Sidney Moskowitz, Managing Attorney).
_______
Before Seeherman, Quinn and Hohein, Administrative Trademark
Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Cold Steel, Inc. has appealed from the refusal of the
Trademark Examining Attorney to register VAQUERO for sport
knives.1 Registration has been refused pursuant to Section
2(d) of the Trademark Act, 15 U.S.C. 1052(d), on the ground
that applicant's mark, if used on the identified goods, so
resembles the mark RUGER VAQUERO, registered for firearms,
as to be likely to cause confusion or mistake or to deceive.

1 Application Serial No. 74/672,475, filed May 4, 1995 and
asserting a bona fide intention to use the mark in commerce.
Ser No. 74/672,475
2
Applicant and the Examining Attorney have filed briefs,
and applicant filed a reply brief. An oral hearing was not
requested.
Before proceeding to the substantive issue before us,
there are some procedural points which we must consider.
With its appeal brief applicant submitted copies of certain
registrations owned by the registrant, and seven pages of a
Dun & Bradstreet report, although it had submitted only
three pages from this report during the prosecution of the
application. The Examining Attorney objected to our
consideration of the registrations and to the newly
submitted pages of the Dun & Bradstreet report.
The Examining Attorney's objection is well taken.
Trademark Rule 2. 142(d) provides that the record in the
application should be complete prior to the filing of an
appeal. In its reply brief applicant has requested that we
take judicial notice of the registrations or, in the
alternative, remand the application for further examination.
Both of these requests are denied. The Board does not take
judicial notice of registrations that reside in the Patent
and Trademark Office. In re Duofold Inc., 184 USPQ 638
(TTAB 1974). Nor has applicant shown good cause to support
the request for remand; in point of fact, we see no reason
why these registrations and the additional pages of the Dun
Ser No. 74/672,475
3
& Bradstreet report could not have been submitted prior to
the filing of the appeal.2
We turn now to the substantive issue in this appeal.
In any analysis of likelihood of confusion, two key
considerations are the similarity of the goods and the
similarity of the marks. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
With respect to the goods, applicant seeks to register its
mark for sport knives, while the goods identified in the
registration are firearms. Clearly, these goods are
different. However, it is well established that
it is not necessary that the goods of
the parties be similar or competitive,
or even that they move in the same
channels of trade to support a holding
of likelihood of confusion. It is
sufficient that the respective goods of
the parties are related in some manner,
and/or that the conditions and
activities surrounding the marketing of
the goods are such that they would or
could be encountered by the same person
under circumstances that could, because
of the similarity of the marks, give
rise to the mistaken belief that they
originate from the same producer.
In re International Telephone & Telegraph Corp., 197 USPQ
910, 911 (TTAB 1978).
In this case, both applicant's and the registrant's
identified goods may be sold in sporting goods stores. Both
applicant and the Examining Attorney recognize that this

2 We would point out that, even if these materials had been
properly made of record, they would not affect our decision
herein.
Ser No. 74/672,475
4
factor alone may not be sufficient to support a finding of
likelihood of confusion. See Canada Dry Corporation v.
American Home Products Corporation, 175 USPQ 557 (CCPA
1972); In re Precise Imports Corporation, 193 USPQ 794 (TTAB
1976). However, there are additional factors here which
support a finding that the goods are related. In
particular, they are complementary in nature, in that both
firearms and sport knives maybe used by hunters as part of
their sport. As the Board said in In re Precise Imports
Corporation, supra, at 796:
...the relationship between the products
here involved [pocket, hunting and
sporting knives vis-à-vis rifles and
shotguns] extends beyond common
purchasers and common trade channels.
There is a definite relationship between
these goods in that sportsmen engaged in
hunting pursuits would more than likely
carry both a rifle or shotgun and a
hunting or sporting knife and may well
purchase both types of products at the
same time in preparation for their
trips. And, if they were to encounter
both of these products under the same or
similar marks, it is difficult to
perceive how confusion as to the origin
of these goods could be avoided.
Applicant asserts that registrant, in almost 50 years
of operation, has never manufactured nor sold knives, and
that, according to applicant's president, "I would not nor
would anyone active in the sporting knife industry expect
[registrant] to expand into the knife business."
Declaration of Lynn C. Thompson. While those in the
industry may not believe that the registrant is selling
Ser No. 74/672,475
5
knives, the question we must determine is whether the
consumers for knives and firearms would expect both types of
goods to emanate from the same source. In connection with
this, the Examining Attorney has made of record numerous
third-party registrations which show that the registrants
have registered their marks for both firearms and knives.
See, for example, Registration No. 1,473,950 for guns and
rifles and sporting knives; Registration No. 1,407,305 for,
inter alia, custom rifles, shotguns and hand guns and
sportsmen's knives; Registration No. 1,564,199 for, inter
alia, hunting knives and firearms. Although third-party
registrations are not evidence that the marks shown therein
are in commercial use, or that the public is familiar with
them, nevertheless third-party registrations which
individually cover a number of different items and which are
based on use in commerce may have some probative value to
the extent that they serve to suggest that the listed goods
and/or services are of a type which may emanate from a
single source. In re Albert Trostel & Sons Co., 29 USPQ2d
1783 (TTAB 1993).3

3 Some of the third-party registrations submitted by the
Examining Attorney are for house marks which cover a wide
variety of goods, e.g., Registration No. 732,002 for SEARS for
goods ranging from cosmetics to envelopes to musical instruments
to safes to cameras. These registrations have little value in
demonstrating that consumers would regard all the goods listed
therein as being related. Other registrations, also for a wide
range of goods, were issued under the provisions of Section
44(e) of the Trademark Act, based on ownership of a foreign
registration rather than use in commerce. Such registrations
have little persuasive value in showing that the goods may
emanate from a single source.
Ser No. 74/672,475
6
Because applicant's and registrant's identified goods
may be sold in the same channels of trade to the same
purchasers, and be used together in connection with hunting
animals, and because the evidence shows that such goods may
emanate from a single source, we find that applicant's goods
are sufficiently related to the registrant's that, if the
same or a similar mark were used on applicant's sport
knives, confusion would be likely.
This brings us to a consideration of the marks.
Applicant's mark, VAQUERO, is identical to the second word
of the cited mark, RUGER VAQUERO. As applicant points out,
RUGER VAQUERO contains the registrant's house mark along
with the word VAQUERO, while applicant's mark is for the
word VAQUERO alone. However, we do not think that the
inclusion of RUGER in the registered mark distinguishes the
two marks. RUGER, as applicant acknowledges, is a
recognized house mark of the registrant, brief, p. 4. In
the context of the mark RUGER VAQUERO, RUGER will be
perceived by consumers as the house mark, and VAQUERO as the
mark for the product or the product line. These same
consumers, viewing VAQUERO per se on sport knives, are
likely to believe that these knives are another product in
the registrant's VAQUERO product line. The fact that
applicant's mark does not contain the term RUGER is not
likely to make consumers conclude that the knives emanate
from a different source from registrant's firearms; rather,
to the extent that they recognize that the "house mark" is
Ser No. 74/672,475
7
missing, they will simply assume that the registrant has
chosen to use only the product line mark on its goods.
Applicant has asserted that purchasers of sport knives
and firearms are discriminating purchasers. While they may
be knowledgeable about knives and firearms, the marks RUGER
VAQUERO and VAQUERO are so similar that purchasers are
likely to believe that the products emanate from the same
source. As noted previously, the third-party registrations
submitted by the Examining Attorney show that sport knives
and firearms may emanate from a single source.
In reaching the conclusion that confusion is likely, we
have considered all the duPont factors applicable to this
case. In particular, we note applicant's argument that
VAQUERO, which means "cowboy," is suggestive of both
firearms and knives. Applicant has not submitted any
evidence that this term is commonly used or registered for
goods such as those involved herein.4 Further, although
cowboys may use firearms and knives, we do not think this
term is so highly suggestive that the scope of protection
accorded to the registrant's mark would not extend to the
use of VAQUERO on such closely related goods as sporting
knives.

4 On the other hand, we note that the Examining Attorney, in
order to show that the registrant's mark is strong, has referred
to the search statement produced by her search of the Office's
records to show that there were only eight other applications or
registrations in the Office database that contain the word
VAQUERO. Although this search statement is placed in the file
for internal record keeping purposes to show the search strategy
used by the Examining Attorney, the statement was not provided
to the applicant and does not form part of the record.
Ser No. 74/672,475
8
Finally, we note applicant's reliance on W.W.W.
Pharmaceutical Co. Inc. v. The Gillete Co., 984 F.2d 567, 25
USPQ2d 1593 (2d Cir. 1993) aff'g. 808 F. Supp. 1013, 23
USPQ2d 1609 (SDNY 1990). However, because of the
differences in the records between this inter partes case
and the present case, as well as the differences in the
marks themselves (including the degree of suggestiveness of
the common elements), the inter partes case is of little
value in our determination herein. As the Board stated in
In re Cosvetic Labaoratories, Inc., 202 USPQ 842, 844 (TTAB
1979), such cases "are not controlling in our determination
of the issues of likelihood of confusion presented in these
proceedings since it is axiomatic that each case must be
decided on its own particular facts," and, quoting Jaquet-
Girard, S.A. v. Girard Perregaux & Cie, S.A., 165 USPQ 265
(CCPA 1970), "prior decisions on different marks used under
different circumstances are of little value in deciding a
specific issue of likelihood of confusion."
Ser No. 74/672,475
9
Decision: The refusal of registration is affirmed.
E. J. Seeherman
T. J. Quinn
G. D. Hohein
Administrative Trademark Judges
Trademark Trial and Appeal Board