Condor Outdoor Products, Inc.

Trademark Trial and Appeal Board

Dec 26, 2012

No. 76703583 (T.T.A.B. Dec. 26, 2012)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
December 26, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Condor Outdoor Products, Inc.
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Serial No. 76703583
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Edward J. DaRin for Condor Outdoor Products, Inc.

Priscilla Milton, Trademark Examining Attorney, Law Office 110 (Chris A. F.
Pedersen, Managing Attorney).
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Before Seeherman, Holtzman, and Hightower, Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
On June 30, 2010, applicant applied to register the mark CONDOR, in
standard character form, for goods ultimately designated in four classes. Applicant
divided its goods in International Classes 9, 18, and 25 into child application Serial
No. 76979178, which has matured into Registration No. 4061774 and is not before
us on appeal.
The case before us concerns the parent application for “firearm accessories,
namely, holsters, pistol holsters, holster belts, duty belts, shoulder holster
harnesses, leg mounted harnesses, slings for firearms, straps for firearms, covers
Serial No. 76703583
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for firearms, cartridge pouches, packs and carriers, ammunition magazine pouches,
holster and shoulder bags and drag bags for carrying ammunition and firearms,” in
International Class 13.1
The examining attorney refused registration on the ground of a likelihood of
confusion pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), with
the mark CONDOR, registered in standard character form for “firearms” in
International Class 13.2 Applicant timely appealed, and briefing is complete.
Analysis
Our determination under Section 2(d) is based on an analysis of all probative
facts in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The 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.”). We discuss each of the du Pont factors as to
which applicant or the examining attorney submitted argument or evidence. To the

1 Application Serial No. 76703583. The application is based on Section 1(a) of the
Trademark Act and asserts first use and first use in commerce as early as January 2006.
2 Registration No. 3506883, issued September 30, 2008.
Serial No. 76703583
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extent that any other du Pont factors for which no evidence or argument was
presented may nonetheless be applicable, we treat them as neutral.
A. Similarity of the Marks
We turn first to the du Pont likelihood of confusion factor focusing on “‘the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation, and commercial impression.’” Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Cir. 2005) (quoting du Pont, 177 USPQ at 567). Here, applicant seeks to register a
mark identical to that in the cited registration. Both marks consist entirely of the
term CONDOR.
Applicant argues that consumers can distinguish the source of its products
from the source of the goods identified in the cited registration because applicant
secures a tag featuring its Internet address (www.CondorOutdoor.com) and its
registered mark CONDOR and design3 to all of its goods, while registrant appears
to use its corporate name (Stoeger Industries, Inc.) as well as the mark CONDOR in
association with its own goods. However, our likelihood of confusion determination
with respect to the registrability of the applied-for mark must be based solely on the
marks as they are set forth in the application and the registration, respectively. See
Kimberly-Clark Corp. v. H. Douglas Enters., Ltd., 774 F.2d 1144, 227 USPQ 541,
543 (Fed. Cir. 1985); Vornado, Inc. v. Breuer Elec. Mfg. Co., 156 USPQ 340, 342
(CCPA 1968); Hercules Inc. v. Nat’l Starch & Chem. Corp., 223 USPQ 1244, 1248

3 Registration No. 2619371, discussed at Part C infra.
Serial No. 76703583
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(TTAB 1984). “Thus, it is irrelevant to the issue of likelihood of confusion in this
proceeding whether applicant and/or registrant use other words and/or design
elements on their respective [goods].” In re Big Pig, Inc., 81 USPQ2d 1436, 1439
(TTAB 2006).
Applicant’s mark is identical to the cited mark CONDOR. Therefore, the first
du Pont factor strongly supports a conclusion that confusion is likely.
B. Similarity of the Goods and Channels of Trade
We turn next to the similarity of the goods and their channels of trade, the
second and third du Pont factors, respectively. Where identical marks are involved,
as is the case here, the degree of similarity between the goods of the applicant and
the registrant that is required to support a finding of likelihood of confusion
declines. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688-89 (Fed.
Cir. 1993); In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001). It is only
necessary that there be a viable relationship between the respective goods to
support a finding of likelihood of confusion. In re Concordia Int’l Forwarding Corp.,
222 USPQ 355, 356 (TTAB 1983). The issue here, of course, is not whether
purchasers would confuse the goods, but rather whether there is a likelihood of
confusion as to the source of these goods. In re Rexel Inc., 223 USPQ 830, 831
(TTAB 1984).
Applicant’s firearm accessories are intended for use with firearms, which are
the goods in the cited registration; thus, the complementary nature of the goods is
apparent from the identifications themselves. Where the goods at issue have
complementary uses, and therefore are often used together or otherwise purchased
Serial No. 76703583
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by the same purchasers for the same or related purposes, such goods have generally
been found to be sufficiently related such that confusion would be likely if they are
marketed under the same or similar marks. See, e.g., In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (finding bread
and cheese to be related because they are often used in combination, and stating:
“Such complementary use has long been recognized as a relevant consideration in
determining a likelihood of confusion.”); Polo Fashions, Inc. v. La Loren, Inc., 224
USPQ 509, 511 (TTAB 1984) (finding bath sponges and personal products such as
bath oil and soap to be closely related because they are complementary goods that
are likely to be purchased and used together by the same purchasers).
In addition, the examining attorney has submitted 16 use-based third-party
registrations, each covering both firearms and firearm accessories, including, for
example, holsters, bags for firearms, and magazine pouches.4 Although these
registrations are not evidence that the marks shown therein are in use or that the
public is familiar with them, they nonetheless have probative value to the extent
that they serve to suggest that the identified goods are products which are produced
and/or marketed by a single source under a single mark. See In re Davey Prods.
Pty. Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009); In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993). In this case, in view of the obvious
relationship between the goods and their purposes, we find that these third-party
use-based registrations support the conclusion that the goods are related.

4 See final Office action of June 27, 2011.
Serial No. 76703583
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The examining attorney also has submitted screenshots demonstrating the
offer of both firearms and firearm accessories by approximately 19 gun stores and
online retailers,5 as well as 20 third-party registrations for distribution and/or retail
services for both firearms (or firearm parts) and firearm accessories.6 This evidence
establishes that the firearm accessories identified in applicant’s application travel
through the same channels of trade as the firearms identified in the cited
registration.
Applicant argues that any likelihood of confusion is negated because the cited
registration is used only for a limited number of shotguns, and not for all types of
firearms. Reply Brief, unnumbered page 5. In support of this argument, applicant
submitted during prosecution a printout from a website that appears to relate to the
registrant’s goods. However, we are bound by the identification as written in the
registration and cannot limit registrant’s goods, channels of trade, or classes of
customers to what any evidence shows them to be. In re Bercut-Vandervoort & Co.,
229 USPQ 763, 764-65 (TTAB 1986) (“It is well settled that in a proceeding such as
this, the question of likelihood of confusion must be determined by an analysis of
the marks as applied to the goods identified in the application vis-a-vis the goods
recited in the registration, rather than what extrinsic evidence shows those goods to
be.”).
We find that the examining attorney has submitted persuasive evidence
establishing that the respective goods move in the same channels of trade and are

5 See Office action of October 15, 2010 and final Office action of June 27, 2011.
6 See Office action of March 21, 2011.
Serial No. 76703583
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sufficiently complementary or related that source confusion is likely. In our
likelihood of confusion analysis, these findings under the second and third du Pont
factors support a conclusion that confusion is likely.
C. Collateral Attack on the Cited Registration
Finally, applicant argues that it has priority over the cited registration based
on its prior use and registration of the mark CONDOR and design (shown below) for
goods in International Classes 18 and 257:

Applicant argues that, as the senior user, the applied-for firearm accessories are
related to and travel in the same channels of trade as the goods identified in
Registration No. 2619371, and are within applicant’s natural zone of expansion.
See Reply Brief, unnumbered page 6.
It appears to be applicant’s position that, since it already owns a registration
for CONDOR and design, it is entitled to now register the mark CONDOR.
However, the earlier registration is for “storage bags, namely duffel bags, all
purpose sports bags, and travel cargo bags” in Class 18, and various types of leather
boots in Class 25. To the extent that applicant is arguing that its current
application is not likely to cause confusion with the cited registration because the
cited registration was found not likely to cause confusion with applicant’s earlier

7 Registration No. 2619371, issued September 17, 2002 to Spencer W.H. Tien, president of
applicant. The May 4, 2010 assignment to applicant is recorded in the Office Records at
Reel/Frame Numbers 4223/0780.
Serial No. 76703583
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registration, that argument is not persuasive, since the goods in its earlier
registration make no reference to firearm or ammunition carriers, and thus are
manifestly different from the goods in its current application. To the extent that
applicant is arguing that the cited registration should not have issued because it
was likely to cause confusion with applicant’s earlier registration, this allegation
constitutes an impermissible collateral attack on the cited registration. Section 7(b)
of the Trademark Act, 15 U.S.C. § 1057(b), provides that a certificate of registration
on the Principal Register shall be prima facie evidence of the validity of the
registration, of the registrant’s ownership of the mark, and of the registrant’s
exclusive right to use the mark on or in connection with the goods or services
identified in the certificate. During ex parte prosecution, including an ex parte
appeal, an applicant will not be heard on matters that constitute a collateral attack
on the cited registration, including applicant’s claim of priority over the cited mark.
In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); In re
Calgon Corp., 435 F.2d 596, 168 USPQ 278, 280 (CCPA 1971); In re Peebles Inc., 23
USPQ2d 1795, 1797 n.5 (TTAB 1992); see also TMEP § 1207.01(d)(iv) (October
2012). Accordingly, no consideration has been given to applicant’s arguments in
this regard.
Balancing the Factors
We have considered all of the evidence of record as it pertains to the relevant
du Pont factors. We have carefully considered applicant’s arguments and evidence,
even if not specifically discussed herein, but have not found them persuasive. In
view of our findings that the marks are identical and that the goods are related and
Serial No. 76703583
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move in the same channels of trade and to the same customers, we find that
applicant’s mark CONDOR for “firearm accessories, namely, holsters, pistol
holsters, holster belts, duty belts, shoulder holster harnesses, leg mounted
harnesses, slings for firearms, straps for firearms, covers for firearms, cartridge
pouches, packs and carriers, ammunition magazine pouches, holster and shoulder
bags and drag bags for carrying ammunition and firearms” is likely to cause
confusion with the registered mark CONDOR for “firearms.”
Decision: The examining attorney’s refusal to register applicant’s mark
under Section 2(d) of the Trademark Act is affirmed.