Modern Muzzle-loading, Inc.v.Thompson Intellectual Properties, Ltd.

Trademark Trial and Appeal Board

Dec 22, 1999

No. 91108230 (T.T.A.B. Dec. 22, 1999)

Oral Hearing: Paper No. 14
June 22, 1999 GDH/gdh
THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB DEC. 22, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Modern Muzzleloading, Inc.
v.
Thompson Intellectual Properties, Ltd.
_____
Opposition No. 108,230 to application Serial No. 74/734,228
filed on September 25, 1995
_____
Donald H. Zarley, Timothy J. Zarley and Dennis L. Thomte of
Zarley, McKee, Thomte, Voorhees & Sease, P.L.C., for Modern
Muzzleloading, Inc.
Elizabeth D. Chicknavorian and Gerry A. Blodgett of Blodgett &
Blodgett, P.C. for Thompson Intellectual Properties, Ltd.
______
Before Hanak, Hohein and Bucher, Administrative Trademark Judges.
Opinion by Hohein, Administrative Trademark Judge:
An application has been filed by Thompson Intellectual
Properties, Ltd. to register the mark "T/C IS #1 IN
MUZZLELOADING!" for "firearms and firearm accessories, namely,
non-optical and non-telescopic gun sights; shotgun wads; ball
patches; balls; bullets and moulds therefor; loading implements,
namely, powder measures, starters, ramrods and cappers; cleaning
and maintenance products for firearms, namely, rods, brushes,
cleaning patches, pull-throughs, closer-cups, shell extractors,
and decappers; firearm cleaning and maintenance kits comprised of
Opposition No. 108,230
2
rods, brushes, ball patches, wrenches, solvents, cleaners,
lubricants, and cleaning patches, sold as a unit; ball
dischargers and sabots; and carrying devices for firearms,
namely, holsters, pouches and sling straps".1
Registration has been opposed by Modern Muzzleloading,
Inc. on the ground that opposer "has for over two years
manufactured, advertised and sold firearms and firearm
accessories under its well-known brand and trademark ’#1 IN
MUZZLELOADING’"; that, in particular, opposer "has prominently
used its trademark ’#1 IN MUZZLELOADING’ in connection with the
manufacturing, sale, and advertising of muzzleloading firearms
prior to the filing of the application herein opposed and has not
abandoned said usage"; that such mark "has been in continuous use
[by opposer] since prior to the filing date of Applicant’s mark";
that opposer is the owner of an application, Ser. No. 75/038,812,
for federal registration thereof which it filed on December 29,
1995; that, in the prosecution thereof, "Applicant’s mark is
currently being cited against Opposer’s mark" as a bar to
registration; and that applicant’s mark, when used in connection
with applicant’s products, so resembles opposer’s mark for its
goods as to be likely to cause confusion, mistake or deception.
Applicant, in its answer, has denied the salient
allegations of the opposition and has alleged as affirmative
defenses that, inter alia, "Opposer’s mark is merely descriptive,
and therefore creates no rights for Opposer."

1 Ser. No. 74/734,228, filed on September 25, 1995, which alleges a
bona fide intention to use the mark in commerce. The phrase "#1 IN
MUZZLELOADING" is disclaimed.
Opposition No. 108,230
3
The record consists of the pleadings; the file of the
opposed application; and, as opposer’s case-in-chief, the
testimony, with exhibits, of Bruce Evan Watley, who is marketing
manager for opposer. Applicant, however, did not take testimony
or otherwise introduce any evidence in its behalf. Only opposer
filed a brief and attended the oral hearing held at the Board.
The only real issue to be determined herein is which
party has priority of use of its mark. Clearly, applicant’s mark
"T/C IS #1 IN MUZZLELOADING!," if used in connection with
"firearms and firearm accessories," is so substantially similar
in sound, appearance, connotation and overall commercial
impression to opposer’s mark "#1 IN MUZZLELOADING" for firearms
and firearm accessories that the contemporaneous use thereof in
connection with legally identical goods would be likely to cause
confusion as to source or sponsorship.
According to the record, opposer "makes and sells ...
muzzleloading rifles and accessories." (Watley dep. at 11.)
Opposer, which is also known to consumers by the trade name
"Knight Rifles," has utilized the expression "#1 IN
MUZZLELOADING" to convey to those in the marketplace that it "is
on the cutting edge and that we are leading the muzzleloading
industry". (Id. at 12.) Specifically, around June 22, 1994,
opposer and its advertising agency, the LaSalle Group, commenced
development of advertising materials utilizing such a theme. By
August 19, 1994, opposer had developed clip art for advertising
its goods which featured a new logo incorporating the slogan "#1

Opposition No. 108,230
4
IN MUZZLELOADING". Concept ads incorporating such expression
were subsequently developed by September 24, 1994 and advertising
copy including such phrase was finalized for use in opposer’s
1995 catalog by October 12, 1994.
Opposer first used the slogan "#1 IN MUZZLELOADING"
during the week of November 20, 1994, when its 1995 catalog was
displayed and distributed to between 300 and 400 people who,
along with representatives from opposer and applicant, attended
the National Association of Sporting Goods Wholesalers ("NASGW")
trade show. In particular, opposer’s witness, Mr. Watley,
remembers that a representative of applicant, Jim Smith, was
handed a copy of opposer’s 1995 catalog, which prominently
featured the slogan "#1 IN MUZZLELOADING" on the front cover
thereof, while attending the NASGW show. By late in 1994,
opposer had run an ad featuring such slogan in the January 1995
editions of the dealer publications Straight Shooting and Fishing
Tackle News. The ad played upon the theme of "#1 IN
MUZZLELOADING" by referring to Knight Rifles as "YOUR #1 MONEY
GUN" and "your #1 choice in muzzleloading profits." (Opposer’s
Ex. 12.) Another ad featuring the slogan "#1 IN MUZZLELOADING"
appeared in the Shot Show Directory, a trade show guide which was
published in January 1995. Such ad, according to Mr. Watley,
"was also blown up ... to a large transparency which was
displayed prominently at our shot show booth" and was seen by
"thousands" of attendees, including representatives of applicant.
(Watley dep. at 28.)
Opposition No. 108,230
5
Opposer, since January 1995, has in addition
continuously used the phrase "#1 IN MUZZLELOADING" on the cover
of the owner’s manual for its muzzleloading rifles. According to
Mr. Watley, such manual is "packaged with every rifle that we
ship". (Id. at 34.) The owner’s manual is "packaged inside the
shipping container so that when the individual opens the rifle
box, they see the rifle, they see the owner’s manual with the
mark on it, [a] video, and an accessory kit." (Id. at 35.)
Opposer has printed "[h]undreds of thousands" of such manuals, of
which approximately 90,000 copies were distributed in 1995, with
between 45,000 to 50,000 of those being distributed during the
period from January 1, 1995 to August 1, 1995.
Opposer has also continuously used its "#1 IN
MUZZLELOADING" slogan on shipping containers for its products
and, since the "early part of 1995," has continuously used such
slogan in connection with its "Value Pack," which "refers to a
clamshell [packaging], where a consumer can purchase a
muzzleloading rifle and all the accessories he needs except for
powder and caps." (Id. at 37-38.) Between 40 to 50 percent of
the rifles made by opposer are sold using its value pack
transparent packaging. In addition, opposer die stamps its
"KNIGHT" logo, which prominently features the slogan "#1 IN
MUZZLELOADING," on the barrel of each of its rifles and has done
so continuously since late February of 1995.
Although confidential, sales of opposer’s rifles under
its "#1 IN MUZZLELOADING" mark were indicated by Mr. Watley to be
in the neighborhood of $20 million in 1995, around $19 million in
Opposition No. 108,230
6
1996 and approximately $21 million in 1997. Opposer’s
advertising and promotional expenditures with respect to such
mark, while also confidential, were stated to be--at a minimum--
in excess of roughly $250,000 annually for the years from 1995
through 1997.
The record contains relatively little information
concerning applicant and its business activities. According to
Mr. Watley, opposer’s earliest knowledge of applicant’s use of
its asserted mark occurred in "August of 1995, where they had an
ad that was displayed in Shooting Times and that bore the mark
T/C is #1 in Muzzleloading." (Id. at 45.) Counsel for opposer
wrote a letter to applicant on August 23, 1995 stating that such
use constituted common law trademark infringement of opposer’s
"#1 IN MUZZLELOADING" mark and requesting that applicant
immediately cease and desist therefrom. Applicant’s response, in
a letter from its attorneys to opposer’s counsel dated September
20, 1995, was an assertion that applicant is the "premier company
in the muzzleloading field" and that opposer "discontinue the
arrogant and deceitful use ... of the slogan ’#1 IN
MUZZLELOADING’." (Opposer’s Ex. 22.) Five days latter, on
September 25, 1995, applicant filed its involved intent-to-use
application.
Furthermore, according to Mr. Watley, applicant has not
only knowingly appropriated from opposer the phrase "#1 IN
MUZZLELOADING," but has also utilized opposer’s value pack
packaging as a prototype for the packaging of applicant’s goods
by substituting its rifle, accessories and header card bearing
Opposition No. 108,230
7
the expression "T/C IS #1 IN MUZZLELOADING" for those utilized by
opposer. Applicant displayed such prototype at the NASGW trade
show held in November 1995. Opposer, however, regards itself as
being perceived by the purchasing public as "the leader when it
comes to muzzleloading technology". (Watley dep. at 66.)
Consumers, according to Mr. Watley, "identify Knight Rifles with
[the mark] #1 in Muzzleloading" due to opposer’s technological
innovations and "a very loyal customer base that looks to us."
(Id. at 65-66.) Mr. Watley, in fact, testified that "[o]ver 50
percent of our consumer purchases are done ... based on
referrals, [that is,] somebody recommending that they buy a
Knight Rifle." (Id. at 66.)
Consequently, in a letter to applicant’s attorneys
dated December 6, 1995, opposer’s counsel noted that applicant’s
September 20, 1995 letter contained no denial that applicant was
the subsequent user of the expression "#1 IN MUZZLELOADING" nor
did it deny that such expression had been adopted by applicant
with knowledge of opposer’s prior use thereof. The letter by
counsel for opposer also pointed out that applicant had copied
opposer’s value pack packaging and otherwise had emulated
opposer’s "trade style." (Opposer’s Ex. 24.)
Thereafter, on December 29, 1995, opposer filed an
application to register the mark "#1 IN MUZZLELOADING" for
muzzleloading firearms, claiming dates of first use of February
20, 1995. Such application, in addition to meeting with a
refusal on the ground of mere descriptiveness, has been held up,
Opposition No. 108,230
8
however, in light of the potential bar to registration presented
by applicant’s earlier filed application.
Turning to the issue of which party has priority of use
of its respective mark, we find that applicant, since it did not
take testimony or otherwise present any evidence in its behalf,
is limited to the September 25, 1995 filing date of its involved
application as the earliest date upon which it can rely for
priority purposes. See, e.g., Lone Star Manufacturing. Co., Inc.
v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368, 369 (CCPA
1974) and Columbia Steel Tank Co. v. Union Tank & Supply Co., 277
F.2d 192, 125 USPQ 406, 407 (CCPA 1960); and Zirco Corp. v.
American Telephone & Telegraph Co., 21 USPQ2d 1542, 1544 (TTAB
1991). Moreover, even if applicant could rely upon its earlier
advertising bearing the phrase "T/C IS #1 IN MUZZLELOADING,"
which opposer reportedly first observed in August of 1995 in an
ad by applicant in Shooting Times, as constituting sufficient use
analogous to trademark use, opposer is still the prior user of
the mark "#1 IN MUZZLELOADING". This is so irrespective of
whether such mark is regarded as suggestive or whether it is a
merely descriptive term which has acquired distinctiveness.
In particular, the record shows that by January of
1995, opposer was prominently displaying the mark "#1 IN
MUZZLELOADING" on the front cover of the owner’s manual packaged
with its rifles and by February of 1995 was die stamping such
mark on the barrels of its rifles. Moreover, by the early part
of 1995, opposer was also using the slogan "#1 IN MUZZLELOADING"
on shipping containers for its products and on its value pack
Opposition No. 108,230
9
packaging for its rifles and accessories. In addition, even if
the slogan "#1 IN MUZZLELOADING," as alleged by applicant in its
affirmative defense, were otherwise to be regarded as merely
descriptive of opposer’s firearms and related goods, in that (as
contended by an Examining Attorney in the first office action
issued in connection with opposer’s application) the mark is
laudatory since it merely touts opposer’s goods as being the best
or finest muzzleloading firearms, the record establishes that
opposer rather than applicant has priority of acquired
distinctiveness.2 Specifically, in view of opposer’s continuous
use, in what plainly is a niche market, of the slogan "#1 IN
MUZZLELOADING" as a mark for its goods since at least as early as
January of 1995; its sales of hundreds of thousands of rifles
(and their associated owner’s manuals) in the amount of
approximately $60 million over a three year period; and its
advertising expenditures during such period of around $250,000
annually, it is clear that the slogan has acquired
distinctiveness as indicative of opposer as the source of its
muzzleloading rifles and their accessories. Thus, in either
instance, we agree with opposer that it has established priority

2 As pointed out by the Board in Perma Ceram Enterprises Inc. v. Preco
Industries Ltd., 23 USPQ2d 1134, 1138 (TTAB 1992):
[T]he controlling law ... is that where the mark
relied upon by a plaintiff in support of its priority of
use and likelihood of confusion claim is ... descriptive
..., then the plaintiff must establish priority of acquired
distinctiveness. As noted above, the priority contest ...
is not solely one of who used the mark first
chronologically--rather, the test is which party first
achieved secondary meaning in its mark [or the merely
descriptive portion thereof]. See: J. T. McCarthy,
Trademarks and Unfair Competition, Section 16:12 (2d ed.
1984). ....
Opposition No. 108,230
10
in that it is the first user of its mark and such mark has
acquired distinctiveness.
We also concur with opposer that, upon consideration of
the pertinent factors set forth in In re E. I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973), for
determining whether a likelihood of confusion exists, confusion
as to the source or sponsorship of the parties’ products is
likely. Here, not only are the respective goods of the parties
legally identical, and thus such products would be sold in the
same channels of trade to the same classes of customers, but when
considered in their entireties, applicant’s mark "T/C IS #1 IN
MUZZLELOADING!" is so substantially similar, as noted earlier, in
sound, appearance, connotation and overall commercial impression
to opposer’s mark "#1 IN MUZZLELOADING" as to be likely to cause
confusion.
Our conclusion in this regard is bolstered by the fact
that the record reveals that applicant has slavishly copied
opposer’s marketing practices, including using opposer’s own
value pack packaging with only a change in the header card and
contents to reflect applicant’s mark and goods, thereby
evidencing its intent to create a likelihood of confusion. See,
e.g., Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 2
USPQ2d 1677, 1680 (2d Cir. 1987) ["Intentional copying gives rise
to a presumption of a likelihood of confusion"]; Perfect Fit
Industries, Inc. v. Acme Quilting Co., Inc., 618 F.2d 950, 205
USPQ 297, 301 (2d Cir. 1980), cert. denied, 459 U.S. 832 (1982)
["If there was intentional copying the second comer will be
Opposition No. 108,230
11
presumed to have intended to create a confusing similarity"]; and
Jolly Good Industries Inc. v. Elegra Inc., 9 USPQ2d 1534, 1538
(S.D.N.Y. 1988) ["In any event, it is by now axiomatic that
intentional copying gives rise to a presumption of a likelihood
of confusion"].
Decision: The opposition is sustained and registration
to applicant is refused.
E. W. Hanak
G. D. Hohein
D. E. Bucher
Administrative Trademark Judges,
Trademark Trial and Appeal Board