NTA Enterprise, Inc.

Trademark Trial and Appeal BoardApr 18, 2012

No. 77575871 (T.T.A.B. Apr. 18, 2012)

Mailed: April 18, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In NTA Enterprise, Inc. ________ Serial No. 77575871 _______ Blynn Shideler, The BLK Law Group, for NTA Enterprise, Inc. Christine C. Martin, Trademark Examining Attorney,1 Law Office 104 (Chris Doninger, Managing Attorney). _______ Before Kuhlke, Ritchie, and Wolfson, Administrative Trademark Judges. Opinion by Ritchie, Administrative Trademark Judge: NTA Enterprises, Inc. (“applicant”) filed an application to register the mark OAKTREE,2 in standard character format, for goods listed as “fabric sold as an integral component of finished hunting related clothing items, namely, camouflage jackets, camouflage vests, camouflage pants, camouflage overalls, camouflage overall bibs, camouflage hats, camouflage gloves, camouflage socks, and camouflage shirts,” in 1 The file was reassigned to this examining attorney after the appeal was instituted. 2 Serial No. 77575871, filed September 22, 2008, pursuant to Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b), alleging a bona fide intent to use in commerce. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77575871 2 International Class 25. The Trademark Examining Attorney refused registration of applicant’s mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. §1052(d), on the ground that applicant’s mark so resembles the registered mark OAK TREE FARMS and design, as shown below,3, for goods listed as “footwear,” in International Class 25, that when used on or in connection with applicant’s identified goods, it is likely to cause confusion or mistake or to deceive: The examining attorney also issued a refusal to register under Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1) on the ground that the term OAKTREE is merely descriptive of the goods for which applicant seeks registration. Upon final refusal of registration under Sections 2(d) and 2(e)(1), applicant filed a timely appeal. The case was remanded at the request of the examining attorney, and proceedings were then resumed. Both applicant and the examining attorney filed briefs, and applicant filed a reply brief. For the reasons 3 Registration No. 3602489, issued January 20, 2009. Serial No. 77575871 3 discussed herein, the Board affirms the Section 2(d) refusal as well as the Section 2(e)(1) refusal. Likelihood of Confusion We base our determination under Section 2(d) on an analysis of all of the probative evidence of record bearing on a 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 or services. 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. The Marks We consider and compare the appearance, sound, connotation and commercial impression of the marks in their entireties. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. The question is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the Serial No. 77575871 4 marks are sufficiently similar in their entireties that confusion as to the source of the goods or services offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. In re Jack B. Binion, 93 USPQ2d 1531 (TTAB 2009); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Applicant’s mark consists solely of the term “OAKTREE,” in standard character form. The mark in the cited registration also begins with the same word or words “OAK TREE,” and adds the term “FARMS.” Also, the mark in the cited registration includes a design, as follows: However, since the design consists of oak leaves, we find that it serves to emphasize the literal portion of the mark, which is also the portion of the mark that consumers will likely use to call for or refer to the goods. CBS Inc. v. Morrow, 708 F.2d 1579, 1581-82 (Fed. Cir. 1983); In re Dakin’s Miniatures Serial No. 77575871 5 Inc., 59 UPSQ2d 1593, 1596 (TTAB 2001); In re Appetito Provisions Co., Inc., 3 USPQ2d 1553, 1554 (TTAB 1987). We also do not find the term “FARMS” to significantly change the commercial impression of the mark in the cited registration. More specifically, the mark in the cited registration, with the wording therein, gives the commercial impression of an oak tree or trees growing on “farms,” while applicant’s mark, in relation to its “hunting” apparel, gives the commercial impression of an oak tree found in the woods. Nevertheless, both give the connotation and commercial impression of an oak tree. Since it is the first term of the mark that is likely to be impressed upon the consumer, likelihood of confusion has often been found where the entirety of one mark is incorporated within another. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (GASPAR’S ALE and JOSE GASPAR GOLD); Cola- Cola Bottling Co. v. Joseph E. Seagrams & Sons, Inc., 526 F.2d 556 188 USPQ 105 (CCPA 1975) (BENGAL and BENGAL LANCER); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (CCPA 1967) (THE LILLY and LILLI ANN); In re U.S. Shoe Corp., 229 USPQ 707(TTAB 1985) (“CAREER IMAGE” AND “CREST CAREER IMAGES”); In re Riddle, 225 USPQ 630 (TTAB 1985) (“ACCUTUNE” and “RICHARD PETTY’S ACCU TUNE”). Applicant has argued that the term “oaktree” is weak. As we discuss in a later section, the term is indeed merely Serial No. 77575871 6 descriptive of the goods for which applicant seeks registration. However, that analysis is limited to the application before us. Indeed, it is well-established that even the owner of a weak mark is entitled to protection against likelihood of confusion. See Giant Food Inc. v. Roos and Mastacco, Inc., 218 USPQ 521 (TTAB 1982). Applicant submitted at least twenty live registrations purporting to include some form of the term “oaktree” (or oak tree) in the mark. However, none are in International Class 25, as are the goods in both the application and the cited registration. Accordingly, the registrations do not serve to show any clear suggestive meaning of the term “oaktree” (or oak tree) with regard to the goods in the cited registration. Viewing the marks in their entireties, we find that the strong similarities in commercial impression outweigh the differences of the marks as to their sight and sound, and this du Pont factor weighs in favor of finding a likelihood of consumer confusion. The Goods and Channels of Trade Next we consider the similarities or dissimilarities of the goods. We keep in mind that the test is not whether consumers would be likely to confuse the goods, but rather would be likely to be confused into believing that the goods emanate from a single source. San Fernando Electric Mfg. Co. v. JFD Serial No. 77575871 7 Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff'd unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). Applicant’s identification of goods includes “fabric sold as an integral component of finished hunting related clothing items, namely, camouflage jackets, camouflage vests, camouflage pants, camouflage overalls, camouflage overall bibs, camouflage hats, camouflage gloves, camouflage socks, and camouflage shirts,” while the identification of goods in the cited registration is “footwear.” Applicant argues that the goods on which it intends to use its marks are unrelated to those in the cited registration. In particular, applicant asserts that it is selling fabric, while the goods in the cited registration are footwear. The examining attorney, acknowledging that applicant’s goods are “fabric as sold as an integral component of finished hunting related clothing items” has submitted excerpts from websites advertising clothing referencing the fabric from which the clothing is made. The examining attorney included these excerpts from websites that advertise these items alongside footwear. Some examples include the following: Serial No. 77575871 8 1. Cabela’s: Advertising Cabela’s 9” Insulated Pinnacle™ Hunting Boots with GORE-TEX® Scent-Lok® as well as Cabela’s Super Mesh™ Shirts, Pants and Headwear. www.cabelas.com. 2. Bass Pro Shops: Advertising RedHead® XPR GORE-TEX® Pac- Lite® Rain Pants as well as RedHead® GORE-TEX® Hickory Ridge II Non-Insulated Hunting Boots for Men. www.basspro.com. 3. Rocky: Advertising Rocky CornStalker GORE-TEX® Hunting Boots as well as ProHunter Synergy Insulated Pants. www.rockyboots.com. The examining attorney also included copies of at least half a dozen, live, use-based, third party registrations that include both “footwear,” as identified in the cited registration, and “fabric sold as an integral component of finished” clothing items, as identified in the application. Copies of use-based, third-party registrations may serve to suggest that the goods are of a type which may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993). There is nothing in the recital of goods in either the cited registration or the application that limits either registrant’s or applicant’s channels of trade. Squirtco v. Tomy Corporation, 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983). See In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992) (because there are no limitations as to channels of trade or Serial No. 77575871 9 classes of purchasers in either the application or the cited registration, it is presumed that the registration and the application move in all channels of trade normal for those services, and that the services are available to all classes of purchasers for the listed services). In other words, there is nothing that prevents the registrant’s footwear from being sold in the same channels of trade and to the same classes of consumers that purchase applicant’s “fabric sold as integral component of finished hunting related clothing items” (and vice versa). Furthermore, since both “footwear” on the one hand, and applicant’s various types of “hunting related clothing items” on the other may be used as complementary products, the target consumers of both registrant and applicant may overlap. Applicant has argued that “[i]t is the retailers that are buying a fabric line that will be incorporated into the identified clothing items. The individual clothing items will be sold under the retailers branding [sic] to the consumers.” (appl’s brief at 1). Even if we accept that argument, however, the evidence of record shows both that marks for a fabric frequently reach the consumer and that marks for a fabric may be marketed under the same mark as the mark for various clothing items. Furthermore, again accepting applicant’s argument, we cannot dismiss the likelihood of applicant’s goods travelling in the same channels of trade as registrant’s “footwear” to the same Serial No. 77575871 10 wholesale purchasers. Moreover, we must make our determination based on the goods as identified and the ordinary channels of trade for fabric sold as “an integral component of finished hunting related clothing” (emphasis added). Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“[t]he authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed.” [citations omitted]). Since the fabric will be sold as a component of the finished clothing, this would include use of the mark at the retail level such that consumers are exposed to the brand, as shown by the examining attorney’s evidence. Accordingly, we find that these du Pont factors also weigh in favor of finding a likelihood of consumer confusion. Consumer Sophistication Applicant urges us to consider consumer sophistication. To the extent we accept that the overlapping goods may be marketed to more careful purchasers with some advanced knowledge of wholesale apparel purchasing, we expect that with highly similar marks used on similar goods, even a careful, sophisticated Serial No. 77575871 11 consumer of these goods is not likely to note the differences in the marks. Cunningham v. Laser Golf Corp., 222 F.3d 943, 948- 949 (Fed. Cir. 2000). Furthermore, careful purchasers who do notice the difference in the marks will not ascribe it to differences in the source of the goods, but will see the marks as variations of each other, pointing to a single source. Moreover, in making our analysis we must consider the least sophisticated consumer. As discussed above, based on this identification, this would include the general public. Accordingly, this factor weighs in favor of finding a likelihood of confusion. Actual Confusion Applicant argued that there has been no actual confusion despite overlap in the marketplace. We note, however, that the lack of evidence of “actual confusion” carries little weight, especially in an ex parte context. In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003) This is particularly so where, as here, applicant has an intent- to-use application and there has not yet been an opportunity for confusion to occur. Balancing the Factors In summary, we have carefully considered all of the evidence of record pertaining to the du Pont likelihood of confusion factors, as well as applicant’s arguments with respect Serial No. 77575871 12 thereto. We conclude that there is a likelihood of confusion between applicant’s OAKTREE mark for the goods sought to be registered and the registered mark OAK TREE FARMS and design as discussed herein. In making this determination, we resolve doubt, as we must, in favor of the prior registrant. See also In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988). 2(e)(1) Refusal A term is deemed to be merely descriptive of goods or services, within the meaning of Section 2(e)(1), if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). Whether a term is merely descriptive is determined not in the abstract, but in relation to the goods or services for which registration is sought, the context in which it is being used on or in connection with those goods or services, and the possible significance that the term would have to the average purchaser of the goods or services because of the manner of its use. That a term may have other meanings in different contexts is not controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Moreover, it is settled that “[t]he question is not Serial No. 77575871 13 whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them.” In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002); See also In re Patent & Trademark Services Inc., 49 USPQ2d 1537 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American Greetings Corporation, 226 USPQ 365 (TTAB 1985). Applicant does not deny that its “fabric sold as an integral component of finished hunting related clothing items” may be used in the woods, or more specifically, in front of and around oak trees. Applicant also does not deny that its “camouflage” pattern would include pictures of an “oak tree.” In particular, Applicant has admitted: “The fact that imagery that issued to form the composite pattern of the camouflage incorporates modified photographs including selected modified portions of trees including, among others, Oak Trees (selected tree trunks, branch portions and leaves), does not support the examiner’s conclusions. The camouflage pattern is not merely a picture of an Oak Tree.” (emphasis added) January 11, 2010 Response to Office Action We find this to be effectively an admission that, while applicant has an intent-to-use application, applicant’s intended camouflage pattern incorporates images of an oak tree. Also in the record are the following descriptions of third-party Serial No. 77575871 14 camouflage patterns, which demonstrate the incorporation of oak tree patterns: “Oak Leaves Camo Jacket: Pattern: Oak Leaves.” Crcamo.com “Realtree Max-4: The pattern incorporates cattails, millet, milo, corn stalks, sunflowers, oak and maple leaves, cedar and oak limbs, plus a variety of other plant life into the largest camouflage artwork on the market.” www.realtree.com “UltimateCamo’s bark pattern is the ultimate for all season camouflage solution for tree stand hunters and turkey hunters using a tree as your background. Designed by Mother Nature, not an artist.” Ultimatecamo.com These third-party descriptions show that others have also incorporated oak tree patterns in their hunting apparel, touting it as good camouflage for certain types of hunting. Based on the statements made by applicant as well as the evidence from third-parties using oak tree patterns in their hunting camouflage gear, we find the term “oaktree” to be merely descriptive of a function or purpose of the goods that applicant seeks to register in that it describes the intended background of the camouflage as well as the likely pattern of the fabric itself. We find applicant’s argument regarding third-party marks (such as BIGWOODS and NATUREWOODS) registered for camouflage patterns to be inapposite. The Board is not bound by those records, and it is well-established that each case must be decided on its own merits. In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001). Serial No. 77575871 15 We have no doubt that the relevant public will immediately understand the term “oaktree” as conveying information about a feature or function of applicant’s identified goods. Accordingly, the Section 2(e)(1) refusal is also affirmed. Decision: The refusals to register under Section 2(d) and 2(e)(1) are affirmed.