Richard E. Swan

Trademark Trial and Appeal BoardMar 5, 2013

No. 85209952 (T.T.A.B. Mar. 5, 2013)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: March 5, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Richard E. Swan _____ Serial No. 85209952 _____ Cheryl A. Clarkin of Barlow, Josephs & Holmes, Ltd. for Richard E. Swan Colleen Kearney, Trademark Examining Attorney, Law Office 113 (Odette Bonnet, Managing Attorney). _____ Before Zervas, Wellington, and Hightower, Administrative Trademark Judges. Opinion by Hightower, Administrative Trademark Judge: On January 4, 2011, applicant applied to register the mark SPARTAN RAIL in standard character form, with “RAIL” disclaimed, pursuant to Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), for goods ultimately identified as: firearm attachments, namely, modular external rail systems for M-16, M4 and AR15 rifles for use by military and law enforcement professionals in International Class 13.1 1 Application Serial No. 85209952. Serial No. 85209952 2 Registration has been refused on the ground of likelihood of confusion pursuant to Trademark Act Section 2(d), 15 U.S.C. § 1052(d), with the following two registered marks: • SPARTAN GUNWORKS, with “GUNWORKS” disclaimed, for “firearms” in International Class 13;2 and • SPARTAN ASSAULT SYSTEMS, with “ASSAULT SYSTEMS” disclaimed, for: o “vests for use in wearing removable bullet proof panels” in International Class 9, o “nylon ballistic cases for use in carrying weapons and ammunition” in International Class 13, and o “backpacks, bags and pouches which can be attached to nylon ballistic outer carriers” in International Class 18.3 The two cited registrations are owned by different entities. Applicant timely appealed, and briefing is complete. Evidentiary Issue We begin by addressing applicant’s request to enter into the record 24 third- party registrations attached to his reply brief. Applicant first submitted these materials as attachments to a request for remand filed May 22, 2012, after both applicant’s and the examining attorney’s appeal briefs were submitted. Applicant sought remand on the basis that the examining attorney did not timely “comment on the persuasive value of” several third-party registrations submitted by applicant with his request for reconsideration that were not based on use in commerce, but 2 Registration No. 2988217, issued August 23, 2005. On September 23, 2011, registrant’s Sections 8 and 15 combined declaration of use and incontestability was accepted and acknowledged. 3 Registration No. 3669441, issued August 18, 2009. Serial No. 85209952 3 rather issued under Section 66(a) of the Trademark Act, 15 U.S.C. § 1141f(a). That is, the examining attorney did not point out that the proffered third-party registrations were not use-based in her denial of applicant’s request for reconsideration, but did so in her appeal brief. The Board denied applicant’s request to remand for additional evidence on June 28, 2012, finding that “applicant has not shown sufficient cause to warrant a remand of the application.” While we are not convinced that these circumstances warrant suspension and remand, in order to avoid any possible prejudice to applicant based on this unique circumstance, we have considered the third-party registrations attached to applicant’s request for remand and subsequent reply brief.4 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 4 Examples of circumstances that have been found to constitute good cause for a remand for additional evidence are provided in Section 1207.02 of the Trademark Trial and Appeal Board Manual of Procedure (TBMP) (3d ed. rev. 1 2012). In particular, the evidence applicant proffers was not previously unavailable; rather, the basis for the third-party registrations applicant submitted with his request for reconsideration, and thus any attendant limitations on their probative value, was apparent on the face of those records, as distinguished from the circumstance where the manner of entering evidence into the record is at issue, i.e., merely listing third-party registrations rather than attaching copies of them. Serial No. 85209952 4 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 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). In comparing the marks, we are mindful that the test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether they are sufficiently similar in terms of their overall commercial impression so that confusion as to the source of the goods offered under the respective marks is likely to result. Midwestern Pet Foods, Inc., v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); San Fernando Elec. Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d, No. 92-1086 (Fed. Cir. June 5, 1992). Because the similarity or dissimilarity of the marks is determined based on the marks in their entireties, our analysis cannot be predicated on dissecting the Serial No. 85209952 5 marks into their various components; that is, the decision must be based on the entire marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”). On the other hand, different features may be analyzed to determine whether the marks are similar. Price Candy Co. v. Gold Medal Candy Corp., 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955). In fact, 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 consideration of the marks in their entireties. In re Nat’l Data Corp., 224 USPQ at 751. Applicant’s mark is SPARTAN RAIL, with “RAIL” disclaimed. The two cited registrations are for SPARTAN GUNWORKS, with “GUNWORKS” disclaimed, and SPARTAN ASSAULT SYSTEMS, with “ASSAULT SYSTEMS” disclaimed. We find “SPARTAN” to be the dominant element of all three marks, for the following reasons. First, SPARTAN is an arbitrary word and the terms disclaimed from the applied-for mark and each of the cited registrations – RAIL, GUNWORKS, and ASSAULT SYSTEM, respectively – are all at least descriptive of the identified goods. We find that the examining attorney properly accorded less significance to these terms when analyzing the overall similarity of the marks. It is well-settled that descriptive or generic matter may have less significance in creating a mark’s Serial No. 85209952 6 commercial impression and little weight in likelihood of confusion determinations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion.’”) (quoting In re Nat’l Data Corp., 224 USPQ at 752); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s commercial impression”). Second, applicant’s mark and the marks in the cited registrations follow the same structure, sharing the same initial word followed by one or more descriptive or generic terms relating to the goods sold under the arbitrary term SPARTAN. Although applicant is correct in noting that these descriptive terms differ in sight, sound, and meaning, they do not significantly differentiate the marks as a whole. In particular, we find that consumers familiar with SPARTAN GUNWORKS firearms who encounter SPARTAN RAIL firearm attachments are likely to think that applicant’s products are a line extension from the same source as the SPARTAN GUNWORKS products. We draw the same conclusion as to the second cited registration; applicant’s SPARTAN RAIL goods may be assumed to be produced by the source of goods sold under the broader mark SPARTAN ASSAULT SYSTEMS. SPARTAN is the dominant term, and that dominant term is the same, in each mark. We also find that the marks have similar commercial impressions. The marks have the same core connotation through use of the distinctive word Serial No. 85209952 7 SPARTAN, which may be defined as “a person of great courage and self-discipline”5 and is arbitrary in the context of the relevant goods. See, e.g., In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (affirming refusal to register THE DELTA CAFE, with CAFE disclaimed, for restaurant services due to a likelihood of confusion with DELTA for hotel, motel, and restaurant services); Venture Out Props. LLC v. Wynn Resorts Holdings, LLC, 81 USPQ2d 1887, 1892 (TTAB 2007) (finding, inter alia, CABANA BAR & CASINO (with BAR & CASINO disclaimed) for casino services likely to cause confusion with CABANA for hotel services). For all of the reasons discussed above, we find applicant’s mark to be similar in commercial impression to each of the two cited marks. Because both have the same dominant terms as applicant’s mark, they are similar in sight, sound and connotation. B. The Number and Nature of Similar Marks in Use on Similar Goods Applicant has argued, under du Pont factor six, that the term SPARTAN is relatively weak and diluted and entitled to only a narrow scope of protection because it is commonly used in connection with related goods. Applicant has made 5 Merriam-Webster Online Dictionary, retrieved from merriam- webster.com/dictionary/spartan. The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). Serial No. 85209952 8 of record a registration for the mark SPARTAN for explosives,6 as well as a registration for SPARTAN FIREWORKS and design: for consumer fireworks,7 both in International Class 13.8 The examining attorney gave little weight to these registrations, stating that explosives and fireworks are unrelated to the firearms and firearm accessories. In response, applicant submitted the following evidence to demonstrate that the goods are related: • Ten third-party registrations covering firearms and fireworks, explosives, or both, although as previously noted, these registrations issued under Section 66 of the Trademark Act, 15 U.S.C. § 1141f(a).9 • Nineteen additional use-based third-party registrations covering firearms and fireworks, explosives, or both.10 • Printouts from one third-party website offering exploding rifle targets, pyrotechnics, and explosives11 and another site offering inert replica firearms and explosives used for training.12 6 Registration No. 2266902. 7 Registration No. 3589669. 8 Applicant also submitted an approved application for TROJAN SPARTAN for explosives (Serial No. 85372675). Third-party applications have no probative value other than as evidence that the applications were filed. In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1270 n.8 (TTAB 2009). 9 See Request for Reconsideration, Exhibit B. All Class 13 goods had been deleted from an eleventh registration submitted by applicant when the registrant filed its Declaration of Use under Section 71 of the Trademark Act, 15 U.S.C. § 1141k. 10 Request for Remand, Exhibit A. Five other registrations submitted by applicant are for more attenuated goods, such as “explosive cartridges” and “explosive fog signals.” Serial No. 85209952 9 Even assuming applicant has established that explosives and fireworks are related to firearms and accessories therefor, the two third-party registrations incorporating the term SPARTAN submitted by applicant are not evidence that the marks therein have been used at all, let alone used so extensively that consumers have become sufficiently conditioned by their usage that they can distinguish between such marks on the basis of minor differences. The probative value of third- party trademarks depends entirely on their usage. Palm Bay Imports, Inc., 73 USPQ2d at 1693. Where, as here, the record includes no evidence about the extent of third-party uses, the probative value of this evidence is minimal. Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557, 1561 (Fed. Cir. 2001); see also Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992) (“As to strength of a mark, however, registration evidence may not be given any weight.”). “The existence of [third-party] registrations is not evidence of what happens in the market place or that consumers are familiar with them nor should the existence on the register of confusingly similar marks aid an applicant to register another likely to cause confusion, mistake or to deceive.” AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973); see also In re Max Capital Group Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010) (third-party registrations cannot justify registration of another confusingly similar mark). 11 Request for Reconsideration, Exhibit C (www.tannerite.com). 12 Id. (www.inertproducts.com). Applicant also submitted printouts from a third website (www.armsandequipment.com); however, it is not clear that explosives are offered along with firearms through that site. Serial No. 85209952 10 We are not persuaded by applicant’s argument that the coexistence of SPARTAN-formative marks, including the cited registrations for SPARTAN GUNWORKS and SPARTAN ASSAULT SYSTEMS, on the Principal Register shows that the Office “has already inherently recognized” that the term is entitled to only a narrow scope of protection.13 They are only four in number and hardly demonstrate an Office practice regarding the term SPARTAN. Further, each case must be decided on its own merits. We are not privy to the records of the other registrations, and moreover, the determination of the registrability of different marks by a trademark examining attorney cannot control the results in the case now before us. In re Nett Designs Inc., 236 F.3d 139, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if prior registrations had some characteristics similar to [applicant’s] application, the PTO’s allowance of such prior registrations does not bind the Board or this court.”). C. Similarity of the Goods We turn next to the similarity of the goods, the second du Pont factor. We address each of the cited registrations in turn. 1. SPARTAN GUNWORKS Applicant’s goods are “firearm attachments, namely, modular external rail systems for M-16, M4 and AR15 rifles for use by military and law enforcement professionals.” Applicant explains in his briefing, and the evidence submitted by 13 Appeal Brief at 16. Serial No. 85209952 11 the examining attorney indicates, that applicant’s rails are used for mounting other attachments, such as sights, lighting, and laser modules.14 The goods in the cited registration for SPARTAN GUNWORKS are “firearms.” These goods are not limited or restricted in any way. Because applicant’s firearm attachments are intended for use with M-16, M4 and AR15 rifles – that is, firearms – 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 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 seven use-based third- party registrations, each covering both firearms and firearm attachments of a type 14 See Reply Brief at 11; attachments to August 23, 2011 Office action from www.bpoutfitters.net and www.del-ton.com displaying applicant’s product. Serial No. 85209952 12 similar or identical to applicant’s.15 These third-party registrations 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). We find that the goods (firearms) identified in the SPARTAN GUNWORKS registration and the firearm attachments identified in the application are complementary and highly related. 2. SPARTAN ASSAULT SYSTEMS With respect to the second cited registration, we focus our analysis on the Class 13 goods, that is, “nylon ballistic cases for use in carrying weapons and ammunition.” Once again, these goods are not restricted as to the types of weapons and ammunition with which they may be used. Rather, the registration encompasses cases that could be used by military and law enforcement professionals to carry M-16, M4 and AR15 rifles fitted with applicant’s external rail systems (as well as ammunition therefor). Moreover, the examining attorney has submitted six use-based third-party registrations covering both gun cases and firearm attachments of a type similar or identical to applicant’s.16 As previously mentioned, these registrations suggest that 15 See March 28, 2011 Office action (Reg. Nos. 3734014 and 3913361); Response to Request for Reconsideration (“Recon. Response”) (Reg. Nos. 3952973, 4057945, 3734014, 4000784, 4061059). 16 See March 28, 2011 Office action (Reg. No. 3913361); Recon. Response (Reg. Nos. 3728303, 3872396, 3945639, 3995719, 4000784). Serial No. 85209952 13 the identified goods are produced and/or marketed by a single source under a single mark. In this case, in view of the relationship between the goods and their purposes, we find that these third-party registrations support the conclusion that the carrying cases for weapons identified in the second cited registration, for SPARTAN ASSAULT SYSTEMS, are related to applicant’s firearm attachments. D. Similarity of the Channels of Trade We next consider the third du Pont factor, similarity of the channels of trade. The examining attorney has submitted Internet screenshots demonstrating the offer by the same online retailers of both firearms and firearm attachments (including applicant’s),17 as well as sites offering both firearm attachments and gun cases.18 This evidence establishes that the firearm accessories identified in the application travel through the same channels of trade as the firearms and weapons carrying cases identified in the cited registrations. We must consider the goods as they are recited in the application and the cited registrations, respectively. While the application has been limited to goods intended for use by military and law enforcement professionals, there are no restrictions in the two cited registrations, so registrant’s goods may also be offered to military and law enforcement professionals. See Octocom Sys., Inc. v. Houston Computer Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764-65 (TTAB 1986) (“It is well settled 17 See August 23, 2011 final Office action (screenshots from www.del-ton.com); Recon. Response (screenshots from www.hinterlandsoutfitters.com). 18 See August 23, 2011 final Office action (screenshots from www.bpoutfitters.net and www.blackopsllc.com). Serial No. 85209952 14 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.”). In addition, the examining attorney provided screenshots from two websites that appear to offer both firearms and firearm attachments of the same type as applicant’s to the military and police, as well as the general public.19 The record evidence shows that the goods in the application and the cited registration travel through the same trade channels. E. Conditions of Sale and Consumer Sophistication Turning to the final factor relevant here, the fourth du Pont factor considers the conditions under which and buyers to whom sales are made. Applicant argues that consumers of his goods are “military or law enforcement professionals with experience in tactical shooting. They are sophisticated consumers with specific needs looking for specialized mounts for rifles within a highly regulated industry.”20 Applicant argues that consumers also exercise a high degree of care in purchasing the goods in the cited registrations, and that the consumers of both his goods and those in the cited registrations “are highly knowledgeable with respect to the weapons industry.”21 We find that, based on the identification of applicant’s goods, the overlapping potential purchasers, namely, military or law enforcement 19 Recon. Response (screenshots from www.ombeexpress.com and www.hinterlandsoutfitters.com). 20 Appeal Brief at 20. 21 Id. Serial No. 85209952 15 professionals, would exercise a higher degree of care and would likely have some sophistication in the firearms field. Balancing the Factors We have considered all of the evidence of record as it pertains to the relevant du Pont factors. We have carefully weighed applicant’s arguments and evidence, even if not specifically discussed herein, but have not found them persuasive. We have found that the marks make similar commercial impressions and that the goods are related and move in the same channels of trade to the same customers. Although purchasers of the identified products may be sophisticated when it comes to their buying decisions, it is settled that even careful, sophisticated purchasers are not necessarily immune from source confusion, especially in cases such as the instant one involving similar marks and closely related goods. See In re Cynosure, Inc., 90 USPQ2d 1644, 1647 (TTAB 2009); In re Decombe, 9 USPQ2d 1812, 1814-15 (TTAB 1988); Cunningham, 55 USPQ2d at 1846. The similarities between the marks in the application and the cited registrations and the relatedness of the goods sold thereunder outweigh any sophisticated purchasing decision. See HRL Assocs. Inc. v. Weiss Assocs. Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff’d, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks outweigh sophisticated purchasers, careful purchasing decision, and expensive goods). Therefore, we find that applicant’s mark SPARTAN RAIL for “firearm attachments, namely, modular external rail systems for M-16, M4 and AR15 rifles for use by military and law enforcement professionals” is likely to cause confusion with the registered marks SPARTAN GUNWORKS and SPARTAN ASSAULT SYSTEMS. Serial No. 85209952 16 Decision: The examining attorney’s refusal to register applicant’s mark under Section 2(d) of the Trademark Act is affirmed as to both cited registrations.