Sierra On-Line, Inc.v.Sierra Club

Trademark Trial and Appeal Board

Dec 22, 1999

No. 91096402 (T.T.A.B. Dec. 22, 1999)

Paper No.41
HRW
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
______
Sierra On-Line, Inc.
v.
Sierra Club
_____
Opposition No. 96,402
to application Serial No. 74/392,967
filed on May 21, 1993
_____
David A. Fanning and Walter W. Karnstein of Kolisch,
Hartwell, Dickinson, McCormack & Heuser for Sierra
On-Line, Inc.
Jonathan S. O’Donnell of Mandel Buder & Verges
for Sierra Club
______
Before Simms, Hanak and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Sierra Club filed, on May 21, 1993, an intent-to-use
application to register the mark SIERRA CLUB for “computer
programs.”1 An amendment to allege use was filed April 20,
1994, and subsequently accepted by the Office, in which the
Opposition No. 96,402
2
goods were identified as “computer programs for use in
screen saving applications.” The mark was published for
opposition on November 8, 1994 with the goods being
inadvertently, and incorrectly, identified as “computer
programs.”
Sierra On-Line, Inc. filed an opposition to
registration of the mark on two grounds, prior use and the
likelihood of confusion under Section 2(d) and failure of
applicant to describe its goods with the particularity
required by 15 USC §1051 and 37 CFR §2.33.
Before proceeding any further, we must set the record
straight as to the identification of goods presently in
effect in the application. The application as filed set
forth the goods as “computer programs.” After the Examining
Attorney found this identification to be unacceptable as
being indefinite, applicant offered to amend the
identification to “computer programs in the field of screen
savers” or “computer programs for screen savers,” but the
Examining Attorney would not accept these identifications
and made his refusal of the identification of goods final on
February 18, 1994. The amendment to allege use was then
filed on April 20, 1994 with the goods being identified as
“computer programs for use in screen saving applications.”
The amendment to allege use was accepted and the application

1 Serial No. 74/392,967, filed May 21, 1993, based on an
Opposition No. 96,402
3
approved for publication. We assume that the amended
identification of goods was found to be satisfactory by the
Examining Attorney, inasmuch as the final refusal was
withdrawn.
By an apparently inadvertent error, the amended
identification of goods was never entered in the Office TRAM
system and the mark was published for opposition with the
original unacceptable identification of the goods as
“computer programs.” Opposer has based its opposition, in
part, on the indefinite nature of this original
identification of goods. Applicant, for reasons not known,
has failed to point out that it had amended the
identification of goods in its amendment to allege use. The
trial should have proceeded on the basis of the amended
identification of goods. Even though this was not the case,
our decision is necessarily based on the goods being
identified as “computer programs for use in screen saving
applications.” Opposer’s opposition to registration on the
ground that the identification of goods as “computer
programs” as indefinite is moot and will be given no further
consideration.
Accordingly, we have confined our attention to the
allegations in the notice of opposition directed to priority
and likelihood of confusion. As such, opposer alleges that

allegation of a bona fide intention to use the mark in commerce.
Opposition No. 96,402
4
is has been engaged in making and selling entertainment
software, including screen savers and computer games,
educational software, and interactive software for many
years; that it is the owner of registrations for the marks
SIERRA and design2 and SIERRA DISCOVERY for computer game
programs;3 that it also owns the mark SIERRA for both
computer game and entertainment programs and computer
educational programs, which is the subject of a pending
application with a claimed first use date of May 31, 1984;4
that it has common law rights in the mark SIERRA for screen
savers, with use thereof since at least as early as October
8, 1992; and that applicant’s use of the mark SIERRA CLUB on
its goods is likely to cause confusion.
Applicant, in its answer, has denied the salient
allegations of the notice of opposition.
The Record

2 Reg. No. 1,386,598, issued March 18, 1986, for the mark
for “prerecorded computer programs for use in business and
educational applications” in Class 9 and “computer game
programs recorded on magnetic disks and tapes and on cartridges
and ROMs” in Class 28. Sections 8 & 15 affidavits accepted
and acknowledged, respectively.
3 Reg. No. 1,788,288, issued August 17, 1993, for the mark SIERRA
DISCOVERY for “computer game programs on floppy discs and CD-
ROMs.”
4 Serial No. 74/494,166, filed February 23, 1994.
Opposition No. 96,402
5
The record consists of the file of the involved
application; opposer’s trial testimony depositions, with
exhibits, of John Williams, a long-time employee of opposer,
and of Peter Beren, executive publisher and former licensing
director of applicant, and Catherine Sigmon, current
licensing director of applicant; opposer’s first notice of
reliance upon status and title copies of opposer’s pleaded
registrations and of Reg. No. 1,703,915,5 applicant’s
responses to opposer’s interrogatories and requests for
admission, several publications (Exhibits 5-9)6 and copies
of applications Serial Nos. 74/494,166 and 74/642,868 filed
by opposer; opposer’s second notice of reliance upon copies
of the files of its pending applications, both of which

5 Reg. No. 1,703, 915, issued July 28, 1992, for the mark THE
SIERRA NETWORK for “computer services; namely, providing on-line
access to remote users of entertainment and games applications
programs and providing interconnect services among remote users.”
This registration was cancelled under Section 8 on February 2,
1999.
6 Applicant’s objections to these exhibits, first raised in its
brief, on the grounds that opposer did not explain the relevance
thereof in its brief are not well taken. Opposer described the
relevance of the material in its notice of reliance, as required
under Trademark Rule 2.122(e). Applicant’s objection to the
reference by opposer in its brief to deposition testimony in too
general terms to allow applicant to determine whether opposer is
relying upon testimony objected to by applicant is also not well
taken. In order to preserve these objections, applicant was
required to readdress the objections in its brief, which it has
not done. See TBMP § 718.04. Furthermore, opposer’s references
to testimony are clearly specific, in that both pages and lines
of testimony are given.
Opposition No. 96,402
6
currently stand suspended, and an article from Publishers
Weekly, August 23, 1993.7
Both parties have filed briefs, and opposer a reply
brief, but an oral hearing was not requested.8
John Williams, who was with opposer when it was formed
as On-Line Systems, described the adoption by opposer of the
Sierra designation in the early 1980’s, after moving to a
location in the Sierra Nevada mountain chain, first changing
its name to Sierra On-Line and later using the designation
Sierra alone. Williams testified that opposer had used its
SIERRA mark on software products since the early 1980’s, or
at least by 1984, originally with game products but later
broadening use to other products including educational and
productivity software and screen savers. He specifically
testified that opposer has used its SIERRA mark on computer

7 Applicant has filed a notice of reliance upon certain portions
of the depositions of Cathy Sigmon and John Williams. Inasmuch
as testimony depositions automatically constitute part of the
evidentiary record for all purposes, the filing of a notice of
reliance upon certain portions was unnecessary.
8 Opposer, on October 5, 1998, filed a motion to strike
applicant’s brief, on the basis of being untimely. Opposer
correctly stated that applicant’s brief was due no later than
thirty days after the due date of opposer’s brief, the latter
date being August 21, 1998. Applicant did not file its brief
until September 28, 1998. Although applicant argued, in
response, that its brief was due thirty five days after service
of opposer’s brief, applicant was in error. Its brief was due
September 21, 1998 and thus was late. Nonetheless, since it is
in the interests of the Board to have both parties brief the
issues which it must decide, opposer’s motion to strike is
denied. Applicant’s brief has been considered. Opposer’s
alternative request to extend the time to file a reply brief is
granted and the reply brief bearing a certificate of mailing date
of October 13, 1998 has also been considered.
Opposition No. 96,402
7
screen saver programs since 1992 and identified a copy of
the packaging for a Johnny Castway screen saver bearing
opposer’s mark (Exhibit 6). Opposer’s computer programs
were described as being sold at retail outlets including
electronics stores, software stores, computer retailers, and
large warehouse stores such as Costco, and through mail
order sales and the Internet. The estimated prices for the
software range from $5 to $79. He testified to sales since
1984 of computer programs bearing the SIERRA mark in the
tens of millions, with an estimated market share in the last
four to six years of around 10% in the entertainment
category. He stated that he was not aware of anyone else,
other than applicant, using the term Sierra in connection
with educational or entertainment computer programs.
Catherine Sigmon, the licensing director for applicant
at the time of deposition, testified that applicant’s entry
into the computer software field was its licensing agreement
with Microsoft for a screen saver program to be sold under
the SIERRA CLUB mark. This software was first available in
September 1993 (Exhibit 3), but sales were not very
successful and the licensing agreement with Microsoft was
allowed to expire as of January 1, 1997. She testified that
applicant had also licensed its mark for use with other
computer programs, including an agreement with GeoTrek for
an electronic calendar and trail and camping planning
Opposition No. 96,402
8
program and one with InterOptica for educational software,
but the latter one had been terminated prior to March 1996.
She confirmed that any computer programs sold by applicant
under its mark would be by licensing agreements with others.
She identified a copy of an e-mail communication which had
been produced by applicant during discovery as evidence of a
known incident of confusion, this communication describing
the purchase by the sender of a game program bearing
opposer’s mark thinking it was a Sierra Club product.
Peter Beren, the prior licensing director of applicant,
stated that he did not recall any programs sold by Microsoft
or other licensees prior to September 20, 1993, which was in
accord with applicant’s answer to Request for Admission No.
2, in which applicant admitted that Microsoft did not sell
computer programs identified by the mark SIERRA CLUB prior
to September 20, 1993. He testified that InterOptica
licensed the SIERRA CLUB mark for an educational software
consisting of a series of CD-ROMS and disks, but he was not
aware of any release of the product publicly prior to
November 4, 1993. He stated that InterOptica was no longer
in existence and any existing inventory of the software was
simply sold off. He testified that the only present
licensing agreement was with GeoTrek.
The Opposition
Opposition No. 96,402
9
With respect to priority, opposer’s submission of a
status and title copy of its pleaded Registration No.
1,386,598 for the mark
is sufficient to prove ownership of this registration and
thus to establish priority for opposer as to this mark when
used in connection with the goods identified in the
registration.9 See King Candy Co., Inc. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Insofar as opposer’s common law rights in the mark SIERRA
alone are concerned, both for use with screen savers and
entertainment and educational software, we must look to the
evidence of record.
Opposer has established by this evidence that it was
using its SIERRA mark in connection with screen savers by
1992 (Williams deposition p.20 and Exhibit 6). While
applicant insists that the packaging shows use only of the
mark SIERRA in connection with the mountaintop design, and
that opposer’s rights are so limited, we do not agree.

9 Although opposer also submitted status and title copies of Reg.
No. 1,703,915, as previously noted, this registration has been
cancelled and accordingly cannot be relied upon by opposer.
Similarly, although a status and title copy of Reg. No. 1,788,288
has been submitted, there is no indication thereon that a Section
8 affidavit has been filed. Office records also do not show the
filing of such an affidavit as of this date, although the
affidavit was due by August 17, 1999. Accordingly, we have not
given consideration to this registration either or to any of
opposer’s arguments with respect to ownership of a family of
marks.
Opposition No. 96,402
10
Although many of opposer’s demonstrated uses of the term
SIERRA for all varieties of its software are in close
proximity to the mountaintop design, we are convinced that
the word SIERRA functions as a mark in itself, even when
used in this manner. The word SIERRA creates a separate and
distinct commercial impression, even if accompanied by the
mountaintop design, which varies in position from the left
of the word, above the word, or farther in distance from the
word.10 Accordingly, we find that opposer has established
use of the mark SIERRA at least as early as 1992 for screen
savers and as early as 1984 for computer game programs
(Exhibits 9 and 10). This is clearly prior to any use by
applicant of its mark SIERRA CLUB for computer programs (or
the filing date of its application), and more particularly
for screen saver programs, which were not introduced by its
licensee Microsoft until at least September 20, 1993.
Thus, we turn to the issue of likelihood of confusion
and to those factors which are most relevant to the
circumstances at hand. See In re E.I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
The goods of the parties are virtually identical.
Although opposer has established use of its SIERRA mark for

10 We note that the Examining Attorney found the specimens in both
of opposer’s pending applications for the mark SIERRA
acceptable, although both showed use of the word SIERRA in close
proximity to the mountaintop design.
Opposition No. 96,402
11
a wide variety of computer programs, screen savers are
specifically included therein. Applicant is limited,
however, by its amended identification of goods to screen
saver programs, and any evidence of use of its SIERRA CLUB
mark on other types of computer programs is irrelevant.11
See Canadian Imperial Bank of Commerce v. Wells Fargo bank,
811 F.2d 1490, 1 USPQ 1813 (Fed. Cir. 1987).
Because of this identity of goods, the channels of
trade and potential purchasers must be considered to be the
same. There is also evidence of record that licensee
Microsoft sold the SIERRA CLUB screen savers in software
stores and computer superstores, the same type of retail
outlets in which opposer sells its various computer
programs. In addition, Mr. Williams testified that
opposer’s software ranges in price from $5 to $79, whereas
Ms. Sigmon testified that applicant’s screen savers were
originally priced at $29.95 but later dropped as low as
$21.99. Thus, the goods involved here must be considered as
impulse items, purchased without any great amount of
deliberation by unsophisticated purchasers. All of these

11 We note that although the issue of abandonment was not tried
herein, the evidence indicates that applicant’s screen savers are
no longer being sold. Thus, if any appeal of our decision is
made, and if our decision is reversed, applicant’s application
should be remanded to the Examining Attorney for the purpose of
obtaining information as to present use of the mark in connection
with screen savers.
Opposition No. 96,402
12
factors, identity of channels of trade, of type of purchaser
and of type of purchase weigh in opposer’s favor.
Accordingly, a key factor is the similarity or
dissimilarity of opposer’s mark SIERRA and applicant’s mark
SIERRA CLUB. It is well established that in general the
greater the similarity of the goods, the lesser the degree
of similarity of the marks necessary to support a holding of
likelihood of confusion. See Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698
(Fed. Cir. 1992).
Here opposer argues that SIERRA is the dominant portion
of each mark, the only difference being the addition of the
descriptive term CLUB by applicant. Applicant, on the other
hand, insists that the marks must be considered in their
entireties, with the respective compound marks being SIERRA
and mountaintop design and SIERRA CLUB.
As previously discussed, we find opposer entitled to
rely upon use of the mark SIERRA alone, separate from the
design which forms a part of its registered mark.
Furthermore, even if the word SIERRA were considered
inseparable from the design feature, it is well established
that there is nothing improper in giving more or less weight
to a particular feature of a mark, In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). When
the word portion, rather than the design feature, is more
Opposition No. 96,402
13
likely to be remembered and relied upon by purchasers in
calling for the goods, the word portion is entitled to be
given more weight. See Ceccato v. Manifattura Lane Gaetano
Marzotto & Figli S.p. A., 32 USPQ2d 1192 (TTAB 1994). Here
the word SIERRA clearly dominates opposer’s mark and would
be used in referring to opposer’s goods. If anything, the
mountaintop design serves to reinforce the word portion of
the mark, the mountaintop being described by John Williams
as a depiction of Half Dome in Yosemite National Park, while
the word SIERRA was adopted by opposer as a reference to the
Sierra Nevada chain of mountains.
As such, we find the marks SIERRA and SIERRA CLUB
create very similar overall commercial impressions. Both
are dominated by the same word SIERRA and both contain the
same reference to the Sierra Nevada mountains. Applicant’s
mark may readily be shortened to SIERRA; in fact, applicant
has pointed out that it owns a registration for the mark
SIERRA for its magazine. Applicant’s argument that it is
the only party which is entitled to rely upon use of the
mark SIERRA alone simply emphasizes the similarity in
commercial impressions between its mark and opposer’s SIERRA
mark.12

12 Specifically, applicant argues in its brief that
SIERRA CLUB is the only entity that has used the mark
SIERRA alone and SIERRA CLUB has used that mark for more
than 20 years in connection with its magazine.
(Brief, p. 11).
Opposition No. 96,402
14
While applicant argues that SIERRA is a weak mark,
being both geographically descriptive of the Sierra Nevada
range of mountains and a common surname, as well as the
being the subject of several third-party registrations,
applicant has failed to introduce any evidence to support
these arguments. Opposer, on the other hand, has introduced
testimony to the effect that it knows of no other users of
SIERRA in connection with computer programs. Thus, the
absence of evidence of use by others of similar marks for
similar goods also weighs in opposer’s favor.
Opposer further argues that its fame in the
entertainment software industry is another factor in its
favor. The testimony of John Williams is relied upon to
demonstrate that opposer has attained a substantial position
in this market.
In response, applicant once again argues that opposer
is not entitled to rely upon use of the mark SIERRA alone in
its claim of fame and that applicant is in fact the more
established and famous user of the mark SIERRA, having used
it for its magazine for twenty years.
The fame taken into consideration under the du Pont
factors is generally that of the prior mark, or in other
words, the mark of the prior user. Opposer has established

The dissent appears to ignore the fact that applicant has
voluntarily made this reference to its use of the shortened form
SIERRA and in fact claimed rights to the mark SIERRA alone.
Opposition No. 96,402
15
that it is the prior user of the mark SIERRA for computer
software programs. While applicant may be well-known as an
environmental group operating under the mark SIERRA CLUB for
the past 100 years, and opposer has acknowledged as much,
its expansion into the field of computer software was
strictly an auxiliary merchandising venture of recent years.
Even though applicant has used the mark SIERRA for its
magazine, this usage is correlated with its fame as an
environmental group and does not reflect any recognition of
the mark in the computer software field. Opposer is clearly
the more well-known user of the mark SIERRA in the relevant
market. Accordingly, this du Pont factor also weighs in
favor of the likelihood of confusion.13
Finally, the factor of actual confusion must be
considered. The only evidence which has been made of record
is an instance of reverse confusion, opposer’s product being
mistakenly believed to have originated from applicant.14
While applicant argues that this is only a single isolated
incident, we find this to at least provide evidence of the
potential for confusion, if not the normal “forward

13 To the extent that applicant’s mark is famous in its field, and
to the extent that purchasers or users of screen savers would
know of this fame, use of opposer’s SIERRA mark for screen savers
would tend to cause “reverse confusion,” as discussed infra.
14 Contrary to the statements made in the dissent, we find
evidence of at least initial confusion in the e-mail message, in
that the mother stated that she gave her approval to her son’s
selection, after seeing the “familiar word I so lovingly respect
Sierra.”
Opposition No. 96,402
16
confusion” in which applicant’s screen savers would be
likely to be presumed to originate with opposer, at least
the less frequently arising “reverse confusion” in which
opposer’s screen savers and computer games would be
mistakenly associated with applicant. Either type of
confusion falls within the ambit of Section 2(d). See
Hilson Research Inc. v. Society for Human Resource
Management, 27 USPQ2d 1422 (TTAB 1993).
Accordingly, we find the factors which are relevant to
the determination of likelihood of confusion in the present
case weigh in favor of opposer. To the extent that any
doubt may exist, this doubt must also be resolved in favor
of opposer, as the prior user of its SIERRA mark in the
computer screen saver field and against applicant as the
newcomer.15 See Century 21 Real Estate Corp. v. Century
Life of America, supra; and Giant Food, Inc. v. Nation’s
Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir.
1983).

15 We do not share the view voiced by the dissent that the owner
of a famous mark should be allowed to register its mark for goods
in a field far removed from its normal activities, when there is
already a well known user of a highly similar mark in that field.
If the owner of a famous mark does not timely object to a
conflicting mark being used and registered in an unrelated field,
then the owner of that famous mark should not be able to later
expand use of and register its mark for goods or services in that
once unrelated field, if there is in fact a likelihood of
confusion.
Opposition No. 96,402
17
Decision: The opposition is sustained and registration
is refused to applicant.
R. L. Simms
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board