Thermal Engineering Corporationv.Rec Tec Industries, LLCDownload PDFTrademark Trial and Appeal BoardJan 9, 2019No. 91225798 (T.T.A.B. Jan. 9, 2019) Copy Citation Mailed: January 9, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Thermal Engineering Corporation v. Rec Tec Industries, LLC _____ Opposition No. 91225798 _____ B. Craig Killough and John William Fletcher of Barnwell Whaley Patterson & Helms, LLC, for Thermal Engineering Corporation. James H. Johnson, Christopher J. Chan, and Ann G. Fort of Eversheds Sutherland (US) LLP, for Rec Tec Industries, LLC. _____ Before Zervas, Greenbaum, and Hightower, Administrative Trademark Judges. Opinion by Hightower, Administrative Trademark Judge: Applicant Rec Tec Industries, LLC seeks registration on the Principal Register of the mark REC TEC GRILLS, in standard characters and with “TEC GRILLS” disclaimed, for the following goods: • Wood pellets being fuel, in International Class 4; • Barbecue grills and grilling accessories, namely, searing grates, grill covers, and customized shelving to be attached to grills, in International Class 11; and This Opinion Is Not a Precedent of the TTAB Opposition No. 91225798 - 2 - • Non-stick grilling mats made of fiberglass-coated mesh, in International Class 27.1 Thermal Engineering Corporation (“Opposer”) opposes registration, asserting priority and a likelihood of confusion under Trademark Act Section 2(d), 15 U.S.C. § 1052(d). Opposer pleaded the following three registrations in its Amended Notice of Opposition (5 TTABVUE): • TEC (in standard characters)2 and 3 for “Barbecue grills; Outdoor cookers for curing and cooking food; Radiant burner units for stoves, ovens and heaters; Commercial cooking, baking, curing and drying ovens; Grill accessories, namely, rotisseries, deep fryers for use with grills, steamers for use with grills, smokers for use with grills and griddles for use with grills,” in International Class 11; and • for “radiant burner units for stoves and heaters” in International Classes 7 and 11.4 Applicant denied the salient allegations in the notice of opposition. I. Evidentiary Objections Applicant submits with its brief three separate appendices, totaling 60 pages with exhibits, moving to strike all of Opposer’s rebuttal evidence as improper rebuttal (or alternatively, portions of the rebuttal testimony), and certain witnesses and all 1 Application Serial No. 86413280 was filed October 2, 2014, alleging first use anywhere and in commerce as of May 6, 2009 pursuant to Trademark Act Section 1(a), 15 U.S.C. § 1051(a). 2 Registration No. 5010811, issued August 2, 2016. 3 Registration No. 4976468, issued June 14, 2016. The description of the mark states: “The mark consists of capital letters ‘TEC’ with a vertical line to the left of the capital letters and a horizontal line underneath the capital letters with a zig zag line on top of the horizontal line.” Color is not claimed as a feature of the mark. 4 Registration No. 750564, issued June 4, 1963; renewed multiple times. Opposition No. 91225798 - 3 - testimony regarding actual confusion for failure to disclose during discovery. 35 TTABVUE 53-113. Opposer opposes the motions. 38-39 TTABVUE. After careful consideration, we deny the motions to strike. Although we have not relied on any of Opposer’s rebuttal evidence in reaching our decision, it specifically pertains to evidence submitted by Applicant and so does not constitute improper rebuttal. With respect to the actual confusion testimony, all of Opposer’s witnesses were identified during discovery as having information about confusion: three in Opposer’s initial disclosures (W.H. “Bill” Best, Rachael Best, and Greig McCully, 35 TTABVUE 69-70) and three more (Christopher Meikrantz, Joseph Kearse, and Edward Scarborough) in Opposer’s second supplemental answer to Applicant’s Interrogatory No. 26, 39 TTABVUE 20-22, which Applicant does not address.5 All of Opposer’s witnesses also were disclosed in Opposer’s pretrial disclosures, see 35 TTABVUE 101-04, but none was disclosed for the first time there. Although Opposer did not supplement its initial disclosures as required, its trial witnesses and the subject of their testimony all were disclosed during discovery. Cf., e.g., Galaxy Metal Gear Inc. v. Direct Access Tech. Inc., 91 USPQ2d 1859, 1861-62 (TTAB 2009) (admitting discovery deposition but noting that better practice is to supplement initial disclosures). We therefore consider Opposer’s testimony for whatever probative value it may have. 5 “Identify each person who has any personal knowledge of any facts tending to support or rebut any of your claims and allegations in this proceeding, including a description of each person’s area of knowledge.” 39 TTABVUE 20. Discovery closed on Sunday, March 12, 2017, and the response was timely served by email on Monday, March 13, 2017. Opposition No. 91225798 - 4 - II. Record The record consists of the pleadings and, without any action by the parties, the file of the involved application. Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1). The record also comprises the evidence summarized below. A. Opposer’s Evidence Opposer made its three pleaded registrations of record pursuant to Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1), by submitting them via current printouts from the USPTO’s Trademark Electronic Search System (TESS) database attached to the Amended Notice of Opposition, 5 TTABVUE 11-13.6 In addition, Opposer filed an Amended Notice of Reliance on the following evidence:7 • Applicant’s responses to Opposer’s interrogatories and admissions in response to certain requests for admission (Exhibits E and G, 19 TTABVUE 22-74).8 • Internet printouts from Opposer’s website (Exhibit I,19 TTABVUE 76-77) and third-party sites selling and reviewing barbecue grills (Exhibits J-M, 19 TTABVUE 78-111). • TESS printouts of third-party registrations consisting of or comprising TEC (Exhibit N, 19 TTABVUE 112-82). Opposer also submitted testimony declarations from the following witnesses: • W.H. “Bill” Best, a shareholder and officer of Opposer, with Exhibits A-X (11 TTABVUE) and Exhibit Y, designated confidential (12 TTABVUE). 6 It was unnecessary for Opposer to resubmit printouts of the subject application and its registrations by notice of reliance. 7 Opposer submitted the Amended Notice of Reliance in response to Applicant’s motion to strike its original notice, and the Board accepted the amended notice. 20 TTABVUE. 8 Denials of requests for admission cannot be submitted by notice of reliance. Trademark Rule 2.120(k)(3), 37 C.F.R. § 2.120(k)(3); see also, e.g., Ayoub, Inc. v. ACS Ayoub Carpet Serv., 118 USPQ2d 1392, 1395 n.9 (TTAB 2016). Opposition No. 91225798 - 5 - • Christopher Meikrantz, general manager of Fireside Outdoor Kitchens & Grills, which sells Opposer’s grills (13 TTABVUE). • Joseph Kearse, who has worked for Opposer and operates a business selling Opposer’s grills online, with Exhibits A-B (14 TTABVUE).9 • Greig McCully, an owner of Fireside Outdoor Kitchens & Grills (15 TTABVUE). • Edward Scarborough, a former employee of Applicant now in sales for Fireside Outdoor Kitchens & Grills (16 TTABVUE). Opposer filed as rebuttal evidence a Second Notice of Reliance on printouts from eBay.com (Exhibit P, 33 TTABVUE 9-19). Opposer also submitted rebuttal declarations from Rachael Kearse Best, Opposer’s co-owner (29 TTABVUE); Mr. McCully (31 TTABVUE); Mr. Best (30 TTABVUE), with Exhibit O; and Mr. Kearse, with Exhibits Q and R (32 TTABVUE). B. Applicant’s Evidence Applicant submitted six Notices of Reliance on the following documents: • TESS printouts and copies of certificates of third-party registrations consisting of or comprising TEC, TEK, or TECH (Notice of Reliance A, 21 TTABVUE). • Internet printouts showing third-party use of TEC-, TEK-, and TECH- formative marks (Notice of Reliance B, 22 TTABVUE). • Internet printouts of definitions and examples of use of the term “tech” (Notice of Reliance C, 23 TTABVUE). • Internet printouts from the websites of the parties and third parties (Notice of Reliance D, 24 TTABVUE). • Printouts of TESS search results (Notice of Reliance E, 25 TTABVUE). • Opposer’s responses to certain of Applicant’s interrogatories and admissions to requests for admission (Notice of Reliance F, 26 TTABVUE). 9 Applicant’s co-owner Ronald L. Cundy testified that Ms. Best is Mr. Kearse’s sister and Mr. Best is Mr. Kearse’s brother-in-law. Cundy Dec. at ¶ 45, 27 TTABVUE 11-12. Opposition No. 91225798 - 6 - Applicant also submitted testimony declarations from its co-owners Ronald L. Cundy (27 TTABVUE), with Exhibits 1-15, and Raymond E. Carnes (28 TTABVUE). III. Opposer’s Standing and Priority Standing is a threshold issue that must be proven by the plaintiff in every inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); see also, e.g., Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1344 (TTAB 2017). Opposer’s standing to oppose registration of Applicant’s mark is established by its pleaded registrations, which the record shows to be valid and subsisting, and owned by Opposer. See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); N.Y. Yankees P’ship v. IET Prods. & Servs., Inc., 114 USPQ2d 1497, 1501 (TTAB 2015). Also, priority is not at issue with respect to the marks and goods identified in Opposer’s pleaded registrations, which are of record. Because Opposer has established its standing and priority as to its pleaded marks, we turn to the question of likelihood of confusion. IV. Likelihood of Confusion Our determination under Trademark Act 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). Opposer bears the burden of proving its claim of Opposition No. 91225798 - 7 - likelihood of confusion by a preponderance of the evidence. Cunningham, 55 USPQ2d at 1848.10 We focus our likelihood of confusion analysis on Opposer’s pleaded mark TEC in standard characters, Registration No. 5010811. If we find that there is a likelihood of confusion between this mark and Applicant’s mark, there is no need for us to consider the likelihood of confusion with Opposer’s other pleaded marks. Conversely, if we find there is no likelihood of confusion with this mark, we would find no likelihood of confusion with Opposer’s other pleaded marks. See In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). Although registration is opposed as to all applied-for goods, Opposer did not address the goods identified in International Class 4 (“wood pellets being fuel”) at all and has not met its burden to prove by a preponderance of the evidence that confusion is likely as to those goods. We dismiss the opposition as to the Class 4 goods. We proceed to consider the goods in the application identified in International Classes 11 and 27, that is, “barbecue grills and grilling accessories, namely, searing grates, grill covers, and customized shelving to be attached to grills” and “non-stick grilling mats made of fiberglass-coated mesh.” We address in turn each of the du Pont factors bearing on our decision for which the parties submitted evidence or argument. 10 Applicant asserted numerous affirmative defenses in its amended answer but, because they were not pursued at trial, they are waived. See, e.g., Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1046 (TTAB 2017). Opposition No. 91225798 - 8 - A. Similarity of the Goods, Customers, and Channels of Trade We begin with the second and third du Pont factors, assessing the similarity or dissimilarity of the parties’ goods and their trade channels. Our decision must be based on the identification of goods in the pleaded registration and subject application. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014). That is because the goods recited in an application determine the scope of the benefit of registration. Id. A likelihood of confusion may be found with respect to a particular class based on any item within the identification for that class. Bond v. Taylor, 119 USPQ2d 1049, 1052-53 (TTAB 2016). Both the subject application and Opposer’s Registration No. 5010811 identify the identical goods “barbecue grills” in International Class 11. With respect to the goods in International Class 27, Opposer argued that “non-stick grilling mats made of fiberglass-coated mesh” are “closely related, if not also legally identical, to goods in Opposer’s registrations and to goods sold in commerce by Opposer under the TEC trademark,”11 but cited no supporting evidence of relatedness. Opposer’s Brief at 7, 34 TTABVUE 13. Although Applicant did not dispute Opposer’s assertion, its Class 27 goods are not legally identical to Opposer’s identified goods.12 Nor do they “fall within the scope of Opposer’s grill accessories, namely, rotisseries, deep fryers for use with grills, steamers for use with grills, smokers for use with grills and 11 Opposer relied on its registrations and did not plead common-law rights in the TEC mark. 12 The presumptions that apply to identical goods are discussed more fully below. Opposition No. 91225798 - 9 - griddles for use with grills.” Id. Nonetheless, we find that Applicant’s grilling mats are inherently closely related and complementary to barbecue grills. Because Applicant’s goods and the goods identified in Opposer’s registration are identical in part, we must presume that those goods – i.e., “barbecue grills” – move in the same channels of trade and are available to the same classes of customers. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1437 (TTAB 2014). The second and third du Pont factors weigh heavily in support of a finding that confusion is likely, and Applicant does not argue otherwise. B. Strength of Opposer’s Mark The fifth du Pont factor is the fame of the prior mark, and the sixth factor is the number and nature of similar marks in use for similar goods or services. They determine the strength of Opposer’s mark. In determining strength of a mark, we consider both inherent strength, based on the nature of the mark itself, and commercial strength or recognition. Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1476 (TTAB 2014); see also In re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual strength (distinctiveness) and its marketplace strength (secondary meaning).”). 1. Conceptual and Commercial Strength Opposer’s mark TEC, derived from Thermal Engineering Corporation, has been used on barbecue grills for 35 years, as discussed below. Opposer also asserts that its mark is famous. A famous mark has extensive public recognition and renown. Bose Opposition No. 91225798 - 10 - Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Kenner Parker Toys Inc. v. Rose Art Indus. Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992). Fame may be measured indirectly by the volume of sales of and advertising expenditures for the goods identified by the mark at issue, “the length of time those indicia of commercial awareness have been evident,” widespread critical assessments and notice by independent sources of the products identified by the marks, as well as the general reputation of the products. Bose, 63 USPQ2d at 1305-06, 1309. Raw numbers alone may be misleading, however. Thus, some context in which to place raw statistics may be necessary, for example, market share or sales or advertising figures for comparable types of goods. Bose, 63 USPQ2d at 1309; see also Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1690 (Fed. Cir. 2018) (“Market share is but one way of contextualizing ad expenditures or sales figures.”). Because of the extreme deference that we accord a famous mark in terms of the wide latitude of legal protection it receives, and the dominant role fame plays in the likelihood of confusion analysis, it is the duty of the party asserting that its mark is famous to clearly prove it. Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012). Opposer submitted evidence that it has used the mark TEC in association with barbeque grills since at least 1983. Declaration of W.H. “Bill” Best at 3 ¶ 12, 11 TTABVUE 4. Although Opposer provided no information regarding its sales, advertising, or market share, it did submit evidence of critical assessment and media coverage. This includes: Opposition No. 91225798 - 11 - • The May 2004 edition of “SmartMoney” magazine positively reviewed and gave a “SmartMoney Award” to a TEC grill. Best Dec. at 7 ¶ 30 & Exhibit S, 11 TTABVUE 8, 49-50; • Hearth and Home Magazine’s 2005 Vesta awards for “Best New Gas Barbeque” and “Best in Show for Outdoor Room Products.” Id. at 7 ¶ 31, 11 TTABVUE 8; • The National Restaurant Association’s 2006 “Kitchen Innovations Award.” Id. at 7 ¶ 32 & Exhibit U, 11 TTABVUE 8, 52; • In June 2006, the show “Modern Marvels” aired an interview with Mr. Best regarding barbeque grills and barbequing for a program titled “BBQ Tech.”13 Id. at 6-7 ¶ 29 & Exhibit R, 11 TTABVUE 7-8, 48; • A “Popular Science Magazine” article in July 2006 featured a TEC grill. Id. at 7 ¶ 33 & Exhibit V, 11 TTABVUE 8, 53; and • Mr. Best was interviewed in a September 2008 article from “Casual Living” magazine titled “Grill innovator never gives up.” Id. at 7 ¶ 34 & Exhibit W, 11 TTABVUE 8, 54-55. In the likelihood of confusion analysis, fame varies along a spectrum from very strong to very weak. Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017). The Board generally considers evidence related to fame of a mark up to the time of trial. See, e.g., ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1250 (TTAB 2015). Here, however, the evidence on which Opposer relies to support its assertion of fame is all at least a decade old, raising a question as to current strength, particularly in the absence of any sales or advertising data. Cf., e.g., Harry Winston, 111 USPQ2d at 1438-40 13 In its brief, Applicant makes assertions regarding this program and lists links to the History Channel and YouTube webpages. Applicant’s Brief at 18 n.2, 35 TTABVUE 26. Links are insufficient to make Internet materials of record. In order for the Board to consider the content of this program, it would need to be submitted on CD-ROM or DVD. See, e.g., In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1195 n.21 (TTAB 2018); Hunter Indus., Inc. v. Toro Co., 110 USPQ2d 1651, 654-55 (TTAB 2014); Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 106.03 (2018). Opposition No. 91225798 - 12 - (finding HARRY WINSTON famous for jewelry on evidence including “‘sales in the billions, advertising and marketing expenditures in the millions, and editorial mentions valued in the millions over an eighty year period’”); Interlogo AG v. Abrams/Gentile Entm’t Inc., 63 USPQ2d 1862, 1864 (TTAB 2002) (finding LEGO famous for toys based on sales exceeding $1 billion and advertising exceeding $100 million, both over a 10-year period, and market studies demonstrating that two- thirds of U.S. households with children aged 14 years and younger owned at least one LEGO toy). As for the conceptual strength of TEC in association with barbeque grills, Opposer submitted testimony that “‘TEC’ is an acronym for Thermal Engineering Corporation, the source of TEC grills.” Best Dec. at 3 ¶ 11, 11 TTABVUE 4. Nevertheless, evidence submitted by both parties indicates that the phonetically identical term “tech” is used descriptively in association with barbeque grills as a shorthand for “technology.” See definitions of “tech” from Dictionary.com including the noun “technology,” Applicant’s Notice of Reliance C, Exhibit C2, 23 TTABVUE 15 (based on the Random House Dictionary (2017); Cundy Dec. at ¶ 7, 27 TTABVUE 3 (stating that Applicant chose “TEC” as part of its corporate name “because it referred to the SMART GRILL TECHNOLOGY incorporated in our grills and rhymed with ‘REC.’”). Indeed, Applicant was required to disclaim “TECH GRILLS” as merely descriptive of its goods during examination.14 Examples of media use of the phrase “BBQ tech” include the following excerpts: 14 January 23, 2015 Office Action. Opposition No. 91225798 - 13 - • The “Modern Marvels” episode titled “BBQ Tech.” Best Dec. at 6-7 ¶ 29 & Exhibit R, 11 TTABVUE 7-8, 48: • An article on Maxim.com discussing “BBQ Tech.” Applicant’s Notice of Reliance C, Exhibit C4, 23 TTABVUE 25-28: Opposition No. 91225798 - 14 - • A page on the titanfireproducts.com website titled “Titanfire® BBQ Tech.” Applicant’s Notice of Reliance C, Exhibit C7, 23 TTABVUE 45-46: • An article on Gizmodo.com titled “Grill Like a God With the Best BBQ Tech.” Applicant’s Notice of Reliance C, Exhibit C6, 23 TTABVUE 37-44. We discuss this issue further in the next section. 2. Third-Party Registration and Use of Similar Marks Third-party registrations may be relevant to show the sense in which a mark is used in ordinary parlance; that is, an element common to both parties’ marks may have a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that term is inherently relatively weak. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); see also In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016) (“[T]hird-party registrations are relevant evidence of the inherent or conceptual strength of a mark or term because they are probative of how terms are used in connection with the goods Opposition No. 91225798 - 15 - or services identified in the registrations.”). Evidence of use of similar marks by third parties for the same or similar goods, in turn, is relevant to a mark’s commercial strength. In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). Here, the record demonstrates that TEC and similar formatives signifying “technology” have a suggestive meaning in association with barbeque grills, as discussed above. Applicant also argues that Opposer’s mark has been weakened and diluted by third-party use of similar marks for barbecue grills and similar or related goods. Applicant introduced evidence that third parties have both registered and used marks incorporating TEC, TEK, and TECH in association with barbecue grills and accessories. The more probative use-based third-party registrations are:15 Mark Registration No. 21 TTABVUE Cite Selected Class 11 Goods BBQTEK 3340018 95-97 Barbecue grills 3521237 22-24 Barbecues; barbecue grills AURELIO TECH (TECH disclaimed) 5009381 44-47, 113-16 Barbecues and grills (TECH disclaimed) 5154820 52-55, 160-63 Barbecues 15 Pending applications are evidence only that they were filed; they are not evidence of use of the marks. Therefore, they are omitted from this chart. See, e.g., WeaponX Performance Prods. Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1042 n.21 (TTAB 2018). Opposition No. 91225798 - 16 - With respect to use by third parties, Applicant submitted with its Notice of Reliance B evidence of use online of TECH and TEK by third parties, not for barbecue grills but for barbecue accessories, including the following: • BBK Tek (see first registration in list above) for barbecue parts including cooking grids, heat plates, and control knobs, Exhibit B5, 22 TTABVUE 21- 24 (from grillspot.com); Exhibit B6, 22 TTABVUE 25-34 (from ebay.com). • GRILL TEK for barbecue accessories including, among others, grill fans, brushes, and marinating trays, Exhibit B6, 22 TTABVUE 25-34 (from ebay.com). • INNOO TECH for barbecue accessories including grill mats and gloves, Exhibit B7, 22 TTABVUE 35-61 (from innootech.com). • ROASTER TECH INC. for a smokeless barbecue table, Exhibit B14, 22 TTAVUE 74-76 (from roastertech.com). Applicant’s evidence “falls short of the ubiquitous or considerable use of the mark components present in [applicant’s] cited cases.” In re i.am.symbolic, 123 USPQ2d at 1751 (quotations omitted); cf. Jack Wolfskin, 116 USPQ2d at 1136 (discussing “voluminous evidence” of registration and use of paw print design elements); Juice Generation, 115 USPQ2d at 1674 (referencing evidence of “a fair number” of third- party uses). Nonetheless, we give this evidence probative weight as indicating that formatives of TECH, TEK, and, in one instance, TEC (in the mark ) are registered and used by third parties for barbecue grills and accessories. 3. Conclusion as to Strength Considering the record as a whole, and particularly that Opposer provided no information regarding its sales, advertising, or market share, we find that Opposer’s TEC mark is not famous and entitled to only a limited scope of protection under the Opposition No. 91225798 - 17 - fifth and sixth du Pont factors. But that is not to say that it merits no protection, especially for identical and closely related goods: Confusion is confusion. The likelihood thereof is to be avoided, as much between “weak” marks as between “strong” marks, or as between a “weak” and a “strong” mark. Similarly, the statute, by providing remedies to trademark owners, enables those owners to protect their marks. It is through such owner-action that the public is protected from confusion. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974); see also Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1173 (TTAB 2011) (“Nevertheless, we are mindful that even a weak mark is entitled to protection against the registration of a very similar mark for closely related goods.”); Anthony’s Pizza & Pasta Int’l Inc. v. Anthony’s Pizza Holding Co., 95 USPQ2d 1271, 1283 (TTAB 2009). Opposer remains entitled to the presumptions flowing from its registration under Trademark Act Section 7(b), 15 U.S.C. § 1057(b). C. Similarity of the Marks In a likelihood of confusion analysis, we compare the marks in their entireties for similarities and dissimilarities in appearance, sound, connotation and overall commercial impression. Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). “The proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach, 101 USPQ2d at 1721 (quotation omitted). Opposition No. 91225798 - 18 - We bear in mind our findings regarding the limited strength of Opposer’s mark as we turn to the first du Pont factor, the similarity of the parties’ marks. Yet we are also mindful that where, as here, the marks are used in association with goods that are identical in part, the degree of similarity between them necessary to support a determination that confusion is likely declines. Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). Opposer’s mark is TEC, while Applicant’s mark is REC TEC GRILLS, with TEC GRILLS disclaimed. Because GRILLS is the generic name for both parties’ goods, consumers are likely to focus on what we find to be the more distinctive portion of Applicant’s mark, REC TEC; the word GRILLS in Applicant’s mark is entitled to very little weight. Opposer’s entire mark TEC is the second term in Applicant’s mark. The fact that Applicant has disclaimed TEC does not remove it from the mark or impact consumer perception. Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983) (stating that “disclaimers are not helpful in preventing likelihood of confusion in the mind of the consumer, because he is unaware of their existence”); see also Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004) (stating that disclaimed elements of a mark are relevant to assessment of similarity “because confusion is evaluated from the perspective of the purchasing public, which is not aware that certain words or phrases have been disclaimed”); In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985) (“The public is unaware of what words have been disclaimed during prosecution of the trademark application at the PTO.”). Opposition No. 91225798 - 19 - While there is no rule that likelihood of confusion automatically applies where one mark encompasses another, in this case, the fact that Applicant’s mark subsumes Opposer’s entire mark increases the similarity between the two. See, e.g., Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT marks substantially similar to prior mark CONCEPT); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (VANTAGE TITAN confusingly similar to registered mark TITAN); In re Riddle, 225 USPQ 630, 632 (TTAB 1985) (RICHARD PETTY’S ACCUTUNE for automotive service centers confusingly similar to ACCU-TUNE). We disagree with Applicant that its entire mark is unitary such that consumers “will simply view TEC as the transitionary component of the three syllable REC TEC GRILLS mark.” Applicant’s Brief at 20, 35 TTABVUE 28. Rather, it is at least as likely that consumers familiar with Opposer’s prior use of its TEC mark in association with barbecue grills will view REC TEC GRILLS as a variation or line extension of Opposer’s goods when used with Applicant’s identical goods. In part, this is because the first term in Applicant’s mark, REC, also has a descriptive or suggestive meaning in association with barbecue grills which somewhat diminishes its impact: an abbreviation for “recreation.”16 That the first two terms in Applicant’s mark rhyme does not alter the significance of TEC in Applicant’s mark. Cf. In re Ginc UK Ltd., 90 16 See Dictionary.com (https://www.dictionary.com/browse/rec), based on the RANDOM HOUSE UNABRIDGED DICTIONARY (2018). Nonetheless, like Opposer’s mark TEC, derived from its corporate name, Applicant submitted testimony that REC was chosen to represent the names of the founders’ children, Ross, Ella, and Colden. Cundy Dec. at ¶ 7, 27 TTABVUE 3. Opposition No. 91225798 - 20 - USPQ2d 1472, 1477 (TTAB 2007) (finding that rhyming quality and visual similarity of ZOGGS TOGGS “does not infuse TOGGS with any separate and distinct meaning”). Applicant also argues that Opposer’s mark is pronounced “T-E-C.” See Applicant’s Brief at 18, 35 TTABVUE 26. It does not affect our analysis whether Opposer’s mark TEC is pronounced as a one-syllable acronym “TEC,” or as the initialism “T-E-C.” “[T]here is no correct pronunciation of a trademark, and consumers may pronounce a mark differently than intended by the brand owner.” Viterra, 101 USPQ2d at 1912. Although there are differences between the marks in appearance and pronunciation, we find them to convey similar meanings and overall commercial impressions. Even according Opposer’s mark TEC only a narrow scope of protection, considering the marks in their entireties, we find that persons encountering them used on identical or closely related and complementary goods would be likely to assume a connection between the parties. The first du Pont factor supports a finding that confusion is likely. D. Evidence of Actual Confusion The parties vigorously dispute the seventh du Pont factor, the nature and extent of any actual confusion. In our proceedings, “[a]ctual confusion is entitled to great weight but only if properly proven.” Georgia-Pacific Corp. v. Great Plains Bag Co., 614 F.2d 757, 204 USPQ 697, 701 (CCPA 1980). Properly introducing instances of actual confusion into the record and persuading the trier of fact as to the probative value of such evidence is Opposer’s burden. See Couch/Braunsdorf Affinity, 110 USPQ2d at 1479. Opposition No. 91225798 - 21 - Opposer submitted evidence it contends shows that Applicant’s use of its mark has created actual consumer confusion. In general terms, this evidence includes: • Testimony of three witnesses employed by Fireside Outdoor Kitchens & Grills in Augusta, Georgia, where Applicant is based: Christopher Meikrantz, 13 TTABVUE; Greig McCully, who also is an owner of the store, 15 & 31 TTABVUE; and Edward Scarborough, 16 TTABVUE.17 This retailer sells Opposer’s goods but not Applicant’s, which are sold directly to consumers. Cundy Dec. at ¶¶ 23-24, 27 TTABVUE 7. • Testimony from another witness, Joseph Kearse, who operates an online business selling Opposer’s grills at tecgrillsonline.com. 14 & 32 TTABVUE. • A non-party grill review post from the website outdoorigrill.com titled “Tec Outdoor Grills” interspersed with images of Applicant’s goods as well as Opposer’s. Best Dec. ¶ 15 & Exhibit D, 11 TTABVUE 5, 16-19; see also Opposer’s Amended Notice of Reliance, Exhibit L, 19 TTABVUE 87-108. 1. Testimony of Grill Store Employees We first address the testimony from the Fireside Outdoor Kitchens & Grills employees. Each testified that they commonly encounter customer confusion based on the word TEC in the parties’ marks. Examples of their testimony include: • “Fireside Outdoor Kitchens & Grills sells many brands of grills. Customers do not confuse TEC grills with any brand of grills other than REC TEC. Consumers do not confuse REC TEC grills with any brand of grills other than TEC.” McCully Dec. at ¶ 11, 15 TTABVUE 3. • “On average, I would say that confusion is expressed by a customer about four times a week.” Meikrantz Dec. at ¶ 12, 13 TTABVUE 4. • “On substantially a daily basis, particularly during our busy times of year, customers in our store express confusion between REC TEC grills and TEC grills. Customers will examine TEC grills in our showroom and mention that they have a friend or relative who has a REC TEC grill while we are discussing TEC grills. Many consumers do not grasp that a TEC grill is not the same as a REC TEC grill. This confusion arises due to the similar branding of these grills.” McCully Dec. at ¶ 10, 15 TTABVUE 3. 17 Mr. Scarborough previously worked for, and apparently was fired by, Applicant. Cundy Dec. at ¶ 40, 27 TTABVUE 10. Opposition No. 91225798 - 22 - • “One common situation we experience at Fireside Outdoor Kitchens & Grills is when the husband buys a REC TEC grill on-line, and the wife comes into our store and says they have a TEC grill, and she wants to buy accessories for the grill.” Meikrantz Dec. at ¶ 14, 13 TTABVUE 4. • “On October 8, 2015, Fireside Outdoor Kitchens & Grills donated a TEC grill to the Duck’s Unlimited Banquet in Augusta. When the auctioneer at the charity banquet identified the grill prior to taking bids, he repeatedly referred to the grill as a REC TEC grill.” McCully Dec. at ¶ 12, 15 TTABVUE 4. • “On another occasion, Vera Kilpatrick, a television personality who presents a cooking show that is syndicated on stations in the southeast, was a guest presenter at a cooking demonstration held by Fireside Outdoor Kitchens & Grills at their store in Augusta. I was cooking with a TEC grill during the cooking demonstration. Vera Kilpatrick referred to the grill that I was using as a REC TEC grill. She subsequently referred customers to our store to buy REC TEC grills, even though we do not sell REC TEC grills at Fireside Outdoor Kitchens & Grills because she was confused.” McCully Dec. at ¶ 13, 15 TTABVUE 4. Messrs. McCully, Meikrantz, and Scarborough are not neutral witnesses because Fireside Outdoor Kitchens & Grills is a dealer for Opposer’s goods and we discount the probative weight of their testimony accordingly. Also, this testimony is hearsay to the extent that the witnesses state their conclusions about the beliefs or reasons for the actions of third parties – for example, that Vera Kilpatrick referred to a TEC grill as a REC TEC grill “because she was confused.” Id. at 15 TTABVUE 4. As we have recognized previously: “Without direct testimony from these individuals, there is insufficient information to ascertain what they were thinking, or what caused the purported confusion.” Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1475 (TTAB 2016); see also Couch/Braunsdorf Affinity, 110 USPQ2d at 1480 (concluding that “we do not believe this highly generalized testimony provides us with enough circumstantial guarantees of trustworthiness to warrant attributing any probative value” to alleged instances of actual confusion relayed by customer service Opposition No. 91225798 - 23 - representatives); Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1327 (TTAB 1992) (finding testimony concerning consumer calls not persuasive where “we do not have the benefit of the testimony of the allegedly confused individuals from which to determine what may have been responsible for such confusion”). Nonetheless, certain of these statements fall under exceptions to the rule against hearsay and carry some minimal persuasive value. We give some weight to how the witnesses hear shoppers use the parties’ marks on a daily basis under FED. R. EVID. 803(1) as a present sense impression. Also, the public statements by the auctioneer and television personality referring to TEC grills as REC TEC grills18 are admissible under FED. R. EVID. 803(3) as a statement of the declarant’s then-existing state of mind. See Dan Foam ApS v. Sleep Innovations Inc., 106 USPQ2d 1939, 1943 (TTAB 2013). This testimony does not convey confusion of consumers, but may constitute some evidence that the parties’ marks are similar. 2. Testimony of Mr. Kearse Opposer also submitted testimony from Joseph Kearse, who has done computer work for Opposer and, in 2008, created the tecgrillsonline.com website to sell Opposer’s goods. Kearse Dec. at ¶¶ 5-6, 14 TTABVUE 2-3. Mr. Kearse has sold Opposer’s grills and accessories through this site for the past decade. Id. at ¶¶ 7-8, 14 TTABVUE 3. Mr. Kearse testified that although his marketing is Internet-based, more than 90% of his customers who buy TEC grills call and talk to him over the 18 Mr. Meikrantz also testified regarding these misstatements, albeit in less detail. See Meikrantz Dec. at ¶¶ 20-21, 13 TTABVUE 5-6. Opposition No. 91225798 - 24 - phone, and he averages about eight calls per day from customers seeking grills and accessories. Id. at ¶¶ 11-12, 14 TTABVUE 3. He testified that: Approximately a year ago, I started getting calls about REC TEC grills from people who assumed I knew what they were talking about. When I ask what type of grill the customer has or is looking for, some callers say that they want a TEC grill, but as the conversation continues, I learn that they are inquiring about a REC TEC grill, and not a TEC grill. Other callers say that they have a TEC grill, but it will turn out that they want parts or accessories for a REC TEC grill that they own. Id. at ¶ 13, 14 TTABVUE 4. This statement conveying what Mr. Kearse has heard customers say to him is admissible under Fed. R. Evid. 803(1). Mr. Kearse also testified that, after the number of customers entering the term REC TEC on the Google.com search engine and then visiting his website rose to 43%, he “eventually entered ‘REC’ as a negative keyword to my Google Ad Account to exclude the mistaken REC TEC hits on my website.” Kearse Dec. at ¶¶ 15-16, 14 TTABVUE 4-5. Applicant responds that Mr. Kearse’s testimony does not show consumer confusion and that he actually benefited from reverse confusion, “enjoying a free ride attracting Rec Tec’s customers to his website.” Applicant’s Brief at 37, 35 TTABVUE 45. Because Mr. Kearse sells Opposer’s goods exclusively, he too is not a neutral witness, and we discount his testimony accordingly. Moreover, as with the employees of Fireside Outdoor Kitchens & Grills, Mr. Kearse’s testimony does not carry the probative weight we accord direct testimony from consumers who have experienced confusion. Opposition No. 91225798 - 25 - 3. Online Grill Review The last purported actual confusion evidence we address is the grill review post on the website outdoorigrill.com. The first page submitted follows: Best Dec. ¶ 15 & Exhibit D, 11 TTABVUE 5, 16. Although the main text on this page refers to Opposer’s goods and the tecgrillsonline.com website, the picture is of one of Applicant’s grills. Ronald L. Cundy, Applicant’s co-owner, testified that this review was automatically generated, “cut-and-pasted together from multiple existing related and unrelated webpages to create the illusion of new content.” Cundy Dec. at ¶ 50, 27 TTABVUE 12. Mr. Cundy avers no firsthand knowledge of how this post was prepared or even how it was “mapped to original source locations,” but does submit Opposition No. 91225798 - 26 - additional website excerpts displaying the same text, with his comments. Id. at ¶ 51 & Exhibit 15, 27 TTABVUE 13, 120-41. Applicant also correctly points out in its brief that some of the content of this site is nonsensical. See Applicant’s Brief at 36, 35 TTABVUE 44. For example, the second sentence of the review reads: “While traditional grills make meat tough and dry, TEC Expert advice on outdoor kitchens, gas grills, smokers, pizza ovens and BBQ gear.” 11 TTABVUE 16. Thus, this review has no probative value. 4. Conclusion as to Actual Confusion We find that none of the evidence submitted by Opposer proves that actual consumer confusion has occurred. As noted above, at best, all of the evidence discussed in this section lends minor support to our finding that the parties’ marks are similar. See Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469, 471 (TTAB 1975) (“While a single instance is insufficient as evidence from which to conclude that applicant’s mark has consistently caused confusion, the single instance of confusion is at least ‘illustrative of a situation showing how and why confusion is likely.’” (quoting Libbey-Owens-Ford Glass Co. v. Thermoproof Glass Co., 156 USPQ 510 (CCPA 1968)). “A showing of actual confusion would of course be highly probative, if not conclusive, of a high likelihood of confusion.” In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003). “However, evidence of actual confusion is notoriously difficult to come by and, in any event, such evidence is not required in order to establish likelihood of confusion.” Time Warner Entm’t Co. v. Jones, 65 USPQ2d 1650, 1662 (TTAB 2002). The seventh and eighth du Pont factors are neutral. Opposition No. 91225798 - 27 - E. Conditions of Purchase and Consumer Sophistication Finally, we consider the fourth du Pont factor, assessing the “conditions under which and buyers to whom sales are made i.e., ‘impulse’ vs. careful, sophisticated purchasing.” 177 USPQ at 567. Each party’s identification of goods includes “barbecue grills,” which is presumed to encompass all types of barbecue grills, in all forms and price points, sold through all normal channels of trade. Mini Melts, 118 USPQ2d at 1471. Although the actual goods currently offered by the parties are expensive, the identified goods include bargain grills that may be purchased at mass- market retailers relatively cheaply and with little care. See Cundy Dec. at ¶ 21, 27 TTABVUE 6 (stating that “entry-level gas and charcoal grills may be purchased for as little as $100 or less”). We therefore find the fourth du Pont factor to be neutral. F. Conclusion as to Likelihood of Confusion We have carefully considered all arguments and evidence properly of record, including those not specifically discussed herein, as they pertain to the relevant likelihood of confusion factors. To the extent that any other du Pont factors for which no evidence was presented by Applicant or Opposer nonetheless may be applicable, we treat them as neutral. We have found that the parties’ identified goods, customers, and channels of trade are identical in part; that Applicant’s mark is similar to Opposer’s mark TEC, even according that mark a limited scope of protection; and that the remaining du Pont factors are neutral. Considering the record as a whole, we find that Opposer has carried its burden to establish by a preponderance of the evidence that Applicant’s mark REC TEC GRILLS is likely to cause consumer confusion with Opposer’s mark Opposition No. 91225798 - 28 - TEC when used in association with the goods identified in the application in International Classes 11 and 27. Decision: The opposition to registration of application Serial No. 86413280 is sustained as to the goods identified International Classes 11 and 27 and dismissed as to those in International Class 4. Copy with citationCopy as parenthetical citation