Cold Steel, Inc.v.John I. Escobar and Melissa L. Escobar d/b/a Cold Steel Safe Company, Inc.

Trademark Trial and Appeal Board

Aug 22, 2014

No. 91204707 (T.T.A.B. Aug. 22, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Mailed:
August 22, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Cold Steel, Inc.

v.

John I. Escobar and Melissa L. Escobar d/b/a Cold Steel Safe Company, Inc.
___

Opposition No. 91204707
to Application Serial No. 85345040
___

Glenn J. Dickinson of LightGabler LLP for Cold Steel, Inc.

Mark Leonard of Davis & Leonard LLP for John I. Escobar and Melissa L. Escobar

______

Before Seeherman, Mermelstein and Adlin, Administrative Trademark Judges.
Opinion by Adlin, Administrative Trademark Judge:
Applicants, John I. Escobar and Melissa L. Escobar, d/b/a Cold Steel Safe
Company, Inc. (“Applicants”) seek registration of the mark COLD STEEL SAFE
CO., in standard characters and with “STEEL SAFE CO.” disclaimed, for “Metal
fire resistant safes; Metal safes; Safe deposit boxes” in International Class 6.1 In its
Notice of Opposition, Cold Steel, Inc. (“Opposer”) alleges prior use and registration
1 Application Serial No. 85345040, filed June 13, 2011 based upon an intent to use the
mark in commerce under Trademark Act Section 1(b), 15 U.S.C. 1051(b).

Opposition No. 91204707

of the mark COLD STEEL, in typed form and with “STEEL” disclaimed, for “sport
knives” in International Class 8.2 Opposer also pleaded ownership of application
Serial No. 85594449. As grounds for opposition, Opposer alleges that use of
Applicants’ mark is likely to cause confusion with Opposer’s mark under Trademark
Act Section 2(d).3
In their answer, Applicants deny the salient allegations in the Notice of
Opposition and assert the doctrine of “unclean hands” as a defense. Specifically,
Applicants appear to allege that Opposer included “metal safes” in its pleaded
Application Serial No. 85594449 for an improper purpose and did not have a bona
fide intent to use its mark on metal safes as alleged in the application.
The Record

The record consists of the pleadings, the file of the opposed application and the
following:
- Opposer’s pleaded Registration No. 1494839, a printout of which,
showing its current status and title, was attached to the Notice of
Opposition in compliance with Trademark Rule 2.122(d)(1);

- Opposer’s Notice of Reliance (“NOR”) (TTABvue Dkt. #17)
comprising Opposer’s pleaded Application Serial Nos. 8559449 and
859780624, Opposer’s unpleaded Registration No. 2062262, third-
2 Registration No. 1494839, issued July 5, 1988; Section 8 affidavit accepted; Section 15
affidavit acknowledged; renewed.
3 Opposer also pleaded dilution as a ground and identified, in the ESTTA cover sheet, false
suggestion of a connection under Section 2(a) as another ground for opposition, but
Opposer’s trial brief and evidence address only the likelihood of confusion claim. Therefore,
these claims are deemed waived and will be given no further consideration. Krause v.
Krause Publications, Inc., 76 USPQ2d 1904, 1906 n.2 (TTAB 2005); Viacom International
Inc. v. Komm, 46 USPQ2d 1233, 1235 n.3 (TTAB 1998).
4 Opposer pleaded ownership of Application Serial No. 85594449 for goods in International
Classes 6, 8, 9, 13, 18, 25, 28 and 41. The goods in International Classes 8, 9, 13, 18, 28,
and 41 were divided into child Application No. 85978062 on November 27, 2012. Therefore,
2

Opposition No. 91204707

party registrations, discovery deposition testimony (combined) of
Applicants Melissa Escobar and John Escobar (“Escobar Dep.”),
Applicants’ responses to certain of Opposer’s interrogatories, and
documents produced by Applicants in response to Opposer’s
requests for production;5

- Opposer’s testimonial declaration (TTABvue Dkt. #18) of its owner
Lynn C. Thompson (“Thompson Test. Dec.”)6, and the exhibits
thereto which include Internet printouts from Opposer’s website, a
National Rifle Association meeting exhibitor list, photographs from
a hunting and firearms trade show, online retailer web pages, and
pages from the websites of several firearms manufacturers and
retailers;

- Applicants’ NOR (TTABvue Dkt. #21) comprising Opposer’s written
responses to Applicants’ request for production of documents,
Opposer’s responses to Applicants’ interrogatories, certain portions
of Applicants’ discovery deposition not provided by Opposer, certain
of Applicants’ responses to Opposer’s interrogatories not introduced
by Opposer (see discussion infra), and Applicants’ California State
seller’s permit;

- Opposer’s rebuttal testimonial declaration (TTABvue Dkt. #24) of
Mr. Thompson (“Thompson Rebuttal Test. Dec.”) provided in
response to Applicants’ objections to Mr. Thompson’s first
testimonial declaration;

- Opposer’s second NOR (TTABvue Dkt. #28) on its Registration No.
4441514 and additional pages from Applicants’ website; and

the resulting child application has also been pleaded. The child application issued on
November 26, 2013 as Registration No. 4441514. As far as the record shows, the parent
application, for goods in International Class 6, is still pending.
5 Although documents produced in response to a document production request normally
cannot be made of record by notice of reliance, Lebanon Seaboard Corp. v. R&R Turf
Supply Inc., 101 USPQ2d 1826, 1828 (TTAB 2012), the parties filed a stipulation that
documents produced during discovery are deemed authentic and may be admitted by notice
of reliance. (TTABvue Dkt. #16). See TBMP §704.11(7) (2014).
6 The parties stipulated that trial testimony could be introduced by means of affidavits.
(TTABvue Dkt. #16). The parties are commended for agreeing to and employing trial
efficiencies.
3

Opposition No. 91204707

- Applicants’ supplemental NOR (TTABvue Dkt. #35) containing the
complete discovery deposition (combined) of Applicants Melissa
Escobar and John Escobar (“Escobar Dep. Complete ”).7

Opposer’s second NOR and Applicants’ supplemental NOR were submitted
after trial ended. The parties did not stipulate to the late filing of NORs but, in
view of the fact that neither party objected to the evidence filed after the close of
testimony and both parties submitted untimely evidence, the Board deems the
evidence as having been stipulated into the record. See TBMP § 702.02 (2014); See
also, Coach Services Inc. v. Triumph Learning LLC, 96 USPQ2d 1600, 1603, n.3
(TTAB 2010), aff’d-in-part, rev’d-in-part and remanded on other grounds, 668 F.3d
1356, 101 USPQ2d 1713 (Fed. Cir. 2012).8
Evidentiary Objections
Opposer objected to Applicants’ introduction of their own answers to Opposer’s
interrogatories. (TTABvue Dkt. #29). However, Opposer introduced only a portion
of Applicants’ responses, and Applicants introduced additional responses under a
NOR and provided a written statement as to why the additional responses were in
accordance with Trademark Rule 2.120(j)(5). In view thereof, Opposer’s objection to
7 Pursuant to the parties’ October 14, 2013 Stipulation, approved by the Board on
October 15, 2013, “Trial testimony of applicants may be submitted by means of filing
of and reliance on Applicants’ March 15, 2013 discovery deposition.”
8 As noted, Opposer’s second NOR includes a printout from the USPTO database of the
registration issuing from its pleaded application. Normally, we would not consider a
registration which issued after the close of opposer’s testimony period, even where, as here,
the underlying application was pleaded. See TBMP § 314 (2014) and cases cited therein. In
this case, while we find that the parties effectively stipulated to the untimely introduction
of certain evidence into the record, including Opposer’s Registration No. 4441514, which
issued two days before the close of Opposer’s rebuttal testimony period, our decision is not
based on this registration. Indeed, Opposer itself does not rely on this registration, focusing
instead on (and presenting supporting evidence regarding) its Registration No. 1494839
and the sport knives identified therein. In other words, while Registration No. 4441514 is
of record, given the way the trial was conducted it is not relevant to our decision.
4

Opposition No. 91204707

Applicants’ remaining responses to Opposer’s interrogatories is overruled with
respect to those additional responses which make Opposer’s submission not
misleading, and sustained with respect to the additional responses which are not
related to the responses Opposer submitted.9
Applicants objected to statements made in the Testimony Declaration of Lynn
Thompson. Specifically, in paragraph 19 Mr. Thompson states that “a store that
sells guns but does not sell gun safes is almost unheard of. Thus, the vast majority
of stores that sell Cold Steel knives also sell gun safes.” Applicants argue that “the
declarant lacks foundation and competency to make the asserted statement” under
Rules 601 and 602 of the Federal Rules of Evidence and that the statement is
impermissible opinion testimony of a lay witness under Rule 701.
Rule 602 of the Federal Rules of Evidence provides that “[a] witness may testify
to a matter only if evidence is introduced sufficient to support a finding that the
witness has personal knowledge of the matter. Evidence to prove personal
knowledge may consist of the witness’s own testimony.” Here, Mr. Thompson
testified that “Cold Steel products are sold in thousands of retail stores” (Thompson
Test. Dec. para. 19) and that he is “personally involved in all of the company’s
significant marketing and promotional activities.” Thompson Test. Dec. para. 6.
Mr. Thompson also testified that he has visited several regional stores of multiple
firearm retailers. Thompson Rebuttal Test. Dec. paras. 2-4. Therefore, we find that
Mr. Thompson has the personal knowledge required by Fed. R. Evid. 602 to testify
9 Because we do not base our decision herein on any of Applicants’ interrogatory responses,
there is no need for us to delineate the responses that are of record.
5

Opposition No. 91204707

based on his personal observations regarding stores that sell guns and, in
particular, stores that sell Cold Steel knives. As for Applicant’s objection based on
Rule 701, inasmuch as Mr. Thompson testifies to facts regarding the relative
number of stores that sell guns and also gun safes, Rule 701 regarding opinion
testimony does not apply. Accordingly, Applicants’ objection regarding this
testimony is overruled.
With regard to Applicants’ objections to Mr. Thompson’s testimony in
paragraphs 22 through 30 of the first testimonial declaration, we decline to strike
this testimony for similar reasons. Moreover, “the Board is capable of weighing the
relevance and strength or weakness of the objected-to testimony . . . including any
inherent limitations.” Hunt Control Systems Inc. v. Koninklijke Philips Electronics
N.V., 98 USPQ2d 1558, 1564 (TTAB 2011). While we have considered all of the
evidence of record except where otherwise indicated, we have relied primarily on
the evidence discussed herein.
Background
Mr. Lynn Thompson founded Opposer in 1980 and remains the company’s owner
and CEO. Thompson Test. Dec. para. 2. In addition to manufacturing a wide
variety of knives, swords, and edged tools and weapons, Opposer makes walking
sticks, pepper spray and blowguns for hunting. Opposer promotes its products
primarily through the distribution of its DVDs containing instruction on fighting
techniques and “the warrior lifestyle” which Mr. Thompson identifies as “a set of
values, backed by weapons and physical training, centering on the individual’s
6

Opposition No. 91204707

responsibility to protect himself and his fellow people from those who intend to do
evil to the weak.” Id. at para 5.
Applicant John Escobar began selling safes under the mark COLD STEEL SAFE
SALES in 1993. Escobar Dep. at 8. In approximately 2005, Applicants changed the
name of the business to COLD STEEL SAFE COMPANY. Applicants promote their
safes through advertising in regional California newspapers, radio advertisements
and their Internet website. Escobar Dep. at 13, 16, 23. Their products are sold
through the website and two retail locations in California. Escobar Dep. at 11, 25.
Standing and Priority
Opposer has established its standing through its pleaded registration. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000). Because the registration is of record, and Applicants have not
counterclaimed for cancellation of the registration, priority is not at issue in this
proceeding with respect to the goods identified in the registration. King Candy
Company v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA
1974). Furthermore, Opposer’s pleaded registration issued in 1988, and the record
shows that Opposer began using its mark for sport knives well prior to Applicants’
date of first use of their mark in 1993. Compare, Thompson Test. Dec. para. 2, 17,
18 with Escobar Dep. at 8.
Likelihood of Confusion
We turn then to whether Applicants’ mark COLD STEEL SAFE CO., as used on
metal fire resistant safes, metal safes, and safe deposit boxes, so resembles
7

Opposition No. 91204707

Opposer’s mark COLD STEEL for sport knives as to be likely to cause confusion,
mistake or to deceive. Our determination of the issue of likelihood of confusion is
based on an analysis of all the probative facts in evidence that are relevant to the
factors set forth in In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973); see also In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003). The two key considerations in any likelihood of
confusion analysis are the similarities between the marks and the relationship
between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
Similarity of the Marks
We first consider the similarities and dissimilarities of the parties’ marks in
appearance, sound, meaning and commercial impression. Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). Although the marks must be compared in their
entireties, one feature may be more significant in creating a commercial impression.
See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re
Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed Cir. 1985).
Here, the marks each contain the wording “COLD STEEL.” Applicants’ mark
includes the additional disclaimed wording “SAFE CO”; however, SAFE is generic
for Applicants’ goods and CO is merely an entity descriptor, and therefore “SAFE
CO” has no real source-indicating significance when used in connection with
Applicants’ safes. Accordingly, we find that COLD STEEL is not only the dominant
8

Opposition No. 91204707

portion of Applicants’ mark (and the entirety of Opposer’s mark), but that the
marks are, in effect, identical in appearance, sound, connotation and commercial
impression. See In re Nat’l Data Corp., 224 USPQ at 751; In re Dixie Rests., Inc.,
105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997). In view thereof, we find
that the marks are essentially indistinguishable, if not entirely identical. This
factor weighs heavily in favor of a finding of likelihood of confusion.
Similarity of the Goods/Channels of Trade
Turning to whether the goods are related, as we have said, the parties’ marks
are in effect identical. Therefore, the degree of similarity between the goods that is
required to support a finding of likelihood of confusion is less than if there were
more meaningful differences between the marks. In re Shell Oil Co., 992 F.2d 1204,
26 USPQ2d 1687, 1689 (Fed. Cir. 1993) (“even when the goods or services are not
competitive or intrinsically related, the use of identical marks can lead to the
assumption that there is a common source”); In re Opus One Inc., 60 USPQ2d 1812,
1815 (TTAB 2001). Additionally, the goods do not have to be competitive in order to
find a likelihood of confusion. On-line Careline Inc. v. Am. Online Inc., 229 F.3d
1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322,
54 USPQ2d 1894, 1898 (Fed. Cir. 2000). “[T]here need only be a viable relationship
between the respective goods.” In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202
(TTAB 2009). The issue is not whether the goods will be confused with each other,
but whether consumers will be confused as to their source. Id. In assessing
whether the goods are related, we must look to the identifications of goods set forth
9

Opposition No. 91204707

in Applicants’ involved application and Opposer’s pleaded registration. See Hewlett-
Packard Co. v. Packard Press Inc., 281 F.2d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002);
Octocom Systems Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16 USPQ2d
1783 (Fed. Cir. 1987).
In this case, Applicants’ goods are identified as “Metal fire resistant safes; Metal
safes; Safe deposit boxes,” while Opposer’s goods are identified as “sport knives.”
Because Applicants’ identification includes “metal safes” without any specific
limitations as to the type of metal safe, and the record shows that metal safes are
used for guns and firearms, we must presume that Applicants’ goods include metal
safes for guns and firearms. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d
1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012). In other words, it is not relevant
that “gun safes” are not specifically included in Applicants’ identification of goods,
because metal safes encompass metal gun safes.10
Opposer has introduced select pages from the websites of several firearms
providers in an effort to show that knives and metal safes emanate from the same
sources and are sold under the same marks. Thompson Test. Dec. Exhibits 11-16.
Each provider is identified by Mr. Thompson as “a leading manufacturer of firearms
and related products.” Thompson Test. Dec. para. 25-30. Four of the firearms
manufacturers, namely, Berretta, Browning, Remington and Smith & Wesson,
advertise sport knives and safes on their websites under the same mark, which
10 In any event, Mr. Escobar testified that Applicants sell gun safes under their mark
(Escobar Dep. 22, 28), and Opposer has provided evidence that Applicants sell gun safes via
their website. Attachment to Escobar Dep. Exhibit 2.

10

Opposition No. 91204707

establishes a relationship between sport knives and safes. See In re Davey Prods.,
92 USPQ2d at 1202-03.11 Accordingly, the du Pont factor of the similarity of the
goods favors Opposer.
The record further shows that metal safes for firearms and sport knives are
advertised and sold in the same channels of trade. Both parties testified that gun
safes, which are encompassed by Applicants’ metal safes, and sport knives are
marketed and sold at trade shows for hunting, fishing and firearms products.
Escobar Dep. 30-36; Thompson Test. Dec. para. 16-18. Opposer also provided
evidence that metal gun safes and sport knives are found in the same hunting and
fishing retail stores. Thompson Test. Dec. Exhibits 8-10. This evidence consists of
select pages from the websites of Bass Pro Shops (Exhibit 9) and Cabela’s (Exhibit
10). Applicants are simply incorrect in suggesting that the parties’ goods appear in
the same general or department stores, rather than specialty stores such as hunting
and fishing stores. Accordingly, we find that sport knives and metal safes (and
specifically metal safes for guns) travel in the same channels of trade and are
marketed to the same classes of purchasers.
As noted above, when marks are virtually identical, as they are here, there
need only be a viable relationship between the goods to support a finding of
likelihood of confusion. Inasmuch as knives and safes originate from the same
sources under a single mark, and travel in the same channels of trade, Opposer has
11 We agree with Applicants that Opposer’s third-party registration evidence does not
support a finding that the parties’ goods are related.
11

Opposition No. 91204707

demonstrated that viable relationship.12 In short, the relatedness of the goods and
their channels of trade weigh in favor of finding a likelihood of confusion.
Consumer Sophistication
With respect to the degree of care used in purchasing the goods, Applicants
argue that because most of the goods are expensive, consumers are likely to exercise
a high degree of care when purchasing them. Applicants’ Trial Brief, 12-13. We
disagree. Applicants’ identification of “Metal fire resistant safes; Metal safes; Safe
deposit boxes” does not restrict the goods by cost or customers. Similarly, Opposer’s
identified “sport knives” have no limitations regarding cost or intended customers.
Therefore, the parties’ identified goods must be presumed to encompass inexpensive
and expensive varieties of the identified goods, and the goods are presumed to be
offered to all types of customers for the identified goods. See e.g., Stone Lion Capital
Partners, LP v. Lion Capital LP, 746 F.3d 1317, 110 USPQ2d 1157, 1162-63 (Fed.
Cir. 2014) (“Stone Lion effectively asks this court to disregard the broad scope of
services recited in its application, and to instead rely on the parties’ current
investment practices … the Board properly considered all potential investors for the
recited services, including ordinary consumers seeking to invest in services with no
minimum investment requirement.”) (emphasis in original). Furthermore,
Opposer’s website provides sales information regarding a wide variety of its knives.
Thompson Test. Dec. Exhibit 1. The prices range from $10-$20 for smaller knives to
several hundred dollars. Similarly, Applicants’ safes also sell for a wide range of
12 We have reached this conclusion without accepting Opposer’s argument that knives are
related to guns, and guns are related to gun safes and, therefore, knives are related to gun
safes. Opposer’s Trial Brief, 18-19; Opposer’s Reply Brief at 11.
12

Opposition No. 91204707

prices with smaller safes selling for under $200 and others priced at well over
$1000. Opposer’s NOR, Exhibit N; Escobar Dep. Exhibit 2. In other words,
although many of the goods at issue could be considered expensive such that care
may be exercised, both parties also offer (and must be presumed to offer) less
expensive goods which consumers may not exercise as much care in purchasing.
Moreover, while we assume that purchasers of safes would exercise care because
safes protect valuables (no matter their price), or keep their contents such as guns
away from vulnerable people such as children, even sophisticated purchasers can be
confused by very similar marks such as the virtually identical marks at issue here.
See Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840,
1841-42 (Fed. Cir. 1990). In short, we find that the similarities between the marks
and the channels of trade outweigh any discriminating purchasing decision.
Evidence of Fame
Opposer argues that the fact that it has “distributed approximately 1.2 million
DVDs featuring the Cold Steel name and its president Lynn Thompson using the
products and showing other hunting and shooting content” weighs in favor of
finding that Opposer’s mark is famous. Opposer’s Trial Brief at 20. We disagree.
When present, the fame of a mark is a dominant factor in the likelihood of
confusion analysis. Recot, Inc., 214 F.3d at 1327, 54 USPQ2d at 1897. Indirect
evidence of fame may be shown by the volume of sales of products bearing the mark,
the amount of advertising expenditures relating to the mark, and the length of time
such indications of commercial awareness have been evident. Bose Corp. v. QSC
13

Opposition No. 91204707

Audio Products, Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed Cir. 2002). Here,
Opposer has not provided sufficient evidence for us to find that its mark COLD
STEEL is famous in connection with sport knives. Opposer merely states that
Opposer is “well-known” in the hunting and shooting industry (Opposer’s Trial Brief
at 8) and that its mark is “reasonably well-known.” Opposer’s Trial Brief at 20.
Although Opposer has used its mark for a significant period of time, Opposer has
not provided any evidence of fame through sales and advertising expenditures for
the relevant goods, or otherwise. Opposer’s figures regarding the distribution of
DVDs promoting edged weapons, fighting techniques, firearms and shooting sports
(Thompson Test. Dec. para 5) are insufficient, in and of themselves, to establish
fame in the pleaded mark for knives. Because the evidence of fame falls short, this
factor is neutral.
Evidence of Actual Confusion
The parties dispute whether there has been actual marketplace confusion
between their marks. Evidence of actual confusion, where it exists, is highly
probative in a likelihood of confusion analysis. In re Majestic Distilling Co., 315
F.3d at 1317, 65 USPQ at 1205. Opposer contends that Applicants’ discovery
deposition provides strong evidence of actual confusion. Opposer’s Trial Brief, 20-
21. When asked whether Applicants received communications from anyone who
referred to Opposer, Mrs. Escobar testified as follows:
I have received an occasional call from not exactly a confused client but
probably just from telephone information giving the wrong phone
number. And then we direct them to the correct phone number.

14

Opposition No. 91204707

Escobar Dep. 54-55. Mrs. Escobar further stated that Applicants have received
phone calls intended for Opposer “[m]aybe once or twice a year.” Id. However, Mrs.
Escobar was unaware of whether the callers were actually confused regarding the
source of the identified goods or whether the callers were merely directed to the
wrong number. Consequently, without direct testimony from the involved
customers regarding the reasons for the misdirected calls, this evidence has little
probative value. See Toys “R” Us, Inc. v. Lamps R Us, 219 USPQ 340, 345-46
(TTAB 1983) (four or five instances of customers believing a relationship between
the parties has “not much probative value” without cross-examination of the
involved customer); Duluth News-Tribune v. Mesabi Publishing Co., 84 F.3d 1093,
38 USPQ2d 1937, 1941 (8th Cir. 1996) (evidence of misdirected mail and phone calls
is de minimis and shows inattentiveness on part of the caller or sender rather than
actual confusion); see also, McCarthy on Trademarks and Unfair Competition,
§§ 23:13-15 (4th ed. 2014). Accordingly, we treat this du Pont factor as neutral.
In the absence of any evidence bearing on the remaining du Pont factors, we find
that those factors are all neutral.
Conclusion
Opposer has established its claim of likelihood of confusion by a preponderance
of the evidence. The parties’ marks are virtually identical and their goods travel in
the same channels of trade and are encountered by the same consumers. The goods
are sufficiently related that even careful consumers are likely to believe that they
originate from the same source. Any doubts as to whether a likelihood of confusion
15

Opposition No. 91204707

exists must be resolved in favor of Opposer as the prior user. Kohler Co. v. Baldwin
Hardware Corp., 82 USPQ2d 1100, 1113 (TTAB 2007). Accordingly, after careful
review of all evidence of record pertaining to the relevant du Pont factors, and based
on a preponderance of the evidence, we conclude that there is a likelihood of
confusion between the parties’ marks.
Decision: The opposition is sustained.

16