L.L. Bean, Inc.

Trademark Trial and Appeal Board

Dec 5, 2005

No. 78238339 (T.T.A.B. Dec. 5, 2005)

Mailed:
December 5, 2005
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re L.L. Bean, Inc.
________

Serial No. 78238339
_______

Kevin R. Haley of Brann & Isaacson for L.L. Bean, Inc.

Georgia Ana Carty Ellis, Trademark Examining Attorney, Law
Office 108 (Andrew Lawrence, Managing Attorney).
_______

Before Bucher, Holtzman and Drost, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
L.L. Bean, Inc. seeks registration on the Principal
Register of the mark ORION (standard character drawing) for
goods recited in the application, as “fishing rods and
reels” in International Class 28.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this mark based upon Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d). The Trademark Examining Attorney

1 Application Serial No. 78238339 was filed on April 16, 2003
based upon applicant’s allegation of first use anywhere and first
use in commerce at least as early as January 25, 2000.

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 78238339
- 2 -
has found that applicant’s mark, when used in connection
with the identified goods, so resembles the mark ORION
(standard character drawing) registered for goods identified
as “golf clubs” also in International Class 28,2 as to be
likely to cause confusion, to cause mistake or to deceive.
Applicant and the Trademark Examining Attorney
submitted briefs. Applicant did not request an oral
hearing.
We affirm the refusal to register.
Applicant argues that these goods are not related,
that, in the marketplace, the respective trade channels
cannot overlap, and that the discriminating nature of the
sophisticated consumers of both of these products prevents
confusion. Applicant also argues that the use of its house
mark in connection with the involved trademark on
applicant’s goods reduces the likelihood of confusion
between the registered mark and the applicant’s mark.
Finally, in its appeal brief, applicant has argued that
should we find a likelihood of confusion on the
circumstances of the case, applicant should be permitted to

2 Reg. No. 2514067 issued to Focus Golf Systems, Inc. on
December 4, 2001, based upon allegations of use in commerce since
at least as early as June 16, 1998.

Serial No. 78238339
- 3 -
amend its application, explicitly limiting the channels of
trade of the goods to L.L. Bean outlets.
By contrast, the Trademark Examining Attorney contends
that ORION is a strong arbitrary mark for sporting goods,
that applicant has adopted an identical mark to that of
registrant, that applicant’s use of its house mark on the
goods cannot reduce the likelihood of confusion herein,
that these respective goods “are somewhat related because
they are the same class of goods, and because they are
sporting tools used in the pursuit of recreational
activities,” and that “140 registered third-party
registrations” she made of record demonstrate that “there
are hundreds of entities that market these products
simultaneously under the same trademark” and that
“consumers are frequently exposed to golfing and fishing
products being sold under the same marketing conditions.”
She also rejects applicant’s proposed conditional amendment
to the identification of goods.
Our determination under Section 2(d) is based upon an
analysis of all of the 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 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
Serial No. 78238339
- 4 -
similarities between the marks and the relationship of the
goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We turn first to the du Pont factor focusing on the
similarity of the marks in their entireties. The Trademark
Examining Attorney argues that applicant’s mark is the same
as the registered mark in appearance, sound, connotation
and commercial impression. We agree with the Trademark
Examining Attorney that the marks are identical.
As to the strength of the cited mark, there is
certainly no evidence in this record as to the renown of
the cited mark. Nonetheless, the Trademark Examining
Attorney correctly notes that an arbitrary mark such as
registrant’s ORION mark is inherently distinctive and hence
should be afforded a wide ambit of protection. See Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
As to the du Pont factor focusing on the number and nature
of similar marks in use on similar goods, the Trademark
Examining Attorney also argues that it is significant that
the registered mark is the only mark on the federal
trademark register where the word ORION is used in
connection with any kind of sporting goods. We find no
evidence in the record suggesting that this is a weak mark
Serial No. 78238339
- 5 -
as applied to registrant’s goods. Hence, these du Pont
factors all favor the position taken by the Trademark
Examining Attorney.
Accordingly, we turn to the similarity or
dissimilarity and nature of the goods as described in the
application and cited registration. As noted above, the
marks are identical in every respect. With both registrant
and applicant using the identical designation, “the
relationship between the goods on which the parties use
their marks need not be as great or as close as in the
situation where the marks are not identical or strikingly
similar.” Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ
70, 78 (TTAB 1981). See also In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993) [“[E]ven when
goods or services are not competitive or intrinsically
related, the use of identical marks can lead to an
assumption that there is a common source.”].
In order to support a holding of likelihood of
confusion, it is sufficient that the respective goods are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods are such
that they would or could be encountered by the same persons
under circumstances that could, because of the similarity
of the marks, give rise to the mistaken belief that they
Serial No. 78238339
- 6 -
originate from the same producer. See In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
We agree with applicant that our analysis must focus on the
way the goods are encountered in the marketplace by typical
consumers and whether consumers will be confused as to the
source of the products. See 3 J. Thomas McCarthy, McCarthy
on Trademarks and Unfair Competition, § 23:58 (4th ed. 2004)
[a tribunal must “attempt to recreate the conditions under
which prospective purchasers make their choices” in order
to arrive at a “realistic” evaluation of likelihood of
confusion].
We certainly have no per se rule that all sporting
tools used in recreational activities are related.
However, the Trademark Examining Attorney has made of
record third-party registrations which show that a number
of third parties have registered marks for both golf clubs
and fishing rods:

REG. NO. 2615712

for “toys and games, namely, … golf
clubs, fishing rods and reels, …” in
International Class 28;3

3 Reg. No. 2615712 issued to Cartoon Network LP on September
3, 2002 based upon registrant’s claim of use in commerce since at
least as early as August 27, 2001.
Serial No. 78238339
- 7 -

REG. NO. 2474314
CORK-T GRIP
for “sporting goods, namely, golf clubs,
fishing rods” in International Class
28;4
REG. NO. 2821567

for “sporting goods, toys and games,
namely, golf balls, golf clubs, golf
bags, golf putters, golf divot repair
tools, golf tees, golf ball markers,
golf bag covers, club head covers, golf
gloves, tennis rackets, tennis ball,
skis, snowboards, ski poles, ski carry
bags, ski boot carry bags, ice skates,
fishing tackle, fishing rods, fishing
reels, …” in International Class 28;5
REG. NO. 2735111
TOURNAMENT
CHOICE
for “tennis and racquetball rackets;
golf balls, and golf accessories, namely
golf head covers, golf balls, practice
golf balls, practice nets, golf bag
travel covers, golf gloves, golf tees,
golf ball shaggers, and golf clubs;
darts, fishing reels, terminal fishing
tackle, and fishing accessories, namely
bait buckets, crab traps, minnow seines,
rods, lures, reel cases; hunting
accessories, namely target throwers and
arrow cases” in International Class 28;6
REG. NO. 2759301
CHRYSLER
BUILDING
for “ … recreational sporting good
items, namely, … fishing rods, reels and
tackle, skis, ski poles, bindings,
snowboards, golf clubs, …” in
International Class 28;7

4 Reg. No. 2474314 issued to Herbert E. Hoff on July 31, 2001
based upon registrant’s claim of use in commerce since at least
as early as October 7, 1999. Registrant disclaims the word GRIP
apart from the mark as shown.
5 Reg. No. 2821567 issued to Pivotal Promontory Development,
L.L.C. on March 9, 2004 based upon registrant’s claim of use in
commerce since at least as early as March 1, 2001.
6 Reg. No. 2735111 issued to Academy Managing Co., L.L.C. on
July 8, 2003 based upon registrant’s claim of use in commerce
since at least as early as October 28, 2000.
7 Reg. No. 2759301 issued to 405 Lexington L.L.C. on
September 2, 2003 based upon registrant’s claim of use in
commerce since at least as early as March 4, 1999.
Serial No. 78238339
- 8 -

REG. NO. 2117540
TOP CAT
for “toys and sporting goods, namely, …
golf clubs; fishing reels and rods; … ”
in International Class 28;8
REG. NO. 1875371

for “sporting goods, sports equipment
and games, namely … golf clubs and
balls, … fishing rods and reels, …” in
International Class 28;9
REG. NO. 2207366
SOUTH BEACH
for “sporting goods, namely, golf balls,
golf gloves, tennis balls, fishing
equipment, namely, fishing rods, fishing
reels, hooks, leaders, line, and tackle;
and in-line skate accessories” in
International Class 28;10 and
REG. NO. 1637672
G. LOOMIS
for “fishing equipment, namely fishing
rods, rod blanks, fishing reels, fishing
line, golf clubs and golf club shafts”
in International Class 28.11
Although third-party registrations are not evidence
that the marks shown therein are in commercial use, or that
the public is familiar with them, nevertheless third-party
registrations which individually cover a number of
different items and which are based on use in commerce may
have some probative value to the extent that they serve to
suggest that the listed goods and/or services are of a type

8 Reg. No. 2117540 issued to Hanna-Barbera Productions, Inc.
on December 2, 1997 based upon registrant’s claim of use in
commerce since at least as early as January 1991.
9 Reg. No. 1875371 issued to Franklin Sports, Inc. on January
24, 1995 based upon registrant’s claim of use in commerce since
at least as early as October 15, 1993; Section 8 affidavit
accepted and Section 15 affidavit acknowledged.
10 Reg. No. 2207366 issued to Arbor Packaging Inc. on December
1, 1998 based upon registrant’s claim of use in commerce since at
least as early as August 10, 1998.
11 Reg. No. 1637672 issued to G. Loomis, Inc. on March 12,
1991 based upon registrant’s claim of use in commerce since at
least as early as August 1982; renewed.
Serial No. 78238339
- 9 -
which may emanate from a single source. In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).12
These registrations, thus, tend to demonstrate that
goods of the type identified in applicant’s application and
the cited registration can emanate from the same source,
and be offered under the same mark.
Two other third-party registrations suggest
similarities in the underlying technologies used in
fabricating golf club shafts and fishing rods:
REG. NO. 2032398
FIBERSPAR
for “tubular structures of composite
material for exercise equipment; namely,
gymnastic bars and weight lifting
machines; tubular shafts of composite
materials for use in athletic and
sporting articles; namely, for golf
clubs, fishing rods, hockey sticks,
baseball bats, tennis racquets, squash
racquets, racquetball racquets,
badminton racquets and table tennis
racquets” in International Class 28.13

12 Although the Trademark Examining Attorney states that
“there are hundreds of entities that market these products
simultaneously under the same trademark,” we find the evidence
would more correctly support a conclusion that there are “dozens”
of such entities. In addition to multiple registrations owned by
the same enterprise, or registrations where the registrant was
simply manufacturing or marketing bags specifically designed for
golf clubs and fishing rods and reels, many of those third-party
registrations submitted by the Trademark Examining Attorney are
owned by foreign entities, which registrations are based on
Section 44 of the Lanham Act, not on use in commerce.
13 Reg. No. 2032398 issued to Fiberspar Corp. on January 21,
1997 based upon registrant’s claim of use in commerce since at
least as early as February 13, 1994.

Serial No. 78238339
- 10 -

REG. NO. 2200720
CAPE FEAR
ROD COMPANY
for “sporting goods, namely, fishing
rods and golf club shafts, for
distribution in the wholesale channel of
trade” in International Class 28;14 and
As to the du Pont factor focusing on the channels of
trade, applicant argues that it has established its own
channels of trade:
L.L. Bean markets and sells all its
products, including its ORION fishing
equipment, solely through its L.L. Bean
retail stores, factory stores, L.L. Bean
catalogs and the L.L. Bean Internet site,
www.llbean.com. L.L. Bean does not and has
never marketed its products through third-
party vendors or general retail outlets.
…
L.L. Bean is a direct marketer. Its ORION
fishing rods are sold exclusively at
L.L. Bean stores, on L.L. Bean’s website, or
through L.L. Bean catalogs. The ORION
fishing rod will not appear in the same
sporting goods section of any department
store with Orion brand golf clubs.

Applicant’s appeal brief, pp. 3, 8-9. However, even if we
were to conclude that applicant’s and registrant’s
respective goods would never be sold in the very same
store, we find that they would still be sold in the same
types of retail stores. Consumers acquainted with
registrant’s golf clubs are likely to encounter both kinds
of goods. That is, individuals who would be the consumers

14 Reg. No. 2200720 issued to Hextek Technologies Corp. on
October 27, 1998 based upon registrant’s claim of use in commerce
since at least as early as June 16, 1997.
Serial No. 78238339
- 11 -
of golf clubs would also be prospective purchasers of
applicant’s fishing rods and reels.
As to the du Pont factor focusing on the conditions
under which and buyers to whom sales are made, applicant
argues that inasmuch as golf clubs and fishing rods and
reels are expensive products,15 the relevant purchasers will
all be sophisticated. In the alternative, applicant argues
that even if it should be determined that some of the
listed goods are not expensive, both groups of sports
enthusiasts (e.g., fishermen and golfers) can be presumed
to be very concerned with the quality, characteristics and
origin of their equipment, and hence will be immune to
confusion.
Applicant’s identification of goods does not limit its
goods to “expensive” fishing rods and reels, nor is there
any evidence that fishing rods and reels are inherently
expensive. Even if applicant is correct that the purchase
of items such as golf clubs and fishing rods entails a
certain amount of care and deliberation, when strong,
identical marks are applied to related sporting goods such
as fishing rods and golf clubs, even somewhat sophisticated

15 While applicant’s ORION four-piece fishing rod outfit
retails for more than $650.00, the record contains no specific
price data for registrant’s ORION golf clubs.
Serial No. 78238339
- 12 -
purchasers would not be immune to source confusion. See In
re Total Quality Group Inc., 51 USPQ2d 1474 (TTAB 1999).
Finally, at the end of its appeal brief, applicant
requests a proposed, alternative amendment:
In the event that the Board does not
overturn the Examining Attorney’s refusal of
registration, the Applicant respectfully
requests that the Board accept an amendment
to the Applicant's application in order to
limit the channels of trade available to the
goods and thereby restrict the potential for
confusion. To accomplish that purpose, the
Applicant proposes that the description of
goods and services be amended by replacement
with the following:
“Fishing rods and reels marketed solely
through Applicant’s retail, catalog and
online outlets.”

The Trademark Examining Attorney correctly objects to
this amendment as being untimely.16 Furthermore, even if
this amendment to the identification of goods had been
unequivocal and submitted in a timely manner, consistent
with our earlier discussion, we find that it would not have
been effective in avoiding a likelihood of confusion
herein. There are no limitations in the registration, so
we must presume that registrant’s golf clubs could be sold

16 An unequivocal amendment to the identification of goods
made at this late date should have been accompanied by a request
for remand and a showing of good cause. See TBMP § 1205.01 (2d
ed. 2004). Applicant has cited no precedent for the insertion
into its appeal brief of an alternative position of this nature,
and we know of none.

Serial No. 78238339
- 13 -
in all channels of trade. Therefore, when consumers who
are familiar with ORION golf clubs encounter ORION fishing
rods, even in applicant’s catalogues and retail outlets or
through its online promotional efforts, they are likely to
believe there is some association.17
In conclusion, we find that applicant has adopted a
strong arbitrary mark identical to that of registrant, that
these respective goods are related in such a manner that
even somewhat sophisticated consumers exposed to golfing
and fishing products being marketed simultaneously under
this identical mark are likely to be confused as to source.
Decision: The refusal to register this mark based
upon Section 2(d) of the Lanham Act is hereby affirmed.

17 When consumers encounter applicant’s fishing rods in
applicant’s catalogues, online, in retail or factory outlets, the
L.L. BEAN house mark will be prominently displayed. The
specimens show it used on the rod within inches of the ORION
product mark. However, because applicant’s L.L. BEAN house mark
is not part of the mark involved herein, many of the Board cases
cited by the Trademark Examining Attorney are not pertinent to
our decision.
On the other hand, to the extent we find that the Trademark
Examining Attorney has made a case for the relatedness of these
respective goods, should L.L. Bean, as the junior user, enjoy
sales of an overwhelming volume of its ORION fishing rods and
reels, we find that the possibility of “reverse confusion,” as
argued by the Trademark Examining Attorney, certainly does not
help applicant’s case herein.