Northern Technologies International Corporationv.W. Stuart Smith, Inc. dba Heritage Packaging

Trademark Trial and Appeal Board

Sep 19, 2016

No. 92059194 (T.T.A.B. Sep. 19, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 19, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Northern Technologies International Corporation
v.
W. Stuart Smith, Inc. dba Heritage Packaging
_____

Cancellation No. 92059194
_____

Mark C. Johnson and Nicholas J. Gingo, Renner, Otto, Boisselle & Sklar, LLP,
for Northern Technologies International Corporation.

Katherine H. McGuire, Woods Oviatt Gilman LLP,
for W. Stuart Smith, Inc. dba Heritage Packaging.
_____

Before Bergsman, Lykos, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Petitioner Northern Technologies International Corporation seeks cancellation of
Respondent W. Stuart Smith, Inc. dba Heritage Packaging’s registration for the mark

Opposition No. 92059194
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(“zero corrosion products” disclaimed) for the following goods:
“Polymer bags used for the storage of firearms, firearms
ammunition and accessories to prevent corrosion and
contamination; Polymer bags used for the storage of metal
personal belongings to prevent corrosion and
contamination; Polymer storage bags for general purpose
industrial use for the storage of metal objects to prevent
corrosion and contamination,” in International Class 22.1
Petitioner seeks cancellation pursuant to Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), on the ground of priority and likelihood of confusion with its pleaded
marks ZERUST and EXCOR, registered on the Principal Register as follows:
• ZERUST (in typeset form) for “anti-corrosive plastic film for industrial
and/or commercial packaging use,” in International Class 17;2 and
• EXCOR (in typeset form) for “Polymeric flexible and rigid packaging
structures, namely, forms, films, foams, sheeting, and wrapping made of
plastics and polymers from renewable sources to protect industrial and
commercial products against chemical, electrostatic, physical and
environmental damage during transportation and storage,” in
International Class 17, and “Consultation in the fields of polymeric flexible
and rigid packaging structures, namely, forms, films, foams, sheeting, and
wrapping made of plastics and polymers from renewable sources to protect
industrial and commercial products against chemical, electrostatic,
physical and environmental damage during transportation and storage,” in
International Class 42.3
We grant the petition to cancel.

1 Registration No. 4228638, filed June 15, 2011 under Section 1(a) of the Trademark Act, 15
U.S.C. § 1051(a), alleging use anywhere and in commerce at least as early as May 30, 2006,
and registered on the Principal Register on October 23, 2012. The description of the mark
states: “The mark consists of ‘ZCORR ZERO CORROSION PRODUCTS’ in stylized font with
the element ‘CORR’ appearing inside the angled leg of the large ‘Z’ and the wording ‘ZERO
CORROSION PRODUCTS’ in smaller underlined letters beneath the ‘Z’.” Color is not
claimed as a feature of the mark.
2 Registration No. 2124599, filed September 13, 1993 and issued December 30, 1997; renewed
December 19, 2007. Before November 2, 2003, standard character marks were known as
typed drawings. A typed mark is the legal equivalent of a standard character mark.
3 Registration No. 3015836, filed November 7, 2000 and issued November 15, 2005; renewed
February 6, 2015.
Opposition No. 92059194
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I. Evidentiary Objections and Record
Respondent objects to the admission of certain portions of the testimony of
Petitioner’s three trial witnesses concerning purported instances of actual confusion
between the parties’ marks. Respondent contends that “such evidence was not timely
produced to Registrant despite specific Requests for Admission and Interrogatories
directed toward any known actual confusion, and that such evidence is hearsay.”4
Respondent failed to identify the specific discovery requests on which it relied, and
made neither its interrogatories nor Petitioner’s responses to them of record.
Respondent did, however, submit Petitioner’s admissions to Respondent’s
requests for admission. Request No. 3 in Registrant’s First Set of Requests for
Admission is: “Petitioner is not aware of any actual consumer confusion, mistake or
deception as between Petitioner’s Marks and Registrant’s Mark.” Petitioner stated in
its response that: “Petitioner admits that it is not currently aware of any actual
consumer confusion, mistake or deception as between Petitioner’s Marks and
Registrant’s Mark. However, Petitioner has not concluded its investigation into the
facts relating to this proceeding, its formal discovery, or its preparation for the trial
of this proceeding.”5 There is no indication that Petitioner supplemented its response
to the request for admission, and Petitioner did not respond in its reply brief to
Respondent’s evidentiary objections. Therefore, we sustain the objections and have
given no consideration to the portions of the testimony detailed infra.

4 Respondent’s Brief at 25-26, Appendix – Registrant’s Objections, 20 TTABVUE 30-31.
5 Respondent’s Notice of Reliance, Exhibit HH, 16 TTABVUE 52.
Opposition No. 92059194
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The record in this case consists of the pleadings and the file of the involved
registration. Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1).
Petitioner introduced the following evidence:
• Copies of its pleaded registrations for ZERUST (Registration No. 2124599)
and EXCOR (Registration No. 3015836). Pursuant to Trademark Rule
2.122(d)(1), the petition was accompanied by printouts of information from
the USPTO Trademark Electronic Search System (TESS) database records
showing the current status and title of the registrations.
• Respondent’s admissions in response to Petitioner’s requests for
admission.6
• Transcripts of the testimony depositions, with exhibits, of the witnesses
listed below. Testimony to which we have sustained Respondent’s objection
is noted in parentheses for each witness.
o Gregory Patrick Lynch, Petitioner’s president and CEO (excluding
32:6-23 and 115:23-118:20) (“Lynch Tr.”).7
o Elliot Frank Dworkin, an employee of Zerust Consumer Products,
LLC, which is a joint venture partner with, and 50% owned by,
Petitioner (excluding 14:8-15:18 and 46:12-47:5) (“Dworkin Tr.”).8
o Irina Roytman, Petitioner’s vice president of international
coordination (excluding 10:12-11:7 and 51:16-56:17).9
Respondent made of record the following evidence:
• Internet printouts.10
• Copies of covers and pages from the printed publications (magazine issues)
PREDATOR XTREME (October 2010)11 and FIELD & STREAM (June 2013).12

6 11 TTABVUE.
7 12 TTABVUE.
8 13 TTABVUE.
9 14 TTABVUE.
10 Respondent’s Notice of Reliance, Exhibits H and Q-DD, 16 TTABVUE 10-23, 47-50, 75-99.
11 Id., Exhibit I, 16 TTABVUE 54-56.
12 Id., Exhibit O, 16 TTABVUE 73-74.
Opposition No. 92059194
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• Portions of the discovery deposition of Gregory Patrick Lynch, Petitioner’s
president, CEO, and witness designated to testify on behalf of Petitioner
pursuant to FED. R. CIV. P. 30(b)(6).13
• Petitioner’s admissions in response to Respondent’s requests for admission
(as noted supra).14
• Transcripts of the testimony depositions, with exhibits, of the following
witnesses:
o William S. Smith, Respondent’s, founder, president and CEO
(“W. Smith Tr.”).15
o Russell L. Smith, Respondent’s vice president and general manager,
and the son of founder William S. Smith (“R. Smith Tr.”).16
o Jason Emanuel Tuccio, Respondent’s marketing manager and the
program manager for Respondent’s ZCORR Products line
(“Tuccio Tr.”).17
II. Standing
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), cert. denied, 135 S. Ct. 1401 (2015); John W.
Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB 2010). A party has
standing to seek cancellation of a registration if the party believes it is likely to be
damaged by the registration. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1844 (Fed. Cir. 2000).

13 Id., Exhibit II, 16 TTABVUE 57-72.
14 Id., Exhibits GG-HH, 16 TTABVUE 43-46, 51-53. Respondent also filed its denials in
response to three of Petitioner’s requests for admission, id. at Exhibits EE-FF, 16 TTABVUE
24-42, but they are inadmissible. See Trademark Rules 2.120(j)(3)(i) and 2.120(j)(5); Life Zone
Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1957 (TTAB 2008); TBMP § 704.10.
15 17 TTABVUE 7-100.
16 17 TTABVUE 254-99.
17 17 TTABVUE 101-253.
Opposition No. 92059194
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Petitioner has properly made of record its pleaded registrations and shown them
to be valid and subsisting, and owned by Petitioner. The registrations demonstrate
that Petitioner possesses a real interest in this proceeding beyond that of a mere
intermeddler, and a reasonable basis for its belief of damage. See, e.g., Cunningham,
55 USPQ2d at 1844; Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982). We find, therefore, that Petitioner has proven its
standing to petition for cancellation of Respondent’s registration.
III. Priority
A party claiming prior use of a mark may petition to cancel a registration on the
basis of such prior use pursuant to Section 14 of the Trademark Act, 15 U.S.C. § 1064.
In a cancellation proceeding, to establish priority on a likelihood of confusion claim18
brought under Section 2(d) of the Trademark Act, a party must prove that, vis-à-vis
the other party, it owns “a mark or trade name previously used in the United States
. . . and not abandoned.” Trademark Act § 2(d). A party may establish its own prior
proprietary rights in a mark through actual use, use analogous to trademark use, or
an earlier constructive use date accorded to the party’s own application. See Giersch
v. Scripps Networks Inc., 90 USPQ2d 1020, 1022 (TTAB 2009).

18 In an opposition proceeding, it is unnecessary to prove priority of use when the Petitioner
alleges likelihood of confusion based on a mark “registered in the Patent and Trademark
Office.” Trademark Act § 2(d); King Candy Co. v. Eunice’s King’s Kitchen, Inc., 496 F.2d 1400,
182 USPQ 108, 110 (CCPA 1974). But in a cancellation proceeding, where the respondent
owns a registration, priority must be established by the petitioner. See Brewski Beer Co. v.
Brewski Bros. Inc., 47 USPQ2d 1281, 1284 (TTAB 1998).
Opposition No. 92059194
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Respondent has not alleged use of its mark before 2006.19 Petitioner’s
pleaded registrations issued from applications filed in 1993 (ZERUST) and 2000
(EXCOR), well before the 2011 filing date of Respondent’s underlying application.
Petitioner’s priority as to the goods and services identified in its pleaded registrations
therefore is established. Respondent, moreover, does not dispute Petitioner’s claim of
priority or otherwise address the issue in its trial brief.
In this case, however, Petitioner also adduced extensive evidence at trial of
common-law use of its pleaded marks for goods beyond those identified in the
registrations. In particular, we focus on Petitioner’s record evidence that its ZERUST
mark is used in association with consumer goods, made from its anti-corrosive plastic
film, that are legally identical to certain of Respondent’s identified goods, that is:
“Polymer bags used for the storage of firearms, firearms ammunition and accessories
to prevent corrosion and contamination.”
Because Petitioner did not specifically plead common-law rights in use of its
marks for anti-corrosion firearms storage bags, we must determine whether this issue
was tried by implied consent. Implied consent to the trial of an unpleaded issue can
be found only where the nonoffering party (1) raised no objection to the introduction
of evidence on the issue, and (2) was fairly apprised that the evidence was being

19 See Respondent’s Brief at 3, 20 TTABVUE 8; W. Smith Tr. at 9:12-15, 11:25-12:9, 17
TTABVUE 15, 17-18; R. Smith Tr. at 8:4-12, 17 TTABVUE 261.
Opposition No. 92059194
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offered in support of the issue. Trademark Trial and Appeal Board Manual of
Procedure (TBMP) § 507.03(b) (2016). “The question of whether an issue was tried by
consent is basically one of fairness. The non-moving party must be aware that the
issue is being tried, and therefore there should be no doubt on this matter.” Morgan
Creek Prods. Inc. v. Foria Int’l Inc., 91 USPQ2d 1134, 1139 (TTAB 2009).
On the record before us, we have no doubt that the issue of Petitioner’s rights in
the ZERUST mark for anti-corrosion firearms storage bags was tried by implied
consent. Respondent did not object to the introduction of evidence of Petitioner’s offer
of such bags. In addition, Respondent relied on Petitioner’s evidence in support of its
arguments that Petitioner used only the mark ZERUST on its goods, not ZERUST
and EXCOR in combination. This includes two brochures with a page titled “Zerust®
Films, Bags and Papers” referencing “Zerust Weapon Protection Kits,” which are
described as “VCI Bags designed to protect weapons and accessories.”20 Petitioner
also cited a marketing brochure for ZERUST firearms bags, described in the brochure
as “The Easy and Carefree Way to Protect Against Rust and Corrosion.”21
Based on the testimony, evidence, and trial briefs, we find that Petitioner’s
common-law rights in the ZERUST mark for anti-corrosion firearms storage bags was
tried by the implied consent of the parties. Therefore, we deem the pleadings to be
amended under FED. R. CIV. P. 15(b)(2) to include assertion of prior rights in these

20 Exhibits 14 & 21, 15 TTABVUE 38, 58. (The same brochure shows a definition of “VCI” as
“volatile corrosion inhibitors.” 15 TTABVUE 36, 56.) Respondent cross-examined Mr. Lynch
about these exhibits at 93:24-96:4, 103:21-107:2, 12 TTABVUE 98-99, 106-10, and cited them
in its brief at 7 n.17, 20 TTABVUE 12.
21 Exhibit 28, 15 TTABVUE 102-03, cited in Respondent’s Brief at 8 n.21, 20 TTABVUE 13.
Opposition No. 92059194
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goods by Petitioner. See, e.g., Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La
Michoacana Inc., 98 USPQ2d 1921, 1924-25 (TTAB 2011).
Petitioner submitted evidence that it used its ZERUST mark at common law for
anti-corrosion firearms storage bags before Respondent’s first use of its mark in 2006.
For example, Elliot Dworkin of Zerust Consumer Products, which “ha[s] the rights to
the Zerust Excor products for the consumer goods in North America or the consumer
market in North America,”22 testified that he displayed the following products at the
National Rifle Association’s (NRA) annual meeting in 2002: “We displayed the Zerust
bags for, you know, handguns, rifles, ammunition, parts . . . .”23 Petitioner made of
record a marketing brochure for ZERUST firearms bags, as described supra, which
Mr. Dworkin testified had been distributed since 2001.24 Mr. Dworkin also testified
that orders for ZERUST rifle and gun bags had been placed and filled in 2001.25 We
find that Petitioner has established prior common-law rights in use of its mark
ZERUST for anti-corrosion firearms storage bags.

22 Dworkin Tr. at 6:10-8:7, 13 TTABVUE 7-9; see also Lynch Tr. at 9:16-23, 12 TTABVUE 12
(“For consumer products, we have a joint venture company called Zerust Consumer Products
based in Ohio. And Zerust Consumer Products focuses primarily on selling these same
products to the retail outlets, as well as individual consumers and also smaller distributors
who we sell the products to, either individuals or other retail chains.”).
23 Dworkin Tr. at 19:21-21:14, 13 TTABVUE 20-22; see also Exhibits 24-25, 15 TTABVUE 67-
71 (exhibit space confirmation, invoices, receipts and canceled checks for 2001 and 2002 NRA
annual meetings).
24 Exhibit 28, 15 TTABVUE 102-03; Dworkin Tr. at 37:16-38:20, 13 TTABVUE 38-39.
25 Dworkin Tr. at 24:1-25:12, 13 TTABVUE 25-26; Exhibit 26, 15 TTABVUE 73 (2001 invoice).
Opposition No. 92059194
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IV. Likelihood of Confusion
A presumption of validity attaches to a trademark registration, and the party
seeking cancellation must rebut this presumption by a preponderance of the evidence.
West Fla. Seafood Inc. v. Jet Rests. Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1662
(Fed. Cir. 1994). Section 14(1) of the Trademark Act provides that a cancellation
action may be brought on the ground of likelihood of confusion before a registration
is five years old. The petition before us was filed on May 14, 2014, within five years
from the date the subject registration issued on October 23, 2012.
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); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however,
two key considerations are the similarities between the marks and the similarities
between the goods or services, the first two du Pont factors. See Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in the marks.”). Petitioner
bears the burden of proving its claim of likelihood of confusion by a preponderance of
the evidence. Cunningham, 55 USPQ2d at 1848.
We address in turn each of the du Pont factors for which the parties submitted
evidence or argument. To the extent that any other du Pont factors for which no
evidence was presented may be applicable, we treat them as neutral.
Opposition No. 92059194
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A. Similarity of the Goods and Channels of Trade
The second and third du Pont factors assess the similarity or dissimilarity of the
parties’ goods and services and their established, likely-to-continue trade channels.
In comparing the parties’ goods, “[t]he issue to be determined . . . is not whether the
goods of plaintiff and defendant are likely to be confused but rather whether there is
a likelihood that purchasers will be misled into the belief that they emanate from a
common source.” Helene Curtis Indus. Inc. v. Suave Shoe Corp., 13 USPQ2d 1618,
1624 (TTAB 1989). It is sufficient for a finding of likelihood of confusion if confusion
is likely with respect to use of Respondent’s mark on any item that comes within the
description of goods for a particular class. See Tuxedo Monopoly, Inc. v. General Mills
Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Bond v. Taylor, 119
USPQ2d 1049, 1052-53 (TTAB 2016).
The goods identified in the subject registration include “Polymer bags used for the
storage of firearms, firearms ammunition and accessories to prevent corrosion and
contamination.” We presume that Respondent’s goods, which are unrestricted, move
in all channels of trade normal for those goods and are available to all potential
classes of ordinary consumers. See Coach Servs. Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012). Petitioner has established that
it offers at common law identical anti-corrosion firearms storage bags in association
with its ZERUST mark. Because these goods are identical, we must presume that
they move in the same channels of trade and are available to the same classes of
customers for such goods. See American Lebanese Syrian Assoc. Charities Inc. v. Child
Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011); In re Viterra Inc., 671
Opposition No. 92059194
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F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on
this presumption). Moreover, in its trial brief, Respondent did not dispute or
otherwise address the similarity of the goods, and argued that the parties have used
their marks concurrently in the same publications and at the same trade shows
(citing GUNS & AMMO magazine and the NRA annual meeting).26
The second and third du Pont factors strongly support a finding of likely confusion.
B. Similarity of the Marks
We turn next to the first du Pont factor, the similarity of the parties’ marks. In a
likelihood of confusion analysis, we compare the marks in their entireties for
similarities and dissimilarities in appearance, sound, connotation and commercial
impression. Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (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). Where, as here, the parties use their
marks in connection with goods that are identical, the similarity needed to support a
determination that confusion is likely declines. See Bridgestone Ams. Tire Operations
LLC v. Federal Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012).

26 Respondent’s Brief at 23 & n.47, 20 TTABVUE 28 (stating that “such concurrent use has
specifically been within similar trade publications and the parties’ marks have been
simultaneously presented at booths at industry and consumer trade shows”).
Opposition No. 92059194
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As discussed supra, our analysis is focused on Petitioner’s common-law rights in
the ZERUST mark for anti-corrosion firearms storage bags.27 Both Petitioner’s mark
and Respondent’s mark begin with a “Z” or phonetically identical “ZE,” which is
followed by a four-letter term (“rust”) or syllable (“corr”) that is highly suggestive in
association with goods used to inhibit rust and corrosion28 and, in the case of
Registrant’s mark, the disclaimed and descriptive wording “zero corrosion products.”
This creates a strong similarity between Petitioner’s mark ZERUST and the ZCORR
wording in Respondent’s mark.
Although we consider each mark on a case-by-case basis, the wording in composite
word and design marks normally is accorded greater weight in the likelihood of
confusion analysis because the verbal portion is most likely to indicate the origin of
the goods and to be used by purchasers to request the goods. See, e.g., In re Viterra,
101 USPQ2d at 1908; M.C.I. Foods Inc. v. Bunte, 96 USPQ2d 1544, 1551 (TTAB
2010). Likewise, we accord the wording in Registrant’s mark (right)
greater weight here. While Registrant’s mark features a large block
Z with the wording CORR presented diagonally along its stem, we
do not find this manner of display to be due greater weight than the
term ZCORR, which customers would use to call for the goods.

27 It is unclear whether Petitioner attempted to assert common-law rights in the conjoint use
of its marks ZERUST and EXCOR, but we find that this unpleaded claim has not been tried
by consent. See Respondent’s Brief at 5-6, 20 TTABVUE 10-11 (objecting to conjoint use
theory).
28 Respondent’s president testified that the suffix “rust” in ZERUST suggests: “Oxidation,
rust, corrosion. They’re all pretty much the same thing.” W. Smith Tr. at 51:17-20, 17
TTABVUE 56.
Opposition No. 92059194
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We find ZCORR to be the dominant portion of Registrant’s mark as a whole because
it is distinctive and comparatively much larger in size than the descriptive remaining
wording, “zero corrosion products.”
While we acknowledge that there are aural and visual differences between the
marks, we note that Petitioner’s mark ZERUST is in typeset form and therefore is
not limited to any particular display. Thus, Petitioner is entitled to all depictions of
its mark and could display it in a similar manner to Registrant’s mark, i.e., as a block
letter Z with the term RUST presented diagonally along its stem. In re Viterra, 101
USPQ2d at 1909-11; Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344,
98 USPQ2d 1253, 1259 (Fed. Cir. 2011); Squirtco v. Tomy Corp., 697 F.2d 1038, 216
USPQ 937, 939 (Fed. Cir. 1983).
We find the marks, considered in their entireties, to be similar in meaning and to
convey similar overall commercial impressions. Therefore, the first du Pont factor
favors a finding that confusion between the marks is likely, particularly in light of
the lesser similarity required because the parties’ goods are identical.
C. Actual Confusion
Finally, we address Respondent’s argument that there is no evidence of actual
confusion between its mark and Petitioner’s marks. Respondent asserts that its
arguments relate to the nature and extent of any actual confusion (the seventh
du Pont factor); the length of time during and conditions under which there has been
concurrent use without evidence of actual confusion (factor eight); and the extent of
potential confusion, i.e., whether de minimis or substantial (factor twelve).
Opposition No. 92059194
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Proof of actual confusion is not necessary to show a likelihood of confusion. See
Weiss Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1843
(Fed. Cir. 1990). A showing of actual confusion would be highly probative, if not
conclusive, of a likelihood of confusion. Yet the opposite is not true; an absence of
evidence of actual confusion carries little weight. See J. C. Hall Co. v. Hallmark
Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965). The issue before us is
the likelihood of confusion, not actual confusion. Herbko Int’l Inc. v. Kappa Books Inc.,
308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002). Furthermore, it has often
been recognized that such evidence is difficult to obtain. Lebanon Seaboard Corp. v.
R&R Turf Supply Inc., 101 USPQ2d 1826, 1834 (TTAB 2012). The absence of actual
confusion is not probative unless it is accompanied by evidence demonstrating that
in light of the parties’ actual business activities, confusion, if likely, would have
occurred. See Cunningham, 55 USPQ2d at 1847.
In this case, the parties had used their marks concurrently for approximately nine
years at the time of trial. There is record evidence that Respondent’s goods were the
subject of a review in GUNS & AMMO magazine, in which Petitioner advertises its anti-
corrosion firearms storage bags, and that both parties have exhibited in recent years
at the NRA annual meeting, which draws some 80,000 attendees.29 Clearly, there has
been some opportunity for confusion to occur. However, the record contains

29 Dworkin Tr. at 12:9-13:12, 13 TTABVUE 13-14; Tuccio Tr. at 24:6-25:9 & Exhibit P, 25:25-
26:22, 17 TTABVUE 124-26, 210-14.
Opposition No. 92059194
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insufficient evidence concerning the parties’ contemporaneous business activities to
support a finding that confusion, if likely, already would have occurred.30
We find that the eighth du Pont factor weighs slightly against finding that there
is a likelihood of confusion. See, e.g., G.H. Mumm & Cie v. Desnoes & Geddes Ltd.,
917 F.2d 1292, 16 USPQ2d 1635, 1638 (Fed. Cir. 1990) (lack of actual confusion in
more than a decade weighs against finding that confusion is likely).
V. Conclusion
In sum, we have found that Petitioner has priority at common-law in goods legally
identified to Respondent’s registered goods, and that the parties’ marks are similar.
Our findings under the first, second, and third du Pont factors support a finding that
confusion is likely. Based on the length of time of concurrent use without evidence of
actual confusion, we have found that the eighth du Pont factor weighs slightly against
such a finding. Considering the record evidence as a whole, we conclude that
Respondent’s mark (left) is likely to cause confusion with Petitioner’s mark
ZERUST when used in association with anti-corrosion firearms storage
bags. Thus, Petitioner will be damaged by the continued registration of
Respondent’s mark.
Decision: The petition to cancel is granted, and Registration No. 4228638 will be
cancelled in due course.

30 We also note that printouts of discussions in online chat groups, on which Respondent relies
in support of its argument, are admissible for what they show on their face but not the truth
of what has been printed; i.e., they are not probative as to whether or not those who posted
comments either experienced confusion or distinguished the parties’ marks. See Respondent’s
Exhibits Y-DD, 16 TTABVUE 10-23, 96-99; Safer Inc. v. OMS Investments Inc., 94 USPQ2d
1031, 1040 (TTAB 2010).