Outdoor Kids, Inc.v.Parris Manufacturing Co., Inc.

Trademark Trial and Appeal Board

Mar 9, 2009

No. 92045687 (T.T.A.B. Mar. 9, 2009)

Mailed:
March 9, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Outdoor Kids, Inc.

v.

Parris Manufacturing Co., Inc.
_____

Cancellation Nos. 92045687 and 92046943
_____

Joanna R. Mendoza of Law Offices of Joanna R. Mendoza, P.C.
for Outdoor Kids, Inc.

Andrea Barach and Jonathan D. Rose of Boult, Cummings,
Conners & Berry, PLC for Parris Manufacturing Co., Inc.
_____

Before Seeherman, Quinn and Walters, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Parris Manufacturing Co., Inc. owns Registration No.
3055384 for KID’S OUTDOORS and design, as shown below, for
“clothing, namely, children’s costumes, vests, shirts and
caps” (the Class 25 registration), and Registration No.
3055385 for the same mark for “toys, namely, toy guns, and
toy hunting and fishing gear” (the Class 28 registration).
The mark is described as consisting of “A banner showing the
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Cancellation Nos. 92045687 and 92046943
2
words ‘KID’S OUTDOORS’ with a side view of a large elk
standing within an oval shown behind the banner.” Both
registrations issued on January 31, 2006, from applications
that were filed on February 22, 2005, and both contain a
disclaimer of KID’S OUTDOORS.

Outdoor Kids, Inc. has petitioned to cancel these
registrations on the ground of likelihood of confusion and
dilution.1 Specifically, in Cancellation No. 92045687 (to
cancel the Class 25 registration) petitioner has alleged it
began using the mark OUTDOOR KIDS for outdoor clothing,
footwear and headgear for children in February 1997, and

1 See discussion, infra, with respect to the dilution ground.
Petitioner also alleged in its petitions that “Respondent’s mark
consists of and comprises deceptive matter which may disparage
and/or falsely suggest a connection to [petitioner].” ¶ 6.
However, petitioner did not discuss any Section 2(a) grounds in
its brief, and to the extent petitioner was attempting to assert
that respondent’s marks are deceptive or disparaging or falsely
suggest a connection with petitioner, we deem those claims to
have been waived.
Cancellation Nos. 92045687 and 92046943
3
that since May 1997 it has been using the mark in interstate
commerce. In Cancellation No. 92046943 (to cancel the Class
28 registration) petitioner has alleged that in addition to
its use on clothing, it began using the mark OUTDOOR KIDS
for sporting goods for children in February 1997, and that
since May 1997 it has been using the mark in interstate
commerce. Both petitions also allege that petitioner
obtained a trademark registration for OUTDOOR KIDS for goods
in both Class 25 and Class 28. In its answers to both
petitions respondent admitted the allegations of paragraph 2
of the petitions that petitioner “applied for a trademark of
its mark OUTDOOR KIDS in January 2003, and the mark was
registered July 20, 2004 (U.S. Trademark Registration
2,864,915) under both IC 025 and IC 028.” Respondent
otherwise denied the remaining essential allegations of the
petitions for cancellation.2
On March 6, 2007 the Board granted petitioner’s motion
to consolidate the proceedings because they involve common
questions of law and fact.
By operation of the trademark rules the record includes
the pleadings and the files of the registrations sought to

2 Respondent also asserted, as “affirmative defenses,” that the
petition fails to state a claim upon which relief can be granted,
and that petitioner has never properly used OUTDOOR KIDS as a
trademark for the goods specified in its application and
registration. We have given no consideration to either defense.
Respondent never filed a motion to test the sufficiency of the
Cancellation Nos. 92045687 and 92046943
4
be cancelled. The parties stipulated that testimony could
be submitted by affidavit or declaration, and pursuant to
that stipulation the parties made of record the declaration
testimony, with exhibits, of Jennifer Decker, petitioner’s
president; Craig A. Phillips, respondent’s president; and
Jonathan D. Rose, respondent’s counsel. The parties also
stipulated that all discovery responses, including documents
produced in response to document production requests, and
copies of the parties’ registrations, taken from the USPTO’s
TARR database, could be submitted under notice of reliance.
Petitioner submitted respondent’s responses to certain of
petitioner’s interrogatories and requests for admission; its
pleaded registration taken from the USPTO’s TARR database;
and the TARR database entries for respondent’s registrations
that are the subject of this consolidated cancellation
proceeding, which show the history of the
applications/registrations. Respondent submitted the
complete file of the two registrations at issue in this
proceeding;3 petitioner’s responses to certain of
respondent’s requests for admission, interrogatories and
requests for production of documents, and portions of the
discovery deposition of Jennifer Decker; the file of

pleadings, nor did it file a counterclaim or separate petition to
cancel petitioner’s pleaded registration.
3 It was not necessary for respondent to submit the files of
these registrations, as they are automatically of record by
operation of Trademark Rule 2.122(b).
Cancellation Nos. 92045687 and 92046943
5
petitioner’s pleaded registration; and the certificates and
file histories for certain third-party registrations and a
third-party application.
The case has been fully briefed.
Petitioner adopted the name OUTDOOR KIDS in 1997,
filing a fictitious business name statement for Outdoor
Kids, Inc. on April 22, 1997 which indicated a “beginning
date of business” on May 1, 1997 and also filed articles of
incorporation for Outdoor Kids, Incorporated that were
signed on April 30, 1997, and endorsed by the office of the
California Secretary of State on May 23, 1997. Although the
declaration testimony of petitioner’s president states that
petitioner first began using the mark in February 1997 and
in interstate commerce by May 1, 2007, it appears that this
use was as a trade name or service mark for the retail or
online sale of products. It also appears that the only
goods on which petitioner has used its mark are swimsuits
and water bottles, as shown by Ms. Decker’s declaration
testimony:
¶ 14. From the early stages of the
company the intent has been to expand
into manufacturing and distributing of
OUTDOOR KIDS brand outdoor clothing.
OKI has been successfully selling
private label OUTDOOR KIDS brand UV
swimsuits (one-piece and two piece suits
in pink, purple and royal blue). OKI is
currently in various stages of
negotiations and planning for
manufacturing several types of outdoor
clothing after the huge success of its
Cancellation Nos. 92045687 and 92046943
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OUTDOOR KIDS branded UV suits, which
significantly outsold the name brand
also offered by OKI. Petitioner is
planning to produce children’s snow/ski
bibs and bib/jacket sets based upon
OKI’s drawings and specifications and
manufactured in Vietnam for sale
beginning winter of 2009. These are
OKI’s own product, with each item of
clothing bearing an OUTDOOR KIDS brand
tag sewn in the garments with paper tags
attached at the sleeve, on the zipper or
at the collar.

¶ 15. Furthermore, OKI has designed a
line of OUTDOOR KIDS brand t-shirts and
hired an artist to prepare unique
designs for those t-shirts. The first
set of t-shirts is scheduled to be
produced 2008-2009. Again, these will
have the OUTDOOR KIDS paper tag attached
to the garment.

¶ 16. Finally, OKI put its OUTDOOR KIDS
brand name on Nalgene water bottles and
sold them as “OUTDOOR KIDS Water
Bottles.”4 …

Ms. Decker testified to the same effect in her
discovery deposition, pp. 76-76:
Q.: Other than the UV suits, is there
any other goods that - - are there any
other goods that Outdoor Kids
Incorporated has manufactured
exclusively for sales?

A.: Water bottles. We don’t
manufacture them but we have our logo on
them and we brand them and we sell
those.
***
Q.: But the remainder of your products,
you buy them wholesale from other
manufacturers; is that right?

4 There is no indication as to whether petitioner removed the
NALGENE trademark from these bottles.
Cancellation Nos. 92045687 and 92046943
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A.: Yes.
Q.: Or through distributors?
A.: Yes.
Q.: And many of those products are sold
under other trademarks; for example,
North Face; isn’t that right?

A.: Yes. It’s like when you go to
Macy’s and Gottchalks and you buy a pair
of Crocs there. That is correct.

The advertising that petitioner has submitted is in the
nature of retail store advertising in which clothing bearing
third-party marks is featured. For example, one
advertisement features “40% OFF ALL NORTH FACE Rain
Jackets,” (emphasis in original) and also lists Sorel snow
boots, Kamik rain and snow boots, Columbia rain and snow
suits and Kidorable rain gear. The print catalog which
petitioner used when it first commenced business also
features items with third-party brands, such as “Snow Bibs
by Rawik Kids,” “Kamik rain and snow boots,” “Snow Mittens
by Zero” and “Goofy and Mickey bobbers by Zebco.”
In short, the references to sales of goods in Ms.
Decker’s declaration appear in general to relate to its
retail or online sales of third parties’ products rather
than to the sales of its own goods bearing the mark OUTDOOR
KIDS. From the evidence of record it appears that
petitioner has used OUTDOOR KIDS as a trademark only for
Cancellation Nos. 92045687 and 92046943
8
swimsuits and water bottles, and it is not clear when
petitioner began selling these goods under the mark.5
Petitioner sells its products primarily through the
internet at its website www.outdoorkids.com. It also has an
arrangement with Amazon.com by which it is linked to the
Amazon website as an official “storefront.” In addition,
petitioner receives orders by telephone, fax, email and
letters, and people visit its retail store, OUTDOOR DAVIS,
and its warehouse.
Respondent began making non-functional rifles for
training purposes during World War II, and since the end of
that war has been making toy rifles. It later expanded its
line to other hunting and to fishing-related toys, along
with play hunting and fishing costumes and other children’s
playwear. It first used the KID’S OUTDOORS and design mark
at issue in this proceeding in connection with the sale of
toy guns and toy hunting and fishing gear on June 23, 2004,
and in connection with the sale of children’s costumes,
vests, shirts and caps on January 31, 2005.

5 Petitioner’s witness stated that since its first retail order
in 1997 it has “affixed its OUTDOOR KIDS mark to most all of the
shipments of clothing and goods sold on the internet or via mail-
order.” ¶13. However, petitioner also characterized its
inclusion of a thank you card with the merchandise as “affixing”
or “attaching” it. Id. These notes say “Hi! Thanks again for
your order. We hope you like your new things! Have a great
[appropriate season]. From the Moms & Dads at Outdoor Kids.” We
do not regard these notes as showing use of the mark for the
goods.

Cancellation Nos. 92045687 and 92046943
9
Before we address the substantive grounds in this
proceeding, we must discuss both a procedural issue and the
parties’ evidentiary objections. First, petitioner has
asserted in its brief that one of the grounds for
cancellation of respondent’s registrations is dilution. It
does not appear to us that such a ground was adequately
pleaded. The petitions do not actually use the word
“dilution” at all, nor did petitioner plead that its mark
became famous prior to respondent’s constructive or actual
use date. However, respondent has not objected to the
statement in petitioner’s brief that dilution is one of the
grounds, and has discussed the merits of the ground in its
own brief. Accordingly, because the parties have treated
the ground of dilution as having been tried, we deem the
pleadings to be amended pursuant to Rule 15(b) of the
Federal Rules of Civil Procedure to include this ground.
Petitioner has raised a number of evidentiary
objections on the basis of relevancy. We are frankly
surprised that petitioner would consider this material
irrelevant, e.g., petitioner has objected to the files of
the registrations that it seeks to cancel, claiming that
only the registrations themselves with the identifications
listed on them are relevant. The objections are all
overruled. Further, because it is so clear that the
testimony and exhibits are relevant, we will address the
Cancellation Nos. 92045687 and 92046943
10
objections in summary fashion. The files of respondent’s
registrations are automatically of record pursuant to
Trademark 2.122(b). Because statements which were made in
the course of obtaining petitioner’s pleaded registration
are facts which may be considered in this proceeding, see
Interstate Brands Corporation v. Celestial Seasonings, Inc.,
576 F.2d 926, 198 USPQ 151 (CCPA 1978), petitioner’s
registration file is relevant. The third-party
registrations taken from the TARR database go to the issue
of the strength of petitioner’s mark. Paragraphs 2 and 3 of
the Phillips testimony declaration provide background about
the company’s activities, while paragraphs 8 and 9 relate to
respondent’s catalogs showing respondent’s goods bearing the
mark at issue and discuss the goods to which respondent
affixes its mark. The testimony declaration of Jonathan
Rose is not hearsay, in that Mr. Rose has testified to
internet searches he performed; he has also by his testimony
authenticated the exhibits attached thereto.
Respondent, too, has raised several objections to
petitioner’s testimony. Again, we will not burden this
opinion with an extended discussion of them. To the extent
that the witness testified that petitioner has standing in
paragraph 5, we agree that this is a legal conclusion and
has no evidentiary value. This objection is sustained.
Objection 2, to paragraph 6, is overruled. Objection 3, to
Cancellation Nos. 92045687 and 92046943
11
paragraph 12, is overruled. Objection 4 is overruled, as
such testimony as the manner in which customers could come
into contact with petitioner’s mark, development of
petitioner’s inventory, sales and advertising, etc., is
clearly relevant. Objection 5 is overruled; it is not
hearsay. We do not treat the material in paragraph 19 as
hearsay, and therefore overrule objection 6, although we
will consider the probative weight to be given to this
testimony. Objection 7 insofar as it relates to paragraph
20 is overruled; we do not consider the witness’s testimony
as to which goods in respondent’s catalog are similar to
petitioner’s goods to be “the improper opinion of a lay
witness.”6 As for paragraph 21, we agree that this is a
legal conclusion, and sustain the objection to this
paragraph.
Petitioner has made of record its Registration No.
2864915 for OUTDOOR KIDS in typed drawing form for “outdoor
clothing, footwear and headgear for children, namely,
jackets, parkas, socks, sock liners, ski bibs, UV protection

6 We note that part of a sentence in paragraph 20 of the Decker
declaration appears to be missing, as the penultimate sentence
ends with the phrase “petitioner’s registration include.” The
portion of the sentence that is in the declaration is merely an
introduction to the missing substantive part of the sentence, and
therefore we give this sentence no probative value. However, the
fact that the sentence is incomplete has no effect on our
decision herein, since it purportedly was to indicate those goods
in respondent’s catalog that the witness believed were in the
same category as petitioner’s goods, and we can ascertain this
information for ourselves.

Cancellation Nos. 92045687 and 92046943
12
swim suits, floatation swim suits, hiking boots, snow boots,
rain boots, rain jackets, rain pants, rain suits, hats, long
underwear, gloves, mittens, snow suits, turtleneck shirts,
t-shirts, cloth swim diapers” in Class 25, and “sporting
goods for children, namely, skis, ski poles, ski leashes,
ski harnesses, snowshoes, fishing poles, rock climbing
harnesses” in Class 28. This registration issued on
July 20, 2004 under the provisions of Section 2(f), and with
KIDS disclaimed. Petitioner has also submitted testimony as
to its use of this mark for swimsuits and water bottles.
Petitioner has, therefore, adequately established that it is
not a mere intermeddler, and that it has standing to pursue
this consolidated proceeding. Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982).
With respect to priority, because this is a
cancellation proceeding in which both petitioner and
respondent own registrations, priority is in issue. Cf.
King Candy Company v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974). However, the parties may
rely on the filing dates of their respective registrations
to establish constructive use of their marks for the goods
listed in their registrations. Brewski Beer Co. v. Brewski
Brothers, Inc., 47 USPQ2d 1281, 1284 (TTAB 1998). The
Cancellation Nos. 92045687 and 92046943
13
filing date of the application which matured into
petitioner’s pleaded registration is January 29, 2003. The
filing date of the applications which matured into
respondent’s registrations is February 22, 2005, which is
obviously later. Moreover, respondent’s president testified
that it first used its mark for toy guns and toy hunting and
fishing gear on June 23, 2004 and for children’s costumes,
vests, shirts and caps on January 31, 2005. Thus, with its
constructive use date of January 29, 2003, petitioner has
shown it has priority.7
This brings us to the issue of likelihood of confusion.
Our determination is based on an analysis of all of 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 Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003).

7 As we discussed supra, petitioner apparently did not use
OUTDOOR KIDS as a trademark for most of the goods identified in
its registration. (In fact, at her discovery deposition
petitioner’s witness stated that she included the word “et
cetera” in the original identification of goods in the
application, which was based on use in commerce, because she was
“trying to identify gross classes of what we might be wanting to
sell at that point or any time in the future and that’s why I
used the word et cetera.” p. 40.) However, respondent never
counterclaimed to cancel the registration, and therefore we must
treat the registration as valid. Petitioner may therefore rely
on the registration for all the presumptions conferred by Section
7 of the Trademark Act.

Cancellation Nos. 92045687 and 92046943
14
We begin our analysis with the du Pont factor of fame
because petitioner has asserted that its mark is famous and
fame, when present, plays a dominant role in the
determination of likelihood of confusion. Kenner Parker
Toys Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22
USPQ2d 1453 (Fed. Cir. 1992). We find that petitioner has
failed to prove that its mark is famous for clothing or
toys. Petitioner has provided no sales figures for its
goods. As noted, the only goods on which petitioner uses
the mark OUTDOOR KIDS are swimsuits and water bottles; the
other items that it sells through its retail store and
website bear the marks of third parties. It is not clear
when petitioner started selling the swimsuits and water
bottles bearing its mark, nor has petitioner provided
information about the number that it has sold.8 We also
point out that petitioner’s registration does not include
water bottles, and because petitioner’s likelihood of
confusion ground is based on its registration, rather than
common law trademark rights in the mark for water bottles,
its sales of water bottles are not relevant. In any event,
petitioner has not shown that it began using its mark on
water bottles prior to respondent’s constructive or actual
use dates.

8 In fact, petitioner has not provided sales figures with
respect to any goods it sells, including goods of third parties
that it sells through its online and retail stores.
Cancellation Nos. 92045687 and 92046943
15
Nor has petitioner provided any advertising figures, or
provided anything other than some very general statements:
It has advertised in a variety of
newspapers and parent-oriented
publications across the United States.
In the early years of the company we did
advertising campaigns in New York,
Boston, Chicago, San Francisco and
Washington state.

Decker declaration, ¶10. Moreover, the four exhibits
submitted as examples of such advertising are in the nature
of retail store advertising. We have previously discussed
one of these advertisements which, in addition to being for
store services, is undated and is from a local newspaper,
the “Davis Enterprise” (California). Another undated ad
which appears to have been published in “Family & Leisure,”
is headlined “High Quality Outdoor Clothing & Equipment” and
lists third-party marks North Face, Columbia, Sorel, Kelty
and Teva. The other two exhibits are letters, both of which
list products bearing third-party marks, e.g., North Face
parkas, Medalist long underwear, Kamik snow boots, Fox River
socks and Life is Good shirts and caps are listed in the
November 20, 2005 letter. Such exhibits do not show
advertising of OUTDOOR KIDS as a trademark for petitioner’s
goods, as opposed to third-party goods that petitioner
sells. Petitioner has also stated that it has sold its
products via “articles and interviews in magazines and
newspapers (including ‘Wall Street Journal’ and ‘Better
Cancellation Nos. 92045687 and 92046943
16
Homes and Gardens Kids’)” Decker, ¶11, but did not submit
examples of such articles or interviews. In view of
petitioner’s expansive view of what “sales and advertising”
of its goods encompass, we cannot ascertain whether these
articles and interviews actually refer to petitioner’s goods
sold under the trademark OUTDOOR KIDS.
Petitioner’s president also testified that in 2007
hundreds of its OUTDOOR KIDS Nalgene water bottles were used
in prize packages awarded in “Daddy Day Camp Olympiads,”
day-long outdoor events for children that promoted the Sony
Picture movie “Daddy Day Camp,” and that petitioner also ran
a sweepstakes contest on-line for the movie promotion.
Water bottles are not covered by petitioner’s registration,
nor has petitioner pleaded or proved prior common law rights
in OUTDOOR KIDS for water bottles, and therefore any fame
from this advertising campaign cannot show that petitioner’s
mark is famous for the goods at issue. In any event, the
limited information provided by petitioner with respect to
the distribution of these goods is not sufficient to show
that OUTDOOR KIDS is a famous mark for water bottles.
Given the great deference that is given to a famous
mark, one asserting that its mark is famous must clearly
prove it. The vague and limited information provided by
petitioner certainly is not sufficient for us to conclude
Cancellation Nos. 92045687 and 92046943
17
that its mark is famous for the goods identified in its
registration.
On the contrary, we find that petitioner’s mark is
weak. During the course of prosecution the Examining
Attorney refused petitioner’s application on the ground of
descriptiveness, and also required a disclaimer of KIDS
because “the wording is merely a generic term for the
goods.” Office action mailed July 11, 2003. In response
petitioner amended its application to seek registration
under Section 2(f) of the Act, and also submitted a
disclaimer of KIDS. By doing so, petitioner has admitted
that OUTDOOR KIDS is not inherently distinctive, and that
these words are merely descriptive of its goods, with the
word KIDS being generic. Yamaha International Corp. v.
Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005
(Fed. Cir. 1988) (“Where, as here, an applicant seeks a
registration based on acquired distinctiveness under Section
2(f), the statute accepts a lack of inherent distinctiveness
as an established fact.”) Respondent has not counterclaimed
to cancel petitioner’s registration on the ground that its
mark is merely descriptive, and therefore we must accept
that the mark has acquired distinctiveness. However, there
are degrees of acquired distinctiveness. Petitioner’s mark
is made up of two elements that are generic and/or highly
descriptive, with KIDS being an admittedly generic term for
Cancellation Nos. 92045687 and 92046943
18
its goods and OUTDOOR being a highly descriptive, if not
generic word for outdoor clothing. In fact, petitioner has
identified its clothing as “outdoor clothing… for children.”
OUTDOOR is also highly descriptive of the Class 28 items
identified in petitioner’s registration, since they are all
sporting goods that are used for outdoor activities.
Although petitioner was able to obtain a registration on the
basis of acquired distinctiveness, the degree of such
acquired distinctiveness must be viewed as minimal. The
only Class 25 goods on which petitioner has used its mark
are swimsuits, and there is no evidence as to sales figures
or advertising for these goods. And petitioner has not used
its mark for any of the goods in Class 28. Thus, there is
nothing in the record that would enable us to conclude that,
by virtue of petitioner’s use and advertising of its mark
for its own clothing and toy products, petitioner’s mark has
become a strong mark.9 Accordingly, in the likelihood of
confusion analysis we must treat petitioner’s mark as a weak
mark that is not entitled to a broad scope of protection.
See Sure-Fit Products Co. v. Saltzson Drapery Co., 254 F.2d

9 We point out that petitioner neither pleaded nor argued any
rights in OUTDOOR KIDS as a service mark for e-tail or retail
store services, or likelihood of confusion stemming from such
rights. In any event, the record does not show that the mark has
acquired distinctiveness for such services. Moreover, in view of
our finding, discussed infra, that there is no likelihood of
confusion with respect to use of the mark for the legally
identical goods recited in the parties’ registrations, there
could be no likelihood of confusion with respect to petitioner’s
services.
Cancellation Nos. 92045687 and 92046943
19
158, 117 USPQ 295, 296 (CCPA 1958), (“though appellant
[plaintiff] has obtained a registration for this mark on the
principal register as a secondary meaning mark, there is
nothing in the record to indicate that this mark is not
still in the category of a weak mark”).
This brings us to a consideration of the marks.
Petitioner’s mark is OUTDOOR KIDS with KIDS disclaimed,
while respondent’s mark is KID’S OUTDOORS appearing on a
banner placed over the design of an elk. Both parties
recognize that, in determining likelihood of confusion,
there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular
feature of a mark, provided the ultimate conclusion rests on
a consideration of the marks in their entireties. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). Where the parties differ is which element of
respondent’s mark should be considered the dominant feature.
Respondent argues that because the words KID’S OUTDOORS in
its mark are descriptive and have been disclaimed, the elk
design in its mark must be considered the dominant portion.
Petitioner, on the other hand, cites Board cases for the
principle that, if a mark comprises both a word and a
design, the word is normally accorded greater weight. We
agree that, despite the fact that they are disclaimed, the
words KID’S OUTDOORS remain a noticeable part of
Cancellation Nos. 92045687 and 92046943
20
respondent’s mark. However, petitioner itself has
acknowledged that the elk design is distinctive: “the
inclusion of the graphic design of an elk does nothing to
promote the concept of clothing and accessories for kids.”
Brief, p. 18. Moreover, there is no per se rule that words
must always predominate over designs. See Parfums de Coeur
Ltd. v. Lazarus, 83 USPQ2d 1012 (TTAB 2007). And, even if
an element of a mark is dominant, this does not mean that
other elements may simply be ignored in the likelihood of
confusion analysis. Id. See In re Electrolyte Laboratories
Inc., 913 F.2d 930, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990)
(“There is no general rule as to whether letters or design
will dominate in composite marks; nor is the dominance of
letters or design dispositive of the issue”). Moreover,
when the word portion of marks are highly suggestive or
descriptive, the presence of a design may be a more
significant factor. See In re Hamilton Bank, 222 USPQ 174,
179 (TTAB 1984). Thus, in our consideration of the marks as
a whole, we must consider the design portion of respondent’s
mark as a distinguishing element.
As for the word portion, as petitioner has pointed out,
KID’S OUTDOORS is essentially a transposition of
petitioner’s mark, OUTDOOR KIDS. Both petitioner and
respondent have cited various cases involving transposed
elements, in some of which likelihood of confusion was
Cancellation Nos. 92045687 and 92046943
21
found, and in some of which it was not. The different
outcomes show, once again, that the determination of
likelihood of confusion depends on the facts of the
particular case. See Jaquet-Girard S.A. v. Girard Perregaux
& Cie., S.A., 423 F.2d 1395, 165 USPQ 265, 266 (CCPA 1970)
(“prior decisions on different marks used under different
circumstances are of little value in deciding a specific
issue of likelihood of confusion”). As we have already
stated, the individual words “kids” and “outdoors” in each
mark are highly descriptive and/or generic for the
respective goods, and the phrase KID’S OUTDOORS is also
descriptive, while OUTDOOR KIDS although registered under
Section 2(f), has acquired distinctiveness only for that
particular word order, and is still a weak mark. As a
result, consumers are not likely to assume that all marks
that contain these elements or permutations of these
elements indicate a common source.
Further, the words in the respective marks have
different connotations and commercial impressions. In the
mark OUTDOOR KIDS the word OUTDOOR modifies KIDS, so the
connotation is that of children who enjoy outdoor activities
or nature. In the phrase KID’S OUTDOORS, the word KID
modifies OUTDOORS, so the connotation is of an outdoor
environment that is friendly to children, or that works on a
Cancellation Nos. 92045687 and 92046943
22
level for children where they can do what they like or where
they have control.
In the particular circumstances of this case, where
petitioner’s mark is weak and the word portion of
respondent’s mark is descriptive, we find that the
transposition of the words and the presence of the elk
design in respondent’s mark are sufficient to distinguish it
from petitioner’s mark. In short, this is a circumstance
where consumers would rely on what would otherwise be slight
differences between petitioner’s OUTDOOR KIDS mark and
respondent’s KID’S OUTDOORS and design mark to distinguish
the marks.
We recognize that some of the goods as identified in
petitioner’s registration encompass or are encompassed by
some of the goods identified in respondent’s registration,
e.g., hats and caps, t-shirts and shirts, fishing poles and
fishing gear, and therefore these goods must be deemed to be
legally identical and to travel in identical channels of
trade to the same classes of customers. These goods are
also general consumer goods which would be purchased by the
public at large, such that the purchasers would not be
sophisticated, and may not exercise a great deal of care in
making purchasing decisions. All of these du Pont factors
favor a finding of likelihood of confusion.
Cancellation Nos. 92045687 and 92046943
23
However, each of the du Pont factors may, in any
particular case, play a dominant role. In re E. I. du Pont
de Nemours & Co., 177 USPQ at 567. See also, Kellogg Co. v.
Pack’em Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed.
Cir. 1991). In the present case, the weakness of
petitioner’s mark and the differences in the marks deserve
greater weight in the likelihood of confusion analysis. As
the Court said in Sure-Fit Products Co. v. Saltzson Drapery
Co., 117 USPQ at 297:
It seems both logical and obvious to us
that where a party chooses a trademark
which is inherently weak, he will not
enjoy the wide latitude of protection
afforded the owners of strong
trademarks. Where a party uses a weak
mark, his competitors may come closer to
his mark than would be the case with a
strong mark without violating his
rights. The essence of all we have said
is that in the former case there is not
the possibility of confusion that exists
in the latter case.

Thus, when we weigh the relevant du Pont factors, we
find that respondent’s mark for its identified goods is not
likely to cause confusion with petitioner’s mark for its
identified goods.10 In view of the weakness of petitioner’s

10 Petitioner also points out that respondent has submitted
limited evidence of third-party use or registrations of OUTDOOR
KIDS marks. Third-party registrations show only that a term has
significance in a particular field and, given that petitioner has
admitted that the words “outdoor kids” are descriptive of
clothing and toys for children, such evidence is unnecessary.
Moreover, because the term is descriptive, it is not surprising
that third parties would choose marks that are stronger
indicators of source.

Cancellation Nos. 92045687 and 92046943
24
mark, the differences in the marks are sufficient to
distinguish respondent’s mark from petitioner’s mark,
despite the fact that the goods are legally identical, must
be deemed to travel in the same channels of trade, and be
purchased by ordinary consumers who do not exercise a great
deal of care.
In reaching our conclusion that confusion is not likely
to occur, we have not accorded any probative weight to
petitioner’s testimony about actual confusion. In her
testimony declaration, executed on April 23, 2008, Ms.
Decker stated:
¶19. Since the Respondent began using
the mark in question, the issue of
confusion between consumers and
suppliers comes up on a regular basis,
with [petitioner] being contacted under
the mistaken impression that it is a
different company using the OUTDOOR KIDS
name or being referenced in a manner
indicating that it is being mistaken
with a different company. However, the
names of those persons who have
indicated confusion are not necessarily
recorded. Nevertheless, I can attest
that this occurs and that I have taken
many such calls myself over the years.

Aside from the vague nature of this testimony, it is
not credible. At her discovery deposition that was taken
three months earlier, on January 17, 2008, she unequivocally
testified that she was not aware of any instances of actual
confusion:
Q.: Miss Decker, let me ask you, are
you aware of any instances in which a
Cancellation Nos. 92045687 and 92046943
25
potential customer for your goods has
been confused between the Outdoor Kids
mark and the Parris [respondent] mark?

A.: No.

Disc. dep., pp.84-85. Thus, she clearly did not take many
calls herself “over the years.”11 And we cannot accept that
there were calls between the time of her discovery
deposition and her testimony declaration. Petitioner had a
duty to supplement its answers to discovery, and therefore
cannot rely on evidence that it did not provide in
discovery. Moreover, we do not believe that if petitioner
had received evidence of actual confusion at the point that
it was fully engaged in this proceeding that it would not

11 Petitioner argues in its reply brief that respondent has
misleadingly attempted to contradict Ms. Decker’s trial testimony
by using quotes from Ms. Decker’s discovery deposition in which
she testifies only with respect to whether she was aware of any
instances in which a potential customer was confused. Petitioner
states that “Respondent’s argument that there is no evidence of
actual confusion relies completely upon a carefully selected
snippet of testimony that does not provide the full extent of the
evidence on actual confusion.” Reply brief, p. 14. However, if
petitioner believed that the portion of Ms. Decker’s discovery
deposition was misleading it could have submitted additional
portions of the deposition. See Trademark Rule 2.120(j)(4) (If
only part of a discovery deposition is submitted and made part of
the record by a party, an adverse party may introduce under a
notice of reliance any other part of the deposition which should
in fairness be considered so as to make not misleading what was
offered by the submitting party). Nor does petitioner explain
how or why the statements made by Ms. Decker in her discovery
deposition do not contradict the statements made in her testimony
declaration. To the extent that petitioner is suggesting that
the telephone calls evidencing confusion relate to a third party,
this is not evidence of actual confusion arising from
respondent’s use of its mark. And if petitioner is relying on
confusion by suppliers, they are not the relevant group to show
actual confusion.

Cancellation Nos. 92045687 and 92046943
26
have taken note of the details of such confusion, such as
the dates of the incidents, the nature of the conversation,
and the names of persons who were actually confused in order
to use such information at trial.12
The next ground we consider is that of dilution.
Section 43(c)(1) of the Trademark Act, 15 U.S.C. §1125,
provides that “Subject to the principles of equity, the
owner of a famous mark that is distinctive, inherently or
through acquired distinctiveness, shall be entitled to an
injunction against another person who, at any time after the
owner’s mark has become famous, commences use of a mark or
trade name in commerce that is likely to cause dilution by
blurring or tarnishment of the famous mark, regardless of
the presence or absence of actual or likely confusion, of
competition, or of actual economic injury.” Section 14
provides that dilution by blurring or by tarnishment under
Section 1125(c) is a basis for bringing a cancellation
action.
As set out in the Act itself, and as interpreted by
case law, one of the factors to be considered in determining
whether dilution has been proven is whether the plaintiff’s

12 It would seem that petitioner’s president, who was a
practicing attorney before she devoted herself full-time to her
business, would have noted details of any instances of actual
confusion from the time the petition for cancellation was filed
in April 2006, or even from the time she first became aware of
respondent’s application as a result of a routine search of the
USPTO records she did in July 2005.
Cancellation Nos. 92045687 and 92046943
27
mark is famous. See Toro Co. v. ToroHead Inc., 61 USPQ2d
1164 (TTAB 2001). Fame for likelihood of confusion purposes
and fame for dilution purposes are distinct concepts. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). A
mark may have acquired sufficient public recognition and
renown to demonstrate that it is a strong mark for
likelihood of confusion purposes without meeting the
stringent requirements to establish that it is a famous mark
for dilution purposes. Toro Co. v. ToroHead Inc., 62
USPQ2d at 1170.
We have already found that petitioner has failed to
prove that OUTDOOR KIDS is a famous mark in our likelihood
of confusion analysis. Therefore, given the stricter
standard required to prove fame for dilution, it is clear
that petitioner has not proven that OUTDOOR KIDS is famous
for dilution purposes. Accordingly, we find that
petitioner has failed to establish its claim of dilution.
Decision: The petition for cancellation is dismissed
as to the grounds of likelihood of confusion and dilution.