ADI Limited

Trademark Trial and Appeal Board

Sep 12, 2008

No. 79025358 (T.T.A.B. Sep. 12, 2008)

Decision Mailed:
September 12, 2008
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re ADI Limited
________

Serial No. 79025358
_______

Eric O. Haugen of Haugen Law Firm PLLP for ADI Limited.

Ramona Ortiga Palmer, Trademark Examining Attorney, Law Office
117 (Loretta C. Beck, Managing Attorney).
_______

Before Hohein, Hairston and Bergsman, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

ADI Limited has filed an application to register on the
Principal Register in standard character form the mark
"BUSHMASTER" for "military vehicles, namely, armored military
vehicles, armored security vehicles for use by military
personnel, [and] armored mobility vehicles for rapid deployment
and protection of armored personnel" in International Class 12.1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that

1 Ser. No. 79025358, filed on April 4, 2006, which is based on
International Reg. No. 0888884, issued on April 4, 2006 and claiming a
priority date of March 20, 2006.

THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser. No. 79025358
2
applicant's mark, when applied to its goods, so resembles the
mark "BUSHMASTER," which is registered on the Principal Register
in standard character form for "tires, including all-terrain
vehicle tires" in International Class 12,2 as to be likely to
cause confusion, or to cause mistake, or to deceive.
Applicant has appealed and briefs have been filed. We
affirm the refusal to register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). See also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). However, as indicated in Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976), in
any likelihood of confusion analysis, two key considerations are
the similarity or dissimilarity of the goods at issue and the
similarity or dissimilarity of the respective marks in their
entireties.3 See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). Here, inasmuch as
the respective marks are identical in all respects, the primary
focus of our inquiry is accordingly on the similarities and
dissimilarities in the goods at issue along with consideration

2 Reg. No. 3,073,988, issued on March 28, 2006, which sets forth a date
of first use of the mark anywhere and in commerce of July 15, 2003.

3 The court, in particular, pointed out that: "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."
192 USPQ at 29.
Ser. No. 79025358
3
of, inter alia, such factors as the similarity or dissimilarity
of established, likely-to-continue trade channels and the
conditions under which and buyers to whom sales are made, i.e.,
"impulse" vs. careful, sophisticated purchasing.4
Turning first to the similarities and dissimilarities
in the respective goods, applicant maintains in its brief that
(italics in original):
It is extremely important that this
Board realize and give proper weight to the
fact that applicant's goods are specifically
limited to highly particularized goods in the
nature of armored military and security
vehicles. In rejecting the instant
application, the Examining Attorney,
generally, analogizes applicant's highly
sophisticated military goods to "automobiles"
or other consumer-based vehicles. In fact,
applicant's goods are not "automobiles,"
"motorcycles," "bicycles", or any other sort
of commonly marketed vehicle. Applicant's
mark is used in connection with armored
vehicles that are used for military purposes
and the like. These goods, in addition to
being highly sophisticated and extremely
expensive, are unrelated to "tires" per se.
This Du Pont factor clearly weighs in favor
of applicant.

The Examining Attorney, on the other hand, properly
notes as a preliminary matter in her brief that where the marks
at issue are identical, as is the case herein, the respective
goods "need not be as close to support a finding of likelihood of
confusion as might apply where differences exist between the
marks," citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB

4 Applicant, in its brief, contends that "[t]he BUSHMASTER mark cited
against applicant is not known to be famous, nor has the Examining
Attorney asserted that the '966 mark is famous." Although applicant
consequently insists that the du Pont factor of the fame of the prior
mark "weighs completely in applicant's favor," such factor is neutral
given the absence of evidence with respect thereto.
Ser. No. 79025358
4
2001) and Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70, 78
(TTAB 1981). See also, Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992), cert. denied, 506 U.S. 1034 (1994). In addition, the
Examining Attorney correctly points out that it is well
established that the issue of likelihood of confusion must be
determined on the basis of the goods as they are set forth in the
application and the cited registration. See, e.g., Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990); Canadian Imperial Bank of
Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813,
1815-16 (Fed. Cir. 1987); CBS Inc. v. Morrow, 708 F.2d 1579, 218
USPQ 198, 199 (Fed. Cir. 1983); Squirtco v. Tomy Corp., 697 F.2d
1038, 216 USPQ 937, 940 (Fed. Cir. 1983); and Paula Payne
Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973). Thus, where applicant's and
registrant's goods are broadly described as to their nature and
type, it is presumed in each instance that in scope the
application and cited registration encompass not only all goods
of the nature and type described therein, but that the identified
goods move in all channels of trade which would be normal for
those goods and that they would be purchased by all potential
buyers thereof. See, e.g., In re Elbaum, 211 USPQ 639, 640 (TTAB
1981).
Moreover, as the Examining Attorney also accurately
observes, it is well settled that goods need not be identical or

Ser. No. 79025358
5
even competitive in nature in order to support a finding of
likelihood of confusion. Instead, it is sufficient that the
goods are related in some manner and/or that the circumstances
surrounding their marketing are such that they would be likely to
be encountered by the same persons under situations that would
give rise, because of the marks employed in connection therewith,
to the mistaken belief that they originate from or are in some
way associated with the same producer or provider. See, e.g.,
Monsanto Co. v. Enviro-Chem Corp., 199 USPQ 590, 595-96 (TTAB
1978) and In re International Telephone & Telegraph Corp., 197
USPQ 910, 911 (TTAB 1978).
In light of such principles, the Examining Attorney
contends in her brief that the goods at issue are related,
arguing among other things that:
In this case, the registrant's goods are
identified broadly. Therefore, it is
presumed that the registration encompasses
tires for all types of vehicles, including
the applicant's military vehicles, that they
move in all normal channels of trade, and
that they are available to all potential
customers. ....

Furthermore, the evidence of record
shows that the applicant's "military
vehicles," even if "sophisticated," have
tires. ....

Contrary to applicant's arguments, the
examining attorney did not analogize the
applicant's goods to automobiles. Rather,
the examining attorney relied on the
identification of the goods specified in the
application.

Further asserting, however, that the identification of
applicant's vehicles "is broad enough to include armored military
automobiles" inasmuch as The American Heritage Dictionary of the
Ser. No. 79025358
6
English Language (4th ed. 2000) in relevant part defines
"vehicle" as "1a. A device or structure for transporting persons
or things, a conveyance: a space vehicle. b. A self-propelled
conveyance that runs on tires, a motor vehicle" and "automobile"
as "A self-propelled passenger vehicle that usually has four
wheels and an internal-combustion engine, used for land
transport,"5 the Examining Attorney maintains that applicant's
goods are "related to the registrant's tires" in that:
The relatedness of automobiles and tires
is well settled in this area. The Trademark
Trial and Appeal Board has consistently found
that the use of identical or similar marks on
automobiles and on tires is likely to cause
confusion. See In re Jeep Corp., 222 USPQ
333 (TTAB 1984) (holding LAREDO for land
vehicles and structural parts likely to be
confused with LAREDO for pneumatic tires);
... Jetzon Tire & Rubber Corp. v. Gen. Motors
Corp., 177 USPQ 467 (TTAB 1973) (holding
GEMINI and GMINI for automobiles likely to be
confused with GEMINI for vehicle tires);
[Gen. Motors Corp. v. Pacific Tire & Rubber
Co., 132 USPQ 562 (TTAB 1962) (holding BEL-
AIR for pneumatic tires likely to be confused
with BEL-AIR for automotive vehicles)]; see
also TMEP §1207.01(a)(i).

Furthermore, the Trademark Trial and
Appeal Board has consistently held that
vehicles and their various accessories, parts
and attachments are closely related goods
such that the average person encountering the
same or similar marks for such products is
likely to be confused as to their source. It
is well established in the marketplace that

5 The request by the Examining Attorney in her brief that the Board
take judicial notice of such definitions is granted. It is well
settled that the Board may properly take judicial notice of dictionary
definitions. See, e.g., Hancock v. American Steel & Wire Co. of New
Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953); University of
Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ
594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983); and Marcal Paper Mills, Inc. v. American Can Co., 212 USPQ 852,
860 n.7 (TTAB 1981).

Ser. No. 79025358
7
manufactures of vehicles often produce
accessories and attachments for such vehicles
and market them under the same mark. E.g.,
In re Gen. Motors Corp., 23 USPQ2d 1465, 1469
(TTAB 1992); In re Jeep Corp., 222 USPQ 333,
334 (TTAB 1984); In re Gen. Motors Corp., 196
USPQ 574, 575-76 (TTAB 1977).

In addition to the above cited precedent, the Examining
Attorney has made of record, as evidentiary support for her
position that the goods at issue herein are commercially related,
copies of fifteen use-based third-party registrations for marks
which are variously registered in International Class 12 for,
inter alia, "automobiles," "motor vehicles, namely[,]
automobiles," "motor vehicles, namely, automobiles, trucks, vans
... [and] sport-utility vehicles," "motorized vehicles, namely,
... automobiles ... [and] all-terrain vehicles," "land vehicles,
namely, automobiles, trucks, vans ... and sport utility
vehicles," "apparatus for locomotion by land, ... namely, all-
terrain vehicles; motor buses; motor coaches; automobiles; cars;
[and] motor cars," "all terrain vehicles," "sports utility
vehicles" and "off-road vehicles," on the one hand, and "tires,"
including "car tires," "tires for land vehicles," "motor vehicle
tires" and "pneumatic tires for land vehicles," on the other.
Although such registrations are not evidence that the different
marks shown therein are in use or that the public is familiar
with them, the Examining Attorney is nonetheless correct that the
registrations have some probative value to the extent that they
serve to suggest that the vehicles and tires therefor listed
therein are the kinds of goods which may emanate from a single
source. See, e.g., In re Infinity Broadcasting Corp. of Dallas,
Ser. No. 79025358
8
60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d as
not citable precedent, 864 F.2d 149 (Table, unpublished) (Fed.
Cir. 1988).
While we understand and appreciate that applicant's
armored military, security and mobility vehicles are highly
specialized and sophisticated land vehicles which are extremely
expensive relative to most automobiles, vans, sport utility
vehicles, light trucks, all-terrain and/or off-road vehicles and
the like for ordinary consumer use, it is still the case that
applicant's goods, as shown by its product literature which is of
record, utilize tires to run on just like general purpose
consumer vehicles. In fact, such literature indicates that the
"tyres" on applicant's specialty vehicles are "Low MMP Michelin
395/85 R20 with bead locks" and that a "push button central tyre
inflation system allows the driver to adjust tyre pressures on
the move for all terrains including highway, sand, mud/snow and
emergency conditions." Such all-terrain capability is likewise
encompassed by registrant's goods, which are identified as
"tires, including all-terrain vehicle tires." Registrant's
goods, therefore, must be broadly construed as including all
terrain tires for armored military, security and mobility
vehicles. Purchasers of applicant's military, security and
mobility vehicles, as well as those in the market for replacement
tires for such goods, would clearly regard registrant's tires as
commercially related to applicant's goods. Like the tires with
Ser. No. 79025358
9
which applicant's goods are equipped, registrant's goods would be
available in the same channels of trade, including the
aftermarket for replacement tires. Plainly, when applicant's
specialty military, security and mobility vehicles and
registrant's tires, including all-terrain vehicle tires, are
marketed under the identical mark "BUSHMASTER," confusion as to
source or sponsorship is likely to occur.
Applicant argues, however, that confusion is not
likely, contending among other things that "BUSHMASTER" is a weak
mark as shown by the coexistence with registrant's registration
of the following two third-party registrations:
Reg. No. 2,168,336, issued on the
Principal Register on June 23, 1998 for the
mark "BUSHMASTER" for an "automatic[] cannon,
namely, a large caliber machine gun for
military or police use, not for sale to the
general public" in International Class 13,
and which sets forth a date of first use of
the mark anywhere and in commerce of March
1982; renewed; and

Reg. No. 1,521,311, issued on the
Principal Register on January 17, 1989 for
the mark "BUSHMASTER" and design, as
reproduced below,

for "mail order and telephone order services
in the field of fire arms and related
accessories" in International Class 42, and
which sets forth a date of first use of the
mark anywhere and in commerce of September
20, 1979; combined affidavit §§8 and 15.
Ser. No. 79025358
10

According to applicant, "[t]he simultaneous registration of these
two marks is further evidence of the fact that applicant's mark
is fully registrable in spite of the existence of the '966
Registration," especially since "the goods at issue in this
proceeding are less related one to another than are the goods at
issue in the '336 and '311 Registrations."
The Examining Attorney counters by arguing that "third-
party registrations for seemingly similar marks featuring goods
dissimilar or unrelated to those in the application and the cited
registration are of little probative value in determining the
weakness of a mark," which she notes "is generally determined in
the context of the number and nature of similar marks in use in
the marketplace on similar goods." It is well settled, however,
that third-party registrations are entitled to little weight on
the issue of likelihood of confusion inasmuch as such
registrations do not demonstrate use of the marks which are the
subjects thereof in the marketplace or that the purchasing public
is familiar with the use of those marks and has learned to
distinguish between them. See, e.g., Olde Tyme Foods, Inc. v.
Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir.
1992); Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177
USPQ 462, 463 (CCPA 1973); AMF Inc. v. American Leisure Products,
Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973); and In re Hub
Distributing, Inc., 218 USPQ 284, 285-86 (TTAB 1983). Rather,
there simply is no evidence in this case that the mark
"BUSHMASTER" is weak in the field of vehicles of any sort for
transportation and their component parts, such as tires.
Ser. No. 79025358
11
Moreover, as the Examining Attorney also correctly points out,
"the existence on the register of other seemingly similar marks
does not provide a basis for registrability of the applied-for
mark," citing AMF Inc. v. American Leisure Products, Inc.,
supra; and In re Total Quality Group Inc., 51 USPQ2d 1474, 1477
(TTAB 1999). As our principal reviewing court stated in In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001), "[e]ven if some prior registrations had some
characteristics similar to [applicant's] application, the ...
allowance of such prior registrations does not bind the Board or
this court." See also, In re Broyhill Furniture Industries Inc.,
60 USPQ2d 1511, 1514 (TTAB 2001); and In re Pennzoil Products
Co., 20 USQP2d 1753, 1758 (TTAB 1991).
Applicant also stresses, with respect to the du Pont
factors of the conditions under which and buyers to whom sales
are made, i.e., "impulse" vs. careful, sophisticated purchasing,
and the length of time during and conditions under which there
has been contemporaneous use of the respective marks without
evidence of actual confusion that "applicant's market is
established as being absolutely sophisticated" inasmuch as its
goods "cost, on the average, hundreds of thousands of dollars."
Relying, as support for its position, on the December 3, 2007
declaration of record from Ian Cook, who is applicant's "General
Manager -- Land Systems, Protected Mobility," Mr. Cook states
among other things that:
9. [Applicant] ... has consistently and
uniformly exhibited and promoted the product
with reference to the trade mark BUSHMASTER
Ser. No. 79025358
12
in Europe and other markets since the product
was developed in 1997. ....

10 Articles regarding BUSHMASTER have been
published and distributed in the USA in
journals such as Jane's Defense Weekly and
other publications since 1999. Furthermore,
since February 2006, [applicant] ... and its
agents ... have proactively marketed the
vehicle in the USA at trade shows, field
displays and other exhibitions, including
various Association of the United States Army
exhibitions.

....

11. In relation to the BUSHMASTER vehicle,
[applicant's] ... target market in the USA is
the United States Army, the United States
Marine Corps, the United States Navy, the
Department of Homeland Security and other
military or paramilitary organizations. ....

....

15. The purchasing environment relevant to
[applicant's] ... military vehicles is, to
say the least, wholly strict. [Applicant]
... is subject to what are known as the
International Traffic in Arms Regulations
which mandate an extremely cautious and
considered sales process when military-based
products involving United States technology
are sold or marketed. Therefore, if a United
States government body purchases defense-
related material from [applicant] ... that
includes U.S.-made technology or innovations
(some variants of the BUSHMASTER vehicle
produced in the USA do contain U.S.-made
technology) it is highly unlikely that any
confusion could possibly arise as to the
origin of the goods in question. As noted
above, [applicant's] ... target market in the
United States is primarily the United States
military and its various branches, and it is
extremely unlikely that any confusion between
[applicant's] ... BUSHMASTER mark and the
mark at issue in ... Registration No.
3,073,966 covering "tires, including all-
terrain vehicle tires" could possibly occur.
[Applicant] ... specifically does not mark,
sell, or otherwise deal in tires in the USA.
[Applicant] ... in no way considers the
Ser. No. 79025358
13
registrant of ... Registration No. 3,073,966
("Carlisle") to be its competitor.

16. [Applicant] ... is unaware of even one
instance of confusion having occurred as
between its BUSHMASTER military vehicles and
tires sold by Carlisle under the BUSHMASTER
trademark. This is to be expected given the
completely sophisticated nature of
[applicant's] ... goods and the marketing of
the same, as well as the absolutely
sophisticated market at issue as concerns
[applicant's] ... goods. Simply stated, it
is highly unlikely that any reasonable person
would confuse or otherwise associate
[applicant] ... with Carlisle as a result of
[applicant] ... using its BUSHMASTER mark on
and in connection with military vehicles sold
to one of the most regulated and
sophisticated markets imaginable.

We concur with the Examining Attorney, however, that
even though applicant's goods are undoubtedly very expensive and
the purchasers thereof are certainly highly sophisticated, such
would not necessarily avoid a likelihood of confusion as to
source or sponsorship with respect to registrant's goods, which
in legal contemplation must be considered as replacement tires
for the all-terrain tires on which applicant's armored military,
security and mobility vehicles run. As the Examining Attorney
persuasively observes, it is well established that while buyers
may be knowledgeable and discriminating as to the goods required
to meet or take care of their particular needs or procurement
requirements, and thus would be expected to exercise care and
deliberation in their choice of goods, such sophistication "does
not necessarily preclude their mistaking one trademark for
another" or that they otherwise are entirely immune from
confusion as to source or sponsorship. Wincharger Corp. v.
Rinco, Inc., 297 F.2d 261, 132 USPQ 289, 292 (CCPA 1962). See
Ser. No. 79025358
14
also In re Research & Trading Corp., 793 F.2d 1276, 230 USPQ 49,
50 (Fed. Cir. 1986); In re Decombe, 9 USPQ 1812, 1814-15 (TTAB
1988); and In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB
1983). This would be especially so where, as here, the marks at
issue are identical in all respects.
Similarly, as to the apparent absence to date of
evidence of any incidents of actual confusion, the Examining
Attorney notes that as stated by the Board in In re Kangaroos
U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984):
[A]pplicant's assertion that it is
unaware of any actual confusion occurring as
a result of the contemporaneous use of the
marks of applicant and registrant is of
little probative value in an ex parte
proceeding such as this where we have no
evidence pertaining to the nature and extent
of the use by applicant and registrant (and
thus cannot ascertain whether there has been
ample opportunity for confusion to arise, if
it were going to); and the registrant has no
chance to be heard from (at least in the
absence of a consent agreement, which
applicant has not submitted in this case).

In particular, it is pointed out that in order for an asserted
lack of any incidents of actual confusion to be a meaningful
factor, the record must demonstrate that there has been
appreciable and continuous use by applicant of its mark in the
same market(s) as those served by registrant under its mark.
See, e.g., Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768,
1774 (TTAB 1992). Specifically, there must be evidence showing
that there has been an opportunity for instances of actual
confusion to occur and here the record is devoid of any such
proof. See, e.g., Cunningham v. Laser Golf Corp., supra at 55
USPQ2d 1847 (Fed. Cir. 2000). As asserted by Mr. Cook in his
Ser. No. 79025358
15
declaration, applicant and its agents "have proactively marketed"
its "BUSHMASTER" vehicles in the United States at trade shows,
field displays and other exhibitions, including various
Association of the United States Army exhibitions, only since
February 2006 and there is no indication whatsoever as to whether
registrant has likewise marketed its "BUSHMASTER" tires at the
same or similar marketing locales. The fact that applicant is
thus unaware of any instances of actual confusion spanning a
relatively short period of time involving an unknown sales volume
is not a meaningful factor in the determination of whether
confusion is likely to occur.
Accordingly, we conclude that purchasers who are
familiar or otherwise acquainted with registrant's "BUSHMASTER"
mark for "tires, including all-terrain vehicle tires," would be
likely to believe, upon encountering applicant's identical
"BUSHMASTER" mark for "military vehicles, namely, armored
military vehicles, armored security vehicles for use by military
personnel, [and] armored mobility vehicles for rapid deployment
and protection of armored personnel," that such commercially
related goods emanate from, or are sponsored by or affiliated
with, the same source. For instance, as previously noted,
purchasers could reasonably believe that registrant's
"BUSHMASTER" tires are designed or otherwise manufactured for use
with applicant's "BUSHMASTER" armored military, security and
mobility vehicles. To the extent that there may nonetheless be
any doubt as to our conclusion in this regard due to the very
expensive nature of applicant's highly sophisticated goods and
Ser. No. 79025358
16
the manner in which they are marketed, we resolve such doubt, as
we must, in favor of the registrant. See, e.g., In re Chatam
International Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1948 (Fed.
Cir. 2004); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6
USPQ2d 1025, 1026 (Fed. Cir. 1988); In re Martin's Famous Pastry
Shoppe, Inc., 748 F.2d 156, 223 USPQ 1289, 1290 (Fed. Cir. 1984;
and In re Pneumatiques Caoutchouc Manufacture et Plastiques
Kleber-Columbes, 487 F.2d 918, 179 USPQ 729, 729 (CCPA 1973).
Decision: The refusal under Section 2(d) is affirmed.