Advantage Supplies, Inc.Download PDFTrademark Trial and Appeal BoardApr 8, 2009No. 78917956 (T.T.A.B. Apr. 8, 2009) Copy Citation Mailed: April 8, 2009 Bucher UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Advantage Supplies, Inc. ________ Serial No. 78917956 _______ Advantage Supplies, Inc., pro se. Sophia S. Kim, Trademark Examining Attorney, Law Office 106 (Mary I. Sparrow, Managing Attorney). _______ Before Bucher, Bergsman and Wellington, Administrative Trademark Judges. Opinion by Bucher, Administrative Trademark Judge: Advantage Supplies, Inc. seeks registration on the Principal Register of the following mark: for goods identified in the application, as amended, as follows: “military and law enforcement equipment and accessories, namely, firearm accessories, namely, holsters, pistol holsters, bags, pouches, belts for cartridges, guns, shells and shots, duty belts for military or law enforcement equipment, belts for military or law enforcement equipment, shoulder harnesses for carrying pouches, tactical vests specially designed to hold firearm, leg- mounted harnesses for carrying pouches, leg- THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 78917956 - 2 - mounted holsters, slings for firearms, straps for firearms, covers for firearms, cases for firearms, cartridge pouches, cases for large size ammunition, gloves specially designed for firearm shooting, waist packs specially designed to hold firearm, butt packs specially designed to hold firearm, rucksacks specially designed to hold firearm, carriers specially designed to hold ammo magazines, ammunition magazine pouches, cases for weapons guns and rifles, ammunition bags, bandoliers for holding cartridges or ammunition cases, backpacks specially designed to secure military equipment to the user” in International Class 13.1 This case is now before the Board on appeal from the final refusal of the Trademark Examining Attorney to register this designation based upon Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). The Trademark Examining Attorney has found that applicant’s mark, when used in connection with the identified goods, so resembles the mark ADVANTAGE TACTICAL SIGHT (in standard character format) for “projectile weapons and parts thereof namely sights”2 also in International Class 13, as to be likely to cause confusion, to cause mistake or to deceive. 1 Application Serial No. 78917956 was filed on June 27, 2006 based upon applicant’s claims of first use anywhere and first use in commerce at least as early as March 15, 2002. No claim is made to the term “Wear & Gear” apart from the mark as shown. 2 Registration No. 3096669 issued on May 23, 2006. No claim is made to the words “Tactical Sight” apart from the mark as shown. Serial No. 78917956 - 3 - The Trademark Examining Attorney and applicant have filed briefs in the case. We affirm the refusal to register. The Trademark Examining Attorney contends that there is a likelihood of confusion under Section 2(d) of the Trademark Act given the close relationship of applicant’s and registrant’s goods, the presumed overlap of the marketing channels, and the similarity in the connotation and commercial impression of the applicant’s mark when compared with registrant’s cited mark. By contrast, in arguing for registrability, applicant argues that there is no likelihood of confusion with the cited mark because its goods are different from the registrant’s goods, applicant has limitations on its channels of trade, there have been no instances of actual confusion, and the word “Advantage” is so commonplace that these two marks should be permitted to coexist. Likelihood of Confusion We turn then to a consideration of the issue of likelihood of confusion. Our determination of likelihood of confusion is based upon our analysis of all of the probative facts in evidence that are relevant to the factors bearing on this issue. See In re E. I. du Pont de Nemours & Co., Serial No. 78917956 - 4 - 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); and In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In any likelihood of confusion analysis, however, two key, although not exclusive, considerations are the similarities between the marks and the relationship between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). Relationship of the goods We turn first to the du Pont factor focusing on the relationship of the goods herein. Applicant and the Trademark Examining Attorney disagree about how closely related are applicant’s and registrant’s goods. Applicant bases its arguments on the fact that the respective goods, as identified, are different. Applicant sells soft goods, of which many are made of nylon materials. Registrant sells hard goods. While this may be true, applicant’s goods need not be identical to, or directly competitive with, registrant’s goods in order to find a likelihood of confusion. See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (CCPA 1975). The goods need only be related in some manner, or the conditions Serial No. 78917956 - 5 - surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods come from a common source. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984); and In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999). Accordingly, we agree with the contentions of the Trademark Examining Attorney: In this case, even though the goods of the parties are not identical or directly competitive, there is a closely relationship between the applicant’s and registrant’s goods that would cause likelihood of confusion because the registrant sells projectile weapons and the applicant sells accessories for projectile weapons. Registrant uses the word “Advantage” on projectile weapons and sights, while the applicant uses the word “Advantage” on bags, holders or carriers for projectile weapons or firearms, which includes pistols, guns and rifles. The relationship between [these] goods … exists because a firearm user, while purchasing a firearm, would consider purchasing firearm attachment accessories, such as a firearm sights, as well as bags, holders or carriers for the firearms and firearm sights. Therefore, there is likelihood of confusion if the firearm purchaser encounters the word “Advantage” on firearms, sights for firearms, and bags, holders or carriers for firearms. Trademark Examining Attorney’s brief at unnumbered 5 – 6. Serial No. 78917956 - 6 - Moreover, the Trademark Examining Attorney has made of record third-party registrations demonstrating that goods as identified in applicant’s application and registrant’s registration come from the same source. These registrations, summarized below, have probative value to the extent that they serve to suggest that the goods listed therein are of a kind that may emanate from a single source and be sold under the same mark. In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-1218 (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 at n.6 (TTAB 1988). FAMOUS MAKER for “telescopic gun sights, optical lens sights and telescopic bow sights” in international class 9; “firearms and accessories, namely, air pistols, air rifles, pellets for air pistols and air rifles, gun cleaning kits comprised of ramrods, cleaning solvent, lubricating oils, cleaning patches, and polishing cloths; gun cases, grips for small arms, gun locks, gun mounts, gun parts, recoil pads, and rifle slings” in International Class 13;3 TACTICAL TAILOR for “military equipment and accessories, namely, belts specially designed to secure military equipment to the user, covers and cases for firearms, sight protectors for firearms, holsters, backpacks specially designed to carry and store military equipment, vests specially designed to carry firearms 3 Registration No. 2902224 issued on November 9, 2004. Serial No. 78917956 - 7 - and ammunition, sling straps for firearms, fastening clips for securing military accessories and ammunition pouches, magazine pouches, shooter mats, leg rigs to hold and carry magazines and military smoke grenades, and gloves specially designed for firearm shooting” in International Class 13;4 LUSA for “firearms; firearm parts and accessories for firearms, namely, receivers, trigger groups, barrels, actions, magazines, stocks, grips, sights, flash hiders, barrel extensions, and buffers” in International Class 13;5 UNDER THE GUN for “telescopic bow sights, telescopic rifle sights, and mounts and rings therefor; protective clothing; bullet proof vests” in international class 9; “target gun, ammunition and firearm cases; rifles, pistols, shotguns, weapons, namely, air rifles, and parts and accessories therefor; ammunition; bags, pouches, packs, belts and holsters for firearms; firearm sights; cleaning implements for firearms, namely, brushes, rods, pull-throughs, closer cups, shell extractors, and decappers” in International Class 13;6 ESCORT for “target guns, ammunition and firearm cases; rifles, side arms, namely, pistols, shot guns, air rifles, hunting firearms and parts and accessories therefor; ammunition; bags, pouches, packs, belts and holsters for firearms; firearm sights; cleaning implements for firearms, namely, brushes, rods, 4 Registration No. 2994667 issued on September 13, 2005. 5 Registration No. 3036650 issued on December 27, 2005. 6 Registration No. 3091026 issued on May 9, 2006. Serial No. 78917956 - 8 - pullthroughs, closer cups, shell extractors, and decappers” in International Class 13;7 for “semi and automatic firearms and weapons, namely, assault and sniper rifles, carbines, shotguns, machine guns, and handguns; accessories for semi and automatic firearms, namely, grips, rails, butt stock, magazines, tactile sights, reflex sights, flashlights specifically adapted to mounting on firearms, and mounts for firearms accessories, sound suppressors, flash and blast suppressors, grenade launchers, mounts for the aforementioned accessories, bipod and tripod stands, and slings; cleaning and maintenance field accessories and kits comprising bore and chamber rods, bore and chamber brushes, allen and specialty scope ring wrenches, pipe cleaners and cotton swabs; transport and protection accessories, namely, weapon carrying cases, carrying bags, scope covers, weapons slings, cleaning and maintenance accessory kit cases” in International Class 13.8 Moreover, in making determinations of likelihood of confusion, it is well-established that we must look to the goods as identified in the registration and application. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1595 (TTAB 1999). Applicant points to registrant’s website at www.advantagetactical.com as evidence that registrant’s firearms-related sight system is nothing more than “small 7 Registration No. 3116492 issued on July 18, 2006. 8 Registration No. 3167743 issued on November 7, 2006. Serial No. 78917956 - 9 - plastic or metal pieces that go onto handguns to improve shooting accuracy.” Applicant’s brief at 1. However, even if copies of screen-prints of the relevant web pages had properly been made of record, we cannot resort to such extrinsic evidence in order to restrict registrant’s goods. See, e.g., In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986) [evidence that relevant goods are expensive wines sold to discriminating purchasers must be disregarded given the absence of any such restrictions in the application or registration]. As noted by the Trademark Examining Attorney in this context, registrant’s goods are identified in its registration much more broadly as “projectile weapons and parts thereof namely sights.” Therefore, this critical du Pont factor favors a finding of likelihood of confusion. Channels of Trade In a related du Pont factor that focuses on the similarity or dissimilarity of established, likely-to- continue trade channels, applicant argues that there is no overlap because its identification of goods are limited to military and law enforcement, while pointing out that registrant appears to be selling its products to retail gun shops. Serial No. 78917956 - 10 - On the other hand, as noted above, registrant’s goods are identified broadly and not limited or restricted to any particular marketing channel. Rather, we must presume that registrant’s weapons and/or sights will be available to all potential customers, including to laws enforcement officials and at retail venues situated on and around military bases. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); and In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977). This factor too favors a finding of likelihood of confusion. Period of contemporaneous use without actual confusion We turn next to the du Pont factor dealing with the length of time during and conditions under which there has been contemporaneous use without evidence of actual confusion. Applicant argues that coexistence over a period of several years provides strong evidence that confusion is not likely to occur in the future. As to whether there has been sufficient opportunity for confusion to occur, the record contains no indication of the level of sales or advertising by applicant. The absence of any instances of actual confusion is a meaningful factor only where the record indicates that, for a significant period of time, an applicant’s sales and advertising activities have been so Serial No. 78917956 - 11 - appreciable and continuous that, if confusion were likely to happen, any actual incidents thereof would be expected to have occurred and would have come to the attention of one or both of these trademark owners. In this ex parte context, we also have had no opportunity to hear from registrant about its levels of sales and promotion, or of any incidents of actual confusion brought to registrant’s attention. Presumably limited sales by one or both of these trademark owners over a relatively short period of contemporaneous usage may well explain the lack of evidence of actual confusion. All of these enumerated factors materially reduce the probative value of applicant’s argument regarding asserted lack of actual confusion. Therefore, applicant’s claim that no instances of actual confusion have been brought to applicant’s attention is not indicative of an absence of a likelihood of confusion. See Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). In any event, we are mindful of the fact that the test under Section 2(d) of the Act is likelihood of confusion, not actual confusion. The marks Applicant argues that the word “Advantage” is a very common word that is used by many others in a variety of Serial No. 78917956 - 12 - businesses. However, there is no evidence in the record that the word “Advantage” is weak or diluted in the field of weapons and firearm accessories. To the contrary, on this record, we must presume that the word “Advantage” is a strong and distinctive source-indicator in this field. In addition to arguing that the “Advantage” portion of the cited mark is weak, applicant points out that its mark has the distinguishing term “Wear & Gear” while registrant’s mark has the distinguishing wording “Tactical Sights.” It is true that when one compares these two marks in their entireties – at least after one enunciates the first three syllables in precisely the same manner – the final three or four syllables are pronounced quite differently. However, in both cases, the terms “Wear & Gear” and “Tactical Sights” are highly descriptive of the respective goods, and are correctly disclaimed. Disclaimed matter is typically less significant or less dominant when comparing marks. See In re Dixie Rests. Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d 1056, 1060, 224 USPQ 749, 752 (Fed. Cir. 1985). Hence, it is most appropriate that we should give greater weight to the leading, dominant word, “Advantage” in determining whether there is a likelihood of confusion herein. Tektronix, Inc. v. Daktronics, Inc., 534 F.2d Serial No. 78917956 - 13 - 915, 189 USPQ 693 (CCPA 1976); and In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987). As applied to these respective goods, the suggestive connotation of “favorable” or “superior” will attach to both of these composite marks. Hence, we find that when these marks are applied to the goods, they create very similar commercial impressions. On this critical du Pont factor, we find support for the position of the Trademark Examining Attorney. Conclusion: Likelihood of Confusion In conclusion, the du Pont factors favoring a finding of likelihood of confusion include the fact that the goods are closely related; we must presume that the respective goods will move through some of the same channels of trade; and we find that the marks are quite similar due to the fact that the dominant portion of applicant’s mark is identical to the dominant portion of registrant’s mark, creating marks having the same connotations and commercial impressions when compared in their entireties. Decision: The refusal to register this mark based upon Section 2(d) of the Lanham Act is hereby affirmed. Copy with citationCopy as parenthetical citation