Beavertail Products, LLC

Trademark Trial and Appeal Board

Oct 23, 2020

88197106 (T.T.A.B. Oct. 23, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: October 23, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Beavertail Products, LLC
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Serial No. 88197106
_____

Paul Kempf of Dicke Billig & Czaja PLLC,
for Applicant, Beavertail Products, LLC.

Laura Golden, Trademark Examining Attorney, Law Office 103,
Stacy Wahlberg, Managing Attorney.
_____

Before Thurmon, Deputy Chief Administrative Trademark Judge,
Kuczma and Heasley, Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Beavertail Products, LLC (Applicant) seeks registration on the Principal Register
of for “wild game hunting decoys,” in International Class 28.1

1 Application Serial No. 88197106 was filed on November 16, 2018, based upon Applicant’s
declared first use and first use in commerce at least as early as February 1, 2012, under
Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). The mark consists of a shield with
the words DOA DECOYS inside the shield with a star above DOA. The shield is surrounded
with stylized feathers with two waterfowl at the left and right of the shield. Color is not
claimed as a feature of the mark. “DECOYS” is disclaimed.
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Registration of Applicant’s mark was refused under § 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), due to a likelihood of confusion with the mark D.O.A. (typed
drawing) in Registration No. 1851581 owned by D.O.A., Inc. (Registrant), registered
for fishing lures, in International Class 28.2
After the Examining Attorney made the refusal final, Applicant appealed to this
Board. Applicant and the Examining Attorney submitted briefs and Applicant filed a
reply brief. For the reasons set forth below, the refusal to register is affirmed.
I. Evidentiary Objection
Before proceeding to the merits of the refusal, we address an evidentiary matter.
The Examining Attorney objects to the evidence Applicant submitted with its appeal
brief, namely, “the specimens submitted in the Cited Registration” (Exhibit A) and
Applicant’s specimen filed with its application (Exhibit B) and requests that the
Board disregard the specimens on the ground that they were untimely submitted.3
See In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018), aff’d per
curiam, 777 F. App’x 516 (Fed. Cir. 2019); In re Fiat Grp. Mktg. & Corp. Commc’ns
S.p.A, 109 USPQ2d 1593, 1596 (TTAB 2014).

2 Registration No. 1851581 issued August 30, 1994 and has been renewed. Effective
November 2, 2003, Trademark Rule 2.52, 37 C.F.R. § 2.52, was amended to replace the term
“typed” drawing with “standard character” drawing. A typed mark is the legal equivalent of
a standard character mark. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909
n.2 (Fed. Cir. 2012) (“until 2003, ‘standard character’ marks formerly were known as ‘typed’
marks….”).

3 Examining Attorney’s Appeal Brief, 8 TTABVUE 11-12.
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The record in an application should be complete prior to the filing of an appeal. 37
C.F.R. §2.142(d); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE
(TBMP) §§1203.02(e), 1207.01 (2020); TRADEMARK MANUAL OF EXAMINING
PROCEDURE (TMEP) §710.01(c) (Oct. 2018). This evidence has been available to
Applicant during prosecution of the application, and there is no justification for the
delay in making this evidence of record. If an applicant wishes to rely on matter in
the file wrapper of a cited registration, it must timely make it of record during the
prosecution of its application. The parts of the file wrapper of a cited registration are
not made of record by virtue of the examining attorney attaching to an office action a
printout detailing the particulars of the cited registration. In re Giovanni Food Co.,
97 USPQ2d 1990, 1990-91 (TTAB 2011) (documents from file of cited registration
submitted with applicant’s appeal brief are late-filed and not considered; examining
attorney’s objection sustained); TBMP §§ 1203.02(e) and 1207.01.
Evidence should not be filed with the Board after the filing of a notice of appeal.
If the applicant or the examining attorney desires to introduce additional evidence
after an appeal is filed, they should submit a request to the Board to suspend the
appeal and to remand the application for further examination. Trademark Rule
2.142(d), 37 C.F.R. § 2.142(d). Inasmuch as Registrant’s specimen was not timely
made of record, and Applicant’s specimen is already part of the record, the Exhibits
attached to Applicant’s Brief have not been considered.
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II. Likelihood of Confusion
Our determination under § 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
enunciated in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973), cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138,
113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods and services. See In re i.am.symbolic, llc, 866 F.3d 1315, 123
USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc.,
308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Ft.
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.”).
We have considered all of the evidence as it pertains to the relevant DuPont
factors, as well as Applicant’s arguments (including any evidence and arguments not
specifically discussed in this opinion). DuPont, 177 USPQ at 567-68; see also Cai v.
Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (not all
of the DuPont factors are relevant to every case, only factors of significance to the
particular mark need be considered).
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A. Similarity of the Goods, Channels of Trade and Classes of Consumers
We first consider the DuPont factors involving the similarity of Applicant’s and
Registrant’s goods, and their channels of trade and classes of customers. As pointed
out by the Examining Attorney, the compared goods need not be identical or even
competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online
Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v.
Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000). They need only
be “related in some manner and/or if the circumstances surrounding their marketing
are such that they could give rise to the mistaken belief that they emanate from the
same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d
1715, 1724 (TTAB 2007)); TMEP § 1207.01(a)(i). See e.g., On-line Careline v. America
Online, 56 USPQ2d 1471 (holding ON-LINE TODAY for Internet connection services
and ONLINE TODAY for an electronic publication likely to cause confusion); In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984)
(holding MARTIN’S for wheat bran and honey bread, and MARTIN’S for cheese,
likely to cause confusion); Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107
USPQ2d 1424, 1433 (TTAB 2013) (holding GOTT LIGHT for various water beverages
likely to cause confusion with GOTT and JOEL GOTT for wine); Gen. Mills, Inc. v.
Fage Dairy Processing Indus. S.A., 100 USPQ2d 1584, 1597 (TTAB 2011) (holding
composite marks containing the word TOTAL for yogurt and other products likely to
cause confusion with the mark TOTAL for ready-to-eat breakfast cereal); In re
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Toshiba Med. Sys. Corp., 91 USPQ2d 1266 (TTAB 2009) (holding VANTAGE TITAN
for MRI diagnostic apparatus, and TITAN for medical ultrasound device, likely to
cause confusion).
The evidence relied upon by the Examining Attorney shows that the same entity
commonly provides the relevant goods and markets them under the same mark:
 Eleven third-party registrations showing marks registered
for goods including both hunting decoys and fishing lures,
namely, Registration Nos.4:
o 4793587 for NATO (animal hunting decoys, lures for
hunting or fishing, fishing lures) owned by
International Watchman Inc.;
o 4827522 for (waterfowl hunting decoys,
[fishing] lures) owned by American Sports Licensing,
LLC;
o 5368833 for GAME HOG DECOYS LLC and Design
(animal hunting decoys, fishing lures, wild game
hunting decoys) owned by Game Hog Decoys LLC;
o 5418051 for ASSASSIN HUNTING (animal hunting
decoys, decoys for hunting or fishing, lures for
hunting, scent lures for hunting or fishing) owned by
Randall R. Kane and Aunica L. Kane;
o 5454087 for RUT-FIN (fishing lures, waterfowl
hunting decoys) owned by Rut-Fin LLC;
o 5486547 for HALLOLURE and Design (decoys for
hunting or fishing, scent lures for hunting or fishing)
owned by Hong Kong Yi Hui Limited;
o 5602602 for RUDDER (fishing lures, decoys for
hunting or fishing, lures for hunting or fishing, scent

4 See September 20, 2019 Final Office Action at TSDR 19-51.
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lures for hunting or fishing) owned by Lures Pro
LLC;
o 5619204 for WideEye (fishing lures, decoys for
hunting or fishing, lures for hunting or fishing, scent
lures for hunting or fishing) owned by Eposeidon
Outdoor Adventure Inc.;
o 5724598 for GORDY & SONS OUTFITTERS
(fishing lures, waterfowl hunting decoys) owned by
Houston Outfitters & Sportsmen Gallery, LLC;
o 5826193 for FINEST SPEAR LURES ON EARTH
TEMPT-LURE LYKKE TIL FISKE (decoys for
hunting or fishing; lures for fishing; artificial fishing
lures; fishing lures; scent lures for hunting or
fishing) owned by Tyler P. Templer and Shannon M.
Templer;
o 5860256 for TWINSTARDRAG (fishing lures, decoys
for hunting or fishing, lures for hunting or fishing,
Scent lures for hunting or fishing) owned by
Accurate Grinding and Mfg. Corp.
Notably, nine of these eleven registrations are limited to goods for fishing and
hunting.
Although the third-party registrations are not evidence that the marks shown
therein are in use or that the public is familiar with them, they nonetheless have
probative value to the extent they serve to suggest that the identified goods are of a
kind which are produced or marketed by a single source under a single mark. In re
Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (citing In re Mucky Duck
Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); In re Anderson, 101 USPQ2d
1912, 1919 (TTAB 2012); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1203 (TTAB
2009). Thus, we find that the third-party, use-based registrations support the
conclusion that the goods are related.
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Additionally, the Examining Attorney’s evidence supports that the relevant goods
are sold or travel through the same trade channels and for use by the same classes of
customers in the same fields of use:
 Hunting and fishing gear is sold at the same specialty
stores, including Field & Stream, Green Top, Joe’s Sporting
Goods, Lake Charles Tackle, Rogers Sporting Goods, Fleet
Farm, Farm & Home Supply, Gordy and Sons, and Presley
Outdoors.5
 Applicant’s and Registrant’s goods are sold as sporting
collectibles in a niche market, as shown in the evidence
made of record of Red’s Show, a sporting collectibles show,
and the niche businesses Stein Decoys and White Deer
Trading Post.6
Applicant contends there is no per se rule that all goods in a particular industry
are related, citing In re Sydel Lingerie Co., Inc., 197 USPQ 629 (TTAB 1977)
(BOTTOMS UP for ladies’ and children’s underwear held not likely to be confused
with BOTTOMS UP for men’s suits, coats and trousers, even though the marks were
identical and covered apparel goods that may have been found in the same store).
Even where both goods are clothing items, the Board found that any potential
confusion was outweighed by the “distinct differences between women’s underwear
and men’s suits and coats” and the fact that such goods would be sold in different
departments of the same store. Id. Applicant argues that the same is true in this case,

5 See February 27, 2019 Office Action at TSDR 7-9, 10-12, 13-15, 16-18, 19-21; September 20,
2019 Final Office Action at TSDR 6-7, 8-9, 10, 11-12, 13-14.
6 See September 20, 2019 Final Office Action at TSDR 15, 16, 17-18.
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where fishing lures are sold in different departments than are waterfowl decoys.7
However, the Board in In re Sydel went on to note:
But more important, and especially in this case is the
nature of the marks and the commercial impression that
they project in connection with the respective goods. Thus,
if “BOTTOMS UP” can be deemed to have any suggestive
connotation as applied to men’s suits, coats and trousers, it
will be in association with the drinking phrase, “drink up!”
[See: The Random House College Dictionary]. This is
hardly the connotation that “BOTTOMS UP” would
generate as applied to applicant’s ladies’ and children’s
underwear.
Id. at 630. Applicant offers no similar distinction in the commercial impressions
imparted by its mark for use on wild game hunting decoys versus Registrant’s mark
registered for fishing lures. Thus, there are important distinctions between Sydel and
the facts involved in this appeal.
Applicant next cites In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984),
where the applicant sought registration of the mark PLAYERS for men’s underwear
which was refused registration based on a registration for PLAYERS for shoes.
Applicant argues that the Board in British Bulldog observed that the goods in
question were distinctly different and even if sold in the same stores, they would
ordinarily be displayed in different retail floor sections, and that those goods were
not complementary or companion items as are coats and boots or athletic shoes and
athletic clothing.8 However, after noting that “men’s underwear is in the nature of a
self-service, ‘off the shelf’ item, whereas shoes are purchased with care, usually with

7 Applicant’s Brief pp. 8-9 (6 TTABVUE 13-14).
8 Applicant’s Brief p. 9 (6 TTABVUE 14).
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the assistance of a salesman,” the Board explained that “the mark ‘PLAYERS’ has
somewhat different connotations when applied to” the different goods, namely:
“PLAYERS” for shoes implies a fit, style, color, and
durability adapted to outdoor activities. “PLAYERS” for
men’s underwear implies something else, primarily indoors
in nature.
Id. at 856. As in Sydel Lingerie, the mark in British Bulldog was found to have
different connotations when applied to the applicant’s and registrant’s goods. Here,
there is no evidence supporting different connotations of Applicant’s and Registrant’s
marks when used in connection with their goods.
Lastly, Applicant cites In re Sears, Roebuck and Co., 2 USPQ2d 1312 (TTAB 1987)
(CROSSOVER for bras held not likely to be confused with CROSSOVER for ladies’
sportswear), in support of its argument “that [in that case] there were sufficient
competitive differences between the goods since they were different types of clothing
items, had different uses, and were normally sold in different sections of the
department store. Furthermore, the mere fact that the goods of an application and
the goods of a registration may be sold in the same retail establishment does not by
itself establish that the goods are related.”9 However, the Board’s decision in Sears
was based on two factors, a consent agreement and marks that, while identical in
appearance, projected different meanings as applied to the respective goods, which
led to its conclusion of no likelihood of confusion. Here, there is no consent agreement
and Applicant’s mark and Registrant’s mark project the same or similar meanings.

9 Applicant’s Brief p. 10 (6 TTABVUE 15).
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The three cases Applicant cites recognize the significance of different meanings or
commercial impressions of identical marks as applying to the goods at issue in those
cases. Applicant has not shown that such circumstances are present in this case.
Moreover, as addressed below, the “DOA” in Applicant’s and Registrant’s marks, have
the same commercial impression with respect to Applicant’s wild game hunting
decoys, and Registrant’s fishing lures. The fact that Applicant’s goods can be used to
lure water fowl10 and Registrant’s goods can be used to catch fish in the same lakes
and rivers supports the relatedness of the goods. While hunting and fishing are
separate sporting activities, as shown in the evidence of record, such goods are offered
for sale carried by the same types of vendors. Indeed, the Board has previously found
hunting and fishing goods to be “closely related” goods for the purposes of assessing
likelihood of confusion. See In re Buck Stop Lure Co., 226 USPQ 190, 191-92 (TTAB
1985) (training scents for hunting dogs related to fishing rods); In re New Archery
Prods. Corp., 218 USPQ 670, 672 (TTAB 1983) (arrowheads related to fishing lures).
The evidence of record in this case supports a finding of relatedness between
Applicant’s hunting decoys and Registrant’s fishing lures.
Accordingly, the DuPont factors regarding the similarity of the goods, as well as
the trade channels and customers, favor a finding of likelihood of confusion.

10 See Applicant’s Brief p. (6 TTABVUE 16) and Applicant’s specimen filed with its
application showing use of its mark in connection with floater pack duck decoys.
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B. Similarity of the Marks
It is well settled that marks are compared in their entireties for similarities in
appearance, sound, connotation and commercial impression. Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir.
2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F. 3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); In re Viterra, 101
USPQ2d at 1908.
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, our analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d
1005 , 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). However, 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 Nat’l Data, 224 USPQ at 751.
Looking at the marks in their entireties, Applicant’s mark , and the cited
registered mark D.O.A.11, are similar in appearance and sound. Applicant’s mark

11 Both marks begin with the identical letters “DOA.” Although Registrant’s mark includes
periods, i.e., “D.O.A.,” the periods most likely are not pronounced when the mark is spoken.
Thus, the periods are an insignificant difference that is unlikely to be noticed or remembered
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is comprised of the term “DOA” with the word “DECOYS” located underneath
“DOA” in a smaller font. Although there is a slight difference in the sound of the
marks stemming from the inclusion of the word “DECOYS” in Applicant’s mark, it
does not differentiate the meaning of the marks. This is supported by Applicant’s
disclaimer of the descriptive term “DECOYS,” resulting in an insignificant difference
that is not likely to be noticed or remembered by customers when they encounter
these marks at separate times. Purchasers in general are inclined to focus on the first
word or portion of a trademark, especially where it is followed by a highly descriptive
or generic term (as is the case with “DECOYS”). Presto Prods., Inc. v. Nice-Pak Prods.,
Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is
likely to be impressed upon the mind of a purchaser and remembered”).
The addition of the word “DECOYS” in Applicant’s mark does not alter the
meaning or commercial impression of its mark, or otherwise diminish its similarity
with Registrant’s mark. Applicant’s identification of goods shows that the word
“DECOYS” is generic for its “wild game hunting decoys.” Adding such a nondistinctive
term to the mark does not suffice to differentiate the marks.
Applicant contends that its mark “is a stylized design mark that has a distinct
commercial impression prominently featuring a shield between large stylized
feathers and wings as well as two large waterfowl heads. The letters DOA are found
on an upper portion of the shield and represent only a minority portion of the overall

by purchasers when encountering the marks. See TMEP § 807.14(c) (“Punctuation, such as
quotation marks, hyphens, periods, commas, and exclamation marks, generally does not
significantly alter the commercial impression of the mark.”).
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mark.” “The most prominent portions of the mark,” according to Applicant, “focus on
the waterfowl, the two heads and the rather large wings extending from the center
shield,” which is “also is a very prominent portion of the mark.” Applicant maintains
that the stylistic images of its mark are the most eye-catching aspects of the mark.
And that “[n]one of this has anything in common with the Cited Registration” which
“has no design features at all.”12
Applicant cites cases where the distinct design feature is the dominant portion of
the mark, in support of its contention that the stylized design portion of its mark is
eye-catching and serves to distinguish Applicant’s mark from Registrant’s word
mark. However, in composite marks involving letters and designs, the letters, like
words, are more likely to be recalled than designs and to be used in verbalizing
composite marks in the course of referring to the mark owner or requesting its goods
or services. Given the central location and visual prominence of the letters “DOA,”
together with the word “DECOYS” presented in smaller font, and the fact that the
background design portion of Applicant’s mark is a “carrier” for the letters and word
portion of the mark, the letters “DOA” are the dominant portion of Applicant’s mark.
See Joel Gott Wines v. Rehoboth Von Gott, 107 USPQ2d at 1430.
The cases Applicant relies on involve marks that are exceptions to these general
principles, so we take a closer look at the cases to see whether they support
Applicant’s position. In re Covalinski, 113 USPQ2d 1166 (TTAB 2014) found that the

12 Applicant’s Brief p. 5 (6 TTABVUE 10).
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design aspect of the mark, , with the large R letters was distinct
enough to distinguish REDNECK RACEGIRL & Design from the registered word
mark RACEGIRL for identical goods. The Board acknowledged that while it is often
true that words in a composite word and design mark are considered to be dominant,
that is not always the case, finding the applicant’s word and design mark registrable
over the cited mark. In looking at each mark, the Board noted crucial differences
between the applicant’s mark and the cited mark. The fact that applicant’s mark
contained the two large prominently displayed letters RR, where the letter strings
“edneck” and “acegirl” were displayed in “relatively tiny typeface and subsequent
letters are displayed in increasing thickness, drawing attention to the RR letters
apart from the wording making the lettering difficult to notice.” Id. at 1168. Contrary
to Applicant’s contention that Covalinski found the design of the mark to be the more
distinctive aspect of the mark,13 the Board’s holding focused on the prominence of the
letters RR in the mark, not on some design-only portion of that mark.14
In In re White Rock Distilleries, Inc., 92 USPQ2d 1282, 1284 (TTAB 2009), the
Board found no likelihood of confusion between applicant’s standard character mark

13 Applicant’s Brief p. 5 (6 TTABVUE 10).
14 Indeed, the Board’s finding in Covalinski is consistent with our finding that the word
DECOYS in Applicant’s mark is unlikely to have much impact on consumer perception of the
mark.
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VOLTA for caffeine-infused vodka and the cited mark , which also
incorporated VOLTA, for wines. According to Applicant, the Board found no
likelihood of confusion between the applicant’s mark and the cited mark which both
contained the term VOLTA, due to the prominent design in the registered mark.
However, noting that the marks differed in sound because the literal portion of the
registered mark began with the term TERZA, the Board reversed the refusal to
register applicant’s mark VOLTA based on its finding that “confusion is unlikely
because the marks are too dissimilar and the goods have not been shown to be
related.” Id. at 1285. Here, unlike White Rock Distilleries, Applicant’s and
Registrant’s marks begin with the same three-letter term.
Applicant also cites In re Ferro Corp. v. Ronco Labs., Inc. 356 F.2d 122, 148 USPQ
497, 498-99 (CCPA 1966), which found no likelihood of confusion between applicant’s
mark and opposer’s “FERRO” marks due to the dominance of the design
elements of applicant’s mark and the relatively small typeface in which “FERRO”
appeared, noting that opposer’s ownership of various “FERRO” marks did not entitle
it to sole possession of the descriptive term “ferro.” Id. at 499.15
In Parfums de Coeur Ltd. v. Lazarus, 83 USPQ2d 1012, 1016 (TTAB 2007)
(opposition brought by opposer, owner of registrations for BOD MAN mark for men’s

15 Applicant’s Brief pp. 6-7 (6 TTABVUE 11-12).
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fragrances, versus applicant’s mark for a television series) the displayed
design in applicant’s mark was considered to be the dominant element of the mark
because it is prominently displayed and engages the viewer before the viewer looks
at the word “Bodyman.” However, the Board further explained:
If the difference in pronunciation were the only differences
between the marks, there would obviously be a much
stronger case for the similarity of the marks. However, it
must be remembered that applicant’s mark includes a
prominent design element, and it is intended to be used for
an animated television series. Because television is a
visual medium, the “consumers” of applicant’s show, i.e.,
the viewers, will see the mark, and see the prominent
design element.
83 USPQ2d at 1016-17. The Board found that the similarity in the sound of the marks
was not a dispositive factor plus, the Board recognized differences in the connotations
of the marks. Thus, when comparing the marks in their entireties, the marks were
found to be different. Id. at 1016-1018. That is unlike the situation in the present
case, where Applicant’s and Registrant’s marks contain the exact same first term.
Applicant argues that like in the Parfums de Coeur v. Lazarus case, the design
elements in its mark catch the eye and engage the viewer before they ever look at the
letters “DOA.” However, unlike the location of the word BODYMAN in the applicant’s
mark in Parfums de Coeur v. Lazarus, the terms “DOA” and the word “DECOYS” in
Applicant’s mark are centered in the top third of the mark, resulting in an
impression that is different from the applicant’s mark in Parfums de Coeur v.
Lazarus. The letters DOA are readily recognizable in Applicant’s mark. While the
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stylistic portions of Applicant’s mark are eye-catching, they are not how purchasers
seeing the mark will use the mark to communicate about Applicant’s goods.
Lastly, Applicant cites Steve’s Ice Cream v. Steve’s Famous Hot Dogs, 3 USPQ2d
1477, 1478-79 (TTAB 1987), where no likelihood of confusion was found between
STEVE’S for ice cream and the STEVE’S and Design mark, , for restaurant
services. The Board noted that there were obvious differences in the marks:
The design portion of applicant’s mark is extremely
suggestive of the fact that applicant’s restaurants feature
hot dogs. The highly stylized depiction of humanized
frankfurters, prancing arm in arm to musical notes, creates
a distinctive commercial impression. Even with the word
“STEVE’S” appearing above the hot dog figures, applicant ’s
mark is distinguishable from the registered mark of
opposer, which is simply the word “STEVE’S” in block
letter form.
Id. at 1479. The Board also noted numerous third-party uses which demonstrated
that the purchasing public had “become conditioned to recognize that many
businesses in the restaurant and food store fields use the term, or something closely
related to it, and that this purchasing public is able to distinguish between these
businesses based on small distinctions among the marks.” Id. In this case, there is no
evidence of third-party uses of similar marks.
These prior decisions, while pertinent to the extent that they may set standards
to be applied generally in proceedings such as this, are of little value in determining
likelihood of confusion. It is well settled that each case must be decided on its own
facts and the Board is not bound by prior decisions involving different records. In re
Boulevard Entm’t Inc., 334 F.3d 1336, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003) (“the
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PTO must decide each application on its own merits, and decisions regarding other
registrations do not bind either the agency or this court,” citing In re Nett Designs,
236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)); In re Datapipe, Inc., 111
USPQ2d 1330, 1336 (TTAB 2014).
When comparing the marks, the test is not whether the marks can be
distinguished in a side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial impression that confusion as
to the source of the goods offered under the respective marks is likely to result. Cai
v. Diamond Hong, 127 USPQ2d at 1801 (citing Coach Servs. v. Triumph Learning,
101 USPQ2d at 1721); In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB
2016). The proper focus is on the recollection of the average purchaser, who retains a
general rather than specific impression of trademarks. In re Bay State Brewing, 117
USPQ2d at 1960 (citing Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff’d per curiam, 972 F.2d 1353 (Fed. Cir. 1992)); In re C.H. Hanson
Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing Joel Gott Wines v. Rehoboth Von
Gott, 107 USPQ2d at 1430).
“Even those purchasers who are fully aware of the specific differences between
the marks may well believe, because of the similarities between them, that the two
marks are simply variants of one another, used by a single producer to identify and
distinguish companion lines of products.” In re Great Lakes Canning, Inc., 227 USPQ
483, 485 (TTAB 1985). Therefore, the marks and D.O.A. are similar in
appearance, sound, connotation, and commercial impression such that the inclusion
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of the word “DECOYS” and the design elements in Applicant’s mark does not avoid
the likelihood of confusion between the marks. This factor supports a finding of
likelihood of confusion.
C. Number and Nature of Similar Marks in Use on Similar Goods
Under the sixth DuPont factor, we assess the extent to which the cited mark’s
strength may be attenuated by “[t]he number and nature of similar marks in use on
similar goods.” DuPont, 177 USPQ at 567; In re Chippendales USA Inc., 622 F.3d
1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both
by its conceptual strength (distinctiveness) and its marketplace strength (secondary
meaning).”). For likelihood of confusion purposes, a mark’s strength “varies along a
spectrum from very strong to very weak.” Joseph Phelps Vineyards, LLC v. Fairmont
Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017).
Evidence of extensive registration and use of a term by others for similar goods
can be powerful evidence of the term’s weakness. Jack Wolfskin Ausrustung Fur
Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116
USPQ2d 1129, 1136(Fed. Cir. 2015) (quoting Juice Generation, Inc. v. GS Enters.
LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015)). If the evidence
establishes that the consuming public is exposed to widespread third-party use of
similar marks for similar goods, it “is relevant to show that a mark is relatively weak
and entitled to only a narrow scope of protection.” Palm Bay Imps. v. Veuve Clicquot,
73 USPQ2d at 1693. However, Applicant points to no evidence of third-party actual
use, and instead relies only on one third-party registration. Third-party registration
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evidence goes not to the commercial strength of Registrant’s mark, but rather its
conceptual strength. That is, “[u]se evidence may reflect commercial weakness, while
third-party registration evidence that does not equate to proof of third-party use may
bear on conceptual weakness if a term is commonly registered for similar goods or
services.” Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1057
(TTAB 2017) (citing Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693,
694-95 (CCPA 1976)). See also In re Guild Mortg. Co., 2020 USPQ2d 10279 *3 (TTAB
2020) (“[E]vidence of third-party registrations is relevant to ‘show the sense in which
. . . a mark is used in ordinary parlance.’”).
Applicant submits one third-party registered mark, Registration No. 4542323, for
the mark DOA for “firearm attachments, namely, mounts for attaching gun sights to
a firearm; firearm sights; gunsights for firearms; non-telescopic gun sights for
firearms; sights, namely, open sights for use on firearms.” Applicant argues that its
mark is entitled to registration since Registrant’s D.O.A. mark for fishing lures has
coexisted on the Principal Register with the registered DOA mark for firearm
attachments “presumably without any confusion.”16 This single third-party
registration does not affect the meaning of the cited mark, nor does it support a
finding that the cited mark is weak or otherwise entitled to a narrow scope of
protection. Moreover, prior decisions and actions of other trademark examining
attorneys in registering other marks have little evidentiary value and are not binding
upon the USPTO or the Board. Each case is decided on its own facts, and each mark

16 Applicant’s Brief p. (6 TTABVUE 16-17).
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stands on its own merits. In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d
1790, 1793 n.10 (TTAB 2017) (quoting In re Boulevard Entm’t, 67 USPQ2d at 1480).
Under the sixth DuPont factor, the minimal third-party registration evidence does
not support a finding that the cited mark is so weak or otherwise entitled to such a
narrow scope of protection that Applicant’s mark is not likely to cause confusion with
Registrant’s mark.
D. Conclusion
Applicant’s word and design mark , and Registrant’s mark D.O.A., are
highly similar with respect to sound, meaning and commercial impression. The
addition of the descriptive word “DECOYS” in Applicant’s mark does not serve to
distinguish Applicant’s mark from Registrant’s mark. Given that Applicant’s and
Registrant’s goods are used for fishing and hunting for wild game, including water
fowl, the term “DOA” used in each mark yields a similar overall commercial
impression. Therefore, we find a likelihood of confusion between Applicant’s mark
and the cited mark for the identified goods.
Decision: The refusal to register Applicant’s mark under § 2(d) of the
Trademark Act is affirmed.