Ellis Engineering

Trademark Trial and Appeal Board

Mar 26, 2008

No. 76656289 (T.T.A.B. Mar. 26, 2008)

Mailed: March 26, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

In re Ellis Engineering
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Application No. 76656289
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Michael S. Munk for applicant.

Michael Webster, Examining Attorney, Law Office 102 (Karen
M. Strzyz, Managing Attorney).
_______

Before Drost, Zervas, and Mermelstein, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Ellis Engineering filed an application to register the
mark MK-7 (in standard characters)1 on the Principal
Register for
Firearm scopes, namely, pistol and rifle scopes
with variable and fixed power magnification,
pistol and rifle scopes with illuminated reticle,
pistol and rifle scopes with duplex reticle, and
pistol and rifle scopes with mildot reticle; and
spotting scopes.

in International Class 9 (as amended).

The examining attorney issued a final refusal to
register under Trademark Act § 2(d), 15 U.S.C. § 1052(d), on
the ground that applicant’s mark so resembles the marks MK9

1 Filed March 8, 2006, based upon an allegation of a bona fide
intention to use the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Application No. 76656289
2
and MK40, previously registered for “firearms,”2 that it
would, if used on or in connection with the identified
goods, be likely to cause confusion, to cause mistake, or to
deceive.
Applicant appealed. Both applicant and the examining
attorney have filed briefs. We reverse.
I. Applicable Law
We base our determination under Section 2(d) on an
analysis of all of the probative evidence of record bearing
on the likelihood of confusion. See In re E.I. du Pont de
Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973);
see also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005); In re Majestic Distilling Co., Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
In considering the evidence of record on these factors,
we keep in mind that “[t]he fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper

2 Registration No. 2674992 (MK9), issued January 14, 2003.
Registration No. 2527467 (MK40), issued January 8, 2002. Both
registrations are owned by Saeilo Enterprises, Inc. of Pearl
River, New York.
Application No. 76656289
3
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); In re
Azteca Rest. Enter., Inc., 50 USPQ2d 1209 (TTAB 1999).
II. Record on Appeal
The examining attorney submitted the following evidence
in support of the refusal to register:
• Six registrations,3 based on use in commerce, and
covering firearms on the one hand and firearm scopes on
the other;

• Pages from Registrant’s website, including pictures of
registrant’s goods

Applicant submitted the following evidence in support of
registration:
• TESS records for two cancelled registrations:4

• Internet Resources:

o Several pages from the cited registrant’s website,
submitted to show the nature of the registrant’s
goods
http://kahrshop.com/partsindex.html

o A page from the GEMTECH website discussing
GEMTECH’s MK-9 and MK9K silencers
http:gem-tech.com/mk-9k.html

o A page from AWC Systems Technology, describing
their MK9 submachine gun suppressor
http://www.awcsystech.com/mk9.html

o A page from the website of FN Manufacturing,
Military Division, offering information on their
MK46 MOD 1 – “an M249 variant developed to meet a
US Special Operations requirement....”
www.fnmfg.com/products/m249fam/mk46mod1.htm

3 Ten registrations were submitted, although we find
consideration of four of them improper for various reasons.
4 Registration Nos. 1868189 and 2142315. Cancelled or expired
registrations are of no evidentiary value, and the Board is not
bound by the decisions of examining attorneys to register marks.
Application No. 76656289
4

o A page from the website of FN Manufacturing,
Military Division, offering information on their
MK48 Mod 1 (similar to the MK46 MOD1)
http://www.fnmfg.com/products/m249fam/mk48mod1.htm

o An article from GlobalSecurity.org about the MK19
40 mm Machine Gun, MOD 3: Automatic grenade
Launcher/Machine Gun.
http://www.GlobalSecurity.org/military/systems-
/ground/mk19.htm

o An article from Wikipedia on the MK19 Grenade
Launcher
http://en.wikipedia.org/wiki/mk19_grrenade_-
launcher

o An article from The Arms Site on the Heckler &
Koch HK MK23 pistol
http://remtek.com/arms/hk/civ/mark23/mark23.htm

III. Discussion
A. The Similarity or Dissimilarity and Nature of the
Goods

Applicant’s goods are various types of “firearm scopes”
and “spotting scopes,” while the cited registrant’s goods
are identified as “firearms.” It seems obvious that the
purpose of a scope of this type is to enable more accurate
aim of a firearm. These goods are closely related inasmuch
as such scopes would all be used with or attached to
firearms and in fact aid in the effective use of the
firearm. These are goods which are intended to be used
together.
The examining attorney has submitted several
registrations covering both firearms and firearm scopes.
Third-party registrations which individually cover a number
Application No. 76656289
5
of different items and which are based on use in commerce
may serve to suggest that the listed goods are of a type
that may emanate from a single source. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); In re Mucky
Duck Mustard Co., 6 USPQ2d 1467, 1469 (TTAB 1988), aff'd
(unpublished) No. 88-1444 (Fed. Cir. Nov. 14, 1988).
Applicant points out that that some of the scopes
listed in the third-party registrations are registered in
International Class 9 (as opposed to Class 15, with
firearms), and that “[t]his provides some evidence of
industry recognition of the difference between FIRARMS [sic]
and FIREARM SCOPES.” Br. at 2. Applicant is mistaken.
“The Patent [and Trademark] Office classification of
particular goods is immaterial in determining the likelihood
of confusion or mistake or deception of purchasers as to
source or origin of the goods.” In Re Knapp-Monarch Co.,
296 F2d 230, 132 USPQ 6, 7 (CCPA 1961); Trademark Act § 30,
15 U.S.C. § 1112 (“The Director may establish a
classification of goods ..., for convenience of Patent and
Trademark Office administration, but not to limit or extend
the applicant’s or registrant’s rights”); Trademark Rule
2.85(g). The fact that some scopes are classified in
International Class 9, while firearms are in International
Class 13, thus has no bearing on our analysis.
Application No. 76656289
6
The evidence establishes that firearms and firearm
scopes are closely related products. This factor thus
supports the refusal to register.5
B. The Similarity or Dissimilarity of the Marks and
their Strength

Applicant’s mark is MK-7, while the marks in the cited
registrations are MK9 and MK40. The marks share an obvious
similarity in that they both begin with the letters “MK”
followed by a number, or a hyphen and a number. In
applicant’s mark, the numeral “7” follows the letters MK, as
opposed to “9” and “40” in the cited registrations. While
this provides some level of distinction, it nonetheless
seems more natural that prospective purchasers would focus
on the letters, rather than the numerals, which come first.
The marks are therefore somewhat similar in appearance, and
the initial two letters would likely be pronounced the same.
We next consider the meaning of the marks. As
applicant’s internet evidence demonstrates, the letters “MK”
are widely used in the firearms industry to refer to various
weapons from a wide variety of sources, although it is not
obvious from the evidence whether “MK” has a particular
meaning. When the examining attorney requested that

5 We note the proposal in applicant’s brief to delete the word
“pistol” from its identification of goods. Such an amendment is
untimely, but more importantly, would be futile because the cited
registrations identify the goods as “firearms,” not pistols.
Whether or not the registrant is actually selling firearms other
than pistols under its marks, we must consider the trademark to
Application No. 76656289
7
applicant furnish information on the meaning of “MK,” with
respect to the goods at issue, applicant responded that the
letters have no meaning, except as a part of trademarks used
by many in the firearms industry.
In our view, both the applicant and the examining
attorney have got it wrong. To demonstrate, we take
judicial notice of the following dictionary definitions:6
mark 2 b (9) usu cap ... – used with a numeral to
designate a particular model of a weapon, machine, or
article of equipment ... – abbr. Mk [emphasis added]

WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY (unabridged) 1382
(1993).

mark ... 12. (usually initial capital letter) U.S.
Military. a designation for an item of military
equipment in production, used in combination with a
numeral to indicate the order of adoption, and often
abbreviated: a Mark-4 tank; an M-1 rifle.

DICTIONARY.COM UNABRIDGED (v 1.1), Based on the RANDOM HOUSE
UNABRIDGED DICTIONARY (2006). http://www.reference.com
(March 24, 2008).

mark ... 4. i. A particular mode, brand, size, or
quality of a product, especially a weapon or machine.

THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, (4th ed.
2006)(online edition). http://dictionary.reference.-
com/browse/mark (March 24, 2008).

It appears to us that the term “MK” does indeed have a
meaning with reference to the firearms industry; it

cover all firearms, a category that is not limited to pistols.
6 The Board may take judicial notice of dictionary definitions,
Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213
USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983), including online dictionaries that exist in printed
format or have regular fixed editions. In re Red Bull GmbH, 78
USPQ2d 1375, 1377 (TTAB 2006).
Application No. 76656289
8
indicates that what follows is a particular model
designation, brand, version, or size for a particular
weapon. While the result might be a descriptive or generic
designation, that is not inevitable. As in all cases,
whether the entire mark thus formed is descriptive will
depend on the facts of the case. We emphasize, however,
that the issue of descriptiveness of the mark is not before
us in this case.
While we must consider the marks in their entireties,
it is entirely appropriate to accord greater importance to
the more distinctive elements in the marks. As the Court of
Appeals for the Federal Circuit observed, “in articulating
reasons for reaching a conclusion on the issue 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
consideration of the marks in their entireties. Indeed,
this type of analysis appears to be unavoidable.” In re
Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). Further, it has long been held that descriptive
or generic matter has very little trademark significance,
and is unlikely to make a strong impression on the potential
customer. See In re N.A.D. Inc., 57 USPQ2d 1872, 1873 (TTAB
2000)(“These descriptive, if not generic, words have little
or no source-indicating significance.”).
Application No. 76656289
9
Although the abbreviation “MK” is undeniably a
prominent part of both the applicant’s mark and that of the
prior registrant, its descriptiveness plus the public’s
exposure to its widespread use by others in the relevant
field makes it inappropriate to overemphasize this element
of either applicant’s mark or that of the cited registrant.
We find that MK is at best a weak element of these marks and
that that those in the firearms industry and their customers
are thus unlikely to look to those letters as a source-
identifying feature. Rather, we believe that it is the
other matter, or more precisely, the combination of “MK”
with the other matter, by which purchasers will distinguish
the source of goods so marked.
Here, applicant’s mark comprises the letters “MK” and
the numeral “7,” while the cited registrations comprise the
letters “MK” and the numerals “9” and “40.” Although
applicant and the examining attorney have opined on the
strength of the various numerals involved, we find it
unnecessary to delve into the subject. Given that “MK”
means nothing more than “mark,” we find that, considered as
a whole, the differences between applicant’s mark and those
of the prior registrant are sufficient to distinguish them.7

7 There is no evidence in this record to suggest that “7” has any
meaning in relation to applicant’s goods or to the relevant
industry.
Application No. 76656289
10
IV. Conclusion
We have carefully considered all the evidence of
record, and we conclude that applicant’s firearm scopes and
spotting scopes are related to the firearms identified in
the cited registration, and that the marks bear some obvious
similarity. Nonetheless, because the only similarity among
the marks is a descriptive term that is widely used in the
industry, we nonetheless believe that registration of
applicant’s mark will not give rise to a likelihood of
confusion.
Decision: The refusal to register under Trademark Act
§ 2(d) is accordingly reversed.