G. Loomis, Inc.

Trademark Trial and Appeal Board

Oct 11, 2006

No. 78279545 (T.T.A.B. Oct. 11, 2006)

Mailed:
October 11, 2006
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UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re G. Loomis, Inc.
________

Serial No. 78279545
_______

Jerald E. Nagae of Christensen O’Connor Johnson Kindness
PLLC for G. Loomis, Inc.

Jeri Fickes, Trademark Examining Attorney, Law Office 107
(J. Leslie Bishop, Managing Attorney).
_______

Before Rogers, Zervas and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

On July 28, 2006, G. Loomis, Inc. (“applicant”) filed
an intent-to-use application to register the mark METOLIUS
in standard-character form on the Principal Register for
goods identified as “artificial fishing bait, fishing
hooks, fishing lure boxes, fishing lures, fishing poles,
fishing reels, fishing rod blanks, fishing rods, fishing
tackle boxes and fishing tackle and weights for fishing
lines” in International Class 28.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78279545
2
The Examining Attorney has refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), in
view of Reg. No. 1913483, which issued on August 22, 1995,
for the mark METOLIUS in standard-character form for a
“house mark for a full line of mountain climbing equipment”
in International Class 28.1 The registration claims both
first use and first use of the mark in commerce in
September 1983. The registration has been renewed and is
active.
Applicant responded to the refusal; the Examining
Attorney issued a final refusal; and applicant appealed.
Both applicant and the Examining Attorney have filed
briefs. We affirm.
PROCEDURAL ISSUES
Applicant submitted evidence with both its main brief
and its reply brief which applicant had not filed prior to
the filing of the appeal. The new evidence applicant
submitted with its reply brief is manifestly untimely.
Trademark Rule 2.142(d) requires that the record be
complete prior to the filing of an appeal, subject to
certain exceptions not relevant here. It is apparent that
this evidence was available prior to the filing of

1 A different Examining Attorney took the first action on this
application.
Ser No. 78279545
3
applicant’s appeal. Accordingly, we have not considered
the evidence applicant submitted with its reply brief.
With its main brief applicant also submitted, for the
first time, certain items from the Internet and certain
third-party registrations for marks which include
“METOLIUS.” The evidence applicant provided with its main
brief was also untimely. However, the Examining Attorney
had the opportunity to object to that evidence in her
brief, and she did not do so. Furthermore, the Examining
Attorney discussed the Internet evidence submitted with
applicant’s main brief. Because the Examining Attorney did
not object to the Internet evidence and discussed it, we
will consider it of record. See In re Gibson Guitar,
Corp., 61 USPQ2d 1948, 1952 n.5 (TTAB 2001). We will not
consider the registration records because the Examining
Attorney did not discuss them, or otherwise treat them as
being of record.2 Id.
For completeness we also note here that, although we
will consider the Internet evidence of record, we will not
consider it for any impermissible purpose. Applicant
alleges that certain Internet evidence is connected with
the owner of the cited registration and that it allegedly

2 If we had considered this evidence, we would not reach
different conclusions in this case.
Ser No. 78279545
4
shows the manner in which the registrant uses its mark and
the goods with which the registrant uses the mark.
Applicant also submitted similar evidence with regard to
its own mark and goods. In determining likelihood of
confusion, we must consider the goods as identified in a
cited registration and cannot consider extrinsic evidence
regarding a registrant’s actual use of its mark. In re
Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB
1986)(extrinsic evidence and argument suggesting trade-
channel restrictions not specified in application
rejected). Likewise, we cannot consider any extrinsic
evidence which indicates that either applicant or
registrant use the respective marks in a particular manner,
as we explain further below. Vornado, Inc. v. Breuer
Electric Mfg. Co., 390 F.2d 724, 156 USPQ 340, 342 (CCPA
1968)(“. . . the display of a mark in a particular style is
of no material significance since the display may be
changed at any time as may be dictated by the fancy of the
applicant or the owner of the mark.”).
LIKELIHOOD OF CONFUSION
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office . . .
as to be likely, when used on or in connection with the
Ser No. 78279545
5
goods of the applicant, to cause confusion . . .” Id. The
opinion in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1977) sets forth the factors
we may consider in determining likelihood of confusion.
Here, as is often the case, the crucial factors are the
similarity of the marks and the similarity of the goods of
the applicant and registrant. Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976)(“The 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.”). Below we will discuss all factors as to
which applicant or the Examining Attorney argued or
presented evidence.
Comparing the Marks
In comparing the marks we must consider the
appearance, sound, connotation and commercial impression of
both marks. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005).
Although applicant’s mark and the mark in the cited
registration are both METOLIUS in standard-character form,
applicant still claims that the marks differ. Applicant
argues, as follows:
Ser No. 78279545
6
In context, as an Oregon company, the Registrant is no
doubt aware that the Metolius River is only a few
miles from its Bend, Oregon headquarters, and the
irony is rich that a mountain climbing source would be
named after a river. In this context, the imagery of
good things flowing from a common source was perhaps
appealing to Registrant or the name was simply catchy.
In any event the connotation of Registrant’s METOLIUS
mark is different from that of Appellant’s use of the
METOLIUS mark as one of several specialized, technical
pieces of fishing equipment… As a business
specializing in fishing gear Appellant is of course
also aware of the Metolius river area–and many other
such less-well-known rivers, streams and lakes–and
this location’s reputation among fishermen and others
as “an open meadow and riparian forest harbor(ing) a
diversity of plant life alongside the cold waters of
the spring-fed Metolius River.” (Citation omitted.)
In context then, coming from a mountain climbing gear
store, the mark Metolius as a house mark on a wide
variety of mountain climbing equipment, has a distinct
and different connotation and commercial impression
than Appellant’s METOLIUS mark for specialty fishing
gear.

We are not persuaded by applicant’s argument. While
we concede that a term may take on variations in
connotation or commercial impression as a result of its use
in relation to different types of goods or services, none
of applicant’s evidence convinces us that such is the case
here. The simple fact is that the marks are identical in
appearance and sound and that, to the extent purchasers may
recognize the reference to the Metolius River, the
connotation and commercial impression would not vary
significantly when used with fishing equipment as opposed
to mountain climbing equipment. In either instance the
Ser No. 78279545
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natural beauty of the location and its general suitability
for outdoor recreation would most likely dominate the
connotation and commercial impression whether it is used in
connection with either fishing or mountain climbing
equipment.
There is no evidence indicating how widely known the
Metolius River is. Potential purchasers who would not
recognize METOLIUS as the name of a river would most likely
perceive it as an arbitrary designation without any
particular meaning. As such, the connotation and
commercial impression of the mark would not differ based on
its use with the goods of applicant versus those of
registrant.
Accordingly, we conclude that the connotation and
commercial impression of both applicant’s mark and
registrant’s mark are identical. Finally, we conclude that
the marks of applicant and registrant are identical in all
respects.
Comparison of the Goods and Channels of Trade
First, we acknowledge, as the examining attorney
notes, the importance of the fact that the marks are
identical in comparing the goods of applicant and
registrant. When the marks are identical, the goods of
applicant and registrant need not be as closely related to
Ser No. 78279545
8
find a likelihood of confusion in comparison to cases where
the marks differ. Amcor, Inc. v. Amcor Indus., Inc., 210
USPQ 70, 78 (TTAB 1981).
Also, the goods need not be identical to find that the
goods are related under Section 2(d) of the Trademark Act.
The goods need only be related in such a way that the
circumstances surrounding their marketing would result in
relevant consumers mistakenly believing that the goods
originate from the same source. On-Line Careline Inc. v.
America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed.
Cir. 2000).
Furthermore, in comparing the goods and the channels
of trade for the goods, we must consider the goods as
identified in the application and registration. CBS Inc.
v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir.
1983); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB
1991).
Applicant first argues that the goods of applicant and
registrant “are decidedly different: mountain climbing
gear and fishing equipment.” This characterization misses
the point. The proper inquiry is not whether the goods
could be confused, but rather whether the source of the
goods could be confused. Safety-Kleen Corp. v. Dresser
Ser No. 78279545
9
Indus., Inc., 518 F.2d 1399, 186 USPQ 476, 480 (CCPA 1975);
In re Rexel, Inc., 223 USPQ 830, 831 (TTAB 1984).
Applicant, in fact, argues most strenuously that the
channels of trade for the goods of applicant and registrant
differ. In presenting this argument applicant relies on
Internet web pages which are allegedly associated with
registrant and attempts to show that in the Seattle area
the dealers carrying registrant’s products are limited to a
number of specific retailers. Applicant also presents
similar evidence regarding its own goods to show that its
goods are sold through different outlets in Seattle than
registrant’s goods.
As we noted above, we must consider both applicant’s
and registrant’s goods, as identified in the application
and registration, and we cannot consider extrinsic evidence
purporting to show that the goods or channels of trade are
somehow limited. In re Bercut-Vandervoort & Co., 229 USPQ
at 764. Neither the application nor the cited registration
specify any limits as to trade channels, on the Internet or
otherwise. Accordingly, applicant’s evidence and arguments
which focus on the results of an Internet search for a
particular geographic location are of limited probative
value. Needless to say, a search outside Seattle or one
using different media might yield very different results.
Ser No. 78279545
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The Examining Attorney has offered evidence to show
that both types of goods, fishing equipment and mountain
climbing equipment, travel in the same trade channels.
Specifically, the Examining Attorney has submitted copies
of pages from two Internet web sites, that is,
www.eshopjacksonhole.com and www.gorp.away.com. We find
this evidence both probative and sufficient to show that
the two types of goods could be sold through the same trade
channels.3
Applicant’s own evidence lends some further support to
the position that both types of goods could be sold through
the same trade channels. Specifically, applicant provided
copies of web pages from www.landbigfish.com where its own
fishing equipment is available. The site also includes a
link to camping and outdoor gear, including, tents, hand-
held GPS devices and back packs – equipment which might be
used by mountain climbers.
The Examining Attorney also correctly points out that
the Board has previously found different types of sporting
goods related. See, e.g., In re New Archery Prods. Corp.,

3 The Examining Attorney also submitted copies of two pending
applications covering both types of goods. This evidence is not
probative of the issues in this appeal, and we have not
considered it. Third-party applications have no probative value
other than as evidence that the applications were filed. In re
Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB 2002).

Ser No. 78279545
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218 USPQ 670, 671-672 (TTAB 1983)( “… it seems to us that
fishing lures and arrowheads are closely related.”); Trak
Inc. v. Traq Inc., 212 USPQ 846, 851 (TTAB 1981)(holding
trade channels for racquetball racquets and skis and ski
boots overlapping stating, “Moreover, absent any
restriction in Traq's application for registration, the
channels of trade must be presumed to be the same.”); A. G.
Spalding & Bros. Inc. v. Bancroft Racket Co., 149 USPQ 391,
393-394 (TTAB 1966)(tennis and squash racquets held related
to golf clubs).
We also reject applicant’s comparison of the examining
attorney’s evidence to the use of evidence from outlets,
such as Costco, where goods of all types are offered. The
evidence here is clearly directed to equipment for use in
outdoor sports and similar or related activities.
Applicant also argues that the purchasers for the two
different types of goods are distinct. Applicant has not
offered any evidence to support this contention. In the
absence of evidence to the contrary, we assume that there
are individuals who engage in both fishing and mountain
climbing and would be potential purchasers for both types
of goods.
Accordingly, we conclude that the goods of applicant
and registrant are related and that the channels of trade
Ser No. 78279545
12
for the goods of applicant and registrant could be the same
or overlapping.
Purchaser Sophistication
Applicant also argues that the purchasers for the
goods are sophisticated and that therefore confusion is
less likely. Applicant asserts that its products are
technologically advanced and relatively expensive, noting
that one of its products ranges in price from $345 to $445.
Applicant states, “Additionally, ‘Where the goods involve
significant cost, the relevant buyers are virtually certain
to be informed, deliberate buyers . . . This is not the
sort of purchasing environment in which confusion
flourishes.’ Oreck Corp. v. U.S. Floor Systems, Inc., 231
USPQ 634, 640 (5th Cir. 1986), reh’g denied en banc, 808
F.2d 56 (5th Cir. 1986), cert. denied, 481 U.S. 1069
(1987).” The Examining Attorney disagrees and states that
such purchasers are not immune from trademark confusion.
We agree with the Examining Attorney. First, based on
the identification of goods in both the application and
registration we assume that the goods of both applicant and
registrant could vary in price from relatively inexpensive
items to more expensive items, including those in the price
range applicant suggests for one of its items. Even if we
did assume that the goods of both applicant and registrant
Ser No. 78279545
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are relatively expensive, and that the goods consequently
would be purchased with a significant degree of care, we
would not also assume that all purchasers are
sophisticated. That is, in the absence of evidence to the
contrary, we assume that the goods of both applicant and
registrant may be purchased by members of the general
public with an interest in either fishing or mountain
climbing who possess varying degrees of sophistication.
Furthermore, as the Examining Attorney noted, even
sophisticated purchasers are not immune from trademark
confusion. In re Pellerin Milnor Corp., 221 USPQ 558, 560
(TTAB 1983). Accordingly, we conclude that the evidence in
this application bearing on the sophistication of the
potential purchasers fails to indicate a diminished
likelihood of confusion.
Conditions of Sale
Applicant also argues that the conditions of sale for
both its products and those of registrant will preclude
confusion. Specifically, applicant states:
… advertisements for Appellant’s products market and
sell goods using the METOLIUS mark as a third-tier
trademark. Consumers first encounter the G. LOOMIS
house mark and company name. Second, the line of
fishing products is seen labeled with a second-tier
mark: STREAMDANCE. In the StreamDance line of
products there are several quality levels, and
products with the G. LOOMIS STREAM DANCE METOLIUS
marks are mid-grade and mid-priced in that line. The
Ser No. 78279545
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term METOLIUS is not prominently displayed alone on
the products, but is always displayed as connected to
the G. Loomis and StreamDance marks and in a lesser
manner than the other, more significant marks.

As to the registrant, applicant correctly argues that
the cited registration specifies that the registered mark
is a house mark. Applicant argues further that, “The mark
is not used directly on the mountain climbing products
themselves, and none of the Registrant’s products are
marked with the term METOLIUS.” Applicant appears to base
the representations about registrant’s use of its mark on
materials it submitted from the web pages applicant alleges
to be associated with registrant.
We do not find these arguments persuasive. First, as
we noted above, we will not consider evidence or argument
regarding the registrant offered for the purpose of showing
that registrant’s use of the registered mark is limited in
a manner not specified in the registration itself. In re
Bercut-Vandervoort & Co., 229 USPQ at 764. Accordingly, we
reject applicant’s argument that the registrant does not
place its mark on any of its goods and its other arguments
suggesting limits on registrant’s use of its mark.
Registrant may, in fact, use its house mark alone or with
other marks, and it may or may not be recognized as a house
mark by potential purchasers.
Ser No. 78279545
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Likewise, we reject applicant’s allegations regarding
the manner of its use of its own mark. Applicant has
applied to register METOLIUS in standard-character form by
itself. If applicant secured a registration for METOLIUS
on that basis, the registration would afford applicant a
presumption of its exclusive right to use that mark without
regard to the use of any first-tier or second-tier marks in
conjunction with METOLIUS. Vornado, Inc. v. Breuer
Electric Mfg. Co., 156 USPQ at 342. In fact, applicant
could use the mark as a house mark.
In sum, on this record we reject applicant’s arguments
which attempt to draw distinctions between applicant and
registrant based on the allegations that conditions
regarding the use of the respective marks differ.4
CONCLUSION
After considering all of applicant’s arguments and
evidence bearing on the du Pont factors, we conclude that
there is a likelihood of confusion between applicant’s mark
and the cited registered mark principally because the marks
are identical, because the goods of applicant and

4 In its briefs applicant has cited a number of cases which
originated in the district courts. These cases involve
infringement and similar claims where the focus is on the actual
use of marks. These cases are of limited relevance here due to
our focus in this proceeding on the particulars of the
application and registration, not actual use. In re Bercut-
Vandervoort & Co., 229 USPQ at 765 (TTAB 1986).
Ser No. 78279545
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registrant are related, and because the channels of trade
for the goods are the same or overlapping.
Furthermore, if we had any doubt in this case, we
would resolve it in favor of the prior registrant. In re
Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025
(Fed. Cir. 1988).
Decision: The refusal to register applicant’s mark
under Section 2(d) of the Act is affirmed.