King Ranch IP, LLCv.GWB, Inc.

Trademark Trial and Appeal Board

Apr 13, 2007

No. 92032301 (T.T.A.B. Apr. 13, 2007)

Hearing: Mailed:
July 18, 2006 April 13, 2007
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

King Ranch IP, LLC1
v.
GWB, Inc.
_____

Cancellation No. 92032301
_____

Paul C. Van Slyke of Locke Liddell & Sapp LLP for King Ranch
IP, LLC.

James E. Shlesinger of Shlesinger, Arkwright & Garvey LLP.
_____

Before Rogers, Holtzman and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

On July 31, 2001, King Ranch IP, LLC (petitioner)
petitioned to cancel a registration owned by GWB, Inc.
(respondent), namely, Reg. No. 2422044 for the mark RANCH
KING for goods identified as “headwear” in International
Class 25. The application for this registration was filed
on February 1, 1999; the registration issued on January 16,
2001; and it is active. The registration specifies a date

1 In an order mailed August 9, 2006, the Board granted the motion
by King Ranch, Inc., to substitute King Ranch IP, LLC as
petitioner.

THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Cancellation No. 92032301
2
of first use anywhere and first use in commerce on June 1,
1999.
As grounds for cancellation petitioner asserts a
likelihood of confusion under Trademark Act Section 2(d), 15
U.S.C. § 1052(d), between respondent’s RANCH KING mark and
petitioner’s KING RANCH mark for various goods and services.
Petitioner asserts that it used its KING RANCH mark on a
variety of goods and services, including hats and other
types of clothing, long before respondent filed its
application or began use of the registered mark. Petitioner
also pleaded ownership of Reg. No. 2351709 for the KING
RANCH mark for “clothing for men, women and children,
namely, jackets, shirts, T-shirts, shorts, pants, hats,
caps, bandannas, belts, boots, blouses, skirts, dresses,
vests, hunting vests, hunting pants and protective
leggings.” The registration, which is active, issued on May
23, 2000 from an application filed on May 4, 1999. The
registration claims first use anywhere and first use in
commerce on December 31, 1923.
Petitioner has filed a brief but respondent has not.
Respondent appeared at an oral hearing but petitioner did
not. For the reasons indicated below, we grant the petition
for cancellation.
Cancellation No. 92032301
3
The Record
In addition to the file for the RANCH KING registration
and the pleadings, the record includes the following:
petitioner’s testimonial depositions of Sharon Shaw and Rose
Morales with exhibits; petitioner’s notices of reliance on
numerous printed publications and dictionary entries, status
and title copies of certain registrations owned by
petitioner including Reg. No. 2351709,2 and certain
responses by respondent to petitioner’s interrogatories;
respondent’s affidavit by Chris I. Fitterling, submitted
under a stipulation by the parties; respondent’s notice of
reliance on certain USPTO application and registration
records, certain dictionary entries, and certain responses
by petitioner to respondent’s interrogatories.
Findings of Fact
Petitioner
Petitioner and its predecessors have operated the King
Ranch, located principally in South Texas, since its
establishment in 1853 by Captain Richard King. The South
Texas King Ranch covers more than 1,300 square miles, an
area larger than the State of Rhode Island. The ranch is
home to over 50,000 cattle and 300 horses. By any measure,
even Texas standards, the ranch is impressive in size. The

2 Although petitioner made numerous KING RANCH registrations of
record, petitioner only pleaded Reg. No. 2351709. Accordingly,
we have not considered the registrations which were not pleaded.
Cancellation No. 92032301
4
ranch has also become known as a result of publicity
extending over many decades. Petitioner has documented the
history of the ranch and publicity about the ranch primarily
through a wide range of publications and through the
testimony of Sharon Shaw and Rose Morales. Each of the
witnesses had been employed on the King Ranch for many years
in a number of capacities, including in management positions
related to the retail sale of goods under the KING RANCH
mark.
The King Ranch is a National Historic Landmark. The
ranch was featured in a cover story in Time Magazine in 1947
and in LIFE Magazine in 1957. The King Ranch was also among
the subjects featured in the “Cattle Barons” installment of
the 1997 A&E television and video series entitled America’s
Castles. The King Ranch has also produced a Triple Crown
winner, Assault. The ranch played a significant role in the
development of the ranching business, most notably in
breeding and raising cattle.
The references to the King Ranch in periodicals in the
record consist principally of stories about subjects other
than the ranch where a passing reference is made to the King
Ranch. Adjectives, such as famous or renown, consistently
modify “King Ranch” in these articles. The articles come
from sources within Texas, as well as national and
international publications.
Cancellation No. 92032301
5
The enterprises connected with the King Ranch extend
from the traditional ranching businesses, including beef
production, to oil wells, to tourism and the provision of a
wide variety of goods under the KING RANCH trademark
beginning with leather saddles dating from the early days of
the ranch. The ranch has offered tours, including hunts,
wildlife tours, bird-watching tours, museum and nature
tours, some since as early as the 1920s and all since at
least 1992.
The ranch began the retail sale of more typical
consumer goods more recently. Petitioner states,
“Petitioner, and its divisions and affiliates, sells (sic) a
wide variety of goods and services under the KING RANCH
mark. These include clothing, multi-purpose hand tools, gun
cases, jewelry, pens, leather desk accessories, saddles,
luggage, dinnerware, furniture, cutlery, golf towels and
balls, food products, nature tours, and cattle breeding
services, to name a few.” Petitioner’s Brief at 8
(footnotes omitted). Petitioner has also licensed the KING
RANCH mark for use on a line of pickup trucks sold by the
Ford Motor Company.
Petitioner sells its goods and services through
catalogs, web sites, and in its own retail store operations
on the ranch itself and in Kingsville, Texas. Petitioner
currently mails approximately one million catalogs to
Cancellation No. 92032301
6
potential customers each year; petitioner has mailed
approximately eight million catalogs since 1992.
Petitioner’s hats bearing the KING RANCH mark are among the
goods featured in those catalogs.
For our purposes, the most important products are
petitioner’s clothing, and in particular, hats. Through
testimony and exhibits, including samples of catalogs,
petitioner has established that it has used the KING RANCH
mark on clothing, including hats, continuously since at
least as early as 1992. The hats include caps and brimmed
hats, such as straw hats and cowboy-style hats. Overall
King Ranch has sold over $1,500,000 in hats under the KING
RANCH mark from 1993 to 2003. The sales for all products
sold under the KING RANCH mark from 1992 to 2003 are
approximately $58 million.
Petitioner advertises its goods and services, including
clothing and hats, principally in local publications in
South Texas, and to a limited extent in publications with
wider circulation, such as Texas Monthly and Southern Living
magazines, as well as magazines and catalogs distributed
through national airlines. The record does not include any
specific circulation figures for any publications in which
petitioner advertises. From 1999 through 2000 petitioner
spent approximately $21,000 in magazine advertising.
Cancellation No. 92032301
7
Respondent
The affidavit of Chris I. Fitterling is the primary
source of information about the respondent and its use of
the RANCH KING mark, apart from the particulars of the
registration noted above. Mr. Fitterling is a vice
president of a company related to respondent and, as a
result of holding that position, Mr. Fitterling has actual
knowledge of respondent’s marketing of products under the
RANCH KING mark. Respondent sells hats under numerous
marks, including RANCH KING. Respondent sold over
$1,200,000 in hats under the RANCH KING mark from June 1999
until November 11, 2003, the date of the Fitterling
affidavit.
Mr. Fitterling was not aware that petitioner was a
competitor, and furthermore, Mr. Fitterling was not aware of
any confusion between the KING RANCH and RANCH KING marks.
Mr. Fitterling stated his belief that the KING RANCH and
RANCH KING marks created different commercial impressions
because petitioner’s mark referred to an individual with the
KING surname and respondent’s mark conveys “quality,
superiority and leadership.” Fitterling Affidavit at 4.
Mr. Fitterling states that respondent’s “channel of trade”
for its goods sold under the RANCH KING mark is “our
established distribution network.” Id. There is no
Cancellation No. 92032301
8
evidence in the record regarding the nature of that
“network.”
Analysis
Standing

Standing is a threshold inquiry in every inter partes
case. In Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023
(Fed. Cir. 1999), the Federal Circuit has enunciated a
liberal threshold for determining standing, that is, whether
one’s belief that one will be damaged by the registration
has a reasonable basis in fact and reflects a real interest
in the case. See also Jewelers Vigilance Committee Inc. v.
Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021, 2023 (Fed.
Cir. 1987); and Lipton Industries, Inc. v. Ralston Purina
Company, 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Petitioner has alleged and submitted evidence of use of its
KING RANCH mark in connection with clothing, including hats,
as well as other goods and services. We consider this
evidence sufficient to establish petitioner’s standing.
Priority
Because both petitioner and respondent own
registrations, neither party has priority simply because it
owns a registration. Brewski Beer Co. v. Brewski Brothers,
Inc., 47 USPQ2d 1281, 1284 (TTAB 1998). In a case such as
this, “… the registrations of each party offset each other…
[and] petitioner as a plaintiff, must, in the first
Cancellation No. 92032301
9
instance, establish prior rights in the same or similar
mark…” Id.
In this case, because respondent has not submitted any
evidence of an earlier priority date, the earliest date upon
which it can rely is the filing date of its underlying
application, that is, February 1, 1999. Intersat Corp. v.
International Telecommunications Satellite Organization, 226
USPQ 154, 156 n. 5 (TTAB 1985). Because petitioner’s
underlying application was not filed until May 4, 1999,
petitioner is required to show use prior to February 1, 1999
to establish its priority. Petitioner has done so by
establishing through competent evidence that it used the
KING RANCH mark on clothing, including hats, at least as
early as 1992, as noted in our findings of fact.
Accordingly, petiioner has priority and the issue of
likelihood of confusion is determinative in this case.
Likelihood of Confusion
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 to consider in determining likelihood of confusion.
We must determine the issue of likelihood of confusion based
on the evidence of record relating to the factors. In re
Majestic Distilling Co., 315 F.3d 1301, 65 USPQ2d 1201,
1203-04 (Fed. Cir. 2003). Here, as is often the case, the
crucial factors are the similarity of the marks and the
Cancellation No. 92032301
10
similarity of the goods of the petitioner and respondent.
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.”).
The Goods and Channels of Trade - The goods of
petitioner and respondent need not be identical to find
likelihood of confusion under Section 2(d) of the Trademark
Act. They need only be related in some manner or the
circumstances surrounding their marketing must be such that
they 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 channels of
trade we must consider the goods as identified in the
respondent’s registration. See Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990). See also Paula Payne Products
v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77
(CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
respective descriptions of goods.”). Because petitioner
relies on common law rights acquired through use of its mark
Cancellation No. 92032301
11
in addition to a registration, petitioner is not limited to
those goods identified in its registration in the comparison
of goods.
The goods in respondent’s registration are identified
simply as “headwear.” Petitioner has established earlier
use of its KING RANCH mark on hats, a type of headwear.
Accordingly, we conclude that the goods of the parties are
identical.
Furthermore, in comparing the channels of trade for the
goods, as we noted above, we must again consider the goods
as identified in respondent’s registration. Respondent’s
registration does not specify any trade-channel limitations.
Accordingly, we must assume that respondent’s goods travel
in all usual trade channels for such goods. In view of the
fact that the goods of the parties are identical, we
conclude that the channels of trade and potential purchasers
for respondent’s goods are the same or overlapping with the
petitioner’s goods.
For completeness we also note that respondent’s goods,
as identified, could include relatively inexpensive
headwear, for example, caps, an item which could be
purchased with little deliberation, and an item which
petitioner also sells under its mark. Furthermore, we note
that, “the degree of similarity [between the marks]
necessary to support the conclusion of likely confusion
Cancellation No. 92032301
12
declines” when the goods are identical. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied, 506 U.S.
1034 (1992).
The Marks - In comparing the marks we must consider the
appearance, sound, connotation and commercial impression of
the marks at issue. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005).
In this case we have a classic example of two marks
consisting of the same two words where the order of the
words is inverted – KING RANCH versus RANCH KING. In such a
case, the key to determining whether the marks are
confusingly similar is whether the marks have different
connotations or “create distinctly different commercial
impressions.” In re Nationwide Indus. Inc., 6 USPQ2d 1882,
1884 (TTAB 1988), citing, Bank of America National Trust and
Savings Assn. v. American National Bank of St. Joseph, 201
USPQ 842 (TTAB 1978). Cf. In re Wine Society of America
Inc., 12 USPQ2d 1139 (TTAB 1989).
In this case, petitioner argues that the commercial
impressions of the two marks are the same. Specifically,
petitioner argues that its KING RANCH mark suggests high
quality and that respondent’s RANCH KING mark does likewise
by emulating petitioner’s mark. Petitioner points to the
Cancellation No. 92032301
13
“tradition of quality” associated with the King Ranch itself
and the KING RANCH mark. Petitioner’s Brief at 18. At oral
argument, respondent argued, as the Fitterling affidavit
alleges, that the commercial impressions of the marks differ
because KING in petitioner’s mark is a surname referring to
the founder of the ranch and respondent’s mark conveys no
such meaning, but rather “quality, superiority and
leadership.” Fitterling Affidavit at 4.
Both petitioner and respondent have submitted numerous
dictionary definitions for both “king” and “ranch” in an
apparent attempt to show, either respectively, that the
marks do or do not convey the same or similar commercial
impressions. Under these circumstances, the competing
dictionary entries are not particularly probative or
persuasive.
First, we note that the two marks are similar in both
appearance and sound. Although the inversion of the words
alters the appearance and sound, the difference is not
significant. In fact, this appears to be one of the few
cases addressing the inversion of word order where the two
words are identical in all respects. See Bakers Franchise
Corp. v. Royal Crown Cola Co., 404 F.2d 985, 160 USPQ 193
(CCPA 1969) (DIET RITE held confusingly similar to RITE
DIET). Cf. In re Nationwide Indus. Inc., 6 USPQ2d at 1884
(RUST BUSTER held confusingly similar to BUST RUST); Bank of
Cancellation No. 92032301
14
America National Trust and Savings Assn. v. American
National Bank of St. Joseph, 201 USPQ at 8432 (AMERIBANC
held confusingly similar to BANKAMERICA and BANK OF
AMERICA).
With regard to connotation and commercial impression,
we conclude that the marks are virtually identical in these
respects. We are not persuaded by respondent’s argument
that potential purchasers will perceive the alleged surname
significance of KING in petitioner’s mark. We have no
evidence either that potential purchasers of headwear will
have detailed knowledge of the history of the King Ranch or
that they would perceive a reference to Captain Richard King
or any of his descendants in the KING RANCH mark when used
on hats.
Rather, we conclude that both words KING and RANCH
convey the same meanings in both marks, and that the
combination of the words in both marks, though in inverse
order, also conveys the same connotation and commercial
impression. In both marks KING connotes something regal or
superior, something of high quality, and RANCH connotes that
the relevant goods are suitable for or otherwise associated
with ranches or like places. The inversion in the order
does nothing to alter these connotations or the commercial
impressions of the marks. Accordingly, we conclude that the
marks are similar overall.
Cancellation No. 92032301
15
Fame – Petitioner argues that its mark is famous, and
therefore, entitled to a broad scope of protection.
Petitioner has provided evidence of the long history of the
King Ranch, as well as the notoriety the ranch has achieved,
principally for its size and its role in the development of
the ranching business. However, the use of the KING RANCH
mark in connection with clothing, particularly hats, covers
a period of just over ten years, and the sales and
advertising related to hats sold under the KING RANCH mark
over that period are modest in scope. In the absence of any
evidence in the record which provides a context for sales of
hats generally, other than the specific sales of petitioner
and respondent under their respective marks, we conclude
that petitioner’s hat sales represent a relatively small
share of the hat market.
Accordingly, based on the entire record, we conclude
that petitioner has shown only a de minimis degree of
“renown” for the KING RANCH mark as applied to clothing,
particularly hats. Any renown derives from the notoriety of
the ranch generally. The degree of renown shown here would
entitle petitioner to only a marginally broader scope of
protection than would otherwise apply for its KING RANCH
mark as applied to hats. Gillette Canada Inc. v. Ranir
Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). See Kenner Parker
Toys Inc. v. Rose Art Industries Inc., 963 F.2d 350, 22
Cancellation No. 92032301
16
USPQ2d 1453, 1456 (Fed. Cir. 1992). The showing falls far
short of that required to qualify the mark for inclusion in
the select class of marks which are characterized as famous.
See NASDAQ Stock Market Inc. v. Antarctica S.r.l., 69 USPQ2d
1718 (TTAB 2003). Furthermore, we note that we would reach
the same conclusion on the ultimate question of likelihood
of confusion with or without a finding of renown for
petitioner’s mark.
Actual Confusion - Respondent also appears to argue
that there has been no actual confusion between its mark and
petitioner’s mark by relying on petitioner’s interrogatory
response indicating that petitioner was not aware of any
confusion and Mr. Fitterling’s assertion that he was not
aware of any confusion. While we must presume overlapping
channels of trade in comparing the goods because of
governing precedent, in considering actual confusion, we
must focus on whether there have been real opportunities for
such confusion to occur. We find no evidence in this record
indicating that there has been a significant opportunity for
confusion. In this regard, we note that respondent has not
even delineated the trade channels for its goods.
More importantly, we reject respondent’s implied
argument that the absence of actual confusion in this record
supports its position generally. The Federal Circuit has
stated, “A showing of actual confusion would of course be
Cancellation No. 92032301
17
highly probative, if not conclusive, of a high likelihood of
confusion. The opposite is not true, however. The lack of
evidence of actual confusion carries little weight (citation
omitted) . . .” Majestic, 65 USPQ2d at 1205. See also In
re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984).
Accordingly, we conclude that the actual-confusion
factor is neutral in this case.
Conclusion
Finally, we have considered all relevant evidence in
this case bearing on the du Pont factors and conclude that
there is a likelihood of confusion between petitioner’s KING
RANCH mark and respondent’s RANCH KING mark. We conclude so
principally because the goods are identical and the marks
are similar in appearance and sound and virtually identical
in connotation and commercial impression, and due to the
strength of petitioner’s KING RANCH mark.
Decision: The petition for cancellation is granted on
the ground of likelihood of confusion. The registration
will be cancelled in due course.