Olin Corporation

Trademark Trial and Appeal Board

Dec 1, 2008

No. 78818909 (T.T.A.B. Dec. 1, 2008)

Mailed:
December 1, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Olin Corporation
________

Serial No. 78818909
_______

Elizabeth D. Odell of Harness, Dickey & Pierce, for Olin
Corporation.

Sandra E. Manios, Trademark Examining Attorney, Law Office 104
(Chris Doninger, Managing Attorney).
_______

Before Quinn, Bucher and Ritchie, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Olin Corporation filed an application to register the mark
THE AMERICAN LEGEND for goods identified as “ammunition;
firearms,” in International Class 131. The Trademark Examining
Attorney refused to register applicant’s mark under Section 2(d)
of the Trademark Act of 1946, 15 U.S.C. §1052(d), on the ground
that applicant’s mark so resembles the registered mark AMERICAN
HEROES AND LEGENDS, in typed drawing form, for “firearms” in

1 Serial No. 78818909, filed February 20, 2006, alleging a bona fide
intent to use the mark in commerce pursuant to Section 1(b) of the
Trademark Act, 15 U.S.C. §1051(b).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78818909
2
International Class 13,2 that when used on or in connection with
applicant’s identified goods, it is likely to cause confusion or
mistake or to deceive.
Upon final refusal of registration, applicant filed a
timely appeal. Both applicant and the examining attorney filed
briefs. For the reasons discussed herein, the Board affirms the
refusal to register.
We base our determination under Section 2(d) on an analysis
of all of the probative evidence of record bearing on a
likelihood of confusion. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 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 or services.
See Federated Foods, Inc. v. Fort 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 consider each of the factors as to which

2 Registration No. 2558773, issued April 9, 2002, claiming June 1, 1994
as its date of first use and August 30, 1994 as its date of first use
in commerce, and claiming acquired distinctiveness under Section 2(f)
of the Trademark Act; 15 U.S.C. §1052(f). Sections 8 and 15
affidavits acknowledged and accepted.
Serial No. 78818909
3
applicant or the examining attorney presented arguments or
evidence.
The Goods and Channels of Trade

Both the application and the cited registration identify
“firearms.” Accordingly, the goods at issue are in part
identical. The only other good identified by applicant is
“ammunition.” Applicant has argued that ammunition is sold
separately and in different channels of trade than firearms.
However, the record includes probative evidence from both
applicant and the examining attorney showing various websites
that market firearms and ammunition together. Accordingly, we
find that the goods are in part identical and otherwise highly
related. Additionally, there is nothing in the recital of goods
in either the application or the cited registration that limits
either’s channels of trade. In the absence of specific
limitations therein, we must presume that both applicant’s and
registrant’s goods will travel in all normal and usual channels
of trade and methods of distribution. Squirtco v. Tomy
Corporation, 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983).
See In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992)
(because there are no limitations as to channels of trade or
classes of purchasers in either the application or the cited
registration, it is presumed that the services in the
registration and the application move in all channels of trade
Serial No. 78818909
4
normal for those services, and that the services are available
to all classes of purchasers for the listed services). In other
words, there is nothing that prevents the registrant’s firearms
from being sold in the same channels of trade and to the same
classes of consumers that purchase firearms and ammunition from
applicant. Accordingly, we find that since the goods are in
part identical and otherwise highly related, and the channels of
trade will be the same or overlapping, these du Pont factors
weigh heavily in favor of finding a likelihood of consumer
confusion.
The Marks
We now turn to the du Pont likelihood of confusion factor
focusing on the similarity or dissimilarity of the marks in
their entireties as to appearance, sound, connotation and
commercial impression. In re E. I. du Pont De Nemours & Co.,
supra. In a particular case, any one of these means of
comparison may be critical in finding the marks to be similar.
In re White Swan Ltd., 9 USPQ2d 1534, 1535 (TTAB 1988); In re
Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1988). Preliminarily,
we note that that where, as here, the goods are in part
identical, the degree of similarity necessary to find likelihood
of confusion need not be as great as where there is a
recognizable disparity between the goods. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
Serial No. 78818909
5
1698, 1700 (Fed. Cir. 1992); Real Estate One, Inc. v. Real
Estate 100 Enterprises Corporation, 212 USPQ 957, 959 (TTAB
1981); ECI Division of E-Systems, Inc. v. Environmental
Communications Incorporated, 207 USPQ 443, 449 (TTAB 1980).
In addition, in comparing the marks, the test is not
whether the marks can be distinguished when subjected to a side-
by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression so that confusion as to the source of the goods
offered under the respective marks is likely to result. San
Fernando Electric Mfg. Co. v. JFD Electronics Components Corp.,
565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc.
v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d
unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The proper
focus is on the recollection of the average customer, who
retains a general rather than a specific impression of the
marks. Winnebago Industries, Inc. v. Oliver & Winston, Inc.,
207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975). In this case, the relevant
public comprises consumers who purchase and use firearms and/or
ammunition.
Applicant’s mark consists of three words, “THE,” “AMERICAN”
and “LEGEND.” The cited registered mark consists of four words,
“AMERICAN,” “HEROES” “AND” “LEGENDS.” Two of the three words in
Serial No. 78818909
6
applicant’s mark are encompassed in the cited registered mark.
The third is the common article, “THE.” Accordingly, the marks
look and sound highly similar. Applicant argues that the
connotations are different however, asserting that the cited
registered mark, with the word “HEROES,” emphasizes people,
whereas applicant’s mark with just the word “LEGEND,” emphasizes
a story. The examining attorney submitted dictionary
definitions, stating in relevant part as follows:
Hero: 1. In mythology and legend, a man, often of
divine ancestry, who is endowed with great courage and
strength, celebrated for his bold exploits, and
favored by the gods. 2. A person noted for feats of
courage or nobility of purpose, especially one who has
risked or sacrificed his or her life; 3. A person
noted for special achievement in a particular field.
4. The principle male character in novel, poem, or
dramatic presentation. American Heritage Dictionary
of the English Language (4th ed. 2000).

Legend: 1.a.) A story coming down from the past,
especially one popularly regarded as historic although
not verifiable. b.) a body of such stories. c.) a
popular myth of recent origin; d.) a person or thing
that inspires legends. e.) the subject of a legend.
Merriam-Webster Online Dictionary.

The submitted dictionary definition of “hero” actually
includes the word “legend” and the definition of “legend”
includes “a person.” Furthermore, the examining attorney
submitted evidence from the Internet showing the exact words
from applicant’s mark, “The American Legend,” used to refer to a
particular celebrity such as Babe Ruth or James Dean.
Accordingly, we are not persuaded by applicant’s argument that
Serial No. 78818909
7
the word “heroes” used in conjunction with “legends” – as done
in the cited registered mark -- produces a different commercial
impression than just the word “legend” – as done in applicant’s
mark.
Finally, applicant argues that it was the record owner
of a now-expired registration,
shown at right. However, that
does
3
not affect our likelihood of confusion determination herein. An
expired registration is not entitled to any of the presumptions
of Section 7(b) of the Trademark Act. See Action Temporary
Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d
1307, 1309 (Fed. Cir. 1989) (“[A] canceled registration does not
provide constructive notice of anything.”). To the extent
applicant is claiming to be the senior user of “an American
legend,” when compared with registrant, applicant cannot
collaterally attack a cited registration during an ex parte
examination or appeal. To the extent that applicant is arguing
that the cited mark is weak, even a weak mark is entitled to
protection against registration of a confusingly similar mark.
See Giant Food Inc. v. Roos and Mastacco, Inc., 218 USPQ 521
(TTAB 1982). Furthermore, inasmuch as the cited registration is

3 Registration No. 1093732 covering “firearms” in International
Class 13 issued on June 20, 1978; expired under § 9 on March 30, 1999.
Serial No. 78818909
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registered under the provisions of Section 2(f) of the Act, as a
mark having demonstrated acquired distinctiveness, it is no
longer considered an inherently weak mark.
In sum, the marks are substantially similar in terms of
appearance, sound, meaning and commercial impression. In view
of the foregoing, we find that the first du Pont factor weighs
heavily in favor of finding a likelihood of consumer confusion.
Balancing the Factors
In view of our findings that the goods are in part
identical and otherwise highly related; they move in the same
channels of trade to the same purchasers; and the marks are
substantially similar, we find that applicant’s mark THE
AMERICAN LEGEND for firearms and ammunition is likely to cause
confusion with the registered mark AMERICAN HEROES AND LEGENDS
for firearms.
Decision: The refusal to register is affirmed.