Safari Club International

Trademark Trial and Appeal Board

May 23, 2008

No. 78203260 (T.T.A.B. May. 23, 2008)

Mailed: May 23, 2008
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Safari Club International
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Serial Nos. 78203260 and 78203266
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Stacie K. Smith, Esq. of Fennemore Craig, P.C. for Safari
Club International.

Gene V.J. Maciol, II, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
_______

Before Hairston, Bucher and Kuhlke, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Applications were filed by Safari Club International
to register the marks SCI FIRST FOR HUNTERS (in standard
character form) and SCI FIRST FOR HUNTERS and design, as
shown below,

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser Nos. 78203260 and 78203266
2
for goods ultimately identified as “clothing, namely,
shirts, t-shirts, sweat shirts, vests, jackets, hats and
caps” in International Class 25.”1
The trademark examining attorney refused registration
in each application under Section 2(d) of the Trademark
Act, 15 U.S.C. §1052(d), on the ground that applicant’s
marks, when used in connection with applicant’s goods, so
resemble the previously registered mark SCI for “clothing
merchandise, namely t-shirts, sweat shirts, jackets and
headwear,”2 as to be likely to cause confusion.
When the refusals were made final, applicant appealed.
Applicant and the examining attorney have filed briefs.
In view of the similar records and issues in these two
applications, we have consolidated the applications for
purposes of final decision. Thus, we have issued this
single opinion.
Applicant, in urging reversal of the refusal to
register, contends that its marks and the cited registered
mark are different in sound, appearance, connotation and
commercial impression. Applicant points out that both of
its marks include the phrase FIRST FOR HUNTERS and one of

1 Application Serial Nos. 78203266 and 78203260, respectively.
Both applications were filed on January 14, 2003 and are based on
intent to use under Section 1(b) of the Trademark Act, 15 U.S.C.
§1051(b).
2 Registration No. 3086952, issued May 2, 2006.
Ser Nos. 78203260 and 78203266
3
its marks also includes a design element. Furthermore,
applicant maintains that its marks and the cited registered
mark have different connotations because SCI in its marks
is an initialism for its name, Safari Club International,
and SCI in the cited registered mark is an initialism for
the registrant’s name, String Cheese Incident. Insofar as
applicant’s goods and the goods in the cited registration
are concerned, applicant argues that because they would not
be encountered by the same purchasers, confusion is
unlikely. According to applicant, it is a hunting
membership organization whose goods are sold at its website
and at conventions and sponsored events to purchasers who
want to demonstrate their support for hunting, whereas
registrant is a band whose goods are sold at its website
and live performances to purchasers who want to show their
support for registrant’s band. In this regard, applicant
has submitted Internet printouts with information about
registrant’s band. In addition, applicant contends that
confusion is unlikely because its goods are sold to
sophisticated purchasers, and there have been no instances
of actual confusion to date. Finally, applicant argues
that it is entitled to register its involved marks because
the USPTO allowed its subsidiary, Safari Club International
Foundation, to register the mark SCI FOUNDATION and Design
Ser Nos. 78203260 and 78203266
4
for clothing items (Registration No. 3056147) over the
cited registration.
The examining attorney, on the other hand, maintains
that the marks are similar in that applicant’s marks and
the cited mark share the identical element, SCI. As to the
respective goods, the examining attorney argues that the
clothing items identified in the involved applications are
legally identical and otherwise closely related to the
clothing merchandise identified in the cited registration,
and that such goods would travel in the same channels of
trade to the same classes of purchasers.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services.
Turning first to a consideration of the respective
goods, it is well settled that in determining the issue of
likelihood of confusion, we must consider the
Ser Nos. 78203260 and 78203266
5
identifications of goods set forth in the involved
applications and cited registration, regardless of what the
record may reveal as to the particular nature of the goods
at issue, their trade channels, or the classes of
purchasers to whom sales are made. See Octocom Systems
Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16
USPQ2d 1813 (Fed. Cir. 1987); and Canadian Imperial Bank of
Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1783 (Fed. Cir. 1992).
In this case, applicant’s goods are described as
“shirts, t-shirts, sweat shirts, vests, jackets, hats and
caps” and registrant’s goods are described as “t-shirts,
sweat shirts, jackets and headwear.” Applicant’s goods are
identical in part (t-shirts, sweat shirts, jackets, hats
and caps) and otherwise closely related (shirts, vests) to
registrant’s goods. The identifications of goods in the
involved applications and the cited registration include no
limitations with respect to channels of trade and classes
of purchasers. In other words, there are no limitations
indicating that applicant’s clothing is sold at its website
and at conventions and sponsored events to purchasers who
want to demonstrate their support for hunting. Nor are
there limitations indicating that registrant’s clothing is
sold at its website and live performances to purchasers who
Ser Nos. 78203260 and 78203266
6
want to show their support for registrant’s band. Thus, in
the absence of any limitations, we must presume that
applicant’s and registrant’s clothing will be sold in all
channels of trade that are appropriate for such goods and
that they may be sold to all classes of purchasers.
Purchasers of clothing are ordinary consumers who are not
necessarily discriminating or knowledgeable about such
products. Consequently, if applicant’s and registrant’s
goods were to be marketed under the same or similar marks,
confusion as to the source or sponsorship thereof would be
likely to occur.
Turning then to a consideration of the marks, we must
determine whether applicant’s marks and registrant’s mark,
when compared in their entireties, are similar or
dissimilar in terms of sound, appearance, connotation and
commercial impression. Although the marks must be
considered in their entireties, it is well settled that one
feature of a mark may be more significant than another, and
it is not improper to give more weight to this dominant
feature in determining the commercial impression created by
the mark. See In re National Data Corp., 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985). Furthermore, the test is
not whether the marks can be distinguished when subjected
to a side-by-side comparison, but rather whether the marks
Ser Nos. 78203260 and 78203266
7
are sufficiently similar in terms of their commercial
impression that confusion as to the source of the goods
offered under the respective marks is likely to result.
The focus is on the recollection of the average purchaser,
who normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975). Finally, when marks
appear on identical goods, the degree of similarity
necessary to support a conclusion of likelihood of
confusion declines. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 824, 23 USPQ2d 1698 (Fed.
Cir. 1992).
Applicant’s marks are SCI FIRST FOR HUNTERS and SCI
FIRST FOR HUNTERS and design. The cited registered mark is
SCI. Obviously, because applicant’s marks include the
identical element SCI in the cited registered mark, there
are consequent similarities in appearance, sound and
connotation. We are not persuaded by applicant’s argument
that the connotations of the marks are different because
the letters SCI stand for different things in the
respective marks, i.e., Safari Club International versus
String Cheese Incident. Safari Club International does not
appear in applicant’s marks and String Cheese Incident does
not appear in registrant’s mark. The names therefore are
Ser Nos. 78203260 and 78203266
8
immaterial to our analysis. See, e.g., Vornado, Inc. v.
Breuer Elec. Mfg. Co., 390 F.2d 724, 156 USPQ 340 (CCPA
1968); Sealy, Inc. v. Simmons Co., 265 F.2d 934, 121 USPQ
456 (CCPA 1959); and ITT Canteen Corp. v. Haven Homes Inc.,
174 USPQ 539 (TTAB 1972). While the additional phrase in
applicant’s marks, FIRST FOR HUNTERS, gives an added
connotation to applicant’s marks which is not present in
the cited registered mark, we find that this point of
difference is not sufficient to distinguish the marks
overall.
Furthermore, we note that the phrase FIRST FOR HUNTERS
is subordinate to and smaller in size than the SCI portion
of applicant’s marks. With respect to applicant’s SCI
FIRST FOR HUNTERS and design mark, we recognize that the
globe design therein cannot be ignored. However, this
design also is subordinate to the SCI portion of
applicant’s mark and is less likely to be remembered by
consumers. In re Appetito Provisions Co., 3 USPQ2d 1553
(TTAB 1987). In short, it is SCI that clearly dominates
applicant’s marks and it is the entirety of registrant’s
mark.
We find, therefore, that when applicant’s marks and
the cited registered mark are considered in their
entireties, they are similar in sound, appearance,
Ser Nos. 78203260 and 78203266
9
connotation, and commercial impression. Given the
fallibility of memory and that consumers often retain only
a general rather than specific recall of marks to which
they are exposed, the similarities in applicant’s marks and
the cited registered mark are such that, as used in
connection with identical and closely related clothing,
confusion as to source or sponsorship thereof is likely to
occur.
Applicant asserts that it and the registrant have used
their marks for ten years without any instances of actual
confusion, and this shows that confusion is not likely to
occur. We are not persuaded by this argument. Applicant
has not provided any evidence as to the extent of its use,
nor is there any evidence as to registrant’s use, such that
we can determine whether there has been a meaningful
opportunity for confusion to occur. “Uncorroborated
statements of no known instances of actual confusion are of
little evidentiary value…. The lack of actual confusion
carries little weight … especially in an ex parte context.”
Majestic Distilling, 65 USPQ2d at 1205.
Finally, applicant argues that it is entitled to
register its involved marks because the USPTO allowed its
subsidiary to register the mark SCI FOUNDATION and Design
for clothing items (Registration No. 3056147) over the
Ser Nos. 78203260 and 78203266
10
cited registration. This argument is unavailing. It is
well established that the Board is not bound by prior
actions and decisions of examining attorneys. Each case
must be decided on its own facts, based on the particular
mark, the particular goods or services, and the particular
record in each application. See In re Nett Designs Inc.,
236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) [“Even
if some prior registrations had some characteristics
similar to [applicant’s] application, the PTO’s allowance
of such prior registrations does not bind the Board or this
court.”].
In view of the foregoing, and because similar marks
are to be used in connection with identical and closely
related goods, we find that there is a likelihood of
confusion.
Decision: The refusal to register under Section 2(d)
is affirmed in each application.