4447 Technologies Group, LLCv.Shenzhen You En Tai. Electronic Co., Ltd.

Trademark Trial and Appeal Board

Oct 2, 2018

No. 91230363 (T.T.A.B. Oct. 2, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: October 2, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
4447 Technologies Group, LLC
v.
Shenzhen You En Tai. Electronic Co., Ltd.
_____

Opposition No. 91230363

_____

Clinton J. Cusick of Cusick IP PLLC for
4447 Technologies Group, LLC

Shenzhen You En Tai. Electronic Co., Ltd.,
Applicant, pro se.
_____
Before Shaw, Adlin and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

Shenzhen You En Tai. Electronic Co., Ltd. (“Applicant”) seeks registration on the
Principal Register of the mark for:
Altimeters; Binoculars; Cameras; Clinometers; Directional
compasses; Distance measuring apparatus; Electric
meters; Fire and smoke detectors; Laser speed detectors;
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Microscopes; Optical apparatus and instruments, namely,
optical ports for underwater photography, dome ports for
underwater photography, wet diopters, adapter lenses for
underwater photography; Radar detectors; Sighting
telescopes for firearms; Surveying instruments;
Telemeters; Telescopes; Tool measuring instruments in
International Class 9 (the “Application”).1
4447 Technologies Group, LLC (“Opposer”) opposes registration of the mark based
on alleged likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d) with its registered marks, shown below:
EXPLORE in standard characters for “Laser rangefinders; Rifle scopes;
Spotting scopes” in International Class 9;2 and
for “Rifle scopes; Spotting scopes; Laser rangefinders” in
International Class 9.3

In its answer, Applicant denies the salient allegations in the notice of opposition,
and raises several “affirmative defenses” that merely amplify its denials4 and are not
true affirmative defenses. See Hornblower & Weeks Inc. v. Hornblower & Weeks Inc.,
60 USPQ2d 1733, 1738 n.7 (TTAB 2001). Regardless, Respondent filed neither a

1 Application Serial No. 86801498, filed on October 28, 2015, based on Applicant’s allegation
of use in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). The
application record includes the following description: “The mark consists of the stylized
wording ‘LaserExplore.’ Color is not claimed as a feature of the mark.”
2 Registration Number 4324101 issued April 23, 2013, based on alleged use in commerce
under 15 U.S.C. § 1051(a), and a combined Section 8 and Section 15 affidavit has been
accepted and acknowledged.
3 Registration Number 3522123 issued October 21, 2008, based on alleged use in commerce
under 15 U.S.C. § 1051(a), and has been renewed. The registration includes the following
description: “The mark consists of a black letter ‘E’ and a stylized red letter ‘X’ and the text
‘PLORE’ in black. The color(s) black and red is/are claimed as a feature of the mark.”
4 The Notice of Opposition states a claim for likelihood of confusion.
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formal motion to dismiss pursuant to Fed R. Civ. P. 12(b)(6) during the interlocutory
phase of this proceeding, nor pursued any asserted affirmative defense at trial.
Accordingly, any affirmative defenses are waived. See Alcatraz Media v. Chesapeake
Marine Tours Inc., 107 USPQ2d 1750, 1753 n.6 (TTAB 2013), aff’d mem., 565 Fed.
Appx. 900 (Fed. Cir. 2014).
Only Opposer filed a brief. See TBMP § 801.02(b) (June 2018) (“The filing of a brief
on the case is optional, not mandatory, for a party in the position of defendant.”); see
also 37 C.F.R. § 2.128(a)(1).
I. Evidentiary Record

Opposer submitted a November 30, 2017 Notice of Reliance that included, inter
alia, a testimony declaration. 8 TTABVUE. Applicant submitted no evidence.
The record thus consists of:
• The pleadings;
• Pursuant to Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the file of the
Application;
• Pursuant to Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1), Opposer’s
pleaded registrations, 8 TTABVUE 9-17;
• Pursuant to Trademark Rule 2.123(a)(1), 37 C.F.R. § 2.123(a)(1), the
declaration testimony of W.B. Tabor, Opposer’s Managing General Partner,
8 TTABVUE 6-7;
• Pursuant to Trademark Rule 2.122(e), 37 C.F.R. § 2.122(e), screenshots from
Opposer’s website, including its online catalog, 8 TTABVUE 18-48.
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Although Opposer also included in its Notice of Reliance an email from Applicant’s
counsel, 8 TTABVUE 49, that document is not admissible by notice of reliance, and
therefore has been given no consideration. See 37 C.F.R. § 2.122(g).
II. Standing and Priority
Opposer must prove standing by showing a real interest in the outcome of the
proceeding and a reasonable basis for believing that it would suffer damage if the
mark is registered. See 15 U.S.C. § 1063; Empresa Cubana Del Tabaco v. Gen. Cigar
Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014). Opposer’s pleaded
registrations, for which Opposer has established status and title, establish its
standing. See Coach Serv. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d
1713, 1727-28 (Fed. Cir. 2012). Also, Section 2(d) priority is not in issue as to the
marks and the goods covered by these registrations. See id. Applicant does not contest
priority.
III. Likelihood of Confusion
The determination under Section 2(d) involves 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) (setting forth factors to be
considered, hereinafter referred to as “du Pont factors”); see also In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). A
likelihood of confusion analysis often focuses on the similarities between the marks
and the similarities between the goods. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
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mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks”). Opposer bears the burden
of proving its claim of likelihood of confusion by a preponderance of the evidence.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir.
2000).
We focus our analysis primarily on Opposer’s Registration No. 4324101 for the
mark EXPLORE in standard characters. If we find no likelihood of confusion as to
the mark and goods in this registration, then it follows there would be no likelihood
of confusion with the mark in the other pleaded registration, which covers the same
goods and bears less similarity to the mark in the Application. See In re Max Capital
Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2008) (confining likelihood of confusion
analysis to one of multiple cited registrations deemed closest to the applied-for mark).
A. The Goods, Trade Channels, and Classes of Consumers
Our comparison of the goods must be based on the identifications in the
Application and Opposer’s registration. See Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys.,
Inc. v. Houston Computers Serv. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990). It suffices to find likelihood of confusion as to an entire class if likelihood of
confusion is found with respect to use of the mark on any item in the class. Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981).
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In its Answer, Applicant admitted that its goods and the goods in Opposer’s
pleaded registrations “are overlapping.”5 Opposer contends that certain of the goods
are legally identical, focusing in particular on its spotting scopes and rifle scopes,
which it claims are the same as Applicant’s sighting telescopes for firearms, and on
Opposer’s laser rangefinders, which it maintains are encompassed by the distance
measuring apparatus identified in the Application. In support thereof, Opposer points
to statements to this effect by Mr. Tabor.6
In addition to our consideration of Mr. Tabor’s declaration testimony, we take
judicial notice of the Merriam-Webster online dictionary entry7 for “scope” as, in
pertinent part:
“1: any of various instruments for viewing: such as
a: microscope
b: telescope
c: a telescope mounted on a firearm for use as a sight
…

The definition makes clear that “a telescope mounted on a firearm for use as a sight”
is a type of scope, such that Applicant’s telescopes for firearms encompass Opposer’s
rifle scopes; both are scopes for firearms. Because Applicant’s goods encompass
Opposer’s, they are legally identical. See, e.g., In re Thor Tech, Inc., 90 USPQ2d 1634
(TTAB 2009) (finding “recreational vehicles, namely, travel trailers and fifth wheel

5 4 TTABVUE 2, ¶ 6.
6 8 TTABVUE 7, ¶¶ 7-8 & 10.
7 Merriam-webster.com, accessed September 26, 2018. See Univ. of Notre Dame du Lac v. J.
C. Gourmet Food Imps. Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed Cir. 1983). The Board may take judicial notice of online dictionary definitions that
exist in print format. See In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
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trailers” to be encompassed by and legally identical to “trailers”); In re Linkvest S.A.,
24 USPQ2d 1716 (TTAB 1992) (finding “computer software for data integration and
transfer” to be encompassed by and legally identical to “computer programs recorded
on magnetic disks”).
Turning to the laser rangefinders, in addition to considering Mr. Tabor’s
testimony,8 we take judicial notice of the Merriam-Webster online dictionary entry9
for “range finder” as, in pertinent part:
1: an instrument used in gunnery to determine the distance of a target
2: a surveying instrument (such as a transit) for determining quickly the
distances, bearings, and elevations of distant objects

This definition indicates that Opposer’s laser rangefinders are a type of “distance
measuring apparatus,” as identified in the Application. Thus, Opposer’s rangefinders
are encompassed by Applicant’s identified goods, and therefore these goods also are
legally identical.
“The identity, at least in part, between [A]pplicant’s and [Opposer’s] goods is a
factor that weighs heavily against [A]pplicant in the likelihood of confusion analysis.”
In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008).
Turning to the trade channels and classes of consumers, given Opposer’s and
Applicant’s in-part legally identical and overlapping goods, we presume they travel
through the same channels of trade to the same class of purchasers, considerations
under the third du Pont factor. See Am. Lebanese Syrian Assoc. Charities Inc. v. Child

8 8 TTABVUE 7.
9 Merriam-webster.com, accessed September 26, 2018.
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Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011); see also In re Viterra,
671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to
rely on this legal presumption in determining likelihood of confusion). This factor also
weighs in favor of likely confusion.
B. Similarity of the Marks
We bear in mind that “[w]hen marks would appear on virtually identical goods or
services, the degree of similarity necessary to support a conclusion of likely confusion
declines.” Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23
USPQ2d 1698, 1701 (Fed. Cir. 1992). With respect to the marks, we must compare
them “in their entireties as to appearance, sound, connotation and commercial
impression.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177
USPQ at 567). The proper comparison inquires “not whether the marks can be
distinguished when subjected to a side-by-side comparison, but whether they are
sufficiently similar in their overall commercial impression,” that source confusion is
likely to result. Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685
F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012). In fact, “marks ‘must be
considered . . . in light of the fallibility of memory’ and ‘not on the basis of side-by-
side comparison.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed.
Cir. 2014) (citation omitted).
In the marks and EXPLORE, the shared wording EXPLORE creates
a significant visual resemblance between the two marks and renders them
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phonetically similar, an important consideration in the analysis, because consumers
would use this nearly identical word in “calling for” the goods. See Viterra 101
USPQ2d at 1911. As to the appearance, Opposer’s standard-character mark
EXPLORE could appear in the same font used for Applicant’s stylized wording in its
mark. See id. at 1909 (holding that the specific font style of a mark cannot serve as
the basis to distinguish it from a mark in standard character form). We find that
Applicant’s rectangular background serves as a mere carrier for the wording and does
not constitute a meaningful distinction between the marks. See In re Benetton Grp.
S.p.A., 48 USPQ2d 1214, 1215-16 (TTAB 1998) (“In particular, common geometric
shapes such as circles, squares, rectangles, triangles and ovals, when used as
backgrounds for the display of word marks, are not regarded as trademarks for the
goods to which they are applied absent evidence of distinctiveness of the background
design alone.”); Guess? Inc. v. Nationwide Time Inc., 16 USPQ2d 1804, 1805 (TTAB
1990) (a common geometric shape, particularly one serving as a carrier or background
design element, is not usually considered distinctive). While the additional word
LASER in the Applicant’s mark creates some difference, LASER is descriptive of at
least some of Applicant’s goods, including the “distance measuring apparatus”
discussed above that encompasses laser rangefinders.10 This diminishes the
significance of the LASER portion of Applicant’s mark in the comparison of marks
because consumers would be unlikely to focus on it to distinguish source. See In re
Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In

10 Applicant’s identified goods also include “laser speed detectors.”
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re Nat’l Data Corp., 753 F.2d 1056, 1060, 224 USPQ 749, 752 (Fed. Cir. 1985). Overall,
these marks look and sound very similar, and consumers familiar with Opposer’s
marks could perceive Applicant’s mark as a modification or extension of Opposer’s.
We further find the connotation and commercial impression of both marks to be
close. In the context of use on overlapping goods, we find that EXPLORE would
convey the same connotation and commercial impression in Applicant’s and
Registrant’s marks, and the addition of the descriptive term LASER in Applicant’s
mark does not change the meaning or impression of EXPLORE. As noted above,
because LASER refers to a feature of at least certain goods, its contribution to the
commercial impression of the mark is less significant. Overall, the two marks convey
a similar meaning and impression.
We deem Applicant’s mark similar in appearance, sound, connotation and
commercial impression to Opposer’s EXPLORE mark.
IV. Conclusion
We conclude that the similarity of Applicant’s mark to Opposer’s mark in
Registration No. 4324101 and the in-part legally identical goods that travel in the
same trade channels to the same classes of consumers result in a likelihood of
confusion. As the newcomer, Applicant “has the duty of avoiding confusion, and is
charged with the obligation of doing so.” In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1691 (Fed. Cir. 1993).
Decision: The opposition is sustained.