Advantage Supplies, Inc.

Trademark Trial and Appeal Board

Apr 8, 2009

No. 78917956 (T.T.A.B. Apr. 8, 2009)

Mailed:
April 8, 2009
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Advantage Supplies, Inc.
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Serial No. 78917956
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Advantage Supplies, Inc., pro se.

Sophia S. Kim, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
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Before Bucher, Bergsman and Wellington, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Advantage Supplies, Inc. seeks registration on the
Principal Register of the following mark:

for goods identified in the application, as amended, as
follows:
“military and law enforcement equipment and
accessories, namely, firearm accessories,
namely, holsters, pistol holsters, bags,
pouches, belts for cartridges, guns, shells
and shots, duty belts for military or law
enforcement equipment, belts for military or
law enforcement equipment, shoulder harnesses
for carrying pouches, tactical vests
specially designed to hold firearm, leg-
mounted harnesses for carrying pouches, leg-
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78917956
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mounted holsters, slings for firearms, straps
for firearms, covers for firearms, cases for
firearms, cartridge pouches, cases for large
size ammunition, gloves specially designed
for firearm shooting, waist packs specially
designed to hold firearm, butt packs
specially designed to hold firearm, rucksacks
specially designed to hold firearm, carriers
specially designed to hold ammo magazines,
ammunition magazine pouches, cases for
weapons guns and rifles, ammunition bags,
bandoliers for holding cartridges or
ammunition cases, backpacks specially
designed to secure military equipment to the
user” in International Class 13.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation based upon Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d). The Trademark Examining
Attorney has found that applicant’s mark, when used in
connection with the identified goods, so resembles the mark
ADVANTAGE TACTICAL SIGHT (in standard character format) for
“projectile weapons and parts thereof namely sights”2 also
in International Class 13, as to be likely to cause
confusion, to cause mistake or to deceive.

1 Application Serial No. 78917956 was filed on June 27, 2006
based upon applicant’s claims of first use anywhere and first use
in commerce at least as early as March 15, 2002. No claim is
made to the term “Wear & Gear” apart from the mark as shown.

2 Registration No. 3096669 issued on May 23, 2006. No claim
is made to the words “Tactical Sight” apart from the mark as
shown.

Serial No. 78917956
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The Trademark Examining Attorney and applicant have
filed briefs in the case.
We affirm the refusal to register.
The Trademark Examining Attorney contends that there is
a likelihood of confusion under Section 2(d) of the
Trademark Act given the close relationship of applicant’s
and registrant’s goods, the presumed overlap of the
marketing channels, and the similarity in the connotation
and commercial impression of the applicant’s mark when
compared with registrant’s cited mark.
By contrast, in arguing for registrability, applicant
argues that there is no likelihood of confusion with the
cited mark because its goods are different from the
registrant’s goods, applicant has limitations on its
channels of trade, there have been no instances of actual
confusion, and the word “Advantage” is so commonplace that
these two marks should be permitted to coexist.
Likelihood of Confusion
We turn then to a consideration of the issue of
likelihood of confusion. Our determination of likelihood of
confusion is based upon our analysis of all of the probative
facts in evidence that are relevant to the factors bearing
on this issue. See In re E. I. du Pont de Nemours & Co.,
Serial No. 78917956
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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); and In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In any likelihood of
confusion analysis, however, two key, although not
exclusive, considerations are the similarities between the
marks and the relationship between the goods. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24 (CCPA 1976).
Relationship of the goods

We turn first to the du Pont factor focusing on the
relationship of the goods herein. Applicant and the
Trademark Examining Attorney disagree about how closely
related are applicant’s and registrant’s goods. Applicant
bases its arguments on the fact that the respective goods,
as identified, are different. Applicant sells soft goods,
of which many are made of nylon materials. Registrant sells
hard goods. While this may be true, applicant’s goods need
not be identical to, or directly competitive with,
registrant’s goods in order to find a likelihood of
confusion. See Safety-Kleen Corp. v. Dresser Indus., Inc.,
518 F.2d 1399, 1404, 186 USPQ 476, 480 (CCPA 1975). The
goods need only be related in some manner, or the conditions
Serial No. 78917956
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surrounding their marketing are such that they would be
encountered by the same purchasers under circumstances that
would give rise to the mistaken belief that the goods come
from a common source. See On-line Careline Inc. v. Am.
Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76
(Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir.
1984); and In re Total Quality Group, Inc., 51 USPQ2d 1474,
1476 (TTAB 1999). Accordingly, we agree with the
contentions of the Trademark Examining Attorney:
In this case, even though the goods of the
parties are not identical or directly
competitive, there is a closely relationship
between the applicant’s and registrant’s
goods that would cause likelihood of
confusion because the registrant sells
projectile weapons and the applicant sells
accessories for projectile weapons.
Registrant uses the word “Advantage” on
projectile weapons and sights, while the
applicant uses the word “Advantage” on
bags, holders or carriers for projectile
weapons or firearms, which includes pistols,
guns and rifles. The relationship between
[these] goods … exists because a firearm
user, while purchasing a firearm, would
consider purchasing firearm attachment
accessories, such as a firearm sights, as
well as bags, holders or carriers for the
firearms and firearm sights. Therefore,
there is likelihood of confusion if the
firearm purchaser encounters the word
“Advantage” on firearms, sights for
firearms, and bags, holders or carriers for
firearms.

Trademark Examining Attorney’s brief at unnumbered 5
– 6.
Serial No. 78917956
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Moreover, the Trademark Examining Attorney has made of
record third-party registrations demonstrating that goods as
identified in applicant’s application and registrant’s
registration come from the same source. These
registrations, summarized below, have probative value to the
extent that they serve to suggest that the goods listed
therein are of a kind that may emanate from a single source
and be sold under the same mark. In re Infinity Broad.
Corp., 60 USPQ2d 1214, 1217-1218 (TTAB 2001); In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and
In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at
n.6 (TTAB 1988).
FAMOUS MAKER for “telescopic gun sights, optical
lens sights and telescopic bow
sights” in international class 9;
“firearms and accessories, namely,
air pistols, air rifles, pellets for
air pistols and air rifles, gun
cleaning kits comprised of ramrods,
cleaning solvent, lubricating oils,
cleaning patches, and polishing
cloths; gun cases, grips for small
arms, gun locks, gun mounts, gun
parts, recoil pads, and rifle
slings” in International Class 13;3
TACTICAL TAILOR for “military equipment and
accessories, namely, belts specially
designed to secure military
equipment to the user, covers and
cases for firearms, sight protectors
for firearms, holsters, backpacks
specially designed to carry and
store military equipment, vests
specially designed to carry firearms

3 Registration No. 2902224 issued on November 9, 2004.
Serial No. 78917956
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and ammunition, sling straps for
firearms, fastening clips for
securing military accessories and
ammunition pouches, magazine
pouches, shooter mats, leg rigs to
hold and carry magazines and
military smoke grenades, and gloves
specially designed for firearm
shooting” in International Class
13;4
LUSA for “firearms; firearm parts and
accessories for firearms, namely,
receivers, trigger groups, barrels,
actions, magazines, stocks, grips,
sights, flash hiders, barrel
extensions, and buffers” in
International Class 13;5
UNDER THE GUN for “telescopic bow sights, telescopic
rifle sights, and mounts and
rings therefor; protective clothing;
bullet proof vests” in international
class 9;
“target gun, ammunition and firearm
cases; rifles, pistols, shotguns,
weapons, namely, air rifles, and
parts and accessories therefor;
ammunition; bags, pouches, packs,
belts and holsters for firearms;
firearm sights; cleaning implements
for firearms, namely, brushes, rods,
pull-throughs, closer cups, shell
extractors, and decappers” in
International Class 13;6
ESCORT for “target guns, ammunition and
firearm cases; rifles, side arms,
namely, pistols, shot guns, air
rifles, hunting firearms and parts
and accessories therefor;
ammunition; bags, pouches, packs,
belts and holsters for firearms;
firearm sights; cleaning implements
for firearms, namely, brushes, rods,

4 Registration No. 2994667 issued on September 13, 2005.

5 Registration No. 3036650 issued on December 27, 2005.

6 Registration No. 3091026 issued on May 9, 2006.

Serial No. 78917956
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pullthroughs, closer cups, shell
extractors, and decappers” in
International Class 13;7

for “semi and automatic firearms
and weapons, namely, assault and
sniper rifles, carbines, shotguns,
machine guns, and handguns;
accessories for semi and automatic
firearms, namely, grips, rails, butt
stock, magazines, tactile sights,
reflex sights, flashlights
specifically adapted to mounting on
firearms, and mounts for firearms
accessories, sound suppressors,
flash and blast suppressors, grenade
launchers, mounts for the
aforementioned accessories, bipod
and tripod stands, and slings;
cleaning and maintenance field
accessories and kits comprising bore
and chamber rods, bore and chamber
brushes, allen and specialty scope
ring wrenches, pipe cleaners and
cotton swabs; transport and
protection accessories, namely,
weapon carrying cases, carrying
bags, scope covers, weapons slings,
cleaning and maintenance accessory
kit cases” in International Class
13.8
Moreover, in making determinations of likelihood of
confusion, it is well-established that we must look to the
goods as identified in the registration and application. In
re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1595 (TTAB
1999). Applicant points to registrant’s website at
www.advantagetactical.com as evidence that registrant’s
firearms-related sight system is nothing more than “small

7 Registration No. 3116492 issued on July 18, 2006.

8 Registration No. 3167743 issued on November 7, 2006.
Serial No. 78917956
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plastic or metal pieces that go onto handguns to improve
shooting accuracy.” Applicant’s brief at 1. However, even
if copies of screen-prints of the relevant web pages had
properly been made of record, we cannot resort to such
extrinsic evidence in order to restrict registrant’s goods.
See, e.g., In re Bercut-Vandervoort & Co., 229 USPQ 763, 764
(TTAB 1986) [evidence that relevant goods are expensive
wines sold to discriminating purchasers must be disregarded
given the absence of any such restrictions in the
application or registration]. As noted by the Trademark
Examining Attorney in this context, registrant’s goods are
identified in its registration much more broadly as
“projectile weapons and parts thereof namely sights.”
Therefore, this critical du Pont factor favors a
finding of likelihood of confusion.
Channels of Trade

In a related du Pont factor that focuses on the
similarity or dissimilarity of established, likely-to-
continue trade channels, applicant argues that there is
no overlap because its identification of goods are
limited to military and law enforcement, while pointing
out that registrant appears to be selling its products
to retail gun shops.
Serial No. 78917956
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On the other hand, as noted above, registrant’s goods
are identified broadly and not limited or restricted to any
particular marketing channel. Rather, we must presume that
registrant’s weapons and/or sights will be available to all
potential customers, including to laws enforcement
officials and at retail venues situated on and around
military bases. In re Elbaum, 211 USPQ 639, 640 (TTAB
1981); and In re Optica Int’l, 196 USPQ 775, 778 (TTAB
1977). This factor too favors a finding of likelihood of
confusion.
Period of contemporaneous use without actual confusion
We turn next to the du Pont factor dealing with the
length of time during and conditions under which there has
been contemporaneous use without evidence of actual
confusion. Applicant argues that coexistence over a period
of several years provides strong evidence that confusion is
not likely to occur in the future. As to whether there has
been sufficient opportunity for confusion to occur, the
record contains no indication of the level of sales or
advertising by applicant. The absence of any instances of
actual confusion is a meaningful factor only where the
record indicates that, for a significant period of time, an
applicant’s sales and advertising activities have been so
Serial No. 78917956
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appreciable and continuous that, if confusion were likely to
happen, any actual incidents thereof would be expected to
have occurred and would have come to the attention of one or
both of these trademark owners. In this ex parte context,
we also have had no opportunity to hear from registrant
about its levels of sales and promotion, or of any incidents
of actual confusion brought to registrant’s attention.
Presumably limited sales by one or both of these trademark
owners over a relatively short period of contemporaneous
usage may well explain the lack of evidence of actual
confusion. All of these enumerated factors materially
reduce the probative value of applicant’s argument regarding
asserted lack of actual confusion. Therefore, applicant’s
claim that no instances of actual confusion have been
brought to applicant’s attention is not indicative of an
absence of a likelihood of confusion. See Gillette Canada
Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992).
In any event, we are mindful of the fact that the test
under Section 2(d) of the Act is likelihood of confusion,
not actual confusion.
The marks

Applicant argues that the word “Advantage” is a very
common word that is used by many others in a variety of
Serial No. 78917956
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businesses. However, there is no evidence in the record
that the word “Advantage” is weak or diluted in the field of
weapons and firearm accessories. To the contrary, on this
record, we must presume that the word “Advantage” is a
strong and distinctive source-indicator in this field.
In addition to arguing that the “Advantage” portion of
the cited mark is weak, applicant points out that its mark
has the distinguishing term “Wear & Gear” while registrant’s
mark has the distinguishing wording “Tactical Sights.” It
is true that when one compares these two marks in their
entireties – at least after one enunciates the first three
syllables in precisely the same manner – the final three
or four syllables are pronounced quite differently.
However, in both cases, the terms “Wear & Gear” and
“Tactical Sights” are highly descriptive of the respective
goods, and are correctly disclaimed. Disclaimed matter is
typically less significant or less dominant when comparing
marks. See In re Dixie Rests. Inc., 105 F.3d 1405, 1407,
41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data
Corp., 753 F.2d 1056, 1060, 224 USPQ 749, 752 (Fed. Cir.
1985). Hence, it is most appropriate that we should give
greater weight to the leading, dominant word, “Advantage”
in determining whether there is a likelihood of confusion
herein. Tektronix, Inc. v. Daktronics, Inc., 534 F.2d
Serial No. 78917956
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915, 189 USPQ 693 (CCPA 1976); and In re J.M. Originals
Inc., 6 USPQ2d 1393 (TTAB 1987). As applied to these
respective goods, the suggestive connotation of “favorable”
or “superior” will attach to both of these composite marks.
Hence, we find that when these marks are applied to the
goods, they create very similar commercial impressions.
On this critical du Pont factor, we find support for
the position of the Trademark Examining Attorney.
Conclusion: Likelihood of Confusion
In conclusion, the du Pont factors favoring a finding
of likelihood of confusion include the fact that the goods
are closely related; we must presume that the respective
goods will move through some of the same channels of trade;
and we find that the marks are quite similar due to the fact
that the dominant portion of applicant’s mark is identical
to the dominant portion of registrant’s mark, creating marks
having the same connotations and commercial impressions when
compared in their entireties.
Decision: The refusal to register this mark based upon
Section 2(d) of the Lanham Act is hereby affirmed.