AllPredatorCalls.com, Inc

Trademark Trial and Appeal Board

Sep 30, 2013

No. 85596596 (T.T.A.B. Sep. 30, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: September 30, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re AllPredatorCalls.com, Inc.
_____

Serial Nos. 85596596 and 85648155
_____

Robert A. Gurr, Gurr Law, PLLC for AllPredatorCalls.com, Inc.

Kim L. Parks, Trademark Examining Attorney, Law Office 112 (Angela Wilson,
Managing Attorney).
_____

Before Cataldo, Bergsman and Kuczma, Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
AllPredatorCalls.com, Inc. (“applicant”) appeals from the final refusals to
register the following two marks in standard character format:
WICKED LIGHTS1
for (as amended):
Lighting kits for use in hunting, consisting of flashlights,
tactical flashlights, and hand-held spotlights in Class 11;
and,

1 Application Serial No. 85596596 was filed on April 12, 2012, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a); “LIGHTS” is disclaimed.
Serial Nos. 85596596 and 85648155

2

WICKED HUNTING LIGHTS2
for (as amended):
Lights for use in hunting, namely, flashlights, tactical
flashlights, hand-held spotlights, LED lights in the nature
of rifle and shotgun-mounted lighting fixtures featuring
LED bulbs, weapon-mounted lights in the nature of
flashlights specially adapted for mounting to rifles and
shotguns, vehicle-mounted spotlights and driving lights in
the nature of lighting apparatus for vehicles for use in
hunting, illumination devices in the nature of flashlights,
fixed position spotlights, and directable beam spotlights
for use in hunting in Class 11.
The examining attorney issued final refusals to register the marks pursuant
to § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), citing the following previously-
registered stylized marks as a bar to registration:
Registration No. 28138453
Mark:

For: Telescopic sights for firearms, namely, rifle, handgun and
spotting scopes in Class 9;
Owner: Hunter Company, Inc.
and,
Registration No. 28633384

2 Application Serial No. 85648155 was filed on June 11, 2012, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1(a); “HUNTING LIGHTS” is disclaimed.
3 Registration No. 2813845 issued February 10, 2004; Section 8 Declaration accepted;
“OPTICS” is disclaimed.
4 Registration No. 2863338 issued July 13, 2004; Section 8 Declaration accepted; “OPTICS”
is disclaimed.
Serial Nos. 85596596 and 85648155

3

Mark:

For: Telescopic sights for firearms, namely, rifle, handgun and
spotting scopes in Class 9;
Owner: Hunter Company, Inc.
After the examining attorney made the refusals final, applicant filed requests
for reconsideration which were denied and subsequently filed Notices of Appeal.
Applicant and the examining attorney have filed briefs. For the reasons set forth
below, the refusals to register are affirmed.
Consolidation of Appeals
We have considered the arguments and evidence filed in both cases. The
refusals to register, as well as the records and the briefs, contain overlapping
arguments and evidence. Therefore, the appeals involve common factual and legal
issues which are addressed in this consolidated opinion.
Likelihood of Confusion
Applicant contends that in view of the differences between the marks, the
goods covered in its applications versus the cited registrations, and the
sophistication of purchasers, there is no likelihood of confusion between its marks
and the marks in the cited registrations.
Our determination under § 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of 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 Co., Inc., 315 F.3d 1311, 65 USPQ2d
Serial Nos. 85596596 and 85648155

4

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. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976). We carefully considered all of the evidence of record as
it pertains to the relevant du Pont factors, as well as applicant’s arguments
(including any evidence and arguments not specifically discussed in this opinion).
To the extent that any other du Pont factors for which no evidence or argument
were presented may nonetheless be applicable, we treat them as neutral.
A. Similarity of the Goods
We first consider the second du Pont factor, namely, the similarity of the
goods. It is well-settled that the issue of likelihood of confusion between applied-for
and registered marks must be determined on the basis of the goods as they are
identified in the involved application and registration. Paula Payne Products Co. v.
Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
The goods of the parties need not be identical or competitive, or even offered
through the same channels of trade, to support a holding of likelihood of confusion.
It is sufficient that the respective goods of the parties are related in some manner,
and/or that the conditions and activities surrounding the marketing of the goods are
such that they would or could be encountered by the same persons under
circumstances that could, because of the similarity of the marks, give rise to the
mistaken belief that they originate from the same source. See On-Line Careline Inc.
v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); In re
Accelerate s.a.l., 101 USPQ2d 2047, 2050 (TTAB 2012).
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Serial Nos. 85596596 and 85648155

7

types of breakfast foods and that consumers are regularly exposed to yogurt and
cereal combined as a food product).
Here, the evidence shows that applicant’s goods and the cited goods are sold
together under the same brands, and are intended to be used together. Accordingly,
we find that applicant’s light devices and registrant’s scopes are complementary
and closely related goods and that this du Pont factor regarding the similarity of the
goods weighs in favor of a finding of likelihood of confusion.
B. Similarity of Trade Channels and Buyers to Whom Sales Are Made
Because there are no limitations as to channels of trade or classes of
purchasers in the description of goods in the cited registration and application, it is
presumed that registrant’s goods and applicant’s goods move in all channels of trade
normal for those goods, and that they are available to all classes of purchasers for
those goods. See Paula Payne Products, 177 USPQ at 77-78 (CCPA 1973); In re
Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
The third-party website evidence submitted by the examining attorney
confirms that such goods are in fact sold through the same channels of trade to the
same purchasers. Specifically, hunters may purchase both applicant’s hunting
lights and registrant’s scopes from the same online retailer and mount them
together on a hunting firearm. Thus, purchasers encountering applicant’s goods
and the cited registrant’s goods sold under similar marks are likely to believe the
goods emanate from the same source. See Octocom Systems Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1788 (Fed. Cir. 1990)
Serial Nos. 85596596 and 85648155

8

(purchasers would likely be confused when goods as closely related as modems and
computer programs are sold under the virtually identical marks).
Despite the foregoing, applicant argues, without any corroborating evidence,
that the purchasers of firearm scopes and night hunting lights are not general
consumers, but are sophisticated purchasers who take great care in purchasing
such items and will therefore not be confused by the marks at issue.10 Again, it is
not necessary for purchasers or potential purchasers, including hunters who may be
expected to readily distinguish applicant’s goods from those of registrant, to confuse
the goods themselves. Rather, it is only necessary that such purchasers may
experience confusion as to the source of those goods which, as discussed above, may
be purchased and used together. Even assuming purchasers of registrant’s products
are careful and sophisticated in their purchasing decisions regarding such goods,
this does not necessarily mean that they are immune to source confusion. Here, the
evidence of record shows the respective goods are complementary and sufficiently
related such that even sophisticated purchasers could be led to the mistaken belief
that the goods originate from the same source. It is well-settled that even careful
purchasers who are knowledgeable as to the goods are not necessarily
knowledgeable in the field of trademarks or immune to source confusion arising
from the use of confusingly similar marks on or in connection with the goods. See In
re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993); In re
Cynosure Inc., 90 USPQ2d 1644, 1647 (TTAB 2009), citing Wm. K. Stamets Co. v.

10 Applicant’s Reply Briefs p. 5.
Serial Nos. 85596596 and 85648155

9

The Metal Products Co., 176 USPQ 92, 93 (TTAB 1972) (even technically trained
purchasers who are extremely familiar with expensive machinery may be confused
when similar marks are used with respect to the same goods); In re Davey Products
Pty Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009).
In view of the foregoing, applicant’s goods and the goods in the cited
registrations are related and move in the same channels of trade, and are sold to
the same classes of purchasers, supporting a likelihood of confusion under the third
and fourth du Pont factors.
C. Number and Nature of Similar Marks in Use on Similar Goods
Relying on numerous third-party registrations for marks beginning with the
word “wicked” for various goods, none of which are in the same Classes as
applicant’s marks or the cited marks, applicant argues that the term “wicked” is
used across many industries such that consumers are unlikely to give that word
alone significant weight.11 Applicant essentially contends the existence of the
“active” third-party registrations demonstrates that the marks in the cited
registrations are weak and only entitled to a narrow scope of protection that does
not preclude the registration of its marks.12 The weakness or dilution of a
particular mark is generally determined in the context of the number and nature of
similar marks in use in the marketplace in connection with similar goods and/or

11 Applicant’s Appeal Briefs pp. 6-8.
12 We note that two of the 44 third-party registrations submitted by applicant are now
cancelled.
Serial Nos. 85596596 and 85648155

10

services. See National Cable Television Ass’n Inc. v. American Cinema Editors, Inc.,
937 F.2d 1572, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); du Pont, 177 USPQ at 567.
Evidence of weakness or dilution consisting solely of third-party
registrations, such as those submitted by applicant in this case, is generally entitled
to little weight in determining the strength of a mark, because such registrations do
not establish that the registered marks identified therein are in actual use in the
marketplace or that consumers are accustomed to seeing them. See Olde Tyme
Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992); Davey
Prods., 92 USPQ2d at 1204; In re Thor Tech Inc., 90 USPQ2d 1634, 1639 (TTAB
2009). Furthermore, the clothing, personal care, and household odor-control
products, and the restaurant services and food products, listed in the third-party
registrations submitted by applicant are different from the hunting lights and
firearm sights at issue and thus do not show that the word “wicked” is commonly
used in connection with such goods.
Therefore, the third-party registrations cited by applicant do not impact the
meaning of applicant’s marks or the cited marks, nor do they support a finding that
the cited marks are weak or otherwise entitled to a narrow scope of protection.
D. Similarity of the Marks
We next consider the du Pont factor focusing on ‘‘the similarity or
dissimilarity of the marks in their entireties as to appearance, sound, connotation,
and commercial impression.” Palm Bay Imports 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). In comparing the marks, we are mindful that
Serial Nos. 85596596 and 85648155

11

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 Elec. 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, No. 92-1086 (Fed. Cir. June 5, 1992).
Applicant’s marks and the cited marks are alike in appearance, sound,
meaning and commercial impression. To the extent that applicant’s marks and the
cited marks each begin with the word WICKED, they are similar in appearance and
sound. Given the complementary nature of applicant’s and registrant’s goods, the
word WICKED as used in each mark has a similar meaning.13 Likewise, due to the
relatedness of the goods, the commercial impressions of the marks are necessarily
similar. This is particularly so where the stylized elements of the cited marks, i.e.,
the pitchfork-shaped “W” in WICKED and the devil character, are consistent with
several meanings of the term “wicked.”14

13 The argument in Applicant’s Reply Briefs that the word WICKED in the context of
registrant’s marks connotes the devil because the “W” in “wicked” is fashioned like a
pitchfork and the mark in Registration No. 2813845 contains a devil design, does not alter
this determination. Applicant’s marks are presented in standard character format and do
not contain anything inconsistent with the impression rendered by the cited marks.
14 We take judicial notice of these definitions for the word “wicked” set forth in applicant’s
Reply Briefs, i.e., “evil,” “vicious,” “disgustingly unpleasant.” While we note that according
to the definitions submitted by applicant, “wicked” may also mean “going beyond
reasonable or predictable limits: of exceptional quality or degree” and “wonderful; great;
masterful; deeply satisfying,” there is nothing in the record to show consumers would
perceive these meanings to the exclusion of “evil,” “vicious” or “disgustingly unpleasant” or
Serial Nos. 85596596 and 85648155

12

The fact that applicant’s marks are presented in standard character form
does not avoid likelihood of confusion with the cited word and design marks because
applicant’s marks could be presented in the same manner of display as the wording
in registrant’s marks. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257,
1260 (Fed. Cir. 2010); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939
(Fed. Cir. 1983) (the argument concerning a difference in type style is not viable
where one party asserts rights in no particular display).
While the cited marks feature stylized lettering and the mark in Registration
No. 2813845 also contains a character design, the word portion of the marks may be
more likely to be impressed upon a purchaser’s memory and to be used when
requesting the goods and/or services. In re Dakin’s Miniatures, Inc., 59 USPQ2d
1593, 1596 (TTAB 1999); see In re Viterra Inc., 101 USPQ2d 1905, 1908, 1911 (Fed.
Cir. 2012) (citing CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200
(Fed. Cir 1983)); In re Max Capital Group Ltd., 93 USPQ2d 1243, 1247 (TTAB
2010). Thus, although the marks must be compared in their entireties, the word
portion is often considered the dominant feature and is accorded greater weight in
determining whether marks are confusingly similar. Viterra, 101 USPQ2d at 1911
(citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218
USPQ2d 390, 395 (Fed. Cir. 1983)); Dakin’s Miniatures, 59 USPQ2d at 1596.
Accordingly, the word portion of the cited marks, i.e., WICKED OPTICS, is more
significant than the stylized lettering or character design.

that consumers would attribute different meanings to applicant’s marks than those of
registrant.
Serial Nos. 85596596 and 85648155

13

In addition to it being appropriate to give more weight to a dominant feature,
we also acknowledge that disclaimed, descriptive or generic matter is typically less
significant or less dominant in relation to other wording in a mark and accordingly
consider the other wording contained in the marks. See In re Chatam Int’l Inc., 380
F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004); In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985); Binion, 93 USPQ2d at 1534. The
definitions of “light” and “optics” submitted by the examining attorney15 show that
the wording LIGHTS and HUNTING LIGHTS in applicant’s WICKED LIGHTS and
WICKED HUNTING LIGHTS marks, and the word OPTICS in the cited WICKED
OPTICS and Design marks, are descriptive of the respective goods in applicant’s
applications and the cited registrations. The descriptiveness of these terms is
confirmed by the fact that each of them has been disclaimed. Therefore, they are
less significant in affecting the overall commercial impressions of the marks and
result in the word WICKED being the common dominant portion of applicant’s and
registrant’s marks.
Additionally, consumers are generally more inclined to focus on the first
word, prefix or syllable in any trademark or service mark. See Palm Bay, 73
USPQ2d at 1692; see also L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB
2012) citing Presto Products, Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897

15 Definitions: “optics”: of or relating to the eye or vision, from
http://www.collinsdictionary.com/dictionary/ English/optics; “light”: A source of light,
especially a lamp, a lantern, or an electric lighting fixture, from
http://education.yahoo.com/reference/dictionary/entry/light. See attachments to January
4, 2013 Final Office Actions.
Serial Nos. 85596596 and 85648155

14

(TTAB 1988) (“it is often the first part of a mark which is most likely to be
impressed upon the mind of a purchaser and remembered” when making
purchasing decisions). Here, the first word in applicant’s marks and the cited
marks is the distinctive term WICKED, which is the word most likely to be
impressed upon the minds of consumers.
Based on the overall similarity of applicant’s WICKED LIGHTS and
WICKED HUNTING LIGHTS to the WICKED OPTICS and Design marks in
appearance, sound, meaning and commercial impression, it is likely that the
average purchaser would retain the same recollection for each mark.
E. Conclusion
Because the goods are complementary and closely related, the channels of
trade and classes of purchasers are the same. There is a strong similarity of the
marks in sound, sight, meaning and commercial impression. Therefore, considering
the relevant du Pont factors, we find that the Office has met its burden in showing a
likelihood of confusion between applicant’s marks and the marks in the cited
Registrations for the identified goods.
Decision: The refusals to register the marks in application Serial Nos.
85596596 and 85648155 under Section 2(d) of the Trademark Act are affirmed.