Axon Enterprise, Inc.v.Defender Supply, LLC

Trademark Trial and Appeal Board

Aug 22, 2019

91227143 (T.T.A.B. Aug. 22, 2019)

Mailed: August 22, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Axon Enterprise, Inc.
v.
Defender Supply, LLC
_____

Opposition No. 91227143
_____

Justin M. Clark of J. Clark Law Firm PLLC
for Axon Enterprise, Inc. (“Plaintiff”)

Scott L. Harper and Laura A. Brock of Harper Bates & Champion LLP
for Defender Supply, LLC (“Defendant”)
_____

Before Thurmon, Deputy Chief Administrative Trademark Judge, Kuczma and
English, Administrative Trademark Judges.

Opinion by Thurmon, Deputy Chief Administrative Trademark Judge:

Defendant, Defender Supply, LLC, seeks registration of the following design mark
for retail and installation services relating to certain products for law
enforcement vehicles.1 Plaintiff, Axon Enterprise, Inc., opposes registration based on

1 Application Serial Number 86696735 was filed on July 17, 2015, based on Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
This Opinion Is Not a
Precedent of the TTAB
Opposition No. 91227143

- 2 -

13 registrations for the following design mark: . This mark is registered for
various goods and services that will be discussed below. Opposer alleges priority and
a likelihood of confusion under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).2
Defendant denied the salient allegations.3 The case has been fully briefed. We find
the evidence of record insufficient to establish a likelihood of confusion and, therefore,
dismiss the opposition.
I. Defendant’s Motion to Strike and the Record
Plaintiff did not submit any testimony or other evidence during its trial period.
Defendant subsequently moved to dismiss for that reason.4 The motion was denied
because Plaintiff had properly submitted 13 trademark registrations into the record
with the Notice of Opposition and we found those registrations could be sufficient to
sustain the opposition.5 In that ruling, we reset the deadlines for the remainder of
the proceeding, but did not reopen Plaintiff’s trial period. Defendant submitted
evidence during its trial period and Plaintiff submitted evidence during its rebuttal
period. Defendant then moved to strike all the evidence Plaintiff submitted on

Page references to the application record are to the downloadable .pdf version of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs, motions
and orders on appeal are to the Board’s TTABVUE docket system.
2 1 TTABVUE.
3 4 TTABVUE.
4 7 TTABVUE.
5 11 TTABVUE.
Opposition No. 91227143

- 3 -

procedural and substantive grounds.6 The Board denied the motion as to the
procedural grounds, but deferred ruling on the substantive grounds until trial.7
The evidence Plaintiff submitted was not proper rebuttal evidence and for that
reason, we strike all evidence submitted by Plaintiff. We do so, however, not as a
blanket ruling, but based on the specific evidence submitted both by Defendant
during its trial period and Plaintiff during its rebuttal period. As the following
analysis shows, none of the evidence Plaintiff submitted can be characterized as
rebuttal evidence.
Defendant submitted a number of webpages from its own Internet site8 and
testimonial declarations by Bryan Brooks,9 its President, and Eric Hove,10 an owner
of Defendant. The webpages show the types of services provided by Defendant and
are consistent with the services identified in the application.11 This documentary
evidence did not introduce new issues into the case, but corroborated and helped
explain what the application discloses.
The Brooks and Hove declarations indicate that Defendant adopted its mark in
2012 and has used and promoted the mark since that time.12 The Hove declaration
explains that Defendant’s customers include police and fire departments, cities,

6 25 TTABVUE.
7 29 TTABVUE.
8 17 TTABVUE.
9 18 TTABVUE.
10 19 TTABVUE.
11 17 TTABVUE 6-26.
12 18 TTABVUE 4-5; 19 TTABVUE 5-6.
Opposition No. 91227143

- 4 -

counties, hospitals, school districts and universities, and other institutional
organizations.13 Finally, both declarations recite a lack of awareness of any confusion
between the parties’ marks.14
This evidence is relevant to some of the likelihood of confusion factors, as we
explain below. But the burden of proving a likelihood of confusion falls on Plaintiff,
and the Defendant’s submission of evidence relevant to this issue does not constitute
submission of a new issue into the case. See, e.g., Automedx, Inc. v. Artivent Corp., 95
USPQ2d 1976, 1977 (TTAB 2010) (“Evidence which should constitute part of an
opposer’s case in chief, but which is made of record during the rebuttal period, is not
considered when the applicant objects.”).
The testimony by Brooks and Hove concerning the absence of any actual confusion
was new evidence, but Plaintiff did not submit any testimony or evidence to rebut
this evidence. Nor did Plaintiff cross-examine these witnesses. We find all other
evidence submitted by Defendant merely corroborates or explains what already was
in the record (i.e., the services as identified in Defendant’s application).
In rebuttal, Plaintiff submitted a variety of documentary evidence through a
Notice of Reliance and testimonial declarations by two of its employees: Glenn
Hickman and Robert Driscoll. We consider first the documentary evidence. Plaintiff
submitted five groups of Internet webpages relating to video cameras used in police

13 19 TTABVUE 5.
14 18 TTABVUE 5; 19 TTABVUE 6.
Opposition No. 91227143

- 5 -

cars.15 None of this documentary evidence is proper as rebuttal, because Defendant’s
application is for services and the identification of services makes no mention of video
cameras. Nor does the evidence Defendant submitted raise an issue about video
cameras.
Plaintiff also submitted Internet webpages purporting to show that an affiliate of
Defendant sells one of Plaintiff’s products.16 Defendant made no mention of any
affiliates in its evidence and the application was filed by Defendant, not by some other
entity that may be legally affiliated with Defendant. Plaintiff’s evidence on this point
does not rebut anything in the record. Indeed, none of the documentary evidence
Plaintiff submitted with its Rebuttal Notice of Reliance rebuts anything submitted
by Defendant.
One of Plaintiff’s witnesses did rebut certain evidence submitted by Defendant,
but all of the evidence on this issue is irrelevant. One of the Internet webpages
submitted by Defendant and one statement in the testimony of Mr. Hove refer to
Simunition® products Defendant offers.17 Mr. Hickman, one of Plaintiff’s rebuttal
witnesses, testified that Plaintiff offers simulated ammunition services that are
similar to the Simunition® products mentioned in Defendant’s evidence.18 There is,
however, no mention of such goods or services in Defendant’s application or in any of

15 22 TTABVUE at Exh. AX1-6.
16 Id. at Exh. AX7.
17 17 TTABVUE 13; 19 TTABVUE 5.
18 23 TTABVUE 4-5.
Opposition No. 91227143

- 6 -

the registrations introduced by Plaintiff. All of the evidence on this point is irrelevant
and is therefore not considered.
Mr. Driscoll testified about the nature of Plaintiff’s business.19 He also testified
about Plaintiff’s customers and to alleged similarities between the parties’ customers
and trade channels.20 Though Mr. Driscoll refers to the Hove declaration, none of this
testimony is proper for rebuttal. Plaintiff bears the burden of proving a likelihood of
confusion and any evidence relating to the promotion of Plaintiff’s mark, the nature
of its customers, and to customer inquiries are relevant, if at all, to the likelihood of
confusion issue and should have been submitted during Plaintiff’s case in chief.
Plaintiff will not be allowed to get the evidence into the record as “rebuttal” evidence.
As this Board has explained,
During a plaintiff’s rebuttal testimony period, the plaintiff
may introduce evidence and testimony to deny, explain or
discredit facts and witnesses adduced by the defendant.
Evidence is improper rebuttal, however, where it does not
serve to do the above, but rather where it relates to a
witness and facts that might appropriately have been
introduced during the party’s case-in-chief.
Western Leather Goods Co. v. Blue Bell, Inc., 178 USPQ 382 (TTAB 1973); see also
Life Zone Inc. v. Middleman Grp. Inc., 87 USPQ2d 1953, 1958 (TTAB 2008); Wet Seal
Inc. v. FD Mgmt. Inc., 82 USPQ2d 1629 (TTAB 2007); Carefirst of Maryland Inc. v.
FirstHealth of the Carolinas Inc., 77 USPQ2d 1492, 1498 (TTAB 2005); Hard Rock
Cafe Int’l (USA) Inc. v. Elsea, 56 USPQ2d 1504, 1508-09 (TTAB 2000).

19 24 TTABVUE 4-6.
20 Id.
Opposition No. 91227143

- 7 -

Because the so-called rebuttal evidence submitted by Plaintiff was either
irrelevant or improper rebuttal, we strike all of that evidence and thus rule on the
deferred portions of Defendant’s motion to strike. We find most of Defendant’s
evidence is procedurally proper and relevant for the reasons given below.21 The
evidence of record, therefore, consists of the USPTO file for Defendant’s application,22
the 13 trademark registrations Plaintiff submitted with its Notice of Opposition,23
and the evidence Defendant submitted during its trial period.
II. Standing and Priority
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401, 191 L. Ed. 2d 360
(2015); John W. Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB
2010). Plaintiff’s standing is established by its pleaded registrations, which the record
shows to be valid and subsisting, and owned by Plaintiff. See, e.g., Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Otter Prods.
LLC v. BaseOneLabs LLC, 105 USPQ2d 1252, 1254 (TTAB 2012). Defendant did not
counterclaim to cancel Plaintiff’s registrations, so priority is not an issue with respect

21 As noted above, we do not consider Defendant’s evidence about Simunition® goods or
services, as that evidence is irrelevant.
22 Trademark Rule 2.122(b)(1).
23 Plaintiff submitted TESS record printouts for these registrations that showed status and
title in the party that filed the Notice of Opposition. This was sufficient to put these
registrations into the record. A subsequent Notice of Name Change was filed by Plaintiff to
note the change in ownership to Axon Enterprise, Inc. and the Board updated the case caption
to reflect Axon Enterprise, Inc. as Plaintiff. 21 TTABVUE; 31 TTABVUE.
Opposition No. 91227143

- 8 -

to the goods and services identified in Plaintiff’s pleaded registrations. Penguin Books
Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998) (citing King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)).
III. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on the 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); see also In re Majestic Distilling Co., 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 and 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.”).
Plaintiff bears the burden of establishing that there is a likelihood of confusion by
a preponderance of the evidence. Cunningham, 55 USPQ2d at 1844. We consider the
likelihood of confusion factors about which there is evidence. Du Pont, 177 USPQ at
567-68 (consider factors “when of record”); Cai v. Diamond Hong, Inc., 901 F.3d 1367,
127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (“Not all of the Du Pont factors are relevant
to every case, and only factors of significance to the particular mark need be
considered.”(quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259
(Fed. Cir. 2010)).
Opposition No. 91227143

- 9 -

A. Similarity of the Marks
We must consider the marks “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). “Similarity in any one of these elements
may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d
1810, 1812 (TTAB 2014); accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d
728, 156 USPQ 523, 526 (CCPA 1968). The marks at issue here have only design
elements, so the similarity of the marks must be decided primarily on the basis of
visual similarity. In re Vienna Sausage Mfg. Co., 16 USPQ2d 2044, 2047 (TTAB
1990).
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
and services offered under the respective marks is likely to result. Cai v. Diamond
Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018); Midwestern Pet
Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440
(Fed. Cir. 2012). 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, 108 (TTAB 1975).
Opposition No. 91227143

- 10 -

These are simple design marks, each having two elements. Plaintiff’s mark is
described in its applications as “a stylized lightning bolt within a circle.”24

This mark is formed by a continuous line that begins at about the seven o’clock
position of the circle and continues to about the one o’clock position, where a lightning
bolt formed from the same line extends through the circle; with the circle continuing
slightly past the one o’clock position to just before seven o’clock. The lightning bolt is
open in design with its inner area blank.
Defendant’s mark is described as “a shield with a lightning bolt symbol within the
shield.”25

The lightning bolt in this mark is solid and it does not intersect the shield shape that
forms the outer border of the design.
The obvious similarity in these marks is the use of a lightning bolt, though the
lightning bolts are different in the two marks. The lightning bolt in Plaintiff’s mark
is long, slender, open, and appears to be slicing through the overall design. This

24 See, e.g., Registration No. 4210350.
25 Application Serial Number 86696735.
Opposition No. 91227143

- 11 -

lightning bolt is an integral part of the overall mark, as the two elements of Plaintiff’s
mark—the circle and lightning bolt—are joined together. We find this mark creates
an image of speed, sharpness and piercing though the combined use of these two
visual elements.
Defendant’s mark features a lightning bolt, but in a different manner. The two
elements of Defendant’s mark—the shield and lightning bolt—are clearly separate
and distinct. Defendant’s lightning bolt is also solid and is placed inside of the shield.
The elements used in Defendant’s mark create an image of strength and security.
This overall impression is different from the sharp, piercing image created by
Plaintiff’s mark. Indeed, consumers will likely retain different mental images of these
marks, given that Plaintiff’s mark shows a lightning bolt piercing or slicing through
the body of the mark, while Defendant’s mark shows a lightning bolt fully contained
within a shield border.
We find the marks are somewhat similar, but “[b]ecause there are significant
differences in the design of the two marks, the finding of similarity is a less important
factor in establishing a likelihood of confusion than it would be if the two marks had
been identical in design or nearly indistinguishable to a casual observer.” In re Coors
Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1062 (Fed. Cir. 2003).
B. Similarity of the Goods and Services
Defendant’s application identifies
retail store services and online ordering services over a
global computer network featuring automotive and vehicle
parts, accessories and installation services for law
enforcement vehicles, namely, light bars, sirens, radio and
communications equipment, cargo and passenger
Opposition No. 91227143

- 12 -

compartment dividers, LED lights and flashers, K9 unit
compartment dividers and accessories, and GPS vehicle
location equipment and electronics
in International Class 35.26
Plaintiff’s evidence consists of its 13 registrations for its design mark.27 The
registrations identify goods ranging from pens28 to golf balls29 to stun guns.30 Several
of these registrations are of marginal relevance here because the goods identified are
not similar or related to the services identified in Defendant’s application.31 We find
only the following three of Plaintiff’s cited registrations warrant comparison with the
services identified in the Defendant’s application:
“Providing an on-line computer database in the field of law
enforcement, professional security services, self-defense,
and prisons” in International Class 45;32
“Educational services, namely, conducting classes,
workshops, seminars, and practice sessions in the fields of
electronic weapons, use of electronic weapons,
maintenance of electronic weapons, evidence collection,
evidence management, evidence analysis, certification for
electronic weapon use, medical and psychological issues
related to electronic weapon use, personal safety, self-
defense, decision making in the deployment of force,
electronic weapon use in a correctional environment, risk
management, and legal issues related to electronic

26 Application Serial Number 86696735.
27 1 TTABVUE 26-51.
28 Registration No. 3770934.
29 Registration No. 4071059. This registration also identifies “golf tees.”
30 Registration No. 4680816.
31 The first two registrations noted above (for pens, golf balls and golf tees) are examples.
32 Registration No. 4210350. This registration also identifies the following services:
“Computer services, namely, creating and maintaining web sites that allow streaming
selected video, audio, and photographic data for others,” in International Class 42. These
services are not similar or related to the services identified in the Defendant’s application.
Opposition No. 91227143

- 13 -

weapons, and instructor preparation” in International
Class 41;33 and,
“Police duty bags, namely, general purpose bags for
carrying law enforcement equipment” in International
Class 18.34
We find the goods and services identified in these three registrations are not similar
or closely related to the services identified in Defendant’s application. Law
enforcement agencies or groups are a primary market segment for both parties, but
that fact alone does not show that the goods and services are similar or related.
Defendant’s services involve law enforcement vehicles and none of Plaintiff’s
registrations mention vehicles.
We find that offering goods or services of different kinds to law enforcement groups
is not enough to lead relevant consumers to believe all such goods and services come
from a single source. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d
1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); Edwards Lifesciences Corp. v.
VigiLanz Corp., 94 USPQ2d 1399, 1410 (TTAB 2010); Schering Corp. v. Alza Corp.,
207 USPQ 504, 507 (TTAB 1980); Oxford Pendaflex Corp. v. Anixter Bros. Inc., 201
USPQ 851, 854 (TTAB 1978). Evidence is needed to determine whether such a
relationship exists.
For example, in In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB
1988), the Board found cheese related to margarine. This finding was supported by
evidence showing cheese and margarine were both used in cooking and “may be found

33 Registration No. 4045909.
34 Registration No. 4045908.
Opposition No. 91227143

- 14 -

in the dairy cases or on the shelves of super markets and other food stores.” Id. In
addition, there was “evidence illustrating that at least one well-known company
(Kraft) produces various cheeses as well as margarine and other dairy products and
that such products are used in conjunction in cooking or in otherwise preparing food
dishes.” Id. This evidence led the Board to find the goods related.
There is no evidence to support such a finding here. Plaintiff filed no evidence to
support its case-in-chief and we have struck the evidence it submitted as rebuttal.
Both parties offer goods or services to law enforcement agencies. That is all the record
shows.35 At most, they are loosely related—both parties sell goods or services to law
enforcement agencies. We find that connection is too tenuous to have much impact
on the likelihood of confusion and, therefore, find that this factor slightly favors
Defendant in the overall analysis.
C. Similarity of the Likely Trade Channels
We evaluate the trade channels based on the goods and services identified in the
application and the registrations of record. We ask whether it is likely that such goods
and services would be marketed and sold through the same trade channels. Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1161 (Fed. Cir. 2014); Octocom Sys, Inc., 16 USPQ2d at 1787.

35 Some of Plaintiff’s excluded rebuttal evidence purported to show that Defendant installs
video cameras in or on police cars. 22 TTABVUE at Exhs. AX1-6. This evidence, even if
allowed, would be irrelevant because Defendant’s application makes no mention of video
cameras. We cannot go beyond the identification of services in the opposed application. See,
e.g.,Octocom Syst. Inc. v. Houston Comput. Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990).
Opposition No. 91227143

- 15 -

Defendant’s application identifies retail and online store services and installation
services, but it is not entirely clear from the application how Defendant’s services are
provided. For example, the application makes clear that Defendant uses the Internet
for its online services, but it also refers to installation services for various items used
with law enforcement vehicles. Obviously, Defendant does not install light bars on
police cars via the Internet.
Defendant submitted evidence showing excerpts from its website.36 This evidence
helps explain the way Defendant’s services are offered without contradicting or going
beyond the identification provided in the application. Defendant’s evidence shows
that it uses the Internet to promote its services and to provide information on what
services it offers. Installation of the various items (e.g., light bars) is performed at
Defendant’s physical facility (i.e., apparently the “retail store” recited in the
application) in Argyle, Texas. The application lists “online ordering services,” and the
evidence of record seems to confirm that customers may order products (e.g.,
customized law enforcement vehicles) through Defendant’s website, but that such
goods would be made or customized at Defendant’s physical facility.
Defendant’s evidence also mentions trade shows and identifies its customers as
including “cities, counties, police departments, fire/rescue departments, sheriff
departments, school districts, state universities, county/state hospitals, municipal

36 17 TTABVUE.
Opposition No. 91227143

- 16 -

airports and appraisal districts.”37 This evidence is also consistent with the
identification of services in the application.
There is no evidence to supplement Plaintiff’s registrations, but we find it likely
that Plaintiff uses similar trade channels. One of its registrations refers to “on-line”
services,38 and others relate to law enforcement. Merely offering services over the
Internet is not a significant overlap in trade channels because so many different goods
and services are offered via the Internet. But because the services in Plaintiff’s
registrations relate to law enforcement, we find it likely that Plaintiff also markets
its goods and services at law enforcement trade shows and that both parties’ Internet
sites are likely used by law enforcement consumers (e.g., procurement officials within
the types of customers identified in Defendant’s evidence). Law enforcement
consumers likely purchase a wide range of goods and services. Defendant’s evidence
shows that a number of organizations use law enforcement vehicles (e.g., universities,
hospitals, airports, etc.). Given this broad range of customers and the broad range of
goods and services likely used by the policing segments of these customers, we find
the overlap in trade channels here is not likely to have a material impact on the
likelihood of confusion. We treat this factor as neutral.
D. Purchasing Conditions
Defendant offers customization of law enforcement vehicles, which we find are
likely purchased by sophisticated buyers and probably as a result of a formal

37 19 TTABVUE 4-5.
38 Registration No. 4210350.
Opposition No. 91227143

- 17 -

purchasing process. The services identified in the application and the evidence
submitted by Defendant support this finding.39
This evidence shows that many of Defendant’s customers are purchasing law
enforcement vehicles fitted to the customers’ specifications. The evidence also shows
close contact between Defendant and its customers. We find the level of purchaser
care and sophistication established by the evidence is substantially greater than that
of an ordinary consumer in an ordinary transaction. Electronic Design & Sales Inc. v.
Electronic Data Sys. Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992). For
these reasons, the purchasing conditions and sophistication of the purchasers of
Defendant’s services make confusion much less likely.
E. Strength of Plaintiff’s Mark
We treat two of the Du Pont factors together and ask whether the Plaintiff’s mark
is strong.40 “A mark’s strength is measured both by its conceptual strength
(distinctiveness) and its marketplace strength (secondary meaning).” In re
Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010)); see
also Top Tobacco, L.P. v. North Atl. Operating Co., Inc., 101 USPQ2d 1163, 1171-72
(TTAB 2011); Tea Bd. of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB

39 17 TTABVUE 6 (webpage stating “Police Vehicles For Sale”), 15 (webpage stating “One
Stop Shop” and explaining that “Defender Supply is the one stop shop for Law Enforcement
Ready-to-Roll vehicle packages.”). See generally id. at 8-26 (further evidence regarding the
nature of the transactions between Defendant and its customers).
40 In Du Pont, the court identified the following two related factors: “the fame of the prior
mark” and “the number and nature of similar marks in use on similar goods.” In re E.I. Du
Pont de Nemours & Co., 177 USPQ at 567. These two factors go to the strength of the
Plaintiff’s mark and, therefore, are treated together here.
Opposition No. 91227143

- 18 -

2006); 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition
§ 11:83 (5th ed. 2019). Market strength “varies along a spectrum from very strong to
very weak.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d
1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017).
Evidence of widespread third-party use of the mark, or of the same elements found
in the mark, will reduce the strength of a mark. Juice Generation, Inc. v. GS Enters.
LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-5 (Fed. Cir. 2015); Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797
F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015).
There is no evidence of third-party use or market strength in this case. The
question of strength, therefore, is limited to the inherent strength of Plaintiff’s design
mark.
In determining whether a design is arbitrary or distinctive
this court has looked to whether it was a ‘common’ basic
shape or design, whether it was unique or unusual in a
particular field, whether it was a mere refinement of a
commonly-adopted and well-known form of ornamentation
for a particular class of goods …
Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 196 USPQ 289, 291
(CCPA 1977). The design at issue in Seabrook Foods loosely resembled a leaf, and the
court found that design was common and, therefore, not very distinctive. Id. This
conclusion led the court to find that confusion was not likely. Id. at 292.
We take a similar approach here. Plaintiff’s mark has two elements—a circle and
a lightning bolt. A circle is an extremely common shape. “It is hornbook law that
‘[o]rdinary geometric shapes such as circles, ovals, squares, etc., even when not used
Opposition No. 91227143

- 19 -

as background for other marks, are regarded as non-distinctive and protectable only
upon proof of secondary meaning.’” Wiley v. American Greetings Corp., 762 F.2d 139,
226 USPQ 101, 103 (1st Cir. 1985) (quoting McCarthy, Trademarks and Unfair
Competition § 7:12 (1973). But there is no evidence regarding the distinctiveness of a
lightning bolt. The overall mark includes a common shape (i.e., a circle) and an
element of undetermined distinctiveness (i.e., a lightning bolt).
Given the limited record, we find this factor neutral or slightly favoring Defendant
due to the absence of any evidence of market strength and our inability, on this
limited record, to determine the inherent strength of Plaintiff’s mark. We give this
factor little weight in the overall analysis.
F. Actual Confusion or the Lack Thereof
We also combine the two Du Pont factors that relate to actual confusion.41 There
is no evidence of actual confusion. Indeed, Defendant presented evidence that
suggests these marks have coexisted for about six years without any reports of
confusion, at least no such reports to Defendant.42 The evidence submitted by
Defendant also appears to show that it works quite closely with its customers.43 These
facts suggest that if Defendant’s actual or prospective customers were confused by its
use of the mark at issue here, there were ample opportunities for someone to report

41 In Du Pont, the court listed two factors about actual confusion: “the nature and extent of
any actual confusion” and “the length of time during and conditions under which there has
been concurrent use without evidence of actual confusion.” In re E.I. Du Pont de Nemours &
Co., 177 USPQ at 567.
42 18, 19 TTABVUE (Brooks and Hove declarations).
43 17 TTABVUE. The website excerpts show many customer comments that demonstrate
substantial and close contact between Defendant and its customers.
Opposition No. 91227143

- 20 -

that to Defendant or ask Defendant about it. The testimony of Defendant’s witnesses
was self-serving, but unrebutted.44
An absence of actual confusion, however, is not always evidence that confusion is
unlikely. Citigroup Inc. v. Capital City Bank Grp., Inc., 94 USPQ2d 1645, 1660 (TTAB
2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Gillette Canada Inc. v.
Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). For the absence of actual confusion
to be probative, there must have been a reasonable opportunity for confusion to have
occurred. Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007)
(the probative value of the absence of actual confusion depends upon there being a
significant opportunity for actual confusion to have occurred); Red Carpet Corp. v.
Johnstown Am. Enters. Inc., 7 USPQ2d 1404, 1406-1407 (TTAB 1988); Central Soya
Co., Inc. v. North Am. Plant Breeders, 212 USPQ 37, 48 (TTAB 1981) (“the absence of
actual confusion over a reasonable period of time might well suggest that the
likelihood of confusion is only a remote possibility with little probability of
occurring”).
We find the actual confusion factors neutral. Six years of concurrent use without
any evidence of actual confusion may be significant, but the evidence on this issue
consists solely of statements made by Defendant’s President and an owner of
Defendant.

44 While Plaintiff did not rebut this testimony, we note that it is self-serving and for that
reason should not be given much weight. Majestic Distilling, 315 USPQ2d 1311, 65 USPQ2d
1201, 1205 (Fed. Cir. 2003).
Opposition No. 91227143

- 21 -

G. Weighing and Balancing the Factors
Plaintiff has failed to prove that confusion is likely. Most of the factors were close
or neutral. No factor strongly favored Plaintiff. Given the close nature of factors that
are often dispositive (e.g., similarity of the marks and similarity or relatedness of the
goods/services), other factors are more important here.
We find, in particular, that the purchasing conditions factor is important. The
evidence shows that purchasers of Defendant’s services are engaging in significant
transactions and are likely to exercise a high degree of care. This fact significantly
reduces the risk of confusion and outweighs the other likelihood of confusion factors
in this case. Plaintiff has not proven a likelihood of confusion.
Decision: The opposition is dismissed.