Barnett Outdoors, LLC

Trademark Trial and Appeal Board

Feb 3, 2015

No. 85905011 (T.T.A.B. Feb. 3, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: February 3, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
________

In re Barnett Outdoors, LLC
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Serial Nos. 85905009 and 85905011
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Robert L. Waddell of Jones Walker LLP for Barnett Outdoors, LLC.

Colleen E. Mulcrone, Trademark Examining Attorney, Law Office 108,
(Andrew Lawrence, Managing Attorney).
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Before Quinn, Cataldo, and Kuczma,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
Barnett Outdoors, LLC applied to register the marks BARNETT and
BARNETT CROSSBOWS (CROSSBOWS disclaimed), both in standard characters
and both for “archery equipment, namely, telescopic bow sights” in International
Class 9; and “archery equipment and implements, namely, archery bows, compound
bows, crossbows, broadheads, arrows, arrow points, archery bow strings and cables,
crossbow strings and cables, crossbow tracks, archery quivers, open bow sights, non-
telescopic bow sights, archery targets, archery arm guards, archery finger tabs,
archery sets, crossbow cocking devices, crossbow grips, crossbow slings, crossbow
cases; slingshots; slingshot bands; slingshot ammunition; slingshot holsters; toy
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blowguns; toy blowgun darts; toy crossbows; archery guns and archery pistols in the
nature of crossbows” in International Class 28.1 In each application Applicant
claimed acquired distinctiveness of the mark for the identified goods under Section
2(f) of the Trademark Act, 15 U.S.C. § 1052(f).2
The Trademark Examining Attorney refused registration under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), in each class in each application, on the
ground that Applicant’s mark, when applied to Applicant’s goods, so resembles the
previously registered mark shown below

for “rugby helmets, baseball helmets, water polo helmets, football helmets” in
International Class 9; “gloves for baseball and American football, sail boards, balls
for golf, tennis balls, tennis rackets; table-tennis nets, balls and rackets; footballs,
rugby balls, volleyballs, baseballs, basketballs, water-polo balls and nets; hockey
balls, nets and sticks; softball balls, bats and gloves; hockey pucks; shoulder, face
and legs protectors, plastron” in International Class 28; and “retail store services,

1 Application Serial Nos. 85905009 and 85905011, filed on April 15, 2013 under Section 1(a)
of the Trademark Act, 15 U.S.C. § 1051(a), based on allegations of dates of first use
anywhere and in commerce of December 1973 in Class 9, and dates of first use anywhere
and in commerce of February 1973 in Class 28.
2 The Examining Attorney originally also refused registration in each application under
Section 2(e)(4) of the Trademark Act, 15 U.S.C. § 1052(e)(4), on the ground that Applicant’s
mark was primarily merely a surname. In response to the refusal, Applicant submitted the
Section 2(f) claim. The Examining Attorney accepted the claim of acquired distinctiveness,
and withdrew the surname refusal.
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on-line ordering services and catalogue mail ordering services featuring sporting
goods” in International Class 35,3 as to be likely to cause confusion.
When the refusal was made final, Applicant appealed and requested
reconsideration. When the request for reconsideration was denied, proceedings in
the appeal were resumed, and Applicant and the Examining Attorney filed briefs.
Because the two appeals involve common questions of law and fact, and the
records are essentially identical, the Board will decide the appeals in this single
opinion.
Applicant argues that the marks “are visually different, are not pronounced
the same, and have distinct and wholly unrelated commercial impressions,”
especially in view of what it perceives to be the dominant and highly stylized letter
“B” in Registrant’s mark. (Brief, p. 7; 9 TTABVue 8). Applicant also argues that the
goods do not “intersect,” asserting that sporting goods stores categorize the products
differently. Applicant states that weaponry (such as its crossbows) is considered a
niche market, and that manufacturers of general sporting goods tend to not cross
over into this field. Applicant claims that it is well known and regarded as a
provider of hunting equipment, and that it does not sell general sporting equipment
used to play football, baseball and other sports. Further, according to Applicant,
hunters in general are relatively sophisticated purchasers, particularly at the price
points of Applicant’s crossbows. Also probative, Applicant contends, is the absence
of actual confusion during a ten-year period of contemporaneous use of the marks.

3 Registration No. 3125310, issued August 8, 2006; Sections 8 and 15 combined declaration
accepted and acknowledged. The registration also includes goods in Class 25, but the
Examining Attorney does not base the refusal on this class.
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Applicant submitted an excerpt from its website and Registrant’s website, and the
declaration of David Barnett, Applicant’s director.
The Examining Attorney maintains that the marks are similar, and that the
presence of the stylized letter “B” in Registrant’s mark is insufficient to distinguish
the marks. As for the goods, the Examining Attorney contends that they are related
and are commonly sold in the same trade channels. In support of the refusal, the
Examining Attorney provided excerpts of the websites of Registrant and third
parties, as well as third-party registrations.
Our determination under Section 2(d) is based on an analysis of all of the
facts in evidence that are relevant to the factors bearing on the likelihood of
confusion issue. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976).
With respect to the first du Pont factor, we must compare the marks in their
entireties as to appearance, sound, connotation and commercial impression to
determine the similarity or dissimilarity between them. Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005), quoting In re E. I. du Pont de Nemours & Co., 177
USPQ at 567. “The proper test is not a side-by-side comparison of the marks, but
instead ‘whether the marks are sufficiently similar in terms of their commercial
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impression’ such that persons who encounter the marks would be likely to assume a
connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). The focus is
on the recollection of the average purchaser, who normally retains a general rather
than a specific impression of trademarks. See Inter IKEA Sys. B.V. v. Akea, LLC,
110 USPQ2d 1734, 1740 (TTAB 2014); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
Although marks must be considered in their entireties, it is 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. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985) (“There is nothing improper in stating that, for
rational reasons, more or less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on consideration of the marks in their
entireties. Indeed, this type of analysis appears to be unavoidable.”).
With respect to Registrant’s mark, which comprises both a stylized letter “B”
and the surname “BARNETT,” the “BARNETT” portion dominates. In general,
when a word and a design comprise the mark, then the words are normally accorded
greater weight because the words are likely to make an impression upon
purchasers, would be remembered by them, and would be used by them to request
the goods and/or services. CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200
(Fed. Cir. 1983) (“in a composite mark comprising a design and words, the verbal
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portion of the mark is the one most likely to indicate the origin of the goods to which
it is affixed”); Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424,
1430-31 (TTAB 2013); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB
1987). See also Giant Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565, 218
USPQ 390 (Fed. Cir. 1983). It is likely that consumers, when encountering
Registrant’s mark, will focus on the surname “BARNETT.” That is to say,
consumers will most likely remember and call for the sporting goods by only the
“BARNETT” portion; it is very doubtful that the letter “B” will be remembered or
used in the same fashion.4
With respect to Applicant’s BARNETT CROSSBOW mark, the generic term
“CROSSBOW” has been disclaimed apart from the mark. In view of the generic
nature of this disclaimed term, this portion of the mark plays no source-indicating
function in this mark. See, e.g., In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1533-34 (Fed. Cir. 1997) (“DELTA,” not the disclaimed generic term “CAFE,”
is the dominant portion of the mark THE DELTA CAFE).

4 To her point, the Examining Attorney relies on Registrant’s website, as well as the
websites of six third parties. In each instance, the mark used on the website comprises a
letter and a name or word (e.g., B BELLAGIO, B BLUETREK, and C CUMMINS). The
Examining Attorney points out that on each website, including Registrant’s, the name/word
is used most often, with no reference to the letter portion. Thus, while entities may include
letters in their marks, it should come as no surprise that such marks are routinely
dominated by and shortened to just the name/word. See In re Abcor Dev. Corp., 588 F.2d
811, 200 USPQ2d 215, 219 (CCPA 1978) (Rich, J., concurring) (“the users of language have
a universal habit of shortening full names -- from haste or laziness or just economy of
words”).
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Accordingly, the dominant portion of Registrant’s mark, BARNETT, is
identical to the dominant portion of Applicant’s BARNETT CROSSBOW mark, and
is identical to the entirety of Applicant’s BARNETT mark.
The marks are similar in appearance due to the commonality of the name
“BARNETT.” Further, the stylization of Registrant’s mark is insufficient to
distinguish it from Applicant’s mark. Because Applicant’s marks are presented in
standard characters, Applicant is not limited to any particular depiction of its
marks. Thus, Applicant is entitled to all depictions of its standard character marks
regardless of the font style, size, or color; Applicant’s marks could at any time in the
future be displayed in a manner similar to Registrant’s mark, that is, the word(s)
displayed in the same font style and size. In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1909-10 (Fed. Cir. 2012); Citigroup Inc. v. Capital City Bank Group,
Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011). See Squirtco v. Tomy
Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983) (rejecting argument that
a mark in standard character format (typed) is distinct from a mark in a logo
format; “[b]y presenting its mark in a typed drawing, a difference cannot legally be
asserted by that party” (emphasis in original)).
The marks are likewise similar in sound, again due to the commonality of the
name “BARNETT.” The marks also convey similar, if not identical meanings, that
is, of a surname. Given these close similarities, the marks engender similar overall
commercial impressions. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d
1257, 1260 (Fed. Cir. 2010) (ML and ML MARK LEES marks are likely to cause
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confusion; “the presence of an additional term in [the registrant’s] mark does not
necessarily eliminate the likelihood of confusion if some terms are identical”).
The similarity between Applicant’s marks BARNETT and BARNETT
CROSSBOWS and Registrant’s mark B BARNETT and design weighs in favor of a
finding of likelihood of confusion.
We next direct our attention to the second du Pont factor regarding the
similarity/dissimilarity between the goods and/or services. We will focus our
attention on a comparison between Applicant’s goods and Registrant’s goods, rather
than Registrant’s services because this comparison is the most likely to support a
finding of likelihood of confusion. See, e.g., In re Max Capital Group Ltd., 93
USPQ2d 1243, 1245 (TTAB 2010). It is settled that in making our determination
regarding the relatedness of the goods, we must look to the goods as identified in
the application and the cited registration. See Octocom Sys., Inc. v. Houston
Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re
Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011).
At the outset of our consideration of this factor, we readily recognize that
archery equipment, slingshots and blowguns (“weaponry” as characterized by
Applicant) are specifically different from the general sports equipment (for baseball,
football, table tennis and the like) of Registrant. To state the obvious, the goods are
specifically different in nature and are used for different sporting pursuits. We also
recognize, however, that Applicant’s identification of goods does not limit its goods
to hunting purposes; rather, Applicant’s bows and arrows may be used in the
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pursuit of archery as a competitive sport or recreational activity. In any event, it is
well settled that the goods of Applicant and Registrant need not be identical or
competitive, or even be offered through the same channels of trade, to support a
holding of likelihood of confusion. It is sufficient that the respective goods of
Applicant and Registrant 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 Hilson Research, Inc. v. Society for Human Resource
Management, 27 USPQ2d 1423 (TTAB 1993). The issue here, of course, is not
whether purchasers would confuse the goods, but rather whether there is a
likelihood of confusion as to the source of these goods. L’Oreal S.A. v. Marcon, 102
USPQ2d 1434, 1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
Likelihood of confusion must be found if there is likely to be confusion with respect
to any item in a class that comes within the identification of goods and/or services in
the application and cited registration. See Tuxedo Monopoly, Inc. v. General Mills
Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Computer v.
TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB 2007).
The Examining Attorney’s evidence bearing on the relatedness of the goods
comprises copies of several use-based third-party registrations which individually
cover, under the same mark, both types of goods involved herein, namely archery
equipment on the one hand, and sporting goods equipment (for playing football,
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baseball, golf, tennis, and the like) on the other. The registrations include the
following:
Reg. No. 1314813 for WALKER for “archery equipment,
namely, bows, arrows; archery sets, quivers, archery
gloves, arm guards, bow straps, and finger tabs” and
“baseballs, bats, gloves, basketballs, footballs, football
helmets, hockey pucks, tennis rackets and balls, table
tennis paddles and balls, soccer balls, volleyball balls”;

Reg. No. 3126530 for ESCALADE for “archery bow,
arrow, archery accessories, namely archery targets, bow
strings, quivers, finger tabs, armguards, archery gloves”
and “table tennis balls, table tennis racquets”;

Reg. No. 3187746 for X-SPEED for “bows for archery” and
“balls for sports and games, namely, footballs, rugby balls,
basketballs, golf balls”;

Reg. No. 3187825 for JONNY WAS… for “archery bows,
archery arrows, archery quivers, archery targets” and
“baseball gloves, baseball bats, football shoulder pads,
hockey pucks, sporting balls for basketball, baseball,
golfing, tennis, soccer, bowling, volleyball, table tennis”;

Reg. No. 3330375 for XI SPORTS for “archery equipment,
namely, archery bows, arrows, quivers, targets, arm
guards, archery gloves” and “table tennis rackets, table
tennis balls, nets, and table tennis game playing
equipment”;

Reg. No 4042363 for PRETORIAN HARD SPORTS for
“archery equipment, namely, arrows, archery bows,
archery sets, archery targets, bow strings, arm guards,
bow cases” and “tennis rackets, squash rackets, table
tennis rackets, golf clubs, hockey sticks”; and

Reg. No. 4149469 for RESOON for “archery arrows” and
“balls for sports, basketballs, tennis balls.”

“Third-party registrations which cover a number of differing goods and/or services,
and which are based on use in commerce, although not evidence that the marks
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shown therein are in use on a commercial scale or that the public is familiar with
them, may nevertheless have some probative value to the extent that they may
serve to suggest that such goods or services are of a type which may emanate from a
single source.” In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB
1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988). See also In re Albert Trostel & Sons Co.,
29 USPQ2d 1783, 1785-86 (TTAB 1993).
The similarity between the goods is a factor weighing in favor of a finding of
likelihood of confusion.
The Examining Attorney introduced website pages from several sporting
goods outlets to show that Applicant’s and Registrant’s goods are the types of goods
which are commonly sold through the same trade channels. These on-line retailers
include Sports Authority, Dick’s Sporting Goods, Big 5 Sporting Goods, Scheels, MC
Sports, Sport Chalet, Academy Sports + Outdoors, and Garretson’s Sport Center, all
of whom also have “brick and mortar” locations. In each example, the sporting goods
retailer sells both archery equipment, as well as sporting goods equipment used to
play baseball, football, basketball and hockey, among others. The fact that archery
equipment and baseball, football, basketball and hockey equipment are sold on the
same websites and in the same sporting goods stores (albeit in a different
department or section of the store or website) supports a finding that the goods
travel in the same trade channels. The classes of purchasers for these types of goods
would overlap, and would include ordinary consumers. These factors favor a finding
of a likelihood of confusion.
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Applicant’s contention that its customers are sophisticated is not supported
by any evidence. Thus, this factor must be considered neutral. However, even if we
were to assume that Applicant’s archery equipment requires a more thoughtful
purchase than in the case of general sporting goods, it is settled that even
sophisticated purchasers are not immune from source confusion, especially in cases
such as the instant one involving similar marks and related goods. See In re
Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), citing
Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ
110, 112 (CCPA 1970) (“Human memories even of discriminating purchasers...are
not infallible.”). See also In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690
(Fed. Cir. 1993); In re Decombe, 9 USPQ2d 1812 (TTAB 1988). We would find that
the similarity between the marks and the relatedness of the goods sold thereunder
outweighed any presumed sophisticated purchasing decision. See HRL Associates,
Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss Associates,
Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990)
(similarities of goods and marks outweigh sophisticated purchasers, careful
purchasing decision, and expensive goods). See also Stone Lion Capital Partners, LP
v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162-63 (Fed. Cir. 2014).
The record includes the declaration of David Barnett, Applicant’s vice
president and director. Mr. Barnett claims that he is aware of Registrant and its
mark, but that Applicant is unaware of any instance of actual confusion between
Registrant’s and Applicant’s marks, despite 10 years of contemporaneous use. It is
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not necessary, however, to show actual confusion in order to establish likelihood of
confusion. See Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14
USPQ2d 1840, 1842-43 (Fed. Cir. 1990). Applicant’s assertion, particularly in this
ex parte proceeding, is entitled to little weight. See In re Majestic Distilling Co., Inc.,
315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003) (“uncorroborated statements
of no known instances of actual confusion are of little evidentiary value”). See also
In re Bisset-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (stating
that testimony of applicant’s corporate president’s unawareness of instances of
actual confusion was not conclusive that actual confusion did not exist or that there
was no likelihood of confusion); In re Binion, 93 USPQ2d 1531, 1536 (TTAB 2009);
In re 1st USA Realty Professionals Inc., 84 USPQ2d 1581, 1588 (TTAB 2007); In re
Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984). In any event, the record
is devoid of evidence relating to the extent of use of Applicant’s and Registrant’s
marks that would enable us to determine whether there have been meaningful
opportunities for instances of actual confusion to have occurred in the marketplace.
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed.
Cir. 2000). Accordingly, the du Pont factor of the length of time during and
conditions under which there has been contemporaneous use of the marks without
evidence of actual confusion is considered neutral.
We have carefully considered all of the evidence made of record pertaining to
the issue of likelihood of confusion, as well as all of the arguments related thereto,
including any evidence and arguments not specifically discussed in this opinion. We
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conclude that purchasers familiar with Registrant’s sporting goods equipment sold
under the mark B BARNETT and design would be likely to mistakenly believe,
upon encountering Applicant’s marks BARNETT and BARNETT CROSSBOWS for
archery equipment, that the goods originate from or are associated with or
sponsored by the same entity.
Decision: The refusal to register in both classes in each application is
affirmed.