Carl Walther GmbH and Umarex Sportwaffen GmbH & Co., KGv.Catharina Herriger

Trademark Trial and Appeal Board

Jun 22, 2015

No. 91215976 (T.T.A.B. Jun. 22, 2015)

This decision is not a precedent
of the Trademark Trial and
Appeal Board.

Baxley Mailed: June 22, 2015

Opposition No. 91215976
Carl Walther GmbH and Umarex
Sportwaffen GmbH & Co., KG

v.
Catharina Herriger

Before Seeherman, Quinn, and Shaw,
Administrative Trademark Judges.

By the Board:

Catharina Herriger (“Applicant”) filed, on June 20, 2013, intent-to-use
applications to register the mark WALTHER in standard character form1
(“Applicant’s word mark”) and the following design mark, , (“Applicant’s
design mark”),2 both for “[j]ewellery and watches” in International Class 14.
Carl Walther GmbH (“Walther”) and its asserted “related party,” Umarex
Sportwaffen GmbH & Co. KG (“Umarex”), (collectively “Opposers”), filed a notice of
opposition to registration of Applicant’s marks on the grounds of likelihood of
confusion and dilution. In particular, Opposers have alleged previous use and

1 Application Serial No. 85965933.

2 Application Serial No. 85965968.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
Opposition No. 91215976

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registration of several WALTHER marks,3 including Walther’s design mark
for “[t]oy weapons, namely, toy replicas of weapons” in International
Class 284 and its mark WALTHER and design in the following form, , for
“[s]port knives, knives for use in hunting and fishing, pocket knives” in
International Class 8, “[t]elescopes, telescopic gun and lens sights, night glasses for
use in hunting” in International Class 9, and “[w]eapons for self defense, namely,

3 In the notice of opposition, Opposers allege that they own “numerous trademark
registrations for WALTHER, the Walther Ribbon Design, and combinations thereof.”
Opposers have attached as exhibits to their notice plain or “soft copies” of certificates for
their six pleaded registrations as Exhibit A. However, International Armament Corporation
is identified as the registrant in the copy of pleaded Registration No. 303701 for WALTHER
and design. Further, plain copies of registrations are insufficient to make those
registrations of record under Trademark Rule 2.122(d). See Syngenta Crop Protection Inc. v.
Bio-Chek LLC, 90 USPQ2d 1112, 1116-17 (TTAB 2009); TBMP § 704.04(b)(1)(A) (2014). The
registration copies “prepared and issued by the United States Patent and Trademark Office
showing both the current status of and current title to the registration,” as contemplated by
Rule 2.122(d), are printed copies of the registration on which the Office has entered the
information it has in its records, at the time it prepares the status and title copies, such as
information about the renewal, affidavits or declarations under Trademark Act Sections 8,
15, and 71, 15 U.S.C. §§ 1058, 1065, and 1141k; and recorded documents transferring title.
See Industrial Adhesive Co. v. Borden, Inc., 218 USPQ 945, 947 (TTAB 1983); TBMP §
704.04(b)(1)(A). An opposer may also make such registrations of record by submitting a
current printout of the information of the registration from the electronic database records
of the USPTO showing the current status and title of the registration. See Trademark Rule
2.122(d).
As noted infra, Opposers have submitted status and title copies of their pleaded
registrations taken from the electronic records of the Patent and Trademark Office
reasonably contemporaneously with the filing of the motion for summary judgment, with
the declaration of their counsel, Wesley Anderson. In view thereof, we refer to the details of
the registrations. However, it should be noted that, because Opposers did not make them of
record with their pleading as provided by Trademark Rule 2.122(d), they are of record only
for the purpose of deciding the motion for summary judgment.

4 Registration No. 3038946, issued January 10, 2006, Section 8 affidavit accepted, Section
15 affidavit acknowledged.

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pistols” in International Class 13;5 and Umarex’s mark WALTHER in typed form
for “hunting and sport rifles, pistols, revolvers and shot guns” in International Class
136 and for “[t]oy weapons; toy replicas of weapons” in International Class 287 and
WALTHER and design in the following form, , for “[t]oy weapons; toy
replicas of weapons” in International Class 28.8 Applicant in her answer denied the
salient allegations of the notice of opposition.
This case now comes up for consideration of (1) Opposers’ motion (filed February
9, 2015) for leave to file an amended notice of opposition in which they add a claim
that Applicant had no bona fide intent to use the mark when she filed her
applications; and (2) Opposers’ motion (filed February 9, 2015) for summary
judgment on the grounds of likelihood of confusion and no bona fide intent to use
the involved marks as of the applications’ filing date.9 The motions have been fully
briefed.

5 Registration No. 2714985, issued May 13, 2003, renewed. In the notice of opposition,
Opposers allege that such registration originally included “watches and clocks” in
International Class 14 and that Walther deleted those goods from the registration when it
filed its Section 8 affidavit in 2009.

6 Registration No. 1120867, issued June 26, 1979, with a claim of distinctiveness under
Trademark Act Section 2(f), 15 U.S.C. § 1052(f), renewed twice.

7 Registration No. 2909647, issued December 14, 2004, with a claim of distinctiveness under
Trademark Act Section 2(f), renewed.

8 Registration No. 2912154, issued December 21, 2004, renewed.

9 In their motions, Opposers refer to themselves collectively as “Walther.” When there are
multiple plaintiffs or defendants, they should not refer to themselves collectively by an
abbreviation that points to one of them.
Opposition No. 91215976

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We will first consider the motion for leave to amend. Under Fed. R. Civ. P. 15(a),
leave to amend pleadings shall be freely given when justice so requires. Consistent
therewith, the Board liberally grants leave to amend pleadings at any stage of the
proceeding when justice requires, unless entry of the proposed amendment would
violate settled law or be prejudicial to the rights of the adverse party or parties. See,
e.g., Commodore Elecs. Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503 (TTAB
1993); United States Olympic Committee v. O-M Bread Inc., 26 USPQ2d 1221
(TTAB 1993).
A motion for leave to amend should be filed promptly upon the discovery of any
ground for such amendment, e.g., newly discovered evidence, becomes apparent. See
TBMP § 507.02 and cases cited therein. A long delay in filing a motion for leave to
amend may render the amendment untimely. See Int’l Finance Co. v. Bravo Co., 64
USPQ2d 1597, 1604 (TTAB 2002).
By the proposed amended notice of opposition, Opposers seeks to add a claim
that Applicant did not have a bona fide intent to use the involved marks in
commerce when she filed her intent-to-use applications on June 20, 2013. Lack of a
bona fide intent to use a mark is a proper basis upon which to challenge an
application or registration. See M.Z. Berger & Co., Inc. v. Swatch AG, __ F.2d __, __
USPQ2d __, No. 14-1219, slip op. at 11 (Fed. Cir. June 4, 2015), affirming Swatch
AG v. M.Z. Berger & Co., 108 USPQ2d (BNA) 1463 (TTAB 2013). Because the
proposed new claim is largely based on information that Opposers obtained (1) on
August 25, 2014 in Applicant’s responses to the first set of discovery requests that
Opposition No. 91215976

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Opposers served on July 28, 2014 and (2) on January 14, 2015 in Applicant’s
responses to the second set of requests for admissions that Opposers served on
December 23, 2014, we are satisfied that Opposers acted promptly upon being made
aware of the information that give rise to the claim. Moreover, Applicant has
pointed to no specific prejudice, such as lost evidence or unavailable witnesses, that
would result from allowing Opposers to add the proposed claim. That is, Applicant
has made no showing that her ability to defend this proceeding would be adversely
affected by allowing the additional claim to go forward. See Pratt v. Philbrook, 109
F.3d 18 (1st Cir. 1997). In addition, in view of Applicant’s failure to produce any
documents in response to document requests in connection with activities that
Applicant has undertaken in preparation to use her marks, Applicant’s assertion in
her brief in opposition that Opposers lack a good faith basis for alleging lack of a
bona fide intent is not well taken.10 See Commodore Elecs. Ltd. v. CBM Kabushiki
Kaisha, 26 USPQ2d at 1507 (“[A]bsent other facts which adequately explain or

10 In responding to Opposers’ document requests, Applicant identified the “file histories” of
her applications as documents responsive to all of Opposers” document requests, but failed
to produce any documents regarding:
(1) the selection, clearance and adoption of her marks (request nos. 1-6),
(2) her bona fide intent to use those marks on or prior to the June 20, 2013 application
filing date (request no. 10),
(3) goods that Applicant has sold, sells or intends to sell under the marks (request no. 12),
(4) communications with any advertising agency or public relations firm regarding the
marks (request no. 14),
(5) media coverage that refers to Applicant’s marks (request no. 15),
(6) business and marketing plans related to the marks (request nos. 26-27),
(7) product development for the identified goods to be sold under the marks (request nos.
28-29),
(8) her ability to manufacture the identified goods under the marks, including requests for
quotes from vendors and contracts related to manufacturing the identified goods under the
marks (request nos. 31-32), and
(9) targeted purchasers of goods to be sold under the marks (request no. 33).

Opposition No. 91215976

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outweigh the failure of an applicant to have any documents supportive of or bearing
upon its claimed intent to use its mark in commerce, the absence of any
documentary evidence on the part of an applicant regarding such intent is sufficient
to prove that the applicant lacks a bona fide intention to use its mark in commerce
as required by Section 1(b).”). Accordingly, Opposers’ motion for leave to file an
amended notice of opposition is hereby granted. The amended notice of opposition is
the operative complaint herein.
We now turn to Opposers’ motion for summary judgment on the pleaded grounds
of no bona fide intent to use the marks and likelihood of confusion. Summary
judgment is an appropriate method of disposing of cases in which there are no
genuine disputes as to any material fact, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(c). The party moving for summary judgment
has the initial burden of demonstrating that there is no genuine dispute of material
fact remaining for trial and that it is entitled to judgment as a matter of law. See
Fed. R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317 (1987). In considering the
propriety of summary judgment, all evidence must be viewed in a light most
favorable to the nonmovant, and all justifiable inferences are to be drawn in the
nonmovant’s favor. The Board may not resolve issues of material fact; it may only
ascertain whether such issues are present. See Lloyd’s Food Products Inc. v. Eli’s
Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993); Opryland USA Inc. v. Great
American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992); Olde
Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
Opposition No. 91215976

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Thus, as the movants, Opposers have the burden of establishing the absence of
any genuine disputes of material fact for trial and that they are entitled to
judgment as a matter of law. For the Board to grant Opposers’ motion for summary
judgment, Opposers must establish that there is no genuine dispute (1) as to their
standing and (2) the necessary elements to establish either of the claims at issue in
their motion; they must also establish that they are entitled to entry of judgment as
a matter of law. See Fram Trak Industries Inc. v. WireTracks LLC, 77 USPQ2d
2000, 2004 (TTAB 2006).
As an initial matter, there is no genuine dispute that Opposers have standing to
maintain this proceeding because Opposers have submitted status and title copies
of their pleaded registrations. See Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1844 (Fed. Cir. 2000). In particular, Opposers submitted title and
status copies obtained from the USPTO’s TSDR database on January 28, 2015 of
Umarex’s pleaded Registration Nos. 303701, 1120867, 2909647 and 2912154 and
Walther’s pleaded Registration Nos. 2714985 and 3038946 as exhibits E through J
of the motion for summary judgment.
Regarding Opposers’ claim that Applicant had no bona fide intent to use her
marks at the time of filing the applications, Trademark Act Section 1(b), 15 U.S.C. §
1051(b), states that “a person who has a bona fide intention, under circumstances
showing the good faith of such person, to use a trademark in commerce” may apply
for registration of the mark. A bona fide intent to use the mark in commerce at the
time of the application requires objective evidence of intent. See M.Z. Berger & Co.,
Opposition No. 91215976

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slip. op. at 14. The Board may determine the claim of no bona fide intent to use on a
case-by-case basis, considering the totality of the circumstances. Id. The evidentiary
bar for an applicant to show it had a bona fide intent to use is not high, but the
circumstances must indicate that the applicant’s intent to use the mark was firm
and not merely an intent to reserve a right in the mark. See id.; Boston Red Sox
Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008); Lane Ltd. v.
Jackson Int’l Trading Co., 33 USPQ2d 1351, 1355 (TTAB 1994). An applicant’s bona
fide intent to use a mark may be contingent on the outcome of an event (that is,
market research or product testing) and must reflect an intention to use the mark
“‘in the ordinary course of trade.’” Commodore Elecs. Ltd., 26 USPQ2d at 1507
(quoting Trademark Act Section 45, 15 U.S.C. § 1127, and citing Senate Judiciary
Comm. Rep. on S. 1883, S. Rep. No. 515, 100th Cong., 2d Sess. 24-25 (1988)). In
determining whether an applicant had the requisite intent-to-use, an applicant’s
capacity to market and/or manufacture the identified goods weighs against a
finding that an applicant lacked a bona fide intent to use. See Wet Seal, Inc. v. FD
Mgmt., Inc., 82 USPQ2d 1629, 1643 (TTAB 2007) (“Merely because applicant may
not have taken steps to actually launch or introduce a particular product does not
mean that applicant otherwise had no intention to develop or market the product.”).
Because of Applicant’s failure, in response to Opposers’ discovery requests, to
produce documents that would support her asserted bona fide intent to use,
Opposers made a prima facie showing that Applicant did not have a bona fide intent
to use the involved marks when she filed her applications. See Commodore Elecs.
Opposition No. 91215976

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Ltd., 26 USPQ2d at 1507 n.11. However, in response to the motion for summary
judgment, Applicant notes her response to Opposers’ interrogatory no. 15, wherein
she states that she “is a trained gemologist and has worked for several Swiss watch
and jewelry manufacturers, including Rolex, and as a result has experience in
watch and jewelry manufacture.”11 We find that Applicant’s training and experience
with respect to the goods identified in her application are sufficient to raise a

11 Applicant also referred to other actions and submitted additional documents in response
to the motion for summary judgment, references and evidence to which Opposers have
objected. In her brief in opposition, Applicant refers to a trademark search that her
attorney conducted in connection with her applications, but did not include a copy of any
search report as an exhibit to the brief in opposition. In their reply brief, Opposers objected
to such reference, alleging that the trademark search report was not disclosed in discovery
in response to document request nos. 3 and 4 and interrogatory no. 7, where Opposers
expressly sought information and documents regarding steps taken to determine the
availability of her involved marks. In response to the document requests, Applicant
responded that no “responsive and discoverable documents exist.” In response to the
interrogatory, Applicant asserted attorney-client privilege.
A party who has refused to produce information sought in a discovery request based on an
assertion of attorney-client privilege may not thereafter rely on the information as evidence
in its behalf in connection with a motion for summary judgment. See Presto Products Inc. v.
Nice-Pak Products Inc., 9 USPQ2d 1895, 1896 n.5 (TTAB 1988). In view of Applicant’s
refusal to identify her trademark clearance search in discovery based on an assertion of
attorney-client privilege, she may not rely on that search as evidence at any stage of this
proceeding. See Fed. R. Civ. P. 37(c)(1).
Applicant also refers in her brief in response to her registration of the domain name
walther.us in August 2013, and she submitted a printout of an excerpt from the website
www.networksolutions.com which indicates that Applicant’s attorney registered that
website name with www.godaddy.com on August 14, 2013. Opposers object to such
reference and submission on the ground that the domain name was not disclosed in
response to document request no. 10 and interrogatory no. 15, wherein Opposers sought
information and documents that support Applicant’s bona fide intent to use the involved
marks. Although Applicant did not disclose information and documents regarding the
website in response to discovery requests, she did not unequivocably refuse to produce such
information and documents. Accordingly, it would be unduly harsh to preclude Applicant
from relying on them in opposition to the motion for summary judgment. See Vignette Corp.
v. Marino, 77 USPQ2d 1408, 1410-11 (TTAB 2005). Therefore, we have considered
information and documents regarding that website, but note that it is entitled to minimal
probative weight. See Saul Zaentz Co. v. Bumb, 95 USPQ2d 1723, 1727-28 (TTAB 2010)
(registration of domain names without taking any steps to construct or operate websites
under any of those domain names insufficient to show a bona fide intent to use).

Opposition No. 91215976

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genuine dispute as to whether Applicant had a bona fide intent to use the marks on
the identified goods at the time of the filing of the applications. See Wet Seal, Inc.
supra. In view thereof, Opposers’ motion for summary judgment on their no bona
fide intent to use claim is hereby denied.
Regarding the motion for summary judgment on the Section 2(d) claim,
Opposers must establish that there is no genuine dispute that (1) they are either
prior users of their pleaded marks or that they own valid and subsisting
registrations for those marks; and (2) that contemporaneous use of the parties’
respective marks on their respective goods would be likely to cause confusion or
mistake or to deceive consumers. See King Candy Co. v. Eunice King's Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108, 111 (CCPA 1974); Hornblower & Weeks, Inc. v.
Hornblower & Weeks, Inc., 60 USPQ2d 1733, 1735 (TTAB 2001).
Opposers have submitted status and title copies of their pleaded registrations.
Therefore, there is no genuine dispute that priority is not an issue. See King Candy
Co., supra.
We will first decide the motion for summary judgment with regard to Applicant’s
word mark, considering the issue of likelihood of confusion in light of the relevant
du Pont factors. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973).
With respect to the factor of the similarity or dissimilarity of the marks, there is
no genuine dispute that Applicant’s word mark is in all respects identical to the
word mark in Umarex’s pleaded Registration Nos. 1120867 and 2909647. This
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factor weighs heavily in favor of Opposers. In fact, when marks are identical, there
need only be a “viable relationship” between the goods to find that there is a
likelihood of confusion. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB
2012); In re Thor Tech Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).
Because Opposers have submitted status and title copies of their pleaded
registrations, we look to the express wording of the identifications of goods in the
application and registrations for purposes of determining likelihood of confusion.
See Octocom Sys. Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). As
noted supra, the goods identified in the application for Applicant’s word mark are
“[j]ewellery and watches;” Umarex’s Registration No. 1120867 is for “hunting and
sport rifles, pistols, revolvers and shot guns;” and the goods identified in Walther’s
Registration No. 2909647 are “[t]oy weapons; toy replicas of weapons.” Where the
goods in an application or registration are broadly described and there are no
limitations in the identification of goods as to their nature, type, channels of trade
or classes of purchasers, we must presume that the scope of the application or
registration encompasses all goods of the nature and type described, that the
identified goods move in all channels of trade that would be normal for such goods,
and that the goods would be purchased by all potential customers. See In re
Elbaum, supra.

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Through the declaration of their attorney, Wesley Anderson, Opposers have
submitted printouts from third-party websites that show “personal defense
products” and jewelry and watches are sold by the same entity under the same
mark.12 Such printouts include:
(1) www.beretta.com, showing pistols, shotguns, air guns, air soft guns,
necklaces, bracelets, cuff links, earrings, and watches offered for sale under the
BERETTA mark (exhibit L);
(2) www.colt.com, showing pistols, belt buckles, and jewelry pins offered for sale
under the COLT mark (exhibit M);
(3) www.ruger.com, showing pistols and earrings offered for sale under the
RUGER mark (exhibit O);
(4) www.smith-wesson.com and www.amazon.com, showing pistols, watches, and
knives offered for sale under the SMITH & WESSON mark (exhibit P); and
(5) www.uzi.com, showing pistols, knives, submachine guns, and watches offered
for sale under the UZI mark (exhibit Q);
In addition, through the Anderson declaration, Opposers have submitted status
and title copies of valid and subsisting use-based third-party registrations which

12 Opposers also submitted a copy of use-based Registration No. 4195329 for the mark
SAAB in stylized form for goods and services in International Classes 7, 9, 12, 13, 14, 16,
17, 18, 22, 24, 25, 28, 35, 36, 37, 38, and 39, including “guns and rifles” in International
Class 13, and “horological and chronometric instruments” and “jewellery” in International
Class 14. Because this registration includes goods and services far removed from those at
issue in this proceeding -- such as “machine tools for maintenance and preparing material
within an airport, namely, metal cable wire for towing, hydraulic jacks,” “space vehicles for
the transport of persons and payload into and through outer space” and “intellectual
property consultancy” – it is of minimal probative value. See Hilson Research Inc. v. Soc. for
Human Resource Mgt., 27 USPQ2d 1423 (TTAB 1993).
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show that third parties have registered a single mark for the goods at issue. Such
registrations include the following:
(1) Registration No. 587116 for the mark BERETTA in typed form for “pistols,
shotguns, and parts thereof” in International Class 13, and Registration No.
1611180 for the mark BERETTA in typed form for “watches” in International Class
14 (exhibit S);
(2) Registration No. 1032950 for the mark COLT in stylized form for “tie
fasteners, cuff links, and buckles, all of which are made of precious metal” in
International Class 14; and “tie fasteners, cuff links, and buckles, all of which are
made of non-precious metal” in International Class 26, and Registration No.
1599500 for the mark COLT in the same stylized form for “pistols, revolvers, and
rifles” in International Class 13 (exhibit T); and
(3) Registration No. 53994 for the mark WINCHESTER in typed form for
“shotguns and rifles” in International Class 13 (exhibit X), and Registration No.
1558947 for the mark WINCHESTER in typed form for “watches” in International
Class 14 (exhibit X).
Third-party registrations may be used to suggest that the goods at issue are of a
kind that may emanate from a single source. See In re Infinity Broad. Corp., 60
USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d at
1785-86. Although three third-party registrations would not, alone, be sufficient to
demonstrate that firearms and jewelry are related goods, the registrations serve to
support the evidence of actual use shown by the webpages.
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Through the Anderson declaration, Opposers have also submitted printouts from
third-party websites that show “personal defense products” and jewelry and
watches are sold in the same online retail stores. Such printouts include:
(1) www.basspro.com, showing firearms and watches offered for sale at BASS
PRO SHOPS online retail stores (exhibit Y);
(2) www.cabelas.com, showing firearms, watches, and jewelry offered in the
CABELA’S online retail store (exhibit Z);
(3) www.gandermountain.com, showing firearms and watches offered in the
GANDER MOUNTAIN online retail store (exhibit AA); and
(4) www.gunbroker.com, showing firearms, watches, and lapel pins offered in the
GUNBROKER.COM online retail store (exhibit AB).
By the evidence submitted in support of the motion for summary judgment,
Opposers have met their initial burden of showing that Applicant’s jewelry and
watches and Umarex’s pistols are related goods. In particular, Opposers have
submitted evidence that certain third parties use their marks both on pistols and on
jewelry and watches. Further, Opposers have shown that such goods are sold in the
same trade channels, such as online retail sporting goods stores, online outdoor
equipment stores, and online gun equipment stores.
Based on the foregoing, that is, the identity of the marks, the relatedness of the
goods, and the overlapping trade channels, we find that Opposers have met their
initial burden of showing that there is no genuine dispute as to any material fact
and that they are entitled to entry of judgment as a matter of law. See Kellogg Co. v.
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Pack’em Enters. Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991) (there is
no reason that a single duPont factor may not be dispositive). Here, Opposers have
shown that three duPont factors favor a finding of likelihood of confusion.13
When the moving party’s motion is supported by evidence sufficient to indicate
that there is no genuine dispute of material fact, and that the moving party is
entitled to judgment, the burden shifts to the nonmoving party to demonstrate the
existence of specific genuinely-disputed facts that must be resolved at trial. The
nonmoving party may not rest on the mere allegations of its pleadings and
assertions of counsel, but must designate specific portions of the record or produce
additional evidence showing the existence of a genuine issue of material fact. In
general, to establish the existence of disputed facts requiring trial, the nonmoving
party “must point to an evidentiary conflict created on the record at least by a
counterstatement of facts set forth in detail in an affidavit by a knowledgeable
affiant.” Octocom Sys. Inc. v. Houston Computer Servs. Inc., 16 USPQ2d at 1786.
In response to the motion for summary judgment, Applicant essentially relies on
assertions of her attorney. Applicant contends that Opposers’ motion for summary

13 Opposers also assert that their marks are famous and therefore entitled to a broad scope
of protection. However, because we cannot find, on the basis of the evidence submitted by
Opposers, that they have established that there is no genuine dispute as to the fame of
their mark, for purposes of this motion we have treated the mark as not being famous; thus,
this factor is neutral in our analysis. Nonetheless, we need not determine that Opposers’
marks are famous to grant summary judgment on Opposers’ likelihood of confusion claim.
We also note Opposers’ argument that Applicant adopted her mark in bad faith because
she has been aware of Opposers’ marks since she was a child, when she saw the marks used
by her great-great-grandfather, Carl Walther. Although bad faith adoption can be
considered in determining likelihood of confusion, it is not a necessary element to proving
this ground. Therefore, for purposes of this motion, we do not treat Applicant’s adoption of
her mark as being in bad faith, and therefore this does not raise a genuine dispute of
material fact.
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judgment must fail because Opposers submitted arguments and evidence with
regard to only five of the thirteen factors set forth in In re E. I. du Pont de Nemours
& Co. Applicant’s position is incorrect. Only those relevant factors for which there is
evidence in the record must be considered. Id., 177 USPQ at 567-68; TMEP §
1207.01 (January 2015). Indeed, as noted above, a single du Pont factor can be
sufficient to warrant entry of summary judgment.
Although Applicant refers to third-party registrations for marks containing the
word WALTHER or its alleged English equivalent WALTER, Applicant did not
submit copies of any such registrations. Applicant’s list of such registrations is not
proper evidence of third-party registrations. See, e.g., In re Promo Ink, 78 USPQ2d
1301, 1304 (TTAB 2006); In re Dos Padres, Inc., 49 USPQ2d 1860, 1861 n.2 (TTAB
1998); TBMP § 1208.02. Rather, to make registrations of record, copies of the
registrations or the electronic equivalent thereof (i.e., printouts or electronic copies
of the registrations taken from the electronic database of the USPTO) must be
submitted. In re Ruffin Gaming, LLC, 66 USPQ2d 1924, 1925 n.3 (TTAB 2002); In
re Smith & Mehaffey, 31 USPQ2d 1531, 1532 n.3 (TTAB 1994); TMEP §
1207.01(d)(iii).
Applicant asserts that the parties’ goods “could not be more different,”
contending that the fact Colt, Remington, and Smith & Wesson sell watches and/or
jewelry is evidence of the “fame and public admiration” of those companies and not
of the relatedness of the parties’ goods. However, Applicant did not rebut Opposers’
evidence with any evidence of her own, such as webpages showing that other
Opposition No. 91215976

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firearm manufacturers do not also sell watches and/or jewelry on their websites, or
that these three third parties sell a wide variety of seemingly unrelated goods under
their “famous” marks. Further, Applicant’s unsupported assertion that the parties’
goods legally cannot travel in the same trade channels is directly contradicted by
the evidence of record. Accordingly, we find that Applicant has failed to raise a
genuine dispute as to any material fact with regard to Opposers’ likelihood of
confusion claim against the application to register Applicant’s word mark.
In view thereof, Opposers’ motion for summary judgment on the ground of
likelihood of confusion is granted with regard to Applicant’s word mark. Judgment
is hereby entered against Applicant and registration of Applicant’s word mark,
Application Serial No. 85965933, is refused.
With regard to Applicant’s design mark, however, Opposers’ identical mark is
Walther’s Registration No. 3038946 for “[t]oy weapons, namely, toy replicas of
weapons” in International Class 28. Although the design mark forms a portion of
Opposers’ pleaded WALTHER and design mark in Registration Nos. 303701,
2714985, and 2912154, the word portion of a mark, rather than any design portion,
is generally the dominant element in creating the commercial impression of a mark
because it is most likely to be impressed upon purchasers’ memories and to be used
in calling for the goods. See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156,
64 USPQ2d 1375 (Fed. Cir. 2002) (words are dominant portion of mark).
Accordingly, with respect to the issue of likelihood of confusion between Applicant’s
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18
design mark and Opposers’ WALTHER and design mark, we find that there is, at a
minimum, a genuine dispute as to the similarity or dissimilarity of the marks.
As for Walther’s Registration No. 3038946 for the identical mark to Applicant’s
design mark, it is for “[t]oy weapons, namely, toy replicas of weapons.” We note that
one entity owns use-based third-party registrations for the mark UZI, No. 3104546
for “toys, namely soft air gun replicas; toy guns,” and No. 3389977 for “watches.”
However, we cannot conclude, based on this single set of third-party registrations,
that Opposers have established that Walther’s identified “toy weapons, namely, toy
replicas of weapons” and watches are related goods. Accordingly, we find that
Opposers have failed to establish that there is no genuine dispute that the goods are
related. In view thereof, the motion for summary judgment is denied with regard to
Applicant’s design mark.
In sum, the motion for summary judgment is hereby granted with regard to the
likelihood of confusion claim against Applicant’s word mark, but is denied with
regard to the likelihood of confusion claim against Applicant’s design mark. It is
also denied with respect to the lack of a bona fide intent to use claim against both of
Applicant’s applications. Opposer is allowed until twenty days from the mailing
date of this order to inform the Board in writing if it wishes to pursue the no bona
fide intent to use ground and the dilution ground against Applicant’s word mark,
failing which this proceeding will go forward to trial against Applicant’s design
mark only, on the no bona fide intent to use, likelihood of confusion and dilution
grounds, on the following schedule.
Opposition No. 91215976

19
Plaintiff's Pretrial Disclosures Due 7/4/2015
Plaintiff's 30-day Trial Period Ends 8/18/2015
Defendant's Pretrial Disclosures Due 9/2/2015
Defendant's 30-day Trial Period Ends 10/17/2015
Plaintiff's Rebuttal Disclosures Due 11/1/2015
Plaintiff's 15-day Rebuttal Period Ends 12/1/2015

In each instance, a copy of the transcript of testimony, together with copies of
documentary exhibits, must be served on the adverse party within thirty days after
completion of the taking of testimony. Trademark Rule 2.125. Briefs shall be filed in
accordance with Trademark Rules 2.128(a) and (b). An oral hearing will be set only
upon request filed as provided by Trademark Rule 2.129. If either of the parties or
their attorneys should have a change of address, the Board should be so informed
promptly.