Coyotes Ice, LLC

Trademark Trial and Appeal Board

Jan 12, 2016

EX (T.T.A.B. Jan. 12, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: January 12, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Coyotes Ice, LLC
_____

Serial Nos. 86135128 and 861351771
_____
Steven J. Laureanti of Jackson White, P.C.,
for Coyotes Ice, LLC.
Donald O. Johnson, Trademark Examining Attorney, Law Office 104,
Dayna Browne, Managing Attorney.
_____

Before Mermelstein, Shaw and Hightower,
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:
Coyotes Ice, LLC (“Applicant”) seeks registration on the Principal Register of the
marks COYOTES ICE SPORTS,2 in standard characters, and 3 for

1 Consolidated by order of the Board, August 5, 2015. Citations to the record are to Serial
No. 86135128, unless otherwise noted.
2 Application Serial No. 86135128 was filed on December 4, 2013, under Section 1(a), 15
U.S.C. § 1(a), based upon Applicant’s claim of first use anywhere and in commerce since at
least as early as January 15, 2000.
3 Application Serial No. 86135177 was filed on December 4, 2013, under Section 1(a), 15
U.S.C. § 1(a), based upon Applicant’s claim of first use anywhere and in commerce since at
least as early as October 8, 2013.
Serial Nos. 86135128 and 86135177
- 2 -
Retail sporting goods stores; Retail stores featuring hockey
and figure skating equipment, merchandise and novelties,
namely, hockey helmets, hockey sticks, hockey gloves, hockey
pads, hockey pants, hockey socks, hockey stakes [sic], hockey
apparel, hockey protective gear, hockey jerseys, hockey
masks, hockey novelty items, hockey bags, hockey pucks and
training aids, figure skating skates, figure skating apparel,
figure skating gloves, figure skating novelty items, figure
skating bags, in International Class 35.
Applicant has disclaimed the terms “ICE SPORTS” apart from the marks as
shown. Application Serial No. 86135177 claims the colors red, white and black as a
feature of the mark, and contains the following description:
The mark consists of the stylized word “COYOTES”, the
letters being black with a white outline and a red outline
around the white outline along the outside edges of all of the
letters and along the interior circles of the letters “c” and “o”.
The stylized words “ICE SPORTS” having black lettering
appears at the bottom right portion below the stylized word
“COYOTES,” beginning under the second letter “o” and
ending under the letter “s”.
The Trademark Examining Attorney refused registration under Section 2(d) of
the Trademark Act, 15 U.S.C. § 1052(d), because of a likelihood of confusion with
the marks in the following three U.S. Registrations, owned by two different entities:
• Reg. No. 3655451 for the mark W COYOTE, in the following stylized form,
, for “Retail sporting goods stores,” in International Class 35;4
• Reg. No. 3688377 for the mark W COYOTE OUTDOORS, in the following
stylized form, , for “On-line retail store services featuring outdoor
equipment and sport goods,” in International Class 35;5 and

4 Issued July 14, 2009.
Serial Nos. 86135128 and 86135177
- 3 -
• Reg. No. 4379914 for the mark RED COYOTE, and design, in the following
form, , for “Computerized on-line retail store services in the
field of running and fitness; On-line retail store services featuring shirts; t-
shirts; singlets; shorts; sports jackets; wind jackets; hats; visors; beanies; arm
warmers; Retail apparel stores; Retail sporting goods stores; Retail store
services featuring a wide variety of consumer goods of others; Retail clothing
stores,” in International Class 35.6

When the refusals were made final, Applicant appealed and requested
reconsideration. The Examining Attorney denied the requests for reconsideration,
and the appeals resumed. Upon the Examining Attorney’s request, these two
appeals were consolidated by order of the Board. The cases are fully briefed.
Analysis
Our determination of the issue of likelihood of confusion is based on an analysis
of all the probative facts in evidence relevant to the factors set forth in In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
any likelihood of confusion analysis, two key considerations are the similarities
between the goods or services and the similarities between the marks. 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

5 Issued September 29, 2009. The registration disclaims the term “OUTDOORS” apart from
the marks as shown.
6 Issued August 6, 2013. The registration makes no claim to color and contains the following
description: “The mark consists of the stylized wording ‘red coyote’ having a drawing of a
coyote positioned above the stylized wording.”
Serial Nos. 86135128 and 86135177
- 4 -
the marks.”). The relevant du Pont factors discussed in these cases are the
similarity of the marks, the similarity of the services, the number and nature of
similar marks in use in connection with similar services, and the absence of any
actual confusion among consumers.
A. The nature and similarity or dissimilarity of the services, the established,
likely-to-continue trade channels, and the classes of purchasers.

We first consider the similarity of the services. We base our evaluation on the
services as they are identified in the application and registrations. Stone Lion
Capital Partners, LP v. Lion Capital LLP, 76 F.3d 1317, 110 USPQ2d 1157, 1161
(Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937,
16 USPQ2d 1783, 1787 (Fed. Cir. 1990). (“The authority is legion that the question
of registrability of an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods, the particular channels of
trade or the class of purchasers to which the sales of goods are directed.”).
Applicant’s services include, inter alia, “retail sporting goods stores,” without
limitation or restriction as to goods or services, channels of trade, and classes of
consumers. These services are identical to the services of “retail sporting goods
stores” identified in Registrations Nos. 3655451 and 4379914. Similarly, Applicant’s
services of “retail sporting goods stores” encompass the more narrowly identified
services of “on-line retail store services featuring outdoor equipment and sport
goods,” identified in Registration No. 3688377, inasmuch as both services consist of
retail stores featuring “sporting goods” or “sports goods.”
Serial Nos. 86135128 and 86135177
- 5 -
Applicant argues that the respective services are different because its services
“are limited to featuring hockey and ice skating equipment” whereas “the cited
marks are used with goods and services related to online retail stores or
computerized on-line retail stores limited to outdoors equipment or fitness
services.”7 We disagree. The fact that some of Applicant’s other services are limited
to hockey and ice skating equipment and that some of Registrants’ other services
are limited to outdoors equipment or fitness services does not overcome the fact that
other retail store services identified in the applications and registrations are not so
limited. If there is likelihood of confusion with respect to any of Applicant’s
identified services the refusal of registration must be affirmed. It is not necessary
for the Examining Attorney to prove likelihood of confusion with respect to each of
the services identified in Applicant’s single-class applications. See Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988
(CCPA 1981). Here, both the applications and registrations identify the services of
“retail sporting goods stores” or legal equivalents.
Because the services identified in the application and the cited registrations are
in part identical and unrestricted, we must presume that the channels of trade and
classes of purchasers are also the same for those identical services. See Citigroup
Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed.
Cir. 2011; see also In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994)

7 Applicant’s Br. at 18, 7 TTABVUE 19.
Serial Nos. 86135128 and 86135177
- 6 -
(“Because the goods are legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of purchasers.”).
In view of the foregoing, the du Pont factors relating to the similarity of the
services, the channels of trade, and classes of purchasers all favor a finding of
likelihood of confusion.
B. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression.

Next, we consider the du Pont factor relating to the similarity of the marks. In
comparing the marks we must consider the appearance, sound, connotation and
commercial impression of the marks at issue. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005). The emphasis of our analysis must be on the recollection of the
average purchaser who normally retains a general, rather than specific, impression
of trademarks. Although we consider the mark as a whole, “in articulating reasons
for reaching a conclusion on the issue of confusion, there is nothing improper in
stating that, for rational reasons, more or less weight has been given to a particular
feature of a mark. . . .” In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985).
When, as here, the services at issue are identical, the degree of similarity
between the marks which is required to support a finding of likelihood of confusion
is less than if the services were not identical. In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1912 (Fed. Cir. 2012) (citing Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992)).
Serial Nos. 86135128 and 86135177
- 7 -
Applicant’s mark consists of the term COYOTES ICE SPORTS in standard
characters and in the stylized form shown above. The dominant element of
Applicant’s marks is the arbitrary term COYOTES. It is the first term in both
marks, and it is much larger than the term ICE SPORTS in the stylized mark. The
term “ICE SPORTS” is less dominant for several reasons: it follows the term
COYOTES; it has fewer syllables than COYOTES; and it is descriptive of
Applicant’s services which include retail stores “featuring hockey and figure skating
equipment, merchandise and novelties.” See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms,
this court has noted that the ‘descriptive component of a mark may be given little
weight in reaching a conclusion on the likelihood of confusion.’”).
The term COYOTE is also the dominant term in Registrants’ marks. In the W
COYOTE marks, the presence of the letter “W” suggests that COYOTE designates a
surname, but this suggestion does not change the connotation or commercial
impression of the term COYOTE in the marks, and it is insufficient to distinguish
the marks. See Big M. Inc. v. U.S. Shoe Corp., 228 USPQ 614 (TTAB 1985) (holding
MANDEE likely to cause confusion with T. H. MANDY). The W COYOTE marks
appear in a stylized script form, but this too does not alter the meaning or the
commercial impression formed by the term COYOTE. Moreover, Applicant’s mark
in Application Serial No. 86135128 appears in standard characters and, therefore,
may be used in any form including Registrant’s script. The term OUTDOORS in W
COYOTE OUTDOORS is less dominant because it is descriptive of the type of goods
Serial Nos. 86135128 and 86135177
- 8 -
sold by Registrant, namely, “outdoor equipment and sport goods.” Cunningham, 55
USPQ2d at 1846. Thus, when we compare the marks in their entireties, the
commercial impression of both Applicant’s marks and the W COYOTE marks is of a
coyote.
The mark RED COYOTE and design also creates the same general commercial
impression of a COYOTE. The term RED is subordinate to COYOTE and does not
suggest a different commercial impression. Rather, it suggests a particular type of
coyote. Similarly, the representation of a running coyote merely reinforces the
commercial impression of a coyote.8 Applicant’s use of a red border around the word
COYOTES in its stylized mark, although minimal, does contribute slightly to the
likelihood of confusion with Registrant’s RED COYOTE mark.
When we view the marks in their entireties, as we must, we find they have
strong similarities in appearance, sound, connotation and commercial impression.
In appearance and sound, all of the marks are dominated by the arbitrary term
COYOTE[S] while the remaining terms are subordinate. In connotation and
commercial impression, all of the marks share the same suggestion of an association
with a coyote. Although the marks at issue here do have some differences, they are
nonetheless highly similar, particularly when we consider that the average

8 In its briefs, Applicant mischaracterizes Registrant’s mark as containing a “running fox
logo.” Registrant’s mark purports to represent a coyote, not a fox. Registrant’s description of
its mark states “The mark consists of the stylized wording ‘red coyote’ having a drawing of a
coyote positioned above the stylized wording.” See Reg. No. 4379914, Office Action of March
18, 2014, p. 8. Although a coyote and a fox may look somewhat similar (especially given the
lack of detail in the prior registrant’s depiction), any doubt in this case is removed by the
wording RED COYOTE directly below the image in the registered mark. Customers
viewing the registered mark as a whole are unlikely to think of a fox when seeing the
silhouette of an animal with the word “coyote.”
Serial Nos. 86135128 and 86135177
- 9 -
consumer typically does not retain an exact recollection of marks. In re Appetito
Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987). Here, because the dominant
feature of the marks, COYOTE, is the same, the connotation and commercial
impressions of the marks as a whole are substantially similar, notwithstanding the
small differences between them. “[S]imilarity as to one or more of [the du Pont]
factors may be sufficient to support a finding that the marks are similar or
dissimilar.” Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1899
(Fed. Cir. 2000).
Applicant argues that the “shared ‘COYOTE’ element of the marks cited against
Appellant is diluted and weak in relation to sports or sports teams and thus should
not be given much weight in a likelihood of confusion analysis.”9 This is the sixth du
Pont factor, the number and nature of similar marks in use on similar goods (or
services). In support of its argument, Applicant submitted web site excerpts of
amateur sports teams using the name COYOTES:
Appellant submitted at least seven sports team names to the
record that use the common element “COYOTE” in their
names. . . . This evidence demonstrates that others who
appear to be unrelated to Registrants of the cited marks use
the “COYOTE” element in association with sports retailers,
who often sell sports team merchandise in connection with
those sports teams. Thus, the “COYOTE” element shared by
the cited marks has little power as a source identifier and
thus should be accorded only limited protection. Further, the
purchasing public has been exposed to the use of “COYOTE”
or “COYOTES” in connection with sports teams and their

9 Applicant’s Br. at 10, 7 TTABVUE 11.
Serial Nos. 86135128 and 86135177
- 10 -
sports equipment sold by sports retailers, and thus and [sic]
will not look to that portion of a mark as a source identifier.10
Applicant’s evidence is unpersuasive to show that COYOTES is weak for retail
sporting goods store services and, therefore, that consumers will look to slight
differences in the marks to distinguish the services. See Palm Bay Imports, 73
USPQ2d at 1693. The evidence shows only use of the term COYOTES as the name
of several local amateur sports teams. It does not show use of COYOTES in
connection with any retail sporting goods store services. Even assuming, arguendo,
that COYOTES is weak for sports teams, it does not follow that it is weak for retail
store services. Simply put, we fail to see how use of the term COYOTES by seven
local amateur sports teams will condition the public to look to slight differences in
the marks to distinguish Applicant’s and Registrants’ retail sporting goods stores.
Neither do we find that the third party uses of COYOTES demonstrates that the
term is in any way suggestive or descriptive of Applicant’s or Registrants’ services.
Cf. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671,
1675 (Fed. Cir. 2015) (“[a] real evidentiary value of third party registrations per se
is to show the sense in which . . . a mark is used in ordinary parlance.” Quoting 2 J.
THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:90
(4th ed. 2015)).
Accordingly, we find COYOTES ICE SPORTS, W COYOTE, W COYOTE
OUTDOORS, and RED COYOTE and design to be similar for purposes of the du

10 Id.
Serial Nos. 86135128 and 86135177
- 11 -
Pont factor relating to similarity in appearance, sound, connotation and commercial
impression. This favors a finding of likelihood of confusion.
C. Lack of Actual Confusion

Applicant argues that there is no evidence of any actual confusion. Specifically,
Applicant argues: “the Examining Attorney’s refusal to register Appellant’s
‘COYOTES ICE SPORTS’ mark . . . does not properly take into account the absence
of any actual confusion during the five years of concurrent use.”11
Uncorroborated statements of no known instances of actual confusion are of
little evidentiary value. Majestic Distilling, 65 USPQ2d at 1205. Thus, we cannot
conclude from the lack of instances of actual confusion that confusion is not likely to
occur. This du Pont factor is neutral.
D. Conclusion

When we consider the marks in their entireties, given the dominance of the
arbitrary term COYOTE[S] in the marks, we find it likely that consumers familiar
with any of Registrants’ retail sporting goods stores could presume that Applicant’s
retail sporting goods stores were a related enterprise, albeit focusing on ice sports.
Because the marks are similar, and the services are in part identical and travel in
the same trade channels, there is a likelihood of confusion between Applicant’s
COYOTES ICE SPORTS marks and the marks W COYOTE, W COYOTE
OUTDOORS, and RED COYOTE and design in the cited registrations.

11 Applicant’s Br. at 8, 7 TTABVUE 9.
Serial Nos. 86135128 and 86135177
- 12 -
Decision: The refusal to register Applicant’s mark under Section 2(d) of the
Lanham Act is affirmed.