Diane B. Coffey

Trademark Trial and Appeal Board

Apr 3, 2002

No. 76000318 (T.T.A.B. Apr. 3, 2002)

4/3/02

Paper No. 9
Bottorff

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Diane B. Coffey
________

Serial No. 76/000,318
_______

Taylor M. Davenport of Coats and Bennett, P.L.L.C. for
Diane B. Coffey.

Christopher L. Buongiorno, Trademark Examining Attorney,
Law Office 109 (Ronald R. Sussman, Managing Attorney).
_______

Before Cissel, Hairston and Bottorff, Administrative
Trademark Judges.

Opinion by Bottorff, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark RETRIEVER WORLD (in typed form; RETRIEVER has
been disclaimed) for “computerized on-line ordering
services, catalog services, and retail store services
featuring sporting goods, namely, hunting, fishing, and
animal training equipment,” in Class 35.1

1 Serial No. 76/000,318, filed March 14, 2000. The application
is based on use in commerce under Trademark Act Section 1(a), and
“1998” is alleged as the date of first use and date of first use
in commerce. The application also covers Class 42 services
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 76/000,318
2
The Trademark Examining Attorney has refused
registration under Trademark Act Section 2(d), 15 U.S.C.
§1052(d), on the ground that applicant’s mark is
confusingly similar to the mark RETRIEVER, previously
registered on the Principal Register for “bowfishing
reels.”2 When the refusal was made final, applicant filed
this appeal. Applicant and the Trademark Examining
Attorney have filed appeal briefs, but no oral hearing was
requested. We reverse the refusal to register.
Initially, we sustain the Trademark Examining
Attorney’s objection to the evidentiary materials applicant
submitted with her appeal brief. Those materials (which
purport to demonstrate the existence of third-party
registrations and Internet usage of marks which include the
word RETRIEVER) are untimely under Trademark Rule 2.142(d),
and we have given them no consideration. Likewise, we have
given no consideration to the mere listing of third-party

recited as “computer services, namely, designing and implementing
network web pages for others; hosting the web sites of others on
a computer server for a global computer network.” Registration
was not refused as to these Class 42 services, and they are not
involved in this appeal.

2 Registration No. 2,253,559, issued June 15, 1999. The
Trademark Examining Attorney initially issued a second Section
2(d) refusal based on Supplemental Register Registration No.
2,064,230, which is of the mark RETRIEVER TRAINER for “remote
control devices for training retrievers, namely, electronic
transmitters and receivers.” The Trademark Examining Attorney
withdrew this second refusal in his final office action.
Ser. No. 76/000,318
3
registrations and applications (involving marks which
include RETRIEVER) that applicant set forth in her response
to the first office action. See Weyerhauser Co. v. Katz,
24 USPQ2d 1230 (TTAB 1992); In re Hub Distributing, Inc.,
218 USPQ 284 (TTAB 1983); In re Duofold, Inc., 184 USPQ 638
(TTAB 1974).
The evidence of record includes: (1) the Trademark
Examining Attorney’s submission of the following
dictionary definition of “retriever”: “one that retrieves;
esp : a dog of any of several breeds (as a golden
retriever) having a heavy water-resistant coat and used
esp. for retrieving game”; (2) the Trademark Examining
Attorney’s submission of the following dictionary
definition of “world”:

1 a : the earthly state of human existence b :
life after death – used with a qualifier 2 : the earth with its inhabitants and
all things upon it 3 : individual course of
life : CAREER 4 : the inhabitants of the earth
: the human race 5 a : the concerns of the
earth and its affairs as distinguished from
heaven and the life to come b : secular
affairs 6 : the system of created things :
UNIVERSE 7 a : a division of or generation of
the inhabitants of the earth distinguished by
living together at the same place or at the
same time b : a distinctive
class of persons or their sphere of interest
8 : human society 9 : a part or section of the earth
that is a separate independent unit 10 : the
sphere or scene of one’s life and action
Ser. No. 76/000,318
4
11 : an
indefinite multitude or a great quantity or
distance
12 : the whole body of living persons : PUBLIC
13 :
KINGDOM 5 14 : a celestial body
(as a planet);

(3) the Trademark Examining Attorney’s submission of
printouts of four third-party use-based registrations which
cover both Class 28 fishing equipment and Class 35 services
in the field of fishing equipment;3 and a printout of the
above-referenced third-party Supplemental Register

3 Reg. No. 1,932,748, of the mark CAPT. HARRY’S for “fishing
supplies, namely rods and lures” and “retail stores featuring
fishing supplies, retail outlets featuring fishing supplies,
retail shops featuring fishing supplies, wholesale stores
featuring fishing supplies, and mail order catalog services
featuring fishing supplies”; Reg. No. 2,012,035, of the mark
NYMPH MASTER for, inter alia, “hand held fishing nets for
sportsmen, fishing fly boxes, fishing flies and tackle boxes” and
“mail order catalog services featuring fishing related goods”;
Reg. No. 2,306,481, of the mark CENTERLINE for “fishing
equipment, namely, fish attractant scents, feeder tubes for bait,
and fishing hook removers” and “mail order and mail order catalog
services featuring fishing equipment and instructional fishing
videos; wholesale distributorship services featuring fishing
equipment and instructional fishing videos; computerized on-line
retail services in the field of fishing equipment and
instructional fishing videos”; and Reg. No. 2,346,450, of the
mark THE SURFCASTER for “fishing equipment, namely, fishing rods,
fishing lures, fishing reels, fishing rod holders, fishing reel
bags, fishing gear bags, fly fishing stripping baskets, fly
lines, gaffs, gaff holders, fishing hooks, fishing scales,
fishing scalers, and fishing permit kits, namely kits containing
fish hook removers, fishing scales, tow cables, tire deflation
devices, tire pressure gauges, portable commodes, first aid kits,
fire extinguishers, flashlights, shovels, jacks, jack boards, and
carrying pouches” and “mail order catalog sale services featuring
fishing equipment.” Also of record are three additional third-
party registrations of marks for Class 35 services in the field
of fishing equipment; these three registrations do not include
Class 28 fishing equipment per se.
Ser. No. 76/000,318
5
registration of RETRIEVER TRAINER for “remote control
devices for training retrievers, namely, electronic
transmitters and receivers,” originally cited by the
Trademark Examining Attorney as a Section 2(d) bar to
registration of applicant’s mark (but later withdrawn).4
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
likelihood of confusion factors set forth in In re E.I. du
Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In considering the evidence of record on these
factors, we keep in mind that “[t]he 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.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
We begin our analysis by determining, under the first
du Pont factor, whether applicant’s mark and opposer’s
mark, when compared in their entireties in terms of
appearance, sound and connotation, are similar or
dissimilar in their overall commercial impressions. The
test is not whether the marks can be distinguished when

4 See supra at footnote 2.
Ser. No. 76/000,318
6
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in terms of their
overall commercial impression that confusion as to the
source of the goods offered under the respective marks is
likely to result. The focus is on the recollection of the
average purchaser, who normally retains a general rather an
a specific impression of trademarks. See Sealed Air Corp.
v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore,
although the marks at issue must be considered in their
entireties, it is well-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.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985).
In terms of appearance and sound, we find that
applicant’s mark RETRIEVER WORLD and registrant’s mark
RETRIEVER obviously are identical to the extent that they
both consist of or begin with the word RETRIEVER. However,
the marks look and sound dissimilar to the extent that
applicant’s mark includes the word WORLD while registrant’s
mark does not.
In terms of connotation, we find that the word
RETRIEVER in applicant’s mark, as applied to applicant’s
Ser. No. 76/000,318
7
services, would be understood to mean, or to refer to, the
sporting dogs known as “retrievers.” We base this finding
on the dictionary definition of “retriever” quoted above,
and on the fact that applicant’s services, as recited in
the application, include the marketing and sale of “animal
training equipment.” Clearly, it was this “sporting dog”
connotation of RETRIEVER as applied to applicant’s “animal
training equipment” that prompted the Trademark Examining
Attorney to require (and applicant to supply) the
disclaimer of RETRIEVER. Although applicant’s recited
services also include the sale of hunting gear and fishing
equipment, not just animal training equipment, we find that
purchasers viewing applicant’s mark in connection with
applicant’s recited services readily will understand the
word RETRIEVER as connoting the sporting dogs known as
“retrievers.”
Our finding that purchasers are likely to ascribe this
“sporting dog” connotation to the word RETRIEVER in
applicant’s mark is bolstered by a review of applicant’s
advertisements (submitted as specimens of use in the
application). See In re P. Ferrero & C.S.p.A., 479 F.2d
1395, 178 USPQ 167 (CCPA 1973)(specimens of use are
relevant to determination of meaning of mark). It appears
from applicant’s specimens that the primary focus of
Ser. No. 76/000,318
8
applicant’s business is the sale of the “animal training
equipment” listed in the recitation of services, and the
sale of dog training equipment in particular. Applicant’s
price list bears the heading “Quality Sporting Dog
Equipment,” and the products listed for sale appear to
consist almost exclusively of such dog training equipment.
Directly under the RETRIEVER WORLD mark at the top of the
advertisement are the words (in quotation marks and in
italic type) “Dedicated to Retrievers and Their Owners.”
Next, we find that the word WORLD, as used in
applicant’s mark and as applied to applicant’s services,
would be understood to have the meaning set forth in the
above-quoted dictionary definitions as entry number 7 b,
i.e., “a distinctive class of persons or their sphere of
interest,” and/or the meaning set forth as entry number 10,
i.e., “the sphere or scene of one’s life and action.” The
other listed definitions clearly are less pertinent, if not
also irrelevant, in the context of applicant’s mark as
applied to applicant’s services. Given the obvious mere
descriptiveness of the term RETRIEVER as applied to
applicant’s services, we find that the word WORLD plays a
significant and even dominant role in the commercial
impression created by applicant’s mark.
Ser. No. 76/000,318
9
Thus, considering applicant’s mark RETRIEVER WORLD in
its entirety as applied to applicant’s services, we find
that the mark connotes retriever sporting dogs and the
sphere of interests and activities pertaining to or shared
by such dogs and their owners.
Turning now to the cited registered mark RETRIEVER, we
find that its connotation, as applied to registrant’s
goods, clearly is dissimilar to the connotation of
applicant’s mark RETRIEVER WORLD. Registrant’s goods are
“bowfishing reels.” When considered in connection with
such goods, the mark RETRIEVER perhaps connotes or suggests
that the reel will allow the fisherman to “retrieve” fish,
or it might suggest some feature of the reel which allows
the fisherman’s line, or lure, to be “retrieved” easily.
Although the exact connotation of registrant’s mark as
applied to registrant’s goods is not apparent on this
record, it is clear that registrant’s mark, unlike
applicant’s mark, does not connote retriever sporting dogs
in any way. We find that this difference in the marks’
connotations clearly and significantly weighs against a
finding that the marks are confusingly similar. See, e.g.,
Champagne Louis Roederer S.A. v. Delicato Vineyards, 148
F.3d 1373, 47 USPQ2d 1459 (Fed. Cir. 1998)(CRYSTAL CREEK
for wine has different connotation than CRISTAL for
Ser. No. 76/000,318
10
champagne; marks found to be dissimilar); ConAgra Inc. v.
Saavedra, 4 USPQ2d 1245 (TTAB 1987)(PATIO for Mexican food
has different connotation than TAPATIO for Mexican food;
marks found to be dissimilar); In re Sears, Roebuck and
Co., 2 USPQ2d 1312 (TTAB 1987)(CROSS-OVER for bras has
different connotation than CROSSOVER for ladies’
sportswear; marks found to be dissimilar); In re British
Bulldog, Ltd., 224 USPQ 854 (TTAB 1984)(PLAYERS for shoes
has different connotation than PLAYERS for men’s underwear;
marks found to be dissimilar); and Taj Mahal Enterprises
Ltd. v. Trump, 745 F.Supp. 240, 16 USPQ2d 1577 (D.N.J.
1990)(TAJ MAHAL for Indian restaurant has different
connotation than TAJ MAHAL for Atlantic City hotel/casino;
marks found to be dissimilar).
Having considered the marks in their entireties in
terms of appearance, sound and connotation, we find (under
the first du Pont factor) that they are more dissimilar
than similar in their overall commercial impressions. The
mere presence of the word RETRIEVER in both marks does not
suffice to render the marks similar, especially in view of
the fact that the word presents a different meaning and
commercial impression in each mark, as applied to the
respective goods and services. The presence of the word
WORLD in applicant’s mark further distinguishes the
Ser. No. 76/000,318
11
appearance, sound and connotation of the two marks when
considered in their entireties.
We turn next to the second du Pont evidentiary factor,
(i.e., “the similarity or dissimilarity and nature of the
goods or services”). We find that applicant’s services,
which involve, inter alia, the online, catalog, and retail
sale of sporting goods, including fishing equipment, are
similar and related to registrant’s bowfishing reels. It
is settled that confusion is likely to result if the same
or similar marks are used for goods, on the one hand, and
for services involving those goods, on the other. See,
e.g., In re Hyper Shoppes (Ohio) Inc., 837 F.2d 463, 6
USPQ2d 1025 (Fed. Cir. 1988); see also TMEP §1207.01(a)(ii)
and cases cited therein. Applicant’s services involve the
sale of fishing equipment such as registrant’s, and we find
that the respective goods and services are related, at
least to that extent.
Moreover, although the four third-party registrations
made of record by the Trademark Examining Attorney5 are not
evidence that the marks shown therein are in commercial
use, or that the public is familiar with them, they
nevertheless are probative evidence to the extent that they

5 See supra at footnote 3.

Ser. No. 76/000,318
12
suggest that the goods or services identified therein
(i.e., fishing gear, and the services of selling fishing
gear) are of a type which may emanate from a single source
under a single mark. See In re Albert Trostel & Sons Co.,
29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck
Mustard Co., Inc., 6 USPQ2d 1467 (TTAB 1988).
There are no limitations or restrictions in either
applicant’s or registrant’s identification of goods and/or
services, and we therefore presume that those goods and
services are marketed in all normal trade channels for such
goods and services and to all normal classes of purchasers
of such goods and services. See In re Elbaum, 211 USPQ 639
(TTAB 1981). Given the above-noted relationship between
applicant’s services and registrant’s goods, we presume
that applicant’s and registrant’s trade channels and
purchasers overlap. In fact, in her appeal brief,
applicant asserts that she sells registrant’s RETRIEVER
bowfishing reels. This overlap in trade channels weighs in
favor of finding of likelihood of confusion under the third
du Pont factor, i.e., “the similarity or dissimilarity of
established, likely-to-continue trade channels.”
Applicant argues that the purchasers of her services
and registrant’s goods are knowledgeable about those goods
and services, and that because they are concerned about the
Ser. No. 76/000,318
13
quality and safety features of their hunting and fishing
equipment, they are selective and careful in making their
purchasing decisions. However, there is no evidence in the
record to support this contention. In any event, we are
not persuaded that purchasers of these goods and services
necessarily are so knowledgeable or careful that they would
be immune to source confusion arising from the use of
confusingly similar marks on or in connection with the
respective goods and services. We find that the fourth du
Pont factor, “the conditions under which and buyers to whom
sales are made, i.e., ‘impulse’ vs. careful, sophisticated
purchasing,” is neutral in this case, at best.
There is no evidence as to the fame of registrant’s
mark, and the fifth du Pont factor accordingly is neutral
in this case. There likewise is no evidence in the record
pertaining to the sixth du Pont factor, i.e., “the number
and nature of similar marks in use on similar goods [and
services].” As discussed above, applicant’s proffered
evidence of such third-party use was untimely-submitted and
has not been considered.6

6 Also, we are not persuaded by applicant’s “examination
consistency” argument, set forth in applicant’s brief under the
thirteenth “miscellaneous” du Pont factor. Even if applicant had
proven the existence on the register of a third party’s allegedly
confusingly similar mark (and she has not), the existence of such
a registration does not warrant registration of another
confusingly similar mark to applicant. See, e.g., AMF Inc. v.
Ser. No. 76/000,318
14
There is no evidence of any actual confusion (seventh
du Pont factor). However, under the eighth du Pont factor,
the absence of actual confusion is not dispositive nor
particularly significant in our likelihood of confusion
determination in this ex parte case. See, e.g., In re
Seiber & McIntyre, Inc., 192 USPQ 722 (TTAB 1976). There
is no evidence as to the extent of either applicant’s or
registrant’s use of their respective marks. Applicant
apparently has used her mark only since 1998. Applicant
asserts in her brief that she advertises and sells
registrant’s bowfishing reels on her website, but that she
“is unaware of exactly how long” that has occurred. We
cannot conclude from this record that there has been such
an opportunity for actual confusion to have occurred that
the absence thereof is surprising or legally significant.
We find that the seventh and eighth du Pont factors are
neutral in our likelihood of confusion analysis in this
case.
Under the ninth du Pont factor (“the variety of goods
on which a mark is or is not used”), it appears from this
record that registrant uses its RETRIEVER mark only on a

American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268
(CCPA 1973); Plus Products v. StarKist Foods, Inc., 220 USPQ 541
(TTAB 1983).

Ser. No. 76/000,318
15
single product, i.e., bowfishing reels. Applicant uses her
mark only in connection with the online, catalog and retail
store services recited in the application, and not as a
trademark for any “house brand” goods of her own.
With respect to the tenth du Pont factor (the “market
interface” between applicant and registrant), applicant
asserts in her brief that she has marketed registrant’s
bowfishing reels for some indeterminate amount of time
without any actual confusion, and that although there is no
formal agreement between the parties, she “believes that
Registrant is aware of Applicant and consents to
Applicant’s use of RETRIEVER WORLD.” However, there is no
consent agreement of record, nor any other evidence
establishing either that opposer consents to applicant’s
registration of the mark for the recited services, or that
opposer in fact believes that no confusion is likely to
result from applicant’s use of the mark in connection with
the recited services. We accordingly find that the tenth
du Pont factor does not aid applicant in this case. See
generally In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001).
In summary, we have carefully considered all of the
evidence of record pertaining to the du Pont likelihood of
confusion evidentiary factors, and we conclude that there
is no likelihood of confusion in this case. Applicant’s
Ser. No. 76/000,318
16
services and registrant’s goods (and the trade channels and
purchasers therefor) are related to the extent that
applicant’s services could involve, and apparently do
involve, the marketing of registrant’s goods, and those du
Pont factors weigh in favor of a finding of likelihood of
confusion. However, notwithstanding the relationship
between the respective goods and services, we conclude that
the marks are too dissimilar to warrant a finding of
likelihood of confusion, and that the first du Pont factor
accordingly is dispositive in this case. See, e.g.,
Champagne Louis Roederer S.A. v. Delicato Vineyards, supra;
Kellogg Co. v. Pack’em Enterprises, 951 F.2d 330, 21 USPQ2d
1142 (Fed. Cir. 1991). Specifically, because the
connotation and commercial impression of applicant’s mark
would be perceived, understood and recalled as having to do
primarily with retriever sporting dogs, and because
registrant’s mark as applied to registrant’s goods has no
such connotation or commercial impression, we find that
purchasers are not likely to assume that a source
connection exists as between applicant’s services and
registrant’s goods.
Decision: The refusal to register is reversed.