EBSCO Industries, Inc.

Trademark Trial and Appeal Board

Sep 21, 2001

No. 75772432 (T.T.A.B. Sep. 21, 2001)

9/21/01 Paper No. 9

GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re EBSCO Industries, Inc.
________

Serial No. 75/772,432
_______

Donald H. Zarley of Zarley, McKee, Thomte, Voorhees & Sease for
EBSCO Industries, Inc.

Darlene D. Bullock, Trademark Examining Attorney, Law Office 111
(Craig Taylor, Managing Attorney).
_______

Before Hohein, Holtzman and Drost, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

EBSCO Industries, Inc. has filed an application to
register the mark "BIGHORN" for "muzzleloading firearms."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground
that applicant's mark, when applied to its goods, so resembles
the mark "BIG HORN," which is registered for "folding pocket

1 Ser. No. 75/772,432, filed on August 10, 1999, which alleges a date
of first use anywhere and first use in commerce of December 1, 1998.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/772,432
2
knives,"2 as to be likely to cause confusion, mistake or
deception.
Applicant has appealed. Briefs have been filed, but a
request for an oral hearing was not submitted. We affirm the
refusal to register.
The determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a
likelihood of confusion. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 568 (CCPA 1973). However, as
indicated in Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976), in any likelihood of
confusion analysis, two key considerations are the similarity of
the goods and the similarity of the marks.3 Although applicant
attempts to distinguish the respective marks by arguing that its
mark "looks different" from registrant's mark because the former
"is one word" while the latter "consists of ... separate words,"
the marks, when considered in their entireties, are identical in
sound and connotation, virtually the same in appearance, and
essentially identical in overall commercial impression. Since,

2 Reg. No. 1,166,177, issued on August 25, 1981, which sets forth a
date of first use anywhere and first use in commerce of September 28,
1979; renewed.
3 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in the marks."
Ser. No. 75/772,432
3
in the absence of evidence that such marks are weak and entitled
to only a limited scope of protection, it is plain that the
contemporaneous use of the marks at issue on similar or
otherwise closely related goods would be likely to cause
confusion, the focus of our inquiry is accordingly on the
similarities and dissimilarities in the respective goods.
Applicant, in this regard, asserts that "the goods of
the respective marks are different and are used for different
purposes." Applicant's principal argument, however, is that as
shown by three third-party registrations, marks containing the
terms "BIGHORN" or "BIG HORN" are weak in the field of "hunting
related goods and services." Such registrations, which are of
record, are for the mark "BIGHORN ANGLER WHERE THE LEGEND BEGAN"
and fish design for, in relevant part, "retail stores featuring
fishing and hunting equipment" and "arranging and conducting
guided fishing, hunting, hiking, camping, photography and film
making expeditions," the mark "BIGHORN EXPEDITIONS" and sheep
design ("EXPEDITIONS" disclaimed) for "organizing and conducting
wilderness river trips and hiking expeditions for others" and
the mark "BIG HORN" for "binoculars." According to applicant:
It can be inferred that the reason why
all of these marks incorporating "BIGHORN"
or "BIG HORN", all for hunting-related goods
and services have been allowed to co-
register is because of the differences in

Ser. No. 75/772,432
4
their respective goods and services.
Therefore, the mere fact that Applicant's
mark includes the word "BIGHORN" and is for
goods that are related to hunting is not a
proper basis upon which to assert that
confusion is likely. ....

Applicant concludes, therefore, that its mark and goods "are
distinguishable" and that "'BIGHORN' for muzzleloading firearms
is no more likely to be confused with 'BIG HORN' for folding
hunting knives than 'BIG HORN' for folding hunting knives is
likely to be confused with 'BIG HORN' for binoculars ...."
We agree with the Examining Attorney, however, that
the respective goods are closely related and that, inasmuch as
the marks "BIGHORN" and "BIG HORN" have not been demonstrated to
be weak in the hunting-related field, the contemporaneous use
thereof in connection with, respectively, muzzleloading firearms
and folding hunting knives is likely to cause confusion as to
the source or sponsorship of such goods. As the Examining
Attorney correctly points out, it is well settled that goods
need not be identical or even competitive in nature in order to
support a finding of likelihood of confusion. Instead, it is
sufficient that the goods are related in some manner and/or that
the circumstances surrounding their marketing are such that they
would be likely to be encountered by the same persons under
situations that would give rise, because of the marks employed
in connection therewith, to the mistaken belief that they
Ser. No. 75/772,432
5
originate from or are in some way associated with the same
entity or provider. See, e.g., Monsanto Co. v. Enviro-Chem
Corp., 199 USPQ 590, 595-96 (TTAB 1978) and In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
Here, as support for her position that applicant's and
registrant's goods are so closely related that their marketing
under essentially the same marks is likely to cause confusion,
the Examining Attorney has made of record four use-based third-
party registrations of marks which are registered for
"firearms," on the one hand, and "knives," including "hunting
knives," "folding knives" and/or "sport(s) knives," on the
other. While the third-party registrations are admittedly not
evidence that the different marks shown therein are in use or
that the public is familiar with them, they nevertheless have
some probative value to the extent that they serve to suggest
that the goods listed therein are of the kinds which may emanate
from a single source. See, e.g., In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993) and In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467, 1470 (TTAB 1988) at n. 6.
Moreover, as the Examining Attorney accurately observes, the
specimens of use for applicant's goods indicate that, among the
features for its muzzleloading firearms, are "[f]ully adjustable
metallic hunting sites." It is clear, therefore, that
applicant's goods, like registrant's folding hunting knives, are
Ser. No. 75/772,432
6
suitable for use in hunting and, as noted by the Examining
Attorney, "may be used in conjunction with one another."
In light of such evidence, we agree with the Examining
Attorney that applicant's muzzleloading firearms and
registrant's folding hunting knives are closely related goods
which would be sold to the same classes of purchasers, namely,
hunters, outdoorsmen and other sportsmen, through the same
channels of trade, including gun shops, sporting goods stores,
and retail outdoor outfitters. The Board, in the analogous case
of In re Precise Imports Corp., 193 USPQ 794, 796 (TTAB 1976),
in fact has so found, stating in support of its holding that
contemporaneous use of the mark "DEERSLAYER" is likely to cause
confusion that:
In this case, the goods involved are
pocket, hunting and sporting knives vis-à-
vis rifles and shotguns. There is no
question but that these products may be
found in the same stores such as sporting
goods stores and that they may be purchased
by the same purchasers. .... However, the
relationship between the products here
involved extends beyond common purchasers
and common trade channels. There is a
definite relationship between these goods in
that sportsmen engaged in hunting pursuits
would more than likely carry both a rifle or
shotgun and a hunting or sporting knife and
may well purchase both types of products at
the same time in preparation for their
trips. And if they were to encounter both
of these products under the same or similar
marks, it is difficult to perceive how
confusion as to the origin of these goods
could be avoided. ....
Ser. No. 75/772,432
7

While the Board in Precise Imports, supra, went on to
acknowledge that a "viable argument could be made" in the case
of where so many different entities have been shown to have used
and registered marks consisting of or including the same term
that "the trademark significance [there]of ... has been so
diminished by the multiple uses and registrations thereof that a
party's rights therein might be restricted to the specific goods
on which he has used and registered the mark," the Board found
that in the case of the "DEERSLAYER" mark that "there is nothing
in the record to disclose any proliferation of registrations in
this term in the sporting goods or related fields." Likewise,
we agree with the Examining Attorney that, in this case, the
record is insufficient to establish that marks consisting of or
including the terms "BIGHORN" or "BIG HORN" are weak in what
applicant characterizes as "the hunting-related" field. In
particular, we concur with the Examining Attorney that "[t]wo of
the [third-party] registrations presented by the applicant
contain additional wording, convey different commercial
impressions, and are therefore distinguishable from the cited
mark and the applicant's mark." While the Examining Attorney
also asserts that "[t]he remaining [third-party] registration
[for the mark] BIGHORN for binoculars is irrelevant because the
goods are not closely related," we note that there simply is no
Ser. No. 75/772,432
8
evidence to establish that binoculars bear the same definite
relationship to muzzleloading firearms or folding hunting knives
that the latter two products share. A single third-party
registration for the mark "BIGHORN," moreover, scarcely can be
said to constitute a proliferation of "BIGHORN" or "BIG HORN"
marks such that those marks must be regarded as weak and
therefore entitled to but a narrow scope of protection.
Furthermore, and in any event, the Examining Attorney
also properly points out with respect to the third-party
registrations upon which applicant relies that, as stated in AMF
Incorporated v. American Leisure Products, Inc., 474 F.2d 1403,
177 USPQ 268, 269 (CCPA 1973):
[L]ittle weight is to be given such
registrations in evaluating whether there is
likelihood of confusion. The existence of
these registration is not evidence of what
happens in the market place or that
customers are familiar with them nor should
the existence on the register of confusingly
similar marks aid an applicant to register
another likely to cause confusion, mistake
or to deceive.

Finally, as the Examining Attorney additionally observes, there
is nothing in the record which indicates that the marks
"BIGHORN" and "BIG HORN" are weak in the sense that they are
highly suggestive of the goods with which they are associated.
Such marks, instead, appear to be fanciful and hence strong
marks.
Ser. No. 75/772,432
9
We accordingly conclude that consumers and potential
customers, who are familiar or acquainted with registrant's "BIG
HORN" mark for its folding hunting knives, would be likely to
believe, upon encountering applicant's virtually identical
"BIGHORN" mark for its muzzleloading firearms, that such closely
related products emanate from, or are sponsored by or associated
with, the same source. See, e.g., In re Precise Imports Corp.,
supra.
Decision: The refusal under Section 2(d) is affirmed.