Gates-Mills, Inc.

Trademark Trial and Appeal Board

Mar 13, 2003

No. 76106266 (T.T.A.B. Mar. 13, 2003)

Paper No. 10
JQ
Mailed: 3/13/03
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Gates-Mills, Inc.
________
Serial No. 76/106,266
_______
Albert L. Schmeiser of Schmeiser, Olsen & Watts for
applicant.
Andrea D. Saunders, Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney).
_______
Before Quinn, Hohein and Bottorff, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application was filed by Gates-Mills, Inc. to
register the mark CAMO-TEK for “waterproof general utility
bag for hunting.”1
The Trademark Examining Attorney refused registration
on two bases, namely (i) applicant’s failure to comply with
1 Application Serial No. 76/106,266, filed August 9, 2000,
alleging a date of first use anywhere and a date of first use in
commerce of July 31, 2000. An amendment to the identification of
goods will be considered in this decision (see discussion,
infra).
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76/106,266
2
a requirement to amend the identification of goods to more
specifically identify them, and (ii) under Section 2(d) of
the Trademark Act on the ground that applicant’s mark, when
applied to applicant’s goods, so resembles the previously
registered mark TEK for “briefcases, pocketbooks, handbags,
purses and luggage, namely, traveling bags, tote bags,
carry-on bags, garment bags, overnight bags, and shoulder
bags”2 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs. An
oral hearing was not requested.
Identification of Goods
The Examining Attorney maintains in her final refusal
that the identification of goods is unacceptable because,
as presently worded, it identifies goods in multiple
classes. According to the Examining Attorney, the
identification would include “hunting boot bags” in
International Class 25, and “sportsman’s hunting bags” or
“hunter’s game bags” in International Class 18. Attached
to the final refusal is an electronic excerpt from the
Trademark ID Manual setting forth these three
identifications. The Examining Attorney stated that
2 Registration No. 2,049,498, issued April 1, 1997.
Ser No. 76/106,266
3
"applicant is advised to peruse the suggestions for an
acceptable amendment to the identification of goods.”
Applicant, in its brief (p. 12), contends that the
present identification is definite, but goes on to
indicate, however, that it “is more than willing to accept
the Examiner’s proposed description from an approved list,
namely, ‘sportsman’s hunting bags.’”
The Examining Attorney, in her brief, somewhat
surprisingly did not make any direct response to
applicant’s offer, but rather simply maintained that
“applicant did not amend the identification of goods.”
Applicant, in its reply brief, reiterated that
“applicant’s description is sufficient, though in the
alternative applicant would accept the Examiner’s
suggestion of “sportsman’s hunting bags.”
To the extent that the present identification may
include goods in at least two different classes, we are
inclined to accept applicant’s offer to amend the
identification of goods to one that is specifically set
forth in the Trademark ID Manual, and that is acceptable to
the Examining Attorney per her suggestion.
Accordingly, the proposed amendment of the
identification of goods to “sportsman’s hunting bags” is
approved and entered. This identification, therefore, is
Ser No. 76/106,266
4
the one we will use in our consideration of the likelihood
of confusion issue.
This portion of the appeal is dismissed as moot.
Likelihood of Confusion
Applicant contends that its mark CAMO-TEK and
registrant’s mark TEK have different commercial
impressions, with applicant’s having “the suggestion of a
hunting or outdoor item with an aspect of concealment”
while registrant’s makes no such suggestion. Applicant
also argues that the involved marks are weak and that
registrant’s mark is entitled to a narrow scope of
protection. In support of its argument, applicant
submitted third-party registrations of marks which include
the term “tek” or its phonetic equivalent “tech.”
As to the goods, applicant argues that they travel in
different channels of trade to different classes of
purchasers. In this connection, applicant asserts that
registrant’s goods comprise a standard line of luggage
whereas applicant’s goods are directed specifically to the
sporting or hunting market.
The Examining Attorney maintains that applicant’s and
registrant’s marks are similar in sound, appearance and
meaning. The Examining Attorney asserts that applicant has
adopted the entirety of registrant’s mark TEK and merely
Ser No. 76/106,266
5
added the descriptive and subordinate term “camo” to it to
form the mark CAMO-TEK. In support of this position, the
Examining Attorney submitted a dictionary listing of
“camo.” The Examining Attorney goes on to argue that the
goods are closely related, pointing to the Internet
evidence of certain websites offering for sale both travel
bags and bags for hunters. According to the Examining
Attorney, “[b]y adding the term CAMO to the registered
mark, it appears that the goods are merely an outdoor
and/or camouflaged version of the registrant’s pre-existing
line of goods.” (brief, p. 3).
Before turning to the merits of the appeal, we direct
our attention to an evidentiary matter bearing on
applicant’s argument that the cited mark is entitled to a
narrow scope of protection. During the prosecution of its
application (August 24, 2001 response), applicant made
reference to its search of the PTO’s database which,
according to applicant, revealed many third-party
registrations of TEK and TECH marks. Applicant
specifically referred to two of the registrations,
supplying the registration number, mark and goods, but
applicant failed to submit copies of the registrations.
The Examining Attorney, in the final refusal, considered
these two registrations as if properly made of record.
Ser No. 76/106,266
6
Attached to applicant’s appeal brief as “Exhibit A”
are copies of ten third-party registrations which include
TEK or TECH as part of the marks for luggage and various
bags. The registrations were retrieved from the Trademark
Electronic Search System (TESS). Two of the registrations,
namely Registration Nos. 1,946,888 and 2,015,930, were the
ones considered earlier by the Examining Attorney.
Applicant also submitted a copy of a registration (“Exhibit
B”), of which it claims ownership, for the mark CAMO-TEK
for gloves. In its reply brief, applicant also makes
reference to a Google search of the term “tek,” contending
that there are thousands of uses of “TEK” on the Internet,
and indicating that applicant “saves whole forests by not
including an Exhibit on point.”
The Examining Attorney has objected to the
registration evidence attached to the appeal brief, except
for the two registrations earlier made of record. The
basis of the objection is the untimeliness of the
submission, citing Trademark Rule 2.142(d).
Applicant argues that the registrations are matters of
public record and that the Board has discretion to consider
such evidence.
The Examining Attorney’s objection is well taken
inasmuch as eight of the third-party registrations and its
Ser No. 76/106,266
7
own registration were untimely submitted. Trademark Rule
2.142(d). Further, such registrations are not proper
subject matter for judicial notice. Beech Aircraft Corp.
v. Lightning Aircraft Co., 1 USPQ2d 1290 (TTAB 1986); and
Cities Service Co. v. WMF of America, Inc., 199 USPQ 493
(TTAB 1978).
Accordingly, of the registration evidence, only
Registration Nos. 1,946,888 and 2,015,930 have been
considered in reaching our decision.
We now turn to focus our attention on the merits. 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 or
dissimilarities between the marks and the similarities or
dissimilarities between the goods. Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976).
As shown by the dictionary evidence, the term “camo”
means “camouflage fabric or a garment made of it.” The
American Heritage Dictionary of the English Language (3rd
ed. 1992). The term “CAMO,” as applied to applicant’s
Ser No. 76/106,266
8
goods, is at least suggestive, if not merely descriptive of
sportsman’s hunting bags that would be made of camouflage
fabric. Applicant’s mark CAMO-TEK incorporates the cited
mark TEK in its entirety, and merely adds the subordinate
term “CAMO” to it. A subsequent user may not appropriate
the mark of another and by adding subordinate matter
thereto avoid a likelihood of confusion. The Wella Corp.
v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419
(CCPA 1977); In re Equitable Bancorporation, 229 USPQ 709
(TTAB 1986); In re Denisi, 225 USPQ 624 (TTAB 1985); Henry
I. Siegel Co., Inc. v. A & F Originals, Inc., 225 USPQ 626
(TTAB 1985); Gumpert Co., Inc. v. ITT Continental Baking
Co., 191 USPQ 409 (TTAB 1976); and Alberto-Culver Co. v.
Helene Curtis Industries, Inc., 167 USPQ 365 (TTAB 1970).
In urging that the marks are not similar, applicant
contends that the cited mark is weak. Applicant asserts
that the term “TEK” and its phonetic equivalent “TECH” are
suggestive and in widespread use. In assessing applicant’s
argument, we have taken into account the two third-party
registrations (TRIP-TEK for luggage and SHER-TEK for bags
for carrying sports equipment) that are of record.
To the extent that applicant is arguing that the
third-party registrations, like a dictionary definition,
show the suggestive meaning of “TEK,” we have considered
Ser No. 76/106,266
9
the registrations. See: Tektronix, Inc. v. Daktronics,
Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976) [although
third-party registrations are entitled to little weight on
the question of likelihood of confusion where there is no
evidence of actual use, they may be given some weight to
show the meaning of a mark in the same way that
dictionaries are used].
To the extent that the registrations are relied upon
to show widespread use, they are not probative in that
regard. Under du Pont, “[t]he number and nature of similar
marks in use on similar goods” is a factor that must be
considered in determining likelihood of confusion. In re
E.I. du Pont de Nemours & Co., supra at 567. Third-party
registrations, however, are given little weight when
evaluating likelihood of confusion. More significantly,
because third-party registrations are not evidence of
actual use of the marks which are the subjects thereof,
such evidence may not be given any weight in assessing the
strength of a mark in the marketplace. Olde Tyme Foods,
Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545
(Fed. Cir. 1992), citing AMF Inc. v. American Leisure
Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA
1973) [“The existence of [third-party] registrations is not
evidence of what happens in the market place or that
Ser No. 76/106,266
10
customers are familiar with them....”]. See: Smith Bros.
Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 42, 463
(CCPA 1973) [“in the absence of any evidence showing the
extent of use of any of such marks or whether any of them
are now in use, they [the third-party registrations]
provide no basis for saying that the marks so registered
have had, or may have, any effect at all on the public mind
so as to have a bearing on likelihood of confusion”].
After considering applicant’s arguments and evidence
relating thereto, we find that the term “TEK” in
applicant’s mark is somewhat suggestive of “technology” as
in “camouflage technology.” The term “TEK” per se, as in
the case of the cited mark, essentially is arbitrary as
applied to luggage. The registrations, therefore, do not
compel a different result in this case.3
Accordingly, when considered in their entireties, we
find that the marks at issue are similar in sound,
appearance, connotation and commercial impression. If
applied to similar goods, such marks would be likely to
confuse purchasers in the marketplace.
3 Even if the additional registrations were considered, they
would not be persuasive of a different result for the same
reasons expressed above.
Ser No. 76/106,266
11
Turning next to a comparison the goods, we start with
the premise that they need not be identical or even
competitive to support a holding of likelihood of
confusion. It is sufficient that the goods are related or
that conditions surrounding their marketing are such that
they are encountered by the same persons who, because of
the relatedness of the goods and the similarities between
the marks, would believe mistakenly that the goods
originate from or are in some way associated with the same
producer. In re International Telephone and Telegraph
Corp., 197 USPQ 910 (TTAB 1978).
In the present case, applicant’s goods are identified
as “sportsman’s hunting bags” while registrant’s goods
include “luggage, namely, traveling bags, tote bags, carry-
on bags, garment bags, overnight bags, and shoulder bags.”
Although the goods are specifically different, the goods
are “bags” and are commercially related. Applicant’s
identification is not limited to bags sold only in sporting
goods stores. We must deem the goods to move through all
appropriate trade channels, and to all relevant purchasers.
In re William Hodges & Co., Inc., 190 USPQ 47 (TTAB 1976).
These channels would include all places where travel bags
and sportsman’s hunting bags are sold, including department
Ser No. 76/106,266
12
stores and mass merchandisers; the consumers would include
the public at large.
In stating that the goods are commercially related, we
have considered the excerpts from five websites retrieved
from the Internet. In each instance, the same manufacturer
sells both travel bags as well as bags for hunters; and in
some instances, the respective goods would appear to be
sold under the same mark. Contrary to applicant’s
arguments, the evidence shows that the types of goods sold
by applicant and registrant travel in the same channels of
trade to the same classes of consumers.
Simply put, the distinctions in trade channels argued
by applicant are not reflected in the respective
identifications of goods and, further, are not borne out by
the record.
We find that consumers familiar with luggage sold
under the mark TEK would be likely to believe, upon
encountering applicant’s mark CAMO-TEK for sportsman’s
hunting bags, that applicant’s mark identifies a line of
camouflage hunting bags produced by registrant.
Lastly, to the extent that any of the points argued by
applicant cast doubt on our ultimate conclusion on the
issue of likelihood of confusion, we resolve that doubt, as
we must, in favor of the prior registrant. In re Hyper
Ser No. 76/106,266
13
Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed.
Cir. 1988); and In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: The appeal relative to the identification
of goods is dismissed as moot. The Section 2(d) likelihood
of confusion refusal to register is affirmed.