Harry Fox & Associates, Inc.

Trademark Trial and Appeal Board

Mar 15, 2013

No. 85292481 (T.T.A.B. Mar. 15, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
March 15, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Harry Fox & Associates, Inc.
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Serial No. 85292481
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Barry W. Sufrin of Drinker Biddle & Reath LLP for Harry Fox & Associates, Inc.

Emily K. Carlsen, Trademark Examining Attorney, Law Office 103 (Michael
Hamilton, Managing Attorney).
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Before Seeherman, Grendel, and Hightower, Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
On April 12, 2011, applicant applied to register the mark FOX TACTICAL, in
standard character form, claiming first use and first use in commerce in March
2011.1 Applicant disclaimed “TACTICAL” in response to a requirement by the
examining attorney, and the goods ultimately were identified as follows:
• “Cases for weapons in the nature of firearms for use by law
enforcement, military and security personnel; cases for personal
defense spray; firearm accessories, namely magazine pouches for use
by law enforcement, military and security personnel,” in International
Class 13; and

1 Application Serial No. 85292481.
Serial No. 85292481
2

• “Combat cases, field cases, duty cases, and modular cases for use by
law enforcement, military and security personnel, all in the nature of
carrying cases; tactical packs, assault packs, and field packs for use by
law enforcement, military and security personnel, all in the nature of
carrying cases; messenger bags and shoulder bags for use by law
enforcement, military and security personnel,” in International Class
18.
The examining attorney refused registration on the ground of a likelihood of
confusion pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), with
two composite marks, owned by the same entity, as follows:

for “luggage, backpacks, fanny packs, all purpose sport bags, tool packs sold empty
and umbrellas” in International Class 18,2 and

for “All purpose sport bags; All-purpose athletic bags; All-purpose carrying bags;
Athletic bags; Backpacks; Bags and holdalls for sports clothing; Carry-on bags;

2 Registration No. 2192660, issued September 29, 1998; Section 8 and 15 affidavits accepted
and acknowledged; renewed.
Serial No. 85292481
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Luggage; Roll bags; Small backpacks; Sports bags; Tool bags sold empty;
Umbrellas” in International Class 18.3
Applicant appealed, and briefing is complete.
Analysis
Our determination under Section 2(d) is based on an analysis of all probative
facts in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods. 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 the marks.”). We discuss each of the du Pont factors as to
which applicant or the examining attorney submitted argument or evidence. To the
extent that any other du Pont factors for which no evidence or argument was
presented may nonetheless be applicable, we treat them as neutral.
We turn first to the du Pont likelihood of confusion factor focusing on “‘the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation, and commercial impression.’” Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.

3 Registration No. 3309295, issued October 9, 2007.
Serial No. 85292481
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Cir. 2005) (quoting du Pont, 177 USPQ at 567). In comparing the marks, we are
mindful that the test is not whether the marks can be distinguished when subjected
to a side-by-side comparison, but rather whether the marks are sufficiently similar
in terms of their overall commercial impression so that confusion as to the source of
the goods offered under the respective marks is likely to result. San Fernando Elec.
Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA
1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991),
aff’d, No. 92-1086 (Fed. Cir. June 5, 1992). It is a well-established principle that, in
articulating reasons for reaching a conclusion on the issue of likelihood 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, provided the ultimate conclusion
rests on a consideration of the marks in their entireties. In re Nat’l Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Here, applicant seeks to register the mark FOX TACTICAL, while the cited
registrations are for composite marks each incorporating the stylized term FOX and
an image of a fox head. The word “FOX” is the only literal element of the two cited
registrations. We find that “FOX” is the dominant element in applicant’s mark,
given the highly descriptive significance of the disclaimed term “TACTICAL” in
association with applicant’s goods as established in the record. In support of her
requirement that applicant disclaim “TACTICAL,” the examining attorney made of
record dictionary definitions for this term that include “Of, relating to, used in, or
Serial No. 85292481
5

involving military or naval operations that are smaller, closer to base, and of less
long-term significance than strategic operations.”4
Applicant stated in its appeal brief that the term TACTICAL “suggests
products useful in military maneuvering.”5 On reply, applicant asserted for the first
time that “TACTICAL” is instead arbitrary.6 We are puzzled that applicant would
take this stance in its reply brief when (1) it accepted the required disclaimer of this
term during prosecution and did not do so in the alternative to preserve the issue
for appeal, thus acknowledging its descriptive nature, and (2) its own goods
description (“tactical packs”) and specimen (characterizing applicant as a
distributor of “tactical, enforcement & military gear”) clearly establish that the term
is highly descriptive for its goods. Applicant’s argument is not persuasive, and on
this record, we view the disclaimed word “TACTICAL” as a highly descriptive term.
It is well-settled that descriptive or generic matter may have less significance
in creating a mark’s commercial impression and little weight in likelihood of
confusion determinations. 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.’”) (quoting In re Nat’l Data
Corp., 224 USPQ at 752); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702

4 July 26, 2011 Office action, screenshot from The Free Dictionary
(www.thefreedictionary.com/tactical).
5 Appeal Brief at 3.
6 Reply Brief at 2.
Serial No. 85292481
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(TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s
commercial impression”).
In addition, a number of cases “reflect the principle that if a mark comprises
both a word and a design, the word is normally accorded greater weight because it
would be used by purchasers to request the goods or services.” M.C.I. Foods, Inc. v.
Brady Bunte, 96 USPQ2d 1544, 1551 (TTAB 2010). For this reason, we find that
the word “FOX” is also the dominant part of each of the cited registrations.
Moreover, the fox head design in each mark reinforces the significance of the term
“FOX.”
We also find that consumers who are familiar with the registrant’s marks are
likely to view applicant’s mark as a variation emphasizing the category of
applicant’s goods as “tactical” in nature, rather than indicating a separate source for
the goods. Both cited marks contain the word FOX, which would be pronounced
identically to the dominant word in applicant’s mark. Although the fox head
designs in the cited marks somewhat lessen the similarity of the marks in
appearance, they increase the similarity in meaning and commercial impression.
Applicant contends that the term FOX is an “extremely common mark” and
therefore a weak mark entitled to only a narrow scope of protection.7 In support of
its argument, applicant submitted printouts from the USPTO’s TESS database of 26

7 Appeal Brief at 4.
Serial No. 85292481
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third-party registrations consisting of or incorporating the term “FOX.”8 Of these
26 registrations, all cover unrelated goods and services9 except the following five:
• EMMA FOX for leather handbags (Registration No. 3783762);
• FOX RIVER for firearms, gun cases and locks, etc. (Registration
No. 3332659);
• FOX FILM ICONS for handbags and tote bags (Registration
No. 3482113);
• FOX CREEK for “retail store and online retail store services featuring
leather clothing, sunglasses, saddlebags, and accessories” (Registration
No. 3607983); and
• FOX FABRIQUE for “bags for sporting equipment and clothing namely
bags for automobile racing gear” (Registration No. 1422845).
First, we note that each of these marks makes a commercial impression less
similar to the cited registrations than does applicant’s mark. Only the last listed
mark employs the same construction, that is, “FOX” followed by a single term that
is at least descriptive of the identified goods. As the examining attorney notes,
however, even the mark FOX FABRIQUE is more readily distinguished from the
cited registrations by its use of alliteration and incorporation of a French term not
commonly used in the United States.10
Third-party registrations can be used in the manner of dictionary definitions,
to show that a term has a significance in a particular industry, and therefore that
the inclusion of the common element is not a sufficient basis on which to find that

8 Second Request for Reconsideration, February 22, 2012.
9 Third-party registrations for goods and services unrelated to those at issue are of limited
probative value. See Key Chems., Inc. v. Kelite Chems. Corp., 464 F.2d 1040, 175 USPQ 99,
101 (CCPA 1972); In re Thor Tech Inc., 90 USPQ2d 1634, 1639 (TTAB 2009).
10 Examiner’s brief at unnumbered p. 10.
Serial No. 85292481
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confusion is likely. Tektronix, Inc. v. Daktonics, Inc., 187 USPQ 588, 592 (TTAB
1975). However, the third-party registrations submitted by applicant do not show
that FOX marks have been adopted because FOX has a particular significance.
Rather, in two of the marks, FOX appears to be part of a geographic name, and in
one mark it appears to be a surname. We cannot conclude that, as used in
connection with the cited registrant’s goods, FOX has a suggestive significance such
that these registrations are entitled to a limited scope of protection.
To the extent that this evidence relates to du Pont factor six, the number and
nature of similar marks in use on similar goods, these third-party registrations are
not evidence that the marks therein have been used at all, let alone used so
extensively that consumers have become sufficiently conditioned by their usage that
they can distinguish between such marks on the basis of minor differences. The
probative value of third-party trademarks depends entirely on their usage. Palm
Bay Imps., Inc., 73 USPQ2d at 1693. Where, as here, the record includes no
evidence about the extent of third-party uses, the probative value of this evidence is
minimal. Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557,
1561 (Fed. Cir. 2001); see also Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200,
22 USPQ2d 1542, 1545 (Fed. Cir. 1992) (“As to strength of a mark, however,
registration evidence may not be given any weight.”). “The existence of [third-
party] registrations is not evidence of what happens in the market place or that
consumers are familiar with them nor should the existence on the register of
confusingly similar marks aid an applicant to register another likely to cause
Serial No. 85292481
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confusion, mistake or to deceive.” AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d
1403, 177 USPQ 268, 269 (CCPA 1973); see also In re Max Capital Group Ltd., 93
USPQ2d 1243, 1248 (TTAB 2010) (third-party registrations cannot justify
registration of another confusingly similar mark).
For all of the reasons discussed above, we find applicant’s mark FOX
TACTICAL to be highly similar to the cited marks for FOX and design in sound,
connotation, and overall commercial impression. Therefore, the first du Pont factor
supports a conclusion that confusion is likely.
We next address the similarity of the goods and their channels of trade, the
second and third du Pont factors, respectively. Applicant’s goods are restricted to
“use by law enforcement, military and security personnel,” while the goods
identified in the cited registrations contain no such limitation. Because the
identifications in the cited registrations contain no limitations, it is presumed that
they encompass all goods of the type described, that the goods move in all normal
channels of trade, and that they are available to all classes of purchasers. See
Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253,
1261 (Fed. Cir. 2011); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB
2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). We are bound by the
identification as written in the registration and cannot limit registrant’s goods,
channels of trade, or classes of customers to what any evidence shows them to be.
In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997).
Serial No. 85292481
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Applicant argues that its goods do not overlap with the goods in the cited
registrations, and that its “sophisticated consumers would not expect that goods like
the luggage and umbrellas in the cited registrations would come from the same
source as Applicant’s goods.”11 We note, however, that if the examining attorney is
able to show likelihood of confusion with respect to any of the goods in a single
class, the refusal must be affirmed as to the entire class of goods. Tuxedo Monopoly,
Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981);
Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB 2007).
The goods in both cited registrations include backpacks; cited Registration
No. 3309295 also covers “all-purpose carrying bags.” These goods are similar to
applicant’s carrying cases, messenger bags, and shoulder bags. Registrant’s goods,
moreover, may be used by law enforcement, military and security personnel.
In addition, the examining attorney submitted screenshots from websites
demonstrating that producers of tactical, law enforcement, and military gear of the
types identified by applicant in both Classes 13 and 18 also offer, under the same
marks, general purpose bags, backpacks, and luggage of the kinds identified in the
cited registrations.12 This evidence includes:
• 5.11 (www.511tactical.com) – military/tactical cases for carrying
firearms, magazine pouches, and pouches for personal defense spray;
general purpose luggage, backpacks, and bags
• Blackhawk (www.blackhawk.com) – military/tactical firearms cases,
magazine pouches, and pouches for personal defense spray; backpacks

11 Reply Brief at 5.
12 See October 4, 2011 final Office action.
Serial No. 85292481
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designed for tactical, military, and everyday use; general purpose
luggage and bags
• U.S. Tactical Supply (www.ustacticalsupply.com) – military/tactical
cases for carrying firearms, magazine pouches, and pouches for
personal defense spray; gym bags
This evidence establishes that bags and cases of the kind identified in the
application in both International Classes are related to the goods in the cited
registrations, that they travel through the same channels of trade, and that they
emanate from the same sources.
We find that the examining attorney has submitted persuasive evidence
establishing that the respective goods move in the same channels of trade and are
related such that source confusion is likely. In our likelihood of confusion analysis,
these findings under the second and third du Pont factors support a conclusion that
confusion is likely.
Turning to the final factor addressed by applicant, the fourth du Pont factor
considers the conditions under which and buyers to whom sales are made.
Applicant argues that consumers of its goods are “specialized professionals
(military, law enforcement, and security personnel) and as such are sophisticated
purchasers who will distinguish between the goods sold under the respective
marks.”13
Although the identified consumers indeed may be sophisticated with respect
to some goods and services, applicant makes no showing that they are sophisticated
with respect to its identified goods. In particular, applicant’s products include

13 Appeal Brief at 8.
Serial No. 85292481
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messenger bags, shoulder bags, and cases for personal defense spray, items that are
not technical in nature and therefore may be purchased without the exercise of
special care. Even assuming that applicant’s purchasers are sophisticated when it
comes to their buying decisions for these types of goods, it is settled that careful,
sophisticated purchasers are not immune from source confusion, especially in cases
such as the instant one involving similar marks and closely related goods. See
Cunningham, 55 USPQ2d at 1846; In re Research Trading Corp., 793 F.2d 1276,
230 USPQ 49, 50 (Fed. Cir. 1986).
We find that the similarities between the marks and the goods sold
thereunder outweigh any sophisticated purchasing decision. See HRL Assocs. Inc.
v. Weiss Assocs. Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff’d, 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks outweigh
sophisticated purchasers, careful purchasing decision, and expensive goods).
Therefore, we find that du Pont factor four is neutral.
Conclusion
We have carefully considered all the evidence of record as it pertains to the
relevant du Pont factors. We find that applicant’s mark FOX TACTICAL for its
identified goods in both classes is likely to cause confusion with each of the two cited
registered marks.
Decision: The examining attorney’s refusal to register applicant’s mark
under Section 2(d) of the Trademark Act is affirmed.