Kent-Gamebore Corp.

Trademark Trial and Appeal Board

May 10, 2001

No. 75536749 (T.T.A.B. May. 10, 2001)

5/10/2001 Paper No. 10
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Kent-Gamebore Corporation
________
Serial No. 75/536,749
_______
Susan M. Kornfield of Bodman, Longley & Dahling LLP for
Kent-Gamebore Corporation.
Richard A. Straser, Trademark Examining Attorney, Law
Office 114 (K. Margaret Le, Managing Attorney).
_______
Before Cissel, Seeherman and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Kent-Gamebore Corporation (a Delaware corporation) has
filed (on August 14, 1998) an application to register on
the Principal Register the mark IMPACT for “ammunition.”
Applicant claimed dates of first use and first use in
commerce of September 5, 1985.
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), in view of
the previously registered mark HI-IMPACT for “ammunition.”1
1 Registration No. 1,755,205, issued on the Principal Register on
March 2, 1993, Section 8 affidavit accepted, Section 15 affidavit
acknowledged. The claimed date of first use is June 26, 1991.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/536749
2
Applicant has appealed, and briefs have been filed.
Applicant did not request an oral hearing.
We affirm the refusal to register. In reaching this
conclusion, we have considered all of the relevant du Pont2
factors.
Both applicant’s and registrant’s goods are identified
in the respective application and registration as
“ammunition.” Thus, under the du Pont factor of “the
similarity or dissimilarity and nature of the goods or
services as described in an application or
registration...,” the goods involved herein are identical.
See Octocom Systems Inc. v. Houston Computer Services Inc.,
918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990).
Obviously, identical goods would travel through all
the same channels of trade to all the usual purchasers.
See In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994).
“When marks would appear on virtually identical goods
or services, the degree of similarity necessary to support
a conclusion of likely confusion declines.” Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
2 In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Ser. No. 75/536749
3
Turning to a consideration of the involved marks, we
agree with the Examining Attorney that the marks IMPACT and
HI-IMPACT are similar in sound, appearance and connotation,
resulting in similar commercial impressions. Specifically,
the marks look and sound alike due to the shared word
IMPACT, with the additional prefix “HI” being physically
connected by a hyphen to the dominant term IMPACT; and both
marks project a similar connotation, with the connotation
of HI-IMPACT suggesting greater penetration ammunition than
IMPACT ammunition. Even if purchasers note the differences
in the marks, they are likely to believe that applicant’s
mark is a version of registrant’s mark, adopted for
ammunition of lesser effect. Thus, under the du Pont
factor of “similarity or dissimilarity of the marks in
their entireties...,” the involved marks are similar.
Applicant does not contend that the marks or the
goods, as identified, are dissimilar. Applicant asserts,
however, that with an appropriate analysis of all the
relevant du Pont factors in this case, there is no
reasonable likelihood of confusion.3 Applicant specifically
asserts the following (brief, p. 5):
There are many factors to be considered
in determining whether or not marks are
3 Priority of use is not an issue in this ex-parte Section 2(d)
case.
Ser. No. 75/536749
4
confusingly similar, not just whether
the marks have a word in common. Some
of the factors to be considered in
determining whether or not marks are
confusingly similar include, but are
not limited to, the following:
(1) the conditions under which,
and buyers to whom, sales are made,
i.e., ‘impulse’ vs. careful,
sophisticated purchasing; (2) the
nature and extent of any actual
confusion; (3) the length of time
during, and conditions under which,
there has been concurrent use without
evidence of actual confusion; (4) the
extent to which applicant has a right
to exclude others from use of its mark
on its goods; (5) any other established
fact probative of the effect of use.
(Citations omitted).
Even if we assume, as argued by applicant, that the
purchasers of ammunition4 are sophisticated and/or at least
exercise great care in their buying decisions, they are
still likely to be confused as to the source of legally
identical goods when both are identified by very similar
marks. That is, even careful purchasers are not immune
from confusion. See Weiss Associates Inc. v. HRL
Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir.
1990); and Aries Systems Corp. v. World Book Inc., 23
USPQ2d 1742, footnote 17 (TTAB 1992). Given the close
similarities of the marks, although careful purchasers may
4 Applicant acknowledges that ammunition is purchased not only by
professionals, but also by members of the general public.
Ser. No. 75/536749
5
notice that one mark contains the prefix “HI-” and the
other does not, they are likely, as we stated previously,
to view IMPACT and HI-IMPACT as variant marks identifying a
single source, rather than to believe they are different
marks identifying ammunition from separate sources.
Applicant contends that it and its predecessor in
interest, 3-D Investment, Inc. (hereafter 3-D), and
registrant have concurrently used and have owned
registrations for their respective marks IMPACT and HI-
IMPACT, both for ammunition, for several years. According
to applicant, in about ten years of concurrent use, neither
applicant nor its predecessor in interest was ever made
aware of a single instance of actual confusion.
Applicant’s attorney stated during prosecution of the
application5 that applicant’s predecessor first adopted the
mark IMPACT for ammunition on September 5, 1985; that the
IMPACT line of ammunition was presented nationally at trade
shows in 1985 and appeared in 3-D’s 1985 catalog; that
sales doubled from $135,000 in 1985 to $385,000 in 1986;
that 3-D obtained a federal registration of the mark IMPACT
on June 30, 1992; that “thereafter, the Mark was used
5 We note for the record that applicant submitted no affidavit or
declaration from an officer of applicant corporation regarding
any of these matters, e.g., assignment of rights, nature and
extent of use.
Ser. No. 75/536749
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continuously by 3-D in association with ammunition
throughout the U.S.”; that since March 1998, when applicant
obtained the rights in the mark by assignment, “Applicant
continuously has used the Mark in association with
ammunition throughout the U.S. and Canada”; and that
applicant “advertises the Mark in twenty (20) different
magazines throughout the U.S. and Canada, and Applicant’s
gross sales of ammunition identified by the Mark exceeded
1.6 million dollars between October, 1999 and October,
2000” (brief, p. 2).
The problem with the foregoing is that applicant has
not provided specific information about its use of its
IMPACT mark on ammunition in the United States per se; for
example, there is no breakdown of applicant’s
advertisements or sales in the United States separate from
those in Canada. Thus, without information on the nature
and extent of applicant’s use of the mark in the United
States, we cannot conclude that there has been opportunity
for actual confusion. See In re Great Lakes Canning Inc.,
227 USPQ 483 (TTAB 1985).
Notably, the record does not include information about
the cost of the involved goods. Presumably, these goods
(the specimen of record is a box which holds ten shells)
are not extremely expensive, and in that circumstance, it
Ser. No. 75/536749
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is less likely that purchasers will complain about a
product. As a result, neither applicant nor registrant are
likely to receive telephone calls or letters from customers
or potential customers regarding instances of actual
confusion.
Moreover, in its reply brief (p. 4) applicant
explained as follows:
The word ‘ammunition’ is used to
describe a wide range of products.
Ammunition may mean handgun bullets
(used by police officers), shot gun
[sic] shells (used by bird hunters), or
rifle slugs (used by big game hunters),
to name a few. In fact, [applicant’s]
mark IMPACT is used in connection with
shotgun shells, while [registrant’s]
mark HI-IMPACT is used in connection
with rifle slugs.
These differences in the specific type of ammunition sold
by applicant and registrant may also account for the lack
of instances of actual confusion. In addition, there is no
information from the registrant about any actual confusion.
Based on this record we cannot ascribe significant
weight in applicant’s favor to the du Pont factors
regarding actual confusion.
Applicant has also pointed to a registration, No.
1,697,535, which issued June 30, 1992, to applicant’s
predecessor, 3-D, for the mark IMPACT for “ammunition.”
This registration was cancelled in 1999 under Section 8 of
Ser. No. 75/536749
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the Trademark Act. Thus, this registration coexisted with
the cited registration, which issued in 1993, for a period
of almost 6 years.
While it is true that applicant’s predecessor at one
time owned a registration, that registration has been
cancelled. There is no pattern of multiple registrations
owned by applicant and registrant issuing from the USPTO
over the course of many years from which we might infer
that registrant and applicant have a tacit agreement to
coexist. Rather, in this situation, both applicant’s
predecessor and registrant applied to register their marks
within a few months of each other in 1991, and
registrations ultimately issued to both parties. A Section
8 affidavit of use was not filed for applicant’s
predecessor’s registration and, therefore, it was
cancelled. We are left to speculate why registrant has not
taken action against applicant (or its predecessor). For
example, perhaps no action was taken due to the differences
in the actual specific types of ammunition sold under the
respective marks IMPACT (shotgun shells) and HI-IMPACT
(rifle slugs), or because applicant has a greater presence
in Canada than the United States, as explained previously
herein.
Ser. No. 75/536749
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Applicant’s argument that the behavior of both
applicant and registrant in not seeking to oppose the
other’s application, or cancel the other’s registration, or
sue the other in court “establishes that neither believes
there is a likelihood of confusion” (brief, p. 11) is not
persuasive for the reasons explained above. If the parties
believe there is no likelihood of confusion, applicant
could have sought registrant’s written consent to
registration of this mark. In fact, the Examining Attorney
invited applicant to submit “a valid and detailed consent
to register from the owner of the cited mark,” and he
stated that he would then entertain a request for
reconsideration (Final Office action, p. 2).6 Applicant
chose not to do so. If applicant had submitted such a
consent, the Examining Attorney and, if necessary, the
Board, would give great weight to such a written consent
from the cited registrant. See Bongrain International
(American) Corporation v. Delice de France Inc., 811 F.2d
1479, 1 USPQ2d 1775 (Fed. Cir. 1987); and In re E. I. du
Pont de Nemours & Co., supra.
6 Applicant’s assertion in its brief (p. 6) that the Examining
Attorney’s statement is an implicit concession that there is no
likelihood of confusion is disingenuous. The Examining Attorney
merely suggested that he would entertain a request for
reconsideration of the final refusal if applicant submitted
registrant’s written consent.
Ser. No. 75/536749
10
Applicant also argues that in registering the cited
mark one year after 3-D’s registration issued, the USPTO
was obligated under the law to treat the cited mark as the
newcomer and resolve any doubt regarding likelihood of
confusion in 3-D’s favor. Applicant’s recitation of the
law when there is doubt on the issue of likelihood of
confusion is correct, but inapposite. The issue before us
now is whether applicant’s mark IMPACT for ammunition is
likely to cause confusion with the cited mark HI-IMPACT for
ammunition, not whether the Examining Attorney who examined
the application which issued as the cited registration
acted appropriately, or whether he did or did not have any
doubt on the issue of likelihood of confusion.
Neither the Board, nor the Courts, are bound by prior
decisions of Trademark Examining Attorneys, and each case
must be decided on its own merits, on the basis of the
record therein. See In re Wilson, 57 USPQ2d 1863 (TTAB
2001). See also, In re Nett Designs Inc., __ F.3d __, 57
USPQ2d 1564 (Fed. Cir. 2001). Based on the record now
before us in this case, we have no doubt that applicant’s
use of IMPACT for ammunition is likely to cause confusion
with HI-IMPACT for identical goods.
We can only speculate as to why the cited registration
issued over applicant’s predecessor’s now-cancelled
Ser. No. 75/536749
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registration. In any event, even when one registration
issues over the other and both exist side-by-side for some
period of time (in this case about six years), that is one
element “which is placed in the hopper with other matters
which ordinarily are considered in resolving the question
of likelihood of confusion, but which is not in the least
determinative of said issue.” In re Trelleborgs
Gummifabriks Aktiebolag, 189 USPQ 106, at 107 (TTAB 1975).
In this case, we find that the factors of the identical
goods and highly similar marks far outweigh this point in
our consideration of likelihood of confusion as a whole.
Finally, applicant argues that its mark should be
passed to publication and the cited registrant will have an
opportunity to oppose if it chooses. This same argument
was made by the applicant in the case of In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997); and the Court responded as follows (at 1535):
Dixie argues alternatively that the PTO
should pass the mark to publication and
allow the registrant to oppose the
applicant’s mark, if it chooses. But
it is the duty of the PTO and this
court to determine whether there is a
likelihood of confusion between two
marks. (Citation omitted.) It is also
our duty ‘to afford rights to
registrants without constantly
subjecting them to the financial and
other burdens of opposition
proceedings.’ (Citations omitted.)
Ser. No. 75/536749
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Otherwise protecting their rights under
the Lanham Act would be an onerous
burden for registrants.
We have found that confusion is likely to occur in
this case. Accordingly, it is not appropriate to allow
applicant’s mark to be published.
Decision: The refusal to register under Section 2(d)
is affirmed.