Kent Jamison Rodriguez

Trademark Trial and Appeal Board

Sep 15, 2017

No. 87020563 (T.T.A.B. Sep. 15, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 15, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Kent Jamison Rodriguez
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Serial No. 87020563
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Kent Jamison Rodriguez, appearing pro se.

David Yontef, Trademark Examining Attorney, Law Office 118,
Michael W. Baird, Managing Attorney.
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Before Wellington, Greenbaum and Gorowitz,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Kent Jamison Rodriguez (“Applicant”) seeks registration on the Principal Register
of the design mark:

for the following goods:
Baseball caps and hats; Camouflage jackets; Camouflage pants;
Camouflage shirts; Fishing waders; Head wear; Hooded sweat shirts;
Hunting jackets; Hunting pants; Hunting shirts; Long-sleeved shirts;
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Scarfs; Short-sleeved or long-sleeved t-shirts; Short-sleeved shirts; Sports
caps and hats; Sports caps and hats; Tee shirts in International Class 25.1

The Trademark Examining Attorney has refused registration of Applicant’s mark
on the ground of a likelihood of confusion under Section 2(d) of the Trademark Act,
15 U.S.C. §1052(d), in view of the registration for the following design mark:

for “belts, shirts, vests, and hats” in International Class 25.2 In addition, the
Examining Attorney refused registration on the basis that Applicant failed to comply
with requirements to properly amend the mark description of record and to properly
amend the identification of goods.
When the refusal was made final, Applicant appealed and filed two requests for
reconsideration. The Examining Attorney denied the requests and the appeal has
been briefed. For the following reasons, we affirm the likelihood of confusion refusal
and reverse the refusals based on Applicant’s failure to comply with the requirements
involving the description of the mark and identification of goods.
Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In

1 Application Serial No. 87020563 was filed on April 30, 2016, based on an allegation of a
bona fide intent to use the mark in commerce, under Trademark Act Section 1(b).
2 Registration Nos. 4258951 issued on December 11, 2012.
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re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). In any likelihood of confusion analysis, however, two key considerations are
the similarities between the marks and the similarities between the goods or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997). These and other relevant factors are discussed below.
Identity of Goods and Trade Channels
We first consider the du Pont factors involving the relatedness of goods and
channels of trade. It is settled that in making our determinations, we must look to
the goods as identified in the application vis-à-vis the goods listed in the cited
registration. See Octocom Sys., Inc. v. Houston Computers Servs., Inc., 918 F.2d 937,
16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Giovanni Food Co., 97 USPQ2d 1990,
1991 (TTAB 2011). In this case, the application and registration identify some of the
same goods. Specifically, both the application and the registration list “hats” and the
registration’s “shirts” encompasses all of the types of shirts listed in the application,
i.e., “camouflage shirts … long-sleeved shirts … short-sleeved or long-sleeved t-shirts
… short-sleeved shirts … [and] tee shirts.”3

3 We have only identified the goods that are in-part or legally identical. It is not necessary to
find a likelihood of confusion refusal with respect to all goods listed in the same class in the
identification of goods; rather, if confusion is likely with respect to any item, the entire class
is refused registration. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335,
209 USPQ 986, 988 (CCPA 1981).
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Because the involved goods are legally identical, at least in part, we must presume
that the channels of trade and classes of purchasers are the same for those same
goods. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1161 (Fed. Cir. 2014); In re Fat Boys Water Sports LLC, 118 USPQ2d
1511, 1518-19 (TTAB 2016); see also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d
1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this legal presumption
in determining likelihood of confusion).
Accordingly, with respect to the legally identical goods, the du Pont factors
involving the relatedness of the goods and established, likely to continue trade
channels weigh in favor of finding a likelihood of confusion.
Similarity of the Marks
We next consider 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. Cir.
2005) (quoting du Pont, 177 USPQ at 567). “The proper test is not a side-by-side
comparison of the marks, but instead whether the marks are sufficiently similar in
terms of their commercial impression such that persons who encounter the marks
would be likely to assume a connection between the parties.” Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(citation omitted). The focus is on the recollection of the average purchaser, who
normally retains a general rather than a specific impression of trademarks. In re C.H.
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Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015). In this case, because the goods
are clothing, the average purchaser is an ordinary consumer.
When, as here, marks appear on goods that are identical, “the degree of similarity
necessary to support a conclusion of likely confusion declines.” Century 21 Real Estate
Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992);
Jansen Enters. Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007).
Here, the two design marks are essentially the composition of two handguns
pointing downwards at an angle, creating a V-shaped space between them. The visual
similarity of the two marks is enhanced by the nearly identical spacing and
orientation of the two handguns. Applicant argues in his brief that “any consumer
can distinctively tell the marks are clearly different and would not have a problem
making a distinction between the 2 different logos.”4 Applicant particularly relies on
the presence of a “bull’s head” design in the registered mark – the handgun grips
forming the bull’s horns, the trigger guards creating the appearance of bull’s eyes and
the gun barrels forming the bull’s nose.5 We have considered this design element of
the registered mark but do not believe that it outweighs the mark’s overall strong
resemblance with Applicant’s mark. Moreover, we point out that Applicant’s mark,
too, may be viewed as representing the outline of the head of a bull or cow.
In terms of the commercial impressions or connotations of the marks, the two
handguns, in each mark, may be understood in the same manner – whether it

4 7 TTABVUE 3.
5 Indeed, the design in the registered mark is intentional and the mark is described as
“consist[ing] of two guns in the shape of a bulls head.”
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suggests gun advocacy or a relationship with target shooting or hunting. In the
context of the involved goods, apparel, consumers may believe Applicant’s and
Registrant’s clothing are aimed at handgun owners or for purposes of hunting. Again,
the “bull’s head” design in the registered mark does little to distinguish it from
Applicant’s mark because of the strong sense of similarity based on the presence of
two handguns positioned in roughly the same manner. We further note that there is
no evidence of others using a dual handgun design mark, either in connection with
apparel or otherwise.
In sum, we find the marks to be overall more similar than dissimilar. This du Pont
factor therefore weighs in favor of finding a likelihood of confusion.
Conclusion
Ultimately, in view of the in-part identity of the involved apparel goods, and their
trade channels, as well as the overall similarity of the marks, we conclude there is a
likelihood of confusion between Applicant’s applied-for design mark and the
registered design mark.
Requirement to Amend the Identification of Goods
In the first Office Action, the Examining Attorney advised Applicant that the
application’s identification of goods “includes a duplicate entry of the wording ‘sports
caps and hats’ and clarification is required.” He further advised Applicant that he
may either modify one of these two identical descriptions of goods such that it will no
longer be duplicative, or delete one entry. The Examining Attorney cited to
Trademark Rule 2.32(a)(6) and TMEP § 1402.01 (April 2017). The rule provides, in
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relevant part, that an application must contain a “list of the particular goods or
services on or in connection with which the applicant uses or intends to use the mark.”
The cited TMEP section does not specifically mention duplicate entries, but sets forth
general guidelines for identifications of goods and services, including:
A written application must specify the particular goods and/or services on
or in connection with which the applicant uses, or has a bona fide intention
to use, the mark in commerce. … To “specify” means to name in an explicit
manner. The identification should set forth common names, using
terminology that is generally understood. For products or services that do
not have common names, the applicant should use clear and succinct
language to describe or explain the item.

The requirement was made final and maintained in the Examining Attorney’s
denials of Applicant’s requests for reconsideration.6 Applicant did not address this
requirement – not in his responses to the Office Actions nor in his appeal brief.
Here, the Examining Attorney has made clear that the wording “sports caps and
hats” is acceptable by itself; the issue rather being whether a specified good can be
repeated in the same identification of goods. While it stands to reason that duplicate
entries of goods should be avoided and serve no purpose, we do not view a duplicate
entry to be a sufficient reason, by itself, to refuse registration of a mark. Accordingly,
we reverse the refusal to register Applicant’s mark on the ground that it contains a
duplicate entry in the identification of goods.
Requirement to Amend the Description of the Mark
In the application, as filed, the mark is described by Applicant as follows:
The mark consists of two solid handguns barrel to barrel aiming down,
with the hand grips facing outward.

6 See Office Actions issued on September 19, 2016, February 2, 2017, and March 10, 2017.
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In the first Office Action, the Examining Attorney Applicant advised Applicant
that he “should revise the mark description of record by more accurately describing
the design elements in the proposed mark,” pursuant to 37 C.F.R. § 2.37, and
suggested the following description “if accurate”:7
The mark consists of two shaded guns in a mirrored position whereby both
gun barrels face downward and the handgrips face opposite outward
directions.

The requirement was made final and maintained in the Examining Attorney’s
denials of Applicant’s requests for reconsideration.8 Applicant did not respond to this
requirement.
Trademark Rule 2.37 provides, in part, that “[a] description of the mark must be
included if the mark is not in standard characters.” TMEP § 808.02 further provides
that the description “should state clearly and accurately what the mark comprises,
and should not create a misleading impression by either positive statement or
omission.” The same TMEP section further provides:
However, an examining attorney may defer to the applicant’s phrasing of
a description, so long as the description is accurate and complete. For
example, if an element in a mark could reasonably be characterized in more
than one way, the examining attorney should accept the applicant’s
selection of one characterization over the other in the description.

In this case, we find Applicant’s description of the mark, as already set forth in
the application, to be “accurate and complete.” We also find little meaningful
difference between the description proposed by the Examining Attorney and that

7 Office Action issued on August 18, 2016.
8 See Office Actions issued on September 19, 2016, February 2, 2017, and March 10, 2017.
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already present in the application file. Accordingly, we reverse the refusal to register
based on this requirement.
Decision: The refusal to register Applicant’s design mark for is affirmed on
ground of likelihood of confusion. However, the refusals to register the mark based
on Applicant’s failure to comply with the requirements to properly amend the
identification of goods and to provide a more accurate description of the mark are
reversed.