Olin Corporationv.Alexander Industries, Inc. d/b/a Alexander Arms

Trademark Trial and Appeal Board

Feb 24, 2012

No. 91197030 (T.T.A.B. Feb. 24, 2012)

MBA Mailed: February 24, 2012

Opposition No. 91197030

Olin Corporation

v.

Alexander Industries, Inc.
d/b/a Alexander Arms

Before Cataldo, Bergsman and Wolfson, Administrative
Trademark Judges.

By the Board:
This case now comes up for consideration of opposer’s
motion for summary judgment on its claims of priority and
likelihood of confusion and dilution, filed September 23,
2011.1 The motion is fully briefed.
Background
Applicant seeks a registration for the mark AA &
Design, shown below

1 Opposer’s request for an oral hearing on its motion, also
filed September 23, 2011, is denied, because the Board generally
does not conduct oral hearings on motions for summary judgment,
and we find no reason to do so in this case. See, TBMP § 502.03
(3d ed. 2011).
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT A
PRECEDENT OF THE
T.T.A.B.
Opposition No. 91197030
2
for ammunition, gun and rifle cases, rifles and related
products.2 In its notice of opposition, opposer alleges
prior use and registration of the standard character marks
AA for “ammunition and parts thereof” and DOUBLE A for “wads
for shot shells,” as well as the mark shown below

for “shot shells and wads for shot shells.”3 As grounds for
opposition, opposer alleges that use of applicant’s mark is
likely to cause confusion with, and dilute, opposer’s marks.
Opposer’s pleaded registrations are each over five years
old. In its answer, applicant denies the salient
allegations in the notice of opposition. On November 29,
2010, applicant filed an unconsented motion to amend its
involved application to add a disclaimer of the letters
“AA,” apart from the mark as shown, and in its order of
February 11, 2011, the Board deferred consideration of the
proposed amendment “until final decision.”

2 Application Serial No. 77795807, filed August 3, 2009,
alleging first use dates of May 6, 2001 for “Ammunition;
Ammunition casings; Ammunition for firearms; Cartridge cases;
Cartridge dies; Gun and rifle cases; Gun cartridges; Loading
tools for weapons, namely, reloading dies, re-cappers and loading
blocks; Rifle cartridges; Rifles; Rifles and parts thereof; Shell
casings; Small arms ammunition.” The application includes the
following description of the mark: “The mark consists of a shield
with crosshairs and a circle in the center, and the letters
‘AA’.”
3 Registration Nos. 1039225 (issued May 11, 1976), and Nos.
837744 and 837743 (both issued October 31, 1967), respectively.
Opposition No. 91197030
3
Opposer’s Motion and Applicant’s Response
Opposer attached to its notice of opposition copies of
the certificates of registration for each of its pleaded
registrations,4 and has introduced status and title copies
of its pleaded Registration Nos. 837743 and 1039225.
Affidavit of Karen M. Bearley, a paralegal with opposer’s
law firm, Exs. 7 and 9. Opposer also relies on the
Declaration of Greg Kosteck (“Kosteck Dec.”), its Director
of Marketing, who testifies that opposer “has continuously
used its AA marks throughout the United States since at
least as early as 1965,” and has made fairly extensive sales
under the mark, though the exact sales figures are
designated as “confidential.” Kosteck Dec. ¶¶ 3-4. In
addition, opposer introduces its 2010 Sub-Brand Recognition
Study Results, which are also confidential, but appear to
show that an appreciable number of the male hunters and
target shooters surveyed recognize the “AA sub-brand.” Id.
Ex. 24. Opposer relies on the Declaration of Vicki Schrimpf
(“Schrimpf Dec.”), its Manager of Licensed Products, who
testifies that opposer’s marks are used “in national print
and internet advertising campaigns,” and that opposer’s

4 The registration certificates are not printouts of Office
records showing the current status and title of opposer’s pleaded
registrations. See Trademark Rule 2.122(d)(1). However, in its
answer, applicant admits that opposer “is shown as the owner” of
its pleaded registrations, and applicant has not counterclaimed
to cancel any of them.

Opposition No. 91197030
4
products are sold in a number of retail outlets. Shrimpf
Dec. ¶¶ 4, 8. Based on this evidence, opposer argues that
its mark is “famous” and “strong.” Opposer further argues
that the parties’ marks create similar overall commercial
impressions, including because the “literal portion” of
applicant’s mark “predominates” over the design elements
thereof, and that the parties’ goods are similar or
identical, and travel in the same channels of trade.
In response, applicant relies on the Declaration of
William Alexander (“Alexander Dec.”), its founder, Vice
President and Chief Technical Officer, who testifies that
although he was aware of opposer’s “Winchester AA target
shotgun shells” at the time applicant adopted its mark, the
two “A”s in applicant’s involved mark are “representative
of” the name under which applicant does business, Alexander
Arms. Alexander Dec. ¶¶ 9-10. Although applicant’s
customers sometimes “abbreviate Alexander Arms as ‘AA,’”
applicant itself does “not promote the use of the letters
‘AA’ as a brand or way of referring to our company.” Id.
¶ 11. Furthermore, while applicant has used its involved
mark for over 10 years, it is unaware of any actual
confusion between the parties’ marks. Id. ¶¶ 16, 20. In
any event, applicant argues that the parties’ marks create
different overall commercial impressions, especially as
encountered by “consumers in the marketplace,” and
Opposition No. 91197030
5
similarly, that while both parties offer ammunition,
applicant’s ammunition is aimed at a “niche” market and the
parties’ ammunition products are therefore not in fact
competitive, and travel in different channels of trade.
Applicant concedes, however, that it sells its products
“through some of the same retailers that sell [opposer’s]
products.” Applicant’s Memorandum in Opposition to
Opposer’s Motion for Summary Judgment p. 12 (emphasis in
original). Finally, applicant argues that its customers
exercise care in purchasing ammunition, that while opposer’s
mark “may be famous within the firearms industry,” it is
only famous for a “single product offering,” and that the
letters AA are widely used in trademarks, including
trademarks in the firearms industry.
Decision
Summary judgment is only appropriate where there are no
genuine disputes as to any material facts, thus allowing the
case to be resolved as a matter of law. Fed. R. Civ. P.
56(a). The party seeking summary judgment bears the burden
of demonstrating the absence of any genuine dispute of
material fact, and that it is entitled to a judgment under
the applicable law. See Celotex Corp. v. Catrett, 477 U.S.
317, 323 (1986); Sweats Fashions, Inc. v. Pannill Knitting
Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1796 (Fed. Cir.
1987). A factual dispute is genuine if, on the evidence of
Opposition No. 91197030
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record, a reasonable fact finder could resolve the matter in
favor of the non-moving party. See Opryland USA Inc. v.
Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d
1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v.
Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed.
Cir. 1992).
The evidence on summary judgment must be viewed in a
light most favorable to the non-movant, and all justifiable
inferences are to be drawn in the non-movant’s favor.
Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987 F.2d 766, 25
USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, supra.
The Board may not resolve genuine disputes as to material
facts; it may only ascertain whether genuine disputes as to
material facts exist. See Lloyd’s Food Products, 25 USPQ2d
at 2029; Olde Tyme Foods, 22 USPQ2d at 1542.
Standing and Priority
There is no genuine dispute as to any material fact
relating to either standing or priority. Opposer’s pleaded
registrations establish both. See, e.g., Cunningham v.
Laser Golf Corp., 222 F.3d 943, 945, 55 USPQ2d 1842, 1844
(Fed. Cir. 2000) (party’s ownership of pleaded registration
establishes standing); Penguin Books Ltd. v. Eberhard, 48
USPQ2d 1280, 1286 (TTAB 1998) (citing King Candy Company v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108,
Opposition No. 91197030
7
110 (CCPA 1974)) (priority not at issue where opposer
introduces registration into evidence).
Likelihood of Confusion
“We determine likelihood of confusion by focusing on …
whether the purchasing public would mistakenly assume that
the applicant’s goods originate from the same source as, or
are associated with,” opposer’s goods. In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003). In considering the question on a motion
for summary judgment, we analyze all probative facts in
evidence which are relevant to the thirteen likelihood of
confusion factors set forth in In re E.I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), as well as
whether there are genuine disputes as to any of these
factors which would be material to a decision on the merits.
In this case, the parties have introduced evidence
concerning, and we therefore address herein, the strength of
the parties’ marks, the similarity between the parties’
goods and marks, the channels of trade for the parties’
goods, third party use of marks including AA and the lack of
actual confusion.
Turning first to the similarity of the parties’ goods
and channels of trade, we must compare the goods identified
in applicant’s application to those opposer offers under its
marks. Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d
Opposition No. 91197030
8
1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002). Here,
applicant seeks registration of its mark for, inter alia,
“ammunition,” and opposer uses its mark for ammunition and
owns a registration of AA for “ammunition and parts
thereof.” While there may be some differences between the
parties’ ammunition, in appearance, uses, or otherwise, the
fact remains that the parties’ goods are legally identical.
The authority is legion that the
question of registrability of an
applicant’s mark must be decided on the
basis of the identification of goods set
forth in the application, regardless of
what the record may reveal as to the
particular nature of an applicant’s
goods, the particular channels of trade
or the class of purchasers to which
sales of the goods are directed.

Octocom Systems, Inc. v. Houston Computers Services, Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Accordingly, not only is there no genuine dispute as to any
material fact regarding the similarity of the parties’ goods
(they are legally identical), but there is also no genuine
dispute of material fact regarding the channels of trade for
the parties’ goods or the classes of consumers. We must
presume that those too are the same. Id. (“Because
[applicant] seeks an unrestricted registration, such
evidence as there is of a specific class of customers did
not relate to a material fact.”) (emphasis in original); see
also, Hewlett-Packard, 62 USPQ2d at 1005; Genesco Inc. v.
Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part
Opposition No. 91197030
9
identical and in-part related nature of the parties’ goods,
and the lack of any restrictions in the identifications
thereof as to trade channels and purchasers, these clothing
items could be offered and sold to the same classes of
purchasers through the same channels of trade”); In re Smith
and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the
goods are legally identical, they must be presumed to travel
in the same channels of trade, and be sold to the same class
of purchasers”).
Turning next to the similarity or dissimilarity of the
parties’ marks, we note preliminarily that “in cases such as
this, where the applicant’s goods are identical (in part) to
the opposer’s goods, the degree of similarity between the
marks which is required to support a finding of likelihood
of confusion is less than it would be if the goods were not
identical.” Barbara’s Bakery, Inc. v. Landesman, 82 USPQ2d
1283, 1288 (TTAB 2007). Here, AA is the dominant portion of
the parties’ marks. Ceccato v. Manifattura Lane Gaetano
Marzotto & Figli S.p.A., 32 USPQ2d 1192, 1197 (TTAB 1994)
(“In this case, we think that it is appropriate to give
greater weight to the word portio[n] of the mark, because it
is by the words that purchasers will refer to the goods, and
the words, rather than the design feature or the stylized
lettering, will therefore have a greater impression on
them.”); see also, Jansen Enterprises, Inc. v. Rind, 85
Opposition No. 91197030
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USPQ2d 1104, 1109 (TTAB 2007). Indeed, consumers may simply
refer to each party’s ammunition as “AA.” In re Dakin’s
Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 1999). As
noted, applicant’s founder, Vice President and Chief
Technical Officer testified that applicant’s customers
sometimes “abbreviate Alexander Arms as ‘AA.’” Moreover, as
applicant states in its application, the design portion of
applicant’s mark “consists of a shield with crosshairs and a
circle in the center,” i.e. is related to ammunition and
firearms, and is therefore not distinctive for applicant’s
goods, and may be given little weight. Cunningham, 222 F.3d
at 943, 55 USPQ2d at 1846. For all of these reasons, after
careful consideration of the appearance, sound, connotation
and commercial impression of the parties’ marks, Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005),
we find no genuine dispute as to any material fact remaining
for trial on the issue of similarity of the marks. The
parties’ marks create similar overall commercial
impressions.
With respect to the strength of opposer’s marks, and
third party use of similar marks, opposer’s evidence
establishes that opposer’s sales have not been
insignificant, and applicant admits that opposer’s mark “may
be famous within the firearms industry.” Furthermore, with
Opposition No. 91197030
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respect to applicant’s purported evidence of third-party use
of similar marks, we find the evidence insufficient to
establish a genuine dispute as to any material fact.
Indeed, while applicant has introduced some evidence of
third-party marks containing AA which are registered or
approved for registration for related goods, applicant
“introduced no evidence that these trademarks were actually
used by third parties, that they were well promoted or that
they were recognized by consumers.” Palm Bay Imports, 396
F.3d at 1373, 73 USPQ2d at 1693 (citation omitted) (finding
that under such circumstances, the probative value of such
evidence is “minimal”). And the Internet printouts upon
which applicant relies which purport to show third party use
of AA for related goods are not persuasive, because standing
alone (as they do), they do not establish that any third
party actually sells or promotes ammunition or related
products or services under marks containing AA. In short,
there is no evidence that opposer’s marks are weak such that
they are not entitled to protection against a similar mark
used for legally identical goods, and therefore these
factors do not create a genuine dispute as to any material
fact.
As for the degree of care consumers are likely to
exercise, there is no evidence that purchasers of ammunition
or other firearms-related products would be educated about
Opposition No. 91197030
12
the products or discerning in their purchases. Furthermore,
“even sophisticated purchasers can be confused by very
similar marks.” In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1693 (Fed. Cir. 1993). In this case, in the
absence of any evidence thereof, the alleged sophistication
and care of the consumers does not create a genuine dispute
as to any material fact. As discussed, the parties’ goods
are legally identical and travel in the same channels of
trade, and the marks are similar enough that consumers would
be likely to view the marks as identifying a single source.
Finally, the absence of evidence of actual confusion
does not raise a genuine dispute as to any material fact.
“The test is likelihood of confusion not actual confusion …
It is unnecessary to show actual confusion in establishing
likelihood of confusion.” Weiss Associates,, 902 F.2d 1546,
14 USPQ2d 1842-43. If the lack of evidence of actual
confusion were enough to generally raise a genuine dispute,
summary judgment could almost never be granted in favor of a
plaintiff on a ground of likelihood of confusion, and that
is not the case. See, Apple Computer v. TVNET.net, Inc., 90
USPQ2d 1393, 1397 (TTAB 2007) (“applicant’s arguments
regarding the lack of actual confusion and its good faith
adoption of its VTUNES.NET mark do not raise genuine issues
of material fact that preclude entry of summary judgment”).
Opposition No. 91197030
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In sum, we find, based on the record herein and the
applicable law, that there is no genuine dispute as to any
material fact that opposer has established its standing;
that opposer has priority; and that the parties’ marks are
similar and the goods are related. Accordingly, opposer has
established its priority and likelihood of confusion as a
matter of law.
Applicant’s previously-deferred motion to amend its
involved application to add a disclaimer of AA is DENIED.
As opposer points out, applicant’s assertion that a
disclaimer “will negate Opposer’s claims of likelihood of
confusion and dilution of its marks” is incorrect. See,
Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d
1565, 218 USPQ 390, 395 (Fed. Cir. 1983) (“disclaimers are
not helpful in preventing likelihood of confusion in the
mind of the consumer, because he is unaware of their
existence”); see also, In re Shell Oil Co., 26 USPQ2d at
1688-89.
Conclusion
Because we find, based on the record herein and the
applicable law, that there is no genuine dispute as to any
material fact and that opposer has established its priority
and likelihood of confusion as a matter of law, opposer’s
motion for summary judgment is hereby GRANTED. Accordingly,
Opposition No. 91197030
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judgment is entered against applicant, the opposition is
sustained and registration to applicant is refused.5
***

5 Because the opposition is sustained on the ground of
priority and likelihood of confusion, there is no need to
consider whether opposer is entitled to judgment on its dilution
claim.