Omega S.A. (Omega AG) (Omega Ltd.)v.Alliant Techsystems Inc.

Trademark Trial and Appeal Board

Apr 29, 2015

OPP (T.T.A.B. Apr. 29, 2015)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Hearing Date: March 26, 2015 Mailed: April 29, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Omega S.A. (Omega AG) (Omega Ltd.)

v.

Alliant Techsystems Inc.
___

Opposition Nos. 91173785 and 91174067
to Application Serial Nos. 78548473 and 78550543
___

Jess M. Collen, Thomas P. Gulick and Kristen A. Mogavero of Collen IP for Omega
S.A. (Omega AG) (Omega Ltd.).

Stephen R. Baird, Bradley J. Walz and Timothy D. Sitzmann of Winthrop &
Weinstine, PA for Alliant Techsystems Inc.
______

Before Richey, Deputy Chief Administrative Trademark Judge and Wellington and
Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:

Alliant Techsystems Inc. (“Applicant”) seeks registration of the marks shown
below
Opposition Nos. 91173785 and 91174067

1 and 2
for
Tactical gear and tactical equipment for military, law
enforcement and defense applications, namely, protective
clothing; tactical vests, modular tactical vests, rapid entry
vests, mesh vests, armor bearing vests, rescue vests,
medical and paramedic vests, combination
ballistic/flotation vests, load-bearing vests; harnesses and
slings used for keeping clothing and tactical equipment in
place; bags for tactical gear and tactical equipment.

In its amended notices of opposition, Omega S.A. (“Opposer”) alleges prior
use of OMEGA and the Greek letter “Ω” for “clothing, watches, timing equipment,
sports accessories” as well as prior registration of OMEGA and variations thereof
for watches and timing equipment.3 As grounds for opposition, Opposer alleges that
use of Applicant’s marks would be likely to cause confusion with Opposer’s marks,
that Applicant was not using its marks for all of the goods originally identified in its
applications as of the filing date thereof, that Applicant abandoned use of its marks
for “some or all” of the goods identified in the applications, and fraud, in that
Applicant intended to deceive the Office when it falsely stated that it was using its
marks for all the goods originally identified in the applications, when it was not. In
1 Application Serial No. 78550543, the subject of Opposition No. 91174067, filed January
20, 2005 based on alleged first use dates of October 1995.
2 Application Serial No. 78548473, the subject of Opposition No. 91173785, filed January
17, 2005, based on alleged first use dates of January 11, 2005.
3 Registration Nos. 25036, 566370, 577415, 578041, 660541, 1290661 and 3146117, all for
watches and related products and services, and all more than five years old. Registration
No. 25036 is more than 120 years old.
2

Opposition Nos. 91173785 and 91174067

its answers, Applicant admits that it has not used its marks on some of the goods
originally identified in the applications, but otherwise denies the salient allegations
in the notices of opposition. Applicant also asserts the affirmative defenses of
“estoppel,” “waiver” and “unclean hands,” which it failed to explain, pursue or prove
at trial, and which are accordingly waived.4 Miller v. Miller, 105 USPQ2d 1615,
1616 n.3 (TTAB 2013); Baroness Small Estates Inc. v. American Wine Trade Inc.,
104 USPQ2d 1224, 1225 n.2 (TTAB 2012).
The Record and Evidentiary Objections
The record consists of the pleadings, the files of the involved applications,
and the following:
Opposer’s first Notice of Reliance (“Opposer’s NOR No. 1,”
TTAB Dkt. No. 74) on: its pleaded registrations;
Applicant’s responses to some of Opposer’s written
discovery requests; portions of Opposer’s discovery
deposition of Anthony Michael, Applicant’s “technical
services representative,” and “senior guy” who “wears
many hats,” and the exhibits thereto (“Michael Tr.”); a
variety of articles from newspapers, magazines and other
printed publications; and website printouts.

Applicant’s Notice of Reliance (“Applicant’s NOR,” TTAB
Dkt. No. 79) on third-party registrations; website
printouts; and Opposer’s responses to some of Applicant’s
written discovery requests.5
4 Under the heading “Affirmative Defenses,” Applicant also alleged that Opposer failed to
state claims upon which relief may be granted, but we need not consider this “defense” at
this stage because it was not the subject of a timely motion. See Alcatraz Media, Inc. v.
Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1753 n.6 (TTAB 2013), aff’d 565 Fed.
Appx. 900 (Fed. Cir. 2014) (mem.). Applicant’s remaining “Affirmative Defenses” are in fact
merely amplifications of Applicant’s denials.
5 Applicant’s NOR also included as Exhibits 813-832 copies of Applicant’s catalogs,
submitted as “printed publications.” However, in its June 13, 2014 order, the Board granted
Opposer’s motion to strike these materials as inadmissible under notice of reliance, and
they have not been considered.
3

Opposition Nos. 91173785 and 91174067

Opposer’s second notice of reliance (“Opposer’s NOR No.
2,” TTAB Dkt. No. 85) on: printouts from Office records
regarding third-party registrations; and Internet
printouts.

The Declaration of Peter Mulhern, a paralegal with
Opposer’s law firm and the exhibits thereto (“Mulhern
Dec.,” TTABVue Dkt. No. 86), submitted pursuant to the
parties’ stipulation filed January 31, 2014.

Opposer’s testimonial deposition of Gregory Swift, Swatch
Group U.S.’s Omega brand president for the United
States, and the exhibits thereto (“Swift Tr.,” TTABVue
Dkt. No. 89). According to Mr. Swift, “Swatch Group U.S.
manages [Opposer’s] warehousing and sort of back office
functions.” Swift Tr. at 11.

The Board’s June 13, 2014 order, which granted Opposer’s motion to strike
Applicant’s Exhibits 813-832, also denied Opposer’s motion to strike Applicant’s
Exhibits 722 and 723, but deferred consideration of the parties’ remaining
evidentiary objections, which we must now address.
Opposer “objects,” not to the admissibility of Applicant’s Exhibits 650-811
and 836-854, comprising Internet printouts, but instead to any reliance on those
materials to prove the truth of the matters asserted therein, because the printouts
are not supported by testimony or any other evidence. Similarly, Applicant “objects”
to Opposer’s NOR No. 1 Exhibits 12-75, comprised of printed publications and
Internet printouts the vast majority of which are unsupported by any substantive
testimony or other evidence, to the extent they are used to establish the truth of the
4

Opposition Nos. 91173785 and 91174067

matters asserted therein.6 In response to each other’s “objections,” both parties
indicate that they are not relying on the Internet printouts to establish the truth of
the matters asserted therein. Applicant’s Response to Opposer’s Objections to
Applicant’s Evidence and Applicant’s Objections to Opposer’s Evidence at 2;
Opposer’s Reply in Support of its Objections and Response to Applicant’s Objections
at 5. As there is therefore no dispute with respect to whether these exhibits may be
used to prove the truth of the matters asserted therein, the parties’ Internet
printouts will be considered only for what they show on their face. See also, Safer,
Inc. v. OMS Investments, Inc., 94 USPQ2d 1031, 1039 (TTAB 2007) (Internet
printouts admissible “for the limited purpose of demonstrating what the documents
show on their face”).
However, the parties’ positions about what, exactly, the Internet printouts
show on their face are inconsistent and self-serving. For example, Opposer argues
that Applicant’s website printouts cannot establish trademark use absent
accompanying testimony. Opposer’s Objections to Applicant’s Evidence at 3-4. At
the same time, however, Opposer argues that its website printouts and printed
publications can establish “the strength and notoriety of Opposer’s OMEGA Marks
among the relevant consuming public and trade,” even where these printouts and
publications are unsupported by any testimony. Opposer’s Reply in Support of its
Objections and Response to Applicant’s Objections at 5. For its part, Applicant
6 To the extent Opposer suggests that Exhibits 12-75 to its NOR No. 1 are supported by
Mr. Swift’s testimony, Opposer is for the most part incorrect. Mr. Swift only testified about
a few of these exhibits, the articles from International Watch, InSync and Golf Digest.
5

Opposition Nos. 91173785 and 91174067

argues that its website printouts, which are unsupported by testimony, may “show
that purchasers have been conditioned to expect different sources for specifically
different goods” offered under OMEGA and similar marks, while at the same time
arguing that Opposer’s website printouts and printed publications unsupported by
testimony do not establish the strength, fame or use of Opposer’s marks. Applicant’s
Response to Opposer’s Objections to Applicant’s Evidence and Applicant’s
Objections to Opposer’s Evidence at 2, 5.
There is no basis upon which to treat one party’s unsupported website
printouts and printed publications differently than the other’s, when both parties
offer qualitatively similar evidence for essentially the same purposes. In fact,
Opposer’s claim that its evidence establishes the “strength and notoriety” of its
marks is necessarily based on the assumption that the evidence establishes either
Opposer’s trademark use, or media or public recognition of Opposer’s trademark
use. Applicant’s claim that its evidence establishes purchaser recognition of third-
party uses of OMEGA marks is necessarily based on the assumption that the
evidence establishes third-party trademark use or public recognition thereof. We
find that these unsupported materials, regardless of which party introduced or
relies on them, are entitled to some evidentiary weight, as explained in more detail
below, but that these materials have inherent limitations which preclude them from
establishing all of the facts for which they were proffered.
Opposer objects to Applicant’s Exhibits 836-852 on another ground -- that
they consist of printouts from the Internet Archive’s (“archive.org”) “Wayback
6

Opposition Nos. 91173785 and 91174067

Machine,” which purportedly display how certain pages from Applicant’s website
appeared on certain dates. While these exhibits are compliant with Safer, and thus
admissible, Opposer’s point is well-taken. These printouts do not, as Applicant
contends in its notice of reliance, “demonstrate Applicant’s use in commerce of its
marks” at any particular time. Rather, they only show the results of a Wayback
Machine search, presumably conducted at Applicant’s direction. The reliability of
the search and the search’s results are among the many questions raised by this
evidence, which has additional limitations beyond those inherent in the other
unsupported website printouts and printed publications upon which the parties
rely.
Finally, Applicant objects to Exhibits 8-29, 33 and 59-63 to the Swift
deposition as hearsay. The objections to the admissibility of this evidence are
overruled, because these exhibits are comprised of printouts from Opposer’s own
websites, Opposer’s advertisements and articles which Opposer’s “PR agency”
provided to Opposer,7 and Mr. Swift sufficiently authenticated all of them.
However, to the extent that Opposer relies on these materials to establish any facts
about which Mr. Swift did not specifically testify based on his personal knowledge,
this evidence is entitled to no more weight than the parties’ other Internet printouts
and printed publications which are unsupported by testimony. See, Opposer’s Reply
7 Many of the articles and advertisements which Opposer introduced bear an added label or
sticker which indicates, among other things, the publication and date, product/subject and
“circulation.” At the oral hearing, Opposer represented that its public relations agency
added this information, but there is no testimony or other evidence of record indicating who
added this information or where it came from, much less supporting the accuracy of the
circulation figures included on the labels/stickers. Accordingly, the information added to the
articles and advertisements by way of label or sticker has been given no consideration.
7

Opposition Nos. 91173785 and 91174067

in Support of its Objections and Response to Applicant’s Objections at 5 (“To the
extent that Opposer’s witness, Gregory Swift testified regarding the contents of such
documents and other related matters, such testimony is admissible for the truth of
the matter asserted.”) (emphasis added).
Standing and Priority
Opposer’s pleaded registrations, made of record through Opposer’s NOR No.
1, establish its standing, as Opposer alleges likelihood of confusion. Cunningham v.
Laser Golf Corp., 222 F.3d 943, 945, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). And
because Applicant has not counterclaimed for cancellation of any of the
registrations, priority is not at issue in this proceeding with respect to the goods
identified in Opposer’s pleaded registrations, specifically watches and parts thereof,
watch-movements, watchcases, wrist watch bracelets, bands and straps, clocks,
chronometers and chronographs and parts thereof, “automatic recording machines
and apparatus for use in determining the results of sporting events” and retail store
services featuring watches and other timekeeping products and accessories. King
Candy Company v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110
(CCPA 1974); Opposer’s NOR No. 1 Exs. 1-7. Priority is at issue, however, with
respect to products not covered by Opposer’s pleaded registrations, as indicated
below in our discussion of the relationship between the parties’ 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
8

Opposition Nos. 91173785 and 91174067

forth in In 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, 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
(CCPA 1976). Opposer bears the burden of establishing that there is a likelihood of
confusion by a preponderance of the evidence. Cunningham, 222 F.3d at 943, 55
USPQ2d at 1848. We consider the likelihood of confusion factors about which the
parties introduced evidence, and treat the remaining factors as neutral.
Fame
When an opposer’s mark is famous, that fact “plays a ‘dominant role in the
process of balancing the DuPont factors,’ … and ‘[f]amous marks thus enjoy a wide
latitude of legal protection.’” Bose Corp. v. QSC Audio Products, Inc., 293 F.3d 1367,
63 USPQ2d 1303, 1305 (Fed. Cir. 2002) (quoting Recot, Inc. v. Benton, 214 F.3d
1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000)). It is settled that a strong mark
“casts a long shadow which competitors must avoid.” Kenner Parker Toys, Inc. v.
Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
In the absence of direct evidence of fame, “fame of a mark may be measured
indirectly, among other things, by the volume of sales and advertising expenditures
of the goods traveling under the mark, and by the length of time those indicia of
commercial awareness have been evident.” Bose, 293 F.3d at 1367, 63 USPQ2d at
1305. Other relevant factors include “length of use of the mark, market share,
9

Opposition Nos. 91173785 and 91174067

brand awareness, licensing activities, and variety of goods bearing the mark.”
Coach Services. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713,
1720 (Fed. Cir. 2012).
Opposer has continuously used the “OMEGA marks” for more than 100 years.
Swift Tr. at 41-42. Its oldest registration, for the mark shown below

for “watch-movements and watchcases” (Registration No. 25036), is over 120 years
old. Opposer’s NOR No. 1 Ex. 1.
The dollar figures evidencing Opposer’s sales success and advertising
expenses in the United States are designated “confidential,” and therefore will not
be discussed specifically herein. Suffice it to say that from 1999 through 2009
Opposer’s sales of OMEGA-branded products, and its related advertising expenses
from 2000-2009, have been significant. Swift Tr. at 43-51 and Exs. 30-31, 34-36.8
Furthermore, Opposer has received unsolicited media attention from and
promoted its OMEGA watches in a number of well-known publications. For
example:
OMEGA-branded watches have appeared in Allure, Elle
Décor, Men’s Vogue, Men’s Journal, New York Times Style
Magazine, Golf Digest, Men’s Fitness, Forbes Life, Esquire,
OK! Weekly, GQ, Ebony, Architectural Digest and O, The
8 Mr. Swift also testified about Opposer’s sales and advertising figures from 2010-2012,
which are as or more impressive than the figures from 1999-2009 for which there is
documentary support. Swift Tr. at 45, 51.
10

Opposition Nos. 91173785 and 91174067

Oprah Magazine. Opposer’s NOR No. 1 Exs. 12-16, 21, 23,
26, 27, 30, 40, 52, 58, 62, 69 and 70; Swift Tr. Ex. 63.

Opposer’s Olympic and other sponsorships have resulted
in its OMEGA mark being displayed in major
publications, including USA Today, Sports Illustrated,
Financial Times (U.S. edition) and The New York Times
Opposer’s NOR No. 1 Exs. 49, 53, 55; Swift Tr. Ex. 50.

A 2008 New York Times article, “The Timekeeper and the
Gold Medalist,” by Jeré Longman, discusses a controversy
surrounding Opposer’s simultaneous role as “official
timekeeper” of the Beijing Olympic Games and one of
swimmer Michael Phelps’ sponsors. Opposer’s NOR No. 1
Ex. 56.

A February 26, 2010 Wired article, “How to Clock an
Olympian,” concerns Opposer’s heavy involvement in
timing sports events. Id. Ex. 72.

A July 9, 2008 Reuters article, “No time for mistakes for
Omega at Olympics,” addresses the increasing complexity
of Opposer’s Olympic Games timekeeping services, from
1932 through 2008. Swift Tr. Ex. 11.

Opposer is PGA America’s official timekeeper. Id. at 77.

Opposer’s “ambassadors,” who “are appointed to represent
the image of the brand and its values,” and appear in
Opposer’s advertising, include George Clooney, Nicole
Kidman, Cindy Crawford, Daniel Craig, Buzz Aldrin,
Michael Phelps and Greg Norman. Id. at 78-79 and Ex.
62.

As a result of “product placement” relationships,
Opposer’s watches have been featured in James Bond
films and, in part because an OMEGA watch “was a
critical component in getting Apollo 13 safely back to
earth,” the movie “Apollo 13.” Id. at 60-63 and Exs. 43 and
44.

We recognize there are some deficiencies in Opposer’s evidence of fame. For
example, “[w]e have no context for opposer’s advertising and sales figures, such as
11

Opposition Nos. 91173785 and 91174067

how the figures for the [OMEGA watches] compare with … other brands of”
watches. Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826,
1831 (TTAB 2012); see also, Bose, 63 USPQ2d at 1309 (“some context in which to
place raw statistics is reasonable”). Similarly, there is no admissible evidence of the
circulation figures for the various publications cited, or attendance/viewing figures
for the movies in which Opposer’s products have appeared.
Furthermore, Applicant points out that the “Sports Timing” section of the
Omega Museum website (“omegamuseum.com”) calls into question whether
Opposer’s association with the Olympics is reliable evidence of fame. Indeed, the
website states:
Many of the Museum’s guests, though, are surprised to
see a broad selection of the equipment used to time some
of the world’s leading sporting events including, notably,
the Olympic Games. They tell us that while they have
noticed the discreet red OMEGA logo next to the
competitors’ times on their television screens, they
haven’t associated the unparalleled leader in
international sport timekeeping with one of the world’s
leading watch brands.

Opposer’s NOR No. 1 Ex. 71. While we agree that the Museum guests referenced in
this passage may not associate Opposer or its marks with the Olympics, the fact
remains that many consumers have been exposed to Opposer’s marks as a result of
its Olympics relationship, and nothing about this passage from the website,
standing alone, detracts from Opposer’s other evidence of fame.
12

Opposition Nos. 91173785 and 91174067

Notwithstanding the deficiencies in Opposer’s fame evidence,9 we do not
require evidence to recognize that The New York Times, USA Today, Sports
Illustrated, James Bond films, “Apollo 13” and Opposer’s celebrity endorsers are
well-known and popular. Considering the totality of Opposer’s fame evidence, we
find based on Opposer’s century-long use of OMEGA for watches, significant sales
success, intensive advertising, widespread unsolicited media attention and
association with prominent sports events and celebrities, that Opposer’s OMEGA
mark is famous, but only for watches. See, Inter Ikea Sys. B.V. v. Akea, LLC, 110
USPQ2d 1734, 1740 (TTAB 2014) (recognizing similar deficiencies in the opposer’s
evidence of fame, but nonetheless finding fame for the opposer’s primary service,
acknowledging that context and “comparative information may be difficult, if not
impossible to obtain, because companies may view such information as proprietary
and not disclose it publicly”).
The Marks
We must compare the parties’ 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). That is, we may not dissect
the marks into their various components. In re Nat’l Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co.,
9 The deficiencies compel us to advise parties attempting to prove fame to where possible
provide circulation/attendance/viewership figures in admissible format, as well as context
for sales and advertising figures and any other evidence necessary to support their claims.
13

Opposition Nos. 91173785 and 91174067

667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981). However, one feature of a mark
may be more significant than another, and it is not improper to give more weight to
the dominant feature of a mark in determining its commercial impression. In re
Nat’l. Data Corp., 224 USPQ at 751 (“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 consideration of the marks in their
entireties. Indeed, this type of analysis appears to be unavoidable.”).
Here, Opposer relies on its registrations of OMEGA marks in various
formats, including the following:
Mark Reg. No. Goods/Services

25036 Watch movements and
watch cases

566370 Watches and parts thereof

577415

Wrist watch bracelets,
bands and straps;

14

Opposition Nos. 91173785 and 91174067

578041 watches (including pocket
watches, wrist watches
with or without straps,
bands or bracelets,
pendant watches,
calendar watches, and
stopwatches) either stem-
wind or automatic; clocks;
chronometers,
chronographs, and parts
for all of the foregoing;

660541 automatic recording
machines and apparatus
for use in determining the
results of sporting events-
namely, electrical or
mechanical equipment for
determining elapsed times
in games or sporting
events comprising a
plurality of instruments
for placement at the
starting and finishing
lines of a racing course,
the same being
electrically operated and
connected to and actuated
by the starting gun or
other signal so as to
automatically provide a
permanent visible record
of the order in which one
or more contestants finish
the race and of the
corresponding elapsed
times

1290661
and
3146117
Watch cases;

retail store services
featuring watches, clocks,
horological and
chronometric instruments
and their accessories,
15

Opposition Nos. 91173785 and 91174067

jewelry

Like Opposer’s pleaded marks, Applicant’s marks also include the word “omega”
and the Greek letter “Ω,” with the “O” in OMEGA being formed by the Greek letter:

Applicant’s mark is obviously quite similar to Opposer’s
marks, especially the mark in Registration No. 577415, in which the Greek letter is
also the first character in the mark when read from left to right. It is of little
significance that Applicant’s marks are in lower case while Opposer’s are in upper
case letters, or that the “O” in Applicant’s mark is comprised of the Greek letter,
which Applicant’s and Opposer’s marks share. See Sigma Instruments, Inc. v. Sigma
Industries, Inc., 165 USPQ 654 (TTAB 1970), aff’d, 470 F.2d 1055, 176 USPQ 312
(CCPA 1973). And even if consumers do not perceive the Greek letter as an “O” in
Applicant’s marks, Applicant’s use of that Greek letter with “mega” results in
Applicant’s marks looking and sounding similar to Opposer’s mark.
While there is less similarity between Applicant’s mark and
Opposer’s marks, this mark is still more similar than dissimilar to Opposer’s marks.
Indeed, it begins with the Greek letter, and its first word may be perceived as
OMEGA or another word that looks and sounds similar to OMEGA. Consumers are
likely to focus on the first part of the parties’ marks. See Presto Products Inc. v.
16

Opposition Nos. 91173785 and 91174067

Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the first
part of a mark which is most likely to be impressed upon the mind of a purchaser
and remembered”). Furthermore, the word ELITE is laudatorily descriptive, and
thus entitled to less weight in our analysis, especially because it may be perceived
as another, perhaps higher quality, version of Opposer’s products.
In short, both of Applicant’s marks look and sound similar to Opposer’s
marks, and there is no basis upon which to distinguish the meaning of the parties’
marks.10 This factor weighs in favor of finding a likelihood of confusion.
The Number and Nature of Similar Marks in Use on Similar Goods
Applicant relies on a large number of third-party registrations for, and
Internet printouts allegedly establishing use of, OMEGA and similar marks for a
wide variety of goods and services. These include the third-party registrations
summarized in the following table, with those registrations for which Applicant
provides Internet evidence of actual use appearing in bold type:
Mark Reg. No. (goods/services) Owner/
Evidence of
Internet Use
OMEGA 4146781 (beverage glassware) Libbey
Glass/Yes
(Applicant’s
NOR Ex. 650)
OMEGA II 4031448 (fill for sleeping bags
…)
American
Recreation
Products,
Inc./Yes
(Applicant’s
10 Applicant’s claim that consumers perceive the Greek letter Ω in Applicant’s marks as
meaning “the end” is unsupported by any evidence, and the evidence that Applicant at least
intended this meaning is thin at best.
17

Opposition Nos. 91173785 and 91174067

NOR Ex. 653)

4089572 (building materials for use
only with photovoltaic and thermal
solar plants …)
Mounting
Systems
GmbH/No
OMEGA 3187397 (bicycles and parts …) Tien Hsin
Industries Co.,
Ltd./No
OMEGA 3759440 (orthopedic joint implants,
orthopedic instruments …)
Howmedica
Osteonics
Corp./No
OMEGA 3376036 (computer programs
for processing recorded seismic
data)
WesternGeco
LLC/Yes (Id. Ex.
656)

3317454 (olive oil and processed
green pigeon peas)
Omega Imports,
Inc./No
OMEGA 3550259 (scientific and
laboratory equipment, namely
pipetors)
Argos
Technologies,
Inc./Yes (Id. Ex.
658)
OMEGA 2984895 (plastic travel mugs) Williams
Industries,
Inc./No
OMEGA 3004028 (computer software
and hardware used for fitting
and manufacturing prosthetic
devices; making of prosthetic
devices to order)
The Ohio
Willow Wood
Company/Yes
(Id. Ex. 664)
OMEGA 3922050 (educational services,
namely, conducting
conferences, workshops,
professional trainings and
retreats in the fields of holistic
health, psychological
development, spiritual practice
and related yoga practice)
Omega Institute
for Holistic
Studies, Inc./Yes
(Id. Ex. 668)

(“wellness”
disclaimed)
3835002 (healthcare) Omega Wellness
Group/Yes (Id.
Ex. 670)
OMEGA 3760945 (orthodontic pliers and American
18

Opposition Nos. 91173785 and 91174067

instruments) Orthodontics
Corporation/Yes
(Id. Ex. 671)
OMEGA 3823793 (commercial furniture for
the restaurant, hotel, hospitality
and food services industries)
Michigan Tube
Swagers and
Fabricators,
Inc./No
OMEGA 3671932 (welding rods primarily of
metal for welding and brazing;
welding electrodes for welding and
brazing)
CHF Associates,
LLC/No
OMEGA CELLARS
(“cellars” disclaimed)
3583276 (wines) Omega Winery
Inc./Yes (Id. Ex.
675)
OMEGA MIX (“mix”
disclaimed)
3566210 (snack mix consisting
primarily of processed fruits
and nuts)
Fruit
Essentials,
Inc./Yes (Id. Ex.
676)

3580143 (packaging machines
for use in manufacturing and
packaging industries)
Omega Design
Corporation/Yes
(Id. Ex. 677)
OMEGA MUNCHIES
(“munchies”
disclaimed)
3674188 (processed nuts) Waymouth
Farms, Inc./Yes
(Id. Ex. 678)
OMEGA 3515964 (cigars) Tabacalera
Brands, Inc./No
OMEGA CHILL 3873632 (beverages, namely, water,
namely, fruit flavored water)
Dreamspan
Product
Innovation,
L.L.C./No

2964867 (Metal gates and fencing
…)
Fertek
Inc./3313045
No
OMEGA 3313045 (electric hair trimmers) Wahl Clipper
Corporation/No
OMEGA 2629324 (fishing reels) W.C.
Bradley/Zebco
Holdings,
Inc./Yes (Id. Ex.
690)
19

Opposition Nos. 91173785 and 91174067

OMEGA II 2423638 (protective head gear) Erb
Industries/Yes
(Id. Ex. 693)
OMEGA 2435579 (canned asparagus, canned
hearts of palm, canned fish and
canned seafood)
Omega Imports
Inc./No
OMEGA 2150239 (repair and
maintenance services of
machines, equipment and
instruments in the fields of
measuring, controlling and/or
regulating temperature,
humidity, pressure …
Manufacturing machines,
equipment and instruments to
the order and specification of
others in the fields of
measuring, controlling, and/or
regulating temperature,
humidity, pressure …)
Omega
Engineering,
Inc./Yes (Id. Ex.
694)
OMEGA.COM 2412722 (temperature sensitive
paints and lacquers in the
nature of a coating …
Crumpers, mechanically
operated hand-held punches …
PH instruments, namely, hand-
held controllers and panel
meters, mechanically operated
current probes …
Hand-held mechanically
operated heat guns …
Catalogs, handbooks and
technical reference textbooks
in the fields of measuring,
controlling and/or regulating
temperature, humidity,
pressure …
Online publications, catalogs
and technical and scientific
handbooks, textbooks … for
measuring, controlling and/or
regulating temperature,
humidity, pressure …)
Omega
Engineering
Inc./Yes (Id. Ex.
694)
20

Opposition Nos. 91173785 and 91174067

1932059 (surgical instruments,
namely, burs, drills and saws)
Omega Surgical
Instruments,
Inc./Yes (Id. Ex.
699)
OMEGA 1992580 (printed matter,
namely handbooks and catalogs
concerning scientific and
laboratory instrumentation
that control, measure and sense
variable parameters)
Omega
Engineering,
Inc./Yes (Id. Ex.
691)
OMEGA 1844118 (electric juice
extractors)
Omega
Products,
Inc./Yes (Id. Ex.
707)
OMEGA 1680084 (hand tools, namely,
screwdrivers, pliers, wire cutters,
knives, wrenches …
Scientific surveying, and measuring
instruments, namely, calipers, deal
calipers, inspection mirrors …)
Omega Products
Corp./No
OMEGA 1558052 (burial caskets) Batesville
Casket
Company,
Inc./Yes (Id. Ex.
709)
OMEGA WORLD
TRAVEL (“world
travel” disclaimed)
1503320 (travel agency services) Omega World
Travel, Inc./Yes
(Id. Ex. 714)
OMEGA II 1525486 (prefabricated fuel-
fired radiant tube heating
units)
Combustion
Research
Corporation/Yes
(Id. Ex. 716)
OMEGA SUPREME 1389234 (toy robots convertible
into other visual forms)
Hasbro, Inc./Yes
(Id. Ex. 719)
OMEGA 1385256 (threads for sewing,
knitting, mending and
embroidering)
Hilos Omega,
S.A./No

1350756 (athletic shoes) Polo International
Incorporated/No
OMEGA 1265238 (distilled spirits, ABC Liquors,
21

Opposition Nos. 91173785 and 91174067

specifically gin) Inc./Yes (Id. Ex.
723)
OMEGA 1191661 (flutes) The Selmer
Company, Inc./No
OMEGA 1133141 (mattresses) Mattress
Development
Company of
Delaware,
LLC/No
OMEGA 794782 (photographic equipment of
all kinds …)
Omega
Acquisition
Corp./No
OMEGA 658744 (electric lighting fixtures) Genlyte Thomas
Group LLC/No

Applicant’s NOR Exs. 500, 504, 509, 510, 512, 513, 516, 518, 526, 529, 535, 537, 541,
542, 544, 545, 546, 547, 548, 555, 563, 566, 567, 573, 579, 581, 586, 589, 593, 600,
607, 614, 619, 624, 627, 630, 632, 633, 636, 637, 639, 643 and 645.
In addition, Applicant has introduced Internet printouts which on their face
display the following marks in connection with the offering for sale or promotion by
different companies of the following goods and services: for mixed
martial arts clothing and gear; for funeral services; OMEGA SPORTS
for retail sporting good store services; OMEGA EXPRESS for bus charter and rental
services; OMEGA PACIFIC for climbing and rescue gear; OMEGA TACTICAL for
assault rifles; OMEGA RAIL for rail systems for guns; and OMEGA for, inter alia,
massage chairs; model engine fuel; lighting products; cabinetry; car alarms;
recording studios; airport shuttle services; loudspeakers; termite and pest control
services; construction; remodeling and restoration services; internal gunlocks; and
22

Opposition Nos. 91173785 and 91174067

tactical boots. Id. Ex. 654, 663, 686, 688, 728, 735, 737, 742, 744, 748, 751, 760, 781,
784, 786, 787, 802, 806 and 809.
The vast majority of the third-party OMEGA-branded goods and services
shown on the face of Applicant’s website printouts are unrelated to either Opposer’s
goods or Applicant’s. However, several of them are similar or at least related to
Applicant’s goods. These include: (1) Erb Industries’ OMEGA II protective headgear
(Reg. No. 2423638, Applicant’s NOR Exs. 579 and 693), similar to Applicant’s
“protective clothing;”11 (2) Omega Pacific’s OMEGA PACIFIC “rescue/industrial”
and “tactical”12 climbing and rescue gear (Applicant’s NOR Ex 744), similar to
Applicant’s “tactical gear and tactical equipment for military, law enforcement …
applications,” including “rescue vests;” (3) Omega Safety Systems’ OMEGA internal
gun locks (Applicant’s NOR Ex. 786), similar or related to Applicant’s “tactical gear
and tactical equipment for military, law enforcement … applications,” including
“armor bearing vests;” (4) Omega Tactical’s assault rifles (Applicant’s NOR Ex.
802), similar or related to Applicant’s “tactical gear and tactical equipment for
military, law enforcement … applications,” including “armor bearing vests;” (5) ATS
Tactical Gear’s OMEGA RAIL rail systems for guns (Applicant’s NOR Ex. 809),
similar or related to Applicant’s “tactical gear and tactical equipment for military,
11 Opposer claims that it filed a notice of opposition to registration of OMEGA II for
protective headgear. Opposer’s Trial Reply Brief at 11; Mulhern Dec. ¶ 19 and Ex. 85.
However, the record reveals that the opposition was unsuccessful, because the registration
issued. Applicant’s NOR Ex. 579.
12 We take judicial notice that “tactical” means “of or relating to combat tactics, especially
military or naval tactics.” Dictionary.com (http://dictionary.reference.com/browse/tactical).
23

Opposition Nos. 91173785 and 91174067

law enforcement … applications,” including “armor bearing vests;”13 and (6)
Thorogood’s OMEGA “tactical boot” (Applicant’s NOR Ex. 806), which is similar to
Applicant’s “tactical gear and tactical equipment for military, law enforcement …
applications,” including “protective clothing.”
While this evidence is not overwhelming, and Opposer is correct that there is
no evidence regarding how many consumers have been exposed to these third-party
trademark uses, it is sufficient, despite its inherent limitations, to satisfy us that
the public may have been exposed to offers for sale of or advertisements for
OMEGA-branded goods which are similar or at least related to Applicant’s.14 See,
Rocket Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1072 (TTAB 2011)
(Internet printouts “on their face, show that the public may have been exposed to
those internet websites and therefore may be aware of the advertisements
contained therein”).15 Given the limitations in Applicant’s evidence, however, this
factor weighs only slightly against a finding of likelihood of confusion.
13 Opposer relies on an Internet printout from the “atstacticalgear.com” website, showing
no substantive content, presumably to suggest that this website is no longer “live.”
Opposer’s NOR No. 2 Ex. 90. However, Opposer’s printout is a blank page with this
notation at the top: “This web store is not licensed to operate on this web server.” The
notation suggests not that the website is no longer “live,” but instead that there may be an
active ATS Tactical Gear “web store” accessible on or through another web server.
14 Mr. Swift was unaware of any efforts by Opposer to enforce its marks against these
third-party uses. See Swift Tr. at 95-97, 110.
15 We recognize that Applicant has introduced evidence of many more third-party
registrations and uses of OMEGA marks, but we have only listed a subset here because the
use or registration of OMEGA marks for unrelated goods is generally not relevant to this
du Pont factor. At the same time, however, in this case it may not be appropriate to
completely ignore the large volume of those third-party uses as we turn to consideration of
the parties’ goods and channels of trade. See National Cable Television Ass’n Inc. v.
American Cinema Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991)
(“Where a mark is commonly used on numerous types of goods and services by different
24

Opposition Nos. 91173785 and 91174067

Goods, Channels of Trade and Classes of Purchasers
Turning to the parties’ goods and channels of trade, it is settled that they
need not be identical or even competitive in order to support a finding of likelihood
of confusion. It is enough that the goods are related in some manner or that the
circumstances surrounding their marketing are such that they would be likely to be
seen by the same persons under circumstances which could give rise, because of the
marks used, to a mistaken belief that Applicant’s and Opposer’s goods originate
from or are in some way associated with the same source or that there is an
association between the sources of the goods. Hilson Research, Inc. v. Society for
Human Resource Management, 27 USPQ2d 1423, 1432 (TTAB 1993); In re Melville
Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); Schering Corp. v. Alza Corp., 207
USPQ 504, 507 (TTAB 1980); Oxford Pendaflex Corp. v. Anixter Bros. Inc., 201
USPQ 851, 854 (TTAB 1978); In re International Telephone & Telegraph Corp., 197
USPQ 910, 911 (TTAB 1978). The issue is not whether purchasers would confuse
companies, a term such as PREMIUM, SUN, BLUE RIBBON, NATIONAL, GIANT or
AMERICAN, it may be reasonable to infer in some situations that purchasers have been
conditioned to expect different sources for specifically different goods or services even
though such goods or services might be deemed sufficiently related to be attributable to a
single source under an uncommonly used mark.”); see generally, Rocket Trademarks Pty, 98
USPQ2d at 1077 (“[d]espite any limitations in the probative value of this evidence, there
are so many usages that we cannot dismiss them as de minimis); cf. Anthony’s Pizza &
Pasta International v. Anthony’s Pizza Holding Co., Inc., 95 USPQ2d 1271, 1277-78 (TTAB
2009), aff’d, 415 Fed. Appx. 222 (Fed. Cir. 2010) (large volume of evidence of third-party
uses for related goods considered despite inherent limitations) and In re Broadway Chicken
Inc., 38 USPQ2d 1559, 1665 & n.16 (TTAB 1996) (same). Indeed, while Applicant’s evidence
regarding the connotation of OMEGA and the Greek letter Ω is limited and does not relate
to how consumers perceive the mark, the large number of third-party registrations
containing and uses of OMEGA or variations thereof at least suggests that OMEGA lends
itself easily to being adopted as a mark.

25

Opposition Nos. 91173785 and 91174067

the goods, but rather whether there is a likelihood of confusion as to the source of
the goods. In re Rexel Inc., 223 USPQ 830, 832 (TTAB 1984). It is settled that we
must consider the goods as identified in Applicant’s involved applications and the
goods identified in Opposer’s registrations, or for which it has established prior use.
See Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001,
1004 (Fed. Cir. 2002); Octocom Systems, Inc. v. Houston Computers Services, Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Elbaum, 211 USPQ
639, 640 (TTAB 1981).
Here, although Opposer alleges in its amended notices of opposition, and
introduces some evidence, that its OMEGA marks have appeared on “clothing,”
“sports accessories” and other goods besides watches, its evidence does not establish
technical trademark use of any OMEGA marks for these goods, let alone any use
prior to Applicant’s January 2005 filing dates. See e.g. Swift Tr. at 13, 35, 38-39
(identifying goods other than watches sold under OMEGA but not the date of any
first sales, or other indicia of trademark use). Nevertheless, Opposer argues that
the parties’ goods are related based on goods for which there is no evidence of sales
or sales prior to Applicant’s filing dates.
Specifically, Opposer relies on evidence that in connection with its
sponsorship of a sailing event, sailor Ellen MacArthur and Opposer’s celebrity
ambassador Anna Kournikova wore “Omega-branded life preservers around their
necks,” which Opposer argues are related to Applicant’s “tactical gear and tactical
equipment for military, law enforcement and defense applications, namely
26

Opposition Nos. 91173785 and 91174067

protective clothing; tactical vests … combination ballistic/flotation vests.” Swift Tr.
at 33-34 and Ex. 20. Opposer also claims that its pleaded Registration No. 660541
“includes starting guns,” Opposer’s Trial Brief at 20, and that these starting guns
are related to bags, vests and pouches used to hold guns and ammunition which are
offered in Applicant’s catalogs. Because we are only concerned here with the goods
identified in the involved applications, however, we construe Opposer’s argument as
relating to the “armor bearing vests” identified in the involved applications.
Opposer also claims that its timekeeping services are related to Applicant’s goods
because “[s]ome Olympic events for which [Opposer] provides timekeeping services
involve guns, for example, the biathlon.” Finally, Opposer relies on evidence that at
one time Applicant’s predecessor-in-interest sold third-party watches and tactical
and clandestine assault watch bands. Opposer’s NOR Exs. 9 (e.g. documents Bates-
labeled ATK000102, ATK000204, ATK000343, ATK000985) and 11 (Michael Tr. 43,
46-47).
We are not persuaded by Opposer’s evidence or arguments that the parties’
goods are related. With respect to the “Omega-branded [promotional] life
preservers” and “starting guns,” there is no evidence that either qualify as “goods in
trade,” that Opposer sold either product to anyone or that it did so or made any
trademark use of OMEGA for life preservers or starting guns in the United States
prior to Applicant’s filing dates. Furthermore, “starting guns” do not relate to and
would not be used in connection with Applicant’s tactical equipment, armor bearing
vests or other products, because starting guns are used to signal the beginning of a
27

Opposition Nos. 91173785 and 91174067

race, not as weapons, and they do not use the type of ammunition in connection
with which Applicant’s goods are used.16
As for Opposer’s timekeeping services, even where they are provided for
events which involve guns, such as the biathlon, there is no relationship to
Applicant’s goods. Opposer does not introduce any evidence whatsoever, or even
claim, that it sells guns, or that there is any connection between sports timekeeping
services or sports timekeeping equipment on the one hand and “tactical gear and
tactical equipment for military, law enforcement and defense applications, namely
protective clothing,” “armor bearing vests” or any of Applicant’s other goods on the
other.17 See, Coach Services, 101 USPQ2d at 1720 (“On appeal, CSI concedes that
the parties’ products are not the same, but contends that there is some overlap
between their goods because it ‘has used the mark in connection with books and
16 In any event, we disagree that Opposer’s Registration No. 660541 covers starting guns in
and of themselves. The registration’s identification of goods is:
automatic recording machines and apparatus for use in determining the
results of sporting events-namely, electrical or mechanical equipment for
determining elapsed times in games or sporting events comprising a plurality
of instruments for placement at the starting and finishing lines of a racing
course, the same being electrically operated and connected to and actuated by
the starting gun or other signal so as to automatically provide a permanent
visible record of the order in which one or more contestants finish the race
and of the corresponding elapsed times
In other words, the registration covers machines and apparatus that time sporting events,
which may be but are not necessarily “connected to and actuated by the starting gun,” as
they may also be connected to and actuated by some “other signal ….” In fact, the
registration does not cover starting guns in and of themselves, it at most covers machines
and apparatus which may include starting guns, and the purpose of the starting guns is
merely to enable the machines and apparatus to time events.
17 At least some visitors to Opposer’s OMEGA Museum do not even associate Opposer’s
timekeeping services with Opposer’s watches, and it seems unlikely that they would
nevertheless associate Opposer’s timekeeping services with Applicant’s tactical equipment.
Opposer’s NOR No. 1 Ex. 71.
28

Opposition Nos. 91173785 and 91174067

audio and videotapes and in connection with tote bags, caps and shirts’ … This
alleged overlap does not help CSI’s position, however, particularly since there is no
evidence in the record regarding the sales or marketing of these items.”).
Finally, Opposer’s claim that the goods are related because “Applicant sold
watches,” Opposer’s Trial Brief at 21, is simply irrelevant.
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, 16 USPQ2d at 1787 (upon which Opposer relies); see also Coach
Services, 101 USPQ2d at 1722 (“although CSI argues that the parties’ products are
related because Triumph uses its marks on shirts, caps, and tote bags, the Board
correctly noted that Triumph’s applications do not seek to register its COACH
marks for those items, and likelihood of confusion must be based on the goods
identified in the application”). In any event, Opposer’s evidence that “Applicant”
sold watches and accessories therefor is limited to 20 year old catalogs published by
Applicant’s predecessor-in-interest. Michael Tr. at 45-47 and Exs. 7, 17. There is no
evidence that Applicant has ever sold watches or that its predecessor has done so
since 1995, let alone under an OMEGA mark.
Opposer’s arguments regarding channels of trade and classes of purchasers
are similarly unsupported by the evidence. The “primary way” Applicant makes
customers aware of its products is through its catalogs. Michael Tr. at 45-46. These
29

Opposition Nos. 91173785 and 91174067

catalogs are clearly targeted to military, law enforcement and perhaps other
customers searching for “tactical” gear, which is entirely consistent with Applicant’s
identification of goods. Michael Tr. Exs. 4 (the Enhanced M-16 Drop Leg Pouch has
“internal dividers to separate the mags,” the Flashbang Pouch holds “(2) 30 round
.223 cal mags” as well as flashbangs, the Triple Pistol Mag Pouch has “slotted
webbing for military A.L.I.C.E. clips” and the Shot Shell Pouch carries 10 shot shell
rounds in each pouch) and 7 (the Tactical Vest-1 includes a Radio Pouch and Gas
Mask Pouch as well as “webbing on back to attach gear with Alice (slide) clips, and
other products include “Sniper Tactical Drag Bag,” “Military Parachute and Gear
Bag, Spec-Ops Holster, Escape and Evasion Kit Pouch and Frag and Smoke
Grenade pouches). By contrast, Opposer distributes its products through its own
stores, as well as “authorized Omega dealers and boutiques,” with a focus on
“heavily populated areas.” Swift Tr. at 38-40. It promotes its products, offered under
the categories “Ladies’ Collection” and “Gents’ Collection,” through celebrity
ambassadors including models, actors and golfers. Id. Exs. 53, 62. Its watches are
promoted in prominent publications, which list prices of $3,000 and more, up to
$80,000. Id. Exs. 12, 15, 18, 21, 35.
While Opposer is correct that the identifications of its goods and some of
Applicant’s goods do not contain any limitations with respect to channels of trade,18
18 Applicant argues that its channels of trade are limited to “military, law enforcement and
defense applications,” but as Opposer points out, there is a semicolon following that
limitation on Applicant’s “tactical gear and tactical equipment,” meaning that the
limitation does not apply to Applicant’s other goods appearing after the semicolon. In re
Midwest Gaming & Entertainment LLC, 106 USPQ2d 1163, 1166 (TTAB 2013).
30

Opposition Nos. 91173785 and 91174067

that simply means that “the goods are presumed to travel in all normal channels
and to all prospective purchasers for the relevant goods.” Coach Services, 101
USPQ2d at 1722. Here, the evidence reveals that the channels of trade for
Opposer’s watches and other goods for which priority is not at issue are much
different than those for Applicant’s tactical goods. Military and law enforcement
personnel and others searching for tactical gear in Applicant’s catalogs would not
encounter Opposer’s luxury watches nor would Opposer’s watch customers shopping
in Opposer’s stores or authorized dealers or boutiques encounter Applicant’s
catalogs or goods. The mere fact that some consumers of Applicant’s tactical goods
might at some point also purchase Opposer’s high-end watches, or vice versa, is not
a basis upon which to find that the channels of trade or classes of consumers are the
same. Id. at 1723; Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d
1782, 1794 (TTAB 2002) (“We think it a fit subject for judicial notice that
purchasers of computer hardware and software also would be purchasers of, at
least, footwear and apparel, and perhaps sporting goods and equipment. There is
nothing in the record, however, to suggest that merely because the same consumer
may purchase these items, such consumer would consider the goods as likely to
emanate from the same source or have the same sponsorship.”). Opposer therefore
misplaces its reliance on its President’s statement that “Everybody’s a potential
client. Everybody has a wrist” in arguing that the channels of trade and classes of
consumers are similar. Swift Tr. at 41 and Ex. 29. By that logic, the channels of
trade and classes of consumers would always weigh in Opposer’s favor in any
31

Opposition Nos. 91173785 and 91174067

likelihood of confusion dispute. The question we are faced with here is whether
consumers “would consider the goods to emanate from the same source.” Coach
Services, 101 USPQ2d at 1723; 7-Eleven, Inc. v. Wechsler, 83 USPQ2d 1715, 1724
(TTAB 2007). Here the evidence reveals they would not.
Opposer argues in its Trial Brief that it “has an extensive relationship with
the armed forces both in the United States and around the world,” that it is “well
known for having supplied watches over the years to the United States Army
during the First World War and beyond” and that it currently “has an active
division that sells OMEGA watches to the U.S. armed forces, particularly the Air
Force squadron leaders who have the OMEGA watches engraved with their
squadron logo.” Opposer’s Trial Brief at 23. The evidence, the totality of which is set
forth below, does not support this argument:
Omega is well known for having supplied watches over
the years for both U.S., the U.S. Army during the First
World War and then the RAF, for example, which is the
Royal Air Force in the Second World War. And even today
we have an active division that sells Omega watches to
our very own armed forces, particularly from the Air
Force squadron leaders who have the opportunity to have
our watches engraved, the Omega watch engraved with
their squadron logo, and we’re very active in that even
today.

Swift Tr. at 20-21. World War I was 100 years ago, and therefore any sales,
channels of trade or classes of purchasers from that time have no relevance to the
current marketplace, and the number of current consumers familiar with Opposer’s
military sales during World War I is at most de minimus. Furthermore, we agree
with Applicant that Mr. Swift’s testimony about an active but unidentified division
32

Opposition Nos. 91173785 and 91174067

which “sells” Opposer’s watches to the U.S. armed forces is bare, vague and not
persuasive. In fact, there is no evidence whatsoever of any actual sales of any
OMEGA-branded watches to the “armed forces,” or even individual members of the
armed forces. And to the extent Opposer is claiming to provide engraving services to
members of the armed forces, there is no evidence that Opposer uses OMEGA or
variations thereof for those services, much less that it did so prior to Applicant’s
filing dates.
In short, given the utter lack of any evidence of a relationship between
Opposer’s and Applicant’s goods, their channels of trade or the classes of
purchasers, these factors weigh heavily against a finding of likelihood of confusion.
Sophistication of Purchasers
We accept Applicant’s argument that regardless of the prices for its goods, its
customers will exercise heightened care because Applicant’s goods “are tactical gear
for use in a close combat situation by law enforcement and military personnel,” and
the goods “are used to protect these individuals’ lives.” Applicant’s Trial Brief at 31.
This factor weighs slightly against a finding of likelihood of confusion.
Balancing the Factors
Despite the fame of Opposer’s OMEGA marks for watches, and the similarity
of the parties’ marks, we find that confusion is unlikely. There is simply no evidence
of any relationship between the goods, which are offered in distinct channels of
trade to different classes of purchasers who would not be likely to believe that
Applicant’s and Opposer’s goods emanate from the same source. While the fame of
33

Opposition Nos. 91173785 and 91174067

Opposer’s marks plays a “dominant role” in our analysis, it “cannot overwhelm the
other DuPont factors.” Coach Services, 101 USPQ2d at 1720; The University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 703 F.2d 1372, 217
USPQ 505, 507 (Fed. Cir. 1983) (likely to cause confusion “means more than the
likelihood that the public will recall a famous mark on seeing the same mark used
by another … To hold otherwise would result in recognizing a right in gross, which
is contrary to principles of trademark law and to concepts embodied in 15 USC
§ 1052(d).”) Accordingly, Opposer’s claim of likelihood of confusion is dismissed.
Nonuse and Abandonment
On August 7, 2013, Applicant filed a motion to amend its involved
applications to delete many of the goods identified therein, and consented to entry
of judgment against it on the ground of abandonment with respect to the deleted
goods. On August 12, 2013, the Board entered an order amending the applications
as requested and entering judgment against Applicant with respect to the deleted
goods. Applicant’s admitted nonuse on some of the goods identified in the
applications is not grounds for finding the entire application void. Grand Canyon
West Ranch LLC v. Hualapai Tribe, 78 USPQ2d 1696, 1697-98 (TTAB 2006).
Opposer argues, however, that Applicant has also not used its marks for
“bags for tactical gear and tactical equipment” or “tactical gear and tactical
equipment for military, law enforcement and defense applications, namely,
protective clothing,” which remain in the involved applications, as amended. We
disagree. As Applicant points out, prior to its filing dates, Applicant used its marks
34

Opposition Nos. 91173785 and 91174067

for pouches for tactical gear, which are substantively no different than “bags for
tactical gear and tactical equipment,” and for armor bearing vests, which are
“protective clothing.” Michael Tr. at 45-46, 144 and Exs. 4, 5, 7.19 Accordingly,
Opposer’s nonuse and abandonment claims are dismissed.
Fraud
There is no dispute that Applicant has not used its involved marks on many
of the goods originally identified in its applications. Applicant has admitted as much
throughout this litigation. Michael Tr. at 67-70; Opposer’s NOR No. 1 Ex. 10;
Applicant’s Answer to Amended Notice of Opposition ¶¶ 16, 17, 21; Applicant’s
Motion to Amend Applications and Stipulation to Accept the Entry of Judgment on
Ground of Abandonment for Certain Goods. However, that is not enough to
establish fraud.
Indeed, “[f]raud in procuring a trademark registration occurs when an
applicant knowingly makes false, material representations of fact in connection
with its application with intent to deceive the USPTO.” Nationstar Mortgage LLC v.
Ahmad, 112 USPQ2d 1361, 1365 (TTAB 2014) (citing In re Bose Corp., 580 F.3d
1240, 91 USPQ2d 1938 (Fed. Cir. 2009)) (emphasis added). Here, Opposer has not
presented any evidence, direct, indirect or circumstantial, let alone the requisite
“clear and convincing” evidence, In re Bose, 91 USPQ2d at 1939, that Applicant’s
admittedly false statements were made with the requisite intent to deceive the
19 A “pouch” is defined as “a bag, sack, or similar receptacle, especially one for small
articles or quantities.” Dictionary.com (http://dictionary.reference.com/browse/pouch).
“Armor” is defined as “any covering worn as a defense against weapons.” Dictionary.com
(http://dictionary.reference.com/browse/armor).
35

Opposition Nos. 91173785 and 91174067

USPTO. And while the facts indicate that Applicant should have known that it was
not using its marks on some of the goods identified in the applications, those facts,
without more, do not reflect an intent to deceive much less prove such an intent “to
the hilt” as required by Bose. 91 USPQ2d at 1939.
Opposer’s argument that Applicant’s “delay in rectifying its material
misrepresentations” establishes its intent to deceive the Office, Opposer’s Trial
Brief at 33-36, is not well-taken. Applicant admitted that it did not use its marks on
some of the goods originally identified in the applications in discovery in June 2012
and in its Answer to the Amended Notice of Opposition filed September 25, 2012. Its
motion for summary judgment filed November 26, 2012 is entirely consistent with
its admissions, as the motion sought judgment because “Applicant has used the
mark on at least some of the goods.” This case was suspended upon the filing of
Applicant’s motion for summary judgment, and did not resume until July 8, 2013,
when the Board allowed Applicant 30 days “to show cause why judgment should not
be entered against” it in connection with the goods in connection with which it had
not used its involved marks. Applicant complied with the show cause order when it
timely filed its Motion to Amend Applications and Stipulation to Accept the Entry of
Judgment on Ground of Abandonment for Certain Goods. These actions do not
constitute evidence of an intent to deceive the Office.20
20 We note also that in its reply brief in support of its motion for summary judgment, filed
January 22, 2013, Applicant requested “that the Board ‘modify the application or
registration by limiting the goods or services therein’ to those goods where the marks have
been used and continue to be used in accordance with 15 U.S.C. § 1068.” Applicant’s Reply
Brief in Support of Motion for Summary Judgment at 10.
36

Opposition Nos. 91173785 and 91174067

In the absence of evidence of an intent to deceive, Opposer’s fraud claim must
fail, and is accordingly dismissed.
Conclusion
Opposer has not met its burden of establishing a likelihood of confusion,
nonuse or abandonment with respect to the goods remaining in the applications, or
fraud.

Decision: The opposition is dismissed.
37