Richard Labrie

Trademark Trial and Appeal Board

Sep 11, 1998

No. 75048254 (T.T.A.B. Sep. 11, 1998)

Paper No. 9
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT 11,98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Richard Labrie
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Serial No. 75/048,254
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Evan M. Kent of Russ, August & Kabat for applicant.
Deborah E. Lobo, Trademark Examining Attorney, Law Office
107 (Thomas S. Lamone, Managing Attorney).
____________
Before Simms, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Richard Labrie has filed a trademark application to
register the mark shown below for “fishing tackle bags.”1

1 Serial No. 75/048,254, in International Class 28, filed January 25,
1996, based on an allegation of use of the mark in commerce, alleging
dates of first use and first use in commerce as of December 14, 1995.
Serial No. 75/048,254
2
The Trademark Examining Attorney has finally refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. 1052(d),2 on the ground that applicant’s mark so
resembles the two previously registered marks shown below,
owned by the same party, that, if used on or in connection
with applicant’s goods, it would be likely to cause
confusion or mistake or to deceive.
for “fish hooks,”3 and

2 The Examining Attorney originally refused registration, under Section
2(d), based also on three additional registrations owned by the same
registrant, namely, Registration Nos. 568,797; 1,894,190; and
1,894,189. In her final refusal, the Examining Attorney withdrew her
objection in connection with these three registrations.
3 Registration No. 557,985 issued April 22, 1952, in International Class
28, and is owned by Wright & McGill Co. The registration includes a
disclaimer of HOOKS apart from the mark as a whole. The registration
was renewed for a second time as of April 30, 1992. [Sections 8 and 15
affidavits accepted and acknowledged, respectively.]
Serial No. 75/048,254
3
for fish hooks and artificial fish lures.4
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
In the analysis of likelihood of confusion in this
case, two key considerations are the similarities between
the marks and the similarities between the goods. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976). Considering, first, the marks,
the Examining Attorney contends that the term EAGLE is the
dominant portion of both applicant’s and registrant’s
marks. Regarding registrant’s marks, the Examining
Attorney states the following.
In the word portion of the registrant’s marks,
i.e., EAGLE CLAW HOOKS, the terms “CLAW” and
“HOOKS” have similar meaning and connotation in
that both terms denote a sharp, curved object for
catching and holding. The meanings of these
terms indicate that both are highly suggestive
and descriptive respectively of the relevant
goods, i.e., fishhooks and lures.
Regarding applicant’s mark, the Examining Attorney states
the following.

4 Registration No. 505,204 issued December 28, 1948, in International
Class 28, and is owned by Wright & McGill Co. The registration
includes a disclaimer of HOOKS apart from the mark as a whole. The
registration was renewed for a second time as of December 28, 1988.
[Sections 8 and 15 affidavits accepted and acknowledged, respectively.]
Serial No. 75/048,254
4
As applicant indicates, the term “INNOVATIONS” is
suggestive of something new or innovative [and in
light thereof] the arbitrary and fanciful term
“EAGLE” [is dominant]. Thus, the words “EAGLE
INNOVATIONS” would suggest nothing more to a
potential purchaser than a new “EAGLE” product or
a new line of “EAGLE” products originating from
the same source as the products of registrant.
The Examining Attorney contends, further, that the design
of the eagle is virtually identical in both applicant’s
mark and registrant’s mark containing an eagle design and,
in each case, reinforces the term EAGLE in the mark.
Applicant argues, on the other hand, that the word
portion of applicant’s mark, EAGLE INNOVATIONS, differs in
sight, sound and connotation from the word portion of
registrant’s marks, EAGLE CLAW HOOKS, despite the common
term EAGLE; and that the design portions of the marks are
different in that applicant’s design shows an eagle with
wings raised about to perch (in this case on the word
INNOVATIONS), whereas registrant’s design shows an eagle
with wings raised in flight.
We agree with the Examining Attorney that the word
EAGLE is the dominant portion of both applicant’s and
registrant’s marks. First, in applicant’s mark and
registrant’s mark containing an eagle design, the EAGLE
word portion of each mark is reinforced by the design of
the eagle. In each of registrant’s marks, the term CLAW is
Serial No. 75/048,254
5
likely to be perceived by consumers as modifying the term
HOOKS to describe a type of hook sold under the “EAGLE”
mark. In applicant’s mark, as the Examining Attorney
notes, the term INNOVATIONS is likely to be perceived by
consumers as indicating a new version or expansion of
registrant’s “EAGLE” product line.
We find the distinction drawn by applicant
between applicant’s and registrant’s eagle designs to be
insufficient to distinguish the marks. It is only upon
close inspection, and some amount of supposition, that one
can conclude that registrant’s eagle is flying and
applicant’s eagle is landing. The test of likelihood of
confusion is not whether the marks can be distinguished
when subjected to a side-by-side comparison. The issue is
whether the marks create the same overall commercial
impression. Visual Information Institute, Inc. v. Vicon
Industries Inc., 209 USPQ 179 (TTAB 1980). Due to the
consuming public’s fallibility of memory, the emphasis is
on the recollection of the average customer, who normally
retains a general rather than a specific impression of
trademarks or service marks. Spoons Restaurants, Inc. v.
Morrison, Inc., 23 USPQ2d 1735 (TTAB 1991), aff’d. No. 92-
1086 (Fed. Cir. June 5, 1992); and In re Steury
Corporation, 189 USPQ 353 (TTAB 1975). In this case, it is
Serial No. 75/048,254
6
unlikely that such distinctions in the eagle design will be
noticed and/or remembered by the consumer.
Finally, regarding the marks, there is no indication
in this record of any third-party use or registration of
other EAGLE marks in connection with the same or similar
goods. Thus, we must conclude that EAGLE is an arbitrary
and strong term in connection with registrant’s identified
goods. Notwithstanding applicant’s contentions, we find
the overall commercial impression of applicant’s mark and
registrant’s two marks to be substantially similar.
Turning to consider the goods, the Examining Attorney
contends that “the goods of the applicant and registrant
are related in that fish hooks and fish lures are normally
carried in fishing tackle bags.” In support of her
position that the goods are related, the Examining Attorney
submitted copies of numerous third-party registrations
which include in the identifications of goods both
applicant’s and registrant’s goods.5
Applicant notes the fact that applicant’s and
registrant’s goods are different and contends that

5 Third-party registrations which cover a number of differing goods
and/or services, and which are based on use in commerce, although not
evidence that the marks shown therein are in use on a commercial scale
or that the public is familiar with them, may nevertheless have some
probative value to the extent that they may serve to suggest that such
goods or services are of a type which may emanate from a single source.
See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); In re
Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).
Serial No. 75/048,254
7
applicant’s and registrant’s goods are specialty items that
are relatively expensive and purchased only after careful
consideration. Applicant’s arguments are unsupported by
the record. Applicant has provided no evidence regarding
the channels of trade of the goods at issue herein; the
“specialty” nature and expense of such goods; or the
sophistication of the purchasers and the care with which
such goods are purchased. On the other hand, the Examining
Attorney has provided sufficient evidence to warrant our
conclusion that the goods of applicant and registrant are
related.
Therefore, we conclude that in view of the substantial
similarity in the commercial impressions of applicant’s
mark and registrant’s marks, their contemporaneous use on
the related goods involved in this case is likely to cause
confusion as to the source or sponsorship of such goods.
Decision: The refusal under Section 2(d) of the Act
is affirmed.
R. L. Simms
P. T. Hairston
Serial No. 75/048,254
8
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board