Whigham Enterprises Inc.

Trademark Trial and Appeal Board

Aug 2, 2006

No. 76554271 (T.T.A.B. Aug. 2, 2006)

Mailed:
1 August 2006
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Whigham Enterprises Inc.
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Serial No. 76554271
_______

John Wiley Horton of Pennington, Moore, Wilkinson, Bell &
Dunbar, P.A. for Whigham Enterprises Inc.

Alain Lapter, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
_______

Before Holtzman, Drost, and Zervas, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On October 27, 2003, applicant Whigham Enterprises
Inc. applied to register the mark TI CHOKE (in typed or
standard character form) on the Principal Register for
“shotgun choke tubes” in Class 13. The application (Serial
No. 76554271) is based on an allegation of a bona fide
intention to use the mark in commerce.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser. No. 76554271
2
The examining attorney1 has refused to register
applicant’s mark on two grounds. First, the examining
attorney held that applicant’s mark is not registrable
under the provisions of Section 2(d) of the Trademark Act
because it is likely to cause confusion, to cause mistake,
or to deceive as a result of a registration for the mark:

for “firearms” in Class 13.2 15 U.S.C. § 1052(d).
In addition, the examining attorney also refused to
register applicant’s mark under the provisions of Section
2(e)(1) of the Trademark Act because the examining attorney
found that the term TI CHOKE was merely descriptive of
applicant’s goods. 15 U.S.C. § 1052(e)(1).
After the Examining Attorney made the refusals to
register final, this appeal followed.

1 The current examining attorney was not the original examining
attorney in this case.
2 Registration No. 2,455,969 issued on May 29, 2001. Taurus
International Manufacturing, Inc. is identified as the owner of
the registration.
Ser. No. 76554271
3
Descriptiveness
We begin our review by addressing the descriptiveness
refusal. A mark is merely descriptive if it immediately
describes the ingredients, qualities, or characteristics of
the goods or services or if it conveys information
regarding a function, purpose, or use of the goods or
services. In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 217 (CCPA 1978). See also In re MBNA America
Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir.
2003) (A “mark is merely descriptive if the ultimate
consumers immediately associate it with a quality or
characteristic of the product or service”); In re Nett
Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001).
We look at the mark in relation to the goods or
services, and not in the abstract, when we consider whether
the mark is descriptive. Abcor, 200 USPQ at 218. See also
MBNA, 67 USPQ2d at 1783 (“Board correctly found MBNA’s
emphasis on the regional theme through marketing promotions
and picture designs provides circumstantial evidence of how
the relevant public perceives the marks in a commercial
environment”). Courts have long held that to be “merely
descriptive,” a term need only describe a single
significant quality or property of the goods. In re
Ser. No. 76554271
4
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir.
1987); Meehanite Metal Corp. v. International Nickel Co.,
262 F.2d 806, 120 USPQ 293, 294 (CCPA 1959).
The examining attorney argues (Brief at unnumbered p.
3) that the term TI CHOKE is merely descriptive because:
[T]he mark is comprised of a descriptive term – TI –
and a term that simply identifies the goods – CHOKE.
Specifically, the examining attorney concluded that
the wording TI was descriptive of the goods in that TI
was the recognized symbol for the element Titanium.
This element, as the Applicant acknowledges, is a
component of the goods. Consequently, TI is
descriptive of the goods and since the additional
wording CHOKE, as a generic term for the goods, did
not create a non-descriptive commercial impression,
the mark was refused registration under Section
2(e)(1) of the Trademark Act.

The term “Choke” is a generic term for “shotgun choke
tubes.” Applicant’s literature3 defines a choke as follows:
What is a shotgun choke?
A choke is simply a tapered constriction of the gun
barrel’s bore at the muzzle end. The exit end of the
choke is smaller by some dimension than the actual
bore of the barrel. The difference is the amount of
constriction. For example, if the bore of the barrel
is .730 and the exit diameter of the choke is .710,
you have a constriction of .020…

They can be grouped in 3 general types:
1. Fixed chokes – They are made as an integral part of
the barrel and cannot be readily changed except by
a gunsmith and any alteration is considered
permanent.

3 Trulock Chokes 2003 Product Resource Guide. Applicant
identified this Trulock catalog as “Applicant’s Product Resource
Guide.” Response dated November 9, 2004 at unnumbered p. 3. See
also www.fieldandclays.com (“Trulock Tool Division – Whigham
Enterprises Inc.”)
Ser. No. 76554271
5
2. Interchangeable chokes – These can be of the “screw
on” style which is externally attached or the
“screw in” which is recessed into the barrel. To
change the degree of constriction you simply remove
and replace with a choke of a different diameter.
3. Adjustable chokes – This style of choke is
adjustable throughout the entire range by turning a
sleeve, which collapses or allows a collet to
expand thus changing the exit diameter. A popular
choke of this type is the Polychoke.

The term “Ti,” is the “symbol for titanium.”
Webster’s II New Riverside University Dictionary (1984).4
Shotgun choke tubes are made of titanium. See, e.g.,
www.ableammo.com (“12 ga.5 Titanium Choke Tubes … The
strength of Titanium with half the weight of conventional
tube”) and www.midwayusa.com (“Briley Spectrum Mach 1
Titanium Choke Tube Perazzi 4th Generation 12 Gauge Cylinder
Choke – Titanium Mach 1 choke tubes are about half the
weight of steel chokes and won’t affect the balance of the
gun as a steel choke might”). Indeed, the symbol for
titanium has been used to indicate the presence of titanium
in firearms. See www.ablearms.com (“The new Browning A-
Bolt Mountain Ti (titanium) weighs in at only 5 lbs., 8
oz.”).

4 We take judicial notice of this definition. University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594,
596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
5 A “12 gauge” is a type of shotgun. See Shooting Industry,
April 2002 (“The base single-shot shotgun is chambered in .410,
20 or 12 gauge”).
Ser. No. 76554271
6
At the website www.fieldandclays.com, there is a
discussion under the heading “Trulock Choke Styles … The
New Titanium.” The discussion begins:
Trulock, a leading manufacturer of screw-in shotgun
chokes, introduces an entirely new line of extended
individually color-coded chokes made from titanium
alloy “Trulock Ti Chokes.”

The Ti Chokes weigh about 33% less than steel but with
the same strength. This will enable the shooter to
use extended Ti Chokes without adding weight to the
muzzle end of the shotgun.

The fact that applicant uses the symbol for titanium rather
than the word titanium does not mean that its mark is not
descriptive. In a case involving the term “ALR” in all
capital letters, the board found that it was merely
descriptive for insulated electrical conductor building
wire. Southwire Co. v. Kaiser Aluminum & Chemical Corp.,
196 USPQ 566 (TTAB 1977). The record in that case
established that the abbreviation “ALR” was a descriptive
abbreviation of the term “aluminum revised.” Id. at 574.
The Board indicated that:
It is a reasonable inference from the foregoing that
the entire electric industry … because of the
adherence of most electrical codes to the National
Electrical Code for which UL establishes standards,
are of necessity aware of the “CO/ALR” designation for
wiring devices and significance of “ALR” as meaning
“aluminum revised” to distinguish from the designation
“AL” previously used to identify aluminum wire that
has not been upgraded or revised.

Id. at 574.
Ser. No. 76554271
7
Similarly here, the term TI would be merely
descriptive for titanium shotgun choke tubes. We point out
that applicant has depicted its mark as a typed or standard
character drawing so we must consider that the mark can be
displayed in any style6 including as the traditional symbol
for titanium “Ti.” As we indicated earlier, we must view
the question of descriptiveness in the context of the
identified goods. In this case, the goods would include
shotgun choke tubes made of titanium. When we consider the
mark as whole, prospective purchasers would immediately
understand that the term TI CHOKE describes the fact that
applicant’s choke tubes have a titanium feature. We simply
disagree with applicant’s assertion that some imagination
would be required for prospective purchasers to understand
that applicant’s TI CHOKE mark describes the fact that
applicant’s chokes are made of titanium.
We, therefore, affirm the examining attorney’s refusal
to register on the ground that applicant’s TI CHOKE mark is
merely descriptive for shotgun choke tubes.

6 By presenting its mark merely in a typed drawing, an applicant
asserts rights in the mark “regardless of type styles,
proportions, or other possible variations.” Squirtco v. Tomy
Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983).
Ser. No. 76554271
8
Likelihood of Confusion
Now we address the question of whether there is a
likelihood of confusion. We consider this issue by
applying the factors set out in In re Majestic Distilling
Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
See also In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973); and Recot, Inc. v.
Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir.
2000). In considering the evidence of record on these
factors, we must keep in mind that “[t]he fundamental
inquiry mandated by § 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
First, we look at whether the marks, in their
entireties, are similar in sound, appearance, meaning, and
commercial impression. Applicant’s mark is TI CHOKE
without any stylization and applicant’s mark consists of
the letters “Ti” in a circle design.
Ser. No. 76554271
9

As we indicated previously, applicant’s mark is displayed
in typed or standard character form so we must consider
that there is no viable difference between the stylization
of its letters and registrant’s stylization. Therefore,
the only differences between the marks are that applicant
includes the generic word “choke” in its mark while
registrant adds a simple circle design. The “Ti” portions
of the marks are legally identical.
Regarding the term “Choke,” it is clear that the term
is generic for shotgun choke tubes. See Trulock Chokes
2003 Product Resource Guide. The Federal Circuit has noted
that generic terms are often given little weight in
likelihood of confusion determinations.
With respect to ALE, the Board noted that the term is
generic and that the registrant disclaimed it in its
registration. Because ALE has nominal commercial
significance, the Board properly accorded the term
less weight in assessing the similarity of the marks
under DuPont. As a generic term, ALE simply
delineates a class of goods.

In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d
1944, 1946 (Fed. Cir. 2004). Indeed, consumers familiar
Ser. No. 76554271
10
with registrant’s TI and circle design for firearms would
likely assume the addition of the word “Choke” merely
indicates that the registrant is now also the source of
shotgun choke tubes.
Similarly, it would be unlikely that the circle design
in the registrant’s term would be relied upon by
prospective purchasers to distinguish the marks. See In re
Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534
(Fed. Cir. 1997) (“Neither the design element nor the
generic term ‘café’ offers sufficient distinctiveness to
create a different commercial impression. Indeed, as the
board found, the design is an ordinary geometric shape that
serves as a background for the word mark”). See also Wella
Corp. v. California Concept Corp., 558 F.2d 1019, 194 USPQ
419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and surfer design
likely to be confused with CONCEPT for hair care products).
Thus, the marks' appearances would be similar inasmuch as
the TI feature is the most noticeable element in both
marks.
Applicant argues that the TI in its mark “is
pronounced ‘tie’” and that there is “a substantial
difference in sound between Taurus International’s “T i”
and Petitioner’s TI CHOKE.” Brief at unnumbered p. 6.
However, there “is no correct pronunciation of a trademark,
Ser. No. 76554271
11
and it obviously is not possible for a trademark owner to
control how purchasers will vocalize its mark.” Centraz
Industries Inc. v. Spartan Chemical Co., 77 USPQ2d 1698,
1701 (TTAB 2006). While the marks would not be pronounced
identically because of the additional word “choke” in
applicant’s mark, there is no basis in our analysis to
distinguish the marks by the pronunciation of their common
element, TI.
Regarding the meaning of the terms, it appears that
both could likely be understood to have the common meaning
“titanium.” We have already found that the evidence
demonstrates that the term “titanium” describes shotgun
choke tubes. Similarly, registrant’s mark would have, at
least, a suggestive meaning for firearms. The meanings of
the marks overlap.
As to the marks’ commercial impressions, applicant
argues that registrant uses its mark “exclusively as a
‘proof mark’ that is mechanically stamped in tiny print on
the barrel of the gun to indicate the gun has passed their
safety tests.” Brief at unnumbered p. 6. However,
registrant’s goods are identified simply as firearms and
nothing limits registrant’s use to a “proof mark.” The
commercial impressions of the marks TI CHOKE and TI and
circle design would be very similar.
Ser. No. 76554271
12
When we compare the marks in their entireties, we hold
that their similarities outweigh their differences because
the marks both contain the same non-generic term and the
differences are minor. We add that even if the cited mark
is weak, “weak marks are entitled to protection against
registration of similar marks, especially identical ones,
for related goods and services.” In re Colonial Stores,
216 USPQ 793, 795 (TTAB 1982). See also In re The Clorox
Co., 578 F.2d 305, 198 USPQ 337, 341 (CCPA 1978) (ERASE for
a laundry soil and stain remover held confusingly similar
to STAIN ERASER, registered on the Supplemental Register,
for a stain remover).
The next critical factor is whether registrant’s and
applicant’s goods are related. Applicant’s goods are
shotgun choke tubes and registrant’s goods are firearms.
We must consider the goods as they are identified in the
identifications in the application and registration.
Paula Payne Products v. Johnson Publishing Co., 473 F.2d
901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases
involving the issue of likelihood of confusion must be
decided on the basis of the respective descriptions of
goods”). Registrant’s goods are identified simply as
firearms. Shotguns are a type of firearm. See Webster’s
II New Riverside University Dictionary (1984) (emphasis
Ser. No. 76554271
13
added) (“Shotgun” – “A shoulder-held firearm that fires
multiple pellets through a smooth bore”). Therefore, we
must assume that registrant’s firearms include shotguns.
Octocom Systems, Inc. v. Houston Computers Services Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“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 [or services] set forth in the
application regardless of what the record may reveal as to
the particular nature of an applicant’s goods [or
services], the particular channels of trade or the class of
purchasers to which the sales of goods [or services] are
directed”). We add that there is evidence that registrant
is actually the source of a rifle/shotgun combination
firearm. Shooting Industry, April 2002 (“Also from Taurus,
Rossi’s Matched Pairs shotgun/rifle comes in full size and
youth size. The base single-shot shotgun is chambered in
.410, 20 or 12 gauge. The second barrel is chambered in
.22 Long Rifle, .22 magnum, .223 or .243”). As applicant’s
catalog demonstrates, chokes include fixed chokes that are
an integral part of the barrel of the shotgun and
interchangeable chokes that are screwed in or screwed on to
the barrel. Applicant’s shotgun choke tubes would be
closely related to shotguns inasmuch as the choke tubes are
Ser. No. 76554271
14
designed to be attached to a shotgun. While applicant
argues (Brief at unnumbered p. 5) that it “does not sell
products that would be appropriate to Taurus
International’s handguns or rifles,” that is not the test.
We must assume that registrant’s firearms include shotguns
and these shotguns would include those that would be
compatible with applicant’s shotgun choke tubes.
Inasmuch as the marks TI and circle design and TI
CHOKE are similar and firearms and shotgun choke tubes are
closely related, we hold that there is a likelihood of
confusion in this case.
Decision: The refusals to register the mark on the
grounds of mere descriptiveness and likelihood of confusion
are affirmed.