Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA157608
`ESTTA Tracking number:
`08/17/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`78740442
`LEVY-GARDNER-LAVEN PRODUCTIONS, INC.
`THE RIFLEMAN
`Paul D. Supnik
`Law Office of Paul D. Supnik
`9601 Wilshire Boulevard, Suite 828
`Beverly Hills, CA 90210-5210
`UNITED STATES
`paul@supnik.com
`Appeal Brief
`Appeal Brief Final.pdf ( 32 pages )(1700074 bytes )
`PAUL D. SUPNIK
`paul@supnik.com
`/paul d. supnik/
`08/17/2007
`
`Proceeding
`Applicant
`Applied for Mark
`Correspondence
`Address
`
`Submission
`Attachments
`Filer's Name
`Filer's e-mail
`Signature
`Date
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re In re Application of
`LEVY—GARDNER—LAVEN
`PRODUCTIONS, INC.
`A lication No. 78/740,442
`FII§d: October 25, 2005
`Mark: THE RIFLEMAN
`
`Applicant
`
`Commissioner for Trademarks
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Law Office 101
`Trademark A“°”‘eY‘
`Steven M Perez
`
`BRIEF OF APPLICANT/APPELLANT
`
`

`
`TABLE OF AUTHORITIES
`
`In re August Storck KG, 218 U.S.P.Q. 823 (TTAB 1983)
`
`.......................................... .. 13
`
`In re Chatam international lnc., 380 F.3d 1340, 71 U.S.P.Q. 2d 1944 (Fed. Cir. 2004)
`
`13
`
`Coca-Cola Bottling Co. v. Josegh E. Seagram & Sons, lnc., 526 F.2d 556, 188 U.S.P.Q.
`105 (C.C.P.A. 1975)
`....................................................................... .. 13
`
`Colgate-Palmolive Co. v. Carter-Wallace, lnc., 58 C.C.P.A. 735, 432 F.2d 1400 ..... .. 10
`
`
`In re Cosvetrics Laboratories lnc., 202 U.S.P.Q. 842 (TTAB 1979)
`
`......................... .. 11
`
`In re E.l. Du Pont de Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973)
`
`.............. .. 3, 7
`
`Electronic Design & Sales, Inc. v. Electronic Data Systems Corg., 21 U.S.P.Q. 2d 1388
`(Fed. Cir. 1992)
`.............................................................................. .. 16
`
`House of Worsted-Tex, Inc. v. Sugerba Cravats, lnc., 48 C.C.P.A. 752, 284 F.2d 528 10
`
`Industrial Nucleonics Corg. v. Hinde, 177 U.S.P.Q 387 (C.C.P.A. 1973).
`
`................. ..
`
`8
`
`NEC Electronics v. new England Circuit Sales, lnc., 13 U.S.P.Q. 2d 1058 (D. Mass.
`1989)
`.............................................................................................. .. 10
`
`In re Riddle, 225 U.S.P.Q. 630 (TTAB 1985)
`
`............................................................. .. 12
`
`In re Lamson Oil Co., 6 U.S.P.O.2d 1041 (TTAB 1988)
`
`.............................................. .. 8
`
`In re Maiestic Distilling Co., 65 U.S.P.Q.2d 1201, 1204 (Fed. Cir. 2003). ..................... .. 7
`
`Magnaflux Corp. v. Sonoflux Corp., 109 U.S.P.Q. 313 (C.C.P.A. 1956)
`
`.................... .. 15
`
`In re Nat'l Distillers and Chemical Cor;:_)., 132 U.S.P.O. 271,273—74 (C.C.P.A. 1962)
`(quoting with approval Avon Shoe Co,. Inc. v. David Crystal, lnc., 121 U.S.P.O. 397,401
`(D.C. S.D. N.Y. 1959))
`................................................................................................. .. 9
`
`Walt Disney Productions v. Air Pirates, 199 U.S.P.Q. 769 (9th Cir. 1978)
`
`................... .. 9
`
`
`Witco Chemical Co. v. Whitfield Chemical Co.
`lnc.,
`
`164 U.S.P.Q. 43, 44-45 (CCPA 1969) .......................................................... .. 16
`
`

`
`TABLE OF CONTENTS
`
`DESCRIPTION OF THE RECORD ......................................................... .. 2
`
`INTRODUCTION AND STATEMENT OF ISSUES .................................. .. 2
`
`DESCRIPTION OF THE PARTIES SAND FACTS .................................. .. 7
`
`ARGUMENT ............................................................................................ .. 7
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Legal Standards ................................................................. .. 7
`
`The Visual Similarity Of The Two Marks RIFLEMAN and THE
`RIFLEMAN Must Be Discounted Because Registrant's Word
`Mark is Weak ..................................................................... .. 9
`
`Prior Case Law is Not controlling ..................................... .. 11
`
`The Examining Attorney's Broad Interpretation And
`Presumption Of Similarity Ignores The Real Circumstances
`Of The Marketplace ........................................................ .. 14
`
`Confusion Is Unlikely Because Applicant's and Registrant's
`Customers Are Not Necessarily Sophisticated, but Discerning
`So as to Seek out Brand and Licensed Affiliation
`........... .. 15
`
`SUMMARY ............................................................................................ .. 15
`
`

`
`I. DESCRIPTION OF THE RECORD
`
`The applicant and appellant Levy—Gardner-Laven Productions, Inc.
`
`("Applicant") hereby submits to the Trademark Trial and Appeal Board its Brief in support
`
`of its Appeal of the Office Action dated November 17, 2006. The Examining Attorney
`
`has issued a final refusal to register Applicant's "THE RIFLEMAN" block letter mark (the
`
`"Mark") in Class 13 pursuant to Section 2(d) because of the existence of prior
`
`registration no. 3,007,779 in Class 13 for the mark “RIFLEMAN” by Leupold & Stevens,
`
`Inc. ("Registrant').
`
`This Appeal is based on the arguments cited herein, and the evidence
`
`attached hereto.
`
`This Brief is being filed pursuant to Section 2.142 of the Trademark Rules
`
`of Practice within a time period consisting of sixty days from the timely filing on May 11,
`
`2007 of Applicant's Notice of Appeal as extended for an additional sixty days from the
`
`date of the Order of June 19, 2007.
`
`II.
`
`INTRODUCTION AND STATEMENT OF ISSUES
`
`Applicant respectfully submits that its Mark will not cause confusion,
`
`mistake or deception with the mark of the prior registration, that the Section 2(d) Refusal
`
`must be reversed, and that its mark should be registered on the Principal Register.
`
`Applicant argues herein that its registration and use of its "THE RIFLEMAN" mark will not
`
`create a likelihood of confusion among consumers with the prior Registrant's registration
`
`

`
`and use of its "RIFLEMAN" mark. Although the marks are visually similar, the key factors
`
`in the Du Pont test weighs in favor of a finding that there is no likelihood of confusion.
`
`Applicant will demonstrate that under the applicable law, and in light of all
`
`relevant facts in this case, the Examining Attorney reached an erroneous decision by
`
`according excess weight to the visual similarity between the THE RIFLEMAN and
`
`RIFLEMAN letter marks, and performing an incorrect and overbroad and unreasonable
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`analysis of the parties‘ respective goods in Class 13 without giving adequate weight to
`
`the meaning and commercial impression of the goods in view of the restricted
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`identification of goods, the fame of applicant’s mark in the context of a television
`
`program, the extent of applicant’s right to exclude others from using a mark and any
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`other fact probative of the effect of use. In re E.l. Du Pont de Nemours & Co., 177
`
`U.S.P.O. 563 (C.C.PA 1973).
`
`In particular, the Examining Attorney's analysis accorded insufficient weight
`
`to the strength of applicant’s mark as associated with a television series, the specific
`
`identification of goods particularly referring to “Commemorative series of guns and rifles
`
`associated with a television series” the weakness of the marks when not focused on a
`
`television series, including their inherent nature and use by different parties, the highly
`
`distinguishable nature of the “commemorative” aspect. In particular, inadequate weight
`
`was directed to the way in which the respective goods are likely to be marketed and the
`
`customers likely to seek out commemorative goods associated with a television show
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`and the marketplace reality that the cited mark RIFLEMAN is not likely to be associated
`
`

`
`with a television show with a similar mark, particularly in view of the existence of
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`applicant’s preexisting registration THE RIFLEMAN and common law rights for that show
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`title. No consideration was given to the fact that the cited mark RIFLEMAN was
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`registered despite applicant’s incontestible registration of the mark THE RIFLEMAN for
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`the television series title.
`
`In so doing, the Examining Attorney gave insufficient
`
`consideration to the totality of the circumstances and realities of what occurs in the
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`marketplace. This analysis resulted in an improper refusal to register Applicant's Mark
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`that should be reversed by the TTAB.
`
`The ultimate issue in this appeal is whether the mark THE RIFLEMAN, well
`
`established in connection with a television series, is sufficiently distinctive so that a new
`
`application for the same mark THE RIFLEMAN as proposed for use in connection with
`
`“commemorative series of guns and rifles associated with a television series” is likely to
`
`avoid a likelihood of confusion with the cited mark RIFLEMAN.
`
`The key factual issue when examining the marks under Section 2(d)
`
`refusals is that of commercial impression by the consumer. Applicant's mark, "THE
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`RIFLEMAN" creates a very specific commercial impression — the title of a television
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`series broadcast on network television in the United States during the period from 1958
`
`to 1963. Network broadcast of a dramatic television series during this time period is
`
`significant since unlike today where the audience and consumer attention is diverted in
`
`many ways, there were only three television networks. Virtually all viewers of that era
`
`either tuned into or had a general awareness of primetime television shows in that time
`
`

`
`frame. The name of the television series was not RIFLEMAN, but THE RIFLEMAN and
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`the word "THE" was key to the public recognizing or symbolizing that particular television
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`series. Without the word "THE" the association with a television series is not likely to be
`
`drawn.
`
`Applicant is the owner of the federal incontestable and renewed registration
`
`THE RIFLEMAN, Reg. No. 1,576,916, registered January 9, 1990 for entertainment
`
`services in the nature of a continuing television series.
`
`While normally the addition of the article THE would not add much to the
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`existence of any particular mark, here, the extensive use and repetition of the title over
`
`an extensive period of time has caused the term THE RIFLEMAN as a whole to be highly
`
`distinctive as associated with anything which at least in any way is connected to or
`
`associated with the television series. Therefore, confusion would only exist if in fact the
`
`cited mark were used on goods related to the television series.
`
`The cited registration covers: "rifle scopes", "optical lens scopes" in Class
`
`9, and "scope mounts for firearms" in Class 13. Although these goods are related to
`
`guns and rifles, they are unrelated to the television series and there is nothing inherent in
`
`the cited mark that would suggest a relation to the television series and commerative
`
`goods related to the television series.
`
`Applicant's goods are very specifically delineated in the identification. They
`
`are "commemorative series of guns and rifles associated with a television series." There
`
`is nothing to suggest that the goods of the cited registration are or could be reasonably
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`

`
`associated with a television series. The narrow scope of applicant’s identification of
`
`goods indicates the manner in which the mark is to appear in the marketplace and seen
`
`by the consuming public and strongly suggests that it is likely to avoid any sort of conflict
`
`with the existing registration.
`
`In order to demonstrate the distinctiveness of the combination of the two
`
`words "THE RlFLEMAN", when a Google search is done of those two words surrounded
`
`by quotes, over 280,000 hits are retrieved. (EXHIBIT B) Reviewing the initial hits
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`retrieved, it is obvious that the words "THE RlFLEMAN" specifically deal with a particular
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`television series. See also the Wikipedia search attached. (EXHIBIT C)
`
`Yet the word RIFLEMAN by itself has a limited scope of distinctiveness. It
`
`is a word that appears in the dictionary, as is defined as:
`
`1. a soldier armed with a rifle.
`
`2. a person skilled in the use of a rifle.
`
`See the attached reference from dictionary.com. (EXHIBIT D) The word RIFLEMAN
`
`becomes highly suggestive when used with anything associated with rifles, and thus has
`
`a narrow scope of protection. Based on its narrow scope, the mark THE RIFLEMAN as
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`used in goods associated with the television series further avoids any conflict with the
`
`cited mark.
`
`III. DESCRIPTION OF THE PARTIES AND FACTS
`
`

`
`A. Applicant LEVY—GARDNER—LAVEN PRODUCTIONS, INC.
`
`is the
`
`successor company to the producer of the long running well known television series THE
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`RIFLEMAN. LEVY—GARDNER—LAVEN PRODUCTIONS, INC. has become the sole
`
`successor in interest to the rights in the television series. The series is still running in
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`various markets and the knowledge of the television series is well known among the
`
`baby boomer, and post baby boomer generation.
`
`It owns the renewed and incontestable
`
`mark THE RIFLEMAN for “entertainment services in the nature of a continuing television
`
`series” claiming a first use date in 1958.
`
`(EXHIBIT A)
`
`B. The examining attorney’s Section 2(d) refusal is based on prior
`
`registration No. 3,007,779 for RIFLESCOPES; OPTICAL LENS SCOPES in Class 9 and
`
`SCOPE MOUNTS FOR FIREARMS in Class 13. Registrant Leupold & Stevens, Inc. is a
`
`Beaverton, Oregon corporation which registered the wordmark RIFLEMAN on October
`
`18, 2005.
`
`IV. ARGUMENT
`
`A.
`
`Legal Standards
`
`There is no "Iitmus rule'' for determining whether two marks are confusingly
`
`similar. In re E.I. Du Pont de Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973). A
`
`determination of likelihood of confusion is made on a case-by-case basis, guided by the
`
`application of the thirteen factors from the seminal Du Pont decision, with not all of the
`
`factors necessarily relevant or to be given equal weight in a certain case, and where any
`
`

`
`factor may control a particular case. In re Maiestic Distilling Co., 65 U.S.P.Q.2d 1201,
`
`1204 (Fed. Cir. 2003).
`
`The Court of Appeals for the Federal Circuit has emphasized that almost
`
`any evidence bearing on the question of likelihood of confusion is admissible. The
`
`accepted view is that no single factor is necessarily dispositive in all cases, and that
`
`each case must be decided on its own facts, where the key differences are often subtle
`
`ones. lndustrial Nucleonics Corp. v. Hinde, 177 U.S.P.Q 387 (C.C.P.A. 1973). The TTAB
`
`has explained that a finding of similarity as to sight or sound or meaning does not
`
`automatically result in a finding of likelihood of confusion, even when goods or services
`
`are identical (which is not the case here), because all of the relevant facts of a particular
`
`case must be taken into account.1 In re Lamson Oil Co., 6 U.S.P.O.2d 1041 (TTAB
`
`1988).
`
`The pragmatic standard in likelihood of confusion cases dictates that marks
`
`should be considered "in light of what occurs in the marketplace" and the "circumstances
`
`surrounding the purchase of the goods." Walt Disney Productions v. Air Pirates, 199
`
`The thirteen Du Pont factors are: (1) the similar_it _of the marks in their_entireties as
`to appearance, sou_nd, meaning,_and _commercia impression;_(2) the similarity or
`d_issimi_larity o_f services as described in t_he application and prior registration; (3) the
`similarity or dissimilarity of established, likely-to-continue trade channels; (4) the
`conditions under which and buyers to whom sales a_re made (i.e., "impulse" buyers
`versus careful, sophisticated purchasers); (5) the prior mark's_fame (sale_s, _length of
`use, advertising); (6) the number and na ure of similar marks in use on similar oods
`or services; (7) he nature and extent of any actual confusion" (:13) the lengt_h of
`ime
`and conditions under which there has been concurrent use oft e marks witho_ut
`evidence of actual con_fusion; (9) the variety of goods on which the mark is or is not
`used; (1 Q) the market interference between the mark owners;(112 the extent o_f the
`applicants right to_ exclude others from usin a mark; 12) the ex ent of potential _
`confusion (de minimus or substantial , and 13g any ot er established fact probative
`of the effect of use. Du Pont, 177 U.
`.P.O. at 77.
`
`

`
`U.S.P.O. 769 (9”‘ Cir. 1978). This standard has been embraced by the CAFC, which has
`
`stated that a side—by-side comparison of trademarks is insufficient, because "conditions
`
`in the market place, not the courtroom, are the controlling factors." In re Nat'l Distillers
`
`and Chemical Corp., 132 U.S.P.O. 271,273-74 (C.C.P.A. 1962) (quoting with approval
`
`Avon Shoe Co,. Inc. v. David Crystal, lnc., 121 U.S.P.O. 397,401 (D.C. S.D. N.Y. 1959)).
`
`B.
`
`The Visual Similarity Of The Two Marks RIFLEMAN and THE
`
`RIFLEMAN Must Be Discounted Because Registrant's Word
`
`Mark is Weak
`
`The Examining Attorney based her decision to refuse registration in large
`
`part on the visual similarities between the marks at issue, and in so doing, improperly
`
`gave too much weight to this single criteria and thus too much protection to Registrant's
`
`weak mark. Visual similarity should be afforded less weight in circumstances such as
`
`these, i.e., where the Registrant's mark is inherently weak. Although visual similarity is a
`
`significant factor, when this factor is properly weighed and balanced with the other Du
`
`Pont factors, considering the totality of the circumstances and the realities of the
`
`marketplace, it is apparent that no likelihood of confusion exists between the marks at
`
`issue.
`
`Visually identical word marks do not necessarily give rise to consumer
`
`confusion. As a matter of law, the fact a common word in two marks is identical does not
`
`

`
`necessarily mean that there is a likelihood of confusion such that consumers will
`
`mistakenly associate the respective goods as emanating from a common source. See
`
`Colgate-Palmolive Co. v. Carter-Wallace, lnc., 58 CCPA 735, 432 F.2d 1400, 167
`
`U.S.P.Q. 529 (1970)(PEAK for dentifrice v. PEAK PERIOD dedodorant), House of
`
`Worsted-Tex, Inc. v. Superba Cravats, lnc., 48 C.C.P.A. 752, 284 F.2d 528 (C.C.P.A.
`
`1960) and NEC Electronics v. new England Circuit Sales, lnc., 13 U.S.P.Q. 2d 1058 (D.
`
`Mass. 1989)(NEC not confusingly similar to NECS) Even though the marks were visually
`
`virtually identical, the courts found that on balance the first Du Pont factor was
`
`outweighed by other considerations present under the totality of the circumstances.
`
`Here, this Court should accord minimal weight to visual similarity where other factors are
`
`present such as the commonality of the word part RIFLE when associated with guns and
`
`rifles, the dissimilarity of goods (commemorative goods associated with a television
`
`series as delineated in the identification in the application, and goods not reasonably
`
`associated with a television series), the extent of applicant’s right to exclude others from
`
`use of the mark (applicant’s preexisting rights and incontestible registration in the mark
`
`THE RIFLEMAN, giving the right to prevent the cited registrant from using a confusingly
`
`similar mark, if that were indeed the case, and the extend of potential confusion. (See
`
`EXHIBIT D) The RIFLEMAN mark as used by the registrant describes the nature of
`
`quality of the goods and its user (e.g. a man who uses a rifle) and is therefore a weak
`
`mark entitled to limited protection.
`
`10
`
`

`
`C. Prior Case Law is Not Controlling
`
`In reviewing some of the cases cited by the Examining Attorney, none are
`
`sufficiently persuasive or directly applicable to the present situation. In none of the cases
`
`cited does the addition of the one word turn what would otherwise be simply a highly
`
`suggestive mark into a widely recognized designation of origin with a decidedly different
`
`connotation, that is THE RIFLEMAN.
`
`The adage that trademark cases often fail to serve as legal precedent and
`
`each trademark case must be decided on its own facts is particularly apparent here
`
`when the facts compel a determination that the use of the article THE in front of the word
`
`RIFLEMAN turns the word into a very distinct highly recognizable designation of origin
`
`and thus a trademark which is perceived very differently and not confusingly similar to
`
`
`the mark that is registered. in re Cosvetrics Laboratories lnc., 202 U.S.P.Q. 842, 844
`
`(TTAB 1979) states:
`
`"While prior decisions in cases involving different marks may be pertinent
`
`to the extent that they may set standards to be applied generally in
`
`proceedings before the Board, they are not controlling in our determination
`
`of the issues of likelihood of confusion presented in these proceedings
`
`since it is axiomatic that each case must be decided on its own particular
`
`facts."
`
`In that case, HEAD START COSVETIC and design was sought to be registered but was
`
`blocked by prior registration of the mark HEAD START. There, the additional word did
`
`11
`
`

`
`not change the meaning in the consumer’s mind, unlike the present situation. Here,
`
`RIFLEMAN by itself means a man with a rifle. See the dictionary definition above. THE
`
`RIFLEMAN means the television show. In the COVETICRICS case, the TTAB points out
`
`that consideration must be given to the entire mark including any term in addition to that
`
`which closely resembles the opposing mark. 202 U.S.P.Q. at 845. Here, the entire mark
`
`includes the word THE. The strong impression changing effect of the article THE in the
`
`particular mark THE RIFLEMAN triggers the consumer’s impression of the television
`
`series as identifying a particular source of the goods distinct from the use of the word
`
`RIFLEMAN by itself as a mark. This is significant here as it entirely changes the
`
`meaning of the mark to the typical consumer.
`
`in re Riddle, 225 U.S.P.Q. 630, 632 (TTAB 1985) involved the mark
`
`RICHARD PETTY’S ACCUTUNE rejected on the mark ACCUTUNE. The addition of the
`
`possessive words RICHARD PETTY'S did not eliminate confusion since the public might
`
`think that Richard Petty endorsed or sponsored ACCU TUNE . That is to be
`
`distinguished from the present situation where the addition of the word THE actually
`
`does change the impression as to the source of the goods, to a source associated with
`
`the television series, while RIFLEMAN by itself has no such connotation to the public.
`
`In re August Storck KG, 218 U.S.P.Q. 823, 25-26 (TTAB 1983) actually
`
`stands for the proposition that goods may be sufficiently different even if related to avoid
`
`confusion. The difference in this case, supported by the language of August Storck KG is
`
`that someone who is a collector of THE RIFLEMAN memorabilia and sponsored goods
`
`12
`
`

`
`are looking for something specific, and are focused on the fact that THE RIFLEMAN
`
`goods are what they are looking for and not RIFLEMAN.
`
`Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, lnc., 526 F.2d 556,
`
`188 U.S.P.Q. 105 (C.C.P.A. 1975)(BENGAL and BENGAL LANCERS) is distinguishable
`
`on the grounds that the evidence submitted in the record in that case was thin and the
`
`mark was not strong. A book previously had apparently been published called "The Lives
`
`of a Bengal Lancer." Knowledge of the book title was not so significant there as to create
`
`a different commercial impression. The reason the present case can be distinguished is
`
`at least two fold. The difference in commercial impression here is qualitatively different.
`
`Also, the type of goods is qualitatively distinctive, and tied into the television series. The
`
`BENGAL LANCER case turned on whether the marks have a meaning sufficiently
`
`different to avoid a likelihood of confusion. Here, even the Google search provides
`
`significant support of the distinctive nature of the mark as a whole. There is a meaning to
`
`the purchasers of the parties’ goods sufficiently different to avoid any likelihood of
`
`confusion.
`
`In re Chatam international lnc., 380 F.3d 1340, 71 U.S.P.Q.2d 1944 (Fed.
`
`Cir. 2004) rejected the mark JOSE GASPAR GOLD for tequila in view of GASPAR’S
`
`ALE. There, the marks did not make a qualitatively different meaning on the minds of
`
`consumers. JOSE simply reenforced the impression that GASPAR is the name of an
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`individual. In the present situation, the word THE completely changes the meaning
`
`causing the public to focus on the television series.
`
`13
`
`

`
`D.
`
`The Examining Attorney's Broad Interpretation And
`
`Presumption Of Similarity lgnores The Real Circumstances
`
`Of The Marketplace
`
`The Examining Attorney determined that the goods were highly related by
`
`adopting a broad interpretation of the goods identified in the prior registration. Although
`
`the Registrant describes its goods broadly, the TTAB should not ignore the realities of
`
`the marketplace and the difference between the Registrant's goods and the Applicant's
`
`“Commemorative series of guns and rifles associated with a television series.
`
`The Examining Attorney seeks to support this broad interpretation with a
`
`blanket attachment of other registrations where the mark's identification is similarly broad
`
`and covers goods associated with rifles but not with licensed merchandising properties
`
`associated with television shows. Yet these other marks are just samples of overbroad
`
`descriptions that ignore the market realities. Those expansive descriptions are irrelevant,
`
`where as here, the likely actual circumstances show that the use of these marks will not
`
`cause confusion among consumers.
`
`E.
`
`Confusion ls Unlikely Because Applicant's and Registrant's
`
`Customers Are Not Necessarily Sophisticated, but Discerning
`
`So as to Seek out Brand and Licensed Affiliation
`
`It is axiomatic in trademark law that confusion is less likely where
`
`expensive goods or services are purchased after careful consideration than when
`
`14
`
`

`
`inexpensive goods or services are purchased casually or impulsively. Magnaflux Corp.
`
`v. Sonoflux Corp., 109 U.S.P.O. 313 (C.C.P.A. 1956). The likelihood of consumer being
`
`confused by two marks is further reduced when the goods or services are "usually
`
`purchased by persons who seek out merchandised products having an affiliation with a
`
`known source.
`
`V. SUMMARY
`
`Confusion among the relevant consumers of these marks as applied to
`
`their respective services is unlikely due to the inherent quality of the marks and the facts
`
`that the goods are very different in the albeit narrow context of commemorative goods
`
`associated with a television show as opposed to general merchandise related to
`
`firearms. As the Board's primary reviewing court has declared in cases quite similar to
`
`this one:
`
`We are not concerned with mere theoretical possibilities of confusion,
`
`deception, or mistake or with de minimis situations but with the
`
`practicalities of the commercial world, with which the trademark laws deal.
`
`
`Witco Chemical Co. v. Whitfield Chemical Co.
`lnc., 164 U.S.P.O. 43, 44-45
`
`(CCPA 1969); See also Electronic Design &Sales, Inc. v. Electronic Data
`
`Systems, Corp., 21 U.S.P.O. 2d 1388 (Fed. Cir. 1992) (quoting Witco
`
`Chemical with approval).
`
`No concern was raised when the mark RIFLEMAN was registered in view
`
`of applicant’s preexisting incontestible mark for THE RIFLEMAN. Yet the existence of
`
`15
`
`

`
`rights and the ability to enforce those rights are entitled to reasonable weight under the
`
`Dupont factors.
`
`Applicant respectfully requests that the final refusal to register be reversed.
`
`Dated: August 17, 2007
`
`/paul d. supnik/
`
`Attorney for Applicant/Appellant
`
`16
`
`

`
`EXHIBITA
`
`To Brief of Applicant/Appellant
`
`Serial No. 78/740,442
`
`Mark: THE RIFLEMAN
`
`In re In re Application of
`
`LEVY-GARDNER-LAVEN
`
`PRODUCTIONS, INC.
`
`EXHIBITA
`
`

`
`Int. CL: 41
`
`Prior U.S. Cl.: 107
`
`Reg- No. 1,576,916 I
`United States Patent and Trademark Office Registered Jan. 9, 1999
`
`
`SERVICE MARK
`PRINCIPAL REGISTER
`
`THE RIFLEMAN
`
`PRODUCTIONS,
`LEVY-GARDNER-LAVEN
`INC. (DELAWARE CORPORATION)
`#400
`'
`9570 WILSHIRE BLVD.
`BEVERLY HILLS, CA 90212
`
`FOR: ENTERTAINMENT SERVICES IN THE
`NATURE OF A ’ CONTINUING TELEVISION
`SERIES, IN CLASS 41
`CL. 107).
`
`FIRST USE
`3-7-1958.
`
`3-7-1958;
`
`COMMERCE‘
`
`‘
`SER. NO. 73—792,579, FILED 4-10-1989.
`
`PATRICIA ANN BUCCI, EXAMINING ATTOR-
`NEY
`'
`’
`
`

`
`Latest Status Info
`
`Page 1 of 3
`
`
`Thank you for your request. Here are the latest results from the
`
`This page was generated by the TARR system on 2007—O8—l"/' 15:02:13
`
`Serial Number: 73792579
`
`Registration Number: 15"/69l6
`
`Mark (words only): THE RIFLEMAN
`
`Standard Character claim: No
`
`Current Status: This registration has been renewed.
`
`Date of Status: l999—lO~l9
`
`Filing Date: 1989-04-10
`
`Transformed into a National Application: No
`
`Registration Date: l990—Ol~09
`
`Register: Principal
`
`Law Office Assigned: (NOT AVAILABLE)
`
`If you are the applicant or applicant's attorney and have questions about this file, please contact
`‘:3 :O.,€;0\5
`the Trademark Assistance Center at
`
`Current Location: 900 —File Repository (Franconia)
`
`Date In Location: 2()()l ~O6—12
`
`l. LEVY—GARDNER—LAVEN PRODUCTIONS, INC.
`
`Address:
`
`L§E3V‘){'—G/-XRDNER—LAV§E3N PRO§3{.IC'I‘i(}NS, ENC.
`9595 WILSHIRE BLVD, SUITE 610
`
`BEVERLY HILLS, CA 90212
`United States
`
`Legal Entity Type: Corporation
`State or Country of Incorporation: Delaware
`
`International Class: 041:
`
`Class Status: Active
`
`http://tarr.uspto.goV/serVlet/tarr?regser=serial&entry=73792579
`
`8/ 17/2007
`
`

`
`Latest Status Info
`
`Page 2 of 3
`
`EN'1“ER."i‘AI1‘~IMEN"i‘ SERVECES IN
`
`NATURE OF A CONTENUENG TELEVISION SERIES
`
`Basis: ifa)
`First Use Date: 1958—O3—07
`
`First Use in Commerce Date: 1958—O3—O7
`
`i999--10--19 -- First renewal 10 year
`
`i999—08~19 — Section 9 filed/check record for Section 8
`
`i996—Q3—16 — Section 8 (t_i—year) accepted 8:, Section 15 acknowledged
`
`1995-O'7~1IZ ~ Section 8 (6-year) and Section 15 Filed
`
`1990--Oi--O9 -- Registered -- Principal Register
`
`1989-1047 — Piiblished for opposition
`
`i989—09—l6 - Notice of pubiicatiora
`
`i989--G8--18 -- Approved for Pub -- Principal Register (Initial exam)
`
`i989—07~24 — Connnunication received frorn applicant
`
`1989-0619 ~ Non—tina1 action mailed
`
`1989--06--O5 —- Assigned, To Examiner
`
`Attorney of Record
`STEVEN H. GARDNER
`
`Correspondent
`STEV H GARDNER
`COHON AND GARDNER RC
`
`1880 CENTURY PARK E STE Sifl
`LQS
`CA 900t_i7—1608
`
`http://tarr.uspto.gov/serV1et/tarr?regser=seria1&entry=73792579
`
`8/ 17/2007
`
`

`
`EXHIBIT B
`
`To Brief of Applicant/Appellant
`
`Serial No. 78/740,442
`
`Mark: THE RIFLEMAN
`
`In re In re Application of
`
`LEVY-GARDNER-LAVEN
`
`PRODUCTIONS, INC.
`
`EXHIBIT B
`
`

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