Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA774000
`
`Filing date:
`
`09/30/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`Applicant
`
`85771143
`
`HSG, LLC
`
`Applied for Mark
`
`HIGH SPEED GEAR
`
`Correspondence
`Address
`
`Submission
`
`Attachments
`
`THOMAS G VARNUM
`BROOKS PIERCE MCLENDON
`HUMPHREY & LEONARD LLP, 115 N 3RD ST, SUITE 301
`WILMINGTON, NC 28401-4076
`UNITED STATES
`tvarnum@brookspierce.com, gwarren@brookspierce.com,
`jlund@brookspierce.com, rcage@brookspierce.com
`
`Appeal Brief
`
`HIGH SPEED GEAR Appeal Brief.pdf(492351 bytes )
`Brief Exhibits 1 - 10.pdf(5056257 bytes )
`Brief Exhibits 11 - 18.pdf(4166436 bytes )
`Brief Exhibits 19 - 21.pdf(4859584 bytes )
`Brief Exhibits 22 - 27.pdf(4490065 bytes )
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Thomas G. Varnum
`
`tvarnum@brookspierce.com
`
`/Thomas G. Varnum/
`
`09/30/2016
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`HSG, LLC d/b/a “High Speed Gear”
`85771143
`
`In re Application of:
`
`Application Serial No.:
`
`For the Mark:
`
`Filed:
`
`
`
`Appeal Filing Date:
`
`
`
`
`
`
`
`HIGH SPEED GEAR
`
`November 5, 2012
`
`March 26, 2015
`
`APPLICANT’S APPEAL BRIEF
`
`
`
`

`

`Applicant’s Appeal Brief
`Serial No. 85771143
`
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`2
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`4
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`4
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`6
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`6
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`6
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`8
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`8
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`11
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`12
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`13
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`18
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`20
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`20
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`22
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`23
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`24
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`Appended
`
`Appended
`
`
`
`TABLE OF CONTENTS
`
`
`
`Index of Authorities
`
`I. Introduction
`
`II. Description of the Record
`
`III. Statement of the Issue on Appeal
`
`IV. Recitation of Facts
`
` A. The HIGH SPEED GEAR Mark
`
`
`
`
`
`B. The Registered Mark
`
`C. Other Relevant Marks
`
`V. Arguments
`
` A. The Likelihood of Confusion Standard
`
`
`
`
`B. There is no likely confusion because the two marks
`create entirely different commercial impressions
`
`
`
`
`
`
`
`
`C. Consumers of gear and ammunition conduct careful,
`sophisticated purchasing and are not likely to be
`confused by Registrant and Applicant’s marks
` D. Registrant’s use of a house mark with its Registered
`
` Mark further eliminates any potential
`for consumer confusion
`
`
`
`
`
`
`
`
`E. Confusion is unlikely because ammunition and tactical
`
`gear products are distinctly different goods
`
`F. Third party registrations of marks similar to the Registered
`Mark at issue underscore that confusion is unlikely
`
` G. More than sixteen years of coexistence without any
`
`
`reported instance of actual confusion confirms
`that confusion is unlikely
`
`
`
`VI. Conclusion
`
`Certificate of Filing
`
`List of Exhibits; Exhibits 1 through 38
`
`
`
`
`
`1
`
`

`

`
`INDEX OF AUTHORITIES
`
`
`
`Authority
`
`TRADEMARK MANUAL OF EXAMINING PROCEDURES
`
`
`
`TMEP § 1212.02(b)
`
`CASES
`
`
`
`American Steel Foundries v. Robertson, 269 U.S. 372 (1926)
`
` Glenwood Labs., Inc. v. American Home Prods. Corp., 455 F.2d 1384,
`
` 173 U.S.P.Q. 19 (C.C.P.A. 1972)
`
`
`
`In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973)
`
` Han Beauty Inc. v. Alberto-Culver Co., 236 F.3d 1333,
`
` 57 U.S.P.Q.2d 1557 (Fed. Cir. 2001)
`
`
`
`
`
`
`
`
`
`
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`
`
`
`
`Champagne Louis Roederer S.A. v. Delicato Vineyards, 148 F.3d 1373,
` 47 U.S.P.Q.2d 1459 (Fed. Cir. 1998)
`
`Top Tobacco, L.P. v. N. Atl. Operating Co., 509 F.3d 380,
` 85 U.S.P.Q.2d 1251 (7th Cir. 2007)
`
`Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,
` 396 F.3d 1369, 73 U.S.P.Q.2d 1689 (Fed. Cir. 2005)
`
`Citigroup Inc. v. Capital City Bank Group, Inc.,
` 94 U.S.P.Q.2d 1645 (T.T.A.B. 2010)
`
`Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572,
` 6 U.S.P.Q.2D (BNA) 1001 (Fed. Cir. 1988)
`
`Bos. Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1,
` 87 U.S.P.Q.2d 1385 (1st Cir. 2008)
`
`First Sav. Bank, F.S.B. v. First Bank Sys., Inc., 101 F.3d 645,
` 40 U.S.P.Q.2d 1865 (10th Cir. 1996)
`Bass Pro Trademarks, L.L.C. v. Sportsman’s Warehouse, Inc., 2008 TTAB LEXIS 16,
` 89 U.S.P.Q.2D (BNA) 1844 (T.T.A.B. Apr. 4, 2008)
`
`In re Perry Denisi, 1985 TTAB LEXIS 107,
` 225 U.S.P.Q. (BNA) 624 (T.T.A.B. Mar. 8, 1985)
`
`Long John Distilleries, Ltd. v. Sazerac Co., 426 F.2d 1406,
` 166 U.S.P.Q. (BNA) 30 (C.C.P.A. 1970)
`
`Knight Textile Corp. v. Jones Inv. Co., 2005 TTAB LEXIS 250,
` 75 U.S.P.Q.2D (BNA) 1313 (T.T.A.B. June 21, 2005)
`
`Calypso Technology Inc. v. Calypso Capital Management LP,
` 2011 TTAB LEXIS 259, 100 USPQ2d 1213 (T.T.A.B. 2011)
`
` McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126,
`
` 202 U.S.P.Q. 81 (2d Cir. 1979)
`
`2
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`Applicant’s Appeal Brief
`Serial No. 85771143
`
`
`Page No.
` (first cite)
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`14
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`

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`In re Shoe Works, Inc., 1988 TTAB LEXIS 23, 6 U.S.P.Q.2d 1890 (T.T.A.B. 1988)
`
`Applicant’s Appeal Brief
`Serial No. 85771143
`
`21
`
`
`
` Glow Indus., Inc. Lopez, 273 F. Supp. 2d 1095 (C.D. Cal. 2003)
`
`
`
`
`
`
`Predator Intern., Inc. v. Gamo Outdoor USA, Inc.,
` 669 F. Supp. 2d 1235 (D. Colo. 2009)
`
`In re RA Brands, L.L.C., 2014 TTAB LEXIS 413 (T.T.A.B. Sept. 23, 2014)
`
` Omega S.A. (Omega AG) (Omega Ltd.) v. Alliant Techsystems Inc.,
`
` 2015 TTAB LEXIS 124 (T.T.A.B. Apr. 29, 2015)
`
`
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`
`
`Clam Corp., Inc. v. Innovative Outdoor Solutions, Inc.,
` 2008 U.S. Dist. LEXIS 100938, 89 U.S.P.Q.2d 1314 (D. Minn. 2008)
`
`Sally Beauty Co., Inc. v. Beautyco, Inc., 304 F.3d 964,
` 64 U.S.P.Q.2d 1321 (10th Cir. 2002)
`
`Beer Nuts, Inc. v. Clover Club Foods Co., 711 F.2d 934,
` 221 U.S.P.Q. 209 (10th Cir. 1983)
`
`Pinnacle College, LLC, 2013 TTAB LEXIS 478 (T.T.A.B. Sept. 4, 2013)
`
`Petro Stopping Ctrs., L.P. v. James River Petroleum, 130 F.3d 88,
` 44 U.S.P.Q.2d 1921 (4th Cir. 1997)
`Amstar Corp. v. Domino’s Pizza, Inc., 615 F.2d 252,
` 205 U.S.P.Q. 969 (5th Cir. 1980)
`King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
` 182 U.S.P.Q. 108 (C.C.P.A. 1974)
`
`STATUTES AND REGULATIONS
`
`Lanham Act § 2(d)(1)
`
`
`
`
`22
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`18
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`3
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`

`

`Applicant’s Appeal Brief
`Serial No. 85771143
`
`
`I. INTRODUCTION
`
`Applicant, HSG, LLC (“Applicant” or “HSG”), hereby submits this brief in support of its
`
`appeal from the Examining Attorney’s final refusal to register the mark HIGH SPEED GEAR (in
`
`International Class 013, in connection with:
`
`Tactical gear for military, law enforcement, public safety, airsoft not for
`recreational purposes, and hunting, namely, pouches and carriers for
`cartridges and ammunition magazines, bags and packs designed to carry
`firearms, cartridges, ammunition and tactical gear, belts and shoulder
`harnesses designed to secure tactical equipment to the user, sling straps for
`firearms, fastening clips for securing military accessories and ammunition
`pouches, leg and chest rigs to hold and carry ammunition magazines, duty
`belts and rigger belts, plate carriers, holsters, vests designed to carry
`ammunition magazines, fastening clips for securing
`tactical gear
`accessories and ammunition magazine pouches, firearm scabbards,
`ammunition shell trays, and component parts for ammunition magazine
`pouches.
`
`There is no likelihood of confusion in this case, and therefore the Examining Attorney’s refusal to
`
`approve the Application for publication should be reversed, so that the Application may proceed
`
`towards registration.
`
`II. DESCRIPTION OF THE RECORD
`
`The Application, as filed on November 5, 2012, initially applied for registration of the
`
`HIGH SPEED GEAR mark in connection with various goods and services, all related to so-called
`
`“tactical gear,”1 across several International Classes, including: (i) Class 013 (tactical gear
`
`products); (ii) Class 025 (tactical clothing goods); (iii) Class 035 (tactical gear retail and on-line
`
`store services); and (iv) Class 040 (tactical gear manufacturing services). Ex. 1. However, after
`
`the initial application was refused by Office Action dated March 8, 2013 (Office Action #1), HSG
`
`
`1 “Tactical gear” is a term generally recognized in the industry to mean accessory products used in
`connection with military, law enforcement, hunting, target shooting, personal defense, airsoft and paintball
`equipment and operations.
`
`
`
`4
`
`

`

`Applicant’s Appeal Brief
`Serial No. 85771143
`
`filed a Request to Divide Application on June 11, 2013, prompting the initial, multi-class
`
`application to be divided, with all Class 013 goods being separated into the single-class
`
`Application at issue in this appeal. Notably, registration of the HIGH SPEED GEAR mark has
`
`since been allowed, and obtained, in connection with all of HSG’s Class 025, Class 035, and Class
`
`040 tactical gear-related goods and services identified in the initial application.
`
`After the initial application was divided, the Examining Attorney issued an Office Action
`
`dated September 6, 2013 (Office Action #2), requesting a clarification of the identification of
`
`goods in the Application, and maintaining the prior refusal under Trademark Act, Section 2(d), 15
`
`U.S.C. § 1052(d). Such §2(d) refusal was based solely upon Registration No. 3614383, for the
`
`mark HI-SPEED in connection with ammunition (the “Registered Mark”), owned by RA Brands,
`
`LLC (“Registrant” or “RA Brands”).
`
`Applicant clarified the classification of goods as requested in Office Action #2 and, by
`
`Office Action dated April 10, 2014 (Office Action #3), the Examining Attorney requested another
`
`clarification of the identification of goods, rejected Applicant’s arguments against the finding of
`
`likely confusion with the RA Brands’ Registered Mark, and maintained the §2(d) refusal.
`
`
`
`In a Final Office Action dated September 26, 2014 (Office Action #4), the Examining
`
`Attorney again maintained the §2(d) refusal based upon the Registered Mark, focusing on two
`
`factors alone: (i) similarity of the marks and (ii) similarity or relatedness of the goods and/or
`
`services.
`
`Applicant timely filed a Notice of Appeal on March 26, 2015, and contemporaneously
`
`requested reconsideration, which request the Examining Attorney denied on June 6, 2015.
`
`
`
`5
`
`

`

`Applicant’s Appeal Brief
`Serial No. 85771143
`
`These ex parte appeal proceedings were suspended on September 29, 2015, pending the
`
`filing of a Section 8 affidavit by RA Brands. RA Brands eventually filed the affidavit during the
`
`grace period, and this appeal resumed by order dated August 1, 2016.
`
`III. STATEMENT OF THE ISSUE ON APPEAL
`
`At issue is whether there is a likelihood of confusion between Applicant’s HIGH SPEED
`
`GEAR mark for various tactical gear goods and RA Brands’ HI-SPEED mark for ammunition.
`
`IV. RECITATION OF FACTS
`
`A. The HIGH SPEED GEAR Mark.
`
`HSG, which does business as “High Speed Gear,” is a limited liability company organized
`
`under the laws of North Carolina. HSG’s predecessor in interest first began using the HIGH
`
`SPEED GEAR Mark in commerce at least as early as August 18, 1999, and HSG and its
`
`predecessor have continued using the HIGH SPEED GEAR Mark in commerce continuously since
`
`that date. Ex. 1.
`
`The products sold under the HIGH SPEED GEAR Mark are items used primarily in the
`
`context of performing military, law enforcement, or hunting activities. See Exs. 1, 27. HSG sells
`
`these goods through its online retail store, see Ex. 2, as well as through an extensive network of
`
`distributors throughout the United States and beyond.
`
`The record contains extensive evidence about the use and understanding of the term “high
`
`speed” among military and veteran communities. This evidence includes definitions from several
`
`slang dictionaries of the phrase “high speed” as it relates to military personnel and activities:
`
`(1) “[a]n individual who his highly motivated and at or near peak efficacy.”
`Glossary of Military Terms & Slang, Military.com. Ex. 14
`(2) “high speed, low drag (US) Excellent, particularly of equipment.” Language
`Guide to Military Slang. Ex. 6.
`
`
`
`6
`
`

`

`Applicant’s Appeal Brief
`Serial No. 85771143
`
`(3) “Meaning [of ‘High Speed’]: the opposite of ate up. This is a soldier who
`learns quickly, is always on time, has his stuff together, is polished, washed,
`and any combination of good qualities. Rarely it can be used as itself as a
`stand-alone compliment.” Slang Dictionary, “High Speed” as military slang,
`Ex. 26.
`(4) “High Speed – a squared away and highly motivated soldier.” US Army
`acronyms and expressions, GoArmyParents.com. Ex. 26.
`(5) “High Speed: Cutting-edge or state-of-the-art (synonym ‘low drag’).” U.S.
`Army acronyms and expressions, http://www.guildcompanion.com. Ex. 26.
`(6) “Within the fraternity of the United States Army, a ‘high-speed’ Soldier is a
`self-motivated individual who sets the standard for excellence and
`professionalism.” Album cover, HIGH-SPEED, The U.S. Army Concert
`Band. Ex. 4.
`
`The record in this case also contains examples of usage of the phrase “high speed” in the realm of
`
`professional and academic scholarship regarding effective military tactics:
`
`(1) Steven Cooke, ‘High-Speed, Low-Drag’ Implications for the Military, and
`Beyond, Am. Military Univ., Feb. 9, 2015, www.military1.com/
`defense/article/564665-high-speed-low-drag-implications-for-the-military-
`and-beyond (signifying a leader in one’s field with a high level of competency
`to successfully complete a task). Ex. 7.
`(2) Article, “From Low Drag to High Speed, Soldier Turns Things Around”
`(December 18, 2012). Ex. 15.
`(3) Article, “High-Speed Soldier Training,” www.gather.com (January 18, 2008).
`Ex. 16.
`
`The record further contains examples of usage of the phrase “high speed” in a variety of cultural
`
`contexts:
`
`(1) Music: U.S. Army Concert Band Album Cover. Exs. 4, 5.
`
`(2) Employment: Simply Hired, Average High Speed Soldier Salaries, located at
`http://www.simplhired.com. Ex. 8.
`
`(3) Humor: Facebook page of Operation High-Speed Soldier (displaying images
`of military humor). Ex. 9.
`(4) Trading Cards: Steam Trading Cards. Hergus’ High-Speed Soldier trading
`card. Ex. 10.
`(5) Dating Humor Poster, “Keep Calm and Date a High Speed Soldier,” located
`at www.keepcalmandposters.com. Ex. 17.
`
`
`
`7
`
`

`

`Applicant’s Appeal Brief
`Serial No. 85771143
`
`In summary, in the context of military personnel and veteran communities, the term “high speed”
`
`indicates a high degree of competence, efficacy, and professionalism.
`
`B. The Registered Mark.
`
`
`
`RA Brands is an affiliate company to Remington Arms Company, LLC, which are both
`
`limited liability companies organized under the laws of North Carolina and Delaware, respectively.
`
`Ex. 11. RA Brands purports to own the mark HI-SPEED for use in connection with ammunition.
`
`The Registered Mark was first registered with the USPTO on July 28, 1925 by Remington Arms
`
`Company, Inc. Ex. 12. RA Brands became the owner of the Registered Mark, as registered in the
`
`cited registration, by application filed May 5, 2009. Ex. 13.
`
`
`
`Remington is a long-standing and well respected firearm company, and owns additional
`
`registrations for, among other marks, the “Remington” house mark, which is owned by RA Brands
`
`and—like the Registered Mark at issue here—covers ammunition. See, e.g., Registration Numbers
`
`0187871, 0745041, 1027328, 2872762, and 2872763. Ex. 19. The products on which the
`
`Registrant uses the Registered Mark are exclusively ammunition, and the goods typically also
`
`display the Remington house mark as well. Ex. 18; Ex. 19.
`
`C. Other Relevant Marks.
`
`The adjective “high” and similar terms in reference to ammunition goods appears
`
`frequently in USPTO registrations. As part of the record evidence, Applicant has provided
`
`extensive documentation of these various third party registrations. For the sake of convenience, a
`
`formal chart of the various registrations with the word “high” or “hi” or “hyper” as used in Class
`
`013 goods is below.
`
`MARK
`HYPER SPEED
`Reg. 4071525
`
`GOODS
`
`OWNER
`
`STATUS
`
`Ammunition
`
`Olin Corp.
`
`Live
`
`
`
`8
`
`
`
`
`
`

`

`HI-POWER
`Reg. 1607415
`
`Shotgun shells, center
`fire and rim dire rifle
`cartridges, pistol and
`revolver ammunition
`
`HI-T CANISTER
`Ser. 85807915
`
`Tank and artillery
`ammunition
`
`Firearms, grips,
`ammunition
`magazines,
`ammunition, related
`equipment
`
`Applicant’s Appeal Brief
`Serial No. 85771143
`
`
`Federal Cartridge
`Co. Corp.
`
`Live
`
`General Dynamics
`Ordnance and
`Tactical Systems,
`Inc.
`
`High Performance
`Firearms LLC
`
`Live. NOA issued;
`no 2(d) refusal.
`
`Dead. Abandoned
`after appeal
`commenced; no
`2(d) refusal.
`
`Ammunition
`
`RA Brands
`
`Live
`
`Ammunition,
`firearms, various
`related equipment
`Rifle rests, handgun
`rests, firearm recoil
`absorbers, weapon
`cases for firearms
`storage and for
`handgun storage
`
`United States
`Marketing Corp.
`
`Live
`
`United States
`Marketing Corp.
`
`Live
`
`Ammunition
`
`Olin Corp.
`
`Dead. Cancelled
`after appeal
`commenced; no
`2(d) refusal.
`
`HIPERFIRE
`Ser. 85453577
`
`HI-SPEED
`Reg. 3614383
`
`HI-SCORE
`Reg. 2891058
`
`HYSKORE
`Reg. 3922415
`
`HI-IMPACT
`Reg. 1755205
`
`HI-SHOK
`Reg. 0765673 &
`0891883
`
`HIGH GROUND
`Reg. 4154777
`
`Bullets for rifle and
`hand gun;
`ammunition
`Ammunition,
`munitions, and
`related equipment
`
`
`HIGH DENSITY
`Reg. 3022250
`
`Ammunition
`
`HIGH NOON
`HOLSTERS
`Reg. 2277469
`
`HIGH POWER
`AIRSOFT +
`design
`Reg. 4142203
`
`Gun holsters, speed
`loader ammunition
`holders, ammunition
`pouches
`
`Airsoft guns pellets
`for recreational
`purposes
`
`HI-STANDARD
`Reg. 2856094
`
`Pistols and parts
`therefor
`
`
`
`9
`
`Vista Outdoor
`Operations LLC
`
`Live
`
`Ehmke
`Manufacturing,
`Inc.
`
`Vista Outdoor
`Operations LLC
`
`Gold Rush
`Industries, Inc.
`
`Live
`
`Live
`
`Live
`
`Hazlehurst, Daniel Live
`
`High Standard
`Manufacturing
`Co., Inc.
`
`
`Live
`
`

`

`Applicant’s Appeal Brief
`Serial No. 85771143
`
`
`Recoil pads
`
`North Pass, Ltd.
`
`Live
`
`Ammunition, namely
`bullets
`
`Lost River
`Ballistics, Inc.
`
`Dead. Cancelled
`1/3/2009. Allowed
`to register among
`others.
`
`
`Sights for firearms
`
`North Pass, Ltd.
`
`Live
`
`Shotgun shells
`
`Guns, pistols, and
`parts thereof
`
`Ammunition
`
`Federal Cartridge
`Company
`
`
`Dead. Cancelled
`1/15/2016; no 2(d)
`refusal
`
`G.W. Elliott, Inc.
`
`Live
`
`Lightfield
`Ammunition
`Corp.
`
`RUAG Ammotec
`GmbH LLC
`
`
`Live
`
`Live
`
`HI VIZ XCOIL
`Reg. 2857516
`
`
`HIGH
`BALLISTIC
`COEFFICIENT
`Reg. 2554270
`
`HIVIZ
`Reg. 2339894
`
`
`HI-BRASS
`Reg. 1596295
`
`HIGH
`STANDARD
`Reg. 0969964
`
`HYBRED-
`ELITE
`Reg. 3473829
`
`HYPERMAX
`Reg. 3628446
`
`Ammunition,
`projectiles
`
`HYPERSONIC
`Reg. 4471615
`
`HYPERSONIC
`STEEL
`Reg. 3929560
`
`
`Ammunition
`
`RA Brands, LLC
`
`Live
`
`Ammunition
`
`RA Brands, LLC
`
`Live
`
`Additionally, the word “high” appears in commerce frequently in connection with Class 013
`
`goods, demonstrating that consumers are accustomed to discerning between various uses of the
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`word “high” in connection with Class 013 goods. These uses include, but are not limited to:
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` “Winchester Hyper Speed Rimfire Ammunition 22 Long rifle 40 Grain Plated Lead
`Hollow Point” and
` “Browning Hi-Power Standard 9x19mm Pistol”
`
` Sinclair International – Winchester Slug Hi-Impact Ammunition
` High Country Ammunition
` Hiperfire
` HySkore.com
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`Applicant’s Appeal Brief
`Serial No. 85771143
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`Exs. 22, 23. In short, there are at least fourteen registered marks for the exact same products for
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`which RA Brands has the Registered Mark that use phrasing similar to “hi-speed” to describe their
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`ammunition.
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`V. ARGUMENTS
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`Applicant’s HIGH SPEED GEAR Mark and Registrant’s Registered Mark create entirely
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`different commercial impressions, largely due to the very different connotations the term “high
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`speed” has when applied to HSG’s tactical gear, as opposed to when the term “hi-speed” is applied
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`to ammunition. These different commercial impressions are caused in part by the highly
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`descriptive nature of the Registered Mark in the context of ammunition (i.e. high-velocity
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`ammunition), as compared to the suggestive nature of the HIGH SPEED GEAR mark in the context
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`of HSG’s goods (i.e. gear for soldiers and other individuals who can be described as “high speed”).
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`Additional reasons why confusion is unlikely here, as more fully argued below, include:
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`(i) the inclusion of the word “GEAR” in the HIGH SPEED GEAR mark further alleviates any risk
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`of confusion with the Registered Mark; (ii) both Applicant’s and RA Brands’ customers are
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`sophisticated and careful consumers, as they are engaging in inherently dangerous and often life-
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`risking activities; (iii) Registrant’s mark applies only to one good (ammunition), with which there
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`is no overlap with the goods identified in the Application (tactical gear products); (iii) numerous
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`third party registrations for Class 013 goods are significantly similar to the Registered Mark,
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`thereby minimizing the scope of protection afforded to it; and (iv) Applicant’s and Registrant’s
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`marks have co-existed for almost two decades without incident and there is no evidence of actual
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`confusion; and. For these reasons, confusion is unlikely and Applicant is entitled to registration.
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`Applicant’s Appeal Brief
`Serial No. 85771143
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`A. The Likelihood of Confusion Standard.
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`Under Lanham Act § 2(d)(1), a mark that can distinguish an applicant’s goods from the
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`goods of others must not be refused registration on the principal register unless it “so resembles a
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`registered mark or a mark or trade name previously used in the United States by another and not
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`abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause
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`confusion, or to cause mistake, to deceive.” 15 U.S.C. § 1052(d)(1). Likelihood of confusion has
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`been said to be synonymous with “probable” confusion—it is not sufficient if confusion is merely
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`“possible.” American Steel Foundries v. Robertson, 269 U.S. 372 (1926).
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`The standard to be applied in an ex parte appeal to the Board such as the instant appeal is
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`the same “likelihood of confusion” rule used as the test of trademark infringement. Glenwood
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`Labs., Inc. v. American Home Prods. Corp., 455 F.2d 1384, 173 U.S.P.Q. 19 (C.C.P.A. 1972).
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`The thirteen likelihood of confusion factors set forth in In re E.I. DuPont de Nemours & Co., 476
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`F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973), are well known to this Board.
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`This appeal will address the DuPont factors for which there is record evidence. Han Beauty
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`Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 U.S.P.Q.2d 1557 (Fed. Cir. 2001). The record in
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`this case is replete with evidence presented by Applicant on six of the thirteen factors. In this case
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`the Du Pont factors to be considered are: (1) the dissimilarities of the marks in their entireties; (2)
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`the dissimilarities of the goods, (3) The conditions under which and buyers to whom sales are
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`made, i.e. “impulse” vs. careful, sophisticated purchasing; (4) the number of marks similar to the
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`Registered Mark in use on the same goods; (5) the lack of actual confusion; and (6) the length of
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`time of concurrent use without dispute or confusion. See DuPont, 476 F.2d at 1361. Each case
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`must be decided on its own facts and any one DuPont factor may be dispositive in a confusion
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`Applicant’s Appeal Brief
`Serial No. 85771143
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`inquiry. Champagne Louis Roederer S.A. v. Delicato Vineyards, 148 F.3d 1373, 47 U.S.P.Q.2d
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`1459 (Fed. Cir. 1998).
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`Each of these factors weighs against the Examining Attorney’s finding that confusion is
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`likely. Still, it is important to keep sight of the true purpose of this inquiry: to determine whether
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`a consumer viewing tactical gear sold under the HIGH SPEED GEAR mark is likely to assume
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`incorrectly that the products are produced by RA Brands, who sells ammunition under the mark
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`HI-SPEED, or vice-versa. See Top Tobacco, L.P. v. N. Atl. Operating Co., 509 F.3d 380, 383, 85
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`U.S.P.Q.2d 1251, 1253 (7th Cir. 2007) (“A list of factors designed as proxies for the likelihood of
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`confusion can’t supersede the statutory inquiry. If we know for sure that consumers are not
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`confused about a product’s origin, there is no need to consult even a single proxy.”).
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`B. There is no likely confusion because the two marks create entirely different commercial
`impressions.
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`The marks at issue must be compared in their entireties as to appearance, sound,
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`connotation, and overall commercial impression. See Palm Bay Imp., Inc. v. Veuve Clicquot
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`Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 U.S.P.Q.2d 1689 (Fed. Cir. 2005); DuPont,
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`177 U.S.P.Q. at 567. The fact that marks have similar components does not mean that confusion
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`will necessarily result. Citigroup Inc. v. Capital City Bank Group, Inc., 94 U.S.P.Q.2d 1645
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`(T.T.A.B. 2010) (finding no likelihood of confusion between CITIBANK and CAPITAL CITY
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`BANK)). In the instant case, confusion is unlikely because HIGH SPEED GEAR with tactical
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`gear goods has a vastly different commercial impression than does HI-SPEED with ammunition.
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`i.
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`Registrant’s HI-SPEED mark is highly descriptive, giving the impression that the
`Registrant’s ammunition is fast.
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`The Registered Mark has no suggestive or arbitrary element to it at all; rather, the
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`Registered Mark is highly descriptive, directly indicating to consumers that RA Brands’
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`ammunition will travel fast when fired. Moreover, where protectable, highly descriptive marks
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`such as the Registered Mark are entitled to a very narrow scope of protection—far narrower than
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`the scope accorded it by the Examining Attorney in the instant case. See General Mills, Inc. v.
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`Frito-Lay, Inc., 176 U.S.P.Q. (BNA) 148 (T.T.A.B. 1972) (“Where a party uses a weak mark, his
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`competitors may come closer to his mark than would be the case with a strong mark without
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`violating his rights.”). Such narrow scope of protection helps explain, in part, the many other
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`marks identified in Section IV.C above that use the term “hi-speed,” or some variation of it, in
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`connection with ammunition.
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`In fact, that RA Brand’s mark is highly descriptive of ammunition has been settled for
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`many decades. Both RA Brands and its predecessor in interest relative to the Registered Mark
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`have candidly admitted that the Registered Mark is descriptive. The initial registrant for the HI-
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`SPEED mark and predecessor in interest of RA Brands, Remington Arms Company, Inc.,
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`expressly disclaimed the term “HI-SPEED” separate and apart from the “distinctive manner of its
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`presentation.” See Registration No. 0201528, registered July 28, 1925 (Exs. 12, 13).
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`Decades later, when registering the Registered Mark, RA Brands similarly admitted the
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`descriptive nature of the Registered Mark. In response to the initial refusal of the Examining
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`Attorney to grant registration to RA Brands on grounds that HI-SPEED was too descriptive when
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`used with ammunition, RA Brands chose not to argue against the refusal, and instead responded
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`with a Section 2(f) claim of acquired distinctiveness. See generally Response to Office Action
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`dated February 11, 2008; Response to Office Action dated September 02, 2008.
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`As a matter of law, such a claim operates as a concession by RA Brands that its HI-SPEED
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`mark is descriptive of ammunition. See, e.g., TMEP 1212.02(b); Yamaha International Corp. v.
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`Hoshino Gakki Co., 840 F.2d 1572, 1577, 6 U.S.P.Q.2D (BNA) 1001, 1005 (Fed. Cir. 1988) (“[I]n
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`Applicant’s Appeal Brief
`Serial No. 85771143
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`cases where registration was initially sought on the basis of distinctiveness, subsequent reliance
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`by the applicant on Section 2(f) assumes that the mark has been shown or conceded to be merely
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`descriptive.”). A highly descriptive mark is a weaker mark, supporting co-existent registrations in
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`circumstances such as these—especially where the junior mark imparts a very different
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`commercial impression.
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`ii.
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`HSG’s HIGH SPEED GEAR mark is interpreted by most consumers to suggest high
`efficiency and preparedness in the context of HSG’s tactical gear goods.
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`The uncontroverted evidence in the record shows that the term “High Speed” is widely
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`used in military jargon as slang for high competence, near peak efficacy, and excellence, like the
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`modern, highly effective military professional. See Part IV(A); Exs. 14, 26. The evidence in the
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`record further shows that, in the context of military equipment, “high speed” refers to efficacy.
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`Exs. 6, 26. The Examining Attorney has produced no evidence to suggest that the term “high
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`speed” in the context of tactical gear could be understood any other way by the consumers who
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`purchase these products. Notably, soldiers, veterans, and other military professionals or military
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`supporters, all of whom are likely to be familiar with the connotation associated with the term
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`“high speed” as it relates to soldiers and their gear, are common consumers of tactical gear. Ex.
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`25. Attaching the phrase “high speed” also provides a source indicator to this particular group of
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`consumers that they, and not their civilian counterparts, are the target consumers of HSG’s goods.
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`and for those consumers who wish to be perceived as affiliated with the military, the phrase
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`transcends the connotation of velocity and suggests to consumers that they, too, can perform
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`dangerous tasks with effective intensity.
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`The commercial impression of HIGH SPEED GEAR is even further removed from that of
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`a mark describing the speed of bullets for those consumers who are unfamiliar with the military
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`slang term “high speed.” It defies logic to conclude that an ordinary consumer encountering the
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`Applicant’s Appeal Brief
`Serial No. 85771143
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`HIGH SPEED GEAR mark with tactical gear goods would understand the term “high speed” to
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`refer to the velocity of Applicant’s nylon magazine pouches, bags, belts, or vests, in the same way
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`that RA Brands has admitted consumers are likely to do with its HI-SPEED ammunition. The
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`value and usefulness of a pouch, bag, belt, or vest has nothing to do with whether it can move from
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`point A to point B quickly or be projected rapidly through the air; rather, the value of these items
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`is that they are tactically excellent and durable. For this reason, even among consumers unaware
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`of the meaning of the term “high speed” as used in military parlance, the HIGH SPEED GEAR
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`mark is entirely unrelated to the quality or characteristics of Applicant’s goods and, accordingly,
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`is arbitrary.
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`The arbitrary and suggestive facets of the “High Speed Gear” mark by definition create a
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`vastly different commercial impression than the merely descriptive Registered Mark. Where, as
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`here, the senior mark is weak and merely descriptive, even slight alterations that move an
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`applicant’s mark into the suggestive or arbitrary category foreclose the likelihood of confusion.
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`Bos. Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 29, 87 U.S.P.Q.2d 1385, 1403 (1st
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`Cir. 2008) (“Even if elements of each party’s mark overlap, or are visually similar, the marks as a
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`whole may still create a distinct commercial impression, especially if the similarities are limited
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`to generic or descriptive elements.”); First Sav. Bank, F.S.B. v. First Bank Sys., Inc., 101 F.3d 645,
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`655, 40 U.S.P.Q.2d 1865, 1873 (10th Cir. 1996) (“When the primary term is weakly protected to
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`begin with, minor alterations may effectively negate any confusing similarity between the two
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`marks.”); Bass Pro Trademarks, L.L.C. v. Sportsman’s Warehouse, Inc., 2008 TTAB LEXIS 16,
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`*40-41, 89 U.S.P.Q.2D (BNA) 1844, 1858 (T.T.A.B. Apr. 4, 2008) (finding any similarity
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`resulting from presence of descriptive element of mark to be outweighed by overall commercial
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`impression).
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`Applicant’s Appeal Brief
`Serial No. 85771143
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`In short, the mark HIGH SPEED GEAR is either (i) suggestive of the fact that a HIGH
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`SPEED GEAR product is associated with highly effective military tactics (among consumers who
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`are aware of the term’s use in military jargon), or (ii) arbitrary in that, absent such awareness, the
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`term HIGH SPEED GEAR has no logical relation to Applicant’s tactical gear products, the
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`velocity of which is irrelevant to a consumer. When compared to Registrant’s HI-SPEED mark
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`for ammunition, then, the difference in commercial connotations of the two marks