Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA594412
`ESTTA Tracking number:
`03/25/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91173785
`Defendant
`Alliant Techsystems Inc.
`STEPHEN R BAIRD
`WINTHROP & WEINSTINE PA
`225 SOUTH SIXTH STREET, SUITE 3500
`MINNEAPOLIS, MN 55402-4629
`UNITED STATES
`sbaird@winthrop.com, ckrummen@winthrop.com, dkelly@winthrop.com,
`msolberg@winthrop.com, jrezac@winthrop.com, trademark@winthrop.com,
`emcdermott@winthr
`Brief on Merits for Defendant
`Timothy D. Sitzmann
`trademark@winthrop.com, sbaird@winthrop.com, bwalz@winthrop.com,
`tsitzmann@winthrop.com, emcdermott@winthrop.com
`/Timothy D. Sitzmann/
`03/25/2014
`Filing - Ev Obj - Signed.pdf(300827 bytes )
`Filing Trial Brief.pdf(2857891 bytes )
`Appendix - Complete.pdf(4108699 bytes )
`Certificate of Service.pdf(2891 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARDzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`In Re Trademark Ser. No.
`78/548,473
`Filed:
`January 17, 2005
`Mark:zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`OMEGA ELITE
`
`In Re Trademark Ser. No.
`Filed:
`Mark:
`
`78/550,543
`January 20,2005
`OMEGA
`
`Opposition No. 91173785 (Parent)
`
`Opposition No. 91174067
`
`)))) )))))))
`
`OMEGAS.A.,
`
`v.
`
`Opposer,
`
`ALLIANT TECH SYSTEMS INC.,
`
`Applicant.
`
`APPLICANT'S RESPONSE TO OPPOSER'S OBJECTIONS TO APPLICANT'S
`EVIDENCE AND APPLICANT'S OBJECTIONS TO OPPOSER'S EVIDENCE
`
`Pursuant to Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 707.02(c),
`
`Applicant Alliant Techsystems, Inc. ("ATK") hereby asserts its objections to Opposer's evidence.
`
`I.
`
`Response to Opposer's Objections
`
`to Applicant's Evidence
`
`A. Applicant's Product Catalogs
`
`Opposer objects to Applicant's
`
`submission of catalogs because the catalogs were not
`
`available to the general public. Opposer has waived this objection with at
`
`least with regard to
`
`Applicant's 1995 Supplemental Catalog because Opposer has submitted this catalog as part of its
`
`Notice of Reliance. Opp. NOR Ex. 11, Michael Tr. 43: 14-44: 12,45: 15-47:8. Opposer has submitted
`
`this catalog to establish that ATK's predecessor, BlackHawk Industries,
`
`Inc. ("BlackHawk"), has
`
`previously sold watches. Opp. Tr. Br. at 21. The catalog states that BlackHawk was selling Casio,
`
`Indiglo, Ironman, and Matterhorn brand watches.zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`1
`
`

`
`Opposer's catalogs placed on their website (App. NOR Exs. 836-854) are admissible because
`
`they are available to the general public in general circulation through distribution on the intemet.zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`See
`
`Safer
`
`Inc. v. OMS Investments,
`
`Inc., 94 USPQ2d 1031, 1038 (TTAB 2010). Additionally,
`
`Applicant's distribution of its product catalogs was its "primary" means of reaching customers. Opp.
`
`NOR Ex. 11, Michael Tr. 45:22-46:4. The general public could view or request Applicant's catalogs
`
`through its intemet website. See Opp. NOR Exs. 836 (1997), 841 (2001), 842 (2002), 849 (2008),
`
`850 (2009), 851 (2010),852 (2011), 853 (2013). The web sites establish that it was common practice
`
`for Applicant to offer its product catalog through its website. Therefore Opposer's objections should
`
`be overruled with respect to all the catalogs, but specifically with respect to the catalogs from 1997,
`
`2002,2002,2008,2009,2010,2011,
`
`and 2013.zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`B.zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`Internet Materials
`
`Opposer objected to the following Sections of Applicant's Notice of Reliance, Section 2
`
`(Exs. 650-731), Section 3 732-811), Section 7 (836-852), and Section 8 (853-854) on the grounds of
`
`hearsay. Opposer fails to identify what statements,
`
`if any, to which it objects.
`
`Instead Opposer
`
`claims that these exhibits are "insufficient to establish use analogous to trademark use."
`
`Applicant
`
`is not using the third-party intemet materials to prove the truth of the matter
`
`asserted.
`
`Instead, Applicant has introduced the evidence to show that Opposer's mark is weak and
`
`lacks distinctiveness in the commercial world. Knack Mfg. Co. v. Rally Accessories, 955 F. Supp.
`
`991, 1003-04 (N.D. Ill. 1997)("the extensive use of [the mark] by third-parties on a wide variety of
`
`goods, services, and business clearly demonstrate the lack of distinctiveness and strength in [the
`
`mark]"). The evidence is also admissible to show that purchasers have been conditioned to expect
`
`different sources for specifically different goods, notwithstanding similarities in the mark. NatzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`'I
`
`Cable Television Assoc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80 (Fed. Cir. 1991).
`
`The evidence is also admissible to corroborate and enhance the weight given to the cited
`
`registrations in Exs. 500-649, where use has been provided. The combination of use and registration
`
`2
`
`

`
`of a similar mark is admissible to show that Opposer's registration receives protection only to the
`
`
`
`goods identified in its registration.zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBASee Amstar Corp. v. Domino's Pizza, Inc. 615 F.2d 252, 259-60
`
`(5th Cir. 1980)(citing Am. Sugar Co. v. Texas Farm Prods Co., 159 USPQ 679, 681 (TTAB 1968)
`
`and Scott Paper Co. v. Scott's Liquid Gold, Inc., 598 F.2d 1225 (3d Cir. 1978)); see also Petro
`
`Stopping Centers, L.P. v. James River Petroleum, 130 F.3d 88 (4th Cir. 1997)(holding that third-party
`
`registrations, even without evidence of actual use, can establish that a mark is weak)( citing Estee
`
`Lauder Inc. v. The Gap, Inc., 108 F.3d 1503, 1511 (2d Cir.)).
`
`II.
`
`Applicant's Objections to Opposer's Evidence
`
`A. Objection to Evidence Outside the Scope of the Amended Notices of Opposition
`
`1. Common Law Rights Outside the Scope of the Pleadings
`
`In its Trial Brief, Opposer claims to have common law rights for use of the OMEGA mark in
`
`connection with starting guns, life vests, jewelry,
`
`leather goods, key chains, money clips, fragrances,
`
`caps, eyewear, wallets, organizer agenda, writing instruments, writing pads, games, bags, and golfing
`
`equipment. None of these goods are encompassed by Opposer's
`
`registrations, nor were they
`
`mentioned in either of Opposer's Amended Notices of Opposition. See Pep Boys v. Edwin F. Guth,
`
`197 F.2d 527, 94 USPQ 158, 159 (CCPA 1952)("However, since the notice of opposition did not
`
`allege use of the mark on any product other than storage batteries, no other product can be considered
`
`in this proceeding."); Odom's Tennessee Pride Sausage Inc. v. FF Acquisition LLC, 93 USPQ2d
`
`2030,2031-32 (Fed. Cir. 2010).
`
`Because rights in connection with these goods were not pleaded, they are not at issue in this
`
`proceeding. Therefore any evidence related to use, priority, or likelihood of confusion due to such
`
`use in relation to these goods is irrelevant under Fed. Rule 401 and should not be considered by the
`
`Board. Opposer's use of "sports accessories and other goods" is not sufficiently definite to meet the
`
`pleading requirements of Twombly and, in any event, cannot be considered to be specific enough to
`
`include any of the items referenced above.
`
`3
`
`

`
`2. Failure to Plead a Likelihood of Confusion based on Use in Connection with Any
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`Goods Other than Class 009.
`
`Opposer only specifically pleaded a likelihood of confusion based on Opposer's registration
`
`in International Class 009, namely, automated recording machines and computer apparatuses
`
`for
`
`measuring time and distance. Am. Notices of Opp. ~ 7. Opposer did not plead a likelihood of
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`confusion with goods in any other class or any other specific goods, including rights at common law
`
`and registrations for watches, watch accessories, and other horological or chronometric instruments.
`
`Consequently, Opposer has failed to make these goods at issue in the present proceeding and any
`
`evidence related to a likelihood of confusion with anything other than Opposer's timing apparatuses
`
`
`
`is irrelevant and should be excluded under Fed. Rule 401.zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBASee Pep Boys, 94 USPQ at 159; FF
`
`Acquisition LLC, 93 USPQ2d at 2031-32.
`
`3. Failure to Plead a Likelihood of Confusion based on Registrations or Common Law
`Rights in Connection with Services.
`
`Nowhere in either Notice of Opposition does Opposer claim to have any rights in connection
`
`with any services other than retail services, including sport timing services. Nor has Opposer alleged
`
`to have priority with relation to any services, nor that there is any likelihood of confusion between
`
`any services claimed to be offered by opposer in connection with its OMEGA mark and ATK's
`
`applied-for goods. Consequently, any evidence related to use, priority, or likelihood of confusion due
`
`to such use in relation to any services is irrelevant under Fed. Rule 401 and should not be considered
`
`by the Board. See Pep Boys, 94 USPQ at 159; FF Acquisition LLC, 93 USPQ2d at 2031-32.
`
`Opposer did plead ownership of a registration for "retail services"
`
`featuring watches and
`
`related chronometric instruments, their accessories, and jewelry. However, Opposer did not allege a
`
`likelihood of confusion between these or any services offered under Opposer's mark and Applicant's
`
`applied-for goods. Consequently, Opposer has failed to make any services at issue in the present
`
`4
`
`

`
`proceeding and any evidence related to a likelihood of confusion with such services is irrelevant and
`
`should be excluded under Fed. Rule 401.zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`Limited Use of Publicity, Advertisements, Catalogs, and Web sites
`B.zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`Opposer has submitted excerpts from newspapers, magazines,
`
`trade journals, catalogs and
`
`websites. Opp. NOR Exs. 12-75; Swift Tr. Exs. 8-29, 33, 59-63. Applicant objects to the use of
`
`these web sites to establish the truth of any matter asserted therein, such as circulation numbers,
`
`evidence of actual use, or evidence of the date of use.
`
`Specifically for Opp. NOR Exs. 12-75, any circulation numbers placed on top of each article
`
`cannot be admitted for the truth of the matter asserted, namely, that the article was distributed to that
`
`number of individuals or businesses. The material constitutes hearsay and is therefore hearsay
`
`pursuant to Rule 801 and inadmissible pursuant to Rule 802. Any additional information such as the
`
`date and frequency of publication, and the circulation number do not appear as part of the actual
`
`published document and therefore such statements do not qualify for any hearsay exception.
`
`Consequently,
`
`this information should be excluded to the extent that Opposer intends to rely on it for
`
`the truth of the matter asserted.
`
`Applicant asserts the same objection to the articles and websites introduced as part of Mr.
`
`Swift's testimony. Swift Tr. Exs. 8-29, 59-63. To the extent that Opposer intends to rely on the
`
`hearsay exception for records of regularly conducted activity, the testimony fails to establish a proper
`
`foundation. There is no testimony as to the whether the compilation or record was (1) made at or
`
`near the time of publication or (2) made by a person with knowledge as to the record keeping
`
`
`See Air Land Forwarders,
`
`procedures.zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBAInc. v. U.S., 172 F.3d 1338, 1343-44 (Fed. Cir. 1999)
`
`(discussing FRE 803(6)). There is also no evidence that Opposer ever relied upon the accuracy of
`
`the documents in its business.
`
`Id. There is no testimony regarding how, when, or by whom these
`
`numbers and dates were gathered. Consequently,
`
`this information should be excluded to the extent
`
`that Opposer intends to rely on it for the truth of the matter asserted.zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`5
`
`

`
`Respectfully submitted,
`
`WINTHROP & WEINSTINE, P.A.
`
`Date: March 24,2014
`
`Timothy D. Sitzmann
`Winthrop & Weinstine, PA
`3500 Capella Tower
`225 South Sixth Street
`Minneapolis, MN 55402
`Telephone:
`(612) 604-6585
`(612) 604-6985zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`Facsimile:
`
`Attorneys for Alliant Techsystems Inc.zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`8908456vlzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`6
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARDzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`))))
`
`Opposition No. 91173785 (Parent)
`zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`Opposition No. 91174067
`
`) )))) ))
`
`In Re Trademark Ser. No.
`Filed:
`Mark:
`
`78/548,473
`January 17, 2005
`OMEGA ELITE
`
`In Re Trademark Ser. No.
`Filed:
`Mark:
`
`78/550,543
`January 20, 2005
`OMEGA
`
`OMEGAS.A.,
`
`v.
`
`Opposer,
`
`ALLIANT TECHSYSTEMS INC.,
`
`Applicant.
`
`APPLICANT'S TRIAL BRIEF
`
`Applicant Alliant Techsystems, Inc. ("ATK" or "Applicant") hereby submits this trial brief in
`
`support of its Applications 78/548,473 and 78/550,543 (the "Applications")
`
`for the registration of
`
`marks OMEGA and OMEGA ELITE ("the Marks") for the tactical, military, law enforcement, and
`
`defense goods set forth in the Applications.
`
`BY4jf-.
`
`Stephen R. Baa
`Bradley J. Walz
`Craig S. Krummen
`Timothy D. Sitzmann
`Winthrop & Weinstine, PA
`3500 Capella Tower
`225 South Sixth Street
`Minneapolis, MN 55402
`Telephone:
`(612) 604-6585
`Facsimile:
`(612) 604-6985zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`Attorneys for Alliant Techsystems Inc.
`
`

`
`TABLE OF CONTENTSzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`I.
`
`II.
`
`III.
`
`IV.
`
`INTRODUCTION
`
`DESCRIPTION OF THE RECORD
`
`ISSUES PRESENTED FOR REVIEW
`
`STATEMENT OF FACTS
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Applicant's Use and Application to Register its OMEGA and OMEGA
`ELITE Marks and the Notice of Opposition
`
`Opposer's Claimed Rights
`
`Third-Party Registrations and Uses of OMEGA and OMEGA-based Marks
`
`Meaning of the OMEGA Term
`
`Opposer's Claim of Fame and Likelihood ofConfusion
`
`V.
`
`ARGUMENT
`
`A.
`
`Likelihood of Confusion
`
`1.
`
`The Goods Are Unrelated and Specifically Different
`
`Marketing Channels and Classes of Consumers Are Distinct..
`
`16zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`1
`
`5
`
`5
`
`5
`
`5
`
`7
`
`8
`
`8
`
`9
`
`9
`
`9
`
`10
`
`10
`
`12
`
`15
`
`19
`
`20
`
`23
`
`24
`
`24
`
`26
`
`27
`
`Watches and Timing Equipment are Unrelated to the Applied-
`for Goods
`
`Opposer Has Failed to Plead and Establish Any Prior
`Common Law Rights
`
`Starting Guns
`
`a.
`
`b.
`
`c.
`
`d.
`
`2.~
`
`Fame
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`Sales and Advertising Figures
`
`Sponsorship of the Olympics
`
`Product Placement and Historical References
`
`Other Publicity
`
`Efforts to Police its Marks
`
`3.
`
`Third Party Registrations and Uses
`
`

`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Conditions of Sale
`
`Actual Confusion
`
`Similarity of the Marks
`
`The Extent of Potential Confusion
`
`Other Established and Probative Facts
`
`Balancing of the Factors
`
`B.
`
`Fraud
`
`1.
`
`2.
`
`3.
`
`4.
`
`Opposer Has Failed to Establish Knowledge of any False Statement at
`the Time Made
`
`Opposer Has Failed to Prove Intent to Deceive Based on the Initial
`Application and the Final Amendment to the Goods
`
`Applicant's Minor Delay in Amending the Identification of Goods
`Does Not Justify an Inference of Deceptive Intent.
`
`Opposer Has Failed to Establish that some of the Claimed Statements
`Were False
`
`30
`
`31
`
`32
`
`34
`
`34
`
`34
`
`36
`
`38
`
`38
`
`.40
`
`41
`
`C.
`
`Nonuse and Abandonment
`
`43zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`11
`
`

`
`TABLE OF AUTHORITIESzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`In re Advantage Supplies, Inc.,zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`2009 TTAB LEXIS 190, *6 (TTAB April 8, 2009) (non-precedential)
`
`15
`
`Am. Standard, Inc. v. ScottzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`& Fetzer Co.,
`200 USPQ 457 (TTAB 1978)
`
`Aero Mayflower Transit Co. v. Snark Prods, Inc.,
`10 USPQ 100 (TTAB 1976)
`
`Alpha Inds. Inc. v. Alpha Sportswear Ltd.,
`48 USPQ2d, 1448 (E.D. Va. 1998)
`
`Amcor, Inc. v. Amcor Industries, Inc.,
`210 USPQ 70 (TTAB 1981)
`
`In re Am. Power Source, Inc.,
`Ser. No. 75/738,726 at 3 (TTAB 2002)
`
`Am. Sugar Co. v. Texas Farm Prods. Co.,
`159 USPQ 679 (TTAB 1968)
`
`Amstar Corp. v. Domino's Pizza, Inc.,
`615 F.2d 252,205 USPQ 969 (5th Cir.)
`
`Blue Man Productions, Inc. v. Tarmann,
`75 USPQ2d 1811 (TTAB 2005)
`
`Bose Corp. v. QSC Audio Prods.,
`293 F.3d 1367 USPQ2d 1303 (Fed. Cir. 2002)
`
`Canada Dry Corp. v. Am. Home Prods. Crp.,
`68 F.2d 207, 175 USPQ 557 (CCPA 1972)
`
`Citigroup Inc. v. Capital City Bank Group, Inc.,
`637 F.3d 1344 (Fed. Cir. 2011)
`
`Coach Services, Inc. v. E&D Trading, Inc.,
`Opp. No. 91/203,818 at 10-11 (TTAB 2013) [non-precedential]
`
`Coach Servs., Inc. v. Triumph Learning LLC,
`688 F.3d 1356 (Fed. Cir. 2012)(citations ornitted)
`
`In re Condor Outdoor Prods., Inc.,
`2012 WL 825482, *3 (TTAB Dec. 26, 2012) (non-precedential)
`
`III
`
`9,36
`
`3, 4, 35, 36
`
`11
`
`18
`
`32
`
`28
`
`27,28,30,32
`
`20, 24, 25, 33
`
`passim
`
`9
`
`36
`
`9, 20, 21
`
`passim
`
`15
`
`

`
`v. WL. GorezyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`Cortex Corp.zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA& Assoc., Inc.,
`1 F.3d 1253 (Fed. Cir. 1993)
`
`32
`
`In re DuPont DeNemours & Co.,
`476 F.2d 1357, 177 USPQ 563 (CCPA 1973)
`
`Edwards Lifesciences Corp. v. Vigil.anz Corp.,
`94 USPQ2d 1399 (TTAB 2010)
`
`Electronic Design & Sales, Inc. v. Electronic Data Systems Corp.,
`954 F.2d 713 21 USPQ2d 1388 (Fed. Cir. 1992)
`
`Enbridge, Inc. v. Excelerate Energy Ltd P 'ship,
`92 USPQ2d 1537,2009 WL 3541047 (TTAB 2009)
`
`Firehouse Rest. Group Inc. v. Scurmont LLC,
`2011 WL 3555704 *15-*18 (D. S. Car. 2011)
`
`Fossil, Inc. v. The Fossil Group,
`49 USPQ2d 1451 (TTAB 1991)
`
`9, 27, 32, 34
`
`9
`
`17-18,31,36
`
`3,37-38
`
`30
`
`21-22
`
`Fruit of the Loom, Inc. v. Fruit of the Earth,zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`Inc.,
`3 USPQ2d 1531 (TTAB 1987)
`12
`
`General Mills Inc. v. Health Valley Foods,
`24 USPQ2d 1270 (TTAB 1992)
`
`Giersch v. Scripps Network Inc.,
`90 USPQ2d 1020 (TTAB 2009)
`
`In re Gummi-Jager KG GmbH & Cie,
`Ser. No. 75/606,899 (TTAB 2001) [non-precedential]
`
`In re Harry Fox & Assoc., Inc.,
`Ser. No. 85/292,481 (TTAB 2013)
`
`HD. Lee Co. v. Maidenform Inc.,
`87 USPQ2d 1715 (TTAB 2008)
`
`Hydro-Dynamics Inc. v. George Putnam & Co., Inc.,
`811 F.2d 1470, 1 USPQ2d 1772 (Fed. Cir. 1987)
`
`Int'l Tel.& Tel. Co. v. Jaeco pump Co.,
`207 USPQ 676 (TTAB 1980)
`
`:
`
`Johnson & Johnson and Roc International S.A.R.L. v. Obschestvo,
`104 USPQ2d 2037 (TTAB 2012)
`
`Keebler Co. v. Assoc. Biscuits Ltd.,
`207 USPQ 1034 (TTAB 1980)
`
`IV
`
`22
`
`13
`
`16
`
`6
`
`12
`
`12
`
`32
`
`43
`
`30
`
`

`
`Kellogg Co. v.Pack'em Entrs.,zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`951 F.2d 330 (Fed. Cir. 1991)
`
`Kingsdown Med. Consultatns, Ltd. v. Hollister Inc.,
`863 F.2d 867 (Fed. Cir. 1988)(en bane)
`
`Leading Jewelers Guild Inc. v. LJOW Holdings LLC,
`82 USPQ2d 1901 (TTAB 2007)
`
`Lever Brothers Co. v. Shaklee Corp.,
`214 USPQ 654 (TTAB 1982) at n. 8
`
`Levi Strauss 7 Co. v. GTFM, Inc.,
`196 F.Supp.2d 971 (N.D. Cal. 2002)
`
`Miguel Torres, S.A. v. Bodegas Muga S.A.,
`Opposition No. 91112586 (TTAB June 10, 2005)
`
`'"
`
`Morgan Creek Prods., Inc.,
`91 USPQ2d 1134 (BNA), 2009 WL 1719597 at *11 (TTAB 2009)
`
`NatzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`'I Assoc. of Blue Shield Plans v. The Standard Mattress Co.,
`168 USPQ 380 (TTAB 1970), aff'd 478 F.2d 1253, (CCPA 1973)
`
`Nat 'I Bank Book Co. v. Leather Crafted Prods., Inc.,
`218 USPQ 826 (TTAB 1993)
`
`Natl. Cable Television Assoc., Inc., v. Am. Cinema Editors, Inc.,
`937 F.2d 1572, 19 USPQ2d 1424 (Fed. Cir. 1991)
`
`Nat '1Congress of ParentszyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`& Teachers v. Pizza Transit Auth., Inc.,
`213 USPQ 65 (TTAB 1982)
`
`Nike, Inc. v. WNBA Enters.,
`85 USPQ2d 1187 (TTAB 2007)
`
`Octocom Systems Inc. v. Houston Computers Services, Inc.,
`918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990)
`
`Odom's Tennessee Pride Sausage Inc. v. FF Acquisition LLC,
`93 USPQ2d 2030 (Fed. Cir. 2010)
`
`'Olin Corporation v. S.A. T Arms Technology,
`Opp. No. 911172,417 (TTAB 2008) (non-precedential)
`
`Omega S.A. v. Omega Eng, Inc.,
`396 F.Supp.2d 166 (D. Conn. 2005)
`
`v
`
`9
`
`38
`
`19
`
`12
`
`.43
`
`20
`
`13, 19-20
`
`9,36
`
`12
`
`27,30
`
`9
`
`22
`
`10
`
`10
`
`15
`
`.4,43
`
`

`
`v. Edwin F. Guth,
`Pep BoyszyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`197 F.2d 527,94 USPQ 158 (CCPA 1952)
`
`L.P. v. James River Petroleum, Inc.,
`Petro Stopping Centers,zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`130 F.3d 88 (4thCir. 1997)
`
`Premdor, Inc. v. SafezyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`& Sound, The Child Safety Specialists, Inc.,
`Opp. No. 111,846 (BBN) at * 13-14 (TTAB 2001) [non-precedential]
`
`Pure Gold, Inc. v. Syntex (US.A.), Inc.,
`221 USPQ 151 (TTAB 1983), aff'd,
`739 F.2d 624, 222 USPQ 741 (Fed. Cir. 1984)
`
`The Ritz Hotel Ltd. v. Ritz Closet Seat Corp.,
`17 USPQ2d 1466 (TTAB 1990)
`
`Scott Paper Co. v. Scott's Liquid Gold, Inc.,
`598 F.2d 1225 (3d Cir. 1978)
`
`In re Shell Oil Co.,
`992 F.2d 1204 (Fed. Cir. 1993)
`
`Smith Int'l v. Olin Corp.,
`209 USPQ 1033 (TTAB 1981)
`
`Star Scientific, Inc. v. RJ Reynolds Tobacco Co.,
`537 F.3d. 1357,88 USPQ2d 1001 (Fed. Cir. 2008)
`
`Steve's Ice Cream v. Steve's Famous Hot Dogs,
`3 USPQ2d 1477 (TTAB 1987)
`
`Sunnen Prods. Co. v. Sunex Int'l, Inc.,
`1 USPQ2d 1744 (TTAB 1987)
`
`Swiss Watch Int'l Inc. v. Fed'n of the Swiss Watch Indus.,
`101 USPQ2d 1731 (TTAB 2010)
`
`Tri-Star Marketing, LLC v. Nino Franco Spumante S.RL,
`84 USPQ2d 1912 (TTAB 2007)
`
`Other Authorities:
`
`TMEP 1402.03
`
`TBMP 704.12 (a)
`
`FRE 801(d)(2)
`
`VI
`
`10
`
`30
`
`11
`
`9
`
`36
`
`28
`
`32
`
`37
`
`37
`
`15-16
`
`32
`
`.42
`
`.41zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`.
`
`.
`
`.
`
`

`
`A. INTRODUCTIONzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`Applicant through its predecessor in interest BlackHawk Industries Product Group Unlimited
`
`LLC ("BlackHawk") has used the OMEGA mark in connection with tactical gear and equipment for
`
`military and law enforcement use since at least as early as October of 1995. BlackHawk began use
`
`of its OMEGA ELITE mark at least as early as January 11, 2005. BlackHawk applied to register its
`
`OMEGA ELITE mark on January 17, 2005 and its OMEGA mark on January 20, 2005. ATK
`
`acquired all of BlackHawk's
`
`
`
`interest in the Marks and Applications in September 2010.zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBASee Opp.
`
`NOR Ex. 11, Michael Tr. 4:15-5:7 Applicant has not used or applied to register the Marks in
`
`connection with watches, clocks, or timing devices.
`
`Applicant uses its OMEGA and OMEGA ELITE marks exclusively in connection with
`
`tactical gear and equipment for law enforcement, military, and other defense personnel. Specifically,
`
`these goods are vests, pouches, holsters, and related goods for carrying ammunition, grenades, heavy
`
`firearms such as M-16s, stun grenades, and other munitions. The goods are intended for close combat
`
`situations for use by soldiers, swat team members, and other defense and law enforcement members.
`
`ATK's
`
`identification of goods expressly limits the applied-for goods to "tactical" gear and
`
`equipment, which, by definition,
`
`is for use in combat situations encountered by law enforcement,
`
`military, and related defense personnel.
`
`Opposer Omega S.A. (Omega A.G.)(Omega Ltd.)("Opposer")
`
`is the owner of seven U.S.
`
`registrations for OMEGA and for OMEGA and design marks for use in connection with watches,
`
`watchbands, other horological devices, watch accessories, and electronic and computer
`
`timing
`
`apparatuses. Opposer primarily uses its OMEGA mark in connection with luxury watches, whose
`
`prices range from approximately $2,000 to $280,000. Although Omega has been in operation since
`
`1894, it has only recently begun targeting the United States with its marketing efforts.
`
`Opposer also claims common law rights based on use of its mark on promotional goods, such
`
`as golf balls, life jackets, apparel, paper goods, writing instruments, and other goods. Opposer haszyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`1
`
`

`
`failed to present any evidence as to when, where, and how many of these goods have been produced
`
`or distributed. Instead, Opposer relies merely on a handful of promotional publications that include a
`
`single photograph of a single example of a particular good and vague testimony that the marks are
`
`used on these goods "at any point in time."
`
`Although Opposer has provided advertising and sales figures to claim that its OMEGA mark
`
`is famous, Opposer has provided no context for these numbers to determine Opposer's strength in the
`
`relevant market. Opposer also relies on a number of articles, advertisements, and paid product
`
`placement
`
`in movies in order to show public recognition. However Omega fails to present any
`
`evidence as to how this publicity might impact the public within the United States. The majority of
`
`the publicity involves de minimus use or reference to the term OMEGA and provides no evidence
`
`that any of the movies or television shows ever used, showed, or in any way referenced the OMEGA
`
`mark. As a result, Opposer has failed to present any evidence that such publicity has made any
`
`impression on the public, let alone enough to establish that the mark is famous.
`
`Opposer's reliance on its timekeeping and sponsorship of the Olympics overstates its legal
`
`and factual support. Opposer goes so far as to claim that the public would associate Opposer with
`
`firearms because "some Olympic events for which Omega provides timekeeping services involve
`
`guns, for example, the biathlon." Opp. Trial Br. at 20. Opposer presents no support for its claim that
`
`its Olympic sponsorship would result in public association of Opposer with sporting goods. In fact,
`
`the claim is undermined by Opposer's own website which states that visitors to its OMEGA museum
`
`are "surprised" to hear that the Omega watch company is related to the same company that does
`
`timekeeping for
`
`the Olympics because
`
`"they haven't
`
`associated the unparalleled
`
`leader
`
`in
`
`
`
`international sport timekeeping with [opposer's] watch brands." Opp. NOR Ex. 71,zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBASports Timing p.zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`,
`
`,
`
`5.
`
`Opposer also fails to appreciate that the term OMEGA is not a coined brand name, but
`
`instead it is a Greek letter that is commonly known, seen, and used throughout the United States by
`
`2
`
`

`
`many others related to Opposer. The word is commonly used by fraternities and sororities on college
`
`campuses and by hundreds of businesses and individuals as trademarks and service marks. There are
`
`more than 131 live registrations for identical or highly similar marks, many of which are currently in
`
`use and some of which are used in connection with apparel, sporting equipment, and even timing
`
`devices.
`
`The Issues before the Board are relatively straightforward. First, would any consumers
`
`encounter both Opposer's luxury watches as well Applicant's tactical gear.
`
`If so, in light of the
`
`differences in the goods, channels of trade, conditions of sale, and the extent of third-party use of
`
`similar or identical marks, would this hypothetical consumer mistakenly believe that
`
`the luxury
`
`watch manufacturer was in some way affiliated with Applicant's
`
`tactical gear for military,
`
`law
`
`enforcement and other defensive applications.
`
`Second, Opposer also has asserted that Applicant has committed fraud on the USPTO based
`
`on BlackHawk's
`
`former counsel's mistaken submission of an amendment
`
`to the identification of
`
`goods. Applicant did distribute the goods in the amendment, but under marks other than Applicant's
`
`OMEGA and OMEGA ELITE marks, although these goods were advertised and sold alongside the
`
`OMEGA products. Applicant had not
`
`included these goods in its initial application and later
`
`amended its goods to delete them. The Board must determine whether this evidence, on its own,
`
`invites an inference that amounts to clear and convincing evidence of deceptive intent.zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`En bridge,
`
`Inc. v. Excelerate Energy Ltd P'ship, 92 USPQ2d 1537,2009 WL 3541047 (TTAB 2009).
`
`Third and finally, the Board must determine the meaning of the phrase "protective clothing"
`
`and the word "bag." The record demonstrates
`
`that Applicant has sold armor vests for
`
`law
`
`enforcement and military members to wear on their body. The Board must decide whether this
`
`qualifies as "protective clothing." The Board must also decide whether a nylon pouch intended to
`
`carry ammunition, firearms, or other military equipment qualifies as a bag for tactical equipment.
`
`3
`
`

`
`With regard to Opposer's likelihood of confusion claim, the situation is remarkably similar tozyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`Alpha Inds. Inc. v. Alpha Sportswear Ltd., 48 USPQ2d, 1448 (E.D. Va. 1998). In that case the
`
`plaintiff had manufactured, distributed and sold apparel and related products under its ALPHA mark
`
`for nearly 40 years.
`
`Id. at 1449. The plaintiff owned registrations for ALPHA for zippers, apparel,
`
`and "military-type jackets." The plaintiff advertised in national magazines, catalogs, trade shows, and
`
`had major sales to the U.S. government. The plaintiff developed the original "bomber jacket," they
`
`had been recognized in the Smithsonian's classics catalog, and, as a result, their mark was "famous,
`
`but only in connection with its military-type or 'bomber'
`
`jackets." Id. at 1450. The defendant used an
`
`identical ALPHA mark for sportswear, primarily for athletic apparel. The court concluded that the
`
`dozens of trademark registrations for the ALPHA mark rendered the mark weak, even though it was
`
`famous specifically for jackets. The court noted that there was an absence of consumer confusion
`
`over a 15 year period of co-existence and concluded that confusion was likely with regard to the
`
`identical goods, jackets, but not to the remaining goods, such as athletic uniforms.zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`!d. at 1451-52.
`
`The District of Connecticut
`
`reached a similar
`
`conclusion
`
`in addressing Opposer's
`
`infringement
`
`lawsuit against a manufacturer and retailer of measurement
`
`tools for science and
`
`industry. Omega S.A. v. Omega Eng, Inc., 396 F.Supp.2d 166, 178-179 (D. Conn. 2005). The corui
`
`there concluded that Opposer and the engineering company "are operating in completely different
`
`areas of commerce" and therefore use of even identical marks was unlikely to result in consumer
`
`confusion.
`
`Id. Similarly, ATK's applied-for goods have a very specific use and target market,
`
`namely, military, law enforcement, and defensive applications. Furthermore,
`
`the applied-for goods,
`
`tactical gear for use in combat, are even more unrelated than the scientific testing devices at issue in
`
`Omega Eng. Inc. As in Alpha Sportswear and Omega Engineering,
`
`the unrelatedness of the goods,
`
`the different channels of trade, and the numerous third-party uses and registrations for identical
`
`marks, all compel the conclusion in the present case that there is simply no likelihood of confusion
`
`4
`
`

`
`between Opposer's prior registrations for watches, related accessories, and timing apparatuses with
`
`ATK's use of the Marks in connection with tactical gear.zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`B. DESCRIPTION OF THE RECORD
`
`Opposer has accurately presented the description of the record.
`
`C. ISSUES PRESENTED FOR REVIEW
`
`(a) Whether Opposer has carried its burden to establish a likelihood of confusion by a
`
`preponderance of the evidence between Applicant's Marks for use in connection with
`
`tactical gear for military,
`
`law enforcement, and defensive applications with Opposer's
`
`registered rights in connection with watches, watch accessories,
`
`timing equipment, or
`
`Opposer's claimed common law rights in various promotional goods.
`
`(b) Whether Opposer has proven to the hilt and met its heavy and strict burden to establish
`
`by clear and convincing evidence that the inclusion of certain goods during prosecution
`
`of the Applications, which have since been deleted, rises to the level of knowledge with a
`
`subjective intent to deceive the Patent and Trademark Office.
`
`(c) Whether Opposer has carried its burden to establish that
`
`the Applications should be
`
`refused on the grounds of non-use and abandonment.
`
`D. STATEMENTOFFACTS
`
`a.
`
`Applicant's Use and Application to Register its OMEGA and OMEGA ELITE
`Marks and the Notice of Opposition.
`
`The record evidence shows that ATK has continuously marketed, advertised, and sold tactical
`
`equipment, vests, and thigh rigs under its OMEGA mark at least as early as 1995. App. NOR Exs.
`
`813-832; Opp. NOR Ex. 11, Michael Tr. 45:22-46:17, Ex. 7. Applicant ha