Trademark Trial and Appeal Board Electronic Filing System. httgj/estta.usQto.gov
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`92054629
`
`Defendant
`Wohali Outdoors, LLC
`S MAX HARRIS
`DOYLE HARRIS DAVIS & HAUGHEY
`1350 SOUTH BOULDER, SUITE 700
`TULSA, OK 74119
`UNITED STATES
`max.harris@1926b|aw.com
`
`Motion for Summary Judgment
`S. Max Harris
`
`max.harris@1926b|aw.com, steve.harris@1926b|aw.com, trish@1926b|aw.com
`lsl S. Max Harris
`
`07/20/2012
`
`07-20-12 — WohaIi's MSJ — Final Submitted.pdf ( 11 pages )(37032 bytes)
`001x.pdf ( 1 page )(504080 bytes)
`002x.pdf (61 pages )(3052095 bytes )
`013x.pdf (5 pages )(696838 bytes)
`014x.pdf ( 34 pages )(3548365 bytes )
`015x.pdf ( 14 pages )(1013477 bytes)
`016x.pdf (8 pages )(969824 bytes)
`017x.pdf ( 3 pages )(935459 bytes)
`018x.pdf (4 pages )(947003 bytes)
`019x.pdf (9 pages )(1928499 bytes)
`020x.pdf ( 6 pages )(1093484 bytes )
`021x.pdf (2 pages )(968109 bytes)
`022x.pdf
`17 pages )(1203793 bytes )
`023x.pdf 2 pages )(467765 bytes )
`024x.pdf 9 pages )(1059331 bytes)
`
`( ( (
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA484717
`ESTTA Tracking number:
`07/20/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92054629
`Defendant
`Wohali Outdoors, LLC
`S MAX HARRIS
`DOYLE HARRIS DAVIS & HAUGHEY
`1350 SOUTH BOULDER, SUITE 700
`TULSA, OK 74119
`UNITED STATES
`max.harris@1926blaw.com
`Motion for Summary Judgment
`S. Max Harris
`max.harris@1926blaw.com, steve.harris@1926blaw.com, trish@1926blaw.com
`/s/ S. Max Harris
`07/20/2012
`07-20-12 - Wohali's MSJ - Final Submitted.pdf ( 11 pages )(37032 bytes )
`001x.pdf ( 1 page )(504080 bytes )
`002x.pdf ( 61 pages )(3052095 bytes )
`013x.pdf ( 5 pages )(696838 bytes )
`014x.pdf ( 34 pages )(3548365 bytes )
`015x.pdf ( 14 pages )(1013477 bytes )
`016x.pdf ( 8 pages )(969824 bytes )
`017x.pdf ( 3 pages )(935459 bytes )
`018x.pdf ( 4 pages )(947003 bytes )
`019x.pdf ( 9 pages )(1928499 bytes )
`020x.pdf ( 6 pages )(1093484 bytes )
`021x.pdf ( 2 pages )(968109 bytes )
`022x.pdf ( 17 pages )(1203793 bytes )
`023x.pdf ( 2 pages )(467765 bytes )
`024x.pdf ( 9 pages )(1059331 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
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`
`
`In re Registration No. 3,904,929
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`SHELTERED WINGS, INC.
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`Petitioner,
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`v.
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`WOHALI OUTDOORS, LLC
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`Respondent.
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`Cancellation No. 92054629
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`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
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`
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`RESPONDENT’S MOTION FOR SUMMARY JUDGMENT AND BRIEF IN SUPPORT
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`COMES NOW the Respondent, Wohali Outdoors, LLC (“Wohali” or “Respondent”), and
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`
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`pursuant to and in accordance with TTAB Rule 528 and Fed. R. Civ. P. 56, hereby moves the
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`Court to grant summary judgment in Wohali’s favor, dismissing with prejudice all of Petitioner’s
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`claims.
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`In support, Wohali submits the following.
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`STATEMENT OF FACTS FOR WHICH NO GENUINE ISSUE EXISTS (HEREIN
`REFERRED TO AS “SOF”)__________ ____________________________________
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`1.
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`Wohali is a limited liability company organized under the laws of the State of
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`
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`I.
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`
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`Oklahoma, with its principal place of business in Claremore, Oklahoma. (Ex. 21, Declaration of
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`Griffin at para. 2.)
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`
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`2.
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`On March 12, 2009, Wohali filed its application for the mark “STEEL EAGLE”
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`in International Class 9, for magnifying optical equipment, namely, rifle scopes and binoculars.
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`(Ex. 1, Certificate of Registration for STEEL EAGLE, Registration No. 3,904,929.)
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`
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`3.
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`Wohali’s first use and first use in commerce of the mark “STEEL EAGLE” was
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`

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`October 21, 2009. (Ex. 21, Declaration of Griffin at para. 3; See also Ex. 1.)
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`
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`4.
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`On June 5, 2009, the USPTO Examining Attorney, Ronald McMorrow, concluded
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`that after a search, there were no marks that conflicted with or would preclude the registration of
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`Wohali’s STEEL EAGLE mark. Mr. McMorrow stated:
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`“Search Results
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`The trademark examining attorney has searched the Office’s
`database of registered and pending marks and has found no
`conflicting marks that would bar registration under Trademark Act
` TMEP §704.02; see 15 U.S.C. §1052(d).”
`Section 2(d).
`(underlining added)
`
`(Ex. 14, Office Action dated June 5, 2009, at p. 2.)
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`On January 11, 2011, the mark “STEEL EAGLE” was registered and assigned
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`5.
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`
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`Registration No. 3,904,929. (Ex. 1.)
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`
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`6.
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`When Wohali filed its application for STEEL EAGLE and at the time its mark
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`was registered, Wohali was not aware of any of Petitioner’s marks (i.e. the 5 marks identified on
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`page 2 of the Petition for Cancellation). (Ex. 21, Declaration of Griffin at para. 4.)
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`
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`7.
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`On or around April 12, 2011, the USPTO refused Petitioner’s application to
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`register the mark “EAGLE” because the mark, when used in connection with the identified
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`goods, so resembled Wohali’s STEEL EAGLE mark as to be likely to cause confusion, or to
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`cause mistake, or to deceive. (Ex. 2, Trademark Application File, at p. 3.)
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`
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`8.
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`Petitioner alleged it was unaware of Wohali’s STEEL EAGLE mark until its
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`application to register EAGLE was denied. (Ex. 18, Doc. 11, Order at p. 1, last sentence.)1
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`
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`9.
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`There is no evidence of actual confusion concerning the source of Wohali’s
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`STEEL EAGLE mark. (Ex. 21, Declaration of Griffin at para. 5.)
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`
`1 All references to “Doc.” mean the Document # assigned by the U.S. District Court for the
`Western District of Wisconsin, in Civil Case No. 11-CV-300.
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`
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`2
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`

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`
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`10.
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`On April 25, 2011, Petitioner filed a Complaint in the U.S. District Court for the
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`Western District of Wisconsin seeking (among other things) damages, injunctive relief and the
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`cancellation of Wohali’s STEEL EAGLE mark. (Ex. 15, Doc. 1, Complaint at p. 12-14.)
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`
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`11.
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`On May 23, 2011, Wohali filed its Answer and Affirmative Defenses, and within
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`same informed the Court that Petitioner’s application to register the mark EAGLE was refused
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`because Petitioner’s applied for mark when used in connection with the identified goods
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`resembled Wohali’s STEEL EAGLE mark as to be likely to cause confusion, or to cause
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`mistake, or to deceive. (Ex. 16, Doc. 4, Answer and Affirmative Defenses of Wohali Outdoors,
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`LLC at p. 7-8, para. 12.)
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`12.
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`On June 6, 2011 (14 days after Wohali asserted this defense), Petitioner filed a
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`motion to dismiss its case without prejudice. (Ex. 17, Doc. 5, Plaintiff’s Motion for Voluntary
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`Dismissal Without Prejudice.)
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`
`
`
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`13.
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`Petitioner admitted there are many registered EAGLE marks on optical goods,
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`and that the mark EAGLE in respect to optical goods, is weak.
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`“. . . Clearly, the old saw about ‘eagle eyes’ has informed the use
`of ‘Eagle’ in each of these marks. The eagle is regarded as
`exemplifying excellent distance vision. This lends itself to use of
`the term ‘eagle’ in many different marks pertaining to optical
`products. As such, the term ‘Eagle’ is a relatively weak mark for
`optical products.” (underlining added)
`
`
`(Ex. 13, Petitioner’s Response to Official Action dated August 26, 2002, at p. 2, last paragraph.)
`
`
`“Finally, the extent of confusion is de minimus. The existence of
`many registered EAGLE marks on various types of optical goods
`leads to a determination that the mark EAGLE is weak in respect
`to the goods and the extent of potential confusion is de minimus
`rather than substantial.” (underlining added)
`
`(Ex. 13 at p. 4.)
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`The only similarity between Wohali’s mark (STEEL EAGLE) and any of
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`
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`14.
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`3
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`

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`Petitioner’s marks (GOLDEN EAGLE, STRIKE EAGLE or any of the EAGLE OPTICS marks
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`set forth on page 2 of Petitioner’s Petition for Cancellation filed October 10, 2011) is that each
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`includes the term “EAGLE”. (Ex. 21, Declaration of Griffin at para. 6.)
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`
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`15.
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`The purchase of optics is a careful, thought out process. Rifle scopes and
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`binoculars are expensive items, generally costing at least one hundred dollars, and often times
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`are much more expensive. It is not an impulse purchase. (Ex. 21, Declaration of Griffin at para.
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`7; See also Ex. 13 at p. 4, 3rd para. from bottom of page.)
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`
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`16.
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`On November 4, 2002 (approximately 10 years ago), after having its application
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`to register EAGLE OPTICS denied, Petitioner requested this Court to cancel Nikon, Inc.’s mark,
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`EAGLEVIEW.
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`to register EAGLE OPTICS, U.S.
`“Petitioner has applied
`Trademark application no. 78/029,311 filed October 5, 2000 for
`binoculars, telescopes and spotting scopes. Petitioner’s application
`for registration has been refused registration under Section 2(d) of
`the Trademark Act based on the Examiner’s conclusion that the
`Petitioner’s mark EAGLE OPTICS is likely to be confused with
`Registrant’s mark EAGLEVIEW.” (underlining added)
`
`
`(Ex. 19, Petition for Cancellation at p. 2, para. 5.)
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`17.
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`Thereafter, Petitioner entered into a Consent Agreement with Nikon, Inc. (owner
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`
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`of the EAGLEVIEW mark), and “requested that the refusal of registration be withdrawn and that
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`the present application [application for EAGLE OPTICS] be approved for publication.” (Ex. 20,
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`Petitioner’s Response to Official Action dated January 15, 2004, specifically at p. 2.)
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`II.
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`STANDARD FOR GRANTING SUMMARY JUDGMENT_____________________
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`
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`The requirements for granting summary judgment in a trademark cancellation proceeding
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`are the same as in any other case. Loglan Institute, Inc. v. Logical Language Group, Inc., 22
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`U.S.P.Q.2d 1531; 962 F.2d 1038, 1040 (Fed. Cir. 1992). Summary judgment is proper where the
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`
`
`4
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`

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`undisputed material facts establish that a party is entitled to judgment as a matter of law.
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`Fed.R.Civ.P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). A material fact is one
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`which may affect the outcome of the suit under the governing law. Anderson v. Liberty Lobby,
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`Inc., 477 U.S. 242, 247-48 (1986). To dispute a material fact, the non-moving party must offer
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`more than a “mere scintilla” of evidence; the evidence must be such that “a reasonable jury could
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`return a verdict” for it. Id. “[T]he requirement that a dispute be ‘genuine’ means simply that
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`there must be more than ‘some metaphysical doubt as to the material facts.’ “ Scott v. Harris,
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`550 U.S. 372, 380 (2007) (quoting Matsushita Electric Industrial Co. v. Zenith Radio Corp., 475
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`U.S. 574, 586 (1986)). If a party's version of the facts is “blatantly contradicted by the record, so
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`that no reasonable jury could believe it, a court should not adopt that version of the facts for
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`purposes of ruling on a motion for summary judgment.” Scott, 550 U.S. at 380.
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`III.
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`
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`THERE IS NO EVIDENCE SUPPORTING PETITIONER’S CLAIM ___________
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`The registration of Wohali’s STEEL EAGLE mark is prima facie evidence that Wohali
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`has the exclusive right to use the mark in commerce and in connection with the goods specified
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`in its registration. 15 U.S.C. § 1115. By registering Wohali’s STEEL EAGLE mark, the
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`USPTO previously determined there was no likelihood of confusion between Wohali’s STEEL
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`EAGLE mark and all other marks (including Petitioner’s marks). (SOF Nos. 2-5.) Petitioner has
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`failed to submit any evidence supporting its claim and therefore, Petitioner’s claim should be
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`dismissed with prejudice.
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`Wohali is not required to produce evidence negating the existence of a material fact on
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`which Petitioner has the burden of proof, but may submit a bare motion for summary judgment
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`pointing out the absence of evidence supporting Petitioner’s claim. Saunders v. Michelin Tire
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`5
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`

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`Corporation, 942 F.2d 299 (5th Cir. 1991), citing Latimer v. Smithkline & French Laboratories,
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`919 F.2d 301 (5th Cir. 1990) as well as Celotex Corporation v. Catrett, 477 U.S. 317 (1986).
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`
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`THERE IS NO LIKELIHOOD OF CONFUSION CONCERNING WOHALI’S
`STEEL EAGLE MARK___________________________________________________
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`Petitioner’s own admissions prove its claim has no merit and must be dismissed.
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`A.
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`Petitioner Cannot Monopolize All Marks That Contain The Term “Eagle”
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`Petitioner seeks to create a monopoly on any mark containing the word “EAGLE”.
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`IV.
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`Similar attempts have been rejected by the Courts. See Freedom Card, Inc. v. JP Morgan Chase
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`Co., 432 F.3d 463, 475-476 (3rd Cir. 2005) (The mark “CHASE FREEDOM” on a credit card did
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`not preclude Chase’s mark, “FREEDOM CARD”.)2 See also Continental Distilling Corp. v.
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`Norman Williams, 170 U.S.P.Q. 132; 443 F.2d 392, 1302-1303 (Ct. Custom Appeals 1971) (The
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`mark Dixie Belle for distilled spirits did not preclude applicant’s marks for Cumberland Belle,
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`River Belle, Heather Belle and/or Canadian Belle, which were also for distilled spirits.)3
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`Approximately ten years ago, Petitioner applied for the mark EAGLE OPTICS. When
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`the USPTO refused registration based on Nikon’s EAGLEVIEW mark, Petitioner filed a
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`cancellation proceeding seeking to cancel Nikon’s mark. Petitioner conceded the term
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`“EAGLE” was a very common term used in connection with optics. (SOF No. 13.) Admitting
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`Petitioner cannot monopolize all marks containing the term “EAGLE”, Petitioner entered into a
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`Consent Agreement with Nikon. (SOF Nos. 16-17.)
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`2 Exhibit 22 is a copy of Freedom Card, Inc. v. JP Morgan Chase Co., 432 F.3d 463 (3rd Cir.
`2005).
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` Exhibit 23 is a copy of Continental Distilling Corp. v. Norman Williams, 170 U.S.P.Q. 132; 443
`F.2d 392 (Ct. Custom Appeals 1971).
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` 3
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`6
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`

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`
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`Now ten years later, after having its application for EAGLE rejected based on Wohali’s
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`mark, Petitioner has again attempted to cause the mark identified by the USPTO examiner to be
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`cancelled.
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`Concerning its attacks on Wohali’s mark, Petitioner first filed suit in Federal District
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`Court in Wisconsin seeking relief, including but not limited to, damages, injunctive relief and the
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`cancellation of Wohali’s mark. Almost immediately after Wohali filed its Answer to the
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`Complaint, informing the Court that the USPTO had previously denied Petitioner’s EAGLE
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`mark because it so resembled Wohali’s mark as to likely cause confusion, Petitioner moved to
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`dismiss its own Federal action. (SOF Nos. 10-12.)
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`B.
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`Petitioner’s Admissions Prove Its Claim Must Be Dismissed. Petitioner
`Has Admitted The Term “EAGLE” Is Used In Many Marks Pertaining To
`Optics And That The Term “EAGLE” Is Weak In Respect To Optics
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`In Application of E.I. DuPont DeNemours & Co., 177 U.S.P.Q. 563; 476 F.2d 1357, 1361
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`(Ct. Custom Appeals 1973), the Court set forth the test/factors when determining likelihood of
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`confusion under 15 U.S.C. § 1052(d).4 Not all factors are applicable to all cases and the facts of
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`each case determine which factors are most important. DuPont, 476 F.2d at 1361-1362.
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`4 “(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound,
`connotation and commercial impression. (2) The similarity or dissimilarity and nature of the
`goods or services as described in an application or registration or in connection with which a
`prior mark is in use. (3) The similarity or dissimilarity of established, likely-to-continue trade
`channels. (4) The conditions under which and buyers to whom sales are made, i. e. “impulse” vs.
`careful, sophisticated purchasing. (5) The fame of the prior mark (sales, advertising, length of
`use). (6) The number and nature of similar marks in use on similar goods. (7) The nature and
`extent of any actual confusion. (8) The length of time during and conditions under which there
`has been concurrent use without evidence of actual confusion. (9) The variety of goods on which
`a mark is or is not used (house mark, “family” mark, product mark). (10) The market interface
`between applicant and the owner of a prior mark: (a) a mere “consent” to register or use. (b)
`agreement provisions designed to preclude confusion, i. e. limitations on continued use of the
`marks by each party. (c) assignment of mark, application, registration and good will of the
`related business. (d) laches and estoppel attributable to owner of prior mark and indicative of
`lack of confusion. (11) The extent to which applicant has a right to exclude others from use of its
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`7
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`

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`
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`Based on (i) Petitioner’s admissions made before the USPTO, which are binding on
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`Petitioner5 and (ii) the registration of Wohali’s STEEL EAGLE mark, there is no likelihood of
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`confusion. Applying the relevant DuPont factors to the facts of this case:
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`
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`(a) Factors 1, 2, 6 and 10-12 (see footnote 2 at pages 7-8 herein for descriptions):
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`After the USPTO examiner refused to register Petitioner’s mark EAGLE OPTICS
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`because of Nikon’s EAGLEVIEW mark, Petitioner advised the USPTO that the term EAGLE is
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`weak as it is used in many different marks pertaining to optical products and that the potential for
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`confusion is de minimus rather than substantial. Petitioner stated:
`
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`(SOF No. 13.)
`
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`“. . . Clearly, the old saw about ‘eagle eyes’ has informed the use
`of ‘Eagle’ in each of these marks. The eagle is regarded as
`exemplifying excellent distance vision. This lends itself to use of
`the term ‘eagle’ in many different marks pertaining to optical
`products. As such, the term ‘Eagle’ is a relatively weak mark for
`optical products.” (underlining added)
`
`“Finally, the extent of confusion is de minimus. The existence of
`many registered EAGLE marks on various types of optical goods
`leads to a determination that the mark EAGLE is weak in respect
`to the goods and the extent of potential confusion is de minimus
`rather than substantial.” (underlining added)
`
`
`(SOF No. 13.)
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`
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`
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`Petitioner then entered into a Consent Agreement with Nikon, Inc. (SOF No. 16-17.)
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`mark on its goods. (12) The extent of potential confusion, i. e., whether de minimis or substantial.
`(13) Any other established fact probative of the effect of use.”
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`DuPont, 476 F.2d at 1361. Exhibit 24 is a copy of the case.
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` 5
`
` “Factual assertions in pleadings are judicial admissions conclusively binding on the party that
`made them.” Davis v. A.G. Edwards & Sons, Inc., 823 F.2d 105 (5th Cir.1987) (quoting White v.
` Arco/Polymers, Inc., 720 F.2d 1391 (5th Cir.1983)). Morales v. Department of Army 947 F.2d
`766, 769 (C.A.5 (Tex.),1991).
`
`
`
`
`8
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`

`
`
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`Thus, Petitioner admitted (1) there are many marks concerning optics that contain the
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`term “EAGLE”; (2) the term EAGLE with respect to optics is a weak mark; and (3) the potential
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`for confusion is de minimus as the only similarity between Wohali’s mark (STEEL EAGLE) and
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`Petitioner’s marks (GOLDEN EAGLE, STRIKE EAGLE AND EAGLE OPTICS), is the use of
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`the term “EAGLE”.
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`
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`This precise scenario was addressed in Freedom Card, Inc. v. JP Morgan Chase Co., 432
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`F.3d 463 (3rd Cir. 2005). In Freedom, the Petitioner (UTN) challenged Chase’s CHASE
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`FREEDOM CARD mark based on UTN’s mark, FREEDOM CARD.
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`
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`Like here, UTN’s application for its FREEDOM CARD mark was rejected based on the
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`existing mark, FUEL FREEDOM CARD. Like here (so the USPTO would register its
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`FREEDOM CARD mark), UTN represented that the term “freedom” was in wide-spread
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`commercial use, and that no one had the exclusive right to use the term FREEDOM alone. Then,
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`UTN entered into a Consent Agreement with Parker Oil (owner of the FUEL FREEDOM CARD
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`mark), and agreed there was no likelihood of confusion between the marks. Freedom, 432 F.3d
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`at 475-476.
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`
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`When UTN later challenged Chase’s CHASE FREEDOM CARD mark, the Third Circuit
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`held that UTN’s admissions showed there was no likelihood of confusion. (Here Petitioner’s
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`admissions must be similarly interpreted):
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`“The district court viewed UTN's representations to the USPTO
`through the lens of judicial estoppel.FN20 Chase, 333 F.Supp.2d at
`246. Whether we view the district court's treatment of UTN's prior
`representations about
`the commercial availability of marks
`containing the word “freedom” as judicial estoppel, an admission,
`waiver, or simply hoisting UTN by its own petard, we agree with
`the district court's conclusion about the commercial impact of
`“freedom” in the two marks at issue here. Thus, UTN's own
`statements and actions, together with Chase's undisputed evidence
`of the widespread and common use of “freedom,” undermine
`
`
`
`9
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`

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`UTN's belated attempt to establish likelihood of confusion from
`the juxtaposition of “FREEDOM” and Chase's housemark. See
`SquirtCo v. Tomy Corp., 697 F.2d 1038, 1043 (Fed.Cir.1983).”
`(underlining added)
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`Freedom, 432 F.3d at 476.
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`(b) Factor 7 (nature and extent of actual confusion):
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`
`
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`There is no evidence of actual confusion as to the source of Wohali’s STEEL EAGLE
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`mark. (SOF No. 9.)
`
`
`
`
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`(c) Factor 4 (impulse v. careful, sophisticated purchasing):
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`The purchase of optics is a careful, thought out process due to the expense to obtain the
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`goods. It is the opposite of an impulse purchase. (SOF No. 15.)
`
`
`
`
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`(d) Factor 5 (fame of prior mark):
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`Petitioner’s marks have no fame. Each of Petitioner’s marks contain the term “EAGLE”,
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`a term used in many marks for optics. (SOF No. 13.) Petitioner’s willingness to enter into a
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`Consent Agreement with Nikon, Inc. is further evidence of this. (SOF No. 16-17.) Wohali was
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`not aware of any of Petitioner’s marks at the time it applied for and/or received the registration
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`for its STEEL EAGLE mark. (SOF No. 6.) There is no evidence of any actual confusion
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`concerning the source of Wohali’s mark. (SOF No. 9.)
`
`V.
`
`CONCLUSION/PRAYER_________________________________________________
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`There is no genuine issue concerning any of the facts set forth herein. As the USPTO
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`previously concluded, there is no likelihood of confusion between Wohali’s STEEL EAGLE
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`mark and any other marks. The only reason these parties are before this Court, is because the
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`examiner identified Wohali’s mark as the basis for denying Petitioner’s application.
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`Wohali prays the Court (1) grant summary judgment in favor of Wohali and against
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`Petitioner; (2) dismiss Petitioner’s claim with prejudice; (3) award attorneys’ fees and costs in
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`10
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`

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`favor of Wohali and against Petitioner; and (4) award any other relief Wohali proves it is entitled
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`to or for which the Court deems just and equitable.
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`Respectfully Submitted,
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`DOYLE HARRIS DAVIS & HAUGHEY
`
`
`
`
`
`/S. Max Harris/
`Steven M. Harris, OBA #3913
`S. Max Harris, OBA #22166
`Doyle Harris Davis & Haughey
`1350 South Boulder, Suite 700
`Tulsa, OK 74119
`(918) 592-1276
`(918) 592-4389 (fax)
`Attorneys for Respondent, Wohali Outdoors, LLC
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`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of Respondent’s Motion for Summary
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`Judgment and Brief in Support was sent by U.S. First Class Mail, postage prepaid, this 20th day
`of July, 2012, to:
`
`
`James D. Peterson
`Jennifer L. Gregor
`GODFREY & KAHN, S.C.
`One East Main Street, Suite 500
`Madison, Wisconsin 53701-2719
`
`
`
`
`
`
`
`
`I further certify that a copy of same was also sent via electronic mail, this 20th day of
`July, 2012, to:
`
`
`James D. Peterson
`Jennifer L. Gregor
`
`jpeterson@gklaw.com
`jgregor@gklaw.com
`
`
`
`
`
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`
`
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`
`
`
`
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`
`
` /s/ S. Max Harris/
`S. Max Harris
`
`1637-5:mh
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`
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`11
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`

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`Wohali's Exhibit 1 Page 1 of 1
`Sheltered Wings, Inc. v. Wohali Outdoors, LLC, Cancellation No. 92054629
`
`

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`To:
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`Subject:
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`Sent:
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`Sheltered Wings, Inc. (trademark@langlotz.com)
`
`U.S. TRADEMARK APPLICATION NO. 85095903 - EAGLE - VX-T67
`
`4/12/2011 10:22:24 AM
`
`Sent As:
`
`ECOM108@USPTO.GOV
`
`Attachments: Attachment - 1
`Attachment - 2
`Attachment - 3
`Attachment - 4
`Attachment - 5
`Attachment - 6
`Attachment - 7
`Attachment - 8
`Attachment - 9
`Attachment - 10
`Attachment - 11
`Attachment - 12
`Attachment - 13
`Attachment - 14
`Attachment - 15
`Attachment - 16
`Attachment - 17
`Attachment - 18
`Attachment - 19
`Attachment - 20
`Attachment - 21
`Attachment - 22
`Attachment - 23
`Attachment - 24
`Attachment - 25
`Attachment - 26
`Attachment - 27
`Attachment - 28
`Attachment - 29
`Attachment - 30
`Attachment - 31
`Attachment - 32
`Attachment - 33
`Attachment - 34
`Attachment - 35
`
`Sheltered Wings, Inc. v. Wohali Outdoors, LLC, Cancellation No. 92054629
`Wohali's Exhibit 2 Page 1 of 61
`
`

`
`Attachment - 36
`Attachment - 37
`Attachment - 38
`Attachment - 39
`Attachment - 40
`Attachment - 41
`Attachment - 42
`Attachment - 43
`Attachment - 44
`Attachment - 45
`Attachment - 46
`Attachment - 47
`Attachment - 48
`Attachment - 49
`Attachment - 50
`Attachment - 51
`Attachment - 52
`Attachment - 53
`Attachment - 54
`Attachment - 55
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
`
`85095903
`
`(cid:160)(cid:160)(cid:160) CORRESPONDENT ADDRESS:
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`
`LANGLOTZ PATENT & TRADEMARK
`
`PO BOX 9650337585
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`
`(cid:160) (cid:160)(cid:160)(cid:160) APPLICATION SERIAL NO.(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160) MARK: EAGLE(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) (cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160) (cid:160)
`ANGELA V. LANGLOTZ(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) APPLICANT:(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`WORKS, INC.(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`WASHINGTON, DC 20090(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160) Sheltered Wings, Inc.(cid:160)(cid:160)(cid:160) (cid:160)(cid:160)(cid:160)(cid:160)(cid:160) CORRESPONDENT’S REFERENCE/DOCKET
`(cid:160)(cid:160)(cid:160)
`NO:(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`VX-T67(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) CORRESPONDENT E-MAIL ADDRESS:(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`
`*85095903*
`
`CLICK HERE TO RESPOND TO THIS LETTER:
`http://www.uspto.gov/trademarks/teas/response_forms.jsp
`
`trademark@langlotz.com
`
`OFFICE ACTION
`
`Sheltered Wings, Inc. v. Wohali Outdoors, LLC, Cancellation No. 92054629
`Wohali's Exhibit 2 Page 2 of 61
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`

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`STRICT DEADLINE TO RESPOND TO THIS LETTER
`TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST
`RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE
`ISSUE/MAILING DATE BELOW.
`
`(cid:160)I
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`SSUE/MAILING DATE: 4/12/2011
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`(cid:160)A
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`ction on this application had been suspended pending the disposition of Application Serial No.(cid:160) 77-
`689308.(cid:160)(cid:160) That application has matured into a registration.(cid:160) Accordingly, the examining attorney
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`determines as follows.(cid:160)(cid:160)
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`Mark is Likely to Cause Confusion
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`(cid:160)T
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`he examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section
`1052(d), because the applicant's mark, when used on or in connection with the identified goods, so
`resembles the mark in U.S. Registration No. 3904929 as to be likely to cause confusion, or to cause
`mistake, or to deceive.(cid:160) TMEP section 1207.(cid:160) See the enclosed registration.
`
`(cid:160)T
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`rademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark
`that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the
`goods and/or services of the applicant and registrant.(cid:160) See 15 U.S.C. §1052(d).(cid:160) The court in In re E. I. du
`Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be
`considered when determining whether there is a likelihood of confusion under Section 2(d).(cid:160) See TMEP
`§1207.01.(cid:160) However, not all of the factors are necessarily relevant or of equal weight, and any one factor
`may be dominant in a given case, depending upon the evidence of record.(cid:160) In re Majestic Distilling Co.,
`315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-
`62, 177 USPQ at 567.
`
`(cid:160)T
`
`he examining attorney must analyze each case in two steps to determine whether there is a likelihood of
`confusion.(cid:160) First, the examining attorney must look at the marks themselves for similarities in appearance,
`sound, connotation and commercial impression.(cid:160) In re E. I. DuPont de Nemours & Co., 476 F.2d 1357,
`177 USPQ 563 (CCPA 1973).(cid:160) Second, the examining attorney must compare the goods or services to
`determine if they are related or if the activities surrounding their marketing are such that confusion as to
`origin is likely.(cid:160) In re August Storck KG, 218 USPQ 823 (TTAB 1983);(cid:160) In re International Telephone and
`Telegraph Corp., 197 USPQ 910 (TTAB 1978);(cid:160)(cid:160) Guardian Products Co., v. Scott Paper Co., 200 USPQ
`738 (TTAB 1978).
`
`(cid:160)A
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`nalysis of Applicant’s Mark and Registered Mark
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`(cid:160)F
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`irst, a comparison of the respective marks show that they are comprised either in whole or significant
`part of the term “EAGLE.” (cid:160) The mere deletion of wording from a registered mark is not sufficient to
`overcome a likelihood of confusion under Section 2(d).(cid:160) See In re Optical Int’l , 196 USPQ 775 (TTAB
`1977) (where applicant filed to register the mark OPTIQUE for optical wear, deletion of the term
`BOUTIQUE is insufficient to distinguish the mark, per se, from the registered mark OPTIQUE
`BOUTIQUE when used in connection with competing optical wear).(cid:160)(cid:160)(cid:160) Accordingly, the applicant’s mark,
`“EAGLE,” is similar in sound, appearance, connotation and commercial impression to Registration No.
`3904929’s mark “STEEL EAGLE.” (cid:160)(cid:160) Similarity in any one of these elements alone is sufficient to find a
`likelihood of confusion.(cid:160)(cid:160) In re Mack, 197 USPQ 755 (TTAB 1977).
`
`(cid:160)
`Sheltered Wings, Inc. v. Wohali Outdoors, LLC, Cancellation No. 92054629
`Wohali's Exhibit 2 Page 3 of 61
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`

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`(cid:160)I
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`t is well settled that in some circumstances, it is appropriate to recognize that one component of a
`particular mark may, for some reason, have more significance than other components in determining the
`commercial impression which is generated by the mark.(cid:160) In re National Data Corp.,(cid:160) 753 F.2d 1056, 224
`USPQ 749 (Fed. Cir. 1985).(cid:160) Although the determination of whether or not confusion is likely must be
`based on a comparison of the marks in their entireties, the dominance of such a significant element must
`be taken into account in resolving this issue.(cid:160) Ceccato v. Manifattura Lane Gaetano Morzotto Figli S.p.A.,
`32 USPQ 1192 (TTAB 1994).(cid:160) Disclaimed matter is typically less significant or less dominant.
`
`(cid:160)T
`
`he registrant’s mark is “STEEL EAGLE.” (cid:160) In the comparison above, the mark was viewed and
`considered as a whole. “STEEL,” however, is descriptive of the feature of the goods and is of less
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`trademark significance than “EAGLE.” (cid:160)(cid:160)
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`Analysis of Goods and Services
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`(cid:160)S
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`econd, the relationship of the goods is evident because both marks are for goods including rifle scopes
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`and binoculars.(cid:160) The overlapping identifications evidence the relationship.(cid:160)(cid:160)
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`As to the registrant’s other goods, it should be noted that third party registrations that do no cover a wide
`variety of goods might have some probative value in establishing a relationship between the goods. In re
`Parfums Schiaparelli Inc., 37 USPQ2d 1864 (TTAB 1995).(cid:160) A search of Office records re