MHB ENTERPRISES v. BRYAN, 91183506 (TTAB 2-7-2011)
Opposition No. 91183506 to application Serial No. 77222328filed on July 5, 2007United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: February 7, 2011Page 1
THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B.
John L. Welch of Lando Anastasi, L.L.P. for MHB Enterprises.
Hugh C. Bryan, pro se.
Before Seeherman, Taylor and Wellington, Administrative Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
MHB Enterprises has opposed Hugh C. Bryan’s application to register H H HEISER, in standard character format, as a trademark for knife sheaths.[fn1] The opposition has been brought on the grounds of likelihood of confusion and lackPage 2
of a bona fide intent to use the mark. In particular, opposer has alleged that it is engaged in the business of making leather products, including holsters and knife sheaths, and has used the marks H.H. HEISER, HEISER, and HERMANN H. HEISER in association with the advertising and sale of its products from a date long prior to the filing date of applicant’s application. Applicant has denied the salient allegations of the notice of opposition in his answer.
The record includes the pleadings; the file of the opposed application; the testimony, with exhibits, of opposer’s president and CEO, Michael H. Blank; and, submitted under opposer’s notice of reliance, requests for admission to applicant to which no timely response was made, and are therefore deemed admitted pursuant to Fed.R.Civ.P. 36(a)(3), and pages from various Internet websites. Applicant did not submit any evidence,[fn2] and only opposer filed a brief.
In order to prevail on the ground of likelihood of confusion, opposer must prove priority of use and a likelihood that applicant’s mark, if used on his identified goods, is likely to cause confusion with a mark for whichPage 3
opposer has made prior use. Because applicant submitted no evidence, the earliest date on which he can rely is the July 5, 2007 filing date of his intent-to-use application, and therefore opposer must show that it acquired rights in its mark or marks prior to that date.
Mr. Blank’s testimony shows that opposer secures website addresses, then researches and starts businesses. Opposer acts like a holding company until the companies are ready to start operating. p. 5. Its H.H. Heiser company sells leather goods, including holsters, knife sheaths, belts and other similar leather products. p. 6. The website for hhheiser.com came online in January 2007, and sells, under the Hermann Heiser name, holsters and knife sheaths, which are two of the primary products of H.H. Heiser. p. 7. The website shows, in addition to the company name “The Hermann H. Heiser Manufacturing Selling Co., a logo with the words HEISER DENVER in an outer oval around a design of horizontal and vertical lines that appears to be three H’s. “Heiser Safety Knife Sheaths” are one of the items featured on the site, and the site also has an order form. Exhibit 2. Mr. Blank testified that both holsters and knife sheaths were sold online beginning in 2007. p. 9.
The testimony of Mr. Blank and the exhibits thereto establish that opposer has used and continues to use thePage 4
mark H.H. HEISER for leather holsters and knife sheaths, and that it commenced such use in 2005, selling them through its St. Louis Arms division. See, in particular, a September 15, 2005 invoice for a holster, and a September 15, 2005 invoice for a knife sheath, exhibit 5. This is sufficient to demonstrate that opposer has a real interest in this proceeding, and is not a mere intermeddler. Accordingly, we find that opposer has established its standing. Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
The same testimony and exhibits also show that opposer acquired trademark rights in the mark H.H. HEISER prior to applicant’s constructive first use date, which is the filing date of his application. There is a deemed admission that HEISER per se “will likely be perceived by consumers as a person’s surname” (#2), and therefore, if opposer were relying on this term per se, opposer would have had to show that what is primarily merely a surname had acquired distinctiveness as a mark prior to applicant’s filing date. However, applicant has also made the deemed admission that applicant’s mark H H HEISER “will likely be perceived by consumers as a person’s name” (#1). Based on this, and the fact that a mark consisting of initials and a surname are generally considered to convey the impression of a personal name rather than as being primarily merely a surname, see InPage 5
re P.J. Fitzpatrick Inc., 95 USPQ2d 1412 (TTAB 2010), we find that opposer acquired trademark rights in H.H. HEISER for knife sheaths and holsters as of its first use of the mark in 2005.
As for the issue of likelihood of confusion, our determination is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc.,315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Here, opposer’s mark H.H. HEISER and applicant’s mark H H HEISER are identical in pronunciation, connotation and commercial impression, and virtually identical in appearance, the only difference being the presence or absence of periods after the initials H. H. Applicant’s identified “knife sheaths” are legally identical to the knife sheaths on which opposer uses its mark, and closely related to opposer’s holsters. See applicant’s deemedPage 6
admissions that there are companies that manufacture and sell both knife sheaths and holsters (#18 and 19); that these goods are sold at the same retail outlets and Internet websites (#12 and 15); that the classes of customers that purchase knife sheaths and the classes of customers that purchase holsters are overlapping (#17); that consumers are accustomed to seeing knife sheaths and holsters being offered under the same mark by the same company (#40), and that a hunter may carry or wear both a knife sheath and a holster at the same time (#25).
The virtual identity of the marks, and the fact that applicant’s goods are identical to opposer’s knife sheaths and closely related to opposer’s holsters, are sufficient for us to find that opposer has met its burden of proving likelihood of confusion, particularly since applicant has not submitted any evidence supporting any du Pont factors in his favor. See In re E.I. du Pont de Nemours Co., 177 USPQ at 567 (each du Pont factor may from case to case play a dominant role). Accordingly, we see no need to burden this opinion with a discussion of any of the other du Pont
factors. Even if the other factors on which opposer has submitted evidence and argument were found to be neutral, the factors of the similarity of the marks and the goods are enough to prove opposer’s case.Page 7
The second ground for the opposition is opposer’s claim that applicant did not have a bona fide intention to use his mark at the time he filed his application. As the Board stated in Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1575 (TTAB 2008):
Opposer has the initial burden of demonstrating by a preponderance of the evidence that applicant lacked a bona fide intent to use the mark on the identified goods. The absence of any documentary evidence on the part of an applicant regarding such intent constitutes objective proof sufficient to prove that the applicant lacks a bona fide intention to use its mark in commerce. See Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1507 (TTAB 1993).
Opposer has submitted applicant’s deemed admission that prior to filing the application, “applicant did not have any written documentation setting forth his plans for using the H H HEISER mark” (#30), as well as the deemed admissions that applicant has not offered for sale or sold any goods under the H H HEISER mark (#31 and 32). With the submission of these deemed admissions opposer has satisfied its initial burden, and the burden shifts to applicant to come forward with evidence which would adequately explain or outweigh his failure to provide documentary evidence. Applicant did not submit any evidence whatsoever, and therefore he has not rebutted opposer’s prima facie case.Page 8
Decision: The opposition is sustained on the ground of likelihood of confusion and on the ground that applicant lacked a bona fide intent to use his mark at the time he filed his application.
[fn1] Application Serial No. 77222328, filed July 5, 2007, based on Section 1(b) of the Trademark Act,15 U.S.C. ? 1051(b) (intent-to-use). [fn2] Applicant filed certain materials in response to the Board’s order to show cause. In discharging the order, the Board specifically advised applicant that the materials and his affidavit would not be considered unless properly made of record during his testimony period. Applicant did not do so.