Outdoor Kids, Inc. v. Parris Manufacutring Co., Inc. , 385 F. App'x 992 ( 2010 )

Note: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
(Cancellation Nos. 92/045,687 and 92/046,943)
OUTDOOR KIDS, INC.,
Appellant,
v.
PARRIS MANUFACTURING CO., INC.,
Appellee.
__________________________
2009-1405
__________________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board.
___________________________
Decided: July 9, 2010
___________________________
JOANNA R. MENDOZA, Law Offices of Joanna R. Men-
doza, PC, of Granite Bay, California, for appellant.
JONATHAN D. ROSE, Bradley Arant Boult Cummings
LLP, of Nashville, Tennessee, for appellee.
__________________________
Before PROST, MAYER, and SCHALL, Circuit Judges.
SCHALL, Circuit Judge.
OUTDOOR KIDS v. PARRIS MFG 2
DECISION
Appellant Outdoor Kids, Inc. (“Outdoor Kids”), ap-
peals the decision of the Trademark Trial and Appeal
Board (“the Board”) dismissing Outdoor Kids’ petition for
cancellation of appellee Parris Manufacturing Co.’s
(“Parris”) U.S. Trademark Registration No. 3,055,384 (the
“’384 mark”) for KID’S OUTDOORS words and design
(the “KID’S OUTDOORS mark”) for “clothing, namely,
children’s costumes, vests, shirts and caps” in Interna-
tional Class 25 and its U.S. Trademark Registration No.
3,055,385 (the “’385 mark”) for the identical KID’S
OUTDOORS mark for “toys, namely, toy guns, and toy
hunting and fishing gear” in International Class 28.
Outdoor Kids, Inc. v. Parris Mfg. Co., Inc., Cancellations
Nos. 92045687 and 92046943 (T.T.A.B. 2009). We affirm.
DISCUSSION
I.
Outdoor Kids is the holder of U.S. Trademark Regis-
tration No. 2,564,915 (the “’915 mark”) for the word mark
“OUTDOOR KIDS” (the “OUTDOOR KIDS mark”) regis-
tered in International Classes 25 and 28. Outdoor Kids
filed the application which matured into the ’915 mark on
January 9, 2003. Between February 1997 and May 2007,
Outdoor Kids employed its OUTDOOR KIDS mark prin-
cipally as a trade name or service mark for retail or online
sales of products, with the majority of products sold by
Outdoor Kids consisting of goods bearing third party
marks. The OUTDOOR KIDS mark appeared only on UV
swimsuits and water bottles.
Parris, a company which has manufactured toy fire-
arms since the end of World War II, filed the applications
3 OUTDOOR KIDS v. PARRIS MFG
for its ’384 and ’385 marks on February 22, 2005. Parris’
president, Craig A. Phillips, testified that it first used its
mark for toy guns and toy hunting and fishing gear on
June 23, 2004 and for children’s costumes, vests, shirts,
and caps on January 29, 2003.
Outdoor Kids learned of Parris’ marks from the
USPTO’s database and subsequently filed Cancellation
No. 92/045,687 seeking cancellation of the ’384 mark.
Outdoor Kids later filed Cancellation No. 92/046,943
seeking cancellation of the ’385 mark. The two petitions
were consolidated by the Board on March 6, 2007.
After determining that Outdoor Kids’ ’915 mark had
priority, the Board turned to an analysis of whether a
likelihood of confusion exists between the parties’ marks.
The Board began its analysis of the factors set forth in In
re E.I. DuPont de Nemours & Co., 476 F.2d 1357 (C.C.P.A.
1973), with the question of whether the OUTDOOR KIDS
mark is famous, since whether a mark is famous plays a
dominant role in the determination of likelihood of confu-
sion. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee en 1772, 396 F.3d 1369, 1374 (Fed. Cir.
2005). The Board concluded that Outdoor Kids had failed
to prove that its OUTDOOR KIDS mark is famous.
Outdoor Kids, Cancellations Nos. 92045687 and
92046943, at 14.
Indeed, continued the Board, the Outdoor Kids mark
is not only not famous, it is weak. The Board pointed to
Outdoor Kids’ amended application, in which, by submit-
ting a disclaimer of “KIDS” and seeking and obtaining
registration under 15 U.S.C § 1052(f), it admitted that the
OUTDOOR KIDS mark is not an inherently distinctive
mark and that the words are merely descriptive of its
goods, with the word “KIDS” being generic. See, e.g.,
Yamaha Intern. Corp. v. Hoshino Gakki Co., Ltd., 840
F.2d 1572, 1577 (Fed. Cir. 1988) (“[I]n cases where regis-
tration was initially sought on the basis of distinctiveness,
OUTDOOR KIDS v. PARRIS MFG 4
subsequent reliance by the applicant on Section 2(f)
assumes that the mark has been shown or conceded to be
merely descriptive.”). Although the Board acknowledged
that the OUTDOOR KIDS mark was entitled to a pre-
sumption of acquired distinctiveness, it found that any
such acquired distinctiveness it possessed was minimal
due to the descriptive and generic nature of the words
employed. Outdoor Kids, Cancellations Nos. 92045687
and 92046943, at 18.
The Board then conducted a comparative analysis of
the parties’ marks, noting that Outdoor Kids’ mark con-
sists of the words OUTDOOR KIDS, whereas the Parris
mark consists of the words KID’S OUTDOORS on a
banner, placed over the design of an elk in profile con-
tained within an oval. The Board noted that, although
the words in a mark are generally accorded greater
weight when analyzing the likelihood of confusion, when
those words are highly descriptive or suggestive, the
presence of a design may be a more significant factor. See
In re Hamilton Bank, 222 U.S.P.Q. 174, 179 (T.T.A.B.
1984). Consequently, the Board considered the elk design
element of Parris’ mark to be a distinguishing feature.
The Board found that in this case, where Outdoor Kids’
mark is weak, and the word portion of Parris’ mark is
descriptive, the transposition of the words (and the differ-
ences in meaning resulting from that transposition) and
the presence of the elk design are sufficient to distinguish
the OUTDOOR KIDS mark from the KID’S OUTDOORS
mark. Outdoor Kids, Cancellations Nos. 92045687 and
92046943, at 22.
Finally, the Board turned to the other relevant Du-
Pont factors. In that regard, the Board observed that
some of the goods identified in Outdoor Kids’ registration
are legally identical to those encompassed in Parris’
registrations and that, consequently, travel in identical
channels of trade to the same classes of customers. Id.
5 OUTDOOR KIDS v. PARRIS MFG
Furthermore, the Board noted, the goods in question are
general consumer goods, purchased by the public at large.
Id. Under those circumstances, the purchasers would
likely not be sophisticated nor exercise great care in
making purchasing decisions. Id. Although these latter
DuPont factors weigh in favor of a determination that the
marks would likely be confused, the Board nevertheless
concluded that the weakness of the OUTDOOR KIDS
mark and the distinguishing differences in the marks
outweighed the factors favoring a likelihood of confusion.
The Board accorded no probative weight to Outdoor Kids’
testimony concerning actual confusion, finding it to be
vague and not credible. Id. at 23-24.
II.
We review the factual findings of the Board to deter-
mine whether they are supported by substantial evidence,
upholding such findings if “a reasonable person might
find that the evidentiary record supports the Board’s
conclusion.” The Cold War Museum, Inc. v. The Cold War
Air Museum, Inc., 586 F.3d 1352, 1356 (Fed. Cir. 2009).
In a trademark cancellation proceeding, “[e]ach of the
DuPont factors presents a question of fact, findings with
regard to which we test for substantial evidence when
called into question on appeal.” Bose Corp. v. QSC Audio
Prods., Inc., 293 F.3d 1367, 1370 (Fed. Cir. 2002). The
Board’s legal conclusions are reviewed de novo. Cold War
Museum, 586 F.3d at 1356.
III.
On appeal, Outdoor Kids does not dispute the factual
findings of the Board. Rather, it maintains that the
Board committed legal error in its weighing of the rele-
vant DuPont factors when it determined that there was
no likelihood of confusion between its mark and Parris’
KID’S OUTDOORS mark. See Kenner Parker Toys Inc. v.
Rose Art Industries, Inc., 963 F.2d 350, 355-56 (Fed. Cir.
OUTDOOR KIDS v. PARRIS MFG 6
1992) (Board erred as a matter of law in improperly
weighing DuPont factors). Specifically, Outdoor Kids
argues that the Board erred in giving little comparative
weight to the similarity of the word marks, the similarity
of the relevant goods, and the similarity of the trade
channels in which the goods traveled.
Outdoor Kids contends that the Board should have fo-
cused primarily upon the words of the respective marks,
instead of attaching significance to what it maintains is
the irrelevant design element of Parris’ mark. Outdoor
Kids urges that, because Parris’ KID’S OUTDOORS mark
is simply a transposition of its own OUTDOORS KIDS
mark, the average consumer is likely to confuse the
terms, particularly in online purchasing. Outdoor Kids
argues that the word transposition and the addition of the
apostrophe in KID’S are irrelevant, as neither serves to
create a different commercial impression or overall mean-
ing.
Outdoor Kids, however, overlooks the Board’s analysis
of the weakness of the OUTDOOR KIDS mark. As seen,
the Board pointed out that, during the course of prosecu-
tion, the Examining Attorney refused the application on
grounds of descriptiveness, and also required a disclaimer
of “KIDS” as merely a generic term for the goods. The
mark was eventually registered under Section 2(f) of the
Trademark Act, but the Board found that the acquired
distinctiveness was still weak, given the highly descrip-
tive, if not generic, term “OUTDOORS” and the failure of
Outdoor Kids to provide substantial evidentiary support
for the fame of its mark.
Furthermore, although it is recognized that the word
portion of a mark is typically granted greater weight, the
Board correctly noted that when the words at issue are
highly descriptive or suggestive, or common in the trade,
the presence of a design may be a more significant factor.
Hamilton Bank, 222 U.S.P.Q. at 179. Indeed, there is no
7 OUTDOOR KIDS v. PARRIS MFG
per se rule that words must always predominate over
design elements. Parfum de Coeur Ltd. v. Lazarus, 83
U.S.P.Q.2d 1012, 1016 (T.T.A.B. 2007). In this case,
“OUTDOOR” is highly descriptive, and Outdoor Kids has
acknowledged that “KIDS” is generic. We cannot, there-
fore, hold that the Board committed legal error in giving
greater weight to the design element of Parris’ mark in
determining that there was little likelihood of confusion
with Outdoor Kids’ weak mark.
Outdoor Kids next makes the argument that, because
the parties’ respective goods are highly related and com-
plementary and are sold through the same or similar
channels of trade, the Board erred in not giving sufficient
weight to this DuPont factor. However, the Board specifi-
cally addressed those issues in its analysis. The Board
acknowledged that these issues militated in favor of a
finding of likelihood of confusion, but held that these
factors were outweighed by the weakness of the
OUTDOOR KIDS mark and the distinguishing design
elements of Parris’ KID’S OUTDOORS mark.
Analysis of the DuPont factors constitutes a balancing
test, with the weight of the various factors depending
upon the circumstances of the individual case. DuPont,
177 U.S.P.Q. at 567; see also Kellogg Co. v. Pack’em
Enters., Inc., 951 F.2d 330, 333 (Fed. Cir. 1991). Indeed,
even a single DuPont factor may be dispositive in a given
case. Id. In this case, the Board determined that the
weakness of the OUTDOOR KIDS mark and the distin-
guishing design characteristics of the KID’S OUTDOOR
mark outweighed the other relevant DuPont factors and
made confusion of Outdoor Kids’ and Parris’ marks
unlikely. Upon reviewing the undisputed facts of this
case, and the Board’s ruling, we hold that the Board
committed no legal error in finding that there is no likeli-
hood of confusion between Outdoor Kids’ OUTDOOR
KIDS mark and Parris’ KID’S OUTDOORS mark.
OUTDOOR KIDS v. PARRIS MFG 8
IV.
For the foregoing reasons, the Board’s dismissal of
Outdoor Kids’ petition for cancellation of Parris’ ’384 and
’385 marks is affirmed.