Descriptive Rhyming Term Fails to Render Mark Unitary or Alter Commercial Impression

Overview

The dispute centers on the Petitioner’s long-standing use of the mark ASSASSIN and various formative marks against the Respondent’s registered mark FLASHIN’ ASSASSIN. Because both parties operate within International Class 28 for fishing lures, the Board was tasked with determining whether the addition of the prefix "FLASHIN’" sufficiently distinguished the Respondent’s mark from the Petitioner’s senior rights.

Background

The Petitioner initiated a cancellation proceeding against the Respondent’s registration for the mark FLASHIN’ ASSASSIN. Registered in standard characters, the Respondent’s mark covers "Fishing lures; lures for fishing; artificial fishing lures; fishing jigs; fishing jig heads" in International Class 28.

The Petitioner sought cancellation under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), asserting a likelihood of confusion with its prior registrations and common law rights. The Petitioner owns several registrations, including the standard character mark ASSASSIN for "Fishing tackle, fishing floats, artificial fishing bait and artificial plastic fishing lures" in International Class 28. It also owns marks such as BASS ASSASSIN, SALT WATER ASSASSIN, WALLEYE ASSASSIN, and PANFISH ASSASSIN in both standard characters and stylized formats.

Analysis

Entitlement

The Petitioner established its entitlement to seek cancellation by submitting status and title copies of its valid and subsisting registrations. This evidence demonstrates the Petitioner’s direct commercial interest and a reasonable belief in damage. Specifically, the testimony declaration from its Chief Operations Officer confirmed that the Petitioner has marketed and sold fishing lures under the BASS ASSASSIN and various ASSASSIN-formative marks since April 6, 1988.

Priority

In a cancellation proceeding where both parties own registrations, priority is a central issue. The Petitioner carries the burden of proving that its use of the mark predates the Respondent’s use. Because the Respondent provided no evidence of an earlier use date, the Board relied on its application filing date of March 16, 2023. The Petitioner’s ASSASSIN registration was filed on November 17, 2015, and issued on July 26, 2016. Consequently, the Petitioner successfully established priority.

Likelihood of Confusion Analysis

DuPont #2 and #3: Similarity of the Goods, Trade Channels, and Consumers

The second DuPont factor requires a comparison of the goods as identified in the respective registrations. The Board emphasized that this comparison must be based strictly on the goods as described, regardless of how they are marketed in reality. The Respondent’s registration for "fishing lures; lures for fishing; artificial fishing lures" is broad enough to encompass the Petitioner’s "artificial plastic fishing lures." The Board rejected the Respondent’s attempt to distinguish the goods based on construction materials (mylar or tinsel versus plastic), noting that the Respondent’s identification contained no such limitations.

Because the goods are legally identical in part, the Board applied the presumption that the channels of trade and classes of consumers overlap, even without specific evidence of trade channels. The Petitioner further supported this with photographs and testimony showing that fishing lures are typically sold side-by-side on pegboards in retail tackle shops and online in identical product categories. Additionally, the Respondent’s own discovery responses admitted that its customers are the "fishing community generally, without regard to age, gender or socioeconomic status." Consequently, these factors weighed heavily in favor of a likelihood of confusion.

DuPont #5 and #6: Strength and Fame of the Petitioner’s Mark

The Board evaluated both the conceptual and commercial strength of the ASSASSIN mark. Conceptually, the mark was found to be inherently distinctive, as it was registered on the Principal Register without requiring a showing of acquired distinctiveness under Section 2(f). The Respondent provided no evidence of third-party registrations that would suggest conceptual weakness.

For commercial strength under the fifth DuPont factor, the Petitioner offered substantial evidence of its market presence. This included the sale of over 29 million bags of fishing lures and advertising expenditures exceeding $250,000 in 2014 alone. The Petitioner also detailed extensive enforcement efforts, including the issuance of over 100 cease-and-desist letters since 1988.

However, the Board expressed a critique regarding the presentation of this evidence, stating:

"Petitioner did not break down advertising and sales per each pleaded mark, andits evidence of advertising and promotion expenditures and efforts, is provided without context, such as market share, sales or advertising figures for comparable types of goods, or consumer exposure to enable us to determine the extent to which Petitioner’s efforts and expenses may indicate the well-known nature of its ’843 mark and to determine whether consumers recognize the ’843 mark... In short, we cannot accurately gauge Petitioner’s level of success without evidence regarding its market share, how its goods rank in terms of sales in the trade, or how much consumer exposure there has been to its advertising and promotional efforts." (emphasis added)

As a result, the Board found both the fifth and sixth DuPont factors to be neutral, according the ASSASSIN mark the "normal scope of protection" rather than the expanded protection afforded to famous marks.

DuPont #1: Similarity of the Marks

The Board conducted a detailed comparison of ASSASSIN and FLASHIN’ ASSASSIN in terms of appearance, sound, connotation, and commercial impression. It noted that the Respondent’s mark incorporates the entirety of the Petitioner’s mark. While the incorporation of an entire mark does not automatically lead to a finding of similarity, the Board noted that it typically increases the likelihood of confusion.

The Respondent argued that the term "FLASHIN’" provided a distinct connotation, referring to the reflective properties of the lure’s material (mylar or tinsel). The Board acknowledged that "FLASHIN’" is descriptive or highly suggestive in the context of fishing lures because it describes light reflection, and descriptive components of a mark are often given less weight in a likelihood of confusion analysis. Although the Respondent suggested that its mark is unitary due to a rhyming pattern, the Board found that the rhyming quality did not render the mark unitary and did not impart a new or different meaning that would override the descriptive significance of "FLASHIN’."

The Board also observed that consumers have a well-documented propensity to shorten marks when speaking. Customers might refer to the Respondent’s goods simply as "ASSASSIN" lures or, conversely, assume that "FLASHIN’ ASSASSIN" is merely a specific product line from the Petitioner. Even knowledgeable consumers might believe the goods are related due to the "identical similarity" of the core term "ASSASSIN." Consequently, the Board concluded that the first du Pont factor weighed in favor of a likelihood of confusion.

DuPont #4: Purchasing Care and Sophistication

The fourth DuPont factor examines the conditions under which sales are made. The Petitioner presented evidence that fishing lures are low-cost items, typically priced between $3 and $10. The Respondent confirmed that its retail prices ranged from $2.50 to $5.99. The Board noted that impulse purchases of inexpensive items are generally made with a lesser degree of care, which increases the risk of confusion.

The Board also noted that because the identifications of goods in the registrations are unrestricted as to quality or price, it must consider the "least sophisticated potential purchaser." Since the goods are affordable items purchased by the general fishing community, the conditions of sale do not serve to minimize confusion. The Board found the fourth DuPont factor to be neutral

DuPont #7 and #8: Actual Confusion

The Petitioner pointed to two instances it characterized as actual confusion: a vague reference to a third-party representative mentioning confusion, and a publisher's refusal to run an article on the Respondent’s lures due to a "potentially confusing situation."

The Board dismissed the publication instance as a mere inquiry rather than actual confusion, noting that inquiries often show the person is aware that two distinct entities may exist. Regarding the third-party wholesaler instance, the Board found the evidence too vague to establish actual confusion, though it noted the situation was "illustrative" of why confusion is likely. Ultimately, the Board found these factors neutral.

Board’s Decision

The Board concluded that the Petitioner demonstrated a likelihood of confusion by a preponderance of the evidence. The primary drivers of this decision were the legal identity of the goods, the overlapping trade channels, and the similarity of the marks. The Board emphasized that when goods are legally identical, the degree of similarity between the marks required to find a likelihood of confusion is reduced. Because the marks share the prominent and arbitrary term ASSASSIN, and because "FLASHIN’" is a descriptive addition that does not create a distinct commercial impression, the similarities outweigh the differences.