This Opinion Is Not a
Precedent of the TTAB

Mailed: January 9, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Thermal Engineering Corporation
v.
Rec Tec Industries, LLC
_____

Opposition No. 91225798
_____

B. Craig Killough and John William Fletcher of Barnwell Whaley Patterson & Helms,
LLC, for Thermal Engineering Corporation.

James H. Johnson, Christopher J. Chan, and Ann G. Fort of Eversheds Sutherland
(US) LLP, for Rec Tec Industries, LLC.
_____

Before Zervas, Greenbaum, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:

Applicant Rec Tec Industries, LLC seeks registration on the Principal Register of

the mark REC TEC GRILLS, in standard characters and with “TEC GRILLS”

disclaimed, for the following goods:

• Wood pellets being fuel, in International Class 4;

• Barbecue grills and grilling accessories, namely,
searing grates, grill covers, and customized shelving
to be attached to grills, in International Class 11;
and
Opposition No. 91225798

• Non-stick grilling mats made of fiberglass-coated
mesh, in International Class 27.1

Thermal Engineering Corporation (“Opposer”) opposes registration, asserting

priority and a likelihood of confusion under Trademark Act Section 2(d), 15 U.S.C.

§ 1052(d). Opposer pleaded the following three registrations in its Amended Notice of

Opposition (5 TTABVUE):

• TEC (in standard characters)2 and 3 for
“Barbecue grills; Outdoor cookers for curing and cooking food;
Radiant burner units for stoves, ovens and heaters; Commercial
cooking, baking, curing and drying ovens; Grill accessories,
namely, rotisseries, deep fryers for use with grills, steamers for
use with grills, smokers for use with grills and griddles for use
with grills,” in International Class 11; and

• for “radiant burner units for stoves and
heaters” in International Classes 7 and 11.4

Applicant denied the salient allegations in the notice of opposition.

I. Evidentiary Objections

Applicant submits with its brief three separate appendices, totaling 60 pages with

exhibits, moving to strike all of Opposer’s rebuttal evidence as improper rebuttal (or

alternatively, portions of the rebuttal testimony), and certain witnesses and all

1 Application Serial No. 86413280 was filed October 2, 2014, alleging first use anywhere and
in commerce as of May 6, 2009 pursuant to Trademark Act Section 1(a), 15 U.S.C. § 1051(a).
2 Registration No. 5010811, issued August 2, 2016.
3 Registration No. 4976468, issued June 14, 2016. The description of the mark states: “The
mark consists of capital letters ‘TEC’ with a vertical line to the left of the capital letters and
a horizontal line underneath the capital letters with a zig zag line on top of the horizontal
line.” Color is not claimed as a feature of the mark.
4 Registration No. 750564, issued June 4, 1963; renewed multiple times.
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Opposition No. 91225798

testimony regarding actual confusion for failure to disclose during discovery. 35

TTABVUE 53-113. Opposer opposes the motions. 38-39 TTABVUE.

After careful consideration, we deny the motions to strike. Although we have not

relied on any of Opposer’s rebuttal evidence in reaching our decision, it specifically

pertains to evidence submitted by Applicant and so does not constitute improper

rebuttal. With respect to the actual confusion testimony, all of Opposer’s witnesses

were identified during discovery as having information about confusion: three in

Opposer’s initial disclosures (W.H. “Bill” Best, Rachael Best, and Greig McCully, 35

TTABVUE 69-70) and three more (Christopher Meikrantz, Joseph Kearse, and

Edward Scarborough) in Opposer’s second supplemental answer to Applicant’s

Interrogatory No. 26, 39 TTABVUE 20-22, which Applicant does not address.5 All of

Opposer’s witnesses also were disclosed in Opposer’s pretrial disclosures, see 35

TTABVUE 101-04, but none was disclosed for the first time there. Although Opposer

did not supplement its initial disclosures as required, its trial witnesses and the

subject of their testimony all were disclosed during discovery. Cf., e.g., Galaxy Metal

Gear Inc. v. Direct Access Tech. Inc., 91 USPQ2d 1859, 1861-62 (TTAB 2009)

(admitting discovery deposition but noting that better practice is to supplement

initial disclosures). We therefore consider Opposer’s testimony for whatever

probative value it may have.

5 “Identify each person who has any personal knowledge of any facts tending to support or
rebut any of your claims and allegations in this proceeding, including a description of each
person’s area of knowledge.” 39 TTABVUE 20. Discovery closed on Sunday, March 12, 2017,
and the response was timely served by email on Monday, March 13, 2017.
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Opposition No. 91225798

II. Record

The record consists of the pleadings and, without any action by the parties, the

file of the involved application. Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1).

The record also comprises the evidence summarized below.

A. Opposer’s Evidence

Opposer made its three pleaded registrations of record pursuant to Trademark

Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1), by submitting them via current printouts

from the USPTO’s Trademark Electronic Search System (TESS) database attached

to the Amended Notice of Opposition, 5 TTABVUE 11-13.6 In addition, Opposer filed

an Amended Notice of Reliance on the following evidence:7

• Applicant’s responses to Opposer’s interrogatories and admissions in
response to certain requests for admission (Exhibits E and G, 19 TTABVUE
22-74).8

• Internet printouts from Opposer’s website (Exhibit I,19 TTABVUE 76-77)
and third-party sites selling and reviewing barbecue grills (Exhibits J-M,
19 TTABVUE 78-111).

• TESS printouts of third-party registrations consisting of or comprising TEC
(Exhibit N, 19 TTABVUE 112-82).

Opposer also submitted testimony declarations from the following witnesses:

• W.H. “Bill” Best, a shareholder and officer of Opposer, with Exhibits A-X
(11 TTABVUE) and Exhibit Y, designated confidential (12 TTABVUE).

6 It was unnecessary for Opposer to resubmit printouts of the subject application and its
registrations by notice of reliance.
7 Opposer submitted the Amended Notice of Reliance in response to Applicant’s motion to
strike its original notice, and the Board accepted the amended notice. 20 TTABVUE.
8Denials of requests for admission cannot be submitted by notice of reliance. Trademark Rule
2.120(k)(3), 37 C.F.R. § 2.120(k)(3); see also, e.g., Ayoub, Inc. v. ACS Ayoub Carpet Serv., 118
USPQ2d 1392, 1395 n.9 (TTAB 2016).

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Opposition No. 91225798

• Christopher Meikrantz, general manager of Fireside Outdoor Kitchens &
Grills, which sells Opposer’s grills (13 TTABVUE).

• Joseph Kearse, who has worked for Opposer and operates a business selling
Opposer’s grills online, with Exhibits A-B (14 TTABVUE).9

• Greig McCully, an owner of Fireside Outdoor Kitchens & Grills (15
TTABVUE).

• Edward Scarborough, a former employee of Applicant now in sales for
Fireside Outdoor Kitchens & Grills (16 TTABVUE).

Opposer filed as rebuttal evidence a Second Notice of Reliance on printouts from

eBay.com (Exhibit P, 33 TTABVUE 9-19). Opposer also submitted rebuttal

declarations from Rachael Kearse Best, Opposer’s co-owner (29 TTABVUE);

Mr. McCully (31 TTABVUE); Mr. Best (30 TTABVUE), with Exhibit O; and

Mr. Kearse, with Exhibits Q and R (32 TTABVUE).

B. Applicant’s Evidence

Applicant submitted six Notices of Reliance on the following documents:

• TESS printouts and copies of certificates of third-party registrations
consisting of or comprising TEC, TEK, or TECH (Notice of Reliance A, 21
TTABVUE).

• Internet printouts showing third-party use of TEC-, TEK-, and TECH-
formative marks (Notice of Reliance B, 22 TTABVUE).

• Internet printouts of definitions and examples of use of the term “tech”
(Notice of Reliance C, 23 TTABVUE).

• Internet printouts from the websites of the parties and third parties (Notice
of Reliance D, 24 TTABVUE).

• Printouts of TESS search results (Notice of Reliance E, 25 TTABVUE).

• Opposer’s responses to certain of Applicant’s interrogatories and
admissions to requests for admission (Notice of Reliance F, 26 TTABVUE).

9Applicant’s co-owner Ronald L. Cundy testified that Ms. Best is Mr. Kearse’s sister and
Mr. Best is Mr. Kearse’s brother-in-law. Cundy Dec. at ¶ 45, 27 TTABVUE 11-12.
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Opposition No. 91225798

Applicant also submitted testimony declarations from its co-owners Ronald L. Cundy

(27 TTABVUE), with Exhibits 1-15, and Raymond E. Carnes (28 TTABVUE).

III. Opposer’s Standing and Priority

Standing is a threshold issue that must be proven by the plaintiff in every inter

partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111

USPQ2d 1058, 1062 (Fed. Cir. 2014); see also, e.g., Bell’s Brewery, Inc. v. Innovation

Brewing, 125 USPQ2d 1340, 1344 (TTAB 2017). Opposer’s standing to oppose

registration of Applicant’s mark is established by its pleaded registrations, which the

record shows to be valid and subsisting, and owned by Opposer. See, e.g.,

Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.

2000); N.Y. Yankees P’ship v. IET Prods. & Servs., Inc., 114 USPQ2d 1497, 1501

(TTAB 2015). Also, priority is not at issue with respect to the marks and goods

identified in Opposer’s pleaded registrations, which are of record.

Because Opposer has established its standing and priority as to its pleaded marks,

we turn to the question of likelihood of confusion.

IV. Likelihood of Confusion

Our determination under Trademark Act Section 2(d) is based on an analysis of

all probative facts in evidence that are relevant to the factors bearing on the issue of

likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177

USPQ 563, 567 (CCPA 1973). Opposer bears the burden of proving its claim of

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Opposition No. 91225798

likelihood of confusion by a preponderance of the evidence. Cunningham, 55 USPQ2d

at 1848.10

We focus our likelihood of confusion analysis on Opposer’s pleaded mark TEC in

standard characters, Registration No. 5010811. If we find that there is a likelihood of

confusion between this mark and Applicant’s mark, there is no need for us to consider

the likelihood of confusion with Opposer’s other pleaded marks. Conversely, if we find

there is no likelihood of confusion with this mark, we would find no likelihood of

confusion with Opposer’s other pleaded marks. See In re Max Capital Grp. Ltd., 93

USPQ2d 1243, 1245 (TTAB 2010).

Although registration is opposed as to all applied-for goods, Opposer did not

address the goods identified in International Class 4 (“wood pellets being fuel”) at all

and has not met its burden to prove by a preponderance of the evidence that confusion

is likely as to those goods. We dismiss the opposition as to the Class 4 goods.

We proceed to consider the goods in the application identified in International

Classes 11 and 27, that is, “barbecue grills and grilling accessories, namely, searing

grates, grill covers, and customized shelving to be attached to grills” and “non-stick

grilling mats made of fiberglass-coated mesh.” We address in turn each of the du Pont

factors bearing on our decision for which the parties submitted evidence or argument.

10Applicant asserted numerous affirmative defenses in its amended answer but, because they
were not pursued at trial, they are waived. See, e.g., Tao Licensing, LLC v. Bender Consulting
Ltd., 125 USPQ2d 1043, 1046 (TTAB 2017).
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Opposition No. 91225798

A. Similarity of the Goods, Customers, and Channels of Trade

We begin with the second and third du Pont factors, assessing the similarity or

dissimilarity of the parties’ goods and their trade channels. Our decision must be

based on the identification of goods in the pleaded registration and subject

application. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110

USPQ2d 1157, 1162 (Fed. Cir. 2014). That is because the goods recited in an

application determine the scope of the benefit of registration. Id. A likelihood of

confusion may be found with respect to a particular class based on any item within

the identification for that class. Bond v. Taylor, 119 USPQ2d 1049, 1052-53 (TTAB

2016).

Both the subject application and Opposer’s Registration No. 5010811 identify the

identical goods “barbecue grills” in International Class 11. With respect to the goods

in International Class 27, Opposer argued that “non-stick grilling mats made of

fiberglass-coated mesh” are “closely related, if not also legally identical, to goods in

Opposer’s registrations and to goods sold in commerce by Opposer under the TEC

trademark,”11 but cited no supporting evidence of relatedness. Opposer’s Brief at 7,

34 TTABVUE 13. Although Applicant did not dispute Opposer’s assertion, its

Class 27 goods are not legally identical to Opposer’s identified goods.12 Nor do they

“fall within the scope of Opposer’s grill accessories, namely, rotisseries, deep fryers

for use with grills, steamers for use with grills, smokers for use with grills and

11 Opposer relied on its registrations and did not plead common-law rights in the TEC mark.
12 The presumptions that apply to identical goods are discussed more fully below.
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Opposition No. 91225798

griddles for use with grills.” Id. Nonetheless, we find that Applicant’s grilling mats

are inherently closely related and complementary to barbecue grills.

Because Applicant’s goods and the goods identified in Opposer’s registration are

identical in part, we must presume that those goods – i.e., “barbecue grills” – move in

the same channels of trade and are available to the same classes of customers. See In

re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); Harry

Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1437 (TTAB 2014).

The second and third du Pont factors weigh heavily in support of a finding that

confusion is likely, and Applicant does not argue otherwise.

B. Strength of Opposer’s Mark

The fifth du Pont factor is the fame of the prior mark, and the sixth factor is the

number and nature of similar marks in use for similar goods or services. They

determine the strength of Opposer’s mark. In determining strength of a mark, we

consider both inherent strength, based on the nature of the mark itself, and

commercial strength or recognition. Couch/Braunsdorf Affinity, Inc. v. 12 Interactive,

LLC, 110 USPQ2d 1458, 1476 (TTAB 2014); see also In re Chippendales USA Inc.,

622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is

measured both by its conceptual strength (distinctiveness) and its marketplace

strength (secondary meaning).”).

1. Conceptual and Commercial Strength

Opposer’s mark TEC, derived from Thermal Engineering Corporation, has been

used on barbecue grills for 35 years, as discussed below. Opposer also asserts that its

mark is famous. A famous mark has extensive public recognition and renown. Bose

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Opposition No. 91225798

Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir.

2002); Kenner Parker Toys Inc. v. Rose Art Indus. Inc., 963 F.2d 350, 22 USPQ2d

1453, 1456 (Fed. Cir. 1992).

Fame may be measured indirectly by the volume of sales of and advertising

expenditures for the goods identified by the mark at issue, “the length of time those

indicia of commercial awareness have been evident,” widespread critical assessments

and notice by independent sources of the products identified by the marks, as well as

the general reputation of the products. Bose, 63 USPQ2d at 1305-06, 1309. Raw

numbers alone may be misleading, however. Thus, some context in which to place

raw statistics may be necessary, for example, market share or sales or advertising

figures for comparable types of goods. Bose, 63 USPQ2d at 1309; see also Omaha

Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686,

1690 (Fed. Cir. 2018) (“Market share is but one way of contextualizing ad

expenditures or sales figures.”). Because of the extreme deference that we accord a

famous mark in terms of the wide latitude of legal protection it receives, and the

dominant role fame plays in the likelihood of confusion analysis, it is the duty of the

party asserting that its mark is famous to clearly prove it. Coach Servs. Inc. v.

Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012).

Opposer submitted evidence that it has used the mark TEC in association with

barbeque grills since at least 1983. Declaration of W.H. “Bill” Best at 3 ¶ 12, 11

TTABVUE 4. Although Opposer provided no information regarding its sales,

advertising, or market share, it did submit evidence of critical assessment and media

coverage. This includes:
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Opposition No. 91225798

• The May 2004 edition of “SmartMoney” magazine positively reviewed and
gave a “SmartMoney Award” to a TEC grill. Best Dec. at 7 ¶ 30 & Exhibit
S, 11 TTABVUE 8, 49-50;

• Hearth and Home Magazine’s 2005 Vesta awards for “Best New Gas
Barbeque” and “Best in Show for Outdoor Room Products.” Id. at 7 ¶ 31, 11
TTABVUE 8;

• The National Restaurant Association’s 2006 “Kitchen Innovations Award.”
Id. at 7 ¶ 32 & Exhibit U, 11 TTABVUE 8, 52;

• In June 2006, the show “Modern Marvels” aired an interview with Mr. Best
regarding barbeque grills and barbequing for a program titled “BBQ
Tech.”13 Id. at 6-7 ¶ 29 & Exhibit R, 11 TTABVUE 7-8, 48;

• A “Popular Science Magazine” article in July 2006 featured a TEC grill. Id.
at 7 ¶ 33 & Exhibit V, 11 TTABVUE 8, 53; and

• Mr. Best was interviewed in a September 2008 article from “Casual Living”
magazine titled “Grill innovator never gives up.” Id. at 7 ¶ 34 & Exhibit W,
11 TTABVUE 8, 54-55.

In the likelihood of confusion analysis, fame varies along a spectrum from very

strong to very weak. Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857

F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017). The Board generally considers

evidence related to fame of a mark up to the time of trial. See, e.g., ProMark Brands

Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1250 (TTAB 2015). Here, however, the

evidence on which Opposer relies to support its assertion of fame is all at least a

decade old, raising a question as to current strength, particularly in the absence of

any sales or advertising data. Cf., e.g., Harry Winston, 111 USPQ2d at 1438-40

13 In its brief, Applicant makes assertions regarding this program and lists links to the
History Channel and YouTube webpages. Applicant’s Brief at 18 n.2, 35 TTABVUE 26. Links
are insufficient to make Internet materials of record. In order for the Board to consider the
content of this program, it would need to be submitted on CD-ROM or DVD. See, e.g., In re
Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1195 n.21 (TTAB 2018); Hunter Indus., Inc.
v. Toro Co., 110 USPQ2d 1651, 654-55 (TTAB 2014); Trademark Trial and Appeal Board
Manual of Procedure (TBMP) § 106.03 (2018).
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Opposition No. 91225798

(finding HARRY WINSTON famous for jewelry on evidence including “‘sales in the

billions, advertising and marketing expenditures in the millions, and editorial

mentions valued in the millions over an eighty year period’”); Interlogo AG v.

Abrams/Gentile Entm’t Inc., 63 USPQ2d 1862, 1864 (TTAB 2002) (finding LEGO

famous for toys based on sales exceeding $1 billion and advertising exceeding $100

million, both over a 10-year period, and market studies demonstrating that two-

thirds of U.S. households with children aged 14 years and younger owned at least one

LEGO toy).

As for the conceptual strength of TEC in association with barbeque grills, Opposer

submitted testimony that “‘TEC’ is an acronym for Thermal Engineering Corporation,

the source of TEC grills.” Best Dec. at 3 ¶ 11, 11 TTABVUE 4. Nevertheless, evidence

submitted by both parties indicates that the phonetically identical term “tech” is used

descriptively in association with barbeque grills as a shorthand for “technology.” See

definitions of “tech” from Dictionary.com including the noun “technology,” Applicant’s

Notice of Reliance C, Exhibit C2, 23 TTABVUE 15 (based on the Random House

Dictionary (2017); Cundy Dec. at ¶ 7, 27 TTABVUE 3 (stating that Applicant chose

“TEC” as part of its corporate name “because it referred to the SMART GRILL

TECHNOLOGY incorporated in our grills and rhymed with ‘REC.’”). Indeed,

Applicant was required to disclaim “TECH GRILLS” as merely descriptive of its goods

during examination.14

Examples of media use of the phrase “BBQ tech” include the following excerpts:

14 January 23, 2015 Office Action.
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Opposition No. 91225798

• The “Modern Marvels” episode titled “BBQ Tech.” Best Dec. at 6-7 ¶ 29 &
Exhibit R, 11 TTABVUE 7-8, 48:

• An article on Maxim.com discussing “BBQ Tech.” Applicant’s Notice of
Reliance C, Exhibit C4, 23 TTABVUE 25-28:

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Opposition No. 91225798

• A page on the titanfireproducts.com website titled “Titanfire® BBQ Tech.”
Applicant’s Notice of Reliance C, Exhibit C7, 23 TTABVUE 45-46:

• An article on Gizmodo.com titled “Grill Like a God With the Best BBQ
Tech.” Applicant’s Notice of Reliance C, Exhibit C6, 23 TTABVUE 37-44.

We discuss this issue further in the next section.

2. Third-Party Registration and Use of Similar Marks

Third-party registrations may be relevant to show the sense in which a mark is

used in ordinary parlance; that is, an element common to both parties’ marks may

have a normally understood and well-recognized descriptive or suggestive meaning,

leading to the conclusion that that term is inherently relatively weak. Jack Wolfskin

Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797

F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); see also In re Morinaga Nyugyo

Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016) (“[T]hird-party

registrations are relevant evidence of the inherent or conceptual strength of a mark

or term because they are probative of how terms are used in connection with the goods
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Opposition No. 91225798

or services identified in the registrations.”). Evidence of use of similar marks by third

parties for the same or similar goods, in turn, is relevant to a mark’s commercial

strength. In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir.

2017); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671,

1674 (Fed. Cir. 2015).

Here, the record demonstrates that TEC and similar formatives signifying

“technology” have a suggestive meaning in association with barbeque grills, as

discussed above. Applicant also argues that Opposer’s mark has been weakened and

diluted by third-party use of similar marks for barbecue grills and similar or related

goods. Applicant introduced evidence that third parties have both registered and used

marks incorporating TEC, TEK, and TECH in association with barbecue grills and

accessories. The more probative use-based third-party registrations are:15

Registration 21 TTABVUE Selected Class 11
Mark
No. Cite Goods
BBQTEK 3340018 95-97 Barbecue grills
Barbecues; barbecue
3521237 22-24
grills
AURELIO TECH 5009381 44-47, 113-16 Barbecues and grills
(TECH disclaimed)
5154820 52-55, 160-63 Barbecues
(TECH disclaimed)

15Pending applications are evidence only that they were filed; they are not evidence of use of
the marks. Therefore, they are omitted from this chart. See, e.g., WeaponX Performance
Prods. Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1042 n.21 (TTAB 2018).
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Opposition No. 91225798

With respect to use by third parties, Applicant submitted with its Notice of

Reliance B evidence of use online of TECH and TEK by third parties, not for barbecue

grills but for barbecue accessories, including the following:

• BBK Tek (see first registration in list above) for barbecue parts including
cooking grids, heat plates, and control knobs, Exhibit B5, 22 TTABVUE 21-
24 (from grillspot.com); Exhibit B6, 22 TTABVUE 25-34 (from ebay.com).

• GRILL TEK for barbecue accessories including, among others, grill fans,
brushes, and marinating trays, Exhibit B6, 22 TTABVUE 25-34 (from
ebay.com).

• INNOO TECH for barbecue accessories including grill mats and gloves,
Exhibit B7, 22 TTABVUE 35-61 (from innootech.com).

• ROASTER TECH INC. for a smokeless barbecue table, Exhibit B14, 22
TTAVUE 74-76 (from roastertech.com).

Applicant’s evidence “falls short of the ubiquitous or considerable use of the mark

components present in [applicant’s] cited cases.” In re i.am.symbolic, 123 USPQ2d at

1751 (quotations omitted); cf. Jack Wolfskin, 116 USPQ2d at 1136 (discussing

“voluminous evidence” of registration and use of paw print design elements); Juice

Generation, 115 USPQ2d at 1674 (referencing evidence of “a fair number” of third-

party uses). Nonetheless, we give this evidence probative weight as indicating that

formatives of TECH, TEK, and, in one instance, TEC (in the mark ) are

registered and used by third parties for barbecue grills and accessories.

3. Conclusion as to Strength

Considering the record as a whole, and particularly that Opposer provided no

information regarding its sales, advertising, or market share, we find that Opposer’s

TEC mark is not famous and entitled to only a limited scope of protection under the

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Opposition No. 91225798

fifth and sixth du Pont factors. But that is not to say that it merits no protection,

especially for identical and closely related goods:

Confusion is confusion. The likelihood thereof is to be
avoided, as much between “weak” marks as between
“strong” marks, or as between a “weak” and a “strong”
mark. Similarly, the statute, by providing remedies to
trademark owners, enables those owners to protect their
marks. It is through such owner-action that the public is
protected from confusion.

King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109

(CCPA 1974); see also Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163,

1173 (TTAB 2011) (“Nevertheless, we are mindful that even a weak mark is entitled

to protection against the registration of a very similar mark for closely related

goods.”); Anthony’s Pizza & Pasta Int’l Inc. v. Anthony’s Pizza Holding Co., 95

USPQ2d 1271, 1283 (TTAB 2009). Opposer remains entitled to the presumptions

flowing from its registration under Trademark Act Section 7(b), 15 U.S.C. § 1057(b).

C. Similarity of the Marks

In a likelihood of confusion analysis, we compare the marks in their entireties for

similarities and dissimilarities in appearance, sound, connotation and overall

commercial impression. Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison

Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). “The proper

test is not a side-by-side comparison of the marks, but instead whether the marks are

sufficiently similar in terms of their commercial impression such that persons who

encounter the marks would be likely to assume a connection between the parties.”

Coach, 101 USPQ2d at 1721 (quotation omitted).

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Opposition No. 91225798

We bear in mind our findings regarding the limited strength of Opposer’s mark as

we turn to the first du Pont factor, the similarity of the parties’ marks. Yet we are

also mindful that where, as here, the marks are used in association with goods that

are identical in part, the degree of similarity between them necessary to support a

determination that confusion is likely declines. Century 21 Real Estate Corp. v.

Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).

Opposer’s mark is TEC, while Applicant’s mark is REC TEC GRILLS, with TEC

GRILLS disclaimed. Because GRILLS is the generic name for both parties’ goods,

consumers are likely to focus on what we find to be the more distinctive portion of

Applicant’s mark, REC TEC; the word GRILLS in Applicant’s mark is entitled to very

little weight. Opposer’s entire mark TEC is the second term in Applicant’s mark. The

fact that Applicant has disclaimed TEC does not remove it from the mark or impact

consumer perception. Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565,

218 USPQ 390, 395 (Fed. Cir. 1983) (stating that “disclaimers are not helpful in

preventing likelihood of confusion in the mind of the consumer, because he is unaware

of their existence”); see also Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73

USPQ2d 1350 (Fed. Cir. 2004) (stating that disclaimed elements of a mark are

relevant to assessment of similarity “because confusion is evaluated from the

perspective of the purchasing public, which is not aware that certain words or phrases

have been disclaimed”); In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.

Cir. 1985) (“The public is unaware of what words have been disclaimed during

prosecution of the trademark application at the PTO.”).

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Opposition No. 91225798

While there is no rule that likelihood of confusion automatically applies where one

mark encompasses another, in this case, the fact that Applicant’s mark subsumes

Opposer’s entire mark increases the similarity between the two. See, e.g., Wella Corp.

v. Cal. Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA

CONCEPT marks substantially similar to prior mark CONCEPT); In re Toshiba Med.

Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (VANTAGE TITAN confusingly

similar to registered mark TITAN); In re Riddle, 225 USPQ 630, 632 (TTAB 1985)

(RICHARD PETTY’S ACCUTUNE for automotive service centers confusingly similar

to ACCU-TUNE).

We disagree with Applicant that its entire mark is unitary such that consumers

“will simply view TEC as the transitionary component of the three syllable REC TEC

GRILLS mark.” Applicant’s Brief at 20, 35 TTABVUE 28. Rather, it is at least as

likely that consumers familiar with Opposer’s prior use of its TEC mark in association

with barbecue grills will view REC TEC GRILLS as a variation or line extension of

Opposer’s goods when used with Applicant’s identical goods. In part, this is because

the first term in Applicant’s mark, REC, also has a descriptive or suggestive meaning

in association with barbecue grills which somewhat diminishes its impact: an

abbreviation for “recreation.”16 That the first two terms in Applicant’s mark rhyme

does not alter the significance of TEC in Applicant’s mark. Cf. In re Ginc UK Ltd., 90

16See Dictionary.com (https://www.dictionary.com/browse/rec), based on the RANDOM HOUSE
UNABRIDGED DICTIONARY (2018). Nonetheless, like Opposer’s mark TEC, derived from its
corporate name, Applicant submitted testimony that REC was chosen to represent the names
of the founders’ children, Ross, Ella, and Colden. Cundy Dec. at ¶ 7, 27 TTABVUE 3.
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Opposition No. 91225798

USPQ2d 1472, 1477 (TTAB 2007) (finding that rhyming quality and visual similarity

of ZOGGS TOGGS “does not infuse TOGGS with any separate and distinct meaning”).

Applicant also argues that Opposer’s mark is pronounced “T-E-C.” See Applicant’s

Brief at 18, 35 TTABVUE 26. It does not affect our analysis whether Opposer’s mark

TEC is pronounced as a one-syllable acronym “TEC,” or as the initialism “T-E-C.”

“[T]here is no correct pronunciation of a trademark, and consumers may pronounce a

mark differently than intended by the brand owner.” Viterra, 101 USPQ2d at 1912.

Although there are differences between the marks in appearance and

pronunciation, we find them to convey similar meanings and overall commercial

impressions. Even according Opposer’s mark TEC only a narrow scope of protection,

considering the marks in their entireties, we find that persons encountering them

used on identical or closely related and complementary goods would be likely to

assume a connection between the parties. The first du Pont factor supports a finding

that confusion is likely.

D. Evidence of Actual Confusion

The parties vigorously dispute the seventh du Pont factor, the nature and extent

of any actual confusion. In our proceedings, “[a]ctual confusion is entitled to great

weight but only if properly proven.” Georgia-Pacific Corp. v. Great Plains Bag Co.,

614 F.2d 757, 204 USPQ 697, 701 (CCPA 1980). Properly introducing instances of

actual confusion into the record and persuading the trier of fact as to the probative

value of such evidence is Opposer’s burden. See Couch/Braunsdorf Affinity, 110

USPQ2d at 1479.

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Opposition No. 91225798

Opposer submitted evidence it contends shows that Applicant’s use of its mark

has created actual consumer confusion. In general terms, this evidence includes:

• Testimony of three witnesses employed by Fireside Outdoor Kitchens &
Grills in Augusta, Georgia, where Applicant is based: Christopher
Meikrantz, 13 TTABVUE; Greig McCully, who also is an owner of the store,
15 & 31 TTABVUE; and Edward Scarborough, 16 TTABVUE.17 This
retailer sells Opposer’s goods but not Applicant’s, which are sold directly to
consumers. Cundy Dec. at ¶¶ 23-24, 27 TTABVUE 7.

• Testimony from another witness, Joseph Kearse, who operates an online
business selling Opposer’s grills at tecgrillsonline.com. 14 & 32 TTABVUE.

• A non-party grill review post from the website outdoorigrill.com titled “Tec
Outdoor Grills” interspersed with images of Applicant’s goods as well as
Opposer’s. Best Dec. ¶ 15 & Exhibit D, 11 TTABVUE 5, 16-19; see also
Opposer’s Amended Notice of Reliance, Exhibit L, 19 TTABVUE 87-108.

1. Testimony of Grill Store Employees

We first address the testimony from the Fireside Outdoor Kitchens & Grills

employees. Each testified that they commonly encounter customer confusion based

on the word TEC in the parties’ marks. Examples of their testimony include:

• “Fireside Outdoor Kitchens & Grills sells many brands of grills. Customers
do not confuse TEC grills with any brand of grills other than REC TEC.
Consumers do not confuse REC TEC grills with any brand of grills other
than TEC.” McCully Dec. at ¶ 11, 15 TTABVUE 3.

• “On average, I would say that confusion is expressed by a customer about
four times a week.” Meikrantz Dec. at ¶ 12, 13 TTABVUE 4.

• “On substantially a daily basis, particularly during our busy times of year,
customers in our store express confusion between REC TEC grills and TEC
grills. Customers will examine TEC grills in our showroom and mention
that they have a friend or relative who has a REC TEC grill while we are
discussing TEC grills. Many consumers do not grasp that a TEC grill is not
the same as a REC TEC grill. This confusion arises due to the similar
branding of these grills.” McCully Dec. at ¶ 10, 15 TTABVUE 3.

17Mr. Scarborough previously worked for, and apparently was fired by, Applicant. Cundy
Dec. at ¶ 40, 27 TTABVUE 10.
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Opposition No. 91225798

• “One common situation we experience at Fireside Outdoor Kitchens &
Grills is when the husband buys a REC TEC grill on-line, and the wife
comes into our store and says they have a TEC grill, and she wants to buy
accessories for the grill.” Meikrantz Dec. at ¶ 14, 13 TTABVUE 4.

• “On October 8, 2015, Fireside Outdoor Kitchens & Grills donated a TEC
grill to the Duck’s Unlimited Banquet in Augusta. When the auctioneer at
the charity banquet identified the grill prior to taking bids, he repeatedly
referred to the grill as a REC TEC grill.” McCully Dec. at ¶ 12, 15
TTABVUE 4.

• “On another occasion, Vera Kilpatrick, a television personality who
presents a cooking show that is syndicated on stations in the southeast, was
a guest presenter at a cooking demonstration held by Fireside Outdoor
Kitchens & Grills at their store in Augusta. I was cooking with a TEC grill
during the cooking demonstration. Vera Kilpatrick referred to the grill that
I was using as a REC TEC grill. She subsequently referred customers to
our store to buy REC TEC grills, even though we do not sell REC TEC grills
at Fireside Outdoor Kitchens & Grills because she was confused.” McCully
Dec. at ¶ 13, 15 TTABVUE 4.

Messrs. McCully, Meikrantz, and Scarborough are not neutral witnesses because

Fireside Outdoor Kitchens & Grills is a dealer for Opposer’s goods and we discount

the probative weight of their testimony accordingly. Also, this testimony is hearsay

to the extent that the witnesses state their conclusions about the beliefs or reasons

for the actions of third parties – for example, that Vera Kilpatrick referred to a TEC

grill as a REC TEC grill “because she was confused.” Id. at 15 TTABVUE 4. As we

have recognized previously: “Without direct testimony from these individuals, there

is insufficient information to ascertain what they were thinking, or what caused the

purported confusion.” Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464,

1475 (TTAB 2016); see also Couch/Braunsdorf Affinity, 110 USPQ2d at 1480

(concluding that “we do not believe this highly generalized testimony provides us with

enough circumstantial guarantees of trustworthiness to warrant attributing any

probative value” to alleged instances of actual confusion relayed by customer service
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Opposition No. 91225798

representatives); Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1327

(TTAB 1992) (finding testimony concerning consumer calls not persuasive where “we

do not have the benefit of the testimony of the allegedly confused individuals from

which to determine what may have been responsible for such confusion”).

Nonetheless, certain of these statements fall under exceptions to the rule against

hearsay and carry some minimal persuasive value. We give some weight to how the

witnesses hear shoppers use the parties’ marks on a daily basis under FED. R. EVID.

803(1) as a present sense impression. Also, the public statements by the auctioneer

and television personality referring to TEC grills as REC TEC grills18 are admissible

under FED. R. EVID. 803(3) as a statement of the declarant’s then-existing state of

mind. See Dan Foam ApS v. Sleep Innovations Inc., 106 USPQ2d 1939, 1943 (TTAB

2013). This testimony does not convey confusion of consumers, but may constitute

some evidence that the parties’ marks are similar.

2. Testimony of Mr. Kearse

Opposer also submitted testimony from Joseph Kearse, who has done computer

work for Opposer and, in 2008, created the tecgrillsonline.com website to sell

Opposer’s goods. Kearse Dec. at ¶¶ 5-6, 14 TTABVUE 2-3. Mr. Kearse has sold

Opposer’s grills and accessories through this site for the past decade. Id. at ¶¶ 7-8,

14 TTABVUE 3. Mr. Kearse testified that although his marketing is Internet-based,

more than 90% of his customers who buy TEC grills call and talk to him over the

18Mr. Meikrantz also testified regarding these misstatements, albeit in less detail. See
Meikrantz Dec. at ¶¶ 20-21, 13 TTABVUE 5-6.
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Opposition No. 91225798

phone, and he averages about eight calls per day from customers seeking grills and

accessories. Id. at ¶¶ 11-12, 14 TTABVUE 3. He testified that:

Approximately a year ago, I started getting calls about
REC TEC grills from people who assumed I knew what
they were talking about. When I ask what type of grill the
customer has or is looking for, some callers say that they
want a TEC grill, but as the conversation continues, I learn
that they are inquiring about a REC TEC grill, and not a
TEC grill. Other callers say that they have a TEC grill, but
it will turn out that they want parts or accessories for a
REC TEC grill that they own.

Id. at ¶ 13, 14 TTABVUE 4. This statement conveying what Mr. Kearse has heard

customers say to him is admissible under Fed. R. Evid. 803(1).

Mr. Kearse also testified that, after the number of customers entering the term

REC TEC on the Google.com search engine and then visiting his website rose to 43%,

he “eventually entered ‘REC’ as a negative keyword to my Google Ad Account to

exclude the mistaken REC TEC hits on my website.” Kearse Dec. at ¶¶ 15-16, 14

TTABVUE 4-5. Applicant responds that Mr. Kearse’s testimony does not show

consumer confusion and that he actually benefited from reverse confusion, “enjoying

a free ride attracting Rec Tec’s customers to his website.” Applicant’s Brief at 37, 35

TTABVUE 45.

Because Mr. Kearse sells Opposer’s goods exclusively, he too is not a neutral

witness, and we discount his testimony accordingly. Moreover, as with the employees

of Fireside Outdoor Kitchens & Grills, Mr. Kearse’s testimony does not carry the

probative weight we accord direct testimony from consumers who have experienced

confusion.

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Opposition No. 91225798

3. Online Grill Review

The last purported actual confusion evidence we address is the grill review post

on the website outdoorigrill.com. The first page submitted follows:

Best Dec. ¶ 15 & Exhibit D, 11 TTABVUE 5, 16. Although the main text on this page

refers to Opposer’s goods and the tecgrillsonline.com website, the picture is of one of

Applicant’s grills.

Ronald L. Cundy, Applicant’s co-owner, testified that this review was

automatically generated, “cut-and-pasted together from multiple existing related and

unrelated webpages to create the illusion of new content.” Cundy Dec. at ¶ 50, 27

TTABVUE 12. Mr. Cundy avers no firsthand knowledge of how this post was

prepared or even how it was “mapped to original source locations,” but does submit
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Opposition No. 91225798

additional website excerpts displaying the same text, with his comments. Id. at ¶ 51

& Exhibit 15, 27 TTABVUE 13, 120-41. Applicant also correctly points out in its brief

that some of the content of this site is nonsensical. See Applicant’s Brief at 36, 35

TTABVUE 44. For example, the second sentence of the review reads: “While

traditional grills make meat tough and dry, TEC Expert advice on outdoor kitchens,

gas grills, smokers, pizza ovens and BBQ gear.” 11 TTABVUE 16. Thus, this review

has no probative value.

4. Conclusion as to Actual Confusion

We find that none of the evidence submitted by Opposer proves that actual

consumer confusion has occurred. As noted above, at best, all of the evidence

discussed in this section lends minor support to our finding that the parties’ marks

are similar. See Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469, 471 (TTAB 1975)

(“While a single instance is insufficient as evidence from which to conclude that

applicant’s mark has consistently caused confusion, the single instance of confusion

is at least ‘illustrative of a situation showing how and why confusion is likely.’”

(quoting Libbey-Owens-Ford Glass Co. v. Thermoproof Glass Co., 156 USPQ 510

(CCPA 1968)). “A showing of actual confusion would of course be highly probative, if

not conclusive, of a high likelihood of confusion.” In re Majestic Distilling Co., 315

F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003). “However, evidence of actual

confusion is notoriously difficult to come by and, in any event, such evidence is not

required in order to establish likelihood of confusion.” Time Warner Entm’t Co. v.

Jones, 65 USPQ2d 1650, 1662 (TTAB 2002). The seventh and eighth du Pont factors

are neutral.

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Opposition No. 91225798

E. Conditions of Purchase and Consumer Sophistication

Finally, we consider the fourth du Pont factor, assessing the “conditions under

which and buyers to whom sales are made i.e., ‘impulse’ vs. careful, sophisticated

purchasing.” 177 USPQ at 567. Each party’s identification of goods includes

“barbecue grills,” which is presumed to encompass all types of barbecue grills, in all

forms and price points, sold through all normal channels of trade. Mini Melts, 118

USPQ2d at 1471. Although the actual goods currently offered by the parties are

expensive, the identified goods include bargain grills that may be purchased at mass-

market retailers relatively cheaply and with little care. See Cundy Dec. at ¶ 21, 27

TTABVUE 6 (stating that “entry-level gas and charcoal grills may be purchased for

as little as $100 or less”). We therefore find the fourth du Pont factor to be neutral.

F. Conclusion as to Likelihood of Confusion

We have carefully considered all arguments and evidence properly of record,

including those not specifically discussed herein, as they pertain to the relevant

likelihood of confusion factors. To the extent that any other du Pont factors for which

no evidence was presented by Applicant or Opposer nonetheless may be applicable,

we treat them as neutral.

We have found that the parties’ identified goods, customers, and channels of trade

are identical in part; that Applicant’s mark is similar to Opposer’s mark TEC, even

according that mark a limited scope of protection; and that the remaining du Pont

factors are neutral. Considering the record as a whole, we find that Opposer has

carried its burden to establish by a preponderance of the evidence that Applicant’s

mark REC TEC GRILLS is likely to cause consumer confusion with Opposer’s mark

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Opposition No. 91225798

TEC when used in association with the goods identified in the application in

International Classes 11 and 27.

Decision: The opposition to registration of application Serial No. 86413280 is

sustained as to the goods identified International Classes 11 and 27 and dismissed

as to those in International Class 4.

– 28 –