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Bottom line: The Board found “BLACKCANNON” similar to “Canon”.

The applicant filed a trademark application for “BLACKCANNON and its transliteration in katakana” for baseball bats in Class 28.  The Examiner cited three prior marks: “Canon” for clothing and boots for sports in Class 25, “Canon” for sporting articles in Class 28 and “transliteration of Canon in katakana” for sporting articles in Class 28.

The Board first analyzed the applied-for mark and found as follows:

-　“BLACKCANNON” is composed of two dictionary words, BLACK and CANNON, and the katakana portion is transliteration thereof.
-　The first element BLACK is used as a color name for baseball bats and it does not function as a source identifier.
-　“Canon” and “its translation in katakana” is well known among consumers in connection with the business of Canon Inc, and CANNON in the applied-for mark is pronounced identically with “Canon”.  Consumers will recognize CANNON as a strong and dominant element of the applied-for mark.
-　Therefore, it is reasonable to separate and extract CANNON from the composite mark “BLACK CANNON” and compare this element with a third party’s mark when judging similarity.
-　Accordingly, the applied-for mark has, from the element CANNON, sound [kya-no-n] and connotation “mark of Canon Inc.”

The analysis of the cited marks needed not much explanation.  The Board found:

-　The cited marks have sound [kya-no-n] and connotation “mark of Canon Inc.”

Comparing CANNON of the applied-for mark with the cited marks, the Board found the marks at issue are similar in sound and connotation.  Despite the difference of the spelling and the composition that includes both or either of Roman alphabet/katakana, the Board found that the appearance of the marks at issue gives consumers resembling impression.  Overall, the Board found the marks similar and further found no special circumstances in trade that the marks will not cause confusion.

As for goods, one of the cited marks designates clothing and boots for sports, includes uniforms or baseball shoes and these goods are similar to baseball bats due to common use, consumer and trade channel.  Further, baseball bats are included in sporting articles designated in the other two cited marks.

The applicant argued that “Canon” is known for cameras and optical instruments and not for the goods in Classes 25 and 28.  The Board did not take this argument reasonable, because the consumers of cameras and those of baseball bats are the general public and thus the consumers of both goods may be the same.:

And so the Board affirmed the refusal.

 

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