Banom, Inc.

Trademark Trial and Appeal BoardJun 3, 2016

No. 86474261 (T.T.A.B. Jun. 3, 2016)

This Opinion is not a Precedent of the TTAB Mailed: June 3, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Banom, Inc. _____ Serial No. 86474261 _____ Stanley H. Cohen of Caesar Rivise PC, for Banom Inc. David I., Trademark Examining Attorney, Law Office 114, K. Margaret Le, Managing Attorney. _____ Before Ritchie, Kuczma, and Adlin, Administrative Trademark Judges. Opinion by Ritchie, Administrative Trademark Judge: Banom, Inc. (“Applicant”) seeks registration on the Principal Register of the mark COMFORT PLUS, in standard character format, for goods identified as “protective cut-resistant gloves for industrial use,” in International Class 91. The Trademark Examining Attorney refused registration of Applicant’s mark under Section 2(d) of 1 Application Serial No. 86474261 was filed on December 8, 2014, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce, and disclaiming the exclusive right to use the term "COMFORT" apart from the mark as shown. Serial No. 86474261 - 2 - the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when applied to the identified goods, so resembles the previously registered mark, COMFORT GUARD PLUS,2 also in standard character format, for “protective work gloves,” in International Class 9, as to be likely to cause confusion, mistake, or to deceive. When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal resumed. For the reasons discussed below, we affirm the refusal to register. I. Evidentiary Issue Applicant argues that it was inappropriate for the Examining Attorney to submit evidence of likelihood of confusion with the December 2, 2015 Denial of Request for Reconsideration, because in its November 5, 2015 Request for Reconsideration, Applicant did not specifically argue against the Section 2(d) refusal, but rather reserved such argument for appeal. Specifically, Applicant’s Request for Reconsideration states the following: Pursuant to the requirement in the Office Action, a disclaimer has been inserted as to the word “COMFORT.” Registration has again been refused under Section 2(d). Applicant will be filing a Notice of Appeal with respect to the Section 2(d) refusal to register. 2 Registration No. 4288623 issued February 12, 2013. Serial No. 86474261 - 3 - In response, the Examining Attorney attached a number of website printouts to the denial, with an explanation that the additional evidence is “to show the relatedness of the applicant’s and the registrant’s goods.” An examining attorney may submit, with a denial of request for reconsideration, “new evidence directed to the issue(s) for which reconsideration is sought.” In re Giger, 78 USPQ2d 1405, 1407 (TTAB 2006) see also In re Davey Products, 92 USPQ2d 1998, 2000-2001 (TTAB 2009) (citing TBMP § 1207.04). Applicant was clear, however, that reconsideration was not sought on the Section 2(d) refusal. As such, we agree with Applicant that the Section 2(d) evidence submitted by the Examining Attorney with the Denial of Request for Reconsideration was inappropriate, and we give it no consideration. II. Likelihood of Confusion Our determination of the issue of likelihood of confusion is based on an analysis of all 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 Company, 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. 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). We consider the du Pont factors for which arguments or evidence were presented. The other factors, we consider to be neutral. Serial No. 86474261 - 4 - Goods/Channels of Trade We consider first the relatedness of the goods. Applicant identifies “protective cut- resistant gloves for industrial use,” while the cited registration identifies “protective work gloves.” It is apparent from the plain meaning of the identifications that they are related. Applicant’s gloves for industrial use would necessarily be used for work purposes, and “cut-resistant gloves” are one type of protective work glove. Thus Applicant’s identified goods overlap with, and are a subset of, the goods in the cited registration. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012). Applicant argues that channels of trade are not identical or related since “they are not retail items sold in hardware stores.” 8 TTABVUE 14. There is, however, nothing in the recital of goods in either the cited registration or the application that limits either Registrant’s or Applicant’s channels of trade. See In re Viterra Inc., 101 USPQ2d at 1908. Furthermore, as indicated above, it is apparent that cut-resistant gloves are a type of protective gear for workers. Consumers familiar with Registrant’s protective work gloves may well encounter Applicant’s protective cut-resistant gloves (and vice versa), and there is nothing to stop them from being sold via some of the same channels of trade. Accordingly, we find that these du Pont factors weigh in favor of finding a likelihood of consumer confusion. Serial No. 86474261 - 5 - The Similarity/Dissimilarity of the Marks We consider and compare the appearance, sound, connotation and commercial impression of the marks in their entireties. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). In comparing the marks, we are mindful that the test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression so that confusion as to the source of the services offered under the respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff'd mem., No. 92-1086 (Fed. Cir. June 5, 1992). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). The mark in the cited registration is COMFORT GUARD PLUS. Applicant’s mark is COMFORT PLUS. These are similar in sight and sound in that both contain the terms “COMFORT” and “PLUS,” in the same order. Furthermore, both give the same or similar commercial impression of a comfortable glove with the “plus” of being protective for work or industrial use, and in the case of the cited registration, comfort with the “guard” effect of Registrant’s protective gloves. Serial No. 86474261 - 6 - Applicant argues that the term “COMFORT” is descriptive and the term “PLUS” is highly suggestive. In this regard, Applicant submitted a required disclaimer of the term “comfort” apart from its mark as shown. Applicant also submitted evidence of use-based, third-party registrations including the term “COMFORT” for gloves.3 These include Comfort Care Products and design; COMFORT ONE SHOES; Comfort Life and design; COMFORT FIT TECHNOLOGY; and RapidComfort and design. The registration for “COMFORT FIT TECHNOLOGY” is owned by the same registrant as the cited registration. Although these registrations do not contain disclaimers of the term “COMFORT,” the Examining Attorney submitted others that do (also identifying gloves): NAKED COMFORT; HOTTER COMFORT CONCEPT; and NUCOMFORT. With regard to the term “PLUS,” Applicant refers to two Board cases cases where the term was found to be weak: Plus Products v. Redken Laboratories, Inc., 199 USPQ 111, 116 (TTAB 1978); and Plus Products v. Medical Modalities Associates, Inc., 211 USPQ 1199, 1207 (TTAB 1981). These cases are distinguishable, however, since they rely for their findings of weakness on the presence in the record of evidence that the term “PLUS” is “used and/or registered as trademarks” by third parties. Plus Products v. Redken Laboratories, Inc., 199 USPQ at 116. No such evidence has been presented in this record. In any regard, inasmuch as the cited mark is registered on the Principal Register, we must assume that it is at least suggestive. 3 One of the submitted registrations was not use-based and thus does not evidence any exposure by consumers in the United States, and we do not include it in this list or in our consideration. Serial No. 86474261 - 7 - In re Fiesta Palms, 85 USPQ2d 1360, 1363 (TTAB 2007) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997)). Applicant further argues that the term “COMFORT GUARD” in the cited registration is a unitary term with a specific commercial impression that cannot be dissected. To support this argument, Applicant submitted the specimen and substitute specimen from the cited registration. The original specimen is reproduced below: Serial No. 86474261 - 8 - Noticing that the specimen, as submitted, referenced the mark “COMFORT GUARD,” rather than “COMFORT GUARD PLUS,” the examining attorney in the case responded with a requirement that a new specimen be submitted that agrees with the drawing and that shows “use in commerce of the mark on the drawing.” Accordingly, registrant submitted the following substitute specimen: Despite Applicant’s arguments, there is no reason to interpret from this that Registrant intended to emphasize the term “GUARD” or to convey that “COMFORT Serial No. 86474261 - 9 - GUARD” is a unitary term. Furthermore, even if the term were unitary, we do not find that it changes the commercial impression, as discussed above. Overall, we find that, when viewed as a whole, the marks are similar in sight, sound, and commercial impression, and that this du Pont factor, too, weighs in favor of finding a likelihood of confusion. III. Conclusion on Likelihood of Confusion On balance, after considering all of the arguments and evidence of record as they pertain to the relevant du Pont factors, we find that the goods are legally identical and would travel through some of the same channels of trade to some of the same consumers, and that the marks, when viewed in their entireties, are also similar in sight, sound, and commercial impression. Accordingly, we find a likelihood of confusion between the mark COMFORT PLUS for which Applicant seeks registration, and the mark in the cited registration, COMFORT GUARD PLUS, for the goods identified therein. Decision: The refusal to register Applicant’s mark is affirmed.