ERB Industries, Inc.

Trademark Trial and Appeal BoardJan 3, 2019

No. 87292839 (T.T.A.B. Jan. 3, 2019)

This Opinion is Not a Precedent of the TTAB Mailed: January 3, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re ERB Industries, Inc. _____ Serial No. 87292839 _____ Erik M. Pelton of Erik M. Pelton & Associates PLLC, for ERB Industries, Inc. Ankhi Lindemyer, Trademark Examining Attorney, Law Office 123, Susan Hayash, Managing Attorney. _____ Before Lykos, Adlin and Coggins, Administrative Trademark Judges. Opinion by Lykos, Administrative Trademark Judge: ERB Industries, Inc. (“Applicant”) seeks to register on the Principal Register the standard character mark MONGREL for “Gloves for protection against accidents; Protective gloves for industrial use; Protective work gloves” in International Class 9.1 Registration was refused under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s applied-for mark so resembles the 1 Application Serial No. 87292839, filed January 8, 2017 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. Serial No. 87292839 - 2 - registered mark MONGREL also in standard characters on the Principal Register2 for “Jackets; Pants; Shirts; Shoes; Socks; Swimwear; Undergarments” in International Class 25,3 that it is likely to cause confusion or mistake or to deceive. Applicant’s appeal of the final refusal is now fully briefed. For the reasons explained below, we affirm the refusal to register. I. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the goods. See 2 The registered mark appears on the drawing page as “mongrel” in all lowercase letters but retains a claim as to standard characters and not special form. The presentation of the mark on the drawing page does not change the nature of the mark from a standard character mark to a special form mark. See Trademark Rule 2.52(a), 37 C.F.R. § 2.52(a) (setting forth requirements for standard character mark). See also In re Calphalon Corp., 122 USPQ2d 1153, 1158-61 (TTAB 2017) (applicant’s amendment of mark from SHARPIN to SharpIn did not transform mark from standard character to special form). Our references to Registrant’s mark in this opinion in all uppercase letters reflects the fact that a term registered as a mark in standard character format is not limited to any particular font style, size, or color. See In re Calphalon Corp., 122 USPQ2d at 1153 n.1. See also Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011) and Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000) (“Registrations with typed drawings are not limited to any particular rendition of the mark and, in particular, are not limited to the mark as it is used in commerce.”); In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1284 (TTAB 2009) (“rights associated with a word mark in standard character (or typed) form reside in the wording and not in any particular display of the word.”). 3 Registration No. 4518120, registered April 22, 2014. Serial No. 87292839 - 3 - Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). These factors, and the other relevant du Pont factors, are discussed below. A. The Marks Commencing with the first du Pont factor, it is undisputed that Applicant’s and Registrant’s standard character marks are identical in appearance and sound.4 And in our view, this is not a situation where the same marks are used to identify goods so dissimilar as to engender different connotations or commercial impressions. See, e.g., In re Sydel Lingerie Co., Inc., 197 USPQ 629 (TTAB 1977) (no likelihood of confusion found between BOTTOMS UP for ladies’ and children’s underwear and BOTTOMS UP for men’s suits, coats and trousers). This first du Pont factor therefore weighs heavily in favor of finding a likelihood of confusion. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (the first du Pont likelihood of confusion factor involves an analysis of the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression). B. The Goods Next, we compare the goods as they are identified in the involved application and cited registration, the second du Pont factor. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Hous. Computs, Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) and Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 4 Indeed, Applicant presents no arguments regarding this factor in its brief. Serial No. 87292839 - 4 - 1001 (Fed. Cir. 2002). The goods need not be identical or even competitive to find a likelihood of confusion. On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). Evidence of relatedness may include news articles and/or evidence from computer databases showing that the relevant goods are used together or used by the same purchasers; advertisements showing that the relevant goods are advertised together or sold by the same manufacturer or dealer; and/or copies of prior use-based registrations of the same mark for both applicant’s goods and the goods listed in the cited registration. See, e.g., In re Davia, 110 USPQ2d 1810, 1817 (TTAB 2014) (finding pepper sauce and agave related where evidence showed both were used for the same purpose in the same recipes and thus consumers were likely to purchase the products at the same time and in the same stores). Likelihood of confusion must be found as to the entire class if there is likely to be confusion with respect to any good that comes within the identification of goods in that class. In re C.H. Hanson Co., 116 USPQ2d 1351, 1355 (TTAB 2015) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)). Where identical marks are involved, as is the case here, the degree of similarity between the goods that is required to support a finding Serial No. 87292839 - 5 - of likelihood of confusion declines. In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Applicant argues that the involved goods are unrelated because they are used for different purposes and marketed to different consumers. Citing In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082 (Fed. Cir. 2014), Applicant contends that the Examining Attorney is required to show “something more” than the mere fact that the goods are used together. Applicant’s reliance on In re St. Helena Hosp. is misplaced. “Something more” is only required in the context of comparing goods versus services, not goods versus goods, and where the relationship between the goods and services is obscure or less evident. See id. As explained in TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) Section 1207.01(a)(ii) (Oct. 2018) (“Establishing Relatedness of Goods to Services”): … when the relatedness of the goods and services is not evident, well known, or generally recognized, “something more” than the mere fact that the goods and services are used together must be shown. In re St. Helena Hosp., 774 F.3d at 754, 113 USPQ2d at 1087 (finding that substantial evidence did not support relatedness of hospital-based residential weight and lifestyle program and printed materials dealing with physical activity and fitness). Therefore, when comparing services such as “restaurant services” with less apparently related goods such as "beer," or “cooking classes” with “kitchen towels,” “something more”—beyond the fact that the goods are used in the provision of the services—must be shown to indicate that consumers would understand such services and goods to emanate from the same source. Here, it was entirely appropriate for the Examining Attorney to introduce used-based third-party registrations showing that the same entity has registered a single mark Serial No. 87292839 - 6 - identifying “Gloves for protection against accidents; Protective gloves for industrial use; Protective work gloves” in International Class 9 and “Jackets; Pants; Shirts; Shoes; Socks; Swimwear; Undergarments” in International Class 25 or the legal equivalents thereof, to show relatedness.5 See Registration No. 4980685 (“Protective gloves for industrial use; Protective work gloves” and “t-shirts”); Registration No. 5266434 (“protective and cushioning gloves for industrial use” and “Clothing, namely, shirts, … pants, … undergarments; … footwear”); Registration No. 5042967 (“protective clothing, namely, protective work gloves” and “clothing, namely, pants, shirts, coats, jackets, … footwear, … socks”); Registration No. 5097395 (“protective gloves for industrial use” and “Clothing, namely, work shirts, and work hats, t-shirts, …, socks, rain coats, rain jackets, rain pants, thermal coats, thermal pants, thermal underwear, hooded jackets, … high visibility t-shirts, shoes …, jackets, flannel shirts, sports shirts, socks, … all to be sold at do it yourself stores, construction equipment and supply stores, industrial work wear stores and industrial work wear departments”); and Registration No. 5274343 (“Protective gloves for industrial use;” and “Rainwear, namely, rain suits, jackets, pants, coats, …; rainwear for use in connection with camping, construction, farming and agriculture, utility work, 5 Applicant criticizes the probative value of the third-party registrations that identify goods limited to a particular use, field or function. Applicant’s point is misdirected; when goods are broadly identified, as is the case with Applicant’s and Registrant’s identification, they necessarily encompass the same goods limited to a specific use or function. See In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (in finding the goods legally identical, Board noted that “Applicant’s broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and commercial furniture.’”). Cf. Trademark Rule 2.71(a), 37 C.F.R. § 2.71(a) (“The applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services . . . .”). Serial No. 87292839 - 7 - demolition, motorcycling, utility plant work, safety and crossing guard, and road work, namely, pants, jackets and coats…”) attached to November 9, 2017 Final Office Action. As a general proposition, although use-based third-party registrations alone are not evidence that the marks shown therein are in use or that the public is familiar with them, they nonetheless may have probative value to the extent they may serve to suggest that the goods are of a kind that emanate from a single source. See In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). Furthermore, we can glean from the identifications themselves that the involved goods are complementary clothing items that can be worn and used together by consumers. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (“[C]omplementary use has long been recognized as a relevant consideration in determining a likelihood of confusion.”). This suffices to show that that Applicant’s and Registrant’s goods are commercially related. As such, this second du Pont factor also favors a finding of likelihood of confusion. C. Established, likely-to-continue channels of trade We direct our attention to the established, likely-to-continue channels of trade, the third du Pont factor. Applicant contends that Applicant’s and Registrant’s identified goods are sold in disparate, non-overlapping trade channels to different consumers. Because the identifications in the application and cited registration have no restrictions on channels of trade, we must presume that the goods travel in all Serial No. 87292839 - 8 - channels of trade appropriate for such goods. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). We have no evidence in the record as to what these trade channels include. Hence, the third du Pont factor regarding the similarity or dissimilarity of established, likely to continue trade channels is neutral. II. Conclusion We have carefully considered all of the evidence made of record, as well as all of the arguments related thereto, including any evidence and arguments not specifically discussed in this opinion. As indicated earlier, the identical nature of the marks weighs heavily in finding a likelihood of confusion. This, coupled with the related, complementary nature of the goods leads us to the conclusion that prospective consumers are likely to confuse the involved goods as originating from or associated with or sponsored by the same entity. Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.