Poly-Gel LLC

Trademark Trial and Appeal BoardAug 24, 2012

No. 85158572 (T.T.A.B. Aug. 24, 2012)

Mailed: August 24, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Poly-Gel LLC ________ Serial No. 85158572 _______ Edwin D. Schindler, Esq. for Poly-Gel LLC. Vivian Micznik First, Trademark Examining Attorney, Law Office 114 (K. Margaret Le, Managing Attorney). _______ Before Holtzman, Mermelstein and Greenbaum, Administrative Trademark Judges. Opinion by Holtzman, Administrative Trademark Judge: An application has been filed by Poly-Gel LLC (applicant) to register on the Principal Register the standard character mark BOOT MATE for goods ultimately identified as "elastomeric split pads for eliminating edge pressures created by footwear equipped with hard toe boxes; elastomeric split pads made of a stretchable foam material for enclosing at least the top, frontal portion of a wearer's foot for reducing discomfort experienced by footwear; elastomeric split pads for eliminating edge pressures created by THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 85158572 2 footwear; silicone split pads for eliminating edge pressures created by footwear," in Class 10.1 The word BOOT is disclaimed. The trademark examining attorney has refused registration under Section 2(d) of the Trademark Act on the ground that applicant's mark, when applied to applicant's goods, so resembles the registered mark SHOE MATE in standard characters (with SHOE disclaimed) for "arch support," in Class 10 as to be likely to cause confusion.2 When the refusal was made final, applicant appealed. Briefs have been filed. Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood of confusion analysis, two key considerations are the similarities or dissimilarities between the marks and the similarities or dissimilarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). We turn first to a comparison of applicant's goods, which include "elastomeric split pads for eliminating edge pressure created by footwear," with registrant's goods, "arch support[s]." 1 Application Serial No. 85158572 was filed on October 21, 2010 based on an allegation of a bona fide intention to use the mark in commerce. 2 Registration No. 0787624, issued March 30, 1965; second renewal. Serial No. 85158572 3 It is well settled that goods of the applicant and registrant need not be similar or even competitive to support a finding of likelihood of confusion. It is sufficient if the respective goods are related in some manner and/or that the conditions surrounding their marketing are such that they would be encountered by the same persons under circumstances that could, because of the similarity of the marks used thereon, give rise to the mistaken belief that they emanate from or are associated with, the same source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). We find that applicant's and registrant's goods, by their nature, are closely related products with similar or related functions and purposes. They both comprise footwear inserts which are used to provide comfort and/or support for the wearer's feet. In addition, the examining attorney submitted printouts from several third-party websites showing that both arch supports as well as other footwear comfort and support products are offered under a single mark. For example, Dr. Scholl's website advertises both Dr. Scholl's For Her Rub Relief Strips and Dr. Scholl's Massaging Gel Arch Supports (drscholls.com); the website for Good Feet stores shows that the stores offer Good Feet arch supports and Good Feet shock-absorbent, sponge rubber cushions (goodfeet.com); the Muchomedical website offers a variety of orthotics including Powerstep Arch Boosters and Powerstep Serial No. 85158572 4 Metatarsal Relief Pads (muchomedical.com); and the website TheInsoleMan - Your Good Care Store offers Spenco Orthotic Arch Supports, Spenco Ball of Foot Cushions and Spenco Heel Cushions (theinsoleman.com). The examining attorney also submitted use-based, third-party registrations showing, in each instance, that the same mark has been registered for both applicant's and registrant's types of products. These third-party registrations, while not evidence of use of the marks therein, may serve to suggest that the goods are of a type which may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). Moreover, as the examining attorney points out, applicant itself owns a registration (Reg. No. 3728933 for the mark POLYGEL) which covers both registrant's type of goods, "arch supports," as well as "orthotic inserts" including "forefoot cushions, heel pads and heel cushions, shoe padding, ball of foot cushions, and heel pieces for shoes."3 As to the channels of trade and classes of purchasers, because there are no restrictions or limitations in either applicant's or registrant's identifications of goods, we must assume that these closely related products, with similar functions and purposes, would be sold in the same channels of 3 Applicant initially claimed of ownership of this registration in the application but subsequently deleted the claim of ownership. Serial No. 85158572 5 trade to the same ordinary consumers. See Venture Out Properties LLC v. Wynn Resorts Holdings LLC, 81 USPQ2d 1887, 1894 (TTAB 2007) ("Because the services are clearly related, they would be offered in the same channels of trade and offered to the same classes of consumers..."). The website evidence referenced above shows that the channels of trade and purchasers for both types of goods are in fact the same. We turn then to a comparison of applicant's mark BOOT MATE and registrant's mark SHOE MATE in their entireties in terms of sound, appearance, meaning and commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). In comparing the marks we must consider that the test under this du Pont factor 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 impressions that confusion as to the source of the goods offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general, rather than a specific, impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). In addition, while marks must be compared in their entireties, it is well settled that one feature of a mark may Serial No. 85158572 6 have more significance than another, and there is nothing improper in giving greater weight to the more significant feature. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). Applying the above principles in this case, when we compare applicant's mark BOOT MATE and registrant's mark SHOE MATE in their entireties, giving appropriate weight to the features thereof, we find that the marks are similar overall, and that the similarities between the marks far outweigh their differences. The dominant and most significant feature of both marks is the shared word MATE. The first words in the marks, BOOT and SHOE, are descriptive or generic adjectives which merely modify and are subordinate to the term MATE, as they simply identify the type of footwear with which the goods are used. See In re National Data Corp., 224 USPQ at 751 ("That a particular feature is descriptive or generic with respect to the involved goods or services is one commonly accepted rationale for giving less weight to a portion of a mark"). These terms do not serve to distinguish the marks BOOT MATE and SHOE MATE as a whole. In fact they add to the overall similarity of the marks. In each mark the identical word MATE is preceded by these one-syllable words naming a type of footwear. As a result, the two marks as a whole have a visually similar structure and a similar overall sound. Serial No. 85158572 7 Furthermore, the words BOOT and SHOE have related meanings, and when these words are combined with the identical word MATE, the marks BOOT MATE and SHOE MATE as a whole have the same meaning in relation to the goods and they create the same overall commercial impressions. Purchasers are likely to assume that BOOT MATE and SHOE MATE identify related lines of footwear inserts from registrant, rather than identifying a different source for the products. Applicant argues that the word MATE "would appear to have a descriptive or suggestive significance of some feature or quality in the footwear and related industries"; that "consequently, this term is entitled to only a rather narrow scope of protection"; and that "the commonality of the term 'MATE,' used frequently by many competitors in the same or related industries, is insufficient to support a finding of [likelihood of confusion]." Brief, pp. 5, 7. To support these contentions, applicant relies on six third-party registrations for marks which include the term MATE: Reg. No. 1371450 for the mark THIRD MATE for "footwear"; Reg. No. 1985940 for the mark ROAD MATE for goods including "footwear and boots"; Reg. No. 2186859 for the mark MECHANIC MATE for "insoles for footwear"; Reg. No. 2827558 for the mark IRON MATE for goods including "footwear"; Reg. No. 3957788 for the mark COZY MATE for "footwear"; and Reg. No. 4031972 for the mark Serial No. 85158572 8 SNEAKER MATE ("Sneaker" disclaimed) for "stain removing and dirt removing preparations for use on footwear." Applicant's arguments are not well taken.4 The relevant du Pont factor requires consideration of the number and nature of "similar marks in use on similar goods." See In re E.I. du Pont de Nemours & Co., 177 USPQ at 567. First, as we noted, third- party registrations are not evidence that the marks shown therein are in use. Further, none of the registrations relied on by applicant is for similar marks and similar goods. Indeed, the one registration for similar goods (Reg. No. 2186859) is for a mark that creates a distinctly different commercial impression than the marks herein. Third-party registrations may be used in the manner of a dictionary to indicate that a commonly registered element has a suggestive meaning for particular goods such that differences in other portions of the marks may be sufficient to render the marks as a whole distinguishable. See, e.g., Tektronix, Inc. v. 4 We point out that Registration Nos. 1371450 (THIRD MATE) and 2186859 (MECHANIC MATE) have been cancelled, and contrary to applicant's contention, have no probative value. Notwithstanding applicant's reliance on United States Rubber Company v. The B.F. Goodrich Company, 135 USPQ 465, 465-66 (TTAB 1962) ("The fact that a number of these registrations have expired... does not, however, negate their evidentiary value in establishing the adoption by others in the footwear industry of marks comprising these various designations"), the Federal Circuit has stated that a cancelled registration “does not provide constructive notice of anything.” Action Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989). Nevertheless, for the purpose of addressing applicant's arguments, we have considered these cancelled registrations as discussed above. Serial No. 85158572 9 Daktronics, Inc., 187 USPQ 588, 592 (TTAB 1975), aff'd, 534 F.2d 915, 189 USPQ 693, 694-95 (CCPA 1976). However, to the extent applicant is relying on the registrations for this purpose, the evidence is not persuasive. The existence of one third-party registration containing the word MATE for similar goods is not sufficient to show that the term has been commonly registered for its suggestive meaning in relation to the goods. In any event, we certainly cannot find, based on this evidence, that the scope of protection accorded registrant's mark should not extend to applicant's highly similar mark for closely related goods. In view of the foregoing, and because similar marks are used on closely related goods, a likelihood of confusion exists. Decision: The refusal to register under Section 2(d) of the Trademark Act is affirmed.