Airboss of America, Corp.

Trademark Trial and Appeal Board

Aug 23, 2019

87472766 (T.T.A.B. Aug. 23, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 23, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Airboss of America, Corp.
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Serial No. 87472750 and 87472766
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James Golladay of Tanner IP, PLLC,
for AirBoss of America, Corp.
Christina Calloway, Trademark Examining Attorney, Law Office 122,
John Lincoski, Managing Attorney.
_____

Before Thurmon, Deputy Chief Administrative Trademark Judge, Wellington and
Shaw, Administrative Trademark Judges.

Opinion by Thurmon, Deputy Chief Administrative Trademark Judge:
This is an appeal involving two trademark applications filed by AirBoss of
America, Corp. (“Applicant”).1 The applications seek registration on the Principal
Register of the mark AIRBOSS in standard characters and the mark shown below:

1 We consolidate the appeals and decide them in a single opinion because they involve
common issues of law and fact with similar records. See In re Anderson, 101 USPQ2d 1912,
1915 (TTAB 2012) (Board sua sponte consolidated two appeals). All record references are to
Serial No. 87472750, unless otherwise noted.
Serial Nos. 87472750, 87472766
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for the following goods:
Personal protective equipment for use by first responder,
first receiver, military, healthcare, industrial, firefighting,
emergency medical services, commercial, law enforcement
and other safety-related personnel, namely, chemical,
biological, radiological and nuclear (CBRN) defense CBRN
canister filters and filter cartridges; Personal protective
equipment for use by first responder, first receiver,
military, healthcare, industrial, firefighting, emergency
medical services, commercial, law enforcement and other
safety-related personnel, namely, CBRN protective suits,
jackets, pants, boots, overshoes, and gloves, in
International Class 9.2
The Trademark Examining Attorney issued a final refusal to register each of
Applicant’s marks under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d),
based on the registered mark AIRBOSS in standard characters for “self-contained
breathing apparatus for use in firefighting” in International Class 9.3 Applicant
appealed to this Board, and the appeals have been fully briefed.4 We issue a single

2 The two applications identified identical goods. Application Serial No. 87472766 (AIRBOSS
in standard characters) was filed on June 2, 2017, under Section 1(a) of the Trademark Act
based upon applicant’s claim of first use anywhere and use in commerce since at least as
early as August, 2001. Application Serial No. 87472750 (AIRBOSS and design) was filed on
June 2, 2017, under Section 1(a) of the Trademark Act based upon applicant’s claim of first
use anywhere and use in commerce since at least as early as February 1, 2016.
3 U.S. Registration No. 1953721.
4 There were other unresolved issues when the Notice of Appeal was filed. Those were
resolved between Applicant and the Examining Attorney. The sole issue before the Board is
the Section 2(d) refusal noted above.
Serial Nos. 87472750, 87472766
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decision in these appeals because of the similarity of the issues presented. We affirm
the refusals.
I. Applicable Law
We base our determination of likelihood of confusion under Trademark Act Section
2(d), 15 U.S.C. § 1052(d), on an analysis of all of the probative facts in evidence that
are relevant to the factors enunciated in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”), cited in B&B Hardware, Inc.
v. Hargis Indus., Inc., 575 U.S. ___, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015);
see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). We must consider each du Pont factor for which there is evidence and
argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-
63 (Fed. Cir. 2019). However, “each case must be decided on its own facts and the
differences are often subtle ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197,
177 USPQ 386, 387 (CCPA 1973).
In applying the du Pont factors, we bear in mind the fundamental purposes
underlying Section 2(d), which are to prevent confusion as to source and to protect
registrants from damage caused by registration of confusingly similar marks.
Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 115 S. Ct. 1300, 131 L. Ed. 2d 248,
34 USPQ2d 1161, 1163 (1995); Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S.
189, 105 S. Ct. 658, 83 L. Ed. 2d 582, 224 USPQ 327, 331 (1985); du Pont, 177 USPQ
at 566. We have considered each du Pont factor that is relevant and of record, and
have treated any other factors as neutral. See M2 Software, Inc. v. M2 Commc’ns,
Serial Nos. 87472750, 87472766
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Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v.
GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered
each factor for which we have evidence, we focus our analysis on those factors we find
to be relevant.”).
Varying weights may be assigned to each du Pont factor depending on the evidence
presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1688 (Fed. Cir. 1993) (“[T]he various evidentiary factors may play more or less
weighty roles in any particular determination”). Two key considerations in most cases
are the similarities between the marks and the similarities between the goods or
services. See In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed.
Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d
1375 (Fed. Cir. 2002) (“The likelihood of confusion analysis considers all du Pont
factors for which there is record evidence but ‘may focus ... on dispositive factors, such
as similarity of the marks and relatedness of the goods.’“)).
II. Analysis
A. Similarity of the Marks
We compare the marks in their entireties as to appearance, sound, connotation
and commercial impression. In re E. I. du Pont De Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973). “Similarity in any one of these elements may be
sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812
(TTAB 2014); accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 156
Serial Nos. 87472750, 87472766
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USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling
or sound alone is likely to cause confusion.”) (citation omitted).
The marks at issue here are identical or highly similar. Applicant’s standard
character mark AIRBOSS5 is identical to the mark in the cited registration.
Applicant’s AIRBOSS and design mark6 is highly similar to the cited mark because
the sole textual element of Applicant’s mark is identical to the cited mark. For that
reason, the marks are identical in sound, and that is sufficient in this case to support
a finding that confusion is likely. L.C. Licensing, Inc. v. Berman, 86 USPQ2d (BNA)
1883, 1887 (TTAB 2008) (“[I]t is well settled that if a mark comprises both a word
and a design, then the word is normally accorded greater weight because it would be
used by purchasers to request the goods.”). Consumers seeking goods bearing
Applicant’s word and design mark would ask for AIRBOSS goods.
Applicant’s word and design mark is also highly similar to the cited mark in
appearance, meaning, and commercial impression. The design element is a circle
made of heavy-dashed segments. This element is not very distinctive and does not
appear to carry any particular meaning. It is a mere carrier or background
embellishment of the word mark AIRBOSS, and we find the design element does very
little to reduce the similarity of the marks. The meaning and commercial impression
created by Applicant’s design and word mark will be dominated by the word “airboss.”

5 Serial No. 87472766.
6 Serial No. 87472750.
Serial Nos. 87472750, 87472766
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We find Applicant’s word and design mark highly similar to the cited mark. This
factor strongly supports the Examining Attorney’s Section 2(d) refusals.
B. Similarity or Relatedness of the Goods
This factor is critical to the likelihood of confusion analysis in these appeals.
Applicant argues that the goods are different, but the Examining Attorney has
presented substantial evidence showing that the goods are closely related. Applicant’s
goods, as identified in both applications, include “CBRN7 canister filters and filter
cartridges” for use by a variety of first responders, including fire fighters. The cited
registration identifies “self-contained breathing apparatus for use in firefighting.”8
Though these goods are not identical, they represent two ways of dealing with the
same problem, that is, the need for breathing protection in an environment with
potentially contaminated air. The evidence fully supports this conclusion, showing
that the goods are closely related.
“In the context of likelihood of confusion, it is sufficient to find likelihood of
confusion as to the entire class if likelihood of confusion is found with respect to use
of the mark on any item in a class that comes within the description of goods.” Inter
IKEA Sys. B.V. v. Akea, LLC, 110 U.S.P.Q.2D 1734, 1745 (TTAB 2014) (citing Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA

7 Applicant acknowledges that CBRN is an initialism for “Chemical, biological, radiological
and nuclear.” Applicant response to Office Action of February 16, 2016 (Serial No. 87472750).
8 The acronym SCBA is used in much of the evidence for self-contained breathing apparatus,
and we use that acronym in the remainder of this decision. See, e.g., Denial of Request for
Reconsideration dated October 19, 2018, TSDR 6-7.
Serial Nos. 87472750, 87472766
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1981) and Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB 2007)).
In other words, if any of the goods identified in the pending applications are similar
or related to the goods identified in the cited registration, that fact alone is enough to
support Section 2(d) refusals as to all the goods within the same class.
We find the breathing protection goods identified in the pending applications (i.e.,
the “CBRN canister filters and filter cartridges”) are closely related to the SCBA
goods identified in the cited registration. Because all of Applicant’s goods are in the
same class, the Section 2(d) refusals are proper as to all the goods in both pending
applications. We now provide a summary of the extensive evidence showing that
these goods are closely related.
1. Third Parties Offer Both Types of Goods
The Examining Attorney submitted substantial evidence showing that third
parties sell both CBRN filtered breathing systems and SCBA systems. For example,
Draeger sells a SCBA system it touts as “tailor-made for use in CBRN hazardous
situations …”9 Draeger’s website shows a variety of SCBA and filtered breathing
systems, which is clear evidence that the goods identified in the pending applications
and in the cited registration are available from a single source.10 And as Applicant

9 March 26, 2018 Office Action, TSDR 12, 11-17.
10 Id. 11-17, 59-65. This evidence also shows that Draeger sells other goods that overlap with
those identified in the pending applications. For example, Draeger sells “CBRN protective
suits, jackets, pants, boots, overshoes, and gloves,” which shows that the other goods
identified in the pending applications are also related to SCBA goods. All of these goods are
used to protect a person’s body and breathing from a contaminated, hazardous environment.
The evidence makes this very clear, as there are multiple images showing persons wearing
protective suits, boots, gloves, and some form of breathing protection, either a filtered mask
or a SCBA. Examples of this run throughout the Draeger website evidence.
Serial Nos. 87472750, 87472766
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points out in its brief, the cited registration is owned by Draeger, the same company
that sells both types of breathing protection goods.11
Honeywell also makes both filtered breathing systems and SCBA systems. In fact,
on its website, both types of goods are shown on the same page.12 The goods are sold
by the same source and under the same mark.
3M is another supplier of both types of goods. Evidence from 3M’s website shows
filters, filtered breathing systems, and SCBAs.13 On a page titled “Respiratory
Protection,” 3M shows all of these goods, which further demonstrates the close
relationship between them.14 3M also sells other protective gear, including suits and
covers for shoes.15
Avon-Protection sells both filtered breathing systems and SCBAs, as shown on its
website.16 A DELTAIR SCBA from Avon-Protection is described as “approved for use
in a CBRN environment,” which shows that filtered breathing systems and SCBA
systems are both used in a CBRN situation. MSA is yet another supplier that sells
both filtered breathing systems and SCBAs.17

11 12 TTABVUE 6.
12 Id. at 28.
13 Id. at 39-58.
14 https://www.3mscott.com/product_categories/respiratory-protection/ (last visited July 17,
2019).
15 March 26, 2018 Office Action, TSDR 51-54.
16 Id. at 59-66.
17 Id. at 74-80.
Serial Nos. 87472750, 87472766
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2. Trade Publications Show the Goods Are Closely Related
The Examining Attorney submitted evidence showing that technical trade
publications note the close relationship of the goods. For example, a Homeland
Security Tech Note titled “Chemical, Biological, Radiological, and Nuclear (CBRN)
Self-Contained Breathing Apparatus (SCBA)” discusses use of SCBAs in CBRN
environments.18 This Tech Note explains the technology and the various standards
applicable to such products. While this Tech Note makes clear that not all SCBAs are
approved for CBRN use, some clearly are. Indeed, the Note includes photos showing
DELTAIR and MSA SCBAs that are approved for CBRN use.19
The examiner also submitted evidence of a NIOSH (National Institute for
Occupational Safety and Health) standard for approving SCBAs for use in CBRN
environments, and an Internet article titled “Buying firefighter SCBA for a CBRN
world.”20 This evidence establishes that the goods are closely related, because it shows
that both types of breathing protection may be used in the same situation. One filters
the outside air and the other supplies air from a bottle or tank, but both serve the
same purpose of protecting a person from potentially hazardous or toxic air.

18 Denial of Request for Reconsideration dated October 19, 2018, TSDR 6-7.
19 Id. at 7.
20 Id. at 71-72, 74-77.
Serial Nos. 87472750, 87472766
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3. Several Trademark Registrations Cover Both Types of
Goods
The examiner provided evidence of twelve different federally registered marks
that are used with both CBRN filtered breathing systems and SCBAs.21 This evidence
includes the marks MSA, TYCO and others. The fact that the owners of these
registered marks sell both types of goods is further evidence that the goods are related
and that consumers would expect both types of goods to come from the same source.
Applicant misses the point of this factor when it argues that parties using these
goods can tell them apart. Of course professionals who use filtered breathing systems
and SCBA systems can tell these items apart. That is not the point. The question is
whether typical consumers of these types of goods understand that both types of goods
often come from a single source. And the evidence leaves no doubt that the answer to
that question is a resounding YES.
Consumers of these goods know they can buy a Draeger filtered breathing system
or a Draeger SCBA. They know they can buy a 3M/Scott filtered breathing system or
a 3M/Scott SCBA. They know that both options are available under the DELTAIR
and MSA brands, too. Could consumers distinguish the source of AIRBOSS filtered
breathing system and an AIRBOSS SCBA? It is likely consumers would assume the
last two products also come from a single source. That is the point of the third-party
evidence, and it is a point Applicant seems to completely miss.

21 Id. at 8-70.
Serial Nos. 87472750, 87472766
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Applicant errs in two ways in its arguments under this factor. First, Applicant
points out that its applications identify some goods that are less related to the SCBA
goods identified in the cited registration. This is both factually wrong and legally
irrelevant. The evidence of record shows that third parties (e.g., Draeger, 3M and
Honeywell) offer SCBAs and all the types of goods identified in the pending
application. But even if true, this assertion would not matter because it is enough if
some of the goods within a single class are similar or related to the goods identified
in the registration, as we noted in the beginning of our discussion of this factor.
The second error Applicant makes is the suggestion that the goods are not similar
or related because professionals can distinguish between a filtered breathing system
and an SCBA. This assertion is probably true, but of minimal relevance. As we noted
above, the question is not whether typical consumers can tell these goods apart, but
whether such consumers would think these goods come from a single source. The
evidence shows the latter proposition is very likely, and that means confusion is more
likely. This factor strongly supports the Examining Attorney’s conclusion that
confusion is likely.
C. The Variety of Goods on Which the Mark Is Used
Applicant argues that this du Pont factor suggests that confusion is unlikely
because both the pending applications and the cited registration identify a narrow
range of goods. Applicant is correct that the identified goods are narrow, but that is
of very little significance because the goods are closely related. Indeed, if a pending
application and a cited registration both identify exactly the same single product, the
Serial Nos. 87472750, 87472766
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fact that both identifications are narrow would not reduce the likelihood of confusion.
We find this factor adds nothing to the overall analysis.
D. Purchasing Conditions
Applicant argues that these goods are purchased by professionals under
circumstances that suggest a high degree of care will be exercised. We agree, to an
extent. Most of the evidence of record suggests these goods are marketed to
professionals involved in responding to hazardous situations, and it is reasonable to
assume that purchasers of such goods are well-informed and do not make impulse
purchases.
This point, however, can only be taken so far. It is settled that careful or
sophisticated purchasers “are not immune from source confusion where similar
marks are used in connection with related [goods or] services.” Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1163-54 (Fed.
Cir. 2014). It is also not clear that these goods are purchased solely by professional
and knowledgeable consumers. Id. (noting that the likelihood of confusion analysis
must consider the “least sophisticated consumer in the class”).
We do not have evidence showing all the channels through which these products
are purchased and, for that reason, we cannot make any finding concerning the level
of care exercised by the “least sophisticated” purchasers of these goods. Given the
evidence before us, we find that this factor suggests confusion is less likely because
of the level of care likely exercised by a professional purchaser of the goods.
Serial Nos. 87472750, 87472766
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E. There Is No Relevant Evidence of Coexistence
Applicant points out that it owns two existing registrations for the marks it seeks
to register here. These registrations relate to use apparently dating back almost 20
years. Applicant argues that its registered marks have coexisted for years with the
registered mark cited as the basis for the Section 2(d) refusals here. This argument
has no merit because Applicant’s prior registrations identify materially different
goods.
Applicant’s prior registrations identify goods in three classes, but only the goods
in class 9 are even arguably similar to the goods at issue in this appeal. The class 9
goods in those registrations are “protective safety boots for commercial, industrial
and construction use; protective boots for nuclear, biological and chemical exposure;
protective extreme cold weather boots for industrial use.”22 Applicant’s pending
applications include protective “boots” and “overshoes,” which are similar to the goods
in its prior registrations.
If the pending applications identified only boots and overshoes, Applicant’s
argument may be persuasive and our analysis of relatedness of the involved goods
would be different. However, the pending applications identify “CBRN canister filters
and filter cartridges,” which are closely related to the SCBA goods identified in the
cited registration. The pending applications also identify “CBRN protective suits,”
and there is evidence that third-parties supply such suits under the same marks used
on filtered breathing goods and SBCAs.

22 U.S. Registration Nos. 3199986, 3199987.
Serial Nos. 87472750, 87472766
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There was some discussion at the oral hearing as to Applicant’s purchase of
another company or another product line that led to the expanded goods identified in
the pending applications. We do not rely on such background in reaching our decision
here, but we do note that when an existing mark is used on new goods, there is always
a risk that the new use may create a likelihood of confusion that did not exist prior
to the expansion. In any event, it is the close relationship between at least some of
the goods identified in the pending applications and the goods identified in the cited
registration that matters here. We give no weight to this factor because there is no
evidence that these marks have coexisted in the market on the related goods.
F. Weighing and Balancing the Factors
The marks at issue here are identical or highly similar. The goods (i.e., at least
the filters identified in the pending applications) are closely related. These two factors
suggest that confusion is very likely. The only other factor we found material to the
analysis here is the sophistication of purchasers. We do believe that factor pushes the
other way (i.e., it suggests confusion is less likely), but it is not enough to offset the
impact of the first two factors discussed above. On balance, we find that confusion is
likely and, therefore, we affirm the refusals.
Decision: The refusal to register Applicant’s AIRBOSS marks is affirmed.