Columbia Insurance Company

Trademark Trial and Appeal Board

May 13, 2015

No. 85862951 (T.T.A.B. May. 13, 2015)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
May 13, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Columbia Insurance Company
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Serial No. 85862951
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David Chen of IP Attorneys Group, LLC for Columbia Insurance Company.

Linda M. Estrada, Trademark Examining Attorney, Law Office 104 (Chris
Doninger, Managing Attorney).
_____

Before Cataldo, Wellington, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Columbia Insurance Company (“Applicant”) has filed an application to register on
the Principal Register the mark shown below for “Protective industrial boots,
protective industrial shoes, shoes and boots for protection against accident”:1

1 Application Serial No. 85862951, filed February 28, 2013 under Trademark Act Section
1(a), 15 U.S.C. § 1051(a), claiming November 30, 2012 as the date of first use and the date
of first use in commerce.
Serial No. 85862951

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Color is not claimed as a feature of the mark. The application includes the following
description of the mark:
The mark consists of the word "LYTNING" in a decorative
font with the tail on the "y" in a jagged form forming a
lightning bolt and a triangle as the dot on the letter "i".
The Trademark Examining Attorney refused registration under § 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as used
in connection with Applicant’s goods, so resembles the registered mark
LIGHTNING GLOVES (in standard characters) as to be likely to cause confusion,
or to cause mistake, or to deceive. The cited mark is registered for the following
goods:
Disposable latex gloves for laboratory use; Disposable
plastic gloves for laboratory use; Gloves for protection
against accidents; Protective gloves for industrial use;
Protective work gloves, in International Class 9;
Gloves for medical use; Gloves for use in hospitals; Latex
medical gloves; Surgical gloves, in International Class 10;
Disposable latex gloves for general use; Disposable plastic
gloves for general use; Disposable plastic gloves for use in
the food service industry; Household gloves for general
use; Household plastic gloves; Plastic household gloves;
Rubber household gloves, in International Class 21.2
When the refusal was made final, Applicant filed a notice of appeal and a request
for reconsideration. When the Examining Attorney denied the request for
reconsideration, this appeal proceeded. The case is fully briefed.

2 Reg. No. 3531574 issued November 11, 2008. Section 8 affidavit accepted; Section 15
affidavit acknowledged. The registration contains a disclaimer of the exclusive right to use
GLOVES apart from the mark as shown.
Serial No. 85862951

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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 issue of
likelihood of confusion as set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods and services at issue. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, Applicant
and the Examining Attorney have also submitted arguments regarding trade
channels for the goods, the conditions of sale and the degree of care used by
customers in selecting the goods.
1. The marks.
We will consider first the similarity or dissimilarity of the marks at issue in their
entireties as to appearance, sound, connotation and commercial impression. See
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). While we consider each mark in its
entirety, there is nothing improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark, provided that our ultimate
conclusion rests upon a comparison of the marks in their entireties. In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
The literal components of the marks at issue are, respectively, LIGHTNING
GLOVES and LYTNING. In the case of marks consisting of words and a design, the
words are normally given greater weight because they would be used by customers
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to request the products. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596
(TTAB 1999); In re Appetito Provisions Co., 2 USPQ2d 1553, 1554 (TTAB 1987). See
also Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793,
1798 (Fed. Cir. 1987); Giant Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565,
218 USPQ 390 (Fed. Cir. 1983). The word components of the marks differ by the
substitution of the letter Y in Applicant’s mark for the letters IGH in the first word
of Registrant’s mark, and the added word GLOVES in Registrant’s mark.
Applicant correctly urges that we must not ignore the element GLOVES in the
registered mark, and points out that GLOVES, although descriptive of Registrant’s
goods, is not descriptive of Applicant’s goods. Applicant points out that the concept
of “gloves” is part of the commercial impression created by Registrant’s mark, and
that this concept is absent from Applicant’s mark.3 We do not consider the term
GLOVES to be a significant distinguishing element as between the marks of
Applicant and Registrant. Customers will see Registrant’s mark applied to
Registrant’s goods, which are gloves. In that context, customers will perceive no
incongruity in the word GLOVES, which is the generic name of the goods, and will
not view it as a source-indicating element of the mark. Rather, LIGHTNING, which
is arbitrary as applied to gloves, would be perceived as the source-indicating
element. LIGHTNING is therefore clearly the dominant element of the registered
mark and the primary source of the commercial impression that it creates in the
minds of customers.

3 Applicant’s brief at 8, 13 TTABVUE 9.
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With respect to the appearance of the marks, Applicant emphasizes its design
elements:
… Applicant’s mark is a single word in a stylization that
accentuates Applicant’s unconventional spelling of
“lightning” by fashioning the tail on the “y” into a
lightning bolt. Although the Registrant’s mark is
registered in standard characters and, presumably, could
be used in any stylization, Registrant could not stylize the
letter-string “i-g-h” in its mark into a lightning bolt tailed
“y” no matter how clever its graphic designers may be.
Applicant’s brief at 7-8, 13 TTABVUE 8-9.
Even though the precise design elements present in Applicant’s mark might
appear to be unavailable to Registrant – merely because there is no “y” in
Registrant’s mark – we must nonetheless consider that Registrant’s standard
character mark may be displayed in styles that are similar to those of Applicant. In
re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909-10 (Fed. Cir. 2012). As a
general matter, the specific style of a mark cannot, alone, distinguish it from
another mark that is registered in standard character form. Id.; In re Mighty Leaf
Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010). Overall, the most
significant distinction between the marks in their appearance inheres in the
difference between the letter Y in Applicant’s mark and the letters IGH in the
registered mark.
Despite the differences in appearance between the marks, the Examining
Attorney contends that the marks are similar in sound and meaning, and that both
marks create the overall commercial impression of “lightning.” Registrant’s mark
consists of common English words and their meaning and pronunciation are well
Serial No. 85862951

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known. Applicant’s mark is not an actual English word. It has no literal meaning in
English and no single correct pronunciation. In re Viterra Inc., 101 USPQ2d at
1912. Nonetheless, the letter Y is often pronounced as a long “I”; therefore, the
terms LIGHTNING and LYTNING could be pronounced the same. Moreover, the
lightning bolt design that is incorporated into Applicant’s mark strongly suggests to
customers that the mark should indeed be pronounced as “lightning,” and we find
that most customers would likely pronounce it this way. In cases where goods may
be ordered orally, identical pronunciation of the marks is significant. Centraz
Industries Inc. v. Spartan Chemical Co., 77 USPQ2d 1698, 1701 (TTAB 2006).
The marks may also be viewed as similar in meaning. Because of the
pronunciation suggested by the lightning bolt design, customers are likely to view
LYTNING as a misspelling of “lightning” and therefore ascribe to it the same
meaning as LIGHTNING. Applicant argues that LYTNING means “listening” in
Danish, but Applicant admits:
This is not to suggest that an appreciable number of
ordinary purchasers are literate in Danish and would be
able, or likely, to stop and translate Applicant’s mark or
that this Danish word is the genesis of Applicant’s mark.
However, it does suggest that the conclusion that some
purchasers may view Applicant’s mark as one of foreign
origin is far from mere speculation. It also challenges the
assumption that purchasers will immediately recognize
Applicant’s mark as the English word “lightning” …
Applicant’s brief at 8-9, 13 TTABVUE 9-10.
The relevant inquiry is not whether some customers will perceive a distinction in
meaning between the marks. Section 2(d) does not require unanimous confusion in
order to support a refusal of registration. We find that because of the lightning bolt
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design and the likely pronunciation of the mark, most customers in the United
States market would perceive Applicant’s mark as a misspelling of the word
“lightning” and attribute to it the connotations of that word.
Although the two marks have certain points of difference in appearance, the
overall similarities in sound and meaning outweigh these differences and overall
the marks convey similar commercial impressions. We therefore find that the factor
of the similarity or dissimilarity of the marks weighs in favor of a finding of
likelihood of confusion.
2. The goods.
We next consider the similarity or dissimilarity of the goods at issue, as identified
in the application and the cited registration. Stone Lion Capital Partners, LP v.
Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-1162 (Fed. Cir. 2014);
Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). Applicant’s goods are protective shoes and boots, and
Registrant’s goods are protective gloves. Some of Applicant’s goods are identified as
being “industrial” in nature; and some of Registrant’s goods are identified as having
specific purposes (e.g., gloves “for laboratory use,” “for medical use,” “for use in the
food industry,” “work gloves,” “surgical gloves”). However, both identifications
include the relatively broad category defined by the phrase “for protection against
accident[s],” without further specificity. We presume that the respective
identifications of goods encompass all of the goods of the nature and type described
by the words “gloves for protection against accidents” and “shoes and boots for
Serial No. 85862951

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protection against accident.” In re Jump Designs LLC, 80 USPQ2d 1370, 1374
(TTAB 2006). We must determine whether such goods are related in such a way
that placing similar marks on them could give rise to the mistaken belief that they
originate from or are in some way associated with the same producer. Edwards
Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399. 1410 (TTAB 2010); Schering
Corporation v. Alza Corporation, 207 USPQ 504, 507 (TTAB 1980); Oxford
Pendaflex Corporation v. Anixter Bros. Inc., 201 USPQ 851, 854 (TTAB 1978).
In order to demonstrate that protective shoes and boots are related to protective
gloves, the Examining Attorney has submitted 22 use-based, third-party
registrations that cover both protective gloves and protective footwear.4 These are:
2488134 PRECISION SAFETY 2792380 FIBERLOCK
2728893 ARC GUARD 3927258 COMFITWEAR
3779972 ARC ARMOR 3738779 ELECTROLINER
2691024 OBERON 2841763 ASURA
3971670 THESAFETYHOUSE.COM 3703635 ASPEN AEROGELS
3666835 HORSEPOWER 3420700 CREWSAFE
3999557 JUST TRY TO OVERWORK US 4252539 GEMPLER’S
4194682 LABONVILLE INC. [etc.] 4438412 LION
4368288 MORNING PRIDE 4417817 OTUS GEAR [etc.]
3798022 VIKING 4214053 NATO
4436538 ALWAYS BE READY 2697548 ROADMASTER

Third-party registrations that are based on use in commerce and that individually
cover a number of different goods may have some probative value to the extent that
they serve to suggest that the listed goods are of a type which may emanate from
the same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786; In re

4 Office Action of January 29, 2014 at 93-151 and Office Action of September 3, 2014 at 91-
118. We note that three of these registrations belong to a single company, Magid Glove and
Safety Manufacturing Co., L.L.C.
Serial No. 85862951

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Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). However,
Applicant has diligently sought to undermine the probative value of these
registrations by submitting internet evidence intended to demonstrate that the
registered marks are not in fact used for both gloves and footwear.5 Although such
evidence is insufficient to conclusively demonstrate such non-use, it reduces the
probative value of the third-party registrations for purposes of demonstrating that
goods of the types at issue may emanate from the same source. Accordingly, we give
the third-party registrations decreased weight in our analysis and will, instead,
focus on the internet evidence of record, which is more directly probative of market
conditions.
The Examining Attorney has made of record substantial evidence showing
protective gloves and footwear offered together on websites that feature personal
protective equipment. There is clear evidence of the DEWALT mark on both
protective gloves and protective boots;6 use of the mark NS on protective gloves and
protective boots;7 use of ARBORTEC as a house mark for a company that produces
both protective gloves and protective footwear;8 and use of the mark REDWING on
utility gloves and logger boots.9 In addition, many of the online stores show such

5 Applicant’s request for reconsideration of July 30, 2014, and Exhibits A through EE.
6 Office Action of January 29, 2014 at 165-169
7 Office Action of June 13, 2013 at 44-50.
8 Office Action of September 3, 2014 at 55-59.
9 Id. at 79-85.
Serial No. 85862951

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goods identified only by model number or generic name, without reference to any
brand other than the store brand.10
On the basis of Applicant’s own analysis of the internet evidence, Applicant has
admitted that Honeywell Safety Products produces various brands of protective
gloves and boots;11 that Gulf Industrial Solutions offers safety shoes and welding
gloves (under two different marks of its own);12 that L.D.F. Industries, Inc. offers
work gloves and industrial footwear under the same mark;13 that the mark JUST
TRY TO OUTWORK US is used to advertise overshoes and protective gloves;14 that
the GEMPLER’S mark appears on a website “in connection with a full range of
protective footwear and gloves”;15 that the mark LION appears on a website “in
connection with protective gloves and footwear”;16 and that the SALISBURY mark
appears on both gloves and footwear for protection against toxic chemical
exposure.17 We note also the ASURA catalogue, made of record by Applicant, which
associates the ASURA trademark with a range of protective gloves and a “[h]eavy

10 See, e.g., id. at 40-45 (CARHARTT brand), 69-72 (BLACKHAWK brand), 73-78 (DAKOTA
OUTERWEAR brand), and 86-90 (OAKLEY brand); Office Action of June 13, 2013 at 38-39
(GOODYEAR RUBBER PRODUCTS brand).
11 Applicant’s request for reconsideration of July 30, 2014 at 31 and Exhibits C and D.
12 Id. at 37.
13 Id. at 42 and Exhibit I.
14 Id. at 49.
15 Id. at 50.
16 Id. at 52.
17 Applicant’s brief at 9, 13 TTABVUE 10.
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duty boot great for chemical spill clean-ups, pesticide and paint spraying, light
industrial, janitorial work and clean room applications.”18
Applicant argues that the evidence of the Examining Attorney shows
at best, … that, although a number of different brands of
protective footwear and protective gloves may be offered
by the same distributor, protective footwear and
protective gloves are only rarely offered under the same
trademark. The rare instances where they share a
common mark appear to be confined to footwear and
gloves designed for very specific hazards such as electrical
shock or highly toxic chemical environments. …
[It] does not establish that the same entity commonly
produces both protective footwear and protective gloves
under the same mark.
Applicant’s brief at 5-6, 13 TTABVUE 6-7 (emphasis in original). Applicant places
the bar too high for demonstrating a commercial relationship between different
types of goods. Customers are familiar with the fact that a single company may
offer different goods under different sub-brands. The test is not whether the
different goods are frequently offered under the same mark; and proving that they
are so offered is not the only way to demonstrate that the goods are related in such
a way that customers would expect them to emanate from a single producer.
Customers’ familiarity with such diverse goods offered under different sub-brands of
a single producer may result in their expectation that a single entity is a likely
source of both types of goods.

18 Id., Exhibit N at 289-305. Although Applicant argues that this catalogue dates from 2004
and is the latest catalogue under this mark, id. at 45, we find that it is of value to show, at
least, historic market conditions.

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Applicant also argues that
the availability of both protective footwear and protective
gloves from highly diversified companies such as
Goodyear or from distributors and retailers specializing in
safety and personal protective equipment is no more
likely to lead one to a mistaken assumption of common
source than one’s routine encounter with thousands of
different types of products in a supermarket or
department store.
Applicant’s brief at 16-17, 13 TTABVUE 17-18. The Examining Attorney’s internet
evidence shows primarily outlets that specialize in personal protective equipment.
Applicant’s comparison of such specialized outlets to a supermarket or department
store is not convincing. We acknowledge that where diverse goods are distributed by
an entity that does not actually produce the goods, such distribution does not
necessarily suggest to purchasers that the goods might come from a single source.
However, the more probative evidence, discussed above, shows outlets that are
associated with actual producers of the goods, not merely distributors of the goods of
others.
The evidence of record is sufficient to persuade us that customers of protective
gloves and protective footwear would readily believe that such goods may emanate
from a single source. Accordingly, the du Pont factor relating to the similarity or
dissimilarity of the goods at issue weighs in favor of a finding of likelihood of
confusion.

Serial No. 85862951

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3. Trade channels.
The Examining Attorney argues that “registrant’s goods are commonly and
routinely sold alongside and by the same parties as the goods of applicant.”19 This
contention is supported by the evidence of many online outlets that distribute the
personal protective equipment of others and carry both protective gloves and
protective footwear. Applicant admits that such outlets carry both types of goods.
Examples are , , , and
.20 We find that the du Pont factor of trade channels favors a
finding of likelihood of confusion.
4. Conditions of sale; Sophistication of customers.
Applicant argues that “the goods involved, by their very nature, are of a kind that
require special knowledge and the exercise of extreme care in purchasing.”21
Applicant has made of record a publication of the Occupational Safety and Health
Administration (OSHA) entitled “Personal Protective Equipment,” which discusses
various federal regulations and requirements relating to the provision of equipment
to employees to protect them from various types of bodily harm. Applicant argues:
… PPE [personal protective equipment] requirements are
numerous and complex, varying by industry as well as by
parts of the body requiring protection.
OSHA requires that many categories of PPE meet, or be
equivalent to, ANSI’s [American National Standards
Institute’s] established standards. Manufacturers of PPE
develop their products in compliance with those standards

19 Examining Attorney’s brief, 15 TTABVUE 13.
20 Request for reconsideration at 32-38, 43-44, and 46.
21 Applicant’s brief at 11, 13 TTABVUE 12.
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and market their products by explicit reference to the
precise standards met by specific products. …
It is apparent from even a cursory review of [the]
Chemical Resistance Chart [on a web page offering
Registrant’s goods] that more than a passing familiarity
with chemistry is required to make an informed choice of
an appropriate glove for protection from specific chemical
hazards.
… With a background of almost a century of accumulated
knowledge and the resulting labyrinth of federal
regulation, one can only conclude that safety professionals
responsible for selecting appropriate PPE for their
coworkers will do so only after assessment of the hazards
inherent in performing specific tasks and equally careful
selection of products conforming to the applicable
standards. Moreover, workers selecting PPE for
themselves are not likely to be willing to bet their hands,
feet or livelihoods on impulsive, careless selections.
Applicant’s brief at 14-16, 13 TTABVUE 15-17.
This argument of Applicant depends upon a characterization of all of the goods at
issue as highly technical products for bodily protection in connection with highly
dangerous activities. This characterization is not warranted with respect to all of
the goods. We must base our analysis on the full range of goods identified in the
application and registration, and we must consider the least sophisticated potential
customers for the goods. Stone Lion Capital Partners, 110 USPQ2d at 1161-1163.
Applicant’s identification includes the rather general category of “shoes and boots
for protection against accident”; and Registrant’s identification includes “Gloves for
protection against accidents” as well as “Protective work gloves” and “Disposable
latex gloves for general use; Disposable plastic gloves for general use.” Such
protective gear might be purchased for relatively mundane activities like light
Serial No. 85862951

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household repairs and gardening. We cannot assume that all relevant customers
are professionals charged with following OSHA regulations or individuals who work
in highly dangerous environments. Some of the goods at issue may be purchased by
ordinary consumers using only an ordinary degree of care. For those goods, we are
not persuaded that the customers’ degree of care would be such as to significantly
reduce the likelihood of confusion. Even though some of the goods at issue might be
purchased with a higher degree of care, for purposes of finding a likelihood of
confusion it is sufficient if confusion is likely with respect to use of the mark on any
item that comes within the description of goods in the application or registration.
Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986,
988 (CCPA 1981); Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1398
(TTAB 2007). Accordingly, we consider the conditions of sale and the sophistication
of customers to be a neutral du Pont factor.
5. Conclusion.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. We find that
Applicant’s mark, as used in connection with Applicant’s goods, so closely resembles
the registered mark as to be likely to cause confusion, mistake or deception as to the
source of Applicant’s goods.
Decision: The refusal to register is affirmed.