Elegant Headwear Co., Inc.

Trademark Trial and Appeal Board

Mar 17, 2004

No. 75886511 (T.T.A.B. Mar. 17, 2004)

Paper No. 13
TJQ
Mailed:3/17/04
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Elegant Headwear Co., Inc.
________
Serial No. 75886511
_______
Myron Amer for Elegant Headwear Co., Inc.
Mary Rossman, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______
Before Seeherman, Quinn and Holtzman, Administrative
Trademark Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Elegant Headwear Co.,
Inc. to register the mark MAGIC STRETCH GLOVES (“GLOVES”
disclaimed) for goods identified in the application (as
amended) as “children’s gloves, namely, in the nature of
one size fits all consisting of 95% acrylic spandex.”1
The Trademark Examining Attorney has refused
1 Application Serial No. 75886511, filed January 5, 2000, based
on an allegation of a bona fide intention to use the mark in
commerce.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 75886511
2
registration under Section 2(d) on the ground that
applicant’s mark, if applied to applicant’s goods, would so
resemble the previously registered mark MAGIC GLOVE
(“GLOVE” disclaimed) for “fashion gloves for youth”2 as to
be likely to cause confusion. In addition, the Examining
Attorney made final the following requirements: (i) to
disclaim the words “Stretch Gloves” apart from the mark;
and (ii) to submit advertising and/or promotional materials
for applicant’s goods that make clear the nature of the
goods.
When the refusal and requirements were made final,
applicant appealed. Applicant and the Examining Attorney
have filed briefs.3 An oral hearing was not requested.
Requirement for Promotional Materials
In the Office action dated September 27, 2002, the
2 Registration No. 2,090,700, issued August 26, 1997; combined
Sections 8 and 15 affidavit filed.
3 There are two evidentiary matters that require our attention.
The first concerns applicant’s submission, for the first time
with its brief, of certain evidence. The Examining Attorney has
objected to the evidence as untimely. In view of the untimely
submission, the evidence has not been considered. Trademark Rule
2.142(d). Even if considered, however, the evidence would not be
persuasive of a different result in this case.
The second matter concerns applicant’s objection made in its
brief to certain evidence attached to the final refusal.
Contrary to applicant’s contention, the submission is timely.
Further, applicant had an opportunity to respond thereto with
contravening evidence and arguments by way of a request for
reconsideration. In point of fact, applicant did file a request
for reconsideration, but apparently chose not to submt evidence
in response to the Examining Attorney’s evidence.
Ser No. 75886511
3
Examining Attorney required applicant to submit samples of
advertisements or promotional materials because, in the
Examining Attorney’s view, “the nature of the goods in
connection with which the applicant intends to use the mark
is not clear from the present record.” In response,
applicant submitted a hanging point-of-sale display to
which applicant’s gloves are attached.4 The point-of-sale
hang tag indicates that applicant’s goods are “stretch
gloves,” that the gloves are “stretched to all sizes for a
super fit,” and that “one size fits all.” The hang tag
also states that the gloves are manufactured from acrylic
and spandex. Applicant also amended the identification of
goods (from “children’s gloves” to “children’s gloves,
namely, in the nature of one size fits all consisting of
95% acrylic spandex”) in order “to correct [any] ambiguity”
about the goods. The Examining Attorney noted the hang tag
display, and accepted the amended identification, but
indicated that there still was a failure to submit
“advertisements or promotional materials for the goods that
make clear the nature of the goods, their salient features,
and the prospective customers and/or channels of trade.”
4 Although the application is based on an intent to use the mark,
and applicant has not submitted an amendment to allege use, it
appears that applicant has, in fact, commenced use of the mark.
Ser No. 75886511
4
The Examining Attorney also indicated that she was unable
to locate any such information about the goods on the
Internet.
Trademark Rule 2.61(b) provides that the “examiner may
require the applicant to furnish such information and
exhibits as may be reasonably necessary to the proper
examination of the application.” More specifically, the
“examining attorney may request literature, exhibits, and
general information concerning circumstances surrounding
the mark and, if applicable, its use or intended use.”
TMEP § 814 (3rd ed. 2003).
Although the Examining Attorney’s request originally
was legitimate, we find that the amended identification of
goods to more specifically set forth the nature of the
goods, coupled with the hanging display bearing information
about the goods, were sufficiently responsive to the
Examining Attorney’s requirement. Applicant’s gloves are
ordinary consumer items, and the information available to
the Examining Attorney was sufficient to allow the proper
examination of the application.
Accordingly, the requirement for additional materials
is reversed.
Ser No. 75886511
5
Disclaimer Requirement
Although applicant has disclaimed the word “Gloves”
apart from the mark, the Examining Attorney has made final
the requirement to disclaim the words “Stretch Gloves.”
Applicant asserts as follows:
It is the applicant’s argument that the
STRETCH is MAGIC, and that is why “one
size fits all.” The two words MAGIC
STRETCH are a unitary two-word
component, and not separable unrelated
words. If STRETCH is used solely to
describe a characteristic of the word
GLOVE, it should be spelled
STRETCHABLE.
As best we understand applicant’s contention, it is that
“MAGIC STRETCH” is unitary, as opposed to “STRETCH GLOVES,”
and that, therefore, a disclaimer of the latter is
improper.
The Examining Attorney maintains that there is nothing
unitary about “MAGIC STRETCH,” that the goods are “stretch
gloves,” and that, consequently, the required disclaimer is
proper. In support of this requirement, the Examining
Attorney submitted excerpts retrieved from the NEXIS
database and from the Internet showing generic usage in the
trade of the term “stretch gloves.” Also of record are
third-party registrations showing disclaimers of the term
“Stretch” in marks for various items of clothing. The
Ser No. 75886511
6
Examining Attorney also furnished a dictionary definition
of the term “stretch” which, in pertinent part, is an
adjective meaning “easily stretched.” Merriam-Webster’s
Collegiate Dictionary (1996).5
TMEP § 1213.05 (3rd ed. 2003) provides as follows:
A mark or a portion of a mark is
considered “unitary” when it creates a
commercial impression separate and
apart from any unregistrable component.
That is, the elements are so merged
together that they cannot be divided to
be regarded as separable elements. If
the matter that comprises the mark or
relevant portion of the mark is
unitary, no disclaimer of an element,
whether descriptive, generic or
otherwise, is required.
For example, a descriptive word
can be combined with nondescriptive
wording in such a way that the
descriptive significance of the word in
relation to the goods is lost and the
combination functions as a unit. This
happens when the combination itself has
a new meaning. An example is the term
“Black Magic,” which has a distinct
meaning of its own as a whole. The
word “black” is not intended to have
color significance in relation to the
goods, and should not be disclaimed
even if the mark is applied to goods
that are black in color.
In the present case, there is no readily understood
meaning of “Magic Stretch.” Rather, the record clearly
5 The dictionary definition, of which we take judicial notice,
appears in the Examining Attorney’s brief.
Ser No. 75886511
7
establishes that the term “stretch gloves” is a common
generic name for the type of gloves intended to be sold by
applicant. The term “stretch glove” is a unitary generic
name and it must be disclaimed apart from the mark as shown
in the typed drawing. See: Dena Corp. v. Belvedere
International Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed.
Cir. 1991); and In re Lean Line, Inc., 229 USPQ 781 (TTAB
1986). The stylized display of applicant’s mark on the
hang tag does not compel a different result on this issue.
Accordingly, the requirement of a disclaimer of the
words “Stretch Gloves” is affirmed.
Likelihood of Confusion
Registration has been refused under Section 2(d) of
the Trademark Act on the ground that applicant’s mark, if
applied to applicant’s identified goods, would so resemble
the previously registered mark MAGIC GLOVE for “fashion
gloves for youths” as to be likely to cause confusion.
Applicant essentially contends that its “children’s
gloves, namely, in the nature of one size fits all
consisting of 95% acrylic spandex” are “radically
different” from the “fashion gloves for youths” listed in
the cited registration. Applicant argues that this
difference, coupled with differences between the marks,
avoids the likelihood of confusion.
Ser No. 75886511
8
The Examining Attorney asserts that the marks and
goods are similar so that there is a likelihood of
confusion. Of record are definitions of the terms “child,”
“youth,” and “fashion/fashionable.”
Our determination of the issue of likelihood of
confusion is based on an analysis of all of 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 and/or
services. 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).
With respect to the goods, it is well established that
the goods of the parties need not be similar or
competitive, or even that they move in the same channels of
trade, to support a holding of likelihood of confusion. It
is sufficient that the respective goods are related in some
manner, and/or that the conditions and activities
surrounding the marketing of the goods are such that they
Ser No. 75886511
9
would or could be encountered by the same persons under
circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they originate
from the same source. See In re International Telephone &
Telephone Corp., 197 USPQ 910, 911 (TTAB 1978).
The goods herein are closely related. Both the cited
registration and the involved application list gloves to be
worn by individuals young in age. The differences pointed
to by applicant are simply irrelevant in our likelihood of
confusion analysis. The respective gloves would be
purchased by the same classes of purchasers and would
travel in the same or similar channels of trade. Further,
the Examining Attorney’s evidence shows that gloves of the
types involved herein can be relatively inexpensive and,
therefore, may be purchased on impulse. As a result,
consumers are not likely to notice minor differences in the
marks for such goods.
As to the marks, 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
that confusion as to 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
Ser No. 75886511
10
a general rather than a specific impression of trademarks.
See: Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106
(TTAB 1975). Further, although the marks at issue must be
considered in their entireties, it is well settled that one
feature of a mark may be more significant than another, and
it is not improper to give more weight to this dominant
feature in determining the commercial impression created by
the mark. See: In re National Data Corp., 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985).
The marks MAGIC GLOVE and MAGIC STRETCH GLOVES are
quite similar when viewed in their entireties in terms of
sound, appearance and meaning. Indeed, the marks are
identical but for the presence of the descriptive word
STRETCH as the second word in applicant’s mark. Both marks
begin with the word MAGIC and end with the word GLOVE(S).
The dominant feature in both marks is the first word MAGIC,
which appears to be arbitrary or at most only suggestive as
applied to gloves. The strength of the term MAGIC in the
cited mark is further shown by the absence of any evidence
of third-party use or registrations of MAGIC or similar
marks on gloves. The remaining wording in each mark, that
is, GLOVE(S) and STRETCH GLOVES, respectively, is
descriptive/generic matter. Any dissimilarity between the
marks which results from the presence of the work STRETCH
Ser No. 75886511
11
in applicant’s mark and the absence of that word from
registrant’s mark is greatly outweighed by the similarity
which results from the fact that both marks start with the
word MAGIC and end with the word GLOVE(S). Moreover, as
shown by the record, STRETCH merely identifies a type of
glove.
In view of the above, consumers are likely to believe
that applicant’s MAGIC STRETCH GLOVES identifies a stretch
version of registrant’s gloves sold under the mark MAGIC
GLOVE. In sum, we find that there is a likelihood of
confusion.
Decision
The refusal to register based on likelihood of
confusion is affirmed.
The requirement for a disclaimer of the words “Stretch
Gloves” is affirmed. In the event that applicant submits a
disclaimer of the words “Stretch Gloves” apart from the
mark within thirty days of the mailing date of this
decision, this portion of the decision will be set aside.
The requirement for additional information is
reversed.