ERB Industries, Inc.

Trademark Trial and Appeal Board

Jan 3, 2019

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
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Trademark Trial and Appeal Board
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In re ERB Industries, Inc.
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Serial No. 87292839
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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.
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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.
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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.
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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.
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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
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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
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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
. . . .”).
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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
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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.