Ernest J. Critelli

Trademark Trial and Appeal Board

Jul 24, 2017

No. 86445003 (T.T.A.B. Jul. 24, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: July 24, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Critelli
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Serial No. 86445003
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Bernhard P. Molldrem, Jr. of Law Office of Bernhard Molldrem,
for Ernest J. Critelli, DBA Lava Gear.
Kyle Christopher Peete, Trademark Examining Attorney, Law Office 112,
Angela Wilson, Managing Attorney.
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Before Cataldo, Goodman and Larkin,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
Ernest J. Critelli, DBA Lava Gear (“Applicant”) seeks registration on the Principal
Register of the mark LAVA GEAR (in standard characters) for
outdoor survival wear, namely, jackets and pants for
extended periods of use outdoors in extreme cold weather
in International Class 25.1

1 Application Serial No. 86445003 was filed on November 5, 2014, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act. “Gear” is disclaimed.

Serial No. 86445003
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The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark so resembles the previously registered mark LAVA ACCESSORIES
(standard characters) for “scarfs; travel clothing contained in a package comprising
reversible jackets, pants, skirts, tops and a belt or scarf,”2 in International Class 25,
as to be likely to cause confusion, mistake, or deceive.
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We reverse the refusal to register.
I. Section 2(d) Analysis
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 likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also In re Majestic Distilling Co., 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. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA

In this decision, page references to the application record refer to the .pdf version of the
USPTO’s Trademark Status & Document Retrieval (TSDR) system. References to the briefs
refer to the Board’s TTABVUE docket system.

2 Registration No. 4458714, issued December 31, 2013. “Accessories” is disclaimed.
In the February 27, 2015 Office Action p.1 the Examining Attorney also cited Registrant’s
Registration No. 4435257 for the mark LAVA ACCESSORIES for “scarves” as a bar to
registration and, as a potential bar, prior pending application Serial No. 86408977 for the
mark LAVA BRAND. In the April 12, 2016 Office Action p.1 the Examining Attorney noted
the abandonment of the prior pending application and limited the Section 2(d) refusal to
Registration No. 4458714.
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1976). These factors, and the other relevant du Pont factors now before us, are
discussed below. The other du Pont factors, for which no argument or evidence was
presented, we treat as neutral.
A. The similarities or dissimilarities between the marks
We turn first to a comparison of the marks. We compare the marks “in their
entireties as to appearance, sound, connotation and commercial impression” to
determine the similarity or dissimilarity between them. Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689,
1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). “The proper test is not a
side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently
similar in terms of their commercial impression’ such that persons who encounter the
marks would be likely to assume a connection between the parties.” Coach Servs.,
Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir.
2012). In reaching a conclusion on the issue of likelihood of confusion, 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 the ultimate conclusion rests on a
consideration of the marks in their entireties. In re Nat’l Data Corp., 753 F2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985). See also Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014). It is well-
established that prospective consumers are often more inclined to focus on the first
word, prefix or syllable in any trademark or service mark. See Palm Bay, 73 USPQ2d
at 1692; Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB
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1988) (“it is often the first part of a mark which is most likely to be impressed upon
the mind of a purchaser and remembered”).
Applicant's mark is LAVA GEAR (GEAR disclaimed) in standard characters, and
the cited mark is LAVA ACCESSORIES (ACCESSORIES disclaimed) in standard
characters. Applicant’s mark is similar in construction to the cited mark. Each mark
is composed of two terms, beginning with the same first word LAVA followed by a
word which is descriptive of the identified goods and disclaimed. Disclaimed matter
generally will not constitute the dominant part of a mark. See Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (quoting In re Nat’l
Data Corp., 224 USPQ at 752); In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1533-34 (Fed. Cir. 1997). Thus, LAVA is both the first word and the dominant,
source-identifying element of each mark and it is therefore more likely that
prospective consumers will focus on this term more than the secondary, descriptive
wording in each mark. In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946
(Fed. Cir. 2004) (“Viewed in their entireties with non-dominant features
appropriately discounted, the marks [GASPAR’S ALE for beer and ale and JOSE
GASPAR GOLD for tequila] become nearly identical”).
The marks are similar in appearance and sound in that the word “LAVA” is the
first word in each mark. There is no evidence that “lava” has any significance in
connection with the goods in question. Rather, “lava” appears arbitrary as applied to
the goods in the cited registration and, at worst, incongruous as applied to Applicant’s
cold weather gear. This non-descriptive word plays a significant role in determining
Serial No. 86445003
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the connotation, and hence the commercial impression, each mark has. The second
word in Applicant’s mark is “GEAR,” whereas the second word in the cited mark is
“ACCESSORIES.” While the terms “GEAR” and ACCESSORIES” clearly differ in
appearance and sound, they are somewhat similar in meaning. As the Examining
Attorney points out, “Accessory” is defined as “a small article or item of clothing
carried or worn to complement a garment or outfit.”3 (April 12, 2016 Office Action p.
5). “Gear” is defined as (informal) clothing, especially of a specified kind. (April 12,
2016 Office Action p. 2). Although there may be differences in meaning between
“Accessory” and “Gear,” we find the connotations are closely related and
complementary, both pointing to clothing and accessories that may be used together
and emanating from a common source. Likewise, we find the overall commercial
impression of the marks is more similar than dissimilar.
Considering the marks in their entireties based on these findings, we conclude
that the marks are more similar than dissimilar, and that this Pont factor therefore
weighs in favor of a finding of likelihood of confusion.
B. Number and Nature of Similar Marks in Use on Similar Goods
Applicant argues that the shared term “LAVA” is commercially weak and that
consumers will recognize subtle differences between the marks due to the number
and nature of similar marks in use on similar goods. In this regard, Applicant

3 In its July 20, 2015 Response to Office Action p. 5, Applicant provided the following
definition for “accessory”: “something added to something else to make it more useful,
attractive or effective (fashion/clothing accessories such as scarves, handkerchiefs, bracelets
and rings).” Learnersdictionary.com.
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submitted three use-based registrations that contain the term “LAVA” and are
registered for clothing: LAVA JUNKIE (Registration No. 4526319); the composite
mark (Registration No. 4651903); and LAVA HURTS (Registration
No. 3666647).4
Evidence of extensive registration and use of a term by others can be “powerful”
evidence of weakness. See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co.
KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136
(Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115
USPQ2d 1671, 1674 (Fed. Cir. 2015). However, a handful of use-based registrations
showing registration of a term is not very availing, especially in the absence of any
evidence of the actual use of the registered marks. In re Mr. Recipe, LLC, 118 USPQ2d
1084, 1089 (TTAB 2016). In Juice Generation, there were at least twenty-six relevant
third-party uses or registrations of record, see 115 USPQ2d at 1672 n. 1, and in Jack
Wolfskin, there were at least fourteen, 116 USPQ2d at 1136 n. 2. We find this du Pont
factor to be neutral.
C. Relatedness of the Goods, Their Channels of Trade and
Consumers
We now turn to the du Pont factor regarding the relatedness of the goods. We base
our evaluation on the goods as they are identified in the application and the cited

4 July 20, 2015 Response pp. 8-10. Registration No. 3666647 cancelled on March 18, 2016.
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registration. Stone Lion Capital Partners, 110 USPQ2d at 1161; Octocom Sys., Inc. v.
Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001,
1004 (Fed. Cir. 2002).
The Examining Attorney argues that the application uses broad wording to
describe the goods and this wording is presumed to encompass all goods of the type
described, including those in Registrant’s “more narrow identification.” (6 TTABVUE
12). The Examining Attorney submits that the “Registration (may be read as):
Outdoor survival wear, namely, travel clothing contained in a package comprising
reversible jackets, pants for extended periods of use outdoors in extreme cold
weather” and contends that “[n]othing in the registration precludes the registered
goods from being for “use outdoors in extreme cold weather.” (Id. 11-12).
Applicant, on the other hand, argues “that the goods do not compete, and are not
sold to the same customers nor purchased for the same or related purposes.” (4
TTABVUE 4). Applicant submits that Registrant’s goods are “either fashion
accessories or a package of travel clothing that is sold with a fashion accessory
(namely a belt or scarf) as a characterizing component of the package” while
Applicant’s goods are “survival gear, that is, outdoor survival wear, i.e., extreme-cold-
weather jackets and pants, intended to allow the wearer to be able to spend extended
periods of time outdoors in the extreme cold weather.” (Id.).
When analyzing the similarity of the goods, “‘it is not necessary that the products
of the parties be similar or even competitive to support a finding of likelihood of
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confusion.’” Coach Servs., 101 USPQ2d at 1722 (citation omitted). The goods need
only be sufficiently related that consumers would be likely to assume, upon
encountering the goods under similar marks, that the goods originate from, are
sponsored or authorized by, or are otherwise connected to the same source. Id.
We find that the Examining Attorney has failed to establish that Applicant’s goods
and Registrant’s goods are similar or related in any way which would result in source
confusion, even when marketed under similar marks. Although the Examining
Attorney contends that outdoor survival wear could include travel clothing and that
travel clothing such as Registrant’s could be for use outdoors in extreme cold weather,
there is no evidence to support these contentions. Nor is there evidence that
Applicant’s goods and Registrant’s goods are of a type which may emanate from a
single source. Absent any evidence to show that these goods are related, we simply
cannot draw the inference suggested by the Examining Attorney. The terminology of
the identifications of goods, standing alone in the present case, is an insufficient basis
upon which to conclude that the goods are related for purposes of our analysis.
Because there is insufficient evidence that Applicant’s goods are related to the
goods identified in the cited registration, there is no presumption that these goods
travel in common trade channels and are marketed to the same consumers, and there
is no evidence that these goods are sold in the same channels of trade to the same
consumers. While extreme cold weather gear on the one hand and travel clothing on
the other may possibly be purchased by the same consumers at some point, there is
no evidence in the record to support a finding that the goods typically emanate from
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the same source. Sports Authority Michigan Inc. v. PC Authority, 63 USPQ2d 1782,
1793-94 (TTAB 2002).
II. Conclusion
In sum, we find that there is no likelihood of confusion. On this record, Applicant’s
goods and Registrant’s goods do not appear to be sufficiently related for any confusion
to be likely, even when marketed under similar marks. 5
Decision: The Section 2(d) refusal to register Applicant’s mark LAVA GEAR is
reversed.

5 In reaching our decision on likelihood of confusion we have not relied upon Applicant’s
arguments that customers of its clothing are “careful” and “selective.” There is no evidence of
record to support his contention, but even if that were the case, it is settled that even
sophisticated purchasers are not necessarily knowledgeable in the field of trademarks or
immune from source confusion. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ
49, 50 (Fed. Cir. 1986), citing Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434
F.2d 1403, 168 USPQ 110, 112 (CCPA 1970). Accordingly, we find this du Pont factor neutral.