Horizen, LLC

Trademark Trial and Appeal Board

Jun 26, 2013

No. 85379694 (T.T.A.B. Jun. 26, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
June 26, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Horizen, LLC
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Serial No. 85379694
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Robert H. Williams for Horizen, LLC.

Jeffrey S. DeFord, Trademark Examining Attorney, Law Office 115 (John Lincoski,
Managing Attorney).
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Before Bucher, Holtzman and Kuhlke, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, Horizen, LLC, filed an application to register on the Principal
Register the mark shown below for “belts; flip flops; hats; jackets; pants; polo shirts;
sandals; shoes; shorts; skirts; swimwear; t-shirts; underwear; visors,” in
International Class 25.1

1 Application Serial No. 85379694, filed on July 25, 2011, alleging first use and use in
commerce on June 27, 2011, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a).

Serial No. 85379694

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Registration has been refused under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), on the ground that applicant’s mark, when used with its identified
goods, so resembles the following registered marks owned by the same registrant:

Registration No. 2028326, issued on January 7, 1997, renewed, for
“work gloves,” in International Class 25; and

Registration No. 2740922, issued on July 29, 2003, Section 8 and 15
combined declaration accepted and acknowledged, for “gloves,” in
International Class 25

as to be likely to cause confusion, mistake or deception.
When the question is likelihood of confusion, we analyze the facts as they
relate to the relevant factors set out in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (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 or services. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We begin with the du Pont factor of the relatedness of the goods. We base our
evaluation on the goods as they are identified in the registrations and application.
In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997).
See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001
Serial No. 85379694

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(Fed. Cir. 2002); and Octocom Systems, Inc. v. Houston Computers Services Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). It is settled that it is not
necessary that the respective goods be identical or even competitive in order to find
that they are related for purposes of our likelihood of confusion analysis. That is,
the issue is not whether consumers would confuse the goods themselves, but rather
whether they would be confused as to the source of the goods. See In re Rexel Inc.,
223 USPQ 830 (TTAB 1984). 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. See In re Martin’s Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18
USPQ2d 1386 (TTAB 1991).
The examining attorney argues that the word “glove” is defined as “a piece of
clothing which is worn on the hand and wrist for warmth or protection, with
separate parts for each finger”2 and concludes that “like all of applicant’s goods it is
an article of clothing worn for the same reasons and the goods are highly related
and can and are used together for the same purpose.”3 Further, the examining

2 Cambridge Dictionaries Online http://dictionary.cambridge .org/dictionary/british/glove.
We grant the examining attorney’s request that we take judicial notice of the dictionary
definition for glove. The Board may take judicial notice of dictionary definitions. In re Red
Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). We also take judicial notice of
applicant’s offered definition “a covering for the hand worn for protection against cold or
dirt and typically having separate parts for each finger and the thumb.” Oxford Dictionaries
http://oxfordictionaries.com/us/definition/american_english/glove. We note applicant’s
definition references American English in contrast to the examining attorney’s British
English definition; however, we find no significant difference in the definitions.
3 E. A. Br. p. 8
Serial No. 85379694

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attorney argues that applicant’s goods and registrant’s gloves “are complementary
and companion items included as part of a persons’ equipment, kit or ensemble.”4
To support the contention that the goods are related, the examining attorney
submitted excerpts from one online store called Working Person’s Store, where
different brands for various clothing items are sold. As noted by applicant, only two
brands, Carhartt and Wolverine, sell both applicant’s type of goods and registrant’s
type of goods. The other fourteen sell either but not both, tending to prove the
opposite of the examining attorney’s contention. Moreover, the gloves are offered
for sale on their own distinct web page and never near any of applicant’s identified
goods.
The examining attorney also relies on a string citation of cases wherein
different types of clothing were found to be related goods; however, there is no per se
rule regarding clothing and the record must support findings of fact on this point.
Despite the thin record, applicant’s goods include hats and jackets which are
frequently used with and are complementary to gloves. Applicant’s arguments that
its goods are “beachwear” is not persuasive inasmuch as there is no such limitation
in the identification, and while certain goods somewhat lend themselves to such an
interpretation (flip flops, swimwear, sandals, shorts), the hats and jackets are
unlimited in the identification as written and could include winter hats and jackets.
Thus, we find that applicant’s goods are related to registrant’s gloves in Reg. No.
2740922. It is sufficient for a finding of likelihood of confusion if the relatedness is
established for any item encompassed by the identification of goods within a

4 E. A. Br. p. 9.
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particular class in the application. Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981). We do not find, however, that
this record supports a finding that applicant’s goods are related to registrant’s work
gloves in Reg. No. 2028326. We find the evidence of record insufficient to show that
the circumstances surrounding the marketing of “work gloves” on the one hand and
applicant’s listed goods on the other hand, are such that relevant purchasers would
mistakenly believe that the respective goods originate from the same source. In re
Princeton Tectonics Inc., 95 USPQ2d 1509, 1510-12 (TTAB 2010).
In regard to the purchasers and the conditions of sale, applicant’s and
registrant’s goods are purchased by the general public and are not extremely
expensive. While, as applicant argues, glove purchasers check the fit of the glove as
any purchaser of clothing would, the purchase of these goods does not require a
sophisticated knowledge, and it does not rise to a level of care that outweighs the
other du Pont factors.
We turn to the du Pont factor of the similarities and dissimilarities between
applicant’s HORIZEN and design mark and registrant’s HORIZON and design
marks.

We analyze “the marks in their entireties as to appearance, sound,
connotation and commercial impression.” In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) quoting du Pont, 177 USPQ at 567. See also
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Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005).
While the literal elements in the marks sound nearly identical and would
both evoke the meaning “horizon,” the stylization in applicant’s mark, depicting
only the “e” and “n” in lower case, does serve to separate out the last syllable to
emphasize the embedded word ZEN.5 This additional meaning in combination with
the representation of the sun on the horizon of the ocean with the reflection of the
sun in the waves causing ripples reminiscent of Asian calligraphy creates a distinct
overall commercial impression. The different commercial impressions are further
exacerbated by bold lettering above the sweeping lines of the ‘922 mark design.
We acknowledge that the marks have similarities; however, because of the
added meaning “zen” in applicant’s mark, the stark difference in appearance of the
design elements and the resulting different commercial impression, these
differences in connotation, appearance and commercial impression, differentiates
the marks and we treat the first du Pont factor as slightly favoring applicant.
After considering all of the evidence of record and argument pertaining to the
du Pont likelihood of confusion factors, and in particular the differences in the
marks, and in the case of the ‘326 registration, the difference in the goods, we find
that the Office has not satisfied its burden of proving that confusion is likely.

5 In this regard, we note that applicant’s argument that its employees are instructed in
pronouncing the mark by stressing the ZEN suffix, is not persuasive. Potential purchasers
who have not communicated with applicant’s employees and simply encounter the mark in
the store are not aware of such specific pronunciation.
Serial No. 85379694

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Decision: The refusal to register based on a likelihood of confusion under
Section 2(d) of the Trademark Act is reversed.