Ironclad Performance Wear Corp.

Trademark Trial and Appeal Board

Jul 6, 2017

No. 86737035 (T.T.A.B. Jul. 6, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: July 6, 2017
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Ironclad Performance Wear Corp.
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Serial No. 86737035
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Jeffrey F. Gersh and James A. Sedivy of Stubbs Alderton & Markiles, LLP
For Ironclad Performance Wear Corp.

Jeanine Gagliardi, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
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Before Cataldo, Wellington, and Adlin,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Ironclad Performance Wear Corp. (“Applicant”) applied to register the mark IVE,
in standard characters, for “protective work gloves” in International Class 9.1

1 Application Serial Number 86737035, filed August 25, 2015, is based on an allegation of a
bona fide intent to use the mark in commerce, pursuant to Section 1(b) of the Trademark Act,
15 U.S.C § 1051(b).
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The Examining Attorney has refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that use of Applicant’s mark is
likely to cause confusion with the registered mark EB & IVE for various jewelry and
watch goods in Class 14, various household linen goods in Class 24 and the following
goods in Class 25: 2
Adult novelty gag clothing item, namely, socks; Belts; Bottoms; Children's
and infant's apparel, namely, jumpers, overall sleepwear, pajamas,
rompers and one-piece garments; Clothing, namely, crops; Clothing,
namely, wrap-arounds; Combinations; Head wraps; Headbands for
clothing; Hoods; Jackets; Jerseys; Shifts; Short sets; Shoulder wraps;
Shoulder wraps for clothing; Tops; Wearable garments and clothing,
namely, shirts; Women's clothing, namely, shirts, dresses, skirts, blouses;
Wraps.

The refusal was made final3 and Applicant appealed. The appeal has been fully
briefed. For the reasons discussed below, we affirm the refusal to register.
Likelihood of Confusion
Our determination under Section 2(d) involves 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) (setting forth factors to be
considered, hereinafter the “du Pont factors”); see also In re Majestic Distilling Co.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion

2 Registration No. 4469372 issued on January 21, 2014.
3 In the Office Action, issued on June 30, 2016, making the refusal final, the Examining
Attorney cited a second registration as a basis for the likelihood of confusion refusal. The
registration (Reg. No. 4512333), for the mark X-S-IVE, covers “Bathrobes; Coats; Jackets
and socks; Jeans; Pants; Polo shirts; Shirts; Shoes; Shorts; Sleepwear; Sport coats; Suits;
Sweaters; T-shirts; Underwear; Vests.” In her appeal brief, the Examining Attorney
expressly withdrew this registration as a basis for refusal. 6 TTABVUE 2.
Serial No. 86737035
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analysis, two key considerations are the similarities between the marks and the
relatedness of the goods. See In re Chatam Int’l Inc., 380 F.2d 1340, 71 USPQ2d 1944,
1945 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes
to the cumulative effect of differences in the essential characteristics of the goods and
differences in the marks.”).
Similarity of the Marks
We turn now to consideration of “‘the similarity or dissimilarity of the marks in
their entireties as to appearance, sound, connotation and commercial impression.”’
Palm Bay Imps. Inc. v. Veuve Cliquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567).
“[L]ikelihood of confusion cannot be predicated on dissection of a mark, that is, on
only part of a mark. On the other hand, in articulating reasons for reaching a
conclusion on the issue 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 consideration of the marks in their
entireties.” In re Nat'l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
“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, 101 USPQ2d
1713, 1721 (Fed. Cir. 2012) (quotation omitted). Where, as here, the goods or services
Serial No. 86737035
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are “offered to the general public, emphasis must also be placed on the recollection of
the average purchaser, who normally retains a general rather than a specific
impression of them.” In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB
1987).
In this case, we find the respective marks more similar than not because Applicant
seeks to register IVE, an arbitrary term that is identical to one of the terms
comprising the registered mark, EB & IVE, notwithstanding the term EB and
ampersand at the beginning of the registered mark.
While there is no correct pronunciation of marks or terms that, like those before
us, are not recognized words, StonCor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d
1327, 111 USPQ2d 1649, 1651 (Fed. Cir. 2014), we see no reason why the term IVE
would be pronounced differently in Applicant’s mark than Registrant’s; whether the
letter “I” is verbalized as a long or short vowel, the result is the same. Ultimately,
based on the identity of Applicant’s mark and the latter term in the registered mark,
they are visually and aurally similar.
The terms EB and IVE have no demonstrated meaning.4 Thus, we presume their
use in the marks is arbitrary. Applicant argues in its reply brief that the registered
mark EB & IVE “brings to mind, ‘ebony and ivory’ whereas IVE makes no such
impression.”5 Applicant does not point to any evidence to support this argument, or

4 We acknowledge that the shared term IVE has been used as a suffix. For example, see
Note 3 involving a third-party mark X-S-IVE which may be understood as a purposeful
misspelling of the word “excessive.” However, there is no indication that Applicant’s mark
is a misspelling of a different word or contains an abbreviation or suffix.
5 7 TTABVUE 7.
Serial No. 86737035
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explain why IVE would be perceived as an abbreviation of a word that begins with
“ivo.” Moreover, to the extent consumers understand Registrant’s mark as short for
“ebony and ivory,” they would also be likely to view Applicant’s mark, IVE, as short
for “ivory.” Indeed, consumers may mistakenly believe IVE is an offshoot of the EB &
IVE brand. Thus, we are not persuaded that any “ebony and ivory” connotation would
distinguish the two marks.
In sum, we find the marks to be more similar than dissimilar in terms of
appearance, sound, meaning and overall commercial impression. Accordingly, this du
Pont factor weighs in favor of finding a likelihood of confusion.
Relatedness of the Goods/ Channels of Trade/ Classes of Purchasers
We turn now to the relatedness of the involved goods. In making our
determination, we focus on Applicant’s “protective work gloves” vis-à-vis the goods
listed in the registration that we find to be the closest, namely, “jackets; … tops; [and]
wearable garments and clothing, namely, shirts.” Based upon the evidence of record,
these goods are most closely related to Applicant’s protective work gloves. In this
regard, a finding of likely confusion does not require an analysis involving all of
Registrant’s goods; it is sufficient if any of the goods listed in the registration is
related to protective work gloves. See Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp.,
648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Computer v. TVNET.Net, Inc.,
90 USPQ2d 1393, 1398 (TTAB 2007).
We also keep in mind that “it is not necessary that the goods or services be
identical or even competitive in nature in order to support a finding of likelihood of
Serial No. 86737035
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confusion, it being sufficient that the goods or services are related in some manner
and/or that the circumstances surrounding their marketing are such that they would
be likely to be encountered by the same persons under circumstances that would give
rise, because of the marks employed thereon, to the mistaken belief that they
originate from or are in some way associated with the same producer.” In re Home
Builders Ass’n of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990). The issue is not
whether consumers will confuse the goods, but whether they will confuse the source
of the goods. Orange Bang, Inc. v. Olé Mexican Foods, Inc., 116 USPQ2d 1102, 1117
(TTAB 2015); Bd. of Regents, Univ. of Tex. Sys. v. S. Ill. Miners, LLC, 110 USPQ2d
1182, 1189 (TTAB 2014) (“The issue, of course, is not whether purchasers would
confuse the goods or services, but rather whether there is a likelihood of confusion as
to the source thereof.”).
The Examining Attorney argues that “the parties’ goods are related because they
commonly emanate from the same sources under the same mark and are sold through
the same trade channels to the same classes of consumers.”6 In particular, she argues
that printouts from 16 different websites7 show “the same entity, such as those using
the websites … commonly produces work gloves and clothing and markets the goods
under the same mark and that the goods are sold through the same trade channels
to the same classes of purchasers.”8 For example:

6 6 TTABVUE 8.
7 Attached to Office Actions issued on December 8, 2015 and June 30, 2016.
8 6 TTABVUE 10.
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[both from the Cabela’s website, www.cabelas.com];9

9 Attached to Office Action issued on June 30, 2016. TSDR at pp. 63-74.
Serial No. 86737035
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[from L.L.Bean website www.llbean.com];10 and

10 Id. at pp. 150-169.
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[from Orvis website www.orvis.com].11

11 Id. at pp. 182-200.
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The Examining Attorney also attached evidence to show that Applicant, itself,
offers clothing in addition to work gloves:

[from Applicant’s Ironclad website, www.ironclad.com].
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In addition to the website evidence, the Examining Attorney also relies on 20 use-
based, third-party registrations of marks covering protective work gloves on the one
hand and other types of clothing, including shirts, on the other.12 These include:
• Reg. No. 4641418 (RED WING SHOES) for, inter alia, “work safety protective
products, namely, …protective work gloves” in Class 9 and “casual clothing,
namely, jackets, shirts …” in Class 25;13
• Reg. No. 4969790 (DULUTH TRADING COMPANY) for, inter alia, “protective
work gloves” in Class 9 and “shirts” in Class 25;14
• Reg. No. 4835148 (design mark) for, inter alia, “protective work gloves” in Class
9 and “shirts” in Class 25;15
• Reg. No. 4923138 (FIT FOR WORK, FIT FOR LIFE) for, inter alia, “protective
work gloves” in Class 9 and “shirts” in Class 25;16 and
• Reg. No. 3205004 (DEAD ON with design) for, inter alia, “protective work
gloves” in Class 9 and “shirts” in Class 25.17

The website and third-party registration evidence shows a relationship exists
between Applicant’s protective work gloves and Registrant’s goods, which include
shirts. That is, retailers promote gloves and shirts, on the same website and under
the same mark or name. The third-party registrations also show that protective work
gloves and clothing, including shirts, may emanate from the same source under a
single mark. See In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (citing

12 Id. at pp. 223-285.
13 Id. at pp. 239-241.
14 Id. at pp. 279-282.
15 Id. at pp. 277-288.
16 Id. at pp. 265-267.
17 Id. at pp. 236-238.
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In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
Applicant states that it “sells its protective gloves to stores such as The Home
Depot, and similar markets where consumers seek out technical goods” whereas
Registrant offers “their products online, and to boutique stores in Australia” and “this
does not create sufficient similarity in the channels of trade to result in a likelihood
of confusion among consumers.”18 This line of argument, distinguishing the goods
based on their actual trade channels, ignores the well-established principle that a
likelihood of confusion analysis must be made based on the goods as they are
identified in the application and cited registration. Stone Lion Capital Partners, LP
v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014);
Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990). Here, the record establishes that the same online
retailers may market and offer for sale protective work gloves as well as other articles
of clothing, such as jackets and shirts. See Wells Lamont Corp. V. Oklahoma Clothing
Mftrs., 86 USPQ 331 (Comm’r Pat. 1950) and In re Good Luck Glove Company, 85
USPQ 509, 510 (Comm’r Pat. 1950) (noting that “work gloves” are not just for use by
laborers, but may are also “used in gardening, around the home, and in various sports
such as fishing.”)

18 4 TTABVUE 11.
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In sum, we find there is a relationship between the involved goods and they move
in the same online trade channels.
Accordingly, these du Pont factors also favor a finding of likelihood of confusion.
Sophistication of Purchasers
Applicant argues that “the purchasers of the parties’ goods are sophisticated,”19
and that its goods are purchased in bulk and with care:
Applicant’s purchasers are often buying in large volume for commercial
purposes. For example, Applicant’s bulk purchasers have ordered
Applicant’s product to outfit an entire force of oil rig workers, operators of
heavy equipment, and construction company laborers with Applicant’s
product. Bulk purchases require a sophisticated buyer who negotiates a
deal with Applicant and then places a purchase order pursuant to the
negotiated terms of the deal, including (1) price per unit, (2) volume, (3)
warranty, and (4) style. Applicant’s purchasers must make a careful and
deliberate purchase of Applicant’s product.

Applicant did not submit any evidence to support the aforementioned statements
and, in any event, we cannot base our decision on the particular manner in which
Applicant sells its goods. The application’s identification of goods does not contain
restrictions with regard to consumers, bulk purchases or price point. Furthermore,
the protective work gloves may be used for general outdoor work and are not
restricted to industrial use, such as “oil rig workers, operators of heavy equipment,
and construction company laborers.” Moreover, at least one website offers protective
work gloves for under $10 as well as shirts for under $12.20 Given that we must

19 4 TTABVUE 12.
20 Printouts attached to Office Action issued on June 30, 2016. TSDR at pp. 63-64 and 75.
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consider the possibility that Applicant’s and Registrant’s goods will be sold at these
prices, we see no reason why the least sophisticated consumer for the goods as
identified would exercise a high level of care in making their purchases.
Thus, Applicant’s argument is not persuasive and the fourth du Pont factor,
involving the conditions under which buyers make purchases, remains neutral in our
analysis.
Conclusion
We have carefully considered all evidence of record and Applicant's arguments,
even if not specifically discussed herein, as they pertain to the relevant du Pont
factors. We treat as neutral any du Pont factors for which there is no evidence.
In view of the similarity of the marks, IVE and EB & IVE, the relatedness of the
involved goods and that they have been shown to move in the same trade channels,
we find that confusion is likely.
Decision: The refusal to register Applicant’s mark is affirmed.