Pyramex Safety Products, LLC

Trademark Trial and Appeal Board

Aug 3, 2016

No. 86588245 (T.T.A.B. Aug. 3, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: August 3, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Pyramex Safety Products, LLC
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Serial Nos. 86588245 and 86587952
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Leonard C. Dunavant, Jr. of Evans|Petree PC
for Pyramex Safety Products, LLC.
Mark S. Tratos, Trademark Examining Attorney, Law Office 113,
Odette Bonnet, Managing Attorney.
_____

Before Seeherman, Taylor and Pologeorgis,
Administrative Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:
Pyramex Safety Products, LLC (“Applicant”) has appealed from the final refusals
of the Trademark Examining Attorney to register its marks VG in stylized form and
VG VENTUREGEAR in stylized form for “safety glasses” in Class 9.1 The marks are
shown below. The stylized VG mark is described as consisting “of a ‘V’ and a ‘G’ linked

1 Application Serial No. 86587952 is for VG in stylized form. Application Serial No. 86588245
is for VG VENTUREGEAR. Both applications were filed on April 6, 2015, based on Section
1(b) of the Trademark Act (intent-to-use). The applications include additional goods in Class
9 (hearing protection headsets, not for medical use; safety helmets; and protective clothing
for safety purposes, namely reflective vests and jackets) and Class 10 (medical braces for back
support), but these goods are not the subject of the refusals.
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together to form a stylized drawing.” The VG VENTUREGEAR mark is described as
“the letters ‘V’ and ‘G’ linked together to form a stylized drawing over the words
‘VENTURE’ and ‘GEAR’ written as one word.”

The Trademark Examining Attorney has refused registration pursuant to Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s marks
so resemble the marks in the registrations identified below, all owned by the same
registrant, that if used in connection with Applicant’s goods they are likely to cause
confusion or mistake or to deceive.
MARK GOODS REGISTRATION NO.
VG (standard characters) Sunglasses Registration No. 3536936, issued
November 25, 2008, Section 8
affidavit accepted; Section 15
affidavit acknowledged.

Sunglasses Registration No. 3181041, issued
December 5, 2006; Section 8 affidavit
accepted; Section 15 affidavit
acknowledged.
Sunglasses Registration No. 2556077, issued
April 2, 2002; renewed.

Sunglasses Registration No. 3596137, issued
March 24, 2009; Section 8 affidavit
accepted; Section 15 affidavit
acknowledged.

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The appeals have been fully briefed.2
Because the appeals involve the same issues and virtually identical records, we
hereby consolidate them and issue a single opinion for both appeals. Unless otherwise
noted, citations are to the record in Application Serial No. 86588245.
I. Evidentiary Issue
Before proceeding to the merits of the refusal, there are some evidentiary matters
which we must discuss. First, in its appeal briefs Applicant’s made the statement that
there are “at least fifteen third-party registered ‘VG’ marks,” and one third-party
application. 4 TTABVUE 9. For the latter, Applicant provided the serial number in
the brief. The Examining Attorney pointed out in his briefs that the registrations and
the application were never made of record. Although it did not discuss this objection
in its reply briefs, Applicant did attach an Exhibit A, listing the registration number,
mark and goods for twelve registrations. The registrations themselves were not
submitted with the brief, let alone properly made of record during prosecution of the
applications. See Trademark Rule 2.142(d) (the record in the application should be
complete prior to the filing of an appeal). Accordingly, we have given no consideration
to this list.
Applicant also, in its appeal briefs, mentioned other marks it has registered, which
contain the letters “V” and “G.” Although copies of the registrations were not
submitted during prosecution, the Examining Attorney discussed these registrations

2 Applicant is advised that any cited decision should include a citation to the USPQ in
addition to any citation to an official reporter such as the Federal Reporter or Federal
Supplement. See TBMP §§ 101.03, 1203.02(f) (2016).
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in his brief without objection, and we therefore deem the registrations to be stipulated
into the record.
II. Applicable Law
Our determination of the issue of likelihood of confusion under Section 2(d) of the
Trademark Act 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, 567 (CCPA 1973). See also In re Majestic Distilling Co., Inc.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
In its main briefs Applicant appears to concede that the factors of the similarity
of the goods and channels of trade favor a finding of likelihood of confusion. “Once the
conclusion is drawn that the Mark and the Registered Marks are not confusingly
similar in appearance it does not matter that sunglasses and [sic] are sold in the same
channels of trade or that some manufacturers sell both sunglasses and safety
glasses.” Brief, SN 865888245, 4 TTABVUE 4; brief SN 86587952, 4 TTABVUE 3.
However, in its reply briefs Applicant takes issue with the Examining Attorney’s
position that Applicant’s and the registrant’s goods travel in the same channels of
trade and instead asserts that the goods as identified restrict the class of purchasers
because the goods in the cited registrations are limited to “sunglasses” and not “safety
glasses,” while the goods in the applications are “safety glasses” and not “sunglasses.”
The Examining Attorney has submitted a substantial amount of evidence showing
both the relatedness of the goods and that they are sold in the same channels of trade.
First, it should be noted that “safety glasses” are “impact-resistant lenses that protect
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the eyes from blows or other kinds of injury. Such lenses are usually made by
tempering the glass, substituting plastic for glass, or laminating.”3 As shown by the
website evidence submitted by the Examining Attorney, safety glasses look like
regular glasses. Moreover, many safety glasses are also sunglasses. See, for example,
the webpage from www.safetyglassesusa.com, which features safety sunglasses:
“Oakley Industrial Safety Glasses, all Wiley X sunglasses, all Smith Sunglasses, All
ESS sunglasses, all Edge sunglasses, and some Bobstar sunglasses.”4 The same
webpage states that one “may also click the Safety Sunglasses link below for a large
variety of more basic Z87 + sunglass options.”5 This website also explains that many
outdoor jobs require safety glasses, and that “the majority of the safety glasses made
today are available with a variety of tinted lens colors so you can work comfortably
in any light condition” and receive “the added benefit of 99.9% UV protection.”6 The
Safety Sunglasses Collection by Bomber Safety Eyewear, at
www.bombereyewear.com,7 has the headings “Safety Glasses” and “Sunglasses,”
thereby indicating to consumers that Bomber offers safety glasses that also act as
sunglasses, as well as safety glasses that are not sunglasses. The Grainger webpage
features “polarized safety glasses”8; the Uline webpage features the “Harley-

3 The Free Dictionary by Farlex, submitted with August 13, 2015 Office action, p. 67.
4 June 1, 2015 Office action, p. 16.
5 According to the website, the Z87 stamp indicates “safety compliance in the workplace.”
6 June 1, 2015 Office action, p. 17.
7 August 13, 2015 Office action, p. 70.
8 Id. at 73.
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Davidson Safety Eyewear” with UVA and UVB protection, “recommended for outdoor
use.”9 Edge Safety EYEWEAR advertises it has the “Lightest Safety Glass on the
Market at 22.6g”; on the same page it features various “non-polarized” and
“polarized” glasses with darkened lenses that restrict light, e.g., “Polarized Smoke
blocks 99.9% of UVA/UVB/UVC rays,” and 14% of light passes through this lens.”10
Carbondale safety glasses, as pictured on the Carhartt webpage, look like regular
sunglasses.11
In addition, the Examining Attorney has submitted a number of third-party
registrations that include both sunglasses and safety glasses in the identifications of
goods.12 Third-party registrations that individually cover a number of different items
and that are based on use in commerce serve to suggest that the listed goods and/or
services are of a type that may emanate from a single source. See In re Albert Trostel
& Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
There is no doubt that sunglasses and safety glasses are closely related. Not only
do the same companies offer both types of products, and do so under a single mark,
but the evidence shows that safety glasses can be sunglasses. That is, although not
all safety glasses are sunglasses, and not all sunglasses are safety glasses, there are

9 Id. at 74.
10 Id at 79.
11 November 5, 2015 Office action, p. 41.
12 See, for example, Registration No. 2884832 for B and design; Reg. No. 3117863 for
EYESENTIAL; Reg. No. 3345293 for HABER VISION and stylized H design; Reg. 3203480
for AIRAIDERS; Reg. No. 4576401 for abstract design mark; Reg. No. 4576422 for
OUTDOOR LIFE.
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safety glasses that are sunglasses; in this respect, there is an actual overlap in the
goods, and to this extent, the goods are legally identical.13 Accordingly, consumers
are likely to assume that safety glasses and sunglasses emanate from a single source
if they were sold under confusingly similar marks. The du Pont factor of the similarity
or dissimilarity and nature of the goods or services strongly favors a finding of
likelihood of confusion.
Applicant asserts that it and the owner of the cited registrations have restricted
the class of purchasers to whom they sell or direct their products because Applicant’s
identification is limited to “safety glasses” and the registrations are for “sunglasses.”
Reply brief, 7 TTABVUE 6. However, the purchasers of both safety glasses and
sunglasses may overlap, for example, a consumer may use safety glasses for some
purposes and sunglasses for other purposes. Further, the fact that the goods
identified in the cited registrations do not specify whether the “sunglasses” are in fact
“safety glasses,” and that the “safety glasses” identified in Applicant’s application do
not specify that the safety glasses also act as sunglasses, does not act as a restriction
on the channels of trade. Because safety glasses may be sunglasses, the identification
“safety glasses” includes safety sunglasses. And sunglasses may have impact
resistant lenses, and therefore also be safety glasses. To the extent that the goods are

13 Applicant, noting that the third-party registrations list both safety glasses and sunglasses,
contends that this shows that the owners of the marks “felt the need of distinguishing
between them.” 7 TTABVUE 6. However, the fact that registrations list both items does not
show that there is no overlap between sunglasses and safety glasses. Because, as stated
above, not all sunglasses are safety glasses, and not all safety glasses are sunglasses, the
listing of both in an identification does not mean that safety glasses cannot also be
sunglasses.
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legally identical, they are presumed to travel in the same channels of trade. Even if
we treat safety glasses and sunglasses as separate items that do not overlap, the
evidence discussed above shows that safety glasses and sunglasses are both offered
by the same merchants on their website, and there is nothing in the identifications
that would restrict either Applicant’s or the registrant’s identified goods to travel in
separate channels of trade.
The du Pont factor of the channels of trade favors a finding of likelihood of
confusion.
With respect to the du Pont factors of the strength of the registrant’s marks and
the number and nature of similar marks in use on similar goods, there is no evidence
of record to show that the registrant’s VG mark is weak. As previously discussed,
Applicant’s untimely submission of a list comprising the word “VG (stylized)” as a
descriptor of the marks, the registration numbers and the goods did not make the
registrations of record. Nor has Applicant submitted any evidence of use of third-
party marks. Therefore, we treat these factors as neutral.
Applicant has pointed to the fact that it owns three registrations for marks that
contain the letters V and G (V2G and V3G for safety glasses, and V2G Plus for safety
eyewear), and that at one time it owned a registration for a VENTUREGEAR mark
that had a different stylized VG element, and that all of these registrations issued
despite the existence of the cited registrations. As Applicant is aware, the Board must
assess each mark on the record submitted with the application. In re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). Because the marks in
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those registrations are different, and because we have no information about the
records, including what evidence there might have been about the similarity of the
goods, the prior registrations have little persuasive value to show that Applicant’s
current marks for safety glasses are not likely to cause confusion with the cited
registrations.
We turn next to a consideration of the marks, the du Pont factor that Applicant
primarily relies on in asserting that there is no likelihood of confusion. Applicant has
gone into some detail delineating the differences between its stylized VG
mark/element and the stylized letter marks in the cited registrations. However, one
of the cited registrations is for VG in standard characters, therefore, that mark is not
limited to any particular font, size, style or color, but would include depictions of the
letters in various stylizations. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1909 (Fed. Cir. 2012). Accordingly, we concentrate our analysis of the similarity of
the marks on a comparison of Applicant’s mark with the registrant’s standard
character VG mark. If confusion is likely between Applicant’s marks and the standard
character mark, there is no need to consider the likelihood of confusion with the cited
design marks, while if there is no likelihood of confusion between Applicant’s marks
and the standard character mark, there would be no likelihood of confusion with the
design marks. See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
We begin by considering the similarity of Applicant’s mark
and the cited standard character mark VG, which, as we have already pointed out,
can be depicted in various stylizations, including a combination of a regular letter “V”
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and a slanted letter “G” shown in thick black lines. Although the letter portion of
Applicant’s mark is highly stylized, because of the manner in which it appears in the
mark, above the term VENTUREGEAR, it would clearly be understood as the letters
VG, i.e., as the initials of the words VENTURE GEAR. The element VENTUREGEAR
in Applicant’s mark, although depicted without a space, shows the word GEAR in
bold type, so that it will be viewed as the two words VENTURE GEAR. Because of
the prominence of the stylized letters, in terms of both size and placement, they make
a strong commercial impression when the mark is viewed as a whole. Although the
mark also contains the term VENTUREGEAR, in the particular circumstances of this
case we find that this is not sufficient to distinguish the marks. Consumers who are
aware of the registrant’s VG mark for sunglasses would be likely to assume, upon
seeing Applicant’s mark on safety glasses, that this is a variation of the registrant’s
mark. In this connection, the photographs of third parties’ sunglasses and safety
glasses show that often a shorter variation of their marks is depicted on the earpiece
of the frames. See, e.g., CAT (stylized) on Caterpillar safety sunglasses14; design
portion of the CROSSFIRE and design mark on safety sunglasses15; WX (stylized) on
WILEY safety sunglasses16; E (stylized) on EDGE sunglasses17; design portion of the

14 November 5, 2015 Office action, p. 48
15 Id. at 54.
16 Id. at 64.
17 August 13, 2015 Office action, p. 79
Serial Nos. 86588245 and 86587952
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KAENON and design mark on sunglasses.18 Accordingly, we find that the du Pont
factor of the similarity of the marks favors a finding of likelihood of confusion.
In view of the in-part legally identical and otherwise closely related goods, the
identical channels of trade, and the similarity of the marks, we find that Applicant’s
mark VG VENTUREGEAR for safety glasses is likely to cause confusion with the
cited registration for VG in standard characters for sunglasses.19
We reach a different conclusion when it comes to Applicant’s mark
for the stylized letters VG per se. Although Applicant has described the mark as
consisting of a “V” and “G” linked together, consumers would not be aware of the
description provided in the application/registration when they view the mark. And
without the “signal” of the word VENTUREGEAR to indicate what the letters are,
consumers are not likely to decipher them as the letters VG. As a result, we cannot
conclude that Applicant’s stylized VG mark and the cited VG standard character
mark (even though it may be depicted in various stylized forms) are so similar that
consumers will believe that they identify goods that originate with the same source.
Decision: The refusal to register Applicant’s stylized VG mark which is the
subject of Application Serial No. 86587952 is reversed, and the application will be
forwarded for publication for all the goods listed in the identification. The refusal to

18 Id. at 89.
19 Neither Applicant nor the Examining Attorney discussed or submitted evidence with
respect to any other du Pont factors. To the extent that any others are relevant, we treat
them as neutral.
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register Applicant’s mark VG VENTUREGEAR (Application Serial No. 86588245) for
safety glasses is affirmed. After the period for appeal has passed, this application
will be forwarded for publication for all the goods listed in the identification, with the
exception of “safety glasses.”