S A S Safety Corp.

Trademark Trial and Appeal Board

Apr 30, 2013

No. 77868614 (T.T.A.B. Apr. 30, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
April 30, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re S A S Safety Corp.
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Serial No. 77868614
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Vern Schooley of Fulwider Patton, LLP for S A S Safety Corp.

Linda M. Estrada, Trademark Examining Attorney, Law Office 104 (Chris
Doninger, Managing Attorney).
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Before Quinn, Lykos, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
S A S Safety Corp. has applied to register on the Principal Register the mark
SAS in standard character form for a variety of goods in International Class 9.1 The
trademark examining attorney refused registration under § 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), only as to some of the identified goods, on the ground that
applicant’s mark, as used in connection with applicant’s goods, so resembles the
registered mark SAS as to be likely to cause confusion, or to cause mistake, or to

1 Application Serial No. 77868614, filed on November 9, 2009 under Trademark Act § 1(a),
15 U.S.C. §1051(a), claiming a date of first use and first use in commerce of 1995.
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deceive.2 When the refusal was made final, applicant filed a notice of appeal and a
request for reconsideration. On reconsideration, the examining attorney withdrew
her refusal with respect to some of the goods but maintained it with respect to the
following goods of applicant:
Back support belts to support worker's backs; protective
knee cups to protect worker's knees; kneeling pads to
protect worker's knees; face protection shields; protective
work gloves with high friction grip; safety aprons, safety
hoods for protection against sparks, and protective human
head covers for painters; hard hats; brow guards and full
face shields for hard hats, in International Class 9.
The cited mark is registered in standard character form for the following goods, all
of which are in International Class 25:
Clothing, namely shirts, jackets, hats. (Reg. No. 1474260)
Shoes. (Reg. No. 1509326)
Socks. (Reg. No. 3438768)
Applicant and the examining attorney have filed their appeal briefs.
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 the issue of
likelihood of confusion. 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 Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the goods and services at issue. See Federated Foods, Inc. v.

2 The cited mark is the subject of three U.S. registrations, No. 1474260, issued on January
26, 1988 and renewed; No. 1509326, registered on October 18, 1988 and renewed; and No.
3438768, issued on January 3, 2008.
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Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case,
applicant and the examining attorney have also submitted evidence and arguments
regarding classes of customers, channels of trade, and absence of actual confusion.
1. The marks.
Applicant’s mark is identical to the cited registered mark. Applicant argues
that the cited mark “is inherently not entitled to broad protection” because it is
“merely an acronym for the name of the registrant, San Antonio Shoe.”3 This
argument is unavailing. An acronym is, in some cases, capable of very strong
source-indicating function. In this case, the acronym SAS is apparently arbitrary
with respect to the registrant’s goods, as there is no evidence to indicate that the
acronym itself has any descriptive, generic, or even suggestive meaning in the
relevant field. Accordingly, the du Pont factor regarding the similarity of the marks
weighs in favor of a finding of likelihood of confusion.
2. The goods.
We next consider the similarity or dissimilarity of the goods at issue. We
note that where essentially identical marks are involved, as is the case here, the
degree of similarity between the parties’ goods and/or services that is required to
support a finding of likelihood of confusion declines. In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1688-1689 (Fed. Cir. 1993); Time Warner Entertainment Co.
v. Jones, 65 USPQ2d 1650 (TTAB 2002); and In re Opus One Inc., 60 USPQ2d 1812
(TTAB 2001). Applicant’s position is that its goods are safety equipment and

3 Applicant’s brief, at 5.
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protective gear while the registrant’s goods are “generic” shoes socks, shirts, jackets
and hats. For purposes of determining the full scope of the parties’ goods, we look
only to the goods as they are identified in applicant’s application and the cited
registration. Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Elbaum, 211 USPQ 639, 640 (TTAB
1981), citing Kalart Co., Inc. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139
(CCPA 1958).
To demonstrate that registrant’s shoes are related to applicant’s safety
equipment, the examining attorney points to an internet advertisement of
registrant that describes registrant’s footwear as:
designed to provide a safer, more comfortable work
experience. At home or at work, our slip resistant shoes
offer round the clock stable support without compromising
our tradition of comfort, fit and quality.4
Such promotional language is entirely consistent with standard casual and fashion
footwear, and does not convince us that registrant offers shoes that would be
regarded as safety equipment.
The examining attorney also refers to a short excerpt from applicant’s own
internet website to argue that “applicant also provides footwear.”5 Applicant’s
website does have a category of “footwear,” but the only example of footwear shown
in the record is a single pair of what appear to be high rubber boots, of the type that

4 Submitted with denial of reconsideration, dated August 9, 2012; see examining attorney’s
brief at 6.
5 Examining attorney’s brief at 8; excerpts submitted with the denial of reconsideration of
August 9, 2012.
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might be pulled on over other shoes, or perhaps worn alone for protection from
water. This small amount of evidence does not persuade us that applicant’s
identified goods (which do not include shoes, boots, or any other kind of apparel) are
related in nature to registrant’s goods.
While the cited registrations contain no limits on the specific types of shoes,
socks, shirts, jackets and hats that are within the scope of the registrations’
protection, we are not inclined to find, absent other evidence, that the registrations
cover specialized footwear of the types that a fireman or chemical worker might
wear for protection on the job; the hardhat that a construction worker would wear;
or the kinds of protective jacket that a fireman, industrial worker, or construction
worker might wear. We do not believe such goods are contemplated when a shoe or
apparel company states that it makes and sells shoes, socks, shirts, jackets and
hats. We note in this regard that all of applicant’s goods are described, in so many
words, as having a “protective” or “safety” function and being for “workers.”
The examining attorney has submitted several third-party registrations to
demonstrate that applicant’s goods and registrant’s goods are related. Such
registrations, if they are based on use in commerce, may have some probative value
to the extent that they serve to suggest that the listed goods are types that may
emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785-1786; In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB
1988). We find three registrations to be most relevant:
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Reg. No. 4006267 covers face-protection shields, hard hats, and protective gloves
for industrial use; alongside work boots and shoe coverings for
use when wearing shoes.

Reg. No. 3325961 covers protective masks, protective work gloves and kneeling
pads; alongside work wear, namely shirts, jackets, boots, shoes
and hats.

Reg. No. 3885006 covers fire resistant gloves and protective headgear; alongside
shoes for protection against accidents and fire, jackets and
shirts.6

These registrations do suggest that products similar to the goods of both applicant
and registrant may emanate from a single source. However, this amount of
evidence is not compelling. Moreover, we note that evidence of actual marketplace
use of a single trademark on both types of goods is lacking.
Giving due consideration to all of the foregoing, we find the goods of applicant
and registrant dissimilar in nature. This du Pont factor therefore weighs against a
finding of likelihood of confusion.
3. Relevant customers.
Regarding customers for the goods at issue, the examining attorney points
out that registrant’s goods are available to all consumers, including applicant’s
customers. It is clear that registrant’s goods are such common consumer items that
every consumer in the nation is a potential customer of registrant and we assume
that applicant’s customers may encounter registrant’s mark in the marketplace.
Applicant argues in return that its customers are “particularly

6 We have given less weight to Reg. Nos. 3585786 and 4066385, also submitted by the
examining attorney, as the protective equipment indicated therein is more in the nature of
sporting equipment than workers’ gear and is, accordingly, less relevant to showing a
relationship to applicant’s goods.
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discriminating,”7 and has offered the declaration of its Marketing Manager stating,
“Typically, the customers for SAS Safety Corp. have experience in purchasing
products for safety purposes as necessary to meet local, state and national
requirements for employee safety.”8 This is a valid point, although the evidence is
insufficient to rule out the possibility that average consumers might sometimes
purchase protective gear. Nonetheless, average consumers are probably unfamiliar
with registrant’s goods and therefore likely to use increased care in selecting the
goods, especially since customers may be expected to be highly solicitous of their
own safety in selecting safety gear.
Regarding registrant’s customers, there is no evidence suggesting that they
use anything more than average care; however, they are far less likely to be exposed
to applicant’s mark, as it is used on far more specialized goods. Overall, we find
there is a rough balance among the factors relating to the nature of likely
customers, such that we treat this du Pont factor as neutral.
4. Trade Channels.
The examining attorney contends that the trade channels for the goods of
applicant and registrant are the same, and has presented evidence of online stores
located at , , , , and
.9 These websites primarily feature safety equipment
similar to applicant’s goods. They offer a limited selection of apparel, such as

7 Applicant’s brief at 10.
8 Declaration of Tonya Walker, submitted with request for reconsideration of June 13, 2012.
9 Submitted with the denial of reconsideration of August 9, 2012.
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jackets, shirts, caps, and shoes, but standard apparel appears to be a subsidiary
offering. Most of the footwear offered is in the nature of work boots or high boots
made of rubber or EVA polymer.
This evidence shows us five examples of a primary trade channel for
applicant’s goods. However, they are clearly not a primary trade channel for
registrant’s identified goods. Registrant’s primary trade channels would be shoe
and apparel stores, online stores specializing in shoes and apparel, department
stores, and relevant wholesalers. Not every shoe or apparel producer will attempt
to place its goods in stores that specialize in safety equipment, and the evidence
indicates that there is limited room in such outlets for apparel and shoes. This
reduces the likelihood that a particular producer of shoes or apparel will be present
in applicant’s trade channel.
If we compare the extensive selection of safety equipment offered in the
online stores shown in the record with the small selection of apparel items offered,
it is clear that a customer who is interested in purchasing shoes, socks, shirts,
jackets and hats would not immediately consider any of these outlets as a likely
place to shop. Customers accordingly are more likely to find registrant’s goods in
those trade channels most appropriate to registrant’s goods, and will more likely be
exposed to applicant’s goods in the specialized environment of safety equipment
dealers.
We note also that all of the websites in evidence offer goods of different types
under numerous different trademarks. For example, the website
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offers hardhats under the ELVEX PROGARD trademark, protective gloves under
the SILVERSHIELD trademark, and work shirts under the CARHARTT
trademark. This evidence indicates that shoppers who use such retail outlets would
not expect that the goods come from a common source merely because they are
offered in the same store.
The trade channel evidence demonstrates the possibility that registrant’s
goods may be offered in a safety equipment store, but the likelihood of it is subject
to question. To some extent, this evidence supports a finding of likelihood of
confusion. However, we give limited weight to the possibility that registrant’s goods
may be found in applicant’s primary trade channel, as this trade channel does not
in any way promote an expectation that the various goods offered emanate from a
single source and because we think it unlikely that such a trade channel would
locate technical goods like hard hats and face shields in close proximity to standard
consumer goods like shoes, socks, shirts, jackets, and hats.
5. Absence of actual confusion.
Finally, we note applicant’s claim, supported by its Marketing Manager’s
declaration, that applicant and registrant have had 17 years of concurrent
commercial activity without a single case of actual confusion.10 In an ex parte
context, where we have no input from the registrant, applicant’s uncorroborated
statement of no known instances of actual confusion is given little evidentiary
value. In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1205

10 Applicant’s brief at 10 and Walker declaration at ¶ 7.
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(Fed. Cir. 2003); In re Bisset-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529
(CCPA 1973). The record lacks probative evidence relating to the extent of use of
applicant’s and registrant’s marks and, thus, whether there have been meaningful
opportunities for instances of actual confusion to have occurred in the marketplace.
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed.
Cir. 2000); and Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB
1992). Accordingly, the du Pont factor of relating to contemporaneous use without
evidence of actual confusion is neutral.
6. Conclusion.
Having considered the evidence of record and all relevant du Pont factors,
including those not specifically discussed herein, we find that applicant’s goods are
so different in nature from those of registrant that the use of applicant’s mark in
connection with such goods in the commercial circumstances in which such goods
are expected to be marketed is not likely to give rise to confusion, mistake or
deception as to the source of applicant’s goods. See Kellogg Co. v. Pack’em
Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991) (“We know of
no reason why, in a particular case, a single duPont factor may not be dispositive.”)
Decision: The refusal to register is reversed.