US Glove, Inc.

Trademark Trial and Appeal Board

Nov 3, 2015

No. 86098046 (T.T.A.B. Nov. 3, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: November 3, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re US Glove, Inc.
_____

Serial No. 86098046
_____

Paul Adams of The Adams Law Firm,
for US Glove, Inc.
Maria-Victoria Suarez, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
_____

Before Seeherman, Kuhlke and Lykos,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
US Glove, Inc. (“Applicant”) seeks registration on the Principal Register of the
mark TIGER PAW (in standard characters) for the following goods in International
Class 28:
Sporting goods for use in gymnastics, platform diving,
yoga and weight-lifting, namely, athletic wrist and joint
supports.1

1 Application Serial No. 86098046 was filed on October 22, 2013, based upon Applicant’s
allegation of first use and use in commerce on January 1, 2008 under Section 1(a) of the
Trademark Act.
Serial No. 86098046
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The Trademark Examining Attorney 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, when used in connection with the identified goods, so resembles
the mark LION PAWS (in standard characters) registered on the Principal Register
for “wrist supports for athletic use” in International Class 28,2 as to be likely to
cause confusion, mistake or deception.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
Likelihood of Confusion
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). These factors and others are
discussed below. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78
USPQ2d 1944 (Fed. Cir. 2006) (even within du Pont list, only factors that are
“relevant and of record” need be considered).

2 Registration No. 3049026, issued on January 24, 2006, Sections 8 & 15 declaration
accepted and acknowledged.

Serial No. 86098046
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Similarity of the Goods/Channels of Trade/Consumers
With regard to the goods, channels of trade and classes of consumers, we must
make our determinations under these factors based on the goods as they are
identified in the registration and application. See In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001
(Fed. Cir. 2002); and Octocom Systems, Inc. v. Houston Computers Services Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Based on the identifications, Registrant’s “wrist supports for athletic use”
encompass Applicant’s “athletic wrist supports” which are specifically “for use in
gymnastics, platform diving, yoga and weight-lifting.” Applicant “does not challenge
that the goods in the application and registration are related” (App. Br. p. 4, 7
TTABVUE 5) and examples of the respective goods in the record corroborate that
the goods are in fact the same, as set forth below:3

3 August 20, 2014 Office action, TSDR pp. 2, 7.
Serial No. 86098046
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In addition, because the goods are identical and the identifications of goods in
the application and the cited registration are not limited to any specific channels of
trade, we must presume that they travel in the same trade channels and are
purchased by the same classes of purchasers. In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (Board “was entitled to rely on this legal
presumption in determining likelihood of confusion”). Although Applicant submitted
evidence to establish that the respective channels of trade do not in fact overlap,
there is no such limitation in the identifications of goods in the registration or
application and we are bound to consider all appropriate channels of trade for such
goods, and not the actual trade channels. Id. See also In re Bercut-Vandervoort &
Co., 229 USPQ 763, (765) (TTAB 1986). Applicant’s argument that its extrinsic
evidence overcomes this presumption is misplaced. While such evidence may be
used in a cancellation proceeding seeking to restrict a registration under Section 18,
15 U.S.C. § 1068, to obviate likely confusion, it may not be used to limit the scope of
a cited registration in an ex parte proceeding. Applicant’s recourse, if it wanted to
limit the scope of the identification of the cited registration, would have been to
suspend prosecution of its application and bring a partial cancellation proceeding to
have the cited registration restricted under Section 18. See also TBMP § 309.03(d)
(June 2015).
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In view of the above, these du Pont factors weigh in favor of a likelihood of
confusion.
Conditions of Sale
As to the conditions of sale, Applicant submitted the declarations of several
persons in the relevant market to support its position that these goods are not
impulse purchase items and are purchased with care.
Mr. Jacobs, Applicant’s president and chief executive officer, attests:
In my opinion, customers for wrist supports used in the
field of athletics are careful buyers of these products, not
merely based on cost, but also because the products are
important for safety. It is well known that serious injuries
may be incurred during, for example, gymnastics practice
and competitions, if the wrist support is not properly
designed and manufactured. My experience is that
prospective purchasers choose their wrist supports
carefully based on the product quality and reputation of
the seller and manufacturer.4
Mr. Dreary, the president of Dreary’s Gymnastic Supply, a distributor of sport
and gymnastic equipment and the supplier of gymnastic products to the US
National Gymnastics Team attests:
One reason that I do not believe that prospective
customers are, or will be, confused is I have seen in my
business dealings that consumers are careful in selecting
gymnastic products because of the high potential for wrist
injuries that comes with participation in the sport of
gymnastics. Safety and quality are of the utmost
importance and therefore purchasing decisions on
products is carefully done following extensive research.5

4 August 3, 2014 Response, TSDR p. 4.
5 Id., TSDR p. 6
Serial No. 86098046
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Ms. Freytag, the owner of Extreme Athletic Supply, a distributor of sports and
gymnastics equipment, attests:
One reason that I do not believe that prospective
customers are confused, or will be, is that in my
experience, purchasers are careful in selecting gymnastic
grips and wrist supports because of the potential wrist
injuries in the sport of gymnastics. Safety and therefore
quality is highly important so that choosing grips and
wrist supports is done carefully and after close
comparison-shopping.6
Mr. Greenberg, owner and president of Park Avenue Gymnastics, attests:
I do not believe that prospective customers are confused,
or will be, because in my experience purchasers, users
and their parents, carefully choose gymnastic wrist
supports because of the potential injuries in the sport.
Safety and therefore quality is highly important so that
selecting grips is done carefully to avoid any injuries to
young gymnasts.7
The Examining Attorney did not address this evidence or argument. The goods
are priced approximately from $50 to $60.8 We find these goods are not impulse
purchase items and potential purchasers would exercise some care in choosing a
wrist guard for athletic purposes. We find this factor weighs slightly in favor of
Applicant.
Similarity of the Marks
We consider the marks TIGER PAW and LION PAWS and compare them “in
their entireties as to appearance, sound, connotation and commercial impression.”
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396

6 Id., TSDR p. 9.
7 Id., TSDR p. 11
8 August 20, 2014 Office action, TSDR pp. 2, 8.
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F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at
567). In making this determination we keep in mind that where the goods are
identical, the degree of similarity between the marks necessary to support a
determination that confusion is likely declines. Bridgestone Americas Tire
Operations, LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir.
2012); In re Viterra Inc., 101 USPQ2d at 1908.
The Examining Attorney finds the marks confusingly similar because: (1) they
share the word PAW (the singular form creating no difference from the plural form);
(2) they are two word marks and the structure is the same with a two syllable first
word and the same second word; and (3) the first words, TIGER and LION, evoke
the same commercial impression, that of a large wild cat.
Applicant argues that the common word PAW is highly suggestive of the goods
in that they are “worn on the wrist of a user adjacent the user’s hand – the human
proxy of a four-legged creature’s ‘paw’ … [therefore, PAW is] suggestive of where the
product is used by the customer.”” App. Br. p. 14, 7 TTABVUE 15. The
aforementioned declarations submitted by Applicant include attestations that they
are “aware that there are other manufacturers that use the word ‘Paw’ or ‘Paws’ as
part of their trademarks.”9 Applicant also submitted with its request for
reconsideration the declaration of Susie Newman, an intellectual property
paralegal, attesting to searches she conducted of the USPTO Trademark Electronic

9 Id., TSDR p. 6.
Serial No. 86098046
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Search System (TESS) for the word “paws.”10 She attached the search results for
the first search which was not limited by goods and only shows the “paw” marks
and their corresponding registration or application serial numbers. The second
search was limited to “sporting goods” but she did not attach these results. Finally,
she submitted the printout of a third-party registration for POWER PAWS for
“athletic wrist and joint supports.” She referenced in her declaration several other
third-party registrations that do not appear in the attached search results. The
Examining Attorney has objected to the lists of third-party registrations. Although
the lists themselves are of record, having been submitted during examination, they
do not serve to make of record the registrations referenced therein. In re Jump
Designs LLC, 80 USPQ2d 1370, 1372 (“[T]he mere submission of a listing from the
TESS database is insufficient to make the referenced registrations of record.”). The
one third-party registration properly of record is now cancelled and is of little
probative value. In re Brown-Forman Corp., 81 USPQ2d 1284, 1286 n.3 (TTAB
2006) (expired or cancelled third-party registrations generally are evidence only of
the fact that the registrations issued). However, the fact that POWER PAWS
registered despite the existence of the LION PAWS registration is not changed by
its cancellation. Nonetheless, this holds little sway inasmuch as we must make our
determination on the record in this case. Here, the similarity between Applicant’s
mark TIGER PAW and the cited mark LION PAWS, as discussed below, is much
greater than the similarity between POWER PAWS and LION PAWS.

10 January 14, 2015 Request for Reconsideration, TSDR pp. 12-20.
Serial No. 86098046
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Applicant contends that because the word “paw” is weak, the differences
engendered by the first and more prominent words TIGER and LION are sufficient
to distinguish the marks. Specifically, Applicant asserts that:
[T]he Trademark Attorney’s position is tantamount to
granting a monopoly to the registrant for all marks using
the word “paw” and the name of a wild cat: lion, a tiger
and perhaps a cheetah, jaguar, leopard, bobcat, lynx,
ocelot, panther or puma.
App. Br. p. 9, 7 TABVUE 10.
The word “paw” is defined as:
1. the foot of an animal having claws. 2. The foot of any animal 3. Informal. The
human hand, especially one that is large, rough, or clumsy.11
While the term “paw” may generally suggest that the wrist supports are used for
the hand and wrist, this record does not support a finding that it is highly
suggestive. As to possible third-party use, the general statements in the
declarations are not sufficient to support a finding that the term is weak. Without
more specificity we cannot make a meaningful determination as to consumer
exposure to third-party use of the word “paw” in connection with wrist guards.
Moreover, the similarity between the marks does not rest solely on the common
element “paw.” Connotation and commercial impression alone may be sufficient to
find marks confusingly similar, despite differences in sound and appearance. The

11 www.dictionary.com based on RANDOM HOUSE DICTIONARY (2015). The Board may take
judicial notice of dictionary definitions. Univ. of Notre Dame du Lac v. J.C. Gourmet Food
Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983),
including online dictionaries that exist in printed format or regular fixed editions. In re Red
Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).

Serial No. 86098046
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Procter & Gamble Company v. Conway, 419 F.2d 1332, 164 USPQ 301 (CCPA 1970)
(MISTER STAIN confusingly similar to MISTER CLEAN); Hancock v. American
Steel & Wire Co. of New Jersey, 203 F.2d 737, 97 USPQ2d 330 (CCPA 1953)
(TORNADO confusingly similar to CYCLONE); In re M. Serman & Company, Inc.,
223 USPQ 52 (TTAB 1984) (CITY WOMAN confusingly similar to CITY GIRL); H.
Sichel Sohne, GmbH. v. John Gross & Co., 204 USPQ 257 (TTAB 1979) (BLUE
CHAPEL confusingly similar to BLUE NUN). Comparing the marks TIGER PAW
and LION PAWS we find that the similar connotation and commercial impression of
the paw of a large wild cat, combined with the similar structure of a two syllable
word in front of the virtually identical words PAW and PAWS, outweigh the
dissimilarity engendered by use of the name of a different wild cat.
In view thereof, this du Pont factor weighs in favor of finding a likelihood of
confusion.
Actual Confusion or Lack Thereof
Applicant has presented evidence in the form of declarations from individuals in
the industry attesting to the lack of any actual confusion. In addition to Applicant’s
president, the declarants include wholesale and retail distributors of athletic
equipment, including wrist supports (Dreary’s Gymnastic Supply, Extreme Athletic
Supply, Snowflake Designs), a manufacturer of gymnastics clothing (Snowflake
Designs) and a gymnastics facility owner (Park Avenue Gymnastics). They all attest
that they are very familiar with this industry, including the consumers of wrist
supports, and that they are not aware of any confusion between the TIGER PAW
Serial No. 86098046
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and LION PAWS marks. Some attest that their staff would have informed them if a
potential customer were confused between the brands.
The Examining Attorney categorically dismisses the declarations, stating:
These are essentially form statements that have no
probative value. The opinions given therein on the
ultimate question of law of likelihood of confusion should
be given no weight.
Ex. Att. Br., 9 TTABVUE 9.
It is correct that the ultimate question of law of likelihood of confusion remains
with the Board; however, the declarations do have probative value. “[T]he fact that
the affidavits may be similar in form and expression is of no particular significance
… since the affiants have sworn to the statements contained therein.” In re Flex-O-
Glass, Inc., 194 USPQ 203, 206 (TTAB 1977). Here the declarants are in the
industry, sell at the retail or wholesale level, or their clients use the athletic wrist
supports. We find them competent to attest to the marketing circumstances in this
industry, consumer perception and their own experience as to the lack of actual
confusion. Cf. In re Bose Corp., 216 USPQ 1001, 1005 (TTAB 1983), aff’d, 772 F.2d
866, 227 USPQ 1 (Fed. Cir. 1985).
Although we accord the declarations probative value, in the end we are
concerned with likelihood of confusion, and the lack of actual confusion, in
particular in an ex parte context, does not carry great weight. Majestic Distilling
Co., Inc., 65 USPQ2d at 1205 (internal citations omitted) (“The lack of evidence of
actual confusion carries little weight, especially in an ex parte context.”). See also In
re Bisset-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973). This is
Serial No. 86098046
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particularly true in cases where an Applicant has asserted that its actual trade
channels serve to obviate confusion. In this case, Mr. Jacob’s assertion that
registrant “does not sell products through distributors” whereas “[o]ver 65% of sales
of TIGER PAWS [sic] products are to distributors or other resellers,”12 submitted to
show that the respective products are in fact sold in different channels of trade,
undercuts the evidence of no actual confusion because it supports a finding that
there has been no meaningful opportunity for confusion to occur. Thus, the du Pont
factor of “the length of time during and conditions under which there has been
concurrent use without evidence of actual confusion” is neutral.
By contrast, the Examining Attorney contends that actual confusion has, in fact,
occurred and relies on the following excerpt from Applicant’s website to support that
conclusion:
Several customers over the years have asked about the
difference between Tiger Paw Wrist Supports v.
Lionpaws. I want to set the record straight. We used to
get several calls asking for Tiger Paws [sic], the customers
were looking for Lionpaws.13
The excerpt continues:
I decided to contact Lionpaws in an effort to become a
distributor. I finally found them after about 5 or 6 hours
of searching. I spoke with the owner and she agreed to let
US Glove Inc. become a distributor. During the time
frame that we were buying from Lionpaws I convinced the
owner to let us manufacture the wrist supports for them.

12 Mr. Jacob’s Declaration, January 14, 2015 Request for Reconsideration, TSDR p. 11. See
also Jacob’s Declaration, August 3, 2014 Response, TSDR p. 3.
13 August 20, 2014 Office Action, TSDR p. 9. We note the mark in the cited registration is
LION PAWS, however, registrant’s website also displays it as a compound word
LIONPAWS. Id. p. 7.
Serial No. 86098046
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Also during that timeframe I found out that Lionpaws
had been stamping Patent Pending on all of their wrist
supports, when in fact they were not [p]atented at all (the
owner confessed that they were not patented)..… We
proceeded to tool up to manufacture the wrist supports,
then Lionpaws changed their mind about letting us
manufacture for them. We had already invested lots of
time and money redesigning the product, so we decided to
continue with our plans. … Lionpaws calls us a knock off,
I say we completely redesigned the product. You be the
judge. 14
Mr. Jacob’s, Applicant’s president, explains:
That notice was published many years after the calls
referred to. It was published to explain why some old
customers who purchased wrist supports from US Glove
when it was a distributor of the wrist supports made by
RBJ Athletic Specialties that were sold under the mark
Lion Paws might think that US Glove was still selling the
RBJ Lion Paws product. It was made to clarify the market
place for the early customers who were familiar with our
sale of the Lionpaws product. US Glove believes that its
product is far superior to the RBJ product and the
commercial success of the TIGER PAW wrist product
supports that claim. For that reason it has attempted to
distance its early association with the RBJ product and to
do so by the difference in the trademarks that each
company uses. … In addition to being a distributor for
RBJ for a short while, we offered to manufacture the
product for RBJ and they initially agreed but later
rejected our offer. In the meantime we designed a new
product and began to sell our own product under the
trademark TIGER PAW. We then promptly discontinued
sale of the RBJ product. During the period of
approximately 21/2 years after we discontinued the
distribution of the RBJ Lion Paws product, we
encountered several instances where customers who had
earlier purchased Lion Paws asked for Lion Paws. We
informed the prospective purchaser that we no longer sold
Lion Paws and we had a new product that was superior in
quality and construction and it was called TIGER PAW.

14 Id., TSDR pp. 9-10.
Serial No. 86098046
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… These customer[s] were not confused by the marks.
They simply had not understood that US Glove had
discontinued selling the Lion Paws product and had
commenced selling our superior product sold under the
mark TIGER PAW.15
We cannot conclude from the excerpt on the website or Applicant’s explanation
that there were instances of actual confusion. Accordingly, we treat this du Pont
factor as neutral.
Balancing of Factors
In conclusion, because the marks are similar, the goods are identical and we
must presume the channels of trade and consumers overlap, we find that confusion
is likely between Applicant’s mark TIGER PAW and LION PAWS in the cited
registration. Although the conditions of purchase factor somewhat favors Applicant,
because these are not very expensive, complex goods with an involved purchasing
process, this factor does not outweigh the other du Pont factors. Cf. Edwards
Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1413 (TTAB 2010) (products
cost $14,000 and $47,000 respectively and testimony established that purchases of
both products involve significant study and negotiation).
Decision: The refusal to register Applicant’s mark TIGER PAW under Section
2(d) is affirmed.

15 Id.