Banom, Inc.

Trademark Trial and Appeal Board

May 19, 2008

No. 78869262 (T.T.A.B. May. 19, 2008)

Decision Mailed:
May 19 2008
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Banom, Inc.
________

Serial No. 78869262
_______

Stanley H. Cohen of Caesar, Revise, Bernstein, Cohen & Plotilow,
Ltd. for Banom, Inc.

Paul C. Crowley, Trademark Examining Attorney, Law Office 110
(Chris A. F. Pedersen, Managing Attorney).
_______

Before Quinn, Hohein and Walters, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Banom, Inc. has filed an application to register the
mark "GRIP-RITE" on the Principal Register in standard character
form for "protective gloves for industrial use" in International
Class 3.1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its goods, so resembles the
mark "GRIPRITE," which is registered on the Principal Register in

1 Ser. No. 78869262, filed on April 25, 2006, which is based on an
allegation of a bona fide intention to use such mark in commerce.

THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser. No. 78869262
2
standard character form for "footwear, namely, shoes and boots"
in International Class 25,2 as to be likely to cause confusion,
or to cause mistake, or to deceive.
Applicant has appealed and briefs have been filed. We
reverse the refusal to register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). See also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). However, as indicated in Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976), in
any likelihood of confusion analysis, two key considerations are
the similarity or dissimilarity in the goods at issue and the
similarity or dissimilarity of the respective marks in their
entireties.3 See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). Here, because
applicant's mark and registrant's mark are essentially identical
in all respects as to sound, appearance, connotation and
commercial impression,4 the primary focus of our inquiry is

2 Reg. No. 2,942,964, issued on April 19, 2005, which sets forth a date
of first use anywhere and in commerce of April 15, 2003.

3 The court, in particular, pointed out that: "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."
192 USPQ at 29.

4 Applicant, we note, states in its initial brief that "[i]t is
admitted that the marks in issue are nearly identical."

Ser. No. 78869262
3
accordingly on the similarity or dissimilarity of the respective
goods and their established, likely to continue channels of
trade, although the strength or weakness of the marks at issue,
including the number and nature of any similar marks in use on
similar goods, is also a factor to be considered in assessing
whether there is a likelihood of confusion.
Turning to the latter factor first, applicant argues in
its initial brief that "the mark GRIPRITE is a highly diluted
mark, having been registered by numerous others" as shown by a
list made of record by applicant from its search of "prior
registrations for the mark GRIPRITE ... [or GRIP-RITE as]
determined from the TESS database." Applicant maintains that
such evidence shows "numerous different companies owning
registrations for the mark GRIPRITE [or GRIP-RITE}." While
acknowledging that the mere existence of the third-party
registrations "does not prove that the marks covered by the
registrations are in use," applicant contends that such
registrations do serve to prove that "the mark is highly diluted
and has been adopted because of its suggestive connotation." In
view thereof, applicant insists that "the mark GRIPRITE is not a
distinctive mark, which might entitle it to a broad range of
protection." Instead, while conceding that "the marks in issue
are nearly identical," applicant urges that "in view of the
dilute nature of the registered mark, it is entitled to only a
minimal scope of protection" and that, given "the wide
differences in the goods at issue, no likelihood of confusion
will result."
Ser. No. 78869262
4
The Examining Attorney, while acknowledging in his
brief that "the term, 'GRIPRITE,' suggests the [respective] goods
have some appropriate level of grasping ability," argues that
even if applicant has shown that the cited mark is weak, such
mark is "still entitled to protection against registration by a
subsequent user of the same or similar mark for the same or
closely related goods," citing Hollister Inc. v. Ident A Pet,
Inc., 193 USPQ 439 (TTAB 1976). In addition, the Examining
Attorney points out that (italics in original):
[A] review of the third-party
registrations supplied by the applicant in
support of its argument that the term,
GRIPRITE, is diluted, yields evidence that
the mark is, in fact, not diluted. Of the
twenty-five (25) active registrations
referenced by the applicant, twenty-one (21)
of those registrations are owned by a single
registrant for, primarily, metal fasteners
and construction tools. The remaining four
(4) registrations are [also] for goods
completely unrelated to the goods at issue in
the instant case. Third-party registrations
may be of value to the extent that they
indicate that a particular word, feature or
design has been adopted and registered by
others in a particular field ... and, thus,
that registration of a mark consisting of
that word or design or containing that
feature, for goods ... in the same or related
field[,] should be given more restricted
scope of protection. Pizza Inn, Inc. v.
Russo, 221 USPQ 281 (TTAB 1983). However,
such is not the case here and, based on the
foregoing, applicant's argument that the mark
is weak and/or diluted is without merit.

Suffice it to say that a mark may be shown to be weak
extrinsically, such as by its widespread adoption and/or use by
others as a mark for similar goods and/or as a part of marks for
the same goods, or intrinsically in view of its highly suggestive
connotation in relation to its associated goods. Here, even
Ser. No. 78869262
5
though, as contended by the Examining Attorney, it appears that
applicant has failed to establish the extrinsic weakness of the
mark "GRIPRITE" with respect to the cited mark, it is still the
case, as acknowledged by the Examining Attorney, that such mark
is intrinsically weak in that, like applicant's mark, it is
highly suggestive of the ability of the respective goods to
provide a good or "right" grip on either a surface, as in the
case of footwear such as shoes and boots, or an object, as in the
case of protective gloves for industrial use. Consequently,
while both applicant's and the cited registrant's marks share the
same highly suggestive connotation, such identity is likely to
cause confusion only if the respective goods are considered to be
related in a commercial sense, which is the primary focus of our
inquiry herein.
Turning, therefore to the issue of the similarity or
dissimilarity of the respective goods, it is well established
that the issue of likelihood of confusion must be determined on
the basis of the goods as they are set forth in the application
and the cited registration. See, e.g., Octocom Systems Inc. v.
Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990); Canadian Imperial Bank of Commerce, N.A.
v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815-16 (Fed.
Cir. 1987); CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199
(Fed. Cir. 1983); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ
937, 940 (Fed. Cir. 1983); and Paula Payne Products Co. v.
Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973). Moreover, as the Examining Attorney correctly observes in
Ser. No. 78869262
6
his brief, it is well established that goods need not be
identical or even competitive in nature in order to support a
finding of likelihood of confusion. It is instead sufficient
that the goods 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
situations that would give rise, because of the marks employed in
connection therewith, to the mistaken belief that they originate
from or are in some way associated with the same entity or
provider. See, e.g., Monsanto Co. v. Enviro-Chem Corp., 199 USPQ
590, 595-96 (TTAB 1978); and In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). Furthermore, as
the Examining Attorney also correctly notes, where--as here--the
marks at issue are essentially identical, the relationship
between the respective goods "need not be as close to support a
finding of likelihood of confusion as might apply where
differences exist between the marks." See, e.g., Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992),5 cert. denied, 506 U.S. 1034 (1994);
and In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001).
In light of such principles, the Examining Attorney
contends that "the goods of the applicant and registrant are
sufficiently related that there is a likelihood of confusion as
to source," arguing in particular that:

5 As stated by the court: "When marks would appear on virtually
identical goods ..., the degree of similarity [of the marks]
necessary to support a conclusion of likely confusion declines."

Ser. No. 78869262
7
The applicant's "protective gloves for
industrial use" and the registrant's
"footwear, namely, shoes and boots," are all
items that are worn by the users. As items
that are worn by the users, the goods of both
the applicant and registrant would be present
or marketed in the same channels of trade.

As to applicant's assertion that its goods are "protective gear
used in industry" and thus, unlike items of clothing or articles
of apparel, including footwear, which "would normally be
purchased wherever consumer goods are available," would instead
be purchased by "the specific industries that use Applicant'
gloves," including "paper manufacturing, automobile interior
manufacturing and industrial woodwork," the Examining Attorney
maintains that:
Since the identification of the registrant's
goods is very broad, it is presumed that the
registration encompasses all goods of the
type described, including those in the [same
field as] applicant's more specific
identification, that they move in all normal
channels of trade and that they are available
to all potential customers. In re Elbaum,
211 USPQ 639, 640 (TTAB 1981) ....

Applying the above to the facts in the
instant case, registrant's "footwear, namely,
shoes and boots," is sufficiently broad an
identification as to encompass such goods for
industrial use including use by customers in
the industries referenced by the applicant.
Therefore, the goods ... [at issue] are of a
type that would be encountered by the same
purchasers under circumstances that would
give rise to the mistaken belief that the
goods ... come from a common source.

As support for his position, the Examining Attorney has
made of record copies of several use-based third-party
registrations (of which we find only the following five--rather
than ten as asserted by the Examining Attorney--to be the most
Ser. No. 78869262
8
pertinent)6 for marks which are variously registered for both
"protective clothing, ... gloves for industrial use, [and]
protective footwear" in International Class 9 and "clothing,
namely, gloves, shoes, ... [and] boots" in International Class
25"; "protective industrial boots; ... [and] protective gloves
for industrial use" in International Class 9 and "boots" in
International Class 25; "protective gloves for industrial use" in
International Class 9 and "general work gloves ... [and]
rainwear, namely[,] ... boots" in International Class 25;
"protective work gloves" in International Class 9 and "apparel,
namely, ... shoes, boots, [and] gloves" in International Class
25; and "protective gloves, namely, welder's gloves, heat and
fire resistant gloves and cult, abrasion resistant gloves;
protective industrial shoes and boots" in International Class 9
and "work clothing, namely, ... rain boots" in International
Class 25. Although it is the case that such registrations are
not evidence that the different marks shown therein are in use or
that the public is familiar with them, the Examining Attorney is
nonetheless correct that the registrations have some probative
value to the extent that they serve to suggest that the goods

6 While the Examining Attorney appears to rely on a number of
registrations for goods which are broadly identified as "protective
clothing" or "protective gloves" as necessarily encompassing
"protective gloves for industrial use," we elect not to do so inasmuch
as the registrations variously set forth such specifically different
items as "protective clothing for indoor and outdoor use, namely, ...
gloves"; "protective gloves and gas detectors"; and "protective
clothing, namely, crash helmets, helmet visors, chin guards, gloves,
reinforced boots, shoulder pads, mouth guards, protective nylon and
leather pants, and shoulder protectors." Likewise, we do not consider
registrations for "gloves and mittens, ski gloves and driving gloves"
as including "protective gloves for industrial use."

Ser. No. 78869262
9
listed therein, including in particular protective gloves for
industrial use and footwear, namely, shoes and/or boots, are of
the kinds which may emanate from a single source. See, e.g., In
re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1217-18
(TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785-86 (TTAB 1993); and In re Mucky Duck Mustard Co. Inc., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d as not citable
precedent, No. 88-1444 (Fed. Cir. Nov. 14, 1988). In view
thereof, the Examining Attorney maintains that "the specific
third-party registrations referenced above do, in fact, evidence
the relatedness of the goods" at issue in that they show that
"entities that provide industrial or protective wearing apparel
also provide non-industrial or protective wearing apparel as
well."
In addition, the Examining Attorney relies in support
of his position upon "Internet evidence of three (3) entities
that provide both goods in the nature of the goods of the
applicant and registrant in the instant case."7 Consisting of
excerpts from websites for northernsafety.com, shoesforcrews.com
and unitedglove.com, the evidence shows various brands of
protective gloves and other kinds of work gloves being offered by
each on-line retailer of such products along with different
brands of street shoes and/or work boots. While the Examining

7 Contrary to the suggestion in applicant's initial brief that such
evidence is untimely under Trademark Rule 2.142(d), the Examining
Attorney is correct in his brief that he "is entitled to introduce
additional evidence in an Office action denying an applicant's request
for reconsideration." See TBMP §1207.04 (2d ed. rev. 2004) and TMEP
§715.03 (5th ed. 2007). The evidence therefore is properly of record
and may be considered for whatever probative value it may have.
Ser. No. 78869262
10
Attorney acknowledges that applicant "argues, in effect, that the
evidence fails to support that the goods are related because the
evidence fails to show goods identical to that of the applicant
and registrant in the instant case," the Examining Attorney
nonetheless urges that such evidence is an indication that
applicant's and registrant's goods are related in a commercial
sense and thus that a likelihood of confusion would exist if sold
under the marks at issue herein.
Although admittedly somewhat of a close question, we
are constrained, however, to agree with applicant that, on this
record, confusion as to origin or affiliation of the respective
goods has not been demonstrated to be likely. In particular, we
concur with applicant that the respective goods are specifically
different and are likely to be sold through different channels of
trade. Moreover, as previously discussed, the marks at issue are
highly suggestive and, thus, the scope of protection to which
such are entitled is much less than would be the case for more
distinctive or arbitrary marks. As applicant persuasively
argues, its goods simply have not been shown to be "closely
related to the registrant's goods." Specifically, as applicant
points out in its initial brief:
The registrant's goods are footwear, namely,
shoes and boots. These goods are wearing
apparel, commonly bought in a consumer shoe
store.

Applicant's goods are not items of
clothing. They are protective gear used in
industry. They are not apparel.

Ser. No. 78869262
11
Whereas footwear would normally be
purchased wherever consumer goods are
available, protective gloves for industrial
use are purchased by the industries that use
such gloves. ....

Accordingly, applying the criteria set
forth ... [above], the goods in issue would
not normally be encountered by the same
purchasers under circumstances that would
give rise to the mistaken belief that the
goods come from a common source.

Clearly, on this record, while ordinary consumers would
be purchasers of registrant's footwear, namely, shoes and boots
as items of wearing apparel, nothing demonstrates that they would
also be purchasers of applicant's protective gloves for
industrial use, which are safety equipment bought by the
industries in which such goods are used as protection for their
employees who need such equipment. Furthermore, while
registrant's footwear, namely, shoes and boots in International Class
25 arguably includes work shoes and work boots, which concededly
have use beyond that of just wearing apparel, it is still the
case that such goods are not the kinds of protective or safety
apparel which, like applicant's protective gloves for industrial
use, the record shows are generally classified in International
Class 9 and, thus, registrant's goods do not include the types of
protective or safety gear which would, like applicant's goods, be
purchased by the industries in which those goods are used. As
applicant repeatedly emphasizes, "the goods in issue are not
encountered by the same consumers under the same purchasing
circumstances," at least as evidenced by the limited record
herein.
Ser. No. 78869262
12
Moreover, neither the third-party registrations nor the
Internet or website excerpts demonstrate that applicant's goods
and registrant's goods share a common channel of trade. In
particular, the website excerpts are at best analogous to a mass
merchandiser, in which different products are sold at retail in
different sections of the store. As applicant accurately
observes in its initial brief with respect to such evidence:
The first Web site is for a company
identified as NORTHERN SAFETY. Based on the
Web pages, the company sells a wide variety
of safety equipment, including safety gloves
and safety boots.

The shoes and boots of the [cited]
registration are for wearing apparel. As
pointed out above, these are consumer
products, whereas Applicant's protective
gloves are specialty products, sold through
industrial channels of trade.

The Web pages for a company identified
as SHOES FOR CREWS appears to sell a wide
variety of products, including footwear ....
The trademark used on the gloves, which do
not appear to be industrial gloves, is
different from the trademark used on all of
the footwear products.

The third Web site is for a company
identified as UNITED GLOVE. This company
appears to sell a wide variety of gloves.
Although there are rubber boot shown on the
Web site, these appear to be snow boots or
wader boots. No trademark is associated with
the boots. Nothing on this Web site shows
that a single trademark is used for both the
boots and the gloves.

In summary, none of the Web sites shows
that the use of a trademark on protective
gloves for industrial use would be likely to
cause confusion with a trademark used on
shoes and boots.

Given, therefore, the absence of any significant evidence
demonstrating that protective gloves for industrial use and
Ser. No. 78869262
13
footwear, namely, shoes and boots, are typically sold in the same
channels of trade under the same or substantially similar marks,
there simply has been no showing that circumstances are conducive
to a likelihood of confusions.
We accordingly conclude on this record that
contemporaneous use by applicant of its highly suggestive "GRIP-
RITE-" mark in connection with its "protective gloves for
industrial use," would not be likely to cause confusion with
registrant's use of the essentially identical, highly suggestive
"GRIPRITE" mark in connection with its "footwear, namely, shoes
and boots."
Decision: The refusal under Section 2(d) is reversed.