Elegant Headwear Co., Inc.

Trademark Trial and Appeal Board

Jul 19, 2006

No. 76605639 (T.T.A.B. Jul. 19, 2006)

Mailed:
July 19, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Elegant Headwear Co., Inc.
________

Serial No.76605639
_______

Myron Amer of Myron Amer, P.C. for Elegant Headwear Co.,
Inc.

Rebecca L. Gilbert, Trademark Examining Attorney, Law
Office 113 (Chris Doninger, Managing Attorney).
_______

Before Seeherman, Holtzman and Kuhlke, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Elegant Headwear Co., Inc. has appealed from the
final refusal of the Trademark Examining Attorney to
register the mark shown below for “children’s ambidextrous
gloves.”1

1 Application Serial No. 76605639, filed August 4, 2004,
asserting first use and first use in interstate commerce on
January 12, 1995.

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76605639
2

The 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 mark so resembles
the mark MAGIC GLOVE, with the word GLOVE disclaimed,
previously registered for “fashion gloves for youths,”2
that, as used on applicant’s goods, it is likely to cause
confusion or mistake or to deceive. The Examining Attorney
has also required, pursuant to Section 6(a) of the
Trademark Act, 15 U.S.C. §1056(a), that applicant submit a
disclaimer of exclusive rights to ONE SIZE FITS ALL and
STRETCH GLOVES and STRETCHES TO ALL SIZES FOR A SUPER FIT
apart from the mark as shown.

2 Registration No. 2090700, issued August 26, 1997. Section 8 &
15 affidavits accepted and acknowledged.
Ser No. 76605639
3
The appeal has been fully briefed. Applicant did not
request an oral hearing.
We turn first to the requirement for a disclaimer.
Section 6(a) of the Trademark Act provides, inter alia,
that the Director may require the applicant to disclaim an
unregistrable component of a mark otherwise registrable.
Section 2(e)(1) of the Act prohibits the registration of a
mark that is merely descriptive of the identified goods.
In the first Office action, the Examining Attorney
required that applicant submit a disclaimer of ONE SIZE
FITS ALL and STRETCH GLOVES and STRETCHED TO ALL SIZES FOR
A SUPER FIT. The Examining Attorney subsequently explained
that the required disclaimer used the word STRETCHED
because applicant’s original drawing, later amended, was so
smudged that she was unable to ascertain that the lettering
was actually STRETCHES. In response to this disclaimer
requirement, applicant submitted a disclaimer (in the
response filed July 18, 2005) of ONE SIZE FITS ALL and
STRETCH GLOVES and STRETCH TO ALL SIZES FOR A SUPER FIT.
We note that the disclaimer used the word STRETCH TO ALL
SIZES FOR A SUPER FIT, rather than the required STRETCHED
TO ALL SIZES FOR A SUPER FIT. The Examining Attorney
subsequently required a disclaimer of STRETCHES TO ALL
SIZES FOR A SUPER FIT, but applicant then argued against a
Ser No. 76605639
4
disclaimer of STRETCH, in both its request for
reconsideration and its briefs. It appears to us that
applicant is not aware that the problem with its offered
disclaimer is that it has used the word STRETCH in the TO
ALL SIZES FOR A SUPER FIT phrase, while the Examining
Attorney has required the word STRETCHES to conform to the
word used in the mark. Rather it appears that applicant is
under the impression that the issue is whether the word
STRETCH, in the phrase STRETCH GLOVES, should be
disclaimed, and that it does not realize that it had
offered a disclaimer of STRETCH GLOVES previously.
Because applicant’s arguments with respect to the
disclaimer relate only to the word STRETCH, and because
applicant has already disclaimed exclusive rights to ONE
SIZE FITS ALL, GLOVES and STRETCH [sic] TO ALL SIZES FOR A
SUPER FIT, we will confine our comments to the
appropriateness of the word STRETCH as it is used with
GLOVES. In any event, we confirm that the words ONE SIZE
FITS ALL, STRETCHES TO ALL SIZES FOR A SUPER FIT, and the
word GLOVES are merely descriptive and/or generic and the
requirement for a disclaimer of those words/phrases is
appropriate.
We also find that the word STRETCH as it is used in
applicant’s mark is merely descriptive of the goods.
Ser No. 76605639
5
Applicant has submitted a copy of the patent for its gloves
which describes them as follows (emphasis added):
A glove of stretch construction
material so that one size fits all, in
which the stretch is used to advantage
for its utility to adjust for the
discrepancy between the natural and
glove construction positions of the
thumb and the glove is therefore
ambidextrous, so the glove used as a
pair has four displays, in which an
inside color surface is one, an outside
contrasting color surface is two, and
contrasting colors on one hand and then
on the other hand are three and four,
the change of the color surfaces being
achieved by turning the glove inside
out.
***
Using the stretch of “one size fits
all” ….

The patent, thus, clearly states that a significant
feature of applicant’s goods is its ability to stretch so
that “one size fits all.” The stretch feature is also
touted in applicant’s mark with the phrases ONE SIZE FITS
ALL and STRETCHES TO ALL SIZES FOR A SUPER FIT. A mark is
merely descriptive if, as applied to the goods or services
in question, it describes a significant ingredient,
quality, characteristic, function, feature, composition,
purpose, attribute, use or subject matter of such goods or
services. In re Engineering Systems Corp., 2 USPQ2d 1075
(TTAB 1986). Because the evidence shows that STRETCH
Ser No. 76605639
6
directly conveys information about a significant feature of
applicant’s gloves, namely, that they are made of a stretch
fabric and have the ability to stretch to fit all sizes,
STRETCH is merely descriptive of the goods, and must be
disclaimed.
This brings us to the second basis for refusal of
registration, that applicant’s mark is likely to cause
confusion with MAGIC GLOVE for fashion gloves for youths.
Our determination of this issue 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 (CCPA 1973). See also, In
re Majestic Distilling Company, 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 and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976). See also, In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Applicant’s goods are identified as children’s
ambidextrous gloves while the registrant’s goods are
identified as fashion gloves for youths. The Examining
Attorney has submitted with her brief dictionary
Ser No. 76605639
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definitions of “youth” and “children.”3 Youth is defined,
inter alia, as “3b. Young people considered as a group.”
“Child” (plural “children”)is defined, inter alia, as “1. a
boy or girl from the time of birth until he or she is an
adult.” Gloves for “youths,” thus, would include gloves
for children. Moreover, fashion gloves would include
ambidextrous gloves. The term “fashion gloves” is used to
differentiate these gloves from work gloves or gardening
gloves or the like. We also note that in the patent
applicant has described its gloves as “reversible
interchangeable stretch fashion glove” (emphasis added).
Accordingly, the identification of “fashion gloves for
youths” in the cited registration must be deemed to
encompass applicant’s “children’s ambidextrous gloves.”
The du Pont factor of the similarity of the goods therefore
favors a finding of likelihood of confusion.
Because the goods are legally identical, they must
also be deemed to be sold in the same channels of trade to
the same classes of consumers which, for gloves, would be
the public at large. This factor, too, favors a finding of
likelihood of confusion.

3 The American Heritage Dictionary of the English Language, 4th
ed. © 2000. The Board may take judicial notice of dictionary
definitions. University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser No. 76605639
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We turn next to a consideration of the marks, keeping
in mind the following principles:
When marks would appear on virtually
identical goods or services, the degree
of similarity necessary to support a
conclusion of likely confusion
declines. Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992).

In articulating reasons for reaching a
conclusion on the issue of likelihood
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 a
consideration of the marks in their
entireties. In re National Data Corp.,
753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).

The test is not whether the marks can
be distinguished when subjected to a
side-by-side comparison, but rather
whether the marks are sufficiently
similar in terms of their overall
commercial impressions that confusion
as to the source of the goods or
services offered under the respective
marks is likely to result. The focus
is on the recollection of the average
purchaser, who normally retains a
general rather than a specific
impression of trademarks. See Sealed
Air Corp. v. Scott Paper Co., 190 USPQ
106 (TTAB 1975).

The word MAGIC is clearly the dominant word in the
registered mark. The word GLOVE is generic, and therefore
has no source-indicating value. In applicant’s mark, the
Ser No. 76605639
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descriptive phrases ONE SIZE FITS ALL and STRETCHES TO ALL
SIZES FOR A SUPER FIT are, similarly, entitled to less
weight. The words MAGIC STRETCH GLOVES are depicted in the
largest letters, and are visually the most striking part of
the mark. Here, too, the word GLOVES is entitled to less
weight in the overall comparison of the marks because it is
a generic term for the goods. The word STRETCH, as we have
already discussed, is merely descriptive. The descriptive
meaning of the word is emphasized by the design element,
which is a visual representation of the act of stretching
the material. While the prominent appearance of STRETCH
makes it a noticeable part of the mark, and therefore may
not be discounted, consumers are still likely to view MAGIC
as the source-indicating part of the mark. Certainly when
the mark is spoken it will be referred to as MAGIC STRETCH
GLOVES without any emphasis on the word STRETCH; rather,
STRETCH GLOVES will be considered as simply a phrase
describing the product, namely, that they are stretch
gloves. The connotations of the marks are identical, and
they convey similar commercial impressions. Thus, despite
the fact that there are visual differences in the marks
caused by the additional descriptive phrases and the
prominent display of the word STRETCH with the design
element, these differences are outweighed by the
Ser No. 76605639
10
similarities in pronunciation, connotation and commercial
impression. Consumers who are familiar with the
registrant’s gloves bearing the trademark MAGIC GLOVE are
likely to view applicant’s mark as merely a variation of
that mark, and still indicating source in the same entity.
Finally, as noted above, the consumers for gloves are
the general public. Gloves are relatively inexpensive
items; they are not the type of goods that are purchased
with a great deal of care or deliberation. Accordingly,
consumers will not engage in extended thought or analysis
as to whether the emphasis on the word STRETCH in
applicant’s mark might indicate a different source for the
gloves than the source of gloves bearing the mark MAGIC
GLOVE per se. On the contrary, they are likely to view the
prominent placement of the word STRETCH as merely
emphasizing the stretching feature of the gloves.
Applicant and the Examining Attorney have not
discussed any of the remaining du Pont factors. To the
extent that any are applicable, they must be considered to
be neutral. After considering all of the relevant du Pont
factors, we find that the use of applicant’s mark for
children’s ambidextrous gloves is likely to cause confusion
with MAGIC GLOVE for fashion gloves for youths.
Ser No. 76605639
11
Decision: The requirement for a disclaimer of ONE
SIZE FITS ALL and STRETCH GLOVES and STRETCHES TO ALL SIZES
FOR A SUPER FIT is affirmed. The refusal of registration
on the ground of likelihood of confusion in view of
Registration No. 2090700 is also affirmed.