Red Wing Shoe Co., Inc.

Trademark Trial and Appeal Board

Jan 31, 2001

No. 75340358 (T.T.A.B. Jan. 31, 2001)

Hearing:
October 17, 2000
1/31/01
UNITED STATES
Trademark
In re Red
Seri
Paul A. Welter of Mercha
Company, Inc.
Shari Sheffield, Tradema
109 (Ronald Sussman, Man
Before Cissel, Chapman a
Judges.
Opinion by Cissel, Admin
On August 13, 1997,
referenced application t
on the Principal Registe
in Class 25. The applic
IS NOT
THIS DISPOSITION
CITABLE AS PRECEDENT
OF THE T.T.A.B.Paper No. 19
RFC
PATENT AND TRADEMARK OFFICE
________
Trial and Appeal Board
________
Wing Shoe Company, Inc.
________
al No. 75/340,358
_______
nt & Gould P.C. for Red Wing Shoe
rk Examining Attorney, Law Office
aging Attorney).
_______
nd Wendel, Administrative Trademark
istrative Trademark Judge:
applicant filed the above-
o register the mark shown below
r for “footwear; utility clothing,”
ation was based on applicant’s
Ser. No. 75/340,358
2
assertion that it possessed a bona fide intent to use the
mark on these goods in commerce. Prior to any examination
of the application by the Patent and Trademark Office,
applicant filed an amendment to allege use as of April 1,
1997 and use in interstate commerce as of the same date.
The Examining Attorney refused registration under
Section 2(d) of the Act on the ground that applicant’s
mark, as applied to the goods set forth in the application,
so resembles the mark “WERX,” which is registered1 for
“utility gloves made of fabric coated with rubber or
similar composition,” in Class 25, that confusion is
likely. The marks in several other registrations and co-
pending applications were also raised as bars and potential
bars to registration of applicant’s mark, but they were
subsequently withdrawn.
Applicant responded to the refusal to register with an
amendment to the identification-of-goods clause and
argument that confusion is not likely. As amended, the
goods were stated to be “footwear, namely work boots and
shoes; utility clothing, namely t-shirts, hats and
stockings.” Applicant included with its response copies of
printouts from a private database of registration
1 Reg. No. 604,513, issued to PDL Trust on April 4, 1955; renewed
twice.
Ser. No. 75/340,358
3
information listing third-party marks asserted to be
registered for goods in Class 25. These marks include
“WORK IN PROGRESS” for “clothing for women, children, and
toddlers, namely sweaters”; “WORK EXPRESS" for "shoes,
sandals and hats"; "WORK 1" and design for "shoes and
boots"; "WORK AT IT!" for "clothing, namely t-shirts";
"Work At It!" for "knit shirts, caps and hats,” and “retail
clothing stores featuring t-shirts sweat shirts, knit
shirts, caps and hats"; and "WORK IT" for "clothing, namely
baseball caps, t-shirts, knit shirts, sweat shirts, gym
shorts, sweat shorts, and sweat pants."
The Examining Attorney was not persuaded by
applicant’s evidence or arguments, and the second Office
Action made final the refusal to register under Section
2(d) of the Act based on the cited registration of the mark
“WERX.” Attached to the final refusal were copies of
third-party registrations wherein both protective gloves
and other clothing items such as boots and hats are listed
as the products with which the particular marks are
registered. Also submitted were excerpts from published
stories retrieved from the Nexis
database demonstrating
that protective gloves and the items listed in the
application are used together by the same people when they
are working.
Ser. No. 75/340,358
4
Applicant responded with a request for reconsideration
and another amendment to the identification-of-goods
clause. As amended, the application identified the goods
as "footwear, namely work boots and shoes, and not utility
gloves." Submitted with the request for reconsideration
were additional exhibits, including printed advertising
materials for applicant's boots, copies of pages from
registrant's web site, and copies of third-party
registration information obtained from the U.S. Patent and
Trademark Office Trademark Text and Image Database. Each
of the marks for which information is provided includes the
word "work" or "works" as a component, and the goods
listed in each registration include items of clothing.
Responsive to the request for reconsideration, the
Examining Attorney accepted the amended identification of
goods, but maintained the final refusal to register under
Section 2(d) the Act. Attached to this response were
copies of pages from applicant's web site showing the
dealers and distributors through which applicant's products
are available. Other information retrieved from the
Internet by the Examining Attorney demonstrates that
several of the listed distributors for registrant's gloves
also sell protective work shoes or work boots.
Ser. No. 75/340,358
5
Applicant timely filed a notice of appeal. Both
applicant and the Examining Attorney filed briefs, and an
oral hearing was conducted before the Board at applicant's
request.
Based on careful consideration of the arguments and
the record before us in this appeal, as well as the
relevant legal precedent, we find that the refusal to
register is appropriate in this case. Confusion is likely
because the marks create similar commercial impressions, as
applied to the products specified in the registration and
application, respectively, and those goods are commercially
related in such a way that purchasers of them are likely to
assume that the use of similar trademarks on them is an
indication that they emanate from the same source.
Citing In re E.I. du Pont de Nemours & Co., 476 F.2d
1357 (CCPA 1973), applicant submits that there is no
likelihood of confusion because the marks "are neither
identical nor so similar in overall appearance,
connotation, or commercial impressions as to cause
confusion.” Applicant asserts that "[t]he goods of the
parties [sic] and the normal channels of trade for the
goods differ, and the purchasers of each parties' [sic]
goods are sophisticated and unlikely to make impulse
Ser. No. 75/340,358
6
purchases or to be confused as to the source of the goods."
(Brief p. 3).
We disagree. To the contrary, as noted above, the
commercial impressions created by these two marks are quite
similar, and the goods are related.
Turning first to the marks, under the du Pont case,
supra, in order to determine whether confusion is likely,
we must compare the marks in their entireties for
similarities in sound, appearance, meaning and connotation.
Similarity in any one of these elements is sufficient to
find a likelihood of confusion. In re Mack, 197 USPQ 755
(TTAB 1977). Although the marks must be compared in their
entireties, greater weight may be given to a dominant
feature in any given mark. In re National Data Corp., 224
USPQ 749 (Fed. Cir. 1985). The words or literal portions
of marks generally have more source-identifying
significance than do the designs in marks which combine the
two. In re Appetito Provisions Inc., 3USPQ2d 1553 (TTAB
1987); and In re International Components Corp., 191 USPQ
653 (TTAB 1976). Generally speaking, the addition of a
design element does not eliminate the similarity between
marks which have common literal portions. Coca-Cola
Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d
556, 188 USPQ 105 (CCPA 1975).
Ser. No. 75/340,358
7
When these principles are applied to the facts
presented by the instant case, it is clear that the mark
sought to be registered is similar in sound and connotation
to the registered mark and therefore creates a commercial
impression which is similar to that created by the cited
registered mark. The dominant portion of applicant's mark
is the term "WORX." It is this word that will be used when
the goods are requested, promoted, or recommended.
Although the road-work style sign design on which this term
is presented cannot be ignored, the design serves to
emphasize the fact that the literal term in applicant's
mark is the phonetic equivalent of the word "WORKS." The
cited registered mark, "WERX," is also the phonetic
equivalent of "WORKS." The Examining Attorney made of
record excerpts from dictionary pronunciation guides which
establish that the letters "ERK" and the letters "ORK" are
pronounced the same way.
Applicant argues that the term "WORX" is entitled to
only a narrow scope of protection because there are other
registered marks in Class 25 which contain the word "WORK."
The third-party registrations, however, are for marks which
present completely different commercial impressions from
the impression created by either the mark applicant seeks
to register or the cited registered mark. Most of them
Ser. No. 75/340,358
8
contain additional word elements, e.g., “WORK IN PROGRESS,”
“WORK EXPRESS,” and “Work At It.” As the Examining
Attorney points out, the “X” at the end of applicant’s mark
and registrant’s mark is a very distinctive feature and
helps in these marks create commercial impressions which
are are similar to each other, but separate and distinct
from those created by any of cited third-party registered
marks cited by applicant. In any event, third-party
registrations are not persuasive that confusion is not
likely in this case because, without evidence or testimony
concerning the extent of the use and promotion of the marks
therein, the registrations themselves do not provide a
basis upon which we could conclude that the public has
become so familiar with such marks that they look to small
differences between them in order to distinguish among
them. The Conde Nast Publications, Inc., v. Miss Quality,
Inc., 184 USPQ 422 (CCPA 1975).
Additionally, we note that applicant’s mark is also
similar to the registered mark in connotation. As noted
above, both marks are essentially misspellings of the word
“WORKS.” Applicant’s goods include “work boots.” The text
made of record by applicant from the web site of registrant
states that registrant’s gloves “have already taken the
precision assembly market by storm wherever working hands
Ser. No. 75/340,358
9
need lightweight protection…” The goods of both applicant
and registrant are clearly intended to be used by people
who are working. In this sense, both marks are not only
suggestive, they both make the same suggestion.
The second step in our analysis of the issue of
likelihood of confusion is whether the goods specified in
the registration are related to those set forth in the
application in some manner, or the conditions surrounding
their marketing is such that they could be encountered by
the same purchasers under circumstances that could give
rise to the mistaken belief that the goods come from a
single source. In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
The goods in the instant case clearly are related. As
noted above, the Examining Attorney made of record evidence
showing that the same businesses that distribute
registrant’s gloves also sell boots and protective
footwear. The excerpted articles and the third-party
registrations listing both types of products establish that
consumers have a basis upon which to assume that similar
marks on these products indicate that they come from the
same source. In re Albert Trostel & Sons Co., 29 USPQ2d
1783 (TTAB 1993).
Ser. No. 75/340,358
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Applicant’s argument that confusion is unlikely
because the purchasers of these products are sophisticated
is not well taken. Simply put, there is no support for it
in this record. Applicant has not presented any evidence
to show that the purchasers of applicant’s or registrant’s
goods are any more sophisticated than the ordinary
purchasers of any other retail goods, nor has applicant
supported its argument that confusion is not likely because
purchasers of applicant’s footwear would know that
applicant manufactures only footwear. As identified in the
application and registration, respectively, these goods
would seem to be appropriate for ordinary consumers who
need protective gear for their hands and feet in order to
accomplish particular types of work in comfort and safety.
Moreover, even if we were presented with evidence that only
technically sophisticated, particularly safety-conscious
technicians purchase these goods, we would not be convinced
that confusion is unlikely. The fact that purchasers are
sophisticated or knowledgeable in a particular field does
not necessarily mean that they are sophisticated or
knowledgeable in the field of trademarks or that they are
immune from source confusion. See In re Decombe, 9 USPQ2d
1812 (TTAB 1998). As the Examining Attorney points out,
the issue is not whether there is likely to be confusion
Ser. No. 75/340,358
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between the products, but rather whether confusion as to
the source of the products is likely because of the similar
marks used on them. In re Rexel Inc., 223 USPQ 831 (TTAB
1984). Even if applicant had established some basis for us
to conclude that applicant's customers believe that
applicant only produces shoes and boots, our ruling that
confusion is likely would not change. Nothing would
prevent applicant from expanding its product line in the
future to include other items of protective clothing, such
as gloves, in the future.
Even if we had doubt as to whether confusion is
likely, we would have to resolve such doubt in favor or the
registrant, and against applicant, who, as the second
comer, had the duty to select a mark that is unlikely to
cause confusion with one that is already in use on related
goods. Squirrel Brand Co. v. Green Gables Investment Co.,
dab Green Gables Nut Farms, 223 USPQ 154 (TTAB 1984).
In summary, confusion is likely because applicant’s
mark, when considered in its entirety, creates a commercial
impression which is very similar to that which is created
by the registered mark, and the goods set forth in the
registration are commercially related to those specified in
the application.
Ser. No. 75/340,358
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Decision: The refusal to register under Section 2(d)
of Lanham Act is affirmed.
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