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
`
`The Trademark Examining Attorney refused registration of Applicant’s mark
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`under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
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`Applicant’s mark, when used in connection with the identified goods, so resembles
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`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
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`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.,
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`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
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`“relevant and of record” need be considered).
`
`
`2 Registration No. 3049026, issued on January 24, 2006, Sections 8 & 15 declaration
`accepted and acknowledged.
`
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`

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`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
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`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
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`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
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`the goods are in fact the same, as set forth below:3
`
`
`
`
`
`
`3 August 20, 2014 Office action, TSDR pp. 2, 7.
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`

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`Serial No. 86098046
`
`
`In addition, because the goods are identical and the identifications of goods in
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`the application and the cited registration are not limited to any specific channels of
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`trade, we must presume that they travel in the same trade channels and are
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`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
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`presumption in determining likelihood of confusion”). Although Applicant submitted
`
`evidence to establish that the respective channels of trade do not in fact overlap,
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`there is no such limitation in the identifications of goods in the registration or
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`application and we are bound to consider all appropriate channels of trade for such
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`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
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`a cited registration in an ex parte proceeding. Applicant’s recourse, if it wanted to
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`limit the scope of the identification of the cited registration, would have been to
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`suspend prosecution of its application and bring a partial cancellation proceeding to
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`have the cited registration restricted under Section 18. See also TBMP § 309.03(d)
`
`(June 2015).
`
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`

`
`Serial No. 86098046
`
`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
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`

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`Serial No. 86098046
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`Ms. Freytag, the owner of Extreme Athletic Supply, a distributor of sports and
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`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
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`wrist guard for athletic purposes. We find this factor weighs slightly in favor of
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`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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`

`
`Serial No. 86098046
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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
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`word and the same second word; and (3) the first words, TIGER and LION, evoke
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`the same commercial impression, that of a large wild cat.
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`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
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`proxy of a four-legged creature’s ‘paw’ … [therefore, PAW is] suggestive of where the
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`product is used by the customer.”” App. Br. p. 14, 7 TTABVUE 15. The
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`aforementioned declarations submitted by Applicant include attestations that they
`
`are “aware that there are other manufacturers that use the word ‘Paw’ or ‘Paws’ as
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`part of their trademarks.”9 Applicant also submitted with its request for
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`reconsideration the declaration of Susie Newman, an intellectual property
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`paralegal, attesting to searches she conducted of the USPTO Trademark Electronic
`
`
`9 Id., TSDR p. 6.
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`

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`Serial No. 86098046
`
`Search System (TESS) for the word “paws.”10 She attached the search results for
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`the first search which was not limited by goods and only shows the “paw” marks
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`and their corresponding registration or application serial numbers. The second
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`search was limited to “sporting goods” but she did not attach these results. Finally,
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`she submitted the printout of a third-party registration for POWER PAWS for
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`“athletic wrist and joint supports.” She referenced in her declaration several other
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`third-party registrations that do not appear in the attached search results. The
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`Examining Attorney has objected to the lists of third-party registrations. Although
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`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
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`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
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`determination on the record in this case. Here, the similarity between Applicant’s
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`mark TIGER PAW and the cited mark LION PAWS, as discussed below, is much
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`greater than the similarity between POWER PAWS and LION PAWS.
`
`
`10 January 14, 2015 Request for Reconsideration, TSDR pp. 12-20.
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`

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`Serial No. 86098046
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`Applicant contends that because the word “paw” is weak, the differences
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`engendered by the first and more prominent words TIGER and LION are sufficient
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`to distinguish the marks. Specifically, Applicant asserts that:
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`[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
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`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
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`suggestive. As to possible third-party use, the general statements in the
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`declarations are not sufficient to support a finding that the term is weak. Without
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`more specificity we cannot make a meaningful determination as to consumer
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`exposure to third-party use of the word “paw” in connection with wrist guards.
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`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).
`
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`

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`Serial No. 86098046
`
`Procter & Gamble Company v. Conway, 419 F.2d 1332, 164 USPQ 301 (CCPA 1970)
`
`(MISTER STAIN confusingly similar to MISTER CLEAN); Hancock v. American
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`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.,
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`223 USPQ 52 (TTAB 1984) (CITY WOMAN confusingly similar to CITY GIRL); H.
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`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
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`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
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`Applicant has presented evidence in the form of declarations from individuals in
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`the industry attesting to the lack of any actual confusion. In addition to Applicant’s
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`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
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`

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`Serial No. 86098046
`
`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
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`

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`Serial No. 86098046
`
`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
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`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.
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`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.
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`

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`Serial No. 86098046
`
`… 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.
`
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