TTABlog test: Are protective clothing and sports equipment associated with underwear and loungewear for the purposes of Section 2 (d)?
August 10, 2021
Wolf, Greenfield & Sacks, PC
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The USPTO refused to register the trademark PFANNER STRETCHFLEX for various protective clothing (e.g. accident, radiation and fire protection clothing) and protective sports equipment (e.g. sporty shin, knee, back and elbow protectors for sport), risk of confusion with the registered trademark STRETCHFLEX for underwear and loungewear. The board found that the brands were similar in appearance, sound, meaning and commercial impression. But what about the goods? Is connectedness too far-fetched? In re Pfanner Schutzbekleidung GmbH, registration serial no. 79247130 (August 5, 2021) [not precedential]
(Opinion by Judge Marc A. Bergsman).
The marks: The board found that the term “Stretchflex” suggests a desirable feature of the registrant’s goods, but “this is not necessarily a weak term with limited scope”. When comparing the marks, the board found that there is no per se rule that if an applicant uses the entire mark cited, it must be determined that the marks are similar. However, it does increase the perception that the brands are similar.
The applicant claimed that PFANNER was the dominant term in its mark because it came up first and STRETCHFLEX was weak. The board rejected the weak point arguments and pointed out that consumers could see the addition of the company name PFANNER as an indication of the previously anonymous source of the STRETCHFLEX products.
As mentioned above, the board found that the brands were similar in appearance, sound, meaning and commercial impression.
The goods: In order to show the relationship of the goods, the examining attorney relied on several websites (including Carhartt, Under Armor, Adidas and Nike) which showed “the same brand to identify the relevant products”. The board was not impressed and found that the examining attorney did not submit third party registrations for trademarks for either type of goods.
Two examples of companies selling both protective clothing and underwear or loungewear as their core product lines, and three examples of companies selling both protective sports clothing and underwear or loungewear, are not enough to prove that protective clothing and protective sports gear are paired with underwear or loungewear stay in contact.
The board concluded that the examining attorney had failed to establish the relationship between the goods and lifted the refusal.
TTABlogger like: The investigating attorney must have thought that these big name websites were sufficient evidence of the kinship. I would probably have thought so too.
PS: I suppose if you sleep on a bed of nails you may be wearing protective loungewear.
The content of this article is intended to provide general guidance on the subject. Expert advice should be sought regarding your specific circumstances.
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