Trademark Blog

Trademark Likelihood of Confusion

Posted by Brandon Selinsky on Aug 22, 2017 1:53:09 PM
Brandon Selinsky

Ironclad Performance Wear Corp., 2017 WL 3102591

The Trademark Trial and Appeal Board (TTAB) decided this case. The TTAB is an administrative board that deals with issues arising out of the United States Patent and Trademark Office (USPTO). The TTAB oversees opposition, cancellation, interference, and concurrent use hearings. The TTAB also hears appeals for trademark application rejections from USPTO Trademark Examining Attorneys. 

Background 

Ironclad Performance Wear Corp. (Ironclad) submitted an application for trademark registration of the mark “IVE.” Ironclad sought to register this mark for “protective work gloves” on the Principal Register under International Class 9. 

"Trademark Likelihood of Confusion" is rarely encountered when good research is done before submitting an application for a specific trademark.

The Trademark Examining Attorney (TEA) reviewed Ironclad’s application for the IVE mark. Then the TEA rejected the IVE application. 

The Kindred Co Pty Ltd (Kindred) already registered EB & IVE on the Principal Register. Kindred registered EB & IVE under several categories – International Class 14 for jewelry, International Class 24 for linens and International Class 25 for various clothing items. 

The TEA determined that Ironclad’s requested mark was too similar to Kindred’s registered mark. Referencing 15 U.S.C. 1052(d) of the Trademark Act, the Ironclad mark was “likely to cause confusion.” 

After receiving the TEA’s decision, Ironclad protested and requested another review. The TEA rejected this request, refusing to reconsider the initial decision. As a result, Ironclad appealed to the TTAB. 

Analysis 

In considering the likelihood of confusion under 15 U.S.C. 1052(d), the TTAB employed the analytical test from the landmark case In re E. I. du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973). Also referred to as the du Pont factors, this test establishes 13 different considerations for determining likelihood of confusion. 

Concerning Ironclad, specifically, the TTAB focused on three du Pont factors: The first factor (similarities between marks), second factor (similarities between goods or services), and third factor (similarities between trade channels). 

To assess the first du Pont factor, the TTAB compared Ironclad’s IVE mark against Kindred’s EB & IVE mark. Considering that both marks contain IVE, the TTAB found the marks to be “visually and aurally similar.” While Kindred’s mark includes additional letters and an ampersand, it is was not enough to distinguish the marks sufficiently. The marks were more similar than dissimilar in terms of “meaning and overall commercial impression.” 

Switching to the second and third du Pont factors, the TTAB noted that the goods were not completely similar. Ironclad sells work gloves. Among other items, Kindred sells “jackets,” “wearable garments” and “shirts.” But the TTAB highlighted that at least 16 online retailers offered work gloves and clothing garments for sale under the same mark and to the same customers. Consequently, the TTAB determined that the goods were related and traveled in the same trade channels. 

Overall, the TTAB concluded that Ironclad’s requested mark was too similar to Kindred’s registered mark. The marks were virtually identical. The goods were related and travelled in the same trade channels. As a result, there was a strong likelihood of confusion. Thus, the TTAB confirmed rejection of Ironclad’s application for the IVE mark under 15 U.S.C. 1052(d). 

Do You Need Legal Advice from an Experienced Attorney? 

Navigating the ins and outs of trademarking intellectual property can be a challenge. There are various legal regulations and considerations at play, which can make it difficult to understand the proper course of action. But a knowledgeable patent and trademark attorney can make all of the difference, helping you avoid pitfalls and resolve any issues that might arise. 

If you are in need of assistance with trademarks or other related matters, please do not hesitate to contact Whitcomb, Selinsky, McAuliffe, PC immediately. Located in Denver, Colorado, you can reach the attorneys at Whitcomb, Selinsky, McAuliffe, PC by phone at (303) 534-1958 or online by completing a simple form. 

Topics: Trademark Law

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