Friday, May 30, 2008

TTAB Reverses 2(d) Refusal: "GRIP-RITE" for Industrial Gloves Not Confusing With "GRIPRITE" for Shoes and Boots

Reversing a Section 2(d) refusal to register, the Board found the mark GRIP-RITE for "protective gloves for industrial use" not likely to cause confusion with the registered mark GRIPRITE for "footwear, namely, shoes and boots." Although "somewhat of a close question," the Board based its ruling on the highly suggestive nature of the marks and the lack of evidence that the goods "are typically sold in the same channels of trade under the same or substantially similar marks." In re Banom, Inc., Serial No. 78869262 (May 19, 2008) [not precedential].

The Examining Attorney relied on third-party registrations and on Internet evidence showing "various brands of protective gloves and other kinds of work gloves being offered by [three] on-line retailer[s] of such products along with different brands of street shoes and/or work boots." The Board was not impressed:

"[N]either the third-party registrations nor the Internet or website excerpts demonstrate that applicant's goods and registrant's goods share a common channel of trade. In particular, the website excerpts are at best analogous to a mass merchandiser, in which different products are sold at retail in different sections of the store."

In short, the PTO's evidence did not pass the stringent test applied by the Board:

"[W]e are constrained, however, to agree with applicant that, on this record, confusion as to origin or affiliation of the respective goods has not been demonstrated to be likely. In particular, we concur with applicant that the respective goods are specifically different and are likely to be sold through different channels of trade. Moreover, as previously discussed, the marks at issue are highly suggestive and, thus, the scope of protection to which such are entitled is much less than would be the case for more distinctive or arbitrary marks. As applicant persuasively argues, its goods simply have not been shown to be 'closely related to the registrant's goods.'"

TTABlog comment: Did the Board properly find itself "constrained" to rule for Applicant? Doesn't the cited registration cover industrial safety shoes and boots, as well as "ordinary" shoes and boots? Did the Board improperly limit the scope of the registration to exclude safety shoes and boots? Obviously, the Board was determined to rule for Applicant. One could say it was "strained" to rule for Applicant, rather than constrained.

Text Copyright John L. Welch 2008.


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