TTABlog test: Is protective clothing and sports equipment related to underwear and loungewear for the purposes of section 2 (d)?

USPTO refused to register the trademark PFANNER STRETCHFLEX for various items of protective clothing (for example, protective clothing against accidents, radiation and fire) and protective sports equipment (for example, sports shin guards, knee pads, back and elbow pads for playing sports) , noting a probable confusion with the registered trademark EXTENDABLE HOSE for underwear and loungewear. The board concluded that the marks were similar in terms of appearance, sound, connotation and commercial impression. But what about the goods? Is kinship too exaggerated? In re Pfanner Schutzbekleidung GmbH, Serial number of the application 79247130 (August 5, 2021) [not precedential] (Judge’s opinion Marc A. Bergsman).

Trademarks: The Commission found that the term “stretchflex” suggested a desirable characteristic of the holder’s products, but “it is not necessarily a weak term which is entitled only to a limited scope of protection”. In comparing the marks, the board noted that there is no rule per se that when an applicant incorporates the whole of the cited mark, the marks must be found to be similar. However, this increases the perception that the brands are similar.

The applicant asserted that PFANNER is the dominant term in its brand because it appears first and because STRETCHFLEX is weak. Council rejected arguments of weakness and stressed that consumers may perceive the addition of the company name PFANNER as indicating the previously anonymous source of STRETCHFLEX products.

As mentioned above, the Commission concluded that the marks were similar in terms of appearance, sound, connotation and commercial impression.

Property: To demonstrate the relationship between the goods, the examining lawyer relied on several websites (including Carhartt, Under protection, Adidas and Nike) indicating “the same brand used to identify the products concerned”. The chamber was not impressed, noting that the examining lawyer did not submit any third-party registrations for trademarks covering both types of goods.

Two examples of entities selling both protective clothing and underwear or loungewear as main product lines, and three examples of entities selling both protective sportswear and underwear or loungewear is not sufficient to prove that protective clothing and protective sportswear is related to underwear or loungewear.

The Board concluded that the examining lawyer had failed to prove that the goods were related and therefore set aside the refusal.

TTABlogger comment: The examining lawyer must have thought that these big name websites were sufficient proof of kinship. I probably would have thought the same.

PS I guess if you sleep on a bed of nails you could wear protective loungewear.

TTABlog

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