When To Challenge An Examining Attorney On The Relatedness Factor

It is always difficult to determine when to challenge the Examining Attorney once a likelihood of confusion refusal (aka 2(d) Refusal) is issued. A recent decision by the Board instructs Applicants to push back if the Examining Attorney’s evidence on relatedness of the goods is limited to citing only a few websites selling the same goods of the Applicant and the Registrant. See In re Pfanner Schutzbekleidung GmbH, Application Serial No. 79247130 (August 5, 2021) [not precedential], where the Board reversed the Examining Attorney’s refusal for failing to provide sufficient evidence of the relatedness of the goods.

In this matter the Applicant was seeking to register the mark PFANNER STRETCHFLEX for protective clothing and protective sporting gear, including but not limited to such items as accident and fire protection garments and shin guards and knee and elbow pads for sports. It should be noted that the Applicant claimed ownership of a related registration for the mark PFANNER for similar goods in the same classes 9 & 28. However, this prior registration did not prevent the Examining Attorney from refusing the Applicant’s mark for PFANNER STRETCHFLEX. The Examining Attorney cited the mark STRETCHFLEX as a basis for refusing the Applicant’s mark even though the Registrant’s goods were underwear and loungewear, namely pants, shorts and tops in international class 25, and Registrant did not offer any protective clothing or safety gear.

To support the 2(d) refusal the Examining Attorney submitted excerpts from third-party websites showing that the same trademark was used to brand the relevant products of the Applicant and the Registrant. Five websites were offered as proof: (1) example one showed advertisements for underwear and thermal wear and flame retardant clothing; (2) example two showed a website selling flame resistant clothing and protective gloves; (3) example three offered a website selling golf and baseball gloves under the same brand as shin guards; (4) example four advertised underwear and knee pads and shin guards; and (5) example five showed the same mark branding underwear and batting and lacrosse gloves.

Of the five examples, two websites sold both protective gear and underwear/lounge wear under the same trademark and three websites sold both sporting protective gear and underwear/lounge wear under the same mark. In determining the relatedness of goods under trademark law, the law does not require the products be identical or competitive in nature. The law only requires that the goods be related in some manner or that the conditions that surround the marketing permit the goods to be encountered by the same persons, and due to the similarities of the marks, a mistaken belief arises that the goods come from the same producer. To understand the significance of du Pont factor two, see our webpage entitled, The Importance of the Relatedness of the Goods or Services.

Regarding the similarities of the marks, the Board held that the marks were similar because they both contained the term STRETCHFLEX. The Board pointed out that while there is no per se rule where a party incorporates the entirety of another party’s mark, typically the marks will be found to be similar. In fact, Examining Attorneys often find the similarities of the marks weigh in favor of confusion if one party’s mark is incorporated in its entirety. Also, there is another rule under trademark law that states the mere addition of a term to a registered mark, will not obviate the similarities of the marks to overcome a likelihood of confusion under Trademark Act Section 2(d). Du Pont factor one favored confusion.

The Board also addressed du Pont factor six, the number and nature of similar marks on similar goods and the strength of the registered mark. Evidence did not show that the shared term STRETCHFLEX was used on similar goods. And regarding the strength of the mark, the term STRETCHFLEX was not found to be weak or diluted. Since STRETCHFLEX registered on the Principal Register, it must be presumed that the mark is inherently distinctive. STRETCHFLEX is suggestive and would receive the protection of an inherently distinctive mark. Therefore, factor six also favors confusion.

Reverting to du Pont factor two, the relatedness of the goods, the Board reversed the refusal to register the mark based on factor two. The Board held that the Examining Attorney did not produce enough evidence to prove that protective clothing and protective sporting gear are related to underwear or loungewear. The Examining Attorney failed to submit evidence of third-party registrations for the relevant goods. Third-party registrations based on use in commerce covering both the goods in an application and registration may have probative value. Since relatedness of the goods was not proven, the Board reversed the refusal. To answer the question posed at the beginning of the page, an applicant should challenge an Examining Attorney’s determination if an applicant believes the Examining Attorney did not meet its standard of proof. If you have questions regarding Office Actions, please contact the firm for a courtesy consultation.