PRACTICE POINTER: Applicant takes off his gloves in fight with Trademark Examiner…and wins.

The absence of hand wear in Applicant’s application combined with the differences in the respective marks convinced the TTAB to rule in favor of the Applicant.

Applicant filed for the following HORIZEN-based mark for a variety of clothing items, footwear, headwear, and clothing accessories (“belts, flip flops, hats, jackets, pants, Polo shirts, sandals, shoes, shorts, skirts, swimwear, T-shirts, underwear, and visors”):
0jJGZKgJqAOJEFNgpqAEkjAR0paahLUBJRAAj5S0lKToCagBBLwkZKWmgQ1ASWQgI+UtNQkqAkogQR8pKSlJkFNQAkk4CMlLTUBQf0PLXTAv8s8Fv0AAAAASUVORK5CYII=

The Trademark Examiner refused registration based on an allegation of likelihood of confusion with both of the following registrations:

(i) sHJDyExLrJgAAAABJRU5ErkJggg==

for “gloves.”

and

(ii) 8hLQ6A0AAAAASUVORK5CYII=

for “work gloves.”

In any likelihood of confusion analysis, the two key considerations are the similarities between the marks and the similarities between the goods or services.  

The TTAB held that “gloves” in the cited registration were related to the items in the application.  However, the TTAB also held that “work gloves” were not related.  This holding essentially eliminated the HORIZON design for “work gloves” from any further consideration in the likelihood of confusion analysis.

When the Trademark Examiner focused in on the HORIZON-based registration for just “gloves,” the fact Applicant was not applying for hand wear, in combination with the fact Applicant had intentionally misspelled its mark to incorporate the concept of ZEN (i.e., HORIZEN versus HORIZON) tipped the scales in favor of the Applicant.
This was a very close call and could have easily gone in the other direction.  

Image Courtesy of: Rick Harris Used under Creative Commons license.