The USPTO refused registration of the mark LAVA GEAR for "outdoor survival wear, namely, jackets and pants for extended periods of use outdoors in extreme cold weather" [GEAR disclaimed], finding the mark likely to cause confusion with the registered mark LAVA ACCESSORIES for "scarfs; travel clothing contained in a package comprising reversible jackets, pants, skirts, tops and a belt or scarf" [ACCESSORIES disclaimed]. Applicant appealed, arguing that "the goods do not compete, and are not sold to the same customers nor purchased for the same or related purposes," but the Examining Attorney contended that the goods overlap. How do you think this came out. In re Critelli, Serial No. 86445003 (July 24, 2017) [not precedential] (Opinion by Judge Cheryl S. Goodman).

The marks: The Board found the marks to be somewhat similar in meaning, and, although different in appearance and sound, more similar over all than dissimilar.

The goods: The Examining Attorney argued that the broad wording in the application encompasses those in Registrant’s "more narrow identification." According to the Examining Attorney:

[T]he “Registration (may be read as): Outdoor survival wear, namely, travel clothing contained in a package comprising reversible jackets, pants for extended periods of use outdoors in extreme cold weather” and contends that “[n]othing in the registration precludes the registered goods from being for “use outdoors in extreme cold weather."

Applicant maintained that the goods do not compete, are not sold to the same customers, and are not purchased for the same or related purposes, since registrant's goods are "either fashion accessories or a package of travel clothing that is sold with a fashion accessory (namely a belt or scarf) as a characterizing component of the package."

The Board found that the Examining Attorney had failed to establish that the goods "are similar or related in any way which would result in source confusion, even when marketed under similar marks."

Although the Examining Attorney contends that outdoor survival wear could include travel clothing and that travel clothing such as Registrant’s could be for use outdoors in extreme cold weather, there is no evidence to support these contentions. Nor is there evidence that Applicant’s goods and Registrant’s goods are of a type which may emanate from a single source. While extreme cold weather gear on the one hand and travel clothing on the other may possibly be purchased by the same consumers at some point, there is no evidence in the record to support a finding that the goods typically emanate from the same source.

And so the Board reversed the refusal.

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