The USPTO refused registration of the mark IVE for "protective work gloves," finding it likely to cause confusion with the registered mark EB & IVE for various clothing items. Applicant argued that its goods are sold at wholesale to sophisticated buyers, and that "eb and ive" brings to mind "ebony and ivory," while its mark has no such connotation. How do you think this came out? In re Ironclad Performance Wear Corp., Serial No. 86737035 (July 6, 2017) [not precedential] (Opinion by Judge Thomas W. Wellington).

The Board deemed the marks to be more similar than dissimilar, finding no evidence to support applicant's "ebony and ivory" argument. To the extent consumers would so view registrant's mark, they would also be likely to view "ive" as short for "ivory." [Huh? - ed.]. Indeed, consumers may believe IVE is an offshoot of the EB & IVE brand.

As to the goods, the Board focused on the following in the cited registration: "jackets; ... tops; [and] wearable garments and clothing, namely, shirts." Examining Attorney Jeanine Gagliardi relied on sixteen third-party websites showing clothing and work gloves sold under the same mark. [E.g., L.L. Bean and Orvis]. In fact, Applicant Ironclad itself sells clothing and work gloves. In addition, the examining attorney submitted 20 use-based, third-party registrations for marks covering protective work gloves and clothing.

The third-party website and registration evidence established a relationship between applicant's protective work gloves and registrant's clothing items.

Ironclad feebly argued that it sells its good to stores like Home Depot, where consumers seek out "technical goods," whereas registrant offers its products online and to boutique stores in Australia. Of course, the Board found this argument irrelevant because its determination of likely confusion must be based on the goods as identified in the application and cited registration, regardless of the actual trade channels.

With similar result, Ironclad asserted that its goods are sold to sophisticated purchasers who buy in bulk after negotiating the terms of the deal. Again, the Board pointed out, there are no such restrictions in applicant's identification of goods. Moreover, protective gloves may be purchased for general outdoor work and are not restricted to industrial use, and so there was no reason why the least sophisticated purchaser would exercise a high level of care.

And so the Board affirmed the refusal.