The Board affirmed a Section 2(d) refusal to register the mark MAVA for various clothing items, including t-shirts, pants, gym suits, athletic uniforms, and footwear, finding the mark likely to cause confusion with the identical mark registered for “personal training services in the field of athletic performance.” Applicant contended that, because it owns registrations for MAVA for weight-lifting gloves and work-out gloves, it already owns “senior trademark rights in the product space.” The Board did not agree. In re Zencom Global, Serial No. 87399153 (July 6, 2018) [not precedential] (Opinion by Linda A. Kuczma).

The Marks: The identity of the marks “strongly favors a finding of likelihood of confusion.”

The Goods/Services: As we know, when the marks at issue are identical, a lesser degree of similarity between the involved goods/services is needed to support a finding of likely confusion. There need be “only a viable relationship between the goods and services.”

Applicant’s t-shirts, pants, gym suits, athletic uniforms, and footwear, and registrant’s services all relate to athletic performance. Examining Attorney Claudia Garcia submitted website evidence showing that individuals and businesses provide personal training services as well as their own branded clothing. Moreover these goods and services are provided through the same channels of trade to the same class of consumers, which would include the general public. Therefore the Board concluded that the involved goods and services are related  for Section 2(d) purposes.

Eleventh du Pont Factor: This du Pont factor considers “[t]he extent to which applicant has a right to exclude others from use of its mark on its goods.” Applicant argued that its prior registrations give it the right to exclude others from using its mark MAVA in its natural zone of expansion. In other words, it owns the senior federal trademark registrations “in the product space asserted in this case.”

The Board, however, pointed out that the “zone of natural expansion” doctrine has limited applicability in ex parte proceedings. It typically is invoked in inter partes proceedings to claim priority. In ex parte proceedings, “the concept is considered through a traditional relatedness of goods and services approach.” The co-existence of applicant’s two prior registrations with the cited registration does not compel a different result.

Moreover, the Board determination must be based on the record before it, and it is not bound by the determination of an examining attorney that the cited mark was entitled to registration over applicant’s marks.

Each case must be decided on its own facts, and occasionally an applicant with registrations for the same of very similar marks may be unable to obtain subsequent registrations. *** Even when one registration issues over the other and both exist side-by-side for some period of time (in this case only a little over a year), that is just one element “which is placed in the hopper with other matters which ordinarily are considered in resolving the question of likelihood of confusion, but which is not in the least determinative of said issue.”

Conclusion: The identity of the marks and the relatedness of the goods and services outweigh the point raised by applicant. Because there is a likelihood of confusion, it is not appropriate to allow applicant’s mark to be published. The Board pointed out that, if applicant believes the cited registration should not have issued over its prior registrations, it may petition for cancellation.

And so the Board affirmed the refusal.

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TTABlog comment: Note that the Morehouse defense is available only in the inter partes context. See In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012) [precedential]. [TTABlogged here]. Here the goods in the prior registrations and the pending application were not that close anyway.