ACO Severin Ahlmann GmbH & Co.

Trademark Trial and Appeal Board

Jul 26, 2007

No. 79001299 (T.T.A.B. Jul. 26, 2007)

Mailed:
26 July 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re ACO Severin Ahlmann GmbH & Co.
________

Serial No. 79001299
_______

John A. Clifford of Merchant & Gould P.C. for ACO Severin
Ahlmann GmbH & Co.

D. Beryl Gardner, Trademark Examining Attorney, Law Office
112 (Angela Wilson, Managing Attorney).
_______

Before Quinn, Drost, and Wellington, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On January 12, 2004, applicant, ACO Severin Ahlmann
GmbH & Co., applied to register the mark MULTILINE (in
standard character form) on the Principal Register for
goods ultimately identified as:
Ingots of common metals and their alloys for further
manufacturing; metal building materials, namely, metal
gutters, metal gullies, metal shafts, and metal
coverings and metal parts for the aforesaid goods in
Class 6

Rubber and gum for use in the manufacture of a surface
drainage systems; plastic composite material in the
form of profiles, boards, sheets, blocks, rods,
powder, and pellets for use in manufacturing; extruded
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 79001299
2
plastic in the form of bars, blocks, pellets, rods,
sheets and tubes for use in manufacturing; packing
material for forming seals; non-metal seals for use in
insulating and stopping; non-metallic tubes, namely,
rubber, synthetic plastic tubes, and paper tubes in
Class 17

Non-metallic building materials, namely, gutters,
gullies, shafts, and parts and coverings therefore
[sic] all made of concrete, plastic concrete, and
plastic in Class 19

This application, Serial No. 79001299, has been filed
under the provision of Section 66, 15 U.S.C. § 1141f, of
the Trademark Act, which provides:
(a) Requirement for Request for Extension of
Protection. — A request for extension of protection of
an international registration to the United States
that the International Bureau [IB] transmits to the
United States Patent and Trademark Office shall be
deemed to be properly filed in the United States if
such request, when received by the International
Bureau, has attached to it a declaration of bona fide
intention to use the mark in commerce that is verified
by the applicant for, or holder of, the international
registration.

Because the application (request for extension of
protection) was filed under the provision of Section 66(a),
it is entitled to an earlier priority date. As a result of
its International Registration No. 0820229, applicant is
entitled to a priority date of July 25, 2003.
The examining attorney has finally refused to register
applicant’s mark on the ground that it would likely cause
confusion (15 U.S.C. § 1052(d)) with the mark MULTILINER
and design shown below
Ser No. 79001299
3

for the following goods and services:
Fiberglass fabrics for use as inner-lining, relining
and insulating of conduits; fiberglass fabric for
leakproofing buildings or conduits; fiberglass
sealants for buildings or conduits in Class 17

Repair, maintenance, lining, relining and sealing of
conduits in Class 37.1

The registration is lined for “the color green, and the
colors green and black are claimed as features of the
mark.”
The examining attorney argues that “the overall
commercial impression of the marks is the same with or
without the R. The marks both refer to liners with
multiple uses.” Brief at 4. Regarding the goods, the
examining attorney maintains that:
These terms … all relate to the management of water
drainage by means of using sealants and leak proofing
materials. In this case, the applicant provides raw
materials that are used to manufacture gullies,
gutters and shafts that allow running water on a
building to drain away from the structure and repel
leaks. Moreover, the applicant provides the packing
materials and non-metal seals that insulate or prevent
the transfer of water from the outside to the inside
of the building. The applicant's use of rubber or gum

1 Registration No. 2094229 issued September 9, 1997, Section 8
affidavit accepted.
Ser No. 79001299
4
to manufacture these seals is to allow the seals to
adhere to the openings and block out surface water…
Likewise, the registrant is also providing building
materials to prevent water leaks. The registrant's
goods are made of fiberglass and expressly seal
building apertures and conduits, like shafts, from
water run-off. The registrant also repairs, maintains
and lines the same conduits with water proofing
sealants.

Brief at 5-6.

In response, applicant submits that the marks’
appearances and meanings are distinctly different.
“Applicant’s mark, MULTILINE, is intended to suggest a
product that contains many layers, or pipe like devices.
Registrant’s mark, on the other hand, is composed in part
of the term MULTILINER and suggests that the goods are made
up of many liners or barriers.” Brief at 6.
Regarding the goods, applicant maintains that they are
dissimilar.
Registrant’s goods are impregnated fiberglass fabric
liners used in manholes whereas Applicant’s goods are
primarily gutters, gullies, shafts and packing and
insulating materials related thereto. Furthermore,
Registrant’s goods are primarily impregnated fabric
liners and barriers while Applicant’s goods are made
of metal, rubber, plastic and concrete. As previously
mentioned, these goods are used for different purposes
– the Registrant’s goods are used to line manholes and
Applicant’s goods are metal, rubber, plastic and
concrete gutters, gullies, shafts and related parts
used primarily for drainage.

Brief at 9.
Ser No. 79001299
5
After the examining attorney made the refusal final,
applicant filed this appeal.
In a case involving a refusal under Section 2(d), we
look to the factors set out in In re E. I. du Pont de
Nemours & Co. 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973)
to determine of there is a likelihood of confusion. See
also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003) and Recot, Inc. v.
Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir.
2000). In considering the evidence of record on these
factors, we must keep in mind that “[t]he fundamental
inquiry mandated by § 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
Initially, we look to the marks to determine their
similarities and dissimilarities. Applicant’s mark is the
single term MULTILINE depicted without any stylization or
design. Registrant’s mark is also for a single word,
MULTILINER in the following design.
Ser No. 79001299
6

Because applicant’s mark is depicted in standard character
form, we must assume that there is no difference in the
stylization of the words in the marks. Squirtco v. Tomy
Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983)
(“[T]he argument concerning a difference in type style is
not viable where one party asserts rights in no particular
display”).
Therefore, the term in each mark, MULTILINE and
MULTILINER, are legally identical except for the fact that
registrant’s mark adds an additional letter “R” at the end
of the term. In this case, the additional letter is not a
significant difference. Accord Mobil Oil Corporation v.
Mobile Mechanics, Inc., 192 USPQ 744, 747 (D. Conn. 1976)
(“Here the marks are so similar that confusion is not only
likely but practically inevitable. The mark “mobile”
differs from “Mobil” only by the addition of one letter and
by the absence of an initial capital”). Both applicant’s
and registrant’s marks would look and sound similar. Many
consumers who are familiar with registrant’s mark may not
Ser No. 79001299
7
notice that applicant’s mark is spelled without an “R” and
even those that do notice the difference are unlikely to
attribute great significance to it. While applicant points
out that registrant’s mark refers to liners, the term
“line” can have a similar meaning of “to fit a covering to
the inside surface of” and “to cover the inside surface
of.” Webster’s II New Riverside University Dictionary
(1984).2 Indeed, one of applicant’s suggested meanings,
“many layers,” is very similar to applicant’s suggested
meaning of registrant’s mark, “many liners.” Both meanings
would suggest that the products have several layers.
Furthermore, while registrant’s mark has a triangle and
circle design and it is lined for color, nonetheless the
word MULTILINER would be the dominant element of the mark.
It would be the term that purchasers would use to refer to
the products and the geometric design is less memorable.
CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed.
Cir. 1983) (“[M]inor design features do not necessarily
obviate likelihood of confusion arising from consideration
of the marks in their entireties. Moreover, in a composite
mark comprising a design and words, the verbal portion of

2 We take judicial notice of this definition. University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594,
596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
Ser No. 79001299
8

the mark is the one most likely to indicate the origin of
the goods to which it is affixed”). Also, because both
marks are dominated by the very similar terms MULTILINE or
MULTILINER, their commercial impressions would also be
similar. When we consider the similarities and
dissimilarities of the marks, we ultimately conclude that
the marks are similar in sound, appearance, meaning, and
commercial impression. See Wella Corp. v. California
Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977)
(CALIFORNIA CONCEPT and surfer design likely to be confused
with CONCEPT for hair care products)
Next, we will consider whether the goods and services
of applicant and registrant are related. Applicant’s goods
are:
Ingots of common metals and their alloys for further
manufacturing; metal building materials, namely, metal
gutters, metal gullies, metal shafts, and metal
coverings and metal parts for the aforesaid goods in
Class 6

Rubber and gum for use in the manufacture of a surface
drainage systems; plastic composite material in the
form of profiles, boards, sheets, blocks, rods,
powder, and pellets for use in manufacturing; extruded
plastic in the form of bars, blocks, pellets, rods,
sheets and tubes for use in manufacturing; packing
material for forming seals; non-metal seals for use in
insulating and stopping; non-metallic tubes, namely,
rubber, synthetic plastic tubes, and paper tubes in
Class 17

Ser No. 79001299
9
Non-metallic building materials, namely, gutters,
gullies, shafts, and parts and coverings therefore
[sic] all made of concrete, plastic concrete, and
plastic in Class 19

Registrant’s goods and services are fiberglass fabrics
for use as inner-lining, relining and insulating of
conduits; fiberglass fabric for leakproofing buildings or
conduits; fiberglass sealants for buildings or conduits and
repair, maintenance, lining, relining and sealing of
conduits services. Registrant’s goods include fabrics for
lining and insulating conduits and leakproofing buildings.
Applicant argues that “Registrant’s goods are used to line
manholes” and applicant’s goods are “used primarily for
drainage.” Brief at 9. However, these limitations do not
appear in the identifications of goods or services and,
therefore, they are not relevant to our likelihood of
confusion analysis and registrant’s goods are not limited
to use to “line manholes” as applicant argues. Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority
is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
Ser No. 79001299
10
channels of trade or the class of purchasers to which the
sales of goods are directed”).
Regarding registrant’s goods, we take judicial notice
of the definition of a “conduit” as “a channel or pipe for
conveying fluids, as water.” Webster’s II New Riverside
University Dictionary. Applicant’s goods, including metal
and non-metal gutters, gullies, shafts, and non-metal
tubes, are within the definition of, or very similar to,
channels or pipes for conveying fluids. Thus, registrant’s
goods could be used in association with applicant’s goods
to prevent leaking or to insulate the fluids in applicant’s
goods from weather such as to prevent freezing.
Furthermore, registrant’s repair, maintenance, lining,
relining and sealing of conduits services could use
applicant’s packing material for forming seals and non-
metal seals for use in insulating and stopping leaks. The
examining attorney also included several registrations3 that
show that the same entity has registered a common mark for
a building product and a sealing or protective product used
with the product. See, e.g., Registration Nos. 2,701,606
(roof sealants and coatings and roofing tiles); 2,971,523
(non-metal casting forms and waterproofing membranes); and

3 We have only considered the use-based registrations that the
examining attorney submitted.
Ser No. 79001299
11
2,715,777 (protective floor coverings and anti-slip
sealants for floor coverings). These registrations provide
some evidence that the applicant’s and registrant’s goods
are related. In re Infinity Broadcasting Corp. of Dallas,
60 USPQ2d 1214, 1217-18 (TTAB 2001).
Consumers seeking to install applicant’s conduit-like
products and further insulate or leakproof these products
are likely to encounter both applicant’s and registrant’s
goods. Furthermore, consumers familiar with registrant’s
services are likely to conclude that applicant’s goods are
also associated with the same source. We add that even if
the purchasers of these products were careful purchasers,
“even careful purchasers are not immune from source
confusion.” In re Total Quality Group Inc., 51 USPQ2d
1474, 1477 (TTAB 1999). In addition, applicant’s and
registrant’s identifications of goods are broad and these
goods could travel in the same channels of trade such as
stores where building materials are sold. Therefore, we
conclude that applicant’s and registrant’s goods and
services are related.
[It] has often been said that goods or services need
not be identical or even competitive in order to
support a finding of likelihood of confusion. Rather,
it is enough that goods or services are related in
some manner or that circumstances surrounding their
marketing are such that they would be likely to be
seen by the same persons under circumstances which
Ser No. 79001299
12
could give rise, because of the marks used thereon, to
a mistaken belief that they originate from or are in
some way associated with the same producer or that
there is an association between the producers of each
parties' goods or services.

In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).
See also Time Warner Entertainment Co. v. Jones, 65 USPQ2d
1650, 1661 (TTAB 2002).
Applicant has also submitted several registrations
and applications and argues that the “relatively large
number of MULTILINE and MULTILINER marks indicates that
each mark is entitled to a relatively narrow scope of
protection.” Brief at 11. We note that several of these
references are to trademark applications, which are not
entitled to any weight on this issue. In re Phillips-Van
Heusen Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB 2002) (“While
applicant also submitted a copy of a third-party
application …, such has no probative value other than as
evidence that the application was filed”). The
registrations are for much less similar, if not dissimilar,
goods, e.g., furnaces, air conditioning dampers, automatic
machines for metering liquids used in printing machines,
and medical apparatus for neurographic measurements. In
addition, even if these registrations were for goods that
were more closely related, they would not justify the
Ser No. 79001299
13
registration of a confusingly similar mark. In re J.M.
Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987).
When we consider that the marks are both dominated by
the term MULTILINE or MULTILINER and the goods and services
are related, we conclude that there is a likelihood of
confusion.
Decision: The examining attorney’s refusal to
register applicant’s mark MULTILINE for the identified
goods because of the cited registration on the ground that
it is likely to cause confusion is affirmed.