Amteco, Inc.

Trademark Trial and Appeal Board

Jun 18, 1999

No. 75086733 (T.T.A.B. Jun. 18, 1999)

Paper No. 22
DEB
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 18, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Amteco, Inc.
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Serial No. 75/086,733
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Glenn K. Robbins, II of Robbins & Robbins for Amteco, Inc.
Julia Hardy Cofield, Trademark Examining Attorney, Law
Office 105 (Thomas G. Howell, Managing Attorney).
_______
Before Simms, Hanak and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Amteco, Inc., a Missouri corporation, filed an
application for registration of the mark “LOX-RUST” for
“rust preventative coatings and primers in the nature of
paint."1
The Trademark Examining Attorney issued a final
refusal to register based upon Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's proposed mark, “LOX-RUST,” when used on these

1 Serial No. 75/086,733, in International Class 2, filed
April 10, 1996, based upon an allegation of a bona fide intention
to use the mark in commerce.
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2
rust preventative paints, so resembles the registered mark,
“LOX-SEAL,” as applied to, “clear and pigmented coatings
for use primarily in the automotive industry,” as to be
likely to cause confusion, or to cause mistake, or to
deceive.2
Applicant has appealed the final refusal to register.
Briefs have been filed, but applicant did not request an
oral hearing. We reverse the refusal to register.
The Trademark Examining Attorney takes the position
that the term “LOX” is the dominant, first word of both
marks. Throughout, she contends that with this phonetic
spelling, this word has to be considered a strong,
arbitrary portion of both marks. To the extent the
products are different, she argues that consumers will
conclude these are “companion products.” As to the goods,
she holds fast to the presumption that applicant’s
seemingly broad identification of coatings and primers must
be deemed to include registrant’s more narrowly directed
type of coatings. She argues that one must assume the
trade channels are the same and dismisses claims placed
into the record in the form of declarations describing a
very different marketplace reality.

Ser. No. 75/086,733
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By contrast, applicant argues that when the two marks
are correctly considered in their entireties, they are
completely different. Arguing that the common word “LOX”
is highly suggestive of a quality of the goods, applicant
argues further that there can be no likelihood of confusion
since the words “RUST” and “SEAL” are completely different
words. As to the goods, applicant argues that its goods
are limited to a single-coat product applied directly to
heavy steel for the purpose of rust treatment and
prevention. On the other hand, applicant points out from
the identification of goods in the cited registration that
registrant’s products are targeted to the automotive
industry. In their affidavits, applicant’s experts claim
that registrant’s sealer/coatings will likely be the second
of three coats used on automobile bodies (to seal the body
after the application of a sandable primer but before the
eventual finish), seemingly unrelated to rust prevention.
In this connection, applicant argues that a coating for
rust prevention on heavy steel structures will move in
completely different channels of trade than paints flowing
to the automobile industry. Applicant has also supplied
the file with evidence of the words “LOX” and “LOCKS” in

2 Registration No. 2,020,862 issued on December 3, 1996. The
registration sets forth dates of first use of December 20, 1995.
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numerous third-party registrations in the coating and paint
field, supporting applicant’s contention that this term is
at the very least, suggestive in this field.
In the course of rendering this decision, we have
followed the guidance of In re E.I. du Pont de Nemours &
Co., 476 F.2d 1357, 1362, 177 USPQ 563, 567-68 (CCPA 1973),
that sets forth the factors which, if relevant, should be
considered in determining likelihood of confusion.
When considering the similarity or dissimilarity of
the marks in their entireties as to appearance, sound,
connotation and commercial impression, we find the word
“locks” to be suggestive and frequently registered in the
field of paints, primers and other coatings. Merchants and
manufacturers of paints and coatings have regularly chosen
marks suggesting that as the paint penetrates into the
pores of the underlying material, it “locks” itself in,
and/or “locks” corrosion out. While the variant in
spelling (e.g., “lox” instead of “locks”) is used somewhat
less frequently than the original spelling, the word “lox”
is certainly not a term unique to applicant and registrant
in the broad area of paint products. Furthermore, we must
compare in their entireties the marks “LOX-RUST” and “LOX-
SEAL.” It is true that both marks begin with the same word
“LOX,” followed by a hyphen, and each mark then contains a
Ser. No. 75/086,733
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four-letter word -- “rust” or “seal.” Despite these
obvious similarities, we find both marks to be suggestive
marks in this field, having contrasting sounds and obvious
visual differences.
As to the similarity or dissimilarity and nature of
the goods as described in the application and registration,
registrant’s goods are for use primarily in the automotive
industry while applicant’s goods stress rust prevention.
Given the myriad types of specialized paints and coating
available in the marketplace, we feel safe presuming on
this record that the goods as identified are not
interchangeable products.
Applicant has criticized the Trademark Examining
Attorney for failing to rebut the declarations it submitted
for the record. These declarants claim that, in reality,
the goods of applicant and those of registrant are quite
different types of coatings, having disparate applications.
As a result, applicant would have us conclude that there is
a dissimilarity in the established, likely-to-continue
trade channels. However, these asserted differences are
not reflected in applicant’s identifications of goods
(e.g., the identification was not amended to something in
the nature of “rust preventative … paint for bridges and
heavy steel structures”). Hence, in this ex parte context,
Ser. No. 75/086,733
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we cannot agree with applicant that its rust preventative
coatings will move in channels of trade totally separate
from paints marketed to the automobile industry. Under a
consideration of the du Pont factors, we may well be
influenced, for example, by a well drafted consent
agreement, or an amendment to the identification of goods
setting forth a limitation narrowing the possible channels
of trade. However, we cannot conclude that the channels of
trade are different based only upon these submissions. In
this context, we must presume, as the Trademark Examining
Attorney corrects contends, that applicant’s goods are sold
in all of the normal channels of trade to all of the usual
purchasers for goods of the type identified. See Canadian
Imperial Bank v. Wells Fargo, 811 F.2d 1490, 1 USPQ2d 1813
(Fed. Cir. 1987). At the very least, in looking at this
total record in an ex parte context, applicant’s
declarations notwithstanding, we have to assume as a matter
of law that persons within the automotive industry who
purchase paints and coatings comprise a common set of
potential consumer of the goods of applicant and of
registrant.
Although as noted above, there may be overlapping
channels of trade, given the limitations in registrant’s
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goods, we conclude that the overlapping buyers herein are
careful, sophisticated purchasers.
In looking at the number and nature of similar marks
in use on similar goods, “lox,” “lok,” “lock” and “locks”
appear as prefixes and suffixes on a variety of coatings,
sealants, cleaners, etc. This coexistence on the registry
at least suggests to us that consumers are able to make
distinctions among composite marks containing the word
“lox” (and the other variations in phonetic spelling for
“lock(s)”) as used in connection with a variety of liquid
coatings.
Hence, given the difference between these suggestive
marks, combined with the fact that the respective marks
will be used on slightly different types of goods, moving
to relatively sophisticated purchasers, we conclude that
the chances for likelihood of confusion are de minimus.
Decision: The refusal to register is hereby reversed.
R. L. Simms
E. W. Hanak
D. E. Bucher
Ser. No. 75/086,733
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Administrative Trademark
Judges, Trademark Trial and
Appeal Board