Carolina Chem-Strip of Alamance, Inc.

Trademark Trial and Appeal Board

Oct 20, 1999

No. 75232074 (T.T.A.B. Oct. 20, 1999)

Paper No. 7
DEB
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB OCT. 20,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Carolina Chem-Strip of Alamance, Inc.
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Serial No. 75/232,074
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Jeffrey A. Andrews of Vernon Vernon Wooten Brown Andrews &
Garrett, P.A. for Carolina Chem-Strip of Alamance, Inc.
Ronald McMorrow, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______
Before Hanak, Hohein and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Carolina Chem-Strip of Alamance, Inc. has filed an
application for registration of the mark “CAROLINA CHEM-STRIP
and design” (with the word “Carolina” disclaimed) in the special
form shown below:
Serial No. 75/232,074
2
for “cleaning, stripping, descaling and degreasing metal
appliances, machinery, fixtures, vehicles and assorted parts to
remove paint and other finishes,” in International Class 37.1
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 mark, “CAROLINA CHEM-
STRIP and design” when used on its metal cleaning and stripping
services, so resembles the registered mark, “CHEMSTRIP” for
“stripping agents for surface coatings and/or deposits,” 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 affirm the refusal to register.

1 Serial No. 75/232,074, filed January 27, 1997, alleging first use
on November 9, 1981.
2 Registration No. 936,775, issued on June 27, 1972. The
registration sets forth a date of first use of February 7, 1964 and a
date of first use in commerce of January 1, 1965; renewed.
Serial No. 75/232,074
3
Applicant argues that the marks are clearly distinguishable
when considered in their entireties. Applicant contends that
the design feature is a significant element in its composite
mark, and further, that its own usage of “CHEM-STRIP”
(hyphenated) is distinguishable from registrant’s use of
“CHEMSTRIP” (without a hyphen). Applicant also points to
seventeen years of contemporaneous use without complaints from
registrant, and no instances of actual confusion on the part of
their respective customers.
By contrast, the Trademark Examining Attorney contends that
the two marks are “…highly similar in appearance, sound,
connotation and commercial impression.” (brief, p. 3). He
points out that prospective customers cannot use the design
portion of the composite mark to call for applicant’s services,
and because the word “CAROLINA” is geographically descriptive,
the dominant portion of applicant’s mark is “CHEM-STRIP.” He
takes the position that applicant has appropriated registrant’s
mark and simply added other subordinate matter to it. He
contends that the overall marks are “…highly similar in
connotation since both suggest a process of using a chemical
compound to strip a surface or object.” (brief p.3).
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), which sets forth
Serial No. 75/232,074
4
the factors that should be considered, if relevant, in
determining likelihood of confusion under Section 2(d) of the
Act.
In testing for likelihood of confusion, we turn first to an
analysis of the similarity or dissimilarity of the marks. As
applicant points out, it is not proper to dissect a mark,
focusing on a single element while excluding all others. On the
other hand, our principal reviewing court recognizes that one
feature of a mark may be more significant than other features,
and that it is proper to give greater force and effect to that
dominant feature. See Giant Food, Inc. v. Nation’s Foodservice,
Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983). In
this regard, we agree with the Trademark Examining Attorney that
registrant’s mark, “CHEMSTRIP,” is virtually identical to the
term “CHEM-STRIP,” which is the dominant element of applicant’s
composite mark. While such designation may well suggest a
“chemical” process used for “stripping” a surface of paint,
other finishes, or deposits, suggestive marks are, nonetheless,
deserving of an appropriate scope of protection.3 Furthermore,
the insertion of a hyphen between the two syllables of the term
“CHEM-STRIP” in applicant’s mark is a de minimis change that
would likely go unnoticed by most consumers.
Serial No. 75/232,074
5
Additionally, inasmuch as applicant is a North Carolina
corporation having its headquarters and main facility in
Burlington, North Carolina, with a second plant located in
Fountain Inn, South Carolina, the geographically descriptive
(and hence, disclaimed) term “Carolina” must be deemed to be
subordinate matter.
Finally, as a non-literal element, the design feature is
not something potential or actual consumers can verbalize.
Turning to the goods and services, it is well settled that
goods and/or services need not be identical or even competitive
in nature in order to support a finding of likelihood of
confusion. Instead, it is sufficient that the goods and
services are related in some manner and/or that the
circumstances surrounding their marketing are such that they
would be likely to be encountered by the same persons under
situations that would give rise, because of the similarity of
the marks employed thereon, to the mistaken belief that they
originate from or are in some way associated with the same
producer. See Turner Entertainment Co. v. Nelson, 38 USPQ2d
1942 (TTAB 1996) [consumers familiar with opposer's “GILLIGAN'S
ISLAND” television situation comedy series and licensed
collateral products would be likely to believe upon encountering

3 In spite of applicant’s repeated allegation that registrant’s
mark is weak, we find that there is nothing in the record to support
Serial No. 75/232,074
6
applicant's mark “GILLIGAN'S ISLAND” for sunning products, that
the goods were somehow associated with the same entity];
Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983)
[“Steelcare Inc.” for refinishing of furniture, office
equipment, and machinery for others, and “Steelcase” for office
furniture and accessory items, is likely to cause confusion];
and In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986)
[purchasers encountering “21 Club” for shirts would be likely to
mistakenly assume these goods were in some way associated with
registrant’s “The '21' Club” for restaurant services and
collateral products].
In this context, we agree with the Trademark Examining
Attorney that “…applicant’s services and the registrant’s goods
are closely related because they perform identical functions…”
and that “…applicant’s services necessarily involve the use of
goods similar to the registrant’s [stripping agents].” (brief,
p. 5). In fact, in its appeal brief, applicant does not even
contest the close relationship of registrant’s goods to
applicant’s services.
We turn next to applicant’s allegations that there have
been no instances of actual confusion during a period of
seventeen years of simultaneous use by applicant and registrant
of their respective marks. The fact, however, that applicant

this charge.
Serial No. 75/232,074
7
has not encountered any instances of actual confusion is not
persuasive of a different result herein, because there is no
evidence in the record about the extent of applicant’s sales and
advertising of its services under its “CAROLINA CHEM-STRIP”
mark. Further, while applicant claims to have used the mark
“CAROLINA CHEM-STRIP” on its services since 1981, we have no
evidence that the marks “CAROLINA CHEM-STRIP” and “CHEMSTRIP”
have ever been used contemporaneously in the same geographical
area. Thus we cannot tell whether there has been sufficient
opportunity for confusion to occur. These factors materially
reduce the probative value of applicant’s argument on the matter
of actual confusion. Moreover, the test under Section 2(d) of
the Act is likelihood of confusion, not actual confusion. See
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB
1992).
Finally, it goes without saying that if there is any doubt
about likelihood of confusion, it must be resolved in favor of
registrant, the prior user. Geigy Chemical Corporation v. Atlas
Chemical Industries, Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA
1971)
Decision: The refusal to register is affirmed.
Serial No. 75/232,074
8
E. W. Hanak
G. D. Hohein
D. E. Bucher
Administrative Trademark Judges,
Trademark Trial and Appeal Board