Coating & Foam Solutions, LLC

Trademark Trial and Appeal Board

Sep 27, 2012

No. 77917959re (T.T.A.B. Sep. 27, 2012)

Mailed: September 27, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Coating & Foam Solutions, LLC
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Serial No. 77917959
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Request For Reconsideration

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James W. Kayden of Thomas, Kayden, Horstemeyer & Risley, LLP for Coating &
Foam Solutions, Inc.

Kathryn E. Coward, Trademark Examining Attorney, Law Office 115 (John
Lincoski, Managing Attorney).
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Before Seeherman, Bergsman, and Lykos, Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:

Coating & Foam Solutions, LLC (“applicant”) filed an application to register
the mark POLY-SIL, in standard character format, for “elastomeric silicone roof
coating” in International Class 2. On April 23, 2012, the Board affirmed the
Trademark Examining Attorney’s refusal to register applicant’s mark under Section
2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that it so
resembles the registered mark POLY-SIL (Registration No. 2338314), also in
standard character format, for “solid surface polymer suspended in silicone caulking
for use as sealant/adhesive” in International Class 17, that when used on or in
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77917959
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connection with applicant’s identified goods, it is likely to cause confusion or
mistake or to deceive.
On May 23, 2012 applicant timely filed a request for reconsideration of the
Board’s decision pursuant to Trademark Rule 2.144.
The premise underlying a request for reconsideration of a Board decision in
an ex parte appeal is that “based on the evidence of record and the prevailing
authorities, the Board erred in reaching the decision it issued. The request may not
be used to introduce additional evidence, nor should it be devoted simply to a
reargument of the points presented in the requesting party's brief on the case.
Rather, the request normally should be limited to a demonstration that, based on
the evidence properly of record and the applicable law, the Board's ruling is in error
and requires appropriate change.” Cf. TBMP § 543 (3d. ed. rev. 2012), discussing
the application of Trademark Rule 2.129(c); 37 CFR § 2.129(c) (request for
reconsideration of final decision in an inter partes proceeding).
As grounds for reconsideration, applicant contends that the Board gave too
much weight to the examining attorney’s evidence and made its decision “in an
artificial atmosphere disregarding what actually happens in the real world.”
Request for Reconsideration, p. 1. More specifically, applicant argues that the
Board mistakenly found that applicant’s and registrant’s goods would be
encountered by the same prospective consumers (the general public) in retail stores
despite applicant’s extrinsic evidence that its goods are sold only to qualified roofing
professionals directly from applicant. Applicant also challenges the Board’s
Serial No. 77917959
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determination that the goods are complementary and could be used in the same
home improvement roofing project. Rather, applicant insists that registrant’s goods
are used only for countertops and not roofs.
As we explained in our May 23, 2012 decision, in analyzing the relatedness of
the goods, we are required to make our determination based on how the goods are
identified in the involved application and registration. Registrant’s identification of
goods is broadly worded and not limited to any particular use or application, and as
such we must assume that the goods can be used for all appropriate purposes,
including on roofs.
Regarding the channels of trade, we noted applicant’s submission of extrinsic
evidence that its roof coatings are not sold to the general public but rather only to
qualified roofing professionals. We also acknowledged the extrinsic evidence
applicant obtained from the prosecution history of the cited registration indicating
that registrant’s caulking products are sold only to professional fabricators and
installers. We pointed out in our decision, however, that the Board does not
consider extrinsic evidence to restrict the channels of trade. Because neither the
application nor registration contain any restrictions, we properly drew the
conclusion that applicant’s and registrant’s goods travel in all reasonable and
ordinary trade channels, including those of retail stores to the general public.
Decision: The Board, not being persuaded of any error in the rendering of its
decision, hereby denies applicant's request for reconsideration.