Coating & Foam Solutions, LLC

Trademark Trial and Appeal BoardApr 23, 2012

No. 77917959 (T.T.A.B. Apr. 23, 2012)

Mailed: April 23, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Coating & Foam Solutions, LLC ________ Serial No. 77917959 _______ Edgar A. Zarins of Masco Corporation for Brasstech, Inc. Kathryn E. Coward, Trademark Examining Attorney, Law Office 115 (John Lincoski, Managing Attorney). _______ 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 2.1 The Trademark Examining Attorney refused registration of applicant’s mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that applicant’s mark so resembles the registered mark POLY-SIL, also in standard 1 Application Serial No. 77917959, filed January 22, 2010, pursuant to Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), alleging November 30, 1992 as the date of first use anywhere and in commerce. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77917959 2 character format, for “solid surface polymer suspended in silicone caulking for use as sealant/adhesive” in International Class 17,2 that when used on or in connection with applicant’s identified goods, it is likely to cause confusion or mistake or to deceive. For the reasons discussed below, the Board affirms the refusal to register. We base our determination under Section 2(d) on an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We discuss each of the du Pont factors as to which applicant or the examining attorney submitted argument or evidence. First, we consider and compare the appearance, sound, connotation and commercial impression of the marks in their entireties as well as the relative strength or weakness of the registered mark. To state the obvious, applicant’s and registrant’s marks are identical. Furthermore, there is no evidence of record that as applied to applicant’s and 2 Registration No. 2338314, issued April 4, 2000 on the Principal Register, alleging January 21, 1999 as the date of first use anywhere and in commerce; Section 8 affidavit accepted; renewed. Serial No. 77917959 3 registrant’s respective goods, the marks engender a different commercial impression. Applicant contends that the cited mark POLY-SIL is weak, based on a single third-party registration for the mark “POLY- SIL for liquid silicone polymers used for molding.”3 We acknowledge that the mark POLY-SIL is derived from “polymer” and “silicone” and therefore as applied to the goods is suggestive. Nonetheless, even weak marks are entitled to protection against registration of a confusingly similar mark. See Giant Food Inc. v. Rosso and Mastracco, Inc., 218 USPQ 521 (TTAB 1982). We therefore conclude that the first du Pont factor weighs in favor of finding a likelihood of confusion. Next, we consider the goods and channels of trade. At the outset, we note that the goods in question are not identical. However, it is not necessary that the goods or services be identical or even competitive in nature in order to support a finding of likelihood of confusion, it being sufficient that the goods or 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 circumstances that would give rise, because of the marks employed thereon, to the mistaken belief that they originate 3 Registration No. 1769585. Serial No. 77917959 4 from or are in some way associated with the same producer. In re Home Builders Assn. of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990). Further, when marks are identical, it is only necessary that there be a viable relationship between the goods to support a finding of likelihood of confusion. In re Concordia International Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983). In framing our analysis, we have taken into account that registrant’s identification of goods is broadly worded and not limited to any particular use or application. Indeed, Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b), gives the registrant the right to use the mark for the goods as they are identified in the registration. In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) (“The certificate of registration is prima facie evidence of the validity of the registration and the registrant's exclusive right to use the mark in connection with the services specified.”). We must therefore assume that, contrary to the position advocated by applicant that registrant’s particular type of caulking is not a product used with roofs, registrant’s “solid surface polymer suspended in silicone caulking for use as sealant/adhesive” can be used for all appropriate purposes for such goods, including on roofs. The examining attorney argues that applicant’s and registrant’s goods are complementary and can be used together to Serial No. 77917959 5 work on the same roofing project, and has submitted Internet evidence demonstrating this, as follows: A printout from the web site located at http://www.Dynasolv.com/Dyna-seal shows a single entity, Dynasolv, offering both roof coating and caulk under a single trademark. This excerpt from that web site advertises both products and explains their function, clearly stating that they can be used either separately or together in the repair of roofs: DYNA-SEAL™ clear elastomeric roof repair and leak stopping products are available both in DYNA-SEAL Brushable Sealant… for brush application and DYNA-SEAL™ Elastomeric Caulk… for filling joints and cracks wider than 1/16. The two products exhibit excellent adhesion to each other when used together or they can be used separately. A web site of instructions for do-it-yourselfers on roof repair specifically points out that to repair a metal roof, “roof coating” and “roofers caulk” are “necessary” tools, and that a consumer may literally have both products in hand. See printout from www.sealmarkcoatings.com. Excerpts from http://www.fixallroofs.com/roof_repair shows an entity, EPDM Coatings, advertising for sale both roof coatings and roof sealant caulk, thereby showing that the goods in question may emanate from the same source. 4 4 The examining attorney also submitted third-party registrations to show the relatedness of the goods. While that evidence provides Serial No. 77917959 6 We find that this evidence shows that applicant's identified “elastomeric silicone roof coating” is likely to be purchased and/or used by the same consumers (for example, a professional roofer, handyman, or do-it-yourselfer homeowner) who also purchase and use registrant's “solid surface polymer suspended in silicone caulking for use as sealant/adhesive” which, as broadly identified, includes caulking for roofs. Turning now to the trade channels, applicant has submitted evidence that its roof coatings are not sold to the general public but rather only to qualified roofing professionals. Applicant further points to evidence obtained from the prosecution history of the cited registration indicating that registrant’s caulking products are sold only to professional fabricators and installers. As discussed above, however, the examining attorney has introduced evidence rebutting applicant’s assertion that its identified goods can be sold only to licensed professional roofers, and demonstrating instead that such goods are sold to the general public – in other words, the do-it- yourselfer homeowner. As to registrant’s goods, we cannot look to extrinsic evidence to restrict the channels of trade. See In re Bercut Vanervoot & Co., 229 USPQ 763, 764 (TTAB 1986). Rather, we must deem the goods to travel in all channels of support for our conclusion that the goods are related, we have not relied on the registrations in making our determination and therefore Serial No. 77917959 7 trade appropriate for such goods. Because the goods in the cited registration are not restricted as to any particular use, and because the evidence shows that the goods identified in the application and cited registration may be sold to do-it- yourselfers and professionals, we must assume that both products travel through the same trade channels and be purchased by the same classes of purchasers. See Squirtco v. Tomy Corporation, 697 F.2d 1038, 216 USPQ 937 (Fed. Cir. 1983). In other words, we must presume that applicant's and registrant’s goods could be sold in the same stores, possibly even on the same shelves since they could both be used for roofing. Because the goods could be used for the same roofing construction or repair project, consumers could purchase them together. The Board’s determination in the case of In re Johns- Manville Corporation, 180 USPQ 661, 662 (TTAB 1973), is particularly instructive here since it also involved an identical mark used on different, complementary products in the construction field: In the instant case, building doors and asphalt shingles, although obviously different products, are construction materials that could be employed in the construction of a building; they could be distributed or obtained through a building supplies company; and they could be purchased by the same general contractor responsible for the overall construction of the building or possibly in the case of a small structure by the individual or individuals who perform the actual installation. Under these it is not necessary to provide the details of these registrations. Serial No. 77917959 8 circumstances, it is not unreasonable to assume, in this day and age of diversification and expansion, that if these products were to be encountered by customers and prospective customers under the identical mark “WEATHER KING”, they would mistakenly assume that they originate from or are in some way connected with the same producer. While the average purchaser of goods of these descriptions may be skilled craftsmen, it does not necessarily follow therefrom that they are equally informed as to the source of the products that they use and are, unlike customers for other products, immune from the likelihood of confusion or deception that the statute is attempting to preclude. For the same reasons articulated in that case, we find that the second and third du Pont factors also weigh in favor of finding a likelihood of confusion. We now turn to the fourth du Pont factor, the sophistication of the purchasers. Applicant argues that because the purchasers of the applicant’s products are sophisticated professionals with specialized training, it is highly unlikely that they will be confused as to the source of the products they buy. Applicant points to evidence in the record that the purchase of roofing materials is not an impulse purchase, and requires a purchaser to complete extensive forms before obtaining the products. However, insofar that the applicant’s and registrant’s identified goods are not restricted to purchase by professionals, we again cannot rely on this extrinsic evidence. As discussed above, the examining attorney has submitted evidence that the ordinary, do-it-yourselfer is a prospective consumer of both applicant’s and registrant’s Serial No. 77917959 9 identified goods. Such a consumer is likely to exercise only ordinary care in making purchasing decisions. In any event, even if the only consumers are professionals, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. See In re Cynosure, Inc., 90 USPQ2d 1644 (TTAB 2009). With identical marks and related goods, even a careful, sophisticated consumer of such goods is not likely to understand that the goods emanate from different sources, particularly where, as here, there is evidence that both types of goods may emanate from a single source under a single mark. Cunningham v. Laser Golf Corp., 222 F.3d 943, 948- 949 (Fed. Cir. 2000). Accordingly, the fourth du Pont factor weighs in favor of finding a likelihood of confusion. Lastly, applicant states that it is not aware of a single instance of actual confusion in the twelve years that the marks have been in contemporaneous use. We assume that applicant is relying on the du Pont factor of “the length of time during and conditions under which there has been concurrent use without evidence of actual confusion.” However, as the Court of Appeals for the Federal Circuit stated in In re Majestic Distilling Co., 65 USPQ2d at 1205, “the lack of evidence of actual confusion carries little weight, especially in an ex parte context.” Serial No. 77917959 10 (internal citation omitted). This du Pont factor, to the extent it favors applicant, is deserving of lesser weight in the overall analysis. Considering all of the evidence of record, we conclude that although the marks are weak, they are identical; the goods are complementary; and, as identified, they must be presumed to be sold through the same channels of trade to the same classes of purchasers. Although the lack of evidence of actual confusion favors applicant, because we have no information as to registrant’s experience, or as to whether there has been an opportunity for confusion to occur if it were likely to occur, this factor is accorded less weight. To the extent that there are any other relevant du Pont factors, we treat them as neutral. Weighing all of the relevant factors, we find a likelihood of confusion between applicant's mark and the cited registration. To the extent that there is any doubt on this issue, it is well established that we must resolve that doubt in favor of the prior registrant. In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984). See also In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988). Decision: The refusal is affirmed.