Dymon, Inc.v.Canyon Global Corp.

Trademark Trial and Appeal Board

Sep 8, 1999

No. 91097715 (T.T.A.B. Sep. 8, 1999)

Paper No. 44
DEB
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Dymon, Incorporated
v.
Canyon Global Corporation
_____
Opposition No. 97,715
to application Serial No. 74/548,490
filed on July 12, 1994
_____
J. David Wharton and Constance M. Jordan of Shook Hardy & Bacon,
L.L.P. for Dymon, Incorporated.
Alan D. Rosenthal of Rosenthal & Osha, L.L.P. for Canyon Global
Corporation.
______
Before Simms, Hanak and Bucher, Administrative Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Canyon Global Corporation, a Texas corporation, has filed an
application for registration of the mark “ROUGH STUFF” for “hand
creams.”1
Dymon, Incorporated, a Missouri corporation, filed a timely
notice of opposition on June 5, 1995. As grounds for opposition,

1 Serial No. 74/548,490, in International Class 3, filed July 12,
1994, based upon an allegation of a bona fide intention to use the
mark in commerce. Although the original application was for “skin
care products, namely, moisturizers, cleansers and hand creams” in
International Class 3, and “analgesic balms” in International Class 5,
during the course of this opposition proceeding, applicant amended its
goods to merely “hand creams” in Int. Cl. 3 in order to delete the
goods for which it no longer intends to use the mark.
Opposition No. 97,715
2
opposer asserts that applicant’s mark so resembles the previously
used and registered trademark “ROUGH TOUCH” for waterless hand
cleaner2, and the same mark “ROUGH TOUCH” for waterless hand
towels impregnated with a chemical cleaner and for liquid hand
cleaners (these latter two uses unregistered), as to be likely,
when applied to applicant's goods, to cause confusion, or to
cause mistake, or to deceive.
Applicant, in its answer, has admitted that it filed the
instant application under the intent-to-use provisions of the
Trademark Act, but has otherwise denied the salient allegations
of the opposition. A trial was conducted and legal briefs have
been filed. In July 1999 the parties jointly withdrew their
earlier request for an oral hearing, so this case has been
decided on the evidence and briefs of record.
The record includes the file of the opposed application; a
copy of applicant’s responses to opposer’s two sets of
interrogatories introduced by opposer under a notice of reliance
pursuant to 37 C.F.R. §2.120(j)(3)(i); the status and title copy
of opposer’s subsisting registration; and the testimony
deposition of Daniel J. Schrock, Executive Vice President and
Chief Operating Officer of opposer, Dymon, Incorporated, with
eight attached exhibits. Applicant, Canyon Global Corporation,
has presented no evidence.

2 Opposer is the owner of Registration No. 1,254,220, issued on
October 18, 1983 from an application filed on May 11, 1981, which sets
forth dates of first use of November 1980; §8 affidavit accepted and
§15 affidavit received.
Opposition No. 97,715
3
Opposer develops, manufactures and sells specialty chemical
cleaning products for the cleaning and maintenance industries.
Among its varied product categories is that of hand and body
cleaners. Opposer has used the “ROUGH TOUCH” mark on waterless
hand cleaner since the early 1980’s, and on disposable,
waterless, impregnated hand cleaning towels since 1993.3 The
products contain chemical skin cleaners, mild abrasives,
emollients and conditioners, and a fragrance.4 While it markets
over four hundred different kinds of items,5 opposer contends
that these personal, skin care products sold under the “ROUGH
TOUCH” mark are among Dymon’s most popular lines.6 Opposer
spends over $100,000 per year on promoting these products.7
While the precise number is held confidential, the annual sales
of its “ROUGH TOUCH” products alone in recent years have been in
the millions of dollars.8
Even though applicant deleted cleaners from its
identification of goods late in this proceeding, opposer argues
that its cleaners are related or complementary items to
applicant’s hand creams. Given that its products contain
emollients and conditioners to offset dry, chapped skin, opposer
argues that its skin care products are actually a combination

3 Deposition of Daniel J. Schrock, pp. 6–7.
4 Deposition of Daniel J. Schrock, p. 9; Exhibit #4.
5 Deposition of Daniel J. Schrock, p. 8.
6 Deposition of Daniel J. Schrock, p. 7.
7 Deposition of Daniel J. Schrock, pp. 7, 21-22.
8 Deposition of Daniel J. Schrock, pp. 22, 39.
Opposition No. 97,715
4
hand cleanser and hand cream. Opposer also argues in detail that
the marks sound alike, look alike and have similar connotations.
In turn, applicant points out that opposer does not use its
mark in connection with any hand cream and has no intention to do
so, yet hand cream is the sole product for which applicant is
still seeking registration.
In discussing the alleged dissimilarities in the marks,
applicant argues that because all of opposer’s goods sold under
the “ROUGH TOUCH” mark contain an abrasive material, the word
“rough” is wholly descriptive for opposer’s goods (applicant’s
emphasis). Applicant contends that the word “ROUGH” is the only
point of similarity in the two marks, and so when the marks are
compared in their entireties, they are not really similar enough
in sight, sound or meaning to deny registration of “ROUGH STUFF”
to applicant.
In light of opposer’s reliance on the status and title copy
of opposer’s valid and subsisting registration for “ROUGH TOUCH,”
priority of the “ROUGH TOUCH” mark is not an issue. See King
Candy Co. v. Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108
(CCPA 1974). Even without the pleaded registration, opposer's
prior use of the “ROUGH TOUCH” mark is clear from the testimony
of Mr. Schrock.
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
Opposition No. 97,715
5
factors which, if relevant, should be considered in determining
likelihood of confusion.
Opposer’s goods sold under the “ROUGH TOUCH” mark are all
products for industrial-strength, hand cleaning. Applicant has
narrowed its goods to hand cream. We find that these goods,
while not competitive, are nonetheless related. The fact that
opposer’s goods contain emollients and conditioners means that
essential oils or emollients are critical components of both
products. This fact further supports a conclusion that the goods
of the parties are related. Further, while neither party’s
channels of trade are in any way limited, it appears from the
evidence that both are similarly committed to serving commercial
and industrial markets. Given that neither party has any
restrictions on its channels of trade, we presume that these
goods will be sold in all the same channels of trade to the same
class of purchasers. Hence, with totally overlapping channels of
trade for closely related goods, the contemporaneous use of
nearly identical marks on both types of products would result in
a likelihood of confusion.
However, we turn next to a discussion of the similarity of
the marks. Opposer argues that the marks look alike, sound alike
and have similar connotations. By contrast, applicant contends
that the only thing they have in common is the “wholly
descriptive” word “rough.”
We agree with opposer that the word “ROUGH” is not
descriptive of its products sold under this mark. However, it is
Opposition No. 97,715
6
suggestive of a product containing mild abrasives like pumice.
It may also allude to the state of the user’s soiled hands prior
to using the cleaning products. Or it may even suggest the fact
that only a heavy-duty product could successfully take on such a
difficult challenge. With that in mind, we look to the
similarity of the marks under the sight/sound/meaning trilogy.
Comparing the marks in their entireties as to overall
appearance, opposer argues that both marks are made up of two
words, where each word contains five letters. As to similar
letters, the second words in both marks have the letters “t” and
“u” in common, and in that order. However, when “ROUGH STUFF”
and “ROUGH TOUCH” are compared in their entireties, we find that
the words “stuff” and “touch” are quite dissimilar in appearance.
In spite of the fact that the first word in both marks is
identical, the differences between the second words is stark
enough that one cannot so easily overlook this dissimilarity in
overall appearance.
As to sound, opposer argues that each second word repeats
the soft vowel sound of the first word, rough. Opposer seems to
be arguing that while the words “touch” and “stuff” alone have
obvious differences in sound from each other, when combined with
the word “rough,” they create combined terms having similar
cadences, with each arguably having a rhyming pattern with the
word “rough.” While the vowel sounds in all three words are
identical, even when comparing the two marks in their entireties,
Opposition No. 97,715
7
we find the pronunciation of the second words, “touch” and
“stuff,” to be different enough to avoid confusion.
Finally as to connotation, applicant argues that the marks
have similar connotations -- connoting “an unpolished, non-subtle
approach” or “skin care products that really do the job!” It
seems clear that both parties have chosen the word “rough”
because of its appeal to individuals who have industrial jobs
where one’s bare hands get extremely soiled and dirty.
In the vernacular, the term “rough stuff” may suggest
aggressive competition in sports, a lack of fine craftsmanship,
etc. In the context of applicant’s product, it seems to be
suggestive of the type of workers who would benefit from using a
therapeutic hand cream, or the condition of their hands prior to
such use.
The word “rough” in the context of opposer’s composite mark
(“ROUGH TOUCH”) has several clearly suggestive meanings. For
example, as contrasted with “Soft Touch”® hand cleaners (without
pumice) also sold by opposer, all of its “Rough Touch”® hand
cleaner products (with pumice) do contain a mild abrasive.
Additionally, such a “heavy duty” or “rough” product seems well
designed for extremely soiled or “rough” hands. “Touch” is
clearly a word that evokes the use of one’s hands – a connotation
that seems quite appropriate in a mark used on hand cleaners in
the context of each of the above suggestions for likely meanings
of the word “rough.”
Opposition No. 97,715
8
Although there is sufficient information in the instant
record for us to agree with opposer that “ROUGH TOUCH” may well
represent a significant product line for opposer, we are not
convinced that this is a well-known mark, and hence entitled to a
broader scope of protection than we would otherwise conclude. In
fact, the actual dollar level of annual expenditures for external
promotion of the “ROUGH TOUCH” line (i.e., not counting the
production and printing costs of putting together catalogues used
down through the distribution chain) appears to be around
$15,000. This direct expenditure on marketing the trademark, as
a function of the actual dollars of product sales for the year
1998, has to be deemed to be miniscule.
For all these reasons, we find that despite a relationship
between the goods, the differences between the marks as to sight,
sound and meaning simply outweigh all the other relevant du Pont
factors.
Decision: The opposition is dismissed.
R. L. Simms
E. W. Hanak
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial and
Appeal Board