Raven Lining Systems, Inc.

Trademark Trial and Appeal Board

Jul 29, 2002

No. 75472685 (T.T.A.B. Jul. 29, 2002)

Paper No. 12
DEB
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Raven Lining Systems, Inc.
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Serial No. 75/472,685
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Mark G. Kachigian of Head Johnson and Kachigian for Raven
Lining Systems, Inc.
Tracy L. Fletcher, Trademark Examining Attorney, Law
Office 115 (Tomas Vlcek, Managing Attorney).
_______
Before Simms, Cissel and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Raven Lining Systems, Inc. seeks to register the mark
AQUATAPOXY on the Principal Register for “epoxy-based
coating for the protection and rehabilitation of water and
wastewater structures,” in International Class 2.1
The Trademark Examining Attorney refused registration
under Section 2(d) of the Lanham Act on the ground that
applicant’s mark, when used on the goods identified in the
1 Application Serial No. 75/472,685 was filed on April 23,
1998, based upon applicant’s allegation of use by its
predecessors in interest in interstate commerce since at least
as early as September 1983.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Serial No. 75/472,685
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application, so resembles two registered trademarks that
confusion is likely. These cited registrations are owned
by two separate entities. The first is for the mark AQUA
POXY for “waterproofing coating for basements and interior
masonry,” in International Class 19.2 The second cited
registration is for the mark AQUA EPOXY for “paints,
varnishes, lacquers and assorted colors used as protective
coatings on various types of metals to protect against
weather elements for use on exterior metal surfaces,” in
International Class 2.3
Responsive to the refusal to register, applicant
argued that the marks are dissimilar and that the goods
are unrelated. In addition to the obvious differences
between its mark and the two cited marks, applicant
focused in detail on the fact that applicant markets
specialty, technical products to certified professionals
for application to large-scale water and wastewater
structures maintained by municipal, industrial and other
commercial applications.
2 Registration No. 1,037,478 issued on April 6, 1976;
Section 8 affidavit accepted and Section 15 affidavit
acknowledged; renewed. The expression “poxy” is disclaimed
apart from the mark as shown.
3 Registration No. 2,165,038 issued on June 16, 1998. The
word “epoxy” is disclaimed apart from the mark as shown.
Serial No. 75/472,685
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On the other hand, the Trademark Examining Attorney
argues that applicant’s mark is highly similar to each of
the cited marks in overall commercial impression. As to
the relatedness of the goods, the Trademark Examining
Attorney argues that “applicant’s protective coatings as
identified in the application could encompass each of the
registrant’s protective coatings as identified in the
registrations.” (Trademark Examining Attorney’s appeal
brief, p. 8).
Both applicant and the Trademark Examining Attorney
filed briefs on appeal, but applicant did not request an
oral hearing before the Board.
We reverse the refusal to register.
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). This case sets forth the factors that should be
considered, if relevant, in determining likelihood of
confusion.
Turning first to the similarities/dissimilarities in
the marks, we note the argument in favor of similarity
made by the Trademark Examining Attorney, as follows:
The applicant has essentially appropriated
the first registrant’s mark [AQUA POXY] and
merely added the letters “TA” to create a
Serial No. 75/472,685
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single word mark. The applicant has
similarly appropriated the second
registrant’s mark [AQUA EPOXY] after
deleting the “E” in “EPOXY.” The marks
create the same commercial impression of
water and epoxy and purchasers are
consequently likely to believe that related
goods offered in connection with these
marks emanate from a common source.
By contrast, applicant argues that while its
AQUATAPOXY mark may create a somewhat similar connotation
to each of the cited marks, the differences in sound and
appearance are legally significant:
[T]he addition of the “TA” segment to the
AQUA prefix creates a distinct root which
differs from the other cited “AQUA” marks…
It is not fair [for the Trademark Examining
Attorney] to say that by the addition of
this extra syllable – i.e., adding the
letters “TA” – the Applicant has failed to
distinguish its mark from the other “AQUA”-
type marks that populate the Principal
Register. This key addition causes a
distinctly different pronunciation, while
changing the appearance of the term as
well.
A second factor supports the finding that
the Applicant’s mark differs in appearance
from the others cited. That is, the
Applicant has made a conscious choice not
to include a space (or even a hyphen)
between the AQUATA and POXY segments, which
stands in contrast to either of the cited
marks…
The Trademark Examining Attorney is correct that the
common AQUA prefix with the same POXY suffix in all three
of these marks combine to create terms that could each
Serial No. 75/472,685
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connote both “water” and “epoxy.” On the other hand, in
the cited marks, AQUA could suggest water or a color,
while applicant’s AQUATA suggests water (aquatic) but not
a color designation. However, the key factual
determination before us when considering this critical
du Pont factor is whether applicant’s insertion of its
“TA” syllable into the middle of this long, compound term
results in perceptible visual and aural differences
sufficient to conclude that the marks are basically
dissimilar as to overall sound and appearance.
As to appearance, we agree with applicant that
AQUATAPOXY, a single word, has a decidedly different
appearance from both AQUA POXY and AQUA EPOXY because of
the additional “TA” syllable and the absence of any space
within the term. Additionally, as to pronunciation, the
cited marks are fairly straightforward – four syllables of
ak'wpäk-ēor five syllables of ak'w-päk-ē. However, given
that “there is no correct pronunciation of a trademark,”
In re Belgrade Shoe, 411 F.2d 1352, 162 USPQ 227 (CCPA
1969), and Yamaha International Corp. v. Stevenson, 196
USPQ 701 (TTAB 1977), and cases cited therein, applicant’s
mark may be pronounced ak'wta-päk-ēor kwat' a-päk-ē. In either
case, it is a much more challenging term to pronounce.
This is true because the internal “TA” sound will likely be
Serial No. 75/472,685
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an uncomfortable insertion in this coined term, receiving a
studied emphasis and/or its presence in that exact location
may well change the perceived cadence and structure in the
pronunciation of the overall term.
In any case, we have to agree with applicant that on
any of the elements of the sight-sound-meaning trilogy, the
two cited marks are much more like each other than
applicant’s mark is similar to either of the cited marks.
Accordingly, we find that this first du Pont factor favors
applicant’s position of no likelihood of confusion.
We turn next to the du Pont factor dealing with the
relatedness of the respective goods. The AQUA POXY
product is a waterproofing sealant applied to interior
concrete and masonry surfaces in the basements of houses.
The AQUA EPOXY product is used to protect exterior metal
surfaces (such as railroad cars) from weather and the
elements. Applicant’s high performance, ambient cured,
thermosetting epoxies are specifically designed for
difficult environments that are by definition wet –
municipal water and sewer systems. According to the
declaration of applicant’s chairman, applicant’s goods are
applied by special certified contractors. Hence, it is
clear on this record that these are all specialty coatings
Serial No. 75/472,685
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formulated and marketed for disparate and specific
technical applications.
In light of the preceding discussion of the goods of
applicant and the two registrants, we conclude that the
established, likely-to-continue channels of trade for
these three types of epoxy coatings will be quite
dissimilar. The goods in the first cited registration are
targeted to the domestic market – consumers who want to
prevent moisture from getting through the concrete and
masonry of their basement walls and floors, or the
contractors such homeowners may hire. The goods in the
second cited registration are targeted to manufacturers
and reconditioning firms who want to protect exterior
metal surfaces from the elements. By contrast, applicant
markets its products to certified professionals for
municipal, industrial and other commercial applications
involving large-scale water and wastewater structures.
Accordingly, we conclude that the du Pont factor dealing
with different trade channels also favors a finding of no
likelihood of confusion.
As to the conditions under which and buyers to whom
sales are made, these are specialty products, and at a
minimum, the goods of the second cited registration and of
applicant are directed toward quite sophisticated
Serial No. 75/472,685
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purchasers. The record makes it clear that all three of
these products have specific applications, must be mixed
and applied under the most exacting of conditions (e.g.,
cure rates, levels of temperature, moisture and other
ambient conditions), and that the products covered by the
cited registrations are potentially hazardous materials,
laden with materials safety data sheets having pages of
precautions, health hazards, procedures for dealing with
leaks or spills, and extensive information on safe
handling.
As to the number and nature of similar marks in use
on similar goods, the Trademark Examining Attorney has
argued as follows:
As evidence of the strength of the
registrant’s marks, the Examining Attorney
previously attached the results of a search
of the Office’s computerized database as
part of the application record, herein.
The Examining Attorney notes that the
search results which were unlimited by
International or Coordinated Classes,
reflect the existence of only three
registrations comprising the root term
“AQUA” with the root term “POXY.” Two of
the registrations retrieved are the cited
registrations, the third registration for a
dissimilar mark is not at issue.
(Trademark Examining Attorney’s appeal
brief, p. 4).
Applicant, on the other hand, argues that in
International Class 2 alone, there are 178 subsisting
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registrations on the Register having an “AQUA” prefix and
36 having a “POXY” suffix. However, the Trademark
Examining Attorney has correctly objected to the timing
and summary presentation of this listing, so we have not
considered this listing in reaching our decision.4
Nevertheless, based solely upon the dictionary
entries for “aqua” and “epoxy,” we conclude that each of
these words alone is suggestive (“aqua” and “poxy”) or
generic (“epoxy”) for two component, water-containing
epoxy coatings. Hence, the combination of these terms as
seen in the two cited, registered marks should not be
given the same scope of protection as would be the case
with a coined or arbitrary term applied to the same array
of epoxy products as we are considering herein.
As to the du Pont factor dealing with the length of
time during and conditions under which there has been
concurrent use without evidence of actual confusion, the
4 These alleged third-party registrations (applicant’s
“Exhibit D”) were not properly made of record. In order to make
third-party registrations of record, soft copies of the
registrations or printouts from the U.S. Patent and Trademark
Office electronic database must be submitted. See Weyerhaeuser
Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992). This was not done.
Furthermore, the printouts of the search results were an exhibit
attached to applicant’s brief, and hence were untimely. The
record must be complete prior to the time of the appeal. See,
37 CFR 2.142(d); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532
(TTAB 1994).
Serial No. 75/472,685
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Trademark Examining Attorney is correct that the test
under Section 2(d) of the Act is likelihood of confusion,
not actual confusion. Nonetheless, applicant points to
sixteen years of coexistence with the AQUA POXY mark (as
of the year 2000) without any actual confusion and seven
years of coexistence with the AQUA EPOXY mark (again, as
of the year 2000, when the declaration was taken) without
any actual confusion. While we have no evidence that
these respective marks have been used contemporaneously in
the same geographical area, the file does contain evidence
that all of these epoxy products can at the very least be
researched worldwide via Internet sites, and contacts can
be made in this manner for the purchase of each product
from the respective vendor. Moreover, as to whether there
has been sufficient opportunity for confusion to occur,
the record does contain a declaration of Morton A. Cohen,
chairman of the board of applicant corporation, that
applicant has spent more than $1 million in advertising
this product over the past seven years. Hence, the record
does indicate that in addition to the fact that applicant
and its predecessors have used this mark continuously
since 1983, applicant’s sales and advertising activities
have been appreciable for a significant period of time.
Yet in spite of this appreciable and continuous usage, not
Serial No. 75/472,685
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a single instance of actual confusion has come to the
attention of applicant.
Without a more complete picture of the degree of
usage of registrants’ respective marks, this asserted lack
of actual confusion, taken by itself, has limited
probative value regarding applicant’s arguments as to a
likelihood of confusion. Nonetheless, to the extent it
serves to corroborate our findings on the other relevant
du Pont factors herein, this factor does not support the
Trademark Examining Attorney’s refusal to register.5
Finally, in assessing the extent of potential
confusion, given the totality of the evidence in this
record, including the dissimilarities between applicant’s
mark and the cited marks, the suggestiveness of the cited
marks, and disparate uses for the respective goods, the
potential for confusion is de minimis.
5 We accord no weight to the fact that applicant’s
predecessors in interest owned a federal registration of this
matter on the Principal Register from 1987 to 1993 (cancelled
due to that earlier registrant’s failure to file a §8
affidavit). Even if this earlier registered mark had
characteristics quite similar to the present application, the
Office’s allowance of such prior registrations (despite the
existence on the registry in 1986 of the AQUA POXY registration
cited herein) does not bind the Board or our reviewing Court.
In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001); and In re Owens-Corning Fiberglas Corp., 774
F.2d 1116, 1127, 227 USPQ 417, 424(Fed. Cir. 1985).
Serial No. 75/472,685
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In conclusion, we find that the cited marks are
entitled to limited scopes of protection, that the marks
are different as to appearance and sound, that the
respective goods are specialized and move in different
channels of trade to sophisticated purchasers, that there
has been a long period of concurrent use without applicant
becoming aware of a single instance of actual confusion,
and that overall, the potential for confusion is de
minimis.
Decision: The refusal to register is reversed.