Roycon, Inc.

Trademark Trial and Appeal Board

Jul 26, 2007

No. 78690119 (T.T.A.B. Jul. 26, 2007)

Mailed: July 26, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Roycon, Inc.
________

Serial No. 78690119
_______

Stuart D. Hirsch of The Kennedy Law Firm, APC for Roycon,
Inc.

Kaelie Kung,1 Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_______

Before Rogers, Drost and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by Roycon, Inc. to register
on the Principal Register the mark shown below for the
following services: “construction of concrete surfaces,
including buildings, driveways, pool decks, walkways,
slabs, floors, roadways and other constructed items” in
International Class 37.2

1 The above application was reassigned to the examining attorney
whose name is shown to prepare the appeal brief.

2 Application Serial No. 78690119 was filed August 10, 2005,
based on applicant’s assertion of September 30, 2006 as the date
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 78690119
2

The examining attorney refused registration under
Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used in connection with its services,
so resembles the mark shown below, previously registered on
the Principal Register for the following goods: “concrete
building walls and concrete modules, namely, multiple
intersecting walls defining part of a building” in
International Class 19,3 as to be likely to cause confusion.

When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs on the

of first use of the mark in commerce. Applicant disclaimed the
exclusive right to use “CONCRETE” apart from the mark as shown.
In addition, applicant describes the mark as follows: “The mark
consists of a crown above the name.”

3 Registration No. 3047513, issued January 24, 2006 with a
disclaimer of “CONCRETE” and “INC.” apart from the mark as shown.
The color blue is claimed as a feature of the mark.

Ser No. 78690119
3
issue under appeal. In addition, applicant filed a reply
brief.
Preliminary Matters
Before turning to the substantive ground for refusal,
some preliminary matters require our attention.
Materials Submitted with Applicant’s Brief
We note that applicant has submitted a declaration
with several exhibits with its main brief. The declaration
is from an officer of applicant who attests to the length
and nature of applicant’s use of its mark, and further
introduces a copy of applicant’s Fictitious Business Name
Statement indicating that applicant has been in business
since 1986 (Exhibit A); two invoices displaying applicant’s
mark, dated February 11, 1988 and April 17, 2006 (Exhibits
B and C); a printout from registrant’s Internet web site
(Exhibit D); printed copies of applicant’s application and
the cited registration, taken from the United States Patent
and Trademark Office’s (USPTO’s) Trademark Electronic
Search System (TESS) (Exhibits E and F); a printout from
the Internet web site of a third party (Exhibit G); and a
copy of the June 13, 2006 Office action issued by the prior
examining attorney for this application (Exhibit H).
We note that the Fictitious Business Name Statement
and invoices comprising Exhibits A - C previously were
Ser No. 78690119
4
submitted with applicant’s response to the prior examining
attorney’s first Office action. As such, they are properly
of record in this proceeding. Moreover, by its very nature
the June 13, 2006 Office action comprising Exhibit H is of
record herein.
As to Exhibits D - G, we agree with the examining
attorney that these submissions are untimely, and they have
not been considered. See Trademark Rule 2.142(d) (the
evidentiary record in an application should be complete
prior to the filing of an ex parte appeal). Similarly, we
find the declaration of applicant’s officer, submitted with
its brief, to be untimely. Id. We note applicant’s
assertion in its reply brief that exclusion of these
exhibits would both “VIOLATE THE SPIRIT AND ESSENCE OF THE
RULES OF EVIDENCE AND THE LANHAM ACT” (reply brief, heading
p. 1) and further be prejudicial to its ability to defend
its application on appeal. However, it is settled that
evidence submitted after the filing of an appeal normally
will be given no consideration. Id. See also TBMP
§1207.01 (2d ed. rev. 2004) and the authorities cited
therein. While, as applicant argues, the Board takes a
more permissive stance regarding the admissibility and
probative value afforded certain types of evidence
submitted in ex parte appeals (See TBMP §1208 and the
Ser No. 78690119
5
authorities cited therein), applicant provides no support
for its argument that such latitude extends to the
requirement that the evidence in question be timely filed.
Applicant was afforded ample opportunity to timely submit
evidence to support its position during the prosecution of
its application, and will not now be heard to argue that
its late-filed evidence must be given consideration. As to
applicant’s assertion of prejudice, we note for the reasons
outlined below that had we considered such evidence in our
determination of the issue on appeal, the result would be
the same.
Applicant’s Request For Remand
Further, with its reply brief, applicant requests
remand of the application for consideration of its Exhibits
D – G. As grounds therefor, applicant states that the
information contained in those exhibits
was not included in the examining attorney’s
initial review of the application and thus, was
not known to the APPLICANT at the time of its
application, or at any time prior to appeal. The
APPLICANT had no reason to suspect or to know
that its application would be denied due to
minute similarities between some company which
creates and sells pre-cast cement walls and
modules to be put into place at [a] construction
site in Florida and the APPLICANT’S service of
pouring concrete on location in Southern
California.

Ser No. 78690119
6
(Reply brief, p. 4). However, applicant has been aware of
the examining attorney’s refusal to register that is the
subject of this appeal since issuance of the first Office
action on March 5, 2006. Indeed, applicant addressed that
refusal to register in its May 10, 2006 response to the
first Office action. Furthermore, applicant neither
asserts, nor does the record support a finding, that the
materials comprising Exhibits D – G were unavailable prior
to the filing of its appeal. In short, applicant’s mere
assertion that such materials previously were “not known”
to it falls short of establishing the requisite good cause
for its remand request at this late stage of the
proceeding, and the request accordingly is denied. See
TBMP §1209.04 and the authorities cited therein.
Likelihood of Confusion
Turning now to the matter under appeal, our
determination of the issue of likelihood of confusion is
based on an analysis of all of the probative facts in
evidence that are relevant to the factors outlined in 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
Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). In any likelihood of confusion analysis, however,
two key considerations are the similarities between the
Ser No. 78690119
7
marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 27 (CCPA 1976). See also
In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1533 (Fed. Cir. 1997).
Similarity of the Marks
We first consider the similarity of the marks. In
this case, applicant’s mark, ROYAL CONCRETE and design, is
similar to registrant’s mark, RC ROYAL CONCRETE CONCEPTS
INC. and design, in that both share the words ROYAL
CONCRETE. There is no evidence of record to support a
finding that ROYAL has a recognized meaning in the concrete
field. Thus, the term ROYAL is at least laudatory and
suggestive as used with both registrant’s goods and
applicant’s services. Further, the word ROYAL is the first
word appearing in applicant’s mark and is displayed beneath
the design of a crown. Thus, ROYAL is the portion of
applicant’s mark to which the viewer is drawn, as well as
the portion that the viewer is most likely to remember.
The crown design in applicant’s mark, though visually
prominent, is less significant than the wording therein.
This is because when a mark comprises both wording and a
design, the wording would be used by customers to request
the identified goods or services. See In re Appetito
Ser No. 78690119
8
Provisions Co., 3 USPQ2d 1553 (TTAB 1987). Further, the
crown design suggests royalty and thus lends further
emphasis to the word ROYAL. For these reasons, we consider
ROYAL to be the dominant feature of the registered mark.
As for the presence of CONCRETE in applicant’s mark,
this term, which has been disclaimed, is obviously
descriptive, if not generic, of the recited services. It
is a well-established principle that, in articulating
reasons for reaching a conclusion on the issue of
likelihood of confusion, there is nothing improper in
stating that, for rational reasons, more or less weight has
been given to a particular feature of a mark, provided the
ultimate conclusion rests on a consideration of the marks
in their entireties. See In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In view of
the descriptive nature of the word CONCRETE, it has little,
if any, source-indicating significance, and is entitled to
less weight in the likelihood of confusion analysis.
With regard to the mark in the cited registration, the
letters RC on a blue rectangular design are visually
prominent and appear to be distinctive as applied to
registrant’s goods. As for the wording in registrant’s
mark, the words ROYAL CONCRETE appear in boldface type that
is larger than that in which the words CONCEPTS, INC. is
Ser No. 78690119
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displayed. As noted above, the word ROYAL appears to be
laudatory and suggestive as applied to registrant’s goods.
The disclaimed words CONCRETE and INC. clearly are
descriptive or generic as applied to applicant and its
goods, and thus, have little or no source-indicating
significance.
The most distinctive portion of applicant’s mark,
namely, the word ROYAL, is identical in part to the most
distinctive portion of registrant’s mark, namely, RC ROYAL.
Further, the words ROYAL CONCRETE appear together in both
marks. Thus, we find that when viewing the marks as a
whole, these similarities outweigh their differences.
Consumers who are familiar with the mark, RC ROYAL CONCRETE
CONCEPTS INC. and design, used in connection with
registrant’s concrete building walls and modules, who then
see the mark ROYAL CONCRETE and design used in connection
with applicant’s services of constructing concrete
surfaces, are likely to assume that the owner of
registrant’s mark simply has utilized a similar mark to
identify its concrete related services. In other words,
consumers are likely to view both marks as variations of
each other, and therefore as indicators of a single source.
Thus, despite the fact that the applicant’s mark includes a
crown design, and registrant’s mark contains the additional
Ser No. 78690119
10
wording RC and CONCEPTS, INC., the marks are highly similar
in appearance, sound, connotation and commercial
impression. Accordingly, this du Pont factor favors a
finding of likelihood of confusion.
Similarity of the Goods and Services
Turning now to our consideration of the recited goods
and services, we must determine whether consumers are
likely to mistakenly believe that they emanate from a
common source. It is not necessary that the goods and
services at issue be similar or competitive, or even that
they move in the same channels of trade, to support a
holding of likelihood of confusion. It is sufficient
instead that the respective goods and services are related
in some manner, and/or that the conditions and activities
surrounding the marketing thereof are such that they would
or could be encountered by the same persons under
circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they originate
from the same producer. See In re International Telephone
& Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
In this case, applicant’s “construction of concrete
surfaces, including buildings, driveways, pool decks,
walkways, slabs, floors, roadways and other constructed
items” is highly similar to registrant’s “concrete building
Ser No. 78690119
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walls and concrete modules, namely, multiple intersecting
walls defining part of a building,” in that both may be
utilized for identical or otherwise related purposes.
Specifically, registrant’s concrete building walls and
modules consisting of walls are used for the identical
purpose as applicant’s construction of concrete buildings.
We note that neither registrant’s goods or applicant’s
services recite any limitations as to the nature or type of
buildings that may be constructed thereby. Thus, it may be
presumed that applicant’s services may be utilized to
construct buildings that are identical to those created
using registrant’s goods. In addition, concrete walls and
modules are closely related to construction of concrete
driveways, decks, walkways, slabs and floors in that the
same buildings may feature registrant’s walls and floors,
as well as walkways, driveways, etc. constructed by
applicant.
Thus, we find that as recited, applicant’s services
may be used for purposes that are identical in part and
otherwise related to registrant’s goods. As a result, the
goods and services are related on their face, and this du
Pont factor also favors a finding of likelihood of
confusion.

Ser No. 78690119
12
Channels of Trade
Furthermore, we are not persuaded by applicant’s
arguments that its customers differ from those of
registrant or that registrant’s goods travel in channels of
trade that are separate and distinct from those in which
applicant’s services may be encountered. It is settled
that in making our determination regarding the relatedness
of the parties’ goods and services, we must look to the
goods and services as identified in the involved
application and cited registration. See Octocom Systems,
Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is
legion that the question of registrability of an
applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the
sales of goods are directed.”) See also Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
respective descriptions of goods.”) In this case, there
are no restrictions in either applicant’s recitation of
Ser No. 78690119
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services or registrant’s identification of goods as to the
channels of trade in which the goods or services may be
encountered, or type or class of customer to which the
goods and services are marketed. Thus, while applicant has
argued that its services are distinct from registrant’s
goods, and presented a declaration and evidence to support
its argument, neither recitation of goods or services
contains any limiting language to support such distinction.
Accordingly, both applicant’s services and registrant’s
goods are presumed to move in all normal channels of trade
and be available to all classes of potential consumers,
including consumers of each others’ goods and services.
See In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). As a
result, this du Pont factor also favors a finding of
likelihood of confusion.
Sophisticated Purchasers
Another du Pont factor discussed by applicant is that
of the conditions of sale. Applicant asserts that its
services and registrant’s goods simply are not impulse
purchases and thus would be purchased by careful and
sophisticated users. However, there is no evidence that
either applicant’s services or registrant’s goods are
limited to use only by highly sophisticated persons. Even
individual homeowners may need concrete walls or concrete
Ser No. 78690119
14
poured on site. Moreover, the marks ROYAL CONCRETE and
design and RC ROYAL CONCRETE CONCEPTS INC. and design are
so similar that even careful purchasers are likely to
assume that the marks identify goods or services emanating
from a single source. Even sophisticated purchasers are
not necessarily knowledgeable in the field of trademarks or
immune from source confusion. See In re Decombe, 9 USPQ2d
1812, 1814-1815 (TTAB 1988). As a result, this du Pont
factor further favors a finding of likelihood of confusion.
Actual Confusion
A further du Pont factor discussed by applicant is
that of the lack of instances of actual confusion.
Applicant asserts that the absence of actual confusion
suggests no likelihood of confusion. However, it is not
necessary to show actual confusion in order to establish
likelihood of confusion. See Weiss Associates Inc. v. HRL
Associates Inc. 902 F.2d 1546, 223 USPQ 1025 (Fed. Cir.
1990). Particularly in an ex parte proceeding, applicant's
assertion of the absence of actual confusion is of little
probative value in our determination on the issue of
likelihood of confusion because the Board cannot readily
determine whether there has been a significant opportunity
for actual confusion to have occurred, such that the
absence of confusion is meaningful. See In re Opus One
Ser No. 78690119
15
Inc., 60 USPQ2d 1812, 1817 (TTAB 2001); In re Kangaroos
U.S.A., 223 USPQ 1025 (TTAB 1984); and In re Jeep Corp.,
222 USPQ 333 (TTAB 1984). In those situations where the
Board has recognized the absence of actual confusion as
probative in an ex parte setting, there existed a
"confluence of facts" which together strongly suggested
that the absence of confusion was meaningful and should be
given probative weight. See In re Opus One Inc., supra;
and In re Jeep Corp., supra. The "confluence of facts" is
not present in this record. As a result, this du Pont
factor appears to be neutral.
Fame and Applicant’s Prior Use of Its Mark
Applicant argues in addition that because it has been
using its mark for 16 years prior to registrant’s use of
the mark in the cited registration, “any fame of either
mark would have to weigh in favor of the APPLICANT” (brief,
p. 14 emphasis in original). However, and as noted by the
examining attorney, any claim of prior use by applicant is
not relevant in an ex parte proceeding. Section 7(b) of
the Trademark Act provides as follows:
A certificate of registration on the principal
register provided by this Act shall be prima
facie evidence of the validity of the registered
mark and of the registration of the mark, of the
registrant’s ownership of the mark, and of the
registrant’s exclusive right to use the mark in
commerce on or in connection with the goods or
Ser No. 78690119
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services specified in the certificate, subject to
any limitations stated in the certificate.

15 U.S.C. §1057(b). Because the mark in the cited
registration is presumed to be valid, and the owner thereof
is presumed to have an exclusive right to use such mark in
commerce, the fact that applicant may have made earlier use
of its mark has no bearing on our determination of
likelihood of confusion in this ex parte proceeding. Thus,
to the extent that applicant is asserting a claim of
priority, such a claim is of no moment herein.
Furthermore, there is no evidence of record regarding the
fame of either applicant’s or registrant’s mark. As such,
this du Pont factor would also appear to be neutral.
Geographic Scope of Application and Registration
Finally, applicant argues that because applicant and
registrant operate in two geographically separate markets,
applicant should be allowed to register its mark. However,
the involved application and the cited registration do not
contain any geographic or other limitations as to the mode
or place of use of the marks or the goods and services on
or in connection with which the marks are used. See
Trademark Act Section 2(d), 15 U.S.C. §1052(d). The Board
will only consider and determine geographic limitations in
the context of a concurrent use proceeding. See Trademark
Ser No. 78690119
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Rule 2.133(c). See also generally TBMP §1100 et. seq. (2d
ed. rev. 2004) and the authorities cited therein. Absent
geographical limitations in the application and
registration, our likelihood of confusion analysis must
presume a nationwide right to use the mark. See Trademark
Act §7(b), 15 U.S.C. §1057. Further, and as noted above,
inasmuch as the identification of goods in the cited
registration is not limited to any specific channels of
trade, we presume an overlap and that the goods would be
offered in all ordinary trade channels for these goods and
to all normal classes of purchasers. See In re Linkvest
S.A., 24 USPQ2d 1716 (TTAB 1992).
Summary
In summary, weighing all of the relevant du Pont
factors, we find that a likelihood of confusion exists.
Moreover, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. See In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 165, 223 USPQ 1289
(Fed. Cir. 1984).
Decision: The refusal of registration is affirmed.