RTX Scientific, Incorporatedv.Nu-Calgon Wholesaler, Inc.

Trademark Trial and Appeal Board

May 29, 2015

No. 92055285 (T.T.A.B. May. 29, 2015)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Mailed: May 29, 2015
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______

RTX Scientific, Incorporated
v.
Nu-Calgon Wholesaler, Inc.
___

Cancellation No. 92055285
___

Joseph A. Mandour, III, Gordon E. Gray III and Ben T. Lila of Mandour &
Associates, APC for RTX Scientific, Incorporated.

Julie C. Jennings and Michael J. Hartley of Senniger Powers LLP for Nu-Calgon
Wholesaler, Inc.
______

Before Quinn, Mermelstein and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:

Nu-Calgon Wholesaler, Inc. (“Respondent”) owns a Principal Register
registration issued under Section 2(f) of the Act for the mark shown below

for “cleaning preparation for air conditioning or refrigeration coils” (the
“Registration”). The Registration includes a color claim and this description of the
Cancellation No. 92055285

mark: “The mark consists of the color blue as applied to the liquid portion of the
goods inside the container. The dotted outline of the goods is intended to show the
position of the mark on the goods and is not part of the mark.”1
In its petition for cancellation, RTX Scientific, Incorporated (“Petitioner”)
alleges that it produces and sells “chemical products used in the Heating
Ventilation and Cooling (HVAC) industry.” Petition for Cancellation ¶ 1. As grounds
for cancellation, Petitioner alleges that Respondent’s involved mark is functional,
merely descriptive of and generic for Respondent’s goods, and has not acquired
distinctiveness “since registrant’s blue design is widely used by a variety of
manufacturers in the HVAC industry for both identical and a variety of products.”
Id. ¶ 3.2 In its answer, Respondent “admits that color marks cannot be inherently
distinctive,” Answer ¶ 3, denies the remaining salient allegations in the petition for
cancellation and asserts as an affirmative defense that its mark has acquired
distinctiveness.3
The Record and Evidentiary Objections
The record automatically consists of the pleadings and the file of the involved
Registration. In addition, Petitioner introduced the following:
1 Registration No. 3888696, issued December 14, 2010 from an application filed October 21,
2009, based on first use dates of April 20, 1992.
2 Petitioner also alleged fraud as an additional ground for cancellation, but that claim was
previously found insufficient and never amended. Board’s March 22, 2013 order at p. 2 n. 2.
In any event, Petitioner did not pursue this claim at trial or argue it in its Trial Brief, and
the claim is accordingly waived. Viacom International Inc. v. Komm, 46 USPQ2d 1233, 1235
n.3 (TTAB 1998); Krause v. Krause Publications, Inc., 76 USPQ2d 1904, 1906 n.2 (TTAB
2005).
3 Respondent also asserts as “affirmative defenses” that its mark is not functional or
generic, which are merely amplifications of Respondent’s denials.

2

Cancellation No. 92055285

Notice of Reliance (TTABVue Dkt. No. 27) (“Petitioner’s
NOR”) on Internet printouts.

Testimony deposition of Keith A. MacRae (TTABVue Dkt.
No. 28) (“MacRae Tr.”), owner and vice president of ACE
Chemical.

Testimony deposition of Dave E. Irvin (TTABVue Dkt. No.
29) (“Irvin Tr.”), founder and sales manager of Specialty
Chemical, which was acquired by DiversiTech in 1998
following which Mr. Irvin “stayed on with DiversiTech.”

Testimony deposition of Scott Garner (TTABVue Dkt. No.
30) (“Garner Tr.”), executive vice president of Quest
Vapco.

Testimony deposition of John Pastorello (TTABVue Dkt.
No. 33) (“Pastorello Tr.”), Petitioner’s chief executive
officer.

Testimony deposition of Roger D. Holder (TTABVue Dkt.
No. 34) (“Holder Tr.”), Petitioner’ expert witness.

Rebuttal Notice of Reliance (TTABVue Dkt. No. 46)
(“Petitioner’s Rebuttal NOR”) on Internet printouts.

Respondent introduced the following:
Testimony deposition of Lawrence Laliberte (TTABVue
Dkt. No. 35) (“Laliberte Tr.”), director of purchasing for
Thermal Supply.

Notice of Reliance (TTABVue Dkt. No. 36) (“Respondent’s
NOR”) on Petitioner’s responses to Respondent’s
interrogatories and requests for admission, portions of the
discovery deposition of Mr. Pastorello (“Pastorello Disc.
Tr.”), Internet printouts and third-party registrations.

Testimony deposition of William Oberheide (TTABVue
Dkt. No. 38) (“Oberheide Tr.”), co-owner and manager of
G&O Thermal Supply.

3

Cancellation No. 92055285

Testimony deposition of Lawrence Lannan (TTABVue
Dkt. No. 40) (“Lannan Tr.”), technical director of Nuance
Solutions, and Respondent’s expert witness.

Testimony deposition of Jeffrey Vendt (TTABVue Dkt. No.
41) (“Vendt Tr.”), Respondent’s director of marketing.

Testimony deposition of John Lawler (TTABVue Dkt. No.
43) (“Lawler Tr.”), Respondent’s vice president of
marketing.

Testimony deposition of Paul I. Fleischut (TTABVue Dkt.
No. 45) (“Fleischut Tr.”), an attorney with Respondent’s
law firm.

Petitioner’s objection to Exhibit V to Mr. Lawler’s deposition on the ground of
hearsay is overruled. Mr. Lawler testified that the exhibit consists of reports
Respondent requires weekly from people with knowledge of the events described
therein and that the records are kept in the course of Respondent’s regularly
conducted business activity. Lawler Tr. 30-33. Petitioner has not shown that the
sources of information in or methods of preparing the reports lack trustworthiness.
Fed. R. Evid. 803(6).
Petitioner’s objections to Mr. Vendt’s and Mr. Lawler’s testimony about sales
of Respondent’s blue NU-BRITE product and to Exhibit J to Mr. Vendt’s deposition
are also overruled. Mr. Vendt and Mr. Lawler both testified sufficiently about how
the records of Respondent’s sales are kept in the ordinary course of business, their
review of those records and their responsibilities in connection with Respondent’s
sales. Vendt Tr. 17-25; Lawler Tr. 20-24. Mr. Vendt testified that Exhibit J, a
declaration which is part of the file history for the involved Registration, was true
when signed and true today. Vendt Tr. 17.
4

Cancellation No. 92055285

Respondent’s objection to Mr. Holder’s expert report is sustained because the
parties did not stipulate to the introduction of expert reports or testimony by
declaration. See Ate My Heart, Inc. v. GA GA Jeans Limited, 111 USPQ2d 1564,
1566 n. 8 (TTAB 2014); Trademark Rule 2.123. Respondent’s objection to Exhibit
137 to the MacRae deposition is overruled because Mr. MacRae testified that he
oversees ACE’s manufacturing and other operations, explained what the document
consists of and who prepared it, and confirmed that it is an ACE business record.
MacRae Tr. at 6, 14-15.
Respondent’s objection to the testimony of Messrs. Garner, Pastorello,
Holder, MacRae and Irvin concerning what these witnesses “think” HVAC industry
customers believe about whether colors identify the source of products in the
industry is overruled to the extent that Respondent seeks to exclude the testimony.
We have considered these witnesses’ testimony for what it is worth, and are able to
weigh the probative value of this type of testimony. See Fed. R. Evid. 701.
Finally, Petitioner’s objections to Mr. Vendt’s testimony about the “Into the
Blue” advertisement and Respondent being the first and exclusive user of blue for
alkaline coil cleaners are overruled. The Board is capable of weighing this evidence
and assigning to it the evidentiary weight it deserves.
Respondent’s Section 2(f) Claim of Acquired Distinctiveness
In the initial, February 2, 2010 Office Action addressing the application
which matured into the involved Registration, the Examining Attorney pointed out
that “color marks are never inherently distinctive.” The Examining Attorney
5

Cancellation No. 92055285

therefore suggested that Respondent either amend the application to seek
registration on the Supplemental Register, or attempt to meet the “substantial”
burden of establishing that the mark had acquired distinctiveness under Section
2(f).
In its July 29, 2010 response to the Office Action, Respondent chose the latter
course, and submitted evidence of acquired distinctiveness including:
A declaration from Mr. Vendt who testified that: (1) NU-
BRITE, the blue liquid coil cleaner product identified in
the Registration, is the “industry’s number one selling
condenser coil cleaner in the United States,” with steadily
increasing sales since the product’s April 1992 inception
with total sales of 1,500,000 gallons;4 (2) Respondent “has
spent over $80,000 advertising its blue coil cleaner
product”; and (3) Respondent’s mark “is recognized in the
industry and by consumers to indicate [Respondent] as
the source of the coil cleaner,” to the point that “end
customers refer to the Nu-Brite coil cleaner as ‘blue,’ such
as, ‘Give me 10 gallons of the blue coil cleaner.’”

A declaration from Mr. Oberheide, who testified that: (1)
“I have been aware of [Respondent’s] color blue trademark
for 16+ years because of its use of the trademark on its
coil cleaner product, as well as in advertising and
promotional materials”; and (2) Respondent’s “color blue
mark operates to indicate [Respondent] as the source of
blue colored coil cleaner, and I associate this color blue
with [Respondent] as the source of blue colored coil
cleaner.”

A declaration from Mr. Laliberte, who testified that: (1) “I
have been aware of [Respondent’s] color blue trademark
for 19 years because of its use of the trademark on its coil
cleaner product, as well as in advertising and promotional
4 Mr. Vendt’s declaration indicated that sales of NU-BRITE were “over 1,500,000 million
gallons,” but in his deposition Mr. Vendt confirmed that the total was in fact 1,500,000
gallons. Vendt Tr. 89-91. The corrected figure is consistent with the body of the Office
Action response at page 1.
6

Cancellation No. 92055285

materials”; and (2) Respondent’s “color blue mark
operates to indicate [Respondent] as the source of the coil
cleaner, and I associate this color blue with [Respondent]
as the source of the blue colored coil cleaner.”

Respondent also submitted the following copies of advertisements which highlight
Respondent’s blue mark for its NU-BRITE coil cleaner:

7

Cancellation No. 92055285

Relevant Facts and Arguments
Mr. Lannan, who “developed” Respondent’s NU-BRITE product prior to its
introduction in 1992, testified that the product is dyed blue because “that was the
original request from [Respondent]. They specifically wanted a blue-colored
product,” for “marketing reasons.” Lannan Tr. 17-19;5 Lawler Tr. 15-20. Because of
the product’s “high degree of alkalinity,” among other issues, it was difficult to find
a way to color the product blue and keep it stable, and doing so significantly
increases the product’s cost. Lannan Tr. at 18, 26-27, 35. Mr. Lawler testified that
NU-BRITE is a “market leader” and Respondent’s best-selling coil cleaner. Lawler
Tr. 16, 20.
There is a “two-step distribution market” for Respondent’s products, in that
Respondent provides “specialty chemicals to air-conditioning and refrigeration
wholesalers,” who in turn “sell to contractors, servicemen, and commercial and
industrial customers of their own.” Lawler Tr. 15. Respondent’s competitors operate
in a similar manner. MacRae Tr. 7-8 (ACE Chemical’s customers are “HVAC
wholesalers nationwide” who in turn sell to HVAC “contractors mainly”); Irvin Tr. 9
(“we sold through wholesale houses who then sold to the retail customer which is
the contactor”); Pastorello Tr. 10 (“Our customers are mainly the wholesaler that we
sell directly to and the wholesaler who sells directly to contractors and service
technicians.”); Laliberte Tr. 4-5.
5 Respondent proffered Mr. Lannan as an expert witness, and paid him $100 per hour for
his time on this case. While the specific figures are confidential, Respondent “represents” a
substantial portion of Mr. Lannan’s employer Nuance Solutions’s business.
8

Cancellation No. 92055285

Petitioner and Respondent compete with each other and with other HVAC
chemical providers, including ACE (or Atlantic) Chemical, Rectorseal, Continental
Research, Stewart Hall, QuestVapco (sometimes referred to as “Vapco”), Parker
Hannifan (formerly Virginia KMP), DiversiTech and NRP. Irvin Tr. 8, 17; MacRae
Tr. 7; Pastorello Tr. 9; Garner Tr. 9-10.6 According to Respondent’s director of
marketing Mr. Vendt, the “competitors that we face on a daily basis” are “Apex
Engineering, [ACE] Chemical, Comstar, DiversiTech, Hydro-Balance, Highside,
Parker Virginia KMP, RectorSeal, [Petitioner], Vapco, Sunbelt Labs, and Comstar.”
Vendt Tr. 11-12; Lawler Tr. 16-17 and Exs. U, Y; MacRae Tr. 6 (ACE Chemical is
also known as Atlantic Chemical).
These competitors have a history of asserting and defending against
trademark claims related to their HVAC chemical products. In 1999, Petitioner sent
a cease and desist letter to Respondent challenging Respondent’s use of the mark
CAL-BLUE for a spray-on gas leak detector, based on Petitioner’s rights in the
mark BIG BLU. Pastorello Tr. 17-20 and Ex. 5. In response, Respondent stated:
[the] BIG BLU mark designates a blue liquid product,
BLU is generic or at least merely descriptive … The use of
blue in this field and other liquid chemical product fields
is common. In the leak-detector field alone, National
Refrigeration Product’s (NRP), Totaline, Bird Dog, Vapco
(Cool-Zone Plus), Hydro-Balance (Bubble-Up), Atlantic
(Ace Fact-Find), Diversitech (Pro-Air Bubble-Leak) and
Trane (Service First) all use blue (see enclosures).
Coloring an otherwise clear product to, for example, help
indicate remaining product volume, and to distinguish it
from other products in a company’s line (such as from
6 According to Mr. Lawler, Stewart Hall was “bought out in the ‘90’s by a company called
Continental Research who, in turn, was later acquired by RectorSeal.” Lawler Tr. 56.
9

Cancellation No. 92055285

[Respondent’s] other gas leak products which are yellow
and clear) is de jure functional, and not proprietary to Mr.
Pastorello.

Id. Ex. 6.
Mr. Pastorello testified that Respondent’s response to Petitioner’s 1999 cease
and desist letter “led me to believe that I could not pursue any type of trademark
infringement against them. So it all made sense to me.” Id. 19-20. Specifically, “an
otherwise clear liquid, if it’s colored, can show you how much fluid is left in the
bottle and, therefore, coloring the product is functional.” Id.
However, in June 2011, approximately six months after the involved
Registration issued, Respondent sent a cease and desist letter to Petitioner,
asserting rights in the color blue for its coil cleaner, citing the involved Registration
and challenging Petitioner’s VIPER BRITE product, “an air conditioning condenser
coil cleaner, having a blue color.” Id. Ex. 13. Petitioner later learned that at around
the same time, Respondent sent ACE Chemical and DiversiTech, both of which also
offer blue alkaline coil cleaners, similar cease and desist letters. At that point Mr.
Pastorello “decided that [he] should proceed with cancellation of this trademark.”
Id. 15-17; Lawler Tr. Exs. S (Respondent’s letter to DiversiTech) and W
(Respondent’s letter to ACE Chemical). Petitioner is splitting the cost of this
cancellation proceeding with DiversiTech, Rector-Seal, QuestVapco and ACE
Chemical. Pastorello Tr. 36-37.
10

Cancellation No. 92055285

Petitioner claims that blue is functional for alkaline coil cleaners for the
reasons Respondent provided in response to Petitioner’s 1999 cease and desist
letter, and for another reason:
We have a self-imposed code that is used by all the major
HVAC chemical manufacturers where pink-colored coil
cleaners are acidic. The yellow-colored cleaners are
predominantly multipurpose cleaners. Blue-colored coil
cleaners are your alkaline condenser coil cleaners or
brighteners. And green-colored coil cleaners are for use on
evaporator coil cleaners. There are also green-colored
products that are considered environmentally sound
products. And then you have brown-colored coil cleaning
products that’s [sic] produced very high foam.

Id. 10-11. See also, Irvin Tr. 10 (“There was a green environmental indoor coil
cleaner. There was a pink acid-foaming condenser coil cleaner. There was a blue-
foaming condenser coil cleaner. Sometimes it would be a yellow-foaming condenser
coil cleaner; but it was very much a matter of people bought the product by color
code.”); MacRae Tr. 8-9 (“Green has consistently or is known as a product that is
used for evaporators. Yellow is a color which is a multi-purpose. Pink or red is acid-
based which is used for the outside condenser. Then you get into blues and browns
that are now used as alkaline cleaners, which are used for exterior condensers, as
well.”); Petitioner’s NOR Ex. 140a (“Coil Cleaners are broken down in color. Red is
acid based and is not recommended for the novice. Blue is foaming alkaline base
and is very popular on coils where the foam is not a problem for cleanup … Green is
a self rinsing formula for use on coils that the dirt can be eliminated through the
normal drain.”). According to Mr. Pastorello, “the origins of the color code are
because the simple litmus test, where – when litmus is dipped into an acid solution,
11

Cancellation No. 92055285

it turns pink. And when litmus is dipped into an alkaline solution, it turns blue. So
I believe that is how we get the span of colors from blue to pink.” Pastorello Tr. 13.
Respondent disputes that there is a color code, pointing out that the alleged
code is neither governmentally-mandated nor recorded anywhere. MacRae Tr. 21;
Garner Tr. 32-33. In fact, there is no dispute that even if certain manufacturers
follow the alleged code, there are exceptions to it, to the point that multiple HVAC
chemical products, including alkaline coil cleaners, are colored, but not in
conformance with the alleged code. Garner Tr. 24-26, 30-34 (agreeing that colors for
alkaline coil cleaners vary widely, and that “there are at least five colors of alkaline
coil cleaners”); MacRae Tr. 22-23; Pastorello Tr. 11-12, 31, 33-34; Irvin Tr. 10-11,
23-26; Holder Tr. 32, 40-41, 61-62; Laliberte Tr. 14 (not aware of any standard of
color coding in the HVAC industry for coil cleaners);7 Oberheide Tr. 19, 22; Lannan
Tr. 31-35; Lawler Tr. 42, 48-49; Vendt 25-26; Respondent’s NOR Ex. JJ (Petitioner’s
responses to Respondent’s Requests for Admission Nos. 2, 3).
Whether or not there is a color code followed by some or most HVAC chemical
producers, many coil cleaners are blue and many are not. MacRae Tr. 16-19;
Laliberte Tr. 11, 44. The following coil cleaners are or were blue, or in the “blue
family”:
ACE’s Alkaline Coil Cleaner (“ACC”). Petitioner’s NOR
Ex. 7a; Holder Tr. 28-31; Vendt Tr. Ex. 28 (response to
Interrogatory No. 6).

7 Mr. Laliberte’s company receives a rebate from Respondent based on its purchases of
Respondent’s products.
12

Cancellation No. 92055285

ACE’s Brite Coil Cleaner. MacRae Tr. 16-17; Lawler Tr.
25, 49.8

DiversiTech’s Pro-Blue Coil Cleaner. Petitioner’s NOR Ex.
140a, 144; Laliberte Tr. 30; Garner Tr. 19; Irvin Tr. 16;9
Holder Tr. 21; Lannan Tr. 41; Vendt Tr. 65 and Ex. 28
(response to Interrogatory No. 6); Lawler Tr. 25, 49.
Pastorello Tr. 22-23; Lawler Tr. 25; Lannan Tr. 41;
Lawler Tr. Ex. DD.

NRP’s Alka-Kleen. Pastorello Tr. 22; Vendt Tr. 64; Lawler
Tr. 75.10

QuestVapco’s HP Coil Cleaner. Petitioner’s Rebuttal NOR
Ex. 160 (blue appearance); MacRae Tr. 17; Irvin Tr. 17;
Garner Tr. 11-13 and Ex. 147 (product is “clear turquoise”
which Mr. Garner testified is “blue”); Vendt Tr. 62
(product is turquoise, which is “a green-blue
combination”); Pastorello Tr. 22; Lawler Tr. 81.

Petitioner’s Viper Brite. Pastorello Tr. 12-13, 20-22;
Garner Tr. 19.11

Several witnesses agreed that a majority of coil cleaners offered by the major
players in the industry, including some of those Mr. Vendt referred to as
“competitors that we face on a daily basis,” are blue. Irvin Tr. 27 (“By far a
majority.”); Holder Tr. 41 (“Most of them are blue, but there are other
8 ACE’s ACC “was the original, and AceBrite is the more recent product.” MacRae Tr. 11.
9 Mr. Irvin testified that prior to being acquired by DiversiTech, Specialty Chemical offered
a blue alkaline coil cleaner called Free Foam. In 1999, Specialty Chemical began offering
Super Foam, another blue alkaline coil cleaner which is the same product as DiversiTech’s
Pro-Blue. Irvin Tr. at 14-16. (“Pro Blue is basically Super Foam in the DiversiTech label.
There is no difference.”).
10 While currently blue, this product used to be purple. Vendt Tr. 64; Holder Tr. 59-60.
11 Several witnesses testified that Virginia KMP’s Alki-Foam is also blue. MacRae Tr. 17;
Garner Tr. 18-19; Irvin Tr. 17; Holder Tr. 28-31. However, Messrs. Pastorello, Lawler and
Lannan testified that the product is actually “purple,” and the product’s Material Safety
Data Sheet indicates that it is “purple.” In addition, Mr. Irvin testified that RectorSeal and
Hydro-Balance both “had a blue product” until he retired in 2008. Irvin Tr. 17. However,
this testimony is vague and uncorroborated.
13

Cancellation No. 92055285

manufacturers that do have other colors.”); Pastorello Tr. 23 (“Most are
predominantly blue.”); Garner Tr. 21-22 (“The majority” and “I would say greater
than 50 percent.”). As for Mr. Vendt, he originally testified as follows:

Vendt Tr. 30-31. However, immediately thereafter, in response to the question “how
many total coil cleaners on the market?,” Mr. Vendt testified “Including
14

Cancellation No. 92055285

[Respondent], there are over 88 coil cleaners on the market,” id. at 31, and this is
the basis for Respondent’s argument that “[f]ewer than 10 percent of alkaline coil
cleaners on the market are blue.” Respondent’s Trial Brief at 28.
Whether or not a majority of alkaline coil cleaners are blue, it is clear that
either a majority or a large minority of the alkaline coil cleaners offered by major
players in the industry are blue. Indeed, Mr. Vendt identified 12 specific
“competitors that we face on a daily basis” (although he said there were 13 such
competitors), and testified that including Respondent’s NU-BRITE product, there
are seven blue alkaline coil cleaners. Vendt Tr. 11-12, 30-31. As Mr. Lannan
explained when asked how many blue coil cleaners are on the market:
I know there’s major manufacturers in this business, but
there’s also very small regional what we call bathtub-type
manufacturers. So it could be a high number; but I’ve
never seen a lot of the, you know, small-scale ones. But
currently blue ones, I have to guess in the range of 10.

Lannan Tr. 78. While some of Mr. Lannan’s additional testimony is designated
confidential, and will therefore not be discussed here, suffice it to say that according
to Mr. Lannan, not all manufacturers are of “competitive concern” to Respondent,
which is consistent with Mr. Vendt’s testimony about “competitors that we face on a
daily basis.” Id. at 78-80. Furthermore, after sending its original cease and desist
letters to Petitioner, DiversiTech and ACE Chemical in 2011, Respondent’s follow-
up correspondence focused not on the “over 88 coil cleaners on the market,” but
instead on “nationally-distributed products that compete with [Respondent’s] NU-
BRITE alkaline coil cleaner,” “the major HVACR industry manufacturers” and
15

Cancellation No. 92055285

“industry giants.” Lawler Tr. Exs. U, Y, BB. In other words, it is clear that “the
major HVACR industry manufacturers” and their “nationally-distributed products”
of “competitive concern” are of more significance to Respondent and its competitors
than small, regional or “bathtub-type manufacturers.” Furthermore, the trend in
the industry is away from acid-based towards alkaline coil cleaners, and there is
also “a trend to blue” coil cleaners generally. Id. 52-53; Lannan Tr. 100-101 (“I think
there’s a trend in condenser coil cleaners going to blue, yes, recently,” specifically
“these last few years.”). In short, there is no dispute that a large proportion of the
coil cleaners sold by the industry’s major players are blue, and the “trend” suggests
that this may only increase.
Furthermore, our focus here cannot be solely on alkaline coil cleaners,
because Respondent’s Registration is not so limited, but is instead for “cleaning
preparation for air conditioning or refrigeration coils,” without respect to whether
the preparation is alkaline, acidic or neither.12 See 15 U.S.C. § 1052(f). And there is
at least one additional acidic coil cleaner which is also blue and therefore falls
within Respondent’s identification of goods. Vendt Tr. 27 (“Nyco makes a blue coil
cleaner that’s acidic.”).
In any event, and not surprisingly, Respondent’s witnesses testified that
relevant consumers associate blue liquid coil cleaners with Respondent. Lannan Tr.
12 For the same reason, Respondent’s claim that certain products do not compete with NU-
BRITE because they are comprised of “a different formulation” such as potassium
hydroxide instead of Respondent’s sodium hydroxide formula, or are sold at a different price
point, is irrelevant to the analysis of acquired distinctiveness. Respondent’s Trial Brief at
30. Respondent’s identification of goods is not limited to any particular formulation or price.
16

Cancellation No. 92055285

21-25 (wholesalers and end users “started referring to [Respondent’s] product as
blue, the blue product. It almost seemed like it was a secondary name for the
product.”); Lawler Tr. 24-25 (Respondent’s customers and their customers “will refer
to Nu-Brite as the blue coil cleaner”); Vendt Tr. 25. Also not surprisingly,
Petitioner’s witnesses testified that relevant consumers do not associate blue or
other colors with the source of coil cleaners. Irvin Tr. 19; MacRae Tr. 18-19 (“I
believe people recognize the application, not the source … I think that the label and
the bottle shape may tell them it came from Ace, but that would be it. Not the color
… Because there are so many other manufacturers in the marketplace using blue
colors.”); Garner Tr. 20-21; Laliberte Tr. 24, 44 (consumers do not associate blue
with a particular company “because there’s so many different blues out there right
now”).13
While the evidence does not reveal exactly when all of the third-party blue
coil cleaners were introduced, the record reveals the following:
ACE’s ACC was “first manufactured around ’81, ’82,” and
continues to be sold. Pastorello Tr. 15-16; MacRae Tr. 11-
15 and Exs. 135-137; Holder Tr. 30-31; Lawler Tr. 75.

ACE’s Brite Coil Cleaner was first sold “around 2000.”
MacRae Tr. 16.

13 Mr. Holder’s testimony was similar, but was based “in part” on an unscientific,
unrecorded “survey” of 10 unidentified people at a single retail location. Mr. Holder is not
experienced with conducting surveys. We find that the survey is entitled to no evidentiary
weight, and despite Mr. Holder’s experience in the industry, we have not relied on any of
his expert testimony or fact testimony based on the “survey.” See Holder Tr. 39, 42, 46-47;
see also, id. 72-75 (Mr. Holder is a friend of Mr. Pastorello, a customer of Petitioner, did not
research the coil cleaner industry and has never before served as an expert witness).
17

Cancellation No. 92055285

QuestVapco’s HP Coil Cleaner was sold before NU-BRITE
was introduced and is still being sold. MacRae Tr. 17;
Garner Tr. 13-18 and Exs. 151 and 154.

Petitioner’s Viper Brite was sold before Respondent’s
Registration issued and is still being sold. Pastorello Tr.
21; Garner Tr. 19-20; Respondent’s Trial Brief at 8
(Petitioner “changed its straw colored coil cleaner that it
had sold since about 1990 to the same royal blue color as
[Respondent’s] Nu-Brite product.”).

NRP’s Alka-Kleen was sold before Respondent’s
Registration issued. Lawler Tr. 75.

DiversiTech’s Pro-Blue or its other blue coil cleaners were
sold before Respondent’s Registration issued and Pro-Blue
is still being sold. Specialty Chemical’s Super Foam was
also sold before NU-BRITE was introduced. Garner Tr.
19-20; Pastorello Tr. 16-17; Lawler Tr. 75; Holder Tr. 21;
Irvin Tr. 14-17.14

Respondent concedes that “there are several other HVAC chemical manufacturers
currently selling various shades of blue colored coil cleaners,” and more specifically
that seven coil cleaners “available on the market” are blue, including Respondent’s
NU-BRITE product. Respondent’s Trial Brief at 24, 28.
Standing
Petitioner produces HVAC chemical products and competes with Respondent,
and Respondent sent Petitioner the 2011 cease and desist letter based on the
involved Registration. Pastorello Tr. 8-10 and Ex. 13; Vendt Tr. 11-12. This
14 Mr. Vendt testified that he “believes” these products “came in after Nu-Brite.” Vendt Tr.
31. However, his testimony is equivocal and contradicted by other witnesses, and in any
event, as explained below, the question is whether these products “came in” prior to the
date on which the Registration issued, not whether they “came in” prior to Respondent’s
first use of its mark. The record also reveals that Virginia KMP’s Alki-Foam was sold before
NU-BRITE was introduced and is still being sold. MacRae Tr. 17-18; Garner Tr. 18-19.

18

Cancellation No. 92055285

establishes Petitioner’s standing. Books on Tape, Inc. v. Booktape Corp., 836 F.2d
519, 5 USPQ2d 1301, 1302 (Fed. Cir. 1987); Kistner Concrete Products, Inc. v.
Contech Arch Technologies, Inc., 97 USPQ2d 1912, 1918 (TTAB 2011); Stuart
Spector Designs, Ltd. V. Fender Musical Instruments Corp., 94 USPQ2d 1549, 1553
(TTAB 2009); Saint-Gobain Corp. v. 3M Co., 90 USPQ2d 1425, 1428 (TTAB 2007);
Plyboo America Inc. v. Smith & Fong Co., 51 USPQ2d 1633, 1634 (TTAB 1999); Ipco
Corp. v. Blessings Corp., 5 USPQ2d 1974 (TTAB 1988).
Acquired Distinctiveness
In Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92
USPQ2d 1626 (Fed. Cir. 2009) our primary reviewing court set forth the burdens of
proof and persuasion in cancellation proceedings grounded in Section 2(f) of the Act:
The party seeking to cancel registration of a mark always
bears the burden of persuasion, that is, the ultimate
burden of proving invalidity of the registration by a
preponderance of the evidence. Initially, the party seeking
cancellation also bears the “burden to establish a prima
facie case” that the registration is invalid. Yamaha [Int’l
Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6
USPQ2d 1001, 1007 n.9 (Fed. Cir. 1988)]. In a Section 2(f)
case, the party seeking cancellation bears the initial
burden to “establish a prima facie case of no acquired
distinctiveness.” Id. at 1576. To satisfy this initial burden,
the party seeking cancellation must “present sufficient
evidence or argument on which the board could
reasonably conclude” that the party has overcome the
record evidence of acquired distinctiveness – which
includes everything submitted by the applicant during
prosecution. Id. at 1576-77. The burden of producing
additional evidence or argument in defense of registration
only shifts to the registrant if and when the party seeking
cancellation establishes a prima facie showing of
invalidity. The Board must then decide whether the party
seeking cancellation has satisfied its ultimate burden of
19

Cancellation No. 92055285

persuasion, based on all the evidence made of record
during prosecution and any additional evidence
introduced in the cancellation proceeding.

Id. at 1629-30.
Here, the Registration is for the color blue for Respondent’s coil cleaner. It is
settled that color may serve as a trademark, but only if it has acquired
distinctiveness. Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 34
USPQ2d 1161, 1163 (1995) (“We cannot find in the basic objectives of trademark
law any obvious theoretical objection to the use of color alone as a trademark, where
that color has attained ‘secondary meaning’ and therefore identifies and
distinguishes a particular brand (and thus indicates its ‘source’).”); see also Wal-
Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 54 USPQ2d 1065, 1068 (2000)
(“with respect to at least one category of mark – colors – we have held that no mark
can ever be inherently distinctive”). More specifically, it is also settled that “[b]y
their nature color marks carry a difficult burden in demonstrating distinctiveness
and trademark character.” In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227
USPQ 417, 420 (Fed. Cir. 1985); Saint-Gobain Corp. v. 3M Co., 90 USPQ2d 1425,
1434 (TTAB 2007). And where, as here, “the use of colors is common in a field, an
applicant has a difficult burden in demonstrating distinctiveness of its claimed
color.” In re Howard S. Leight and Assoc. Inc., 39 USPQ2d 1058, 1060 (TTAB 1996);
see also In re Florists’ Transworld Delivery Inc., 106 USPQ2d 1784, 1792 (TTAB
2013) (applicant seeking registration of color mark “bears a heavy burden” to
establish acquired distinctiveness). The question is whether Respondent’s mark had
20

Cancellation No. 92055285

acquired distinctiveness at the time it was registered. Harsco Corp. v. Electrical
Sciences Inc., 9 USPQ2d 1570, 1571-72 (TTAB 1988) (“We believe that the critical
date is the date of registration, because if a mark which is not registrable in the
absence of proof of distinctiveness was not in fact distinctive at the time of the
issuance of the registration thereof, then the registration was invalidly issued.”);
Respondent’s Trial Brief at 28 (“it is the time of trademark registration that is
relevant with respect to a claim of acquired distinctiveness”); see also, Kasco Corp.
v. Southern Saw Service Inc., 27 USPQ2d 1501, 1506 n. 7 (TTAB 1993) (petitioner
“could prevail in this action if the record revealed that either as of [the registration
date] or as of the present time, the green wrapper lacked acquired distinctiveness”).
Here, Petitioner has met its initial burden of establishing a prima facie case
that Respondent’s mark had not acquired distinctiveness at the time it was
registered in 2010 (and does not currently have and never had acquired
distinctiveness). Indeed, the record reveals, and Respondent concedes, that its use
of blue is not “substantially exclusive.” Rather, at least ACE, QuestVapco,
Petitioner, NRP and DiversiTech/Specialty Chemical offered blue “cleaning
preparations for air conditioning or refrigeration coils” at the time the Registration
issued, and Nyco offers a blue acidic coil cleaner which falls within Respondent’s
identification of goods. Pastorello Tr. 15-17, 21; MacRae Tr. 11-17 and Exs. 135-137;
Holder Tr. 21, 30-31; Lawler Tr. 75; Garner Tr. 13-20 and Exs. 151 and 154; Irvin
Tr. 14-17; Vendt Tr. 27; Respondent’s Trial Brief at 8, 24, 28. In other words,
Respondent’s mark is not distinctive. Levi Strauss & Co. v. Genesco, Inc., 742 F.2d
21

Cancellation No. 92055285

1401, 222 USPQ 939, 940-41 (Fed. Cir. 1984) (“When the record shows that
purchasers are confronted with more than one (let alone numerous) independent
users of a term or device, an application for registration under Section 2(f) cannot be
successful, for distinctiveness on which purchasers may rely is lacking under such
circumstances.”). See also, ERBE Elektromedizin GmbH v. Canady Technology LLC,
629 F.3d 1278, 97 USPQ2d 1048, 1057 n.4 (Fed. Cir. 2010) (“the record evidence
shows that at least one of ERBE’s competitors, ConMed, uses blue flexible
endoscopic probes for use in argon plasma coagulation and thus ERBE does not
maintain exclusive use”); Edward Weck Inc. v. IM Inc., 17 USPQ2d 1142, 1145-46
(TTAB 1990). To the extent that QuestVapco’s HP Coil Cleaner is turquoise and
other coil cleaners are different shades of blue than Respondent’s blue, that does not
detract from Petitioner’s showing that Respondent’s use of blue has not been
substantially exclusive. Saint-Gobain, 90 USPQ2d at 1441; Edward Weck, 17
USPQ2d at 1145.
Respondent’s evidence does not overcome Petitioner’s prima facie case. To the
contrary, while we recognize that Respondent has distributed some “look for”
advertising touting the blue color of its coil cleaner, its other evidence is
underwhelming, especially considering the circumstances of this case. Neither
Respondent’s use of the color blue for well over 20 years nor the handful of
witnesses who submitted affidavits during prosecution of Respondent’s application
or testified at trial that they recognize the color blue as Respondent’s mark are
sufficient where it is undisputed that color is commonly used in the HVAC chemical
22

Cancellation No. 92055285

industry, and more specifically that the color blue is commonly used for coil
cleaners. In re Pacer Technology, 338 F.3d 1348, 67 USPQ2d 1629, 1633 (Fed. Cir.
2003); Saint Gobain, 90 USPQ2d at 1435; In re Ferris Corp., 59 USPQ2d 1587, 1592
(TTAB 2001).
Applicant’s sales and advertising expenses are designated confidential, and
therefore cannot be discussed specifically, but suffice it to say that in cases such as
this, significantly higher sales and advertising costs than Respondent has
established for its involved mark have been found insufficient to establish acquired
distinctiveness. Saint Gobain, 90 USPQ2d at 1437; In re Howard S. Leight, 39
USPQ2d at 1060; British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197 (TTAB
1993), aff’d, 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994); Edward Weck, 17
USPQ2d at 1146. See also, In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d
1056 (Fed. Cir. 1999) ($85,000,000 in annual sales revenue and $2,000,000 in
annual advertising expenditures insufficient); Goodyear Tire & Rubber Co. v.
Interco Tire Corp., 49 USPQ2d 1705 (TTAB 1998) ($56,000,000 in sales revenue and
740,000 tires sold insufficient).
Finally, Respondent argues that its competitors which use blue for coil
cleaners are “infringers,” and that “actual confusion” among consumers establishes
that its mark has acquired distinctiveness. We are not persuaded. Respondent is
correct that its use need not be entirely exclusive, and that “inconsequential or
infringing” uses do not defeat its 2(f) claim. L.D. Kichler Co. v. Davoil, Inc., 192 F.3d
1349, 52 USPQ2d 1307, 1309 (Fed. Cir. 1999). However, in this case, the third-party
23

Cancellation No. 92055285

uses revealed by the record are not inconsequential, as they include blue coil
cleaners offered by at least four of the competitors Respondent “face[s] on a daily
basis.” And while Respondent may have believed that these uses were infringing in
2011 when it sent its cease and desist letters, it chose not to take action against
these uses then or in the four years since. As for the alleged “actual confusion,”
Respondent cites Mr. Lawler’s testimony and weekly reports from account
managers. Lawler Tr. 30-33 and Ex. V. But neither the testimony nor the
documents establish actual confusion. If anything, they establish that consumers
were aware that multiple sources offer blue coil cleaners. Id.
In short, Petitioner has satisfied its ultimate burden of persuasion, based on
all the evidence of record, that Respondent’s use of blue for its coil cleaner is and
was not “substantially exclusive,” and that the mark did not acquire distinctiveness
prior to the issuance of the Registration or thereafter.
Conclusion
Because the Registration is for a color mark and issued under Section 2(f),
Respondent’s mark is not inherently distinctive. See, Wal-Mart Stores, 529 U.S. at
205, 54 USPQ2d at 1068; Cold War Museum, 586 F.2d at 1352, 92 USPQ2d at 1629.
Petitioner has established that Respondent’s mark has not acquired distinctiveness.
The mark is therefore not distinctive and we need not reach Petitioner’s remaining
claims.

24

Cancellation No. 92055285

Decision: The petition to cancel is granted and the Registration will be
cancelled in due course.

25