Advanced Siding & Window Co., Inc. , dba Advanced Roofingv.Advanced Metal of America, Inc.

Trademark Trial and Appeal Board

May 30, 2013

No. 92052696 (T.T.A.B. May. 30, 2013)

With ref

Mailed: 5/30/2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Advanced Siding & Window Co., Inc., dba Advanced Roofing
v.
Advanced Metal of America Inc.
_____

Cancellation No. 92052696
_____

Frank B. Mesmer, Jr. of Mesmer & Deleault for Advanced Siding &
Window Co.,Inc., dba Advanced Roofing.

Jeffrey S. Newman of Loginov & Associates for Advanced Metal of
America Inc.
______

Before Quinn, Taylor and Wellington,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Advanced Metal America Inc. (“respondent”) owns
Registration No. 3456538, issued July 1, 2008, of the mark
ADVANCED METAL ROOFING (in standard characters) (“METAL ROOFING”
disclaimed) for “roofing installation” in International Class
37.
Advanced Siding & Window Co., Inc., doing business as
Advanced Roofing (“petitioner”), filed a petition to cancel the
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Can. No. 92052696

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registration on the ground of priority and likelihood of
confusion.
Respondent, in its answer, denied the salient allegations
of the petition to cancel.
SCOPE OF PROCEEDING
We first turn to explain the scope of this cancellation
proceeding.1 In each of petitioner’s four petitions for
cancellation (original, first amended, second amended and third
amended), petitioner specifically refers to only Registration
No. 3456538 as the registration sought to be cancelled.
Petitioner, in its brief, makes reference for the first time in
this proceeding to a second registration apparently owned by
respondent, namely Registration No. 3478881, issued August 5,
2008, of the mark AMR ADVANCED METAL ROOFING.COM and design for
“roofing installation.” We note that petitioner makes merely a
sole reference to Registration No. 3478881 (Brief, p. 11);
throughout the brief, petitioner specifically refers to only one
registration that it seeks to cancel, namely Registration No.
3456538. This registration is the only one addressed by
petitioner in its priority and likelihood of confusion

1 It also should be noted that the Board is an administrative tribunal
that is empowered to determine only the right to register. The Board
is not authorized to determine the right to use, nor may it decide
broader questions of infringement or unfair competition. See
generally TBMP § 102.01 (2012). See FirstHealth of the Carolinas Inc.
v. CareFirst of Md. Inc., 479 F.3d 825, 81 USPQ2d 1919, 1921 (Fed.
Cir. 2007).
Can. No. 92052696

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arguments. Further, petitioner concludes its brief as follows:
“The Board should enter an order canceling Respondent’s
federally registered trademark, ADVANCED METAL ROOFING in
International Class 037, Registration No. 3,456,538.” (Brief,
p. 31). Respondent, in its brief, makes no mention of
Registration No. 3478881.
The Board will not entertain claims that were not asserted
in the pleadings as originally filed, or as amended. When
issues not raised by the pleadings are tried by the express or
implied consent of the parties, the Board will treat them in all
respects as if they had been raised in the pleadings. However,
in the present case, any claim related to Registration No.
3478881 was not tried by the parties, either by the express or
implied consent of the parties. See Fed. R. Civ. P. 15(b); and
TBMP § 507.03(b) (2012).
Accordingly, this proceeding involves only one registration
sought to be cancelled, namely Registration No. 3456538.
Further, some of respondent’s remarks focus on a likelihood
of confusion between two identical marks, ADVANCED METAL
ROOFING. Respondent essentially claims that it was the first to
use that specific mark (relative to petitioner) and, thus, it is
entitled to exclusive use of that mark and prevail against any
subsequent use by petitioner. Respondent makes the following
remark in its brief (p. 17): “Regardless of how imaginatively
Can. No. 92052696

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argued, the fact is that ‘Advanced Siding and Window Co., Inc.’
or ‘Advanced Sunroom and Patio Enclosures’ are not similar to
ADVANCED METAL ROOFONG. ‘Advanced Metal Roofing LLC’ and
ADVANCED METAL ROOFING are similar because Petitioner filed
their similar mark after discovering Registrant’s registered
trademark.” Respondent should note, however, that even assuming
respondent was the first to use the mark ADVANCED METAL ROOFING,
that fact is not dispositive of this likelihood of confusion
dispute; petitioner is entitled to rely on its prior common law
rights in any ADVANCED mark, including ADVANCED SIDING AND
WINDOW. The issue here is whether respondent’s registered mark
is likely to cause confusion with any of petitioner’s pleaded
marks that were used prior to respondent’s priority date. This
point is a bit glossed over by respondent in that the marks are
not required to be identical in order for there to be likelihood
of confusion. So, the fact that respondent’s use of ADVANCED
METAL ROOFING is prior to petitioner’s use of ADVANCED METAL
ROOFING is beside the point for purposes of our likelihood of
confusion analysis; we must determine whether any of
petitioner’s previously used ADVANCED marks, including ADVANCED
SIDING AND WINDOW, is likely to cause confusion with
respondent’s mark.

Can. No. 92052696

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EVIDENTIARY DISPUTE
Before we consider the merits of this proceeding, we turn
our attention to an evidentiary matter. Petitioner filed a
motion to strike certain exhibits attached to respondent’s
brief. As pointed out by petitioner, and admitted by
respondent, respondent did not introduce any evidence during its
testimony period. In response to the motion, respondent
contends that the objected-to evidence was in fact introduced by
petitioner during trial.
We agree with respondent’s assessment; the seven exhibits
were introduced by petitioner at trial and, accordingly, form
part of the trial record. Once evidence is in the record, it
may be relied upon by any party for any purpose. Petitioner’s
motion to strike is denied.
THE RECORD
The record consists of the pleadings; the file of the
registration sought to be cancelled; trial testimony, with
related exhibits, taken by petitioner;2 and excerpts of two Fed.
R. Civ. P. 30(b)(6) depositions and accompanying exhibits,

2 During its testimony period petitioner filed an affidavit of one of
its customers, John Herold, with exhibits. Trademark Rule 2.123(b)
provides, in relevant part, that testimony may be submitted by
affidavit, but only by written agreement of the parties. See Calypso
Technology Inc. v. Calypso Capital Management LP, 100 USPQ2d 1213,
1216-19 (TTAB 2011); and Tri-Star Marketing LLC v. Nino Franco
Spumanti S.R.L., 84 USPQ2d 1912, 1914 (TTAB 2007). Here, simply put,
there is no such agreement between the parties. We have not
considered this evidence in making our decision.
Can. No. 92052696

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official records, respondent’s responses to certain of
petitioner’s interrogatories, respondent’s responses to
petitioner’s requests for admission, and excerpts of the
parties’ respective websites, all introduced by way of
petitioner’s notices of reliance. Respondent did not take any
testimony or offer any other evidence during trial. Both
parties filed briefs on the case.3
With respect to the record and briefs, there are numerous
allegations regarding extraneous matters such as drunkenness,
marital relationships, criminal investigations, and
incarcerations, to name a few. Suffice it to say that such
allegations have nothing to do with the trademark issues in this
proceeding, and we have not considered any of them in reaching
our determination on the merits.
THE PARTIES
The parties’ principals are not strangers; rather, their
“relationship,” both personal and business, dates back several
years. To state the obvious, this litigation has adversely
impacted their friendship; it is safe to say that the
individuals involved are no longer fond of one another.

3 We note that the parties are also parties to consolidated civil
actions in a state court of New Hampshire. The parties notified the
Board that the state court actions have been stayed pending a final
determination in this cancellation proceeding.
Can. No. 92052696

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John Wilusz, petitioner’s president, formed Atlantic Window
and Door Co. (“Atlantic”) in April 1987. The directors of the
corporation were John Wilusz and his sons, Wayne Wilusz and
Glenn Wilusz. At that time, Atlantic specialized in window
replacement, and also installed siding in the states of New
Hampshire, Maine and Massachusetts. In June 1996, Atlantic’s
name was changed to Advanced Siding and Window Co., and the
entity was incorporated in New Hampshire; the trade name
“Advanced Siding and Window Co.” was registered in New
Hampshire. In 2002, John Wilusz incorporated Advanced Sunrooms
& Patio Enclosures, and in March, 2009, Wayne Wilusz formed
Advanced Metal Roofing. All of these entities are operated by
the Wilusz family and do business in the states of New
Hampshire, Maine and Massachusetts.
During the years 1991-1993, respondent’s principal, James
Kenton, was employed by Atlantic to handle sales. Upon leaving
Atlantic’s employ in 1993, Mr. Kenton started his own siding
business, Side Effects, in New Hampshire with another former
employee of Atlantic. Shortly thereafter in 1994, Mr. Kenton
split with his partner to form his own business selling windows
in New Hampshire under the names Kentco and Pro-Tite.
Eventually Pro-Tite shifted its focus to metal roofing. Mr.
Kenton, having kept in touch with the Wilusz family, knew about
petitioner’s name change to Advanced Siding and Window Co., Inc.
Can. No. 92052696

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in 1996, and that the name was often shortened to “Advanced.”
Mr. Kenton relocated to North Carolina, and in 2007, respondent
was incorporated in North Carolina, with Mr. Kenton describing
himself as the chief executive officer. Mr. Kenton did an
internet trademark search of the terms “Atlantic” and “Advanced”
in connection with his business in North Carolina. “I wanted to
start a metal roofing company, and I really liked the name and I
liked the idea of Advanced Metal Roofing Company.” (Kenton
dep., Vol. 1, p. 125). Mr. Kenton stated that he was not
concerned with the name “Advanced Siding and Window” since he
wanted to use “Advanced Roofing.” (Kenton dep., Vol. I, p.
127). Respondent decided on the name Advanced Metal Roofing.
During this time, respondent offered to supply petitioner with
marketing materials, and respondent furnished television
commercials to petitioner that ran in New England for
petitioner’s business. In 2011-2012, respondent began to
install roofs in Massachusetts and Maine.
STANDING
To establish its standing, petitioner must prove that it
has a “real interest” in this cancellation proceeding and a
“reasonable basis” for its belief in damage. To plead a “real
interest” in this case, petitioner must establish a “direct and
personal stake” in the outcome herein. See Ritchie v. Simpson,
170 F.3d 1092, 50 USPQ2d 1023, 1027 (Fed. Cir. 1999); and Lipton
Can. No. 92052696

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Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185,
188 (CCPA 1982).
The record establishes that petitioner has used the trade
name and trademark ADVANCED SIDING AND WINDOW and ADVANCED
SUNROOMS AND PATIO ENCLOSURES in connection with home
improvement services.
Respondent makes an argument that petitioner is not the
rightful owner of the mark ADVANCED SIDING AND WINDOW, but
rather Glenn Wilusz is the owner, and that there is no privity
between the two. We are not persuaded. The record shows that
Glenn Wilusz, as a member of petitioner, incorporated the
company under the name Advanced Siding and Window Co., Inc.
This trade identity for petitioner essentially became an asset
of petitioner, not Glenn Wilusz; this is borne out by the fact
that after Glenn Wilusz left petitioner’s employ, petitioner
kept using the mark without any objection from him. Since the
first use in 1996, petitioner has had the exclusive use of the
mark; the record is devoid of any evidence to show that Glenn
Wilusz actually owned the mark, to show that he ever
individually used the mark as his own, or to show even that he
considered himself to be the owner rather than petitioner. To
the contrary, all of the evidence shows that petitioner, as an
entity run by the Wilusz family, owned the mark and conducted
its business under the mark to the benefit of petitioner.
Can. No. 92052696

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We accordingly find that petitioner has established its
standing to bring the present claim of likelihood of confusion.
PRIORITY
Likelihood of confusion may be established between
respondent’s mark and any of petitioner’s marks that were used
in connection with home improvement services prior to
respondent’s priority date. In connection with the priority
issue, respondent couches the issue in terms of whether or not
petitioner can tack its use of ADVANCED SIDING AND WINDOW to its
subsequent use of ADVANCED METAL ROOFING. See, e.g., American
Paging Inc. v. American Mobilphone Inc., 13 USPQ2d 2036 (TTAB
1989), aff’d, 17 USPQ2d 1726 (Fed. Cir. 1990) (not citable as
precedent) (no tacking permitted between earlier mark AMERICAN
MOBILPHONE and later mark AMERICAN MOBILPHONE PAGING). As will
be apparent from our later discussion of the likelihood of
confusion issue, we need not reach that issue; rather, our
decision will focus on petitioner’s prior use of its mark
ADVANCED SIDING AND WINDOW.
As noted above, respondent did not take any testimony or
introduce any other evidence at trial. Thus, for purposes of
priority, the earliest date upon which it can rely is the filing
date of the application that matured into its registration.
J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ
435 (CCPA 1965); and Media Online Inc. v. El Clasificado Inc.,
Can. No. 92052696

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88 USPQ2d 1285, 1288 (TTAB 2008). The filing date of
respondent’s underlying application is April 27, 2007.4
Petitioner has rendered home improvement services under its
mark ADVANCED SIDING AND WINDOW for several years, dating back
to 1996. These home improvement services include the
installation of siding, windows, and roofs. The evidence on
this point is clear, convincing and specific. The priority
claim is supported by oral testimony and corroborating
documentary evidence, including numerous invoices showing use of
the mark. None of the record on this point is characterized by
contradictions, inconsistencies or indefiniteness; further, the
testimony carries conviction and accuracy. Simply put, the
record as a whole establishes petitioner’s prior use of ADVANCED
SIDING AND WINDOW. West Fla. Seafood, Inc. v. Jet Rest., Inc.,
31 F.3d 1122, 31 USPQ2d 1660, 1663 (Fed. Cir. 1994).
Even if petitioner’s use were only in the nature of use
analogous to trademark use (such as use as a trade name), it has
shown that its home improvement business activities under the
name ADVANCED SIDING AND WINDOW were sufficient to be considered
“an open and notorious public use directed to the segment of the
purchasing public for whom the services are intended.” Computer
Food Stores, Inc. v. Corner Store Franchises, Inc., 176 USPQ

4 The registration sets forth dates of first use of December 17, 2003.
Even if respondent were entitled to rely on this date, petitioner’s
priority date is still earlier in time (see discussion, infra).
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535, 538 (TTAB 1973) (cited with approval in T.A.B. Systems v.
Pactel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879, 1882 (Fed. Cir.
1996)). See also Giersch v. Scripps Networks Inc., 90 USPQ2d
1020, 1022 (TTAB 2009); and Liqwacon Corporation v. Browning-
Ferris Industries, Inc., 203 USPQ 305, 308 (TTAB 1979) (“A prior
open and public use of a term as a salient feature of a trade
name in connection with a viable business entity or use in
advertising or promoting goods or services may be sufficient for
this purpose.”). Petitioner has shown that it has used the
service mark and trade name ADVANCED SIDING AND WINDOW for home
improvement services in the states of New Hampshire, Maine and
Massachusetts since 1996. Petitioner is therefore entitled to
rely on this date as its priority date.
Insofar as petitioner’s roofing installation services are
concerned, reproduced below is a Yellow Pages listing for
petitioner (Wayne Wilusz dep., Ex. 1) under “Roofing
Contractors” in the Portsmouth Area, Maine phone book (August
1998-July 1999):

It should be noted that the listing indicates petitioner to be
“Roofing Specialists” and “A Family Business You Can Trust.”
Can. No. 92052696

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Although the majority of petitioner’s work comprised siding and
windows, petitioner commonly promoted itself in the area of
roofing; petitioner had the ability to handle such jobs and, in
fact as shown by invoices, did complete roofing projects.
(Wayne Wilusz dep., pp. 24; 136-37; exs. 22 A-N).
Although petitioner did business under the name “Advanced
Siding and Window,” customers, vendors and contractors thought
of petitioner as “Advanced.” (Wayne Wilusz dep., p. 26; Theos
dep., p. 5; Andreas dep., pp. 8-9). “When somebody called, they
didn’t know if they were calling in from a siding lead or a
window lead or sunroom lead, and it’s my understanding that they
could just say ‘Advanced.’” (Kenton dep., Vol. II, p. 99).
However, the documentary evidence does not establish widespread
use of the mark ADVANCED per se, and thus, for purposes of this
proceeding based on the current record, we accord petitioner
priority based on its prior use of ADVANCED SIDING AND WINDOW.
Accordingly, we find that petitioner has established its
priority of the mark ADVANCED SIDING AND WINDOW CO. as of 1996
in connection with home improvement services, including the
installation of siding, windows and roofs.
LIKELIHOOD OF CONFUSION
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant to
the factors bearing on the likelihood of confusion issue. In re
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E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). Petitioner must establish that there is a
likelihood of confusion by a preponderance of the evidence. In
any likelihood of confusion analysis, two key considerations are
the similarities between the 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 (CCPA 1976). These
factors, and the other relevant du Pont factors in the
proceeding now before us, are discussed below.
Turning first to a consideration of the marks, we must
compare petitioner’s mark ADVANCED SIDING AND WINDOW to
respondent’s mark ADVANCED METAL ROOFING in their entireties as
to appearance, sound, connotation and commercial impression to
determine the similarity or dissimilarity between them. Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005). The
test, under the first du Pont factor, is not whether the marks
can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression that
confusion as to the source of the services offered under the
respective marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains a
Can. No. 92052696

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general rather than a specific impression of trademarks. Sealed
Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
In this case, each of the marks clearly is dominated by the
identical word ADVANCED. It is well settled that one feature of
a mark may be more significant than another, and it is not
improper to give more weight to this dominant feature in
determining the commercial impression created by the mark. In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985) (“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 consideration of the marks in their entireties.
Indeed, this type of analysis appears to be unavoidable.”). The
SIDING AND WINDOW portion of petitioner’s mark and the METAL
ROOFING portion of respondent’s mark (which has been disclaimed)
have little, if any, effect in distinguishing source. See In re
Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34
(Fed. Cir. 1997) (disclaimed word “café” is less significant
when comparing marks); and In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 752 (Fed. Cir. 1985) (“a descriptive
component of a mark may be given little weight”). Further,
purchasers in general are inclined to focus on the first word or
portion in a trademark, especially where the first portion is
followed by a highly descriptive or generic term (as in the
Can. No. 92052696

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cases of SIDING AND WINDOW and of METAL ROOFING). Presto
Products, Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897
(TTAB 1988) (“it is often the first part of a mark which is
likely to be impressed upon the mind of a purchaser and
remembered”). See Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692; In re Chatam
Int’l. Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir.
2004); and In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009).
The dominant portion, ADVANCED, of respondent’s mark is
identical to the dominant portion, ADVANCED, of petitioner’s
mark. These dominant portions are identical in sound,
appearance and meaning. In focusing on the dominant portion of
respondent’s mark, we recognize, of course, that the marks
ultimately must be compared in their entireties, including the
SIDING AND WINDOW and METAL ROOFING portions of the respective
marks. Both generic designations indicate a specific type of
related home improvement. When this comparison is made, we find
that the marks are similar in sound, appearance and meaning,
differing only in the generic portions. Because of the
similarities between the marks in their entireties, the marks
engender similar overall commercial impressions. See, e.g., In
re Computer Sys. Ctr. Inc., 5 USPQ2d 1378, 1381 (TTAB 1987)
(holding CSC ADVANCED BUSINESS SYSTEMS for retail computer store
services and computer maintenance and repair services in
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connection therewith, and CSC for various computer-related
services, likely to cause confusion, noting that “the inclusion
of ‘ADVANCED BUSINESS SYSTEMS’ as a feature of applicant’s mark
is not likely to help customers…distinguish the source of each
party’s service”); and In re Equitable Bancorporation, 229 USPQ
709, 711 (TTAB 1986) (holding RESPONSE and RESPONSE CARD (CARD
disclaimed), both for banking services, likely to cause
confusion, noting that “the addition of descriptive matter to
one of two otherwise similar, nondescriptive marks will not
serve to avoid a likelihood of confusion”).
Accordingly, the similarity between petitioner’s mark
ADVANCED SIDING AND WINDOW and respondent’s mark ADVANCED METAL
ROOFING weighs in favor of a finding of likelihood of confusion.
We next turn to consider the second du Pont factor
regarding the similarity/dissimilarity between the services. It
is well settled that the services of the parties need not be
identical or competitive, or even offered through the same
channels of trade, to support a holding of likelihood of
confusion. It is sufficient that the respective services of the
parties are related in some manner, and/or that the conditions
and activities surrounding the marketing of the services 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
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the same source. See Edwards Lifesciences Corp. v. VigiLanz
Corp., 94 USPQ2d 1399, 1410 (TTAB 2010); and Hilson Research,
Inc. v. Society for Human Resource Management, 27 USPQ2d 1423
(TTAB 1993). The issue, of course, is not whether purchasers
would confuse the services, but rather whether there is a
likelihood of confusion as to the source of the services. In re
Rexel Inc., 223 USPQ 830 (TTAB 1984).
The record shows that the home improvement industry is a
fluid one, that is, companies like petitioner change their focus
from time to time depending on the demands of the marketplace.
That is to say, such businesses have a tendency to shift the
focus of their services to take advantage of trends with
homeowners. A classic example is when petitioner expanded its
business to include the building of sunrooms and enclosed
patios, taking advantage of the boom in popularity of these
types of home improvements. According to Wayne Wilusz, “home
improvements” generally cover the exterior of a home, with jobs
like roofs, siding, windows, decks and gutters. Different items
are popular at different times, depending on the ebb and flow of
consumers’ desires. In the words of John Wilusz, “we did
everything that money could pay for.” (John Wilusz dep., p.
42).
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The record shows that petitioner has prior use of its mark
in connection with siding, window, roof, sunroom and patio
installations. These services are rendered to homeowners.
Respondent’s recitation of services reads “roofing
installation.” These services likewise are rendered to
homeowners.
In view thereof, the parties’ services overlap in part as
to roof installation, and are otherwise closely related home
improvement services. These services move through the same
trade channel (home improvement contractors) to the same
consumers.
The identity or otherwise close relationship between the
services weighs in petitioner’s favor.
OTHER FACTORS
There is some evidence of third-party uses of ADVANCED
marks in the home improvement industry. Although these uses
were acknowledged by petitioner during testimony, there is no
corroborating evidence related to the extent of such uses.
Thus, we are unable to accurately gauge the extent of exposure
of these uses to the relevant class of consumers, and what
impact, if any, these uses have had on the minds of consumers.
We recognize, of course, that the term “Advanced” is suggestive
of services that are superior; in fact, this suggestion is
conveyed by each of the parties’ marks. Nevertheless, the
Can. No. 92052696

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evidence falls short in undermining the distinctiveness of
petitioner’s mark to any significant degree, that is, to show
that petitioner’s mark is weak and that consumers are
conditioned to distinguish among various ADVANCED marks. Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 73 USPQ2d at 1693 (“As this court has previously
recognized where the ‘record includes no evidence about the
extent of [third-party] uses...[t]he probative value of this
evidence is thus minimal.’ Han Beauty, Inc. v. Alberto-Culver
Co., 236 F.3d 1333, 1338 (Fed. Cir. 2001) (emphasis added).”).
Accordingly, this factor is neutral.
Petitioner alleges that there has been actual confusion
between the marks in the marketplace. In support thereof,
petitioner points to a few misdirected emails and phone calls,
and Mr. Kenton’s statement that “[t]here is so much confusion
now out there.” (Kenton dep., p. 221).
A showing of actual confusion would of course be highly
probative, if not conclusive, of a likelihood of confusion.
Here, although the record shows some instances that may
constitute actual confusion, there is no corroborating evidence
to establish the reason for any confusion. Thus, although we
have considered the purported instances of actual confusion, we
give little probative weight to the evidence. See Georgia-
Pacific Corp. v. Great Plains Bag Co., 614 F.2d 757, 204 USPQ
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697, 701 (CCPA 1980). In any event, as often stated, proof of
actual confusion is not necessary to establish likelihood of
confusion. Giant Food, Inc. v. Nation’s Foodservice, Inc., 710
F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983). Accordingly,
this du Pont factor is neutral.
Petitioner also urges that respondent’s adoption of its
mark was made in bad faith, and that this factor should count
against respondent in the likelihood of confusion analysis. It
is clear that respondent was well aware of petitioner’s prior
use of ADVANCED SIDING AND WINDOW, and the circumstances
surrounding respondent’s adoption of its mark raises some
question about whether the adoption was made in bad faith.
Given the parties’ history and familiarity with each other, we
certainly have our doubts about whether respondent adopted its
mark in good faith. On the totality of the record, however, we
are inclined to find that the record falls short in establishing
bad faith adoption. Cf. L’Oreal S.A. v. Marcon, 102 USPQ2d
1434, 1441-42 (TTAB 2012). Nevertheless, lack of intent to
trade on another’s mark will not prevent a finding of likelihood
of confusion when the involved marks are likely to cause
confusion. Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635,
1640 (TTAB 1988).
There is evidence of a so-called “License Agreement” signed
by the parties. Mr. Kenton testified that his business
Can. No. 92052696

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associate in North Carolina obtained a copy of the agreement off
of the internet. Respondent suggested the agreement between the
parties so as to allow petitioner to use a sales training video
tape, owned by respondent, relating to the selling of metal
roofs, and to ensure that petitioner did not copy the video.
Suffice it to say, the agreement does not alter petitioner’s
ownership and prior rights in its mark AMERICAN SIDING AND
WINDOW.
CONCLUSION
Given the contentiousness of this case, we are compelled to
make one additional point. That is, we have carefully
considered all of the probative evidence pertaining to the
relevant issues in this case, as well as all of the parties’
arguments with respect thereto, including any evidence and
arguments not specifically discussed in this opinion. In
contrast, and as indicated earlier, certain testimony and
arguments presented by both parties were wholly irrelevant and
were not considered in making our determination on the merits.
We conclude that consumers familiar with petitioner’s home
improvement services, including siding, window and roof
installation, rendered under the previously used mark ADVANCED
SIDING AND WINDOW would be likely to mistakenly believe, upon
encountering respondent’s mark ADVANCED METAL ROOFING for
Can. No. 92052696

23

roofing installation, that the services originated with or are
somehow associated with or sponsored by the same entity.
Lastly, to the extent that any of the points argued by
respondent may raise a doubt about our finding of a likelihood
of confusion (although we have no such doubt), we would resolve
that doubt, as we must, in favor of petitioner as the prior
user. See Giant Food, Inc. v. Nation’s Foodservice, Inc., 218
USPQ at 395; and Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1707 (Fed. Cir. 1992).
Decision: The petition for cancellation is granted.
Registration No. 3456538 will be cancelled in due course.