American Biltrite, Inc.

Trademark Trial and Appeal Board

Apr 26, 2013

No. 78663771 (T.T.A.B. Apr. 26, 2013)

Mailed: April 26, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re American Biltrate Inc.
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Serial No. 78663771
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Anthony F. Locicero and Holly Pekowsky of Amster Rothstein & Ebenstein LLP for
American Biltrate Inc.
Leslie L. Richards, Trademark Examining Attorney, Law Office 106 (Mary I.
Sparrow, Managing Attorney).
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Before Grendel, Bergsman and Lykos, Administrative Trademark Judges.
Opinion by Lykos, Administrative Trademark Judge:

On July 5, 2005, American Biltrate Inc. (“applicant”) filed an application to
register the mark STONESCAPE in standard character format for, as amended,
“composite non-vinyl floor covering” in International Class 27.1
The Trademark Examining Attorney refused registration under Section 2(d) of
the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that applicant’s
mark so resembles the registered mark STONESCAPE also in standard character
format for “stone, gravel or similar products, namely, boulders, stone veneer, and

1 Application Serial No. 78663771, filed pursuant to Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b).
This Opinion is Not a
Precedent of the TTAB
Serial No. 78663771
2
crushed stone for use in landscaping, building construction, and paving” in
International Class 19,2 that when used on or in connection with applicant’s
identified goods, it is likely to cause confusion or mistake or to deceive.
Upon final refusal of registration, applicant filed a timely appeal. The case is
fully briefed. For the reasons explained below, we affirm the refusal to register.
We base our determination under Section 2(d) on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”).
See also, In re Majestic Distilling Company, 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 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).
First, we consider the marks. See Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed.
Cir. 2005). To state the obvious, the involved marks are identical. Thus, this du
Pont factor heavily favors a finding of likelihood of confusion.
Next we consider the goods. If the marks are identical, as in this case, it is
only necessary that there be a viable relationship between the goods in order to
support a finding of likelihood of confusion. See In re Concordia Int'l Forwarding
Corp., 222 USPQ 355, 356 (TTAB 1983). The issue remains, of course, not whether

2 Registration No. 3999191, registered on July 19, 2011.
Serial No. 78663771
3
purchasers would confuse the goods, but rather whether there is a likelihood of
confusion as to their source. In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
Applicant argues that while its identified goods are used for decorative
flooring, registrant’s goods are used in connection with construction materials for
landscaping, building construction, and paving. In support thereof, applicant relies
on prior cases involving goods such as ceramic tile, concrete and stone where no
likelihood of confusion was found. See e.g., In re American Olean Tile Co., 1 USPQ2d
1823 (TTAB 1986).
We are not persuaded by applicant’s arguments. Determinations made in prior
decisions regarding the relatedness of goods do not carry as much weight as the
record evidence before us. Here the record shows that stone veneer is commonly
used in building construction as a floor covering, and that the same entities sell
both applicant’s “composite non-vinyl floor covering” as well as stone veneer floor
covering. See for example excerpts obtained from the following websites:
www.minsterconcretecoatings.com showing a polyaspartic floor system and natural
stone flooring; www.braunshomefurnishings.com showing vinyl and stone floor
coverings; www.healdsburgfloors.com showing laminate and stone flooring;
www.paulsonsfloorcoverings.com showing laminate and stone floor coverings; and
www.reliablefloorcoverings.com showing laminate, stone, and linoleum floor
coverings. See March 11, 2012 Office Action.
In addition to the above, the examining attorney has made of record use-based
third-party registrations showing the same mark registered for both applicant’s and
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registrant’s goods. See for example the following: Registration No. 3748892 for “floor
covering products, namely, glass, stone and ceramic floor tiles”; Registration No.
3445112 for “…natural stone tiles;…natural stone mosaics for building…ceramic
tiles for floor coverings…”; Registration No. 2904006 for “floor coverings of ceramic
tile” and “floor coverings of vinyl, linoleum, wood, stone, marble, granite, plastic and
artificial stone…”; and Registration No. 3096670 for “stone for building and
construction” and “other floor coverings to be added to previously constructed floors,
namely, floor boards of wood and laminate flooring.” See March 11, 2012 Office
Action. While acknowledging applicant’s observation that the third-party
registrations do not constitute evidence of use of these marks, they have probative
value to the extent that they may serve to suggest that the goods are of a type
which may emanate from a single source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467,
1470 n.6 (TTAB 1988). As such, we find that based on the evidence of record, the
examining attorney has established that these goods are related and may emanate
from the same source.
Last, we consider the degree of care. Applicant argues that there is no
likelihood of confusion because consumers of applicant’s and registrant's goods are
sophisticated enough to distinguish the source of the goods. This argument is
unavailing. Applicant has presented no evidence regarding the sophistication of
prospective consumers. In any event, even if the record demonstrated that such
consumers are highly knowledgeable, with identical marks and related goods, even
Serial No. 78663771
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a careful, sophisticated consumer of such goods is not likely to understand that the
goods emanate from different sources, particularly where, as here, there is evidence
that both types of goods may emanate from a single source under a single mark.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 948-949 (Fed. Cir. 2000).
Accordingly, the fourth du Pont factor weighs in favor of finding a likelihood of
confusion.
To the extent that there are any other relevant du Pont factors, we treat them
as neutral.
After considering all of the evidence of record and argument pertaining to the
du Pont likelihood of confusion factors, we conclude that there is a likelihood of
confusion between applicant’s mark and the registered mark when used in
connection with their identified goods. To the extent that there is any doubt on this
issue, it is well established that we must resolve that doubt in favor of the prior
registrant. In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ
1289, 1290 (Fed. Cir. 1984). See also In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463,
6 USPQ2d 1025 (Fed. Cir. 1988).
DECISION: The refusal to register is affirmed.