Amtrol, Inc. and Water Soft, Inc.v.Mid-Atlantic Plumbing & Water Treatment Systems, Inc.

Trademark Trial and Appeal Board

Mar 30, 2006

No. 92041101 (T.T.A.B. Mar. 30, 2006)

Mailed: 3/30/2006

Grendel

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Amtrol, Inc. and Water Soft, Inc.1
v.
Mid-Atlantic Plumbing & Water Treatment Systems, Inc.
_____

Cancellation No. 92041101
_____

Mark W. Freel & Kelly L. Williams of Edwards & Angell, LLP
for Amtrol, Inc. and Water Soft, Inc.

Douglas Clark Hollmann for Mid-Atlantic Plumbing & Water
Treatment Systems, Inc.
_____

Before Hairston, Grendel and Rogers, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge.

INTRODUCTION
Mid-Atlantic Plumbing & Water Treatment Systems, Inc.,
respondent herein, is the owner of Registration No. 2447857,

1 Water Soft, Inc. is a wholly-owned subsidiary of Amtrol, Inc.,
and was joined as party-plaintiff by order of the Board dated
June 8, 2004.

THIS OPINION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Cancellation No. 92041101
2
which is of the mark depicted below for services recited in
the registration as “water treatment services.”2

Amtrol, Inc. and Water Soft, Inc., petitioners herein,
have petitioned to cancel respondent’s registration,
alleging prior trademark rights in the designation WATER
SOFT as used in connection with water treatment products,
and likelihood of confusion. See Trademark Act Section
2(d), 15 U.S.C. §1052(d).3 Petitioners’ trademark is
depicted below:

2 The registration was issued on May 1, 2001 based on an
application filed on April 17, 2000. In the registration,
February 15, 2000 is alleged as the date of first use and the
date of first use in commerce. Respondent has disclaimed the
exclusive right to use WATER SOFT QUALITY WATER TREATMENT
SOLUTIONS apart from the mark as shown.

3 In the petition for cancellation, petitioners also alleged
dilution as a ground for cancellation, but they have waived that
ground by their failure to present any argument in support of it
in their brief on the case. It is unproven in any event.
Cancellation No. 92041101
3
In its answer to the petition for cancellation,
respondent denied the salient allegations thereof.4
Both parties presented testimony and other evidence at
trial, consisting of: respondent’s Interrogatory Answers,
made of record by petitioners’ December 20, 2004 notice of
reliance; the parties’ December 20, 2004 Stipulation of
Facts and the Stipulated Documents submitted therewith; the
January 25, 2005 testimony deposition of Richard Deems
(petitioners’ former employee) and exhibits thereto; the
February 1, 2005 testimony deposition of Andrew Beyerlein
(respondent’s vice president and owner) and exhibits
thereto; the affidavit of petitioners’ vice president Joseph
DePaula and exhibits thereto (filed under seal, and pursuant
to stipulation under Trademark Rule 2.123(b)); and the
affidavit of petitioners’ employee Lynn Taylor and exhibits
thereto (filed under seal (except for Exhibit B), and

4 Respondent also asserted numerous affirmative defenses in its
answer. The first four defenses (failure to state a claim,
estoppel due to petitioners’ own conduct and lapse of time,
estoppel due to acquiescence, and estoppel due to petitioners’
abandonment of its pleaded mark) are waived because respondent
has presented no argument in support of them in its brief on the
case, and we have given them no consideration. (They are not
proven in any event.) The fifth through eighth “defenses”
(peaceful coexistence of the marks, dissimilarity of the marks,
absence of likelihood of confusion, existence of third-party
marks, weakness of petitioners’ mark and descriptiveness of
petitioners’ mark) are more properly deemed to be further
allegations in support of respondent’s denial of petitioners’
Section 2(d) ground for cancellation, and we have considered them
in that context.

Cancellation No. 92041101
4
pursuant to stipulation under Trademark Rule 2.123(b)). The
case is fully briefed; no oral hearing was held.

STANDING
We turn first to the issue of petitioners’ standing to
petition for cancellation of respondent’s registration. The
evidence of record establishes that petitioners use their
WATER SOFT trademark in connection with the sale of water
treatment products. See, e.g., Stipulation of Facts ¶¶6-8;
Exh. WS 0430-51. Based on this evidence of use, and because
petitioners’ likelihood of confusion claim is not frivolous,
we find that petitioners have standing to petition to cancel
respondent’s registration. See Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982). Respondent has not contested
petitioners’ standing in any event.

SECTION 2(d) - PRIORITY
We turn next to a determination of petitioners’ Section
2(d) ground for cancellation.
Respondent began using its mark on February 15, 2000,
the date of first use alleged in its application for
registration. (Beyerlein Depo. at 18-19.) Respondent has
not contested petitioners’ evidence of their use of the
Cancellation No. 92041101
5
designation WATER SOFT in connection with water treatment
products since prior to respondent’s first use on February
15, 2000. Indeed, in its brief, respondent has not
presented any argument at all on the issue of priority. We
find that there is no issue as to petitioners’ Section 2(d)
priority.

SECTION 2(d) - LIKELIHOOD OF CONFUSION
We turn now to the second element of petitioners’
Section 2(d) claim, i.e., 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 (the du
Pont factors). See In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003).

Parties’ Market Interface
The record establishes the following facts which are
pertinent because they reveal the background of the parties’
dispute in this case, and because they are probative under
the tenth du Pont factor (the parties’ market interface).
In addition to and in conjunction with rendering the
“water treatment services” recited in its registration,
Cancellation No. 92041101
6
respondent sells, installs and maintains water treatment
products such as those manufactured by petitioners.
(Beyerlein Depo. at 3-5). In fact, respondent was an
authorized dealer of petitioners’ WATER SOFT water treatment
products for approximately eleven years, from the formation
of respondent’s business in 1989 until late 1999 or early
2000. (Beyerlein Depo. at 8, 9). The primary reason
respondent formed its business was its desire to market
petitioners’ WATER SOFT line of water treatment products.
(Beyerlein Depo. at 8).
In late 1999, respondent became dissatisfied with the
customer service it was receiving from petitioners, and
became concerned about the continuing viability of
petitioners as a source of water treatment products.
(Beyerlein Depo. at 8-9, 80-81). Respondent ceased
purchasing petitioners’ WATER SOFT water treatment products
at or around that time. (Stipulated Facts ¶13). Also at
that time, respondent designed its own WATER SOFT mark (the
registered mark involved herein), because respondent felt
that respondent alone was responsible for having built up
goodwill in the WATER SOFT designation in its geographic
area, and respondent wanted to preserve that goodwill for
respondent’s benefit. (Beyerlein Depo. at 25, 81).
We find that these facts weigh in favor of a finding of
likelihood of confusion, under the tenth du Pont factor.
Cancellation No. 92041101
7
Contrary to respondent’s assumption, any goodwill in the
WATER SOFT designation which resulted from respondent’s sale
of petitioners’ WATER SOFT products between 1989 and 1999
inured to petitioners’ benefit, not to respondent’s.
Moreover, purchasers who purchased petitioners’ WATER SOFT
products from respondent while respondent was an authorized
dealer of those products, and who now need those products to
be serviced, repaired or replaced, are likely to contact
respondent on the assumption that respondent continues to be
an authorized dealer of petitioners’ WATER SOFT products.
Such purchasers would regard that assumption as being
especially reasonable based on respondent’s continued use of
a mark which prominently includes the designation WATER
SOFT. For these reasons, we find that the parties’ market
interface, i.e., the fact that respondent formerly was (but
no longer is) an authorized dealer of petitioners’ WATER
SOFT products, supports a finding of likelihood of confusion
under the tenth du Pont factor.

Similarity of the Marks
We turn next to the first du Pont factor, i.e., a
determination of the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. We make this
determination in accordance with the following principles.
Cancellation No. 92041101
8
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 goods or
services offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of marks. See Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore, although
the marks at issue must be considered in their entireties,
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. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
Respondent has conceded in its brief (at p. 7) that the
dominant feature of respondent’s mark is the wording WATER
SOFT. We agree. The additional wording “Quality Water
Treatment Solutions” is non-distinctive and merely
informational, and it appears in much smaller type than does
the wording WATER SOFT. The water droplets design element
essentially evokes and reinforces the concept of “water” in
the designation WATER SOFT, and the “swoosh” design element
Cancellation No. 92041101
9
is essentially a decorative carrier device. These
additional elements contribute relatively little to the
source-indicating significance of the mark. Although we do
not ignore these other elements of respondent’s mark, we
find that it is the dominant wording WATER SOFT which is
entitled to the most weight in our analysis under the first
du Pont factor. See In re National Data Corp., supra.
Likewise, we find that the dominant feature of
petitioners’ trademark is the wording WATER SOFT. The
entity designation “INC.” is devoid of source-indicating
significance and contributes essentially nothing to the
commercial impression of petitioners’ trademark. In the
trademark, the words WATER SOFT appear in dominant, very
large type; petitioners’ house mark AMTROL appears in much
smaller type. The umbrella design element, like the water
droplets design element in respondent’s mark, essentially
evokes and reinforces the concept of “water” in the
designation WATER SOFT. Although we do not ignore these
other elements of petitioners’ mark, we find that it is the
dominant wording WATER SOFT which is entitled to the most
weight in our analysis under the first du Pont factor. See
In re National Data Corp., supra.
Notwithstanding its concession that WATER SOFT is the
dominant feature of its mark, respondent argues that WATER
SOFT is a generic or merely descriptive designation as
Cancellation No. 92041101
10
applied to the parties’ goods and services, and that its
presence as the only common element in both respondent’s and
petitioners’ marks therefore cannot be a sufficient basis
for finding confusing similarity under the first du Pont
factor. In support of this argument, respondent cites
Kellogg Co. v. Pack’Em Enterprises Inc., 951 F.2d 330, 21
USPQ2d 1142 (Fed. Cir. 1991), aff’g 14 USPQ2d 1545 (TTAB
1990)(FROOT LOOPS for cereal not confusingly similar to
FROOTEE ICE for flavored liquid frozen into bars), and
Keebler Company v. Murray Bakery Products, 866 F.2d 1386, 9
USPQ2d 1736 (Fed. Cir. 1989)(PECAN SANDIES and PECAN
SHORTIES not confusingly similar as applied to cookies).
We are not persuaded by this argument. Respondent has
not presented any evidence which establishes, under the
genericness test set forth in H. Marvin Ginn Corp. v.
International Association of Fire Chiefs, Inc., 782 F.2d
987, 228 USPQ 528 (Fed. Cir. 1986), that WATER SOFT is
understood by the relevant purchasing public to be a generic
term for water treatment goods and services. Nor does the
evidence of record (including respondent’s evidence of
alleged third-party use, discussed infra,) establish that
WATER SOFT is merely descriptive of such goods and services.
On this record, we find that WATER SOFT is, at most,
suggestive of the “water softening” function and purpose of
the parties’ goods and services. Unlike the terms FROOT and
Cancellation No. 92041101
11
PECAN which were the only common elements of the marks at
issue in Kellogg Co. and Keebler, the designation at issue
in this case, WATER SOFT, is inherently distinctive, and its
presence in both respondent’s mark and petitioners’ mark
therefore may suffice as a basis for finding confusing
similarity under the first du Pont factor. See Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).5
Respondent’s mark and petitioners’ mark are somewhat
different in terms of appearance and sound, because
petitioners’ mark includes the designation AMTROL and an
umbrella design element, while respondent’s mark includes
the wording “Quality Water Treatment Solutions” and the
water droplets and swoosh design elements. However, even
though the overall appearances of the marks are different,
they utilize a remarkably similar typeface for the common,

5 Even if petitioners’ WATER SOFT mark were deemed to be not
inherently distinctive, we would find that the designation had
acquired distinctiveness as an indication of source prior to
respondent’s first use of its mark. Respondent’s stated
intention in designing its own mark, i.e., its desire to retain
the goodwill that had been developed in the WATER SOFT
designation due to respondent’s sales of petitioners’ products
(goodwill which inured to petitioners’ benefit, not
respondent’s), is evidence that WATER SOFT had acquired
distinctiveness. The existence of such goodwill necessarily
implies distinctiveness. Whatever the other changes to its mark
made by respondent in its asserted effort to create a mark which
is not confusingly similar to petitioners’ mark, respondent’s
copying of the WATER SOFT portion of petitioners’ mark in order
to retain the goodwill existing therein is evidence that the
designation WATER SOFT functioned as an indication of source as
of the time that respondent adopted its mark.

Cancellation No. 92041101
12
dominant term, WATER SOFT. In terms of connotation and
overall commercial impression, we find that respondent’s
mark is virtually identical to petitioners’ mark insofar as
the designation WATER SOFT appears as the dominant feature
in both marks. This fundamental point of similarity between
the marks, i.e., the fact that they are both dominated by
the presence of the designation WATER SOFT, is not overcome
by the differences between the marks.
The presence (in small letters) of the house mark
AMTROL in petitioners’ mark does not suffice to distinguish
the marks in terms of their overall commercial impressions.
See In re The U.S. Shoe Corp., 229 USPQ 707 (TTAB
1985)(CAREER IMAGE (stylized) for clothing held likely to be
confused with CREST CAREER IMAGES (stylized) for uniforms);
In re Apparel Ventures, Inc., 229 USPQ 225 (TTAB
1986)(SPARKS BY SASSAFRAS (stylized) for clothing held
likely to be confused with SPARKS (stylized) for footwear).
Respondent’s addition to its mark (in small letters) of the
non-distinctive informational wording “Quality Water
Treatment Solutions” does not distinguish the marks in terms
of their overall source-indicating significance. The
umbrella design element in petitioners’ mark is different
than the water droplets design element in respondent’s mark,
but both designs evoke the concept of “water.” The swoosh
design element in respondent’s mark contributes nothing to
Cancellation No. 92041101
13
the source-indicating significance of the mark, and it does
not distinguish respondent’s mark from petitioners’ mark.
These points of dissimilarity between the marks, viewed
collectively, do not suffice to overcome the basic
similarity between the marks which arises from the presence
of the designation WATER SOFT as the dominant feature of
each mark. We find that purchasers are more likely to
assume, based on the presence of WATER SOFT in both marks,
that a source connection exists, than they are to assume,
based on the dissimilarities between the marks, that no such
source connection exists. Comparing the marks in their
entireties, we find that they are substantially similar.
For these reasons, we find that the first du Pont
likelihood of confusion factor weighs in favor of a finding
of likelihood of confusion.

Similarity of Goods and Services, Trade Channels and Classes
of Purchasers

Under the second and third du Pont factors, we consider
the similarity or dissimilarity of the parties’ respective
goods and services, as well as the similarity or
dissimilarity of the trade channels in which and the classes
of customers to whom the goods and services are marketed.
These factors will weigh in favor of a finding of likelihood
of confusion if the evidence establishes that the goods and
services are related in some manner, or that the
Cancellation No. 92041101
14
circumstances surrounding their marketing are such that they
would be likely to be encountered by the same persons in
situations that would give rise, because of the similarity
of the marks, to a mistaken belief that they originate from
or are in some way associated with the same source or that
there is an association or connection between the sources of
the respective goods and services. See In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991); and In re International Telephone & Telegraph Corp.,
197 USPQ 910 (TTAB 1978). It is settled that goods may be
related to services, for purposes of the second du Pont
factor. See In re Hyper Shoppes (Ohio) Inc., 837 F.2d 463,
6 USPQ2d 1025 (Fed. Cir. 1988); Steelcase Inc. v. Steelcare
Inc., 219 USPQ 433 (TTAB 1983)(finding similarity between
furniture products and furniture refinishing services).
Petitioners use their WATER SOFT mark in connection
with the manufacture and sale of water treatment products.
Such products include “residential and commercial lines,
everything from a water softener, iron filters, sulfur
treatment and removal, drinking water systems, whole house
filters to remove taste and odor as well as to raise or
lower pH or neutralize low acidic condition.” (Deems Depo.
at 10.) Petitioners sell their water treatment products to
wholesalers, who distribute the products to dealers, who
Cancellation No. 92041101
15
then sell to the ultimate purchasers and end users of the
products, i.e., to residential homeowners and commercial
property owners. (Deems Depo. at 9-10.) From 1989 to 1999,
petitioners also had one dealer, i.e., respondent, to whom
they distributed their products directly (without an
intervening wholesaler); respondent would then resell the
products at retail to homeowners and other end users.
(Deems Depo. at 10.)
Respondent’s services, as recited in respondent’s
registration, are “water treatment services.” The evidence
establishes that such services include the sale or leasing
of water treatment products, and the delivery, installation,
servicing and repair of such products. (Beyerlein Depo. at
4.) These products are the very type of products
manufactured and sold by petitioners; indeed, respondent
formerly was an authorized dealer of petitioners’ WATER SOFT
line of water treatment products, and provided its water
treatment services “in connection with” petitioners’ water
treatment products. (Stipulation of Facts, ¶10.)
Respondent’s customers are “Joe Blow homeowners, some
commercial, but mostly residential.” (Beyerlein Depo. at
4.)
Based on this evidence, we find that respondent’s
services and petitioners’ goods, and the parties’ trade
channels and classes of purchasers, are similar. The
Cancellation No. 92041101
16
ultimate customers for the respective goods and services are
the same, i.e., homeowners and other end users of water
treatment products. We are not persuaded by respondent’s
argument that the parties’ customers are different because
petitioners sell their products to wholesalers, and make no
direct sales to homeowners. Homeowners are the ultimate
purchasers of petitioners’ products, and they are the
relevant class of purchasers for purposes of our likelihood
of confusion determination.
These homeowners purchase water treatment products and
water treatment services in the same channel of trade, i.e.,
from dealers such as respondent, who both sell water
treatment products and render water treatment services. It
is not dispositive that petitioners sell their products
initially to wholesalers; the ultimate purchasers
(homeowners) are unlikely to be aware of or care about the
existence of or the number of earlier stages in the chain of
distribution through which the products ultimately reach
them. See Luzier Incorporated v. Marlyn Chemical Co., Inc.,
169 USPQ 797, 799 (CCPA 1971)(“We do not think that
‘movement through the same trade channels’ is the
controlling consideration if the goods may end up in the
same purchaser’s hands under conditions where that purchaser
might logically suppose they had a common origin because of
the use thereon of [confusingly similar] trademarks.
Cancellation No. 92041101
17
Purchasers may not be aware of the channels through which
goods ultimately reach them.”).
Respondent’s “water treatment services” include and
involve the sale and servicing (as well as the leasing,
delivery, installation and repair) of water treatment
products of the type manufactured and sold by petitioners.
Homeowners familiar with petitioners’ water treatment
products sold under the WATER SOFT trademark are likely to
assume, upon encountering water treatment services marketed
under respondent’s confusingly similar WATER SOFT mark, that
a source connection or other affiliation exists. Consider,
for example, a homeowner who has decided to purchase one of
petitioners’ WATER SOFT water treatment products, or who
already owns such a product and needs to have it serviced or
repaired. Upon encountering respondent’s water treatment
services offered under respondent’s WATER SOFT mark, the
homeowner is likely to mistakenly assume that respondent is
a dealer authorized to sell and/or service petitioners’
WATER SOFT products.
For these reasons, we find that the parties’ respective
goods and services are similar, as are the parties’ trade
channels and classes of purchasers. The second and third
du Pont factors accordingly weigh in favor of a finding of
likelihood of confusion.

Cancellation No. 92041101
18
Conditions of Purchase/Sophistication of Purchasers
Under the fourth du Pont factor, we find that the
purchasers of petitioners’ goods and respondent’s services
include homeowners, i.e., ordinary consumers. There is
nothing in the record to indicate that these purchasers
exercise anything more than a normal degree of care in
deciding to purchase these goods and services. We therefore
are not persuaded by respondent’s contention that this
du Pont factor weighs against a finding of likelihood of
confusion.

Third-party Use of Similar Marks on Similar Goods
The sixth du Pont factor requires us to consider
evidence of “the number and nature of similar marks in use
on similar goods.” “Evidence of third-party use of similar
marks on similar goods is relevant to show that a mark is
relatively weak and entitled to only a narrow scope of
protection.” Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, supra, 396 F.3d at 1373,
73 USPQ2d at 1693. However, it is settled that “[t]he
probative value of third-party trademarks depends entirely
upon their usage.” Id. The defendant’s third-party use
evidence must show “that these trademarks were actually used
by third parties, that they were well promoted or that they
were recognized by consumers.” Id., quoting from Scarves by
Cancellation No. 92041101
19
Vera, Inc. v. Todo Imports, Ltd., 544 F.2d 1167, 1173, 192
USPQ 289, 294 (2d Cir. 1976). Thus, the probative value of
third-party use evidence is minimal absent evidence showing
the extent of such third-party uses. Palm Bay Imports,
supra, 396 F.3d at 1373-74, 73 USPQ2d at 1693; Han Beauty,
Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1338, 57 USPQ2d
1557, 1561 (Fed. Cir. 2001). As the court noted, “[t]he
purpose of a defendant introducing third party uses is to
show that customers have become so conditioned by a plethora
of such similar marks that customers ‘have been educated to
distinguish between different [such] marks on the bases of
minute distinctions.’” Palm Bay Imports, supra, 396 F.3d at
1374, 73 USPQ2d at 1694 (internal quotation from J. Thomas
McCarthy, 2 McCarthy on Trademarks and Unfair Competition
§11:88 (4th ed. 2001)).
In this case, the evidence of record fails to establish
that there is any significant actual use by third parties of
WATERSOFT or WATER SOFT marks in the United States in
connection with water treatment products, much less that the
extent of such third-party use is so widespread that
consumers have been “conditioned” to distinguish between
such marks on the basis of minute distinctions. The
evidence of record is discussed below.6

6 The only evidence of record pertaining to the issue of third-
party use is found among the exhibits to the Beyerlein
Deposition, i.e., Exh. 000016-48, 000052-55, 000054A-55B, 000066-
Cancellation No. 92041101
20
The third-party federal trademark registrations and
applications relied on by respondent (Beyerlein Depo. Exh.
000017-000036; A-000001-000033) are not evidence, under the
sixth du Pont factor, of third-party use of the marks
depicted therein, and they therefore are not evidence that

69, and A-000001-55. Exh. A-000001-55 is respondent’s commercial
search report.
We note that at page 11 (and footnote 6) of its brief,
respondent states that petitioner also submitted its own
commercial search report as evidence, and identifies that
evidence as Exh. WS 0462-0752. However, the official file of
this proceeding includes no such search report. The referenced
exhibit pages WS 0462-0752 are not found among the documents
submitted pursuant to the parties’ December 20, 2004 “Motion to
Enter Stipulation of Facts and to Submit Stipulated Documents,”
nor are they found elsewhere in the record. We note that the
Stipulation of Facts (at ¶14) makes reference to the fact that
petitioner commissioned and received a commercial search report
on or about July 5, 2001, but it does not state that the search
report is being submitted as part of the stipulated documents,
nor does it identify or make any reference or citation to the
report by any document production number. (The parties’ motion
accompanying the stipulation states: “Where appropriate,
documents that support a particular factual allegation are
referenced in the Factual Stipulation by corresponding production
numbers.” This practice was followed elsewhere in the
Stipulation.) Thus, it appears that although the search report
was produced in discovery, it was never made of record as
evidence at trial.
Therefore, respondent’s citations (at pp. 11-12 of its brief)
to Exh. WS 0592 and WS 0599-601, and to the alleged third-party
uses identified on those pages, are not supported by the record.
However, it appears that most of those alleged third-party uses
(i.e., companies in Saxonburg, PA, Twelve Mile, IN, New City, NY,
Saline, MI, Illiopolis, IN, Pacific, MO, London, KY and Oak
Brook, IL) also are represented in respondent’s search report
(which is in the record), and we have considered them in that
context. As to the remaining four companies cited by respondent
(in Dallas, TX, Pearl River, NY, Toms River, NJ and Ann Arbor,
MI), we have no basis for making any findings; we cannot even
determine what the names of those companies are. Regardless,
however, and as discussed below, the mere listing of company
names and marks in a commercial search report, without any
evidence as to the extent of use of the names and marks or as to
consumers’ awareness of them, is of little or no probative value
under the sixth du Pont factor.

Cancellation No. 92041101
21
WATER SOFT is a weak mark. Olde Tyme Foods, Inc. v.
Roundy’s, Inc., 961 F.2d 200, 204, 22 USPQ2d 1542, 1545
(Fed. Cir. 1992). In any event, with the exception of two
applications owned by petitioners (Exh. 000017, 000028 and
A-000025) and one abandoned third-party application (Exh.
000018, A-000024 and A-000031), all of these registrations
and applications depict marks other than WATER SOFT, or
cover goods or services other than water treatment products.
They therefore are of little or no probative value in this
case.
Likewise, the third-party state trademark registrations
(Beyerlein Depo. Exh. pp. A-000049-000055) are not evidence
of third-party use. Faultless Starch Co. v. Sales Producers
Associates, Inc., 530 F.2d 1400, 189 USPQ 141, 142 n.2 (CCPA
1976); Kraft, Inc. v. Balin, 209 USPQ 877, 880 (TTAB 1981).
Only one of these (Exh. p. A-000049) is of the mark WATER
SOFT in any event.
The printouts of the results of three Internet searches
(one by Ask Jeeves and two by Google; Beyerlein Depo. Exh.
000047-48, 000054-55 and 000054A-55B) are of little
probative value in themselves due to the brevity of, and
lack of context for, each of the approximately twenty-seven
Internet references depicted in the printouts. See In re
Remacle, 66 USPQ2d 1222, 1223 n.2 (TTAB 2002). In any
event, nine of the references (in the Ask Jeeves list) make
Cancellation No. 92041101
22
no mention at all of WATERSOFT or WATER SOFT. Many of the
remaining references clearly refer to petitioners, their
dealers, or their products. Several more appear to refer to
petitioners or their products, although less clearly; we
cannot conclude that they do not refer to petitioners. The
few remaining references are not probative because they
refer to foreign companies, or to goods other than water
treatment products.
In addition to these Internet search results printouts,
there are full printouts of seven third-party web pages
wherein WATERSOFT or WATER SOFT appears. Four of the seven
web pages refer to petitioners, its dealers or its products.
(Exh. 000016 (Waterwell), Exh. 000040-41 (True Pump), Exh.
000052-53 (PureWater 4U), and Exh. 000067 (Speck
Industrial).) One web page (Exh. 000066) refers to a third
party, apparently not affiliated with petitioners, which
uses WATERSOFT in connection with water treatment services.
However, this company is located outside the United States,
in Manitoba, Canada; its use of WATERSOFT therefore is of
little probative value under the sixth du Pont factor. The
remaining two web pages are irrelevant because they refer to
uses of WATERSOFT in connection with goods other than water
treatment products. (Exh. 000044-45 refers to computer
software, and Exh. 000068 refers to lens tinting chemicals.)
Cancellation No. 92041101
23
The “Company Name Listing” section of respondent’s
search report (Exh. A-000035-36) and the “White Page
Listings” section of the search report (Exh. A-000037-41)
include listings for “Water Soft Inc.” of Saxonburg, PA,
“Water Soft of Indiana” of Twelve Mile, IN, and “Water Soft
of Rockland Inc.” of New City, NY. However, we cannot
determine from these mere listings the extent to which these
names are actually in use and actually known by consumers,
or even if they are currently in use at all. This evidence
therefore is of little or no probative value under the sixth
du Pont factor. The other companies included in these
listings also are irrelevant because their names are not
WATERSOFT or WATER SOFT but rather are some variation of
“Soft Water” or “Water Softener,” or because they do not
appear to be in the water treatment business (e.g. “Water
Soft Development” of Oak Brook, IL, identified as a computer
company).
The search report’s listing of common law marks (Exh.
A-000034) includes only one apparent third-party mark in the
water treatment field, but there is no evidence that this
mark is in use nor evidence as to the extent of such use.
This evidence therefore is of no probative value under the
sixth du Pont factor.
Finally, the search report’s “Internet Domain Name
Search” (Exh. A-000042-48), which lists several domain name
Cancellation No. 92041101
24
registrations, is of no probative value under the sixth du
Pont factor. The mere fact that these domain names have
been registered is not evidence that they are in use, or
that consumers are aware of them.
In summary, although respondent’s proffered evidence of
third-party use is fairly voluminous, it is essentially all
irrelevant or non-probative for the reasons stated above.
Only a handful of the third-party references appear to
pertain to the WATER SOFT (or WATERSOFT) designation and to
the water treatment products involved in this case, and,
even as to these few, there is no evidence from which we
might conclude that the extent of use is such that consumers
have become conditioned to distinguish between the marks
based on minute distinctions. Palm Bay Imports, supra.
Considering all of the evidence of record, we find that the
strength of petitioners’ WATER SOFT mark is not undermined
by third-party use. We therefore reject respondent’s
contention that the sixth du Pont factor weighs against a
finding of likelihood of confusion.

Actual Confusion
Respondent’s owner testified: “As a matter of fact I
had a service call the other day, last week when a gentleman
called me up and asked me if I was associated with WaterSoft
in Ohio [petitioners] and I explained to him that I was
Cancellation No. 92041101
25
not.” (Beyerlein Depo. at 19.) We find that this is
evidence of actual confusion which supports a finding of
likelihood of confusion under the seventh du Pont factor
(“the nature and extent of any actual confusion”).
Respondent argues that this evidence is de minimis, but it
is settled that “[a]ny evidence of actual confusion is
strong proof of the fact of a likelihood of confusion.” J.
Thomas McCarthy, 3 McCarthy on Trademarks and Unfair
Competition §23:13 (4th ed.)(emphasis added). See Molenaar,
Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975)(even a
single instance of actual confusion is at least
“illustrative of a situation showing how and why confusion
is likely”). The seventh du Pont factor accordingly weighs
in favor of a finding of likelihood of confusion.7

Likelihood of Confusion – Summary
Weighing all of the evidence pertaining to the du Pont
likelihood of confusion factors, and for the reasons

7 Even if this incident were not deemed to be evidence of actual
confusion, or deemed to be de minimis evidence, it is settled
that “[w]hile evidence of actual confusion factors into the
DuPont analysis, the test under §1052(d) is likelihood of
confusion, not actual confusion. Hence, a showing of actual
confusion is not necessary to establish a likelihood of
confusion.” Herbko International, Inc. v. Kappa Books, Inc., 308
F.3d 1156, 1165, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002).
Moreover, an absence of actual confusion may be discounted in the
likelihood of confusion analysis in cases (such as this one)
where the other likelihood of confusion factors are dominant.
Han Beauty Inc. v. Alberto-Culver Co., supra, 236 F.3d at 1338,
57 USPQ2d at 1561.
Cancellation No. 92041101
26
discussed above, we conclude that a likelihood of confusion
exists. Respondent’s mark and petitioners’ mark are
confusingly similar when viewed in their entireties.
Respondent’s services are similar and related to
petitioners’ goods, and the parties’ trade channels and
classes of purchasers are similar. The purchasers of the
goods and services are ordinary consumers who exercise
ordinary care in making their purchases. Petitioners’ mark
has not been shown to be weakened or diluted by third-party
use of similar marks on similar goods. At least one
instance of actual confusion has occurred, a fact which
corroborates the conclusion that a likelihood of confusion
exists. Finally, the parties’ market interface, i.e., the
fact that respondent was formerly an authorized dealer of
petitioners’ products, enhances the likelihood that
consumers will mistakenly assume that a connection or
affiliation between respondent and petitioners exists. All
of these facts support a finding that confusion is likely.

CONCLUSION
For the reasons discussed above, we find that
petitioners have established their standing and their
Section 2(d) ground for cancellation.
Decision: The petition to cancel is granted.
Registration No. 2447857 shall be canceled in due course.