Atlas Roofing Corporation

Trademark Trial and Appeal Board

Nov 28, 2012

No. 85024217 (T.T.A.B. Nov. 28, 2012)

Mailed: November 28, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Atlas Roofing Corporation
________

Serial No. 85024217
_______

Donna J. Bunton of Nixon & Vanderhye PC for Atlas Roofing
Corporation

Maureen Dall Lott, Trademark Examining Attorney, Law Office
117 (J. Brett Golden, Managing Attorney).
_______

Before Zervas, Wellington, and Shaw, Administrative
Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:

Atlas Roofing Corporation has filed an application to
register on the Principal Register the mark X-PRO, in
standard characters, for goods identified as “foam
insulation for use in building and construction; insulating
materials; expanded polystyrene (EPS) insulation for roofs,
walls and floors” in International Class 17.1

1 Serial No. 85024217 was filed on April 27, 2010, with an
allegation of a bona fide intention to use the mark in
commerce.
THIS OPINION IS NOT A
PRECEDENT OF
THE TTAB
Serial No. 85024217
2
The examining attorney has refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d),
because of a likelihood of confusion with the mark in U.S.
Registration No. 3715343 for the mark X-PRO, also in
standard characters, for, inter alia, “consultancy in the
fields of building construction and construction,” in
International Class 37.2
After the refusal was made final, applicant appealed.
The case is fully briefed. For the reasons discussed
below, we affirm the refusal to register.
Our determination of the issue of likelihood of
confusion is based on an analysis of all the probative
facts in evidence relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). See also, In re Majestic Distilling Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). 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).

2 Issued November 24, 2009.
Serial No. 85024217
3
The Marks
We first consider the similarity or dissimilarity of
the marks, comparing the marks for similarities and
dissimilarities in appearance, sound, connotation and
commercial impression. See Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005). Applicant’s X-PRO mark
in standard characters is identical in all respects to
registrant’s X-PRO mark, also in standard characters. This
du Pont factor heavily favors a finding of likelihood of
confusion.
The Goods and Services
We now consider the similarity of the goods and
services, keeping in mind that the greater the degree of
similarity between the marks at issue, the lesser the
degree of similarity between the respective goods and
services that is required to support a finding of
likelihood of confusion. See In re Opus One Inc., 60
USPQ2d 1812, 1815 (TTAB 2001). If the marks are identical,
as in this case, it is only necessary that there be a
viable relationship between the goods and services 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
Serial No. 85024217
4
purchasers would confuse the goods and services, but rather
whether there is a likelihood of confusion as to their
source. In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
The examining attorney argues that applicant’s
insulation for use in building and construction and for
roofs, walls and floors is related to registrant’s
“consultancy in the fields of building construction and
construction” because “the same entity commonly provides
both insulation and consulting services in the field of
building construction, especially those related to
insulation used in building construction.” Examining
Attorney’s Br. at 4. To support the refusal, the examining
attorney submitted copies of seven third-party
registrations that serve to suggest that insulation
products and construction consulting may emanate from a
single source:
• Reg. No. 3725935 for the mark ACCELERATED BUILDING
TECHNOLOGIES and design for, inter alia:
Packing, stopping and insulating materials, namely,
expanded polystyrene foam, in International Class 17;
Installation services, namely, providing consulting
services and advice related to prefabricated, namely,
panelized, building systems and parts therefor, in
International Class 37;
• Reg. No. 3661524 for the mark SPREFIX for, inter alia:
Non-conducting compositions within the building
industry and the marine industry, namely, insulation
against fire, condensation, acoustics as well as
thermal insulation, in International Class 17;
Serial No. 85024217
5
Construction and erection of buildings and marine
construction as well as repair and maintenance of
buildings such as insulation against fire,
condensation, acoustics and thermal insulation; ship
building services regarding insulation against fire,
condensation, acoustics and thermal insulation, in
International Class 37;
• Reg. No. 3660034 for the mark DRYVIT for, inter alia:
[I]nsulation material sold in sheet and board form for
application to exterior surfaces of a building, in
International Class 17;
[C]onsulting services in the installation of wall
panel systems for buildings, in International Class
37;
• Reg. No. 3656703 for the mark AFT and design for,
inter alia:
[I]nsulation with acoustic and thermal properties for
use in residential and commercial buildings, in
International Class 17;
[C]onsulting services for the construction of
insulation manufacturing plants, in International
Class 37;
• Reg. No. 3007575 for the mark PLASTIFAB EPS PRODUCT
SOLUTIONS and design for:
[I]nsulation materials and parts and accessories
therefor for insulating pipes and the like, namely,
insulation jacketing and insulation fitting covers;
sound insulation material, namely, expanded
polystyrene insulation and polystyrene foam for use in
sound insulation and building insulation purposes;
acoustical insulation for buildings; and building
insulation, in International Class 17;
[C]onstruction consultation, namely, providing advice
and expertise relating to the use of expanded
polystyrene products for the construction and building
industries, in International Class 37;
• Reg. No. 3819067 for the mark ARXX for, inter alia:
Wall system consisting of molded expanded polystyrene
(EPS) insulation panels that are connected by cross
ties for use in wall systems; sealing and insulating
materials to control moisture for below grade walls,
in International Class 17;
Serial No. 85024217
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Consulting services in wall and building construction,
in International Class 37; and
• Reg. No. 3888991 for the mark ENVIROTROL, INC. for,
inter alia:
Spray-on insulation for use in all types of process
equipment, vessels, tanks, piping and commercial
applications, including food service, HVAC, and
electronic enclosures in need of corrosion protection
and insulation, in International Class 17;
Technical support services, namely, technical
consultation in the field of application of spray-on
insulation and protective coatings, in International
Class 37. Emphasis added.

Although such third-party registrations are not
evidence that the marks shown therein are in use or that
the public is familiar with them, they nonetheless have
probative value to the extent they are based on use in
commerce and serve to suggest that the goods and services
identified therein are of a kind which may emanate from a
single source under a single mark. See In re Davey Prods.
Pty Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009); and In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB
1993).
The examining attorney also has made of record a
number of excerpts from various third-party websites to
show that foam and insulation products used in the
construction field are sometimes offered in conjunction
with consulting services. The most relevant websites are:
Serial No. 85024217
7
• crinsulators.com – The website of a New Jersey
business offering “complete insulation service[s]” and
featuring “Affordable Rates with Free Consultation;”
• thermafiber.com – A website providing information
about “Thermafiber” brand insulation products and
stating “[w]e collaborate with you to manage
insulation details at every step by offering
engineering judgments, recommendations for specific
products, CAD drawings, and consultation on good
design practices;” and
• plymouthfoam.com – A website of a company purporting
to be “one of the nation’s leading EPS and soft foam
manufacturers” and offering a variety of foam products
and services, including an “experienced design
consultation staff.”

Applicant argues that this evidence is insufficient
because it shows “at most that the same entity sometimes
manufactures a product such as ‘insulation’ and also
provides consulting services relating to ‘insulation’” but
does not show that an entity such as registrant which
manufactures metallurgical machinery and metallurgical
plants also provides consulting services relating to
“completely unrelated products such as insulation.”
Applicant’s Br. at 6.
Instead, applicant argues that the nature of
registrant’s consultancy services is “relatively unclear”
and thus the services must be considered in the larger
context of registrant’s business which gives these
consulting services “a particular meaning and understanding
to its customers and others in the metallurgical Industry.”
Serial No. 85024217
8
Applicant’s Br. at 8-9. Relying on In re Trackmobile Inc.,
15 USPQ2d 1152 (TTAB 1990), applicant argues that printouts
from registrant’s website suggest that registrant’s
services should be “defined with respect to the
metallurgical industry.” Id.
We disagree. Trackmobile stands for the proposition
that when the nature of the goods or services is unclear
(e.g., mobile railcar movers v. light railway motor
tractors), extrinsic evidence may be used to demonstrate
what a specific term means in an industry to understand
whether or not one is encompassed by the other. The
meaning of registrant’s services, “consultancy in the
fields of building construction and construction,” is not
in any way unusual or unclear so as to require
clarification from extrinsic evidence under Trackmobile.
Despite its arguments to the contrary, applicant is
seeking to improperly limit the scope of a broad
identification rather than provide clarity to an unclear
identification. The law is clear that the question of
likelihood of confusion must be determined based on the
identification of goods and services in the application and
cited registration, regardless of what the record may
reveal as to the actual nature of the goods and services,
the particular channels of trade or the class of purchasers
Serial No. 85024217
9
to which the goods and services are directed. Octocom
Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937,
16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is
legion that the question of registrability of an
applicant's mark must be decided on the basis of the
identification of goods set forth in the application [and
registration].”).
If, as here, the application and registration describe
the goods and services broadly and there is no limitation
as to the nature, type, channels of trade, or class of
purchasers, it is presumed that the registration
encompasses all services of the type described, and that
they move in all channels of trade normal for these
services, and that they are available to all classes of
purchasers for the described services. See In re Linkvest
S.A., 24 USPQ2d 1716 (TTAB 1992). Thus, registrant’s
“consultancy in the fields of building construction and
construction” must not be limited to particular channels of
trade such as the metallurgical industry.
Applicant also argues that the goods and services
occupy “completely different fields” (Applicant’s Br. at
10) but both applicant’s goods and registrant’s services
are related to the building construction industry.
Moreover, given that some of registrant’s goods and
Serial No. 85024217
10
services involve high temperature metallurgical furnaces
and machines for production of raw steel, it is certainly
possible that some forms of insulation could be used or
otherwise recommended by registrant to mitigate excessive
heat or loud sounds associated with steel mills.
Accordingly, we find that the third-party
registrations and internet website evidence demonstrate
that insulation products for building construction and
consulting services may emanate from a single source.
Consumer Sophistication
Finally, applicant argues that there is no likelihood
of confusion because consumers of registrant’s services are
“sophisticated, knowledgeable people in the metallurgical
industry who would be well aware what equipment and
machinery they are looking for and who they are dealing
with.” Applicant’s Br. at 10. Leaving aside the fact that
the registrant’s consulting services are not limited to the
metallurgical industry as discussed above, this argument is
unavailing. It is well-settled that even sophisticated
purchasers are not immune from source confusion, especially
in cases such as this appeal involving identical marks.
See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ
49, 50 (Fed. Cir. 1986), citing Carlisle Chemical Works,
Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110,
Serial No. 85024217
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112 (CCPA 1970) (“Human memories even of discriminating
purchasers...are not infallible.”). See also In re Decombe,
9 USPQ2d 1812, 1814-1815 (TTAB 1988) (being knowledgeable
and/or sophisticated in a particular field does guarantee
that one knows the range of products of the parties with
whom one is dealing).
Moreover, even assuming, arguendo, that registrant’s
consumers are sophisticated, there is no evidence that
applicant’s consumers are sophisticated. This raises the
possibility of reverse confusion, which is no less a
problem. Thus, consumers who become familiar with
applicant’s X-PRO insulation products for use in building
and construction, upon seeing the registrant’s X-PRO mark
in connection with consultancy in the fields of building
construction and construction, are likely to believe that
registrant’s services are associated with the applicant.
We find that the similarities between the marks and
the goods sold thereunder outweigh any sophisticated
purchasing decision. See HRL Assocs., Inc. v. Weiss
Assocs., Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss
Assocs., Inc. v. HRL Assocs., Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and
marks outweigh sophisticated purchasers, careful purchasing
decision, and expensive goods).
Serial No. 85024217
12
Finally, we must resolve doubt in favor of the senior
user of the mark, which in an ex parte proceeding is
presumed to be the one who registered first (particularly
as, we note, applicant has filed an intent-to-use
application). In re Hyper Shoppes (Ohio), Inc., 837 F.2d
463, 6 USPQ2d 1025 (Fed. Cir. 1988); In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290
(Fed. Cir. 1984).
We conclude that purchasers familiar with registrant’s
“consultancy in the fields of building construction and
construction” offered under the mark X-PRO would be likely
to mistakenly believe, upon encountering applicant’s
identical mark, X-PRO for “foam insulation for use in
building and construction; insulating materials; expanded
polystyrene (EPS) insulation for roofs, walls and floors,”
that the goods and services originated from or are
associated with or sponsored by the same entity.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.