B&B Hardware, Inc.v.Sealtite Building Fasteners

Trademark Trial and Appeal Board

Aug 28, 2007

No. 91155687 (T.T.A.B. Aug. 28, 2007)

Mailed:
August 28, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

B&B Hardware, Inc.
v.
Sealtite Building Fasteners
_____

Opposition No. 91155687
to application Serial No. 75129229
filed on July 12, 1996
_____

Roger N. Behle of Foley Bezek Behle & Curtis, LLP for B&B
Hardware, Inc.

Walter D. Ames and Trey Yarbrough on behalf of Sealtite
Building Fasteners.
______

Before Quinn, Mermelstein, and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

On July 12, 1996, Sealtite Building Fasteners filed a
use-based trademark application for the mark SEALTITE, in
standard character format (formerly known as a typed
drawing)(Serial No. 75129229), for “self-piercing and self-
drilling metal screws for use in the manufacture of metal
and post-frame buildings.” Applicant claimed February 1992
as its date of first use anywhere and its date of first use
in commerce. Applicant amended the application to seek
registration under the provisions of Section 2(f) of the
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Opposition No. 91155687
2
Trademark Act of 1946, 15 U.S.C. §1052(f), based on
applicant’s substantially exclusive and continuous use of
its mark in commerce since 1992.
B&B Hardware, Inc. opposed registration under Section
2(d) of the Trademark Act of 1946. Opposer asserted
ownership of Registration No. 1797509 for the mark SEALTIGHT
for “threaded or unthreaded metal fasteners and other
related hardware; namely, self-sealing nuts, bolts, screws,
rivets and washers, all having a captive o-ring for use in
the aerospace industry.”1 Opposer alleged that applicant’s
mark SEALTITE, used in connection with “self-piercing and
self-drilling metal screws for use in the manufacture of
metal and post-frame buildings” so resembles opposer’s mark
SEALTIGHT as to be likely to cause confusion.
In its answer, applicant admitted that opposer made
prior use of its mark SEALTIGHT, and that the marks at issue
are phonetically identical. Applicant denied the remaining
salient allegations in the notice of opposition.

The Record
By operation of the rules, the record includes the
pleadings and the application file for applicant’s mark.
The record also includes the following evidence:

1 Registration No. 1797509, issued October 12, 1993; Section 8
affidavit accepted; first renewal.
Opposition No. 91155687
3
A. Opposer’s evidence.
1. Notice of reliance on a certified copy of
Registration No. 1797509 showing the status and title of the
registration;
2. Notice of reliance on the Board’s June 13, 2003
Order in Cancellation No. 92026016 pursuant to Trademark
Rule 2.122(e);
3. Testimony deposition of Larry Joseph Bogatz,
opposer’s President, with attached exhibits;2
4. Testimony deposition of Bruce Crouch, Vice
President of Hargis Industries, Inc., the parent corporation
of applicant, with attached exhibits (“Crouch Testimony Dep.
II”);
5. The rebuttal testimony deposition of Larry Joseph
Bogatz with attached exhibits; and,
6. The rebuttal testimony deposition of Bruce
Buskirk, a professor of marketing at Pepperdine University.3
B. Applicant’s evidence.
1. Testimony deposition of Bruce Crouch with attached
exhibits (“Crouch Testimony Dep. I”); and,

2 Opposer filed the Bogatz deposition under seal. In a
telephone conference with the Board on August 7, 2007, opposer
agreed to remove the “confidential” designation.
3 Opposer filed the Buskirk deposition under seal. In a
telephone conference with the Board on August 7, 2007, opposer
agreed to remove the “confidential” designation.
Opposition No. 91155687
4
2. Testimony deposition of Tom Hulsey, applicant’s
Director of Technical Services and Applications Engineering,
with attached exhibits.

History of the conflict between the parties
This opposition is the third battle between the
parties. The first was a civil action: B&B Hardware, Inc.
v. Hargis Industries, Inc., dba Sealtite Building Fasteners
(Civil Action No. L-R-C-98-372, E.D. Ark.).4 The second was
a cancellation proceeding: Sealtite Building Fasteners v.
Larry Joseph Bogatz, dba B&B Hardware and B&B Hardware, Inc
(Cancellation No. 92026016).
A. The civil action.
On June 2, 1998, opposer filed a trademark infringement
action against applicant based on opposer’s pleaded
registration (Registration No. 1797509). Applicant pleaded
several defenses, including that opposer’s mark SEALTIGHT
was merely descriptive and had not acquired secondary
meaning, but applicant did not file a counterclaim to cancel
opposer’s registration. On May 18, 2000, following a jury
trial, the district court held that the SEALTIGHT trademark
owned by opposer was merely descriptive and had not acquired

4 The precise nature of the legal relationship between Hargis
Industries, Inc. and Sealtite Building Fasteners is not clear.
However, there is agreement that Hargis Industries and Sealtite
Building Fasteners are in privity.
Opposition No. 91155687
5
secondary meaning, and dismissed the civil action with
prejudice.5 The jury did not make any findings of fact on
the trademark infringement issue. On June 11, 2001, the
Court of Appeals for the Eighth Circuit affirmed the
judgment of the trial court. Neither the district court,
nor the appellate court, ordered the Commissioner to cancel
opposer’s registration for the mark SEALTIGHT.
B. The cancellation.
On March 5, 1997, applicant filed a petition to cancel
(Cancellation No. 92026016) opposer’s pleaded registration
on the ground of abandonment. A claim of priority of use
and likelihood of confusion was subsequently added. The
cancellation proceeding was suspended pending the
disposition of the civil action between the parties. After
the entry of judgment in the civil action, applicant sought
to amend its petition to cancel to include the ground that
opposer’s mark is merely descriptive and that it has not
acquired distinctiveness. In its June 12, 2003 Order, the
Board denied applicant’s motion to amend the petition for
cancellation because opposer’s registration was more than
five years old, and dismissed the petition for cancellation.
The Board noted that applicant, in the civil action, did not
pursue a counterclaim to cancel opposer’s registration and

5 Bogatz Rebuttal Testimony Dep. II, Exhibit R.
Opposition No. 91155687
6
that the district court did not order the registration
cancelled.
C. This opposition.
1. The pleadings and the evidence regarding Opposer’s
mark.

This opposition was filed on February 28, 2003. In its
Amended Notice of Opposition, opposer alleged that its
products “provide leakproof protection from liquids
and gases,”6 and that all have “a captive o-ring,”7 and
pleaded its registered mark for “threaded or unthreaded
metal fasteners and other related hardware; namely, self-
sealing nuts, bolts, screws, rivets and washers, all having
a captive o-ring, for use in the aerospace industry.”8 At
trial and in its brief,9 opposer asserted that it sells a
“full range of fasteners,” without the limitations
identified in the Amended Notice of Opposition (i.e.,
leakproof protection, captive o-ring, and use in the
aerospace industry). At trial, applicant cross-examined
opposer’s witness regarding the nature of opposer’s
products, deposed its own witnesses to introduce testimony
regarding the differences between the products of the
parties, and, in its brief, addressed the issue of the

6 Paragraph No. 1 of the Amended Notice of Opposition.
7 Paragraph No. 3 of the Amended Notice of Opposition.
8 Paragraph No. 5 of the Amended Notice of Opposition.
9 Opposer’s Brief, pp. 2 and 10 (“Opposer has broadened its
market so that it sells a full range of fasteners. There is no
limit to the application of Opposer’s fasteners”).
Opposition No. 91155687
7
similarity or dissimilarity of the goods. Because applicant
did not object and, in fact, participated in presenting
testimony on this issue, we deem it to have been tried by
consent. In view of thereof, we construe the Amended Notice
of Opposition to be amended to conform to the evidence.
Fed.R.Civ.P. 15(b).
2. Pretrial Issues.
In an order dated August 23, 2004, the Board denied
applicant’s motion for summary judgment based on the
dismissal of opposer’s civil action. The Board held that
applicant was barred from bringing a counterclaim to cancel
opposer’s pleaded registration on the ground that the mark
is merely descriptive because opposer’s pleaded registration
remains in effect despite the previous civil action and
cancellation proceeding, and because the registration is
more than five years old.10 The Board held that the civil

10 Under Section 14 of the Trademark Act of 1946, a
registration that is more than five years old may not be
canceled on the ground that it is merely descriptive.
Where, as here, opposer’s mark has been registered for five
years, it is protected from cancellation except on the
grounds stated in Sections 14(3) of the Trademark Act of
1946, 15 U.S.C. §§1064(3), such as, “if the registered mark
becomes the generic name for the goods or services, . . .
has been abandoned, . . . or its registration was obtained
fraudulently.” Otherwise, a mark that has been registered
for more than five years cannot be challenged, for example,
for mere descriptiveness, or on the basis that the mark
lacks secondary meaning. See Park ‘N Fly v. Dollar Park and
Fly, Inc., 469 U.S. 189, 224 USPQ 327, 331-332 (1985);
Sunrise Jewelry Manufacturing Corp. v. Fred S.A., 175 F.3d
1322, 50 USPQ2d 1532 (Fed. Cir. 1999).
Opposition No. 91155687
8
action did not have preclusive effect. Claim preclusion
does not apply because the transactional facts of a civil
action for trademark infringement are not the same as those
in an opposition that determine the right to register.
Treadwell’s Drifters, Inv. v. Marshak, 18 USPQ2d 1318, 1321
(TTAB 1990); American Hygienic Laboratories, Inc. v. Tiffany
& Co., 228 USPQ 855, 857 (TTAB 1986). Issue preclusion does
not apply because the district court made no findings of
fact on the issue of likelihood of confusion (the cause of
action at issue in this opposition). The only determination
essential to the district court’s judgment was the
determination that opposer’s mark was merely descriptive
and that it had not acquired secondary meaning.11
Despite the fact that opposer’s mark has been found to
be merely descriptive, opposer, as the owner of a registered
trademark, is entitled to challenge the registration of
applicant’s mark on the ground of priority of use and
likelihood of confusion. Section 2(d) of the Trademark Act
of 1946, 15 U.S.C. §1052(d) (applicant’s mark “so closely
resembles a mark registered in the Patent and Trademark
Office, . . . as to be likely to cause confusion, or to
cause mistake, or to deceive”). Thus, we find ourselves in
the unusual situation whereby opposer is precluded from

11 See the discussion infra at pp. 14-16.
Opposition No. 91155687
9
enjoining applicant from using its mark, but opposer may
nevertheless prevent applicant from registering its mark.
In this regard, even if opposer’s mark is a weak mark
because it is merely descriptive, it is still entitled to
protection against the registration of the same or similar
mark for closely related goods or services. See Matsushita
Electric Co. v. National Steel Co., 442 F.2d 1383, 170 USPQ
98, 99 (CCPA 1971) (“Even though a mark may be ‘weak’ in the
sense of being a common word in common use as a trademark,
it is entitled to be protected sufficiently to prevent
confusion as to source from arising”); King-Kup Candies,
Inc. v. King Candy Co., 288 F.2d 944, 129 USPQ 272, 273
(CCPA 1961) (although opposer’s mark is as weak a mark as
can be found, it is still entitled to protection).

Evidentiary and Procedural Issues
A. Opposer’s motion to strike applicant’s notice of
reliance on third-party trademark registrations.

On July 17, 2006, opposer filed a motion to strike
applicant’s notice of reliance on third-party trademark
registrations pursuant to Trademark Rule 2.122(e), 37 CFR
§2.122(e). Opposer contends that the notice of reliance was
not timely filed because, pursuant to the Board’s January
12, 2006 Order, applicant’s testimony period was scheduled
Opposition No. 91155687
10
to close May 7, 2006, and the notice of reliance was filed
on June 27, 2006.12
Trademark Rule 2.122(e) reads as follows, so far as
pertinent: “[O]fficial records . . . may be introduced in
evidence by filing a notice of reliance on the material
being offered . . . The notice of reliance shall be filed
during the testimony period of the party that files the
notice.” If a notice of reliance is filed after the close
of a party’s testimony period, the adverse party may file a
motion to strike the notice of reliance (and, thus, the
evidence submitted thereunder) in its entirety, as untimely.
TBMP §§532 and 707.02(b)(1)(2d ed. rev. 2004). See also
Jean Patou Inc. v. Theon Inc., 18 USPQ2d 1072, 1075 (notice
of reliance that was not timely filed will be given no
consideration); May Department Stores Co. v. Prince, 200
USPQ 803, 805 n.1 (TTAB 1978)(a notice of reliance must be
filed during a party’s testimony period). Because the
notice of reliance was filed after the close of applicant’s
testimony period, opposer’s motion to strike is granted and
applicant’s notice of reliance will be given no
consideration.

12 Applicant did not file a brief in opposition to opposer’s
motion to strike applicant’s notice of reliance.
Opposition No. 91155687
11
B. The Bruce Buskirk deposition.
Opposer engaged Bruce Buskirk, a professor of marketing
at Pepperdine University, to review and opine on the
testimony by Bruce Crouch and Tom Hulsey.13 In an extended
discussion between counsels during Dr. Buskirk’s deposition,
opposer refused to proffer Dr. Buskirk as an expert witness.
Opposer explained that “I’m offering Dr. Buskirk in rebuttal
to the marketing testimony given by both Mr. Crouch and Mr.
Hulsey, and I will allow Dr. Buskirk’s credentials and other
experience to speak for itself.”14 Because opposer did not
proffer Dr. Buskirk as an expert witness, and opposer
refused to do so when applicant explicitly inquired whether
Dr. Buskirk was being proffered as a witness, we are not
going to guess whether Dr. Buskirk is intended to be an
expert witness or a fact witness. Because opposer did not
proffer Dr. Buskirk as an expert witness in marketing,
advertising, and trade channels, we will not consider his
testimony to be expert testimony.
Even if we were to consider Dr. Buskirk an expert
witness, his testimony did not include scientific,
technical, or other specialized knowledge that we found
helpful in understanding the evidence. Fed. R. Evid. 702.

13 Buskirk Dep., p. 11.
14 Buskirk Dep., p. 12.
Opposition No. 91155687
12
C. Objections in the testimony depositions.
Both parties lodged numerous objections during the
testimony depositions, but they did not reassert the
objections in their briefs. Because the parties did not
maintain the objections in their briefs, we consider them
waived. See Hard Rock Café International (USA) Inc. v.
Elsea, 56 USPQ2d 1504, 1507 n.5 (TTAB 2000) (objection to
exhibit raised during deposition but not maintained in brief
deemed waived); Reflange Inc. v. R-Con International, 17
USPQ2d 1125, 1126 n.4 (TTAB 1990) (objections to testimony
and exhibits made during depositions deemed waived where
neither party raised any objection to specific evidence in
its brief).
The Parties
A. Opposer
Opposer has continuously sold SEALTIGHT self-sealing
fasteners since February 1990.15 “A fastener is essentially
a screw or a bolt or nut, primarily it holds something
together. In the case of our [opposer’s] products they can
also be used to seal a hole, whether it’s threaded or
not.”16 Opposer’s fasteners are primarily used in sealing

15 Bogatz Testimony Dep., pp. 8, 9, and 29.
16 Bogatz Testimony Dep., p. 8.
Opposition No. 91155687
13
applications, however, opposer asserts that its fasteners
can be used for any application.17
B. Applicant
Applicant has continuously sold SEALTITE fasteners
since January 1992.18 It specializes in fasteners used in
the field of pre-engineered steel buildings and wood-frame
buildings: that is, the metal building construction
industry.19
A pre-engineered steel building is a
building that a manufacturer actually
designs and prefabricates on site.
Generally, a pre-engineered steel
building company has an engineering
department that takes specifications
from a customer. They design the
structural members and then external
members that would be required to fill
that customer’s needs.

Then, in their marketing facility, they
build the primary, secondary structural
members, and whatever the exterior is -
- usually it’s a metal panel - - cut
those to size, ship those to the job
site so it can be assembled on the job
site.

A post-frame building is very similar,
except it has - - its primary and
secondary structural members are wood
posts, and what you might know as two-
by-fours, two-by-sixes, and so forth.

17 Bogatz Testimony Dep., pp. 8, 13, 53. 54, 80; Bogatz Rebuttal
Testimony Dep. I, pp. 6, 55; Exhibit P. “They’re used
everywhere. There is no limit to the applications that our
fasteners can be used.” (Bogatz Testimony Dep., p. 52).
18 Crouch Testimony Dep. II, p. 13; Crouch Testimony Dep. I, p.
16.
19 Hulsey Testimony Dep., pp. 11-12; Crouch Testimony Dep. II, p.
13.
Opposition No. 91155687
14
Its internal structure - - the reason
it’s called post-frame is the internal
primary structural members are posts,
wooden posts.20

Standing
Opposer has established its standing to bring this
opposition by properly having made its pleaded registration
of record, and having shown that it is not a mere
intermeddler. Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982).
Priority
Because opposer’s pleaded registration has been made
of record, Section 2(d) priority is not an issue in this
case vis-à-vis opposer’s registered mark and the products
listed in the description of goods (i.e., the mark SEALTIGHT
for “threaded or unthreaded metal fasteners and other
related hardware; namely, self-sealing nuts, bolts, screws,
rivets and washers, all having a captive o-ring for use in
the aerospace industry”). King Candy Co. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974);
Ultratan Suntanning Centers Inc. v. Ultra Tan International
AB, 49 USPQ 1313, 1315 (TTAB 1998) (“[P]rior use need not be
shown by an opposer relying on a registration of its pleaded

20 Crouch Testimony Dep. II, p. 14.
Opposition No. 91155687
15
mark for its pleaded goods or services unless the applicant
counterclaims for cancellation”).
However, because the Arkansas district court previously
held that opposer’s mark is merely descriptive and had not
acquired distinctiveness before applicant began using its
mark, opposer may not rely on its common law rights to use
SEALTIGHT in connection with a “full range of fasteners.”21
As indicated previously, claim preclusion is not applicable
because an infringement claim is not the same claim
presented in this opposition. Issue preclusion, on the
other hand, is applicable vis-à-vis the issue of whether
opposer’s mark SEALTIGHT is merely descriptive and, if so,
whether it had acquired secondary meaning. Issue preclusion
serves to preclude the relitigation, by the same parties or
their privies, of issues actually litigated, and necessarily
determined in a prior proceeding, whether or not the prior
proceeding involved the same claim as this opposition.
Mother’s Restaurant Inc. v. Mama’s Pizza, Inc., 723 F.2d
1566, 221 USPQ 394, 397 (Fed. Cir. 1983); Domino’s Pizza
Inc. v. Little Caesar Enterprises Inc., 7 USPQ2d 1359, 1364

21 “[W]here the mark relied upon by a plaintiff in support of its
Section 2(d) claim of priority of use and likelihood of confusion
has been found to be merely descriptive within the meaning of
Section 2(e)(1), the plaintiff must establish priority of
acquired distinctiveness (secondary meaning) in order to prevail
on the Section 2(d) claim.” Perma Ceram Enterprises Inc. v.
Preco Industries Ltd., 23 USPQ2d 1134, 1137 (TTAB 1992). See
also, Towers v. Advent Software Inc., 913 F.2d 942, 16 UPSQ2d
1039, 1041 (Fed. Cir. 1990).
Opposition No. 91155687
16
(TTAB 1988). The issue of descriptiveness and acquired
distinctiveness of opposer’s SEALTIGHT mark was actually
litigated and necessarily determined by the Arkansas
district court in the prior proceeding with the
determination being adverse to opposer. Under the doctrine
of issue preclusion, opposer is barred by the decision in
the civil action from asserting that SEALIGHT is inherently
distinctive as applied to its goods or that the designation
has acquired secondary meaning. Accordingly, our likelihood
of confusion determination will be based on an analysis of
opposer’s registered trademark, and not on its common law
rights.

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 E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). The relevant du Pont factors are
discussed below.
A. The fame of opposer’s mark.
We turn first to the factor of fame, because this
factor plays a dominant role in cases featuring a famous
mark. Kenner Parker Toys Inc. v. Rose Arts Industries,
Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
Opposition No. 91155687
17
Opposer contends that its mark is famous, due to the
longevity of its use.22
Fame arises when a significant portion of the relevant
consuming public (i.e., purchasers of metal fasteners)
recognizes the mark as a source indicator. Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005). In
determining whether a mark is famous, we may
consider sales, advertising expenditures, and the length of
time the mark has been used. Bose Corp. v. QSC Audio
Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed.
Cir. 2002). This information, however, must be placed in
context (e.g., a comparison of advertising figures with
competitive products, market share, reputation of the
product, etc.). Id. In view of the extreme deference that
a famous mark is accorded, and the dominant role fame plays
in the likelihood of confusion analysis, a plaintiff
asserting that its mark is famous has a duty to clearly
prove fame. Blue Man Productions Inc. v. Tarmann, 75 USPQ2d
1811, 1819 (TTAB 2005). In the case sub judice, opposer
failed to introduce any evidence regarding the extent of
consumer recognition for opposer’s mark, and therefore we
find that opposer’s mark is not a famous mark.

22 Opposer’s Brief, p. 12.
Opposition No. 91155687
18
B. The similarity or dissimilarity of the marks.
We now turn to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their entireties
as to appearance, sound, connotation, and commercial
impression. In re E. I. du Pont De Nemours & Co., supra.
Opposer’s mark is SEALTIGHT, and applicant’s mark is
SEALTITE. Applicant has admitted that the marks are
phonetically equivalent.23
While not visually identical, the marks are
substantially similar because they are both comprised of a
compound word beginning with “seal” and followed by the
letters “ti,” as the first two letters of the phonetically
equivalent “tight” and “tite.”
The meaning and commercial impression of the marks
SEALTIGHT and SEALTITE when used in connection with metal
fasteners are the same: to fasten securely.24
In view of the foregoing the similarity of the marks is
a factor that favors finding that there is a likelihood of
confusion.

23 Answer ¶8.
24 “Seal” means “to fasten or close tightly by or as if by a
seal,” and “tight” means “firmly or closely fixed in place; not
easily moved; secure.” Dictionary.com Unabridged (v 1.1) based on
the Random House Unabridged Dictionary (2006). The Board may
take judicial notice of dictionary definitions. B.V.D. Licensing
Corp. v. Body Action Design, Inc., 846 F.2d 727, 6 USPQ2d 1719,
1721 (Fed. Cir. 1988).
Opposition No. 91155687
19
C. Similarity or dissimilarity and nature of the goods.
Both parties use their marks to identify fasteners.25
Opposer’s fasteners are primarily used in sealing
applications.26 They are sophisticated fasteners with tight
tolerances and high-quality materials for use in connection
with sealing internal and external pressure. Applicant’s
products, on the other hand, are “the next step up from a
nail.” They are not made for sealing or pressure
applications.27 Applicant’s fasteners are used to hold
metal panels onto steel or wood framing. They are used in
the metal building industry.28
Both opposer’s and applicant’s companies are listed on
the Yahoo! Small Business Directory under the heading
“Industrial Supplies > Fasteners.”29 The listings are
displayed as follows:
· Sealtight Fastener
Offers fasteners including self-
sealing, seal screws, sealing
washers, and threaded fasteners.
www.sealtightfastner.com

25 Crouch Testimony Dep. I, p. 55.
26 Bogatz Testimony Dep., pp. 8, 13, 53. 54, 80; Bogatz Rebuttal
Testimony Dep. I, pp. 6, 55; Exhibit P; Bogatz Rebuttal Testimony
Dep. II, Exhibit T; Hulsey Testimony Dep., Exhibits D and O.
27 Crouch Testimony Dep. II, pp. 25-26.
28 Hulsey Testimony Dep., pp. 19, 35; Crouch Testimony Dep. I.,
pp. 50-52. Mr. Crouch was unaware of any application outside of
the metal building industry for which applicant’s products would
be used. (Crouch Testimony Dep. I, pp. 52-53).
29 Bogatz Rebuttal Testimony Dep. I, Exhibit 20. A similar
display appears in the Kelleysearch online directory under the
heading “Rivet Products.” (Bogatz Testimony Deposition, Exhibit
11). Finally, both parties are listed (not consecutively) in the
Fasteners Web website, a listing of fastener companies. (Bogatz
Rebuttal Testimony Dep. I, Exhibit 21).
Opposition No. 91155687
20
· Sealtite Building Fasteners
Manufacturers and distributors of
residential and metal building
fasteners.
www.sealtite.com

Opposer contends that the products of the parties
compete because “our products can be used in a flight hanger
or they can be used in a wind tunnel or whatever. Hargus’
(sic) products can be used in the same applications so it
puts us in a competitive situation with Hargus (sic)
Industries.”30 Opposer will sell nonsealing fasteners to
customers who request such fasteners,31 but it does not
advertise or promote nonsealing fasteners because its
specialty is sealing fasteners.32 While opposer testified
that its fasteners have been used in sheet metal
applications and to construct buildings, its witness did not

30 Bogatz Testimony Dep., pp. 49, 50
31 Bogatz Rebuttal Testimony Dep. II, p. 21. Mr. Bogatz
testified that opposer has some customers who purchase fasteners
without o-rings. O-rings are used for the sealing application.
(Bogatz Testimony Dep., pp. 8, 54).
32 Bogatz Rebuttal Testimony Dep., II, p. 22. Opposer’s
advertising and promotional materials display the legend “.
. . the perfect sealing solution!” (Bogatz Testimony Dep.,
Exhibits 3-8 and B; Bogatz Rebuttal Testimony Dep. II,
Exhibit T). Also, Opposer’s printed catalog and website
clearly indicate that opposer specializes in providing
fasteners used in sealing applications. (Bogatz Rebuttal
Testimony Dep. II, Exhibit T; Hulsey Testimony Dep.,
Exhibits D and O). Opposer admitted that, unlike applicant’s
products, none of the fasteners listed in its print catalog
are self-drilling or self-tapping fasteners. (Bogatz
Rebuttal Testimony Dep. II, pp. 52-56). However, applicant
claimed that all of its fasteners could be made with self-
tapping threads. (Bogatz Rebuttal Testimony Dep. II, pp.
54, 87-88. See also Bogatz Rebuttal Testimony Dep. II,
Exhibit T, p. 27).
Opposition No. 91155687
21
know the specific application,33 and he could not identify
any customers that used its fasteners for metal building
construction.34
Applicant does not manufacture or sell sealing
fasteners.35 “[N]ot all fasteners will seal. There has to
be some means of making it seal.”36 Applicant’s products
are self-drilling fasteners. Self-drilling fasteners drill
their own pilot holes in the material into which they are
being installed and then the threads on the fastener cut
into the material to form mating threads to secure the
fastener.37
According to applicant’s witness, the differences in
the products are reflected in their price: the average
price for opposer’s fasteners is at least ten times the
average price of applicant’s products.38 Applicant contends
that its fasteners may cost 2 cents a piece while opposer’s
fasteners may cost 20 – 25 cents a piece.39

33 Bogatz Testimony Dep., pp. 15-16, 53. On cross-examination,
Mr. Bogatz testified that an unidentified person working for
Fastenal reported that perhaps General Dynamics wanted to use
opposer’s fasteners “for an airplane hangar” at an unidentified
location. (Bogatz Testimony Dep., pp. 57-61).
34 Bogatz Rebuttal Testimony Dep. II, pp. 47-48.
35 Hulsey Testimony Dep., pp. 16-17.
36 Bogatz Testimony Dep., p. 80.
37 Hulsey Testimony Dep. p. 18; Crouch Testimony Dep. II, pp. 58-
59; Crouch Testimony Dep. I, pp. 49-50.
38 Crouch Testimony Dep. II, pp. 26, 29; Exhibit E. Mr. Bogatz’s
testimony regarding opposer’s pricing policy was very guarded.
Mr. Bogatz explained that opposer does not have a set price list.
It prices its fasteners per order based on the product and
quantity. (Bogatz Rebuttal Testimony Dep. II, pp. 61-72).
39 Crouch Testimony Dep. II, p. 30.
Opposition No. 91155687
22
Applicant further argues that sales of fasteners in the
metal building construction industry are price sensitive,
and that a half-cent price differential can be the
difference between making and losing a sale.40 Accordingly,
a customer for a fastener for use in the metal building
construction industry would never consider purchasing a
fastener at 20 – 25 cents a piece.41
With respect to the similarity or dissimilarity or
nature of the goods, it is not necessary that applicant’s
products and opposer products be similar or competitive, or
even that they move in the same channels of trade, to
support a holding of likelihood of confusion. It is
sufficient that respective goods of the parties 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 the
same producer. See In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The issue
is not whether purchasers would confuse the goods but rather
whether there is a likelihood of confusion as to the source
of the goods. In re Rexel Inc., 223 USPQ 830, 831 (TTAB
1984).

40 Crouch Testimony Dep. II. p. 30.
41 Crouch Testimony Dep. II. p. 30.
Opposition No. 91155687
23
In analyzing the similarity or dissimilarity and nature
of the goods, it is important to note that the greater
degree of similarity in the marks, the lesser degree of
similarity is required of the products on which they are
being used in order to support a holding of likelihood of
confusion. “If the marks are the same or almost so, it is
only necessary that there be a viable relationship between
the goods and services in order to support a holding of
likelihood of confusion.” In re Concordia International
Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983). See also,
In re Engine Supply, Inc., 225 UPSQ 216, 217 (TTAB 1985)
(“where the goods or services are sold under identical
marks, the degree of similarity in the goods or services of
the parties need not be as great as would be required in
situations where there are arguable differences between the
marks”)(Emphasis added).
The fastener industry is not monolithic. There are
separate and distinct market segments. However, the fact
that the products at issue are fasteners is sufficient to
establish that the products are intrinsically related,
albeit for different purposes. Consumers encountering
different fasteners under the substantially similar marks in
the case sub judice may believe that the products are
related. This du Pont factor, therefore, favors finding
that there is a likelihood of confusion.
Opposition No. 91155687
24
D. Similarity or dissimilarity of likely-to-continue
channels of trade.

Opposer explained that it does not know where most of
its fasteners go (or how they are used) because ninety
percent (90%) of its fasteners are sold through
distributors.42 The distributors that sell opposer’s
fasteners sell a full range of fasteners.43 In fact, both
parties sell to Fastenal, a distributor of fasteners.44
Opposer also sells to OEMs, especially when the sale
involves higher volumes.45 Both distributors and direct
customers will contact opposer with a specific sealing
requirement and request engineering information for meeting
that application.46
Applicant sells its products to the following
customers:
1. Manufacturers of pre-engineered steel buildings;

2. Component manufacturers of pre-engineered steel
buildings;

3. Fastener distributors; and,

42 Bogatz Testimony Dep., pp. 9, 13-14, 16, 29, 57 . In his
rebuttal testimony deposition, Mr. Bogatz testified that 80% of
opposer’s sales were to distributors. (Bogatz Rebuttal Testimony
Dep. I., p. 86; Bogatz Rebuttal Testimony Dep., II, p. 36).
Applicant was also unable to determine the ultimate use to which
its products are put once they are sold. However, applicant
emphasized that it designs and markets its products for their
best possible use (i.e., in the metal building construction
industry). (Crouch Testimony Dep. I, pp. 60-61).
43 Bogatz Rebuttal Testimony Dep. I, p. 54.
44 Bogatz Testimony Dep., pp. 16-17, 51.
45 Bogatz Testimony Dep., pp. 14, 31.
46 Bogatz Testimony Dep., p. 31.
Opposition No. 91155687
25
4. End-users.47

Most of opposer’s advertising is done through the
Internet (e.g., in opposer’s website and online
advertisements in fastener magazines and engineering
magazines).48 In addition, opposer advertises in print
magazines such as Link Magazine, Department of Defense
magazines, and G.S.A. Magazine.49 Applicant advertises in
trade publications in the metal building industry (e.g.,
Metal Construction News, Metal Architecture, and Rural
Builders).50
Opposer also attends trade shows, such as the National
Design and Engineering Show.51 On the other hand, applicant
participates in metal building trade shows, including metal
roofing shows and mini-warehouse shows (e.g., National Frame
Builders Association, Metalcon).52
Opposer does not advertise or promote the sale of its
fasteners to the building construction industry.53
Applicant does not advertise or promote its fasteners in the

47 Hulsey Testimony Dep., p. 29; Crouch Testimony Dep. II, p. 15.
With respect to sales to end users, Mr. Crouch explained that
applicant sells to retailers who sell to do-it-yourself persons.
(Crouch Testimony Dep. I, p. 20).
48 Bogatz Testimony Dep., p. 31.
49 Bogatz Testimony Dep., p. 32.
50 Crouch Testimony Dep. I, p. 32.
51 Bogatz Testimony Dep., p. 32.
52 Crouch Testimony Dep. I, p. 33. Mini-warehouse shows
encompass companies that build small metal warehouse systems.
(Crouch Testimony Dep. I, p. 34).
53 Bogatz Testimony Dep., Exhibit B; Bogatz Rebuttal Testimony
Dep. I, pp. 80-82..
Opposition No. 91155687
26
same market segments as opposer (i.e., aerospace, defense,
medical, measurement, marine, heavy equipment, fluid power
and commercial).54
Applicant testified that it has never competed with
opposer for a sale.55 Opposer is unaware of any instances
where its products have been used to construct a metal
building or that opposer has lost a sale to applicant.56
As noted above, the fastener industry is not
monolithic. It is composed of separate and distinct market
segments. Opposer and applicant sell their fasteners for
different applications in different industries. While both
parties sell their products through distributors, the
evidence shows that only one distributor, Fastenal, carries
both products. Accordingly, we find that the products of
the parties move in different channels of trade. This du
Pont factor weighs against finding that there is a
likelihood of confusion.
E. Degree of consumer care.
Opposer testified that its customers are not especially
sophisticated or knowledgeable regarding fasteners.57
Q. B&B customers are normally
sophisticated and very knowledgeable
customers; is that correct?

54 Crouch Testimony Dep. II, pp. 24-25; Exhibits D and O.
55 Crouch Testimony Dep. II, p. 31.
56 Bogatz Testimony Dep., pp. 92-95; Bogatz Rebuttal Testimony
Dep. I, pp. 86-88; Bogatz Rebuttal Testimony Dep. II, pp. 37,
47-48.
57 Bogatz Rebuttal Testimony Dep. II, pp. 36-41, 72-75.
Opposition No. 91155687
27
* * *
A. No, that’s not correct. Many of
the people that we deal with are
purchasing agents or distributors who
are just looking for a product that a
customer requests.

The customer - - about 80% of what we do
is through distribution, and even with
the larger companies, say for example,
aerospace companies, that are buying
products, they buy a whole range of
fasteners. The same person buys a whole
range of fasteners. The same person
buys all the fasteners that that company
will buy, so if you have one of those
purchasers, they buy fasteners for the
shed out back, they buy fasteners for
maintenance, they buy fasteners for
missiles. They buy it all.

* * *

Q. You have customers, so you claim in
your literature, such as the government,
who buys fasteners for the Mars rover
and the space shuttle and the missile
systems and aircraft, laser and
radiation systems.

These would be very sophisticated,
knowledgeable customers, would they not?

* * *

A. Well, from a business perspective,
and people do this on an individual
basis, they focus on what they consider
to be their greater areas. Certainly,
it’s a - - we take pride in the fact
that we have fasteners on the Mars
rovers. Is that the only place that our
fasteners are used? Certainly not.
They’re used in a broad range of
applications.

Q. Would those be, in your mind,
sophisticated customers, knowledgeable
customers, about the products they’re
having to purchase?
Opposition No. 91155687
28
* * *

A. Absolutely not. I mean, some of
them are sophisticated, but it’s on an
individual basis.

Q. You advertise that you have had
customers such as NASA, Boeing,
Raytheon, Honeywell, and Medtronic.
Would you consider those as someone - -
as a businessman, individuals or
entities that have representatives who
would be sophisticated and knowledgeable
in terms of the products they’re buying?

* * *

A. Well certainly the company is
sophisticated, but the actual fastener
purchaser is not sophisticated. They’re
just buying a product based upon what an
engineer specifies for them.58

Despite opposer’s testimony, it seems implausible that
someone using fasteners in high tech applications, such as
the aerospace, fluid power, or marine industries (such as
NASA, Boeing, and Raytheon), where preventing liquid or gas
leaks is essential, would not exercise a high degree of care
in his or her purchasing decision. It seems equally
implausible that persons who specialize in purchasing
fasteners would have little knowledge regarding the
fasteners specifications or the different sources for
purchasing different types of fasteners.
On the other hand, the fact that each of the parties
deals with persons who may be sophisticated about fastener

58 Bogatz Rebuttal Testimony Dep. II, pp. 36-39.
Opposition No. 91155687
29
technology does not provide assurance that they are dealing
with persons who are so sophisticated and knowledgeable
about trade identifications, or have such good memories for
minute differences in marks, that they could differentiate
between the respective terms at issue in this case or
appreciate that their similarity does not imply some kind of
business relationship or affiliation. Medtronic, Inc. v.
Medical Devices, Inc., 204 USPQ 317, 326 (TTAB 1979);
Hydrotechnic Corporation v. Hydrotech International, Inc.,
196 UPSQ 387, 392-393 (TTAB 1977).
In the case sub judice, the evidence regarding the
degree of care to which ultimate consumers of the parties’
products consider the trademarks and source of the fasteners
was simply not developed in sufficient detail to permit us
to draw any conclusions regarding the degree of consumer
care. Accordingly, this du Pont factor is neutral.
F. Instances of confusion.
Opposer asserts that there are many instances where
companies call opposer requesting products sold by applicant
such as deck screws and inquiring whether opposer was Hargis
Industries or associated with Sealtite.59 Mr. Bogatz
testified that there has been a tremendous increase in such
inquiries.60

59 Bogatz Testimony Dep., pp. 38-39.
60 Bogatz Testimony Dep., pp. 39-40.
Opposition No. 91155687
30
Mr. Bogatz explained how he is able to identify the
misdirected telephone calls:
What happens is when a customer calls or
a company calls we will pull out a quote
sheet and on the quote sheet we will
write down the information that the
customer gives us, and sometimes we have
companies who call and say are you
Sealtight. We say yes, we are. And
they go oh, good, I’m looking for a hex
washer head with a neoprene washer on
it, and then I say well, you must have
the wrong Sealtight because the products
that we sell have normally an O ring or
are sold without an O ring but the
sealing member we use is not a (sic)
actual neoprene washer and it’s not a
hex washer head usually. Usually that’s
buzz words for a product that would be
used by Hargus (sic) Industries and so
we will - - we’ll say – - at that point
I will stop them and say you must not be
talking about our Sealtight, you must be
talking about Hargus (sic) Industries in
Tyler, Texas, and I will refer them to
them.61

Applicant challenges the credibility of opposer’s
testimony that customers inquire whether opposer is related
to Hargis Industries because Hargis Industries is an
internal, administrative entity, and it is not advertised or
promoted. There is no reason for any of applicant’s
customers to know of Hargis Industries because applicant
does not use that name.62
However, it is not unusual for Fastenal, or other
customers, to call applicant seeking a product that

61 Bogatz Testimony Dep., p. 41. See also, pp. 51-52.
62 Crouch Testimony Dep. II, p. 37/
Opposition No. 91155687
31
applicant does not sell. In fact, applicant admits that “on
occasion we will have a customer call and identify a B&B
product that they want to purchase.” In those instances
where the caller is requesting a sealing fastener, applicant
immediately knows that it does not carry such products and
will refer the caller to opposer, if applicant recognizes
the product as one opposer sells.63 Subsequent testimony
provides that only representatives from Fastenal have called
applicant inquiring about opposer’s fasteners.64
We do not find Mr. Bogatz’s testimony very compelling.
After almost ten years,65 a civil action, and a cancellation
proceeding, opposer produced no telephone memoranda
documenting the misdirected telephone inquiries, and it did
not identify any customers who were allegedly confused. In
addition, the testimony regarding the purported inquiries to
Hargis Industries makes the testimony of Mr. Bogatz appear
tailored for this litigation, rather than genuine. On the
other hand, applicant admitted that it has received
misdirected telephone calls from Fastenal, a distributor

63 Crouch Testimony Dep. II, pp. 39-41; Crouch Testimony Dep. I,
pp. 55, 59, 72-73. Interestingly, opposer’s counsel inquired of
applicant whether any record of the inquiries were made, but
opposer itself apparently never maintained such records as
evidenced by the fact that no such records were introduced into
evidence. (Crouch Testimony Dep. I, p. 56).
64 Crouch Testimony Dep. I, p. 73.
65 Applicant first learned about opposer in 1997 or 1998
when opposer sent applicant a cease and desist letter.
(Crouch Testimony Dep. I, pp. 53-54).

Opposition No. 91155687
32
that sells both parties’ fasteners, regarding products
manufactured and sold by opposer. On balance, we find that
although the evidence regarding instances of actual
confusion is not especially compelling, it does lend support
to finding that consumers are likely to believe that the use
of similar marks (SEALTIGHT and SEALTITE) in connection with
different types of fasteners signify origin from a single
source.

G. Balancing the factors.

In the case sub judice, the most critical factors in
our likelihood of confusion analysis are the similarities of
the marks and the similarity of the goods. The marks are
substantially identical and they are used on closely related
products. Although the specific fasteners of the parties
are different and they are marketed to different industries,
the anecdotal evidence of actual confusion lends support to
our finding that when the fasteners of the parties are
marketed under similar marks, consumers will mistakenly
believe that they emanate from the same source.
In view thereof, we find that applicant’s mark SEALTITE
used in connection with “self-piercing and self-drilling
metal screws for use in the manufacture of metal and post-
frame buildings” so resembles opposer’s mark SEALTIGHT used
in connection with fasteners that provide leakproof
protection from liquids and gases, fasteners that have a
Opposition No. 91155687
33
captive o-ring, and “threaded or unthreaded metal fasteners
and other related hardware; namely, self-sealing nuts,
bolts, screws, rivets and washers, all having a captive o-
ring, for use in the aerospace industry” as to be likely to
cause confusion.
To the extent that any doubts might exist as to the
correctness of our likelihood of confusion analysis,
especially considering the prior determination that
opposer’s mark is merely descriptive and has not acquired
secondary meaning, we resolve such doubts against applicant.
See Ava Enterprises Inc. v. Audio Boss USA Inc., 77 USPQ2d
1783, 1787 (TTAB 2006); Baseball America Inc. v. Powerplay
Sports Ltd., 71 USPQ2d 1844, 1849 (TTAB 2004).
Decision: The opposition is sustained and registration
to applicant is refused.