BFS Diversified Products, LLCv.L & P Property Manage-ment Company

Trademark Trial and Appeal Board

May 23, 2007

No. 91151220 (T.T.A.B. May. 23, 2007)

Hearing: January 11, 2007 Mailed: May 23, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

BFS Diversified Products, LLC
v.
L & P Property Management Company
_____

Opposition No. 91151220
to application Serial No. 76277374
filed on June 27, 2001
_____

Peter G. Mack of Foley & Larnder, LLP for BFS Diversified
Products, LLC.

Jonathan M. Pierce of Conley Rose, P.C. for L & P Property
Management Company.
______

Before Rogers, Taylor, and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

L & P Property Management Company filed a use-based
application for the mark HARTEX for “carpet underlay”
claiming January 1969 as its date of first use anywhere and
first use in commerce.1 BFS Diversified Products, LLC
opposed the registration of applicant’s mark on the ground
of priority of use and likelihood of confusion under Section
2(d) of the Lanham Act, 15 U.S.C. §1052(d). Opposer alleged
that applicant’s mark HARTEX for “carpet underlay” so

1 Application Serial No. 76277374, filed June 27, 2001.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91151220
2
resembles opposer’s mark HARTEX for pale crepe rubber and
natural latex rubber as to be likely to cause confusion.
Applicant denied the salient allegations in the notice of
opposition. Both opposer and applicant have filed briefs
and an oral hearing was held. For the reasons set forth
below, we dismiss the 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 testimony and
evidence:
A. Opposer’s evidence.
1. The testimony deposition of John M. Vasuta,
opposer’s Vice President, General Counsel, and Secretary,
with attached exhibits;
2. The testimony deposition of Rodney K. Blalock, a
senior account executive for Firestone Natural Rubber
Company, one of opposer’s divisions, with attached exhibits;
3. The testimony deposition of Richard F. Stupp, Vice
President of Sales and Marketing for Firestone Polymers,
LLC, one of opposer’s divisions, with attached exhibits;
4. Opposer’s First Notice of Reliance on certified
copies showing status and title of opposer’s HARTEX
registrations: Registration No. 701,581 for “pale crepe
Opposition No. 91151220
3
rubber”2 and Registration No. 1,004,811 for “natural latex
rubber”;3
5. Opposer’s Second Notice of Reliance on the
following items:
a. Applicant’s responses to Interrogatories 7,
18, 19, and 24;
b. Excerpts from printed publications; and,
6. Opposer’s Third Notice of Reliance on dictionary
definitions for the word “underlay.”
B. Applicant’s evidence.
1. The testimony deposition of Gene B. Kartchner,
applicant’s Vice President, with attached exhibits;
2. The testimony deposition of Norman Floyd Manning,
applicant’s Vice President in charge of carpet cushion
sales, with attached exhibits;
3. The testimony deposition of Franklin Horwich,
President and owner of Franklin Associates, a selling agent
for applicant, with attached exhibits; and,

2 Registration No. 701,581 was registered on July 26, 1960,
claiming November 30, 1959 as the date of first use anywhere and
first use in commerce. The registration has been renewed twice,
most recently on July 26, 2000. Title is in the name of opposer.
3 Registration No. 1,004,811 was registered on February 18, 1975,
claiming January 24, 1974 as the date of first use anywhere and
first use in commerce. The registration has been renewed twice,
most recently on February 18, 2005. Title is in the name of
opposer.
Opposition No. 91151220
4
4. Applicant’s Notice of Reliance on the following
items:
a. A certified copy showing status and title of
Registration No. 865,405 for the mark HARTEX
for “carpet cushion”;4
b. A certified copy of an assignment of
Registration No. 865,405 to Hartex
Manufacturing Co. from Harper Manufacturing
Co. recorded on May 8, 1985, at reel 494,
frame 460;5
c. Opposer’s Supplemental Responses to
Applicant’s First Set of Interrogatories:
Interrogatory Nos. 1, 2, 6, 8, 15, 17, 21,
23, 24, and 27; and,
d. Opposer’s Responses to Applicant’s Second Set
of Interrogatories: Interrogatory No. 1.

4 Registration No. 865,405 issued on February 25, 1969, claiming
April 15, 1967 as the date of first use anywhere and first use in
commerce. The registration expired in 1989.
5 Applicant’s parent corporation, Leggett & Platt, Incorporated,
acquired the HARTEX trademark and registration through an asset
purchase agreement with O’Neill Brothers, Incorporated and its
wholly owned subsidiary Hartex Manufacturing Co. dated June 26,
1986. (Kartchner Dep., pp. 11-16; Exhibit 55). An assignment of
the HARTEX registration to Leggett & Platt, Incorporated dated
July 3, 1986, was recorded in the U.S. Patent and Trademark
Office Assignment Section on December 22, 1986, at reel 547,
frame 994. (Kartchner Dep., p. 16; Exhibit 56). Subsequently,
Leggett & Platt, Incorporated assigned the HARTEX trademark to
applicant. (Kartchner Dep., p. 20).
Opposition No. 91151220
5
Findings of Fact
A. Opposer
Opposer is a multi-division conglomerate better known
as “Firestone”.6 It owns Firestone Natural Rubber Company,
a rubber manufacturer and sales company, as well as the
Bridgestone/Firestone tire companies.7
Opposer uses the mark HARTEX to identify its natural
rubber products. Natural rubber comes in solid and liquid
forms. “Pale crepe rubber” is solid natural rubber.
“Natural latex rubber” is liquid natural rubber.8 All of
the HARTEX natural latex is produced on opposer’s estates in
Liberia, Africa.9 Further references to “rubber” in our
decision include both solid natural rubber and natural latex
rubber.
Opposer is the owner of Registration No. 701,581 for
the mark HARTEX for “pale crepe rubber.”10 Opposer has been
using its HARTEX mark for pale crepe rubber since at least
as early as 1959.11 Opposer sells its solid rubber to its
sister tire companies.12

6 Vasuta Dep., p. 8.
7 Vasuta Dep., pp. 10, 19; Stupp Dep., pp. 55-56.
8 Vasuta Dep., pp. 33-34, and 66; Stupp Dep., pp. 17, 38, 72.
9 Stupp Dep., pp. 22, 59.
10 Opposer’s First Notice of Reliance; Vasuta Dep., p. 30; Exhibit
5.
11 Vasuta Dep., Exhibit 12; Stupp Dep., pp. 17-18.
12 Vasuta Dep., pp. 78-79; Stupp Dep., pp. 18-19.
Opposition No. 91151220
6
Opposer is also the owner of Registration No. 1,004,811
for the mark HARTEX for “natural latex rubber.”13 Opposer
has been using its HARTEX mark for natural latex rubber
since at least as early as 1974.14 Technical expertise is
required to keep the natural rubber in a liquid state
because it naturally coagulates.15 Opposer sells its
natural latex rubber to internal and external customers.16
External customers include the medical field, the carpet
industry for manufacturing of carpet backing, and the dip
goods industry (e.g., rubber gloves and condoms).17 By
“carpet backing,” opposer is referring to the foundation
upon which carpets are placed and also to carpet padding.18
Opposer’s HARTEX rubber is well known in the rubber
industry and with opposer’s customers for its high
quality.19 Because of opposer’s quality control, HARTEX
latex rubber is known for its purity, cleanliness, and
consistency.20 Accordingly, opposer’s HARTEX brand latex

13 Opposer’s First Notice of Reliance; Vasuta Dep., pp. 31-32;
Exhibit 6.
14 Vasuta Dep., p. 82; Exhibit 15; Stupp Dep., p. 72. Rodney
Blalock testified that when opposer first employed him in 1972,
opposer was selling HARTEX natural latex. (Blalock Dep., pp. 58-
59).
15 Vasuta Dep., pp. 35-36; Blalock Dep., pp. 43-44, Exhibit 28;
Stupp Dep., pp. 20-22, 54.
16 Vasuta Dep., pp. 78-79.
17 Deposition of John Vasuta, pp. 19-20.
18 Vasuta Dep., p. 20.
19 Vasuta Dep., pp. 38-39
20 Blalock Dep., pp. 21-22, 69.
Opposition No. 91151220
7
rubber commands a premium price in comparison to competitive
rubber.21
There are two main suppliers of rubber in the United
States: opposer and Centrotrade, a European company.
Opposer and Centrotrade control approximately 70-75% of the
rubber market in the United States.22 Specifically, HARTEX
natural latex has approximately 40% of the U.S. latex
market.23 That translates to approximately $35 million in
sales.24 HARTEX natural latex is the largest selling brand
of natural latex in the United States.25
Generally, customers purchase opposer’s HARTEX natural
latex rubber by the tanker truck or railroad tanker car
(“they buy it by the tanker load predominantly”).26 The
rubber is shipped in 10,000 or 20,000-gallon railroad cars
and transferred to 5,000-gallon trucks.27 Ninety-eight
percent (98%) of the sales to the carpet industry are in the
5,000-gallon tank trucks.28 Opposer will also ship HARTEX

21 Vasuta Dep., p. 40; Blalock Dep., 23.
22 Vasuta Dep., p. 70; Blalock Dep., pp. 18 and 57; Stupp Dep., p.
24. Mr. Vasuta estimated that opposer and Centrotrade controlled
90% of the market, but Mr. Blalock, a senior account executive
responsible for selling HARTEX natural latex, appears more
knowledgeable regarding the latex market than Mr. Vasuta, an
attorney responsible for opposer’s intellectual property.
23 Blalock Dep., p. 15; Stupp Dep., pp. 92, 131.
24 Blalock Dep., p. 17.
25 Blalock Dep., pp. 17-18; Stupp Dep. p. 24.
26 Vasuta Dep., pp. 74-75 and 79; Blalock Dep., pp. 71-72;
Opposer’s response to Interrogatory No. 6.
27 Blalock Dep., p. 8, Exhibit 31.
28 Blalock Dep., pp. 73, 75.
Opposition No. 91151220
8
in tote bins (i.e., 275 gallon plastic containers placed
inside a steel cage) and in 55-gallon drums.29
Rodney Blalock, a senior account executive, is
responsible for selling HARTEX natural latex rubber from
coast-to-coast throughout the southern United States.30
There is one other account executive that sells HARTEX
throughout the northern United States.31 HARTEX is sold
only through opposer’s two-person sales force.32 As
indicated supra, HARTEX natural latex is sold to the carpet
industry, the dip goods industry, the adhesives and coatings
industry, and other miscellaneous fields.33 The dip goods
industry includes condoms, catheters, medical tubing, and
balloons.34 Because there are only a limited number of
companies that use natural latex, opposer’s account
executives make regular sales calls on these accounts to
discuss their product needs and pricing.35
The carpet industry is opposer’s largest customer for
its HARTEX natural latex rubber.36 It purchases

29 Blalock Dep. p. 72. The 55-gallon drums are a very small
percentage of sales. Blalock Dep., p. 102.
30 Blalock Dep., p. 11.
31 Blalock Dep., p. 70. Therefore, if someone wanted to purchase
a small amount of HARTEX or open a new account, they would have
to contact either Mr. Blalock or Mr. Bailey, the second account
executive. Blalock Dep., p. 70.
32 Blalock Dep., p. 81.
33 Blalock Dep., pp. 11 and 13; Stupp Dep., p. 29.
34 Blalock Dep., p. 13; Stupp Dep., p. 29.
35 Blalock Dep., pp. 69-70.
36 Blalock Dep., pp. 14 and 26; Stupp Dep., pp. 29, 31-32. Carpet
industry sales are exclusively natural latex. (Blalock Dep., p.
53). Opposer has never sold natural solid rubber to compounders
Opposition No. 91151220
9
approximately 25% of opposer’s HARTEX natural latex rubber.
Accordingly, opposer maintains a shipping terminal in
Savannah, Georgia to be close to the carpet industry that is
concentrated in and around Dalton, Georgia.37 HARTEX
natural latex rubber is used to make carpet backing and
carpet padding. Carpet backing includes “the coatings for
the back of carpets to give them nonskid qualities and
cushioning.”38 With respect to automotive carpeting, HARTEX
natural latex provides sound barriers and extra padding.39
HARTEX natural latex is also used in carpet underlays to
provide a nonskid surface and padding.
Because the carpet industry is a volume purchaser of
latex, its purchasers generally demand price concessions.
However, because opposer can charge a premium for its HARTEX
natural latex rubber, opposer has been selling an increasing
percentage of its product to the dipped goods industry
because dipped goods require higher quality latex than the
carpet industry.40 Nevertheless, the carpet industry still
purchases approximately 25% of opposer’s HARTEX natural
latex.41

for the carpet industry, carpet mills, carpet wholesalers or
retailers, or carpet installers. (Blalock Dep., pp. 63-64).
37 Blalock Dep., pp. 22 and 26; Stupp Dep., p. 139.
38 Blalock Dep., p. 14.
39 Blalock Dep., p. 14.
40 Blalock Dep., pp. 27-29, 84-85.
41 Blalock Dep., p. 28.
Opposition No. 91151220
10
Opposer’s carpet industry customers are material
compounders. Compounders have the technical expertise to
process the natural latex rubber and combine it with other
products to make compounds used in carpet backings and
padding. There are several formulations of HARTEX natural
latex available to users depending upon their
requirements.42 Carpet mills do not compound their own
latex because there is too much risk involved. “The
compounder provides technical services, expertise geared to
the specific carpet mills.”43 Opposer has made only one
sale of natural latex directly to a carpet mill.44
Opposer advertises its HARTEX rubber in Rubber World, a
technical magazine for the rubber industry, and Rubber &
Plastics News, a newspaper for the rubber industry. These
publications are directed to manufacturers of rubber
products, industrial users of rubber products, and rubber
suppliers.45 Opposer promotes its HARTEX natural latex at
the International Latex Conference and the ACS (American
Chemical Society) Rubber Division Rubber Expo.46

42 Stupp Dep., pp. 53-54; Exhibits 30, 42, 43.
43 Blalock Dep., pp. 32-33.
44 Blalock Dep., pp. 31-33, 64-66; Stupp. Dep., p. 52. “I sell to
the compounder, who sells to companies that make some padding
that is stand-alone.” Blalock Dep., p. 54.
45 Opposer’s Second Notice of Reliance, Exhibits E and F; Blalock
Dep., pp. 37-38; Exhibit 27. In this advertisement, HARTEX is
displayed in text with an upper case “H”. However, the FIRESTONE
logo is prominently featured.
46 Blalock Dep., pp. 45 and 76; Stupp Dep., p. 96; Opposer’s
Response to Interrogatory No. 8.
Opposition No. 91151220
11
Opposer’s promotion of HARTEX natural latex has been
conducted under the umbrella of Firestone Polymers and it
has typically been promoted in connection with other
Firestone products. Accordingly, opposer is unable to
apportion advertising expenditures dedicated to the HARTEX
brand.47 All of opposer’s advertisements, invoices and
bills of lading feature the FIRESTONE trademark.48
Opposer’s witnesses have no knowledge whether any
manufacturer of finished products, including carpet
manufacturers who sell carpet backing and padding, ever
specifies or identifies that its products are made from
HARTEX rubber.49 However, Mr. Blalock did recall that in
the late 1970’s there was a labeling program where an iron-
on label was placed on a carpet pad identifying Firestone
synthetic latex as a component.50 Opposer does not license
the use of the HARTEX mark to others.51
B. Applicant
Applicant, a wholly owned subsidiary of Leggett &
Platt, Incorporated, is a holding company responsible for
managing its parent corporation’s property, including
intellectual property such as the HARTEX trademark.52

47 Blalock Dep., pp. 51-52; Stupp Dep. 93-94.
48 Blalock Dep., pp. 77-78; Stupp Dep. 36-37; Exhibits 38, 45-52.
49 Vasuta Dep., pp. 62-63; Blalock Dep., pp. 55-56.
50 Blalock Dep., pp. 98 and 105-106.
51 Vasuta Dep., p. 77; Opposer’s Response to Interrogatory No. 24.
52 Kartchner Dep., p. 7.
Opposition No. 91151220
12
Leggett & Platt, Incorporated commercializes the HARTEX
carpet underlay pursuant to a license agreement with
applicant.53
Applicant began using the mark HARTEX in connection
with its carpet underlay in 1969 and its use has been
continuous.54 Carpet underlay is a mat or cushion placed
between the floor and carpet.55 From 1986 through 1990,
HARTEX carpet underlay was manufactured in East Point,
Georgia. In 1990, the manufacturing process was moved to
Villa Rica, Georgia. Today, HARTEX is manufactured in
Nashville, Tennessee, Mexia, Texas, Villa Rica, Georgia, and
Conover, North Carolina.56
Applicant’s HARTEX carpet underlays are sold for use
with wall-to-wall carpets used in high traffic areas such as
hotels, office buildings, timeshares, banks, and other
commercial applications.57 Applicant markets HARTEX carpet
underlays to people responsible for purchasing or specifying
furniture, fixtures, and equipment in those industries, as

53 Kartchner Dep., pp. 7 and 21-23.
54 Opposer’s Second Notice of Reliance, Applicant’s response to
Interrogatory No. 24. Norman Manning testified that applicant
began selling HARTEX carpet underlays upon the closing of the
O’Neill Brothers acquisition in 1986. (Manning Dep., p. 19).
Mr. Manning further testified that he was personally familiar
with HARTEX carpet underlays since 1977 when he worked for
Steiner-Liff, a competitor of Hartex Manufacturing Co. (Manning
Dep., pp. 92-97, 105, 135-138).
55 Kartchner Dep., p. 8; Manning Dep., p. 11.
56 Manning Dep., pp. 12-16.
57 Manning Dep., pp. 16-17, 30.
Opposition No. 91151220
13
well as interior designers.58 Approximately 25% of
applicant’s HARTEX carpet underlays are sold to the Hilton,
Hampton Inn, and Hyatt hotel chains, as well as the Higgins
design firm.59 Applicant’s carpet underlay is not used as
matting or cushioning for area rugs or for use in
automobiles.60 HARTEX carpet underlays are not sold to any
compounders or carpet mills.61
HARTEX carpet underlays are made from recycled,
synthetic fibers that applicant collects from carpet mills
in the Dalton, Georgia area. Dalton, Georgia is the center
of the carpet industry in the United States. The fibers are
shredded and then reformulated into a pad. HARTEX carpet
underlays do not contain any rubber.62 Carpet cushions made
from synthetic fibers are superior to cushions made from
rubberized hair jute because they do not contain any
deteriorating products and, therefore, when they get wet
they will not develop mold, mildew, or odor.63
In 2005, applicant acquired a company that manufactures
and sells a synthetic latex rubber carpet cushion for use in

58 Manning Dep., p. 30.
59 Manning Dep., p. 31. Prior to 1998, applicant sold its HARTEX
carpet underlays to carpet retailers and distributors. In 1998,
applicant changed its business model and focused its sales on the
hospitality industry. (Manning Dep., pp. 129-130).
60 Manning Dep., p. 17.
61 Manning Dep., p. 17.
62 Manning Dep., pp. 17-18, 100-101.
63 Manning Dep., pp. 115-116.
Opposition No. 91151220
14
high traffic areas. However, the synthetic latex rubber
carpet cushion is not sold under the HARTEX mark.64
Carpet underlays and carpet backing are different
products. Carpet backing is a component of a carpet product
(i.e., it is attached to the carpet) whereas a carpet
underlay is never attached to the carpet.65
HARTEX carpet underlays are sold by the square yard.
In 2005, applicant sold approximately three million square
yards of HARTEX carpet underlays. Because the average sale
price is between $1.25 and $1.50 per square yard, in 2005,
applicant’s revenues for HARTEX carpet underlays were
between $3,750,000 and $4,500,000.66 HARTEX sales have been
growing at approximately 5% a year.67
HARTEX carpet underlays were the original synthetic
fiber carpet cushions, and the HARTEX brand enjoys
significant name recognition. Within the hotel industry,
carpeting contracts often specifically request the HARTEX
brand carpet underlay.68
Applicant promotes its HARTEX carpet underlays in the
following manner:

64 Manning Dep., pp. 143-150; 164; Exhibits 96-101.
65 Manning Dep., p. 18.
66 Manning Dep., p. 25.
67 Manning Dep., p. 26.
68 Manning Dep., pp. 31-33. Mr. Manning testified that the
HARTEX brand is specified in approximately 75% of applicant’s
sales. (Manning Dep., p. 123).
Opposition No. 91151220
15
1. Advertisements in trade publications such as
Interior Design, Flooring, Floor Covering Weekly,
Western Floors, Eastern Floors, Hotel Business,
Hotel and Motel Management, and Architectural
Digest;69
2. Exhibits at trade shows;70 and,
3. Distribution of architect kits.71
With respect to trade shows, applicant attends and
exhibits at the International Hotel and Motel Show in New
York City, the Hospitality Design Show in Las Vegas, and the
HD Boutique in Miami. In addition, applicant exhibits at
trade shows organized by its customers, such as Best
Western, Hilton, and others. Applicant has never exhibited
at the International Rubber Congress or ACS Rubber Division
Expo trade shows.72 Applicant promotes HARTEX carpet
underlays at the trade shows through samples,
advertisements, brochures, and architect kits.73
Applicant’s promotional materials reference Leggett &
Platt.74

69 Manning Dep., pp. 35-36.
70 Manning Dep., p. 35.
71 Manning Dep., p. 35. An architect kit is a large brochure
with small samples of product sent to architects and designers to
promote HARTEX carpet underlays. (Manning Dep., p. 62).
72 Manning Dep., pp. 69, 151-152. Applicant’s customers organize
and conduct trade shows where their approved suppliers exhibit
their products for franchisees. Manning Dep., p. 73.
73 Manning Dep., p. 70.
74 Manning Dep., p. 36; Exhibits 66, 67, 69-75, 77-80.
Opposition No. 91151220
16
Applicant sells its HARTEX carpet underlays through its
own salespeople and through sales agents.75 Franklin
Associates has been a sales agent for applicant’s HARTEX
carpet underlays since the early to mid-1980s.76 It
represents applicant in the greater Chicago metropolitan
area and in parts of the Midwest. Franklin Associates sells
the HARTEX carpet underlays to carpet stores and department
stores in the Chicago metropolitan area and throughout the
Midwest.77 With reference to the hospitality industry,
Franklin Associates represents applicant nationwide.78
Franklin Associates also sells sponge rubber carpet
underlays manufactured by Sponge Cushion, Inc.79
C. Miscellaneous facts.
Opposer’s witnesses are not aware of any company that
sells carpet backing, carpet padding, carpet underlay and
natural latex.80 In addition, prior to this proceeding,
opposer’s witnesses were not aware that applicant sold
HARTEX brand carpet underlay.81 By the same token, prior to
this proceeding, applicant’s witnesses were not aware of
opposer’s HARTEX rubber products or that HARTEX latex rubber

75 Manning Dep., pp. 78-80.
76 Horwich Dep., pp. 11, 15. Franklin Associates originally sold
HARTEX carpet underlays for Harper Manufacturing Co. (Horwich
Dep., p. 12).
77 Horwich Dep., p. 35.
78 Horwich Dep., pp. 18, 21, 28.
79 Horwich Dep., pp. 35, 36
80 Blalock Dep., p. 58.
81 Blalock Dep., p. 103.
Opposition No. 91151220
17
had been used as an ingredient of carpet backing or
padding.82
Neither opposer, nor applicant, was aware of any
reported instances of confusion or instances of persons
mistakenly associating HARTEX natural latex and applicant’s
HARTEX carpet underlay.83

Standing
Because opposer has properly made its pleaded
registrations of record, opposer has established its
standing. 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 registrations are of record,
Section 2(d) priority is not an issue in this case. King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974).

82 Manning Dep., pp. 99-100; Horwich Dep., p. 32.
83 Blalock Dep., 85-86; Opposer’s Response to Interrogatory No.
21; Horwich Dep., p. 42.
Opposition No. 91151220
18
Likelihood of confusion
Our determination of likelihood of confusion under
Section 2(d) of the Lanham Act is based on an analysis of
all 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. Similarity or dissimilarity of the marks.
Because the marks are identical, the similarity of the
marks is a factor that weighs heavily in favor of finding a
likelihood of confusion.
B. Similarity or dissimilarity of the goods.
Opposer uses HARTEX for pale crepe rubber and natural
latex rubber. Applicant uses HARTEX for carpet underlays.
Although natural latex rubber may be used as a component for
carpet backing, that fact alone is insufficient to establish
a commercial relationship between opposer’s rubber and
applicant’s carpet underlays (i.e., that rubber and carpet
underlay emanate from a single source). Where, as here, the
goods of the opposer are distinctly different from those of
the applicant, it is the opposer’s burden to prove that the
goods of the parties are related in some manner or that the
conditions surrounding the marketing thereof are such that
they would be likely to be encountered by the same persons
Opposition No. 91151220
19
under circumstances that give rise to the mistaken belief
that they originate with the same source. Pasco, Inc. v.
Diamond Shamrock Corporation, 191 USPQ 59, 63 (TTAB 1976).
Opposer has failed to sustain its burden of proof on
this factor. We are not persuaded that simply because
rubber may be a component of carpet backing that rubber and
carpet underlays are related. See Cooper Industries, Inc.
v. Repcoparts USA, Inc., 218 USPQ 81, 84 (TTAB 1983)(the
mere fact that products with significant differences in
character are sold in the same industries does not itself
provide an adequate basis to find that they are related).
Opposer has failed to show that any company sells both
rubber and carpet underlays (let alone under the same or
similar marks). There is no evidence that any carpet
manufacturer promotes HARTEX rubber (or any rubber) as a
component of its carpet backing, cushion, or underlay.
Moreover, although opposer has provided testimony that its
rubber is a superior product, there is no evidence that
carpet purchasers care about the rubber in carpet backing.84
While opposer argued that it has promoted and marketed its
HARTEX rubber as a key component of carpet backing and
padding, those advertisements are directed to purchasers of

84 We note that although a carpet manufacturer may care about the
quality of the rubber used in the carpet (e.g., carpet backing
used in automobile carpets for sound insulation and cushioning),
those in the carpet industry may be more concerned about volume
pricing.
Opposition No. 91151220
20
rubber as opposed to purchasers of carpet backing and
padding. In other words, opposer has not promoted its
rubber to purchasers of carpet backing and padding, but to
manufacturers of such products and to rubber compounders.
Finally, prior to this proceeding, neither party was aware
of the other party even though they have purportedly been
concurrently selling their products in the carpet industry
since at least as early as the 1970s. Under these
circumstances, the mere potential use of rubber,
particularly latex rubber, as an ingredient of carpet
backing and carpet padding does not establish the type of
relationship between the products of the parties that is
likely to lead to confusion of source in the marketplace.
In view of the foregoing, the similarity or
dissimilarity of the goods is a factor that weighs against
finding a likelihood of confusion.
C. The similarity or dissimilarity of established, likely
to continue trade channels.

The differences in the parties’ products are even more
significant in light of how opposer and applicant do
business. Opposer sells its natural latex rubber to
“compounders,” who have the technical expertise to process
the product for use by carpet mills. Carpet mills do not
process the natural rubber themselves. The latex rubber is
shipped to the compounders in 5,000-gallon tank trunks.
Opposition No. 91151220
21
Opposer advertises and promotes its products in
magazines and newspapers directed to the rubber industry and
companies that use rubber in their products. In addition,
it promotes its natural latex rubber at International Latex
Conference and the ACS (American Chemical Society) Rubber
Division Rubber Expo.
Applicant, on the other hand, sells its carpet
underlays for use with wall-to-wall carpets used in high
traffic areas such as hotels, office buildings, timeshares,
banks and other commercial applications. Nevertheless,
because applicant’s description of goods is not limited in
any way, we must construe applicant’s carpet underlays as
potentially being sold anywhere such products are normally
sold (e.g., carpet and rug retailers and distributors).85
Applicant advertises and promotes its carpet underlays
in hospitality trade magazines, interior designer magazines,
and flooring magazines. It exhibits its HARTEX carpet
underlays at hospitality industry trade shows.
Based on the record in this case, there is no evidence
that purchasers of carpet underlay are exposed to opposer’s
mark or that purchasers of rubber, particularly latex
rubber, are exposed to applicant’s mark. Accordingly, we
find that opposer’s rubber and applicant’s carpet underlay

85 We note that applicant’s sales agent Franklin Associates sells
HARTEX carpet underlays to carpet retailers and distributors in
the Chicago metropolitan area and throughout the Midwest.
Opposition No. 91151220
22
are not sold to the same consumers. In view of the
foregoing, opposer’s HARTEX rubber and applicant’s HARTEX
carpet underlays move in different channels of trade.
Therefore, the channels of trade factor weighs against
finding that there is a likelihood of confusion.
D. The conditions under which and buyers to whom sales are
made.

The inherent nature of purchasing natural rubber,
specifically natural latex rubber that is used in the carpet
industry, dictates that purchasers will be sophisticated and
exercise a high degree of care. As noted above, 98% of the
purchases by compounders for use in the carpet industry are
through 5,000-gallon tank trunks. This means that the
compounders must have the capability and expertise to handle
and store large quantities of liquid rubber, particularly
because liquid latex has the tendency to naturally
coagulate. In addition, since there are several HARTEX
natural latex formulations, the compounders need to know the
qualities and characteristics of each in order to choose the
best formulation for their application. The compounders are
knowledgeable purchasers who have a specific purpose or plan
for the HARTEX natural latex.
Because there are only a limited number of companies
that use natural latex, opposer’s two account
representatives responsible for the sale of HARTEX natural
latex make regular, personal sales calls on their natural
Opposition No. 91151220
23
latex rubber accounts to discuss customer requirements and
pricing. HARTEX sales are personal sales by knowledgeable
persons who ensure that the carpet industry compounders know
that they are purchasing genuine HARTEX natural latex from
opposer.
Finally, because HARTEX natural latex rubber is a high
quality product, opposer charges a premium. On the other
hand, the rubber compounders in the carpet industry are a
volume purchaser of latex, and they demand price
concessions. Accordingly, over time, the percentage of
opposer’s HARTEX natural latex sold in the carpet industry
rubber compounders has been declining. Under these
circumstances, carpet industry rubber compounders will
exercise a high degree of care before purchasing the higher
priced HARTEX natural latex.
As noted above, applicant’s HARTEX carpet underlays are
sold for use in wall-to-wall carpet applications for high
traffic areas such as hotels, office buildings, timeshares,
banks, and other commercial applications. The people
responsible for fixtures, furniture and equipment in the
hospitality field are the ones who purchase applicant’s
HARTEX carpet underlays. These would be professional buyers
with a focused need for applicant’s product.
Applicant sells its HARTEX carpet underlays through its
own salespeople and through sales agents such as Franklin
Opposition No. 91151220
24
Associates. Franklin Associates has been selling HARTEX
carpet underlays since the early to mid-1980s. Accordingly,
knowledgeable sales persons, touting the reputation of
applicant and its products, sell applicant’s HARTEX carpet
underlays.
Both opposer and applicant sell their products to
knowledgeable consumers under conditions calculated to
ensure care in discerning the source of the goods. Under
the sales circumstances described above, we perceive little
chance of confusion as to source to occur. Accordingly, the
conditions under which and buyers to whom sales are made is
a factor that weighs against finding that there is a
likelihood of confusion. We would not conclude otherwise,
even if we were to focus on theoretical sales of applicant’s
carpet underlays to carpet retailers or distributors, as
opposed to the commercial or hospitality industries, for
such purchasers would be no more likely than applicant’s
actual customers to also be purchasers of natural latex
rubber or pale crepe rubber.
E. The fame of opposer’s HARTEX mark.
Opposer’s HARTEX natural latex rubber is well known in
the rubber industry for its consistent high quality.
Opposer controls over half of the U.S. market for natural
rubber, including approximately 40% of the natural latex
market. That translates to approximately $35 million in
Opposition No. 91151220
25
sales per year, making HARTEX natural latex the largest
selling natural latex in the United States. However, the
record does not show that the public recognition and renown
of opposer’s HARTEX mark extends beyond the rubber industry
or, specifically, to carpet underlays. Accordingly, this
factor does not make confusion more likely. It is neutral.
F. The number and nature of similar marks in use on
similar goods.

Opposer’s HARTEX mark is an inherently strong mark
because it is a coined term derived from the combination of
the name of opposer’s principal (Harvey Firestone) and/or
the name of opposer’s rubber estate (Harbel) and latex.86
There is only one other active registration for HARTEX:
Registration No. 824,525 for canned fruit and tomato
sauce.87
There is no evidence of record regarding third party
use of any marks similar to HARTEX in connection with rubber
or carpet underlays.
This is a factor that favors opposer, but it does not
necessarily make confusion more likely.
G. The nature and extent of any actual confusion and the
length of time during and conditions under which there
has been concurrent use without evidence of actual
confusion.

Despite at least twenty (20) years, and possibly as
many as thirty-eight (38) years, of concurrent use and

86 Vasuta Dep. pp. 41-42; Stupp Dep., pp. 37-38).
Opposition No. 91151220
26
millions of dollars in sales enjoyed by each party for
products used in the carpet industry which is centralized in
and around Dalton, Georgia, opposer was unable to show any
reported instances of actual confusion. In fact, opposer
was not aware of the existence of applicant and its use of
the HARTEX trademark prior to the publication of the mark
for opposition, again notwithstanding applicant’s use of the
mark HARTEX since at least as early as 1986, sales of
approximately three million square yards of carpet underlay
generating revenues of approximately $4,000,000, and an open
and notorious presence in the center of the carpet industry.
The absence of actual confusion under the circumstances
presented on this record underscores that the dissimilarity
of the goods and the trade channels, as well as the degree
of care exercised by the relevant consumers, greatly reduces
or negates any possibility of confusion. Although opposer
argues that proof of actual confusion is not necessary to
show likelihood of confusion (e.g., Time Warner
Entertainment Co. v. Jones, 65 USPQ2d 1650, 1662 (TTAB
2002); Guardian Products Co., Inc. v. Scott Paper Co., 200
USPQ 738, 742 (TTAB 1978)), its absence in this case
strongly reinforces the lack of a likelihood of confusion.
Where, as here, there has been considerable activity by
the parties under their respective marks over a long period

87 Vasuta Dep., Exhibit 4.
Opposition No. 91151220
27
of time, it may be assumed with some reasonable degree of
certainty that if confusion has not occurred in the past,
the chances for confusion to result in the future are slim.
Haveg Industries, Incorporated v. Shell Oil Company, 199
USPQ 618, 626 (TTAB 1978). Accordingly, the lack of actual
confusion is a factor that weighs against finding likelihood
of confusion.
H. Balancing the factors.
If, as argued by opposer, the goods are closely related
(Opposer’s Brief, p. 35), and the parties “operate in
interrelated trade channels, namely, carpet industry
channels; and the end use, carpet underlay, is the same or
virtually the same” (Opposer’s Brief, p. 38), the question
that cries out is why there have not been any reported
instances of confusion or misdirected inquiries coming to
the attention of the parties. That question can be answered
by a combination of factors that include the following:
1. Opposer’s rubber and applicant’s carpet underlays
are distinctly different products;

2. The products move in different channels of trade;
and,

3. Knowledgeable and technically oriented individuals
purchase rubber and carpet underlays.

Pursuant to the record established in this case, opposer’s
rubber products and applicant’s carpet underlays are used in
such different settings that the parties have been able to
live side-by-side for at least twenty years without
Opposition No. 91151220
28
conflict. Moreover, there is nothing in the record to
indicate that this market distinction is not likely to
continue in the future. Accordingly, HARTEX, when used in
connection with carpet underlays, is not likely to cause
confusion with HARTEX used in connection with natural
rubber.
Decision: The opposition is dismissed with prejudice.