Birmingham Steel Corp.v.Beta Steel Corp.

Trademark Trial and Appeal Board

Dec 4, 1997

No. 91088237 (T.T.A.B. Dec. 4, 1997)

Hearing:
March 11, 1997
Paper No.
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC. 4, 97
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
Birmingham Steel Corporation
v.
Beta Steel Corp.
_______
Consolidated Opposition Nos. 88,237 and 88,238
_______
Joseph W. Berenato, III of Myers, Liniak & Berenato for
opposer
David R. Melton and Gerard T. Gallagher of Barnes &
Thornburg for applicant
_______
Before Rice, Hanak and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Birmingham Steel Corporation filed its opposition to
two applications of Beta Steel Corp. to register the marks
shown below for “semi finished steel products, namely, hot
rolled coil steel, cold rolled coil steel, tube steel, pipe
steel, plate steel, structural steel, galvanized and other
treated coil steel, reinforcing bar steel, and steel wire.”
Opposition Nos. 88,237 and 88,238
2
1 2
As grounds for opposition, opposer asserts in its
second amended notice of opposition3 that applicant’s marks,
when applied to applicant’s goods, so resemble opposer’s

1 Application Serial No. 74/119,591, filed November 30, 1990, in
International Class 6, based upon an allegation of a bona fide intention
to use the mark in commerce in connection with the identified goods.
The record includes a disclaimer of STEEL apart from the mark as a
whole.
2 Application Serial No. 74/119,592, filed November 30, 1990, in
International Class 6, based upon an allegation of a bona fide intention
to use the mark in commerce in connection with the identified goods.
3 In its stipulated second amended notice of opposition, opposer adds
reference to its ownership of Registration No. 1,797,516 as a basis for
its claim under Section 2(d) and deletes in its entirety its allegations
under Section 2(d) pertaining to its ownership of Registration No.
1,383,849. In its brief, opposer asserts that, at the present time, its
mark is not being used on the goods identified in Registration No.
1,383,849. In view thereof, while opposer has made Registration No.
1,383,849 of record in this proceeding, we have not considered it
herein.
Opposition Nos. 88,237 and 88,238
3
previously used mark, shown below, for semi-finished steel
products, which mark is also registered,4 as to be likely to
cause confusion under Section 2(d) of the Trademark Act.
Opposer alleges use of its mark in connection with such
goods since at least November 16, 1989. Opposer alleges,
further, that “applicant’s mark is deceptively similar to
opposer’s mark so as to cause confusion and lead to
deception as to the origin of applicant’s goods bearing the
applicant’s mark”; and that “opposer has developed an
exceedingly valuable goodwill in respect of the sale of
semi-finished steel products bearing opposer’s [mark].”
Applicant, in its answer, denied the salient
allegations of the likelihood of confusion claim.5

4 Registration No. 1,797,516, issued October 12, 1993, for goods
identified as “semi-finished steel products: namely, reinforcing bars,
merchant bars, merchant shapes and expansion shells; and powdered metal
products; namely, camming plugs and nuts,” in International Class 6.
5 While the Board did not give applicant time to file an answer to the
second amended notice of opposition, in its brief applicant has
addressed opposer’s claims of priority and likelihood of confusion based
on Registration No. 1,797,516 and continued to deny opposer’s claims in
relation thereto. Thus, to the extent that the claims are different
from those contained in the original notice of opposition, applicant is
deemed to have denied the salient allegations of the second amended
notice of opposition.
Opposition Nos. 88,237 and 88,238
4
The Record
The record consists, in pertinent part, of the
pleadings; the file of the involved application; a title and
status copy of opposer’s pleaded Registration No. 1,797,516;
and certain specified supplemental responses of applicant to
opposer’s first set of interrogatories, made of record by
opposer’s notice of reliance6; and the testimony depositions
of Robert G. Wilson, opposer’s executive vice president, and
Grant Ruthizer, applicant’s vice president, secretary and
member of the Board of Directors, both with accompanying
exhibits. Both parties filed briefs on the case and an oral
hearing was held.
Applicant’s Objections to Opposer’s Testimony
On March 18, 1996, applicant filed, along with its
brief, its “statement of objections” to certain specified
statements made by Mr. Wilson during his testimony and made
by opposer in its brief. Opposer filed its response in
opposition thereto.
Regarding applicant’s objection to statements made by
opposer in its brief, we construe applicant’s objection as a
motion to strike opposer’s brief in part and we deny the

6 Opposer also submitted, under its notice of reliance, copies of its
1987 Annual Report; its Winter, 1986, Second Quarter Report; and a 1993
product brochure of opposer. These documents are not properly made of
record by notice of reliance nor have they been treated as being of
record by applicant. See, Trademark Trial and Appeal Board Manual of
Procedure, (TBMP), Section 708. Thus, we have not considered these
documents as part of the record before us. We hasten to add that had we
considered these documents, our decision herein would remain the same.
Opposition Nos. 88,237 and 88,238
5
same. We have considered applicant’s specific objections in
our evaluation of the case herein. To the extent that
opposer might, in its brief, mischaracterize any facts,
which we do not conclude opposer has done in this case, we
would simply disregard such statements. See, TBMP, Section
540.
Regarding applicant’s objection to statements by Mr.
Wilson in his testimony, we find, first, that opposer’s
contention that these objections are untimely is not well
taken. Objections such as applicant’s herein, which are
basically substantive in nature, are not waived for failure
to make them during or before the taking of the deposition
and will be considered by the Board even if raised for the
first time in a party’s brief on the case. See, TBMP,
Section 718.03 and cases cited therein.
We note that the transcript of Mr. Wilson’s testimony
includes, as a preface, the following stipulation between
the parties: “[I]t shall not be necessary for objections to
be made by counsel to any questions, except as to form or
leading questions, and that counsel for the parties may make
objections and assign grounds at the time of trial or at the
time said deposition is offered in evidence, or prior
thereto.” While this stipulation would appear to preclude
applicant from filing its objections with its brief, the
terms of the stipulation are sufficiently ambiguous that we
Opposition Nos. 88,237 and 88,238
6
find it does not prohibit applicant from asserting
substantive objections with its brief, as permitted by Board
practice.7 Thus, we find that applicant’s objections are
timely.
However, we find that applicant’s objections are not
well-taken. There is no basis for applicant’s objections to
Mr. Wilson’s testimony on the ground that specified
testimony is “unsubstantiated by the record”; or on the
ground that “the documents [submitted as exhibits to Mr.
Wilson’s deposition] speak for themselves.” Similarly, the
specified testimony is not prohibited as hearsay. Thus, the
testimony has been considered by the Board for whatever
probative value it may have.
The Parties
Opposer’s executive vice president, Robert G. Wilson,
testified that, since 1984, opposer has been a steel and
steel products producer with mills and steel distribution
depots in various locations throughout the United States.
Opposer produces steel reinforcing bar (rebar) used in the

7 In the case cited by opposer, Roux Laboratories, Inc. v. Kaler, 214
USPQ 134 (TTAB 1982), the Board notes the ambiguity in a similarly-
worded stipulation, however, that decision is otherwise inapposite. In
Roux Laboratories, the Board was determining the timeliness of an
objection which, under the rules and Board practice, is waived if not
made during or before the taking of the deposition because, unlike the
case herein, it involved objections which might have been obviated or
removed if presented at that time.
Opposition Nos. 88,237 and 88,238
7
construction industry and rounds, squares, flats, angles,
channels and strips - also known as merchant products.8
Opposer sells its products to various types of
construction manufacturers, steel fabricators and
distributors. A distributor may be a company which is in
another business, for example, lumber companies such as
Georgia-Pacific or Weyerhauser also supply steel products,
such as nails and rebar, to their customers. A distributor
may be a steel service center. A steel service center is a
distributor which purchases, primarily, steel merchant
products in large quantities from several steel producers
for resale in smaller quantities to a wide range of
customers. Some service centers further process the steel
and others resell the steel in the same form in which it was
purchased.
While opposer will ship its products directly to a
customer ordering in quantities larger than one truck load
or carload, opposer primarily ships its products to
fabricators, service centers and other distributors.
Opposer’s products are shipped in bundles with tags attached
to the bundles, with opposer’s pleaded trademark appearing
on the tags. Upon receipt by a service center, opposer’s

8 Opposer also manufactures steel rod and wire, which is sold primarily
to the automotive manufacturing industry, and steel roof support
systems, particularly for mines. However, other trademarks are used in
connection with these products. While Mr. Wilson indicates that opposer
may, at some point in the future, use its pleaded mark in connection
with these products, such use had not been made by the time of trial.
Opposition Nos. 88,237 and 88,238
8
bundles are opened and, thus, the tags are removed and
opposer’s products are co-mingled with the service center’s
inventory, which is likely to include the same kind of
products from other steel producers.
Shipments of steel products from a service center to
its customers are likely to include products from more than
one producer and are identified in a certified mill test
report (Wilson, Exhibit 11) by their physical and chemical
properties. There is no tagging or other paper work that
identifies these products by producer. When a problem
arises regarding the quality of a shipment of steel from a
distributor, chemical analyses can, in many but not all
cases, indicate the producer of the steel in question.9
Mr. Wilson testified that opposer has 400 customers and
annual sales of products in connection with which opposer
uses its pleaded mark were approximately $442 million in
1993. However, Mr. Wilson indicated that opposer’s products
are sold nationally and internationally and the record does

9 Opposer argues vigorously that confusion is likely herein because of
the potential problem for end users of identifying the source of an
unlabeled product of non-conforming quality. However, other than direct
sale to the fabricator or other manufacturer, both opposer and applicant
have detailed clear trade channels wherein any source identification is
removed from the semi-finished steel product upon sale to the
distributor and prior to its sale to the fabricator or manufacturer for
reprocessing. Thus, while tracing non-conforming products to their
source may be a problem in these cases, it is not a trademark issue and
is not pertinent to our determination of likelihood of confusion herein.
That is, the problem stems not from the trademarks used on the goods,
but, rather, from the lack thereof at the time of sale to the fabricator
or manufacturer.
Opposition Nos. 88,237 and 88,238
9
not specify the number of U.S. customers or dollar amount of
domestic sales.
Mr. Wilson testified that opposer’s pleaded trademark
appears on, essentially, all written materials used in
connection with its products, such as invoices, price
sheets, stationery and catalogs, as well as on its annual
reports and other material relating, in general, to
opposer’s company. Mr. Wilson testified that opposer also
uses its pleaded trademark on a variety of items, such as T-
shirts, golf balls, caps and mugs, in connection with
certain events attended or sponsored by opposer, such as
trade shows and sporting events. Opposer promotes its
products through its promotional materials, through direct
contact by field sales representatives and customer contact
representatives, and at trade association events. Opposer
also uses its pleaded trademark in materials and
advertisements promoting its company as an investment to
existing and prospective stockholders.
Applicant’s vice president and secretary, Grant
Ruthizer, testified that applicant, incorporated in 1989, is
a producer of steel products. In 1992, applicant’s mill,
located in Indiana, began producing and selling hot rolled
coil steel.10 Mr. Ruthizer stated that, at the time of

10 We note, first, that applicant has not yet filed an allegation of use
in either application herein. In applicant’s supplemental response to
opposer’s first set of interrogatories (No. 3), dated January 20, 1995,
and signed by Mr. Ruthizer, applicant indicated that it has not yet used
Opposition Nos. 88,237 and 88,238
10
trial, applicant had fifty active customers. Mr. Ruthizer
admits that, while applicant does not presently produce
steel rebar products, if applicant did produce rebar, it
would be in competition with opposer.
Like opposer, applicant sells and anticipates selling
its products to steel fabricators, steel distributors and
steel service centers. Mr. Ruthizer testified that
applicant’s steel products are transformed by the purchaser
in most cases. For example, if applicant’s product is
purchased by a processor, it is likely to be galvanized,
coil rolled or pickled; if purchased by a warehouse (i.e., a
service center) it likely to be either resold in the same
form, slit, or further processed to customer specifications;
or if purchased by a manufacturer, it will lose its identity
in all cases - undergoing processes such as stamping or
welding to become anything that can be made from flat steel,
from structural tubing to the body of a refrigerator.

the mark on the goods. However, Mr. Ruthizer stated, in his deposition,
that the marks herein have been in use in connection with, at least, hot
rolled coil products since July, 1992. There is no evidence as to the
nature and extent of applicant’s production and sales as of this date.
It is unnecessary for us to resolve this apparent inconsistency for
purposes of determining priority as July, 1992, is subsequent to both
the filing date of the applications herein and the dates of first use
established by opposer. However, for purposes of our consideration of
the issue of likelihood of confusion, we find that applicant has
established that, as of the time of trial, it was doing business and had
sold hot rolled coil products to which tags bearing the marks herein
have been affixed.
Opposition Nos. 88,237 and 88,238
11
Mr. Ruthizer testified that applicant’s mark appears on
tags affixed to its products;11 and that, upon processing by
the purchaser, the tags are removed and the identity of
applicant’s products can be ascertained only through
chemical analysis.
Analysis
While a certified copy of opposer’s pleaded
registration is of record, Registration No. 1,797,516 issued
on October 12, 1993, based on an application filed September
2, 1992, which is subsequent to the November 30, 1990,
filing date of the two applications herein. However, there
is no issue with respect to opposer’s priority, which
applicant does not contest, as the evidence of record
establishes opposer’s priority through its use of its
pleaded mark in connection with semi-finished steel
products, including rebar, since prior to the filing date of
applicant’s two intent-to-use applications.12
Our determination of likelihood of confusion under
Section 2(d) must be based on an analysis of all of the
probative facts in evidence that are relevant to the factors

11 While Mr. Ruthizer stated that it would be possible, also, to apply
the mark to the goods by printing or stenciling on the goods, there is
no indication in the record that this was either anticipated or being
done by applicant or opposer.
12 We base this conclusion on the testimony of opposer’s witness, Mr.
Wilson, and not, as opposer proposes, on the tags accompanying the
notice of opposition. Such matter, to be properly before us for
consideration, must have been entered into evidence during opposer’s
testimony period.
Opposition Nos. 88,237 and 88,238
12
bearing on the likelihood of confusion issue. In re E.I.
duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). Key considerations in this case are the similarities
between the goods, the similarities between the marks, the
channels of trade, the cost of the products and the
sophistication of the purchasers.
With respect to the goods of the parties, opposer has
established that it uses its pleaded mark on a number of
semi-finished steel products, as identified in its pleaded
registration. At least one of opposer’s identified
products, “reinforcing bars,” is identical to “reinforcing
steel bars” in applicant’s identification of goods. It is
immaterial that applicant has not yet used its mark in
connection with rebar, as the issue of likelihood of
confusion is determined based on the identification of goods
in the applications. See, In re Elbaum, 211 USPQ 639, 640
(TTAB 1981). In view of the existence of identical goods
herein, it is unnecessary for us to determine whether, or to
what extent, the parties’ remaining semi-finished steel
products may be related. See, Skunk Manufacturing Company
v. Tarrant Manufacturing Company, 318 F.2d 328, 137 USPQ 881
(CCPA 1963); Board of Trustees of the University of Alabama
v. BAMA-Werke Curt Baumann, 231 USPQ 408 (TTAB 1986).
Considering the channels of trade, as both opposer’s
and applicant’s goods are identified broadly we must presume
Opposition Nos. 88,237 and 88,238
13
that the goods of opposer and applicant are sold in all of
the normal channels of trade to all of the normal purchasers
for goods of the type identified. See Canadian Imperial
Bank v. Wells Fargo, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987). That is, we must presume, at least with respect to
the identical goods herein, rebar, that such goods of
opposer and applicant are sold through the same channels of
trade to the same classes of purchasers. Further, the
parties’ witnesses, in describing the parties’ respective
products and trade channels, describe essentially identical
trade channels for the parties’ goods. Both parties sell
their semi-finished steel products to, inter alia,
manufacturers, fabricators and distributors, such as service
centers. These purchasers buy and then either use,
reprocess or resell multiple types of semi-finished steel
products.
It is clear from the record that the purchases involved
are large, expensive purchases such that significant care is
likely to be taken with each purchase. Both parties
acknowledge that the purchasers of their respective products
have specialized employees responsible for making
purchases13 such that these purchasers can be considered

13 Applicant’s witness, Mr. Ruthizer, stated as follows:
Ques. Who is responsible at Beta’s customers for making purchasing
decisions?
Ans. The professional purchasing managers.
. . .
Opposition Nos. 88,237 and 88,238
14
sophisticated with respect to the purchasing process and
knowledgeable about the products purchased.
Turning to the marks, both parties’ acknowledge that
their marks are stylized B’s, with one of applicant’s marks
including the wording BETA STEEL. Opposer argues that the
predominant feature of applicant’s marks is the letter
“B.”14 On the other hand, applicant contends, essentially,
that the design elements of the parties’ marks are
predominant; that the designs are distinctly different; and
that the wording, BETA STEEL, further distinguishes one of
its marks from opposer’s mark.

Ques. Okay. And what qualifications did they have which qualified them
as professional purchasing managers?
Ans. That they devote their entire time at work to purchasing. And
those three individuals with whom I am familiar have each more than 20
years experience doing only the purchase of steel.
Opposer’s witness, Mr. Wilson, stated as follows:
Ques. Are you familiar with the individuals who buy [opposer’s]
products?
Ans. Well, most of them, or a large number of them, yes.
Ques. Can you characterize the level of knowledge or sophistication
those people have?
Ans. I think it will range from very unsophisticated to it can be
sophisticated as far as the person actually purchasing the steel. The
people actually coming in contact with the steel, the warehouse people,
et cetera, like that, generally are very unsophisticated. I would say
mostly on a level of one to ten, the degree of sophistication would be
five or below. . . . With ten being the highest.
We are not clear whether Mr. Wilson’s consideration of the
sophistication of a purchaser’s employees refers, generally, to their
knowledge of the world or to their knowledge with respect to the
complexities of their jobs and opposer’s products. However, we note
that Mr. Wilson characterized the person actually purchasing the steel
as more sophisticated than those who come in contact with the steel. We
conclude that this statement belies opposer’s assertion in its brief
that purchasers of its products are “unsophisticated.”
14 With regard to applicant’s mark which includes the wording BETA
STEEL, opposer contends that the wording appears significantly smaller
than the letter “B” and that a consumer would attach little significance
to the phrase.
Opposition Nos. 88,237 and 88,238
15
Considering, first, applicant’s mark without the
wording BETA STEEL, we conclude that, while both of the
parties’ marks include the letter “B,” both marks are highly
stylized. These marks are essentially design marks which
are not capable of being spoken; they are not word marks.
Thus, we must consider these marks primarily on the basis of
their visual similarities and dissimilarities and we
conclude that there are significant dissimilarities between
the parties’ marks that are readily discernible by viewing
the marks in their entireties. In re Burndy Corporation,
300 F.2d 938, 133 USPQ 196 (CCPA 1962). In the Burndy case,
the Court found no likelihood of confusion in connection
with goods that were partially identical despite the fact
that both marks, shown below, were based on a capital letter
“B”:
Citing Burndy, the court in In re Anderson Electric Corp.,
370 F.2d 593, 152 USPQ 245 (CCPA 1967), similarly found no
likelihood of confusion, also in connection with partially

Opposition Nos. 88,237 and 88,238
16
identical goods, between two marks, shown below, based on a
capital letter “A”:
See also, Georgia-Pacific Corp. v. Great Plains Bags Co.,
614 F.2d 757, 204 USPQ 697 (CCPA 1980) and In re Electrolyte
Laboratories Inc., 913 F.2d 930, 16 USPQ2d 1239 (Fed. Cir.
1990). Like the case before us, in each of these cases the
court or the Board found no likelihood of confusion where
the parties’ goods were at least in part identical and the
parties’ marks were based upon an identical letter.
In the case before us, applicant’s mark appears as a
light design on a dark square so that if it is perceived as
including letters, it may be perceived as the letter “B,”
the letter “F,” or the letters “BF.” By contrast, opposer’s
mark is a dark design on a light background, but not within
a block. To the extent that opposer’s mark may be perceived
as including the letter “B,” it appears in an entirely
different design or font from applicant’s mark and includes,
superimposed over the dark area, a light design which could
be perceived as a sword, a torch, one of opposer’s products,
or simply as an abstract design. In making this comparison
we do not intend to imply that we are making a side-by-side
Opposition Nos. 88,237 and 88,238
17
comparison of these marks. Rather, we believe that, when
these marks are encountered separately, removed in time and
place, the dissimilarities persist so that the purchasers
involved herein will not equate the two marks or even form
an association therewith. See, Diamond Alkali Company v.
Dundee Cement Company, 343 F.2d 781, 145 USPQ 211 (CCPA
1965); Georgia-Pacific Corporation v. General Paper
Corporation of Pittsburg, 196 USPQ 762 (TTAB 1977), aff’d,
CCPA, No. 78-534, November 2, 1978.
We find that when opposer’s mark and applicant’s mark
without the wording, BETA STEEL, are considered in their
entireties, they engender distinctly different overall
commercial impressions which are sufficient to avoid a
likelihood of confusion in this case, even with respect to
the identical goods indicated herein. We find the same is
true with respect to opposer’s mark and applicant’s mark
containing the wording BETA STEEL. In fact, contrary to
opposer’s assertion, we conclude that the addition of the
wording clearly identifies applicant and, as such, further
distinguishes the parties’ marks.
We agree with applicant that opposer has not
established that its mark is famous as used in connection
with semi-finished steel products and, thus, entitled to a
broad scope of protection. In this regard, opposer has
offered, primarily, very general testimony and evidence
Opposition Nos. 88,237 and 88,238
18
regarding the nature and extent of its promotion of its mark
in connection with its products. Opposer has offered no
specific evidence regarding U.S. sales figures, advertising
and other promotional expenditures or, most significantly,
evidence regarding the reputation of opposer’s mark to the
relevant purchasing group. In addition, opposer has not
shown in even approximate terms its share of the relevant
market.
Regarding other factors relevant to likelihood of
confusion which were addressed by the parties, we find no
evidence to support opposer’s apparent contention that
applicant adopted its mark with an intent to trade on
opposer’s reputation.
Further, regarding actual confusion or lack thereof, as
the applications herein are based on allegations of a bona
fide intent to use the respective marks and, to the extent
use has actually occurred, any contemporaneous use by the
parties is of relatively short duration, any conclusions
drawn by the parties regarding actual confusion or lack
thereof are unpersuasive herein.
In conclusion, we find that in view of the
dissimilarities in the overall commercial impressions of
opposer’s and applicant’s marks in connection with the
parties’ goods, the sophistication and knowledge involved in
the purchase of the parties products and the large and
Opposition Nos. 88,237 and 88,238
19
expensive nature of such purchases, no confusion is likely
to exist herein.
Decision: The opposition is dismissed.
J. E. Rice
E. W. Hanak
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board