Bluewater Welding & Fabrication LLC

Trademark Trial and Appeal Board

Nov 2, 2016

No. 86489026 (T.T.A.B. Nov. 2, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 2, 2016
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
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In re Bluewater Welding & Fabrication LLC
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Serial No. 86489026
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Daniel L. Fiore of Reger Rizzo & Darnall LLP
for Bluewater Welding & Fabrication LLC.

Kevin G. Crennan, Trademark Examining Attorney, Law Office 113,
Odette Bonnet, Managing Attorney.
_____
Before Quinn, Wellington, and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

Bluewater Welding & Fabrication LLC (“Applicant”) seeks registration on the
Principal Register of the mark BLUEWATER WELDING AND FABRICATION in
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standard characters for “Metal Welding and Fabrication” in International Class 40.1
Applicant has disclaimed WELDING AND FABRICATION.
The Examining Attorney refused registration under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the registered mark
BLUEWATER RUBBER & GASKET in standard characters for “Custom built hose
assembly for others; precision water jet gasket cutting for others; precision knife
gasket cutting for others; custom die cutting of gaskets for others” in International
Class 40.2 The cited registration includes a disclaimer of RUBBER & GASKET.
After the Examining Attorney made the refusal final, Applicant appealed. We
affirm the refusal to register.
The determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered, hereinafter referred to as “du Pont factors”); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the relatedness of the services. See In re Chatam Int’l Inc., 380 F.2d
1340, 71 USPQ2d 1944 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry

1 Application Serial No. 86489026 was filed December 23, 2014 based on use in commerce
under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a).
2 Registration No. 3863035 issued October 19, 2010; Section 8 affidavit accepted; Section 15
affidavit acknowledged.
Serial No. 86489026
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mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods [or services] and differences in the marks.”). In this case,
Applicant states in its Appeal Brief that the relevant du Pont factors are the
similarity of the marks, the similarity of the services and their trade channels, and
purchaser sophistication.3
A. Similarity of the Marks
With respect to the marks, we must compare them “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imports, Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). The test assesses
not whether the marks can be distinguished in a side-by-side comparison, but rather
whether their overall commercial impressions are so similar that confusion as to the
source of the goods or services offered under the respective marks is likely to result.
Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721
(Fed. Cir. 2012); see also Edom Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1551
(TTAB 2012).
Applicant’s proposed mark is BLUEWATER WELDING AND FABRICATION in
standard characters, and the mark in the cited registration is BLUEWATER
RUBBER & GASKET, also in standard characters. Both marks contain the identical
dominant term BLUEWATER, and therefore share a significant visual and phonetic
similarity. See, e.g., Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l

3 4 TTABVUE (Applicant’s Brief).
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Ass’n, 811 F.2d 1490, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (affirming Board’s
finding that COMMCASH and COMMUNICASH are “strikingly similar in
appearance, sound and in the commercial impression engendered”). As the first part
of both marks, BLUEWATER is “most likely to be impressed upon the mind of a
purchaser and remembered.” Presto Products Inc. v. Nice-Pak Products, Inc., 9
USPQ2d 1895, 1897 (TTAB 1988). We further find that BLUEWATER dominates
both marks because the other wording has been disclaimed as merely descriptive of
or generic for the respective services, such that consumers would not be inclined to
rely on it as source indicating. See In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749,
752 (Fed. Cir. 1985). Considering the marks in their entireties, we find them very
similar in appearance, pronunciation, connotation and overall commercial
impressions, particularly in the context of the related goods at issue, as discussed
infra.
B. Relatedness of the Services
We next address the du Pont factor regarding the similarity or dissimilarity of the
services. “The authority is legion that the question of registrability of an applicant’s
mark must be decided on the basis of the identification of goods [or services] set forth
in the application regardless of what the record may reveal as to the particular nature
of an applicant’s goods [or services], the particular channels of trade or the class of
purchasers to which sales of the goods are directed.” Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Thus,
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we must focus on the services as identified in the application and cited registration,
not on any extrinsic evidence of actual use. Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014).
The record includes overwhelming evidence establishing the relatedness of the
metal welding and fabrication services identified in the subject application and the
gasket cutting and custom hose assembly services identified in the cited registration.
The record shows that third parties routinely promote these services together under
the same service mark or trade name. For example:
• OGS Industries advertises “Metal Fabrication Services,” including welding
and the manufacture of gaskets;4
• Noble Industries offers “Custom Metal Fabrication,” including stainless steel
“hose assemblies;”5
• Lansco Manufacturing promotes “Custom Metal Fabrication,” including
welding, as well as “Die Cutting” and “Gaskets & Seals;”6
• 3Axis Development, Inc.’s services include “Custom Gaskets & Die Cutting” in
addition to “Welding and Large Fabrication;”7
• Fastenal provides “Hose Fabrication” and “Welding;”8
• FedTech promotes its “Custom Gaskets and Gasket Manufacturing,” as well
as “Fabrication and Welding;”9

4 April 2, 2015 Office Action at 16-17 (www.ogsindustries.com).
5 Id. at 18 (www.nobleindustries.com).
6 Id. at 19-20 (www.lanscomfg.com).
7 Nov. 23, 2015 Office Action at 3-4 (www.3axis.us).
8 Id. at 6 (www.fastenal.com).
9 Id. at 7-9 (www.fedtech.com).
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• Fugitt Rubber & Supply Co., Inc. promotes under its heading for “Welding,”
“Fabricating stainless steel flexible metal hoses,” and further promotes its
“gasket cutting department;”10
• IGS Industries’ website states that it offers “Metal Fabricating at IGS
Industries,” “Welding at IGS Industries,” and “Gaskets at IGS Industries;”11
• Precision Cutting Service indicates that its fabrication services include
welding and custom gasket fabrication;12
• Superior Gasket & Seal, Inc. promotes “Custom Metal Fabrication” that
includes “Welding,” as well as “Custom Gaskets” made by “Die Cutting;”13
• NianticSealInc. lists its “Fabrication Capabilities” that include “Welding” and
“Custom Hose Assemblies” as well as various gaskets;14
• Spokane House of Hose, Inc. advertises “Metal Hose Fabrication” done by its
“in-house welding department;”15
• MMPC promotes itself as “Quality Custom Metal Fabrication Specialists” and
offers “applications ranging from large components to metal and rubber
gaskets,” as well as “Welding Services;”16 and
• Berg~Nelson Company Inc. offers gasket cutting, welding, and hose assembly
services.17
Website evidence of the owner of the cited registration also indicates that Bluewater
Rubber & Gasket Co.’s services include “In-House welding.”18 The foregoing evidence
demonstrates that consumers encounter services such as those identified in the

10 Id. at 10 (www.fugittrubber.com).
11 Id. at 11-13 (www.igsind.com).
12 Id. at 14-15 (www.precisioncuttingservice.com).
13 Id. at 16 (www.superiorgasketandseal.com).
14 Id. at 17 (www.inscogroup.com).
15 Id. at 18 (http://spokanehose.com).
16 Id. at 19 (www.multimetal.com).
17 Id. at 21-23 (http://bergnelson.com).
18 Id. at 59 (www.bluewaterrubber.com).
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application and those in the cited registration promoted together under the same
mark or trade name. Moreover, because Applicant’s services are broadly identified,
its metal fabrication may include making hoses out of metal, which the evidence
shows is typical in the industry.19 Therefore, Applicant’s services in part encompass
those in the cited registration. Based on the foregoing evidence regarding the services
at issue, “the circumstances surrounding their marketing are such that they could
give rise to the mistaken belief that they emanate from the same source.” See Coach
Servs., 101 USPQ2d at 1722.
In addition, the Examining Attorney submitted ten use-based third-party
registrations which cover the same types of services, thereby suggesting that the
listed services may emanate from the same source. In re Albert Trostel & Sons Co.,
29 USPQ2d 1783, 1785-86 (TTAB 1993). Examples of the registrations include:
Registration
No.
Mark Services
443891120 MCCARTY EQUIPMENT
COMPANY
Custom fabrication of metal,
rotary and vibrator hose, and
spiral wound and custom non-
metallic gaskets; custom
manufacture and assembly of
custom kits including hoses,
couplings, seals and gaskets

19 See, e.g., Nov. 23, 2015 Office Action at 10 (www.fugittrubber.com); id. at 18
(http://spokanehose.com).
20 April 2, 2015 Office Action at 29-30.
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176333821 Expedited custom
manufacture of metal
fabrications, precision
machined parts, gaskets,
shims, metal stampings,
washers and laser cutters and
priority order processing and
shipping in connection
therewith
240368422
Custom manufacture and
processing services in the
nature of slitting, spooling,
cutting, laminating, die
cutting, imaging and
fabricating the following;
pressure sensitive tapes,
adhesive tapes, water
activated tapes, films, plastics,
paper, labels, gaskets, silicone,
sponge, foams, rubber,
cardboard, cloth, wood, carpet,
composites, laminates, metals,
marble, granite, ceramic, tile,
glass, fabrics and silicone
rubbers

We find that the third-party website evidence, the third-party registrations, and
the evidence that the owner of the cited registration promotes welding services under
the same mark establish that Applicant’s services and the services in the cited
registration are highly related.

21 Nov. 23, 2015 Office Action at 24-25.
22 Id. at 26-28.
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Applicant’s argued differences in the services based on dictionary definitions, for
which we grant the request to take judicial notice,23 are unavailing. First, Applicant’s
assertion that the hoses and gaskets referred to in the cited registration must be
rubber misreads the recitation of services, which contains no explicit or inherent
limitation as to the materials from which they must be made. Second and more
importantly, Applicant’s resulting contention that the services are not the same fails
to address the relatedness inquiry required under this du Pont factor. Given the
evidentiary record, an appropriate analysis leads to the conclusion that the
relatedness of the services at issue weighs in favor of likely confusion.
C. Trade Channels and Classes of Consumers
Turning to the trade channels, we presume, as we must, that Applicant’s services
and those in the cited registration, for which both recitations are unrestricted, are
available to all potential classes of ordinary consumers and move in all normal
channels of trade. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1846 (Fed. Cir. 2000) (affirming Board finding that where the identification is
unrestricted, “we must deem the goods to travel in all appropriate trade channels to
all potential purchasers of such goods”); In re Elbaum, 211 USPQ 639, 640 (TTAB
1981). The evidence discussed in connection with the relatedness of the services

23 4 TTABVUE 4-5 (dictionary entries from Merriam-Webster.com for “metal,” “welding,”
“fabricate,” “gasket,” rubber,” and “hose.” The Board may take judicial notice of dictionary
definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594
(TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online
dictionaries that exist in printed format or have regular fixed editions. In re Red Bull
GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
Serial No. 86489026
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makes abundantly clear that services such as Applicant’s and the services identified
in the cited registration frequently are promoted together on the same websites to
the same classes of consumers. Moreover, because Applicant’s metal fabrication
services encompass, in part, the custom built hose assembly in the cited registration,
we must presume that both services travel through the same channels of trade to the
same class of purchasers. See In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908
(Fed. Cir. 2012) (finding Board entitled to rely on this legal presumption in
determining likelihood of confusion); American Lebanese Syrian Assoc. Charities Inc.
v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).
We reject Applicant’s arguments, based on extrinsic evidence of supposed
marketplace realities, that its actual services and those of the Registrant do not move
in the same trade channels. As noted above, the identifications control, “regardless of
what the record may reveal as to the particular nature of an applicant’s goods [or
services], the particular channels of trade or the class of purchasers to which sales of
the goods are directed.” Octocom Systems, 16 USPQ2d at 1787; see also Stone Lion
Capital Partners, 110 USPQ2d at 1162.
Thus, based on the recitations of services and the evidence of record regarding
third parties who promote and offer such services, we find that the services in the
application and the cited registration move in the same channels of trade to the same
classes of purchasers.
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D. Customer Sophistication
Again relying on extrinsic evidence that is more limiting than the recitations of
services at issue, Applicant argues that the relevant consumers come from different
industries, are sophisticated, and therefore would not be confused by the marks.
According to Applicant, the Registrant’s customer base comes from the oilfield
drilling and production industry and “include[s] top U.S. manufacturers and
distinguished international suppliers,” while Applicant’s customers “are not impulse
buying off the shelf items but [are] looking for custom fabricated railings for
gangways for their boats, do and buildings.”24 However, these arguments are not
persuasive because we cannot rely on Applicant’s characterization in its brief of the
customers purchasing the services as actually offered in the marketplace. See In re
Consol. Specialty Rests., Inc., 71 USPQ2d 1921 (TTAB 2004) (“However, this is simply
attorney argument without support in the record, and therefore does not overcome
the prima facie case”). Rather, the identifications of services in the application and
cited registration control. See e.g., Stone Lion Capital Partners, 110 USPQ2d at 1162-
63 (“Stone Lion effectively asks this court to disregard the broad scope of services
recited in its application, and to instead rely on the parties’ current investment
practices … the Board properly considered all potential investors for the recited
services, including ordinary consumers seeking to invest in services with no
minimum investment requirement.”) (emphasis in original); Cunningham, 55
USPQ2d at 1846. In this case, Applicant’s metal welding and fabrication services are

24 4 TTABVUE 6 (Applicant’s Brief).
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not restricted, nor are the Registrant’s hose assembly and gasket-cutting services.
They may be offered to all types of customers, including individuals and small
businesses whose decision-making personnel may vary widely in terms of experience,
care and sophistication. See Stone Lion Capital Partners, 110 USPQ2d at 1163
(affirming that TTAB properly considered all potential investors for recited services,
which included sophisticated investors, but that precedent requires consumer care
for likelihood-of-confusion decision to be based “on the least sophisticated potential
purchasers”). The evidence of record gives no indication that consumers of the recited
services necessarily would be particularly sophisticated. Thus, we reject Applicant’s
arguments regarding customer sophistication, and find this factor neutral.
Conclusion
Based on the similarity of the marks and the highly related services at issue,
moving in the same channels of trade to the same classes of purchasers, we find that
Applicant’s mark is likely to cause confusion with the mark in the cited registration.
Decision: The refusal to register Applicant’s mark is affirmed.