Clayton Corporation

Trademark Trial and Appeal Board

Aug 9, 2011

No. 77462009 (T.T.A.B. Aug. 9, 2011)

Mailed:
August 9, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Clayton Corporation
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Serial No. 77462009

_______

Bryan K. Wheelock of Harness Dickey & Pierce PLC, for Clayton
Corporation.

John Kelly, Trademark Examining Attorney, Law Office 117 (Brett
Golden, Managing Attorney).
_______

Before Seeherman, Holtzman, and Ritchie, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:
Clayton Corporation filed an application to register the
mark HOMESEAL and design, as shown below, for goods ultimately
identified as “sealants, adhesives, expansion joint fillers and
insulation materials in the nature of a spray-applied curable
foam for building, construction, repair and maintenance uses,”
in International Class 171:

1 Application Serial No. 77462009, filed April 30, 2008, pursuant to
Section 1(b) of the Trademark Act, 15 USC §1051(b), alleging a bona
fide intent to use in commerce, and disclaiming the exclusive right to
use the term “HOMESEAL” apart from the mark as shown. The mark is
described as follows: The mark consists of the term “HOMESEAL” in a
stylized font and a building design.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77462009
2

The trademark examining attorney refused registration of
the mark under Section 2(d) of the Trademark Act of 1946, 15
U.S.C. §1052(d), on the ground that applicant’s mark so
resembles the mark HOMESEAL, registered in typed drawing format,
for “asphalt, modified asphalt and rubberized asphalt based peel
and stick membranes for use on roofing,” in International Class
19,2 that when used in connection with applicant’s identified
goods, it will be likely to cause confusion, mistake, or to
deceive. Upon final refusal of registration, applicant filed a
timely appeal. Both applicant and the examining attorney filed
briefs, and applicant filed a reply brief. After careful
consideration of the arguments and evidence of record, we affirm
the refusal to register.
Before we discuss likelihood of confusion, we turn to an
evidentiary objection by the examining attorney regarding some
evidence presented by applicant for the first time with its
appeal brief. The examining attorney objects to two images
included in applicant’s brief. One is an image of applicant’s
mark, apparently displayed on a spray can. (Appl’s. brief at

2 Registration No. 2421784, issued January 16, 2001. Renewed.
Serial No. 77462009
3
2). The other is an image of a third-party registration for the
mark HOMESEAL, Registration No. 189381. (Appl’s. brief at 3).
It is well-settled that the record in an ex parte proceeding
must be complete prior to appeal. Trademark Rule 2.142(d); 37
CFR § 2.142(d). Exhibits that are attached to a brief but not
made of record during examination are untimely, and will not be
considered. See In re Fitch IBCA, Inc., 64 USP2d 1058, 1059 n.2
(TTAB 2002); see also TBMP §§1203.02(e) and 1207.01 (3d. ed.
2011). Although in this case applicant did not attach the
images as exhibits, but rather included them in the body of its
brief, we cannot, in either event, consider the images,
submitted for the first time with the appeal brief, as evidence
in our analysis. Accordingly, the objection is sustained.3
We base our determination under Section 2(d) on 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). See also, In re
Majestic Distilling Company, Inc., 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 similarities between the goods or services.
See Federated Foods, Inc. v. Fort Howard Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by
§2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in the

3 In any event, as discussed in the “Marks” section below, even if we
had considered this evidence, it would not have changed our decision.
Serial No. 77462009
4
marks”). We consider each of the factors as to which applicant
or the examining attorney presented arguments or evidence.

The Marks
In comparing the marks, we are mindful that the test is not
whether the marks can be distinguished when subjected to a side-
by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression so that confusion as to the source of the goods
and/or services offered under the respective marks is likely to
result. San Fernando Electric Mfg. Co. v. JFD Electronics
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977);
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff'd unpublished, No. 92-1086 (Fed. Cir. June 5,
1992). The proper focus is on the recollection of the average
customer, who retains a general rather than specific impression
of the marks. Winnebago Industries, Inc. v. Oliver & Winston,
Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106, 108 (TTAB 1975).
The mark in the cited registration consists solely of the
word “HOMESEAL,” in typed drawing format. Applicant’s mark is
as follows:

Serial No. 77462009
5
The literal portion of applicant’s mark, i.e., the word
“HOMESEAL,” is in sight and sound identical to the mark in the
cited registration. Indeed, with a mark registered in typed
form, the registrant is entitled to present its mark in any of a
number of different formats, including one resembling that
presented by applicant’s mark. See Citigroup Inc. v. Capital
City Bank Group Inc., 98 USPQ2d 1253, 1259 (Fed. Cir. 2011) (“If
the registrant ... obtains a standard character mark without
claim to ‘any particular font style, size or color,’ the
registrant is entitled to depictions of the standard character
mark regardless of font, style, size, or color).4
Finally, there is nothing to indicate that the term
“HOMESEAL” in the cited registration would have a different
commercial impression from the term “HOMESEAL” with design
element in the application. Generally, it is the words and not
the design that will be used by consumers to call for or refer
to the goods, particularly where, as here, the design merely
serves to emphasize the literal element of the mark. CBS Inc.
v. Morrow, 708 F.2d 1579, 1581-82 (Fed. Cir. 1983); In re
Dakin’s Miniatures Inc., 59 UPSQ2d 1593, 1596 (TTAB 2001); In re
Appetito Provisions Co., Inc., 3 USPQ2d 1553, 1554 (TTAB 1987).
Since applicant’s design consists of a drawing of a home, it
does not change the commercial impression created by the words
“HOMESEAL.”

4 Trademark Rule 2.52(a) was amended in 2003 to refer to “typed
drawings” as “standard character” drawings. See Trademark Rule
2.52(a); 37 C.F.R. 2.52(a).
Serial No. 77462009
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Applicant argues that the cited registration is weak, and
that the shared term “HOMESEAL” has been included in at least
one third-party registration. However, as discussed regarding
the evidentiary objection above, the third-party registration is
not of record. We note, in any case, that, were it relevant
here, even weak marks are entitled to protection against
registration of a confusingly similar mark. See Giant Food Inc.
v. Rosso and Mastracco, Inc., 218 USPQ 521 (TTAB 1982).
Finally, we note that applicant has disclaimed the term
“HOMESEAL.” However, the disclaimer of the shared term HOMESEAL
does not serve to avoid confusion. A disclaimer does not remove
the disclaimed matter from the mark. The mark must still be
regarded as a whole, including the disclaimed matter, in
evaluating similarity to other marks. See In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Specialty
Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669,
672, 223 USPQ 1281, 1282 (Fed. Cir. 1984).
On balance, we find that the marks are similar in
appearance, pronunciation and meaning, and project very similar
commercial impressions. Accordingly, we find this du Pont
factor to weigh in favor of finding a likelihood of consumer
confusion.

The Goods and Channels of Trade

Preliminarily, we note that the more similar the marks at
issue, the less similar the goods need to be for the Board to
find a likelihood of confusion. In re Opus One Inc., 60 USPQ2d
Serial No. 77462009
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1812, 1815 (TTAB 2001). Moreover, goods or services need not be
identical or even competitive in order to support a finding of
likelihood of confusion. Rather, it is enough that goods or
services are related in some manner or that some circumstances
surrounding their marketing are such that they would be likely
to be seen by the same persons under circumstances which could
give rise, because of the marks used or intended to be used
therewith, to a mistaken belief that they originate from or are
in some way associated with the same producer or that there is
an association between the producers of each parties’ goods or
services. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
The examining attorney submitted evidence of various
websites that explain the relatedness of the goods identified in
the application to those identified in the cited registration.
In particular, the evidence shows how “adhesive” forms of
“spray-applied curable foam” for “building, construction,
repair, and maintenance uses,” as identified by applicant, may
be used specifically for “roofing,” as identified in the cited
registration. Some examples from the record include the
following:
Spray Foam Roofing: Benefits of Spray Foam Roof
Systems
• Leak free monolithic seal over your entire roof
deck . . .
• High insulation value . . .
• Strong adhesion . . .
www.sprayfoam.com.
Serial No. 77462009
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LaPolla Spray Foam Systems: Spray Foam Systems are
performance-based “GREEN” products for use in a
variety of Spray Foam Insulation, Roofing and
Waterproofing applications.
www.sprayfoamsystems.com.

Sierra spray foam roofing: For over 35 years, the
family of Sierra Spray Foam Roofing (SSFR) has been
pioneers of polyurethane roof systems. . . We service
a wide variety of roof systems for commercial and
residential clients as well as hand crafted wine
storage applications. SSFR has clients throughout
California & Nevada such as, Robert Mondavi Vineyards,
SASCO, John Hancock Insurance . . . All other roofs do
not function as a complete system, meaning that these
roofs must be applied in pieces. Whether it is a
plastic sheet that is custom built for your roof, tar
& gravel or a roof heated to a bond . . .
www.sierrasprayfoam.com.

Spray Polyurethane Foam Alliance: Spray polyurethane
foam, commonly referred to as SPF is a spray-applied
insulating foam plastic that is installed as a liquid
and then expands many times its original size . . .
the same basic raw materials that can make insulation
foam semi-rigid and soft to the touch also creates
high density roofing foam that is resistant to foot
traffic and water. . . . For roofing, spray
polyurethane foam insulates and eliminates thermal
bridging through fasteners or gaps in decking while
providing a long-lasting roofing system . . .
www.sprayfoam.org.

Applicant argues that the goods are not related because
consumers would not “substitute” applicant’s goods for those in
the cited registration. (Appl’s. brief at 5). The issue is
not, however, whether consumers would confuse the goods but
whether consumers would be confused into believing that the
goods emanate from a single source. Here, there is evidence
Serial No. 77462009
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that both applicant’s “sealants” and “adhesives” forms of
“spray-applied curable foam” and registrant’s “peel and stick”
membranes may be applied to “roofing.” Furthermore, even when
used in other home “construction,” applicant’s foam is likely to
be purchased and/or used by the same person who purchases and
uses registrant’s roofing membranes, i.e., a contractor or a
handyman, or a homeowner fixing his or her home.
With regard to channels of trade, the goods in the
application are identified for use in “building, construction,
repair and maintenance uses,” while the goods in the cited
registration are identified for “roofing,” which is a subset
thereof. Accordingly, they are likely to travel through the
same trade channels and be purchased by the same classes of
purchasers. See Squirtco v. Tomy Corporation, 697 F.2d 1038,
216 USPQ 937 (Fed. Cir. 1983). In other words, as identified,
both applicant's “spray-applied curable foam,” and registrant’s
“peel and stick membranes for use on roofing” could be sold in
the same stores, possibly even on the same shelves since they
could both be used for roofing. Further, because the goods
could be used for the same roofing/construction project,
consumers could purchase them together. Accordingly, the second
and third du Pont factors also weigh in favor of finding a
likelihood of confusion.

Serial No. 77462009
10
Consumer Sophistication
Applicant argues that its consumers are potentially
sophisticated and would recognize the difference between
registrant’s HOMESEAL mark and applicant’s HOMESEAL and design
mark when used on their respective goods. As discussed above,
the goods identified by both applicant and registrant are both
identified for “construction” uses, or “roofing” as a subset
thereof. The likely purchasers are either contractors,
builders, or, as applicant says, “do-it-yourselfers.” (Appl’s.
brief at 2).
Even if we are to assume that the goods identified by the
cited registration, at least, would be marketed to
professionals, who would be presumed to exercise a higher degree
of care in their purchase than would ordinary consumers, with
nearly identical marks and related goods, even a careful,
sophisticated consumer of such goods is not likely to note the
difference of source. Cunningham v. Laser Golf Corp., 222 F.3d
943, 948-949 (Fed. Cir. 2000). Accordingly, the fourth du Pont
factor weighs in favor of finding a likelihood of confusion.
Balancing the Factors
Considering all of the evidence of record as it pertains to
the du Pont factors, we conclude that the marks are essentially
identical; the goods are related; and, as identified, they would
be sold through the same channels of trade to the same classes
Serial No. 77462009
11
of purchasers. As our precedent dictates, we resolve doubt in
favor of the prior registrant. In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir.
1984); see also In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463,
6 USPQ2d 1025 (Fed. Cir. 1988). Accordingly, we find a
likelihood of confusion between applicant’s mark and the cited
registration.

Decision: The refusal to register is affirmed.