Cook Composites and Polymers Co.

Trademark Trial and Appeal Board

Jan 16, 2004

No. 76353042 (T.T.A.B. Jan. 16, 2004)

Mailed: January 16, 2004
Paper No. 9
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Cook Composites and Polymers Co.
________
Serial No. 76353042
_______
Nicole J. Renouard of Whyte Hirschboeck Dudek S.C. for Cook
Composites and Polymers Co.
Verna Beth Ririe, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Simms, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
Cook Composites and Polymers Co. has filed an
application to register the mark ARMORGUARD for “chemicals
for use in industry, namely, synthetic resins for use in
the manufacture of composite articles and gel coats” in
International Class 1; and “polyester resin gel coat in
liquid form intended for use as a coating that forms the
outer layer of a composite material incorporating fiber
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76353042
2
glass, such as boat hulls, sanitary bathtubs and sinks, and
panels, and the like” in International Class 2.1
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d), in view of the prior registration of the
mark ARMORGUARD for “paint, namely a polyurethane or
polyester top coat paint for wood finishing.”2
When the Examining Attorney made the refusal final,
applicant appealed. Both applicant and the Examining
Attorney filed briefs, but no oral hearing was requested.
We reverse the refusal to register.
Our determination under Section 2(d) of the Act is
based on an analysis of all of the probative facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue. In re E. I. du Pont de
Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
In any likelihood of confusion analysis, however, two key
factors are the similarities/dissimilarities between the
marks and the similarities/dissimilarities between the
goods or services. Federated Foods, Inc. v Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
1 Serial No. 76353042, filed December 26, 2001, and asserting
first use anywhere and first use in commerce on April 19, 2001.
2 Registration No. 1,485,815 issued April 26, 1988; affidavits
under Sections 8 & 15 accepted and acknowledged, respectively.
Ser No. 76353042
3
At the outset, we find that applicant’s mark and the
cited registered mark are identical in terms of appearance,
sound, connotation and overall commercial impression.
Thus, we focus our attention, as have applicant and the
Examining Attorney, on the similarity or dissimilarity of
applicant’s and registrant’s goods, trade channels, and
classes of purchasers.
It is not necessary that the respective goods be
identical or even competitive in order to support a finding
of likelihood of confusion. Rather, it is sufficient that
the goods or services are related in some manner, or that
the circumstances surrounding their marketing are such,
that they would be likely to be encountered by the same
persons in situations that would give rise, because of the
marks used thereon, to a mistaken belief that they
originate from or are in some way associated with the same
source or that there is an association or connection
between the sources of the respective goods or services.
In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); and In re
International Telephone & Telegraph Corp., 197 USPQ2d 910
(TTAB 1978). Further, where the applicant’s mark is
identical to the registrant’s mark, as it is in this case,
there need only be a viable relationship between the
respective goods in order to find a likelihood of
Ser No. 76353042
4
confusion. In re Concordia International Forwarding Corp.,
222 USPQ 355 (TTAB 1983).
Applying these principles to the present case, we find
that the Trademark Examining Attorney has failed to
establish that applicant’s goods and registrant’s goods are
similar or related in any way which would result in source
confusion, notwithstanding that they are marketed under
identical marks. The Examining Attorney has asserted that
applicant’s goods and registrant’s goods “may be used in
the same contexts, by the same persons, to provide
protection to material surfaces” and thus “consumers of
coatings for [fiberglass material and wood] would, upon
seeing an identical trademark, likely believe both the
fiberglass and wood coatings come from the same source.”
(Brief, pp. 4-5). The Examining Attorney has submitted
copies of seven third-party registrations for marks that
cover coatings for various uses, including coatings for use
on wood and fiberglass materials.
Notwithstanding the Examining Attorney’s contention,
there is no evidence that purchasers or users of
applicant’s type of synthetic resins and polyester resin
gel coat would also be purchasers or users of registrant’s
paint for wood finishing. The respective goods, as
identified, do not appear to be identical, competitive, or
Ser No. 76353042
5
complementary, and there is insufficient evidence in the
record on which we may conclude that the goods are
otherwise related in any way. Further, the respective
goods, as identified, each have very different
applications. Applicant’s goods are highly specialized;
they are not in the nature of paint-like coatings which an
ordinary consumer may use. Rather, they are industrial
chemicals used in manufacturing articles and coatings used
in connection with fiberglass products. There is no
evidence that these types of goods are marketed in the same
channels of trade or to the same classes of purchasers, and
there is no basis in the record for concluding that they
would even be encountered by the same purchasers in
circumstances which might give rise to a likelihood of
confusion. In determining whether goods are related, the
inquiry should be on whether the goods appeal to the same
market, not whether one term may be found to describe the
goods. See In re Cotter and Company, 179 USPQ 828 (TTAB
1973) [no likelihood of confusion was found notwithstanding
the use of substantially similar marks on a metal primer
for use in conjunction with paints and an undercoating for
automobiles].
Further, at the very least, it would appear that
purchasers of applicant’s goods would be knowledgeable with
Ser No. 76353042
6
respect to the source of chemicals and coatings used in
manufacturing fiberglass products, and thus are likely to
know that a company offering paints for wood finishing is
not likely to be the source of chemicals and coatings for
use in manufacturing fiberglass products.
In view of the foregoing, we find that there is no
likelihood of confusion in this case.
Decision: The refusal to register under Section 2(d)
is reversed.