DBNA Trademarks Holding Inc.v.Tilco, Inc.

Trademark Trial and Appeal Board

Jun 17, 1998

No. 91099103 (T.T.A.B. Jun. 17, 1998)

Hearing: Paper No. 26
August 27, 1997 SIMMS/MD
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 17, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
DBNA Trademarks Holding Inc.
v.
Tilco, Inc.
_____
Opposition No. 99,103
to application Serial No. 74/526,133
filed on May 18, 1994
_____
Joseph B. Bowman of Kokjer, Kircher, Bowman & Johnson for
DBNA Trademarks Holding Inc.
Jerald E. Nagae of Christensen, O’Connor, Johnson, Kindness
for Tilco, Inc.
______
Before Simms, Seeherman and Walters, Administrative
Trademark Judges.
Opinion by Simms, Administrative Trademark Judge:
DBNA Trademarks Holding Inc. (opposer) has opposed the
application of Tilco, Inc. (applicant), a Washington
corporation, to register the mark VANGUARD for
“reconstruction services, namely, modification of pavement,
Opposition No. 99,103
2
streets and road surfaces to apply warning bumps.”1 In the
notice of opposition, opposer asserts that, through its
licensees, it makes and sells a variety of machines, tools
and accessories for material-removal operations including
such goods as “power operated asphalt, concrete, brick,
ceramic, glass, masonry, metal, refractory, stone, terrazzo,
tile, wall and cut-off saws, grinders, groovers, planers,
scarifiers, sanders, polishers, washers, particulate
collectors, drills, saw blades, wire brushes, profile
wheels, grinding wheels, lapidary blades, core bits and cup
wheels.” (Notice of Opposition, Par. 2) Opposer also
pleads ownership of a registration (Registration No.
674,041, issued February 17, 1959, Sections 8 and 15
affidavit filed, renewed) for the mark VANGUARD for abrasive
tools, particularly grinding wheels. Opposer asserts that
through its licensees and predecessors it has used this mark
for abrasive tools prior to any date that applicant may
assert, and that applicant’s mark so resembles opposer’s
previously used and registered mark as to be likely to cause
confusion, to cause mistake or to deceive. In its answer,
applicant has denied the essential allegations of the notice
of opposition.
Both parties have taken testimony, and the record of

1 Application Serial No. 74/526,133, filed May 18, 1994, based
upon applicant’s bona fide intention to use the mark in commerce
under Section 1(b) of the Act, 15 USC §1051(b).
Opposition No. 99,103
3
this case contains two testimony depositions (and exhibits)
submitted by opposer and one testimony deposition (and
exhibits) submitted by applicant. The application file also
forms part of this record. Briefs have been filed and an
oral hearing was held.
The Record
Mr. Lyle Stone, the president of the North American
sales division of opposer’s licensee, Diamant Boart, Inc.,
testified that Diamant Boart makes and sells abrasive
cutting tools (diamond saw blades and grinding wheels) under
the mark VANGUARD. These tools are used in opposer’s walk-
behind and ride-on equipment for cutting and grooving and/or
grinding concrete, asphalt as well as stone. The cutting
tools themselves range in price from $366 to around $1225,
while the concrete saws in which the cutting tools are used
may cost around $7,500. The grooving machines (or groovers)
and concrete saws (bearing other trademarks) may be used,
among other things, to cut grooves or channels into highway
(and sidewalk) surfaces into which highway marking systems
including bumps (made by others) may be installed. Stone
dep., 57, 60. Markers such as reflectors, speed bumps and
rumble strips may also be installed into the grooves or
channels formed by the use of opposer’s equipment. Grinders
and groovers are also designed to level or smooth a surface
and to leave behind a textured surface that greatly enhances
Opposition No. 99,103
4
the skid resistance of that surface. The equipment may also
be used to leave a depression that acts as a rumble strip or
a warning indicator to alert the public of a change in a
traffic pattern. Opposer’s goods, including its saw blades
and grinding wheels, are sold to distributors (full line,
specialty and industrial), rental houses or shops, large
professional cutters, highway contractors, building
contractors and welding supply houses, as well as to end
users needing equipment for material-removal operations.
The goods are promoted by way of catalogs, fliers, in trade
journals and at trade shows. Sales under the mark exceeded
$1.7 million in 1995. There have been no instances of
actual confusion involving opposer’s and applicant’s marks.
Opposer also took the testimony of Mr. Richard Norland,
manager of technical services of Diamant Boart. According
Mr. Norland, there are two methods of applying warning bumps
or tactile surfaces to alert motorists and pedestrians. One
of them is to grind or saw or groove a depression into the
road surface while the other is to apply a raised structure
as a tactile indicator. Norland dep., 8. With respect to
applicant’s services, Mr. Norland testified, at 10:
A. It’s quite similar to a method that
currently is described in the
industry as a Tactile Tile which are
large 2-foot by any dimen–-they can
either be square or rectangular or
linear—-long linear dimension; tiles
that have a raised bump on them and
that are affixed to a surface. [A]nd
Opposition No. 99,103
5
they are very similar also to
painted-on or glued-on speed bumps,
only they would be a long, thin
rectangular structure whereas this is
a series of dots or domes.
Applicant took the testimony of Mr. Jon Julnes, one of
its employees. With respect to its VANGUARD reconstruction
services and the “detectable warnings” that applicant
applies to surfaces, Mr. Julnes testified, at 5:
A. They are like Braille for your feet.
They allow a blind person to know
when they are about to enter either a
grade change or the transition point
from vehicular way and pedestrian
way, and they help a visually
impaired person or sight impaired,
any kind of lack or percentage loss
to be able to discern most of the
same things by vision rather than by
Braille or tactile.
Applicant applies to the top of a surface various bumps or
protrusions, some of which may result by pouring a liquid
over a mat or template.
According to Mr. Julnes, architects are normally the
“focal point” who contact applicant (Julnes dep., 15).
Building inspectors may also be involved. Applicant’s
reconstruction services are offered under a general building
contractor and the services are paid for by a store or
building owner. While applicant’s services vary in cost
from $12 to $17 per square foot, the total cost of any one
job is usually thousands of dollars. Applicant’s services
have been listed under the heading “Detectable Warnings” in
Opposition No. 99,103
6
construction directories. Applicant advertises its services
in construction newspapers and in trade magazines.
Mr. Julnes testified that applicant does not sell saws
or abrasive tools. Also, there have been no instances of
actual confusion or even inquiries concerning the
relatedness of the parties’ goods and services offered
under the mark VANGUARD.
The Parties’ Arguments
Opposer argues that its licensee Diamant Boart and its
predecessors have long used the mark VANGUARD for abrasive
tools, including diamond saw blades, for cutting pavement,
streets and road surfaces. Essentially, it is opposer’s
position that opposer’s products, on the one hand, may be
used to cut warning bumps into a roadway surface while
applicant’s services, on the other, may result in the
application of a similar tactile warning system on a
roadway. Opposer maintains that these two systems are in
direct competition. Opposer contends that its tools can
grind sections of roadway so that tactile tile may be
installed, or its equipment can cut or grind a roadway
surface so as to form a warning bump.
…The parties are direct competitors in
providing a tactile warning surface to
pavements, streets and road surfaces.
Both parties advertise and promote their
products to construction contractors.
Under such circumstances, the
possibility is great that a customer in
need of a tactile warning surface could
Opposition No. 99,103
7
use a Diamant Boart VANGUARD saw blade
to cut a pavement, street or road
surface in order to make the tactile
warning as an alternative to the
VANGUARD warning system offered by Tilco
[applicant], or that both products were
used in conjunction with one another in
order to install the warning surface.
Opposer’s brief, 12. Opposer argues that professional
cutters could use opposer’s cutting tools to install
applicant’s VANGUARD marking system. Finally, opposer
argues that any doubt in this case should be resolved in its
favor and against the newcomer.2
Applicant, on the other hand, maintains that, while
the marks of the parties are the same, its mark is used in
conjunction with the application of an epoxy-like liquid or
a resin to an asphalt or concrete surface in an operation
that involves no grinding, sawing or degrading of the
surface. Applicant contrasts its application of warning
bumps to opposer’s goods which cut, gouge or grind away a
surface using grinders, groovers, sanders, saw blades,
grinding wheels, etc. Opposer’s goods leave behind a

2 Opposer has also objected to certain of applicant’s exhibits on
the basis of lack of foundation, lack of authentication and
irrelevancy. In response, applicant argues that opposer’s
objections in its brief should be deemed to have been waived
because opposer did not appear at the deposition and,
consequently, raised no objections at that time. According to
applicant, opposer’s objections could have been cured if they
were promptly presented. Applicant relies upon Fed. R. Civ. P.
32(d) and Squirtco. v. Tomy Corp., 697 F.2d 1034, 216 USPQ 937,
939 n.4 (Fed. Cir. 1983). Opposer’s objections are not well
taken, and we have allowed applicant’s exhibits for whatever
probative value they may have.
Opposition No. 99,103
8
textured skid-resistant surface which, according to
applicant, does not resemble a warning bump, the result of
applicant’s services. Applicant states that none of
opposer’s abrasive tools are used in the provision of
applicant’s services. Applicant argues that there is no
evidence in this record that a consumer in need of a
tactile warning surface such as those described in
applicant’s application could use opposer’s VANGUARD saw
blade as an alternative. Moreover, applicant maintains
that opposer has not used the VANGUARD mark in connection
with the abrasive tools (grinding wheels) set forth in its
pleaded registration since 1989 but has only used the mark
in connection with diamond-tipped saw blades since that
time.3 Applicant maintains that the channels of trade are
also different with opposer’s goods being sold to
distributors, rental shops, professional cutters and road
construction contractors while applicant’s services are
promoted to building contractors and architects. Applicant
also points to the cost of the respective goods and
services, opposer’s saw blades costing over $300 to around
$1,300. Therefore, according to applicant, the purchasers

3 Applicant claims, therefore, that opposer’s registration is
“subject to cancellation.” Brief, 9. However, applicant did not
file a counterclaim to cancel opposer’s pleaded registration and,
therefore, we have considered that registration as valid and
subsisting. In any event, opposer has established prior common
law rights in the mark VANGUARD in connection with various
abrasive tools including saw blades.
Opposition No. 99,103
9
are careful and sophisticated. Applicant also argues that
opposer’s mark is not famous and that there have been no
instances of actual confusion with neither party in fact
ever having heard of the other before the filing of
applicant’s application.
Discussion and Opinion
The sole issue for our resolution is likelihood of
confusion. Priority is not an issue in view of opposer’s
valid and subsisting registration. See King Candy Co. v.
Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108 (CCPA
1974). However, even without the pleaded registration,
opposer’s priority is clear from the testimony and exhibits
of record.
Because the marks herein are identical, the resolution
of this case turns on the relationship of the goods and
services of the parties. After careful consideration of
this record and the arguments of the parties, we conclude
that confusion is unlikely. While one might envision a
scenario where the same purchaser is exposed to the marks
of both parties, we believe that such a scenario is quite
unlikely. Moreover, even if it should occur, the
likelihood of confusion under the circumstances would be
rather remote. It may be possible, for example, for a
building or a highway contractor to purchase some of
opposer’s equipment, including its VANGUARD saw blades, to
Opposition No. 99,103
10
perform a job during the construction of a building or a
highway, and also to employ applicant to perform its
reconstruction services (say, to apply warning bumps to a
sidewalk) under the service mark VANGUARD. However, even
if this were to occur, it is unlikely that the contractor
would be confused as to the source of the goods and
services under the marks. This is because, among other
reasons, opposer’s mark VANGUARD is used only on the saw
blades (or the grinding wheels) of opposer’s grinding or
grooving machines or concrete saws. It is not used on the
machines or saws themselves. Also, this mark is only one
of opposer’s marks employed on its equipment and
components.4 Moreover, a contractor, who must be assumed
to be a relatively sophisticated purchaser, is unlikely to
associate applicant and its reconstruction services with
opposer due to the similarity of the marks because
applicant’s services of applying warning bumps do not
involve the use of cutting machines or saws but merely the
application of warning bumps by means of placing a liquid
over a mat or a template. The application of warning bumps
to a surface has little or nothing in common with saw
blades and grinding wheels except for the fact that the

4 For example, opposer also uses the marks BANNER LINE, MILLENIUM
and SUPERLOK on its saw blades. We need not decide the
hypothetical question of whether confusion would be likely if
opposer were to use the mark VANGUARD on its grooving and
Opposition No. 99,103
11
latter may be used, at least in one application, to create
grooves or channels for the placement of warning devices.
Accordingly, even if there were common purchasers of
opposer’s goods and applicant’s services, it is our
conclusion that it is unlikely that any confusion as to
source would occur.
Decision: The opposition is dismissed.
R. L. Simms
E. J. Seeherman
C. E. Walters
Administrative Trademark
Judges, Trademark Trial
and Appeal Board

grinding machines, although this would undoubtedly present a
closer case.