DST Manufacturing LLC

Trademark Trial and Appeal Board

Aug 12, 2013

No. 85163585 (T.T.A.B. Aug. 12, 2013)

Mailed:
Aug. 12, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

DST Manufacturing LLC
________

Serial No. 85163585
_______

John C. Linderman of McCormick Paulding & Huber LLP for DST
Manufacturing LLC.

Seth A. Rappaport, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______

Before Quinn, Grendel and Ritchie, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:
DST Manufacturing LLC (applicant) seeks registration
on the Principal Register of the mark NVIROCLEAN SPILL
REMEDIATION PRODUCT and design, depicted below, for goods
identified in the application as “granular absorbent
mineral-based composition for absorbing spills for floors.”1

1 Serial No. 85163585, filed on October 28, 2010. The
application is based on use in commerce under Trademark Act
Section 1(a), 15 U.S.C. §1051(a). February 2, 2010 is alleged in
the application as the date of first use of the mark, and March
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 85163585
2
The application includes a disclaimer of the words SPILL
REMEDIATION PRODUCT.

The Trademark Examining Attorney has issued a final
refusal to register applicant’s mark under Trademark Act
Section 2(d), 15 U.S.C. §1052(d). The Trademark Examining
Attorney contends that applicant’s mark as applied to
applicant’s goods so resembles the mark ENVIRO KLEAN,
previously registered on the Principal Register (in
standard character form; KLEAN disclaimed) for goods
identified in the registration as “chemical composition for
cleaning, protecting and maintaining masonry, natural
stone, tile, concrete, metal, glass, wood and similar

2, 2010 is alleged as the date of first use of the mark in
commerce. The application includes the following description of
the mark statement: “The mark consists of the stylized text
“NviroClean spill remediation product” and a mark over top of the
words to symbolize the curvature of the earth as well as a leaf
and a sprinkle of dust underneath.” The application includes a
statement that “Color is not claimed as a feature of the mark.”

Ser. No. 85163585
3
porous and non-porous building materials,”2 as to be likely
to cause confusion, to cause mistake, or to deceive.3
Applicant has appealed the final refusal. The appeal
is fully briefed.

2 Registration No. 1801352, registered on October 26, 1993.
Section 8 affidavit accepted; Section 15 affidavit acknowledged;
renewed.

3 The Trademark Examining Attorney also has issued final
refusals to register under Section 2(d) based on two other
registrations which also are owned by the owner of the cited ‘352
registration. The first of these is Reg. No. 1780982, which is
of the mark ENVIRO KLEAN (in standard character form; KLEAN
disclaimed) for goods identified as:

cleaning preparation for removing paint from
masonry, natural stone, tile, concrete, metal,
glass, wood, and other similar porous and non-
porous building materials; rust remover; asphalt
and tar remover; degreaser for masonry; detergent
for masonry; lime solvent for cleaning masonry;
metallic stain remover; limestone prewash;
limestone afterwash; smoke remover; graffiti
remover; and stripping preparation for paint and
other similar coatings.

The other cited registration is Reg. No. 3517095, which is of the
mark ENVIRO KLEAN SAFRESTORER (in standard character form; CLEAN
disclaimed [sic]), for goods identified as “cleaning preparations
for use on masonry, natural stone, tile, concrete, metal, glass,
wood, and similar porous and non-porous building materials.”
In this case, we shall base our Section 2(d) likelihood of
confusion findings and decision on only one of the registrations
cited by the Trademark Examining Attorney, i.e., the above-
referenced Reg. No. 1801352. Our finding that there is a
likelihood of confusion between applicant’s mark and this cited
registered mark (see discussion infra), suffices by itself as a
basis for affirming the Trademark Examining Attorney’s final
refusal to register applicant’s mark under Section 2(d). We need
not also find likelihood of confusion as to the other cited
registrations in order to affirm the refusal. See In re Max
Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010); In re Davey
Products Pty Ltd., 92 USPQ2d 1198, 1201 (TTAB 2009).

Ser. No. 85163585
4
After careful consideration of the evidence of record
and the arguments of counsel, we AFFIRM the refusal to
register.
Initially, we sustain the Trademark Examining
Attorney’s objection (stated in his brief on appeal) to the
evidence that applicant submitted for the first time with
its appeal brief. This evidence is untimely and shall be
given no consideration. See Trademark Rule 2.142(d), 37
C.F.R. §2.142(d). See also In re Iolo Technologies LLC, 95
USPQ2d 1498, 1500 n.3 (TTAB 2010); In re Binion, 93 USPQ2d
1531, 1533 (TTAB 2009).
Our likelihood of confusion determination under
Section 2(d) is a legal conclusion, based on an analysis of
all of the facts in evidence that are relevant to the
factors bearing on the likelihood of confusion issue (the
du Pont factors). See In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See
also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691
(Fed. Cir. 2005); In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
“While it must consider each factor for which it has
evidence, the Board may focus its analysis on dispositive
factors, such as similarity of the marks and relatedness of
Ser. No. 85163585
5
the goods.” Han Beauty Inc. v. Alberto-Culver Co., 236
F.3d 1333, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001).
Under the first du Pont factor, we determine the
similarity or dissimilarity of applicant’s mark and the
cited registered mark when they are viewed in their
entireties in terms of appearance, sound, connotation and
commercial impression. See In re E. I. du Pont de Nemours
& Co., supra, 177 USPQ at 567; see also Palm Bay Imports,
Inc., supra, 73 USPQ2d at 1692.
The test, under the first du Pont factor, 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 their overall commercial
impressions as to be likely to cause confusion when used on
or in connection with the goods and/or services at issue.
See Midwestern Pet Foods, Inc. v. Societe Des Produits
Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1449
(Fed. Cir. 2012); In re Iolo Techs, LLC,, supra, 95 USPQ2d
at 1499 (TTAB 2010). This necessarily requires us to take
into account the fallibility of memory over time and the
fact that the average purchaser retains a general rather
than a specific impression of trademarks. See In re
Association of the United States Army, 85 USPQ2d 1264, 1269
Ser. No. 85163585
6
(TTAB 2007); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d
1467, 1468 (TTAB 1988).
In the present case, we find, first, that the dominant
feature of applicant’s mark is the word element
“nviroclean.” Although the marks at issue must be
considered in their entireties, it is well-settled that one
feature of a mark may be found to be more significant than
another in terms of the mark’s function as a source-
indicator, and it is not improper to give more weight to
this dominant feature in determining the commercial
impression created by the mark, and in comparing the marks
at issue under the first du Pont factor. See In re Chatam
International Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946
(Fed. Cir. 2004). “Indeed, this type of analysis appears
to be unavoidable.” In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Here, the element “nviroclean” appears in very large
lettering and is the obvious focus of applicant’s mark.
The words SPILL REMEDIATION PRODUCT are presented in very
small font, and they also are generic and disclaimed. We
find that they contribute little or nothing to the source-
indicating significance of the mark. See In re National
Data Corp., supra, 224 USPQ at 749 (“[t]hat a particular
feature is descriptive or generic with respect to the
Ser. No. 85163585
7
involved goods or services is one commonly accepted
rationale for giving less weight to a portion of a
mark...”).
The design element of applicant’s mark certainly
contributes to the overall commercial impression of the
mark, but we find that its source-indicating significance
is outweighed by the prominent word element “nviroclean”
when we consider the mark as a whole. When a mark consists
of a word portion and a design portion, it often is the
word portion that is found to dominate the commercial
impression of the mark because it would be used by
purchasers to call for the goods. See M.C.I. Foods Inc. v.
Bunte, 96 USPQ2d 1544, 1551 (TTAB 2010); Anthony’s Pizza &
Pasta Int’l Inc. v. Anthony’s Pizza Holding Co., 95 USPQ2d
1271, 1279 (TTAB 2009).
For these reasons, although we are considering
applicant’s mark in its entirety, we find that it is the
word element “nviroclean” that dominates applicant’s mark,
and we therefore will accord more weight and significance
to that element in comparing the two marks.
Comparing the marks in terms of appearance,
applicant’s mark is depicted in stylized lettering and with
a design element, while the cited registered mark, ENVIRO
KLEAN, is registered in standard character form. However,
Ser. No. 85163585
8
because the cited registered mark is registered in standard
character form, the registrant is not limited as to the
manners in which the mark may be displayed. See Citigroup
Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1258-59 (Fed. Cir. 2011). We find that these
potential manners of display could include a display which
is similar to that of applicant’s mark in terms of size,
font, capitalization, etc.
The marks are dissimilar to the extent that
applicant’s mark includes a design element, while the cited
registration does not.
The cited registered mark separates ENVIRO and KLEAN
with a space in between, while applicant’s “nviroclean” is
depicted as a single word. However, in applicant’s mark as
displayed, “nviro” is depicted in italics while “clean” is
not, which serves to visually differentiate the two
elements from each other, even if not to the degree that
the space in between the two words in the cited registered
mark does.
As for the wording SPILL REMEDIATION PRODUCT in
applicant’s mark, it is depicted in very small letters, and
we find that it does not significantly serve to distinguish
the two marks visually.
Ser. No. 85163585
9
Taking all of these factors into account, especially
the fact that we must assume that the cited registered
standard character mark might be depicted in a font style
and size similar to applicant’s mark, we find that
applicant’s mark and the cited registered mark are similar
in terms of appearance. This is especially so given our
finding that the word element “nviroclean” dominates the
commercial impression of applicant’s mark.
In terms of sound, we find that the cited registered
mark ENVIRO KLEAN and the dominant feature of applicant’s
mark, i.e., the word element “nviroclean,” are essentially
identical. The absence of the initial “e” from the
beginning of applicant’s mark does not significantly affect
the pronunciation of applicant’s mark, if at all.
Likewise, the misspelling of the word “clean” as KLEAN in
the cited registered mark does not alter the pronunciation
of the mark or distinguish it from applicant’s mark
aurally. The marks sound different due to the presence of
the generic words SPILL REMEDIATION PRODUCT in applicant’s
mark. However, we find that the similarity in sound which
results from the presence of the identical-sounding
dominant feature “nviroclean” in applicant’s mark and
ENVIRO KLEAN in the cited registered mark outweighs the
Ser. No. 85163585
10
dissimilarity arising from the presence of the words SPILL
REMEDIATION PRODUCT in applicant’s mark.
In terms of connotation and commercial impression, we
find the two marks to be highly similar. The “nviro”
element of applicant’s mark clearly would be understood to
mean “enviro,” which itself would be readily understood as
connoting the word “environment.” The word ENVIRO in the
cited registered mark creates the same connotation and
commercial impression. The word “clean” in applicant’s
mark and the word KLEAN in the cited registered mark have
the same connotation, notwithstanding the misspelling of
the word in the cited registered mark. Together, both
marks combine the equivalent terms “nviro” or “enviro” and
the equivalent terms “clean” or “klean.” Both marks
connote and create the commercial impression of an
environmentally-friendly cleaning product.
ENVIRO KLEAN and “nviroclean” may be somewhat
suggestive as applied to the goods, but we find that even
if they are, they would have the same suggestive
significance in both marks. Finally, we find that the
generic and disclaimed words SPILL REMEDIATION PRODUCT in
applicant’s mark create a connotation for applicant’s mark
which is not present in the cited registered mark.
However, that difference in connotation goes merely to a
Ser. No. 85163585
11
description of applicant’s product, and does not
significantly distinguish the marks in terms of their
functions as indication of source.
Considering the marks in their entireties in terms of
appearance, sound, connotation and commercial impression,
we find that the marks, although not identical, are
similar. Applicant’s mark is dominated by the element
“nviroclean,” which is highly similar to the term ENVIRO
KLEAN which constitutes the whole of the cited registered
mark. We find that the similarity of the marks under the
first du Pont factor supports our conclusion that confusion
is likely.
The second du Pont factor requires us to determine the
similarity or dissimilarity of the goods as they are
identified in the application and in the cited
registration, respectively. See In re E. I. du Pont de
Nemours & Co., supra, 177 USPQ 563, 567. See also Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d
1001, 1004 (Fed. Cir. 2002).
The goods identified in applicant’s application are
“granular absorbent mineral-based composition for absorbing
spills for floors.”
The goods identified in registrant’s ‘352 ENVIRO KLEAN
registration are “chemical composition for cleaning,
Ser. No. 85163585
12
protecting and maintaining masonry, natural stone, tile,
concrete, metal, glass, wood and similar porous and non-
porous building materials.”
Thus, in pertinent part, the registrant’s goods as
identified in the registration include a chemical
composition used to clean natural stone, tile, concrete and
wood. We find that these materials would or could be used
for and could comprise floors, i.e., natural stone floors,
tile floors, concrete floors, and wood floors.
Applicant’s goods, as identified, are used for
absorbing spills on floors. “Floors” are broadly
identified in the application. We find that the types of
“floors” for which applicant’s product would be used
therefore would or could include the types of floors that
registrant’s product is used to clean, i.e., natural stone
floors, tile floors, concrete floors, and wood floors.
Based on these findings, we further find that
applicant’s and registrant’s respective goods are
complementary and could be used together to clean floors,
and that they therefore are similar and related for
purposes of the second du Pont factor. That is, when there
is a spill on a floor, including a floor of natural stone,
tile, concrete or wood, one would or could use applicant’s
product to initially absorb the spill and then, if
Ser. No. 85163585
13
necessary, also use registrant’s product to further clean
and/or finish cleaning the floor where the spill occurred.
It is well-settled that it is not necessary that the
respective goods be identical or even competitive in order
to find that they are related for purposes of our
likelihood of confusion analysis. “Even if the goods and
services in question are not identical, the consuming
public may perceive them as related enough to cause
confusion about the source or origin of the goods and
services.” Hewlett-Packard Co. v. Packard Press Inc.,
supra, 62 USPQ2d at 1004. The issue is not whether
consumers would confuse the goods themselves. Rather, the
goods need only be sufficiently related that consumers
would be likely to assume, upon encountering the goods
marketed under the marks at issue, that the goods originate
from, are sponsored or authorized by, or are otherwise
connected to the same source. See Black & Decker Corp. v.
Emerson Electric Co., 84 USPQ2d 1482, 1492 (TTAB 2007); In
re Wilson, 57 USPQ2D 1863, 1866-67 (TTAB 2001). We find,
for the reasons discussed above, that the requisite
relationship between the goods identified in the
application and the goods identified in the registration
exists here.
Ser. No. 85163585
14
As Exhibit B to its November 28, 2012 request for
reconsideration,4 applicant has made of record certain pages
from registrant’s website. Based on this evidence,
applicant argues that registrant’s goods primarily are for
use in connection with the restoration of old or
deteriorated buildings.5 Applicant also argues that, by
contrast, its granular absorbent product is primarily used
for spills in automotive garages and around the home.6
However, in comparing the goods under the second du
Pont factor, it is the identifications of goods in the
application and in the cited registration that control,
regardless of what the record might reveal as to the actual
nature of the identified goods. See Packard Press Inc. v.
Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1354

4 TICRS application record at incoming entry of 11/28/12, at pp.
48-54.

5 Registrant’s website includes the following text (according to
the TESS printouts of the cited registrations, PROSOCO is the
original owner of the cited registrations and apparently is
registrant’s prior name or is otherwise registrant’s
predecessor):

Turn back the hands of time with PROSOCO’s restoration
products for aged and historic masonry, stone and concrete
buildings. Biological and carbon staining make eyesores
out of landmark buildings – reveal their true, intended
beauty with cleaners and consolidation treatments that
bring new life to aging architecture.

6 Applicant’s specimen (product packaging) states that
applicant’s product cleans up spills of lubricants, oils and
fuels, coolants, chemicals, solvents, paint, liquid detergents,
liquid bio waste, food products, body fluids, “& more!”
Ser. No. 85163585
15
(Fed. Cir. 2000). “An applicant may not restrict the scope
of the goods covered in the cited registration by argument
or extrinsic evidence.” In re La Peregrina Ltd., 86 USPQ2d
1645 at 1647 (TTAB 2008). If the goods are identified
broadly in the application and/or the cited registration,
we must presume that they encompass all goods of the nature
and type identified. See In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993); In re Thor Tech
Inc., 90 USPQ2d 1634, 1638 (TTAB 2009).
Here, registrant’s goods, as they are identified in
the registration, are not necessarily limited to use for
building restoration. Nor are applicant’s goods, as
identified in the application, necessarily limited to
automotive garage and home use. Applicant’s asserted
limitations to the nature and usage of applicant’s and
registrant’s respective goods, even if correct, are not
relevant to our analysis here.7

7 Moreover, we note that the pages from registrant’s website
which applicant has made of record also show that registrant’s
product, named “Enviro Klean 2010 All Surface Cleaner,” is
described as a “multiple-use cleaner and degreaser” for general
home use, as well as for industrial use. For example:

Enviro Klean® 2010 All Surface Cleaner is a “next-
generation” product for cleaning and degreasing light-to-
heavily soiled stone, tile, masonry and much more.
Powerful enough for industrial use, flexible enough for
jobs around the house, space-saving EK 2010 replaces a host
of individual cleaning agents. It’s dilutable for home-use
on windows, bathroom tub and tile, counter tops and more.
It’s concentrated for the toughest industrial cleaning jobs
Ser. No. 85163585
16
In short, we find that applicant’s goods and
registrant’s goods, as identified in the application and
registration, respectively, are complementary products, and
that they thus are sufficiently related that source
confusion is likely to result if they were to be marketed
under similar marks. We find that this relatedness of the
goods under the second du Pont factor supports our
conclusion in this case that a likelihood of confusion
exists.
For all of the reasons discussed above, we find that
applicant’s mark and registrant’s mark are similar under
the first du Pont factor, and that applicant’s goods and
registrant’s goods are similar and related under the second
du Pont factor. We find that these similarities between
the marks and goods suffice to support a conclusion that a
likelihood of confusion exists.
We have considered all of applicant’s arguments to the
contrary, including any arguments not specifically

on concrete, metal and many other plant and warehouse
surfaces.”

Significantly for this case involving applicant’s goods designed
to clean spills on floors, registrant’s website also states that
registrant’s Enviro Klean® 2010 All Surface Cleaner product
“cleans countless surfaces and stains, from industrial flooring
to bathroom tub and tile,” and that it “cleans a wide variety of
surfaces and stains, from dirty grout joints to driveway oil
spots.” (Emphasis added.)

Ser. No. 85163585
17
discussed in this opinion, but we are not persuaded by
them. To the extent that any doubt might exist as to the
correctness of our conclusion that confusion is likely, we
resolve such doubt, as we must, against applicant. See In
re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259
(Fed. Cir. 2010).

Decision: The refusal to register is affirmed.