Ecolab Inc.v.Sumecht NA Inc. dba Sumer North America, Inc.

Trademark Trial and Appeal Board

Jul 29, 2013

No. 91198851 (T.T.A.B. Jul. 29, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
July 29, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Ecolab Inc.

v.

Sumecht NA Inc. dba Sumer North America, Inc.
_____

Opposition No. 91198851
_____

Scott W. Johnston of Merchant Gould PC for Ecolab Inc.

Kenneth H. Johnson, Esq. for Sumecht NA Inc.
_____

Before Zervas, Bergsman and Greenbaum, Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:

Applicant, Sumecht NA Inc. dba Sumer North America, Inc., seeks
registration on the Principal Register of the standard character mark
CLEANFORCE for “electric pressure washers” in International Class 7.1 Opposer,
Ecolab Inc., opposes registration of applicant’s mark on the ground that, as applied
to applicant’s goods, the mark so resembles opposer’s previously used and registered

1 Application Serial No. 76703357, filed June 14, 2010, claiming first use and first use in
commerce in June 2009.
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mark CLEAN FORCE for a wide array of janitorial supplies, including cleaning
preparations and related dispensers, as to be likely to cause confusion under Section
2(d) of the Lanham Act, 15 U.S.C. § 1052(d). Opposer pleaded ownership of
Registration No. 2719458 for the standard character mark CLEAN FORCE
(CLEAN disclaimed) for:
Cleaning preparations; namely, hand soaps, hand lotions,
bathroom cleaners, drain cleaners, tile cleaners, all-
purpose cleaners, glass cleaners, oven cleaners,
degreasers and descalers; Floor finishing preparations;
namely, floor cleaners, strippers, rejuvenators, sealers,
finishes and buffing compounds; Laundry products;
namely, detergents, bleaches, fabric softeners, water
softeners and laundry sours; Detergents, rinse additives,
and presoaks for use in manual and automatic ware
washing machines, in International Class 3;
Sanitizers for use in manual and automatic warewashing
machines, in International Class 5; and
Soap dispensers and dispensers for commercial and
institutional cleaning and sanitizing products, in
International Class 21.
Applicant, in its answer, denied the salient allegations in the notice of
opposition, and asserted several “affirmative defenses” which were not pursued at
trial. The “affirmative defenses” are deemed to have been waived and are given no
further consideration.
The Record
The record includes the pleadings and, by operation of Trademark Rule
2.122(b), 37 C.F.R. § 2.122(b), applicant’s application file. Opposer submitted, with
its notice of opposition, a printout of its pleaded registration from the USPTO
Trademark Electronic Search System (TESS) which shows that the registration is
Opposition No. 91198851

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valid, subsisting and owned by opposer.2 Opposer also submitted a notice of
reliance on third party registrations, applicant’s answers to opposer’s first set of
requests for admissions, and excerpts from applicant’s answers to opposer’s first set
of interrogatories. In addition, opposer submitted the testimony depositions, with
accompanying exhibits, of Mary Pellegrom, opposer’s Marketing Director, and Keith
Backhaus, opposer’s Senior Marketing Manager in the Institutional Division.3
Applicant did not take any testimony or file a brief. However, applicant
submitted a notice of reliance on printouts from opposer’s website, The Power
Washer Advisor website and the Global Sources website.4
The Parties
With more than $6 billion in global sales, and more than 26,000 associates
worldwide, opposer provides cleaning, sanitizing, food safety and infection control
products and services to industries including the food, energy, healthcare,
institutional and hospitality markets in more than 160 countries. App. Notice of
Reliance (NOR) . Since 1999, opposer has manufactured and sold a line of cleaning
products under the mark CLEAN FORCE. Backhaus Dep., p. 10. These products
generally are used to clean kitchens, restrooms, living areas and laundry. Backhaus
Dep. Exh. 2. Since their introduction in 1999, the number of different cleaning

2 Pleaded registrations may be made of record by attaching “a current printout of
information from the electronic database records of the UPTO showing the current status
and title of the registration.” Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1).
3 Certain testimony and exhibits were designated as confidential, and we will discuss those
portions of the record in general terms. In addition, while we only discuss certain portions
of the record in the decision, we have considered the entire record in arriving at our
determination.
4 The January 3, 2013 Board order struck the remaining materials that applicant
submitted under the same notice of reliance.
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products sold under the CLEAN FORCE mark has grown from approximately 8 to
12 to more than 150. Backhaus Dep., pp. 9-10, Exh. 2; Pellegrom Dep. Exh. 37.
Opposer also manufactures and sells pressure washers under the RABURN and
PORTA-WASHER marks. Backhaus Dep., pp. 21-22, Exhs. 8-9; App. NOR. In
conjunction with its distribution partner, U.S. Foodservice, opposer provides
CLEAN FORCE cleaning products and related equipment to between three and four
hundred thousand customers nationwide each year. Backhaus Dep., p. 13.
Applicant has used the mark CLEANFORCE on electric pressure washers
since June 2009. Applicant’s Response to Interrogatory No. 4. Applicant first used
the mark in commerce in May 2010, when it shipped an electric pressure washer
from China to The Home Depot in Arizona. Applicant’s Response to Interrogatory
No. 5. Applicant only uses the CLEANFORCE mark in the United States in
connection with electric pressure washers, and only sells them at The Home Depot
and Northern Tools & Equipment. Applicant’s Responses to Interrogatory Nos. 22
and 18, respectively.
Standing/Priority
Because opposer has made the pleaded registration properly of record,
opposer has established its standing to oppose registration of applicant’s mark, and
its priority is not in issue as to the goods in the registration. See Jewelers Vigilance
Committee, Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987;
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA
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1982); and King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974).
Accordingly, we turn to the issue of likelihood of confusion under Section 2(d).
Likelihood of Confusion
Our likelihood of confusion determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are relevant to the factors set
forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003).
We begin with the strength of opposer’s CLEAN FORCE mark in order to
determine the scope of protection to be accorded opposer’s mark. Recot Inc. v. M.C.
Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000). Although opposer
did not plead or argue that the CLEAN FORCE mark is famous, opposer contends
that the mark is well known, and that “[t]he strength of the CLEAN FORCE mark
is derived, in part, from its suggestive nature as well as from the extensive goodwill
cultivated by Ecolab.” Br., p. 14. In making this argument, opposer acknowledges
that CLEAN FORCE is suggestive as to applicant’s goods. As such, CLEAN
FORCE would not be viewed as inherently strong. However, the record shows that
opposer’s mark is commercially strong due to opposer’s extensive use on various
cleaning products, and in connection with the sale of those products since 1999. See
generally Backhaus and Pellegrom Deps.
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The commercial strength of a mark “may be measured indirectly, among
other things, by the volume of sales and advertising expenditures of the goods
traveling under the mark, and by the length of time those indicia of commercial
awareness have been evident.” Bose Corp. v. QSC Audio Products, Inc., 293 F.3d
1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002). In addition, some context in which to
place raw statistics may be necessary. Id. at 1309. To this end, Ms. Pellegrom’s
testimony confirms the sales success of CLEAN FORCE brand cleaning products,
which she describes as “significant” (Pellegrom Dep., p. 13), and Mr. Backhaus
testified as to the growth of the number of such products from 8 to 12 in 1999 to
more than 100 currently.5 Backhaus Dep. p. 9. While the advertising figures are
not substantial, Mr. Backhaus testified that much of the promotion is done in
conjunction with U.S. Foodservice (U.S. Foods), opposer’s distributor partner,
through which opposer provides CLEAN FORCE cleaning products and related
equipment to approximately 300,000 to 400,000 customers throughout the United
States each year. Backhaus Dep., p. 13. Mr. Backhaus also testified that he was
unaware of any other third-party uses of CLEAN FORCE for cleaning preparations
or cleaning equipment. Id., pp. 14-15.
While the renown of opposer’s mark does not rise to the level of a famous
mark, we find that it is commercially strong and entitled to a broad scope of
protection.

5 Opposer’s confidential “US Foods/Clean Force Product Offering”, submitted as Pellegrom
Dep. Exh. 37, displays approximately 150 cleaning products.
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We now turn to the similarity or dissimilarity of the marks CLEAN FORCE
and CLEANFORCE when compared in their entireties in terms of appearance,
sound, connotation and commercial impression. See Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691
(Fed. Cir. 2005). Applicant admits that the involved marks are identical in sound.6
The marks also are nearly identical in appearance and structure in that both begin
with the word CLEAN followed by the word FORCE, and differ only by the space
between the words in opposer’s mark. Given the overall similarities in appearance
and identity in sound, the presence or absence of a space between the words is
insignificant, and does not distinguish the marks in meaning or commercial
impression. The record confirms the insignificance of the presence or absence of the
space in the parties’ marks – both parties actually display the marks in almost
identical fashion, with the word CLEAN stacked over the word FORCE, and the
word FORCE appearing in a slanted font. Backhaus Dep. Exh. 3.; Pellegrom Dep.
Exh. 34. We therefore consider the marks to be virtually identical, and resolve this
issue in favor of a finding of likelihood of confusion.
We now consider the goods, channels of trade and classes of purchasers. We
must make our determination under these factors based on the goods as they are
identified in the application and registration. See Octocom Systems Inc. v. Houston
Computers Services, Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990). The
goods need not be identical or directly competitive in order for there to be a
likelihood of confusion. Rather, the respective goods need only be related in some

6 Applicant’s Response to Opposer’s Request for Admission No. 24.
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manner or the conditions surrounding their marketing be such that they could be
encountered by the same purchasers under circumstances that could give rise to the
mistaken belief that the goods come from a common source. Edwards Lifesciences
Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1410 (TTAB 2010). Finally, where, as
here, the respective marks are virtually identical, the relationship between the
goods need not be as close to support a finding of likelihood of confusion as would be
required in a case where there are differences between the marks. In re Concordia
Int’l Forwarding Corp., 222 USPQ 355 (TTAB 1983).
The record clearly shows that electric pressure washers and cleaning
preparations are complementary items which consumers often use together.
Backhaus Dep., pp. 13, 15-17, Exhs. 5-6. If similar marks appear on
complementary goods, then there is a strong likelihood that buyers will think that
there is some connection between the sources of such goods. See, e.g., In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1567 (Fed. Cir. 1994); Polo Fashions,
Inc. v. La Loren, Inc., 224 USPQ 509, 511 (TTAB 1984).
In response to Request for Admission No. 13, applicant admitted that
“electric pressure washers are used with cleaning preparations at times.”
Similarly, in response to Interrogatory No. 22, which asks applicant to “describe
with specificity the features of Applicant’s CLEANFORCE products and whether
they can be used with cleaning detergents”, applicant states “the Applicant’s
CLEANFORCE products are electric pressure washers which can be used with
cleaning detergents.”
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Many pressure washers, including applicant’s, are designed with detergent
bottle assemblies for dispensing cleaning solutions while the product is in use.
Backhaus Dep., pp. 13, 26, 27, Exhs. 3 and 4. Products such as opposer’s CLEAN
FORCE cleaning preparations and PROFORCE7 heavy degreasers can be used with
applicant’s CLEANFORCE pressure washers. Backhaus Dep., p. 13; App. NOR.
Similarly, opposer’s RABURN and PORTA-WASHER pressure washers, which are
marketed in conjunction with the ECOLAB brand name, can be used with any type
of pressure washer cleaning solution. Backhaus Dep., pp. 21-22, Exhs. 8-9; App.
NOR.
Although applicant does not recommend a particular brand of cleaning
product for use with its CLEANFORCE power washers, most companies that sell
pressure washers also sell associated cleaning products in “kind of a razor
blade/razor combination.” Backhaus Dep., p. 27. The third-party registrations and
internet materials of record, substantiated by Mr. Backhaus’ testimony, further
support that both types of products commonly are sold by the same company under
the same mark. Mr. Backhaus testified as to 22 marks, including opposer’s
ECOLAB house mark, and third-party marks such as DIRT DEVIL, SIMONIZ,
KARCHER and HOMELITE, that currently are used and/or registered in
connection with pressure washers and cleaning preparations. Backhaus Dep., pp.
26-38, Exhs. 12-32. In this vein, opposer’s ECOLAB CLEANING CADDY pressure

7 Although opposer did not plead a family of FORCE marks, Mr. Backhaus testified as to
opposer’s ORANGE FORCE cleaning products. Backhaus Dep., p. 20. In addition,
applicant’s NOR includes printouts from Sam’s Club displaying opposer’s PURE FORCE
cleaning products.
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washer system includes a spray wand for pressure washing and a lock-and-key
product dispenser, which guarantees that consumers only use ECOLAB cleaning
products in connection therewith. Backhaus Dep. pp. 16, 18, Exhs 5-7.
Because the goods are closely related and because there are no limitations in
either the registrations or the subject application, we must presume that applicant's
and opposer's goods will be sold in the same channels of trade that are normal for
such items, such as hardware stores, home improvement stores, specialty tool stores
and general merchandise stores (Backhaus Dep., pp. 23-25, Exhs. 10-13), and that
they will be bought by the same classes of purchasers. See Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). The record
confirms this presumption: Home Depot, Northern Tool & Equipment and Menards
all display pressure washers and cleaning preparations in the same section and/or
next to each other. Backhaus Dep., 15, 24, 25 and 40, Exhs. 10 and 11.
In view of the above, the du Pont factors of the similarity of the goods, the
channels of trade and class of purchasers favor a finding of likelihood of confusion.
In conclusion, because opposer’s mark is commercially strong, the marks are
virtually identical, the goods are commercially related, complementary items, and
the channels of trade and classes of consumers overlap, confusion is likely between
opposer’s mark CLEAN FORCE and applicant’s mark CLEANFORCE.
Decision: The opposition is sustained and registration to applicant is
refused.