Everdry Marketing & Management, Inc.v.Evercrete Group

Trademark Trial and Appeal Board

Mar 2, 2017

No. 91220965 (T.T.A.B. Mar. 2, 2017)

Mailed:
March 2, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Everdry Marketing & Management, Inc.
v.
Evercrete Group
_____

Opposition No. 91220965
to application Serial No. 86071761
_____

W Scott Harders and Chad R. Rothschild of Brennan Manna & Diamond, LLC for
Everdry Marketing & Management, Inc.

Robert W. Zelnick of McDermott Will & Emery LLP for Evercrete Group.
_____

Before Quinn, Taylor and Ritchie, Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Evercrete Group (“Applicant”) seeks to register on the Principal Register the
mark shown below,

for goods identified as
Chemical additives for protecting or sealing concrete;
concrete preservative, namely, a liquid which penetrates
through the surface of concrete, cement, granite and brick
to make it dustproof, waterproof, crumble proof and wear
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Opposition No. 91220965

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proof; chemical products for use in the manufacture,
preparation and treatment of concrete; chemical
compositions for hardening, weatherproofing and
waterproofing concrete; preservatives for tiles, masonry,
cement, wood or brickwork; chemical compositions and gels
for sealing, waterproofing, hardening and preserving
concrete in International 1; and
Oils for use as protective coatings for concrete; oils for use
as concrete preservatives; oils for use as protective coatings
for wood; oils for use as wood preservatives; sealer coatings
for use in sealing cement surfaces; sealer coatings for use
in sealing wood surfaces; wood preservative in
International Class 2.1
Everdry Marketing & Management, Inc. (“Opposer”) has opposed registration
on the ground that Applicant’s mark, when used in connection with Applicant’s goods,
so resembles Opposer’s previously registered marks, including the mark in
Registration No. 2006159,2 EVER CRETE (in typed format)3, for “high strength
mortar suitable as a topping or patch mix for grouting material, crack filler, joint
filler, resurfacing material for concrete, material for stuccoing walls”4 in
International Class 18 as to be likely to cause confusion.

1 Serial No. 86071761was filed on September 23, 2013, based on Applicant’s asserted date of
first use of the mark anywhere and in commerce for both classes of goods of November 2004.
2 Issued October 8, 1996; second renewal January 23, 2016.
3 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings.
A typed mark is the legal equivalent of a standard character mark. TRADEMARK MANUAL OF
EXAMINING PROCEDURE (“TMEP”) § 807.03(i) (2017).
4 Opposer also pleaded ownership of the following registrations: Registration No. 1412615
for the mark EVER-DRY; Registration No. 180343 for the mark EVERDRY; Registration No.
3196495 for the mark EVERDRY; Registration No. 1891372 for the mark IT’S NOT DRY ‘TIL
IT’S EVERDRY; Registration No. 4205703 for the mark ; Registration No.
1537715 for the design mark ; Regstration No. 2156829 for the desing mark ;
Opposition No. 91220965

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Applicant, in its answer, has denied the salient allegations in the notice of
opposition.
Record5
By operation of Trademark Rule 2.122, 37 CFR §2.122, the record includes
the pleadings and the file of the subject application. The record also includes the
following.
Opposer’s notice of reliance6 on:
• A certified copy of pleaded Registration No. 2006159
showing the current status and title in the
EVERCRETE mark
• Printouts from the Trademark Status & Document
Retrieval (“TSDR”) database showing the current
status and title of Opposer’s remaining pleaded
registrations

and Registration No. 2176881 for the design mark . Although Opposer properly made
these registrations of record during its testimony period, none were referenced in the brief.
In any event, we have focused our discussion on Opposer’s pleaded Registration No. 2006159
for the mark EVER CRETE for, inter alia, “high strength mortar suitable as a … resurfacing
material for concrete,” as this mark and goods are the closest to Applicant’s mark and goods.
To the extent that there would be confusion with the ‘159 registration, it would serve little
purpose to consider the other registrations. And if there is no likelihood of confusion with the
‘159 registration, there would similarly be no likelihood of confusion with the other
registrations. In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
5 Citations to the record are to TTABVUE, the docket history system for the Trademark Trial
and Appeal Board. Because the Board primarily uses TTABVUE in reviewing evidence, the
Board prefers that citations to material or testimony in the record that has not been
designated confidential include the TTABVUE docket entry number and the TTABVUE page
number. For material or testimony that has been designated confidential and which cannot
be viewed on TTABVUE, the TTABVUE docket entry number where such material or
testimony is located should be included in any citation. See Turdin v. Trilobite, Ltd., 109
USPQ2d 1473, 1476 n.6 (TTAB 2014).
6 7 TTABVUE.
Opposition No. 91220965

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Applicant’s Notice of Reliance7 on:
• A copy of a third-party registration taken from the
TSDR data base for the mark EVERCRETE8
• A copy of cancelled (by surrender) Registration No.
397748 for the mark EVERCRETE for “a concrete
preserver ... to make it dustproof, waterproof,
crumbleproof, [and] wearproof,” owned at
cancellation by H-CAP Limited
• A copy of a “Certificate of Incorporation on Change
of Name,” reflecting that on February 5, 2007, the
entity known as “H-CAP Limited” was renamed
“Evercrete Group”
Only Opposer filed a brief.
Standing and Priority
Opposer has demonstrated through the certified copy made of record with its
notice of reliance that it is the owner of its pleaded registration and that its
registration is valid and subsisting. Because Opposer’s registration is properly of
record, Opposer has established its standing. See Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). In addition, priority of
use is not an issue in the opposition with respect to Opposer’s pleaded mark for the
goods listed in that registration. See King Candy Co. v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
We turn next to the issue of likelihood of confusion.

7 8 TTABVUE.
8 This registration is more fully discussed, infra.
Opposition No. 91220965

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Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the facts
in evidence that are relevant to the factors bearing on the likelihood of confusion
issue. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976). These factors, and the other relevant du Pont factors in the
proceeding now before us, are discussed below. As noted above, we focus on Opposer’s
Registration No. 2006159 (EVER CRETE). See Max Capital Group Ltd., 93 USPQ2d
at 1245.
Similarity/Dissimilarity of the Marks
We first consider the du Pont factor of the similarity/dissimilarity of the marks
and compare them, as we must, in their entireties in terms of sound, appearance,
meaning and commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). However, there is
nothing improper in stating that, for rational reasons, more or less weight has been
given to a particular feature of the mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). That is, “[t]he proper test is not a side-by-
side comparison of the marks, but instead ‘whether the marks are sufficiently similar
in terms of their commercial impression’ such that persons who encounter the marks
Opposition No. 91220965

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would be likely to assume a connection between the parties.” Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(citation omitted). See also 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 mem., 972 F.2d 1353
(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. L’Oreal
S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); 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).
We find, on comparison, that Applicant’s mark and Opposer’s
mark EVER CRETE are similar in appearance and sound in that the marks include,
or are wholly comprised of, the two-word term EVER CRETE/EVERCRETE as the
dominant or sole part of each. The visual differences between the marks do not suffice
to distinguish them. First, the presence or absence of a space before CRETE does
little, if anything, to distinguish the two marks. See In re Iolo Technologies, LLC, 95
USPQ2d 1498 (TTAB 2010) (difference between ACTIVECARE and ACTIVE CARE
has no trademark significance); Seaguard Corp. v. Seaward Int'l, Inc., 223 USPQ 48,
51 (TTAB 1984) (SEAGUARD and SEA GUARD “are, in contemplation of law,
identical”). Nor is the upper and lower case lettering of Applicant’s mark so stylized
that the stylization creates a unique commercial impression apart from the words
themselves and, thus, the stylization does not obviate the similarities between the
Opposition No. 91220965

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terms. Moreover, Opposer’s mark is in typed or standard character format and, as
such, its display is not limited to any particular font, style, size, or color, and we
therefore must consider that Opposer’s mark might be used in any stylized display,
including the same or similar stylization to the lettering used by Applicant. See In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909-10 (Fed. Cir. 2012); Citigroup
Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed.
Cir. 2011).
Likewise, the eagle design element of Applicant’s mark fails to distinguish it
from the pleaded mark. Where both words and a design comprise the mark (as in
Applicant’s mark), then the words are normally accorded greater weight because the
words are more likely to make an impression upon purchasers, would be remembered
by them, and would be used by them to request the goods and/or services. In re Viterra
Inc., 101 USPQ2d at 1908, citing CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198,
200 (Fed. Cir. 1983) (“in a composite mark comprising a design and words, the verbal
portion of the mark is the one most likely to indicate the origin of the goods to which
it is affixed”); Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424,
1430-31 (TTAB 2013); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB
1987). See also Giant Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565, 218
USPQ 390 (Fed. Cir. 1983). While the design is clearly noticeable, it is the literal
element EVERCRETE that must be accorded greater weight because it is the part of
Applicant’s mark that will be used to call for Applicant’s goods.
Opposition No. 91220965

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Accordingly, and while differences admittedly exist between the respective
marks when viewed on the basis of a side-by side comparison, we find that when
considered in their entireties, the marks are not only substantially similar in
appearance and sound due to the shared term EVERCRETE/EVER CRETE but, in
light thereof, they are substantially similar in connotation and convey a substantially
similar commercial impression. Thus, the factor of the similarity of the marks favors
Opposer.
The Goods/Channels of Trade/Classes of Consumers
We next consider whether the goods at issue are related and their channels of
trade overlap in such a manner as to cause a likelihood of confusion. In making our
determination regarding the relatedness of the parties’ goods, we must look to the
goods as identified in the application and in the pleaded registration. Hewlett-
Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir.
2002). The respective goods need not be identical or directly competitive in order for
there to be a likelihood of confusion. Rather, they need only be related in some
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.9 In re Martin's Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).

9 Contrary to Opposer’s contention, the marks are not legally identical simply because the
literal elements are virtually the same; therefore more than a viable relationship between
the goods must be found. But see Iolo Technologies LLC, 95 USPQ2d at 1499; In re Concordia
International Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983).
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Opposer’s goods are identified as “high strength mortar suitable as a topping or
patch mix for grouting material, crack filler, joint filler, resurfacing material for
concrete, material for stuccoing walls” and Applicant’s goods are identified as,
Chemical additives for protecting or sealing concrete;
concrete preservative, namely, a liquid which penetrates
through the surface of concrete, cement, granite and brick
to make it dustproof, waterproof, crumble proof and wear
proof; chemical products for use in the manufacture,
preparation and treatment of concrete; chemical
compositions for hardening, weatherproofing and
waterproofing concrete; preservatives for tiles, masonry,
cement, wood or brickwork; chemical compositions and gels
for sealing, waterproofing, hardening and preserving
concrete; and
Oils for use as protective coatings for concrete; oils for use
as concrete preservatives; oils for use as protective coatings
for wood; oils for use as wood preservatives; sealer coatings
for use in sealing cement surfaces; sealer coatings for use
in sealing wood surfaces; wood preservative.
Because Opposer did not introduce into the record any evidence regarding the
relatedness of the parties’ goods, we consider whether the goods are related on the
face of their respective identifications. See In re Iolo Technologies, LLC, 95 USPQ2d
at 1500 (“Here, based on the identifications themselves, we find that applicant offers
a product that is complementary in function and purpose to the [services] offered by
registrant.”). Based on the identifications themselves, we find Applicant’s and
Opposer’s recited goods are related and complementary products used in the concrete
industry to protect, seal, preserve and resurface concrete. Moreover, Applicant’s
chemical additives, compositions and gels, as well as Applicant’s oils, could be used
on and together with Opposer’s high strength mortar used as concrete resurfacing
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material to seal, protect and preserve the resurfaced concrete, resulting in reduced
wear and tear and a more durable, stain proof and weatherproof surface.
Given the related and complementary uses, it is highly likely that the parties’
respective goods will be brought to the attention of consumers in a manner that would
give rise to a mistaken belief that they emanate from the same source, particularly
given the substantial similarities of their respective marks. We need not discuss the
similarity of all of Applicant’s goods, e.g., the chemical additives and oils used in
connection with tile, masonry, brick and wood surfaces, because it is sufficient for an
Opposer to prevail on likelihood of confusion claim by showing that relatedness
between any item encompassed within a class in the identification of goods in the
application and pleaded registration. Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Computer v.
TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB 2007).
Furthermore, where the goods in an application or pleaded registration are
broadly described, such that there are no restrictions as to trade channels and
purchasers, it is presumed that the identification of goods encompasses not only all
goods of the nature and type described therein, but that the identified goods are
provided in all channels of trade which would be ordinary therefor, and that they
would be purchased by all potential customers. See, e.g., In re Melville Corp., 18
USPQ2d 1386, 1388 (TTAB 1991); In re Elbaum, 211 USPQ 639 (TTAB 1981).
Accordingly, we presume that the goods identified in the involved application
and Opposer’s registration will be offered in all usual channels of trade for such goods,
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including hardware and home improvement stores, and to all usual classes of
purchasers, including the general public seeking such items. We thus find, at a
minimum, that the channels of trade and classes of purchasers overlap.
We thus find that the du Pont factors of the relatedness of the goods, channels
of trade and classes of purchasers weigh in favor of Opposer.
The Number and Nature of Similar Marks in use on Similar Goods
Although Applicant did not submit a brief, Applicant made of record
Registration No. 4058026, a third-party registration for the trademark EVERCRETE
for “well bore cementing services” which, as Applicant asserts in its notice of reliance,
“bears on the scope of trademark rights asserted by Opposer.” 8 TTABVUE 2. We
recognize that in appropriate cases third-party registration evidence may show that
a term carries a highly suggestive connotation in the relevant industry and therefore
may be considered somewhat weak, even where the specific extent and impact of the
usage has not been established. Jack Wolfskin Ausrustung Fur Draussen GmbH v.
New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir.
2015); Juice Generation, Inc. v. GS Enterprises LLC, 794 F.3d 1334, 115 USPQ2d
1671, 1675 (Fed. Cir. 2015). In the present case, however, a single third-party
registration is insufficient to convince us that the term EVERCRETE is so weak when
used in connection with goods or services associated with the cement industry that
the public would be able to distinguish the source of Applicant’s goods from those of
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Opposer by the minor differences in the respective marks. Accordingly, this du Pont
factor is neutral.
Other factors
Lastly, Applicant has made of record its previously-owned and now cancelled
Registration No. 397748 for the mark EVERCRETE for “concrete preserver- namely
a liquid which penetrates through the surface of concrete, cement, granite, brick, etc.,
to make it dustproof, waterproof, crumbleproof, wearproof” in International Class 12,
again stating in its notice of reliance that the registration “was valid and subsisting
at the time that Opposer applied to register the trademark rights asserted by
Opposer, and [this] bears on the scope of trademark rights asserted by Opposer.” 8
TTABVUE 2. First, as Opposer observes in its brief, a cancelled registration is not
evidence of anything except that the registration issued; it is not evidence of any
presently existing rights in the mark shown in the registration, or that the mark was
ever used. TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE
(“TBMP”) Section 704.03(b)(1)(A) (2017). The fact that the Examining Attorney
representing the Office during prosecution of Applicant’s application withdrew a
refusal to register issued pursuant to Section 2(d) of the Trademark Act10 on the basis
of Applicant’s cancelled registration is of little relevance, inasmuch as the Board is
not bound by the prior decisions of examining attorneys in allowing marks for
registration. As has often been stated, each case must be considered on its own merits

10 The Section 2(d) refusal was base in part on Opposer’s pleaded EVERCRETE registration
(Registration No. 2006159).
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based on evidence of record at the time registration is sought. See In re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001); In re Scholastic Testing
Service, Inc., 196 USPQ 517 (TTAB 1977). See also, In re Sunmarks Inc., 32 USPQ2d
1470, 1472 (TTAB 1994) (Applicant who has previously registered a mark is not
guaranteed the right to obtain additional registrations for the mark if an intervening
registration creates conflict).
Conclusion
After considering all of the evidence made of record pertaining to the issue of
likelihood of confusion, as well as all of the arguments related thereto, including any
evidence and arguments not specifically discussed in this opinion, we conclude that
confusion is likely between Applicant’s mark for the identified goods
and Opposer’s EVERCRETE mark for, inter alia, “high strength mortar suitable as a
… resurfacing material for concrete.” We find so principally due to the substantial
similarities between the marks, the related and complementary nature of the goods,
and the presumed overlap in trade channels and purchasers.
Decision: The opposition is sustained, and registration to Applicant is refused.