Frank Carman

Trademark Trial and Appeal Board

Sep 28, 2018

No. 87258281 (T.T.A.B. Sep. 28, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 28, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Carman
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Serial No. 87258281
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Elizabeth Pasquine of LegalForce RAPC Worldwide PC,
for Frank Carman.
Jimmy Stein, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
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Before Kuhlke, Wolfson and Lykos,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
Frank Carman (“Applicant”) seeks to register on the Principal Register the
standard character mark WEATHERTECH for “enamel paints; urethane paints;
vitreous enamel paints; paints, aerosol spray paints for painting metal surfaces;
coatings for use in painting metal roofs; protective coating for exterior and interior
use on metal surfaces; primers; primers used to promote adhesion; silicone primers;
polyurethane primers; primers for preparing surfaces to be painted; pre-treatment
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coatings for inorganic metal surfaces to improve adhesion and corrosion resistance”
in International Class 2.1
Registration was refused under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), on the ground that Applicant’s applied-for mark so resembles the
registered mark WEATHERTECH also in standard characters on the Principal
Register for “vinyl siding” in International Class 19,2 that it is likely to cause
confusion or mistake or to deceive.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Trademark Examining Attorney denied the request for
reconsideration, the appeal was resumed and is now fully briefed. For the reasons
explained below, we affirm the refusal to register.
I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See
also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). In any likelihood of confusion analysis, however, two key considerations are
the similarities between the marks and the similarities between the goods. 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, are discussed below. See

1 Application Serial No. 87258281, filed December 6, 2016 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a).
2 Registration No. 5118719, registered January 10, 2017.
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M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed.
Cir. 2006) (even within du Pont list, only factors that are “relevant and of record”
need be considered).
A. The Marks

It is undisputed that Applicant’s and Registrant’s marks are identical.3 See Palm
Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (the first du Pont likelihood of confusion
factor involves an analysis of the similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and commercial impression). And in
our view, this is not a situation where the same marks are used to identify goods so
dissimilar as to engender different connotations or commercial impressions. See In re
Sydel Lingerie Co., Inc., 197 USPQ 629, 630 (TTAB 1977) (no likelihood of confusion
found between BOTTOMS UP for ladies’ and children’s underwear and BOTTOMS
UP for men’s suits, coats and trousers). Rather, the mark WEATHERTECH as
applied to both Applicant’s and Registrant’s goods suggests that the products are
designed for exterior use and intended to be weatherproof. This du Pont factor
therefore weighs heavily in favor of finding a likelihood of confusion.
B. The Goods
Next, we compare the goods as they are identified in the involved application and
cited registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d
1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston

3 Indeed, Applicant presents no arguments regarding this factor in his brief.
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Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) and
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir.
2002). The goods need not be identical or even competitive to find a likelihood of
confusion. On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471,
1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898
(Fed. Cir. 2000). They need only be “related in some manner and/or if the
circumstances surrounding their marketing are such that they could give rise to the
mistaken belief that [the goods] emanate from the same source.” Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012)
(quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). Evidence of
relatedness may include news articles and/or evidence from computer databases
showing that the relevant goods are used together or used by the same purchasers;
advertisements showing that the relevant goods are advertised together or sold by
the same manufacturer or dealer; and/or copies of prior use-based registrations of the
same mark for both applicant’s goods and the goods listed in the cited registration.
See, e.g., In re Davia, 110 USPQ2d 1810, 1817 (TTAB 2014) (finding pepper sauce and
agave related where evidence showed both were used for the same purpose in the
same recipes and thus consumers were likely to purchase the products at the same
time and in the same stores).
Where identical marks are involved, as is the case here, the degree of similarity
between the goods that is required to support a finding of likelihood of confusion
declines. In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re
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Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d
1315, 123 USPQ2d 1744 (Fed. Cir. 2017).
Applicant’s “urethane paints” are unrestricted as to use; as such, we can assume
that they may be used for exterior applications on a wide variety of surfaces. Thus,
based on the identifications themselves, the products are complementary in nature.
Consumers purchasing vinyl siding will be looking for matching or coordinating
exterior paint colors to also paint, for example, the exterior window trim or door frame
of a house, surfaces that may be comprised of wood or other materials.
In addition, contrary to conventional wisdom, vinyl siding can indeed be painted,
and paint manufacturers have responded to this trend by developing paints
specifically formulated for exterior vinyl siding. By way of illustration, note the
following online articles showing that painting vinyl siding is now a viable cost-
effective alternative to replacement:
Excerpt from the Benjamin Moore website entitled “How to
Paint Vinyl Siding”:
Add value to your painting business and your
customer’s home by painting vinyl siding. …
Applying paint to vinyl siding improves its
durability, and is actually less labor intensive than
painting wood, masonry, or hardboard surfaces.
Because the siding does not retain moisture, it is
easy to clean and dries quickly …
For coating vinyl siding or trim, our premium
Regal® Select Exterior Revive™ is the ideal choice.
The paint is formulated for optimal performance on
vinyl siding and trim with the added benefit of Vinyl
Lock technology for superior adhesion. It also fully
covers the previous color or faded areas on
weathered siding. Regal® Select Exterior Revive™
provides excellent color retention, is resistant to
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mildew and can be applied to temperatures as low
as 40 degrees Fahrenheit.4
Excerpt from Hyde website entitled “How To: Paint Vinyl
Siding”:
If your vinyl siding has seen better days or you no
longer like its color, save big bucks by painting it
instead of replacing it. … Don’t just purchase the
most easily reached can of paint in the aisle. For a
paint job to look good and last on vinyl siding, the
product you choose must contain acrylic and
urethane resins; these ingredients, which
accommodate the expansion and contraction of
vinyl, help the coating to stick.5
Excerpt from Images Work Painting Blog “Painting Vinyl
Siding on Your Home – Can You? Should You?”
Fortunately, technology has recently come to the
rescue to expand the color palette that can be safely
applied [to vinyl siding]. With the introduction of
Sherwin Williams’ VinylSafe™ Color Palette that
ensures darker colors won’t absorb heat,
homeowners can now choose from over 100 colors to
use on their vinyl.6
Because Applicant’s “urethane paints” are unrestricted as to type, we can also assume
that they include the more specialized exterior paints mentioned above formulated
for application to vinyl siding. This is another reason why these involved goods are
complementary in nature. Consumers looking to improve the appearance of vinyl

4 May 9, 2017 Office Action, p. 17. Citations to the prosecution history are to the USPTO’s
downloadable .pdf version of the TSDR database. See, e.g., In re Peace Love World Live, LLC,
127 USPQ2d 1400, 1402 n.4 (TTAB 2018).
5 Id. at 8-9.
6 Id. at 20. See also February 5, 2018 Denial of Request for Reconsideration pp. 13-19 (excerpt
from Homm website discussing Sherwin Williams VinylSafe™ Color Technology).
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siding or to change the color are likely to assume that a paint bearing the identical
mark is intended for such use.
In short, we can conclude, based on the identification as well as the record herein,
that Applicant’s and Registrant’s goods are in part related, complementary products
that could be purchased and used together to complete an exterior construction or
renovation project. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289, 1290 (Fed. Cir. 1984) (“[C]omplementary use has long been recognized
as a relevant consideration in determining a likelihood of confusion.”). Likelihood of
confusion must be found as to the entire class if there is likely to be confusion with
respect to any good that comes within the identification of goods in that class. In re
C.H. Hanson Co., 116 USPQ2d 1351, 1355 (TTAB 2015) (citing Tuxedo Monopoly,
Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)). As
such, this du Pont factor also favors a finding of likelihood of confusion.
C. Conditions of Sale and Sophistication of Prospective Purchasers
We consider now the conditions under which the goods are likely to be purchased,
e.g., whether on impulse or after careful consideration, as well as the degree, if any,
of sophistication of the consumers. Purchaser sophistication or degree of care may
tend to minimize likelihood of confusion. Conversely, impulse purchases of
inexpensive items may tend to have the opposite effect. Palm Bay, 73 USPQ2d at
1695.
Applicant asserts consumers of both Applicant’s and Registrant’s products are
sophisticated and will exercise a great degree of care in making purchasing decisions.
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Applicant submits that the relevant consumers are professional installers of vinyl
siding on home exteriors, vinyl siding painters, and do-it-yourselfers who are
relatively knowledgeable in this field. Elaborating, Applicant contends that “[a]n
inexperienced but reasonable consumer is unlikely to risk damaging the siding and
the appearance of his or her home by taking on a project of this magnitude without a
higher degree of knowledge and experience.” Brief,7 4 TTABVUE 13-14. Applicant
further asserts that vinyl siding and paint formulated to adhere to vinyl siding are
expensive and unlikely to be purchased on impulse. For these reasons, Applicant
maintains that prospective consumers will be able to distinguish Applicant’s marks
from the cited mark.
Due to the intrinsic nature of the goods, we find that consumers, whether
professional home or commercial contractors or do-it-yourselfers, are more likely to
exercise a somewhat relatively higher degree of care when making purchasing
decisions. This is borne out by the evidence of record showing that a single gallon of
specialized vinyl siding exterior paint costs $49.95,8 and that the average cost of a 10’
x 10’ vinyl siding square is $234-260.9 This factor weighs in favor of not finding a
likelihood of confusion.

7 Insofar as the pages of Applicant’s brief filed via ESTTA are unnumbered, we have cited
only to the TTABVUE entry. Applicant’s brief meets the requirements for submission filed
via ESTTA; the numbering requirement for briefs applies only to paper submissions. See
Trademark Rule 2.126, 37 C.F.R. § 2.126. Nonetheless, the Board strongly suggests that even
when filing materials using ESTTA that page numbers be used.
8 October 2, 2017 Final Office Action, p. 60-61 (Ecos Exterior Vinyl Siding Paint).
9 September 8, 2017 Response to Office Action, pp. 16-17 (Remodeling Expense – Vinyl Siding
Costs by zip code).
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That being said, the fact that purchasers are sophisticated or knowledgeable in a
particular field does not necessarily mean that they are sophisticated or
knowledgeable in the field of trademarks or immune from source confusion. See In re
Cynosure, Inc., 90 USPQ2d 1644 (TTAB 2009). Such is the case here. With identical
marks and related complementary goods, even a more careful, sophisticated
consumer of such goods is not likely to understand that the goods emanate from
different sources.10
II. Conclusion
We have carefully considered all of the evidence made of record, as well as all of
the arguments related thereto, including any evidence and arguments not specifically
discussed in this opinion. As indicated earlier, the identical nature of the marks
weighs heavily in finding a likelihood of confusion. This, coupled with the related,
complementary nature of the goods leads us to the conclusion that prospective
consumers are likely to confuse the involved goods as originating from or associated
with or sponsored by the same entity. The identity of the marks and the relatedness
of the goods and/or services “outweigh any presumed sophisticated purchasing
decision.” In re i.am.symbolic, llc, 116 USPQ2d at 1413 (citing HRL Assocs., Inc. v.

10 Applicant cites In re Homeland Vinyl Prods. Inc., 81 USPQ2d 1378 (TTAB 2006) for the
proposition that both commercial contractors and do-it-yourself homeowners will exercise a
higher degree of care in making purchasing decisions, thereby obviating any likelihood of
confusion. The facts of that case are distinguishable. The involved marks at issue in
Homeland Vinyl consisted of product configurations of fence rails. Id. at 1379-80. In reversing
the Section 2(d) refusal, the Board emphasized “that the respective designs are noticeable
from a distance on ‘an erected fence from the road’”; and that “in view of the nature of the
ornamental design, it appears, in this particular situation, that the registered mark is
entitled to only a narrow scope of protection.” Id. at 1382. By contrast, here the cited mark is
an arbitrary word mark which is identical to the applied-for mark.
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Weiss Assocs., Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff’d, 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990)); see also Stone Lion, 110 USPQ2d at 1163-64.
In closing, we observe that In re Johns-Manville Corp., 180 USPQ 661, 662 (TTAB
1973), is particularly instructive here since it also involved an identical mark
incorporating the suggestive term “weather” used on different but complementary
construction products for home or commercial use:
In the instant case, building doors and asphalt shingles,
although obviously different products, are construction
materials that could be employed in the construction of a
building; they could be distributed or obtained through a
building supplies company; and they could be purchased by
the same general contractor responsible for the overall
construction of the building or possibly in the case of a
small structure by the individual or individuals who
perform the actual installation. Under these
circumstances, it is not unreasonable to assume, in this day
and age of diversification and expansion, that if these
products were to be encountered by customers and
prospective customers under the identical mark
“WEATHER KING”, they would mistakenly assume that
they originate from or are in some way connected with the
same producer. While the average purchaser of goods of
these descriptions may be skilled craftsmen, it does not
necessarily follow therefrom that they are equally informed
as to the source of the products that they use and are,
unlike customers for other products, immune from the
likelihood of confusion or deception that the statute is
attempting to preclude.
The logic from this case applies with equal force here, meaning that when we balance
the du Pont factors, we find that confusion is likely.
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.