Frans Nooren Afdichtingssystemen B.V.

Trademark Trial and Appeal Board

Sep 4, 2014

No. 79131512 (T.T.A.B. Sep. 4, 2014)

This Opinion is not a
Precedent of the TTAB

Mailed: September 4, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re Frans Nooren Afdichtingssystemen B.V.
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Serial No. 79131512
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William J. Seiter of Seiter Legal Studio for Frans Nooren
Afdichtingssystemen B.V.

Dominic R. Fathy, Trademark Examining Attorney, Law Office 104 (Chris
Doninger, Managing Attorney).
_______

Before Zervas, Cataldo and Lykos,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Frans Nooren Afdichtingssystemen B.V. (“Applicant”) seeks registration
on the Principal Register of SEALTAQ (standard characters) as a mark for
the goods identified below:
Paints, varnishes, lacquers; preservatives against
rust in the nature of a coating and preservatives
against deterioration of wood; dyestuffs; mordants
for use in the civil engineering industry, oil and gas
industry, pipeline industry, oil and gas pipeline
industry, engineering industry, transport industry,
shipping industry, aviation, water and waste
treatment industry, car and truck industry, the
energy industry as well as in and for houses,
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buildings and vehicles; raw natural resins; metals
in foil and powder form for painters, decorators,
printers and artists; preservative agents in the
nature of a coating not included in other classes for
protection against rust and corrosion and against
damage in wood, metals, plastics and other
materials; products for preventing rust and
corrosion, namely, rust protecting paints,
varnishes, lacquers
in International Class 2.1
The Trademark Examining Attorney refused registration of the mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that Applicant’s mark, when used in connection with Applicant’s goods, so
resembles the registered mark SEALTECH (typed format, precursor and
equivalent to standard characters) for goods identified as: “acrylic
waterproofing coating for use on porous surfaces” in International Class 2,2
as to be likely to cause confusion, to cause mistake or to deceive. After the
refusal became final, Applicant filed a notice of appeal and a request for
reconsideration. The Examining Attorney denied the request for
reconsideration and this appeal ensued. Applicant and the Examining
Attorney filed briefs.

1 Application Serial No. 79131512, filed March 26, 2013 seeking an extension of
protection under Trademark Act Section 66(a) of Applicant’s International
Registration No. 1163890, issued on the same date.
The involved application also recites goods in International Class 17 that are not
subject to the instant refusal of registration.
2 Registration No. 2007132, issued October 8, 1996. Section 8 affidavit accepted;
Section 15 affidavit acknowledge. Renewed.

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Our determination under Section 2(d) is based on an analysis of all
probative facts in evidence that are relevant to the factors bearing on the
issue of likelihood of confusion as set forth in In re E.I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In
any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976). In this case, Applicant and the Examining
Attorney have also submitted evidence and arguments relating to trade
channels in which the goods are encountered, and the strength of the mark in
the cited registration. We will address each in turn.
The marks.
We turn then to the first du Pont factor, i.e., whether Applicant’s
SEALTAQ mark and Registrant’s SEALTECH mark are similar or dissimilar
when viewed in their entireties in terms of appearance, sound, connotation
and overall commercial impression. See Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689
(Fed. Cir. 2005). “The 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
would be likely to assume a connection between the parties.” Coach Servs.,
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Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed.
Cir. 2012). The focus is on the recollection of the average purchaser, who
normally retains a general rather than a specific impression of trademarks.
See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
In the case at hand, the marks SEALTAQ and SEALTECH are similar in
appearance, meaning and sound in that both share the identical first word,
“SEAL.” The significance of “SEAL” is reinforced by its location as the first
word in both Applicant’s mark and that of Registrant. See Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992) (upon encountering the marks, consumers must first notice
the identical lead word); and Presto Products Inc. v. Nice-Pak Products, Inc., 9
USPQ2d 1895, 1897) TTAB 1988) (“it is often the first part of a mark which is
most likely to be impressed in the mind of a purchaser and remembered”).
Furthermore, the second word in Applicant’s mark, “TAQ,” is somewhat
similar in appearance and sound to the second word in Registrant’s mark,
“TECH.” Viewed as a whole, SEALTAQ is highly similar in appearance to
SEALTECH and also highly similar in sound, differing by a single vowel in
the second syllable. With regard to connotation, while the term “tech” has a
recognized meaning as a shortened form of the word “technical,” Applicant
argues that the “term TAQ in the fancifully coined mark SEALTAQ connotes
the ‘tackiness’ of the material constituting Applicant’s goods.”3 To the extent

3 Applicant’s brief, p. 4-5.

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consumers will ascribe the meaning Applicant suggests to its mark, the mark
are similar in connotation inasmuch as both connote materials providing a
seal, whether tacky, technical or otherwise in nature. As a result, the marks
SEALTAQ and SEALTECH are highly similar in appearance and sound and
somewhat similar in connotation, with the result that the marks convey
highly similar commercial impressions. See Kenner Parker Toys, Inc. v. Rose
Art Indus., Inc., 963 F.2d 350, 355 (Fed.Cir.1992) (holding that in light of the
appearance, sound and meaning of the marks PLAY–DOH and FUNDOUGH,
consumers may receive the “same commercial impression” from the marks).
Similarity in any one of the elements of sound, appearance, meaning, or
commercial impression is sufficient to support a determination of likelihood
of confusion. See Krim-Ko Corp. v. The Coca-Cola Co., 390 F.2d 728, 156
USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form,
spelling or sound alone is likely to cause confusion”); and In re White Swan
Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988) (“In appropriate cases, a finding of
similarity as to any one factor (sight, sound or meaning) alone ‘may be
sufficient to support a holding that the marks are confusingly similar’”)
(citations omitted)). Therefore, even if the marks have somewhat different
meanings or connotations, it would not necessarily mean there was no
likelihood of confusion.
We are not persuaded by Applicant’s argument, unsupported by evidence,
that the term “seal” is “obviously descriptive as used in connection with the
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respective goods of the two parties and consequently a weak element.”4 There
is no evidence of the asserted weakness or descriptiveness of the term “seal”
to support Applicant’s contention that Registrant’s mark is of such a weak
nature as to be afforded only a narrow scope of protection. Even if the term
“seal” suggests a quality or characteristic of the goods at issue, and thus is
not a strong source indicator, we find that SEALTECH is sufficiently strong
to prevent registration of Applicant’s SEALTAQ mark which begins with the
identical term and otherwise is similarly constructed.
We similarly are not persuaded by Applicant’s argument that the marks
at issue are so different in appearance, sound, connotation and commercial
impression that consumers are unlikely to experience confusion as to the
goods offered thereunder. First, for the reasons set forth above. Second, as
has often been said, 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 terms of their overall
commercial impression that confusion as to the source of the goods or services
offered under the respective marks is likely to result. Coach Servs., Inc. v.
Triumph Learning LLC, 101 USPQ2d at 1721. The focus is on the recollection
of the average purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106 (TTAB 1975).

4 Id. at 3.

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Furthermore, we are not persuaded by Applicant’s argument that the
marks are so dissimilar that confusion cannot occur in accordance with this
tribunal’s decision in Kellog Co. v. Pack’em Enterprises, Inc., 14 USPQ2d
1545 (TTAB 1990), aff’d 951 F.3d 330, 21 USPQ2d 1142 (Fed. Cir. 1991)
(dissimilarity of marks FROOT LOOPS and FROOTIE ICE resulted in
finding of no likelihood of confusion despite very close relationship between
goods and trade channels). Given the similarities between the marks
discussed above, we find the facts of the Kellogg case to be inapposite to our
determination herein.
Accordingly, this du Pont factor weighs in favor of a finding of likelihood
of confusion.
The relationship of the goods, the established likely-to-continue channels
of trade and classes of consumers.

Applicant is seeking to register its marks for the following goods:
Paints, varnishes, lacquers; preservatives against
rust in the nature of a coating and preservatives
against deterioration of wood; dyestuffs; mordants
for use in the civil engineering industry, oil and gas
industry, pipeline industry, oil and gas pipeline
industry, engineering industry, transport industry,
shipping industry, aviation, water and waste
treatment industry, car and truck industry, the
energy industry as well as in and for houses,
buildings and vehicles; raw natural resins; metals
in foil and powder form for painters, decorators,
printers and artists; preservative agents in the
nature of a coating not included in other classes for
protection against rust and corrosion and against
damage in wood, metals, plastics and other
materials; products for preventing rust and
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corrosion, namely, rust protecting paints,
varnishes, lacquers.
The goods identified in the cited registration are “acrylic waterproofing
coating for use on porous surfaces.” We observe that, as identified,
Registrant’s waterproof coatings and Applicant’s preservative agents in the
nature of coatings for protection against rust and corrosion appear to be
related inasmuch as both may be used to coat and protect surfaces from the
elements. In determining the relationship between the goods we look, as we
must, the goods as identified in the involved application and cited
registration. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d
1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); and Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990). Thus, Registrant’s goods appear to be related to certain of
Applicant’s goods on the face of their respective identifications.
Furthermore, in support of her contention that the goods are related, the
Examining Attorney made of record live, use-based, third-party registrations,
of which the following identify goods listed in both the application at issue
and the cited registration.5
Registration No. 3229275 for, inter alia, paints, waterproofing
paints, waterproofing coatings for use on concrete and masonry

5 Attached to the Examining Attorney’s February 20, 2014 Office Action.
We have not included the entire recitation of goods or services for each of the
registrations. Only the goods that are in Applicant’s application and the cited
registration are listed. We did not consider registrations based on Section 44 and not
on use in commerce.
Serial No. 79131512

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surfaces in commercial and residential building and
landscaping;

Registration No. 4050718 for, inter alia, paints, lacquers,
varnishes, coating preparations having water repellent
properties;

Registration No. 4101211 for, inter alia, paints, coatings in the
nature of industrial sealants for waterproofing and surface
hardening;

Registration No. 4177809 for, inter alia, exterior and interior
paints, waterproofing paints, waterproofing epoxy stains for
concrete overlay and concrete, ceramic waterproof wall systems
comprised of paints paint primers;

Registration No. 4427715 for, inter alia, coatings in the nature
of industrial sealants for waterproofing and surface hardening,
floor paints, paint for concrete floors, and

Registration No. 4475966 for, inter alia, exterior paints,
waterproofing and weatherproofing coatings.

Third-party registrations which individually cover a number of different
goods that are based on use in commerce have some probative value to the
extent that they serve to suggest that the listed goods are of a type which
may emanate from the same source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86; In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467,
1470 n.6 (TTAB 1988).
In addition, the Examining Attorney submitted screenshots from the
following commercial websites offering goods that are similar in nature to
those of both Applicant and Registrant, including the following
representative samples:6

6 Id.
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homedepot.com/ (waterproofing sealers, paints and lacquers for various
surfaces);

lowes.com/ (waterproofers and waterproofing sealers, paints and
varnishes for various surfaces);

acehardware.com/ (waterproofers, waterproofing sealers and paints for
various surfaces);

sherwin-williams.com/ (waterproofers, sealants and paints for various
surfaces); and

menards.com/ (water repellants, waterproofers, waterproofing paints
and sealers, lacquers and paints for various surfaces).

These websites demonstrate that certain of Applicant’s type of goods and
Registrant’s type of goods are marketed and sold together in the same
channels of trade and made available to the same classes of purchasers.
Based upon the evidence of record, we find that consumers would believe
that certain of Applicant’s goods, at the very least, its paints and lacquers,
are related to Registrant’s goods. Moreover, it is not necessary for the
Examining Attorney to prove likelihood of confusion with respect to each item
of goods identified in Applicant’s single-class application; if there is likelihood
of confusion with respect to any of Applicant’s identified goods, the refusal of
registration must be affirmed. See Tuxedo Monopoly, Inc. v. General Mills
Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). The evidence of
record in this case indicates that the goods of Applicant and Registrant are
commercially related goods that may be marketed and sold together under a
common designation, and thus may be encountered together by consumers.
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The similarity of the goods is a factor that weighs in favor of a finding of
likelihood of confusion.
In addition, neither the paints nor the lacquers in Applicant’s
identification of goods nor Registrant’s identified goods recites any
limitations on the channels of trade in which the goods may be encountered
or the classes of consumers to whom they may be marketed. Absent any such
restrictions, the goods are presumed to move in all normal channels of trade
and be available to all classes of potential consumers of such goods. See In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even
though there was no evidence regarding channels of trade and classes of
consumers, the Board was entitled to rely on this legal presumption in
determining likelihood of confusion). See also In re Elbaum, 211 USPQ 639,
640 (TTAB 1981). In each case, the customers would include builders,
contractors and do-it-yourselfers, and the channels of trade would include
Internet home improvement and building supply retailers as well as the brick
and mortar counterparts thereof.
The overlap in trade channels and classes of purchasers are factors that
further weigh in favor of a finding of likelihood of confusion.
Balancing the Factors
Having considered the arguments and evidence of record and all relevant
du Pont factors, including those not specifically discussed herein, we find that
Applicant’s mark, used in connection with Applicant’s goods in International
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Class 2, so closely resembles the cited registered mark as to be likely to cause
confusion, mistake or deception as to the source of Applicant’s goods in that
class.
Decision: The refusal to register is affirmed as to the goods in
International Class 2. The application will proceed to registration solely as to
the goods in International Class 17.