Henry Company

Trademark Trial and Appeal Board

Jul 16, 2013

No. 85085492 (T.T.A.B. Jul. 16, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
July 16, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Henry Company
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Serial No. 85085492
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Jordan A. Lavine of Flaster Greenberg PC for Henry Company.

Tracy L. Fletcher, Trademark Examining Attorney, Law Office 115 (John Lincoski,
Managing Attorney).
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Before Kuhlke, Ritchie and Masiello, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, Henry Company, filed an application to register on the Principal
Register the mark LIQUIDFOIL in standard characters for goods ultimately
identified as “elastomeric, acrylic and aluminized coatings for use in construction
and repair on roofs, walls and building foundations,” in International Class 2.1
Registration has been refused under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), on the ground that applicant’s mark, when used with its identified

1 Application Serial No. 85085492, filed on July 15, 2010, based on an allegation of a bona
fide intention to use the mark in commerce, under Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b).
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goods, so resembles the registered mark CELEROL LIQUID FOIL in typed form2
for “lacquers, varnishes and paints,” in International Class 2,3 as to be likely to
cause confusion, mistake or deception. The registration includes a disclaimer for
the wording “LIQUID FOIL.”
When the refusal was made final, applicant appealed and briefs have been
filed.
When the question is likelihood of confusion, we analyze the facts as they
relate to the relevant factors set out 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 (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 (CCPA 1976).
We first turn to consider the marks CELEROL LIQUID FOIL and
LIQUIDFOIL and compare them “in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Cir. 2005) quoting du Pont, 177 USPQ at 567. Applicant’s mark LIQUIDFOIL is
essentially identical to the LIQUID FOIL portion of registrant’s mark and the
absence of a space in applicant’s mark does not serve to distinguish the marks. The

2 Prior to November 2, 2003, “standard character” drawings were known as “typed”
drawings.

3 Registration No. 2957662, issued on May 31, 2005, combined Section 8 and 15 declaration
accepted and acknowledged.
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question that remains is the effect of the additional word CELEROL in registrant’s
mark and the scope of protection to be given the common element LIQUID FOIL.
Applicant argues that the term LIQUID FOIL is weak, and points to the disclaimer
of this wording in registrant’s mark. We acknowledge that the disclaimer in
registrant’s mark serves to support a finding that the dominant element in
registrant’s mark is the word CELEROL. In re Dixie Rest., Inc., 105 F.3d 1405, 41
USPQ2d 1531, 1533-34 (Fed. Cir. 1997). However, disclaimers are not dispositive
on this issue and we must consider the marks in their entireties. In this case,
applicant’s mark is identical to the disclaimed wording and applicant overcame the
mere descriptiveness refusal issued against its mark in the first Office Action.
Applicant described its mark as “an incongruous combination of words because the
average consumer would not believe, literally, that Applicant’s products consist of a
‘liquid’ foil” and there is an absence of any third-party use of the mark.4 Thus, on
this record this wording is at most suggestive of the coatings. Moreover, even weak
marks receive protection against likely confusion. King Candy Co. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974).
As to the effect of the word CELEROL, the examining attorney characterizes
CELEROL as a “house mark,” and applicant does not dispute this. The addition of
a house mark may not be sufficient to distinguish the marks, in particular where
the other mark has no additional distinguishing matter. In re Mighty Leaf Tea, 601
F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010) (ML confusingly similar to ML MARK
LEES); In re Apparel Ventures, Inc., 229 SUPQ 225, 226 (TTAB 1986) (SPARKS BY

4 App. Response (May 12, 2011).
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SASSAFRAS confusingly similar to SPARKS); In re Dennison Mfg. Co., 229 USPQ
141, 144 (TTAB 1986) (GLUE STIC confusingly similar to UHU GLU STIC); In re
Riddle, 225 USPQ 630, 632 (TTAB 1985) (RICHARD PETTY’S ACCU TUNE
confusingly similar to ACCU TUNE); and Key West Fragrance & Cosmetic Factory,
Inc. v. Mennen Co., 216 USPQ 168, 170 (TTAB 1982) (SKIN SAVERS confusingly
similar to MENNEN SKIN SAVER). However, even if CELEROL is a product
mark, rather than a house mark, this does not necessarily avoid confusion where
the common element retains its identity as a separately identifiable term in the
mark. In re Toshiba Medical Systems Corp., 91 USPQ2d 1266, 1269 (TTAB 2009)
(VANTAGE TITAN confusingly similar to TITAN). Here, we find that the marks
have very similar commercial impressions in view of the common element LIQUID
FOIL.
On balance, we find that applicant’s mark LIQUIDFOIL, which contains no
distinguishing matter, is similar to registrant’s mark CELEROL LIQUID FOIL
such that confusion is likely when used on related goods.
Thus, we turn to consider the du Pont factors of the relatedness of the goods
and channels of trade. We base our evaluation on the goods as they are identified in
the registration and application. In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Hewlett-Packard Co. v. Packard
Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems,
Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990). It is settled that it is not necessary that the respective goods be identical
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or even competitive in order to find that they are related for purposes of our
likelihood of confusion analysis. That is, the issue is not whether consumers would
confuse the goods themselves, but rather whether they would be confused as to the
source of the goods. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). The goods
need only be sufficiently related that consumers would be likely to assume, upon
encountering the goods under similar marks, that the goods originate from, are
sponsored or authorized by, or are otherwise connected to the same source. See In
re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984); and In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
The examining attorney argues that both parties “have identified coatings.”5
She contends that the registrant’s broad identification “lacquers, varnishes and
paints” encompass applicant’s “more particularly identified ‘elastomeric, acrylic and
aluminized coatings for use in construction and repair on roofs, walls and building
foundations.’”6 She supports this interpretation of the identification through
examples of third-party websites showing waterproofing paint for use on concrete,
masonry, stucco and brick specifically intended for use on basement walls, retaining
walls and foundations. She highlights as one example, www.amesresearch.com
attached to the August 28, 2012 Office Action, advertising semi-elastomeric acrylic

5 E.A. Br. p. 7.

6 Id.

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paints that are “ideal for use on coated walls, brick or block walls, interior and
exterior walls… and dry wall.”7
Further, to the extent applicant’s goods are not directly encompassed by
registrant’s identification of goods, the examining attorney submitted evidence in
the form of third-party registrations and web pages to demonstrate that applicant’s
and registrant’s types of goods sometimes emanate from the same source, are
commonly offered together and are “routinely used in conjunction with one another
during a single repair project” such that they are closely related and travel in the
same channels of trade. See, e.g., Reg. No. 3013055 for the mark WEATHERSEAL
for, inter alia, paint, paint sealers and elastomeric and aluminized coatings and
sealants for use on roofs, walls, foundations, decks and mobile homes; and Reg. No.
3203459 for the mark THE GARLAND COMPANY for, inter alia, waterproofing
coatings and paints, elastomeric-based coatings for use on roofs, walls and building
foundations. The examining attorney highlights the examples drawn from the web
pages relating to products of Sherwin-Williams, PPG Pittsburgh Paints, Ames
Research and Gardner Gibson. For example, Sherwin-Williams offers coatings for
whatever “surfaces you’re coating,” including interior paints (paints, primers, wood
stains, sealers and topcoats, masonry and concrete coating products) and exterior
paints (paints, deck stains for decks, porches, siding, trim, concrete and driveways,
masonry and concrete products);8 PPG Pittsburgh Paints offers paint coating

7 Id. p. 8.

8 Office Action (November 12, 2010) pp. 11-18.

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products “from high build masonry systems to spray-on enamel” to spray paint and
lacquers for wood;9 and Garner Gibson offers roof and foundation coatings for use
with “wall repair and prep before painting” touted as “the best first step in painting
or decoration project.”10 Thus, to the extent registrant’s identification does not
encompass applicant’s goods, the record establishes that these types of goods are
often offered by the same entity and are complementary.
Applicant’s various arguments with respect to the goods simply point out the
differences between the goods, but do not rebut the evidence of record showing the
related nature of these types of goods. Further, because there are no limitations as
to channels of trade or classes of purchasers in the descriptions of goods in the
application and cited registration, it is presumed that applicant’s and registrant’s
goods move in all channels of trade normal for those goods, and that they are
available to all classes of purchasers for those goods. See Paula Payne Products Co.
v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973); Kalart Co. v.
Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958); In re Linkvest S.A.,
24 USPQ2d 1716, 1716 (TTAB 1992). Such trade channels include stores that sell
various types of surface coatings. See, e.g., www.amesresearch.com.
The evidence of overlapping trade channels and that such types of goods come from
the same source show that consumers may encounter applicant’s and registrant’s
types of goods in close proximity to each other, under similar marks. Taking the
record as a whole we find ample support to conclude that the goods are sufficiently

9 Office Action (January 2, 2012) pp. 24-27.

10 Office Action (August 28, 2012) pp. 10-13.
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related and are offered in the same trade channels such that confusion is likely
when the goods are sold under similar marks.
In conclusion, because the marks are similar, the goods are related, and the
channels of trade and consumers are the same or overlapping, confusion is likely
between applicant’s mark LIQUIDFOIL and the mark CELEROL LIQUID FOIL in
the cited registration. Finally, to the extent that any of the points argued by
applicant cast doubt on our ultimate conclusion on the issue of likelihood of
confusion, we resolve that doubt, as we must, in favor of the prior registrant. In re
Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusal to register based on a likelihood of confusion under
Section 2(d) of the Trademark Act is affirmed.