Innovative Aftermarket Systems, L.P.

Trademark Trial and Appeal Board

Jun 2, 2009

No. 77198307 (T.T.A.B. Jun. 2, 2009)

Mailed: June 2, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Innovative Aftermarket Systems, L.P.
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Serial No. 77198307
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Susan E. Billheimer of Patton Boggs, LLP for Innovative
Aftermarket Systems, L.P.

Jaclyn N. Kidwell, Trademark Examining Attorney, Law Office
112 (Angela Bishop Wilson, Managing Attorney).
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Before Zervas, Kuhlke and Bergsman, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Innovative Aftermarket Systems, L.P., applicant, on
June 5, 2007 filed an application under Section 1(b) of the
Trademark Act, 15 U.S.C. §1051(b), to register the mark
SUPER POLYSTEEL in standard characters for “polymer paint
sealant for protecting automobile exterior surfaces” in
International Class 2, and “automobile polish” in
International Class 3. In response to a request from the
examining attorney, applicant disclaimed the word SUPER.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77198307
2
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, when used on its identified
goods in both International Classes, so resembles the
registered mark SUPERPOLY in typed form for “preparations
for cleaning and polishing automobile bodies and other
surfaces” in International Class 3,1 as to be likely to
cause confusion, mistake or to deceive.
Applicant has appealed the refusal and briefs have
been filed. We reverse the refusal to register under
Section 2(d) of the Trademark Act.
Our determination of the issue of likelihood of
confusion 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 Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). In any likelihood of confusion analysis, however,
two key considerations are the similarities or differences
between the marks and the similarities or differences
between the goods and/or services. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976).

1 Registration No. 1506742, issued October 4, 1988, renewed.
Ser No. 77198307
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There is no question that applicant’s “automobile
polish” is legally identical to registrant’s “preparations
for cleaning and polishing automobile bodies and other
surfaces.” Further, applicant’s “paint sealant” is related
to registrant’s goods as demonstrated by the several third-
party use-based registrations submitted by the examining
attorney. In re Mucky Duck Mustard Co., Inc., 6 USPQ2d
1467 (TTAB 1988) (third-party registrations may have some
probative value to the extent that they may serve to
suggest that goods or services are of a type which may
emanate from the same source). With regard to the channels
of trade and classes of customers, inasmuch as there are no
restrictions in either the application or registration we
must presume that they travel in the same channels of trade
and are available to all normal classes of customers for
those goods. In re Linkvest S.A., 24 USPQ2d 1716 (TTAB
1992). 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 Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1987).
In view thereof, we find that the goods are identical
or closely related, and the channels of trade and classes
of purchasers overlap.
Ser No. 77198307
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In its brief, applicant did not dispute the
relatedness of the goods or the overlap in the channels of
trade or classes of purchasers. However, during
prosecution, applicant argued that its purchasers are
sophisticated in that applicant markets and sells its
products to “automobile dealerships, and not directly to
the general public.” App. Response p. 2 (March 19, 2008).
As noted above, the application has no limitation as to the
channels of trade or classes of purchasers and, therefore,
includes the general public. As such, we are constrained
to make our determination within parameters that include
the general public as potential purchasers. In view
thereof, the potential sophistication of the consumers does
not weigh in applicant’s favor in our balancing of the du
Pont factors.
Applicant focuses its argument on the marks and argues
that: 1) POLYSTEEL is the dominant portion of its mark; 2)
the term POLY is weak in this field as demonstrated by
third-party registrations; and 3) the term SUPER is a weak
laudatory term. Based on these contentions, applicant
concludes that the addition of STEEL to its mark is
sufficient to distinguish these marks even when used on
identical goods.
Ser No. 77198307
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In maintaining the refusal, the examining attorney
argues that “all the submitted registrations conveyed a
different commercial impression than applicant’s ‘SUPER
POLYSTEEL’ mark.” Br. p. 7. The examining attorney
contends that applicant’s mark SUPER POLYSTEEL and
registrant’s mark SUPERPOLY convey the same overall
commercial impression and that while “it may be true that
the term ‘POLY’ and ‘SUPER’ are weak source indicators, the
composite ‘SUPERPOLY’ is not.” Id. The examining attorney
then states that “[a]pplicant’s contention that the use of
the terms ‘SUPER’ and ‘POLY’ is so widespread as to make
slight differences easily distinguishable by the public is
unpersuasive [and t]he issue must therefore be resolved in
favor of the registrant.” Id.
In making our determination of similarity or
dissimilarity we compare the marks in their entireties in
terms of appearance, sound, connotation and commercial
impression. We make this determination in accordance with
the following principles. 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 offered under the respective marks
Ser No. 77198307
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is likely to result. 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). “When marks would appear on virtually identical
goods or services, the degree of similarity [between the
marks] necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701
(Fed. Cir. 1992), cert. denied, 506 U.S. 1034 (1992).
Furthermore, although the marks at issue must be considered
in their entireties, it is well-settled that one feature of
a mark may be more significant than another, and it is not
improper to give more weight to this dominant feature in
determining the commercial impression created by the mark.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985).
In this case, applicant’s mark SUPER POLYSTEEL
incorporates registrant’s mark SUPERPOLY to the extent that
it includes both portions of registrant’s mark albeit as
separate words, and to that extent is similar in sound and
appearance. However, we do not agree that the overall
commercial impression is sufficiently similar given the
weakness of the common elements and the dominance of the
Ser No. 77198307
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POLYSTEEL portion in applicant’s mark. Ultimately, the
question is will applicant’s mark be viewed as SUPER
POLYSTEEL or SUPER POLYSTEEL. We believe it is the former.
The record in this case establishes that the term POLY
is a weak term in the field of automotive polish, sealant
and cleaners in that it signifies that they contain or have
the characteristic of polymers. See, e.g., Reg. No.
Specialty Brands, Inc. v. Coffee Bean Distributors, Inc.,
748 F.2d 669, 223 USPQ 1281, 1285-86 (Fed. Cir. 1984)
(Third-party registrations can be used in the manner of a
dictionary definition to illustrate how a term is perceived
in the trade or industry). See also AMF Inc. v. American
Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269-95
(CCPA 1976). See e.g., Reg. No. 2674412 for the mark POLY
BRITE for cleaning preparations, namely, foaming agent for
use in carwash facilities; Reg. No. 2209216 for the mark
POLY SEAL for polishes, namely, automotive polishes and
sealants; Reg. No. 2116153 for the mark POLY GLOSS for
vehicle cleaner for use on vinyl and leather; Reg. No.
1537130 for the mark POLY SHIELD for cleaners and polishes
for automobiles, boats and aircraft; Reg. No. 1381989 for
the mark POLY BOND for car waxes for automatic and self
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serve; and Reg. No. 1141482 for the mark POLY WIPE for
waxes for automotive finishes.2
Further, we take judicial notice of the following
dictionary definition:3
POLY ...[short for polymer] ... a polymerized plastic
or something made of this. Merriam-Webster’s
Collegiate Dictionary (10th ed. 1999).

This definition confirms that the term POLY is, at a
minimum, highly suggestive of a feature or characteristic
of the goods and we accord this term a very narrow scope of
protection. Therefore, we cannot say, due to its highly
suggestive nature, that POLY dominates over the other
elements in applicant’s or registrant’s marks.
We also find that the term SUPER is weak in that it is
a laudatory term. See First Office Action (September 19,
2007) (SUPER 1. An article or a product of superior size,
quality, or grade. American Heritage Dictionary of the
English Language (4th ed. 2000)). In requesting the

2 Applicant also submitted a cancelled third-party registration
for the mark SUPER POLYSHELL for, inter alia, preparations for
cleaning, shining, protecting and sealing the finished surfaces
of automobiles, which issued over the cited registration. While
it may have co-existed with the cited registration, cancelled
registrations are of limited probative value. Action Temporary
Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307
(Fed. Cir. 1989).

3 University of Notre Dame University of Notre Dame du Lac v.
J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).

Ser No. 77198307
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disclaimer, for this word the examining attorney also
recognizes it to be a nondistinctive term. We further note
that the cited registration for the combined word SUPERPOLY
issued based on a showing of acquired distinctiveness under
Section 2(f), indicating that the mark is not inherently
distinctive.
Finally, the record also includes some examples of
third-party use of the terms SUPER POLY together. See,
e.g., www.boatersworld.com (Sea Power Super Poly Boaters
Polish); and www.pjs-carwash.com (...Full Service Super
Poly Outside wash with ... poly sealant to seal in the
clear coat).
Thus, we accord the mark SUPERPOLY a limited scope of
protection in connection with automotive polishes and
sealants. Further, in view of the laudatory nature of the
term SUPER and the fact that there is nothing in the record
to show that STEEL is a weak term in relation to these
goods, we find that the term POLYSTEEL is the dominant
portion of applicant’s mark.
In general, where the dominant portion of the marks is
similar, confusion may not be avoided by the addition of
another term. See Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). However, in cases “where the
Ser No. 77198307
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conflicting marks in question are highly suggestive or
merely descriptive or play upon commonly used or registered
terms, the addition of a housemark and/or other material to
one of the marks has been held sufficient to render the
marks as a whole distinguishable.” In re Shawnee Milling
Co., 225 USPQ 747, 749 (TTAB 1985) (GOLDEN CRUST for flour
and ADOLPH’S GOLD’N CRUST for flour-based coating and
seasoning not confusingly similar). See also In re S.D.
Fabrics, Inc., 223 USPQ 54 (TTAB 1984) (DESIGNERS/FABRIC
(stylized) for retail fabric store services held not likely
to be confused with DAN RIVER DESIGNER FABRICS and design
for textile fabrics). In the case cited by the examining
attorney, In re Hunke & Jockheim, 185 USPQ 188 (TTAB 1975),
the Board stated that:
... the scope of protection afforded a merely
descriptive or even a highly suggestive term is
less than that accorded an arbitrary or coined
mark. That is, terms falling within the former
category have been generally categorized as
“weak” marks, and the scope of protection
extended to these marks has been limited to the
substantially identical notation and/or to the
subsequent use and registration thereof for
substantially similar goods. Thus, unlike in the
case of an arbitrary or unique designation, the
addition of other matter to a highly suggestive
or descriptive designation, whether such matter
be equally suggestive or even descriptive, or
possibly nothing more than a variant of the term,
may be sufficient to distinguish between them so
as to avoid confusion in trade. [Citations
omitted.] “It seems both logical and obvious to
us that where a party chooses a trademark which
Ser No. 77198307
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is inherently weak, he will not enjoy the wide
latitude of protection afforded the owners of
strong trademarks. Where a party uses a weak
mark, his competitors may come closer to his mark
than would be the case with a strong mark without
violating his rights. The essence of all we have
said is that in the former case there is not the
possibility of confusion that exists in the
latter case.”

Id. at 189, quoting, Sure-Fit Products Co. v. Saltzson
Drapery Co., 254 F.2d 158, 117 USPQ 295, 297 (CCPA 1958).
(HIG-DURABLE not confusingly similar to DURABUL).
In view of the weakness of the common elements SUPER
and POLY and the dominance of the combined term POLYSTEEL
in applicant’s mark, we find that the addition of STEEL to
applicant’s mark is sufficient to distinguish the marks and
outweighs the similarities. King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110
(CCPA 1974) (confusion unlikely when marks are of such non-
arbitrary nature that the public easily distinguishes
slight differences in the marks under consideration). See
also Colgate-Palmolive Co. v. Carter-Wallace, Inc., 432
F.2d 1400, 167 USPQ 529 (CCPA 1970) (because common element
in marks is a common noun or adjectival word of everyday
usage in the English language and has a laudatory or
suggestive indication, PEAK PERIOD for personal deodorants
is not confusingly similar to PEAK for dentifrice); and
Sure-fit Products Co., 117 USPQ 295 (where a party has a
Ser No. 77198307
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weak mark, competitors may come closer to the mark than
would be the case with a strong mark without violating the
party’s rights; marks SURE-FIT and RITE-FIT, both for slip-
covers, held not confusingly similar).
Moreover, in this case we find that the dissimilarity
of the marks is dispositive. See Kellogg Co. v. Pack’em
Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed.
Cir. 1991) (“We know of no reason why, in a particular
case, a single duPont factor may not be dispositive”).
Applicant’s mark used on their identified goods is not
likely to cause confusion with the cited registration.
Decision: The refusal to register under Section
2(d) is reversed.