Johns Manville Inter-national, Inc.

Trademark Trial and Appeal Board

Nov 14, 2001

No. 75632215 (T.T.A.B. Nov. 14, 2001)

11/14/01 Paper No. 13
BAC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Johns Manville International, Inc.
________

Serial No. 75/632,215
_______

Robert D. Touslee, Esq. for Johns Manville International,
Inc.

Tami Cohen Belouin, Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney).
_______

Before Simms, Walters and Chapman, Administrative Trademark
Judges.

Opinion by Chapman, Administrative Trademark Judge:
Applicant has applied to register the mark ISO 1 on
the Principal Register for “polyisocyanurate roof
insulation” in International Class 17.1
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 on or in connection with its
specified goods, so resembles the mark POLY ISO 2, which is
registered for “polyisocyanurate foam roofing insulation in

1 Application Serial No. 75/632,215, filed February 2, 1999. The
application is based on a claimed date of first use and first use
in commerce of January 1991.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/632215
2
the form of rigid boards, used in the repair, renovation
and construction of improvements to real property” in
International Class 17,2 as to be likely to cause confusion,
or to cause mistake, or to deceive.3
When the refusal was made final, applicant appealed to
this Board. Both applicant and the Examining Attorney have
briefed the issue before us. An oral hearing was not
requested.
Upon consideration of the pertinent factors set forth
in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973), for determining whether a likelihood
of confusion exists, we find that confusion is likely.
Before turning to the merits, we must address some
evidentiary matters. First, applicant attached three
exhibits to its brief on appeal (two declarations of

2 Registration No. 1,977,174, issued May 28, 1996. The claimed
dates of first use and first use in commerce are October 7, 1993
and January 2, 1994, respectively.
3 We take judicial notice of the following definition from the
Means Illustrated Construction Dictionary (Third Edition 2000):

“polyisocyanurate (polyiso) A polymer with a high R-
value commonly used as insulation in the form of
rigid, glass fiber-reinforced foam boards, usually
faced with a foil paper. Increasingly, polyiso board
products are also being used for sheathing. Often
specified for applications where increased fire
resistance is desired.” (Emphasis in original.)

See University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983). See also, TBMP §712.01.
Ser. No. 75/632215
3
employees of applicant regarding no instances of actual
confusion, and an exhibit consisting of photocopies of
three pages from the website of a third-party registrant.
The Examining Attorney objected to this untimely additional
evidence, and requested that it be excluded.
The record in an application should be complete prior
to the filing of an appeal, and additional evidence filed
after appeal will be given no consideration by the Board.
See Trademark Rule 2.142(d), and TBMP §1207.01. Inasmuch
as the exhibits attached to applicant’s brief were first
filed after the appeal, and the Examining Attorney objected
thereto, this additional evidence is untimely pursuant to
Trademark Rule 2.142(d). Accordingly, these three exhibits
have not been considered in making our decision.4
The second evidentiary matter relates to applicant’s
submission of third-party registrations. In its response
to the first Office action applicant merely referred
therein to a few third-party registrations; and later, with
its request for reconsideration, applicant submitted

4 In any event, even if we had considered the employee
declarations, the evidence would not be persuasive of a different
result herein. See In re The Bissett-Berman Corporation, 476
F.2d 640, 177 USPQ 528, 529-530 (CCPA 1973). See also, Weiss
Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14 USPQ2d
1840 (Fed. Cir. 1990).
Also, the evidence from a third-party registrant’s website, even
if considered, would not have persuaded us of a different result
in this case.
Ser. No. 75/632215
4
photocopies of numerous third-party registrations from a
private database search report. However, neither mere
typed listings of third-party registrations, nor reports
from private database searches are appropriate ways to
enter such material into the record, and the Board does not
take judicial notice of registrations in the USPTO. See
Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992);
Cities Service Company v. WMF of America, Inc., 199 USPQ
493 (TTAB 1978); and In re Duofold Inc., 184 USPQ 638 (TTAB
1974). Importantly, in this case applicant was twice
advised by the Examining Attorney that third-party
registrations are properly made of record by submitting
either photocopies of the registrations or photocopies of
the appropriate USPTO electronic printout. (Final Office
action, p. 3, and Office denial of applicant’s request for
reconsideration, pp. 1-2.) In her brief, the Examining
Attorney objected to consideration of these third-party
registrations. These registrations are not properly of
record; however, later in this decision, we will discuss
generally the probative value of said registrations.
We now turn to the merits of the appeal. Applicant
contends that confusion is not likely in this case “because
of (1) differences in the marks, (2) the sophistication of
prospective and actual purchasers, (3) the coexistence of
Ser. No. 75/632215
5
similar marks without any evidence of confusion, and (4)
the long history of and continued coexistence of
Applicant’s mark and the cited mark without any complaints
or evidence of confusion.” (Brief, p. 3.)
We consider first the respective goods. Applicant’s
goods are identified as “polyisocyanurate roof insulation,”
and registrant’s are identified as “polyisocyanurate foam
roofing insulation in the form of rigid boards, used in the
repair, renovation and construction of improvements to real
property.” Applicant’s identification is broad and
certainly encompasses the goods in the cited registration.
Both entities sell polyisocyanurate roofing insulation.
Applicant did not contend otherwise; and we find the goods
are legally identical.5
Applicant contends that the purchasers of both
entities’ goods are professionals, specifically “commercial
builders and roofers” (brief, p. 11). However, there is no
such limitation in either identification of goods. It has

5 In response to a request from the Examining Attorney for
promotional materials or product literature about applicant’s
goods, applicant submitted (on January 27, 2000) photocopies of
“marketing brochures” obtained as pages from applicant’s website.
The following is quoted therefrom:

Description
ISO 1 is a rigid roof insulation board composed of
a closed cell polyisocyanurate foam core bonded in
the foaming process to universal fiber glass
reinforced facers. (Emphasis in original.)
Ser. No. 75/632215
6
been repeatedly held that, when evaluating the issue of
likelihood of confusion in Board proceedings regarding the
registrability of marks, the Board is constrained to decide
the issues based on the goods (or services) as identified
in the application and as identified in the registration,
regardless of what the record may reveal otherwise. See
Octocom Systems Inc. v. Houston Computer Services Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); and
Canadian Imperial Bank of Commerce, National Association v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987).
Inasmuch as there are no restrictions in either
applicant’s or registrant’s identifications of goods as to
purchasers or channels of trade, the Board must assume that
applicant’s goods could move through all the ordinary and
normal channels of trade for such goods, and would be
offered to all the usual purchasers (including not only
commercial builders and roofers, but the general public)
for such products. See Octocom Systems Inc. v. Houston
Computer Services Inc., supra; and The Chicago Corp. v.
North American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
We turn to a consideration of the similarities and
dissimilarities of the involved marks, ISO 1 and POLY ISO
2. Both marks share the syllable ISO, and both are
Ser. No. 75/632215
7
followed by a single Arabic numeral. It is true that
applicant left off the syllable “POLY” and used the number
“1” instead of the number “2.” These minor differences do
not obviate the likelihood of confusion in the minds of
purchasers because they are unlikely to remember the
specific differences between the marks due to the
recollection of the average purchaser, who normally retains
a general, rather than a specific, impression of the many
trademarks encountered. That is, the purchaser’s
fallibility of memory over a period of time must be kept in
mind. See Grandpa Pidgeon’s of Missouri, Inc. v.
Borgsmiller, 477 F.2d 586, 177 USPQ 573 (CCPA 1973); and
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735
(TTAB 1991), aff’d unpub’d (Fed. Cir., June 5, 1992).
Further, even if purchasers noticed and recalled the
specific differences in the marks, purchasers familiar with
registrant’s goods sold under the registered mark POLY ISO
2, upon seeing applicant’s mark ISO 1 on essentially
identical goods, would assume that applicant’s goods come
from the same source as registrant’s goods, and merely
refer to a different model or grade or series of
polyisocyanurate roofing insulation.
In terms of connotation, inasmuch as the goods are
polyisocyanurate products, it is clear that portions of
Ser. No. 75/632215
8
both marks relate thereto.6 That is, POLY ISO and ISO would
have the same or very similar meaning or connotation in
relation to these goods, namely, polyisocyanurate roofing
insulation. The minor differences in the marks do not
offer sufficient differences to create separate and
distinct commercial impressions. See In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
We find that the marks, considered in their
entireties, are similar in sound, appearance, connotation
and commercial impression.
Applicant strongly urges that it found over 75 third-
party registrations of marks which include ISO; that “the
use of ISO as a component of registered marks for similar
goods is highly prevalent”; and that these registrations
establish “that they are weak marks that are readily
distinguishable by consumers.” (brief, pp. 6-7). These
arguments are unpersuasive. As explained previously in
this order, applicant never submitted proper copies of the
third-party registrations. However, in order to

6 In the first Office action, the Examining Attorney had refused
registration of applicant’s mark as merely descriptive under
Section 2(e)(1), and as failing to function as a trademark under
Sections 1, 2 and 45 of the Trademark Act. However, the
Examining Attorney withdrew those grounds for refusal in the
final Office action.
Ser. No. 75/632215
9
present a more complete opinion here, we will briefly
discuss the limited probative value of these third-party
registrations.
The Board acknowledges (based on the dictionary
definition which we have judicially noticed earlier herein)
that both POLY ISO and ISO have highly suggestive meanings
with respect to polyisocyanurate roofing insulation. Also,
it is well settled that third-party registrations, while
not evidence of third-party use or that the purchasing
public is aware of the marks, are competent evidence (when
properly and timely introduced into the record) to show
that others in a particular industry have registered marks
incorporating a particular term, or that the common term in
the marks has a normally understood meaning or
suggestiveness in the industry. See In re Hamilton Bank,
222 USPQ 174 (TTAB 1984). See also, In re Great Lakes
Canning, Inc., 227 USPQ 483 (TTAB 1985).
In this case, applicant’s submission of photocopies of
third-party registrations from a private database report
includes references to pending applications, cancelled and
expired registrations, and registrations based not on use
in commerce, but on foreign registrations. Further, most
of the marks and/or the involved goods in these third-party
registrations are irrelevant in this case, for example,
Ser. No. 75/632215
10
they include the following: UNISORB for “vibration
absorbing materials for acoustic, mechanical insulating,
and similar purposes consisting of felt bodies” (Reg. No.
570,210); ISOTEMP for “metallic and synthetic filaments for
power driven brushes” (Reg. No. 841,835); ISOCORE for
“fluid conveying hoses” (Reg. No. 1,394,862); and ISOCAP
for “plastic in the form of rolls, which is used as
surfaces for skis and snowboards” and “ski parts, namely,
surfaces in the nature of plastic sheets for skis and
snowboards” (Reg. No. 1,940,500).
Applicant specifically emphasizes the coexistence of
the cited registration of the mark POLY ISO 2 for
“polyisocyanurate foam roofing insulation in the form of
rigid boards, used in the repair, renovation and
construction of improvements to real property” (Reg. No.
1,977,174), issuing in May 1996 over an October 1993
registration for ISO-25 for “polyisocyanurate rigid closed
cell foam insulating materials used for a variety of
commercial and industrial uses, for example; storage,
prefabricated cooler and freezer boxes and refrigerated
transportation” (Reg. No. 1,800,767). We agree with the
Examining Attorney that the goods in these two
registrations clearly are differentiated. While it is true
that the listing of examples in Reg. No. 1,800,767 is not
Ser. No. 75/632215
11
all-inclusive, it nonetheless provides clear and specific
examples of the uses of that specific insulating material,
and all of those uses are related to storage and
refrigeration. A reasonable reading and interpretation of
the goods in the ISO-25 registration would not include
roofing insulation.
For all of the above reasons, applicant has not
established that the cited mark is weak. Even if applicant
had established that fact, weak marks are still entitled to
protection against registration by a subsequent user of the
same or similar mark for the same or related goods.7 See
Hollister Incorporated v. Ident A Pet, Inc., 193 USPQ 439
(TTAB 1976).
According to applicant, there have been no instances
of actual confusion in seven years of coexistence of
applicant’s mark and the mark in the cited registration.
However, there is no evidence of applicant’s and
registrant’s geographic areas of sales, or the amount of
the sales under the respective marks. Further, there is no

7 We specifically note that the cited registered mark is on the
Principal Register with no disclaimer and no claim of acquired
distinctiveness under Section 2(f) of the Trademark Act; and it
is, of course, entitled to the statutory presumptions under
Section 7(b). In fact, during the prosecution of this
application, applicant argued that its mark is not merely
descriptive; and the Examining Attorney did not request a
disclaimer of any portion of applicant’s mark.
Ser. No. 75/632215
12
information from the registrant. In any event, the test is
likelihood of confusion, not actual confusion. See Weiss
Associates Inc. v. HRL Associates Inc., supra; and In re
Kangaroos U.S.A., 223 USPQ 1025 (TTAB 1984). This factor
is not persuasive in applicant’s favor in the overall
balancing of the du Pont factors in this case.
While we have no doubt in this case, if there were any
doubt on the question of likelihood of confusion, it must
be resolved against the newcomer as the newcomer has the
opportunity of avoiding confusion, and is obligated to do
so. See TBC Corp. v. Holsa Inc., 126 F.3d 1470, 44 USPQ2d
1315 (Fed. Cir. 1997); and In re Hyper Shoppes (Ohio) Inc.,
837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.