Kuhlke Bergsman Ritchie*

Trademark Trial and Appeal Board

Jun 14, 2013

No. 85321532 (T.T.A.B. Jun. 14, 2013)

Mailed:
June 14, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Purchem Systems, Inc.
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Serial No. 85321532
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Gerald Gowan of Gowan Intellectual Property, for Purcham
Systems, Inc.

Emily Chuo, Trademark Examining Attorney, Law Office 101
(Ronald Sussman, Managing Attorney).
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Before Kuhlke, Bergsman, and Ritchie, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Purcham Systems, Inc. has filed an application to
register on the Principal Register the mark RESILIENCE,1 in
standard character format, for goods in various classes,
including those in International Class 19, as relevant to
this appeal, listed as “wood products, namely, laminated
wooden flooring and laminated wooden panels, both for
interior use.” The examining attorney finally refused

1 Serial No. 85321532, filed May 16, 2011, pursuant to Section
1(b) of the Trademark Act, 15 U.S.C. § 1051(b), alleging a bona
fide intent to use in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 85321532
2
registration only as to the IC 19 goods under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that applicant’s mark, when applied to those goods, so
resembles the registered mark RESILIANCE,2 also in standard
character format, for goods listed as “non-metal building
products, namely, decking boards, windows, fencing, siding,
and roofing; building materials, namely wall board,” in
International Class 19, that when used on or in connection
with applicant’s IC 19 goods, it is likely to cause
confusion or mistake or to deceive.

Applicant filed a timely appeal. Both applicant and
the examining attorney filed briefs. We reverse the refusal
to register.
Our determination of the issue of likelihood of
confusion is based on an analysis of all 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
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). While all the DuPont factors must be considered when
they are of record, the various factors "may play more or
less weighty roles in any particular determination." In re

2 Registration No. 3614447, issued May 5, 2009.
Ser No. 85321532
3
E.I. du Pont, 177 USPQ at 567. "Indeed, any one of the
factors may control a particular case." In re Dixie
Restaurants Inc., 41 USPQ2d at 1533 citing du Pont, 177 USPQ
at 567.
We first consider the du Pont factor of the similarity
or dissimilarity of the marks. The mark in the cited
registration is RESILIANCE, while applicant’s mark is
RESILIENCE. The marks are nearly identical, with the
difference of one vowel in the middle. As for the sound,
although the mark in the cited registration does not appear
to be a word in the dictionary, we find it likely that it
would be pronounced the same as applicant’s mark. See In re
Teradata Corp., 223 USPQ 361, 362 (TTAB 1984) (it is well-
settled that there is no correct pronunciation of a
trademark).
Applicant argues that the commercial impressions of the
marks would be quite different, arguing that its mark “is a
play on the word ‘silence’ in reference to the quiet sound
barrier qualities for interior flooring” while the mark in
the cited registration “is a play on the word ‘resistance’
with regards to resisting natures natural elements and the
durabililty.” This argument falls flat since neither mark
is reminiscent of either “silence” or “resistance,” and both
marks are more similar to each other than they are to either
Ser No. 85321532
4
of those terms. Rather, we find that the commercial
impressions of both marks, in relation to the goods for
which registration is sought (or obtained) gives the same
commercial impression of “resilient” or strong, long-lasting
home building materials. Accordingly, this du Pont factor
weighs strongly in favor of finding a likelihood of
confusion.
Next, we consider the du Pont factors of the similarity
or dissimilarity of the goods and the channels of trade.
The examining attorney did not submit any evidence of third-
party registrations that list goods in both the application
and those in the cited registration. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993) (use-based,
third-party registrations serve to suggest that the goods
are of a type which may emanate from a single source). The
examining attorney did submit evidence of Internet pages,
purporting to show third parties offering for sale goods in
both the application and the cited registration. However,
only three webpages appear to clearly advertise goods
covered by both the application and the cited registration:
National Lumber: Distributor of a comprehensive,
wide-ranging of [sic] building materials plus in-
house design & engineering services. Including
[sic] doors, windows & cabinets, wood & steel . .
. .

Product Information: Distributor of flooring
including cushioned, fireproof & laminate
Ser No. 85321532
5
flooring. Flooring are [sic] available in
different wood species, styles & color finishes.
www.thomasnet.com/profile/3021463/national-lumber.html. Attached to
March 7, 2012 Office Action, p.2.

Edgco Wholesale: Decking: Edgco Wholesale is
proud dealer [sic] of Timbertech composite
decking. Composite decking is made from wood
fibers and plastic resin. . . . Timbertech
Decking is one of the most popular brands of
composite decking currently available.

Laminate Flooring: Our featured laminate floor
manufacturer is Columbia’s Clic Flooring. This
easy to install, glue-less laminate flooring has
the look of real hardwood combined with the
durability of laminate flooring.
Edgcowholesale.com. Attached to March 7, 2012
Office Action, p. 9-10.

LaValley-Middleton Materials: Windows; Flooring;
Roofing; Decking. Lavalleys.net. Attached to
March 7, 2012 Office Action, p. 21-22.

Others do not specify, for example, what types of
“laminates” are being advertised, and whether those would
include “laminated wooden flooring and laminated wooden
panels” as identified in the application:
Fletcher Building: Building Products: Winstone
Wallboards; AHI Roofing;
Laminates + Panels: Our decorative and durable
laminates and panels bring design and technology
to the surface.
www.fletcherbuilding.com.3 Attached to March 7,
2012 Office Action, p. 16-17.

3 We further note that this website appears to be based out of
Australia and New Zealand, making various references to those
locations, and stating: “The Laminex Group is the leading
marketer, distributor and manufacturer of premium decorative
surfaces in Australia and New Zealand.”
Ser No. 85321532
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Even for the few submissions that do include goods from both
the application and the cited registration, it appears from
the webpages that they are sold under different marks.
National Lumber says it is a “distributor” of other’s goods.
Edgco is a wholesaler, advertising various brands. LaValley
Building Supply also displays several brands on its website.
It is not clear from any of this evidence that although the
goods may travel in the same or similar channels of trade,
that is not “ipso facto” enough to establish that the goods
identified in the application on the one hand, and in the
cited registration, on the other, would be perceived by
consumers as emanating from a single source. See Canada Dry
Corporation v. American Home Products Corporation, 175 USPQ
557 (CCPA, 1972); Autac Inc. v. Walco Systems Inc., 195 USPQ
11, 15 (TTAB 1977); and The Alliance Manufacturing Company,
Inc. v. Chicago Musical Instrument Co., 184 USPQ 118, 121
(TTAB 1975).
In conclusion, based on this record, although the marks
are highly similar and have very similar commercial
impressions, and they appear to travel through the same or
similar channels of trade, the examining attorney has not
established that the goods are so related that confusion is
likely to result from the contemporaneous use of the marks
on the involved goods. Accordingly, on this record, we
Ser No. 85321532
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cannot find a likelihood of confusion. We add, however,
that while we have found no likelihood of confusion based on
this ex parte record, in an inter partes proceeding with a
different record, the result may be different.
Decision: The refusal under Section 2(d) is reversed.