Masco Corporation of Indiana

Trademark Trial and Appeal Board

May 24, 2011

No. 77304935 (T.T.A.B. May. 24, 2011)

Mailed:
May 24, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Masco Corporation of Indiana
________

Serial No. 77304935
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Edgar A. Zarins for Masco Corporation of Indiana.

Colleen Dombrow, Trademark Examining Attorney, Law Office 101
(Ronald R. Sussman, Managing Attorney).
_______

Before Quinn, Kuhlke, and Lykos, Administrative Trademark
Judges.

Opinion by Lykos, Administrative Trademark Judge:

Masco Corporation of Indiana (“applicant”) filed an
application to register the mark DIAMOND, in standard character
format, for “plumbing products, namely faucet assemblies
comprised of fluid control valves and non-metal water pipes for
faucets sold together as a unit” in International Class 11.1
The Trademark Examining Attorney refused registration of
applicant’s mark under Section 2(d) of the Trademark Act of

1 Serial No. 77304935, filed October 16, 2007, 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
Serial No. 77304935
2
1946, 15 U.S.C. § 1052(d), on the ground that applicant’s mark
so resembles the registered mark DIAMOND, also in standard
character format, for “fiberglass bath tubs and showers” in
International Class 11,2 that when used on or in connection with
applicant’s identified goods, it is likely to cause confusion or
mistake or to deceive.
The examining attorney has also refused registration under
Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on
the ground that DIAMOND is merely descriptive of applicant's
identified goods.
Upon final refusal of registration, applicant filed a
timely appeal. Both applicant and the examining attorney filed
briefs.3 For the reasons discussed herein, the Board affirms
both refusals to register.
I. Section 2(e)(1) – Descriptiveness Refusal
We first turn our attention to the refusal under Section
2(e)(1) that applicant's mark is merely descriptive of the
identified goods, “plumbing products, namely faucet assemblies
comprised of fluid control valves and non-metal water pipes for
faucets sold together as a unit.”

2 Registration No. 3602516, issued April 7, 2009 on the Principal
Register.

3 Although applicant’s appeal brief does not conform with the
requirements set forth under Trademark Rule 2.142(b)(2), in the
interest of judicial economy, the Board has exercised its discretion
and considered applicant’s brief.
Serial No. 77304935
3
The test for determining whether a mark is merely
descriptive is whether it immediately conveys information
concerning a significant quality, characteristic, function,
ingredient, attribute or feature of the product or service in
connection with which it is used, or intended to be used. In re
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not
necessary, in order to find a mark merely descriptive, that the
mark describe each feature of the goods or services, only that
it describe a single, significant ingredient, quality,
characteristic, function, feature, purpose or use of the goods
or services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987).
Based on the evidence of record, we find that applicant's
mark, DIAMOND, when considered in relation to the identified
goods, immediately informs prospective purchasers that
applicant’s products contain microscopic diamonds in industrial
mineral form as a coating.
The dictionary definitions submitted by the examining
attorney support this finding. The word “diamond” is defined
as:
“An extremely hard, highly refractive crystalline form
of carbon that is usually colorless and is used as a
gemstone and in abrasives, cutting tools, and other
applications.” www.bartly.com

Serial No. 77304935
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“A native crystalline carbon that is the hardest known
mineral, that is usually colorless, that when
transparent and free from flaws is highly valued as a
precious stone, and that is used industrially
especially as an abrasive; also a piece of this
substance.” www.merriam-webster.com

This is confirmed by applicant’s own marketing materials
and web site describing the goods, which emphasize the use of
diamonds as a key component:
As its name suggests, we pair tough, microscopic
diamonds with lead-free components to keep this
revolutionary faucet leak-free and worry-free – even
after 5 million uses.

No Leaks. The threat of leaks is virtually
eliminated, thanks to the exclusive one piece supply
lines and our durable DIAMOND valve, embedded with
microscopic diamonds.

Is it really made of diamonds? Yes, but not the
diamonds you find in jewelry stores. We take carbon
(the source of diamonds) and electronically charge it.
Then using tremendous pressure, we fuse it to a
ceramic plate, creating a diamond coating that is
clear and indestructible.

Applicant contends that the term “diamond” does not “merely
describe the goods but rather promotes [their] premium quality.”
Such an argument would only be availing if applicant’s products
were not in fact comprised of diamonds. However, as noted
above, this is not the case.
Applicant also maintains that because “only a small portion
of the valve incorporates these extremely hard crystalline form
of carbon materials,” the mark DIAMOND is not merely descriptive
of the goods. This argument is not persuasive. It is well
Serial No. 77304935
5
established that a mark is merely descriptive even if it only
describes one significant function, attribute, or property. In
re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed.
Cir. 2004). As noted above in applicant’s own materials
describing its product, the inclusion of diamonds in the
manufacture of the goods is a significant attribute, setting
apart applicant’s goods from those of its competitors.
Lastly, applicant argues that the mark DIAMOND is “a play
on words,” and that no consumer would expect applicant’s
products to contain diamonds. This argument, however, is belied
by the record evidence. Indeed, applicant’s own marketing
materials and web site tout the unique use of microscopic
diamonds in the manufacture of its products to achieve superior
performance. Furthermore, the question of whether a proposed
mark is merely descriptive is not determined by asking whether
one can guess, from the mark itself, what the goods or services
are, but rather by asking, when the mark is seen on or in
connection with the goods or services, whether it immediately
conveys information about their nature. See In re Patent &
Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998). In
other words, the issue is whether someone who knows what the
products are will understand the mark to convey information
about them. In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317
(TTAB 2002); In re Patent & Trademark Serv. Inc., 49 USPQ2d
Serial No. 77304935
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1537, 1539 (TTAB 1998); In re Home Builders Ass'n of Greenville,
18 USPQ2d 1313, 1317 (TTAB 1990); In re Am. Greetings Corp., 226
USPQ 365, 366 (TTAB 1985).
Thus, based on the record evidence discussed above, the
refusal to register under Section 2(e)(1) is affirmed.
II. Section 2(d) Refusal
Next, we consider the refusal to register Application
Serial No. 77304935 for the mark DIAMOND under Section 2(d).
We base our determination under Section 2(d) on an analysis
of all of the probative evidence of record bearing on a
likelihood of confusion. 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 Company, 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) (“The fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in
the marks”). We discuss each of the du Pont factors as to which
applicant or the examining attorney submitted relevant argument
or evidence.
Serial No. 77304935
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A. The Marks
Although applicant argues to the contrary, both applicant’s
and registrant’s marks consist of the single word DIAMOND in
standard character form. Since the marks at issue are
identical, the first du Pont factor weighs heavily in favor of a
finding of likelihood of confusion.
B. The Goods

Next we consider the second du Pont factor, the
similarities or dissimilarities between the goods.
In comparing the goods, we initially note that where
identical marks are involved, as is the case here, the degree of
similarity between the parties' goods that is required to
support a finding of likelihood of confusion declines. In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688-1689 (Fed.
Cir. 1993); Time Warner Entertainment Co. v. Jones, 65 USPQ2d
1650 (TTAB 2002); and In re Opus One Inc., 60 USPQ2d 1812 (TTAB
2001). It is only necessary that there be a viable relationship
between the two to support a finding of likelihood of confusion.
In re Concordia International Forwarding Corp., 222 USPQ 355,
356 (TTAB 1983). The issue, of course, is not whether
purchasers would confuse the goods, but rather whether there is
a likelihood of confusion as to the source of the goods. In re
Rexel Inc., 223 USPQ 830 (TTAB 1984).
Serial No. 77304935
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As to the goods, it is well settled that the question of
likelihood of confusion must be determined based on an analysis
of the goods recited in applicant's application vis-à-vis the
goods identified in the cited registration. In re Shell Oil
Co., 26 USPQ2d at 1690 n.4; and Canadian Imperial Bank v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992). With
regard to this issue, we note that both the examining attorney
and applicant focused their respective analysis on goods not
identified in applicant’s application. Both parties during ex
parte prosecution and in their appeal briefs frequently refer to
applicant’s products as “faucets.” Moreover, much of the
examining attorney’s evidence was submitted for the purpose of
demonstrating the relatedness between registrant’s goods and
“faucets.” Applicant’s goods, however, are not identified in
the application as “faucets” but rather as ““plumbing products,
namely faucet assemblies comprised of fluid control valves and
non-metal water pipes for faucets sold together as a unit.”
(emphasis added). While the Board has considered the parties’
arguments and evidence regarding the relatedness of registrant’s
goods to faucets, such evidence is not probative. As such, the
discussion below pertains only to arguments and evidence
relevant to the goods as identified in applicant’s application.
To show the relatedness of the goods, the examining
attorney submitted into the record numerous copies of use-based,
Serial No. 77304935
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third-party registrations identifying both the applicant’s and
registrant’s goods. The most relevant are as follows:
Registration No. 2837133: “bath tubs” and “plumbing
fittings in the nature of faucet, sink, and bath tub
control valves.”

Registration No. 3245439: “plumbing fittings, namely,
valves” and “bath tubs.”

Registration No. 3142857: “bathtubs” and “plumbing
fixtures for showers, tubs, sinks and drains, namely tub
spouts, flow valves and diverter valves and component parts
and accessories therefor, namely shower glide rails, shower
rods and sink, tub and drain strainers; faucet aerators;
faucet sprayers; mixer faucets for water pipes; shower
control valves and faucet filters.”

Registration No. 3285565: “bathtubs,” “showers,” and
“bathroom fittings, namely valves.”

Registration No. 3570794: “bathtubs,” “showers,” and
“bathroom fittings, namely, shower faucet trim, bathtub
faucet trim, shower slide bar trim, trim for showers,
bathtubs and whirlpool bathtubs, namely, transfer valve
trim, thermostatic valve trim, volume control valve trim
and pressure balance trim.”

Registration No. 2647489: “water valves,” “showers,” and
“complete lines of plumbing fittings for said valves;
mixers, faucet and showers; and parts therefore.”

Registration No. 2930623: “bathtubs,” “plumbing fixtures
for showers, tubs, sinks and drains, namely, tub spouts,
flow valves and diverter valves,” and “shower control
valves.”

Registration No. 3264279: “general plumbing and household
effects, namely, bath and shower fittings, namely, lavatory
faucet valves” and “lavatory fittings, namely, … showers.”

Registration No. 3285565: “Sanitary apparatus and
installations, namely bidets, bathtubs, whirlpool baths,
whirlpools, showers…” and “fixed spouts directly on baths,
single lever fixtures for lavatories, bathroom fittings,
namely valves.”
Serial No. 77304935
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Copies of use-based, third-party registrations may serve to
suggest that the goods are of a type which may emanate from a
single source. See In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785 (TTAB 1993).
The examining attorney also submitted Internet evidence
showing third parties, namely, Sign of the Crab, Kohler, and
Lavaca offering for sale both valves for faucets and bathtubs
and showers on their websites. See excerpts from
www.signofthecrab.com, www.kohler.com and www.lavaca.com. This
is further evidence that consumers expect to find both parties’
products emanating from a common source. Thus, this factor
weighs in favor of finding a likelihood of confusion.
C. Trade Channels
Lastly, we consider the relevant trade channels. In the
absence of specific limitations in the application and/or
registration, we must presume that applicant’s and registrant’s
goods will travel in all normal and usual channels of trade and
methods of distribution. Squirtco v. Tomy Corporation, 697 F.2d
1038, 216 USPQ 937, 939 (Fed. Cir. 1983). See also In re
Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992) (because there
are no limitations as to channels of trade or classes of
purchasers in either the application or the cited registration,
it is presumed that the services in the registration and the
Serial No. 77304935
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application move in all channels of trade normal for those
services, and that the services are available to all classes of
purchasers for the listed services).
In other words, there is nothing that prevents applicant
from offering for sale its products (once the goods are in use)
through the same channels of trade and to the same consumers who
purchase registrant’s goods, and vice-versa. Accordingly, we
find that this du Pont factor also weighs in favor of finding a
likelihood of consumer confusion.
In summary we have carefully considered all of the evidence
of record pertaining to the du Pont likelihood of confusion
factors, as well as applicant’s arguments with respect thereto.
We conclude that there is a likelihood of confusion between
applicant’s DIAMOND mark for “plumbing products, namely faucet
assemblies comprised of fluid control valves and non-metal water
pipes for faucets sold together as a unit” and the registered
mark DIAMOND for “fiberglass bath tubs and showers.”
Decision: Both of the refusals to register under Sections
2(e)(1) and 2(d) are affirmed.