Master Builders, Inc. ChemRex, Inc., and MBT Holding AGv.Polymerica, Inc.

Trademark Trial and Appeal Board

Feb 24, 2004

No. 92030392 (T.T.A.B. Feb. 24, 2004)

Mailed: February 24, 2004
Hearing: Paper No. 51
October 24, 2003 BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Master Builders, Inc., ChemRex, Inc., and MBT Holding AG
v.
Polymerica, Inc.
_____
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
_____
Joseph G. Curatolo and Laura J. Gentilcore of Renner,
Kenner, Greive, Bobak, Taylor & Weber for petitioners.
Lawrence E. Laubscher, Jr. of Laubscher & Laubscher for
respondent.
_____
Before Sams, Chief Administrative Trademark Judge, and
Hohein and Chapman, Administrative Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Master Builders, Inc. (a Delaware corporation with its
principal place of business in Cleveland, Ohio) (hereinafter
Master Builders), ChemRex, Inc. (a Delaware corporation with
its corporate headquarters in Shakopee, Minnesota)
(hereinafter ChemRex), and MBT Holding AG (a Switzerland
corporation with its principal place of business in Zurich)
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
2
(hereinafter MBT Holding) jointly filed five separate
petitions to cancel five registrations owned by Polymerica,
Inc. (a Georgia corporation located in Carrollton, Georgia)
(hereinafter Polymerica or respondent). Respondent’s five
registrations are for the marks shown below for the goods
identified therein:
1 2
1 Registration No. 1,885,743, issued March 28, 1995 for
“waterproofing compound for application to concrete floors and
decks.” Section 8 affidavit accepted. The claimed date of first
use and first use in commerce is September 14, 1990. This
registration is the subject of Cancellation No. 92030319, which
was filed by petitioners on March 27, 2000.
2 Registration No. 1,885,741, issued March 28, 1995 for “epoxy
compound applied as a surface coating to restore and protect
concrete slabs and floors.” Section 8 affidavit accepted. The
claimed date of first use and first use in commerce is July 12,
1990. This registration is the subject of Cancellation No.
92030502, which was filed by petitioners on March 27, 2000.
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
3
3 4
5
3 Registration No. 1,889,531, issued April 18, 1995 for “epoxy
compound applied as a surface coating to restore and protect
concrete slabs.” Section 8 affidavit accepted. The claimed date
of first use and first use in commerce is May 11, 1990. This
registration is the subject of Cancellation No. 92030392, which
was filed by petitioners on April 4, 2000.
4 Registration No. 1,889,532, issued April 18, 1995 for “epoxy
material for bonding skid resistant materials to hardened
concrete.” Section 8 affidavit accepted. The claimed date of
first use and first use in commerce is October 15, 1993. This
registration is the subject of Cancellation No. 92030394, which
was filed by petitioners on April 4, 2000.
5 Registration No. 1,889,533, issued April 18, 1995 for
“decorative thin-set epoxy surfacing compound.” Section 8
affidavit accepted. The claimed date of first use and first use
in commerce is July 12, 1993. This registration is the subject
of Cancellation No. 92030579, which was filed by petitioners on
April 4, 2000.
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
4
The Pleadings
Subsequent to petitioners’ filing the five separate
petitions to cancel, they filed separate first amended
petitions to cancel in Cancellation Nos. 92030319 and
92030502 on March 31, 2000, and a first amended petition to
cancel in Cancellation No. 92030392 on May 12, 2000. These
amended pleadings were accepted by the Board in separate
orders. Ultimately, all five petitions to cancel were
consolidated by Board order dated August 2, 2000 granting
petitioners’ consented motion to consolidate. On July 2,
2001 petitioners filed a second amended pleading in the
then-consolidated case; and on February 26, 2002, the Board
granted petitioners’ motion for leave to file the second
amended pleading, and accepted petitioners’ second amended
pleading. Petitioners’ allegations in their five separate
original petitions to cancel, as well as the allegations in
their three separate first amended petitions to cancel, are
essentially the same with regard to their asserted family of
MASTER marks;6 and in Cancellation No. 92030392, brought
against respondent’s registration for the mark “MasterShield
6 In some of the petitions and amended petitions to cancel,
petitioners pleaded not only their family of marks, but also made
specific reference to certain of those marks (i.e., MASTERSEAL in
Cancellation No. 92030319; MASTER BUILDERS, MASTERSEAL and
MASTERTOP in Cancellation No. 92030392; none separately pleaded
in Cancellation No. 92030394; MASTERSEAL and MASTERTOP in
Cancellation No. 92030502; and MASTER BUILDERS, MASTERSEAL,
MASTERCRON, MASTERTOP, and MASTERPLATE in Cancellation No.
92030579).
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
5
and design,”7 petitioners pled ChemRex’s ownership and use
of the registered mark SONOSHIELD for “protective coatings,
namely, asphalt emulsion waterproofing and dampproofing
compounds and mastics.”8
In petitioners’ second amended pleading referencing all
five consolidated cancellation proceedings, petitioners
referenced their asserted family of marks, and their only
mark referenced separately is MASTERSEAL. Petitioners did
not assert any rights of ChemRex in the mark SONOSHIELD in
their second amended petition to cancel. Also, the only
registration owned by respondent specifically set forth in
the second amended consolidated petition to cancel is
Registration No. 1,885,743 for its mark “MasterProof and
design.” Inasmuch as neither party questioned what was
asserted as against each of the five registrations either in
the separate pleadings or in the second amended consolidated
petition to cancel, and because the record shows these
matters were tried by the parties, the Board deems
petitioners’ second amended consolidated petition to cancel
7 In this decision, the Board will not reproduce respondent’s
registered marks each time they are discussed, but rather, for
simplicity, we will utilize the word mark portion showing the two
words through lower and upper case letters (e.g., “MasterShield
and design”). But to be clear, all references to respondent’s
five involved marks are to the marks as registered in the
specific design form shown above.
8 Registration No. 1,963,339, issued March 19, 1996; Section 8
affidavit accepted; Section 15 affidavit acknowledged. The
claimed date of first use and first use in commerce is April 1,
1974.
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
6
to assert each and all of their alleged family of MASTER
marks against all five of respondent’s involved
registrations, and we deem that petitioners asserted
ChemRex’s rights in the mark SONOSHIELD against respondent’s
registration for the mark “MasterShield and design.”
In the second amended consolidated petition to cancel,
petitioners allege that Master Builders and ChemRex are
subsidiaries of SKW Trostberg AG (a German corporation);
that MBT Holding functions as the legal owner of certain
intellectual property rights of SKW Trostberg AG and its
subsidiaries; that MBT Holding is the owner of eleven
registrations for various “MASTER” marks; that Master
Builders and ChemRex are the current licensees of the marks
in those registrations; that Master Builders has
continuously used the marks in connection with the
manufacture, advertising and sale of “cement, concrete,
mortar, grout, and masonry related goods” (paragraph 7)
prior to respondent’s use of its marks; that Master Builders
has used and ChemRex currently uses the mark MASTERSEAL in
connection with the manufacture, advertising and sale of
“waterproofing coatings for application to concrete slabs”
(paragraph 8); that petitioners’ eleven registered marks are
“highly distinctive and are well known trademarks for the
goods of Petitioner Master Builders, Inc.” (paragraph 13);
that registrant’s marks “are similar as to appearance and
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
7
commercial impression [to petitioners’ MASTER marks], the
dominant feature of each being the lead word MASTER”
(paragraph 15); and that respondent’s marks, when used in
connection with its goods, so resemble petitioners’
previously used and registered trademarks, as to be likely
to cause confusion, mistake, or deception.9
MBT Holding’s eleven pleaded registrations are the
following:10
Registration No. 260,656 for the mark MASTERSEAL for
“material to be applied to the surface of masonry to form a
colorless surface waterproofing coating thereon,” issued
August 27, 1929; Section 8 affidavit accepted, Section 15
affidavit acknowledged; renewed. The claimed date of first
use and first use in commerce is August 1, 1927.
Registration No. 353,184 for the mark MASTERPLATE for
“material to be used as an ingredient for concrete, mortar,
and the like to improve the properties thereof, and
particularly to improve the hardness, to increase resistance
to wear and corrosion, and to lengthen the life of
9 Petitioners’ second amended consolidated petition to cancel
also included a claim of fraud in respondent’s filings of Section
15 affidavits. The Board granted summary judgment on this issue
in respondent’s favor in an order dated February 26, 2002 (pages
6-7).
10 Petitioners have submitted proper status and title copies of
fourteen registrations under a timely notice of reliance filed in
August 2002. In this regard, when a registration owned by a
party has been properly made of record in an inter partes case,
and there are changes in the status of the registration between
the time it was made of record and the time the case is decided,
the Board will take judicial notice of, and rely upon, the
current status of the registration as shown by the records of the
United states Patent and Trademark Office. See TBMP
§704.03(b)(1)(A) (2d ed. June 2003), and the cases cited therein.
The Board hereby takes judicial notice of the current status of
four of the fourteen registrations on which either an initial
Section 8 affidavit of use or a Section 9 renewal became due
during the interim time frame. Specifically, the status thereof
is as follows: Registration Nos. 385,340 (third renewal);
1,571,939 (first renewal); 1,819,616 (Section 9 renewal and
Section 8 affidavit filed January 2004); and 1,965,706 (Section 8
affidavit).
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
8
structures made therefrom,” issued December 28, 1937;
Section 8 affidavit accepted, Section 15 affidavit
acknowledged; renewed. The claimed date of first use and
first use in commerce is July 12, 1937.
Registration No. 385,340 for the mark MASTERKURE for
“materials for curing, hardening and improving concrete
surfaces,” issued February 25, 1941; Section 8 affidavit
accepted, Section 15 affidavit acknowledged; renewed. The
claimed date of first use and first use in commerce is
August 15, 1940.11
Registration No. 823,891 for the mark MASTER BUILDERS
for “cementitious compositions for producing high strength,
non-shrink, wear and impact-resistant concretes, mortars,
grouts and floor surfaces, and components of such
compositions including mineral and metallic aggregates and
colored cementitious compositions,” issued February 14,
1967; Section 8 affidavit accepted, Section 15 affidavit
acknowledged; renewed. The claimed date of first use and
first use in commerce is 1909.
Registration No. 823,864 for the mark MASTER BUILDERS
for “compositions for improving the qualities of cements,
concretes, mortars and grouts; and in addition, compositions
for curings, sealing, hardening, and coloring concrete and
mortar surfaces,” issued February 14, 1967; Section 8
affidavit accepted, Section 15 affidavit acknowledged;
renewed. The claimed date of first use and first use in
commerce is 1909.
Registration No. 833,176 for the mark MASTERCRON for
“material to be applied to fresh concrete to improve the
hardness thereof, to increase resistance to wear and
corrosion and to color same,” issued August 8, 1967; Section
8 affidavit accepted, Section 15 affidavit acknowledged;
renewed. The claimed dates of first use and first use in
commerce are June 18, 1965 and July 26, 1965, respectively.
Registration No. 1,050,681 for the mark MASTERFLOW for
“dry packaged cement mixtures, concrete mixtures, grouts and
mortars,” issued October 19, 1976; Section 8 affidavit
accepted, Section 15 affidavit acknowledged; renewed. The
claimed dates of first use and first use in commerce are
November 9, 1970 and November 18, 1970, respectively.
11 The registration includes a disclaimer of the word “Kure”
because the original registration was for the mark “MasterKure,”
but the registration was amended on August 14, 1973 to the mark
“MASTERKURE.”
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
9
Registration No. 1,571,939 for the mark MASTERTOP for
“screedable, metallic-aggregate topping for concrete,”
issued December 19, 1989; Section 8 affidavit accepted,
Section 15 affidavit acknowledged; renewed. The claimed
date of first use and first use in commerce is June 23,
1986.
Registration No. 1,819,616 for the mark MASTERTOP for
“coatings in the nature of polymer-based flooring
compositions used for protecting and topping cementitious
floors,” issued February 8, 1994; Section 8 affidavit
accepted, Section 15 affidavit acknowledged; Section 8
affidavit and Section 9 renewal filed with the USPTO January
29, 2004. The claimed date of first use and first use in
commerce is January 14, 1988.
Registration No. 1,598,018 for the mark MASTERFILL for
“epoxy or polymer-based joint compound used as a filler for
a wide variety of home and industrial uses,” issued May 29,
1990; Section 8 affidavit accepted, Section 15 affidavit
acknowledged; renewed. The claimed date of first use and
first use in commerce is December 19, 1989.
Registration No. 1,965,706 for the mark MASTERPAVE for
“chemical admixtures for use in improving the properties of
cement, concrete and mortar,” issued April 2, 1996; Section
8 affidavit accepted, Section 15 affidavit acknowledged.
The claimed date of first use and first use in commerce is
January 13, 1994.
MBT Holding’s two additional registrations made of
record during trial are the following:12
Registration No. 2,239,537 for the mark MASTER TITE for
“waterproofing chemical compositions for articles of wood,
concrete, fiberglass, metal, brick, stucco and masonry,”
issued April 13, 1999. The claimed date of first use and
first use in commerce is February 17, 1998.
Registration No. 2,510,468 for the mark MASTERPATCH for
“repair concrete and mortar mixes,” issued November 20,
12 Petitioners pleaded only eleven registrations owned by MBT
Holding. To whatever extent it may be necessary, the Board
specifically holds that petitioners’ second amended consolidated
petition to cancel is hereby considered amended to conform to the
evidence under Fed. R. Civ. P. 15(b), thus now including the
thirteen registrations.
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
10
2001. The claimed date of first use and first use in
commerce is August 19, 1976.
In addition, ChemRex’s registration pleaded in
Cancellation No. 92030392 and made of record is the
following:
Registration No. 1,963,339 for the mark SONOSHIELD for
“protective coatings, namely, asphalt emulsion waterproofing
and dampproofing compounds and mastics,” issued March 19,
1996; Section 8 affidavit accepted, Section 9 affidavit
acknowledged. The claimed date of first use and first use
in commerce is April 1, 1974.13
Respondent filed separate answers to the petitions to
cancel, in each of which it denied the salient allegations
of the petition to cancel and raised the affirmative
defenses of estoppel and acquiescence. In addition, in the
previous Board order dated February 26, 2002 (p. 8), the
Board deemed respondent’s answers “to have been amended, by
agreement of the parties, to include laches as an additional
‘affirmative defense.’”
To summarize, the registrability issues in these
proceedings are petitioners’ claim of priority and
13 With regard to the SONOSHIELD mark, there is no stand-alone
product sold under the mark SONOSHIELD; rather, ChemRex uses
SONOSHIELD to identify a line of products and each product is co-
branded with a second mark. (Abrahamson dep., pp. 39-40.)
The only element common to both respondent’s mark “MasterShield
and design” and petitioner ChemRex’s mark SONOSHIELD, however, is
the term “shield,” which plainly is highly suggestive in the
context of the involved goods. We find in view thereof that,
when considered in their entireties, there is no likelihood of
confusion as to the source of the goods sold under the marks
“MasterShield and design” and SONOSHIELD. No further
consideration therefore need be given to ChemRex’s registration
and asserted rights in the mark SONOSHIELD.
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
11
likelihood of confusion and respondent’s affirmative
defenses of laches, estoppel and acquiescence.
The Record
The record consists of the second amended consolidated
petition to cancel (as discussed above) and respondent’s
answers to the petitions to cancel; the files of
respondent’s five involved registrations; petitioners’
notice of reliance under Trademark Rules 2.120 and 2.122 on
various discovery materials, status and title copies of
thirteen registrations owned by MBT Holding and one
registration owned by ChemRex (the registration for the mark
SONOSHIELD, as discussed above), and various printed
publications and official USPTO records; and petitioners’
testimony, with exhibits, of the following persons:
(1) Paul Abrahamson, ChemRex’s brand marketing manager
for the MBT TNR line of products;
(2) Dennis John Kelley, ChemRex’s executive director of
marketing;
(3) Gary L. Culton, Master Builders’ technical support
person for the product marketing group;
(4) Frederick Raymond Goodwin, a senior development
scientist at Degussa Construction Chemicals (a sister
corporation to Master Builders and ChemRex);
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
12
(5) John Christian Furniss, founder of Horizon Paint, a
distributor of ChemRex products;
(6) John Parke Boyer, Jr., Master Builders’ vice
president of marketing (taken on July 19, 2002); and
(7) Paul A. Sonderman, respondent’s president and chief
operating officer (taken by petitioners on August 19,
2002).
The record also includes respondent’s notice of
reliance on petitioners’ responses to certain of
respondent’s interrogatories; the declaration testimony of
Karen P. Severson, an attorney in the law firm of Laubscher
& Laubscher;14 and the testimony, with exhibits, of Paul A.
Sonderman, respondent’s president and chief operating
officer (taken by respondent on October 24, 2002). During
their rebuttal trial period, petitioners submitted a
“supplemental notice of reliance” under Trademark Rule
2.122(e) on “printed publications (more particularly,
Internet web site pages)”; the rebuttal testimony, with
exhibits, of John Parke Boyer, Jr., Master Builders’ vice
president of marketing (taken February 10, 2003); and the
testimony of Peter A. Vinocur, currently an attorney at
14 On December 31, 2002, the parties submitted a written
stipulation pursuant to Trademark Rule 2.123(b) allowing
submission of the testimony of Karen Severson by way of
declaration.
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
13
Degussa Corporation, and previously Master Builders’ vice
president and general counsel.15
Both parties filed briefs on the consolidated case, and
both parties were represented at the oral hearing held
before the Board on October 24, 2003.
Evidentiary Matters
In their reply brief, petitioners raised for the first
time objections to the admission of (1) the declaration
testimony of Karen P. Severson, and (2) the testimony of
Paul A. Sonderman with respect to his October 24, 2002
deposition, page 75, line 10 through page 77, line 10, and
page 80, line 14 through page 82, line 9, all on the basis
of lack of personal knowledge under Fed. R. Evid. 602,
hearsay under Fed. R. Evid. 802, and hearsay within hearsay
under Fed. R. Evid. 805.
The Trademark Trial and Appeal Board Manual of
Procedure (TBMP) explains that certain objections are not
waived for failure to make them before or during the taking
of the deposition, and may be presented for the first time
in a party’s brief on the case. See TBMP §707.03(c) (2d ed.
15 Portions of both of the testimony depositions of Paul A.
Sonderman and of the first testimony deposition of John Parke
Boyer, Jr., as well as exhibits related thereto, were filed under
seal as confidential. The confidential testimony and exhibits
from the Boyer deposition were utilized by petitioners in their
briefs (see, e.g., pp. 7-8 of petitioners’ opening brief),
thereby waiving the confidentiality thereof.
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
14
June 2003). Clearly this policy contemplates raising the
objection in the plaintiff’s initial brief on the case or in
the defendant’s brief on the case, thereby according the
adverse party an opportunity to respond thereto. These
objections were untimely presented as petitioners did not
raise the objections until their reply brief. Respondent
then had no opportunity to respond in writing. See
Trademark Rule 2.128(a)(1). Objecting for the first time in
petitioners’ reply brief constitutes unfair surprise to
respondent in this consolidated case.
Accordingly, petitioners’ objections are denied as
untimely raised.16 Of course, all evidence of record is
considered for whatever probative value, if any, it may
have.
The Parties
Respondent, Polymerica, Inc., was founded in April 1990
by four partners -- John Masters, Paul Sonderman, Don Mills
and John Del Proposto. It currently has about 25 employees
total with about half at its administrative and research and
development facility in Georgia and half at its factory in
16 We also note that petitioners cited the above-mentioned
specific Federal Rules of Evidence, but did not offer any
argument or other indication of how those evidentiary rules
applied to the facts of the Severson declaration and the involved
portions of the second Sonderman testimony in this particular
consolidated case.
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
15
Kentucky. Paul Sonderman describes Polymerica, Inc.’s
business as follows (second Sonderman deposition, pp. 8-9):
We manufacture polymeric coatings,
material for resurfacing concrete and
wood. We make finishes for floors and
walls. And they’re based on epoxy
compounds and other elements that go
into making up either a decorative or a
functional part of a floor surface.
We go on top of concrete in just the
same way that carpet goes on top of
concrete, tile goes on top of concrete,
and wood floors go on top of concrete.
And we go on walls just the same way as
paint would go on walls, only that it’s
a more durable product.
Respondent’s products are epoxy-based with a few minor
exceptions, one being a polyurethane and another being a
vinyl ester, the latter of which still has an epoxy
backbone.
In its founding year of 1990, respondent began using
its marks “MasterShield and design” for an epoxy compound
applied as a surface coating to restore and protect concrete
slabs, “MasterQuartz and design” for an epoxy compound
applied as a surface coating to restore and protect concrete
slabs and floors, and “MasterProof and design” for a
waterproofing compound for application to concrete floors
and decks. In 1993 it began using its marks “MasterPiece
and design” for decorative thin-set epoxy surfacing compound
and “MasterSpec and design” for epoxy material for bonding
skid resistant materials to hardened concrete.
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
16
The mark “MasterShield and design” was selected not
only “to give John [Masters] some recognition, but because
we wanted to denote the superior quality of our product
line” and also use a term that “expresses some aspect of
that product line.” The globe design was used as it “left
the impression of a shield, and it also gave an indication
of Polymerica being a company that would service the western
hemisphere.” (Second Sonderman dep., pp. 25-26, 66.)
All of respondent’s goods are sold through sales
representatives directly to the end users--specialty
contractors--generally in the industrial and commercial
markets, not residential.
Respondent’s involved goods are marketed under these
marks throughout the United States, primarily through trade
shows, trade journals and direct advertisements. Respondent
advertises through magazines and journals (such as Plant
Services (especially for industrial uses), Design Build
(especially for commercial uses), Journal of Protective
Coatings and Linings, Aviation Maintenance, and Concrete
Construction); trade shows (such as World of Concrete,
Design Build, National Business Aircraft Association,
Concrete Specifiers Institute, and various regional trade
shows); and television.
Polymerica, Inc. currently attends more national trade
shows than regional trade shows. Paul Sonderman and Don
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
17
Mills and various sales representatives have annually
attended the World of Concrete trade show since 1990, when
respondent had a hospitality room, but it began displaying
at a booth at the show as of 1996. The annual World of
Concrete trade show takes place at the convention center in
Las Vegas and it occupies the entire center plus additional
tents outside in the parking area to accommodate all the
groups in the industry. The show is set up in different
pavilions, e.g., repair, equipment, computer, and concrete.
Respondent’s display is in the repair pavilion.
Mr. Sonderman also testified regarding the Concrete
Construction Buyers’ Guide, which is published by Hanley-
Wood to accompany the annual World of Concrete trade show.
The buyers’ guide includes product categories, manufacturers
and trade names. Mr. Sonderman explained that the companies
fill out a form listing the products they provide and the
categories they fit under. And he pointed out that the
categories Polymerica is listed under do not include those
of Master Builders and vice versa. (Second Sonderman dep.,
pp. 77-80, and Exhibit No. 21.)
The coatings sold under respondent’s “MasterShield and
design,” “MasterProof and design” and “MasterSpec and
design” marks are particularly for industrial uses such as
factories, warehouses, and tank linings, but with some
commercial uses such as by retailers and supermarkets.
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
18
These types of products involve approval not through an
architect but more by the plant engineers and purchasing
people. The product sold under the “MasterQuartz and
design” mark is a semi-decorative product and fits into both
the industrial and commercial categories. Respondent’s
design polymers offered under the mark “MasterPiece and
design” are more for high-end or decorative commercial
application of architectural finishes for floors for places
such as offices, hotel lobbies, shopping malls, and
restaurants.
Respondent maintains a website which provides only a
general overview of respondent’s products without all the
technical specifications and warnings as to the individual
goods.
The purchasers of respondent’s products are building
owners, plant owners, contractors and architects, who must
be knowledgeable about the products and the competition.
Respondent considers its competitors to be mainly General
Polymers, Stonehard, Dex-O-Tex, HP Fuller and Key Resins.
Mr. Sonderman established that respondent owns four
other registrations (which are not the subject of any
petition to cancel by petitioners). Those registrations are
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
19
for the marks shown below for the goods identified therein:
17 18
19 20
Respondent’s annual advertising costs and sales figures
were submitted as confidential and thus will not be stated
17 Registration No. 1,879,441 for “chemical and heat resistant
surfacing material for concrete,” issued February 21, 1995;
Section 8 affidavit accepted, Section 15 affidavit acknowledged.
The claimed date of first use and first use in commerce is May
23, 1990.
18 Registration No. 1,885,742 for “stress-relieving epoxy joint
filler for concrete surfaces,” issued March 28, 1995; Section 8
affidavit accepted, Section 15 affidavit acknowledged. The
claimed date of first use and first use in commerce is August 9,
1990.
19 Registration No. 1,885,744 for “epoxy surfacing compound for
renovating and protecting concrete floors,” issued March 28,
1995; Section 8 affidavit accepted, Section 15 affidavit
acknowledged. The claimed date of first use and first use in
commerce is October 4, 1990.
20 Registration No. 1,906,988 for “impact and wear resistant
polymer surfacing compound for concrete floors and surfaces,”
issued July 25, 1995; Section 8 affidavit accepted, Section 15
affidavit acknowledged. The claimed date of first use and first
use in commerce is November 14, 1990.
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
20
with specificity. However, suffice it to say that those
numbers have grown steadily in the 10-year period from 1991
to 2001.
Respondent is not aware of any instances of actual
confusion involving its and petitioners’ marks. Mr.
Sonderman testified that he understands petitioners’
products sold under their “MASTER” marks to be “concrete
additives, flow-control agents, shake additives that would
be troweled into the concrete, but mostly additives for the
concrete or hardeners and densifiers of the concrete that
are added immediately while the concrete’s being poured and
then incorporated into the concrete itself.” (Second
Sonderman dep., p. 64.)
Mr. Sonderman was aware of Master Builders because,
being in the epoxy compound business as it relates to
floors, one has to know what one’s product is going over
and, if it is going over concrete, it has to stick to the
concrete, so one needs to know what is in the concrete.
He also testified he knew of Master Builders because he
received a February 1, 1994 letter sent to respondent
(specifically addressed to “Mr. Paul Sanderman” [sic]) by an
attorney (Mr. Barry Solomon, now deceased) at Sandoz
Corporation (hereinafter Sandoz), then the parent company of
Master Builders, in which the attorney referenced
respondent’s marks “MASTERSHIELD, TROWELMASTER,
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
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21
MASTERQUARTZ, LEVELMASTER & MASTERPROOF,” stating that those
marks would cause confusion with their marks incorporating
the term MASTER, including MASTER BUILDERS, MASTERFILL,
MASTERPREN, MASTERFLOW, MASTERTOP, MASTERPLATE and
MASTERCRON; and demanding that respondent “cease and desist
from further use of these infringing trademarks.”
Respondent’s attorney, in response, sent a letter dated
March 1, 1994 setting forth the reasons respondent believed
there was no likelihood of confusion; and on August 11, 1994
Sandoz’s attorney sent a fax memo to respondent’s attorney
stating “it was nice speaking to you this morning regarding
the trademark conflict involving ‘MASTER’ marks [used by
respondent and Master Builders]”; and that he was bringing
respondent’s attention to their registration for the mark
MASTERTOP for “coatings in the nature of polymer-based
flooring compositions used for protecting and topping
cemetitious floors” (Registration No. 1,819,615); and
closing with “I look forward to hearing from you.”
Respondent did not respond thereto and heard nothing further
from Master Builders or their parent or sister companies
until the petitions to cancel were filed in 2000. (Second
Sonderman dep., pp. 55-60, and Exhibit Nos. 7, 9 and 10.)
Petitioner Master Builders, Inc. was first established
in 1909 by Mr. Fleishiem, a contractor, who developed a
cement composition to replace wood block floors. According
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
22
to Mr. John Parke Boyer, Jr., Master Builders’ vice
president of marketing, the founder, Mr. Fleishiem, left the
contracting business and from the 1920s through the 1940s,
the company developed a line of cement products, primarily
floor products; and in the 1950s and 1960s the company began
to sell the additive product separately from the bagged
cement product. Flooring, grouting and concrete repair
remained key parts of the business.
ChemRex is a sister company to Master Builders. As
explained by Dennis John Kelley, ChemRex’s executive
director of marketing, SKW (a German held company) purchased
Master Builders and ChemRex, both of which license the
“Master line” from MBT Holding, a company which holds title
to and maintains various intellectual property rights.
Around 1999 or 2000 when SKW purchased Master Builders, they
already owned ChemRex. According to Mr. Boyer, Master
Builders’ “main brand was Master Builders” and ChemRex’s
“main brand” was “Sonneborn.” (First Boyer dep., pp. 84-
85.)
Mr. Boyer’s understanding of the history of how Master
Builders came to use “MASTER” as a formative in its
trademarks is that it began with the original founder of
Master Builders, Mr. Fleisheim, “using the name the master
built method of flooring systems and [he] finally took the
name for his company.” The “first products were just called
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
23
Master Builder Concrete Floor or Filler, Master Builder
Grout, and there was no real effort at trademarking, but
just using the same descriptive sort of thing.” The first
efforts to trademark were under the name EMBCO (phonetic
letter “m,” the letter “b” and “co” for company). Then in
the 1920s, when the product range began to widen, “it became
necessary to have more than the simple descriptive names”;
thus, he began to “introduce product names using Master.”
(First Boyer dep., pp. 27-28.)
He acknowledged on cross-examination that he was not
sure of the name of the company when it began in 1909, and
he was not sure of why Mr. Fleisheim chose the name “Master
Builders.” Mr. Boyer also testified that his understanding
of terms such as “master electrician” and “master carpenter”
is that it indicates the person using that name has mastered
the application area, and that it is so recognized
conventionally today. This witness explained that his
conjecture would be that Mr. Fleisheim selected the name
Master Builders because it indicates that if you hired him,
he has mastered building the flooring systems he offered.
(First Boyer dep., pp. 95-96.)
Mr. Boyer’s testimony evidences (see, e.g., Exhibit No.
13) use of petitioners’ various “MASTER” marks, such as
MASTER BUILDERS by at least 1913; MASTERMIX, MASTERSEAL and
MASTERTEX by at least 1933; MASTERPLATE by at least 1968;
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
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and MASTERTOP by at least 1998. Petitioners’ witnesses
Boyer and Kelley essentially testified that the marks shown
in the registrations relied on by petitioners in this case
have been in continuous use as of the dates set forth in the
respective registrations. (Petitioners’ brief, p. 7.)
The Board notes, however, a few exceptions to the above
were the following: First, Mr. Kelley testified that he
believed the mark MASTER TITE (Registration No. 2,239,537)
is not currently being used (dep., p. 13). Second, Mr.
Boyer testified the first use date for the mark MASTERSEAL
was in 1927-- as set forth in Registration No. 260,656, and
for the two MASTERTOP registrations the first use dates were
those set forth in the registrations, specifically, June 23,
1986 for the goods in Registration No. 1,571,939, and
January 14, 1988 for the goods in Registration No. 1,819,616
(first Boyer dep., pp. 21-23), but, in his rebuttal
deposition he testified that Master Builders first made an
“epoxy-based flooring, coating product line” in 1983 or 1984
under the marks MASTERTOP and MASTERSEAL, and that he did
not “quite know how to understand that date [the date of
first use set forth in Registration No. 1,819,616 for the
mark MASTERTOP]” (second Boyer dep., pp. 6, 19 and 24).
Finally, Mr. Boyer mistakenly testified to the date of the
Trademark Act of February 20, 1905 (Master Builders being
founded in 1909) rather than the use date of August 15, 1940
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
25
for the mark MASTERKURE in Registration No. 385,340 (first
Boyer dep., pp. 23-24).
As part of Exhibit No. 24 (first Boyer deposition), a
“Master Builders Product Handbook” (Bates 002271) explains
that “the overall mission of Master Builders is to improve
new concrete, protect existing concrete and repair
deteriorating concrete.” (Emphasis in original.) Mr. Boyer
testified that the business of Master Builders is in four
segments -- add mixtures, flooring, grout and repair
products. He explains add mixtures as chemicals added to a
cement mix intended to modify the resultant concrete
product.21 Petitioners’ products in this segment are those
sold under marks such as MASTERPAVE and MASTERMIX.
Their flooring product is a surfacing (either cement
based or polymer based) which can be placed over unhardened
or hardened concrete to protect against wear (impact
resistance), environmental damage, or chemical damage.
These “MASTER” branded products include those sold under the
marks MASTERCRON, MASTERPLATE and MASTERTOP, the first two
of which are dry mixtures that are troweled into the surface
of unhardened concrete, so that they become an integral part
of the concrete, and the latter is a sealer or topping
placed over the surface of hardened concrete. The flooring
21 These are liquid chemicals according to Peter Vinocur. (Dep.,
p. 8.)
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
26
product segment also includes petitioners’ MASTERSEAL
product.
In the involved industry, grouting refers to “material
placed into a confined space using … the flowability of the
product. … [I]t’s intended to go under a piece of industrial
machine or under a foundation to support that weight that’s
above it….” (First Boyer dep., p. 92.) This product is
sold under the mark MASTERFLOW.
Petitioners’ repair products segment relates to
concrete repair such as repairing a damaged floor or balcony
generally by filling cracks or repairing spalls or replacing
an entire section of concrete. Such products are offered
under the mark MASTERPATCH.
As further explained by Mr. Boyer, the Master Builders’
“MASTER” line of products have been divided (since 1999 or
2000) and “the Master Builders protection and repair product
lines are now marketed by ChemRex” and the add mixtures are
marketed by Master Builders. (First Boyer dep., pp. 85 and
104.) That is, the add mixtures are the full responsibility
of Master Builders, while the flooring, grout and repair
products are the full responsibility of ChemRex. None of
petitioners’ various “MASTER” products are sold by both
Master Builders and ChemRex. Master Builders is now a
wholly owned-subsidiary of Degussa Corporation.
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
27
Master Builders’ Mr. Boyer considers respondent to be a
competitor to Master Builders or ChemRex with regard to
their floor surfacing materials, which provide “concrete
protection.” (First Boyer dep., p. 111.) Mr. Abrahamson,
ChemRex’s brand marketing manager, also finds the “biggest
conflict” in the parties’ markets is “protection of any
substrate that is in need of an abrasion resistant coating,
a chemical resistant.” (Abrahamson dep., p. 33.)
Petitioners view their customers as being the entities
that literally purchase petitioners’ products, and those
customers are petitioners’ distributors. But petitioners
market their products not only to their distributors (direct
customers), but also to the end users such as contractors,
building owners, engineers and architects. Mr. Abrahamson
(of ChemRex) explained that ChemRex also sells its products
to its distributors, and the end users (e.g., contractors)
buy from the distributors.
Mr. Abrahamson testified that the end users of
petitioners’ products are the applicators that apply the
product, such as, water-proofers for MASTERSEAL products,
grouting contractors for the MASTERFLOW products, and repair
contractors for the MASTERPATCH products.
As explained previously herein, the confidentiality of
Master Builders’ sales and advertising figures has been
waived by petitioners. Petitioners’ advertising and
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
28
promotional costs for a five year period (1996-2000) were
approximately $1 to $1.5 million annually; and the sales of
its MASTER branded products exceeded $40 million over that
same period. (Exhibit Nos. 25 and 26).
Petitioners advertise through trade journals, trade
shows, and through their own distributor network, including
specific promotional pieces highlighting specific products.
Petitioners answered respondent’s interrogatory No. 26
regarding any instances of actual confusion as “None
determined to date.…”
However, Gary Culton, Master Builders’ technical
support person for its product marketing group, testified
that he works with a group of four to six people answering
calls about its products, how to use them, what types should
be used in different situations, and the like. He has been
in his job for about ten years. The group answers a total
of about 150 calls per day. In late 1999 or early 2000, Mr.
Culton received a phone call from one of Master Builders’
sales representatives, explaining that one of his
distributors was looking for a product called MASTERSHIELD,
and could Gary help him out. He did not recall any other
inquiries regarding any Polymerica product in the ten years
he has been answering such calls; and he did not recall if
he notified the “communications group,” although he would
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
29
usually “pass stuff like that along to them.” (Culton dep.,
p. 11.)
Petitioners’ witnesses generally testified that they
did not become aware of respondent until around 1997 to 1998
or later. For example, Mr. Boyer testified he first became
aware of Polymerica at a World of Concrete trade show and he
first learned that Polymerica used trademarks that include
the word “MASTER” in 1999 or 2000 because it was brought to
his attention by someone, although he could not remember
whom; Paul Abrahamson first became aware of Polymerica when
he was notified in 2002 by his legal department that
proceedings herein were moving forward, and apart from
discussion with the legal department, he had no previous
knowledge of respondent’s involved marks and if he did see
any of Polymerica’s “Master” name products at the World of
Concrete trade show, he “didn’t pay any particular mind to
it.” (Abrahamson dep., p. 49); and John Furniss, founder of
a paint company which is one of ChemRex’s distributors, had
never heard of respondent before he talked to petitioners’
attorney.
Mr. Peter Vinocur was general counsel for Master
Builders from 1992-1999, and he is now chief legal officer
of Degussa Corporation. He testified that at Master
Builders there was great concern if a third-party used a
mark with “MASTER” especially if it was used in a
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
30
competitive market; and that the cease and desist letter
from Master Builders’ then-parent company Sandoz Corporation
to respondent would have been as a result of discussions
between Mr. Vinocur and Sandoz’s in-house attorney, Mr.
Barry Solomon. He did not recall any other steps to be
taken against respondent in 1994 other than the cease and
desist letter; and Mr. Vinocur took no further action. He
was not aware of any further action taken by Sandoz
following the two correspondences of 1994. Also, he had no
further discussions with the Master Builders’ business
people between 1994 and 2000 when the petitions to cancel
were filed.
Standing
Standing requires only that a party seeking
cancellation of a registration have a good faith belief that
it is likely to be damaged by the registration. See Section
14 of the Trademark Act, 15 U.S.C. §1064. See also, 3 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition, §20:46 (4th ed. 2001). The belief in damage
can be shown by establishing a direct commercial interest.
In the consolidated case now before us we find that
petitioner MBT Holding’s ownership of and Master Builders’
and ChemRex’s licensed use of the registered marks for the
registered goods suffice to establish each petitioner’s
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
31
direct commercial interest and its standing to petition to
cancel. See Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1844 (Fed. Cir. 2000).
Priority
MBT Holding owns thirteen registrations, all for
various “MASTER” marks. Nonetheless, priority must be
proven in a cancellation proceeding. See Brewski Beer Co.
v. Brewski Brothers Inc., 47 USPQ2d 1281, at 1283-1284 (TTAB
1998). In this consolidated case, petitioners have
established continuous use in the United States of several
of the various registered “MASTER” marks for the goods
identified in those registrations (such as petitioners’
registrations for the marks MASTER BUILDERS, MASTERSEAL,
MASTERPLATE, MASTERTOP, MASTERKURE, MASTERCRON, MASTERFILL,
MASTERFLOW and MASTERPATCH), the earliest being around 1909
and the latest (but still prior to respondent’s first use of
some of its marks in 1990) being 1989. Petitioners have not
established priority with respect to two of their registered
marks, MASTERPAVE and MASTER TITE. Petitioners’ proven
first use of MASTERPAVE was in 1994 and of MASTER TITE in
1998, both being subsequent to respondent’s first use of
each of its five registered marks (three in 1990 and two in
1993). Moreover, with regard to petitioners’ MASTER TITE
mark, one of petitioners’ witnesses, Mr. Kelley, testified
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
32
that that mark was no longer in use. Thus, petitioners have
established priority as to all but two of their registered
marks. Respondent, in any event, did not contest
petitioners’ priority.
Likelihood of Confusion
Before we turn to consider the merits of these
petitions to cancel under the du Pont factors, we note that
the registrations petitioners seek to cancel are prima facie
evidence under Section 7(b) of the Trademark Act, 15 U.S.C.
§1057(b), of the validity of the registrations, of
respondent’s ownership of the registered marks, and of
respondent’s right to exclusive use of the marks in commerce
in connection with the identified goods. Petitioners thus
have the burden of establishing evidence to rebut these
presumptions. Cancellation of trademark or service mark
registrations around which a large and valuable business has
been created over the years should be granted only with due
caution. See Era Corp. v. Electronic Realty Associates,
Inc., 211 USPQ 734, 746 (TTAB 1981), citing to several CCPA
cases, including Sleepmaster Products Co. v. American Auto-
Felt Corp., 241 F.2d 738, 113 USPQ 63 (CCPA 1957); and
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
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Rockwood Chocolate Co., Inc. v. Hoffman Candy Co., 372 F.2d
552, 152 USPQ 599 (CCPA 1967).22
Our determination of likelihood of confusion is based
on an analysis of all of the facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. 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).
The first du Pont factor we consider is the similarity
or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.
Initially, we note that petitioners’ marks are registered in
typed form, and respondent’s marks are composite marks with
each consisting of a word portion and a design portion (as
reproduced earlier). Although petitioners contend, and have
shown, that respondent sometimes uses the word portions of
its marks without the design features,23 we emphasize that
we must consider respondent’s marks as registered, and that
the overall question before the Board is whether
22 Of course, a plaintiff’s burden of proof is not greater in a
cancellation proceeding than in an opposition proceeding. See
Cunningham v. Laser Golf Corp., 55 USPQ2d at 1848; and Cerveceria
Centroamericana, S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13
USPQ2d 1307, 1309 (Fed. Cir. 1989).
23 There is also evidence showing respondent’s use of its marks in
the design form shown in its registrations. (See e.g.,
respondent’s Exhibit Nos. 30-34, labels used on the containers in
which the products are shipped and sold.)
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
34
respondent’s registrations for its composite marks should be
cancelled.
Respondent argues that the only common element of the
respective marks of all parties is the descriptive word
“MASTER”; that the suffix portions of each party’s marks are
different, the presentation of respondent’s marks is
different with respondent’s in lower and upper case, and the
design portions of respondent’s marks create completely
different marks from petitioners’ marks; that the suffixes
of all of the marks, as well as the design portion of
respondent’s marks, are the dominant features of these
marks; that marks with a descriptive element are entitled to
a narrow scope of protection; and that the marks of the
respective parties are dissimilar in sound, appearance,
connotation and commercial impression.
Petitioners, on the other hand, assert that they have a
family of “MASTER” marks; that the word “MASTER” is the
dominant portion of respondent’s composite marks and is also
the dominant portion of each of petitioners’ word marks as
the suffixes of respondent’s and petitioners’ marks each
suggest properties or uses associated with concrete or
cement; that consumers are most likely to remember the word
portion of respondent’s marks; and that, when properly
analyzed, the parties’ marks, although having “some
differences in appearance and sound, … in their entireties
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
35
are similar in appearance, sound, and particularly in
connotation and commercial impression.” (Brief, pp. 14-15.)
Clearly each of the involved marks of the parties
includes the word “MASTER,” but that is the only common
element. All of respondent’s various “MASTER” marks end in
words different from the various suffix words used by
petitioners in their various “MASTER” marks. In addition,
each of respondent’s registered marks includes a globe and
banner or multiple line design, whereas petitioners’ marks
are registered in typed form.
Regarding petitioners’ asserted family of “MASTER”
marks, it is well settled that mere adoption, use and
registration of a number of marks having a common feature
for similar or related goods or services does not in and of
itself establish a family of marks. Rather, in order to
establish a family of marks, it must be demonstrated that
the marks asserted to comprise the “family,” or a number of
them, have been used and advertised in promotional material
or used in everyday sales activities in such a manner as to
create common exposure and thereafter recognition of common
ownership based upon a feature common to each mark. See J &
J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18
USPQ2d 1889 (Fed. Cir. 1991); Witco Chemical Co. v.
Whitfield Chemical Co., 418 F.2d 403, 164 USPQ 43 (CCPA
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
36
1969); and Dan River, Inc. v. Apparel Unlimited, Inc. 226
USPQ 186 (TTAB 1985).
While the record reveals that petitioners use and
advertise many of their “MASTER” marks together and create
common exposure of the marks to the consumers (see, e.g.,
petitioners’ Exhibit Nos. 14 and 24), the problem with
petitioners’ argument is that the “family of marks” doctrine
is based on the theory that the party asserting the “family”
has an exclusive proprietary interest in the “surname”
element which is common to the “family.” That is, the
“family” feature must be distinctive, not descriptive or
highly suggestive or so commonly used in the trade that it
cannot function as the “surname” of the “family.” See Land-
O-Nod Co. v. Paulison, 220 USPQ 61, 65-66 (TTAB 1983). As
stated by Professor McCarthy, “in effect, the family
‘surname’ or distinguishing element is recognized by
customers as an identifying trademark in and of itself when
it appears in a composite.” 3 J. Thomas McCarthy, McCarthy
on Trademarks and Unfair Competition, §23:61 (4th ed. 2001).
Thus, the question becomes whether the “family” feature or
“surname” is distinctive enough to trigger recognition in
and of itself. See Spraying Systems Co. v. Delavan Inc.,
975 F.2d 387, 24 USPQ2d 1181, 1187 (7th Cir. 1992); and
Hester Industries v. Tyson Foods, 2 USPQ2d 1646, 1647 (TTAB
1987).
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
37
Petitioners’ witness Frederick Raymond Goodwin, a
senior development scientist with Degussa Construction
Chemicals (a successor-in-interest to Master Builders),
testified that in his position he develops new products and
supports and maintains existing products; that he provides
technical assistance to other parts of his company (such as
knowing how products are used and their applications); and
that in 2001 he was asked by his boss to obtain information
on respondent. What he learned was that respondent used the
prefix “MASTER” with a “suffix word describing some type of
the application in a manner similar to what Master Builders
or Degussa” does with their marks; that “sometimes the
descriptor name would precede the word ‘master,’ sometimes
it would follow the word ‘master,’ and as always there were
some exceptions to the rule…”; and that neither respondent
nor petitioners were one hundred percent consistent in the
make up of their marks for their “MASTER” products. (Goodwin
dep., p. 11.)
In this consolidated case, it is apparent that the term
“MASTER” is, at best, highly suggestive in relation to
petitioners’ goods. We take judicial notice of the Random
House Dictionary of the English Language (2d ed. 1987)
definition of “master” as “… 8. a worker qualified to teach
apprentices and to carry on a trade independently.” In
addition, one of petitioners’ own witnesses stated that he
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
38
“would conjecture” that it was in that context that the name
“Master Builders” was selected, i.e., the founder had
mastered building the flooring system. (First Boyer dep.,
pp. 95-96.) Thus, the term “MASTER” is intended to relate
to a level of superiority in the trade. Also, there are of
record several third-party uses of the term “MASTER” for
goods in the same or related industries, which will be
discussed more fully later herein.
Nonetheless, petitioners’ argue that their “MASTER”
marks are “distinctive” and “not merely descriptive”; and
that their evidence on the nature and extent of the sales
and advertising of their goods offered under their “MASTER”
marks proves “the secondary meaning attained by Petitioners’
MASTER marks.” (Reply brief, pp. 7-8).
Despite respondent’s assertion that petitioners’ marks
are merely descriptive, this record does not establish that
as fact. However, the highly suggestive nature of the term
“master” in relation to the goods involved in this
consolidated case, coupled with numerous third-party uses,
establishes that such term is not a distinguishing element
which could function as the “surname” of a “family” of
marks. Moreover, petitioners have not promoted the term
“MASTER” as the “family surname.”
Therefore, we disagree with petitioners’ assertion that
they have established a “family” of “MASTER” marks, nor
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
39
could petitioners establish a “family” of “MASTER” marks due
to the nature of the “surname.”
We have considered the similarities and dissimilarities
of petitioners’ various “MASTER” marks individually vis-a-
vis respondent’s various “Master___ and design” marks, as
registered. We find that respondent’s marks are somewhat
similar in sound and connotation to petitioners’ “MASTER”
marks, i.e., the word portions each consist of the first
word “MASTER” with a suffix word (generally relating to the
nature of the application of that particular product), and
the connotation of “master” is similar for the parties’
respective goods. However, the parties’ respective marks
are very dissimilar in appearance and overall commercial
impression, specifically in view of the rather conspicuous
and prominent globe and banner or line design, as well as
the upper and lower case lettering, in respondent’s marks.
“It has frequently been held that trademarks,
comprising two words or a compound word, are not confusingly
similar even though they have in common one word or part
which is descriptive or suggestive of the nature of the
goods to which the marks are applied, or of the use to which
such goods are to be put.” Smith v. Tobacco By-Products &
Chemical Corp., 243 F.2d 188, 113 USPQ 339, 340 (CCPA 1957)
(BLACK LEAF and GREEN LEAF not confusingly similar for the
same goods). That is, the fact that the marks share a
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
40
common word or common initial letters does not necessarily
mean that the marks as a whole project the same image or
impression. See Olay Company, Inc. v. Avon Products, Inc.,
178 USPQ 502 (TTAB 1973)(OLAND and OLAY not confusingly
similar for closely related goods).
We find that the dissimilarities in the appearance and
overall commercial impressions of the parties’ “MASTER” and
“Master___ and design” marks is a factor that favors
respondent. In this consolidated case, the dissimilarities
between the marks, especially when considered on balance
with the other du Pont factors discussed infra, are
significant. See Champagne Louis Roederer S.A. v. Delicato
Vineyards, 148 F.3d 1373, 47 USPQ2d 1459 (Fed. Cir. 1998).
That is, the factor of the dissimilarities of the parties’
marks weighs heavily in favor of respondent.
Petitioners contend that their “MASTER” marks are
strong because they have extensively advertised their
“MASTER” marks for over 75 years; they have spent about $1.5
million dollars annually on advertising and promotion over
the last five years; and one of petitioners’ distributors
testified that if he saw “master” on a product he would
“call the ChemRex guy and ask him if I could quote a Master
Builders product.” (Furniss dep., pp. 15-16.) They also
specifically contend that their “MASTER” marks are famous
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
92030579
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based on their sales and advertising figures, and their
length of use.
Respondent argues that petitioners’ marks are weak and
are not famous because they are formed of the descriptive
word “MASTER” and a descriptive suffix relating to the
particular product; and because there is extensive third-
party use of the term “MASTER” in connection with
construction products and services.
Petitioner Master Builders has clearly been in business
for many decades, and it is clear that Master Builders and
ChemRex together spend significant amounts of money as
licensees to advertise and promote their “MASTER” products
with the result of significant sales figures for those
goods. While this evidence establishes the success of the
products at some level, it does not prove the degree of
renown of petitioners’ “MASTER” marks in petitioners’
product field. There is no direct evidence of consumers’
perceptions of petitioners’ “MASTER” marks. The testimony
of one of ChemRex’s distributors (Furniss) that, if he saw
“master” in a specification, he would call ChemRex and ask
if it was a Master Builders’ product, is extremely limited
evidence of fame. As explained above, we find that
petitioners’ “MASTER” marks are highly suggestive marks. As
petitioners have acknowledged, their marks are a combination
of the word “master” and a suffix word to help the customer
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
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understand the general application of the product (e.g.,
MASTERPATCH is for repairs, MASTERFLOW is for flowable
grout). (First Boyer dep., p. 53.)
The highly suggestive nature of such marks is also
demonstrated by the several third-party uses of “MASTER” on
and in connection with similar and related goods.
Respondent has introduced evidence showing several other
“MASTER” branded products and the use thereof in the same or
related fields. In her declaration, Karen Severson, averred
that she searched the USPTO’s Trademark Electronic Search
System (TESS), locating some third-party registrations for
marks including the term “MASTER” for the same or related
products, and that she found various corresponding Internet
web sites showing use of the third-party registered marks,
as well as other Internet web sites showing uses of other
third-party marks. The third-party registrations and third-
party uses to which she averred consist of the following:
(1) printouts of pages from the
www.custombuildingproducts.com web site showing
“MASTERBLEND” used for “Thin-Set Mortar[,]” an “all-purpose
thin-set for walls and floors. Contractor preferred for its
easy troweling and extended working time….” The products’
“Areas of Use-…concrete, mortar beds, masonry”;
(2) printouts of pages from the www.kcmaster.com web
site showing “MASTER MUDJACKERS” used for “Mudjacking,”
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
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which is “a proven, cost-effective method of permanently
leveling misaligned, unlevel concrete slabs. By injecting
mudjacking material under a lower level concrete slab, two
uneven slabs can be repaired to their original condition”
and this “innovative mudjacking pumping system [was]
designed especially for residential and commercial slabs”;
(3) printouts of pages from the www.masterterrazzo.com
web site of “Master Terrazzo Technologies LLC” showing
“MASTERFLEX” used for a “100% solids, flexible epoxy
membrane” “ideal for crack detailing or full slab
underlayments to mitigate reflective cracking”;
(4) Registration No. 1,454,779 for the mark MASTER BOND
for “coatings for use on piping, process, equipment, floors,
roofs, tanks,…” and “adhesives and sealants, namely epoxies…
for all-purpose industrial use,” as well as printouts of
pages from the www.masterbond.com web site showing MASTER
BOND used for epoxy systems including “curable polymer
systems for high performance coatings, adhesives, sealants….
They vary in thicknesses, hardness, chemical resistance,
clarity….”;
(5) Registration No. 2,240,731 for the mark MASTER
WHOLESALE for “retail store services specializing in tile
and stoneworking tools and supplies,” as well as printouts
of pages from the www.masterwholesale.net web site showing
use of “MASTER WHOLESALE Brand Products” including “Master
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
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Wholesale Super Set Thinset,” which is a premium grade
polymer modified thinset mortar consisting of Portland
cement, sand, and powdered acrylic polymer additives…,” and
“Rapid Floor Regular,” which is a “fast setting, high
strength dry polymer modified mortar that is designed to be
mixed with water, no other liquid additive is needed. This
product is a cement based multi-purpose floor repair and
leveling compound. …”;24
(6) Registration No. 2,019,330 for the mark MASTERCHEM
for various paint products and “coatings in the nature of
wood sealers and protectors,”25 as well as printouts of
pages from the www.masterchem.com web site showing use of
“MASTERCHEM Manufacturing Excellence in Architectural
Specialty Coatings” and clearly indicating its uses include
use on masonry and brick; and
(7) Registration No. 2,633,999 (issued to Conklin
Company, Inc.) for the mark MASTER GUARD for “coatings in
the nature of wood sealers and protectors” and “petroleum-
based asphalt coatings, asphalt primers, asphalt fillers and
asphalt patch,” as well as printouts of pages from the
www.crsystemsinc.com web site showing use of such “Conklin
24 We note that petitioners submitted evidence that an application
for the mark MASTER WHOLESALE was abandoned. (Petitioners’
notice of reliance, attachment 4.)
25 We are aware that the petitioners’ and respondent’s goods
relate generally to concrete. The record does show that
respondent also provides its goods for wood, metal, tile and
fiberglass floors. (First Sonderman dep., p. 69.)
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
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Building Products” as “MASTER GUARD Asphalt Sealer,”
“MASTER GUARD Pourable Crack Filler,” “MASTER GUARD
Trowelable Crack Filler,” and “MASTER GUARD Asphalt
Patch.”
In addition, respondent’s president and chief operating
officer, Paul Sonderman, testified to an advertisement for
“StampMaster Concrete Texturing Mats by Tabco” which
appeared in a trade magazine (Concrete Construction) and
which he contends shows use in connection with concrete
finishing products. (Second Sonderman dep., pp. 76-77, and
Exhibit No. 20.)26
Petitioners’ witness John Furniss (founder of the
Horizon Paint manufacturing facility in Salt Lake City, Utah
and one of ChemRex’s distributors), when asked if he was
aware of any “MASTER” branded products that were not
petitioners’ products, answered that one of the companies he
once worked for had a product called “MasterDecorator” for
paint. (Furniss dep., p. 22.) Petitioners’ witness John
Boyer testified that he had heard of the mark “MASTERBLEND”
but did “not know the situation of MasterBlend” (second
Boyer dep., pp. 82-83); and that he had heard of the mark
26 The other two documents comprising Exhibit No. 20 are not
probative of relevant third-party uses because the other
advertisement is for a company in Australia, which is not
evidence of perceptions in the Untied States; and the photograph
was taken in an airport by another employee of respondent at a
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
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“Masterflex” but he was not aware of any action with regard
to that mark by petitioners. (Second Boyer dep., pp. 103-
104.)
Respondent’s witness Paul Sonderman testified that he
is aware of a company called Master Terrazzo; that he
believes Master Builders bought McNaughton-Brooks, a
supplier to the terrazzo contractor business, in the late
1980s; and that Master Builders spun off a company called
Master Terrazzo selling the McNaughton-Brooks terrazzo
products (and brands) to Master Terrazzo. (Second Sonderman
dep., pp. 34-37.)
Respondent also pointed out that the Concrete
Construction publication includes (i) in the “Company
Directory” portion several names with the word “Master”
therein, including Mastercrete Construction Products, Master
Level, and Masterset Fastening Systems Inc.; and (ii) in the
“Trade Name Directory” portion several trade names with the
word “Master” therein, including “Master” for both Arrow-
Master Inc. and DESA International Inc., “Master Craft” for
Master Craft Industrial, “Master Mix,” “MasterSeal” and
“MasterTurf” for Seal Master Industries Inc., and
“Mastercrete System 2000” for Mastercrete. Respondent did
not further investigate these particular uses, however.
time the witness does not remember, and relating to a use of
“Master Builder” which he was only speculating about.
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
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Petitioners filed with their rebuttal notice of
reliance printouts of web pages to show that the involved
parties’ goods are related, and (although not stated
therein) presumably to show that at least some of the third-
party companies were in businesses which petitioners assert
are unrelated to petitioners’ and respondent’s goods, such
as the manufacture and sale of concrete finishing and
breaking equipment (Arrow), and pavement maintenance
products (SealMasters).
We are aware that Mr. Boyer explained that petitioner
Master Builders “and its affiliates’” attorneys routinely
bring marks to the attention of the appropriate people
(including Mr. Boyer) for internal discussion. In
particular, he testified that he personally recalled
opposing a mark “MASTERCAST,” resulting in an abandonment of
the mark; opposing, then purchasing the mark MASTER TITE and
licensing it back to the former owner; perhaps opposing the
mark “MASTER WHOLESALE”; and opposing the mark MASTERCRETE.”
(First Boyer dep., pp. 81-82.) In addition, petitioners
filed in their first notice of reliance (attachment 4)
copies of a few official USPTO records, such as a photocopy
of an assignment document for Registration 2,239,537 to MBT
Holding for the mark MASTER TITE; a photocopy of an August
16, 2001 Board decision granting plaintiffs’ summary
judgment motion as conceded in Opp. No. 112,438 (Master
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
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Builders, Inc. and MBT Holding AG v. Blue Circle Industries,
Inc., involving the mark MASTERCRETE); and an express
abandonment of an application for the mark MASTER WHOLESALE
(mentioned above).
The Board has in the past given weight to credible and
probative evidence of significant and unrestrained use by
third parties of marks containing elements in common with
the mark which is the subject of the proceeding on the
ground of likelihood of confusion to demonstrate that
confusion is not, in fact, likely. See Hilson Research Inc.
v. Society For Human Resource Management, 27 USPQ2d 1423,
1431 (TTAB 1993), citing Miles Laboratories Inc. v.
Naturally Vitamin Supplements Inc., 1 USPQ2d 1445, 1462
(TTAB 1986, amended 1987).
Respondent’s evidence of third-party uses establishes
that the word “MASTER” is hardly a unique term for goods
that are the same or related to the goods involved herein.
Therefore, it becomes reasonable to infer that purchasers
have become conditioned to expect different sources even
when the goods and services are sufficiently related to be
attributable to one source. See National Cable Television
Association Inc. v. American Cinema Editors Inc., 937 F.2d
1572, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991). The basis for
such an inference has been established by the evidence of
significant use by third-parties of marks which include the
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
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term “MASTER” as part of their company names and also as
trademarks for various products pertaining to concrete
additives, flooring, toppings and other related construction
products. The relevant purchasers will not assume that all
concrete add mixtures, flooring, grout, sealants, toppings,
repair mixtures and other related construction products
which include the word “master” as part of the trademark
under which they are sold are invariably part of
petitioners’ line of concrete additive products.
We therefore find that petitioners’ “MASTER” marks,
while perhaps somewhat well known, are not strong marks
entitled to a broad scope of protection and are not famous
marks within the meaning of the du Pont factor relating
thereto. Such finding thus favors respondent.
Turning to the issue of the relatedness of the goods,
rather than addressing each separate identification of goods
in respondent’s five involved registrations and determining
the relatedness thereof separately as to each of the
identified goods in all of petitioners’ registrations, we
shall address this factor in more general terms.
Respondent essentially argues that petitioners’
products are primarily concrete additives while respondent’s
products are primarily concrete coatings, and more
specifically epoxy coatings and waterproofing compounds that
can be applied over concrete, wood, metal, tile and
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
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fiberglass, and that some of respondent’s goods, as
identified, include all of those uses.
Petitioners essentially contend that four of
respondent’s five identifications of goods (excluding the
goods in the “MasterPiece and design” registration) and
twelve of thirteen of petitioners’ identifications of goods
(excluding the goods in the MASTERFILL registration) all
recite that the goods are to be used with concrete; that the
parties’ respective goods are closely related; and that the
closest overlap with respondent’s goods is with petitioners’
coatings in the nature of polymer-based flooring
compositions for protecting and topping cementitious floors
sold under the mark MASTERTOP and their waterproofing
coatings sold under the mark MASTERSEAL. (Petitioners’
brief, p. 18, Abrahamson dep., pp. 31-35.)
It is well settled that goods (or services) need not be
identical or even competitive to support a finding of
likelihood of confusion; it being sufficient that the goods
(or services) are related in some manner or that the
circumstances surrounding their marketing are such that they
would likely be encountered by the same persons under
circumstances that could give rise to the mistaken belief
that they emanate from or are associated with the same
source. See In re Peebles Inc., 23 USPQ2d 1795, 1796 (TTAB
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
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1992); and In re International Telephone and Telegraph
Corporation, 197 USPQ 910 (TTAB 1978).
It has 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 compare the goods (or services) as identified
in the involved registration(s) (or application(s)). See
Octocom Systems Inc. v. Houston Computer Services Inc., 918
F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990); and Canadian
Imperial Bank of Commerce, N. A. v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
In this case, respondent’s goods are primarily epoxy
coating materials which can be applied to concrete slabs and
concrete floors and petitioners’ goods are primarily
additives for concrete mix. One of respondent’s
identifications of goods, “decorative thin-set epoxy
surfacing compound,” is not limited to concrete at all; and
two of its other identifications of goods refer to
protecting “concrete slabs and floors” and “application to
concrete floors and decks” Respondent reasonably contends
that the latter two identifications could refer,
respectively, to floors and decks made of any product such
as wood or tile.
Nonetheless, it is clear that respondent’s identified
goods either specifically relate to concrete applications or
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
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52
at least include concrete applications (e.g., “epoxy
compound applied as a surface coating to restore and protect
concrete slabs”). One of petitioners’ registrations covers
goods identified as “material to be applied to the surface
of masonry to form a colorless surface waterproofing coating
thereon.”
In reviewing all of the identified goods of the
parties, we find that they are sufficiently related that
this factor favors petitioners.
We turn then to the du Pont factors involving the
purchasers of these goods, their sophistication, and the
channels of trade. The record shows that respondent sells
its goods directly to specialty contractors (such as plant
engineers and architects) through manufacturers’ sales
representatives, while petitioners sell their “MASTER”
branded products to their own distributors. Petitioners’
witness John Boyer testified that, as noted earlier, he
considers their customers to be the entity that takes
ownership of their products in return for which Master
Builders receives money, and that is the distributor. He
explained that the clients they market to include not only
their direct customers (i.e., their distributors), but also
people who may be instrumental in determining what product
will be used (e.g., engineers, architects). (First Boyer
dep., p. 83.)
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
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Generally, respondent provides its catalog and product
brochures to its sales representatives who in turn provide
them to the specialty contractors. Respondent also markets,
as indicated previously, through trade shows and magazine
advertisements, and it maintains a web site. Petitioners
market and advertise their goods (as divided between Master
Builders and ChemRex) through trade shows, technical
specification guides, magazine advertisements and direct
mail. They also have web sites.
We thus find that the trade channels of the involved
goods are similar or at least overlap, and that this factor
favors petitioners.
However, key du Pont factors in this case, and which
favor respondent, are the sophistication of the purchasers
and the conditions of sale of the goods. Petitioners must
show not that there is a likelihood of confusion in the
general construction field, but rather that there is a
likelihood of confusion among the customers or purchasers
for the parties’ respective goods. See Electronic Design &
Sales v. Electronic Data Systems, 954 F.2d 713, 21 USPQ2d
1388, 1391 (Fed. Cir. 1992). As the Court stated in the
Electronic Design & Sales case, 21 USPQ2d at 1392: “Where
the purchasers are the same, their sophistication is
important and often dispositive because ‘[s]ophisticated
consumers may be expected to exercise greater care.’”
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
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The purchasers and the ultimate consumers (e.g., plant
engineers, contractors, architects) are sophisticated. The
products are selected by professionals and specifications
for some particular use which must be met by the product.
In many instances, the selection involves specifications in
a contract or an architectural requirement. The parties’
respective goods are sold with labels explaining uses and
setting forth various warnings, and there are technical data
guides or specification materials on how to properly utilize
the products. Even petitioners’ witness Paul Abrahamson
testified that for some of petitioners’ products special
training is required to install or use them (Abrahamson
dep., 43); and their witness John Furniss (one of
petitioners’ distributors) testified that his customers vary
from an unsophisticated house painter “who may never buy an
epoxy,” to “the other aspect to that [which] is the
commercial end, the end that industrial floor coatings is
very likely to be used in, … [and which involves] a very
sophisticated buyer.” (Furniss dep., p. 12.)
Even though the parties attend and display at some of
the same trade shows (e.g., World of Concrete) and belong to
some of the same professional organizations, the purchasers
who attend those trade shows and belong to those
professional organizations are highly sophisticated and
discriminating purchasers of the involved products. In
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
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fact, it is clear from the publication Concrete
Construction, put out in connection with the World of
Concrete trade show, that the parties are not listed under
the same product categories (and it is the parties
themselves who pick the categories under which they are to
be listed). Thus, in actual practice, the parties do not
regard their products as being in the same trade categories.
We find the dissimilarities of the marks, the
sophistication of the purchasers and ultimate consumers, the
technical nature of the respective goods and the conditions
of sale to be key factors in this case. These factors,
along with the evidence of third-party uses of “MASTER”
marks, perhaps explain the lack of actual confusion of the
involved marks, which we discuss next.
With regard to the du Pont factor relating to actual
confusion, the parties have co-existed since 1990 and
petitioners’ sales of its “MASTER” brand products from 1996-
2000 have exceeded $40 million. Yet petitioners’
interrogatory answers indicated petitioners were aware of no
instances of actual confusion. Subsequent to that response
petitioners asserted one instance of actual confusion,
through the testimony of Gary Culton, a technical support
employee of Master Builders, who received a telephone call
in early 2000 from one of Master Builders’ sales
representatives stating he was looking for a product his
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
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distributor had inquired about--MASTERSHIELD. Mr. Culton
testified he would normally route information about another
company using “MASTER” to the appropriate staff, but he
could not remember if he had done so in this case.
This testimony is insufficient to demonstrate actual
confusion by purchasers or potential purchasers as to the
source of respondent’s and petitioners’ “MASTER” branded
products in the marketplace. Mr. Culton simply answered a
call from one of petitioners’ sales representatives who
inquired because his distributor asked him about the
“MasterShield” product. There is no indication that the
distributor was confused as to the source of the goods. The
distributor (and the sales representative) may have been
aware that the “MasterShield” product was not petitioners’
product. This asserted evidence of actual confusion is of
limited weight. Moreover, considering the length of
contemporaneous use and the relative success of the parties’
sales of their respective goods sold under their respective
marks, it is noteworthy that there have been no other
reported instances of actual confusion involving potential
purchasers, purchasers or end-users of the involved
products. We are not convinced on this record, as
petitioners argue, that respondent has only relatively
recently achieved success in markets closer to petitioners’
markets.
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
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Although proof of actual confusion is not required to
prove likelihood of confusion, in the circumstances of this
consolidated case, we find that the lack of instances of
actual confusion favors respondent.
Finally, we consider the du Pont factor on the extent
of potential confusion, i.e., whether de minimis or
substantial. The record before us shows that there is at
most a de minimis chance that consumers would confuse the
source of petitioner’s goods and respondent’s goods.
There must be shown more than a mere possibility of
confusion; instead, there must be demonstrated a probability
or likelihood of confusion. See Electronic Design & Sales
Inc. v. Electronic Data Systems Corp., 21 USPQ2d at 1391,
quoting from Witco Chemical Company, Inc. v. Whitfield
Chemical Company, Inc., supra, as follows: “We are not
concerned with mere theoretical possibilities of confusion,
deception, or mistake or with de minimis situations but with
the practicalities of the commercial world, with which the
trademark laws deal." See also, Triumph Machinery Company
v. Kentmaster Manufacturing Company Inc., 1 USPQ2d 1826
(TTAB 1987). The Trademark Act does not speak in terms of
remote possibilities of confusion, but rather, the
likelihood of such confusion occurring in the marketplace.
In this consolidated case, we find that the possibility or
likelihood of confusion is remote.
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
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Upon balancing all of the relevant du Pont factors in
this consolidated case, and giving each relevant factor the
appropriate weight, we hold that confusion is unlikely.
Affirmative Defenses
Although we have found no likelihood of confusion, in
the interest of a complete decision, we will now rule on
respondent’s affirmative defenses. The burden of proof for
the affirmative defenses is, of course, on respondent.
Laches
The specific elements required to establish the
affirmative defense of laches are (1) unreasonable delay in
assertion of one’s rights against another, and (2) material
prejudice to the latter attributable to the delay. See
Lincoln Logs Ltd. v. Lincoln Pre-Cut Log Homes Inc., 971
F.2d 732, 23 USPQ2d 1701 (Fed. Cir. 1992). “Laches is
‘principally a question of the inequity of permitting the
claim to be enforced--an inequity founded upon some change
in the condition or relations of the property or the
parties.’” Bridgestone/Firestone v. Automobile Club de
l’Ouest, 245 F.3d 1359, 58 USPQ2d 1460, 1463 (Fed. Cir.
2001). There must be not only unreasonable delay but some
detriment due to the delay. (Reliance is not a requirement
of laches.)
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Simply put, we find that petitioner Master Builders’
and its then-parent company (Sandoz) clearly had notice of
respondent’s use of its “Master____ and design” marks as of
at least February 1, 1994 when the then-parent company sent
a letter demanding that respondent cease and desist use of
the marks “MasterShield, TrowelMaster, MasterQuartz,
LevelMaster and MasterProof” (three of which are involved
herein). Petitioners’ delay from February 1994 to late
March and early April 2000 when the five petitions to cancel
were filed constitutes an unreasonable delay. It was Master
Builders’ then-parent company’s in-house attorney, following
discussions with Master Builders’ then in-house counsel
(Peter Vinocur), who contacted respondent demanding that it
cease and desist use of its “Master” marks as infringing
trademarks. Respondent’s attorney responded within one
month explaining the various reasons respondent believed
there was no likelihood of confusion. This was followed
several months later by a memo of August 1994 to
respondent’s attorney wherein the then-parent company’s
attorney simply stated that it “was nice speaking with you
this morning regarding the trademark conflict”; specifically
asserting the parent company’s ownership of another
registration, for the mark MASTERTOP for coatings in the
nature of polymer-based flooring compositions used for
protecting and topping cementitious floors; and stating that
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
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he “looked forward to hearing from you.” (Respondent’s
Exhibit No. 10.) Petitioners made no additional contacts
and took no other action until the filing of the petitions
to cancel in 2000. Petitioners complain that respondent did
not follow up as requested in the parent company’s August
1994 memo; and that respondent did not advise the parent
company or petitioners of the filing of its trademark
applications in 1994, all of which were published for
opposition in 1995.27 Petitioners’ complaints of inaction
by respondent ring hollow.28 Petitioners offer no
explanation as to why at least Master Builders did not take
some further action if it believed there was a trademark
infringement of its “MASTER” marks. In light of the
February 1, 1994 cease and desist letter from Master
Builders’ parent company to respondent, it is apparent that
Master Builders was aware of respondent at least since
sometime prior to the date of the cease and desist letter
which was sent only after discussion with Master Builders’
in-house attorney.
Respondent believed that the “trademark conflict” was
resolved, particularly after it heard nothing further after
27 No party filed either an extension of time to oppose or a
notice of opposition against any of respondent’s five marks
involved herein.
28 The burden was not on respondent to follow up on Master
Builders’ parent company’s trademark infringement concerns, but
rather action thereon would clearly be up to petitioner Master
Builders or its parent company or any other interested party
(e.g., sister companies).
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
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the 1994 letter and memo, and its marks were published and
not opposed; and that petitioner Master Builders’ and it’s
parent company had no further interest in the situation.
Respondent had commenced use of all five of its involved
marks (in 1990 and 1993) by the date of the cease and desist
letter in 1994, which referred to only three of respondent’s
five registrations petitioners now seek to cancel.29 The
record is clear that respondent actively developed its
business and its products, growing from six sales
representatives in 1990 to fourteen in 2002; and
concomitantly increasing advertising and sales. Respondent
has shown material prejudice attributable to petitioners’
delay.
Accordingly, we find that petitioners’ petitions to
cancel are barred by the equitable defense of laches.
Petitioners alternatively argue that the Board should
deny respondent’s laches claim based on the “doctrine of
progressive encroachment,” citing the case of SCI Systems
Inc. v. Solidstate Controls Inc., 748 F.Supp. 1257, 15
USPQ2d 1299 (S.D. Ohio 1990), as well as a 1917 Sixth
Circuit case cited therein. (Brief, pp. 37-38.) The facts
of the SCI Systems case involving trademark infringement and
29 Even when petitioners filed their five petitions to cancel,
they did not seek to cancel respondent’s four registered marks
which use the term “Master” as the suffix instead of the prefix
in the word portion of each mark, and utilize the same design
format.
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
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62
unfair competition are completely different from the facts
involved herein. Moreover, we are not convinced that the
“doctrine of progressive encroachment” should even apply in
a cancellation proceeding involving delay by a party in
seeking to cancel a registration before the Board. (For
example, in Board administrative proceedings, we look only
to the mark(s) as registered (or applied for) and to the
goods or services as identified. See Octocom Systems Inc.
v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d
1783 (Fed. Cir. 1990).)
Estoppel
The elements required to establish the defense of
equitable estoppel are (1) misleading conduct (including not
only statements and action, but also silence and inaction)
which leads another to reasonably infer that rights will not
be asserted against it, (2) reliance upon this conduct, and
(3) due to this reliance, material prejudice if the delayed
assertion of such rights is permitted. See Lincoln Logs
Ltd. v. Lincoln Pre-Cut Log Homes Inc., supra.
We find the silence and inaction of Master Builders’
parent company after the 1994 letter and 1994 memo to
respondent, as well as each of the current petitioners’
complete silence and inaction, to be misleading conduct.
From the testimony of petitioners’ own witnesses, it is
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
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clear that once most of these individuals became aware of
respondent (including one with first-hand knowledge from the
World of Concrete trade show), they nonetheless did nothing
to take any action against respondent’s involved five
registrations prior to the filing of the petitions to cancel
in 2000.
As discussed above, it is clear that respondent’s
business grew steadily during the years of petitioners’
inaction due at least in part to respondent’s reliance
thereon. The material prejudice to respondent is as
explained above in our discussion of the laches defense.
Accordingly, we find that petitioners’ claim is barred
by equitable estoppel.
Acquiescence
Respondent acknowledges that the defense of
acquiescence requires as one of its elements that a
plaintiff actively represented that a right or claim would
not be asserted; and that “to the extent that acquiescence
requires such an overt act, then the acquiescence defense is
withdrawn.” (Brief, p. 30.) Therefore, the Board considers
this affirmative defense withdrawn. See Coach House
Restaurant Inc. v. Coach and Six Restaurants Inc., 934 F.2d
1551, 19 USPQ2d 1401 (11th Cir. 1991). Respondent contended
that the Board could interpret “active representation”
Cancellation Nos. 92030319, 92030392, 92030394, 92030502 and
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broadly to include silence and tacit acceptance. But we
decline to so broadly interpret this element of
acquiescence, particularly in view of the fact that the last
statement received by respondent was one which “looked
forward to hearing from you.”
Decision: Petitioners’ consolidated petition to cancel
is denied on the merits and is barred by laches and
equitable estoppel.