Morton Inter-national, Inc.v.Asahi Denka Kogyo Kabushiki Kaisha

Trademark Trial and Appeal Board

Dec 14, 2001

No. 91114298 (T.T.A.B. Dec. 14, 2001)

12/14/01 Paper No. 33

RLS/TAF

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Morton International, Inc.
v.
Asahi Denka Kogyo Kabushiki Kaisha
_____

Opposition No. 114,298 to application Serial No.
75/314,756 filed June 25, 1997.
_____

Paul J. Bernardo of Deckert, Price & Rhoads for Morton
International, Inc.

Robert J. Patch of Young & Thompson for Asahi Denka Kogyo
Kabushiki Kaisha.
_____

Before Simms, Cissel and Seeherman, Administrative
Trademark
Judges.

Opinion by Simms, Administrative Trademark Judge:

Morton International, Inc. (opposer), an Indiana
corporation, has opposed the application of Asahi Denka
Kogyo Kabushiki Kaisha (applicant), a Japanese
corporation, to register the mark ADKSTAB for anti-
oxidants, absorbing agents, stabilizers, nucleating
agents, metal deactivators

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 114,298
2

and lubricants used in connection with making plastics.1
In the notice of opposition, opposer asserts that it
makes and sells stabilizers for vinyl resins under the
mark ADVASTAB, and that it owns Registration No. 568,044,
issued Dec. 16 1952, twice renewed, covering this mark

1 Application Serial No. 75/314,756, filed June 25, 1997, based
upon a Japanese registration, under Section 44(e) of the Act.
Specifically, the identification of goods is:

anti-oxidants for use as additives in polyolefin
plastics, styrene plastics, polycarbonate
plastics, linear polyester plastics,
polyurethane plastics and polybutadiene-type
rubbers; ultraviolet absorbing agents for use as
additives in polyolefin plastics, styrene
plastics, polycarbonate plastics, linear
polyester plastics, polyurethane plastics and
polybutadiene-type rubbers; hindered amine light
stabilizers for use as additives in polyolefin
plastics, styrene plastics, polycarbonate
plastics, linear polyester plastics,
polyurethane plastics and polybutadiene-type
rubbers; nucleating agents for use as additives
in polyolefin plastics, styrene plastics,
polycarbonate plastics, linear polyester
plastics, polyurethane plastics and
polybutadiene-type rubbers; and metal
deactivators for use as additives in polyolefin
plastics, styrene plastics, polycarbonate
plastics, linear polyester plastics,
polyurethane plastics and polybutadiene-type
rubbers, in Class 1; and lubricants for
polyolefin plastics, styrene plastics,
polycarbonate plastics, linear polyester
plastics, polyurethane plastics and
polybutadiene-type rubbers, in Class 4.

Opposition No. 114,298
3
for “stabilizers for vinyl resins.” Opposer alleges that
applicant’s mark ADKSTAB so resembles opposer’s mark as
to be likely to cause confusion, to cause mistake or to
deceive. As a further ground for opposition, opposer
asserts that applicant is not entitled to registration
because of the doctrine of collateral estoppel (issue
preclusion). Opposer pleaded that applicant filed an
application in 1992 to register the mark ADK STAB
covering stabilizers and additives for plastics. Opposer
filed an opposition against that application in 1993
(Opposition No. 91,457), which was consolidated with
Opposition No. 91,340, brought against applicant’s mark
ADEKA STAB. Opposer alleges that, in those proceedings,
the Board held that there was a likelihood confusion of
applicant’s marks with opposer’s mark ADVASTAB. Opposer
also states that the Board in its decision determined
that ADVASTAB was a famous mark. In the current
application, applicant has merely combined two separate
elements (ADK and STAB) into one word, according to
opposer. With respect to the goods in applicant’s
applications in the prior proceeding and in this
proceeding, opposer alleges that anti-oxidants, absorbing
agents, stabilizers, nucleating agents, metal
deactivators and lubricants are all additives for
Opposition No. 114,298
4
plastics, and that most of applicant’s goods are
additives for plastics encompassed in the identifications
in the prior applications. Opposer also asserts that
applicant has not used its mark in commerce.
In its answer, applicant has denied the essential
allegations of the notice of opposition, but has asserted
that it used its mark until October 1996, and that its
goods were on sale until the spring of 1997.
A trial was conducted at which both parties took
testimony and introduced other evidence. Also, pursuant
to stipulation, testimony from the prior proceeding
involving these parties was introduced into this record.
Briefs have been filed but no oral hearing was requested.
Trial Testimony and Evidence
During trial, opposer filed a notice of reliance
upon its pleaded registration of the mark ADVASTAB for
stabilizers for vinyl resins, as well as on official
records of the prior proceeding.2
As noted, opposer has made of record a deposition
from the prior proceeding–-that of Fred Altieri, the

2 Applicant has filed a motion to strike that part of opposer’s
notice of reliance on materials from the prior proceeding.
Applicant argues that this case involves a different and
detailed identification of goods so that the prior proceeding is
irrelevant. We agree with opposer, however, that the records of
the prior opposition are official records which are relevant to
Opposition No. 114,298
5
director of sales and marketing of opposer’s Plastics
Additives Group--taken in October 1994. At that time,
Mr. Altieri testified that ADVASTAB is opposer’s house
mark used since the 1950s for heat stabilizers for rigid
polyvinyl chloride (PVC) processing in the field of
methyltin mercaptide chemistry. Mr. Altieri explained
that heat stabilizers are additives used to keep plastics
from burning or otherwise decomposing. According to Mr.
Altieri, the prefix “ADVA” was derived from the name of a
predecessor company-–Advanced Coating and Chemicals.
At the time of that deposition, opposer had sales of
over $20 million per year with advertising expenses of
around $35,000 to $55,000 per year. Applicant advertises
in trade journals, at trade shows, and by means of
directory listings, leaflets, data sheets and press
releases. Opposer also distributes collateral
merchandise items under the mark ADVASTAB.
According to Mr. Altieri, opposer is the market
leader in heat stabilizers for rigid PVC processing, and
ADVASTAB is the most well-known and widely recognized
trademark in opposer’s family of products. There are
approximately 350 potential customers in this industry,
and opposer’s market share is 35 to 45 percent.

the issues in this case. Accordingly, applicant’s motion to
Opposition No. 114,298
6
While there were no third-party uses of the prefix
“AD” or “ADVA” in the field, Mr. Altieri testified that
there was a third party which used the mark IRGASTAB.
Opposer sells other products for the industry under other
“ADVA”-prefixed marks, and other companies sell their
products under marks with common prefixes or suffixes.
Concerning the issue of likelihood of confusion, Mr.
Altieri testified, at 50–51, and 54–55:
… And on a quick glance to me, A-D-K or
ADKSTAB is too close to ADVASTAB and may be
confused.
And while perhaps it may not be as easily
as [sic] confused by people who have been
in the industry for 20 or 30 years, there
are new people entering the industry all
the time who we wish to continue the
identification and recognition of our
trademark as being unique to Morton. And I
would view this as a significant threat to
us being able to continue that effort
particularly with new people entering the
industry.
Q. Do you think it likely that people in
the market may make mistakes in ordering or
using the ADKSTAB or A-D-K STAB products
from Ashai Denka?
A. That’s very very possible. We have
seen mistakes at our order desk with
trademarks that have absolutely nothing to
do with our ADVASTAB coming into our
office. And as a result as the names get
similar, this could happen more and more
frequently. And of great concern to us is
that rather than us getting ADKSTAB
inquiries and orders, ADVASTAB inquiries
and orders could potentially be misplaced
with Asahi Denka’s agents in the United
States, whoever they may be.

strike is denied.
Opposition No. 114,298
7

-------------------------------

Q. Does Morton International believe that
if Asahi Denka were to obtain registrations
of the trademarks and also use the
trademarks ADKSTAB and A-D-K STAB in the
United States that there could be injury or
damage to Morton or its business interests?
A. We believe that is very possible.
Q. Would you describe or specify the type
of damage or injury that you are concerned
about.
A. Well, primarily loss of business, and
that would be immediate one, confusion over
the trademark leading to misplaced orders.
But loss of goodwill is another one. We
have taken, again, a great deal of time and
invested a great deal of money, and taken a
great deal of pride in our safety record.
The way we manufacture our products,
although there are two known suppliers of
methyl tin chemistry, we are the only
supplier that produces our product via a
direct synthesis reaction …
And confusing product, any chance of
confusing product manufactured by our
process with another process, we would
consider damaging to the goodwill of our
product name.

Opposer also took the testimony of Mr. Frank Oliveri
in May 2000. He is the North American region business
manager for plastics additives. He testified that the
ADVASTAB product is a stabilizer and additive which gives
plastics the ability to process in a wider thermal range
and provides thermal stability for resins. Opposer’s
stabilizers are sold directly and through distributors to
processors and to plastics compounders. In recent years,
opposer’s sales have exceeded $40 million annually with
Opposition No. 114,298
8
advertising expenditures over $1 million in the last
three years. Opposer’s ADVASTAB product currently has
over 35 percent of the market. The product is the market
leader and is very well known in the plastics industry.
Oliveri dep., 8, 17 and 32. According to Mr. Oliveri,
the parties’ goods are promoted at the same trade shows
and are advertised in the same publications. There are
no third-party marks which are similar to opposer’s,
according to Mr. Oliveri.
Concerning the issue of likelihood of confusion, Mr.
Oliveri testified, at 36:
… As you look at the varying processors and
compounders that I have referred to, many
of them process varying kinds of resins and
plastics. Many of the folks who are people
involved in the purchasing decisions are
not necessarily technical people.
Consequently, I think the name would create
some confusion in their minds as to which
product line and which company the
trademarks were associated.

Mr. Oliveri also testified that some of the same
processors and compounders who purchase opposer’s goods
could be purchasers of applicant’s goods.
Further, Mr. Oliveri testified that anti-oxidants
are stabilizers and additives that protect against
oxidation, and that ultraviolet absorbing agents are also
stabilizers and additives that stabilize plastics against
ultraviolet light. Also, the goods in applicant's
Opposition No. 114,298
9
application listed as lubricants, nucleating agents and
metal deactivators are also additives for plastics,
according to Mr. Oliveri.
Opposer also made of record a copy of the prior
Board decision, issued July 6, 1995. In that decision
the Board
found that applicant’s marks ADK STAB and ADEKA STAB for
“chemicals; namely, stabilizers and additives for
plastics” were likely to cause confusion with opposer’s
mark ADVASTAB for stabilizers for vinyl resins. The
Board determined that the parties’ goods were in part
identical and that the goods had common purchasers or
users. Further, the Board found that the marks were
substantially similar in appearance and overall
commercial impression with the differences in the middle
portions of the marks not as likely to be noticed as the
identical letters at the beginning and the end of the
marks. The Board stated that even discriminating
purchasers may have an imperfect recollection of the
marks. Further, the Board found that opposer’s ADVASTAB
mark was famous in the field with over 40 years of use in
connection with PVC stabilizers as well as extensive
promotion. The Board noted that this product had 35 to
Opposition No. 114,298
10
45 percent market share. The Board stated, at 8-9 of its
opinion:
…Thus, despite the fact that the parties’ goods
travel in a specialized marketplace, even
discriminating purchasers are likely to order
stabilizers sold under applicant’s marks in the
mistaken belief that they are ordering opposer’s
goods.
Moreover, even those consumers who
recognize the internal differences between the
parties’ marks are likely to believe, given the
overall similarities of the marks and the fame
of opposer’s mark in this field, that
applicant’s marks are merely variations of the
opposer’s mark, and that both opposer’s and
applicant’s goods emanate from the same source.

Applicant took the testimony on written questions of
Mr. Kazumasa Yamada, applicant’s general manager of the
patent and information section. According to Mr. Yamada,
applicant’s mark has been used in the United States since
1990. However, use of this mark in this country ceased
in 1997.
Applicant’s mark is derived from the initial letters
of applicant’s name, to which the abbreviation “STAB,”
representing “stabilizer,” has been added. Mr. Yamada
indicated that applicant’s mark (ADKSTAB) is pronounced
“ei di kei stab” in this country. Applicant’s goods are
additives designed to prevent plastics from deteriorating
or degrading and to maintain the quality of the plastics.
Specifically, applicant’s goods are designed to prevent
products other than PVCs from oxidizing and deteriorating
Opposition No. 114,298
11
as a result of ultraviolet light or metal catalyzation,
and by reducing the friction in the resins or between the
resins and the molding machines in which the plastics are
made. According to Mr. Yamada, applicant’s goods cannot
be used as stabilizers for rigid PVC resins.
Applicant’s products are sold after they are
explained directly to customers. These customers include
plastics makers, plastics compound makers and plastics
molding makers other than makers of PVCs. Applicant has
sold its goods to approximately 60 to 70 customers in
this country, with around 300 tons per year being sold
during the period of use.
According to the testimony of Mr. Yamada, opposer is
not a competitor of applicant. Rather, opposer sells to
PVC makers, makers of PVC compounds and makers of PVC
moldings. However, applicant does sell stabilizers for
plasticizing PVC resins under a different mark. With
respect to the issue of likelihood of confusion,
applicant’s witness testified, at 11:
A. I believe that purchasers will never
confuse. While we use the ADKSTAB mark
in the United States, the confusion have [sic]
never happened. In addition, in other
countries where the [sic] both ADKSTAB products
and ADVASTAB products are sold, any confusion
have [sic] never happened.

Opposition No. 114,298
12
Concerning the relationship between applicant’s
goods identified in the prior applications and the ones
set forth in the current application, applicant’s witness
testified that the goods in the applications are
different. At 13, Mr. Yamada testified:
A. The goods identified in former U.S.
Application Serial No. 74/205,807 under the
ADK STAB trademark are stabilizer and
additives for plastics, thus including the
designated goods of Morton International’s
ADVASTAB trademark, i.e., stabilizers for
vinyl resins, whereas none of the goods
identified in current U.S. Application
Serial No. 75/314,756 under the ADKSTAB
trademark are stabilizers for vinyl resins.

Applicant also filed a notice of reliance on various
third-party registrations and Web pages from the
Internet. These registrations include such marks as
MAXISTAB for chemical compounds used as stabilizers;
AKROSTAB for polymers, polymer additives and stabilizers
for making plastics; ZINSTABE for activator stabilizers
for polymers; and HALSTAB for chemicals for stabilizing
polyvinyl chloride resins.
Arguments of the Parties

Opposer argues that the doctrine of collateral
estoppel bars registration of applicant’s mark for its
goods and that applicant’s mark is likely to cause
confusion with opposer’s previously used and registered
mark. With respect to the doctrine of collateral
Opposition No. 114,298
13
estoppel, opposer argues that applicant is attempting “to
take another bite at the registration apple” (brief, 20)
because applicant’s filing is an attempt to relitigate
facts and issues already determined by the Board in its
previous decision in 1995, wherein, among other things,
the Board found that applicant’s mark ADK STAB for
stabilizers and additives for plastics was likely to
cause confusion with opposer’s mark ADVASTAB. It is
opposer’s position that applicant’s mark ADKSTAB merely
drops a space between the two parts of applicant’s mark,
and that this mark and the mark ADK STAB create
substantially the same commercial impressions. Opposer
argues that the specified stabilizers and additives
involved in the current application are products which,
according to applicant’s own witness, were sold by
applicant at the time its previous application was filed.
According to opposer, applicant’s current application has
a narrower, more detailed identification of goods which
lists applicant’s stabilizers and additives individually,
but these goods are merely a subset of the generalized
stabilizers and additives covered in the previous
application. Accordingly, applicant’s current goods are
fully encompassed by the goods involved in the prior
proceeding, according to opposer.
Opposition No. 114,298
14
Even if the doctrine of collateral estoppel is not
applicable, opposer argues that it should nevertheless
prevail on the issue of likelihood of confusion for the
same reasons it prevailed before. Since the 1950s,
opposer’s ADVASTAB heat stabilizers for processing rigid
PVC plastics have been sold to compounders of plastics
(who mix resins and additives) and to processors (who
process the compounded resins by extruding, molding, etc.
into a finished product). Opposer’s ADVASTAB product is
the market leader in the field of heat stabilizers for
rigid PVC with a share of between 35 to 45 percent of the
market. Opposer maintains that the record establishes
that its mark is very well known in the industry.
Opposer argues that applicant’s stabilizers and additives
for plastics are closely related goods also sold to
plastics compounders and processors and advertised in the
same trade publications and at the same trade shows.
Opposer argues that a manufacturer of stabilizers and
additives for plastics could very well offer a variety of
stabilizers and additives used in a variety of different
plastics. Indeed, opposer states that applicant itself
offers such a variety of stabilizers and plastics.
Opposer maintains that a plastics compounder or processor
who associates opposer’s ADVASTAB mark with one kind of
Opposition No. 114,298
15
additive would assume that applicant’s ADKSTAB
stabilizers and additives come from the same source.
These goods, according to opposer, move through the same
channels of trade and are sold to many of the same
customers, who compound different types of plastics, not
just vinyl. Opposer maintains that the respective marks-
–ADVASTAB and ADKSTAB-–are similar in sound, appearance
and commercial impression. Finally, opposer points out
that applicant knew of opposer’s mark before it commenced
use of its mark, and that any doubt on the issue of
likelihood of confusion should be resolved in favor of
the prior user and registrant.
With respect to the issue of collateral estoppel, it
is applicant’s position that the doctrine does not apply
if the facts, circumstances or the law has changed
between the prior decision and the instant case. Here,
it is applicant’s position that the circumstances and
conditions are different. Applicant points to the fact
that the additives and stabilizers listed in its current
application are also used to make rubber, a new set of
goods different from plastics. Applicant argues that it
deliberately listed with great specificity the actual
chemicals sold by it in order to avoid a claim of
potential confusion and to provide an entirely new set of
Opposition No. 114,298
16
goods. In this regard, applicant refers to the following
definition of “plastics” from Grant & Hackh’s Chemical
Dictionary (5th ed. 1987):

Plastics A group of organic materials
which, though stable in use at ordinary
temperatures, are plastic at some stage of
manufacture and then can be shaped by
application of heat, pressure, or both.
Synthetic rubber and certain inorganic
materials, e.g., glass, comply with this
definition but are not usually regarded as
[plastics]…

Concerning the issue of likelihood of confusion,
applicant maintains that the respective marks are
dissimilar in sound, appearance and commercial
impression. Applicant argues that the only common
element, the suffix “-STAB,” is suggestive because it is
a commonly used industry abbreviation for “stabilizer.”
In support of this argument, applicant has pointed to the
third-party registrations of record and Web pages of
chemical companies showing marks which include this
suffix. In particular, applicant points to such marks as
MAXISTAB for chemical compounds used as stabilizers;
AKROSTAB for polymers, polymer additives and stabilizers
for making plastics; ZINSTABE for activator stabilizers
for polymers; and HALSTAB for chemicals for stabilizing
polyvinyl chloride resins. Because of the common use and
Opposition No. 114,298
17
suggestive nature of this suffix, it is applicant’s
position that the mere inclusion of this suffix in
applicant’s mark is not a sufficient basis on which to
predicate a holding of likelihood of confusion. In other
words, purchasers would look to the remaining or dominant
elements of the marks in order to distinguish them.3
With respect to the goods, applicant maintains that
it and opposer have never been competitors, with both
companies making different, complementary stabilizers and
additives, which are different in function and use, for
different plastics. Applicant’s goods are designed to
prevent plastics other than PVC from oxidizing, by
controlling crystallization, and by improving the
properties and reducing friction. Applicant’s goods are
not interchangeable with opposer’s, according to
applicant, and there is no evidence to suggest that
opposer’s goods could be used with rubber.
Applicant also points to the relatively
sophisticated nature of the purchasers, who know the

3 At one point in its brief, applicant has even argued that
opposer’s long-registered mark is merely descriptive (brief,
20). Not only has applicant not counterclaimed to cancel this
registration, but also such an attack would be impermissible
because opposer’s registration is incontestable and well over
five years old. See Section 14(1) of the Act, 15 USC §1064(1),
Trademark Rule 2.106(b)(2)(i), and Park ’N Fly, Inc. v. Dollar
Park & Fly, Inc., 105 S.Ct. 658, 224 USPQ 327 (1985).

Opposition No. 114,298
18
functions and properties of the chemicals they purchase.
These chemicals require evaluation, testing and analysis
before a purchasing decision is made. While applicant
acknowledges that the trade channels could overlap in
some instances, it is applicant’s position that the
differences in the marks and the sophistication of the
purchasers would preclude any likelihood of confusion.
Applicant also argues that there is a question as to how
much fame can be attributed to opposer’s mark without new
evidence on this point. Finally,
applicant points to the fact that there have been no
instances of actual confusion between 1990 and 1997.
In reply, opposer argues that the current
application merely identifies an additional use for the
same stabilizers and additives that applicant was using
when it earlier sought registration. Opposer accuses
applicant of “semantic gamesmanship intended to
circumvent the Board’s adverse decision.” The fact that
applicant’s goods may be used as additives to process a
type of rubber does not alter the fact that they are also
used in connection with plastics, according to opposer.
Opposer maintains that the record contains no support for
the argument that applicant’s current products are
different from those used in making plastics. Indeed,
Opposition No. 114,298
19
opposer points to the testimony of applicant’s witness
who indicated that applicant’s goods are sold to plastics
compounders and plastics makers. Opposer
also points to precedent holding that the doctrine of
collateral estoppel covers attempts to include uses of
goods not previously mentioned.
Discussion
The doctrine of issue preclusion (also sometimes
known as “collateral estoppel”), which serves to bar the
revisiting of “issues” that have already been fully
litigated, requires four factors:
(1) identity of the issues in a prior
proceeding;
(2) the issues were actually litigated;
(3) the determination of the issues was
necessary to the resulting judgment; and,
(4) the party defending against preclusion had
a full and fair opportunity to litigate the
issues.

See Jet, Inc. v. Sewage Aeration Systems, 223 F.3d 1360,
55 USPQ2d 1854, 1858-59 (Fed. Cir. 2000); and Mother's
Restaurant, Inc. v. Mama’s Pizza, Inc., 723 F.2d 1566,
1569, 221 USPQ 394, 397 (Fed. Cir. 1983).
In determining the applicability of the doctrine of
collateral estoppel, we must focus on whether the
question of likelihood of confusion in the first case
Opposition No. 114,298
20
encompasses the marks and the goods involved herein. See
J.I. Case Co. v. F.L. Industries. Inc., 229 USPQ 697, 699
(TTAB 1986). Here, a review of the prior opinion reveals
that likelihood of confusion between these marks and
goods in the present proceeding was actually litigated
and necessary to the judgment, and that applicant had a
full opportunity to present its arguments on the
question.
Applicant’s mark ADK STAB involved in the prior
proceeding and the mark ADKSTAB here are nearly identical
and create very similar commercial impressions. See
Aromatique Inc. v. Lang, 25 USPQ2d 1359 (TTAB 1992)(Board
noting that we do not wish to encourage the losing party
to modify its mark insignificantly to avoid the estoppel
effect of a prior judgment); and Miller Brewing Co. v.
Coy International Corp., 230 USPQ 675 (TTAB 1986)(also
involving an attempt to register a slightly different
mark).
With respect to the goods, applicant’s current
detailed, technical description of goods is encompassed
within the prior identification of goods. Applicant’s
goods are all stabilizers and additives for plastics, and
applicant was using virtually the identical mark on these
products at the time of the prior proceeding. Also,
Opposition No. 114,298
21
applicant’s testimony reveals that its current products
are sold to plastics compounders and plastics makers.
The fact that applicant has now identified a new use for
its goods is not a sufficient reason to avoid the
application of the doctrine of collateral estoppel. What
we said in J.I. Case, supra, at 700-01, where applicant
was seeking to register a slightly different mark for
slightly different goods from those involved in a prior
proceeding, seems particularly appropriate:
The first opposition found likelihood of
confusion with respect to the marks as used in
connection with opposer's wide variety of
lubricant products for both special and
general purposes and applicant's goods
described as multi-purpose lubricants. In
this regard, opposer has shown, by way of
submitting portions of the Schinske testimony
deposition taken in the prior proceeding that
the items of goods covered in the present
application were being sold by ITT at that
time under the "HI" mark. The Board's
decision in the prior opposition was a broad
one, finding International Harvester's logo to
be widely used and famous and that
International Harvester should not be
restricted by reason of a newcomer's activity.
International Harvester, supra, at 620. We
think that the Board's prior decision
precludes applicant from now coming in and
specifying several different specialized
lubricant products and thereby attempting to
avoid the preclusive effect of the broad
judgment rendered in the first case against
applicant's broad description of goods, i.e.,
"multi-purpose lubricants." We think the
goods recited in this application are fully
encompassed by those claimed in the prior
Opposition No. 114,298
22
proceeding and that applicant's assertions to
the contrary are not well taken…

…We believe the new application seeks
registration of a mark quite similar to the
mark refused registration in the first
proceeding. The only difference is that the
stylized version of applicant's "HI" mark
sought to be registered herein even more
closely resembles opposer's logo than did the
typed "HI" mark and the Board, in the first
proceeding, specifically pointed this fact
out. The goods covered by the present
application are specific lubricants for
specialized use and, in our view, are
encompassed by the first decision refusing
registration of applicant's "HI" mark for the
broad description of "multi-purpose
lubricant's" in view of opposer's long and
extensive use of its logo in connection with a
wide variety of lubricants...

…We conclude, then, that collateral
estoppel bars applicant's application from
registration; [and] that further litigation
would put the parties to unnecessary expense
and would be wasteful of administrative
resources…

See also The Toro Company v. Hardigg Industries, Inc.,
549 F.2d 785, 193 USPQ 149 (CCPA 1977)(insignificant word
change in the description did not eliminate the overlap
in the identifications or the ground of controversy
involved in the prior proceeding, was not a limitation of
the nature, function or use of the goods, and, therefore,
the issues in the second proceeding remained unchanged).
Indeed, the only changes that have occurred herein would
tend to increase, rather than diminish, the likelihood of
Opposition No. 114,298
23
confusion. For example, in this case, as in J.I. Case,
applicant’s mark is more similar to opposer’s mark.
Applicant’s mark is presented as one word (ADKSTAB) as is
opposer’s mark (ADVASTAB), rather than two words (ADK
STAB). Also, the increased level of sales and
advertising expenditures have only served to strengthen
opposer’s mark since the prior decision. Opposer’s mark
remains a market leader with significant market share and
is well known in the industry. Suffice it to say that
the issue of likelihood of confusion between opposer’s
mark and applicant’s mark has already been litigated, and
that the doctrine of collateral estoppel bars this
attempt by applicant to again seek registration.
Decision: The opposition is sustained on the ground
of collateral estoppel, and registration to applicant is
refused.