No-Burn Investments, L.L.C.

Trademark Trial and Appeal Board

Mar 6, 2017

No. 76716810 (T.T.A.B. Mar. 6, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: March 6, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re No-Burn Investments, LLC
_____

Serial Nos. 76716810 and 76716811
_____

Christopher John Rudy, Esq.
for No-Burn Investments, LLC.
Ira Goodsaid, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman Managing Attorney.
_____

Before Ritchie, Lykos and Masiello,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
On August 25, 2014, No-Burn Investments, LLC (“Applicant”) filed applications
to register on the Principal Register the standard character marks FABRIC FIRE
GARD and NO-BURN FABRIC FIRE GARD for goods ultimately identified as
“[w]ater-based fire retardant compositions for commercial and domestic use on
fabrics, textiles, cloth, paper, wood and other porous materials such as on or in
couches, mattresses, carpets, drapes, camping equipment, homes, autos, boats, and
Serial Nos. 76716810 and 76716811
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recreational vehicles” in International Class 1.1 In both applications, FABRIC FIRE
has been disclaimed apart from the marks as shown. The “no-burn” application also
includes a claim of ownership of prior Registration Nos. 2464868 and 3152635.
The Trademark Examining Attorney refused registration of Applicant’s marks
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground
that Applicant’s marks so resemble the registered mark FireGuard in standard
characters on the Principal Register for “[f]ire retardant chemicals” in International
Class 12 that, when used on or in connection with Applicant’s identified goods, they
are likely to cause confusion or mistake or to deceive.
Following issuance of a final refusal, Applicant timely filed notices of appeal and
concurrently therewith requests for reconsideration.3 The requests for
reconsideration were denied. Both appeals are now fully briefed.4
For the reasons explained below, we affirm the Section 2(d) refusal to register both
marks.5

1 Application Serial Nos. 76716810 and 76716811, filed under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), alleging 2001 as the date of first use anywhere and in commerce.
2 Registration No. 3869687, owned by Shield Industries, Inc., registered November 2, 2010;
alleging February 26, 2003 as the date of first use anywhere and March 1, 2003 as the date
of first use in commerce; Section 8 affidavit accepted.
3 Applicant’s requests for reconsideration are embedded with its notices of appeal. 1
TTABVUE. For future reference, Applicant is advised to file notices of appeal and requests
for reconsideration as two separate submissions via ESTTA.
4 On November 15, 2015, Applicant filed corrected appeal briefs in double-spaced text to
conform with Trademark Rule 2.126(a)(1). Application Serial No. 76716810 at 14 TTABVUE
45; Application Serial No. 76716811 at 14 TTABVUE 43. Applicant is advised that the
submission of materials in the record with its appeal briefs was superfluous.
5 The Examining Attorney filed a motion to consolidate the appeals which was contested by
Applicant. 19, 20 TTABVUE. Applicant points to the differences in the marks and slight
differences in the record as justification for not consolidating the cases. We are not persuaded.
Serial Nos. 76716810 and 76716811
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I. Applicable Law
We base our determination under Section 2(d) on an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E. I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See also In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). The likelihood of confusion analysis is not a mechanical test - “not all of the
DuPont factors are relevant or of similar weight in every case.” Opryland USA Inc. v.
Great Am. Music Show, 970 F.2d 847, 23 USPQ2d 1471, 1473 (Fed. Cir. 1992). See
also In re Shell Oil, 992 F.2d 1204, 26 USPQ2d 1687, 1688 (the various du Pont
factors “may play more or less weighty roles in any particular determination”). In any
likelihood of confusion analysis, however, two key considerations are the similarities
between the marks and the similarities between the goods. See In re Chatam Int’l
Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). These factors and
others raised by Applicant are discussed below. See M2 Software, Inc. v. M2
Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006).

The Board is able to account for any distinctions between the two appeals in a single opinion.
Because we deem the cases to have common questions of fact and of law, and the records are
largely identical, we grant the Examining Attorney’s motion to consolidate the appeals. See,
e.g., In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1085 (TTAB 2016) (Board consolidated appeals
in two applications upon examining attorney’s motion). See also Trademark Trial and Appeal
Board Manual of Procedure (“TBMP”) § 1214 (Jan. 2017). Unless otherwise indicated,
citations to the record are to Application Serial No. 76716810 in TSDR or TTABVUE.

Serial Nos. 76716810 and 76716811
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The Goods and Channels of Trade
At the outset, we compare the goods as they are identified in the applications and
registration as well as the established, likely-to-continue channels of trade. See Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1161 (Fed. Cir. 2014). See also Octocom Systems, Inc. v. Houston Computers Services
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Applicant argues that the goods are distinct inasmuch as Registrant’s fire
retardant chemicals “in the eye of a consumer frequently impl[y] … harsh
formulations” whereas Applicant’s fire retardant compositions are “‘water-based,’ i.e.
aqueous, which practically sets off little if any alarm in the mind of the consumer,
and the word ‘compositions’ is neutral if not favorable in the consumer’s mind.”
Applicant’s Brief, p. 3; 11 TTABVUE 3. Applicant also contends that the trade
channels are dissimilar insofar as “they do not compete side-by-side as on retail
shelves or outlets.” Id.
Applicant’s arguments are unconvincing. Here, the involved application and cited
registration involve goods that are legally identical. This is because the term “water-
based … compositions” in Applicant’s identification is sufficiently broad to include
water-based “chemicals” as set forth in the cited registration.6 Furthermore, both

6 The noun “composition” in this context is defined as “a product of mixing or combining
various elements or ingredients.” The word “chemical” is defined as “a substance obtained by
a chemical process or producing a chemical effect.” Merriam-Webster Dictionary
(www.merriam-webster.com). See In re Jimmy Moore LLC, 119USPQ2d 1764, 1767-1768
(TTAB 2016) (Board may take judicial notice of online dictionary definitions also available in
printed form).
Serial Nos. 76716810 and 76716811
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Applicant’s and Registrant’s goods perform the same function of being “fire
retardant.” The fact that Registrant’s goods are not limited to any particular use
means that we must assume that they too can be used on “fabrics, textiles, cloth,
paper, wood and other porous materials such as on or in couches, mattresses, carpets,
drapes, camping equipment, homes, autos, boats, and recreational vehicles” as set
forth in the application. Cf. In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134,
1137 (TTAB 2015) (“Applicant’s broadly worded identification of ‘furniture’
necessarily encompasses Registrant’s narrowly identified ‘residential and
commercial furniture.’”). Thus the du Pont factor involving a comparison of the goods
favors a likelihood of confusion.
Furthermore where there are legally identical goods, the channels of trade and
classes of purchasers are presumed to be the same. In re Yawata Iron & Steel Co.,
403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968). This du Pont factor also favors a
likelihood of confusion.
The Marks
Keeping in mind that, where the goods are legally identical, the degree of
similarity between the marks necessary to support a determination that confusion is
likely declines (see Bridgestone Americas Tire Operations, LLC v. Fed. Corp., 673 F.3d
1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012)), we now consider the du Pont
likelihood of confusion factor which involves an analysis of the similarity or
dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. See Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Serial Nos. 76716810 and 76716811
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Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting
du Pont, 177 USPQ at 567). “The proper test is not a side-by-side comparison of the
marks, but instead ‘whether the marks are sufficiently similar in terms of their
commercial impression’ such that persons who encounter the marks would be likely
to assume a connection between the parties.” Coach Servs., Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (internal citation
omitted). The focus is on the recollection of the average purchaser, who normally
retains a general rather than a specific impression of trademarks. In re Binion, 93
USPQ2d 1531, 1534 (TTAB 2009); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106,
108 (TTAB 1975). Our analysis cannot be predicated on dissection of the involved
marks. Stone Lion, 110 USPQ2d at 1161. Rather, we are obliged to consider the marks
in their entireties. Id. See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005,
212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected
and considered piecemeal; rather, it must be considered as a whole in determining
likelihood of confusion.”). Nonetheless, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on a consideration of the marks in their
entireties. Stone Lion, 110 USPQ2d at 1161.
Applicant, in arguing that the marks are dissimilar relies heavily on the
declarations of Mr. William Kish, owner/member of Applicant. TTABVUE 3-4. With
regard to the mark FABRIC FIRE GARD, Applicant points to the addition of the
word FABRIC coupled with the misspelling of the term GARD as creating
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differences in sound and appearance. Likewise, as to the mark NO-BURN FABRIC
FIRE GARD, Applicant highlights the misspelled word GARD as well as the
additional wording NO-BURN FABRIC which results in the mark’s being
pronounced as a phrase with many more syllables than the cited mark FireGuard.
Applicant also argues that its marks have a different connotation, pointing to the
additional term FABRIC as meaning protection for fabrics from fire; the cited mark
by contrast contains no such limitation. Lastly, in contending that the marks
engender different commercial impressions, Applicant points to Mr. Kish’s statement
to this effect in his declarations as support for its position.
Mr. Kish’s opinion that the marks are dissimilar for likelihood of confusion
purposes cannot dispose of the ultimate question before the Board. Even if Mr. Kish
were an expert in a relevant field (and there is no indication that he is), the Board
cannot abdicate the ultimate legal determination as to whether there is likelihood of
confusion. See The Quaker Oats Company v. St. Joe Processing Company, Inc., 109
USPQ 390, 391 (CCPA 1956). See also Edwards Lifesciences Corp. v. Vigilanz Corp.,
94 USPQ2d 1399, 1401 (TTAB 2010) (“[T]he Board is responsible for determining
whether the marks are similar, and we will not substitute the opinion of a witness,
even an expert witness, for our evaluation of the facts.”) (citing Fisons Ltd. v. UAD
Laboratories, Inc., 219 USPQ 661, 663 (TTAB 1983)). That being said, we have
considered all of the statements made by Mr. Kish as argumentation on Applicant’s
behalf.
Serial Nos. 76716810 and 76716811
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In comparing Applicant’s marks with Registrant’s mark FireGuard as a whole,
it is apparent that Applicant’s marks incorporate a phonetic equivalent of the entirety
of the cited mark. The terms GUARD and GARD in the Applicant’s and Registrant’s
marks are similar in appearance, differing only by one letter, and are pronounced in
the same manner. Coupled with the fact that they are both preceded by the word
FIRE, these terms are visually and aurally similar. In the context of the goods,
customers would likely perceive FIREGUARD and FIRE GARD as having the same
meaning. The addition of the wording FABRIC to Applicant’s marks does little to
alter the connotation or commercial impression; instead it merely conveys to the
consumer a purpose and use for the goods. The additional term NO-BURN in one of
Applicant’s marks merely reinforces the suggestive meaning of FIRE GARD, i.e., that
the product will prevent burning. In that regard, consumers are likely to perceive
Applicant’s marks as an extension of Registrant’s product line. And while we are
cognizant of the principle that prospective consumers are more likely to focus on the
first portion or word in a trademark (see Palm Bay, 73 USPQ2d at 1692), it is likewise
true that likelihood of confusion is not necessarily avoided between otherwise
confusingly similar marks merely by adding other distinctive matter. If an important
portion of both marks is the same, then the marks may be confusingly similar
notwithstanding peripheral differences. See. e.g., Stone Lion, 110 USPQ2d at 1161
(affirming Board’s finding that applicant’s mark STONE LION CAPITAL
incorporated the entirety of the registered marks LION CAPITAL and LION);
Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1266, 62 USPQ2d 1001,
Serial Nos. 76716810 and 76716811
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1004 (Fed. Cir. 2002) (finding that, even though applicant’s mark PACKARD
TECHNOLOGIES (with “TECHNOLOGIES” disclaimed) does not incorporate every
feature of opposer’s HEWLETT PACKARD marks, a similar overall commercial
impression is created); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB
2009) (holding VANTAGE TITAN for MRI diagnostic apparatus, and TITAN for
medical ultrasound device, likely to cause confusion, noting that the marks are more
similar than they are different and that the addition of applicant’s “product mark,”
VANTAGE, to the registered mark would not avoid confusion); In re U.S. Shoe Corp.,
229 USPQ 707, 709 (TTAB 1985) (holding CAREER IMAGE (stylized) for clothing
and retail women's clothing store services, and CREST CAREER IMAGES (stylized)
for uniforms, likely to cause confusion, noting that CAREER IMAGE would be
perceived by consumers as a shortened form of CREST CAREER IMAGES). Such is
the case here where the terms FABRIC and NO-BURN FABRIC merely modify or
amplify the element FIRE GARD. As such, Applicant’s and Registrant’s marks are
similar in sight, sound, connotation and commercial impression. Thus, this du Pont
factor favors a finding of likelihood of confusion with regard to both of Applicant’s
applied-for marks.
The Number and Nature of Similar Marks in Use on Similar Goods
We will now consider the number and nature of similar marks in use on similar
goods, the sixth du Pont factor. In an ex parte appeal, “[t]he purpose of [an applicant]
introducing third-party uses is to show that customers have become so conditioned
by a plethora of such similar marks that customers have been educated to distinguish
Serial Nos. 76716810 and 76716811
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between different such marks on the bases of minute distinctions.” Palm Bay, 73
USPQ2d at 1694. See also Jack Wolfskin Ausrustung Fur Draussen GmbH & Co.
KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136
(Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115
USPQ2d 1671, 1675-76 (Fed. Cir. 2015) (internal citations omitted). “[T]he strength
of a mark is not a binary factor” and “varies along a spectrum from very strong to
very weak.” Juice Generation, 115 USPQ2d at 1675-76 (internal citations omitted).
“The weaker [the Registrant’s] mark, the closer an applicant’s mark can come without
causing a likelihood of confusion and thereby invading what amounts to its
comparatively narrower range of protection.” Id. at 1676 (internal citations omitted).
See also Palm Bay, 73 USPQ2d at 1693 (“Evidence of third-party use of similar marks
on similar goods is relevant to show that a mark is relatively weak and entitled to
only a narrow scope of protection.”). “In determining the strength of a mark, we
consider both its inherent strength based on the nature of the mark itself and its
commercial strength, based on the marketplace recognition value of the mark.”
American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011) (citing Tea Board of India v. Republic
of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006)) and McCarthy on Trademarks and
Unfair Competition § 11:83 (4th ed. 2011) (“The first enquiry focuses on the inherent
potential of the term at the time of its first use. The second evaluates the actual
customer recognition value of the mark at the time registration is sought or at the
time the mark is asserted in litigation to prevent another's use.”)).
Serial Nos. 76716810 and 76716811
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Applicant maintains that the common element in both marks – the term
“fireguard” – is weak and therefore deserving of less protection. In support thereof,
Applicant has made of record third-party registrations7 purportedly to show that the
USPTO has approved similar marks, of which we deem the following most relevant:
TM/RN/Disclaimer Register Goods Owner
FIRE-GUARD

RN: 4164768
Principal
Register

(Int’l Class: 2)

Fire protective coating for
wood utility poles

Osmose Utilities
Service Inc.

FIREGUARD
FIREGUARD C

RN: 3165229
RN: 4056670
Principal
Register
(Int’l Class 19)

gypsum board and plaster
board
G-P Gypsum
Corporation
FYREGUARD

RN: 3759983
Principal
Register
(Int’l Class 6)

ventilating ducts of metal;
metal chimneys; all of the
foregoing for use in food
service applications
The Schebler Co.
FIREGUARD

RN: 1721248
Principal
Register

(Int’l Class: 1)

plastic compound used in
the manufacture of
electrical jackets and as
insulation for electrical
cables, in the
telecommunications and
data-transmission
industries”

Teknor Apex
Company

7 We did not consider any third-party registrations that have been cancelled. Applicant also
submitted third-party applications. Third-party applications are evidence only of the fact that
they have been filed. Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468
n.6 (TTAB 2003).
Serial Nos. 76716810 and 76716811
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FIREGUARD

RN: 1715873

Principal
Register

(Int’l Class: 24)

fire retardant fabrics for
use in the manufacture of
household goods,
upholstery and the like

Springs Creative
Products Group,
LLC

FIREGUARD

RN: 2116940

Principal
Register
(Int’l Class: 17)

elongated vinyl fire-
resistant tape having a
pressure sensitive
adhesive on one side
Manco, Inc.
FIREGUARD

RN: 1064341
Principal
Register
(Int’l Class: 9)

Electromagnetic door
holder and releasers sold
with or without detectors
to activate such holder and
releasers upon change in
ambient conditions
Sargent
Manufacturing
Co.

Active third-party registrations may be relevant to show that a mark or a portion
of a mark is descriptive, suggestive, or so commonly used in a particular industry that
the public will look to other elements to distinguish the source of the goods or services.
See Juice Generation, 115 USPQ2d at 1674-75; In re Hartz Hotel Servs., Inc., 102
USPQ2d 1150, 1153-54 (TTAB 2012); In re Melville Corp., 18 USPQ2d 1386, 1388
(TTAB 1991); In re Dayco Products-Eaglemotive Inc., 9 USPQ2d 1910, 1911-12 (TTAB
1988); Plus Prods. v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983).
The majority of third-party registrations submitted by Applicant involve goods
unrelated to fire retardant chemicals. Moreover, most of them relate to specialized
and widely disparate product fields, such that they would be exposed to limited
Serial Nos. 76716810 and 76716811
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classes of customers that would not likely overlap. These registrations do, however,
show that the term “fireguard” is suggestive of products possessing fire retardant
characteristics.
Further, Applicant has not presented evidence showing that the relatively few
aforementioned third-party marks are in actual use. While we may assume that use-
based registrations issued only after their owners asserted to the USPTO that the
marks were in use, the registrations themselves do not directly demonstrate that the
marks are in fact present in the marketplace, the extent to which they have been
used, or the extent to which customers have been exposed to them. See Palm Bay, 73
USPQ2d at 1693.
We cannot conclude on the record before us that consumers have been exposed to
so many FIREGUARD and/or FIRE GUARD formative trademarks (or their phonetic
equivalents) for use in connection with fire retardant chemicals that “customers ‘have
been educated to distinguish between different [such] marks on the bases of minute
distinctions.”8 Palm Bay, 73 USPQ2d at 1694. “[L]ikelihood of confusion is to be
avoided, as much between ‘weak’ marks as between ‘strong’ marks, or as between a
‘weak’ and ‘strong’ mark.” Anthony’s Pizza & Pasta International Inc. v. Anthony's
Pizza Holding Co., 95 USPQ2d 1271, 1283 (TTAB 2009) (quoting King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974)). See

8 We note, by contrast, that in Juice Generation, there were at least twenty-six relevant third-
party uses or registrations of record, see 115 USPQ2d at 1672 n.1, and in Jack Wolfskin, there
were at least fourteen, 116 USPQ2d at 1136 n.2.
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also American Lebanese Syrian, 101 USPQ2d at 1028. This du Pont factor therefore
is neutral.
Conditions of Sale
Next we consider the conditions under which the goods are likely to be purchased,
e.g., whether on impulse or after careful consideration, as well as the degree, if any,
of sophistication of the consumers. Purchaser sophistication or degree of care may
tend to minimize likelihood of confusion. Conversely, impulse purchases of
inexpensive items may tend to have the opposite effect. Palm Bay, 73 USPQ2d at
1695.
Applicant argues that the purchases of the involved goods “are made to protect
buyer’s lives, their children’s lives, and their property from fire.” Applicant’s Brief, p.
3; 11 TTABVUE 4. As support, Applicant points to the declaration of Mr. Kish, stating
that “[t]he customers who purchase fire retardant products are very careful about the
brand and source of the product they would purchase since their property and their
very lives depend on it, as is the case with potential customers as well.” 1 TTABVUE
4.
Given the nature of the goods, we can assume that the average consumer will
exercise some additional care. This factor therefore weighs against finding a
likelihood of confusion.
Fame
We now turn to the fifth du Pont factor, the fame of the cited mark, as argued by
Applicant. We observe that the record is devoid of evidence of fame of the registered
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mark. However, the absence of such evidence has minimal significance in an ex parte
appeal, as neither Applicant nor the Examining Attorney is in a position to accurately
determine and prove the extent to which Registrant’s mark has been noted by
customers. See In re Thomas, 79 USPQ2d 1021, 1027 n.11 (TTAB 2006). This factor
is therefore neutral.
Actual Confusion and Contemporaneous Use
We consider next the seventh du Pont factor (nature and extent of any actual
confusion) and the related eighth du Pont factor (extent of the opportunity for actual
confusion).
Applicant points to contemporaneous use of its mark for over 13 years with
Registrant’s mark and the absence of evidence of actual confusion as verified in the
Kish Declaration. 1 TTABVUE 3-4. A showing of actual confusion would of course be
highly probative, if not conclusive, of a likelihood of confusion. The opposite is not
true, however. The lack of evidence of actual confusion carries little weight. J.C. Hall
Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965). The
issue before us is the likelihood of confusion, not actual confusion. Herbko Int’l Inc. v.
Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002) (actual
confusion not required). Further, any suggestion that there has been no actual
confusion between the marks based on the coexistence of Applicant's mark and the
cited registration is entitled to little probative value in the context of an ex parte
appeal. In re Majestic Distilling Co., Inc., 65 USPQ2d at 1205. The seventh and eighth
du Pont factors are therefore neutral.
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Market Interface
We turn next to the tenth du Pont factor, “the market interface between applicant
and the owner of a prior mark.” du Pont, 177 USPQ at 567.
Applicant, in arguing this factor, points to a conversation that allegedly took
place between an employee of Registrant, Shield Industries, and Applicant.
Registrant purportedly contacted Applicant and threatened to take legal action if
Applicant did not cease and desist use of its applied-for marks which Registrant
viewed as confusingly similar. Applicant construes Registrant’s failure to file a
lawsuit as implicit consent.
In the context of an ex parte appeal, virtually “all of the reported decisions
involving the tenth du Pont factor, which deals generally with ‘the market interface
between applicant and the owner of a prior mark,’ have focused on ‘a mere consent’
to register or use,’ and ‘agreement provisions designed to preclude confusion, i.e.,
limitations on continued use of the marks by each party.’” In re Opus One Inc., 60
USPQ2d 1812, 1820 (TTAB 2001). These prior cases have all been decided in the
context of a written agreement. In the present case, however, we have neither a
written consent agreement from Registrant, nor a written agreement between
Applicant and Registrant.9 If Applicant had submitted such a written consent from
Registrant, the Examining Attorney and the Board would have given it great weight.

9 The Trademark Manual of Examining Procedure (“TMEP”) Sections 1207.01 and
1207.01(d)(viii) (Jan. 2017) refers to the du Pont sub-factors that are potentially relevant
within the context of an ex parte appeal.
Serial Nos. 76716810 and 76716811
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See Bongrain International (American) Corporation v. Delice de France Inc., 811 F.2d
1479, 1 USPQ2d 1775 (Fed. Cir. 1987). This du Pont factor is neutral as well.
Right to Exclude Others
The next du Pont factor raised by Applicant is the extent to which Applicant has
a previous right to exclude others from use of its mark on its goods. Applicant argues
that due to its alleged prior use of its applied-for marks and “national scope
advertising and broad sales” it has earned the right to exclude Registrant’s alleged
subsequent use of its registered mark. The issue of prior use is not relevant in an ex
parte appeal “where the refusal of registration is based on the existence of the cited
registration (‘a mark registered in the Patent and Trademark Office’) and not on
priority of use. 15 U.S.C. § 1052(d). See also In re Dominick’s Finer Foods, Inc., 184
USPQ 507, 509 (TTAB 1974). For this reason, the eleventh du Pont factor is neutral
as well.
Extent of Potential Confusion
With regard to this factor, Applicant argues that there is no “realistic” potential
for confusion. Appeal Brief, p. 8, 11 TTABVUE 8. The goods involved here are the type
of goods that would be marketed to and purchased by significant numbers of
purchasers, and that the potential for confusion therefore cannot be deemed to be de
minimis. Accordingly, this du Pont factor is neutral, at best.
Other Established Probative Facts
With regard to its applied for mark NO-BURN FABRIC FIRE GARD,
Applicant points to its previously registered NO-BURN marks as set forth in
Serial Nos. 76716810 and 76716811
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Registration Nos. 2464868 and 3152635. Neither of these prior marks includes the
term “fireguard” or the phonetic equivalent thereof. Accordingly, this factor is
neutral.
II. Conclusion – Balancing the du Pont Factors
We have carefully considered all evidence of record and Applicant’s arguments,
even if not specifically discussed herein, as they pertain to the relevant du Pont
factors.
The fourth du Pont factor does not favor a likelihood of confusion because given
the inherent nature of the goods, consumers are likely to exercise some degree of care.
Nonetheless, the first, second and third factors all weigh in favor of finding a
likelihood of confusion, and the remaining factors discussed above are neutral. The
term “fire guard” has been shown to be suggestive; but the evidence does not show
meaningful weakness in the specific field of fire retardant chemicals. While there are
instances where a single du Pont factor is dispositive, we do not think the fourth
du Pont factor plays such a role here, given the similarity in the marks when
compared as a whole as applied to legally identical goods offered through identical
trade channels to the same classes of customers. See HRL Associates, Inc. v. Weiss
Associates, Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff’d, 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks outweigh
sophisticated purchasers, careful purchasing decision, and expensive goods). See also
Stone Lion, 110 USPQ2d at 1162-63. Balancing these factors, we find that the
similarity of the marks and the fact that the goods as identified in the applications
Serial Nos. 76716810 and 76716811
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and cited registration are legally identical and marketed in the same trade channels
to the same classes of customers outweigh an elevated degree of care or expertise in
purchasing decisions. Id. Accordingly, we find that confusion is likely between
Applicant’s applied-for marks and the mark in the cited registration.
Decision: The Section 2(d) refusal to register both of Applicant’s applied-for
marks is affirmed.