Palmer Asphalt Co.

Trademark Trial and Appeal Board

Aug 17, 2004

No. 76335059 (T.T.A.B. Aug. 17, 2004)

Mailed:
August 17, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Palmer Asphalt Company
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Serial No. 76335059
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S.C. Yuter, J.S.D. for Palmer Asphalt Company.
Khanh M. Le, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
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Before Holtzman, Rogers and Drost,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Palmer Asphalt Company [applicant] has applied to
register the mark DUREX for goods ultimately identified as
"asphalt and elastomeric coatings and cements, other than
protective coatings applicable to various substrates for
use as a lining or coating, all for roofing, waterproofing
and dampproofing,"1 in Class 19. The application is based
1 The identification's exclusionary language, i.e., "other than
protective coatings applicable to various substrates for use as a
lining or coating," was added by an amendment filed during this
appeal and accepted by the examining attorney.
This Opinion is Not
Citable as Precedent
of the TTAB
Ser No. 76335059
2
on applicant's claim of use of the mark in commerce for the
identified goods, such use commencing in 1932 by a
predecessor in interest to applicant.
The examining attorney has refused registration, in
view of the prior registration of DUR-X-LINE for goods
identified as "protective coatings applicable to various
substrates for use as a lining or coating," in Class 2.2
The examining attorney contends that there is a likelihood
of confusion among prospective consumers for the respective
goods of applicant and registrant. The registrant is Durex
Products, Inc.
Applicant and the examining attorney have filed
briefs, and applicant filed a reply brief after the
examining attorney accepted applicant's amendment of the
identification during appeal, but nonetheless maintained
the final refusal of registration. Applicant did not
request an oral argument.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re E.I.
2 Registration no. 1197589 issued June 15, 1982; Section 8 & 15
affidavits filed; renewed.
Ser No. 76335059
3
du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). In the analysis of likelihood of confusion
presented by this case, two key considerations are the
similarities of the marks and the relatedness of the goods.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
We begin by considering the goods, because applicant
strongly contends that, by amending its identification to
exclude from its coverage the precise identification in the
cited registration, applicant has effectively established
that there can be no likelihood of confusion. Registrant's
identification is "protective coatings applicable to
various substrates for use as a lining or coating," while
applicant's amended identification is (emphasis added)
"asphalt and elastomeric coatings and cements, other than
protective coatings applicable to various substrates for
use as a lining or coating, all for roofing, waterproofing
and dampproofing."
When comparing the goods in an application and
registration, we must focus on the identifications
themselves, rather than any extraneous evidence about what
the applicant or registrant may actually be doing. See In
re Dixie Restaurants, 105 F.3d 1405, 41 USPQ2d 1531, 1534
(Fed. Cir. 1997) (“Indeed, the second DuPont factor
Ser No. 76335059
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expressly mandates consideration of the similarity or
dissimilarity of the services as described in an
application or registration”) (internal quotation marks
omitted).
Prior to applicant's insertion of the language
intended to make it clear that applicant's identification
excludes registrant's products, we would have agreed with
the examining attorney's contention that registrant's
identification is broadly written and would have to be read
to include products such as those identified by applicant's
earlier identification, i.e., "asphalt and elastomeric
coatings and cements, all for roofing, waterproofing and
dampproofing." Specifically, applicant's earlier
identification covered certain "coatings" and "cements" for
"roofing, waterproofing and dampproofing." Absent any
restriction to the contrary, such coatings and cements
would have to be read to include goods for both external
application and substrate3 application. In other words, as
originally identified, applicant's goods would be
encompassed by the broad specification of registrant's
3 We take judicial notice of the following dictionary definition
of substrate -- "a substratum" -- and of substratum -- " 1. that
which is spread or laid under something else; a stratum or layer
lying under another. 2. something that underlies or serves as a
basis or foundation." The Random House College Dictionary 1311
(Rev. 1st ed. 1982).
Ser No. 76335059
5
goods. That would mean the identifications were
overlapping and the goods theoretically competitive.4
By its amendment, applicant has effectively excluded
from the scope of its identification those coatings and
cements that could be used on substrates and has
effectively restricted its goods to those that can be used
for external applications, in roofing and in other
applications where externally-applied waterproofing or
dampproofing is required. While this amendment to the
identification means that the goods theoretically do not
overlap, it does not mean they are unrelated. Clearly,
there may be instances when, for example, a roofer would
have need of a protective coating for a substrate layer of
roofing material and would finish the roofing job with an
externally applied coating or cement. Under such
circumstances, applicant's and registrant's goods would be
complementary and would, therefore, still have to be
presumed to be marketed to the same classes of consumers
through the same channels of trade. Martin’s Famous Pastry
4 When identifications do not include restrictions as to channels
of trade, classes of consumers, or particular uses, we must
presume they are suitable for all possible normal uses for such
goods and are sold to all possible consumers through any
customary channels of trade for such goods. Kangol Ltd. v.
KangaROOS U.S.A., Inc. 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir.
1992).
Ser No. 76335059
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Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
We find that the goods remain related, for likelihood
of confusion purposes, notwithstanding applicant's
amendment during the appeal. We are not persuaded
otherwise by applicant's argument that its business is
restricted to the roofing field, and that registrant's
business is restricted to the mining field. First, even
applicant's amended identification does not restrict its
goods to use in the roofing field, as it encompasses
coatings and cements that can be used in any sort of
waterproofing or dampproofing application, so long as the
application is external. Second, while registrant's web
site, introduced by applicant, may reveal that registrant
is in the mining business, and even that it uses its
registered mark for particular mining machine parts and
accessories not listed in its registration, this does not
establish that registrant is not also in the business of
selling protective coatings that can be used in any number
of ways, as stated by the identification in its
registration. As the examining attorney has informed the
applicant, an applicant cannot utilize extrinsic evidence
to restrict the scope of a registrant's identification. In
re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986).
Ser No. 76335059
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Having determined that the goods are related for
likelihood of confusion purposes, we now turn to a
comparison of the marks. Applicant's mark is DUREX and
registrant's mark is DUR-X-LINE. The examining attorney
has argued that the LINE portion of registrant's mark is
weak because it suggests that registrant has a "line" of
products. Therefore, the examining attorney concludes, the
DUR-X portion of the mark is dominant and is pronounced the
same as applicant's mark and would have the same
connotation.
We agree with the examining attorney that the LINE
portion of registrant's mark may connote a "line" of
protective coatings; but it may also connote that
registrant's products are used for lining or coating
substrates. Either connotation is highly suggestive or
descriptive for registrant's goods. Therefore, we also
agree with the examining attorney's conclusion that the
DUR-X portion of registrant's mark is dominant.
Notwithstanding the connection of LINE to DUR-X by a
hyphen, the DUR-X portion of registrant's mark is dominant
in the articulation of the mark, because it comes first,
and in regard to the mark's overall connotation. In re
National Data Corp., 732 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985) (“[T]here is nothing improper in stating that,
Ser No. 76335059
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for rational reasons, more or less weight has been given to
a particular feature of a mark, provided the ultimate
conclusion rests on consideration of the marks in their
entireties”).
We find the marks DUREX and DUR-X-LINE very similar in
sound and connotation (i.e., they both have a connotation
of durability). Given the use of these similar marks on
related goods that must be presumed to travel through the
same channels of trade to the same classes of consumers, we
find that confusion is likely, or that consumers will be
mistaken about the source of the respective products.
Decision: The refusal of registration under Section
2(d) is affirmed.