Panelfold, Inc.v.ChemRex Inc.

Trademark Trial and Appeal Board

Jul 12, 2002

No. 91103270 (T.T.A.B. Jul. 12, 2002)

Mailed: July 12, 2002

Paper No. 50
BAC

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Panelfold, Inc.
v.
ChemRex Inc.
_____

Opposition No. 103,270
to application Serial No. 74/650,110
filed on March 22, 1995
_____

Marsha G. Gentner of Jacobson Holman, PLLC for Panelfold,
Inc.

Dyann L. Kostello of Michael Best & Friedrich LLP for
ChemRex Inc.
______

Before Chapman, Wendel and Drost, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:
On March 22, 1995 ChemRex Inc. (a Delaware
corporation) filed an application to register on the
Principal Register the mark SONOWALL for goods ultimately
identified as “primers for interior and exterior surface
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 103270
2
preparations; protective coatings in the nature of
interior and exterior paints; elastomeric coatings for
interior and exterior surfaces; elastomeric finishes for
interior and exterior surfaces; and stucco base coating
for walls.” The application is based on applicant’s
claimed date of first use and first use in commerce of
October 17, 1994.1
Panelfold, Inc. (a Florida corporation) has opposed
registration, alleging that opposer manufactures,
distributes and sells building products including folding
and movable walls and wall partitions; that since long
prior to applicant’s claimed first use date, opposer has
continuously used the mark SONICWAL for folding and
movable walls and wall partitions; that opposer owns
Registration No. 805,430 for the mark SONICWAL2 for
“folding wall partitions”; and that applicant’s mark,
when used on its goods, so resembles opposer’s previously

1 In the application, applicant claimed ownership of
Registration No. 416,974 issued October 9, 1945 (second renewal-
20 years), for the mark shown below

for “ready mixed paints”; and Registration No. 1,691,077 issued
June 9, 1992 (cancelled under Section 8 in 1998) for the mark
SONOPRIME for “epoxy/polyamide primer for use on concrete.”
2 Registration No. 805,430, issued March 15, 1966, Section 8
affidavit accepted, Section 15 affidavit acknowledged, renewed
(20 years). The claimed date of first use and first use in
commerce is May 6, 1965.
Opposition No. 103270
3
used and registered trademark as to be likely to cause
confusion, mistake, or deception.
Applicant, in its answer, denied the salient
allegations of the notice of opposition.
The record consists of the pleadings; the file of
the opposed application; several notices of reliance
filed by each party; and the testimony, with exhibits, of
applicant’s product manager, Rick Van Garven. Certain
matter has been excluded from the record as explained
below.3
Both parties filed briefs on the case.4 An oral
hearing was not requested.
Evidentiary Matters
Before considering the merits of this case, we will
decide both parties’ pending motions to strike evidence.5
Specifically, opposer has filed a motion to strike two of

3 In opposer’s amended notice of reliance (filed July 17, 2000),
opposer submitted applicant’s answer to revised interrogatory
No. 5 under seal because the information was designated
“confidential” by applicant. However, applicant later submitted
a copy of this “confidential” answer as part of applicant’s
brief in opposition to opposer’s motion to strike, and applicant
did not submit same under seal. Nonetheless, the Board has not
discussed the specific matter contained in applicant’s answer to
opposer’s revised interrogatory No. 5 in this decision.
4 Opposer’s motion (filed October 11, 2001) and applicant’s
motion (filed November 30, 2001) to extend the time to file
briefs and remaining briefs, respectively, are both granted.
5 The two motions to strike have been fully briefed by the
parties. (Opposer’s consented motion, filed September 24, 2001,
Opposition No. 103270
4
applicant’s June 20, 2001 notices of reliance on (i) some
of applicant’s answers to opposer’s interrogatories, and
(ii) applicant’s trademark registrations; and applicant
filed a motion to strike opposer’s August 13, 2001
rebuttal notice of reliance on applicant’s answer to
opposer’s revised interrogatory No. 9.
Turning first to opposer’s motion to strike
applicant’s notice of reliance on some of applicant’s own
answers to opposer’s interrogatories, opposer contends
that applicant’s
reliance on its own answers to opposer’s revised
interrogatory Nos. 8, 11, 14 and 15 is improper under
Trademark Rule 2.120(j)(5) because these answers do not
relate to the topics raised in the selected interrogatory
answers opposer put into the record by way of its notice
of reliance on applicant’s answers to opposer’s revived
interrogatory Nos. 4-6, 10, 13 and 16; and that applicant
has not shown how its answers to opposer’s revised
interrogatory Nos. 8, 11, 14 and 16 should in fairness be
considered so as to make not misleading what was
submitted by opposer.
Applicant contends that its responses to
interrogatory Nos. 8 and 11 regarding actual confusion

to extend its time to respond to applicant’s motion to strike is
Opposition No. 103270
5
relate to opposer’s reliance on certain of applicant’s
answers regarding trade channels, and marketing and
distribution of these goods; that No. 14 relates directly
to No. 13 as is stated in the interrogatory itself; and
that No. 15 is an explanation of applicant’s business and
its products which relates directly to No. 16 inquiring
about whether applicant’s mark appears on any products
sold in the building, interior space and construction
industries.
After careful review of the involved interrogatories
and the arguments of both parties, we conclude that
applicant’s reliance on its answers to opposer’s revised
interrogatory Nos. 8, 11, 14 and 15 is proper under
Trademark Rule 2.120(j)(5). Applicant’s reliance on its
answers to opposer’s interrogatories regarding knowledge
of opposer and actual confusion (Nos. 8 and 11) relate
directly to opposer’s reliance on its interrogatories
about trade channels and distribution systems (opposer’s
interrogatory Nos. 4-6). That is, if a plaintiff is
attempting to show that trade channels overlap, the
defendant is allowed in fairness and so as to make not
misleading what was relied on by the plaintiff to show
that there has nonetheless been no actual confusion.

granted.)
Opposition No. 103270
6
Opposer’s interrogatory No. 14 begins with the
prefatory statement “if the response to Interrogatory No
13, above is other than an unqualified negative...,” and
we find this unquestionably relates in fairness to
applicant’s answer to interrogatory No. 13 which was
previously relied on by opposer.
Applicant’s reliance on its answer to opposer’s
interrogatory No. 15 regarding the nature of applicant’s
business and the nature of its products also clearly
relates in fairness to applicant’s answer to opposer’s
interrogatory No. 16 which asked whether applicant’s mark
appeared on products sold in the building, interior and
construction businesses.
Accordingly, opposer’s motion to strike applicant’s
notice of reliance on applicant’s answers to opposer’s
revised interrogatory Nos. 8, 11, 14 and 15 is denied.
Turning to the second portion of opposer’s motion to
strike, opposer seeks to strike applicant’s notice of
reliance on certified status and title copies of nineteen
of applicant’s trademark registrations (exhibits 22-40),
and portions of Mr. Van Garven’s testimony, with exhibits
1-12 (see opposer’s brief, p. 2). Opposer contends that
it specifically sought this information in discovery
(opposer’s revised interrogatory No. 9), but it was not
Opposition No. 103270
7
produced and in fact, applicant stated it was not aware
of any such relevant marks; that opposer objected to this
line of questioning of applicant’s witness, Rick Van
Garven; and that applicant willfully withheld information
depriving opposer of legitimate trial preparation.
Applicant contends that in its answer to opposer’s
revised interrogatory No. 9, applicant objected to the
question but stated to the extent it understands the
interrogatory there are no such marks; that opposer never
actively sought clarification of applicant’s answer; that
applicant misunderstood interrogatory No. 9 to relate
only to third-party marks and registrations; that
applicant’s answer to interrogatory No. 7(b) regarding
the selection of applicant’s mark, referred to five other
marks owned by applicant, all commencing with “SONO,”
putting opposer on notice both that applicant would claim
a family of marks, and that the two parties’
interpretations of opposer’s interrogatory No. 9 were
different, requiring follow-up by opposer; that opposer
never took any action to follow up on this information;
that there is no prejudice to opposer; and that applicant
acted in good faith by later providing a supplemental
response to interrogatory No. 9, referencing its nineteen
registrations.
Opposition No. 103270
8
Opposer’s revised interrogatories were served on
applicant on April 5, 2000, and interrogatory No. 9
reads, in part, as follows:
Identify each mark, trade name or other
designation, and each registration,
relevant to opposer’s asserted rights
in Opposer’s mark, Opposer’s claims
herein, and/or Applicant’s defense to
Opposer’s claims herein, and for each:
... 6

Applicant’s answer thereto reads in its entirety as
follows7:
Applicant objects to the preamble of
Interrogatory No. 9 as vague,
indefinite and incomprehensible,
however to the extent that Applicant
understands Interrogatory 9, Applicant
is not aware of any mark, trade name
or other designation, or registration
that is relevant to Opposer’s asserted
rights in Opposer’s mark, Opposer’s
claims herein, and/or Applicant’s
defense to Opposer’s claims herein.

During applicant’s testimony period, on October 6,
2000, applicant took the testimony of its product
manager, Rick Van Garven, and when he was questioned
about various brochures and technical data guides showing
marks other than SONOWALL used by applicant, opposer

6 Opposer had previously served (on March 14, 1997) requests for
documents including all documents which are responsive to
opposer’s interrogatories.
7 Applicant’s answers to opposer’s revised interrogatories carry
a date of May 5, 2000, and are signed as to objections by
applicant’s attorney; but the answers are not signed (under
Opposition No. 103270
9
objected thereto as having been asked for in discovery
but not provided to opposer; and also as irrelevant
because applicant had stated there were no such relevant
marks. Opposer specifically moved that this portion of
the witness’ testimony as well as exhibits 1-12 be
stricken. (Dep., p. 23.) Subsequent thereto, on October
31, 2000 applicant served on opposer a supplemental
response to revised interrogatory No. 9 stating that in
light of the clarification of the meaning of the
interrogatory ascertained at the Van Garven testimony
deposition (i.e., the interrogatory did not refer only to
third-party marks and registrations), applicant
identified its nineteen registrations, and answered the
subparts of the interrogatory with respect thereto. On
June 20, 2001 applicant filed its notice of reliance on
certified status and title copies of its nineteen
registrations, resulting in opposer’s motion to strike
same.
Opposer’s revised interrogatory No. 9 is not vague
and incomprehensible, and there is simply no reference in
the question limiting the scope thereof to only third-
party marks and registrations. Applicant answered
clearly stating there were no marks or registrations

oath) by applicant, and the certificate of service on opposer’s
Opposition No. 103270
10
relevant to opposer’s claims or applicant’s defense of
this case. Applicant’s actions during the discovery
phase of this case would lead any reasonable person to
believe that applicant was not relying on any other marks
in this case, either of its own or those of third
parties. If applicant intended to assert a “family” of
marks (the substance of same will be discussed later
herein), at a minimum applicant should have answered
interrogatory No. 9 by referencing its own marks.
Applicant’s reference to some of its other marks in
answering a different interrogatory regarding the
selection and creation of its involved mark is simply not
notice to opposer that applicant is claiming a “family”
of marks.
Applicant’s argument that opposer was obligated to
follow up on applicant’s answer is disingenuous because
applicant’s answer was clearly that there were no such
marks. It is unfair and prejudicial to opposer for
applicant to assert such matters for the first time
during applicant’s testimony period. See Weiner King,
Inc. v. The Wiener King Corporation, 615 F.2d 512, 204
USPQ 820, 828 (CCPA 1980). An important aspect of
discovery is to enable appropriate trial preparation,

attorneys is dated April 5, 2000.
Opposition No. 103270
11
including cross-examination of the adverse party’s
witness(es); and in this case, applicant’s response to
the involved interrogatory clearly stated that there were
no relevant registrations, and this would include
applicant’s own registrations. Simply put, opposer asked
a question and applicant answered the question, and
applicant is estopped from offering information to the
contrary at trial. See TBMP §527.05, and cases cited
therein.
This portion of opposer’s motion to strike is
granted. Accordingly, the objected-to testimony of Mr.
Van Garven and testimony exhibits 1-12, and applicant’s
June 20, 2001 notice of reliance on nineteen
registrations are hereby stricken.
Equally important with regard to this testimony,
exhibits, and notice of reliance, all relating to
applicant’s asserted “family” of marks, is the fact that
this defense is unavailable to a defendant in a Board
proceeding. See Baroid Drilling Fluids Inc. v. Sun
Drilling Products, 24 USPQ2d 1048, 1052-1053 (TTAB 1992).
That is, the only issue before the Board is whether the
mark applicant seeks to register so resembles opposer’s
mark that, when used in connection with the goods at
issue, confusion is likely. Consequently, even if
Opposition No. 103270
12
applicant were to demonstrate that it has established a
family of marks characterized by the term “SONO,” it
would not aid or otherwise entitle applicant to the
registration which it now seeks. Moreover, in this case,
even if the Board considered this evidence it is not
outcome determinative and would not change the result
herein.
During the Van Garven testimony, opposer made a few
other objections to various matters unrelated to
applicant’s asserted “family” of other marks, but opposer
did not raise these objections in its brief on the case,
and therefore they are considered waived.8 See Reflange
Inc. v. R-Con International, 17 USPQ2d 1125, 1126
footnote 4 (TTAB 1990). See also, TBMP §718.04.
Turning now to applicant’s motion to strike, on
August 13, 2001, opposer filed a rebuttal notice of
reliance on applicant’s answer to opposer’s revised
interrogatory No. 9. applicant contends that this is not
proper rebuttal; and that a party should not be allowed
to introduce evidence in support of its case in chief
during rebuttal.

8 We are aware that applicant mentioned in its brief on the case
virtually all of opposer’s other objections made during Mr. Van
Garven’s testimony, but this cannot cure opposer’s waiver of its
remaining objections.
Opposition No. 103270
13
Because we have stricken the portions of applicant’s
case relating to its claim of a “family” of marks, we
agree that opposer’s rebuttal notice of reliance does not
constitute proper rebuttal. Accordingly, applicant’s
motion to strike this notice of reliance is granted.9
Finally, we point out that both parties’ briefs
contained objections to certain arguments and specific
statements made in the other party’s brief. Suffice it
to say that the Board does not generally strike a
properly and timely filed brief, or any portion thereof,
but the objections will be considered by the Board in
determining the case and any improper arguments will be
disregarded. See TBMP §540.
The Parties
Opposer, Panelfold, Inc., is in the business of
manufacturing, distributing and selling building,
interior space and construction products; and has been
engaged in this business since October 1953. Opposer has
continuously marketed “folding wall partitions” under the
mark SONICWAL since May 6, 1965; and it sells its goods
through sales representatives, dealers and distributors

9 Inasmuch as we have granted applicant’s motion to strike, we
do not reach applicant’s alternative requests that applicant’s
answer to opposer’s revised interrogatory No. 9 be interpreted
in a particular manner and that applicant’s notice of reliance
Opposition No. 103270
14
of opposer’s products, to architects, interior designers
and decorators, engineers, building and construction
contractors, and retail stores.
One of the publications in which opposer advertises
is “Sweet’s General Building and Renovation Catalog.” In
that catalog, opposer’s product sold under the mark
SONICWAL is described as an “acoustical folding
partition.” (Opposer’s exhibits 4 and 5.) Opposer is
not aware of any instances of actual confusion involving
these marks for these goods.
Applicant, ChemRex Inc., has been in existence for
approximately 98 years, and it manufactures various
building products (e.g., concrete patching materials,
waterproof coatings and sealants, curing compounds for
concrete products) for the construction industry.
Applicant has several divisions, one of which is the
Sonneborn division, which itself is divided into separate
divisions. Mr. Van Garven testified that the Sonneborn
division of applicant would “obtain $200 million” in
sales for the year 2000. (Dep., p. 8.)
In applicant’s website it describes itself as “a
leading manufacturer of chemical-based products for the
commercial-construction and industrial markets,” and “a

on its supplemental answer to the interrogatory be admitted into
Opposition No. 103270
15
leading provider of concrete repair and restoration
materials and architectural wall finishes in the United
States.” Further, it explains therein that “Sonneborn
products are used in a multitude of new construction and
renovation projects... office buildings, manufacturing
facilities, condominiums, apartment buildings, hospitals,
schools,....” (Van Garven dep., pp. 50-53, and opposer’s
exhibits 7 and 8.)
Applicant uses the mark SONOWALL for a line of
stucco-based products, and such use commenced in October
1994. The prefix “SONO” in applicant’s mark SONOWALL was
selected based on the history of the “Sonneborn” division
name and its reputation for waterproofing experience10;
and “WALL” was selected as the suffix because all of the
products in the SONOWALL line are either applied to a
wall or used in constructing a wall.
Applicant markets its products sold under the
SONOWALL mark primarily to distributors and architects,
who, in turn, sell the goods to construction contractors.
It advertises and markets in various ways, including in
“Sweet’s,” “Build Core,” and “First Source” publications,
and through exhibiting at trade shows (such as The Home

the record.
10 There is nothing further in the record specifically
explaining how “SONO” is derived from “Sonneborn.”
Opposition No. 103270
16
Builder Show and The World of Concrete), and by providing
promotional flyers and other information to distributors
to assist them in promoting applicant’s products. Sales
of applicant’s goods under the SONOWALL mark have grown
from $37,000 in 1995 to $7.5 million in 2000. Applicant
spends approximately $30,000 annually on advertising and
promoting the products sold under this mark.
Applicant is not aware of any instances of actual
confusion involving these marks for these goods.
Priority
With regard to the issue of priority, because
opposer owns a valid and subsisting registration of its
pleaded mark, the issue of priority does not arise. See
King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108, 110 (CCPA 1974); and Carl Karcher
Enterprises, Inc. v. Stars Restaurants Corp., 35 USPQ2d
1125 (TTAB 1995). Moreover, opposer’s use of the mark
SONICWAL since May 1965 precedes applicant’s use of its
involved mark, SONOWALL, since October 1994.
Likelihood of Confusion
The only remaining issue before the Board is that of
likelihood of confusion. Our determination of
likelihood of confusion is based on an analysis of all of
the facts in evidence that are relevant to the factors
Opposition No. 103270
17
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). Based on the record before us in this
case, we find that confusion is likely.
Turning first to a consideration of the parties’
respective goods, it is well established that the issue
of likelihood of confusion must be determined in light of
the goods set forth in the opposed application and
pleaded registration and, in the absence of any specific
limitations therein, on the basis of all normal and usual
channels of trade and methods of distribution for such
goods. See, e.g., CBS Inc. v. Morrow, 708 F.2d 1579, 218
USPQ 198, 199 (Fed. Cir. 1983); Squirtco v. Tomy
Corporation, 697 F.2d 1038, 216 USPQ 937 (Fed. Cir.
1983); and Paula Payne Products Co. v. Johnson Publishing
Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
See also, The Chicago Corp. v. North American Chicago
Corp., 20 USPQ2d 1715 (TTAB 1991); and In re Elbaum, 211
USPQ 693 (TTAB 1981).
Our primary reviewing Court, the Court of Appeals
for the Federal Circuit stated the following in Octocom
Systems Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990):
The authority is legion that the
question of registrability of an
Opposition No. 103270
18
applicant’s mark must be decided on the
basis of the identification of goods
set forth in the application regardless
of what the record may reveal as to the
particular nature of an applicant’s
goods, the particular channels of trade
or the class of purchasers to which
sales of the goods are directed.
(Citations omitted.)

In addition, it is well settled that goods need not
be identical or even competitive to support a finding of
likelihood of confusion, it being sufficient instead that
the goods 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 Jean Patou Inc. v. Theon Inc., 9 F.3d
1171, 29 USPQ2d 1771, 1773 (Fed. Cir. 1993); and In re
Peebles, Inc., 23 USPQ2d 1795 (TTAB 1992).
With respect to the involved goods, we note that
opposer’s pleaded registration covers “folding wall
partitions”; and applicant’s identified goods are
“primers for interior and exterior surface preparations;
protective coatings in the nature of interior and
exterior paints; elastomeric coatings for interior and
exterior surfaces; elastomeric finishes for interior and
exterior surfaces; and stucco base coating for walls.”
Opposition No. 103270
19
Opposer’s goods include no limitation as to what
opposer’s goods are made of, and/or whether the goods are
to be painted or otherwise finished; and applicant’s
goods are identified to include paints and primers and
surface coatings and finishes for “interior” use. Here,
opposer makes and sells interior folding wall partitions11
and applicant seeks to register its mark for, inter alia,
primers for interior and exterior surface preparations,
and protective coatings in the nature of interior and
exterior paints. It is obvious that these are not
identical goods, one being folding wall partitions and
the other being various coatings and finishings for
interior and exterior surfaces. However, these goods are
related in the mind of the consuming public as paints and
primers are used to cover walls, whether the walls are
folding wall partitions or more permanent in nature. See
Recot, Inc. v. M.C. Becton, 214 F.3d 1332, 54 USPQ2d
1894, 1898 (Fed. Cir. 2000).
Applicant testified that its goods are intended for
use only by professionals (for example, painters,
waterproofing contractors, plasterers) and are not
intended for use by the general public; that its goods

11 While opposer’s identification does not include the word
“interior,” it is reasonable to assume that folding wall
Opposition No. 103270
20
are not sold in retail stores; and that applicant’s
products sold under its SONOWALL mark are only for use on
the exterior of buildings, whereas opposer’s products are
for interior use.
Applicant strenuously urges that the goods are
completely different, opposer’s folding wall partitions
used in hotels and conference centers with soundproofing
an important characteristic, while applicant’s goods are
primers, elastomeric finishes and stucco-based coatings
for exterior cladding or construction of new walls in
exterior applications or “interior” spaces like parking
garages; that the channels of trade are different and
even though both parties’ products “may ultimately be
directed to architects and contractors” (applicant’s
brief, p. 29), such consumers carefully evaluate each
construction project; and that these involved goods are
purchased by sophisticated customers after careful
consideration.
The problem with applicant’s position is that there
are no such limitations contained in either opposer’s or
applicant’s identifications of goods. Opposer’s
identification does not restrict use to hotels and
conference centers or as to soundproofing capabilities.

partitions would, at a minimum, include interior wall
Opposition No. 103270
21
There is no restriction in applicant’s identification of
goods that its primers, paints, finishes, coatings and
stucco base coat for walls are sold only to architects or
construction contractors. Moreover, applicant has
clearly included the term “interior” several times in its
identification of goods, yet applicant contends that it
does not use these goods on interior room walls or
surfaces.
Put another way, applicant seeks to register the
mark SONOWALL for goods without any restrictions as to
professional purchasers or any specific channels of
trade; and conversely, applicant shows that even though
its identification specifically includes several
references to “interior” surfaces, it actually uses these
products only on exterior walls or surfaces.
Because there is no limiting language which
restricts applicant’s or opposer’s channels of trade
(e.g., for professional use only, for industrial use
only) or limits purchasers to whom the goods are sold
(e.g., architects, construction contractors), we must
presume that both applicant’s goods (primers, paints,
coatings, finishes, stucco base coat for walls) and
opposer’s goods (folding wall partitions) could be sold

partitions.
Opposition No. 103270
22
through all normal channels of trade and to all the usual
classes of purchasers. That is, these goods, as
identified, could be sold to professionals in the
industry as well as the general public through retail
stores. In addition to the unrestricted nature of the
identifications of goods as to trade channels and
purchasers, the evidence actually shows that both
parties’ products are directed to architects and
ultimately to construction contractors. (See e.g., Van
Garven dep., p. 26; applicant’s answers to opposer’s
revised interrogatory Nos. 10, 13 and 16; and exhibits 4
and 5 -- “Sweet’s General Building and Renovation
Catalog.”) Thus, there is evidence of the same and/or
overlapping consumers. In addition, these goods could be
used together in that someone installing a folding wall
partition could also prime and paint same.
Further, applicant’s product manager testified that
applicant’s goods are used only on exterior surfaces
because the “interior” surfaces meant by applicant are
only those not heated and not fully enclosed (e.g.,
parking garages). However, we cannot ascribe to the word
“interior” the meaning described by applicant. We take
judicial notice of The Random House Dictionary (Second
Opposition No. 103270
23
Edition 1987) meaning of “interior”12: “9. Arch. a. the
inside part of a building, considered as a whole from the
point of view of artistic design or general effect,
convenience, etc. b. a single room or apartment so
considered.” Thus, it is clear that applicant’s
identified goods, including the term “interior,” would
encompass interior rooms and walls.
Even if we assume, as applicant contends, that the
relevant purchasers for both parties’ identified goods
would be sophisticated purchasers, that does not mean
that they are totally immune from confusion as to the
source of the goods. See Wincharger Corporation v.
Rinco, Inc., 297 F.2d 261, 132 USPQ 289 (CCPA 1962); and
In re Decombe, 9 USPQ2d 1812 (TTAB 1988).
We find these goods, as identified, (opposer’s
folding wall partitions, and applicant’s primers and
paints for interior and exterior surfaces) are related,
and may be sold through the similar channels of trade to
similar purchasers. It is not necessary that a
likelihood of confusion be found as to each item included
within applicant’s identification of goods. See Squirtco
v. Tomy Corporation, supra, 216 USPQ

12 Opposer offered another dictionary definition of the term
“interior” in its reply brief (p. 22). While we also take
Opposition No. 103270
24

judicial notice of the definition offered by opposer, we rely on
the definition given above. See TBMP §712.
Opposition No. 103270
25
at 939; Tuxedo Monopoly, Inc. v. General Mills Fun Group,
648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); and Alabama
Board of Trustees v. BAMA-Werke Curt Baumann, 231 USQP
408, footnote 7 (TTAB 1986).
We turn next to a consideration of the respective
marks at issue. Although the parties’ marks are not
identical, when considered in their entireties, the
respective marks are similar in sound, appearance,
connotation and commercial impression. Both marks,
SONICWAL and SONOWALL, are three syllable words with
similar letter formations and the same beginning syllable
and ending syllable. The fact that in opposer’s mark the
last syllable is “WAL” whereas in applicant’s mark it is
“WALL” is an extremely minor difference unlikely to be
noticed or remembered by purchasers. Of course, when
spoken, these marks are highly similar.
Moreover, the slight differences between applicant’s
mark SONOWALL and opposer’s SONICWAL mark may not be
recalled by purchasers seeing the marks at separate
times. The proper test in determining likelihood of
confusion is not on a side-by-side comparison of the
marks, but rather must be on the recollection of the
average purchaser, who normally retains a general rather
than specific impression of the many trademarks
Opposition No. 103270
26
encountered; that is, a purchaser’s fallibility of memory
over a period of time must also be kept in mind. See
Grandpa Pidgeon’s of Missouri, Inc. v. Borgsmiller, 477
F.2d 586, 177 USPQ 573 (CCPA 1973); and Spoons
Restaurants Inc. v. Morrision, Inc., 23 USPQ2d 1735 (TTAB
1991), aff’d unpub’d (Fed. Cir., June 5, 1992).
Potential purchasers may mistakenly believe that
applicant’s mark used for, among other things, paints and
primers is a related version of opposer’s mark used for
folding wall partitions, with both parties’ marks serving
to indicate origin in the same source.
Concerning the connotations of the respective marks,
we take judicial notice of the following definitions from
Webster’s Third New International Dictionary (1993): (i)
“sonic” is defined as “1. having a frequency within the
audibility range of the human ear....2. utilizing,
produced by, or relating to sound waves...”; and (ii)
“sono” which states “see son-,” with “son-” defined as
“son- or soni- or sono- ... sound.” As applicant argues
(brief, p. 22), in opposer’s mark “sonic” suggests a
reference to sound and possibly a soundproofing quality
of its folding wall partitions. And likewise, the prefix
“sono” in applicant’s mark also suggests the same
reference to sound and/or perhaps a sound-deadening
Opposition No. 103270
27
quality in its primers, paints, coatings and finishes.
Both parties’ marks connote a reference to walls.
Thus, when we compare the parties’ marks in their
entireties we find that they are substantially similar in
sound, appearance, connotation and commercial impression.
See In re Azteca Restaurant Enterprises Inc., 50 USPQ2d
1209 (TTAB 1999). Their contemporaneous use, in
connection with these related identified goods, would be
likely to cause confusion as to the source or sponsorship
of such goods. See Cunningham v. Laser Golf Corp., 222
F.3d 1307, 55 USPQ2d 1842 (Fed. Cir. 2000); and In re
Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
Another du Pont factor we consider in this case is
the strength of opposer’s mark.13 Opposer contends that
its mark is “strong” and entitled to a broad scope of
protection because its “incontestable” registration for
the mark is thirty–five years old, and there is no
evidence of any other similar marks in use on similar
goods. Applicant contends that incontestability of a
registration for a mark does not establish that the mark
is “strong”; that opposer’s mark is suggestive and not

13 This case does not involve a claim that opposer’s mark is
“famous” within the meaning of the du Pont case as opposer made
Opposition No. 103270
28
arbitrary; and that opposer has submitted no evidence to
establish marketplace recognition of its mark SONICWAL.

clear in its reply brief (p. 14) stating that “Opposer does not
seek to rely on the fame of its strong mark.”
Opposition No. 103270
29
There is no question that this Board and courts
accord to a well-known or strong mark a broader scope of
protection than that which is accorded to a mark which is
not well-known or strong. However, we do not find the
evidence in this record adequate to persuade us of the
well-known character of opposer’s SONICWAL mark. Mere
length of time that a mark is in use does not by itself
establish consumer awareness of the mark resulting in a
finding that the mark is strong and entitled to a broad
scope of protection. See General Mills Inc. v. Health
Valley Foods, 24 USPQ2d 1270, 1277 (TTAB 1992).
Likewise, the fact that a registration has achieved
incontestable status does not make a mark “strong.” See
e.g., Oreck Corporation v. U.S. Floor Systems, Inc., 803
F.2d 166, 231 USPQ 634, 638 (5th Cir. 1986). Opposer has
not shown any reason why its mark should be afforded more
than the normal scope of protection.
Applicant’s argument that there has been no actual
confusion is unavailing as there is little evidence of
record regarding either opposer’s or applicant’s
geographic area of sales (e.g., applicant answered
opposer’s interrogatory No. 6 regarding channels of trade
and manner of distribution with “Applicant’s products are
sold directly to Distributors in targeted geographical
Opposition No. 103270
30
areas”); and there is no evidence of opposer’s sales.
Hence, it is not clear that there has been opportunity
for confusion in the marketplace. Moreover, the test is
whether there is a likelihood of confusion, not whether
actual confusion has occurred. See Weiss Associates Inc.
v. HRL Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840
(Fed. Cir. 1990).
Applicant argued that “the potential for confusion
is nonexistent.” (Brief, p. 36.) We disagree with
applicant’s statement that the potential is
“nonexistent”; and we note that applicant’s argument is
unsupported by any evidence specifically relating
thereto. While it is true that the Board (and the
courts) are concerned with more than mere theoretical
possibilities of confusion, mistake or deception, in this
case we find there is more than such a mere theoretical
possibility, there is a likelihood of confusion in this
case.
Finally, opposer contends that with regard to
applicant’s intent, applicant adopted its mark almost
thirty years after opposer’s mark registered; and that
despite applicant’s duty to select a mark sufficiently
distinguishable from opposer’s mark to avoid a likelihood
of confusion, it did not do so. Applicant contends that
Opposition No. 103270
31
there is no evidence and nothing to infer bad intent on
applicant’s part in adopting its mark; and that in fact,
applicant was not aware of opposer until becoming
involved in this opposition.
There is no evidence that applicant was previously
aware of opposer’s mark SONICWAL. Even if opposer had
established that applicant was so aware, that could not,
by itself, establish wrongful intent. Mere knowledge of
another’s mark does not establish bad faith or wrongful
intent. See Sweats Fashions Inc. v. Pannill Knitting
Co., 833 F.2d 1560, 4 USPQ2d 1793, 1797-1798 (Fed. Cir.
1987); and Electronic Water Conditioners, Inc. v.
Turbomag Corporation, 221 USPQ 162, 165 (TTAB 1984).
Even though there is no evidence of any bad intent on
applicant’s part in adopting the involved mark, and even
if applicant established innocent or good faith intent,
it is unpersuasive of a different result in this case.
As the Court of Appeals for the Federal Circuit stated in
the case of J & J Snack Foods Corp. v. McDonald’s Corp.,
932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991):
“Whether there is evidence of intent to trade on the
goodwill of another is a factor to be considered, but the
absence of such evidence does not avoid a likelihood of
confusion.”
Opposition No. 103270
32
Based upon consideration of the evidence and
weighing all relevant du Pont factors, we find that
because the parties’ marks are similar; the parties’
goods, as identified, are related; and the trade channels
and purchasers of the respective identified goods are
similar or overlapping; there is a likelihood that the
purchasing public would be confused when applicant uses
SONOWALL as a mark for its goods.
Decision: The opposition is sustained, and
registration to applicant is refused.