Pavestone Company, LP

Trademark Trial and Appeal Board

Aug 1, 2012

No. 77827139 (T.T.A.B. Aug. 1, 2012)

Mailed:
August 1, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Pavestone Company, LP
________

Serial No. 77827139
_______

Christopher J. Rourk of Jackson Walker LLP for Pavestone
Company LP.

Ameen Imam, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
_______

Before Zervas, Bergsman and Kuczma,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

The Pavestone Company, LP (“applicant”) filed a use-
based application to register the mark VENETIAN STONE, in
standard character form, for “concrete building materials,
namely, interlocking concrete pavers,” in Class 19.
Applicant disclaimed the exclusive right to use the word
“stone.”
The Trademark Examining Attorney refused to register
applicant’s mark under Section 2(d) of the Trademark Act of
1946, 15 U.S.C. § 1052(d), on the ground that applicant’s
mark is likely to cause confusion with the previously
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77827139
2
registered mark VENEZIAN (stylized), shown below, for the
following goods:
Building stone; granite; mantels for
fireplaces of marble and stone; marble;
nonstructural building materials,
namely, granite used in decorative
surface applications for countertops
and vanity tops; paving stone; paving
stones; pool surrounds made of stone;
sealer coatings sold as an integral
component of non-metal tiles, natural
stone, and molded resins for
construction purposes; stone for
building and construction; stones;
tombstones of stone, concrete or
marble.1

The registration includes the following translation
statement: “The English translation of the word ‘Venezian’
in the mark is Venetian.” The registration was issued
under the provisions of Section 2(f) of the Trademark Act.
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the

1 Registration No. 3741613, issued January 26, 2010.

Serial No. 77827139
3
factors bearing on the issue of likelihood of confusion.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the goods.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental
inquiry mandated by §2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks”).
A. The similarity or dissimilarity and nature of the
goods described in the application and in the cited
registration, likely-to-continue trade channels and
classes of consumers.

Applicant is seeking to register its mark for
“interlocking concrete pavers” and the cited registration
is for, inter alia, paving stones. Because a refusal under
Section 2(d) is proper if there is a likelihood of
confusion involving any of the goods set forth in the
application and cited registration, we focus the analysis
of the relatedness of the goods on paving stones which the
evidence, discussed below, demonstrates are legally
identical to “interlocking concrete pavers.” See, e.g.,
Serial No. 77827139
4
Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981); and Shunk Mfg. Co. v.
Tarrant Mfg. Co., 318 F.2d 328, 137 USPQ 881, 883 (CCPA
1963).
A “paver” is defined as “a brick, tile, stone, or
block used for paving.”2 Thus, an “interlocking concrete
paver” and “paving stones” are by definition very similar.
The Concrete Pavers Guide website, “The site for
everything concrete pavers” (concretepaversguide.com),
states that concrete pavers are paving stones.3
Welcome to Concrete pavers Guide!

Here we seek to give you the
information you need to install
concrete pavers (also known as paving
stones, concrete paving stones, or
simply pavers) at your home, whether by
yourself or by a professional.

In fact, on its website (pavestone.com), applicant
advertises its VENETIAN STONE product under the heading
“Pave Stones.”4 Applicant’s specimen submitted with its
application advertises its VENETIAN STONE as “Concrete Pave
Stones,” and applicant sells interlocking concrete pavers

2 The Random House Dictionary of the English Language
(Unabridged), p. 1423 (2nd ed. 1983). The Board may take judicial
notice of dictionary evidence. University of Notre Dame du Lac
v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
3 February 11, 2011 Office action.
4 February 11, 2011 Office action.
Serial No. 77827139
5
as well as “driveway pavers, brick pavers, stone pavers and
patio stones.”5
The website for Belgard Hardscapes, Inc. website
(belgard.biz), a company that sells pavers and paving
stones also uses the term “paving stones” and “interlocking
pavers interchangeably.”6 In its webpage for “Interlocking
Pavers,” the webpage of Belgard Hardscapes states that
“Paving stones should last over 30 years, which is much
longer than alternative pavements, under normal residential
use.” See also the Sims Stone website (simsstone.com)
(“Concrete paving stones or pavers as they are commonly
referred to …” and “The days for using concrete paving
stones or pavers as simple stepping stones are long
gone.”);7 the Brown’s Concrete website (brownsconcrete.com)
(the “Interlocking Paving Stones” webpage advertises
concrete paving stones, including “interlocking paving
stones”).8
Pacific Pavingstone, “Southern California’s
Professional Paving Stone Installers,” provided the
following historical insight (emphasis added):9

5 February 11, 2011 Office action.
6 February 11, 2011 Office action.
7 Id.
8 December 21, 2009 Office action.
9 July 21, 2010 Office action.

Serial No. 77827139
6
Paving Stone Driveways

Driveway paving installers know the
incredible strength and long-lasting
qualities of paving stones. In Europe,
cobblestone streets, walkways and town
squares are everywhere, many of them
several hundred years old and still in
perfect shape. When expensive natural
stone became out of reach, Europeans
weren’t willing to give up the charm
and elegance that only stone paving can
give, so they invented a new type of
paving stone (known in the industry as
“interlocking pavers”) that duplicated
the beauty and strength of stone at a
fraction of the price. Since that time,
concrete pavers have become the
pavement of choice.

The record is replete with numerous examples
demonstrating that interlocking concrete pavers are an
alternative paving stone, if not a type of paving stone
(e.g., Belgard Hardscapes, Gulfstream Hardscape, The Rock
Yard, Inc., and Integrity Concrete).10 In view of the
foregoing, we find that the goods are in part identical.
Because the goods are in part identical, we must
presume that the channels of trade and classes of
purchasers are the same. See In re Thor Tech Inc., 90
USPQ2d 1634, 1639 (TTAB 2009); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the

10 Id.

Serial No. 77827139
7
same channels of trade, and be sold to the same class of
purchasers.”). See also In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there
was no evidence regarding channels of trade and classes of
consumers, the Board was entitled to rely on this legal
presumption in determining likelihood of confusion).
Applicant argues, without any supporting evidence,
that “the goods are different and are marketed to different
consumers in different channels of trade.”11 The problem
with applicant’s argument is that this proceeding concerns
applicant’s right to register a trademark, not applicant’s
actual trademark use. Because the scope of the
registration applicant seeks is defined by its application
(and not by its actual use) it is the application (and not
actual use) that we must look to in determining applicant’s
right to register:
The authority is legion that the
question of registrability of an
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.

11 Applicant’s Brief, p. 7.
Serial No. 77827139
8
Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Likewise, in considering the scope of the cited
registration, we look to the registration itself, and not
to extrinsic evidence about the registrant’s actual goods,
customers, or channels of trade. In re Elbaum, 211 USPQ
639, 640 (TTAB 1981), citing Kalart Co., Inc. v. Camera-
Mart, Inc., 119 USPQ 139 (CCPA 1958).
Because there are no limitations as to channels of
trade or classes of purchasers in the description of goods
in either the application or the cited registration, we
must presume that applicant’s interlocking concrete pavers
and registrant’s paving stones are available to all classes
of purchasers for those goods. See In re Linkvest S.A., 24
USPQ2d 1716, 1716 (TTAB 1992).
As indicated above, the record contains numerous
examples of companies advertising interlocking concrete
pavers as an alternative paving stone. Furthermore the
Concrete Pavers Guide referenced above, is a guide for do-
it-yourselfers or professionals, thus, indicating that the
installation of interlocking concrete pavers or paving
stones is not restricted to professionals. See also the
Mold Store website (themoldstore.us) that provides
instructions about making your own stone pavers that are
Serial No. 77827139
9
“so simple … virtually anyone can do it.”12 Therefore, the
record shows that interlocking concrete pavers and paving
stones move in the same channels of trade and are sold to
the same classes of consumers.
B. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
De Nemours & Co., 177 USPQ at 567. In a particular case,
any one of these means of comparison may be critical in
finding the marks to be similar. In re White Swan Ltd.,
8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co.,
6 USPQ2d 1041, 1042 (TTAB 1987). In comparing the marks,
we are mindful that where, as here, applicant’s goods and
registrant’s goods are in part identical, the degree of
similarity necessary to find likelihood of confusion need
not be as great as where there is a recognizable disparity
between the goods. Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.
Cir. 1992); Real Estate One, Inc. v. Real Estate 100

12 February 11, 2011 Office action.

Serial No. 77827139
10
Enterprises Corporation, 212 USPQ 957, 959 (TTAB 1981); ECI
Division of E-Systems, Inc. v. Environmental Communications
Incorporated, 207 USPQ 443, 449 (TTAB 1980).
Moreover, the test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of overall commercial impression so that confusion as
to the source of the goods offered under the respective
marks is likely to result. San Fernando Electric Mfg. Co.
v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ
1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc.,
23 USPQ2d 1835, 1741 (TTAB 1991), aff’d unpublished, No.
92-1086 (Fed. Cir. June 5, 1992).
Because the similarity or dissimilarity of the marks
is determined based on the marks in their entireties, the
analysis cannot be predicated on dissecting the marks into
their various components; that is, the decision must be
based on the entire marks, not just part of the marks. In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985). See also Franklin Mint Corp. V. Master
Mfg. Co., 667 F.2d 1005, 212 USPQ 23, 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”). On the
Serial No. 77827139
11
other hand, different features may be analyzed to determine
whether the marks are similar. Price Candy Company v. Gold
Medal Candy Corporation, 220 F.2d 759, 105 USPQ 266, 268
(CCPA 1955). In fact, 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. In re National Data Corp., 224 USPQ
at 751.
Applicant’s mark is VENETIAN STONE for “interlocking
concrete pavers.” As indicated above, a “paver” is defined
as “a brick, tile, stone, or block used for paving.”
Therefore, the word “stone” is descriptive when applied to
“interlocking concrete pavers” and applicant properly
disclaimed the exclusive right to use the word “stone.” In
view thereof, we find that the word “Venetian” is the
dominant element of applicant’s mark. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed.
Cir. 2000), quoting, In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 752 (Fed. Cir. 1983) (“Regarding
descriptive terms, this court has noted that the
descriptive component of a mark may be given little weight
in reaching a conclusion on the likelihood of confusion”);
In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB
Serial No. 77827139
12
2001) (disclaimed matter is often “less significant in
creating the mark’s commercial impression”).
The significance of the word “Venetian” as the
dominant element of applicant’s mark, VENETIAN STONE is
reinforced by its location as the first part of the mark.
See Presto Products Inc. v. Nice-Pak Products, Inc., 9
USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the first
part of a mark which is most likely to be impressed upon
the mind of a purchaser and remembered”). See also Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the
most prominent part of the mark VEUVE CLICQUOT because
“veuve” is the first word in the mark and the first word to
appear on the label); Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992) (upon encountering the marks, consumers
will first notice the identical lead word).
Applicant’s mark VENETIAN STONE and the mark in the
cited registration VENEZIAN (stylized) are similar in
appearance. The words “Venetian” and “Venezian” differ
only by applicant’s use of the letter “T” instead of the
letter “Z.”
The stylized script of the registered mark is not so
distinctive that it creates a commercial impression
Serial No. 77827139
13
separate and apart from the word “Venezian.” In addition,
applicant’s mark is presented in standard character form
meaning that the rights associated with applicant’s mark
reside in the wording and not in any particular display. In
re RSI Systems, LLC, 88 USPQ2d 1445, 1448 (TTAB 2008); In re
Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB
1988). Thus, applicant could present its mark in a script
form similar to the registered mark.
Although there is no correct pronunciation of a mark,
the words “Venetian” and “Venezian” are likely to have
similar pronunciations.
The word “Venezian” is translated into English as
“Venetian.” Thus, the marks have similar, if not identical
meanings (i.e., of or from Venice). In this regard, the
commercial impression of the marks is identical because they
create the image of stone from Venice.
In view of the foregoing, we find that marks are
similar in terms of appearance, sound, meaning and
commercial impression.
E. Balancing the factors.
In view of the similarity of the marks, the finding of
fact that “interlocking concrete pavers” and “paving
stones” are identical, and the presumption that the goods
move in the same channels of trade and are sold to the same
classes of consumers, we find that applicant’s mark
VENETIAN STONE for “concrete building materials, namely,
Serial No. 77827139
14
interlocking concrete pavers” is likely to cause confusion
with the mark VENEZIAN (stylized) for the goods listed in
the cited registration, specifically paving stones.
Decision: The refusal to register is affirmed.