Perry Textiles, Inc.

Trademark Trial and Appeal Board

Aug 4, 2015

No. 85802574 (T.T.A.B. Aug. 4, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: August 4, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Perry Textiles Inc.
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Serial No. 85802574
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Matthew H. Swyers of The Trademark Company, PLLC
for Perry Textiles Inc.
Anne C. Gustason, Trademark Examining Attorney, Law Office 117,
Hellen Bryan-Johnson, Managing Attorney.
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Before Bucher, Greenbaum and Hightower,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Perry Textiles Inc. (“Applicant”) seeks registration on the Principal Register of
the mark for
“stain repellents for bedding” in International Class 1.1

1 Application Serial No. 85802574 was filed on December 13, 2012, based upon Applicant’s
claim of first use anywhere and use in commerce since at least as early as December 13,
2012. The words “ADVANCED MATTRESS PROTECTION TECHNOLOGY WITH ODOR
ELIMINATOR” are disclaimed. The application includes the following statements: “The
mark consists of the words REPEL in dark blue, next to a yellow dot, next to the light blue
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The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that Applicant’s mark, when used on its identified goods, so resembles the
registered mark REPEL-O-TEX (in typed form)2 for
“preparation for rendering textiles, fabrics, and textile
and other materials, exclusive of lithographic and
planographic printing plates and other lithographic and
planographic materials, water, stain, and perspiration
resistant” in International Class 1
as to be likely to cause confusion, mistake or deception.3
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Evidentiary Issue
Before proceeding to the merits of the refusal, we address an evidentiary matter.
In the second to last paragraph of her brief, the Examining Attorney objects to the
“new information regarding purported third-party usage of the applied-for mark,”
referencing “page 12 of Applicant’s brief.”4 This “new information” consists of the

letter A, next to a yellow dot, next to the light blue word TEX. In the upper right hand and
bottom left hand corner of the mark are clusters of 3 dark blue dots. Below REPEL A TEX
are the dark blue words ADVANCED MATTRESS PROTECTION TECHNOLOGY WITH,
above a light blue oval, displaying the white words ODOR ELIMINATOR. The color(s) dark
blue, light blue, white and yellow is/are claimed as a feature of the mark.”
2 “Standard character” drawings were known as “typed drawings” prior to November 2,
2003. Standard character and typed marks are legal equivalents. See TMEP § 807.03(i)
(July 2015).
3 Registration No. 0398382 registered on October 27, 1942. Third renewal.
4 8 TTABVUE 12, referencing 6 TTABVUE 13.
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Affidavit of Robert O’Connell, and associated exhibits. As Applicant previously
made the O’Connell Affidavit (with exhibits) of record with its April 16, 2014
Request for Reconsideration, the objection is overruled. We discuss below the
probative value of the O’Connell Affidavit.
II. Applicable Law
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905 (Fed. Cir. 2012); and In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods or services. See
Federated Foods, Inc. v. Fort Howard 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.”). We consider each of the factors as to which Applicant or the Examining
Attorney presented arguments or evidence. The others, we consider to be neutral.
A. The Marks and the Number and Nature of Similar Marks in Use in
Connection With Similar Services
We first compare Applicant’s mark with Registrant’s mark
REPEL-O-TEX in their entireties in terms of sound, appearance, meaning and
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commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). “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). In addition, while marks must be
compared in their entireties, it is well settled that one feature of a mark may have
more significance than another, and there is nothing improper in giving greater
weight to the more significant feature. See In re National Data Corp., 753 F.2d
1056, 224 USPQ 749 (Fed. Cir. 1985).
Applicant argues that the differences in the marks in appearance due to the
additional wording and design element in Applicant’s mark are sufficient to
distinguish them. The Examining Attorney focuses on the visual and aural
similarities between Registrant’s mark REPEL-O-TEX and the literal element
REPEL A TEX in Applicant’s mark, which she contends is the most distinctive
portion, and therefore the strongest source identifying element, of Applicant’s mark.
Applicant’s mark and Registrant’s mark are similar in that the wording REPEL
A TEX in Applicant’s mark is identical in sound and nearly identical in appearance
to the entirety of Registrant’s mark REPEL-O-TEX. Indeed, REPEL A TEX and
REPEL-O-TEX are identical in pronunciation, structure and length, differing only
by the vowel “A” or “O” used as the third syllable in each mark. The colored dots
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between the individual terms in the REPEL A TEX portion of Applicant’s mark
serve the same function as the hyphens between the terms in Registrant’s mark
REPEL-O-TEX, and would not be viewed as a meaningful distinction.
The addition of the descriptive words ADVANCED MATTRESS PROTECTION
TECHNOLOGY WITH ODOR ELIMINATOR, which have been disclaimed, is not
sufficient to distinguish the marks. Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“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.’” (quoting National Data, 224
USPQ at 752)); In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34
(Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001)
(disclaimed matter is often “less significant in creating the mark’s commercial
impression”). Furthermore, the wording REPEL A TEX is larger and more visually
prominent than the additional, disclaimed, wording in Applicant’s mark. In
addition, the stylization and minimal design in Applicant’s mark does not overcome
the dominance of the literal element REPEL A TEX. In the case of marks consisting
of words and a design, the words normally are given greater weight because they
would be used by consumers to request the products. In re Dakin's Miniatures, Inc.,
59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 2 USPQ2d 1553,
1554 (TTAB 1987). Moreover, because the cited mark is registered in standard
characters, it is not limited to any particular display and can be used in any
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stylization, including that similar to Applicant’s mark. Citigroup Inc. v. Capital City
Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011).
For these reasons, we find that REPEL A TEX is the dominant term in
Applicant’s mark, and accordingly, it is entitled to more weight in our analysis. In
coming to this conclusion, we do not discount the presence of the additional wording
and design in Applicant’s mark. However, for the reasons discussed above, we find
that the term REPEL A TEX in Applicant’s mark is more prominent, and more
likely to be remembered by consumers, than the other elements of the mark.
The term REPEL A TEX in Applicant’s mark is identical in sound and nearly
identical in appearance to the entirety of Registrant’s mark REPEL-O-TEX. As a
result, we find that, when viewed in their entireties, the marks and
REPEL-O-TEX are more similar than they are different and, overall, convey similar
commercial impressions. That is to say, the marks appear to be variations of each
other that point to a common source.
In coming to our determination regarding the similarity of the marks, we have
considered Applicant’s arguments and evidence as to several third-party
registrations for purportedly similar goods that, according to Applicant, have marks
that arguably serve to dilute Registrant’s REPEL-O-TEX mark. Applicant has
submitted nine third-party registrations. In fact, these marks bear little overall
resemblance to the marks at issue herein.5 In addition, the nine registrations have

5 The nine registrations are for the marks KIWI PROTECT-ALL, BARTEX, AEROTEX,
MILLIGUARD CARPET & RUG PROTECTOR, SIMPLY TECH, NOVATECH, GUARDIAN
CARPET PROTECTOR AND FORTIFIER, TECHSTAR, and COMBITEX.
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little weight in determining the strength of a mark because they do not establish
that the registered marks identified therein are in actual use in the marketplace or
that customers are accustomed to seeing them. See AMF Inc. v. Am. Leisure Prods.,
Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973); In re Max Capital Group
Ltd., 90 USPQ2d 1243, 1248 (TTAB 2010).
Accordingly, the du Pont factors of the similarity of the marks and the number
and nature of similar marks weigh strongly in favor of a finding of likelihood of
confusion.
B. Relatedness of the Goods, Channels of Trade and Conditions of
Purchase
We turn now to the du Pont factors of the relatedness of the goods, channels of
trade and conditions of purchase. We base our evaluation on the goods as they are
identified in the application and registration, and we cannot read limitations into
these goods. Stone Lion Capital Partners, LP v. Lion Capital LLP, 76 F.3d 1317, 110
USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Systems, Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002).
A “repellent” is defined as “any of various durable or nondurable solutions
applied to a fabric, garment, surface, etc., to increase its resistance, as to water,
moths, mildew, etc.”6 The goods therefore share the same function in that they both

6 Random House Dictionary (2015) posted at Dictionary.com. The Board may take judicial
notice of dictionary definitions. In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
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are used to increase the stain resistance of the product to which they are applied. In
the case of Registrant, that product includes “textiles,” without limitation, and
therefore includes “home textiles.” See Stone Lion, 110 USPQ2d at 1161. The record
evidence indicates that at least one chemical company that manufactures textile
chemicals for stain repellents lists “mattress covers” and “bed linens” under the
heading “home textiles.”7 We therefore are persuaded that the “preparation for
rendering textiles [and] fabrics … stain … resistant” identified in the registration
encompasses, and therefore must be considered to be legally identical to, the “stain
repellants for bedding” identified in the application. See In re Jump Designs LLC,
80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640
(TTAB 1981)) (unrestricted and broad identifications are presumed to encompass all
goods of the type described).
Concerning the channels of trade and classes of purchasers, because the goods
are legally identical, and there are no limitations as to channels of trade or classes
of purchasers in either the application or cited registration, we must presume that
the goods identified in the application and registration will be sold in the same
channels of trade, and will be bought by the same classes of purchasers. Viterra, 101
USPQ2d at 1908 (absent restrictions in an application and/or registration, the
identified goods are “‘presumed to travel in the same channels of trade to the same

See also University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594,
596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
7 Printout from BASF attached to October 22, 2013
Office Action, at 6.
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class of purchasers’” (quoting Hewlett-Packard, 62 USPQ2d at 1001)). See also Stone
Lion, 110 USPQ2d at 1161; In re Linkvest, 24 USPQ2d 1716, 1716 (TTAB 1992).
With its Request for Reconsideration, Applicant submitted the above-noted
O’Connell Affidavit (with exhibits). Mr. O’Connell is an individual presumably
associated with Applicant, but he failed to identify his position with Applicant, and
provided no foundation for his statements. The probative value of the O’Connell
Affidavit is therefore quite limited. In any event, much of Applicant’s argument,
including the differences in the goods and marketing channels, and the purchasing
conditions, relies not on the goods identified in the cited registration but on
Registrant’s actual goods, which, according to Mr. O’Connell, “appear[] [to be] a
chemical that is added to liquid laundry formulations to impart soil release
properties to polyester fabrics, offering protection against adhesion of greasy soils
between wash cycles.” The identification in the registration is not limited (nor does
it allude) to “laundry formulations,” and as discussed above, neither Applicant’s nor
Registrant’s identification is restricted to trade channels, marketing, or types of
customers. In considering the scope of the application and registration, we are
bound by the identifications in the application and registration themselves, and not
to extrinsic evidence about Applicant’s or Registrant’s goods. See Hewlett-Packard,
62 USPQ2d at 1004; Octocom, 16 USPQ2d at 1787; In re La Peregrina Ltd., 86
USPQ2d 1645, 1647 (TTAB 2008).
The du Pont factors of the similarity of the marks and channels of trade weigh
strongly in favor of finding a likelihood of confusion. However, because there is no
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probative evidence regarding the purchasing conditions, we consider this du Pont
factor neutral.
C. Actual Confusion
Applicant’s argument that there have been no known instances of actual
confusion is not persuasive. The contemporaneous use of Applicant’s and
Registrant’s marks for a period of approximately three years without actual
confusion is entitled to little weight. See Majestic Distilling Co., Inc., 65 USPQ2d at
1205 (“uncorroborated statements of no known instance of actual confusion are of
little evidentiary value”). See also In re Bisset-Berman Corp., 476 F.2d 640, 177
USPQ 528, 529 (CCPA 1973) (stating that self-serving testimony of applicant’s
corporate president’s unawareness of instances of actual confusion was not
conclusive that actual confusion did not exist or that there was no likelihood of
confusion). 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),
especially in an ex parte context. In any event, the record is devoid of probative
evidence relating to the extent of use of Registrant’s mark and, thus, whether there
have been meaningful opportunities for instances of actual confusion to have
occurred in the marketplace. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1847 (Fed. Cir. 2000); and Gillete Canada Inc. v. Ranir Corp., 23
USPQ2d 1768, 1774 (TTAB 1992). Accordingly, the du Pont factor of the length of
time during and conditions under which there has been contemporaneous use
without evidence of actual confusion is considered neutral.
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III. Conclusion
Having considered the arguments and evidence of record and all relevant
du Pont factors, we find that Applicant’s mark, used on Applicant’s goods, so closely
resembles the cited registered mark, used on Registrant’s goods, as to be likely to
cause confusion, mistake or deception as to the source of Applicant’s goods.
Decision: The refusal to register Applicant’s mark is affirmed.