Pyro-Stop, LLC

Trademark Trial and Appeal Board

Jun 25, 2003

No. 76061827 (T.T.A.B. Jun. 25, 2003)

Hearing: Mailed:
April 2, 2003 June 25, 2003
Papers 20 & 17
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Pyro-Stop, LLC
________
Serial Nos. 76/061,827 and 76/065,119
_______
Robert H. Cameron and G. Franklin Rothwell of Rothwell Figg
Ernst & Manbeck, P.C. for Pyro-Stop, LLC.
Amos Matthews, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______
Before Hanak, Hairston and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Pyro-Stop, LLC seeks registration on the Principal
Register for the marks PYRO-STOP1 and PYRO-STOP and design,2
as shown below:
1 Application serial no. 76/061,827 was filed on June 2, 2000
based upon applicant’s allegation of use in commerce at least as
early as March 1991.
2 Application serial no. 76/065,119 was filed on June 7, 2000
based upon applicant’s allegation of use in commerce at least as
early as April 10, 2000.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial Nos. 76/061,827 and 76/065,119
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for services recited as follows:
“installation and maintenance of penetration fire
stopping and life safety equipment, namely passive
fire protection systems for pipe, duct, conduit,
cable tray and bus duct penetrations, grease duct
wrap and enclosures, interior and exterior
architectural, construction and seismic control
expansion joints, critical fire walls and fire doors
for use by facility owners, general contractors, and
mechanical and electrical contractors,” in
International Class 37, and
“penetration fire stopping and life safety equipment
consultation services provided to facility owners,
general contractors, and mechanical and electrical
contractors in the field of construction or
renovation and restoration of commercial buildings
and industrial facilities,” in International Class
42.
This case is now before the Board on appeal from the
final refusal to register based upon Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d). The Trademark Examining
Attorney has held that applicant’s marks, when used in
connection with the identified services, so resemble the mark
PYROSTOP registered for “fire-resistant glass” in
International Class 19,3 as to be likely to cause confusion, to
cause mistake or to deceive.
Applicant and the Trademark Examining Attorney have fully
briefed these appeals and both appeared before the Board at
the oral hearing requested by applicant.
We reverse the refusals to register.
Serial Nos. 76/061,827 and 76/065,119
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The Trademark Examining Attorney herein argues that
“[t]he record consists of evidence which clearly indicates
that the goods and services involved are related.” (Trademark
Examining Attorney’s appeal brief, p. 5). He argues that
“both [registrant’s goods and applicant’s services] have as
their purpose the prevention of fires.” (Trademark Examining
Attorney’s final refusal of September 19, 2001, p. 2).
By contrast, applicant argues that the Trademark
Examining Attorney has not properly considered all the
relevant du Pont factors, placing too much weight on the
similarity of the marks. For example, applicant contends that
registrant’s suggestive mark should be accorded a narrower
scope of protection than that given it by the Trademark
Examining Attorney. Applicant points to the specialized trade
channels recited in these applications. Additionally,
applicant emphasizes the fact that its relatively expensive
services are promoted in a different marketing context, and as
such, that they are directed to a sophisticated class of
purchasers who would generally not be involved in purchasing
registrant’s goods.
Our determination under Section 2(d) is based upon an
analysis of all of the facts in evidence that are relevant to
3 Registration No. 1,597,443, issued on May 22, 1990, section 8
affidavit accepted and section 15 affidavit acknowledged; renewed.
Serial Nos. 76/061,827 and 76/065,119
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the 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 (CCPA 1973).
We turn then to a discussion of the respective marks.
Applicant’s marks are substantially identical to registrant’s
mark as to sound and connotation, and quite similar as to
appearance. While applicant’s marks have a hyphen (PYRO-
STOP), registrant’s mark does not (PYROSTOP). Moreover, one
of applicant’s involved marks includes a design feature that
cannot be ignored in any analysis of the dissimilarities in
the appearance of the marks. Nonetheless, this du Pont factor
clearly favors the position of the Trademark Examining
Attorney. On the other hand, our likelihood of confusion
analysis cannot disregard the evidence in the record as to the
other relevant du Pont factors. In short, the definite
similarity of the marks herein cannot trump all other relevant
considerations.
This is particularly true if we should find, as applicant
contends, that the cited mark should be accorded a narrow
scope of protection. Applicant has submitted copies of
fourteen subsisting federal registrations having PYRO-
formative marks registered for goods modified with terms like
“fire-resistant,” “fire-retardant,” “fire-extinguishing,”
“fire-protective,” “fire-fighting,” “fire-control,” “fire-
Serial Nos. 76/061,827 and 76/065,119
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prevention,” “flame-resistant,” and the like.4 Given the
dictionary definition of the term “pyro-,”5 we have to conclude
that PYRO-STOP (or PYROSTOP) is quite suggestive for
something designed to stop fire or flames. Accordingly, while
we accord the cited registration the protection warranted
under Section 7(c) of the Trademark Act,6 this particular
du Pont factor weighs in applicant’s favor.
We turn next to the relationship of applicant’s services
to registrant’s goods. Screen prints of pages from
applicant’s website placed into the record by the Trademark
Examining Attorney make it clear that applicant is a firestop
contractor specializing in firestop joint systems, floor
perimeter/slab edge/exterior wall cavity systems and through
penetration systems. As a specialist contractor, applicant
complies with the detailed codes of the Firestop Contractors
International Association (FCIA) as to insulation, penetration
seals, and passive fire protection, as well as the life safety
4 PYROGUARD (Reg. No. 1,641,712), PYROPAK (Reg. No. 1,581,497),
PYRO-PAD (Reg. No. 1,916,426), PYRO-FLEX (Reg. No. 1,491,141),
PYROLITE (Reg. No. 1,833,335), PYROKNIT (Reg. No. 1,832,250),
PYROCOOL (Reg. No. 1,922,668), PYROSWISS (Reg. No. 1,737,640),
PYRO-GUARD (Reg. No. 1,563,376), PYRO-CHEK (Reg. No. 1,143,013),
PYRO-CHEM (Reg. Nos. 1,224,720 & 1,248,206), PYROCUSHION (Reg. No.
1,394,867), and PYRO-KINETIC (Reg. No. 1,514,581).
5 PYRO- Indicates: 1. fire or heat; for example, pyrotechnic.
2. Resulting from or by the action of fire or heat … .
The American Heritage Dictionary of the English Language (1975).
6 For example, even weak or highly suggestive marks are entitled
to protection against the identical mark for goods used for related
purposes. See In re Textron Inc., 180 USPQ 341 (TTAB 1973).
Serial Nos. 76/061,827 and 76/065,119
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requirements of the National Fire Prevention Association
(NFPA) as to construction, protection and occupancy features
to minimize danger to life from fires, smoke and fumes.
Applicant stressed in its brief and again at the oral hearing
that it is in the business of preventing the spread of fire,
smoke and heat from one compartment (of large industrial or
commercial facilities) to another through services
penetrations. By contrast, applicant argues that registrant’s
goods are first and foremost goods designed for visibility in
windows, doors, sidelights and partitions.
By contrast, the Trademark Examining Attorney argues that
evidence in the file shows that some of the same companies
that produce fire-resistant glass are also involved in
consultation over, and installation of, passive fire
prevention systems. He also points out that fire-resistant
glass used in industrial projects requires “installation” –
the first word in applicant’s recitation of services in
International Class 37.
Clearly, applicant’s services and registrant’s goods may
both be purchased for the same commercial buildings or
industrial facilities, and both would be selected with an eye
toward fire safety. Both involve the creation of a barrier
against heat, smoke, flames and hot gasses, each could be
installed within a building’s interior walls, and the record
Serial Nos. 76/061,827 and 76/065,119
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shows that both would be listed in Underwriters Laboratories’
(UL) fire testing programs.
Nonetheless, we find that applicant’s services are not
closely related to registrant’s goods. 7 We begin our analysis
by conceding the obvious – whether the setting is new
construction or remodeling, registrant’s fire-resistant glass
and its framing will always require “installation.” On the
other hand, we find that the Trademark Examining Attorney’s
statement in his brief8 is not an accurate summary of the
evidence in the file. The Google hits in the record do not
show that companies involved in the installation of passive
fire prevention systems (such as those recited by applicant)
are also involved in the installation of fire-resistant glass
for windows, doors, sidelights, partitions, etc.
7 Having found that the marks are not identical in overall
commercial impression and that registrant’s mark is highly
suggestive for the goods in the cited registration, we find this is
not a case warranting application of the ostensibly lower standard
of whether applicant’s services are “related in any viable manner”
to registrant’s goods [See e.g., In re Whittaker Corporation, 200
USPQ 54 (TTAB 1978)], as argued by the Trademark Examining Attorney
herein.
8 “The record consists of evidence, which clearly indicates that
the goods and services involved are related. This evidence is
in the form of: … advertisements from the Google search engine
of companies that produce fire resistant glass, passive fire
stopping equipment and provide some type of installation and/or
consultation of such items. This evidence is offered to show
that fire resistant glass and installation, maintenance and
consultation of penetration fire stopping and life safety
equipment may emanate from the same source under a single
mark… .”
(Trademark Examining Attorney’s appeal brief, pp. 5 – 6).
Serial Nos. 76/061,827 and 76/065,119
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As to the related du Pont factor focusing on the
similarity or dissimilarity of established, likely-to-continue
trade channels, we note that applicant’s recitation of
services explicitly states that its services are provided to
“facility owners, general contractors, and mechanical and
electrical contractors in the field of construction or
renovation and restoration of commercial buildings and
industrial facilities.” In this connection, applicant has
provided a declaration of its vice president, Michael J.
Bernstein, that applicant’s customers – large general
contractors and owners of hotels, hospitals, casinos,
airports, offices and pharmaceutical plants – generally are
not involved in ordering fire-resistant glass products. This
claim is uncontroverted by anything else in the record.
As to the conditions under which and buyers to whom sales
are made, Mr. Bernstein’s declaration also states that “[t]he
average price for Pyro-Stop’s specialty contractor services is
$25,000.00.” Based upon this evidence, we conclude that in
making a decision to purchase applicant’s services, the
relevant facility owners and general contractors are all
sophisticated, discriminating purchasers exercising heightened
care in selecting a firestop contractor. This du Pont factor
weighs heavily in favor of reversing the Trademark Examining
Attorney, and having this mark published in the Trademark
Serial Nos. 76/061,827 and 76/065,119
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Official Gazette for possible opposition.9
We turn next to the question of the length of time during
and conditions under which there has been concurrent use
without evidence of actual confusion. Mr. Bernstein’s
declaration states that “the PYRO-STOP mark has been
continuously used in commerce for over ten years for
firestopping and life safety contracting services without any
known instances of actual confusion with the [cited] mark ….”
In the present case, we find Mr. Bernstein’s declaration
as to the absence of actual confusion of limited value.
Although the absence of actual confusion over a long period of
time might be indicative of no likelihood of confusion, it is
a meaningful factor only where the record has information
about the scope or extent of applicant’s and registrant’s use
of the respective marks, as to applicant’s and registrant’s
respective market shares, and as to whether applicant and
registrant actually sell in the same geographic areas. An
appreciable and continuous use by applicant of its marks in
9 “Further, because of the nature and cost of opposer’s
services and applicant’s goods, both parties’ offerings would
be carefully scrutinized by prospective purchasers, and any
purchasing decisions would be made after careful consideration.
The sophistication and discrimination of purchasers also
support our conclusion that confusion is not likely to result
from the contemporaneous use of the parties’ marks on their
respective services and goods.”
Electronic Data Systems Corp. v. EDSA Micro Corp., 23 USPQ2d 1460,
1465 (TTAB 1992).
Serial Nos. 76/061,827 and 76/065,119
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the same markets as those served by registrant under its mark
would constitute a showing that there has been an opportunity
for incidents of actual confusion to occur. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed Cir.
2000) and Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768,
1774 (TTAB 1992). Accordingly, we find that the probative
value of this alleged absence of actual confusion is negated
by the absence of any evidence in the instant record as to the
sales of applicant’s services and registrant’s goods under
their respective marks.
In any event, because the test is likelihood of
confusion, the absence of any evidence of actual confusion
does not equate to no likelihood of confusion. J & J Snack
Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d
1889, 1892 (Fed. Cir. 1991); Weiss Associates Inc. v. HRL
Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir.
1990); Giant Food, Inc. v. Nation's Foodservice, Inc., 710
F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983); and In re
Azteca Restaurant Enterprises Inc., 50 USPQ2d 1209 (TTAB
1999).
We note that this claim does comport with the other
relevant du Pont factors supporting applicant’s position, and
therefore, we accord the apparent absence of actual confusion
slight weight in applicant’s favor.
Serial Nos. 76/061,827 and 76/065,119
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In the disagreement between applicant and the Trademark
Examining Attorney as to whether Autac Incorporated v. Walco
Systems, Inc., 195 USPQ 11 (TTAB 1977) supports a finding of
an absence of likelihood of confusion herein, or can be
distinguished from the present case, we agree with applicant
that Autac supports reversal of the Trademark Examining
Attorney’s position. The evidence of record, and particularly
the declaration of Mr. Bernstein, demonstrates that these
goods would not be encountered in the same marketing context,
sophisticated, technical persons will be making the purchasing
decision, and there has apparently been a decade of
contemporaneous usage without actual confusion.10
10 “In this regard, we note that petitioner’s “AUTAC”
retractile cords and respondent’s “AUTAC” thermocouple
automatic temperature regulators for brushless wire preheaters
are noncompetitive; differ completely in utility, price and
sophistication; have nothing in common with respect to their
essential characteristics or sales appeal; and are not used
together or in any kind of a complementary fashion.
Additionally, we cannot overlook the fact that the
responsibility for deciding to purchase the goods here
involved, especially those of the respondent, rests with
technical personnel, not with the purchasing agent or
purchasing department that ultimately places the order
therefor; that the parties made substantial, contemporaneous
use of the mark "AUTAC" in connection with their respective
products for a significant number of years without ever
learning or hearing of one another; and that while it is true
that likelihood of confusion has been found to exist in a
number of other cases where the same or similar marks were used
on different kinds of electronic equipment… nevertheless each
case must still be determined on its own facts as established
by the testimony and other evidence of record [citations
omitted]”
Autac Incorporated v. Walco Systems, Inc., supra at 16.
Serial Nos. 76/061,827 and 76/065,119
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In conclusion, while applicant’s mark is nearly identical
to registrant’s mark, and that weights heavily in favor of a
finding of likelihood of confusion, we also find that the
remainder of the relevant du Pont factors favor applicant’s
position herein – that registrant’s mark is highly suggestive,
that applicant’s services are not actually that closely
related to registrant’s goods, that applicant’s expensive
services are targeted to sophisticated purchasers who
generally would not be making decisions on purchasing
registrant’s goods, that the overall marketing contexts are
widely different, and that there has apparently been more than
ten years of concurrent usage without applicant being aware of
a single case of actual confusion. Hence, we find that there
is not a likelihood of confusion herein.
Decision: The refusal to register applicant’s mark under
Section 2(d) of the Act is hereby reversed.