Rovanco Piping Systems, Inc.

Trademark Trial and Appeal Board

Sep 24, 2004

No. 76401721 (T.T.A.B. Sep. 24, 2004)

Mailed: September 24, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
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In re Rovanco Piping Systems, Inc.
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Serial Nos. 76401721 and 76408554
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John R. Crossan of Chapman and Cutler for Rovanco Piping
Systems, Inc.
Verna Beth Ririe, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
____________
Before Quinn, Walters and Drost, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Rovanco Piping Systems, Inc. has filed two applications
to register on the Principal Register the marks RHINOCOAT
for “corrosion inhibitants in the nature of a coating for
insulated pipe,” in International Class 2,1 and RHINOFLEX

1 Serial Nos. 76401721, filed April 30, 2002, based on use in commerce,
alleging first use and use in commerce as of 1998.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial Nos. 76401721 and 76408554
2
for “flexible insulated pipe, not of metal,” in
International Class 17.2
The Trademark Examining Attorney has issued a final
refusal to register in each application under Section 2(d)
of the Trademark Act, 15 U.S.C. 1052(d), on the ground that
applicant’s mark so resembles the previously registered
marks shown below, all owned by the same registrant, that,
if used on or in connection with applicant’s respective
goods, it would be likely to cause confusion or mistake or
to deceive.
Mark:
Goods: “metal pipes, posts and tubing.” 3
Disclaimer: NORTH AMERICAN STEEL WORKS
Mark:

2 Serial No. 76408554, filed May 15, 2002, based on use in commerce,
alleging first use and use in commerce as of May 13, 2002.
3 Registration No. 2282640, issued October 5, 1999, to Rhinotube North
American Steelworks LLC.
Serial Nos. 76401721 and 76408554
3
Goods: “protective coatings in the nature of rust
inhibitors for use on metal pipes, posts, and
tubing.”4
Statement: The stippling is a feature of the mark
and is not intended to indicate color.
Mark: RHINOTUBE
Goods: “metal pipes; metal posts; metal tubing;
metal pipes and protective coatings sold as a
unit; metal posts and protective coatings sold as
a unit; metal tubing and protective coatings sold
as a unit,” in International Class 6.5
With respect to Application Serial No. 76401721, the
Examining Attorney has also issued a final refusal on the
ground that the specimens do not show use of the mark for
the stated goods, citing Trademark Rule 2.56(b)(1), 37 CFR
§2.56(b)(1). The Examining Attorney contends that the
specimens of record show use of the mark on a label attached
to what appears to be a pipe, whereas the goods are
identified as “corrosion inhibitants in the nature of a
coating for insulated pipe.”
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. Applicant requested that these two
applications be considered together on appeal, contending
that the facts pertaining to the likelihood of confusion
refusals in each application are very similar. The Board,
in an order dated March 2, 2004, granted applicant’s request

4 Registration No. 2292032 issued November 16, 1999, to Rhinotube North
American Steelworks LLC.
5 Registration No. 2413641 issued December 19, 2000, to Rhinotube North
American Steelworks LLC.
Serial Nos. 76401721 and 76408554
4
and, therefore, we decide the appeals of these two
applications in this single opinion.6
Specimens in Application Serial No. 76401721
The Examining Attorney contends that “[t]he specimens
of use submitted by the applicant show use of the mark in
connection with a pipe[;] there is no evidence that the mark
is used in conjunction with goods that are sold to consumers
as a corrosion-inhibitant coating.” (Brief, p. 8.)
Applicant did not address this issue in its brief and
mentioned the issue only in its response of May 8, 2003,
wherein applicant stated that “[t]he substitute specimen
request is misplaced for this case and should be
withdrawn.”7
We have decided not to consider applicant’s failure to
address this issue as a concession that the specimens are
unacceptable but, rather, to consider the merits of the
requirement for substitute specimens. The specimens
submitted in this application are shown below:

6 The Examining Attorney, in her brief, objected to considering these
two appeals in a single opinion, arguing that the appeal of Application
Serial No. 76401721 should be addressed separately because it also
includes a specimen requirement. However, we find that the similarity
of facts involved in the likelihood of confusion issues supports our
decision and that it is not burdensome to also address herein the
specimen requirement.
7 Applicant had submitted a substitute specimen in the related
application, Serial No. 76408554, and seemed to believe that the
specimen requirement in Application Serial No. 76401721 was made in
error, despite the Examining Attorney’s clearly stated reason for the
requirement.
Serial Nos. 76401721 and 76408554
5
Serial Nos. 76401721 and 76408554
6
The first and second specimens appear to be different
photos on the same label, with the second photo from a
different distance to show the label on what appears to be a
pipe. It would have been helpful to our determination
herein if applicant had provided some explanation as to both
the nature of the specimens and the manner in which the
coatings are sold. However, based on the record before us,
we must agree with the Examining Attorney that, while these
specimens may be appropriate for showing use of the mark in
connection with piping, but the specimens do not show use of
the mark in connection with a coating therefor.
The Examining Attorney’s requirement for a substitute
specimen in this application is affirmed.
Serial Nos. 76401721 and 76408554
7
Likelihood of Confusion
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 E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). In considering the evidence of
record on these factors, we keep in mind that “[t]he
fundamental inquiry mandated by Section 2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976); In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); and In
re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein. The factors deemed
pertinent in this proceeding are discussed below.
The Examining Attorney contends that applicant’s marks
RHINOCOAT and RHINOFLEX share the word RHINO with the
registered marks; that RHINO is the dominant portion of each
of the involved marks because the additional wording in each
mark is merely descriptive and the wording predominates over
the design elements in two of the cited registrations; and
that third-party registrations for marks including the word
Serial Nos. 76401721 and 76408554
8
RHINO are inapposite because the goods, purchasers and
channels of trade are quite different from those involved
herein, which are either identical or closely related.
In support of her position, the Examining Attorney
submitted definitions from The American Heritage Dictionary
of the English Language, 3rd ed. 1992, of “flex” as “to bend
(something pliant or elastic),” of “pipe” as “a hollow
cylinder or tube used to conduct a liquid, gas, or finely
divided solid,” and of “shield” as “a protective device or
structure.” The Examining Attorney also submitted copies of
third-party registrations in support of her position that
applicant’s and registrant’s goods are related. The
majority of the registrations list in the identifications of
goods either non-metal pipes or metal pipes, or parts
related thereto, but not both. There were, however, four
registrations that included among the goods listed, both
metal and non-metal pipes or pipe-related goods.8
Finally, the Examining Attorney submitted several pages
from applicant’s website under the section entitled

8 These registrations are listed herein: Registration No. 2299808
includes “plumbing supplies, namely, plastic pipes, metal and plastic
pipe fittings and connectors…”; Registration No. 1826082 includes “metal
pipe fittings, and metal tubing … [and] non-metal pipe fittings and non-
metal tubing …”; Registration No. 2186154 includes “metal pipes and
metal fittings … [and] plastic plumbing pipes; plastic conduits for
conveying gas; non-metal pipe couplings and junctions”; and Registration
No. 2612155 includes “irrigation systems comprising … plastic and metal
pipes ….”
Serial Nos. 76401721 and 76408554
9
references, and the following are several excerpts
therefrom9:
In 1974 while the Alyeska Pipeline was being
built, Rovanco was asked to quote the camp piping
which was to supply all the heating hot water,
domestic hot water, potable water, fuel oil lines
and sewage lines for the camps north of the Yukon,
along the Alyeska Pipeline. We received an order
from Bechtel … for 45 miles of pre-insulated pipe
with polyurethane foam, with spiral metal jacket.
. . .
Rovanco was awarded a contract by Getty Western
Crude in 1980 to insulate 120 miles of 20" and 16"
steel pipe with two inches of urethane foam in a
polyethylene jacket.
. . .
In 1985, Rovanco was awarded a contract for
$950,000 for 3 miles of 36” Ductile Iron Pipe.
. . .
In 1977, Rovanco accepted an order for 740 miles
of pre-insulated copper, fiberglass, steel and PVC
1/2" through 16" pipe to be installed at a new
military city in Saudi Arabia.
. . .
In early 1989, Rovanco was awarded a contract to
provide a 14" carbon steel jet fuel containment
piping system for John Wayne Airport (Orange
County).
. . .
In 1992, Rovanco was awarded a contract to supply
over a mile of schedule 40 stainless steel pipes
for a chemical waste sewer line.
Applicant contends that its goods are different from
those identified in the cited registrations. Applicant
stated that “[I]nsulated pipe is a very different product

9 We note that even the most recent of these references is at least
twelve years old.
Serial Nos. 76401721 and 76408554
10
from regular metal pipe or flexible pipe[;] insulated pipe
is used for thermal systems, piping hot or cold fluids or
gases while avoiding heat loss or gain and condensation over
the lengths of the piping system [whereas, registrant’s
goods] were last used principally for supporting flexible
covers for garages and other storage structures….” (Brief,
p. 3.) Applicant argues that RHINO is a weak term, citing
nine third-party registrations in the record containing the
term RHINO “for various goods and services related to pipes,
piping, corrosion prevention, and flexible piping.”10
(Brief, p. 4.)
We turn, first, to a determination of whether
applicant’s mark and the registered marks, when viewed in
their entireties, are similar in terms of appearance, sound,
connotation and commercial impression. 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 their overall commercial
impressions that confusion as to the source of the goods or
services offered under the respective marks is likely to
result. Although the marks at issue must be considered in

10 The following are some of the registrations submitted by applicant:
Registration No. 1008090 for RHINO HYDE for “polyurethane elastomeric
sheeting for industrial use in high impact areas or abrasive
environments”; Registration No. 1904994 for RHINOHIDE for “battery
separators for use in the manufacture of batteries; and Registration No.
2021135 for RHINO-TUFF and rhinoceros design for “plastic stretch
wrapping film for commercial and industrial use.”
Serial Nos. 76401721 and 76408554
11
their entireties, it is well settled that one feature of a
mark may be more significant than another, and it is not
improper to give more weight to this dominant feature in
determining the commercial impression created by the mark.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985).
Each of the five marks involved herein contains a
compound word beginning with RHINO and ending with a
descriptive, if not generic, term, i.e., applicant’s COAT
for its pipe-coating product and FLEX for its flexible pipe;
and registrant’s TUBE for its tubing and SHIELD for its
protective coating.
In considering the commercial impressions of
applicant’s marks RHINOCOAT and RHINOFLEX, the RHINO portion
of each of these marks is clearly dominant both because it
is the first of the two words forming these compound word
marks and because the second term in each mark is merely
descriptive. We reach the same conclusion, for the same
reasons, with respect to the commercial impression of
registrant’s word mark RHINOTUBE and, as will be discussed
later, for the other cited registrations.
We do not agree with applicant that the record
establishes that RHINO is a weak term with respect to
applicant’s and registrant’s goods. First, we find that
these registrations indicate that, at most, the term RHINO
Serial Nos. 76401721 and 76408554
12
may be somewhat suggestive of strength or toughness.
Second, the goods recited in the third-party registrations
appear unrelated to piping, and it is well settled that each
case must be decided on its own facts. In re Pennzoil
Products Co., 20 USPQ2d 1753, 1758 (TTAB 1991); and In re
Inter-State Oil Co., Inc., 219 USPQ 1229, 1231 (TTAB 1983).
In considering the commercial impressions of each of
registrant’s two design marks, the fonts used for the
wording portions of registrant’s two design marks have
minimal impact on the commercial impression of these two
marks. Further, registrant’s RHINOTUBE design mark includes
registrant’s name, which is merely descriptive and
disclaimed, and a drawing of a stack of tubes, which
reinforces the descriptive significance of the TUBE portion
of RHINOTUBE. Registrant’s RHINOSHIELD design mark includes
a drawing of a rhinoceros, which reinforces the RHINO
portion of this mark. Thus, we find that the term RHINO in
each of these two design marks is the dominant portion of
each mark.
Finally, we conclude that the commercial impression of
each of applicant’s marks is sufficiently similar to each of
the cited registered marks that, if used in connection with
similar or related goods, confusion as to source is likely.
Turning to consider the goods involved in this case, we
note that the question of likelihood of confusion must be
Serial Nos. 76401721 and 76408554
13
determined based on an analysis of the goods or services
recited in applicant’s application vis-à-vis the goods or
services recited in the registration, rather than what the
evidence shows the goods or services actually are. Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987). See also, Octocom Systems,
Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v. North
American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
Further, it is a general rule that goods or services need
not be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is enough
that goods or services are related in some manner or that
some circumstances surrounding their marketing are such that
they would be likely to be seen by the same persons under
circumstances which could give rise, because of the marks
used therewith, to a mistaken belief that they originate
from or are in some way associated with the same producer or
that there is an association between the producers of each
parties’ goods or services. In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991), and cases cited therein.
Applicant’s RHINOCOAT mark identifies a coating for
insulated pipe and its RHINOFLEX mark identifies non-metal
flexible insulated pipe. The registered marks identify,
inter alia, metal pipes (RHINOTUBE and design), coatings for
Serial Nos. 76401721 and 76408554
14
metal pipes (RHINOSHIELD and design), and metal pipes and
coatings sold as a unit (RHINOTUBE). While applicant
contends that these goods are entirely different due to
their composition, the Examining Attorney has submitted
several third-party registrations for marks that identify
both types of pipes and coatings. These registrations are
not determinative, but such registrations nevertheless have
some probative value to the extent that they may serve to
suggest that such goods are of a type which may emanate from
a single source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783 (TTAB 1993); In re Mucky Duck Mustard Co. Inc.,
6 USPQ2d 1467 (TTAB 1988).
However, applicant’s own website indicates that, at
least in the past, it was the source of both metal and non-
metal piping as well as coatings therefor. We find this
persuasive, in combination with the other evidence of
record, of the conclusion that such goods may come from the
same source. Applicant presents no argument to the contrary
with respect to this evidence. Thus, we conclude that the
goods identified in each of the applications and the goods
identified in the cited registrations are sufficiently
similar that if identified by similar marks, confusion as to
source is likely.
Therefore, we conclude that in view of the substantial
similarity in the commercial impressions of applicant’s
Serial Nos. 76401721 and 76408554
15
marks, RHINOCOAT and RHINOFLEX, and registrant’s marks,
RHINOTUBE, RHINOTUBE and design, and RHINOSHIELD and design,
their contemporaneous use on the related goods involved in
this case is likely to cause confusion as to the source or
sponsorship of such goods.
Decision: The refusal based on the requirement for a
substitute specimen in this application is affirmed. The
refusal under Section 2(d) of the Act is affirmed with
respect to the mark in each of the two applications herein
with respect to each of the three cited registrations.