Sashco, Inc.

Trademark Trial and Appeal Board

Apr 18, 2002

No. 75853488 (T.T.A.B. Apr. 18, 2002)

Mailed: April 18, 2002
Paper No. 10
HRW
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Sashco, Inc.
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Serial No. 75/853,488
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Timothy J. Martin and Mark H. Weygandt of Timothy J.
Martin, P.C. for Sashco, Inc.
Brian A. Rupp, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
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Before Simms, Wendel and Rogers, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Sashco, Inc. has filed an application to register the
mark CASCADE for a “coating used as water repellant for log
homes.”1
Registration has been finally refused under Section
2(d) on the ground of likelihood of confusion with the
1 Serial No. 75/853,488, filed November 16, 1999, claiming a
first use date and a first use in commerce date of May 31, 1997.
THIS OPINION IS NOT
CITABLE
AS PRECEDENT OF
THE T.T.A.B.
Ser No. 75/853,488
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marks CASCADE2 and CASCADE 253 which are registered by the
same entity for “fiberglass laminated shingles”; the mark
CASCADE CREST4 which is registered by a different entity for
“wood paneling”; and the mark CASCADE BLUE5 which is
registered by a third entity for “fluorescent dyes.”
The refusal has been appealed and both applicant and
the Examining Attorney have filed briefs.6 An oral hearing
was not requested.
We make our determination of likelihood of confusion
on the basis of those of the du Pont7 factors that are
relevant in view of the evidence of record. Two key
considerations in any du Pont analysis are the similarity
or dissimilarity of the respective marks and the similarity
or dissimilarity of the goods with which the marks are
being used. See Federated Foods, Inc. v. Fort Howard Paper
2 Registration No. 2,333,174, issued March 21, 2000.
3 Registration No. 2,273,038, issued August 24, 1999. A
disclaimer has been made of the term “25.”
4 Registration No. 1,687,884, issued May 19, 1992, Section 8 & 15
affidavits accepted and acknowledged, respectively.
5 Registration No. 1,571,495, issued December 19, 1989, first
renewal. A disclaimer has been made of the term “BLUE.”
6 As a preliminary matter we note that the Examining Attorney has
objected to the material which applicant has attached to its
brief, as untimely additional evidence. As applicant has pointed
out, this material was earlier submitted in connection with
applicant’s response of October 18, 2000. Thus, the evidence was
properly made of record and has been taken under consideration by
the Board.
7 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Ser No. 75/853,488
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Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976); In re Azteca
Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999).
Looking first to the marks involved here, we are
guided by the well established principle that although the
marks must be considered in their entireties, there is
nothing improper, under appropriate circumstances, in
giving more or less weight to a particular portion of a
mark. See In re National Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985). Moreover, although descriptive
or disclaimed matter cannot be ignored in comparing the
marks, it is also a fact that consumers are more likely to
rely on the non-descriptive portion of a mark as an
indication of source. See Hilson Research Inc. v. Society
for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993)
Applying these principles, we are in agreement with
the Examining Attorney that not only is one of the
registered marks identical to applicant’s CASCADE mark, but
also in two other of the registered marks, namely CASCADE
25 and CASCADE BLUE, the dominant term is CASCADE. Both
the numeral 25 in CASCADE 25 and the word BLUE in CASCADE
BLUE have been disclaimed, an acknowledgment by the
registrants of the descriptiveness of these terms.
Although applicant argues that a consumer may look to these
terms as providing information about the products with
Ser No. 75/853,488
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which the marks are being used, this does not make these
disclaimed terms the dominant portions of the marks, as
applicant argues. The dominant portion is that portion
which points to the particular source of the goods and
would be relied upon by consumers as such, not the portion
which describes some feature of the goods and which may be
equally applicable to similar goods from other sources.
Insofar as the registered marks CASCADE, CASCADE 25 and
CASCADE BLUE are concerned, we find the marks highly
similar in overall commercial impression to applicant’s
mark CASCADE.
The same does not hold true, however, for the
registered mark CASCADE CREST. While the Examining
Attorney argues that purchasers would focus on the term
CASCADE because it is the first word in the mark, the term
CREST, which has not been shown to be descriptive or even
suggestive when used in connection with “wood paneling,”
cannot be ignored. We agree with applicant that the
addition of the word CREST to CASCADE results in a
composite term having a substantially different sound,
appearance and connotation than CASCADE alone. The overall
commercial impression created by the registered mark
CASCADE CREST differs from that created by the mark CASCADE
alone.
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Turning to the goods involved, we note that as a
general principle, the issue of likelihood of confusion
must be determined on the basis of the goods as identified
in the application and in the cited registration(s).
Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). It is not
necessary that the goods of the applicant and the
registrant(s) be similar or even competitive to support a
holding of likelihood of confusion. It is sufficient if
the respective goods are related in some manner and/or that
the conditions surrounding their marketing are such that
they would be encountered by the same persons under
circumstances that could, because of the similarity of the
marks used thereon, give rise to the mistaken belief that
they emanate from, or are associated with, the same source.
See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB
1993) and the cases cited therein.
The Examining Attorney’s basic position with respect
to the goods of the cited registrations vis-à-vis the goods
of applicant is that because the goods could be utilized in
the same industry, presumably the home construction
business, and could be encountered by the same purchasers,
these purchasers might mistakenly believe that the goods
emanate from a common source. The Examining Attorney
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points to numerous third-party registrations of record as
evidence that coatings are used on, and in the manufacture
of, shingles, paneling and like goods. He further argues
that since coatings are necessary for the maintenance of
shingles and paneling, the goods are closely related, would
be marketed together to the same consumers, and would be
expected to come from the same source.
Applicant insists that water repellant coatings for
log homes are a completely different category of goods from
either fiberglass laminated shingles or wood paneling.
Applicant argues that the Examining Attorney has failed to
appreciate the distinction between an entity which provides
both coatings and shingles or paneling and an entity that
simply provides the coatings that may be used on the latter
goods. Applicant argues that nothing in the evidence of
record demonstrates that consumers would encounter
applicant’s goods under circumstances which would give rise
to the mistaken belief that they come from the same source
as fiberglass shingles or wood paneling. In fact,
applicant argues, there appears to be a closer relationship
between the shingles and wood paneling themselves, yet
registrations for both types of goods bearing CASCADE-
formative marks have been allowed to coexist on the
register.
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Insofar as the cited registration for fluorescent dyes
is concerned, applicant has made of record pages from
registrant’s Web site showing that these dyes are in
actuality used in biotech assays and related scientific
processes. Even if the registration is given a broader
interpretation as to field of use of the dyes, applicant
argues that it is doubtful if consumers would encounter
fluorescent dyes in the process of purchasing a water
repellant coating for the exterior of a log home.
We find that the basic deficiency in the Examining
Attorney’s position lies in the lack of evidence that
purchasers would have reason to believe that a water
repellant coating for log homes such as applicant’s would
emanate from the same source as that of fiberglass
laminated shingles, wood paneling or fluorescent dyes.
While numerous third-party registrations have been made of
record, the Examining Attorney has relied upon these
registrations simply to demonstrate that coatings are in
fact used on shingles and wood paneling. This is not the
same as providing evidence that a single entity may produce
and market both the coatings and the goods upon which these
coatings are used.
Third-party registrations showing that the same mark
has been registered by a single entity for the various
Ser No. 75/853,488
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types of goods at issue may well be sufficient to suggest a
common source for goods of these types. See In re Albert
Trostel & Sons Co., supra; In re Mucky Duck Mustard Co., 6
USPQ2d 1467 (TTAB 1988). But the Examining Attorney has
failed to point to any evidence of this nature in the many
registrations he has made of record. At best, we find
evidence of registration of the same mark for “asphalt
shingles” and “asphalt roof coatings.” This is clearly
insufficient to demonstrate that a water repellant coating
for log homes might originate from the same source as
fiberglass laminated shingles.
It is true that we are bound by the broad
identification of goods in the registration for
“fluorescent dyes” and thus cannot narrow the use of these
dyes to the scientific field, despite applicant’s evidence
showing such limitation in actual use of the mark for such
goods. Nonetheless, that does not dictate a finding that
purchasers of fluorescent dyes would have any reason to
believe that water repellant coatings for log homes would
originate from the same source. In fact, any such
assumption is unsupported by evidence and would appear to
lie beyond the realm of common sense.
Accordingly, we find that the Examining Attorney has
failed to establish that a sufficient relationship exists
Ser No. 75/853,488
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between the goods of applicant and those listed in the
cited registrations, so as to result in the assumption by
consumers of a common source for the goods, regardless of
the fact that at least some of the marks used thereon are
similar in commercial impression. Even if some of these
goods may travel in the same channels of trade and be used
at various points by members of the building industry or
later in home maintenance, we have no evidence that these
are the types of goods which might originate from the same
source or that purchasers would have good reason to assume
the same.
Decision: The refusal to register under Section 2(d)
is reversed.
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