Shurtape Technologies, LLC

Trademark Trial and Appeal Board

Feb 1, 2018

No. 87046638 (T.T.A.B. Feb. 1, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: February 1, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Shurtape Technologies, LLC
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Serial No. 87046638
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Karl S. Sawyer Jr. of Nelson Mullins Riley & Scarborough LLP,
for Shurtape Technologies, LLC.
Ronald McMorrow, Trademark Examining Attorney, Law Office 118,
Michael W. Baird, Managing Attorney.
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Before Bergsman, Goodman and Lynch,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
Shurtape Technologies, LLC (“Applicant”) seeks registration on the Principal
Register of the mark SHURSTICK (in standard characters) for “painters [sic]
masking tape” in International Class 17.1
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

1 Application Serial No. 87046638 was filed on May 23, 2016, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act. An amendment to allege use was filed on March 7, 2017. Applicant claims
November 2016 as its date of first use anywhere and as its date of first use in commerce.
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Applicant’s mark so resembles the previously registered marks2 all owned by the
same entity3 as to be likely to cause confusion, to cause mistake or to deceive:
SHUR-STIK (typed drawing)4 for “adhesives for applying floor tiles,
floor coverings, carpets and wall coverings and wall covering adhesive
activator” in International Class 1; for “wall size; primers for preparing
surfaces to be painted” in International Class 2; and for “spackling
compounds; mortar patch compounds; asphalt patching compound made
of an asphalt base” in International Class 19.5
SHUR-STIK PERMANENT PATCH (typed drawing) for “patching
compounds for walls and ceilings” in International Class 19.6
In this case, we shall base our Section 2(d) likelihood of confusion findings and
decision on Registration No. 1756297 for the mark SHUR-STIK because the
additional wording PERMANENT PATCH in cited Registration No. 1797010
presents an additional point of difference with Applicant’s mark. A finding of

2 Registration was also refused based on Registration No. 4724007 SHUR-STIK (standard
characters) for “Adhesive sealants for use on roofs and building foundations,” in International
Class 17; however, the Examining Attorney withdrew this cited registration in its brief. 6
TTABVUE 3. References to the briefs refer to the Board’s TTABVUE docket system.
3 Although Applicant argues in its brief that the cited registrations are owned by different
entities, Office records reflect that both registrations are owned by the same entity, Gardener
Gibson Inc.
4 Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R. § 2.52, was amended to replace
the term “typed” drawing with “standard character” drawing. A mark depicted as a typed
drawing is the legal equivalent of a standard character mark.
5 Reg. No. 1756297 issued March 9, 1993, which claims February 1977 as the date of first use
and use in commerce for Classes 1 and 2, and November 1983 as the date of first use and first
use in commerce for Class 19; second renewal.
6 Reg. No. 1797010 issued October 5, 1993, which claims December 1992 as the date of first
use and use in commerce; second renewal. The registration includes a disclaimer of
“PERMANENT PATCH.”
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likelihood of confusion between Applicant’s mark and the previously-registered
SHUR-STIK mark suffices by itself to bar registration of Applicant’s mark under
Section 2(d); we need not find likelihood of confusion as to the other cited registration.
See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). If we do not
find a likelihood of confusion with this registered mark and the associated goods, then
there would be no likelihood of confusion with the SHUR-STIK PERMANENT
PATCH mark. Id.
I. 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 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 Co., 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 (CCPA 1976). These factors, and the other relevant du Pont factors now
before us, are discussed below.
A. The similarities or dissimilarities between the marks in their entireties,
in terms of appearance, sound, connotation and commercial impression.
We consider the similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression. Palm Bay Imports, Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
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1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). “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). The focus is on the recollection of the average purchaser, who
normally retains a general rather than a specific impression of trademarks. See
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Applicant’s mark, SHURSTICK, and the cited mark, SHUR-STIK, are
substantially similar in terms of appearance as they both are comprised of two terms
with each mark containing the identically misspelled word SHUR (“sure”) as the first
term. The marks differ by the addition of a hyphen and by the misspelling of the term
“stick” in Registrant’s mark. The addition of a hyphen in the registered mark does
not sufficiently distinguish the marks. The hyphen simply reinforces a consumer’s
natural inclination to recognize the individual components of the mark and has no
independent source-indicating significance. See, e.g., Thymo Borine Lab. v. Winthrop
Chem. Co., Inc., 155 F.2d 402, 69 USPQ 512, 514 (CCPA 1946) (the hyphen in
applicant's mark THY-RIN has no significance); Mag Instrument Inc. v. Brinkmann
Corp., 96 USPQ2d 1701, 1712 (TTAB 2010). (MAGNUM without hyphen is
“essentially identical” to MAG-NUM with hyphen). As for the term “stik” in
Registrant’s mark, the slight misspelling of “stick” does not affect the mark’s
commercial impression in any significant way. See, e.g., Contour Chair-Lounge Co. v.
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Englander Co., 324 F.2d 186, 139 USPQ 285, 288 (CCPA 1963) (“Contur” is but a
slight misspelling of “Contour,” with identical pronunciation and meaning);
Fleetwood Co. v. Mende, 298 F.2d 797, 132 USPQ 458, 460 (CCPA 1962) (TINTZ
merely a phonetic spelling of “tints”). We find Applicant’s and Registrant’s mark are
phonetic equivalents, which will be pronounced identically. See RE/MAX of America,
Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980) (any one of the elements of
sound, appearance or meaning is sufficient to indicate a likelihood of confusion).
We likewise conclude that the connotation and commercial impression projected
by each of the marks is similar based on the likely perception of both as misspellings
of “sure stick.” The meaning and commercial impression conveyed by the marks in
the relevant context is that of an item that is guaranteed to bond or adhere when
applied and that is strong or durable after application. This meaning generally
comports with the goods identified in the respective application and registration. We
find that the marks are similar in their entireties as to their appearance, sound,
connotation and commercial impression.
B. Relatedness of the Goods and Channels of Trade
We next consider the du Pont factors regarding the similarity or dissimilarity of
the parties’ respective goods and the channels of trade.
Applicant’s goods are painter’s masking tape. The most relevant goods in
Registrant’s registration are “primers for preparing surfaces to be painted” and
“spackling compounds.”
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Applicant argues that “Applicant’s goods are dissimilar in nature and kind” from
Registrant’s goods as they do not serve the same purposes or applications as the goods
of the Registrant. 4 TTABVUE 7-8.
However, in comparing the goods, the issue is not whether purchasers would
confuse Applicant’s and Registrant’s goods, but rather whether there is a likelihood
of confusion as to the source of those goods. In re Cook Medical Technologies LLC,
105 USPQ2d 1377, 1380 (TTAB 2012); Helene Curtis Indus. Inc. v. Suave Shoe Corp.,
13 UPSQ2d 1618, 1624 (TTAB 1989); In re Rexel Inc., 223 USPQ 830 (TTAB 1984). It
is not necessary that they be identical or even competitive in nature in order to
support a finding of likelihood of confusion. The goods need only be “related in some
manner or if the circumstances surrounding their marketing are such that they could
give rise to the mistaken belief that they emanate from the same source.” Coach
Services, 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715,
1724 (TTAB 2007)). Moreover, “the greater the degree of similarity in the marks, the
lesser the degree of similarity that is required of the products or services on which
they are being used in order to support a holding of likelihood of confusion.” In re
Concordia Int’l Forwarding Corp., 222 USPQ 352, 356 (TTAB 1983). See also, In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)
(Contemporaneous use of identical or nearly identical marks can lead to the
assumption that there is a common source “even when [the] goods or services are not
competitive or intrinsically related.”).
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The Examining Attorney asserts that Applicant’s and Registrant’s goods are the
kind that could emanate from one source under the same mark, and points to third-
party registrations featuring goods “the same as or similar to both applicant’s and
registrants’ goods.” September 13, 2016 Office Action Outgoing pp. 9-83.7 However,
these registrations are of limited probative value as there are not a sufficient number
that either list at least some of the same goods in both the cited application or
registration or are broadly worded to be read to include at least some of the same
goods identified in both the cited application and the cited registrations.8
The Examining Attorney argues that the goods are complementary and travel in
the same trade channels. In support, the Examining Attorney provided an article
from curbed.com which discusses painting and painting supplies, particularly
mentioning wall preparation materials such as patching compound for patching
holes, spackle for patching cracks, primer to seal the wall surface or cover stains, and
painter’s tape for preventing seepage. March 19, 2017 Office Action pp. 17-18. The
Examining Attorney also submitted evidence from websites showing that retailers
offer goods like Applicant’s and Registrant’s under the category of painting supplies.
For example, the truevalue.com and ace.com websites include categories for primer
and painters tape on their “painting supplies” drop-down menu, and the
friedmanshome.com website has “painting supplies” web pages displaying primer and

7 Page references to the application record refer to the PDF version of the Trademark Status
and Document Retrieval System (TSDR).
8 The most relevant of these are Reg. Nos. 4643587, 4819931, 4833791, 4819926, with three
of these registrations owned by the same entity.
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painter’s tape. March 19, 2017 Office Action pp. 7-8, 10, 12. We find Applicant’s and
Registrant’s goods are complementary goods that are likely to be purchased and used
together by the same purchasers.
Where the goods at issue have complementary uses, and therefore are often used
together or otherwise purchased by the same purchasers for the same or related
purposes, such goods have generally been found to be sufficiently related such that
confusion would be likely if they are marketed under the same or similar marks. See,
e.g., In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290
(Fed. Cir. 1984) (finding bread and cheese to be related because they are often used
in combination, and stating: “Such complementary use has long been recognized as a
relevant consideration in determining a likelihood of confusion.”); American Drill
Bushing Co. v. Rockwell Mfg. Co., 342 F.2d 1019, 145 USPQ 144, 146 (CCPA 1965)
(drill press and drill bushings/drill bushing liners are complementary products); In
re Sela Products, LLC, 107 USPQ2d 1580, 1587 (TTAB 2013) (surge protectors, wall
mounts and brackets complementary goods because purchasers are likely to
encounter both during course of purchasing a television, audio or home theater
system); Polo Fashions, Inc. v. La Loren, Inc., 224 USPQ 509, 511 (TTAB 1984)
(finding bath sponges and personal products such as bath oil and soap to be closely
related because they are complementary goods that are likely to be purchased and
used together by the same purchasers). We find that the goods are related.
The Examining Attorney asserts that the website evidence shows that Applicant’s
and Registrant’s goods travel in the same trade channels. Applicant, on the other
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hand, argues that the website evidence does not establish that the parties’ goods
operate in similar trade channels because “the specific goods appear in separate
[menu] subsections and … these websites offer a wide diversity of various other
goods.” 4 TTABVUE 9.
There is no evidence to suggest that the online retailers shown in the website
evidence are atypical, and the evidence here establishes that painter’s tape and
primer are often featured or grouped together in the painting supply area of retailers’
websites. We find the evidence sufficient to show that, in the marketplace, painting-
related goods similar to those of Applicant and Registrant are found in some
proximity to each other and are offered by the same retailer.
Applicant further argues that the goods are directed to different purchasers.
Specifically, Applicant argues that its goods are directed to do-it-yourself type
homeowners and sold through various retail outlets ranging from small paint stores
to “big box” home improvement stores while Registrant’s goods are directed to
professional construction contractors and sold through wholesalers and professional
contractor suppliers.
However, the goods identified in Applicant’s application and the cited registration
are not limited to those offered to homeowners or construction contractors or limited
as to trade channels, and therefore we must presume that the goods move through
all normal channels of trade for such products and that the goods are available for
purchase by all the usual purchasers. See Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
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It is clear from the evidence that these products are promoted together and sold
together in the same channels of trade, and that they would come to the attention of
the same consumers. The use of nearly identical marks, as in this case, on products
that are at least complementary, will likely lead consumers to the assumption that
there is a common source. See In re Shell Oil Co., 26 USPQ2d at 1689. We find that
the du Pont factors of the similarity of the goods, trade channels and purchasers favor
a finding of likelihood of confusion.
C. Conditions of Purchase
As to the du Pont factor focusing on the conditions under which and buyers to
whom sales are made, Applicant's arguments are premised on the assumption that
purchasers of Registrant’s goods are commercial contractors who are sophisticated
purchasers. 4 TTABVUE 11-12. Applicant argues that even if assuming, arguendo,
Applicant’s goods would be sold to or used by any of the same professional contractors
as would utilize the Registrant’s goods, confusion is still unlikely due to the degree of
care exercised by such contractors when acquiring goods.
We acknowledge that, as far as contractors are concerned, they must be considered
to be more sophisticated about their industry and goods than the general public. In
re Sela Prods., LLC, 107 USPQ2d at 1587. However, as there are no limitations
recited as to the goods offered by Registrant or Applicant, we cannot assume that
Registrant’s goods will only be sold to professional contractors and Applicant’s goods
will only be sold to do-it-yourself homeowners. See In re Bercut-Vandervoort & Co.,
229 USPQ 763, 764 (TTAB 1986) (evidence that relevant goods are expensive wines
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sold to discriminating purchasers must be disregarded given the absence of any such
restrictions in the application or registration). Potential purchasers of Applicant’s
and Registrant’s goods could include people of varying sophistication (contractors and
homeowners), and even sophisticated purchasers are not immune from trademark
confusion, especially when the similarity of the marks and goods outweigh any
sophisticated purchasing decision. See HRL Associates, Inc. v. Weiss Associates, Inc.,
12 USPQ2d 1819 (TTAB 1989), aff’d, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990)
(similarities of goods and marks outweigh sophisticated purchasers, careful
purchasing decision, and expensive goods). See also In re Research Trading Corp., 793
F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), citing Carlisle Chem. Works, Inc. v.
Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human
memories even of discriminating purchasers … are not infallible.”). We find this du
Pont factor neutral.
D. Family of Marks
Applicant argues that confusion is unlikely because Applicant owns a family of
marks beginning with the term SHUR for adhesive tapes, and that its SHURSTICK
mark will be recognized and seen as another member of that family of tape marks
instead of associating the mark with Registrant’s unrelated goods.
However, the family of marks doctrine is unavailable to applicants seeking to
overcome a likelihood of confusion refusal in an ex parte proceeding; the focus is on
the mark an applicant is seeking to register and not on any other marks the applicant
may have used or registered. In re Cynosure, Inc., 90 USPQ2d 1644, 1645 (TTAB
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2009), citing In re Lar Mor Int’l, Inc., 221 USPQ 180, 183 (TTAB 1983); In re Ald,
Inc., 148 USPQ 520, 521 (TTAB 1965).
II. Conclusion
We have considered all of the arguments and evidence of record as they pertain to
the du Pont likelihood of confusion factors, even if not discussed herein. To the extent
that any other du Pont factors for which no evidence was presented by Applicant or
the Examining Attorney may nonetheless be applicable, we treat them as neutral.
In light of the foregoing, we find that confusion is likely because the marks are
similar, the goods are related, and the trade channels and purchasers overlap.
Decision: The refusal to register Applicant’s mark SHURSTICK is affirmed.