SI Corp.

Trademark Trial and Appeal Board

Mar 26, 2004

No. 76256918 (T.T.A.B. Mar. 26, 2004)

Paper No. 12
TJQ
Mailed:3/26/04
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re SI Corporation
________
Serial No. 76256918
_______
Rodney L. Skoglund of Renner, Kenner, Grieve, Bobak, Taylor
& Weber for SI Corporation.
Eugenia K. Martin, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney).
_______
Before Quinn, Bucher and Rogers, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application was filed by SI Corporation to register
the mark INFORCE for “fibers made of synthetic polymers and
of metal for reinforcing Portland cement and concrete.”1
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Trademark Act on the
ground that applicant’s mark, if applied to applicant’s
1 Application Serial No. 76256918, filed May 14, 2001, based on
an allegation of a bona fide intention to use the mark in
commerce.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76256918
2
goods, would so resemble the previously registered mark EN-
FORCE for “reinforcing materials to structurally strengthen
building components and structures, namely steel, wood and
concrete,”2 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs. An
oral hearing was not requested.
Applicant argues, in urging that the refusal be
reversed, that the marks have very little in common,
differing in appearance and commercial impression.3 More
specifically, applicant contends that “[t]he major
connotation of the registered mark is that it uses ‘force’
to adhere or otherwise hold building components and
structures together” whereas “[t]he overall commercial
impression left by Applicant’s mark INFORCE is that it is
used to ‘reinforce concrete.’” (brief, p. 4). As to the
goods, applicant asserts that the cited registration
improperly issued with an overbroad identification of
goods, after the goods were amended by way of an Examiner’s
2 Registration No. 2,526,968, issued January 8, 2002. The
registration includes additional goods in a different class (Int.
Cl. 1) as follows: “adhesives to glue reinforcing materials to
building components.” Throughout the prosecution, the Examining
Attorney does not reference these goods in the refusal.
3 Applicant’s argument that the registrant’s mark, as actually
used in commerce, appears with the letter epsilon in place of the
initial letter “E” is, of course, irrelevant. The mark, as shown
in the cited registration, is in typed form.
Ser No. 76256918
3
Amendment. Applicant insists that there is no likelihood
of confusion when the analysis includes a comparison of
applicant’s goods with registrant’s goods, as more narrowly
identified in the amended identification. In short, the
amendment changed “reinforcing materials” to “reinforcing
laminates;” this change, however, is not reflected in the
registration as issued. Applicant goes on to argue that,
in any event, the goods are different and move through
different channels of trade.
The Examining Attorney maintains that the marks are
phonetic equivalents, and that the only differences in the
marks are a hyphen between syllables and one slight vowel
sound. The Examining Attorney points out that each mark
has seven letters, the last six of which are identical, and
that the final syllable of each mark consists of the same
word, FORCE. The Examining Attorney also asserts that the
goods are commercially related, with both being used to
strengthen or reinforce concrete. The Examining Attorney
further asserts that applicant, in stating that there is an
error in the registration, has launched a collateral attack
on the cited registration which cannot be heard in an ex
parte appeal.
Before turning to the merits of the appeal, we need to
address the issue concerning registrant’s identification of
Ser No. 76256918
4
goods as set forth in the cited registration. As noted
above, the International Class 19 identification of goods
in the registration reads as follows: “Reinforcing
materials to structurally strengthen building components
and structures, namely steel, wood and concrete.” As shown
by applicant’s submission, however, the Examining Attorney
(different from the Examining Attorney handling the present
application), in examining the underlying application for
the cited registration, entered an Examiner’s Amendment on
October 25, 2000. The amendment indicated that the
International Class 1 identification of goods was
acceptable, but went on to amend the International Class 19
goods as follows: “Reinforcing laminates to structurally
strengthen building components and structures, namely
steel, wood and concrete.” Registrant (then applicant) was
instructed to “[p]lease advise the [Examining Attorney] if
there is an objection to the amendment.” A check of the
registration file shows that no objection was filed.
In view of the above, the likelihood of confusion
issue will be analyzed based on registrant’s amended
identification of goods. As a review of the registration
file shows, the failure to enter the amendment to the
identification of goods was the result of Office error.
The October 25, 2000 amendment makes it clear that the
Ser No. 76256918
5
identification was narrowed to “laminates.” Not only was
the term “materials” apparently viewed by the Examining
Attorney as being overly broad and, thus, unacceptable, but
the amended identification in International Class 19 is
consistent with the International Class 1 identification
which covers “adhesives.” Lest there be any doubt, the
amendment to “reinforcing laminates” is consistent with the
extrinsic evidence submitted by applicant (and not
specifically objected to by the Examining Attorney) which
it retrieved from the registration file. See: In re
Trackmobile Inc., 15 USPQ2d 1152 (TTAB 1990).
In sum, applicant’s request to consider, in our
determination of likelihood of confusion, registrant’s
identification as amended is well taken. Rather than
constituting an impermissible collateral attack on the
cited registration, as the Examining Attorney contends,
applicant’s request is to correct an obvious Office error.
The registration file has been forwarded to the Post
Registration branch of the Office for correction of the
identification of goods.
We now turn our attention to the merits. 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
Ser No. 76256918
6
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 any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
We first turn to compare the marks in their entireties
in terms of appearance, sound and connotation, and
determine whether they are similar or dissimilar in their
overall 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 impression
that confusion as to the source of the goods offered under
the respective marks is likely to result.
Applicant’s mark INFORCE and registrant’s mark EN-
FORCE sound alike in that they essentially are phonetic
equivalents. Any very slight difference in the sounds of
the first syllable of the terms undoubtedly would be missed
when the marks are spoken.
Ser No. 76256918
7
As to appearance, although applicant has pointed out
the differences between the marks, we find that they are
outweighed by the similarities. Both marks are formed with
two syllables, the marks’ beginning with vowels, followed
by the letter “N” and ending with the identical term
“force.”
As to meaning, we are not persuaded by applicant’s
contention that registrant’s mark conveys the idea that
registrant’s goods use force to adhere or otherwise hold
building components and structures together whereas
applicant’s mark suggests that applicant’s goods are used
to reinforce concrete. Rather, we find that the marks,
when applied to their respective goods, have the same
connotation, that is, that the purpose of the goods is to
reinforce, among other things, concrete. Although
registrant’s mark is suggestive, we note that the record is
devoid of any evidence of third-party uses or registrations
of the same or similar marks in the construction field.
The minor differences between the marks INFORCE and
EN-FORCE do not sufficiently distinguish the marks so as to
create separate and distinct commercial impressions. We
find that these marks, considered in their entireties, are
similar in sound, appearance, connotation and commercial
impression so that, if they were applied to similar or
Ser No. 76256918
8
related goods, confusion would be likely to occur among
purchasers.
With respect to the goods, it is well established that
the goods of the parties need not be similar or
competitive, or even that they move in the same channels of
trade, to support a holding of likelihood of confusion. It
is sufficient that the respective goods of the parties are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods are such
that they would or could be encountered by the same persons
under circumstances that could, because of the similarity
of the marks, give rise to the mistaken belief that they
originate from the same source. See In re International
Telephone & Telephone Corp., 197 USPQ 910, 911 (TTAB 1978).
The issue is not whether purchasers would confuse the
goods, but rather whether there is a likelihood of
confusion as to the source of the goods. In re Rexel Inc.,
223 USPQ 830 (TTAB 1984).
In comparing the goods, applicant asserts the
following:
The respective goods are used in
different ways, at different times in
the construction process so as to be
nearly impossible to confuse them in
actual use....In order to use the
polymeric or steel fibers of Appellant,
they must be mixed with the wet cement
Ser No. 76256918
9
or concrete prior to pouring.
Appellant’s polymeric or steel fibers
could not be used in reinforcing wood
or steel....Appellant’s polymeric or
steel fibers are used only to reinforce
cement or concrete, and only when a
cement or concrete structure is
initially poured, molded or cast, i.e.,
before the creation therewith of any
building component or structural
element.
The registered mark’s “reinforcing
materials” are used in a very different
manner as compared to the Appellant’s
polymeric or steel fibers. The
registered mark’s “reinforcing
materials” are used to repair existing
structures, meaning the building
component or structure already exists.
Inasmuch as they are laminates, there
must be something existing which can be
laminated.
Appellant’s goods are used at the
beginning of construction of a Portland
cement or concrete structure while the
registrant’s goods are used to repair
or strengthen an existing building
component or structure. That is,
Appellant’s products are marketed to
construction contractors, civil
engineers, architects, and concrete
ready mixers who are well aware of the
industry, and sold to and through the
concrete mixing companies and other
concrete ready mix channels of trade.
The goods are poured into ready mix
concrete trucks and the like for mixing
with concrete prior to pouring the
concrete. The goods used in connection
with the registered mark are sold
directly to construction and
restoration workers and the like to
employ the “reinforcing materials”
(i.e., reinforcing laminates) in a
post-construction step after completion
Ser No. 76256918
10
of the construction of a building
component or other structural element.
Although the goods may be specifically different, we
find that they are commercially related in terms of
purpose, trade channels and classes of purchasers.
Applicant’s goods are identified as “fibers made of
synthetic polymers and of metal for reinforcing Portland
cement and concrete” and registrant’s goods are identified
as “reinforcing laminates to structurally strengthen
building components and structures, namely steel, wood and
concrete.” Both products serve the same purpose, albeit
differently, that is, to strengthen or reinforce concrete.4
As identified, the goods may be used in the same
construction project, although perhaps at different stages
of a project. Further, just as registrant’s goods are used
to reinforce an existing structure, applicant’s goods may
be similarly used in a certain respect. Applicant’s goods,
as identified, may be used in concrete that is utilized in
a patching/shoring-up job to reinforce an existing
structure, just as in the case of registrant’s goods.
4 The term “reinforce” is defined, in relevant part, as “to give
more force or effectiveness to; strengthen; to strengthen by
adding extra support or material.” The American Heritage
Dictionary of the English Language (3rd ed. 1992).
Ser No. 76256918
11
The goods would move in similar trade channels in the
construction industry and would be purchased by the same
classes of purchasers, such as construction contractors.
We agree with applicant that the purchase of the
involved goods will, in most cases, be made by relatively
sophisticated purchasers. The sophistication of the
purchasers, however, does not require a finding of no
likelihood of confusion. Even assuming that the purchasers
of these goods are sophisticated, this does not mean that
such consumers are immune from confusion as to the origin
of the respective goods, especially when sold under similar
marks. Wincharger Corp. v. Rinco, Inc., 297 F.2d 261, 132
USPQ 289 (CCPA 1962); In re Total Quality Group Inc., 51
USPQ2d 1474 (TTAB 1999); and In re Decombe, 9 USPQ2d 1812
(TTAB 1988).
We conclude that purchasers familiar with registrant’s
reinforcing materials to structurally strengthen building
components and structures, namely, steel, wood and concrete
sold under registrant’s mark EN-FORCE would be likely to
believe, if they encountered applicant’s mark INFORCE for
fibers made of synthetic polymers and of metal for
reinforcing Portland cement and concrete, that the goods
originated with or are somehow associated with or sponsored
by the same entity.
Ser No. 76256918
12
To the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d
463, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984).
Decision: The refusal to register is affirmed.