Solomon Colors, Inc.

Trademark Trial and Appeal Board

Jun 13, 2016

No. 86422249 (T.T.A.B. Jun. 13, 2016)

1

This Opinion is not a
Precedent of the TTAB

Mailed: June 13, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Solomon Colors, Inc.
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Serial No. 86422249
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Michael A. Williamson of Polsinelli PC,
for Solomon Colors, Inc.
Donald Johnson, Trademark Examining Attorney, Law Office 104,
Dayna Browne, Managing Attorney.
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Before Cataldo, Heasley and Pologeorgis,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
Solomon Colors, Inc. (“Applicant”) seeks registration on the Principal Register of
the mark RCC SURFACE PRO (in standard characters) for “chemical applied to
concrete surfaces and to cementitous composites for improved workability as the
concrete is troweled or otherwise worked,” in International Class 1.1 Applicant
disclaims the exclusive right to use the term “RCC Surface.”

1 Application Serial No. 86422249 was filed on October 13, 2014, based upon Applicant’s
claim of first use anywhere and use in commerce since at least as early as May 31, 2014.
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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
Applicant’s mark so resembles the registered mark SURFACE PRO (typed drawing)
for “industrial abrasives for use in the stone and tile industry” in International Class
3 and for “”stone working power tools, namely, polishers and grinders, stone working
machines, namely, wet vacuums cleaners, dust separators for collecting particles of
stone from the air, concrete finishing machines for use in preparing concrete surfaces
and accessories therefor…” in International Class 7, as to be likely to cause
confusion.2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Applicable Law.

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 issue of
likelihood of confusion. B & B Hardware, Inc. v. Hargis Industries, Inc., 135 S.Ct.
1293,113 USPQ2d 2045, 2049 (2015) (“[T]he TTAB evaluates likelihood of confusion
by applying some or all of the 13 factors set out in In re E.I. DuPont DeNemours &
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).

2 Registration No. 2882239, issued on the Principal Register on September 7, 2004, renewed.
Registrant disclaimed the exclusive right to use the term “Surface”.
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In the course of applying these DuPont factors, we bear in mind the underlying
purposes of Section 2(d), which are to prevent consumer confusion as to commercial
sources and relationships, and to protect registrants from damage caused by
registration of confusingly similar marks. Park 'N Fly, Inc. v. Dollar Park & Fly, Inc.,
469 U.S. 189, 198, 224 USPQ 327, 331 (1985); Qualitex Co. v. Jacobson Products Co.,
514 U.S. 159, 163-64, 34 USPQ2d 1161, 1163 (1995); DuPont, 177 USPQ at 566. To
this end, we have considered each DuPont factor that is relevant and of record in this
case. See M2 Software, Inc. v. M2 Communications, Inc., 450 F.3d 1378, 78 USPQ2d
1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. and H.J. Heinz Company v. GFA
Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each
factor for which we have evidence, we focus our analysis on those factors we find to
be relevant.”). We treat as neutral any DuPont factors for which there is no evidence
or argument of record.
II. Analysis.
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, 29 (CCPA 1976) (“The
fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in the marks”) cited in In
re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016).
A. Comparison of the Marks.
Under the first DuPont factor, we determine the similarity or dissimilarity of
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Applicant’s and Registrant’s marks as compared in their entireties, taking into
account their appearance, sound, connotation and commercial impression. Palm Bay
Imps, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005); In re Midwest Gaming & Entm’t LLC, 106
USPQ2d 1163, 1165 (TTAB 2013).
Applicant concedes that “the marks are very similar…,”3 and for good reason, as
Applicant’s word mark, RCC SURFACE PRO, incorporates Registrant’s word mark,
SURFACE PRO, in its entirety. Its complete incorporation of the registered mark
enhances the similarity between the two. See, e.g., The Wella Corp, v. California
Concept Corp., 558 F.2d 1019, 194 USPQ 419 (CCPA 1977) (applicant’s mark
CALIFORNIA CONCEPT and surfer design likely to cause confusion with registered
word mark CONCEPT); In re Toshiba Medical Systems Corp., 91 USPQ2d 1266, 1271
(TTAB 2009) (applicant’s mark VANTAGE TITAN confusingly similar to registered
mark TITAN); In re Mr. Recipe, LLC, 118 USPQ2d 1084 (TTAB 2016) (applicant’s
mark JAWS DEVOUR YOUR HUNGER confusingly similar to registrant’s mark
JAWS).
Applicant’s addition of “RCC” to SURFACE PRO does not distinguish the marks.
“[T]he presence of an additional term in the mark does not necessarily eliminate the
likelihood of confusion if some terms are identical.” In re Mighty Leaf Tea, 601 F.3d
1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010). Moreover, as the Examining Attorney

3 Applicant’s brief, p. 3, 4 TTABVUE 4.
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points out, the prefix “RCC” is disclaimed as descriptive.4 “RCC” is an initialism for
“roller-compacted concrete,” which is “a special blend of concrete that has essentially
the same ingredients as conventional concrete but in different ratios.”5 Recognized
abbreviations for merely descriptive words may also be merely descriptive. In re
Thomas Nelson Inc., 97 USPQ2d 1712, 1715 (TTAB 2011) (citing Foremost Dairies,
Inc. v. The Borden Company, 156 USPQ 153,154 (TTAB 1967)). Applicant accordingly
consented to an amendment disclaiming the exclusive right to use “RCC.”6 It is well-
settled that disclaimed, descriptive matter may have little significance in likelihood
of confusion determinations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has
noted that the ‘descriptive component of a mark may be given little weight in reaching
a conclusion on the likelihood of confusion.’”) (quoting In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)); In re Dixie Rests. Inc., 105 F.3d 1405,
1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Code Consultants, Inc., 60
USPQ2d 1699, 1702 (TTAB 2001) (disclaimed descriptive matter is “less significant
in creating the mark’s commercial impression”). Hence, Applicant’s addition of the
disclaimed, descriptive prefix “RCC” does not dispel the likelihood of confusion
engendered by the shared terms SURFACE PRO.

4 Examining Attorney’s brief, 6 TTABVUE 7.
5 Examining Attorney’s brief, 6 TTABVUE 7, Office Action of Nov. 7, 2014 at 11-12.
6 Office Action of Oct. 31, 2014.
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Moreover, purchasers normally retain a general rather than a specific impression
of marks, In re Dixie Rests., 41 USPQ2d at 1534, and naturally tend to shorten their
pronunciation of marks. See, e.g., In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 219 (CCPA 1978) (J. Rich, concurring); Marshall Field & Co. v. Mrs. Fields
Cookies, 25 USPQ2d 1321, 1333 (TTAB 1992). So visually and phonetically,
purchasers are likely to look for and ask for SURFACE PRO when they seek the
Applicant’s and Registrant’s goods. The shared two-word phrase is the dominant
component of Applicant’s mark and the sole component of Registrant’s mark. See
Palm Bay Imps., 73 USPQ2d at 1692. And since Applicant’s mark is in standard
characters--the legal equivalent of the typed drawing format in which Registrant’s
mark appears, TMEP § 807.03(i)--both marks could be presented to purchasers in the
same manner of display. See Mr. Recipe, 118 USPQ2d at 1090. The marks are thus
very similar in appearance and sound.
In terms of connotation and commercial impression, both Applicant and
Registrant’s identification of goods use the word SURFACE to refer to “concrete
surfaces” and the like. And the word PRO suggests that their products are
professional grade. See Sunbeam Corp. v. Conair Corp., 220 USPQ 748, 751 (TTAB
1983) (“It is quite clear (and applicant admits) that “pro,” standing by itself, is an
accepted abbreviation of the word “professional.”). Applicant’s initialism “RCC”
would tend to be seen as a variation of Registrant’s mark, suggesting another line of
goods involving roller-compacted concrete emanating from the same source. See In re
Collegian Sportswear, Inc., 224 USPQ 174, 176 (TTAB 1984); Wella v. California
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Concept, 194 USPQ at 422. The marks are thus “sufficiently similar in terms of their
commercial impression’ such that persons who encounter the marks would be likely
to assume a connection between [Applicant and Registrant].” Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(citing Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901, 1905
(TTAB 2007)).
Hence the first DuPont factor, similarity of the marks, weighs heavily in favor of
finding a likelihood of confusion.
B. Relatedness of Goods.
We next consider the second DuPont factor, concerning the similarity or
dissimilarity and nature of the goods as described in the subject application and
registration. 177 USPQ 567. See Stone Lion Capital Partners, LP v. Lion Capital LLP,
746 F.3d 1317, 110 USPQ2d 1157, 1159 (Fed. Cir. 2014). In considering this factor,
we note that “the greater the degree of similarity between the applicant's mark and
the registered mark, the lesser the degree of similarity between the applicant's goods
and registrant's goods that is required to support a finding of likelihood of confusion.”
In re Thor Tech, 90 USPQ2d 1634, 1636 (TTAB 2009).
Applicant argues that its goods are used at an earlier stage than Registrant’s
goods in the course of preparing concrete surfaces:
Appellant[’]s RCC Surface Pro liquid products are applied to roads and
parking lots during installation, on wet uncured roller-compacted
concrete. That is, Appellant's products are liquids that are applied to
roller-compacted concrete still wet after being rolled. Roller-compacted
concrete is much like uncured asphalt, not cured concrete, and
contractors laying cured concrete would have no reason to apply
Appellant’s products. Contractors would instead use products for cured,
hard concrete such as products marketed under GranQuartz’s
Registered trademark.
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The GranQuartz products are diamond polishing tools used for polishing
hard cured concrete or stone floors. One would never confuse the
products of Appellant’s and that of GranQuartz.7

In support of this position, Applicant attaches pictures of Registrant’s floor
finishing machines and parts, the better to distinguish them from its own chemical
product:
8

7 Applicant’s brief, pp. 3-4, 4 TTABVUE 4-5.
8 Applicant’s brief, 4 TTABVUE 8.
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The issue, though, is not whether purchasers would confuse the goods, but
whether they are likely to confuse the source of the goods. Mini Melts, Inc. v. Reckitt
Benckiser LLC, 118 USPQ2d 1464, 1471 (TTAB 2016); In re Cook Medical
Technologies LLC, 105 USPQ2d 1377, 1380 (TTAB 2012). “It is not necessary that
these goods be identical or even competitive to support a finding of likelihood of
confusion. Rather, it is sufficient that the goods are related in some manner, or that
the circumstances surrounding their marketing are such, that they would be
encountered by the same persons in situations that would give rise, because of the
marks, to a mistaken belief that they originate from the same source or that there is
an association or connection between the sources of the goods.” Thor Tech, 90 USPQ2d
at 1635.
We make our determinations under the DuPont factors based on the goods or
services as they are identified in the registration and application. See Dixie
Restaurants, 41 USPQ2d at 1534; Octocom Systems Inc. v. Houston Comp. Sys. Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787-88 (Fed. Cir. 1990). As the Examining Attorney
correctly observes, Registrant’s registration also identifies “industrial abrasives”
among its goods, in addition to “stone working power tools,” including “concrete
finishing machines for use in preparing concrete surfaces.”9
Even though Applicant’s and Registrant’s goods are used at different stages in the
process of preparing concrete surfaces, their goods can nonetheless originate from the
same source. The Examining Attorney has submitted excerpts from various third-

9 Reg. No. 2882239 identification of goods; Examining Attorney’s brief, 6 TTABVUE 8.
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party websites showing that the same entities can and do provide both sorts of goods:
• TCC Materials provides a liquid accelerant that improves the workability and
initial strength of cement, and abrasives that can be used for cleaning stone
and brick;
• VMC Technical Assistance Corporation provides chemicals to treat concrete,
and circular resin-bonded diamond abrasives, which may be used to finish
concrete floors, among other surfaces;
• Werkmaster provides concrete densifiers, sealers, and etchers, as well as
grinders for refinishing concrete and other surfaces.10
As this record evidence demonstrates, the same source may provide chemicals,
abrasives, and finishing machines to prepare and finish concrete surfaces. See
Toshiba Med. Systems, 91 USPQ2d at 1268-69 (same companies produce both
ultrasound and MRI medical diagnostic imaging machines).
Therefore, under the second DuPont factor, we find that the goods are related,
which supports a conclusion that there is a likelihood of confusion.
C. Channels of Trade and Sophistication of Purchasers.
The third and fourth DuPont factors are the similarity or dissimilarity of
established, likely-to-continue trade channels and the conditions under which and
buyers to whom sales are made. 177 USPQ 567. Applicant asserts that Applicant’s
and Registrant’s products are “purchased by sophisticated persons knowing the
difference between work on rolled concrete and work on cured concrete, stone or tile.

10 Office Action of Nov. 7, 2014, pp. 5-10.
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Indeed, the market for the goods of the [Applicant] and the market for the Registered
Mark goods are separate and do not overlap.”11
However, because there are no limitations as to channels of trade or classes of
purchasers in the description of goods in the application or cited registration, it is
presumed that Applicant’s goods and Registrant’s goods move in all channels of trade
normal for those goods, and that they are available to all classes of purchasers for
those goods. See B & B Hardware, 113 USPQ2d at 2049; Paula Payne Products Co. v.
Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973); In re Linkvest
S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
Judging from the nature of the goods, it is evident that their purchasers would be
members of the construction industry responsible for preparing and finishing
concrete surfaces, among other types of flooring. Even if these purchasers are
sophisticated, they could still infer from Applicant’s and Registrant’s similar marks,
with the shared term STANDARD PRO, that the respective goods emanate from the
same source, as demonstrated by the Examining Attorney’s third-party evidence.12
As in Toshiba Medical Systems, which involved sophisticated purchasers of
ultrasound and MRI medical diagnostic equipment, “These purchasers are likely to
be aware that a single entity can be the source of both such products. … These
purchasers, familiar with registrant's products, are likely to participate in purchasing
decisions involving applicant's goods, and assume that the products are associated or

11 Applicant’s brief, p. 4, 4 TTABVUE 5.
12 Office Action of Nov. 7, 2014, pp. 5-10.
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related in some way.” 91 USPQ2d at 1271. The purchasers’ sophistication does not
prevent source confusion. Id. See also Stone Lion Capital, 110 USPQ2d at 1163-64.
Any complaints or criticisms they may have regarding Applicant’s products could be
unfairly imputed to the Registrant, damaging its reputation. In re Shell Oil Co., 992
F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993) (“The registrant/senior user is
safeguarded by the trademark law, as is the consuming public, from likelihood of
confusion caused by the entry of a junior user of a confusingly similar mark. …The
trademark law not only protects the consumer from likelihood of confusion as to
commercial sources and relationships, but also protects the registrant and senior user
from adverse commercial impact due to use of a similar mark by a newcomer.”).
For these reasons, the third DuPont factor, channels of trade, favors finding a
likelihood of confusion, whereas the fourth DuPont factor, sophistication of
purchasers, does not mitigate the likelihood of confusion, and is neutral.
III. Conclusion.
After considering all evidence and arguments bearing on the DuPont factors,
including the evidence and arguments that we have not specifically discussed herein,
we find that the marks are similar, and are used on related goods, which are
presumed to move in the same channels of trade to the same classes of purchasers,
whose sophistication would not prevent confusion as to source. We conclude that
Applicant’s RCC SURFACE PRO mark, as used on the goods identified in the
application, so resembles the registered SURFACE PRO mark, as used on the goods
identified in the registration, as to be likely to cause confusion or mistake, or to
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deceive under Section 2(d) of the Trademark Act.
Decision: The refusal to register Applicant’s mark, RCC SURFACE PRO, is
affirmed.