Solvay (Societe Anonyme)

Trademark Trial and Appeal Board

Feb 6, 2008

No. 79015810 (T.T.A.B. Feb. 6, 2008)

Mailed:
6 February 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Solvay (Societe Anonyme)
________

Serial No. 79015810
_______

Mark B. Harrison of Venable LLP for Solvay (Societe
Anonyme).

Kristina Morris, Trademark Examining Attorney, Law Office
116 (Michael W. Baird, Managing Attorney).
_______

Before Drost, Zervas, and Bergsman, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On April 7, 2005, applicant Solvay (Societe Anonyme)
applied to register the mark NIDACELL, in standard
character form, on the Principal Register for goods
ultimately identified as follows:
Semi-processed plastic in the form of films, sheets,
tubes, bars, or rods; packing, stopping and insulating
resins in the form of bars, rods, sheets, or tubes for
general industrial use and for use in further
manufacture in Class 17

Non-metallic building materials, namely, doors and
windows; non-metallic rigid panels for building,
THIS OPINION IS NOT
A PRECEDENT OF THE
TTAB
Ser No. 79015810
2
namely, wall panels, door panels, and ceiling panels;
non-metallic transportable buildings in Class 19.1

The application (Serial No. 79015810), a request for
extension of protection, was filed under the provision of
Section 66(a) of the Trademark Act. 15 U.S.C. § 1144f(a).
The application has a priority date of October 12, 2004.
The examining attorney has refused to register
applicant’s mark under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), because of a registered mark (No.
2692408 issued March 4, 2003) for NIDAPLAST, in typed or
standard character form, for “semi-processed plastic with
honeycomb core for the construction, manufacturing and
transportation industries; weatherstripping for use in the
construction, manufacturing and transportation industries;
stuffing of plastic; insulating materials, namely, plastic
padding for shipping containers” in Class 17. The
registration is owned by Nidaplast-Honeycombs, a French
limited liability company.
The examining attorney maintains that the marks are
dominated by the term NIDA and that the “remaining portions
of the marks, PLAST and CELL are highly suggestive of the
term ‘plastic,’ of which registrant’s goods are composed.

1 The application contains three other classes of goods and
services (1, 12, and 42) but there is no longer any refusal
pending for these classes.

Ser No. 79015810
3
The term CELL is evocative of the appearance of applicant’s
goods made from honeycomb materials, which consist of a
number of small cells.” Brief at unnumbered pp. 8-9. The
examining attorney also argues that:
Applicant’s identification does not limit the channels
of trade or classes of purchasers for its semi-
processed plastic goods and registrant does not limit
the type or nature of its semi-processed plastic to
indicate which forms it is offered. Because
applicant’s identification of goods encompasses “semi-
processed plastic with honeycomb core for the
construction, manufacturing and transportation
industries,” the goods are identical in part.

Brief at unnumbered p. 5. Also, “weatherstripping and
insulating materials and doors, windows, building panels,
and transportable buildings are of a kind that emanate from
a single source.” Brief at unnumbered p. 6.
Applicant maintains that its mark “differs from the
cited mark NIDAPLAST visually, aurally and in meaning and
commercial impression.” Brief at 3. Applicant also argues
that the “cited registration does not cover ‘Building
materials” (Brief at 6) and the its goods “do not overlap
with the registrant’s goods.” Brief at 5.
After the examining attorney made the refusal final,
this appeal ultimately followed.
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out in In re E. I. du Pont de Nemours & Co., 476 F.2d
Ser No. 79015810
4
1357, 177 USPQ 563, 567 (CCPA 1973). See also In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003); Recot, Inc. v. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000).
“The first DuPont factor requires examination of ‘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 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177
USPQ at 567). Here, the marks are NIDACELL and NIDAPLAST.
Inasmuch as the marks are depicted in typed or standard
character form, there is no difference in the marks’
displays, and they are also similar because they contain
the same initial term, “Nida-.” There is no evidence of
record that indicates that this term has any relevant
meaning, nor are we aware of any,2 so we will presume that
the term is arbitrary in relation to the identified goods.

2 We note that “Nida” is defined as “a female given name, form of
Nydia.” The Random House Dictionary of the English Language
(unabridged) (2d ed. 1987). We take judicial notice of this
definition. University of Notre Dame du Lac v. J.C. Gourmet Food
Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372,
217 USPQ 505 (Fed. Cir. 1983). Applicant also submitted evidence
that “Nida” is a surname. Request for Reconsideration dated
December 12, 2006, Exhibit B. In addition, the fact that the
term appears in a cancelled registration or an application does
not support an argument that the term is weak or unlikely to be
the dominant part of the mark. In re Phillips-Van Heusen Corp.,
Ser No. 79015810
5
The marks differ because the final portions of the
marks are dissimilar. Applicant’s final term is the word
“-cell”; registrant’s is “-plast.” The examining attorney
has argued that the endings “cell” and “plast” are highly
suggestive of honeycomb materials made of small cells and
plastic. We agree that the term “-plast” in the mark
NIDAPLAST is likely to have a suggestive connotation when
viewed in relation to the goods, semi-processed plastic.
We note that applicant’s press release describes its goods
as “NIDACELLTM, new honeycomb materials.”
www.solvaypress.com. The word “Honeycomb” is defined,
inter alia, as:
A structure of rows of hexagonal wax cells, formed by
bees in their hive for the storage of honey, pollen,
and their eggs.

anything whose appearance suggests such a structure,
esp. in containing many small units or holes: The
building was a honeycomb of offices and showrooms.

The Random House Dictionary of the English Language
(unabridged) (emphasis added). To the extent that
“honeycomb” can be described as having a cell-like
structure, potential purchasers are likely to understand

63 USPQ2d 1047, 1049 n.4 (TTAB 2002) (application) and Sunnun
Products Co. v. Sunex International Inc., 1 USPQ2d 1744, 1746-47
(TTAB 1987) (expired registration).

Ser No. 79015810
6
that the term “cell” would be at least somewhat suggestive
of a feature of applicant’s goods.
Moreover, inasmuch as the term “Nida-” has no apparent
meaning for the goods at issue and it is the first term in
both marks, it would be the dominant term. Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005)(“To be sure, CLICQUOT is an important term in the
mark, but VEUVE nevertheless remains a ‘prominent feature’
as the first word in the mark and the first word to appear
on the label. Not only is VEUVE prominent in the
commercial impression created by VCP's marks, it also
constitutes ‘the dominant feature’ in the commercial
impression created by Palm Bay's mark”). The second
portions of the marks do not significantly change the
arbitrary meanings of the marks. Furthermore, the
commercial impressions of the marks would also be similar
inasmuch as they would point to plastic and honeycomb-like
products from an entity that identifies its products by an
initial “NIDA-” prefix. While the marks differ because of
the concluding portions of the marks, the identical nature
of the dominant portion results in marks that are similar
in sound, appearance, meaning, and commercial impression
when they are considered in their entireties. Plantronics
Ser No. 79015810
7
Inc. v. Starcom Inc., 213 USPQ 699, 702 (TTAB 1982)
(“Accepting that the marks have differences in sound and
appearance, they are identical in respect of their dominant
features i.e. the prefix ‘STAR’. Similarity of dominant
features must be accorded greatest weight”). See also In
re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d
1944, 1946 (Fed. Cir. 2004) (discussng In re Hearst Corp.,
982 F.2d 493, 25 USPQ2d 1238 (Fed. Cir. 1992)) (JOSE GASPAR
GOLD and GASPAR’S ALE held to be similar).
Next, we look at whether the goods of applicant and
registrant are related. The registrant’s goods are:
semi-processed plastic with honeycomb core for the
construction, manufacturing and transportation
industries;

weatherstripping for use in the construction,
manufacturing and transportation industries;

stuffing of plastic; and

insulating materials, namely, plastic padding for
shipping containers.

Applicant’s goods are:
Class 17 -
Semi-processed plastic in the form of films, sheets,
tubes, bars, or rods;

packing, stopping and insulating resins in the form of
bars, rods, sheets, or tubes for general industrial
use and for use in further manufacture

Class 19 -
Non-metallic building materials, namely, doors and
windows;
Ser No. 79015810
8

non-metallic rigid panels for building, namely, wall
panels, door panels, and ceiling panels;

non-metallic transportable buildings

Applicant’s “semi-processed plastic” is not limited to
any specific industries and these plastics would include
registrant’s semi-processed plastic for the construction,
manufacturing and transportation industries. We agree with
the examining attorney that applicant’s semi-processed
plastic, as identified, would include plastic with a
“honeycomb core.” Therefore, these goods at least overlap
at this point. When goods are identical, the marks do not
need to be as close before there is a likelihood of
confusion. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir.
1992) (“When marks would appear on virtually identical
goods or services, the degree of similarity necessary to
support a conclusion of likely confusion declines”).
Furthermore, when the goods overlap, the channels of trade
and purchasers must also be presumed to overlap. Genesco
Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the
in-part identical and in-part related nature of the
parties’ goods, and the lack of any restrictions in the
identifications thereof as to trade channels and
purchasers, these clothing items could be offered and sold
Ser No. 79015810
9
to the same classes of purchasers through the same channels
of trade”); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532
(TTAB 1994) (“Because the goods are legally identical, they
must be presumed to travel in the same channels of trade,
and be sold to the same class of purchasers”).
In addition, the examining attorney points to
registrant’s website, which reports that: “Semi-finished
product, nidaplast® honeycombs have been used as a core for
sandwich panels (structural or not) in building, transport,
capital good or the marine and leisure industries.”
www.nidaplast.com. Applicant argues that “[w]hether or not
the registrant’s web site indicates that the registrant’s
goods may be used as ‘building materials’ is not relevant
here if the cited registration does not cover ‘building
materials.’ And it does not.” Brief at 6. While it is
literally true that registrant’s identification of goods
does not include the word “building,” it is clear that
registrant’s identified goods include plastics in the
“construction [and] manufacturing … industries.”3 The
examining attorney argues that a “consumer purchasing a

3 Construct is defined as “to build or form by putting together
parts.” The Random House Dictionary of the English Language
(unabridged). If the examining attorney is also arguing that
registrant is a source of finished products in the construction
industry that are not in the identification of goods, we have not
considered this as a factor in support of a likelihood of
confusion in this case.
Ser No. 79015810
10
NIDACELL panel featuring a NIDAPLAST core is likely to
believe that the core and finished panel emanate from a
single source.” Brief at unnumbered p. 5. To the extent
that registrant’s goods include “semi-processed plastic
with honeycomb core for the construction, manufacturing and
transportation industries” and, therefore, would include
such items as cores for doors and applicant’s goods would
include plastic rigid panels for building, namely, wall
panels, door panels, and ceiling panels,” the goods are
related. Moreover, registrant’s and applicant’s goods may
be purchased by the same purchasers (door manufacturers) to
assemble doors.
The examining attorney has also included several
registrations to show that the goods of applicant and
registrant are related. See, for example:
No. 1836776 for, inter alia, “weatherstripping” and
“doors and windows”

No. 2371404 for “air filtration and weather barrier
for use in building construction” and “non-metal
windows; non-metal doors”

No. 3060955 for “weatherstripping for doors” and
“building materials, namely, non-metal door
components, namely, sills, header, corner pads,
astragals, caps and door bottoms”

These registrations suggest that weatherstripping and
doors and parts for doors would be marketed by the same
entity under a common mark. In re Mucky Duck Mustard Co.,
Ser No. 79015810
11
6 USPQ2d 1467, 1470 n.6 (TTAB 1988) (Although third-party
registrations are “not evidence that the marks shown
therein are in use on a commercial scale or that the public
is familiar with them, [they] may nonetheless have some
probative value to the extent that they may serve to
suggest that such goods or services are of a type which may
emanate from a single source”). See also In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993).
We add that goods are related if they are marketed in such
a way that it “could give rise, because of the marks used
thereon, 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, 1388 (TTAB 1991). Here, the evidence suggests
that these goods would originate from the same source and
the same purchasers (e.g., those engaged in a building
project) are likely to purchase both weatherstripping and
doors and parts for doors.
Another factor that applicant mentions is the
sophistication of the purchasers. There is no doubt that
if the purchasers of a product are sophisticated, this
factor can significantly impact the question of likelihood
of confusion. In re Amsted Industries Inc., 972 F.2d 1326,
Ser No. 79015810
12
24 USPQ2d 1067, 1068 (Fed. Cir. 1992) (“[C]onsidering
particularly the sophistication of wire rope purchasers, we
are of the opinion that the concurrent use of the marks of
the references and the mark sought to be registered is not
likely to cause confusion or mistake or to deceive”)
(different color schemes associated with wire rope). In
the present case, applicant has not submitted evidence that
establishes the level of sophistication of the relevant
purchasers. We point out that we are reluctant to assume
that all purchasers of weatherstripping and doors and parts
for doors would necessarily be sophisticated. Indeed, it
appears that these purchasers could include ordinary
homeowners involved in home improvement projects.
We also add that even if all purchasers were
considered to be sophisticated, it does not by itself lead
to a conclusion that there is no likelihood of confusion.
In re Total Quality Group Inc., 51 USPQ2d 1474, 1477 (TTAB
1999) (“We recognize applicant's attorney's point that its
software is expensive and that purchasers of it are likely
to be sophisticated. Suffice it to say that no evidence in
support of these assertions was submitted. In any event,
even careful purchasers are not immune from source
confusion”) and In re Hester Industries, Inc., 231 USPQ
881, 883 (TTAB 1986) (“While we do not doubt that these
Ser No. 79015810
13
institutional purchasing agents are for the most part
sophisticated buyers, even sophisticated purchasers are not
immune from confusion as to source where, as here,
substantially identical marks are applied to related
products”). When the goods are as closely related as in
this case and the buyers are identical, even if the buyers
are sophisticated, it is likely that there would be
confusion when these purchasers encounter the marks
NIDAPLAST and NIDACELL on the same goods.
Therefore, when we compared the marks NIDACELL and
NIDAPLAST, we concluded that their similarities outweighed
their differences. In addition, the goods are at least
identical in part or related. When we consider all the
evidence in this case relevant to the du Pont factors,
confusion is likely here.
Decision: The refusal to register applicant’s mark
for the goods in Classes 17 and 19 under Section 2(d) of
the Trademark Act is affirmed.