Tenax S.p.A.v.Wuhan Keda Marble Protective Materials Co., Ltd.

Trademark Trial and Appeal Board

Feb 23, 2018

No. 91224663 (T.T.A.B. Feb. 23, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: February 23, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Tenax S.p.A.
v.
Wuhan Keda Marble Protective Materials Co., Ltd.

_____

Opposition No. 91213895
Opposition No. 91224663
_____

Michele S. Katz of Advitam IP LLC for Tenax S.p.A

P. Jay Hines of Muncy Geissler Olds and Lowe PC for Wuhan Keda Marble
Protective Materials Co., Ltd.

_____

Before Cataldo, Shaw and Goodman,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
Wuhan Keda Marble Protective Materials Co., Ltd. (“Applicant”) filed applications
to register the marks TEENIAX (in standard characters) for the following
International Class 1 goods:
Application Serial No. 86266726:
Adhesives and glues for industrial and commercial use;
Adhesives for industrial purposes; Adhesives for wall tiles;
Opposition Nos. 91213895 and 91224663
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Agglutinants for concrete; Chemical products for
preventing scale; Industrial gluing agents; Preparations
for fortifying plants; Unprocessed epoxy resin;
Waterproofing chemical compositions1;
Application Serial No. 85887343:2
This application covers the same goods listed above as well as the following:
Waterproofing chemical compositions for articles of
leather.
Application Serial No. 86626147:3
This application covers the same goods listed in the two applications above as well
as the following:
Adhesives for floor, ceiling and wall tiles; Chemical
additives for use as binding agents in concrete, feed pellets;
Chemical compounds for curing concrete; Concrete
additives; Concrete admixtures; Epoxy glue for general
bonding and repair purposes; Industrial gluing agents;
Scale removing preparations, other than for household
purposes; Waterproofing chemical compositions for articles
of fabric; Waterproofing chemical compositions for articles
of masonry, wood and other building and/or construction
surfaces; Waterproofing membranes in liquid chemical
form for use in construction.

1 Application Serial No. 86266726 was filed on April 30, 2014, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act. The wording “TEENIAX” has no meaning in a foreign language. This
application is the subject of Opposition No. 91224663.
2 Application Serial No. 85887343 was filed on March 27, 2013, under Section 1(a) alleging a
date of first use of June 1, 2004, and a date of first use in commerce of June 5, 2005. The
wording “TEENIAX” has no meaning in a foreign language. This application is the subject of
Opposition No. 91213895.
3 Application Serial No. 86626147 was filed on May 12, 2015, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act. The wording “TEENIAX” has no meaning in a foreign language. This
application is the subject of Opposition No. 91224663.
Opposition Nos. 91213895 and 91224663
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Tenax S.p.A (“Opposer”) opposes registration of Applicant’s TEENIAX marks on
the ground of likelihood of confusion under Trademark Act Section 2(d), 15 U.S.C.
§ 1052(d).4 Opposer has pleaded ownership of the previously used and registered
mark TENAX (typed drawing)5 in Opposition Nos. 91213895 (’895) and 91224663
(’663) for the following goods:
Adhesives for use in the gravestone sector, namely for
marble, granite, natural stones, marble and granite
powder agglomerates, porcelain stoneware; unprocessed
synthetic and artificial epoxy resins for use in the
gravestone sector, namely for marble, granite, natural
stones, marble and granite powder agglomerates,
porcelained stoneware in International Class 1;
Waxes for polishing stones, ceramics and the like in
International Class 3;
Machine parts, namely blades, blades for power saws,
blades with diamond coated segments, grindstones; power-
operated segments and discs with diamond coated
segments for planning, polishing and cutting stones,
ceramics and the like in International Class 7. 6
Opposer has also pleaded the registration TENAX (typed drawing) in Opposition
No. 91213895 for the following goods:

4 In Opposition No. 91213895, the notice of opposition also references a possible claim of
dilution under Section 43(c) of the Trademark Act, 15 U.S.C. § 1125(c). However, this claim
was not sufficiently pleaded. Opposer did not plead that its mark was famous before the first
use of Applicant’s mark. Moreover, Opposer did not pursue this claim in its brief. In view
thereof, we consider any possible dilution claim to have been waived.
5 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. ProMark Brands Inc. v. GFA
Brands, Inc., 114 USPQ2d 1232, 1236 n.5 (TTAB 2015) (citing Trademark Manual of
Examining Procedure § 807.03(i)).
6 Registration No. 2591547, issued July 9, 2002; renewed.
Opposition Nos. 91213895 and 91224663
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Machine parts, namely, abrasive blocks for polishing
machines of lapidary materials in International Class 7.7
Applicant filed answers denying the salient allegations in the notices of
opposition.
In each opposition, each party filed a trial brief and Opposer filed a reply brief.
Because the oppositions involve the same issues and nearly identical records, we
hereby consolidate them and issue a single opinion for both oppositions. Citations to
the record are to Opposition No. 91213895, unless otherwise noted.8
I. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the files of the involved applications. In addition, Opposer
introduced a notice of reliance upon Applicant’s interrogatory and document
responses in Opposition No. 91213895, a notice of reliance upon Applicant’s responses
to interrogatory requests, document requests, and requests for admissions in
Opposition No. 91224663, notices of reliance upon Internet documents in Opposition
Nos. 91213895 and 912246639, and in both oppositions, the declaration testimony of
Andrea Barbieri, Operative Coordinator of Tenax Group, Stefano Fioratti, General

7 Registration No. 2290107 issued November 2, 1999; renewed.
8 References to the briefs and the record refer to the Board’s TTABVUE docket system.
9 The product catalogs that are duplicative of exhibits to Opposer’s declaration testimony are
superfluous. Entex Indus., Inc. v. Milton Bradley Co. 213 USPQ 1116, 1117 n.1 (TTAB 1982).
The Internet web page evidence lacking a URL and product catalogs (or pages) that lack a
date of publication have not been considered. Trademark Rule 2.122(e)(2), 37 C.F.R. §
2.122(e)(2); Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031, 1039 (TTAB 2010). With
its notice of reliance, it appears Applicant provided some of these same webpages, translated,
and properly authenticated by containing a URL and date.
Opposition Nos. 91213895 and 91224663
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Manager of Tenax Group and General Manager of Tenax S.p.A., Tatiana Savoia,
Marketing Coordinator of Tenax Group, and Filippo Emanuel, General Manager of
Tenax U.S.A.10 Applicant, in both oppositions, introduced a notice of reliance upon
Internet documents and the affidavit testimony of Du Kunwu, General Manager of
Applicant.
II. Standing
Opposer has properly made its pleaded registrations of record by submitting
certified copies by way of notice of reliance.11 Trademark Rule 2.122(d)(1)-(2), 37
C.F.R. §§ 2.122(d)(1)-(2). In view thereof, we find Opposer has established its personal
interest in this proceeding and proven its standing. Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lincoln Nat’l Corp. v.
Anderson, 110 USPQ2d 1271, 1274 (TTAB 2014). See also Lipton Indus., Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
III. Priority
Because Opposer has made its pleaded registrations of record and shown they are
valid and subsisting, priority is not an issue in this case as to the TENAX marks for
the goods recited in those registrations.12 King Candy, Inc. v. Eunice King’s Kitchen,

10 Tenax U.S.A. is a partially-owned subsidiary to Tenax Group. The exact relationship
between Tenax S.p.A. and Tenax Group has not been explained by any of Opposer’s
declarants.
11 ’895 Opposition, 45 TTABVUE 6-11; ’663 Opposition. 17 TTABVUE 6-11.
12 ’895 Opposition, 45 TTABVUE 6-11; ’663 Opposition. 17 TTABVUE 6-11.
Opposition Nos. 91213895 and 91224663
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Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). Applicant states in its briefs
that it does not contest priority.13
IV. Likelihood of Confusion
We now turn our attention to the likelihood of confusion analysis. We consider
Opposer’s pleaded registered marks vis-à-vis the marks in the involved applications.
Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1162 (Fed. Cir. 2014). In our analysis we will focus on Opposer’s registered
mark and the class of goods which can be considered closest to the goods in the subject
applications, namely Registration No. 2591547 and its International Class 1 goods.
Fiserv, Inc. v. Elec. Transaction Sys. Corp., 113 USPQ2d 1913, 1917 (TTAB 2015).
Our determination under Trademark Act Section 2(d) is based on an analysis of
all of the facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). Opposer must establish that there is a likelihood of
confusion by a preponderance of the evidence.
A. Similarity of the Marks
As to the first du Pont factor, “similarity or dissimilarity of the marks,” we analyze
“the marks in their entireties as to appearance, sound, connotation and commercial
impression.” In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012) quoting In re E.I. du Pont, 177 USPQ at 567. See also Palm Bay Imports Inc. v.

13 ’895 Opposition, 55 TTABVUE 7; ’663 Opposition, 23 TTABVUE 7.
Opposition Nos. 91213895 and 91224663
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Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689,
1691 (Fed. Cir. 2005) (quoting In re E.I. 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) (citation omitted). The focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
trademarks. See Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB
2014); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Applicant’s mark is TEENIAX and Opposer’s mark is TENAX. While
acknowledging the differences in the marks i.e., the additional vowels “E” and “I” in
Applicant’s mark, we find that the visual similarities outweigh these differences.
Both marks are similarly constructed, having “TE” as the first two letters, “AX” as
the last two letters, and the letter “N” in the middle. Consumers viewing the marks
could easily overlook the additional “E” and the “I” in Applicant’s marks.
As to sound, there is no correct pronunciation of a trademark. See In re Belgrade
Shoe, 411 F.2d 1352, 162 USPQ 227, 227 (CCPA 1969). The marks are capable of
being pronounced so as to sound similar, with consumers pronouncing the letters
“TE” in Opposer’s mark and the letters “TEE” in applicant’s mark with a long “E”
Opposition Nos. 91213895 and 91224663
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sound.14 Although Applicant argues that the marks differ in pronunciation because
Applicant’s mark is three syllables,15 while Opposer’s mark is two syllables,
consumers could easily overlook the letter “I” which precedes “AX” in Applicant’s
mark by not articulating that vowel as a long “E” sound when pronouncing the mark.
As to meaning, Opposer has stated in its briefs that its TENAX mark is an
“arbitrary construction in the English language with no inherent meaning,”16 while
according to Applicant’s testimony,17 TEENIAX is coined word.18 We would have to
assume that most consumers would view both of these marks as being coined and
would not be able to create a distinction based upon any clear difference in meanings.
Given the similarities in sound and appearance, the marks engender similar overall
commercial impressions.
We find the marks as a whole are more similar than dissimilar, and this du Pont
factor weighs in favor of a finding of a likelihood of confusion. See, e.g. Hercules Inc.
v. Nat’l Patent Dev. Corp., 524 F.2d 1227, 187 USPQ 668 (CCPA 1975) (HYDROLYN
and HYDRON similar); Russell Chem. Co. v. Wyandotte Chem. Corp., 337 F.2d 660,
143 USPQ 252 (CCPA 1964) (SENTOL and SENTROL similar); Blansett Pharmacal

14 Applicant acknowledges that Opposer’s mark could be pronounced “te-nax” or as “ten-ax”
55 TTABVUE 8 (’895 Opposition); 23 TTABVUE 9 (’663 Opposition).
15 Applicant submits that its mark could be pronounced either “tee-ni-ax” or “tee-niax”. Id.
16 54 TTABVUE 21.
17 49 TTABVUE 39, Declaration of Du Kunwu.
18 According to Applicant’s testimony, Applicant’s mark is derived from TENICE, itself a
coined term. TENICE is a combination of the English transliteration “TE” and the English
word “Nice” and means “specially good” or “very good.” 42 TTABVUE 39, Declaration of Du
Kunwu.

Opposition Nos. 91213895 and 91224663
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Co. v. Carmrick Labs., Inc., 25 USPQ2d 1473 (TTAB 1992) (NALEX and NOLEX
similar); Haveg Indus., Inc. v. Shell Oil Co., 199 USPQ 618 (TTAB 1978) (ELEXAR
and EXAR similar).
B. Scope of Protection
Applicant argues without evidentiary support that Opposer’s mark should be
afforded a narrow scope of protection because it is conceptually weak and
commercially weak.19 Opposer, on the other hand, argues that its mark is entitled to
broad protection because TENAX is “arbitrary and inherently distinctive.”20 We find
Opposer’s TENAX mark is a coined term, and as Opposer has not argued that its
TENAX mark is well-known or famous, it is entitled to the normal scope of protection
we accord an inherently distinctive mark. We find the sixth du Pont factor to be
neutral.
C. Similarity of the Goods
We next consider the du Pont factors regarding the similarity or dissimilarity of
the parties’ respective goods. In comparing the goods, the issue is not whether
purchasers would confuse Applicant’s and Opposer’s goods, but rather whether there
is a likelihood of confusion as to the source of those goods. In re Cook Medical Tech.
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, 831

19 Applicant has not provided any evidence of TENAX third-party registrations or use of
TENAX in the marketplace.
20 ’895 Opposition, 54 TTABVUE 21; ’663 Opposition, 22 TTABVUE 22.
Opposition Nos. 91213895 and 91224663
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(TTAB 1984). It is not necessary that the goods 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 Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83
USPQ2d 1715, 1724 (TTAB 2007)).
On the face of the respective identifications of goods themselves, some of the goods
clearly are related or encompassing of one another. See Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (Board
must compare the goods as described in the application and registration). Specifically,
Opposer’s “adhesives” are for use in the “gravestone sector” field of use and
Applicant’s are for “commercial use,” which could include the gravestone sector.
Moreover, Applicant’s “unprocessed epoxy resin” in the involved applications
encompasses Opposer’s more narrowly identified “unprocessed synthetic and
artificial epoxy resins …for use in the gravestone sector, namely for marble, granite,
natural stones, marble and granite powder agglomerates, porcelain[ed] stoneware.”
Thus, we find that Applicant’s goods are, at least in part, overlapping with Opposer’s
goods. The fact that Applicant’s identification includes other goods does not obviate
the relatedness of the legally identical goods. See, e.g., Tuxedo Monopoly, Inc. v.
General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981). This du Pont
factor weighs in favor of Opposer.
Opposition Nos. 91213895 and 91224663
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D. Channels of Trade
As to trade channels, there are no restrictions with regard to the goods in pleaded
Registration No. 2591547 and the involved applications, and we must presume that
they move in all normal and usual channels of trade and methods of distribution for
those goods and that they are available for purchase by all the usual purchasers. See
Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). With regard to the partially overlapping goods of Applicant and
Opposer, i.e., adhesives and unprocessed epoxy resin, we may presume that the
channels of trade and classes of purchasers are at least in part the same. 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 to the same classes of purchasers through the same channels of
trade”).21 We find this du Pont factor weighs in favor of finding a likelihood of
confusion.
E. Extent of Concurrent Use and Actual Confusion
In its brief and through its testimony,22 Applicant has asserted that it is not aware
of any instances of actual confusion. However, uncorroborated statements of no
known instances of actual confusion are of little evidentiary value. In re Majestic

21 While this restriction is not reflected in the identification of goods, in Serial No. 85887343,
Applicant indicates its end users are construction companies and individuals. 45 TTABVUE
19, 26, 27.
22 49 TTABVUE 40, Declaration of Du Kunwu.
Opposition Nos. 91213895 and 91224663
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Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003). Further,
we note that for Serial Nos. 86626147 and 86266726, there has presumably been no
opportunity for confusion to occur, if it was likely to occur, as Applicant filed these
applications under intent to use the mark in commerce, rather than actual use.
Applicant also has stated in its discovery responses that there have been no sales,
distribution or promotion in the United States with regard to the TEENIAX mark
and the identified goods in the intent-to-use applications.23 As to Serial No. 85887343,
Applicant has stated that the TEENIAX mark has been in use in the United States
since 2005 with direct sales to construction material suppliers and trading
companies.24 We find on this record, there is no meaningful way to gauge the absence
of actual confusion given the fact that we do not know the extent of Applicant’s use
with regard to Serial No. 85887343. In any event, the applicable test here is
likelihood of confusion, not actual confusion, and, as often stated, it is unnecessary to
show actual confusion in establishing likelihood of confusion. Herbko Int’l, Inc. Kappa
Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002). We find these du
Pont factors neutral.
F. Market Interface
Applicant asserts that the du Pont factor regarding market interface is in its favor,
as it has registered its mark in Singapore, Phillipines, Mongolia, Argentina,
Cambodia, Laos, and Russia and prevailed in oppositions involving Opposer in China,

23 ’663 Opposition, 17 TTABVUE 16, 17.
24 ’895 Opposition, 45 TTABVUE 16, 19, 26.
Opposition Nos. 91213895 and 91224663
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Vietnam, Thailand, Indonesia, Brazil, Malyasia, India and Hong Kong. However,
registration of Applicant’s mark outside the United States is not relevant for purposes
of our determination as registration in a foreign country does not ensure eligibility
for registration in the United States. In re Rath, 402 F.3d 1207, 74 USPQ2d 1174,
1179 (Fed. Cir. 2005); Double J of Broward Inc. v. Skalony Sportswear GmbH, 21
USPQ2d 1609, 1612 (TTAB 1991). We find this du Pont factor to be neutral.
G. Good Faith Adoption
Applicant argues that it adopted its mark in good faith. However, it is settled that
while evidence of bad faith adoption typically will weigh against an applicant, good
faith adoption typically does not aid an applicant attempting to establish no
likelihood of confusion. See J & J Snack Foods Corp. v. McDonald’s Corp., 18 USPQ2d
1889, 1891 (Fed. Cir. 1991). Thus, this du Pont factor also is neutral.
VII. Conclusion
We have considered all of the evidence pertaining to the relevant du Pont factors,
as well as the parties’ arguments with respect thereto (including any evidence and
arguments not specifically discussed in this opinion). In balancing the relevant du
Pont factors, we conclude that the similarity of the marks, the similarity of the goods,
and the overlapping trade channels and classes of purchasers favor a likelihood of
confusion with the goods identified in Registration No. 2591547.25

25 To the extent that any other du Pont factors for which no evidence or argument was
presented may be applicable, we treat them as neutral. With regard to Opposition No.
91213895, we need not consider the issue of likelihood of confusion with respect to Opposer’s
pleaded Registration No. 2290107 in view of our finding of likelihood of confusion with respect
Opposition Nos. 91213895 and 91224663
- 14 -

Decision: Opposition Nos. 91213895 and 91224663 are sustained on the basis of
likelihood of confusion with the mark in Registration No. 2591547, and registration
to Applicant’s application Serial Nos. 85887343, 86266726 and 86626147 is refused.

to Registration No. 2591547. See, e.g., See Multisorb Techs., Inc. v. Pactiv Corp., 109 USPQ2d
1170, 1171 (TTAB 2013); In re Max Capital Group Ltd., 93 USPQ2d 1243, 1243 (TTAB 2010).