The Valspar Corp.

Trademark Trial and Appeal Board

Mar 12, 2002

No. 75814381 (T.T.A.B. Mar. 12, 2002)

3/12/02

Paper No. 12
ejs

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re The Valspar Corporation
________

Serial No. 75/814,381
_______

Kristina M. Foudray of Merchant & Gould PC for The Valspar
Corporation.

Brian A. Rupp, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney)
_______

Before Simms, Seeherman and Chapman, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

The Valspar Corporation has appealed from the final
refusal of the Trademark Examining Attorney to register
ELECTROGARD as a trademark for “protective and decorative
coatings applied by electro-deposition application in the
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/814,381
2
nature of industrial finishes.”1 Registration has been
refused pursuant to Section 2(d) of the Trademark Act, 15
U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the marks listed below, which are registered by
two different entities, as to be likely, if applied to
applicant’s identified goods, to cause confusion or mistake
or to deceive:
ELEKTROGUARD for “silicone elastomers
for electrical coatings potting
compounds, encapsulants and silicone
gels”;2 and

ELECTRI-GUARD for “anti-corrosion
coating for the protection of
electrical connections.”3

The appeal has been fully briefed; applicant did not
request an oral hearing.
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 re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between

1 Application Serial No. 75/814,381, filed October 4, 1999,
based on an asserted bona fide intention to use the mark in
commerce.
2 Registration No. 1,621,851 issued November 13, 1990; Section 8
affidavit accepted; Section 15 affidavit received; renewed.
3 Registration No. 2,152,035, issued April 21, 1998.
Ser No. 75/814,381
3
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Turning first to the marks, applicant’s mark
ELECTROGARD is virtually identical to the cited marks,
ELEKTROGUARD and ELECTRI-GUARD, in pronunciation, and it is
very similar in appearance, although we acknowledge that
there are minor differences in spelling, and that the “K”
in ELEKTROGUARD might, because of the misspelling, be
noticeable, and the hyphenation in ELECTRI-GUARD might
cause the two words making up that mark to stand out.
There are some differences in connotation, in that the
prefix ELECTRO/ELEKTRO/ELECTRI in the respective marks
suggests different things because of the goods with which
each mark is used. Specifically, in applicant’s mark
ELECTRO would be perceived as referring to the manner in
which the coatings are applied, while in ELEKTROGUARD it
would refer to the electrical coatings, and in ELECTRI-
GUARD it would indicate the use in protecting electrical
connections.
We also note that the cited marks must, because of
their highly suggestive nature, be treated as weak marks
which are entitled to a limited scope of protection. As
applicant points out, the record supports the weakness of
the marks, in view of the fact that the ELECTRI-GUARD
Ser No. 75/814,381
4
registration issued despite the existence on the register
of the ELEKTROGUARD registration, while the ELEKTROGUARD
registration, and in some cases, the ELECTRI-GUARD
registration coexisted on the register at one point with
other ELECTRO-prefix marks for various coatings. Although
we do not have the records of these files before us, and
therefore cannot determine what factors went into the
decisions to allow the registrations, the registrations do
show that ELECTRO, in particular, is a highly suggestive
term for such goods.
With respect to the goods, there are clear differences
between applicant’s protective and decorative coatings,
applied by electro-deposition application, in the nature of
industrial finishes, and the “anti-corrosion coating for
the protection of electrical connections” identified in the
ELECTRI-GUARD registration. The Examining Attorney, while
candidly admitting that he possesses no special knowledge
about the industry, claims that the term “industrial
finishes” is extremely vague and broad,4 and that
“protective and decorative coatings” would encompass

4 We note that the Examining Attorney accepted applicant’s
proposed identification of goods. If, indeed, the Examining
Attorney believed that “industrial finishes” is extremely vague,
he should have required a more definite identification of goods
or information regarding applicant’s goods. We would add that we
see no infirmity with the identification.

Ser No. 75/814,381
5
“anti-corrosion coating” while coatings for “industrial
finishes” would encompass “coating for the protection of
electrical connections.” Although it is true that the
likelihood of confusion analysis must be based on the goods
as they are identified in the application and the cited
registration, we think the Examining Attorney goes too far
in both parsing the applicant’s and registrant’s
identifications and in merely assuming that coatings for
industrial finishes would encompass coatings for the
protection of electrical connections. There is no evidence
in the record that would allow us to draw such a
conclusion. Certainly the dictionary definitions for
“industrial” and “finish” that the Examining Attorney asks
us to judicially notice do not support this position. Nor
is there any evidence that anti-corrosion coating for the
protection of electrical connections could be applied by
electro-deposition, or that protective coatings applied by
electro-deposition and which are in the nature of
industrial finishes would or could be used for the
protection of electrical connections.
The Board has previously stated that the fact that the
goods of the parties can be described by a particular word
is not a sufficient basis for finding the goods to be
related. See Harvey Hubbell Incorporated v. Tokyo Seimitsu
Ser No. 75/814,381
6
Co., Ltd., 188 USPQ 517 (TTAB 1975) (“the mere fact that
the term ‘electronic’ can be used to describe any product
that includes an electronic device does not make a
television set similar to an electronic microscope, or an
electronic automotive ignition system similar to
telemetering devices”); In re Cotter and Company, 179 USPQ
828 (TTAB 1973). However, that is what the Examining
Attorney would have us do, if we were to conclude that
“protective and decorative coatings applied by electro-
deposition application in the nature of industrial
finishes” encompass “anti-corrosion coating for the
protection of electrical connections.”
Similarly, the record does not support a finding that
applicant’s goods and the “silicone elastomers for
electrical coatings potting compounds, encapsulants and
silicone gels” which are identified in the ELEKTROGUARD
registration are related. We should acknowledge, as the
Examining Attorney did with respect to applicant’s goods,
that the nature of this registrant’s goods is not entirely
clear to us. It appears to us that there is a
typographical error consisting of a missing comma in the
identification, and that the goods should be identified as
“silicone elastomers for electrical coatings, potting
compounds, encapsulants and silicone gels”; in other words,
Ser No. 75/814,381
7
the registrant’s goods are silicone elastomers which are
used for a variety of items. This conclusion is supported
by the fact that the goods are classified in Class 1, the
chemicals class, and not in Class 2, which is the
appropriate classification for coatings such as applicant’s
and the ELECTRI-GUARD registrant’s goods.
Although the Examining Attorney contends that the
wording “protective and decorative coatings” in applicant’s
identification could encompass silicone elastomers, that
assertion is not supported by the record, and is
contradicted by applicant. As applicant points out, an
elastomer is “any of various elastic substances resembling
rubber.”5 Applicant’s goods, on the other hand, are
specifically identified as being “applied by electro-
deposition application” and therefore they cannot be
elastomers.
It must also be remembered that the goods in the
application and the cited registrations are all products
which are purchased with a degree of care by people
sophisticated in the industry. Such purchasers are not
likely to believe that protective and decorative coatings

5 Merriam Webster’s Collegiate Dictionary, submitted with
applicant’s reply brief. The Board may take judicial notice of
dictionary definitions. University of Notre Dame du Lac v. J. C.
Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d,
703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser No. 75/814,381
8
applied by electro-deposition application in the nature of
industrial finishes come from the same source as silicone
elastomers for electrical coatings, or from the same source
as coating for the protection of electrical connections
simply because the goods are all used in a coating process.
Moreover, there is no evidence that applicant’s goods and
the goods in the cited registrations would be used for the
same purposes or that they would be sold to the same class
of purchasers.
In reaching our conclusion that there is no likelihood
of confusion, we have considered the third-party
registrations submitted by the Examining Attorney, but do
not find them to be persuasive. Third-party registrations
which individually cover a number of different items and
which are based on use in commerce serve to suggest that
the listed goods and/or services are of a type which may
emanate from a single source. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993). However, our review
of the third-party registrations does not reveal
identifications which cover both the goods identified in
applicant’s application and those identified in either of
the cited registrations. Similarly, the evidence from
applicant’s website that indicates applicant’s mission “is
to be the recognized leader in the coatings industry” and
Ser No. 75/814,381
9
that it is “one of the five largest North American
manufacturers of paints and coatings” is not sufficient to
prove that applicant’s identified coatings are related to
the goods in the cited registrations. Nor can we find that
consumers will assume a common source simply because
applicant is a large company which sells a wide variety of
coatings. There is no evidence from the website that
indicates either that applicant makes coatings such as the
registrants’, or that applicant markets its different
coatings under the same product mark.
Decision: The refusals of registration with respect
to Registration Nos. 1,621,851 and 2,152,035 are reversed.