The Valspar Corporation

Trademark Trial and Appeal Board

Jul 21, 1998

No. 74722274 (T.T.A.B. Jul. 21, 1998)

Paper No. 9
GDH/lv
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 21, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re The Valspar Corporation
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Serial No. 74/722,274
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John A. Clifford of Merchant Gould Smith Edell Welter & Schmidt
for applicant.
Adam C. Striegel, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______
Before Cissel, Hanak and Hohein, Administrative Trademark Judges.
Opinion by Hohein, Administrative Trademark Judge:
An application has been filed by The Valspar
Corporation to register the mark "FLUROPON HARDCOAT" for an
"industrial coating in the nature of paint for use in the field
of architectural metal finishing".1

1 Ser. No. 74/722,274, filed on August 29, 1995, which alleges dates of
first use of April 30, 1993. The term "HARDCOAT" is disclaimed.
Ownership is claimed of the following subsisting registrations: Reg.
No. 810,730, issued on July 5, 1966, for the mark "FLUROPON" for
"protective and decorative corrosion-resistant coatings for exposed
surfaces, including hardware, for domestic, commercial and/or
industrial buildings" and Reg. No. 1,302,336, issued on October 30,
1984, for the mark "FLUROPON CLASSIC" for an "industrial finish in the
nature of a paint".
Ser. No. 74/722,274
2
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its goods, so resembles each of
the following marks, which are owned by different registrants, as
to be likely to cause confusion, mistake or deception:
(i) the mark "HARDCOTE," which is
registered on the Principal Register, in the
block letter format reproduced below,
for "finishes--namely, clear varnish and all
colors of enamel made from that varnish, used
as a protective or beautifying coat for all
interior and exterior surfaces usually
enameled";2 and
(ii) the mark "HARDCOAT," which is
registered on the Supplemental Register for a
"coating in the nature of a paint for use in
creating a paintable surface for industrial
applications".3
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We reverse the refusal to
register in each instance.
Turning first to consideration of the respective goods,
the Examining Attorney argues that "[t]he goods are closely
related and sufficiently similar" inasmuch as "both the
applicant's and registrants' goods involve similar coatings. In
particular, the Examining Attorney contends that it is "common

2 Reg. No. 722,985, issued on October 10, 1961 and currently owned by
the Bisonite Company, Inc., which sets forth dates of first use of
1920; first renewal.
3 Reg. No. 1,888,072, issued on April 4, 1995 and presently owned by
the T C Manufacturing Co., Inc., which sets forth dates of first use
of November 5, 1993.
Ser. No. 74/722,274
3
knowledge that paints and varnishes are sold at the same stores
and are found side by side on the shelves of the stores that
carry these items, such as paint stores, hardware stores, and
home improvement stores."4 Furthermore, inasmuch as the other
"registrant’s paints are described as a ’paint’ for ’industrial
applications,’ and applicant’s goods are described as an
’industrial paint’ with further limiting language," the Examining
Attorney insists that applicant’s goods are encompassed by the
language of "the second registrant’s more broadly described
goods".
However, as applicant points out in its brief, its
goods are not just paints but are, instead, an industrial coating
in the nature of paint for use in the field of architectural
metal finishing. Thus, while the varnishes marketed by one of
the registrants is similarly used on wood on metal as a
protective and beautifying coat for both interior and exterior
surfaces,5it is nevertheless the case that, as asserted by

4 Although the Examining Attorney also asserts, in this regard, that
the Board has held "varnishes ... to be clearly related and
sufficiently similar to paints under Section 2(d) of the Trademark
Act," the case cited by the Examining Attorney in support of such
proposition, Conchemco, Inc. v. American Hardware Supply Co., 155 USPQ
767 (TTAB 1967), was reported in digest form. As the Board announced
in General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270, 1275
(TTAB 1992) at n. 9, the "citation of ... ’digest’ Board decisions as
precedent will no longer be allowed," and thus will be disregarded
(except in certain limited circumstances not applicable herein), since
"such decisions are meaningless as precedent because they fail to
report the facts on which the decisions were based." Accordingly, no
further consideration will be given to the Examining Attorney’s
reliance upon the digest opinion cited in his brief.
5 We judicially notice, in this regard, that Webster’s New World
College Dictionary (3d ed. 1997) at 1477 defines "varnish" as, inter
alia, "1 a) a preparation made of resinous substances dissolved in oil
Ser. No. 74/722,274
4
applicant, the purchasers of its goods "are commercial
manufacturers [who] are highly skilled and experienced in the
purchase of such goods". Those goods, applicant additionally
notes, are purchased with care and deliberation, rather than
impulsively, since "architectural metal finishing requires a
higher degree of skill, experience, and equipment than is
typically found for varnishing on common painting". Moreover,
while the other registrant’s goods, like those of applicant, are
concededly industrial coatings, we note that, as applicant
insists, "purchasers are likely to be able to easily distinguish
the goods of the parties," and hence would expect differences as
to their source, inasmuch as the other registrant’s goods are for
use in creating a paintable surface rather than in finishing
architectural metal products. The respective goods, in short,
are specifically different.
Nevertheless, even if applicant’s goods are considered
to be closely related or sufficiently similar to the goods of
each of the registrants, we agree with applicant that, in view of
the highly suggestive nature of the mark "HARDCOTE" and the mere
descriptiveness of the designation "HARDCOAT," contemporaneous
use of applicant’s "FLUROPON HARDCOAT" mark and the registrants’
respective "HARDCOTE" and "HARDCOAT" marks is not likely to cause

(oil varnish) or in alcohol, turpentine, etc.(spirit varnish), used to
give a hard, glossy surface to wood, metal, etc. b) any of various
natural or prepared products used for the same purpose 2 the hard,
glossy surface produced ...." It is settled that judicial notice may
properly be taken of dictionary definitions. See, e.g., Hancock v.
American Steel & Wire Co. of New Jersey, 203 F.2d 737, 97 USPQ 330,
332 (CCPA 1953) and University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser. No. 74/722,274
5
confusion as to the source or sponsorship of the goods marketed
thereunder. As applicant observes:
It is common to consider a "coat" of
paint as the layer of paint applied to an
object. For a protection layer on an object
to be "hard" is easily anticipated by
consumers. Therefore, the term HARD COAT (of
HARDCOTE) [or of HARDCOAT] is a relatively
[highly suggestive or merely] descriptive
term for a protective coating. The goods
listed in both of the cited registrations are
just such protective coats. The mark
HARDCOTE, and the mark HARD COAT [sic] should
not be given a broad scope of protection.
The Examining Attorney nevertheless argues that, in
addition to the "HARDCOAT" portion of applicant’s "FLUROPON
HARDCOAT" mark being identical, or essentially so, to each of the
registered "HARDCOTE" and "HARDCOAT" marks in sound, appearance,
meaning and commercial impression, "it is well settled that the
mere addition of a term to a registered mark is not sufficient to
overcome a likelihood of confusion under Section 2(d)". A more
accurate statement of such principle, however, is set forth, for
example, in In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984), in
which the Board pointed out that:
[T]here is a general rule that a
subsequent user may not appropriate another’s
entire mark and avoid likelihood of confusion
therewith by merely adding descriptive or
otherwise subordinate matter to it. See:
Bellbrook Dairies, Inc. v. Hawthorn Melody
Farms Dairy, Inc., 253 F.2d 431, 117 USPQ 213
(CCPA 1958), and In re South Bend Toy
Manufacturing Co., Inc., 218 USPQ 479 (TTAB
1983). An exception to the rule may be found
in those cases where the appropriated mark is
highly suggestive or merely descriptive or
has been frequently used by others in the
field for the same or related goods or

Ser. No. 74/722,274
6
services. See: In re Hunke & Jochheim, 185
USPQ 188 (TTAB 1975) and Jean Patou, Inc. v.
Jacqueline Cochran, Inc., 133 USPQ 242 (SDNY
1962), affirmed[,] 312 F.2d 125, 136 USPQ 236
(2nd Cir. 1963).
In the same vein, and thus likewise applicable to this case, the
Board in Johnson Publishing Co., Inc. v. Cavin & Tubiana OHG, 196
USPQ 383, 387 (TTAB 1977), noted that:
It is recognized that, in determining the
question of likelihood of confusion, the
marks in issue must be considered in their
entireties because that is the manner in
which they are encountered in the
marketplace. But, it is equally well settled
that the disclaimed portion may be given less
weight in a composite mark than the remaining
arbitrary portion on the theory that
individuals would recognize the descriptive
character of the disclaimed portion and look
to the remaining part as the source
indicator.
See also In re National Data Corp., 753 F.2d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985).
Applying the above principles to this case, applicant’s
mark is readily distinguished by the arbitrary term "FLUROPON,"
given the mere descriptiveness of the designation "HARDCOAT" as
confirmed by applicant’s compliance with the requirement for a
disclaimer thereof. Plainly, such designation, as applied to
industrial coatings, describes the tough or durable finish or
coat provided thereby. Similarly, when used in connection with
varnishes, the term "HARDCOTE" is highly suggestive of the hard
surface produced by such products and, accordingly, the term
"HARDCOTE," like its phonetic equivalent "HARDCOAT," is entitled
to only a very limited scope of protection, as urged by
applicant.
Ser. No. 74/722,274
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Consequently, and keeping in mind that industrial
coatings and varnishes of the kinds involved herein are typically
bought by sophisticated and discriminating purchasers who would
exercise a high degree of care and deliberation given the
quantities in which such products are customarily purchased and
the nature of the industrial applications in which the goods are
used, customers for applicant’s goods would rely primarily on the
arbitrary term "FLUROPON" as the source indicative element of
applicant’s "FLUROPON HARDCOAT" mark and would attribute to the
designation "HARDCOAT" its merely descriptive significance. In
view thereof, and in light of the highly suggestive connotation
of the mark "HARDCOTE" for varnishes for interior and exterior
finishing and the descriptive significance of the mark "HARDCOAT"
for coatings in the native of paint for creating a paintable
surface in industrial applications, contemporaneous use of
applicant’s "FLUROPON HARDCOAT" mark for an industrial coating in
the nature of a paint for use in the field of architectural metal
finishing and the registrants’ "HARDCOTE" and "HARDCOAT" marks
for their respective goods is not likely to cause confusion as to
source or sponsorship.
Decision: The refusal under Section 2(d) is reversed
in each instance.
R. F. Cissel
E. W. Hanak
Ser. No. 74/722,274
8
G. D. Hohein
Administrative Trademark Judges,
Trademark Trial and Appeal Board