United Coatings

Trademark Trial and Appeal Board

Jun 26, 2003

No. 76233386 (T.T.A.B. Jun. 26, 2003)

Mailed: 26 JUN 2003
Paper No. 10
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re United Coatings
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Serial No. 76/233,386
_______
Mark W. Hendricksen of Wells St. John P.S. for United
Coatings.
Jeffrey S. DeFord, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
_______
Before Simms, Walters and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On March 30, 2001, United Coatings (applicant)
applied to register the mark ROOF MATE (in typed form) on
the Principal Register for goods ultimately identified as
“acrylic elastomer coating fluid applied roofing membrane;
exterior paint; paint primer” in International Class 2.1
1 Serial No. 76/233,386. The application contains an allegation
of a date of first use and a date of first use in commerce of
December 31, 1983. In its reply brief (p. 1), applicant has
agreed to disclaim the word “Roof.”
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 76/233,386
2
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 prior registration for
the mark ROOFMATE, in typed form, for “roof insulation” in
International Class 19.2 When the refusal was made final,
this appeal followed.
The examining attorney argues that “the only
difference between the marks is a space between the two
word elements ROOF and MATE in applicant’s mark.” Brief at
6. The examining attorney also found that the goods are
highly related and that the channels of trade are the same.
These factors lead the examining attorney to conclude that
there was a likelihood of confusion under Section 2(d).
Applicant does not seriously dispute the factors that
the marks are similar and that the goods are related, but
applicant instead argues that the lack of actual confusion
demonstrates that confusion is not likely.
In many trademark applications and trademark
litigation, the court or trier of fact is left with
the speculative decision of whether there is likely to
be confusion, based upon numerous factors that may be
considered. In cases such as this however, where
there are eighteen years of concurrent use, that
speculation is removed and the mere fact of eighteen
years concurrent use without any known instances of
actual confusion and without any protest or issues
2 Registration No. 728,153 issued March 6, 1962. Office records
show that the registration was renewed for a second time on April
2, 2002.
Ser No. 76/233,386
3
raised by the prior registrant, removes the
speculation and conclusively shows that there is no
likelihood of confusion or actual confusion.
Applicant’s Brief at 3 (emphasis in original).
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 Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000). In considering the
evidence of record on these factors, we must keep in mind
that “[t]he 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.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
We begin our analysis by looking at the similarities
and dissimilarities of the marks in the application and
registration. The marks are identical except for the fact
that applicant’s mark includes a space while registrant’s
mark is spelled as one word. The absence of the space does
not significantly change the appearance of the marks.
Stockpot, Inc. v. Stock Pot Restaurant, Inc., 220 USPQ 52,
54 (TTAB 1983), aff’d, 737 F.2d 1576, 222 USPQ 665 (Fed.
Ser No. 76/233,386
4
Cir. 1984) (“There is no question that the marks of the
parties [STOCKPOT and STOCK POT] are confusingly similar.
The word marks are phonetically identical and visually
almost identical”); In re Best Western Family Steak House,
Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be little
doubt that the marks [BEEFMASTER and BEEF MASTER] are
practically identical”). In addition, the marks would be
pronounced identically, and their meanings and commercial
impressions would be virtually the same, if not identical.
The near-identical nature of the marks is a significant
factor in the likelihood of confusion analysis. In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed.
Cir. 1993) (“Without a doubt the word portion of the two
marks are identical, have the same connotation, and give
the same commercial impression. The identity of the words,
connotation, and commercial impression weighs heavily
against the applicant”).
Regarding the goods, they are, at the very least,
related. “In order to find that there is a likelihood of
confusion, it is not necessary that the goods or services
on or in connection with which the marks are used be
identical or even competitive. It is enough if there is a
relationship between them such that persons encountering
them under their respective marks are likely to assume that
Ser No. 76/233,386
5
they originate at the same source or that there is some
association between their sources.” McDonald's Corp. v.
McKinley, 13 USPQ2d 1895, 1898 (TTAB 1989). See also In re
Opus One Inc., 60 USPQ2d 1812, 1814-15 (TTAB 2001).
In this case, we find that, at the very least, there
is some relation between the goods of applicant and
registrant. Applicant’s goods are a type of roofing
membrane, exterior paint and paint primer while
registrant’s goods are roofing insulation. In its
specimens, applicant indicates that: “Superior
weatherability, ultraviolet resistance, fire retardancy,
elongation, flexibility, adhesion, and ease of application
make the ROOF MATE system an excellent protective
elastomeric barrier for extending the life of most roofing
substrates.” Registrant’s goods are roofing insulation.
From the identification of goods and applicant’s specimens,
it is clear that applicant’s roofing membrane and
registrant’s roofing insulation would be used together in
maintaining, repairing, or constructing roofs to make them
more effective.
The examining attorney has introduced some evidence
that shows that roofing and insulation products are
registered by the same entity under a common mark. See,
e.g., Registration No. 2,390,161 (insulating products and
Ser No. 76/233,386
6
roofing membranes); No. 1,815,592 (asphalt roofing cement
and fiberboard edge strips for use in conjunction with roof
insulation); and No. 2,357,876 (insulation and roofing
shingles).3 These registrations add additional support for
the finding that roofing membranes and roofing insulation
are related. See In re Mucky Duck Mustard Co., 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 have some probative value
to the extent that they may serve to suggest that such
goods or services are the type which may emanate from a
single source”). See also In re Albert Trostel & Sons Co.,
29 USPQ2d 1783, 1786 (TTAB 1993).
We also have no basis to hold that the channels of
trade and the purchasers of these products would not be
similar if not overlapping. Potential purchasers
interested in fixing or constructing a roof would often be
interested in a barrier that extends the life of the roof
as well as an insulating barrier that prevents heating or
cooling loss. Even if we assume that the purchasers for
3 We have not considered the numerous registrations that are not
based on use in commerce. Similarly, we do not find that several
other registrations that contain an identification of goods for a
single product that happens to use the terms “roofing” and
“insulation” to be relevant.
Ser No. 76/233,386
7
these products are sophisticated, they are still subject to
being confused when virtually identical marks are used on
roofing insulation and roofing membranes. 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”).
Therefore, we conclude that when the marks ROOF MATE
for acrylic elastomer coating fluid applied roofing
membrane, exterior paint, and paint primer and ROOFMATE for
roofing insulation are used by different parties, there is
a likelihood of confusion.
To rebut the examining attorney’s holding that there
is a likelihood of confusion, applicant’s primary, if not
exclusive, argument as we indicated earlier is its
assertion that there has been no actual confusion for
eighteen years. We do not find this argument persuasive
for several reasons. First, this assertion is simply
argument of counsel unsupported by any evidence. Second,
applicant has submitted no evidence in this case so there
is no indication of the nature and extent of how applicant
Ser No. 76/233,386
8
has marketed its product. Third, unlike the cases that
applicant cites, this is an ex parte proceeding and
registrant has not had an opportunity to contradict
applicant’s statement. The Federal Circuit has recently
addressed the question of the weight to given to an
assertion of no actual confusion by an applicant in an ex
parte proceeding.
With regard to the seventh DuPont factor, we agree
with the Board that Majestic's uncorroborated
statements of no known instances of actual confusion
are of little evidentiary value. See In re Bissett-
Berman Corp., 476 F.2d 640, 642, 177 USPQ 528, 529
(CCPA 1973) (stating that self-serving testimony of
appellant's corporate president's unawareness of
instances of actual confusion was not conclusive that
actual confusion did not exist or that there was no
likelihood of confusion). A showing of actual
confusion would of course be highly probative, if not
conclusive, of a high likelihood of confusion. The
opposite is not true, however. The lack of evidence
of actual confusion carries little weight, J.C. Hall
Co. v. Hallmark Cards, Inc., 52 C.C.P.A. 981, 340 F.2d
960, 964, 144 USPQ 435, 438 (CCPA 1965), especially in
an ex parte context.
Majestic Distilling, 65 USPQ2d at 1205.
We also note that even in inter partes cases, the lack
of actual confusion does not compel a conclusion that there
is no likelihood of confusion. Giant Food, Inc. v.
Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390,
396 (Fed. Cir. 1983); J & J Snack Foods Corp. v. McDonald’s
Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1892 (Fed. Cir.
1991). When the marks are virtually identical and the
Ser No. 76/233,386
9
goods are roofing insulation and membranes, the unsupported
statement of applicant’s attorney that there is no evidence
of actual confusion carries little weight. Finally, we add
that “this is a proceeding in which registrant has no
opportunity to be heard on this question and it is the
practice to resolve doubt under Section 2(d) with the
registrant.” In re Mayco Mfg., 192 USPQ 573, 576 (TTAB
1976).
Decision: The examining attorney’s refusal is
affirmed.