U.S. Nonwovens Corporation

Trademark Trial and Appeal Board

Sep 16, 2013

No. 85284197 (T.T.A.B. Sep. 16, 2013)

Mailed: September 16, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re U.S. Nonwovens Corporation
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Serial No. 85284197
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Thomas A. O’Rourke of Bodner & O’Rourke LLP,
for U.S. Nonwovens Corporation.

Brian Pino, Trademark Examining Attorney, Law Office 114,
K. Margaret Le, Managing Attorney.
_______

Before Bucher, Wellington, and Wolfson, Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
U.S. Nonwovens Corporation has filed an application to register the mark
REDI SHINE (in standard character form) on the Principal Register for
“household cleaning tools in the nature of sponges and plastic-based cleaning
pads, namely, polishing and cleaning erasers, scouring pads and steel wool
for cleaning purposes” in International Class 21.1 Applicant has disclaimed
the term SHINE.

1 Application Serial No. 85284197 is based on an alleged date of first use anywhere
and in commerce on March 1, 2011, under Section 1(a) of the Trademark Act.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 85284197
2
The examining attorney has refused registration of applicant’s mark
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 previously registered mark
REDI-RAGS (in standard character form) for “wiping cloths” in International
Class 212; that, as used on applicant’s identified goods, applicant’s mark is
likely to cause confusion or mistake or to deceive prospective purchasers.
Applicant appealed the final refusal and filed a request for
reconsideration. The request for reconsideration was denied by the examining
attorney. Appeal briefs have been filed, including a reply brief from applicant.
For the following reasons, we affirm the refusal to register.
The Record and Previous Evidentiary Rulings
With its appeal brief, applicant attached exhibits that included lists of
third-party registrations and applications. In his appeal brief, the examining
attorney objected to certain of these exhibits3 on the ground that they are
untimely because they were not submitted prior to appeal. The examining
attorney further objected to other materials to the extent that they comprise

2 Registration No. 3153998 issued October 10, 2006. Sections 8 and 15 affidavits
have been, respectively, acknowledged and accepted.
3 The examining attorney specifically objected to Exhibits G and I-L, consisting of a
declaration from a paralegal, internet printouts involving registrant’s and third-
party products, and a Google search result. The examining attorney did not object to
Exhibit H consisting of Google search engine printouts and discussed the probative
value of these materials. The examining attorney also did not object to Exhibits: B
(copies of third-party registrations), C-F (copies of dictionary definitions), and M
(printouts showing applicant’s use of the mark REDI SHINE on packaging).
Serial No. 85284197
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mere lists of registrations and applications and not actual copies of the
registrations or applications.
In response to the examining attorney’s objections, applicant filed a
request for the Board to remand the application in order to allow applicant
time to submit copies of registrations that were previously only listed.
Applicant also argued that the other objected-to materials were previously
unavailable, and sought to introduce these materials. In an order dated April
10, 2013, the Board denied this request for remand.
Applicant then filed a request for reconsideration of the Board’s April 10,
2013 order. In an order dated June 24, 2013, the Board denied this request
for reconsideration.
Applicant then filed yet another request for reconsideration of the Board’s
June 24, 2013 order, which was subsequently denied by the Board.
The Board does not now revisit the aforementioned motions. However, we
clarify a few matters involving applicant’s evidentiary submissions. First,
applicant’s response (dated January 10, 2012) to the first Office action is of
record, including lists of third-party registrations incorporated within its
response and copies of the registrations attached thereto. As to the exhibits
filed with applicant’s appeal brief, only Exhibits B, C-F, H, and M (see
footnote 3 for description thereof) are considered of record in this appeal.4

4 The list of applications and registrations submitted with applicant’s first request
for reconsideration (filed August 20, 2012) are not considered of record. In the Office
action responding to the request for reconsideration, the examining attorney did not
discuss the listed applications and registrations or otherwise treat them as of record.
Serial No. 85284197
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In addition to the evidence attached to the Office actions, the examining
attorney attached copies of dictionary definitions for the terms “rag” and
“wipe” and requests the Board take judicial notice thereof. We agree to
consider these dictionary definitions. Univ. of Notre Dame du Lac v. J.C.
Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372,
217 USPQ 505 (Fed. Cir. 1983).
Likelihood of Confusion
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). See also, In re Majestic Distilling Co., Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion
analysis, however, two key, although not exclusive, considerations are the
similarities between the marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24 (CCPA 1976).
We first consider the du Pont factors regarding the identified goods, their
trade channels and classes of purchasers. In an ex parte appeal, likelihood of
confusion is determined on the basis of the goods as they are identified in the

And, because applicant filed its request for reconsideration simultaneously with its
appeal, there was no time for applicant to correct matters by submitting copies of
the actual registrations. See TBMP § 1208.02 (2013) and, in particular, cases cited
in Note 8. Therefore the limited exception in which the Board would consider such
listings of registrations and applications does not apply.
Serial No. 85284197
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application and the cited registration. In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1690 n. 4 (Fed. Cir. 1993); In re Elbaum, 211 USPQ 639, 640
(TTAB 1981); and In re William Hodges & Co., Inc., 190 USPQ 47, 48 (TTAB
1976).
Here, the registered goods are simply identified as “wiping cloths” and
applicant’s goods are identified as “household cleaning tools in the nature of
sponges and plastic-based cleaning pads, namely, polishing and cleaning
erasers, scouring pads and steel wool for cleaning purposes.” The examining
attorney argues that these goods are related because they all may be used for
household cleaning purposes. To support his position that registrant’s wiping
cloths may be used in the same manner as applicant’s identified goods and
will be offered in the same trade channels, the examining attorney submitted
internet evidence. This includes printouts from the Home Depot website
showing “wiping cloths” being offered alongside and under the category of
“Cloths, Rags & Sponges.” The examining attorney also submitted evidence
that applicant, itself, manufactures “rags” and “cleaning cloths or wipes.”
Finally, the examining attorney submitted numerous third-party, use-based
registrations covering wiping cloths as well as the goods of applicant, e.g.,
cleaning pads, sponges, etc. These registrations, in addition to the fact that
applicant sells the same goods as registrant, have probative value to the
extent that they suggest that wiping cloths and applicant’s household
cleaning tools are goods that could be marketed by a single source under a
Serial No. 85284197
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single mark. See In re Association of the United States Army, 85 USPQ2d
1264, 1270 (TTAB 2007); In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785-86 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467,
1470 n.6. (TTAB 1988).
Applicant’s main argument that the respective goods are dissimilar rests
in its contention that its mark is used on “household goods and Registrant’s
mark has been used for industrial use.” Brief, p. 10. However, as the
examining attorney pointed out in his brief and we repeat in this decision
above, a proper likelihood of confusion analysis takes into consideration the
goods as they are described in the application and cited registration.
We do not consider extrinsic evidence about the registrant’s actual goods,
customers, or channels of trade. Elbaum, 211 USPQ at 640, citing Kalart Co.,
Inc. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958). See
also In re Pierce Foods Corp., 230 USPQ 307, 309 (TTAB 1986) (“[I]t is clear
that applicant has restricted its goods to institutional purchasers. However,
since the cited registration is unrestricted as to channels of trade, we must
presume that registrant’s coating mix for chicken is also sold to the
institutional purchaser.”). Thus, we cannot to restrict the registrant’s wiping
cloths as being solely for “industrial use” and must consider the possibility
that they, like applicant’s goods, are for household cleaning purposes. For
example, we must consider a scenario where registrant’s wiping cloths are
offered for sale at the same retail stores, such as Home Depot, alongside the
Serial No. 85284197
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household cleaning products of applicant. In which case, they will be
encountered by the same purchasers and utilized for similar purposes.
Accordingly and based on the evidence of record, we find the du Pont
factors involving the relatedness of the goods, trade channels and classes of
purchasers favor a finding of likelihood of confusion.
We now address the similarity or dissimilarity of the marks and, at the
outset, note that applicant is the owner of a registration for the mark REDI-
GLASS for “disposable wipes impregnated with cleaning compounds for use
on glass” in International Class 3.5 We have also taken into account a key
argument made by applicant in this proceeding, namely, that the two marks
may be distinguished based on the second elements, RAGS and SHINE,
because the term REDI (or a variant thereof) is used widely by others and is
thus weak and should be accorded a limited scope of protection. Specifically,
applicant argues that “REDI is a weak commonly used term that has limited
trademark significance.” Reply brief, p. 3. In support, applicant has
submitted copies of seven registrations, including its own REDI-GLASS
registration, for goods it describes as “cleaners and are related to Applicant’s
and Registrant’s goods.” Applicant also identified seven additional
registrations covering goods not used for cleaning. As to the former group of
registrations, they include:

5 Registration No. 3397094 issued on March 18, 2008.
Serial No. 85284197
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6
Chemicals, namely well acids and sanitation
chemicals for removal of scale and bacteria in pipes
and well systems.
7
All purpose disinfectants, biocides and sanitation
products, namely calcium hypochlorite
REDI-WASH8 Apparatus for cleaning out the interiors of the
revolving drums of ready-mix concrete trucks by
washing, and separating the liquid from the solid
matter.
REDI+WASH9 Non-medicated disposable wipes impregnated with
moisturizers and cleansing compounds in the
nature of germicides for cosmetic use.
REDI-PADS10 Medicated skin care preparations, namely,
disposable pads for the treatment of acne and other
skin conditions.
REDI-SEP11 Bacterstatic additive for emergency eyewash units.

As to the latter group of seven six third-party registrations, applicant
admittedly notes that they are “not for goods used for cleaning” and we agree,
inasmuch as they cover products such as cookware lids, metal stairs for use
in accessing railcars, indicator tags for business records, etc. Accordingly,
these registrations have very little or no probative value in demonstrating
any weakness of the term or prefix REDI in connection with applicant’s or
registrant’s goods.

6 Registration No. 1980806 issued on June 18, 1996.
7 Registration No. 1990928 issued on August 6, 1996 (like Registration No. 1980806,
also owned by Continental Technologies).
8 Registration No. 0942328 issued on September 5, 1972.
9 Registration No. 3379977 issued on February 12, 2008.
10 Registration No. 3231256 issued on April 17, 2007.
11 Registration No. 1879094 issued on February 14, 1995.

Serial No. 85284197
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For several reasons, the former set of third-party registrations of record
submitted by applicant do very little to show that the prefix REDI- is a weak
term in connection with goods that are the same or similar to those identified
in the application and cited registration. First, most of the goods identified in
the first set of registrations that applicant claims involve cleaning products
are clearly used in unrelated fields. With the exception of applicant’s REDI-
GLASS registration, these third-party registrations involve industrial,
cosmetic or medical uses. Second, third-party registrations by themselves are
not evidence of actual use of the marks and we therefore cannot conclude that
consumers are even familiar with the registered marks. Bearing this in mind,
we cannot say that consumers have become accustomed to the existence of
similar marks in the marketplace and are thus able to distinguish between
similar marks based on slight differences. Smith Bros. Mfg. Co. v. Stone Mfg.
Co., 476 F.2d 1004, 177 USPQ 462 (CCPA 1973); and Richardson-Vicks, Inc.
v. Franklin Mint Corp., 216 USPQ 989 (TTAB 1982). Accordingly, we are
unconvinced to the extent that applicant seeks to persuade us to resolve the
du Pont factor regarding the weakness of registrant’s mark in applicant’s
favor.
We now address the similarity of the marks, REDI-RAGS and REDI
SHINE. Our focus is on whether the marks are similar in sound, appearance,
meaning, and commercial impression. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689
Serial No. 85284197
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(Fed. Cir. 2005). In articulating reasons for reaching a conclusion on the issue
of likelihood of confusion, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a particular feature of
a mark, provided the ultimate conclusion rests on a consideration of the
marks in their entireties. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). For example, merely descriptive matter that
is disclaimed may be accorded subordinate status relative to the more
distinctive portions of a mark. In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531, 1533-34 (Fed. Cir. 1997).
In the present case, the two marks are the combination of the prefix
REDI or REDI- followed by a single term that is either descriptive or generic
for the identified goods. As already noted, applicant has disclaimed the
descriptive second element in its mark, SHINE.12 Likewise, we find the term
RAGS in the registered mark to be descriptive, if not generic, for wiping
cloths.13
It is thus clear that the identical prefix, REDI, forms the dominant
portion of both marks. As the first and only non-descriptive element of both
marks, REDI is the term most likely to be impressed upon a prospective

12 In the first Office action, the examining required this disclaimed and attached
evidence showing that said term is descriptive of cleaning products.
13 A “rag” is defined as “a small piece of cloth, such as one torn from a discarded
garment, or such pieces of cloth collectively” (Collins Dictionary,
www.collinsdictionary.com) or as “a piece of old cloth used for cleaning or wiping”
(MacMillan Dictionary, www.macmillandictionary.com), copies submitted with
examining attorney’s appeal brief.
Serial No. 85284197
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consumer. Presto Products, Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895,
1897 (TTAB 1988) (“it is often the first part of a mark which is likely to be
impressed upon the mind of a purchaser and remembered”). See also, Palm
Bay, 73 USPQ2d at 1692. The term REDI will not only be pronounced in the
same manner but will also likely be understood as an intentional or fanciful
misspelling of the word “Ready,” in which case, both marks will possess an
equally suggestive meaning by inferring a quality of the goods in that they
are readily available to clean or shine.
Although the marks have the same dominant portion, we must compare
the marks as a whole. M2 Software Inc. v. M2 Communications Inc., 450 F.3d
1378, 78 USPQ2d 1944, 1948-49 (Fed. Cir. 2006) [“When comparing the
similarity of marks, a disclaimed term...may be given little weight, but it may
not be ignored”]. In this vein, we again do not ignore applicant’s argument
that the marks may be distinguished based on the latter elements of the
marks. Nevertheless, because said terms are secondary, both in position and
because they have less source-identifying value due to their descriptive
nature, they do not suffice for purposes of distinguishing the two marks.
Overall, we find the marks to be similar in sound, appearance, meaning
and overall commercial impression. Accordingly, this factor weighs in favor of
finding a likelihood of confusion.
When we consider the record and the relevant likelihood of confusion
factors, we conclude that, should potential purchasers encounter the marks
Serial No. 85284197
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REDI-RAGS for wiping cloths and REDI SHINE being used on household
cleaning sponges and pads they are likely to believe that the sources of these
goods are in some way related or associated. Indeed, consumers already
familiar with registrant’s mark may mistakenly believe that applicant’s
REDI SHINE branded household cleaning pads and sponges are natural
product extensions of the REDI-RAGS wiping cloths. As a result, there is a
likelihood of confusion.
DECISION: The refusal to register the mark under Section 2(d) of the
Trademark Act is affirmed.