USG Corporation

Trademark Trial and Appeal Board

Mar 11, 2010

No. 77421279 (T.T.A.B. Mar. 11, 2010)

Mailed:
March 11, 2010
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re USG Corporation
________

Serial No. 77421279
_______

Pradip Sahu for USG Corporation.

Charisma Hampton, Trademark Examining Attorney, Law Office
112 (Angela Wilson, Managing Attorney).
_______

Before Bucher, Kuhlke and Bergsman, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
USG Corporation seeks registration on the Principal
Register of the following mark:

for goods identified in the application, as amended, as
follows: “shirts, caps with visors, and jackets all sold
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77421279
- 2 -
through the building and construction industry channels of
trade” in International Class 025.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation based upon Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d). The Trademark Examining
Attorney has taken the position that applicant’s mark, when
used in connection with the identified goods, so resembles
the mark US&G (in standard character format) registered for
“hat[s]”2 also in International Class 25, as to be likely to
cause confusion, to cause mistake or to deceive.
The Trademark Examining Attorney and applicant have
fully briefed the issues involved in the case.
We affirm the refusal to register.
In urging registrability, applicant argues that the
respective marks are different in their entireties, that
the goods are different, including applicant’s limited
channels of trade, that applicant’s mark is well-known in
its channels of trade and registrants’ is not, that there

1 Application Serial No. 77421279 was filed on March 13, 2008
based upon applicant’s claims of first use anywhere and first use
in commerce at least as early as May 11, 1999. The mark consists
of the letters “U,” “S,” and “G” in a stylized font with each
letter successively larger than the previous one. Color is not
claimed as a feature of the mark.

2 Registration No. 2915250 issued to Steven E. Fisher and
Marie E. Fisher on December 28, 2004.
Serial No. 77421279
- 3 -
is no interface in the marketplace between applicant and
registrants, and that the two marks have coexistence in
the marketplace for some time without any evidence of
actual confusion.
By contrast, the Trademark Examining Attorney contends
that the marks are confusingly similar, that the goods are
identical and otherwise highly-related, and despite
applicant’s explicit limitations, these are goods that are
commonly offered by a single entity under the same
trademark, marketed through similar channels of trade to
the same class of ordinary purchasers.
Preliminary Matters
Applicant submitted supplemental evidence for the
first time with its brief. The Trademark Examining
Attorney’s objection to consideration of that exhibit
because it is untimely is well taken and the evidence has
not been considered. 37 C.F.R. § 2.142(d); In re Fitch IBCA
Inc., 64 USPQ2d 1058, 1059 n2 (TTAB 2002). We hasten to
add that even if we had considered this submission, it
would not have changed the outcome of our decision herein.
Serial No. 77421279
- 4 -
Likelihood of Confusion
We turn then to a consideration of the issue of
likelihood of confusion. Our determination of likelihood of
confusion is based upon our analysis of all of the probative
facts in evidence that are relevant to the factors bearing
on this issue. See 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); and In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In any likelihood of
confusion analysis, however, two key, although not
exclusive, considerations are the similarities between the
marks and the relationship between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Similarity of the marks
We turn first to the du Pont factor focusing on the
similarities or dissimilarities in the appearance, sound,
connotation and commercial impression of the respective
marks. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005). The test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
Serial No. 77421279
- 5 -
but rather whether the marks are sufficiently similar in
their entireties that confusion as to the source of the
goods offered under the respective marks is likely to
result. See Recot, Inc. v. M.C. Becton, 214 F.3d 1322,
54 USPQ2d 1894, 1899 (Fed. Cir. 2000).
We begin by noting that letter marks are more
susceptible to confusion because letter combinations are
likely to be inherently difficult to remember. B.V.D.
Licensing Corp. v. Rodriguez, 83 USPQ2d 1500, 1509 (TTAB
2007) citing Weiss Associates, Inc. v. HRL Associates, Inc.,
902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) and Alberto-
Culver Co. v. F.D.C. Wholesale Corp., 16 USPQ2d 1597 (TTAB
1990). Furthermore, unlike many of the frequently-cited
cases making this point where the letter-strings are
somewhat different, these two marks share the same three
letters arranged in precisely the same sequence. See,
e.g., Hercules Inc. v. National Starch & Chemical Corp.,
223 USPQ 1244, 1246 (TTAB 1984); Palm Bay Imports, 73 USPQ2d
at 1689; Presto Products Inc. v. Nice-Pak Products Inc.,
9 USPQ2d 1895, 1897 (TTAB 1988).
Yet applicant makes much of the fact that the cited
mark has an ampersand between the letters “S” and “G,” and
that its mark comprises a highly stylized, unique logo,
Serial No. 77421279
- 6 -
creating a difference as to appearance, sound, connotation
and commercial impression.
As to appearance, applicant’s elimination of the
ampersand from registrants’ mark is a nearly
imperceptible difference. And despite applicant’s
stylized font having successively larger letters,
registrants are not limited to any particular depiction of
their standard character mark. If the letters “U,” “S”
and “G” were presented on registrants’ hats using bold
block letters with a smaller ampersand, the visual
takeaway will be quite similar to that of applicant’s
special-form drawing even without their adopting
successively larger letters.
As to sound, despite the additional syllable created
by the presence of the ampersand (likely spoken as “and”)
in the registrants’ mark, the presence or absence of this
connector will hardly be noticed when the same three
letters of the alphabet are pronounced identically.
As to meaning, we cannot presume that all purchasers,
even within the building and construction trades, who
purchase an inexpensive hat or cap, for example, will know
that applicant’s seemingly arbitrary letters refer to
“United States Gypsum.” This argument would clearly be
more persuasive if the drawing were a composite mark with
Serial No. 77421279
- 7 -
the letter “U-S-G” along with the words “United States
Gypsum.” However, that is not the case before us.
Finally, as to commercial impression, the respective
marks contain identical letters and applicant’s deletion of
the ampersand from the registered mark does not create a
distinct commercial impression because there are no other
literal elements present to distinguish it from
registrants’ mark.
Thus, we find that the respective marks are very
similar in appearance, sound, meaning and commercial
impression.
Relationship of the Goods
Applicant’s named items of clothing are identical to
and otherwise highly related to registrants’ hats.
Specifically, caps and hats, by definition, are
overlapping goods. Additionally, the Trademark Examining
Attorney has provided evidence from third-party
registrations to demonstrate that purchasers are
accustomed to encountering clothing items like shirts,
caps and jackets under the same mark as that used on hats.
In view of the above, the du Pont factor of the similarity
of the goods weighs in favor of a finding of likelihood of
confusion.
Serial No. 77421279
- 8 -
Channels of trade

We turn then to a related du Pont factor that focuses
on the similarity or dissimilarity of established, likely-
to-continue trade channels. Applicant argues that its
identification of goods explicitly limits the marketing of
its clothing items to specific and recognizable channels of
trade. However, there are several problems with this line
of argument.
Even if applicant intends to target as a class of
purchasers those involved in the building and construction
industries, it is not clear from this record exactly how
this affects the likely placement of these items of
apparel in particular retail stores. We note that
applicant claims its clothing items are available through
its website, http://www.usg.com/. However, as to their
availability in more traditional bricks-and-mortar retail
stores, does this mean the identified clothing goods are
found only in do-it-yourself home improvement stores that
normally do not carry clothing? The record is unclear.
A second problem implied by applicant’s argument is
that applicant impermissibly reads a limitation into the
registration. The identification of goods in the
registration is not limited to any specific channels of
trade, so we must presume that registrants’ goods could be
Serial No. 77421279
- 9 -
available through all normal trade channels. Therefore, it
is possible that registrants’ hats could be sold anywhere,
including online or retail outlets having their own special
focus on those involved in the building and construction
industries. Therefore, this du Pont factor also favors a
finding of likelihood of confusion herein.
Conditions under which and buyers to whom sales are made

The risk of likelihood of confusion is increased for
inexpensive products that are purchased on impulse.
Accordingly, given the retail costs of hats and caps, we
cannot assume potential purchasers will be especially
thoughtful in purchasing such goods. In re Elbaum, 211 USPQ
639, 640 (TTAB 1981); and In re Optica Int’l, 196 USPQ 775,
778 (TTAB 1977). This du Pont factor also favors a
finding of likelihood of confusion herein.
The fame of registrants’ mark

Applicant argues that there is no indication that the
cited registration involves a well known or famous mark.
It is true that given the nature of this ex parte
proceeding, we have no information about the renown of
registrants’ mark. Of course, in an ex parte context such
as this case, involving as it does nearly identical marks
applied to overlapping and otherwise closely-related goods,
Serial No. 77421279
- 10 -
where there has been no indication of any weakness in the
cited mark, it is clearly not incumbent upon the Trademark
Examining Attorney to demonstrate that the cited mark has
attained some degree of fame in order to prevail when
applying the du Pont factors. The overriding concern in a
Section 2(d) likelihood of confusion analysis is to
protect registrants from adverse commercial impact due to
the adoption and use of a similar mark by a newcomer.
Our primary reviewing court has held repeatedly that
the fame of a registered mark is relevant to likelihood of
confusion inasmuch as a finding of fame may provide the
registrant / senior user with a wider berth of protection.
However, the converse is not true, i.e., likelihood of
confusion is not precluded by a registered mark’s not being
shown to be famous. In re Majestic Distilling Co., 315 F.3d
1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003). There is no
evidence as to the fame of registrants’ mark, and the fifth
du Pont factor favors neither the position taken by
applicant nor that of the Trademark Examining Attorney.
The extent to which applicant has a right to exclude others from
use of its mark on its goods.

On the other hand, applicant argues that its applied-
for mark is not likely to cause confusion with the
registered mark because applicant’s mark is well-known in
Serial No. 77421279
- 11 -
association with numerous building and construction
products and services. Its USG mark has been in use in the
U.S.A. for over eighty years and worldwide for decades. Its
oldest subsisting U.S. registration issued in 1929:
USG for “plaster, tile, and wall board” in
International Class 19;3
USG for “lime proof colors and wall coatings in the
nature of paint” in International Class 2;4
USG for “metallic components used in framing
construction of buildings-namely, studs,
runners, channels” in International Class 6;5
USG ACTION for “computer software used to provide
technical information in the field of
construction” in International Class 9;
for “information services, namely providing
technical information to architects, designers,
engineers, specifiers and construction industry
professionals by means of computer software” in
International Class 42;6
USG CEILINGS for “non metal acoustical ceiling tiles and
panels” in International Class 19;7
USG IMPROVING
THE FINISH
for “providing incentives by way of awards to
recognize outstanding achievements in the field
of car racing” in International Class 41;8 and

3 Registration No. 0260739 issued on August 27, 1929; fourth
renewal.

4 Registration No. 0276997 issued on November 4, 1930; fourth
renewal.

5 Registration No. 1281267 issued on June 12, 1984; renewed.

6 Registration No. 1917728 issued on September 12, 1995;
renewed.

7 Registration No. 2494450 issued on October 2, 2001; Section
8 affidavit (six-year) accepted and Section 15 affidavit
acknowledged.

8 Registration No. 3098189 issued on May 30, 2006.

Serial No. 77421279
- 12 -

for “wallboard joint compounds; wallboard joint
tape” in International Class 17;9

We find that while applicant may well have
substantial goodwill in its USG mark in connection with
building and construction products and services, there is
no indication that this translates into goodwill for this
mark when used in connection with routine items of
apparel in International Class 25.
Period of contemporaneous use without actual confusion

Finally, we turn to the du Pont factor dealing with the
length of time during and conditions under which there has
been concurrent use without evidence of actual confusion.
Applicant argues that coexistence over a period of years
provides strong evidence that confusion is not likely to
occur in the future. As to whether there has been
sufficient opportunity for confusion to occur, the record
contains no indication of the level of sales or advertising
of these items of clothing by applicant. The absence of any

9 Registration No. 3507925 issued on September 30, 2008. The
mark consists of the letters "U", "S" and "G" in a stylized font
with each letter successively larger than the previous one.
Color is not claimed as a feature of the mark.
Serial No. 77421279
- 13 -
instances of actual confusion is a meaningful factor only
where the record indicates that, for a significant period of
time, an applicant’s sales and advertising activities have
been so appreciable and continuous that, if confusion were
likely to happen, any actual incidents thereof would be
expected to have occurred and would have come to the
attention of one or both of these trademark owners.
Similarly, we have no information concerning the nature and
extent of registrants’ use, and thus we cannot tell whether
there has been sufficient opportunity for confusion to
occur.
All of these enumerated factors materially reduce the
probative value of applicant’s argument regarding asserted
lack of actual confusion. Therefore, applicant’s claim that
no instances of actual confusion have been brought to
applicant’s attention is not indicative of an absence of a
likelihood of confusion. See Gillette Canada Inc. v. Ranir
Corp., 23 USPQ2d 1768, 1774 (TTAB 1992).
In any event, we are mindful of the fact that the test
under Section 2(d) of the Act is likelihood of confusion,
not actual confusion.
Serial No. 77421279
- 14 -
Conclusion: Likelihood of Confusion
In conclusion, the du Pont factors favoring a finding
of likelihood of confusion include the fact that the marks
are substantially identical, the goods are overlapping or
otherwise closely-related, and we must presume that they
will move through overlapping trade channels to the same
classes of ordinary consumers.
Decision: The refusal to register this mark based upon
Section 2(d) of the Lanham Act is hereby affirmed.