Valspar Corp.

Trademark Trial and Appeal Board

Sep 22, 1998

No. 75039627 (T.T.A.B. Sep. 22, 1998)

Paper No. 9
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE
TTAB SEPT 22, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re The Valspar Corporation
___________
Serial No. 75/039,627
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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 Quinn, Walters and Wendel, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
The Valspar Corporation has filed a trademark
application to register the mark VITRAGARD for “interior
and exterior coatings in the nature of paint.”1
The Trademark Examining Attorney has finally refused
registration under Section 2(d) of the Trademark Act, 15

1 Serial No. 75/039,627, in International Class 2, filed January 2,
1996, based on an allegation of use of the mark in commerce, alleging
first use and first use in commerce as of 1966.
Serial No. 75/039,627
2
U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the previously registered marks shown below2 that,
if used on or in connection with applicant’s goods, it
would be likely to cause confusion or mistake or to
deceive.
[vitralite (stylized print)]
for “enamels, varnishes, stains, fillers,”3
• VITRA-TILE for “paints, varnishes, and enamels,4
• VITRALON for “enamels, primers and texture coatings for
metal surfaces and coatings and linings for metal
containers,5
• VITRA-SHIELD for “stipple finish for interior use,”6 and
• VITRASIL for “silicone enamel for exterior use.”7

2 According to the records of the PTO, all of the cited registrations
are owned by The Sherman-Williams Company.
3 Registration No. 85,177, issued January 30, 1912, in International
Class 2. [Renewed for the fourth time as of January 30, 1992, for a
period of ten years; Affidavits filed under Sections 12(c), 8 and 15.]
4 Registration No. 722,763, issued October 17, 1961, in International
Class 2. [Renewed for the first time as of October 17, 1981, for a
period of twenty years; Affidavits filed under Sections 8 and 15.]
5 Registration No. 880,334, issued November 11, 1969, in International
Class 2. [Renewed for the first time as of November 11, 1989, for a
period of ten years; Affidavits filed under Sections 8 and 15.]
6 Registration No. 1,520,395, issued January 17, 1989, in International
Class 2. [Affidavits filed under Sections 8 and 15.]
Serial No. 75/039,627
3
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
In the analysis of likelihood of confusion in this
case, two key considerations are the similarities between
the marks and the similarities between the goods. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976). Considering, first, the goods, we
find that applicant’s goods are identical to some of
registrant’s goods (i.e., “paints” recited in Registration
No. 722,763) and closely related to the remaining goods
recited in registrant's registrations. While several of
registrant’s recited goods are limited to interior or
exterior use, or to use on metal, applicant’s goods as
identified encompass all such uses.
Turning to the marks, applicant contends that the
subject mark, in substantially the same form, was
previously registered for the same goods and was
inadvertently allowed to expire; that the existence of
applicant’s now-expired registration is evidence of the
coexistence of applicant’s mark and registrant’s marks for
many years without actual confusion; that VITRA suggests
the word “vitreous,” which applicant contends is suggestive

7 Registration No. 1,701,289, issued July 21, 1992, in International
Serial No. 75/039,627
4
in connection with applicant’s and registrant’s goods; and
that “marks that contain the term ‘vitra’ for goods of a
similar nature are not uncommon.” Applicant has submitted
the declaration of Kenneth Arthur, applicant’s vice
president, sales, consumer group, in support of these
contentions.
Both applicant’s and registrant’s marks contain the
identical root term, VITRA. We do not find sufficient
evidence in the record to conclude that VITRA would be
perceived by consumers as a reference to the term
“vitreous,” or that “vitreous” is suggestive in connection
with the identified goods. However, even if we were to
find that VITRA is suggestive in connection with the goods
involved in this case, suggestive marks are entitled to
protection. Further, applicant’s contentions that VITRA is
a common, and therefore weak, component of applicant’s and
registrant’s marks in view of third-party use or
registration of VITRA is unavailing as no acceptable
evidence on this point has been made of record.8
We cannot conclude that registrant’s marks comprise a
family of marks as we have no evidence regarding either

Class 2. [Affidavits filed under Sections 8 and 15.]
8 In order to make registrations of record, soft copies of the
registrations themselves, or the electronic equivalent thereof, i.e.,
printouts of the registrations taken from the electronic records of the
Serial No. 75/039,627
5
registrant’s marketing of its products under its marks or
consumers’ perception of registrant’s marks. However, we
find that each of registrant’s marks contains the root term
VITRA followed by a suggestive or arbitrary suffix. The
format of applicant’s mark is identical in this regard.
Applicant’s mark is likely to be perceived by consumers as
another coating product in registrant’s line of products,
which include several different types of coatings.
We find that applicant’s mark, VITRAGARD, is
sufficiently similar in its overall commercial impression
to each of registrant’s cited registrations, VITRALITE and
design, VITRA-TILE, VITRALON, VITRA-SHIELD AND VITRASIL,
that the contemporaneous use on the same and closely
related goods involved in this case is likely to cause
confusion as to the source or sponsorship of such goods.
With regard to applicant’s assertion that it is aware
of no instances of actual confusion occurring as a result
of the contemporaneous use of the marks of applicant and
registrant, we note that, while a factor to be considered,
the absence or presence of actual confusion is of little
probative value where we have little evidence pertaining to
the nature and extent of the use by applicant and
registrant. Moreover, the test under Section 2(d) is not

Patent and Trademark Office’s (PTO) own data base, must be submitted.
Serial No. 75/039,627
6
actual confusion but likelihood of confusion. See, In re
Kangaroos U.S.A., 223 USPQ 1025, 1026-1027 (TTAB 1984); and
In re General Motors Corp., 23 USPQ2d 1465, 1470-1471.
Decision: The refusal under Section 2(d) of the Act
is affirmed.
T. J. Quinn
C. E. Walters
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board

See, Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992).