VCNA Prestige Material Holdings, Inc.

Trademark Trial and Appeal Board

Jan 18, 2013

No. 85144501 (T.T.A.B. Jan. 18, 2013)

Mailed: 1/18/2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re VCNA Prestige Material Holdings, Inc.
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Serial Nos. 85144490 and 85144501
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Angela Alvarez Sujek, Susan M. Kornfield, and Karen H. Anderson
of Bodman PLC for VCNA Prestige Material Holdings, Inc.

William M. Rossman, Trademark Examining Attorney, Law Office 109
(Dan Vavonese, Managing Attorney).
_______

Before Quinn, Cataldo and Taylor,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

VCNA Prestige Material Holdings, Inc. filed, on October 4,
2010, applications to register the mark PRESTIGE CONCRETE
PRODUCTS (in standard characters), and the mark shown below

both for “concrete, not including architectural masonry units,
namely, glazed concrete blocks used for interior walls” in
International Class 19 (application Serial Nos. 85144490 and
THIS OPINION IS NOT
A PRECEDENT OF THE
TTAB
Ser. Nos. 85144490 and 85144501

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85144501, respectively). Applicant disclaimed the words
“CONCRETE PRODUCTS” in each application. Each application is
based on allegations of first use anywhere and first use in
commerce on July 1, 2009.
The trademark examining attorney refused registration in
each application under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), on the ground that applicant’s mark, when used
in connection with applicant’s goods, so resembles the
previously registered mark PRESTIGE SERIES (in standard
characters) (“SERIES” disclaimed) for “architectural masonry
units, namely, glazed concrete blocks used for interior walls”
in International Class 191 as to be likely to cause confusion.
When the refusal was made final in each application,
applicant appealed. Applicant and the examining attorney filed
briefs.
The two appeals involve common issues of law and fact, and
the evidentiary records and arguments are essentially identical.
Accordingly, the Board will decide the appeals in this single
opinion.
Applicant concedes that “the word PRESTIGE may be the
dominant part of the [marks] given the fact that the words
“CONCRETE PRODUCTS” and “SERIES” are all disclaimed”; applicant

1 Registration No. 3044687, issued January 17, 2006; combined Sections
8 and 15 affidavit accepted and acknowledged.
Ser. Nos. 85144490 and 85144501

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goes on to argue, however, that registrant’s marks are not
strong due to third-party adoptions of “PRESTIGE” marks for
goods in Class 19. (Brief, p. 9). Applicant also asserts that
while even weak marks are worthy of protection, confusion is
unlikely to occur because the goods are different and not
competitive, and are not commonly provided by the same source.
Applicant also points to the sophistication of purchasers, and
to the contemporaneous use of the marks for three years without
any known instances of actual confusion. In support of its
arguments, applicant submitted ten third-party registrations of
“PRESTIGE” marks for goods in Class 19, and an excerpt retrieved
from registrant’s website.2
The examining attorney maintains that the word “PRESTIGE”
is the dominant portion in all of the marks, due to the
disclaimed and more subordinate nature of the words “CONCRETE
PRODUCTS” in applicant’s marks and “SERIES” in registrant’s
mark. The examining attorney also asserts that the goods, trade
channels and purchasers are similar. In support of the refusal,
the examining submitted an excerpt from registrant’s website,

2 Applicant, in its response dated July 20, 2011, provided only a link
to registrant’s website. This was insufficient to make the evidence
of record, and it has not been considered. See Calypso Technology
Inc. v. Calypso Capital Management LP, 100 USPQ2d 1213, 1216-19 (TTAB
2011). However, in view of the examining attorney’s failure to object
thereto until his appeal brief, as pointed out in applicant’s reply
brief, we have considered the updated website excerpt presented as
Attachment 1 to the reply brief.
Ser. Nos. 85144490 and 85144501

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excerpts from third-party websites, and copies of third-party
registrations.
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). In any likelihood of confusion analysis, however,
two key 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 direct our attention to the du Pont factor of the
similarity/dissimilarity between the marks. We must compare the
marks in their entireties as to appearance, sound, connotation
and commercial impression to determine the similarity or
dissimilarity between them. Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1690 (Fed. Cir. 2005), quoting In re E. I. du Pont
de Nemours & Co., 177 USPQ at 567. The test, under the first du
Pont factor, is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether the
marks are sufficiently similar in terms of their overall
commercial impression that confusion as to the source of the
goods and/or services offered under the respective marks is
Ser. Nos. 85144490 and 85144501

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likely to result. The focus is on the recollection of the
average purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).
It is well settled that one feature of a mark may be more
significant than another, and it is not improper to give more
weight to this dominant feature in determining the commercial
impression created by the mark. In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“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 consideration of the
marks in their entireties. Indeed, this type of analysis
appears to be unavoidable.”). Where both words and a design
comprise the mark (as in applicant’s logo mark), then the words
are normally accorded greater weight because the words are
likely to make an impression upon purchasers, would be
remembered by them, and would be used by them to request the
goods and/or services. CBS, Inc. v. Morrow, 708 F.2d 1579, 218
USPQ 198, 200 (Fed. Cir. 1983) (“in a composite mark comprising
a design and words, the verbal portion of the mark is the one
most likely to indicate the origin of the goods to which it is
affixed”); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554
(TTAB 1987); and Kabushiki Kaisha Hattori Tokeiten v. Scuotto,
Ser. Nos. 85144490 and 85144501

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228 USPQ 461, 462 (TTAB 1985). See also Giant Food, Inc. v.
Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed.
Cir. 1983). In applicant’s logo mark, the literal portion of
the mark, namely the words “PRESTIGE CONCRETE PRODUCTS,” is the
dominant portion; and, in turn, due to the generic nature of the
words “CONCRETE PRODUCTS,” the literal portion is dominated by
the only source-identifying word, namely “PRESTIGE,” which
appears in much larger font. Thus, the word “PRESTIGE” in
applicant’s marks is the dominant feature.
Likewise, registrant’s mark is dominated by the word
“PRESTIGE” for the same reasons due to the disclaimer of
“SERIES.” See, e.g., In re Dixie Restaurants, Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (affirming
Board’s finding that “DELTA,” not the disclaimed generic term
“CAFÉ,” is the dominant portion of the mark THE DELTA CAFÉ); and
In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (finding that
“BINION’S,” not the disclaimed descriptive wording “ROADHOUSE,”
is the dominant portion of the mark BINION’S ROADHOUSE).
Thus, the dominant portions of the marks are identical, a
point not lost on applicant when it stated, as already noted,
“the word PRESTIGE may be the dominant part of the [marks] given
the fact that the words “CONCRETE PRODUCTS” and “SERIES” are all
disclaimed.” In discussing the dominant portion of the marks,
we recognize, of course, that the marks ultimately must be
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compared in their entireties, including any disclaimed words,
design feature and minimally stylized lettering. When this
comparison is made, we find that each of applicant’s marks is
similar to registrant’s mark in sound, appearance and meaning.
Because of these similarities, applicant’s and registrant’s
marks engender similar overall commercial impressions, namely,
that the products have a high standing among other competing
products.
The similarity between each of applicant’s marks and
registrant’s mark weighs in favor of a finding of likelihood of
confusion.
We next turn to consider the second du Pont factor
regarding the similarity/dissimilarity between the goods. It is
well settled that the goods of applicant and registrant need not
be identical or competitive, or even offered through the same
channels of trade, to support a holding of likelihood of
confusion. It is sufficient that the respective goods of
applicant and registrant are related in some manner, and/or that
the conditions and activities surrounding the marketing of the
goods are such that they would or could be encountered by the
same persons under circumstances that could, because of the
similarity of the marks, give rise to the mistaken belief that
they originate from the same source. See Hilson Research, Inc.
v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB
Ser. Nos. 85144490 and 85144501

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1993); and In re International Telephone & Telegraph Corp., 197
USPQ 910, 911 (TTAB 1978). The issue, of course, is not whether
purchasers would confuse the goods, but rather whether there is
a likelihood of confusion as to the source of the goods. In re
Rexel Inc., 223 USPQ 830 (TTAB 1984).
We make our determination regarding the similarities
between the goods, channels of trade and classes of purchasers
based on the goods as they are identified in the applications
and cited registration, respectively. See Octocom Systems Inc.
v. Houston Computers Services, Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990). Further, because the involved
identifications include no restrictions as to trade channels or
classes of purchasers, the recited goods must be presumed to
travel through all normal trade channels and be marketed to all
possible classes of relevant purchasers. See Interstate Brand
Corp. v. McKee Foods Corp., 53 USPQ2d 1910, 1913 (TTAB 2000).
Accordingly, we compare registrant’s “architectural masonry
units, namely, glazed concrete blocks used for interior walls”
to applicant’s “concrete, not including architectural masonry
units, namely, glazed concrete blocks used for interior walls.”
A main argument of applicant is, of course, the presence of the
exclusionary language in its identification of goods, that is, a
specific exclusion of the goods identified in the cited
registration.
Ser. Nos. 85144490 and 85144501

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In short, we discount applicant’s addition of the
exclusionary phrase to the identification of goods in each
application as an ineffective attempt to avoid a finding that
the involved goods are similar. As indicated above, the goods
need not be identical to support a finding of likelihood of
confusion. In this case, both types of goods fall under the
general category of concrete products; and it would appear that
concrete and glazed concrete blocks used for interior walls are
complementary products. If goods are complementary in nature,
or used together, this relatedness can support a finding of
likelihood of confusion. See, e.g., In re Martin's Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed.
Cir. 1984); and In re Toshiba Medical Systems Corp., 91 USPQ2d
1266, 1272 (TTAB 2009) (medical MRI diagnostic apparatus and
medical ultrasound devices are related, in part because they
have complementary purposes and may be used by the same medical
personnel on the same patient to address the same medical
issue).
Furthermore, the examining attorney submitted, in an
attempt to show that the goods are related, several use-based
third-party registrations showing that the same entity has
registered the same mark for the types of goods involved in this
appeal, namely concrete and concrete blocks. We recognize that
none of the third-party registrations lists both “concrete” and
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“architectural masonry units, namely, glazed concrete blocks
used for interior walls.” However, each of the registrations
lists both “concrete” and “concrete blocks.” The term “concrete
blocks” is broadly worded, and as such, encompasses all types of
concrete blocks, including both structural and architectural.
Thus, these “concrete blocks,” as broadly identified, are
presumed to include glazed concrete blocks used for interior
walls. “Third-party registrations which cover a number of
differing goods and/or services, and which are based on use in
commerce, although not evidence that the marks shown therein are
in use on a commercial scale or that the public is familiar with
them, may nevertheless have some probative value to the extent
that they may serve to suggest that such goods or services are
of a type which may emanate from a single source.” In re Mucky
Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d,
864 F.2d 149 (Fed. Cir. 1988). See also In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
The examining attorney also introduced six excerpts of
third-party websites showing that both types of goods, namely
concrete and concrete blocks, may emanate from the same source.
Given the relatedness of concrete and glazed concrete
blocks, the goods are likely to move in similar trade channels
(e.g., Home Depot, Lowes, building materials outlets and the
Ser. Nos. 85144490 and 85144501

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like), and are marketed to similar classes of purchasers (e.g.,
contractors and do-it-yourself homeowners).
Thus, the factors of the similarity between the goods, and
the overlap in trade channels and classes of purchasers weigh in
favor of a finding of likelihood of confusion.
One of applicant’s main arguments is that registrant’s mark
is a weak mark entitled to only a narrow scope of protection.
Applicant’s argument is based on the alleged “common use” of the
word “PRESTIGE” in trademarks for building materials in Class 19
and, in this connection, applicant introduced ten third-party
registrations. This registration evidence does not prove that
“PRESTIGE” is a weak mark in the building materials industry.
Absent evidence of actual use, third-party registrations have
little probative value because they are not evidence that the
marks are in use on a commercial scale or that the public has
become familiar with them. Smith Bros. Mfg. Co. v. Stone Mfg.
Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the purchasing
public is not aware of registrations reposing in the U.S. Patent
and Trademark Office); and Productos Lacteos Tocumbo S.A. de
C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB
2011). See also Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d
200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992) (“As to strength of a
mark, however, registration evidence may not be given any
weight”). We also have considered this evidence, however, as
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similar to that of a dictionary showing how language is
generally used. See In re J.M. Originals Inc., 6 USPQ2d 1393,
1394 (TTAB 1987). Clearly, the word “PRESTIGE” appearing in a
trademark is, at the very least, laudatorily suggestive; the
word conveys an idea that the product is superior or worthy of a
high standing. But, in this case, the marks all convey the
identical, indistinguishable suggestion. Lastly, and in any
event, as often stated, even a weak mark is entitled to
protection against the registration of a similar mark for
related goods. See King Candy Co. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974). This factor
is neutral or, at best, weighs slightly in applicant’s favor.
Applicant argues that the purchase of applicant’s and
registrant’s goods involves some degree of sophistication.
First, applicant has failed to support this argument with any
evidence. Second, the identifications of goods, as noted above,
are broad enough to cover concrete and glazed concrete blocks
that would be purchased by do-it-yourself homeowners. Even
presuming that these individuals are somewhat discriminating
when it comes to home improvement goods, it is settled that even
sophisticated purchasers are not immune from source confusion,
especially in cases such as the instant one involving very
similar marks and similar goods. See In re Research Trading
Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), citing
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Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d
1403, 168 USPQ 110, 112 (CCPA 1970) (“Human memories even of
discriminating purchasers...are not infallible.”). See also In
re Decombe, 9 USPQ2d 1812 (TTAB 1988). We find that the
similarities between the marks and the goods sold thereunder
outweigh any presumed sophisticated purchasing decision. See
HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819
(TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL Associates,
Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990)
(similarities of goods and marks outweigh sophisticated
purchasers, careful purchasing decision, and expensive goods).
Thus, this factor is neutral.
Applicant’s assertion, in this ex parte proceeding, of the
contemporaneous use of applicant’s and registrant’s marks for a
period of three years without actual confusion is entitled to
little weight. See In re Majestic Distilling Co., Inc., 65
USPQ2d at 1205 (“uncorroborated statements of no known instances
of actual confusion are of little evidentiary value”). See also
In re Bisset-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA
1973) (stating that self-serving testimony of applicant’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). In re Binion, 93
USPQ2d at 1536; In re 1st USA Realty Professionals Inc., 84
Ser. Nos. 85144490 and 85144501

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USPQ2d 1581, 1588 (TTAB 2007); and In re Kangaroos U.S.A., 223
USPQ 1025, 1026-27 (TTAB 1984). In any event, the record is
devoid of probative evidence relating to the extent of use of
applicant’s and registrant’s marks and, thus, whether there have
been meaningful opportunities for instances of actual confusion
to have occurred in the marketplace. See Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000);
and In re Wilson, 57 USPQ2d 1863, 1869 (TTAB 2001) (“[I]nasmuch
as we have heard from neither registrant nor the Highland Orange
Association in this appeal, we cannot conclude that, in fact, no
instances of actual confusion ever occurred.”). Accordingly,
the du Pont factor of the length of time during and conditions
under which there has been contemporaneous use without evidence
of actual confusion is considered neutral.
Based on the record before us, we find that the du Pont
factors, on balance, weigh in favor of a finding of likelihood
of confusion.
To the extent that any of the points raised by applicant
raise a doubt about likelihood of confusion, that doubt is
required to be resolved in favor of the prior registrant. In re
Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed.
Cir. 1988); and In re Martin’s Famous Pastry Shoppe, Inc., 748
F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Ser. Nos. 85144490 and 85144501

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Decision: The refusal to register in each application is
affirmed.