X-Calibur Construction Chemistry Inc.

Trademark Trial and Appeal Board

Jun 23, 2015

No. 85952211 (T.T.A.B. Jun. 23, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: June 23, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re X-Calibur Construction Chemistry Inc.
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Serial No. 85952211
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Matthew H. Swyers of The Trademark Company,
for X-Calibur Construction Chemistry Inc.
Donald Johnson, Trademark Examining Attorney, Law Office 104,
Chris Doninger, Managing Attorney.
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Before Bucher, Kuczma and Hightower,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
X-Calibur Construction Chemistry Inc. (“Applicant”) seeks registration on the
Principal Register of the mark CRYSTALCOAT (in standard characters) for:
Waterproofing chemical compositions in International
Class 1.1
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), citing the
following registrations as bars to Applicant’s registration:

1 Application Serial No. 85952211 was filed on June 6, 2013, based upon Applicant’s claim
of first use anywhere and use in commerce since at least as early as January 1, 2006.
Serial No. 85952211
- 2 -
Registration No. 2633021
Owner: SDC Technologies, Inc.
Mark: CRYSTALCOAT
For: Abrasion-resistant coatings for use in industry on all
substrates requiring the ability to withstand abrasion, chemical
attack, and long-term weather exposure in International Class 22

and
Registration No. 3663744
Owner: KHI Capital Inc.
Mark: KRYSTOL (standard characters)
For: Cementitious admixtures for use with cement compounds;
coatings for concrete and cement, namely, water-repellent sealants
and chemical compositions for curing and water-proofing concrete;
strengthening, plasticizing and anticorrosion chemical composition
admixtures; waterproofing chemical compositions for concrete or
cement surfaces in International Class 1.3

When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. For the reasons set forth below, the
refusal to register is affirmed.
I. Likelihood of Confusion
Our determination under § 2(d) is based on an analysis of all probative facts in
evidence that are relevant to the factors bearing on the issue of likelihood of

2 Issued on October 8, 2002; renewed.
3 Issued on August 4, 2009. This Registration also includes goods in International Class 19
which are not involved in this appeal.
Serial No. 85952211
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confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). Not all of the du Pont factors are relevant to every case,
and only factors of significance to the particular mark need be considered. In re
Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010). Therefore,
we focus our analysis on those factors for which we have evidence or that have been
argued by Applicant and the Examining Attorney: similarity of the marks,
similarity of the goods, the channels of trade, classes of consumers, and the
sophistication of the customers.
A. Similarity of the Marks
In any likelihood of confusion determination, the marks are compared in their
entireties for similarities in appearance, sound, connotation, and commercial
impression. du Pont, 177 USPQ at 567; In re Viterra Inc., 671 F.3d 1358, 1362, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012).
Applicant’s mark and the first-cited registered mark CRYSTALCOAT are
identical in appearance and sound. Additionally, the meaning and commercial
impression of the marks does not differ when considered in connection with
Applicant’s and registrant’s respective goods. Thus, the marks are confusingly
similar.
Turning to the second-cited registration, the first two syllables of Applicant’s
CRYSTALCOAT mark are similar in sound and appearance to the mark KRYSTOL.
Similarity in sound alone may be sufficient to support a finding that the marks are
Serial No. 85952211
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confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988).
Moreover, while KRYSTOL has no meaning in the English language, its sound is
similar to that of the word “crystal.” Thus, in addition to their similarity in sound
and appearance, these marks have a similar connotation when used in connection
with the goods at issue.
The addition of COAT to CRYSTAL in Applicant’s CRYSTALCOAT mark does
not obviate the similarity between the CRYSTALCOAT and KRYSTOL marks nor
does it overcome a likelihood of confusion under Trademark Act § 2(d). As consumers
are generally more inclined to focus on the first word, prefix or syllable in any
trademark, the addition of COAT to CRYSTAL does not distinguish Applicant’s
CRYSTALCOAT mark from the KRYSTOL mark. See Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005); Presto Products, Inc. v. Nice-Pak Products, Inc., 9
USPQ2d 1895 (TTAB 1988) (“it is often the first part of a mark which is most likely
to be impressed upon the mind of a purchaser and remembered” when making
purchasing decisions).
When comparing marks, the test is not whether the marks can be distinguished
in a side-by-side comparison, but rather whether the marks are sufficiently similar
in their entireties that confusion as to the source of the goods offered under
Applicant’s and registrants’ marks is likely to result. Midwestern Pet Foods, Inc. v.
Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir.
2012); Edom Laboratories, Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012); In
Serial No. 85952211
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re Iolo Technologies, LLC, 95 USPQ2d 1498, 1499 (TTAB 2010). In view of the
foregoing, Applicant’s CRYSTALCOAT mark is similar to both of the cited
CRYSTALCOAT and KRYSTOL marks.
B. Similarity of Goods, Channels of Trade and Classes of Consumers
We next consider the du Pont factors involving the similarity or dissimilarity of
Applicant’s goods in relation to the goods in the cited registrations and their
respective channels of trade and classes of consumers. It is well-settled that the
issue of likelihood of confusion between applied-for and registered marks must be
determined on the basis of the goods as they are identified in the involved
application and registration. Paula Payne Products Co. v. Johnson Publishing Co.,
473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973); In re Accelerate s.a.l., 101 USPQ2d
2047, 2050 (TTAB 2012).
Applicant’s goods are “waterproofing chemical compositions” and the goods for
the cited registered CRYSTALCOAT mark include “abrasion-resistant coating for
use in industry on all substrates requiring the ability to withstand abrasion,
chemical attack, and long-term weather exposure.” Coatings that can withstand
long-term weather exposure necessarily include rainwater resistant coatings in the
absence of an express exclusion of that weather condition. Therefore, the
CRYSTALCOAT registration for “abrasion-resistant coating[s] for use in industry
… [with] the ability to withstand … long-term weather exposure” is broad enough to
cover Applicant’s “waterproofing chemical compositions.”
Serial No. 85952211
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The KRYSTOL mark is registered for “water-repellant sealants and chemical
compositions for curing and water-proofing concrete” and “waterproofing chemical
compositions for concrete or cement surfaces.” Applicant’s identification of goods
uses broad wording to describe Applicant’s goods, i.e., “waterproofing chemical
compositions,” and it is presumed to encompass all goods of the type described,
including those “water repellant sealants and chemical compositions” and
“waterproofing chemical compositions,” for concrete and cement identified in the
KRYSTOL registration. Unrestricted and broad identifications, such as found in
Applicant’s goods, are presumed to encompass all goods of the type described. See In
re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum,
211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24 USPQ2d 1716, 1716
(TTAB 1992).
In determining the similarity of Applicant’s and registrants’ goods, it is
sufficient if likelihood of confusion for each class of goods is established for any item
encompassed by the identification of goods for that class. See In re Wacker Neuson
SE, 97 USPQ2d 1408, 1409 (TTAB 2010) (citing Tuxedo Monopoly, Inc. v. General
Mills Fun Group, Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)). In view of
the foregoing relationships between Applicant’s goods and the goods in the cited
registrations, consumers encountering Applicant’s goods and the goods in the cited
registrations sold under similar marks are likely to believe the goods emanate from
the same source.
Serial No. 85952211
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Contrary to Applicant’s argument,4 the question of likelihood of confusion is
determined based on the description of the goods in the application and
registrations at issue, not on extrinsic evidence of actual use. See, e.g., Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161
(Fed. Cir. 2014); In re Hughes Furniture Industries, Inc., 114 USPQ2d 1134, 1137
(TTAB 2015).
Applicant’s identification of goods, “waterproofing chemical compositions,” does
not contain a limitation of any kind with respect to customers or channels of trade.
In the absence of limitations, it is presumed that the goods in the application move
in all channels of trade normal for those goods, and that the goods are available to
all classes of purchasers for the listed goods. Squirtco v. Tomy Corp., 697 F.2d 1038,
216 USPQ 937, 939 (Fed. Cir. 1983); In re Anderson, 101 USPQ2d 1912, 1920
(TTAB 2012).
Inasmuch as the identification of goods in the CRYSTALCOAT registration,
“abrasion-resistant coating for use in industry on all substrates requiring the ability
to withstand … long-term weather exposure,” at least partially encompasses
Applicant’s “waterproofing chemical compositions,” we presume that Applicant’s
goods move in some of the same channels of trade and are sold to some of the same
classes of customers as the goods in the CRYSTALCOAT registration. Because
Applicant’s identification of goods encompasses the goods identified in the
KRYSTOL registration, “waterproofing chemical compositions for concrete or

4 App. Brf. pp. 9-11 (4 TTABVUE 10-12).
Serial No. 85952211
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cement surfaces,” we also presume that Applicant’s goods move in at least some of
the same channels of trade and would be sold to some of the same classes of
customers as goods bearing the KRYSTOL mark. See Paula Payne Products Co., 177
USPQ at 77-78; In re La Peregrina Ltd., 86 USPQ2d 1645, 1646 (TTAB 2008); In re
Elbaum, 211 USPQ at 640. See also In re Viterra Inc., 101 USPQ2d at 1908 (even
though there was no evidence regarding channels of trade and classes of consumers,
the Board was entitled to rely on this legal presumption in determining likelihood of
confusion).
In view of the foregoing, based on the legally identical or highly related nature of
the goods set forth in the application and cited registrations, and the overlap-in-
part of the trade channels and customers, the du Pont factors of the similarity of the
goods, trade channels and customers favor a finding of likelihood of confusion.
C. Sophistication of Purchasers
The fourth du Pont factor considers “[t]he conditions under which and buyers to
whom sales are made, i.e. ‘impulse’ vs. careful, sophisticated purchasing.” du Pont,
177 USPQ at 567. There is no evidence that the consumers of Applicant’s goods are
sophisticated and Applicant did not introduce any evidence regarding the degree of
care exercised by its customers. However, even assuming that Applicant’s and
registrants’ goods may involve a careful purchase after exercising due diligence, it is
settled that the fact that purchasers are sophisticated or knowledgeable in a
particular field does not necessarily mean that they are sophisticated or
knowledgeable in the field of trademarks or immune from source confusion,
Serial No. 85952211
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especially in cases such as the instant one involving highly similar marks and
related goods. See, e.g., Stone Lion Capital Partners, L.P., 110 USPQ2d at 1163; Top
Tobacco LP v. North Atlantic Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011).
D. Conclusion
In view of the similarity of the marks in their entireties in sound, appearance,
meaning and commercial impression, the relatedness of Applicant’s “waterproofing
chemical compositions” to the “abrasion-resistant coatings for use in industry on all
substrates requiring the ability to withstand … long-term weather exposure” and
“water-repellent sealants and chemical compositions for curing and water-proofing
concrete … waterproofing chemical compositions for concrete or cement surfaces” in
the cited registrations, we find that Applicant’s CRYSTALCOAT mark is likely to
cause confusion with the CRYSTALCOAT and KRYSTOL marks in Registration
Nos. 2633021 and 3663744.
Decision: The refusal to register Applicant’s mark CRYSTALCOAT under
Section 2(d) of the Trademark Act is affirmed.