Akzo Nobel Coatings International B.V.

Trademark Trial and Appeal Board

Oct 2, 2012

No. 85121039 (T.T.A.B. Oct. 2, 2012)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: October 2, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Akzo Nobel Coatings International B.V.
_____

Serial No. 85121039
_____

David H. Vickrey for Akzo Nobel Coatings International B.V.

Dominic Fathy, Trademark Examining Attorney, Law Office 104 (Chris Doninger,
Managing Attorney).
_____

Before Bucher, Cataldo and Kuczma, Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:

Akzo Nobel Coatings International B.V. (“applicant”) filed an intent-to-use
application under §1(b) of the Trademark Act, 15 U.S.C. § 1051(b), seeking
registration of the mark:
CONTRACTOR PERFORMANCE
in standard character form for “coatings, namely, non-aerosol interior and exterior
paints,” as amended, in Class 2.
The examining attorney issued a final refusal to register the mark pursuant
to § 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), citing Registration No.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 85121039

2

3170775 as a bar to registration.1 Registration No. 3170775 is for the mark
CONTRACTOR in standard character form for “protective and decorative coatings
in the nature of aerosol paint” in Class 2 and is owned by SWIMC, Inc.
Applicant and the examining attorney submitted briefs.
Likelihood of Confusion
Our determination of likelihood of confusion under § 2(d) is based on an
analysis of all of the probative facts in evidence that are relevant to the factors
bearing on the likelihood of 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.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the similarities between the marks
and the similarities between the goods and/or services. Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
A. The similarity or dissimilarity of the marks as to appearance/sound/meaning
and commercial impression
We first consider the du Pont factor focusing on the similarity or dissimilarity
of the marks in their entireties as to appearance, sound, meaning and commercial
impression. du Pont, 177 USPQ at 567.
When considering the similarity of the marks, the test 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 overall commercial

1 Registration No. 3170775 issued November 14, 2006.

Serial No. 85121039

3

impression so that confusion as to the source of the goods or services offered under
the respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD
Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons
Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d
unpublished, No. 92-1086 (Fed. Cir. June 5, 1992).
To the extent that applicant’s CONTRACTOR PERFORMANCE mark and
the cited CONTRACTOR mark both contain the word CONTRACTOR, when
comparing the marks in their entireties, they are similar in sound and appearance.
This is particularly so in view of the fact that consumers are generally more inclined
to focus on the first word in any trademark or service mark. See Palm Bay Imports,
Inc. v. Veuve Cliquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005); see also Presto Products, Inc. v. Nice-Pak
Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of mark
which is most likely to be impressed upon the mind of a purchaser and
remembered” when making purchasing decisions).
Turning to the meaning and commercial impression of the marks, the word
CONTRACTOR imparts the same meaning in both marks; it suggests a type of
person who is likely to use the respective non-aerosol and aerosol paint products.
The addition of the word PERFORMANCE in the applicant’s mark does not alter
the commercial impression of the CONTRACTOR mark as a “contractor” is “one
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Serial No. 85121039

5

Third-party registrations may be submitted to demonstrate the meaning of a word
which comprises a mark, or a portion thereof, in the same way dictionary definitions
are used. In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006).
However, applicant failed to submit copies of the registrations or the electronic
equivalent (i.e., complete printouts taken from any of the USPTO’s automated
systems), in order to make the registrations of record. Because the examining
attorney failed to object to the foregoing chart submitted with applicant’s May 12,
2011 Response, or to advise applicant of the insufficiency of this evidence, we deem
any objection to be waived, and consider the evidence set forth in the attached
chart. See In re 1st USA Realty Professionals Inc., 84 USPQ2d 1581, 1583 (TTAB
2007) and TBMP § 1208.02 (3d ed., rev. 2012).
With its Reply Brief, applicant submitted copies of four registrations.4
Applicant’s submission of the copies of these registrations is untimely and
accordingly, the copies of these registrations have not been considered. See
Trademark Rule 2.142(d).
Moreover, we hasten to add that even if we had considered these
registrations, it would not change the result herein. Of the four registrations
identified in applicant’s chart, one of them, namely, Registration No. 3170775 is the
cited Registration. Registration No. 2972763 is for “resilient floor finishes” rather

4 These registrations included the first three registrations listed above,
along with a copy of Registration No. 3752324 for the mark shown at
right, which issued on February 10, 2010, well before the date of
applicant’s Appeal Brief was filed.

Serial No. 85121039

6

than aerosol or non-aerosol paint products, and the first word of the marks
contained in the two remaining registrations are the house marks of the
registrations’ owners. Thus, aside from the cited registration, the remaining
registrations in applicant’s chart display marks and/or recite goods that are less
similar to those at issue herein. In view of the foregoing, these few registrations do
not impact the meaning of applicant’s mark or the cited mark, nor do they support a
finding that the cited mark is weak or otherwise entitled to a narrow scope of
protection. In any event, the Board is not bound by the prior decisions of examining
attorneys in allowing the foregoing marks for registration. It has been noted many
times that each case must be decided on its own facts. See In re Nett Designs Inc.,
236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior
registrations had some characteristics similar to [applicant's] application, the PTO's
allowance of such prior registrations does not bind the Board or this court.”); and In
re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1142
(Fed. Cir. 1987). In view of the foregoing, we are obligated to assess the
registrability of applicant’s mark on its own merits and not simply based on the
existence of other registrations.
Although the issue of likelihood of confusion must be judged on the basis of
the facts and context of each case presented to the Board, likelihood of confusion has
frequently been found where the entirety of one mark is incorporated within
another. See In re El Torito Restaurants, Inc., 9 USPQ2d 2002 (TTAB 1988)
(MACHO COMBO likely to cause confusion with registered MACHO mark); In re
Serial No. 85121039

7

Christian Dior, S.A., 225 USPQ 533, 535 (TTAB 1985) (addition of house mark in
LE CACHET De DIOR does not avoid likelihood of confusion with registered
CACHET mark); In re C.F. Hathaway Co., 190 USPQ 343, 345 (TTAB 1976)
(HATHAWAY GOLF CLASSIC for knitted sport shirts likely to cause confusion
with registered GOLF CLASSIC mark for men’s hats); and La Maur, Inc. v. Matney,
167 USPQ 559 (TTAB 1970) (applicant’s “ITALIAN STYLE” mark similar to
registered “STYLE” mark).
In view of the shared term CONTRACTOR, and further because the term
PEFORMANCE in applicant’s mark is consistent with and otherwise draws
attention to the term CONTRACTOR as discussed above, the similarities in the
appearance, sound, meaning and commercial impression of the marks outweigh the
dissimilarities.
B. The similarity or dissimilarity and nature of the goods, channels of trade and
classes of consumers
We turn next to the du Pont factor involving the similarity or dissimilarity of
applicant’s goods (“coatings, namely, non-aerosol interior and exterior paints”), in
relation to the goods in the cited registration (“protective and decorative coatings in
the nature of aerosol paint”).
Applicant admits the similarity of the goods.5 Additionally, the examining
attorney submitted copies of third-party registrations that serve to suggest
applicant’s non-aerosol paints and registrant’s aerosol paints are of a kind that may

5 Applicant’s Reply Brief p. 4.
Serial No. 85121039

8

emanate from a single source.6 Thus, the five registrations, owned by four different
owners, listed below further demonstrate the relatedness of the goods:7
Registration
No.
Mark Goods Owner
1900258 Aerosol paints, enamels
and lacquers in the nature
of coatings for use on
wood, metal, plaster,
masonry, glass, pottery
and wicker; . . .; paint for
home and automotive use .
. .
Plasti-Kote Co.,
Inc.
2863041
PRIZMALITE
interior paint, exterior
paint . . . interior aerosol
paint, exterior aerosol
paint . . .
Prizmalite
Industries, Inc.
3036067
POWERED BY
PRIZMALITE
Exterior paint, interior
paint, exterior aerosol
paint, interior aerosol
paint, . . .
Prizmalite
Industries, Inc.
3414822
SELECT-A-SPRAY

Bulk and aerosol paints for
exterior and interior use
on wood, plastic, metal
fiberglass, plaster,
concrete, glass and paper
surfaces; pigmented and
unpigmented coatings in
the nature of paint for
exterior and interior use
on . . .
Gregory Alan
Haage
3957008

Exterior paints; interior
paints . . . enamels in the
nature of paint dispensed
by means of an aerosol
spray . . .
Allpro
Corporation

6 These third-party registrations submitted by the examining attorney were attached to the June 2,
2011 Office Action.
7 Only the goods that are pertinent to the goods identified in applicant’s application and the cited
registration are listed in the chart.
Serial No. 85121039

9

Although such registrations are not evidence that the marks shown therein are in
use or that the public is familiar with them, they nonetheless have probative value
to the extent they are based on use in commerce and serve to suggest that the goods
identified therein are of a kind which may emanate from a single source under a
single mark, i.e., that it is common for the same entity to provide aerosol and non-
aerosol paints under the same mark. See In re Davey Products Pty Ltd., 92 USPQ2d
1198, 1203 (TTAB 2009); and In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785-86 (TTAB 1993). Thus, consumers encountering applicant’s non-aerosol paints
and the cited registrant’s aerosol paints in connection with similar marks are likely
to believe the goods emanate from the same source.
Because there is no limitation as to trade channels or classes of purchasers in
the description of goods in either the application or the cited registration, we must
presume that applicant’s non-aerosol paints and registrant’s aerosol paints are
marketed in all normal trade channels for such goods and to all normal classes of
purchasers for such products. See In re Linkvest S.A., 24 USPQ2d 1716, 1716
(TTAB 1992); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Given the relationship between aerosol and non-aerosol paints established by
the third-party registrations and applicant’s admission as to the similarity of the
goods, at least some of registrant’s customers are part of the general consuming
public for applicant’s non-aerosol paint. Thus, applicant’s customers who may be
interested in purchasing non-aerosol paint, upon viewing registrant’s
CONTRACTOR aerosol paint, may assume that applicant’s goods are related to or
Serial No. 85121039

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affiliated with registrant’s CONTRACTOR paint. To the extent that applicant’s and
registrant’s paints are offered to the general consuming public, the channels of
trade and classes of purchasers overlap. This overlap weighs in favor of a finding of
likelihood of confusion, under the third and fourth du Pont factors. In re Wilson, 57
USPQ2d 1863, 1866 (TTAB 2001).
C. The number and nature of similar marks in use in connection with similar
goods
Third-party use of similar marks is evidence of the weakness of the mark and
is a separate du Pont factor to be considered in determining likelihood of confusion.
du Pont, 177 USPQ at 567. Applicant argues that multiple parties use multiple
marks containing the word “Contractor” on products highly similar to applicant’s
goods and that the number of such marks removes any likelihood of confusion
between applicant’s mark and the cited mark.8 In support of its position, applicant
identified a common law user, Hirschfield’s Paint Manufacturing, in the chart
included its May 12, 2011 Response to the first Office Action. However, no evidence
of Hirschfield’s use of “Contractor” was submitted at that time.
In its Appeal Brief, applicant included a chart identifying the four
registrations it identified in its May 12, 2011 Response, as well as three common
law users of “Contractor” and attached copies of printouts from the internet showing
use of “Contractor” by some of the registrants and common law users in connection
with paint products.9 The examining attorney objected to applicant’s submission of

8 Applicant’s Brief pp. 8-9.
9 Applicant’s Appeal Brief p. 7.
Serial No. 85121039

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this evidence with its Appeal Brief. The objection is sustained. After an appeal is
filed, if the applicant (or the examining attorney) desires to introduce additional
evidence, they may request the Board to suspend the appeal and to remand the
application for further examination. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d).
Accordingly, if applicant desired to submit additional evidence, its recourse was to
file a request for remand. See TBMP § 1209.04 (3d ed., rev. 2012).
We have considered the third-party evidence timely submitted by applicant
and discussed above, and find that it does not support a likelihood of confusion. The
third-party registrations for marks containing the term “Contractor” for paint
products and floor finishes without proof of their use in the marketplace are of little
probative value in proving likelihood of confusion because they are not evidence
that the marks depicted therein are in use or that the public is aware of them. In re
Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). Applicant’s evidence of actual
third-party use consists solely of the listing of Hirschfield Paint Manufacturing in
its May 12, 2011 Response. Inasmuch as this single listing does not show actual
use of the term by Hirschfield, we are unable to conclude there is significant third-
party use of “Contractor” marks in connection with paint products such that the
cited mark is weak and entitled to a narrow scope of protection.
Therefore, the du Pont factor involving the number and nature of similar
marks in use in connection with similar goods does not favor applicant.
D. Balancing the factors
In view of the similarity of the marks in their entireties in sound,
appearance, meaning and commercial impression, the relatedness of applicant’s
Serial No. 85121039

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non-aerosol paints to the aerosol paint products in the cited registration, and the
overlap in the channels of trade and classes of customers, we find that applicant’s
CONTRACTOR PERFORMANCE mark for non-aerosol interior and exterior paints
is likely to cause confusion with the CONTRACTOR mark in Registration No.
3170775. Moreover, where the goods of the applicant and cited registrant are
similar and/or closely related as they are here, the degree of similarity between the
marks required to support a finding of likelihood of confusion is not as great as
would be required with diverse goods. In re J.M. Originals Inc., 6 USPQ2d 1393,
1394 (TTAB 1987); also see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73
USPQ2d 1350, 1354 (Fed. Cir. 2004).

Decision: The refusal to register is affirmed.